The PTO will be hosting (along with Denver partners) the Women’s Entrepreneurship Symposium on March 20th and 21st. This event is one of several that USPTO will be hosting in the next few months to engage the Colorado region innovation community as we lead up to the opening of the Denver United States Patent and Trademark Office (USPTO) Satellite Office. Please tell your friends, neighbors, and everyone you know about the event. The symposium will focus on women entrepreneurs and the vital importance of intellectual property (IP) to the success of innovative businesses. In addition, it will provide attendees with a unique opportunity to learn specifically about the value of patents and trademarks, federal and local resources available to help entrepreneurs start or grow a business, strategies to leverage IP assets, driving business growth by leveraging business relationships, and include networking opportunities with experts in the IP and the small business growth and development fields, from both government and the private sector, which will help attendees gain insight into all facets of the business cycle.
Click HERE to register!
University of Colorado Law Review
Copyright Trolls and Presumptively Fair Use
By Brad Greenberg
February 18, 2014 at 5:15 PM
University of Colorado Law School Room 204
Mr. Greenberg published his article on copyright trolls in the Colorado Law Review, Volume 85. He will discuss the fair use doctrine as copyright law’s internal limitation on the enforcement-only business model.
Mr. Greenberg is an Intellectual Property Fellow at Columbia University’s Kernochan Center. His Scholarship focuses on laws that encourage, restrict, or regulate speech and technological development, with an emphasis on legal questions raised by disruptive innovation. He graduated from UCLA with a degree in communication studies and, after a five-year journalism career, from UCLA School of Law. During law school he served as Editor-in-Chief of the UCLA Entertainment Law Review and was a Copyright Society Paul Miller Scholar.
This event is eligible for one general CLE credit.
Law Review Alumni: $5
Non-Law review Alumni: $10
To Register: Click here
By Bernard Chao1
Most attorneys don’t spend a lot of time thinking about how to draft a proposed jury verdict form. However, a recent paper written by one of my students, Vanessa Otero, reminded me how important this document can be. A well thought out jury verdict form has the potential to prevent a lot of wasted time and effort on behalf of both the patentee and the defendant.
Otero’s paper entitled “How Much Is Really at Stake? Damages Statutes Collide in Multiple-IP Litigation” will be published in in the Journal of the Patent and Trademark Office Society. The paper uses the Apple v. Samsung litigation to discuss the complexities that arise in calculating damages when the defendant’s products are accused of infringing different types of intellectual property. As many us know by now, Samsung was found to infringe Apple’s utility patents, design patents, and trade dress. But despite all these theories, the verdict form was surprisingly simple with respect to damages. The jury was just asked to determine the total damages due for each infringing product. Otero’s paper argues that in the future, jury verdict forms should ask juries to allocate damages for each different type of infringement. This should help parties avoid retrying damages in the event that post-trial motions or appeals alter the verdict. It will also help judges determine whether to enhance or reduce damages awards. Although Otero does not suggest that a more detailed jury verdict would have prevented the second damages trial in Apple v. Samsung, she does argue that it would have avoided some of the post-trial disputes.
Of course most cases are not as complicated as the Apple v. Samsung litigation and don’t involve different types of intellectual property. But lawsuits involving multiple patents are fairly common. After thinking about Otero’s paper, I wondered what patent jury verdict forms look like in cases with multiple patents. I looked at a few such cases on Lex Machina, a database that crawls PACER for information on all district court patent cases, and contacted a few patent litigators I know. In this very small and unscientific sample, I found both verdict forms that did and did not ask the jury to break out damages on a per patent basis. Furthermore, based on my conversations, I got the impression that the litigators did not give a lot of thought to this particular detail of the verdict form. But perhaps they should.
My belief is that Otero’s insight makes sense for almost all cases that involve more than one patent. Let’s just take the easiest example. Assume the patentee prevailed at trial on two patents and was awarded $5,000,000. If the verdict is appealed and the Federal Circuit reverses on one of the patents and affirms on the other, the parties will be forced to retry damages. Presumably, there will no way for the courts to determine how much of the $5,000,000 should be attributed to the patent that was affirmed. Since there is no reason to believe that a second damages trial would favor either party, such a trial does no one any good. The parties could have avoided the additional expense by simply asking the jury to break out damages on a per patent basis.
Now there may well be countervailing interests. I know that many plaintiffs prefer simple jury verdict forms so that defendants can’t pick a part the verdict. But breaking out damages for each patent should not unduly open up a verdict to challenge. Asking the jury to break down damages on a per patent basis just may be one of those rare suggestions that saves everyone money!
1Assistant Professor the University of Denver Strum College of Law.
