Can the Government be Sued for Patent Infringement?

     Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999) held; No, a State or State entity cannot be sued for patent infringement. In a 5-to-4 decision, the United States Supreme Court began by noting that there was no doubt that the Patent and Plant Variety Protection Remedy Clarification Act passed in 1992, intended to abrogate states' immunity from patent infringement. However the court concluded that neither the Commerce Clause nor the Patent Clause give Congress the power to curtail state sovereign immunity from patent infringement claims. The Court reasoned that although the Fourteenth Amendment authorizes Congress to pass "appropriate legislation" to protect parties from being deprived of property without due process, this in itself does not permit the abrogation of state sovereign immunity. The court also concluded that because the Act's language was overly broad in its scope, the Court dismissed College's suit and declared unconstitutional corresponding segments of the Act.

     However, 28 USC 1498(a) is recited below:
(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture. Reasonable and entire compensation shall include the owner’s reasonable costs, including reasonable fees for expert witnesses and attorneys, in pursuing the action if the owner is an independent inventor, a nonprofit organization, or an entity that had no more than 500 employees at any time during the 5-year period preceding the use or manufacture of the patented invention by or for the United States. Nothwithstanding [1] the preceding sentences, unless the action has been pending for more than 10 years from the time of filing to the time that the owner applies for such costs and fees, reasonable and entire compensation shall not include such costs and fees if the court finds that the position of the United States was substantially justified or that special circumstances make an award unjust.

For the purposes of this section, the use or manufacture of an invention described in and covered by a patent of the United States by a contractor, a subcontractor, or any person, firm, or corporation for the Government and with the authorization or consent of the Government, shall be construed as use or manufacture for the United States.

The court shall not award compensation under this section if the claim is based on the use or manufacture by or for the United States of any article owned, leased, used by, or in the possession of the United States prior to July 1, 1918.

A Government employee shall have the right to bring suit against the Government under this section except where he was in a position to order, influence, or induce use of the invention by the Government. This section shall not confer a right of action on any patentee or any assignee of such patentee with respect to any invention discovered or invented by a person while in the employment or service of the United States, where the invention was related to the official functions of the employee, in cases in which such functions included research and development, or in the making of which Government time, materials or facilities were used.

So, under 28 U.S.C. 1498(a) the answer is yes.  However this may not apply to government contractors.

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Copyright Robert J. Sayfie, P.C., 2017

NEW ORAL ARGUMENT PROCEDURE AFTER FINAL REJECTION

    The United States Patent and Trademark Office (“the Office”) has a new procedure for applicants who receive a final rejection. The procedure is called Post-Prosecution Pilot ("the program").

   Applicants who receive final rejections to nonprovisional utility applications filed may file the Request to participate in the program. Design, plant, reissue, and reexamination proceedings are prohibited from participating in the program.

   To begin, the applicant completes (1) a Request Form ("Certification and Request for Consideration under the Post-Prosecution Pilot Program") filed electronically within two months of the mailing date of the final rejection; and (2) a statement that the applicant is willing to participate in a conference; (3) a response with a maximum of five pages of arguments, exclusive of any amendments; and (5) optionally, a proposed non-broadening amendment to one or more claim(s).

The requirements to participate are:

   1. fortunately, there is no fee to participate in the program;

   2. only one request per application is allowed; and

   3. the examiner may request an additional response(s). 

   An applicant is not allowed to file any of the following:

     1. a notice of appeal;

     2. request for Continued Examination (RCE);

     3. an express abandonment;

     4. a request for the declaration of interference or;

     5. a petition requesting the institution of a derivation proceeding.

   The Office will contact the applicant to schedule the conference. There will usually be a conference within ten calendar days. The applicant will make an oral presentation to the panel of examiners no longer than 20 minutes and the conference will have the following rules:

      a) claim amendments, affidavits or other evidence included as part of the presentation materials;

      b) applicant can only present appealable, not petitionable, matters;

      c) applicant may present arguments directed to the patentability of the amended claim(s) as proposed.

   Then the panel will discuss the proposed findings and prepare a written decision.

   The applicant will be informed of the panel’s decision. The decision will be one of the following:

   1. Continue prosecution; a notice of decision indicating reopen prosecution will state that the rejection(s) is/are withdrawn and a new Office action will be mailed.

   2. Confirm the final rejection:

     a) If proposed amendment(s) were included with the Request, then the status of such amendment(s);

     b) the time period for taking further action in response to the final rejection expires on (1) the mailing date of the notice of decision; or (2) the date set forth in the final rejection, whichever is later. To avoid abandonment, the applicant must file a notice of appeal or RCE within the statutory period for response to the final rejection. Extensions of time may be obtained.

     c) the Office will not grant a petition seeking reconsideration of a panel decision upholding a final rejection.

   3. Notice of Allowance.

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Challenging Issued Patents by Post Grant Review Proceedings

Challenging Issued Patents by Post Grant Review Proceedings

Granted Patents may be challenged within the USPTO any time before nine (9) months after issuance, without filing a lawsuit in Federal District Court.  The United States Patent and Trademark Office (USPTO) regulations allow for a procedure to challenge patents. This is called a Post Grant Review Proceeding (PRG) for patent applications filed on or after 19 March 2013 or Inter Partes Review proceeding for those applications filed before 19 March 2013.

