LAW UPDATE:
New USPTO Rules on Claims and Continuations to Take Effect Nov 1^st
New final rules published by the United States Patent & Trademark Office (USPTO) are scheduled to go into effect on November 1, 2007. Intended to make the patent process more "effective and efficient," the new rules have already been met with significant controversy, prompting two lawsuits (so far) against the USPTO.

Full text of the new rules was published in the Federal Register on August 21, 2007 (72 Fed. Reg. 46716-46843).

In summary:
• 5/25 Limitation on Claims: Applicants will be restricted to five independent claims and twenty-five total claims for each invention, unless a detailed Examination Support Document (ESD) is filed.
• 2 Continuation Applications and 1 RCE: Applicants will be limited to two continuation applications (including continuation-in-part applications) and one request for continued examination as a matter of right, absent circumstances that warrant a special exception.
• "Related applications" must be disclosed: Applicants must identify all non-provisional applications and patents with a common owner, filed, or having a priority date, within a specified time period.
• Effect on applications in process: Although the new rules take effect November 1, 2007, they will not only impact new applications filed after November 1st, but in certain regards will also apply to pending applications filed prior to November 1st. In other words, applicants cannot work around the new rules by hurrying to file new applications prior to November 1.

According to Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, "Patent quality is the shared responsibility of applicants and the USPTO. Higher quality applications result in a more effective examination. These rules better focus examination and will bring closure to the examination process more quickly, while ensuring quality and maintaining the right balance between flexibility for applicants and the rights of the public."

However, opponents argue that the new rules only add complexity and difficulty for patent applicants. Indeed, apparently it requires 129 pages in the Federal Register to detail the new rules, 63 pages of Frequently Asked Questions, 16 pages to explain guidelines for filing Examination Support Documents, and additional clarifications of the transitional provisions relating to continuing applications and applications containing patentably indistinct claims.

Moreover, two lawsuits filed against the USPTO and Dudas, in his capacity as Director of the USPTO, request that the court enjoin the USPTO from implementing the new rules, alleging that the rules will cause harm, are contrary to established patent law, and that the USPTO lacks authority to implement such rules.

One lawsuit was filed on August 22, 2007 by Triantafyllos Tafas, an individual inventor, and the other on October 9, 2007 by GlaxoSmithKline. Both suits are pending in the U.S. District Court for the Eastern District of Virginia.

Bottom line: If you are an inventor with a pending patent application that has not received a first office action, or you plan to file an application in the near term, it would be highly advisable to consult with your patent attorney on the likely effect of the new rules on your patent application strategy. It was recently posted on Dennis Crouch's Patently-O Blog that the PTO has already begun its 'identification process' to flag unexamined patent applications with either more than 25 claims or more than 5 independent claims, and that these cases have reportedly been pulled from examiner's dockets.

LAW UPDATE:
USPTO Publishes post-KSR Examination Guidelines
for Determining Obviousness
The USPTO announced on October 10, 2007 that it has published Examination Guidelines to help USPTO examiners make appropriate decisions regarding the obviousness of claimed inventions in light of the Supreme Court's decision in KSR International Co. v. Teleflex Inc.

The Guidelines stress that the factual inquiries (known as the 'Graham Factors') announced by the Supreme Court in its 1966 decision in Graham v. John Deere Co. remain the basis for every decision regarding obviousness, and that examiners may, but are not required to, continue applying the Federal Circuit's 'Teaching, Motivation, and Suggestion' (TSM) test in evaluating prior art for an obviousness rejection.

Click here for full text of the new Examination Guidelines.

Are you a student planning a career in patent, copyright, or trademark law, technology transfer, intellectual property litigation, computer law, cybersecurity, or any other area of technology law? Or just interested in learning about possible career opportunities in one of these fast-growing fields? Then JOIN US for a special program not to be missed.

