USPTO KSR判断を厳密に適用(すると思います)

Tuesday Nov 24, 2009
The Impact of KSR
As a result, some claims that may have been found to be non-obvious before KSR will now correctly be found to be obvious.

Inventors and practitioners will need to take these developments into account when preparing and prosecuting applications. For example, it may be necessary to review a broader cross-section of prior art than was previously necessary, or to consider filing evidence of unexpected results earlier rather than later in the course of prosecution. By being proactive, practitioners will expedite prosecution and avoid unnecessary fees and RCE filings.


Federal Circuit Chief Judge Paul Michel引退

(Patently-O) (The BLT: Blog of the Legal Times)
Federal Circuit Chief Judge Paul Michelが来年5月末で引退するとのことです。Senior Judgeになるつもりはなく完全引退ということらしいです。
次期Chief JudgeにはRandall R. Raderがなる予定です。

Paul Michelのインタビュー(2009年1月)



In the IP Legal World Top Ten Lists are a staple of a culture obsessed with ranking.

Top Ten Law Faculties in Intellectual Property/Cyberlaw
World IP Survey 2009 (for patent attorneys and patent litigators)





知ってました?(LINK) (LINK)

検索結果で表示される、How cited がすばらしい。



USPTO長官のブログ(Director's Forum)が公開されました。



Bilski 最高裁ヒヤリング

(PatentlyO)(PatentlyO2) (271)

The case involves a patent application by Pittsburgh businessmen Bernard Bilski and Rand Warsaw for a way to help utility companies and their customers to regularize costs by considering factors of supply, demand, and weather. No justice who spoke seemed to view the process as patent-eligible, but it was not certain that a vote against the Bilski-Warsaw patent would sweep away patents for computer software or medical diagnostics, as some have feared.

(Patent Librarian)
まさに、今が旬のこの分野のUSC(Class 705)が今再編されているそうです。


米国 知財(司法)トレンド メモ

Top Ten List is solely prepared by Harold C. Wegner and is designed to focus upon cases which may challenge important concepts of patent law. Because a case is commercially important is not at all relevant, other than where there is an interesting legal issue the fact of great commercial importance may give greater prominence to the legal issues involved in the case.


Lex Machinaを使ってくださいということです。


Stanford IP Litigation Clearinghouse account expiring

Dear IPLC User,

Our records indicate that you have an account with the Stanford IP Litigation Clearinghouse (“IPLC”). We thank you for registering with and using the IPLC, and we hope that the website has been useful to you thus far. Since its creation, the IPLC has been growing rapidly in depth and features. However, free access to the IPLC is reserved for non-commercial uses only. Because of this limitation in our terms of use, we will unfortunately be unable to keep providing you access without a demonstrated need for non-commercial access.

The IPLC does, however, have a commercial analog with advanced capabilities, called Lex Machina, which is currently available to law firms and other commercial users. Lex Machina is a powerful new tool for IP lawyers that can dramatically increase research intelligence and improve new business development success rates. Lex Machina contains all of the same features as the IPLC, plus much more advanced functionality such as law firm profiles and the ability to perform targeted searches for orders granted or denied.

If you are interested in Lex Machina, please get in touch with us, and we can provide you with more information, including a quick tour of the system and our services over web conference. We would also be happy to send you some introductory information about Lex Machina. Our pricing structures are competitive with the industry.

We will keep your IPLC account active until October 31, 2009. However, we can extend such access for a reasonable period if we can schedule a Lex Machina demo for your organization. So please get in touch!

Best regards,



Patent statistics for decision makersのプレゼン資料がEPOのHPで公開されました。(LINK)


Session: Impact of the economic crisis on patenting
Chair: Dominique Guellec, OECD

Detailed knowledge of local factors is important for valid international comparisons of domestic invention: the real value of the USPTO’s ‘Small Entity’ data.
Kevin Scally, University College Cork, Ireland
Presentation (PDF, 203 KB)

Patent activity at the USPTO during the current recession
Gerard Torres, USPTO
Presentation (PDF, 40 KB)

Impact of economic crises on patenting activity: lessons from the economic downturn in the beginning of the 2000s
Hans Lööf, Centre of Excellence for Science and Innovation Studies, Royal Institute of Technology, Sweden
Presentation (PDF, 873 KB)

Session: Patent quality (1)
Chair: Roger Burt, IBM UK

Validity of European patents: the DM&S opposition quality indicator
Christoph Laub, EPO
Presentation (PDF, 257 KB)

Financial patenting in Europe: an analysis of filing, grant, and opposition
Grid Thoma, University of Camerino, Italy
Presentatio n (PDF, 69 KB)

Session: Patent quality (2)
Chair: Roger Burt, IBM UK

Applications, grants and renewals - legal status information and citations
Rainer Frietsch, Fraunhofer Insitute for Systems and Innovation Research, Germany
Presentation (PDF, 250 KB)

Changing pattern and functions of applications and citations at the European Patent Office
Ulrich Schmoch, Fraunhofer Institute for Systems and Innovation Research, Germany
Presentation (PDF, 101 KB)

Session: Shining the light on the patent system
Chair: Kazuyuki Motohashi, The University of Tokyo, Japan

SMEs as patent applicants in France
Laurence Joly, INPI, France
Presentation (PDF, 52 KB)

An application of patent statistics - some insight into filing strategies
James Pearce and Janis Jekabsons, EPO
Presentation (PDF, 755 KB)

Uncertainty in the patent system - the role of concurrent patenting and standardisation activities
Florian Köhler, Berlin Technical University, Germany
Presentation (PDF, 102 KB)

The use of time in patent families: exploring applicants strategies
Catalina Martínez, Institute for Public Goods and Policies, CSIS, Spain
Presentation (PDF, 189 KB)

Darby Joseph Robinson氏 別事務所へ(メモ)

New York IP boutique Darby & Darby has lost two partners to McDermott, Will & Emery. The departures of Joseph Robinson and Robert Shaffer were announced Wednesday. Robinson said the move would allow the pair to provide their clients with a full-service international practice. "I don't think we could have that at Darby," he said.


