Howson & Howson

In Falana v. Kent State University, No. 2011-1198 (Fed. Cir. Jan. 23, 2012), the US Court of Appeals for the Federal Circuit considered what activities rise to a contribution to conception that qualify one to be a joint inventor of a chemical compound.  While there were several factors involved in the decision, including a finding of inequitable conduct by defendants, the decision addresses the import of the development of a synthesis protocol on inventorship of a chemical genus.  

To summarize the facts, as a post-doctoral researcher at Kent State, Dr. Falana developed a synthesis protocol for making a novel class of naphthyl-substituted TADDOL (tetraaryl-1,3-dioxolan-4,5-dimethanol) compounds for use in LCDs (liquid crystal displays).  Among the compounds synthesized by Falana was Compound 7, which exhibited temperature independence over a range of -20 to +30 °C of the important high helical twisting power property.  This range of temperature independence represented significant progress, but was not sufficiently broad to meet the project goals.  Following Dr. Falana’s resignation from the research group, another member of the group then used Dr. Falana’s synthesis protocol to synthesize a compound that exhibited temperature independence over a range -20 to +70 °C, meeting the goals of the project.  Generic claim 1 did not expressly include a requirement for a temperature independence range of high helical twisting power.  Dr. Falana then filed in district court to be added as an inventor to the ’789 Patent.  The District Court found for Dr. Falana, ruling that he contributed to the conception of the claimed invention and was to be added as an inventor.  The defendants, Kent State and Seed, then appealed to the Federal Circuit.

One of the defendant’s arguments was that even if Dr. Falana had contributed to the synthesis protocol, he was not a joint inventor, because the claims were all directed to compounds and not methods, invoking the decision in Board of Trustees of Fla. State v. American Biosciences, 333 F.3d 1330, 67 USPQ2d 1252 (Fed. Cir. 2003).   However, in contrast to that case, the method used in this case to make the genus of compounds claimed in the subject patent was Dr. Falana’s synthetic protocol.  The Federal Circuit agreed with the conclusion of the District Court that Dr. Falana’s contribution to developing the synthetic protocol was greater than the exercise of ordinary skill in the art.

The Federal Circuit held that Falana contributed to the conception of a genus of chemical compounds because he envisioned the structure of a novel genus and contributed the method, not already within the scope of public knowledge, of making that genus.  On the basis of this conception test, the Federal Circuit affirmed the district court finding that Dr. Falana was an inventor of the ’789 Patent.

Recently, Congress made a significant change to the patent “marking” law (35 U.S.C. §287), which may be beneficial to some businesses.  Under US law, although it is not required to mark a product with a patent number, there are several benefits for doing so.  First, marking the item with the patent number, or the term “patent pending” may have deterrent value to a potential infringer.  Second, marking the product serves as notice to a potential infringer, allowing the patent owner to recover damages from the date infringement begins, rather than the date of “actual” notice in the form of a cease and desist letter.

Under the new law, it is permissible to “virtually mark” the product with an Internet address rather than the patent number itself.  As an example, a product covered by a patent could be marked: “This product is covered by one or more U.S. patents or patent applications. See http://www.[company].com/patents for details.”  The current patent and/or application number must then be included on a website which is accessible to the public for free.  Thus, in the event of an application maturing into a patent, or an additional patent issuing, the packaging would not need to be change.  Rather, only the notation on the website would need to be timely updated. 

One caveat to the above is that the penalties for mis-marking can be significant.  Thus, whenever the product is altered in any way, a new product launched, or the patent status changed (application is abandoned, patent grants or patent expires), the patent marking must be re-assessed.  Further, because some products are the subject of method patents, rather than a patent to the product itself, careful attention must be paid to the language used.  It is advisable to seek the help of competent patent counsel in these matters.

Until now, there were very few options for expediting or accelerating examination of a patent application and some of the available processes were undesirable from a potential litigation standpoint due to the obligations relating to disclosure of prior art.  However, enactment of the America Invents Act provides a way to prioritize examination of any US utility or plant nonprovisional patent application.  US provisional patent applications, design patent applications, applications entering the national stage under 35 USC §371, reissue applications, and re-examination proceedings may not be prioritized at this time.  By prioritizing an application, the application will be considered “special” and will be placed on the Examiner’s special docket throughout prosecution.  The goal is to provide a Notice of Allowance or Final Office Action to the Applicant in 12 months.  

