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Sunday, October 27, 2013

The Doctrine of Patent Exhaustion

     In a case, Bowman v. Monsanto, U.S. Supreme Court opinion 11-796, respondent Monsanto invented and patented Roundup Ready soybean seeds, which contain a genetic alteration that allows them to survive exposure to the herbicide glyphosate. It sells the seeds subject to a licensing agreement that permits farmers to plant the purchased seed in one, and only one, growing season. The license permits growers to consume or sell the resulting crops, but may not save any of the harvested soybeans for replanting.
     Under the patent exhaustion doctrine, “the initial authorized sale of a patented article terminates all patent rights to that item,” Quanta Computer, Inc. v. LG Electronics, Inc., 553 U. S. 617, 625, and confers on the purchaser, or any subsequent owner, “the right to use [or] sell” the thing as he sees fit, United States v. Univis Lens Co., 316 U. S. 241, 249–250. However, the doctrine restricts the patentee’s rights only as to the “particular article” sold, id., at 251; it leaves untouched the patentee’s ability to prevent a buyer from making new copies of the patented item
\     In May 2013, the Supreme Court held: Patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder’s permission.
In its opinion, the Court stated:
Monsanto sells, and allows other companies to sell, Roundup Ready soybean seeds to growers who assent to a special licensing agreement.
That agreement permits a grower to plant the purchased seeds in one (and only one) season. He can then consume the resulting crop or sell it as a commodity, usually to a grain elevator or agricultural processor. But under the agreement, the farmer may not save any of the harvested soybeans for replanting, nor may he supply them to anyone else for that purpose.

     In this case, the farmer used the seeds for eight consecutive crops. The Supreme Court agreed with Monsanto that he only had permission for the first crop. The farmer raised the defense of patent exhaustion by claiming that Monsanto could not control his use of the beans as they were subject to the prior authorized sale to place he purchased the seeds from. The District Court rejected the defense and awarded damages to Monsanto of $84,456. The Federal Court agreed with this decision and later the Supreme Court affirmed. The Patent Act grants a patentee the “right to exclude others from making, using, offering for sale, or selling the invention.” 35 U.S.C.§154(a)(1). The Supreme Court decided that the farmer was replicating Monsanto’s seed by making more and using them thereby infringing on the patent owned by Monsanto.

Friday, August 16, 2013

IP Litigation Attorney

Robert J. Sayfie has represented clients successfully against, what are perceived to be, "large and successful" corporations.  Read the below links to see what independent parties have reported about the success of Robert J. Sayfie against opponents such as Intel, Inc., etc..

Robert J. Sayfie, ( represents a patentee against an accused infringer in Nevada:

Robert J. Sayfie, ( sues Intel Corporation:  

Robert J. Sayfie has represented clients successfully against, what are perceived to be, "large and successful" corporations.  Read the below links to see what independent parties have reported about the success of Robert J. Sayfie against opponents such as Intel, Inc., etc..

Robert J. Sayfie, ( represents a patentee against an accused infringer in Nevada:

Robert J. Sayfie, ( sues Intel Corporation:  

Thursday, August 15, 2013






On  May 19, 2013, the USPTO launched the After Final Consideration Pilot 2.0 (AFCP 2.0).  Using information obtained from the After Final Consideration Pilot (AFCP), which began on March 25, 2012 and ended May 18, 2013, the USPTO continues their on-going efforts toward compact prosecution.  The USPTO also continues to increase collaboration efforts between examiners and stakeholders. 

One of the goals of the policy of “compact” prosecution is to provide applicants with prompt and complete examination of their applications.  AFCP gives extra time for examiners to search and/or consider responses after final rejection.  If a response does not place the application in condition for allowance, the idea is the applicant will benefit from the extra time to schedule and conduct interviews to discuss results of searches and/or considerations.  Like AFCP, AFCP 2.0 also revised procedure for obtaining consideration and focuses the pilot on review of proposed claim amendments. 

AFCP 2.0 is scheduled to run through September 30, 2013, i.e., any request to consider a response after final rejection under AFCP 2.0 must be filed on or before September 30, 2013.

A response under 37 CFR §1.116  is required to become eligible for consideration under AFCP 2.0.  This includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one (1) independent claim that does not expand the scope of the independent claim in any way. 

You can find the Notice published in the Federal Register at 78 Fed. Reg. 29117.  Examiners will use their judgment to determine if the response can be fully considered under AFCP 2.0. 

If you received a final rejection under 37 CFR 1.116 and you believe further searching and/or consideration by the examiner will lead to allowance of your application then you may want to make a request for consideration under AFCP 2.0.   

For information on how to request consideration under AFCP 2.0, please contact Robert J. Sayfie by visiting or calling toll free at 888-468-0444.

Tuesday, March 5, 2013

Domain Name Disputes and Cybersquatting

            According to the Anticybersquatting Consumer Protection Act Cybersquatting is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.  The person registering, trafficking, or using the domain name in bad faith is called a cybersquatter.  Typically, the cybersquatter then offers to sell the domain to the person or company who owns a trademark.

            In a recent case, the jewelry company Swarovski filed a complaint against a Mr. Derk Hond.  The case is, LLSwarovskiAktiengesellschaft v. Derk Hond Case No. D2013-0005.  The respondent, sometimes called a defendant, registered the domain name


            The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2013.  Swarovski uses the SWAROVSKI trademarks in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries


In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and

                        (iii) The disputed domain name has been registered and is being used in bad faith.


            The Panel orders that the disputed domain name be transferred to the Complainant.

Wednesday, January 2, 2013


The patentability of inventions is defined under Title 35 of the U.S. Code.   During the 1990’s Congress enacted the Uruguay Round Agreement Act and the American Inventors Protection Act (AIPA). 

In 1994, the Uruguay Round Agreement Act resulted in a patent term adjustment from 17 years to 20 years from the date a patent application is filed.  It also established Patent Term Adjustment (PTA).  The PTA was significantly amended with the enactment of the AIPA in 1999 and provided for a Request for Continued Examination (RCE).  These significant law changes led to litigation pertaining to the plain language of Title 35. 

The U.S. District Court for the Eastern District of Virginia has found in a recent case that the United States Patent and Trademark Office’s (USPTO) interpretation and application of the “RCE carve-out” provision of the PTA statue is contrary to law.  See Exelixis, Inc. v. Kappos, No. 1:12cv96 (E. D. Va. Nov. 1, 2012).

There is good chance that the USPTO will appeal the Exelisis decision, however, this holding prompts consideration for patentees owning patents issued within the past 180 days or applicants considering whether to file an RCE.

An unresolved question concerning the AIPA’s PTA provision is as follows:

            Whether 35 § 154(b)(1)(B) requires that an applicant’s PTA be reduced by the time attributable to an RCE, where, as here (Exelixis), the RCE is filed after the expiration of AIPA’s guaranteed three year period. 

The plain language of Section 154 fails to address and does not require that an applicant’s PTA be reduced by the time required to process an RCE that is filed after the expiration of the three year period. 

Per Exelixis, it is recommended that patent owners and applicants consider these tips:

(1) For any patents issued within the past 180 days, patent owners should evaluate those patents to determine if the underlying application involved an RCE filed after the three-year time period in order to determine whether they should seek a PTA; and

(2) Patent applicants should, if possible, wait to file an RCE until three years after the application filing date. An RCE filed before the three-year time period will preclude the applicant from obtaining additional PTA.

For further answers to patent law questions and your PTA , please contact The Patent Law Office of Robert J.Sayfie.
Or call 1-888-468-0444