Also on the blog in the past week were:
USPTO releases update to 101 guidance
We’ve also posted the following articles in the past week (log in via subscription or free trial):
IP diversity task force launches new network for women
Royalty rates in the telecoms patent wars
Data: US patent litigation picks up in October
PTAB Bar Association enjoying fast growth
October PTAB round-up: Filing holds up, CAFC IPR reviewability decisions, fee and patent agent privilege changes
DTSA strategies and cases discussed in webinar
Laches and patent law: SCA Hygiene v First Quality Baby Products SCOTUS arguments
Kyle Bass goes on PTAB winning streak ahead of winter break
Federal Circuit finds software claims patent eligible for fourth time this year
Star Athletica arguments: Will SCOTUS find a uniform test for useful articles?
USPTO reveals results of clarity of the record pilot
The USPTO has completed the clarity of the record pilot it launched earlier this year as part of an enhanced patent quality initiative.
“We’ve achieved our goal of identifying some best practices for enhancing the clarity of various aspects of the prosecution record,” said USPTO director Michelle Lee in a blog post. “These include best practices for documenting the USPTO’s positions with respect to claim interpretation, reasons for allowance, and interview summaries as well as encouraging examiners to initiate pre-search interviews when needed to gain a better understanding of the claimed invention.”
The USPTO is holding a day-long patent quality conference on December 13, where it will report in detail on the progress of the programmes in the enhanced patent quality initiative.
The USPTO identified the following best practices as key drivers for clarity and trained its examiners on these practices:
For interview summaries, providing:
- the substance of the examiner’s position
- details of any agreement reached
- a description of the next steps that will follow the interview
For reasons for allowance:
- addressing each independent claim separately
- particularly identifying the applicant’s persuasive arguments (wherever they may be in the record)
- identifying allowable subject matter of the claim rather than merely reciting the entire claim as the basis for allowance
For claim interpretation:
- putting all 35 USC 112(f) presumptions on the record
- explaining how the presumptions were overcome
- identifying on the record the structure in the specification that performs the function
- when a prior reference is used to reject multiple claims, clearly addressing specific limitations in each claim that is anticipated by the art
The USPTO found that on average, pilot examiners used 14% more of these best practices in pilot cases as compared to control cases, and this increased use of best practices contributed to an increase in overall clarity in pilot cases.
Copyright Office safe harbour plan criticised
More controversially, the USPTO’s copyright counterpart has been receiving criticism for removing Digital Millennium Copyright Act (DMCA) safe harbours.
This is part of the Copyright Office’s final rule announcing changes for renewal requirements for DMCA designated agents, effective December 1. Foley Hoag provided an overview of the changes, which include:
- The Copyright Office will stop accepting paper and PDF registration forms for designated agents
- All online service providers who have previously registered designated agents will be required to resubmit these registrations through the new electronic system by December 31 2017
- Registrations will expire after three years
- There will be a flat fee of $6 for each registration, amendment and renewal, instead of the previous $105 fee per registration
The Electronic Frontier Foundation said the Copyright Office was setting a “trap for unwary website owners”.
The EFF said the new rule could eliminate the safe harbour status that thousands of websites receive under the DMCA. Owners of websites and online services – provided they meet requirements such as participating in the notice and takedown procedure – are protected from monetary liability based on the allegedly infringing activities of their users or other third parties.
They also must register an agent with the Copyright Office to respond to takedown requests and other communications. The change to the registration process requires everyone to re-register before December 31 2017 and renew that registration every three years.
“When website owners inevitably forget to renew, copyright holders will be able to take advantage of that mistake to hold them liable for their users’ infringing activities. In fact, it will be trivial for abusive copyright holders to use the Copyright Office’s own system to compile lists of sites at risk,” said the EFF.
The EFF agrees the system needed an update, such as to ditching the “absurd” system of scanned-in documents and bringing in a “long overdue” new online database.
“The Copyright Office highlights that under the new system, the cost of registering a designated agent will be lower,” said the EFF. “That’s great news, and it makes sense: processing registrations will certainly be less time-consuming. But it still doesn’t justify or explain the need for renewals.”
Techdirt also published string criticism under a strident headline.
The US’s biggest filer of patent suits speaks
The Wall Street Journal spoke with the entity that has filed the most patent lawsuits in the US this year. Shipping & Transit has filed more than 100 lawsuits in 2016 against online companies that issue tracking numbers for orders.
Martin Kelly Jones, a co-owner of Shipping & Transit, said he came up with and idea in the 1980s to notify families of arriving school buses. “We are one of the pioneers of determining when something is arriving and being able to message that out,” Jones told the Journal. He filed the first patent held by Shipping & Transit in 1993 and additional ones through 2006.
The company is going after smaller targets because “there is no large retailer that is not a licensee,” Jones said.
Jones said critics have “gone to great extremes” to paint the firm as patent trolls. “Most of the time a troll is somebody who has bought somebody’s patents ... Because I am the inventor of these patents and have been involved in it, it is a stretch to say that I am a troll,” he said.
Shipping & Transit’s predecessor ArrivalStar sued airlines, logistics firms and retailers for patent infringement.
The cost of a restaurant and bar copyright exemption
A new study estimates that rights holders are missing out on more than $150 million a year because of the part of the US Copyright Act that exempts some small restaurants and bars from paying public performance fees to collecting societies, reports Billboard.
The study, conducted by consultancy PMP Conseil and funded by GESAC, was presented by Keith Donald, chairman of Irish collecting society IMRO, at a conference.
1998’s Fairness in Music Licensing Act allows restaurants and bars of less than 3,750 feet to play music without a licence. The European Commission brought a proceeding against the US at the World Trade Organization, with the US paying into an EU fund to benefit songwriters in 2003 and 2004.
PMP Conseil’s research said that European rights holders lose $44 million a year from these exemptions and US rights holders lose $109 million a year.
Samsung and TiVo agree licence
TiVo and Samsung Electronics have agreed to a broad intellectual property licence that will provide certain rights under TiVo’s patent portfolios for Samsung’s mobile, consumer electronic and set-top box businesses. As part of the agreement, the parties will seek an immediate stay of all pending litigation and patent challenges between the two companies and plan to seek their dismissal before the end of the year.
Tom Carson, CEO of TiVo, commented: “We believe this agreement with Samsung demonstrates the ongoing relevance of our intellectual property well into the future, as well as in key markets such as mobile. The arrangement also exemplifies the synergistic opportunities created by Rovi’s acquisition of TiVo to deliver significant value to our customers.”