米国 特許法律事務所の新たなサービス

 日本企業の日本での特許出願は毎年40 数万件と世界一
 多いが、その内、企業内で出願を行うのは10% くらいで、
 90% は外部の日本特許事務所に出願業務を依頼し、この比

Outside GC Launches Patent Firm, Patent GC LLC
BOSTON, Oct. 9 /PRNewswire/ -- Outside GC, the pioneer and national leader in
on-demand in-house counsel services, today announced the launch of its sister
firm, Patent GC (www.patentgc.com).

Co-Founded with Peter Gordon, a veteran patent lawyer who left Fish &
Richardson to launch the new firm, Patent GC will provide its clients with
partner-only patent counsel at rates that are dramatically lower than
traditional patent firms while providing best-in-class service. Leveraging
Outside GC's high value model, Patent GC will be comprised exclusively of
patent lawyers with significant in-house experience who have practiced law for
at least ten years.

US corporate spend on external IP advice set to fall further in 2010
United States - Latest news

October 09 2009

A new survey of corporate counsel at leading US companies projects a 4.3% drop in overall spending on external legal advice next year; this is on top of the 10.8% fall for 2009. The study predicts a sharp contraction in a number of practice areas, with IP transactional work reportedly set to shrink by 8.6%.



DLA Piper のLazar氏は知財協のF2コース(滞在型米国知財コース)で講師も務めていた方で、日本でもおなじみですね。DLA Piperも最近の不景気で多数レイオフがありましたがご無事だったようです。


のDLA Piperで各国の特許ポートフォリオ、審査手続、および出願コストのマネ
DLA Piper の下記Lazar氏がモデレータとなり、Schwaab 氏および Williams 氏

龍華は、各国の審査タイミングを調整する方法とそのメリットを、Schwaab 氏は

Webでの閲覧方法等の詳細については、弊所HP、www.ryuka.com をご参照下さい。

Managing Global IP/Patent Portfolios, Prosecution and Costs
司会: Dale S. Lazar(米国 DLA Piper 法律事務所)
講師: 龍華 明裕(RYUKA 国際特許事務所)
Andrew Schwaab(米国 DLA Piper LLP 法律事務所)
Michael Williams(英国 fJ CLEVELAND 特許事務所)
場所: ワシントンDC、DLA Piper 法律事務所 (Webでも公開)
日時: 2009年10月16日午後4時~6時
(日本時間: 17日午前5時~7時)



高橋是清さんは知っています。CAFCのNewman判事や、(元か?)マイクロソフトのMarshall Phelps氏も殿堂入りしてますね。

The IP Hall of Fame website has a brand new face. It has been fully updated, there is much more content and, as well as allowing you to browse through the biographies of past inductees, you can also read up on the Hall of Fame Academy members and, of course, nominate individuals who you feel should be considered for induction for the IP Hall of Fame in 2010 because of the outstanding contribution they have made to today's global IP system. On top of all of that, you can now also read the latest news on all of our inductees via the live Google results found on each individual's home page, as well as browse through photographs of past induction ceremonies and watch interviews with IP Hall of Fame inductees and Academy members. (LINK)

TIPS PDFファイル カラー・グレー変換

Converting Color PDF to Greyscale PDF (An Update)
Converting Color PDFs to Grayscale or Black and White in Acrobat 9

普通ここまでやりますか (LINK)


米国 懸案の規則改正闘争、終結へ

USPTO Rescinds Controversial Patent Regulations Package Proposed by Previous Administration
Agency Files Joint Motion with Plaintiff GlaxoSmithKline to Dismiss Lawsuit Related to Regulations Affecting the Ability to Secure Patent Protection for Inventions
WASHINGTON — Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos has signed a new Final Rule rescinding highly controversial regulations, proposed by the previous administration, that patent applicants felt unduly restricted their capacity to protect intellectual property. The regulations, which addressed the number of continuation applications as well as the number of claims that could be included within each application, were published in the Federal Register in August 2007, but were enjoined and never came into effect.
The USPTO also announced that it will file a motion to dismiss and vacate the federal district-court decision in a lawsuit filed against the USPTO that sought to prevent the rules from taking effect. GlaxoSmithKline - one of two plaintiffs in the Tafas v. Kappos lawsuit - will join the USPTO’s motion for dismissal and vacatur. “The USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market,” Kappos said. “These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public.” “We are grateful to GlaxoSmithKline for working with us to file this joint motion to both dismiss the appeal and vacate the district court’s decision. This course of action represents the most efficient way to formally and permanently move on from these regulations and work with the IP community on new ways to take on the challenges these regulations were originally designed to address.”

