It’s On Again – the ABA Journal Blawg 100

Each year, the ABA Journal (‘Law News Now’) produces an annual list of the 100 best legal blogs (or ‘blawgs’).  The final list is determined by ABA Journal staff and, while it is not a ‘popularity contest’, they welcome input in the form of ‘friend-of-the-blawg briefs’, a.k.a. the Blawg 100 Amici.

The 6^th annual search is now on for the top 100 blawgs of 2012.  Now, we are not going to twist anybody’s arm, but if any readers would like to file a Blawg Amici brief on behalf of Patentology, submissions are due by 7 pm (US) ET on 7 September 2012.

More information, and the Blawg 100 Amici submission form, can be found on the ABA Journal web site.

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Tags: News, Patentology admin

Compulsory Licensing Inquiry – Issues Paper Released

As we have reported previously, the Australian Government has asked its Productivity Commission to conduct a nine-month inquiry into the compulsory licensing provisions in the Patents Act 1990 (see Australian Public Inquiry into the Compulsory Licensing of Patents).

As a first step in this inquiry, the Commission released an issues paper on 9 August 2012. The purpose of the issues paper is to clarify the scope of the inquiry, and to assist interested parties in preparing submissions to the Commission.  The paper covers a range of issues on which the Commission is seeking information and feedback.

The deadline for submissions is Friday, 28 September 2012.  Details of how to make a submission are provided in the issues paper, and on the Commission’s web site.

COMPULSORY LICENSING

As the issues paper points out, most countries have adopted mechanisms – including compulsory licensing – to enable, in limited circumstances, access to patented inventions without the permission of the patent holder.  The mechanisms are generally seen as a safeguard for exceptional cases in which the patent system may fail to provide the best outcome for the community as a whole.  Examples include the failure of a patent holder to exploit the patented invention so that it is made sufficiently available to the public, the need to satisfy important public health or security objectives, and cases in which a patent is used in an anticompetitive manner.

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Tags: Australia, Compulsory license, Economics, Innovation policy, Law reform

Bureaucratic Insanity or Rulemaking Error?

[Updated to explain how the Raising the Bar Act will address the problem described in this article.]

A couple of weeks ago we wrote about a surprising change in Australian Patent Office practice requiring a simple change of name of a patent holder to be advertised for opposition purposes (see IP Australia Changes Tack on Changing Names).  This week we have learned of a seemingly even more perplexing issue regarding amendments to the Register of Patents – namely that there are some circumstances in which it may be difficult, or even impossible, to correct an error in recorded details, other than by application to the Federal Court of Australia!

Specifically, we have become aware of a case in which the name of an inventor was misspelled on an international application filed under the Patent Cooperation Treaty (PCT) back in 2008.  When the application entered the national phase in Australia, the error was carried over into the Australian Patent Office records.  And when a patent was recently granted, the error was reproduced on the Patent certificate. 

The error in question has all the hallmarks of a simple typographical mistake.  The name of the inventor, e.g. ‘John Smith’ (not his real name, to avoid identifying the actual application), has been entered as ‘Jhon Smith’.  Throughout the entire application process, nobody involved noticed the mistake, which is perhaps unsurprising since all of the relevant records, going right back to the original PCT application, were consistent with one another.

Nonetheless, it ought to be a simple matter to correct such an error.  The fact is that, for whatever reason, the details recorded on the Register are incorrect.  This serves nobody’s interests.  However, in this case the Patent Office has refused to amend the Register unless it is provided with evidence, such as a declaration or affidavit of a person with knowledge of the facts, as to how and when the error occurred.

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Tags: Australia, Error correction, Patent Office, Register of Patents

The US ‘Anti-Troll’ SHIELD Act – A Waste of Legislative Effort?

In 1 August 2012 a new bill was introduced into the US House of Representatives with the stated intention of curbing the activities of ‘patent trolls’.

In a fabulous example of acronym contrivance (which perhaps took longer to devise than the content of the the proposed legislation itself) the bill is named the Saving High-Tech Innovators from Egregious Legal Disputes (SHIELD) Act.

The SHIELD Act has caused a flurry of excitement amongst the anti-software-patent lobby, not least because it supposedly has bipartisan support – having been co-sponsored by Rep Peter DeFazio (D-OR) and Rep Jason Chaffetz (R-UT) – and because it is explicitly targeted at curbing the enforcement of ‘dubious’ computer software and hardware patents.

The principle of the SHIELD Act is simple: it permits a court to award a full recovery of costs against an unsuccessful litigant asserting a ‘computer hardware or software patent’ in the event that the court determines that the patent holder ‘did not have a reasonable likelihood of succeeding’.

Even more excitement has been caused by the fact that the bill includes definitions of computer hardware and software patents, along with an express statement that nothing in the bill should be construed as amending or interpreting the categories of patent-eligible subject matter defined by 35 USC 101.  This means that Congress will neither endorse nor oppose the patenting of software should the bill be passed.  And while this would maintain the status quo, under which software is patentable in principle, this has not prevented some commentators from placing additional emphasis on the refusal to endorse.

In our view, however, the SHIELD Act is a complete waste of the Congress’ precious time.  While its co-sponsors’ hearts are doubtless in the right place – not to mention that it is playing well in the media, for now – its passage will achieve little of any consequence in terms of change, and may actually be harmful to the innovators and small technology startups it is intended to protect.

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Tags: Law reform, Legislation, Patents and society, Trolls, US

Patent Trolls: As American As Apple Pie?

Whether they are called patent trolls, non-practicing entities, patent assertion entities, invention capitalists, defensive patent accumulators or patent licensing organisations, one thing is for certain – the only place in the world you will find them roaming the courts is the United States of America.

While some commentators have suggested that it is only a matter of time before similar business models are deployed in other jurisdictions, we are not convinced that this is an inevitable – or even very likely – outcome.

We would suggest that there are features of the US patent system in particular, and its legal system in general, which together make it a uniquely profitable environment for patent assertion entities (PAEs – we will use this relatively neutral term throughout this article to avoid the need to distinguish between different business models).  Conversely, the systems in other countries are configured so that turning a profit purely on licensing and litigation is a decidedly marginal business proposition.

But before anybody starts to get too excited about the prospect of slaying the monster trolls with a few well-placed legal reforms in the US, we need to point out that many of the PAE-friendly features of the US system are exactly the same features which many believe have fostered a historical culture of innovation and entrepreneurial spirit among individual inventors and the small businesses that are the backbone of the US economy.  In other words, the very reforms which might actually make a difference to the prevalence or PAE’s would also shift the balance of the system against smaller innovators and in favour of big companies and multinationals.

The major features of the US patent and judicial systems which we see as contributing to the PAE ‘problem’ are discussed in greater detail below.

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Tags: Economics, Innovation policy, Patents and society, Trolls, US