BLOGS: The High-Tech Patent Agent: A View from the Trenches in Silicon Valley

Thursday, February 21, 2013, 11:51 AM

Comments on European Union Unitary Patent agreement

A Unitary Patent agreement, which would put an international agreement on a unified patent court for litigation on infringement and revocation of “Classical” European Patents and European Patents with unitary effect, would enter into force January 1, 2014 or later if ratified.  Important effects would include a reduction in costs and a reduction in uncertainty, as a court decision on a patent would be binding in participating Member States, i.e. over the European Union.  This means individual cases would not need to be pursued in individual countries in the European Union.  This particularly favors defendants in cases, who would not need to defend independently in each of several countries.  One disadvantage for a patent owner is that if the European Union patent is found invalid or unenforceable, all patent rights are lost in all the member states of the European Union.  We note that the United Kingdom might pull out of the European Union, which would affect this aspect.

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Tuesday, February 12, 2013, 10:21 AM

E-commerce, Internet technology and novelty

Tony Dutra, of Bloomberg BNA, wrote recently about an e-commerce ruling the U.S. Court of Appeals for the Federal Circuit made on Jan. 22 (Soverain Software L.L.C. v. Newegg Inc., Fed. Cir., No. 2011-1009, 1/22/13).  In his article, Mr. Dutra discusses issues of obviousness in claims relating to the Internet versus existing processes, and routine incorporations of Internet technology into existing processes.  He quotes the court as stating, “Open Market did not invent the Internet, or hypertext or the URL… The use of hypertext to communicate a ‘statement document’ or ‘transaction detail document’ was a routine incorporation of Internet technology into existing processes.”  Relating this to our previous blog entry about tying method claims to a machine in software patenting, i.e., writing claims so as to pass the machine or transformation test (MOTT), we see the court affirming that tying to a machine is not the only requirement for validity of a claim.  The method itself must still be novel.  We interpret the court as saying you can’t take a known method and dress it up for the Internet and claim it as novel.

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Friday, February 8, 2013, 2:16 PM

Plain Language

“Helping Jurors Understand the Law,”* written by Maureen Murphy (who works at our firm’s Washington DC office) has insights about legal writing that I’d like to share with you.  Although her topic is jury instructions, its ideas also apply to the writing style and content in patent applications and arguments before the United States Patent and Trademark Office.  This article quotes plain language advocate Prof. Joseph Kimble (Thomas Cooley Law School, Lansing, Michigan) who notes that the language and structure of traditional jury instructions often confuse the lay juror.  Prof. Kimble recommends that an experienced writer with a background in plain language (generally defined as clear, succinct writing intended to ensure an understandable message for the target audience) prepare the first draft of jury instructions rather than being brought in late in the process.  He also urges that we not believe the myths about plain language, debunking common claims that it is “baby talk” or imprecise.  He notes that the simplicity of plain language can, in fact reveal inconsistencies and uncertainties that traditional legal language tends to hide.  I agree wholeheartedly.
I can relate to this, in that I have had to “repair” patent application drafts that have been written by some clients in the past.  I often spend more time, at greater cost to the client, doing such repairs than if I had written the patent application from the start.  Although claim writing is still the most formal part of the exercise of writing a patent application, there is a trend towards more natural language, i.e., plain language in the claims.  I try to use plain language in the written specification, which supports the claims.  Explaining the sometimes subtle nuances of an invention, especially around the point(s) of novelty, in plain language in the specification gives us room for claim amendments, and also provides language for the arguments we make during patent prosecution. Plain language helps examiners understand the claims, and may help judges and juries understand the claims should they be tested in a court.

* "Helping Jurors Understand the Law
     Scribes Panel on Writing Plain-English Jury Instructions
     January 6, 2007, in Washington, DC"
By Maureen Murphy, The Scrivener – Winter 2007

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