Background on Rules
In August 2007, the agency published new rules intended to help improve examination efficiency, enhance the quality of examination, and manage the growing backlog of unexamined applications.
Two regulations, commonly referred to as the “Continuation Rule” and the “RCE Rule,” would have permitted an applicant to file only two continuation applications and one request for continued examination (“RCE”) per application family as a matter of right. For a third or subsequent continuation application or RCE, the applicant would have had to make a case to the USPTO to show why the additional filing was needed.
A third regulation, referred to as the “Claims Rule,” would have permitted an applicant to file five independent claims and twenty-five total claims per application. If an applicant desired more than five independent claims or more than twenty-five total claims, then the Claims Rule would have required the applicant to supply information to the USPTO about the claimed invention to assist the Office’s examination. The specific information that would have been required was outlined in another regulation, termed the “ESD Rule.”
Many in the applicant community felt the combination of these new requirements would ultimately have had an effect that was at odds with their intended purposes.

History of Litigation
In the fall of 2007, GlaxoSmithKline and Dr. Tafas brought suit against the USPTO in the U.S. District Court of the Eastern District of Virginia and sought a preliminary injunction to stop the Claims and Continuations Rules from becoming effective, which the district court granted. In April 2008, the district court ruled in favor of GlaxoSmithKline and Dr. Tafas on the merits and permanently enjoined the rules, preventing the agency from implementing them. The agency appealed to the U.S. Court of Appeals for the Federal Circuit. In March 2009, a panel of the Federal Circuit concluded that the Claims and Continuations Rules were all procedural in nature and within the agency’s rulemaking authority. The Court also concluded that the rules, except for the Continuations Rule, were consistent with the patent law.
In 2009, the Federal Circuit granted rehearing en banc, and ordered additional briefing that would have commenced in the coming weeks.









USPTO カウントシステム改良 アップデート

現役審査官による分析です。(Just a patent examiner)
-- Docket Management
RCEs will now be placed on an examiner's Special New docket, instead of their Amended docket as before.

The requirement that examiners work on their oldest cases first has always been there. The problem is that its enforcement has always been very arbitrary. Some TCs or art units are required to adhere to the rule, while others never have. Enforcing this requirement across the entire Office should ensure that tough applications are not put off.

The new RCE docketing procedure, I think, may well have a very significant impact on the prosecution of applications by attorneys.

Currently, an RCE will be placed on an examiner's Amended docket, requiring them to take action within 2 months.

The new provision treats RCE just like any other continuation or divisional application, placing them on the examiner's Special New docket. This means that there is no fixed deadline for preparing the next action. They will be, of course, subject to the requirement that the oldest new application be worked on every 2 bi-weeks, but that only requires the examiner to do one case from their Special New docket each month. For examiners with large dockets, those RCEs could definitely back up on their Special New docket.

For instance, I averaged about 5 RCEs filed in each quarter last FY. Under the new rules, I'm only required to work on 3 per quarter. You see where I'm going here; this provision could serve as a big disincentive to filing RCEs, because you're going to have to wait longer for your RCE to be examined (although with the backlog at the BPAI, appeal might be an even less attractive alternative).

The provision will certainly serve to address first action pendency, because it will reduce the number of applications on an examiner's Amended docket, thereby giving them more time to work on new applications. It's possible that some examiners may continue to work on their RCEs as they come in, since they're still getting counts for the first action (as they would for any continuation or divisional). The point is, they are no longer required to send out that first action after RCE within 2 months.




(USPTO Press release), (Proposal)

USPTO Joint Labor-Management Task Force Proposes Significant Changes to Examiner Count System

WASHINGTON —Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos has unveiled a series of proposals to bring significant change to the examiner “count system” – the methodology for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination. The proposal was developed by a task force comprised of senior managers in the Patents organization and leadership of the Patent Office Professional Association (POPA), the union that represents patent examiners.


(Juat a patent examiner) (PatentlyO)



The count system serves multiple purposes. In an ideal world (yes, I am well aware that this one is far from ideal), it would encourage compact prosecution, in that examiners do not receive any credit for 2nd actions which are non-final (or any subsequent actions). It also serves as a guide for the amount of work an examiner has to do. Each examiner is required, on a per fiscal-quarter basis, to produce a number of counts. The goal varies depending on technology. In theory, simpler technologies require less time to search and write up (fewer 112 issues, for example). Additionally, the goal depends on an examiner's rank. GS-14 (primary examiners, with full signatory authority) are required to produce 35% more than a GS-12 (someone with a PhD who has been at the office a year, for example).
As an examiner, the count system is useful to me because I am acutely aware of how much work I need to do in order to keep my job (several consecutive quarters of not meeting your goal can lead to firing) and how much more I need to push myself in order to receive a bonus. Furthermore, the count system does force us to work on new cases, albeit probably not as many as applicants would like. I can look at my amended docket (cases due in the next 2 months) and see how many first actions I have coming up, and how many are allowable (or might be close, i.e. if attorney is willing to take what I consider to be allowable subject matter as opposed to argue for broader scope) and look at my list of rejected cases and try to guess which cases will go abandoned. Knowing that, I know how many new cases I have to work on.