Careers in Intellectual Property and Technology Law
Thursday, November 1st @ 4:00 p.m.
Dean Alexander Moot Courtroom
Albany Law School
This exciting event, which is co-sponsored by the Albany Law School Science and Technology Law Center, Office of Alumni Affairs, and Career Center, will feature a panel of Albany Law School alumni who will share advice and tips for students based on their own professional experiences and successful career progression in IP and Technology Law. Panelists will include:

MARC D. SCHECHTER '78
Marc Schechter is Senior Group IP Law Counsel, IBM Americas Sales & Distribution, IBM Canada, IBM Latin America. Before his current assignment, Marc held various intellectual property law positions throughout IBM. Prior to joining IBM, Marc worked in the in-house intellectual property law department of Philips Electronics, and the Albany, NY law firm of Heslin, Irwin & Neiman (now Heslin Rothenberg Farley & Mesiti). He is past Chairman of the Copyright Committee of the New York Intellectual Property Law Association. Marc received his B.S. in Physics from Rensselaer Polytechnic Institute, an M.B.A. from Pace University and his J.D. from Albany Law School.

GAIL M. NORRIS '83
Gail Norris is Director for the Office of Technology Transfer at the University of Rochester. As Director, she provides leadership in developing strategies for the licensing and commercialization of Intellectual Property developed at the University, fostering corporate collaborations and assisting in the establishment of start-up companies which use technology developed at the University. Previously, Gail was a partner at the law firm of Nixon Peabody specializing in corporate law, and later the General Counsel for the US operations of Celltech Pharmaceuticals. Gail received her B.S. in Management from Syracuse University and her J.D. from Albany Law School.

STEPHEN V. TREGLIA '79
Stephen Treglia has been a prosecutor for over 26 years and is presently Chief of the Technology Crime Unit of the Nassau County (NY) District Attorney's Office (NCDA). The Unit was created in 1997 and handles most of the high technology-related cases investigated and prosecuted by the NCDA. Stephen writes a bi-monthly column on computer crime for the New York Law Journal and is one of the original members of the New York State DA Association's (NYSDAA) Subcommittee on Computers and Technology, which provides legislative recommendations to the Governor's Office and State Legislature. Stephen received his B.A. in Political Science from the State University of New York at Buffalo and his J.D. from Albany Law School.

HEATHER M. HAGE '06
Heather Hage is the Intellectual Property Manager for the Office of Technology Transfer at the Research Foundation (RF) of the State University of New York. She first joined the RF as an intern in 2004 while she was a student at Albany Law School. Heather has experience in media relations and finance, and was a Junior Analyst in the Media and Telecommunications Division of BNP Paribas, an investment bank headquartered in Paris, France. Heather received her bachelor's degree in psychology and government from Hamilton College and her J.D. from Albany Law School.

STEPHEN B. (BRAD) SALAI '74
Brad Salai is a partner at the law firm of Harter Secrest & Emery and has practiced as a patent, trademark, and copyright attorney for more than 30 years. He initially served as a patent attorney for General Electric Company in the Research and Development Laboratory and in the Semiconductor Products Department. He has experience in addressing all phases of intellectual property law for a broad spectrum of industries ranging from ultrashort-pulse laser machinery to electrical manufacturing. Brad received his B.S.E.E. from Rensselaer Polytechnic Institute and his J.D. from Albany Law School.

IRENE A. LIPPA '06
Irene is an associate at the law firm of Schmeiser, Olsen & Watts and practices in the field of patent law, particularly in the area of patent prosecution. She prepares and prosecutes patent application for inventions in technical fields including biomedical engineering, chemistry, chemical engineering, environmental engineering, medical devices, business methods, mechanical devices, and electromechanical devices. Irene received her B.S. in Chemical Engineering from the University of Rochester and her J.D. from Albany Law School.

TODD M. FRIEDMAN '98
Todd Friedman is a partner in the law firm of Kirkland & Ellis. Mr. Friedman focuses his practice on intellectual property litigation and client counseling, representing high-technology clients such as Lucent Technologies, Agere Systems, Infineon Technologies, Samsung, Xerox and Apple Computer. He has litigated and counseled on patent matters related to a broad array of technologies and has worked on a variety of trade secret, trademark, copyright, and unfair competition cases. Todd received his B.E. in Electrical Engineering from the State University of New York, Maritime College and his J.D. from Albany Law School of Union University.

