Patentology Soundbytes

"All the news (and views) that's fit to link!"  

In this issue...

>   Briefing underway in Microsoft v i4i

>   IBM and Samsung announce massive cross-licensing deal

>   USPTO issues new 35 USC 112 Guidelines

>   Federal Circuit issues its first ever inter partes reexam decision

>   'Collateralized loans' patent survives Bilski

Patentology Soundbytes - we trawl the Web, so you don't have to!

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Briefing of the Supreme Court of the United States in Microsoft v i4i is in full swing.  Microsoft has filed its brief, and now 25 amici curiae ('friends-of-the-court') have filed briefs, ostensibly either in support of Microsoft or supporting 'neither party'.  The case is important, because it will establish the burden of proof required to invalidate an issued patent, either as the Federal Circuit's current rule that 'clear-and-convincing evidence' is necessary, or some lower standard.

Read more about the briefs filed to date on the Patently-O blog.

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IBM and Samsung have announced a patent cross-license agreement, under which they will license their respective patent portfolios to each other.  The two companies are the most prolific patentees at the USPTO, and in 2010 alone they were issued a combined total of 10447 US patents, or a staggering four and three-quarter percent of all US patents issued last year!  Read more:

1. IBM media release
2. IAM Magazine blog
3. our earlier report on the top US patent recipients of 2010

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The USPTO has issued new Supplementary Guidelines to assist Examiners in determining compliance with 35 USC 112 (which covers clarity and definiteness of claims, written description, and so forth).

Gene Quinn over at the IPWatchdog blog seems pretty impressed with the guidelines, and suggests that they should be very useful for applicants.

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The United States Court of Appeals for the Federal Circuit issued its first ever decision in an inter partes reexamination on 24 January 2011.  Although no opinion was issued with the decision, The Reexamination Center notes that the case is interesting for the clarity it brings to the procedural aspects of appeals from inter partes reexamination in the USPTO.

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Meanwhile, in the Eastern District of Texas, a 'business method' patent owned by H&R Block, relating to 'collateralized loans', and having claims directed to 'a computerized system for distributing spending vehicles', has been found to comprise patentable subject matter under the Supreme Court's Bilski ruling, despite failing the so-called 'machine-or-transformation' test.

Read more on Pater Zura's 271 Patent Blog.

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Before You Go…

Thank you for reading this article to the end – I hope you enjoyed it, and found it useful.  Almost every article I post here takes a few hours of my time to research and write, and I have never felt the need to ask for anything in return.

But now – for the first, and perhaps only, time – I am asking for a favour.  If you are a patent attorney, examiner, or other professional who is experienced in reading and interpreting patent claims, I could really use your help with my PhD research.  My project involves applying artificial intelligence to analyse patent claim scope systematically, with the goal of better understanding how different legal and regulatory choices influence the boundaries of patent protection.  But I need data to train my models, and that is where you can potentially assist me.  If every qualified person who reads this request could spare just a couple of hours over the next few weeks, I could gather all the data I need.

The task itself is straightforward and web-based – I am asking participants to compare pairs of patent claims and evaluate their relative scope, using an online application that I have designed and implemented over the past few months.  No special knowledge is required beyond the ability to read and understand patent claims in technical fields with which you are familiar.  You might even find it to be fun!

There is more information on the project website, at claimscopeproject.net.  In particular, you can read:

1. a detailed description of the study, its goals and benefits; and
2. instructions for the use of the online claim comparison application.

Thank you for considering this request!

Mark Summerfield

Tags: News