Every round of examination is allotted two counts: a "new" count, and a "disposal" count. A request for RCE ends the current round, and begins the next round. An examiner gets a "new" count when he or she does a first non-final office action (per round) or a first-action allowance. An examiner gets a "disposal" count for an allowance, abandonment, examiner's answer, an RCE request, and I think a couple of other relatively rare things. An examiner gets no counts for finals, 2nd or subsequent non-finals (per round), advisory actions, or other tasks (312s, misc. communications, etc.).
If the sequence of the case is NF, FINAL, ADV, RCE, NF, FINAL, ALLOW, the examiner gets a "new" count for each of the two NFs, and gets a "disposal" for each of the RCE request and the allowance. The examiner gets no counts for any of the other actions. If the case sequence is NF, 2ND NF, FINAL, ADV, ALLOW, the examiner got counts for the first NF and the allowance. For a first action allowance, the examiner gets both a "new" and a "disposal" count, so the examiner gets 2 counts. This also holds true after RCE. That is, for the sequence NF, FINAL, RCE, ALLOW, the examiner got a new count for the NF, a disposal for the RCE, and both new and disposal counts for the allowance.
Based on the art unit and the examiner's GS level (GS-12 is the middle examining level; most examiners start at GS-7, GS-13 is partial signatory authority, GS-14 is a primary, and GS-15 is a SPE), each examiner has to do a certain number of counts each bi-week. The number of counts is based on the GS-12 expectancy, which is different for each art unit. If a GS-12 in a particular art unit is expected to complete a round of examination in 25 hours, then a GS-12 in that art unit is expected to turn in a count for every 12.5 hours that they work. Requirements for examiners at other grade levels are determined by multiplying that by particular factors (for example if a GS-12 has to do a count every 12.5 hours, then a GS-7 in that art unit has to do a count every approximately 18 hours).


中国 特許全文テキスト入手法 アップデート

一方、発明通信社のHypat-i 中国検索が11月から正式サービス開始とのアナウンスがありましたのでこちらの契約を考慮中です。
過去記事に埋もれさせておくのはもったいないので記事をアップデートいたします。しばらく前にCNIPRで中国特許のテキストをダウンロードしようとしたところ、メニューからテキスト表示ボタン([代码化] )が消えていました。有料メニューへ変更してしまったのかとあきらめていたのですが、以下の赤壁さんのコメントを見てCNIPRに再チャレンジしました。
[代码化] のボタンは表示されるようになっており、テキスト表示できそうな雰囲気です。ただ、残念ながら、このボタンを押しても、反応がめちゃくちゃ遅いせいなのか、テキストが表示されるまでには至っていません。でも、画面が出てきますので調子の良いときにはテキストが表示されるだろうと期待しています。
  •     コメント引用
  • CNIPRの中文全文表示ですが、今日は有料部でも無料部でも表示可になっていました。
  • 9/8にJPDS知財寺子屋でお話した頃には、無料部で 「全文表示」のボタンを押すと「ログインが必要です」的なメッセージが出てきて、ID、パスワードを入力すると表示されるという現象があり、昨日はこれま で表示が可能だった出願の「全文表示」ボタンさえ消えていたのですが・・。
  • CNIPRはまだ不安定なDBなので、こういうことはよくあるようですが・・・
JPDSからダイレクトメールがあり注文していた書籍「ここがポイント! 中国特許調査」が今日手元に届きました。



定 価:1,500円(本体価格1,429円、消費税71円)送 料:300円



-- PatentLens OCR 00030000.txt
WO 2006/010331 PCT/CN2005/001135
本发明涉及移动通信技术领域,特别涉及一种无线自组织(Adhoc) 网络中,移动终端的通信方法。
5 发明背景在移动通信技术领域,常见的移动网络通常以蜂窝网络或无线局域网等形式出现。在蜂窝网络中,移动终端之间的通信必须借助于基站和/或移动交换机的转接未完成;在无线局域网中,移动终端需要通过元线接入点连接到现有的固定网络。与此同时,蓝牙(Bluetooth)、家庭元
10 线网(HomeRF)等移动通信新技术也纷纷涌现。上述这些移动通信网 络及移动通信技术是对固定有线网络的补充和发展,它们也需要固定基础设施的支持。但是,上述这些依赖于固定基础设施的移动通信技术并不能满足特殊环境或紧急情况的通信要求。例如,军队在战场上快速推进和部署过程中、发生地震等自然灾害时投索和救援过程中、以及野外
15 科考过程中等等,由于地理条件的限制,利用上述移动通信技术元法灵活并且快速地建立移动通信网络,实现通信。因此,为满足特殊的通信要求,迫切需要一种不依赖固定的基础设施就能够快速并且灵活配置的移动通信网络。


タイ PCT加盟

Thailand’s Deputy Minister of Commerce, Mr. Alondkorn Ponlaboot, on September 24, 2009 deposited his country’s instrument of accession to the Patent Cooperation Treaty (PCT) with WIPO Director General Francis Gurry. Thailand is the 142nd contracting state of this multilateral pact that facilitates the filing of patents in multiple countries. The treaty will enter into force for Thailand on December 24, 2009.



中国 特許法改正






Business people→技術部門 lawyers→知財部門


(Law Department Management)
  1. Business people seek closure; lawyers are perfectionists.

  2. Business people want simplicity; lawyers revel in complexity.

  3. Business people focus on opportunities; lawyers focus on risks.

  4. Business people are optimists; lawyers are cynics.

  5. Business people are proactive and set the agenda; lawyers are reactive and question it.

  6. Business people want certainty about the future; lawyers see only mists and possibilities.

  7. Business people care about emotions; lawyers, rationality and arguments.

  8. Business people build trust and confidence; lawyers subscribe to caveat emptor.

  9. Business people believe lawyers are boring; lawyers proudly confirm it.



(Claim Master)
LexisNexis Patent Optimizer®は売り切りじゃなくてとても高価ですが、このソフトはPatent Optimizer1月分の使用料でProバージョンを購入することができます。

欧州 CPAが身売り?



EPO 次期長官候補

候補者は4名です。(IP::JUR) (IAM Magazine) (Intellectual Property Watch)
  • Ms Susanne AS SIVBORG (Sweden), Director General of the Swedish Patent and Registration Office
    Susanne Sivborg lacks the senior national registry experience of her opponents. However, Sweden currently holds the EU presidency and Sivborg will be playing an active role as the Swedes seek to take forward discussions on the Community patent and the single patent jurisdiction. That will give her the chance to make a strong impression and to shake a lot of hands. Her strong industry background may also be attractive to those looking across the Atlantic to the recent appointment of David Kappos as Director of the USPTO.