For more information about this event, please contact Annette Kahler, Director of the Albany Law School Science and Technology Law Center, at 518-445-3355 or user@example.com.

On September 28, 2007, the Science & Technology Law Center (STLC), together with the Rensselaer Incubator, hosted Patenting for Entrepreneurs at the RPI Heffner Alumni House in Troy, NY.

Attended by more than 75 area entrepreneurs, representatives from start-up companies, students, and others from the community, the program was hosted by Annette Kahler, the Director of the Albany Law School STLC, and featured a panel of experts: Arlen Olsen, Managing Partner of Schmeiser, Olsen & Watts LLP; Katherine Sheehan, former Senior Counsel at Philips Medical Systems and currently a consultant working with small companies on growth strategies; and John Boger, a patent attorney and associate with Heslin, Rothenberg, Farley & Mesiti P.C.

During the two-hour program, Annette Kahler presented an overview of the patenting process in the U.S. along with 10 (Patent) Tips for Entrepreneurs (summary provided below). Attendees then had an opportunity to review and work through a number of real-life case patenting studies, which were then discussed by the panel, along with audience questions. The program concluded with the best of advice of the panel for entrepreneurs and start-up companies facing patent issues in their business.

The Patenting for Entrepreneurs program is part of a broader collaboration between Albany Law School and Rensselaer Polytechnic Institute that includes a Technology Transfer and Entrepreneurship Workshop Series co-sponsored by the Albany Law STLC and the Rensselaer Incubator. Details of our next (Spring) program will be announced soon.

10 (Patent) Tips for Entrepreneurs

1. Start Thinking About Patents Early.
   Patent systems in countries worldwide are designed to reward early activities and actions by inventors. [More…]



2. Keep Good Records.
   Keeping good records of the invention process can be important for several reasons. [More…]



3. Be Conscious of What You Keep Secret and What You Disclose.
   Entrepreneurs face competing priorities: some priorities favor early disclosure of information; some favor non-disclosure. [More…]



4. Understand the Interplay Between Global and Local.
   Although there is no such thing as a "worldwide" or "international" patent, activities outside the U.S. do matter to a U.S. inventor. [More…]



5. Plan for the Cost.
   There's no way around it: patents can be expensive to obtain, maintain, and enforce. To an entrepreneur or small start-up company, the cost can seem (and be) prohibitive. [More…]



6. If You File a Patent Application, You're Not Done, and Expect To Wait.
   Patent prosecution can take a long time. There are currently more than 1.1 million patent applications pending before the USPTO. [More…]



7. Consider Other Forms of IP Protection.
   Patents are one form of Intellectual Property (IP), not the only form of IP. Think about IP broadly and include: Trade secrets, Copyright and Trademarks. [More…]



8. Think About IP Strategically.
   Ideally, IP should be considered strategically and not as an after-the-fact, check-the-box exercise. [More…]



9. Knowledge is (Usually) a Good Thing.
   Knowledge can be a good thing, unless it's not. [More…]



10. Leverage the Experience of Experts.
    Work with a patent attorney or agent. [More…]

If you're an entrepreneur, the USPTO provides many important and helpful resources on its website, containing a wealth of information, that you should know about.
Check it out:

UNITED STATES PATENT AND TRADEMARK OFFICE:
• Inventor Resources
• Inventor's Assistance Center or call 1-800-PTO-9199
• Find a Patent Attorney/Agent
• Search Patents and Published Applications
• Guide to Filing Utility Patent Applications
• Provisional Applications
• Manual of Patent Examining Procedure
• PTO Fee Schedule
• Business Method Patents (Technology Center 3600)
• International Guidance (PCT)

Two other great resources:

• Google Patent Search
• Pat2Pdf for downloading PDF versions of patents

• MARC D. SCHECHTER '78
• GAIL M. NORRIS '83
• STEPHEN V. TREGLIA '79
• HEATHER M. HAGE '06
• STEPHEN B. (BRAD) SALAI '74
• IRENE A. LIPPA '06
• TODD M. FRIEDMAN '98