The US Patent and Trademark Office will only accept 10,000 or less applications for prioritized examination.  As of October 13, 2011, 254 applications for prioritized examination have been filed in FY2012.

The following are the requirements for requesting prioritized examination.  A Request for prioritized examination that is incomplete on the day of submission will be dismissed. 

• the utility patent application must be filed electronically via EFS-Web (plant patent applications must be filed in paper)
• a Certification and Request for Prioritized Examination must be filed – the USPTO provides form PTO/SB/424 for this purpose
• the application must be complete, i.e., an executed Oath/Declaration must be filed at the time of requesting prioritized examination
• the $4,800 prioritized examination fee must be paid
• any fees due at the time of filing the application, i.e., filing, search, examination, excess claim, excess size, processing, and publication fees, must be paid at that time
• no more than 4 independent and 30 total claims, with no multiple independent claims, may be filed with the application 

Prioritized examination will be discontinued on any application in which a Petition for Extension of Time, Notice of Appeal, Request for Suspension of Action, Interference, or Request for Continued Examination is filed or if the claims are amended to have more than 4 independent claims, 30 total claims, or to include multiple dependent language.  Further, the prioritized examination fee will not be refunded.

H.R. 1249 was signed by the President on September 16, 2011.

Legislative information may be found at http://www.senate.gov/legislative/LIS/roll_call_lists/vote_menu_112_1.htm

The USPTO’s page directed to implementation is found at http://www.uspto.gov/patents/init_events/aia_implementation.jsp

H.R. 1249 was passed by the US Senate by a vote of 89-9 on September 8, 2011.  The bill awaits signature by the President.

Legislative information may be found at http://www.senate.gov/legislative/LIS/roll_call_lists/vote_menu_112_1.htm

The USPTO’s page directed to implementation is found at http://www.uspto.gov/patents/init_events/aia_implementation.jsp

So your business has no interest in registering with the .XXX domain? Think again. There is a window in which you may register your trademark to prevent others from registering it on the .XXX domain.

.XXX (known as “dot triple-X”) is a sponsored top-level domain (sTLD) intended as a voluntary option for pornographic sites on the Internet. The Board of the International Corporation for Assigned Names and Numbers (ICANN), which governs the domain name system for the Internet, voted to approve the sTLD on March 18, 2011. It went into operation on April 15, 2011.

The launch of this .XXX domain comes with a unique opportunity for brand owners, i.e., a time period termed a Sunrise Period (Sunrise “B”) between September 7, 2011 and October 28, 2011, in which brand owners can file to BLOCK their registered marks from being registered with a .XXX domain name. Although this process comes at a cost ($225 per domain name for a 10-year period), it may be worthwhile to block the association of your mark with the .XXX domain. Following this Sunrise “B” Period, it will be necessary for trademark owners to go through a more cumbersome procedure (i.e., Uniform Domain-Name Dispute-Resolution Policy (often referred to as the “UDRP”)) should a cyber squatter attempt to register another’s marks with the .XXX domain.

As a corollary to the Sunrise “Blocking” Period, there are also phase-in periods for owners of registered marks in the adult industry which wish to register their mark in this new domain (Sunrise “A”); a “Landrush”, for nonbrand-owning businesses to register .XXX domain names; and a General Availability period, for anyone to register .XXX domain names on a first-come, first-served basis.

If you would like any assistance in evaluating the impact of this new domain on your business and marks, please contact our offices.

The following YouTubeTM video by ICM Registry provides an additional summary of these changes: http://www.youtube.com/watch?v=hIDKnDSaWqE&feature=player_embedded.

Sen. Harry Reid has filed for cloture on the motion to proceed with House Resolution 1249.  (passed by the House of Representatives on June 23, 2011).  The Senate will vote on cloture, limiting the time for debate on H.R. 1249, following its return to session on September 6.

An ultimate vote on H.R. 1249 is expected shortly thereafter.  Provisions of H.R. 1249 are anticipated to be effective ten to fifteen days following signature by the President.  The USPTO is actively preparing to implement the anticipated legislation, and has posted a page dedicated to this process linked HERE.