  • Mr Benoît BATTISTELLI (France), Director General of the Institut National de la Propriété Industrielle
    The Battistelli candidature is an intriguing one, given that Pompidou is also French. Normally, you would not expect two nationals from the same country to hold a post such as this one within the space of three years. Battistelli, too, would realise this, but he is still standing - maybe he knows something we do not. There is no doubt that he is very well connected politically in France, which may help him.

  • Mr Roland GROSSENBACHER (Switzerland), Director of the Eidgenössisches Institut für Geistiges Eigentum
    Grossenbacher has been a player in Europe for quite a while now and was a powerful chairman of the Adminstrative Council for nine years. I have heard that his candidature is supported by the Germans, which, if true, probably counts for a lot. Against that, he is a divisive figure and he comes from a country that is not a member state of the European Union.

  • Mr Jesper KONGSTAD (Denmark), Director General of the Danish Patent and Trademark Office
    Kongstad also ticks a lot of boxes in that he has been a prominent figure in the Adminstrative Council and comes from a small country which is also a member state of the EU. After successive presidencies held by a German, French and British national, members of the European Patent Organisation may feel it is time to give the job to someone from outside Europe's big three.


米国 特許の権利消滅をいかに遅らせるか


Amgen Inc. v. F. Hoffman-La Roche Ltd. (Fed. Cir. 2009)
(PatentlyO) (271) (PatentDoc) (Patent Baristas) (Law.com)





Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. 2008)
「"continuation-in-part" was not merely semantic but had substantive repercussions regarding whether the '068 claims were entitled to the "safe harbor" provisions of 35 U.S.C. § 121」

Amgen Inc. v. F. Hoffman-La Roche Ltd. (Fed. Cir. 2009)

Amgenの3件の特許( US5,547,933, US5756,349, US5,955,422)は無効となり実質的な権利保護期間が約2.5年短くなるようです。(下表はPatentDocから引用)



U.S. Patent No. 4,864,492 issued to IBM for a “System and method for network configuration.”


Intellectual Ventures アップデート


The Empire Strikes Back, Intellectual Ventures Style (IPWatchdog)
Is Intellectual Ventures revving up its lawsuit machine? Will we know when it does? (The Prior Art)
IV plots a path to the courts (IAM Blog)
これまで自ら特許訴訟を起こすことなく、取引によってライセンス収入を得てきたIntellectual Ventures社が新しい戦術(名づけてキャッチ・アンド・リリース)を編み出したようです。
Intellectual Ventures Takes Indirect Route to Court


CAFC 拡大パネルによる審理

Martek Biosciences v. Nutrinova and Lonza (Fed. Cir. 2009)


Expanded Panel: It appears that the expanded panel was prompted in-part as a show dignitaries who were visiting the court. The court claimed authority under 28 U.S.C. 46(b) which indicates that the “Federal Circuit . . . may determine by rule the number of judges, not less than three who constitue a panel.” There is a problem with this authority. The statute calls for the court to create a “rule” for determining the number of judges. Rather than following a rule, however, the expanded panel here appears to be an ad-hoc creation.

CAFC Ruel 47.2(a) says that "Cases and controversies will be heard and determined by a panel consisting of an odd number of at least three judges, two of whom may be senior judges of the court." I suppose the rule allows for ad hoc determination of the size of the panel, but it *is* a rule.

The Martek case was argued on 4/21/2009 and was the first case of the day. In the mp3 for the audio of arguments, Judge Newman acknowledges the guests and then the argument gets started. No mention of why they went with 5 judges. The CAFC announcement page http://www.cafc.uscourts.gov/archive.htm indicates that April 20-21 was the 5th International Judges Conference on IP Law, and that "Conference attendees will have the opportunity to attend three oral arguments at the Federal Circuit on Tuesday morning, April 21st."

米国 トップ・プレアンブルリスト


1.6% A method
0.6% An apparatus
0.5% A semiconductor device
0.4% A system
0.4% A composition
0.2% An image forming apparatus
0.2% A device
0.1% A display device
0.1% A semiconductor memory device
0.1% A liquid crystal display device
0.1% A pharmaceutical composition


米国 類似特許検索システム


解説記事 (PatentBaristas)

“Our paradigm for search is based on the fundamental idea that search should be item-based not just text-based, and that a query based on items provides substantial advantages and additional information as compared to queries involving only keywords.”

方法特許 米国外における特許責任の制限

8月19日(水)、CAFC大法廷は、35 U.S.C. § 271(f) は方法クレームには適用しないと判示した。この判決は最高裁判所によるMicrosoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) 判決に従うものであり、先に物議をかもしたCAFCによるUnion Carbide v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005) (271(f) is directed to “every component of every form of invention” and that the statute is “not limited to physical machines.”) 判決を覆すものである。

An en banc ruling by the U.S. Court of Appeals for the Federal Circuit has narrowed the reach of U.S. patent laws covering companies' overseas sales and production.
The Wednesday decision in the closely watched Cardiac Pacemakers Inc. v. St. Jude Medical Inc. (Fed. Cir. 2009) determined that patents for methods or processes are not subject to patent infringement liability if the products are assembled and sold overseas. Patents for products, however, are not exempt.