In either case, the third party challenger may attempt to invalidate one or more claims as unpatentable on any ground relating to invalidity (i.e., novelty, obviousness, written description, enablement, indefiniteness, but not best mode).

The government filing fee varies, and ranges from $9000.00 to $18,000.00.

Attorney fees can range from $50,000.00 to $280.000.00, which is less than the average attorney’s fees for lawsuits filed in Federal District Court.

A party dissatisfied with the final written decision in a post grant review may appeal to the Federal Circuit.

Of course, if you are beyond the nine (9) month post issuance time period, the patent can be challenged by filing a Declaratory Judgement Action in Federal District Court.

Call Robert J. Sayfie at 1-888-468-0444

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Copyright 2016, all rights reserved.

Challenging Issued Patents by Post Grant Review Proceedings

Challenging Issued Patents by Post Grant Review Proceedings

Granted Patents may be challenged within the USPTO any time before nine (9) months after issuance, without filing a lawsuit in Federal District Court.  The United States Patent and Trademark Office (USPTO) regulations allow for a procedure to challenge patents. This is called a Post Grant Review Proceeding (PRG) for patent applications filed on or after 19 March 2013 or Inter Partes Review proceeding for those applications filed before 19 March 2013.

In either case, the third party challenger may attempt to invalidate one or more claims as unpatentable on any ground relating to invalidity (i.e., novelty, obviousness, written description, enablement, indefiniteness, but not best mode).

The government filing fee varies, and ranges from $9000.00 to $18,000.00.

Attorney fees can range from $50,000.00 to $280.000.00, which is less than the average attorney’s fees for lawsuits filed in Federal District Court.

A party dissatisfied with the final written decision in a post grant review may appeal to the Federal Circuit.

Of course, if you are beyond the nine (9) month post issuance time period, the patent can be challenged by filing a Declaratory Judgement Action in Federal District Court.

Call Robert J. Sayfie at 1-888-468-0444

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Copyright 2016, all rights reserved.

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 cheap-swarovski.net.

FACTS

            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

LAW

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.

CONCLUSION

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

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The Unites States most un-appreciated asset. - Innovation and Creativity

Where would the United States be today without the innovations of:

1. Thomas Edison
          Thomas Edison patented over 1000 inventions include the phonograph, the incandescent light bulb, and the motion picture;

2. Samuel F. B. Morse
          His inventions include the telegraph and morse code;

3. Alexander Graham Bell
          His inventions include the telephone in 1876;

4. Henry Ford
          The automotive industry drove the American economy since it inception;

5. George Eastman
          He invented the Kodak camera;

6. Bill Gates and Steve Jobs
          Computers.

Many important inventions were invented or best produced in the United States.  The reason is that the U.S. constitution created the structure of our government.  The limits of the government provide free enterprise to grow by the incentive and fun involved in creating and inventing, and reaping the benefits of one's creation, generally through the U.S. patent system and international patent laws.

Where would the U.S. be had the above inventions been invented or primarily developed in another country?

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How can the Patent Examination Process be Accelerated?

A. Petition to Make Special (final disposition goal within 12 months)

        I.        the applicant's age or health (no fee);

        II.        the invention will materially (no fee);
                a)        enhance the quality of the environment;
                b)        contribute to the development or conservation of energy resources; or
                c)        contribute to countering terrorism.

        III.        accelerated examination program.
        Under the accelerated examination program the applicant can pay a fee of $30 to $140 depending on the type of applicant, and meet other requirements, below:

        a)        the application must contain three (3) or fewer independent claims and twenty (20) or few total claims.  The application may not contain any multiple dependent claims;
        b)        the applicant waives the right to separately argue the patentability of any dependent  claim during any appeal;
        c)        the claims must be directed to a single invention;
        d)        the applicant agrees to have (if requested by examiner) an interview to discuss the prior art and any potential rejections, and a telephonic interview to make an election without traverse;
        e)        the applicant must provide a pre-examination search statement that includes:
                i)         an information disclosure statement;
                ii)        an identification and waiver of all the limitations of the claims;
                iii)        a detailed explanation of how each of the claims are patentable over the cited references;
                iv)        a statement of utility as defined in the independent claims;
                v)        an identification of any cited reference that may be disqualified;
                vi)        a showing of where each limitation of the claims finds support having a proper written description under 35 U.S.C. 112.

B. Track One Prioritized Examination (final disposition goal of 12 months)
        This is a procedure for expedited examination upon payment of a fee and filing a petition, which may be granted or denied.  The fee is $4000.00 for a large entity, $2000.00 for a small entity, and $1000.00 for a micro-entity.

         The fees are higher than the petition to make special fees, but there are less filing requirements and less potential waiving of claim limitations.

C. An applicant can also attempt to accelerate the examination process in international applications using the Patent Prosecution Highway(PPH), which will not be discussed in this issue.

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Copyright 2014 Robert J. Sayfie