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The Ruttler Mills Blog

Pending Senate Patent Reform Bill

Posted Thursday, January 17, 2008 by Jim Ruttler

The United States Senate is currently considering patent reform bill S.1145, a companion to the patent reform bill already passed by the House. The main aspects of the bill are switching to a first-to-file system, simplifying filing and examination, providing less expensive administrative procedures for questioning patent validity, allowing for 3rd party prior art submissions during examination, and requiring prior art searches when filing a patent application. Other provisions include ending US Patent Office fee diversion, clarifying damage calculations, and limiting venue.

“The purpose of the Patent Reform Act of 2007, as reported by the Senate Judiciary Committee, is to ensure that the patent system in the 21st century reflects the 18th century Constitutional imperative. Congress must promote innovation through the enticement to inventors of temporally limited monopolies on their inventions, and it must do so for the ultimate benefit of the public. The legislation is designed to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs. If the United States is to maintain its competitive edge in the global economy, it needs a system that will support and reward all innovators with high quality patents. The time has come for Congress to reconsider the 50 year old patent statute and how it is currently being applied.”

Summary of Senate and House Patent Reform Bills by John R. Thomas

Registered vs. Unregistered Marks

Posted Tuesday, January 8, 2008 by Jim Ruttler

Ownership in a mark begins upon use of the mark to sell goods or services to bona fide consumers. Thus, unlike patent law, trademark registration is optional and not required. However, trademark registration includes a number of benefits that make it highly desirable and advantageous. First, unregistered marks can result in multiple entities selling under the same mark in different geographic regions. This issue can make expansion and subsequent registration of a mark difficult. Next, there is no way to preserve rights in an unregistered mark prior to using the mark in sales like there is with federal registration. Thus, an unregistered mark is not protected between the time the mark is selected to when actual products and services are sold. Also, unregistered marks must be proven valid and enforceable whereas registered marks are presumed valid and enforceable. Lastly, owners of registered marks are able to enlist the aid of U.S. Customs to prevent the importation of infringing products. In short, careful consideration must be made early on as to whether to register a trademark as unregistered marks are weak and are associated with a number of other risks.

New Prior Art Disclosure Rules

Posted Thursday, December 20, 2007 by Jim Ruttler

The new prior art disclosure rules are expected to be published by the Patent Office in early 2008. One of the requirements for patentability is that an invention be new over the prior art, which includes patents, patent applications, foreign patents, foreign patent applications, and other publications. Although there is no affirmative duty to search for prior art before filing a patent application, applicants are required to submit a list of any known prior art references to assist the examiner with examination. Although there are some limits on when prior art can be submitted in the examination process, there are absolutely no limits on the number of prior art references that can be submitted. Because a patent is harder to invalidate using prior art that was submitted to the patent office during examination, some applicants submit thousands of prior art references to overwhelm an examiner and bury material prior art. Further, third parties are not able to independently submit prior art references to an examiner even when the prior art references indicate that an invention is not new.

In an attempt to address these issues, the new prior art disclosure rules are expected to make at least two significant changes. First, the number of prior art references that can be submitted will probably be limited to twenty. If more than twenty prior art references are submitted, they would need to be accompanied by an explanation as to the significance of the references. Second, third parties will be able to submit prior art references in published applications to assist examiners with examination.

Presidential Candidates on Patents

Posted Monday, November 26, 2007 by Jim Ruttler

Presidential candidates Mitt Romney and Barak Obama have issued statements regarding their views on the U.S. patent system. Romney believes that a strong U.S. patent system is critical for a healthy economy. If elected President, Romney would support abolishment of the new patent office rules that restrict claims and continuation applications; would ensure that the Undersecretary of Commerce and Director of the Patent Office were patent attorneys; and would consider appointing patent attorneys to the U.S. Federal Circuit.

Obama also believes that a strong U.S. patent system is essential for global competitiveness. If elected President, Obama would increase funding for the Patent Office; would open the patent process to peer review; and would provide inexpensive and timely administrative proceedings for reviewing patent validity.

Romney’s Statment
Obama’s Statment

New Patent Rules Delayed

Posted Tuesday, November 13, 2007 by Jim Ruttler

The U.S. Patent Office promulgated new rules for claims and continuations that were to become effective on November 1, 2007. A Virginia Federal Court issued a preliminary injunction against the U.S. Patent Office blocking the rules from being enforced until it could be determined whether they are consistent with the U.S. Constitution and the Patent Act of 1953. The U.S. Patent Office has complied and deferred enforcement of the rules until further notice. Currently, there are no limits to the number of claims that can be presented or to the number of continuation applications that can be filed for a single invention. The Patent Office believes that limits to claims and continuations are necessary to improve the overall efficiency of the patent application process. However, the U.S. Constitution and the Patent Act seem to preclude any limits to the number of claims and continuation applications that can be filed. In short, the new rules are being delayed until further notice from the Virginia Federal Court. Note that these rules are different from the proposed revisions to the Patent Act that are working their way through Congress. The proposed revisions include switching to a first-to-file system, permitting third party prior art submissions, and providing for a post-grant opposition period.

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