In an en banc decision, the Federal Circuit has ruled that 35 U.S.C. § 271(f) "does not cover method claims." This decision overturns the controversial 2005 decision in Union Carbide v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005). The ruling was widely expected based on the Supreme Court's 2007 decision in Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) (holding that "master disks" were not a 271(f) "component" when abroad to be copied and then installed to form a would-be infringing system). In reading Microsoft v. AT&T, the Federal Circuit found "a clear message that the territorial limits of patents should not be lightly breached."

米国 特許事務所ランキング(特許付与数順)


1. Oblon Spivak - 2,853
2. Sughrue Mion - 2,145
3. Oliff & Berridge - 1,958
4. Birch Stewart Kolasch & Birch - 1,622
5. Fitzpatrick Cella - 1,518
6. Staas & Halsey - 1,516
7. McDermott Will & Emery - 1,208
8. Blakely Socoloff - 1,063
9. Harness Dickey & Pierce - 1,023
10. Finnegan Henderson - 916




An upcoming en banc rehearing before the U.S. Court of Appeals for the Federal Circuit has the potential to reverse a written description requirement for patents that the court imposed a dozen years ago. Owners of broadly written patents such as those covering life sciences innovations are watching closely. (Law.com)

Federal Circuit to consider whether a separate written description requirement exists in section 112 (File Wrapper)
Federal Circuit Grants En Banc Review in Ariad v. Lilly (PatentDoc)
Ariad v. Lilly: Federal Circuit Grants En Banc Request to Challenge Written Description Requirement (PatentlyO)

(1) Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter?
(2) Does the claim wholly embrace a judicially recognized exception, which includes abstract ideas, mental processes or substantially all practical uses (pre-emption) of a law of nature or a natural phenomenon, or is it a particular practical application of a judicial exception?

Interim Guidelines on Examining Statutory Subject Matter (PatentlyO)
USPTO Publishes Interim Guidelines for Subject Matter Eligibility (271)
USPTO has “Issued” Interim Examination Instructions For “Evaluating” Subject Matter Eligibility (PatentBaristas)

Director Kappos: "Patent quality equals granting those claims the applicant is entitled to under our laws." (PatentlyO)
USPTO Director's Blog (just a patent examiner)



The 54-year-old former leader of Heller Ehrman was building from the ground up at Dechert, this time with a track record that included the dissolution of his previous firm during his tenure as its chairman. "I'm trying to communicate to the world that I'm back in practice and that this is what I'm good at," Larrabee said. "It's still a work in progress."
Lateral movement among attorneys in general has become increasingly common. During the past five years, the number of partners moving from one top firm to another has increased by 14 percent. In 2008, attorneys at Am Law 200 firms made 2,509 moves, according to The American Lawyer, an affiliate of The National Law Journal that tracks partner moves at the nation's most profitable firms. In 2003, lateral moves totaled 2,199.


雑談 ラップトップと喫茶店

A sign at Naidre's, a small neighborhood coffee shop in Brooklyn, N.Y., begins warmly: "Dear customers, we are absolutely thrilled that you like us so much that you want to spend the day..."

But, it continues, "...people gotta eat, and to eat they gotta sit." At Naidre's in Park Slope and its second location in nearby Carroll Gardens, Wi-Fi is free. But since the spring of 2008, no laptops have been allowed between 11 a.m. and 2 p.m. weekdays and 10 a.m. and 3 p.m. weekends, unless the customer is eating and typing at the same time.


米国 不衡平行為の立証

Exergen Corp. v. Wal-Mart Stores Inc.Fed.Cir. 2009)
A recent U.S. Court of Appeals for the Federal Circuit decision puts the patent bar on notice that vague claims of another lawyer's intent to mislead or withhold data from the U.S. Patent and Trademark Office will no longer fly.

On the inequitable conduct issue, the district court found that SAAT's pleading failed to allege inequitable conduct "with particularity" under Rule 9(b). The pleading, which alleged inequitable conduct over 7 paragraphs, cited specific documents that "Exergen failed to cite", along with examples of "arguments made to the PTO were contradicted by statements from Exergen’s own website."
the CAFC agreed with the district court that the allegations were deficient with respect to both the particularity of the facts alleged and the reasonableness of the inference of scienter.

(Patent Baristas)
Exergen sued Wal-Mart, CVS, and several thermometer makers (including SAAT) for infringement of three patents covering infrared detecting thermometers. The U.S. Court of Appeals for the Federal Circuit ruled that one of the patents was invalid because it is inherently anticipated, and the other two were not infringed.


2009年 特許出願数低調傾向


JPO, 出願数 6%低下(2008年10月-2009年3月)
EPO, 出願数 8%低下(2009年初から最近まで), 新審査官の採用凍結
Korea, 出願数 9% 低下(2009年第1四半期)
France, 出願数 5%低下
UK, Australia and Denmark 特許庁職員レイオフ
China, 出願数12%増加,国内からの出願は23%増加(2009年1月-6月)

PCT, 出願数5% 低下(米国からの出願数は14%低下, 中国からの出願数は19%増加)




Twitter Sued on Patent Infringement Allegations
Miriam Rozen Texas Lawyer
August 7, 2009


米国 ミーンズ・プラス・ファンクションクレーム

Blackboard v. Desire2Learn (Fed. Cir. 2009)
The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users' predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the "corresponding structure" to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.


中国 シュナイダー訴訟和解 アップデート

早报讯 从昨天上午双方拿到调解书开始15天内,施耐德公司如果不支付正泰股份公司1.575亿元人民币,那么正泰公司可申请法院执行一审判决,施耐德公司的赔偿数额将是近3.35亿元。
シュナイダーは157.5百万元 ($23.05 million)支払うとのことで、これは当初命じられた損害賠償金額の約半額とのことです。
BEIJING, April 15 (Reuters) - France's Schneider Electric (SCHN.PA) has agreed to settle a three-year patent lawsuit brought by a Chinese rival by paying 157.5 million yuan ($23.05 million), or about half the originally awarded damages.
中国 特許損害賠償額の高額化

 サムソン(韓国企業):50ミリオン元(携帯電話 特許侵害)



China's IP Crackdown
Anthony Lin
The American Lawyer
January 22, 2009
Last month, Samsung Corp. was ordered by a Zhejiang court to pay 50 million yuan ($7.3 million) for infringing local company Holley Communication's cell phone technology patent. Earlier in 2008 another Zhejiang court ordered well-known Hong Kong clothing chain G2000 to pay 20 million yuan ($2.9 million) for violating a local entrepreneur's "2000" trademark. In 2007 brewer Zhejiang Lanye won a 3 million yuan ($439,000) judgment against Pepsi over the latter's use of the phrase "blue storm" in a marketing campaign.
But the former diplomat says there are countervailing forces at work too. He notes that the small number of IP disputes in China between foreign and local companies is now dwarfed by the burgeoning docket of cases in which Chinese companies sue each other for infringement. The most successful and innovative Chinese companies increasingly feel themselves persecuted by the holders of "junk patents," says Cohen.
"China can't create an innovative economy that way," he says...(more)


Emailer 10の習慣

Great e-mailers are made not born. It will take some time and effort, but the rewards are immeasurable. Adopt these ten habits and you will become a highly effective e-mailer.

EPO 次期長官に4人が立候補


米国 PTA

この根拠となったのはWyeth v. Dudas ですが、あらたにPCT出願(JT:日本たばこの出願)にからんでPTAの問題が発生したとのことです。
Are You Getting All The Patent Term You Should? Maybe Not.








The mutual disdain between Microsoft Corp. and Linux, an open-source computer operating system, is unrivaled.
But new rules for software contracts put out by The American Law Institute have united the enemies as part of a growing protest of tech companies and their lawyers. The most controversial of the guidelines is that software vendors must guarantee buyers that there are no hidden flaws in the software.


米国 審査官面接の効果

Often, a face-to-face discussion can help two parties resolve a sticky dispute. In patent prosecution, the patent applicant can request to sit down interview with an examiner to discuss the examiner's rejections. See 37 CFR 1.133. The interview can be face-to-face or via telephone or even video conference. Law firms located across the street from the PTO tend to tout the value of examiner interviews while those outside of DC tend to downplay their significance.

米国 各州のIP情報

情報を知りたい州のマップをクリックし、右側のウインドウの下部にある、Click here to learn more部をクリックすると、データシートが開きます。
From innovative “Faces of IP” to important statistics, the GIPC’s map of the United States features important information that will help make the case that IP matters in all corners of the country. This map is intended to be a resource for both policymakers and the public in identifying and promoting American companies, inventions, creative artists, and innovative companies that are important to all 50 states.



Amazon Erases Orwell Books From Kindle



攻守交代 中国と特許システム

Changzhou Asian Endergonic Electronic Technology Co., based in Changzhou, China, claims the retailers are infringing its patent on a design for the dashboard mounts by selling products made by a competitor. It wants cash and a court order to prevent further use of the design. The patent was issued in March.


攻守交代 アマゾン1クリック特許 

Ten years ago, Amazon.com riled the tech world when it sued Barnes & Noble with a patent on "1-click" buying.

Now, Amazon is defending itself against Cordance Corp., a company that claims it filed for its patent on 1-click ordering before Amazon's application. The case, filed in 2006, is set for trial on Aug. 3 in Delaware -- and Fenwick & West's Lynn Pasahow, the Palo Alto, Calif.-based lawyer who worked to enforce Amazon's 1-click patent, will now play defense for the online bookseller.


欧州 レジスタープラスの進化


Register Plus is moving!

Dear Register Plus user,
On 22 July 2009, Register Plus will be moving to its new home at https://register.epoline.org
Part of our efforts to improve our services to users, the move from the EPO Online Services portal will enable you to access Register Plus in a secure environment without having to log in.
As an added advantage, document titles will be available in your chosen browser language (English, French or German).
In a second step at the end of August this year, a number of further enhancements will be introduced:

- a Register Plus home page containing all the latest information, including scheduled maintenance announcements, help files, FAQs, information on INPADOC services updates, and lots more
- some new data fields
- the possibility to search in document titles
- highlighting of search criteria in the results list
- CQL-based single-line search box

Please make sure that you update all your bookmarks, favourites and links to Register Plus.
If you have any comments or suggestions for future improvements, please do not hesitate to contact us. We look forward to hearing from you.
Kind regards,

Nigel Clarke and Lisa McDonald-Maier

Online Products and User Support | Dir. 5.5.3

European Patent Office
Rennweg 12 | 1030 Vienna | Austria

Black Berry Storm じゃなくてBlack Borry 旋風

Black Berryで有名なRIMがVISIOに $267.5 million支払うことで知財訴訟が和解に終ったというニュースが沢山飛び交っていますが、それはおいといて、やっぱり中国の商魂はたくましいですね。
Black Berryファンで有名なオバマ大統領を宣伝に担ぎ出しました。たぶん(もちろん)大統領の承諾はなしですよね。
BlockBerry旋风 9500

英国 知財関連収入へは二重課税

McDonald's to move European head office to Switzerland
US fast-food chain will relocate to Geneva to take advantage of Swiss intellectual property tax laws
Under the new UK tax rules, the earnings companies receive from their overseas subsidiaries relating to "real" economic activity involving trade in goods and services will not be taxed by the UK authorities. But income derived from intellectual property rights does not fall into this category and will be taxed by HM Revenue & Customs, even if it has already been taxed overseas.

RPX参加企業増加中 アップデート

HP, NOKIA, そしてSONYもRPX同盟に加盟したそうです。
Eleven Technology Companies Join RPX in First Five Months(LINK)
IBM, Cisco, and Seiko-Epson are today joined by, Panasonic, Philips, LG Electronics, Samsung, and TiVo that have signed on with RPX to reduce patent assertion and litigation costs initiated by non-practicing entities (NPEs)

以下の記事がPhilip Brooks' Patent Infringement Updatesで紹介されています。

RPX Corporation(1)(2)

Epson Joins RPX Defensive Patent Aggregation Service
The following RPX press release will issue on Wednesday, January 28, 2009:
Epson Joins RPX Defensive Patent Aggregation Service

Digital Imaging Giant First RPX Member from Japan
TOKYO – January 28, 2008 -

RPX Corporation, a defensive patent aggregator, today announced that Epson has joined the RPX Defensive Patent Aggregation service...(more)



Sue CityJohn P. Avlon, 07.14.09, 01:00 PM EDT
The Big Apple's half-billion-dollar tort tax dwarfs that of other cities.

The city's $568 million outlay in fiscal year 2008 was more than double what it spent 15 years ago and 20 times what it paid in 1977. New York now allocates more taxpayer dollars to settling personal-injury lawsuits than it does to parks, transportation, homeless services or the City University system. As the city seeks ways to save money during the financial crisis, it should focus on reforming the warped system that makes such unreasonable and unproductive expenditures possible.
Suing the city is big business.




日米特許を検索、解析できる統合的特許検索・解析サービスPatent Integrationを一般公開
 Team Patent Integrationは、日米1300万件の特許情報を検索し、テキストマイニング技術を用いて可視化された特許集合を俯瞰したり、高度なパテントマップを簡単に作成できるAdobe AIR上で動作するマルチプラットフォームアプリケーションサービスPatent Integration (http://www.patent-i.com/)を試験的に一般公開いたします。
 Patent Integrationは基本的な特許検索エンジンとしての検索機能に加え、従来の特許検索データベースでは提供されていなかった特許業務を強力にサポートする下記の機能を備えています。・可視化機能:特許文献を文書類似度に基づき可視化することにより、技術を俯瞰しながら読み進めることができます。この機能は、ユーザの検索母集団に対する大局的な理解を促すとともに検索ノイズ除去に役立ちます。検索作業、技術動向調査の効率を加速させることができます。・パテントマップ機能:数百件~数百万件までのあらゆる階層の検索母集団について出願人や特許分類に基づき様々なパテントマップを簡単に作成することができます。・閲読支援機能:複数の特許文献をタブで切り替えながら読み比べることができます。また、特許文献中のキーワード分布を可視化・ハイライト表示することにより、特許明細書の読解作業を支援します。

Team Patent Integration
代表 山下 佳之 Yamashita Yoshiyuki

Tafas v. Doll 大法廷開催

CAFCはTafas v. Doll大法廷開催を決定したとのことです。
  • August 5: Appellants' additional briefs due
  • August 25: Appellee's additional brief due
  • September 1: Reply briefs due

(Order), (LINK), (LINK)



“The contents of this email are intended for the aforementioned recipient and are confidential.”

Confidential Email Disclaimers: Are They Effective?



The New World Institute's Career Change Assessment is designed to identify which areas of your career and life are working out well for you

Clifford Chance

Clifford Chance has told WTR that it is reviewing the future of its IP practice. But the firm has denied widespread rumours that it is considering abandoning intellectual property as a work area.



Lost property: The European patent system and why it doesn't work
by Bruno van Pottelsberghe

1. Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. .3
2. The ‘European patent system’: a little local difficulty . . . .7
2.1 Prohibitive cost . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9
2.2 High legal uncertainty . . . . . . . . . . . . . . . . . . . . . . . . . . . .13
2.3 Inconsistent patent quality . . . . . . . . . . . . . . . . . . . . . . .17
3. Global patent warming . . . . . . . . . . . . . . . . . . . . . . . . . . .. .20
3.1 The patent bubble . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. .21
3.2 Two worrying consequences . . . . . . . . . . . . . . . . . . . . .. .25
3.3 Are policymakers to blame? . . . . . . . . . . . . . . . . . . . . . . .31
3.4 US patent dumping . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .38
4. Conclusions and policy recommendations . . . . . . . . . . . . .42
4.1 Build Europe . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .43
4.2 A Global Patent Standard . . . . . . . . . . . . . . . . . . . . . . . . .47


トヨタ ハイブリッド特許ポートフォリオ

The Obama administration's tough new fuel-efficiency standards could pose problems for some car makers, but Toyota Motor Corp. is hoping to benefit.

Since it started developing the gas-electric Prius more than a decade ago, Toyota has kept its attorneys just as busy as its engineers, meticulously filing for patents on more than 2,000 systems and components for its best-selling hybrid. Its third-generation Prius, which hit showrooms in May, accounts for about half of those patents alone.
Toyota's goal: to make it difficult for other auto makers to develop their own hybrids without seeking licensing from Toyota, as Ford Motor Co. already did to make its Escape hybrid and Nissan Motor Co. has for its Altima hybrid.