Restoration of Priority
What will Change on December 18, 2013
Carl Oppedahl — Partner in Oppedahl Patent Law Firm LLC
Tuesday, November 19, 2013; 12:00 PM Denver ChopHouse
A client comes to you on December 20, 2013. The client filed a US provisional patent application on December 17, 2012. Clearly the one-year period has come and gone! What should you tell them about their ability to file a PCT patent application that claims priority from the US provisional patent application? How does your answer change if the application to be filed is a US non-provisional patent application? How do your answers change if the would-be priority application filed December 17, 2012 was a foreign patent application instead of a US provisional patent application? (Hint: Everything you knew about this is wrong!) Extra credit if you can say why it might be smart to file the PCT patent application in the Receiving Office of the International Bureau of WIPO rather than at the USPTO.
Cost: $35 for IP Section Members, $45 for the general public, and CU/DU Law students are free. Includes a catered lunch. You can register for the lunch clicking HERE. RSVP by calling (303) 860-1115 ext. 727 or by emailing firstname.lastname@example.org before 5 PM on Thursday, November 14, 2013.
1 general CLE credit applied for.
Cancellations after Thursday, November 14, 2013 and no-shows will be billed for the cost of the program. Checks can be sent to the Colorado Bar Association, 1900 Grant St., Suite 900, Denver, CO 80203. Also, please call or e-mail your RSVP when sending a check. Checks should be made payable to the CBA. If leaving a message, please spell your name, specify that you are attending the Intellectual Property Section November Luncheon, leave your phone number, and specify if you would prefer a vegetarian lunch.
A Report form the Frontline of Privacy Wars
Paul Ohm, Associate Professor at the University of Colorado Law School
Thursday, October 10, 2013; 12:00 PM Denver ChopHouse
Please join Paul Ohm, Associate Professor at the University of Colorado Law School, in a discussion about the current state of privacy and privacy law. Professor Ohm spent the past year working in Washington, DC, as a Senior Policy Advisor for the Federal Trade Commission, and he will reflect in particular on how the FTC regards and administers its role in preserving consumer privacy. He will draw from controversies that flared in the past year, such as debates over the Child Online Privacy Protection Act, Do Not Track, Data Security, and mobile privacy.
Cost: $35 for IP Section Members, $45 for the general public, and CU/DU Law students are free. Includes a catered lunch. You can register for the lunch by going to: http://www.cobar.org/cle/item.cfm?eventid=IP101013. RSVP by calling (303) 860-1115 ext. 727 or by emailing email@example.com before 5 PM on Monday October 7, 2013.
Senator Bennet’s office is soliciting suggestions for the name of Denver’s new PTO satellite office. Detroit’s office is named after Elijah J. McCoy, an African-American inventor who settled in Michigan and contributed many inventions to the field of locomotives and steam engines. Know of a great Colorado inventor? Submit your ideas below:
Last year, the U.S. Department of Commerce selected Colorado for a new regional patent office. The office will help cement Colorado’s reputation as a hub for innovation, attract businesses and entrepreneurs, bring hundreds of high-paying jobs and pump nearly $440 million into our state’s economy during its first five years.
We’re working with the USPTO and the Department of Commerce to get the office open as quickly as possible. This week we’re beginning the process to help pick a name for the it.
For two weeks, we’re crowdsourcing, or COLORADOsourcing, suggestions for a name for Colorado’s new patent office. Tell us who your favorite Colorado innovators are and why we should name the new patent office after them. Or, if you have an idea for a name that isn’t a person, we’re all ears! You can also “up vote” your favorite ideas.
At the end of the two weeks, we’ll submit the top ideas to the Commerce Department for consideration.
This forum is open now and will be until Friday, August 9.
To share your ideas and participate in our online discussion, follow these simple steps:
1. Step in. Follow this link at any point during the next week: http://crowdhall.com/h/61
2. Speak up and share an idea here during my two week online forum.
3. Vote on your favorite ideas.
4. Stay tuned or receive notifications when we respond to the results.
We look forward to hearing from you and seeing all of the suggestions.
Michael F. Bennet
-Nina Wang, Partner, Faegre Baker Daniels
Recently, patent assertion entities, or non-practicing entities (NPEs), or trolls – depending where you are on the spectrum – have been getting a lot of attention. At the beginning of June, Chief Judge Rader of the Federal Circuit, along with two law school professors, wrote an Op-Ed piece in the New York Times entitled “Make Patent Trolls Pay in Court.” That same month, the Executive Office of the President released a report on “Patent Assertion and U.S. Innovation.” Then, the Federal Trade Commission Chairwoman Edith Ramirez announced that the FTC would launch a study of NPE activities by using its authority under the FTC Act. The U.S. Government Accounting Office is in the midst of a study trying to quantify the costs of patent litigation. And recently, the New York Times published a series of articles about patent assertion entities, including one on IPNav and its founder, Erich Spangenberg and Intellectual Ventures.
One of the articles recounted how IPNav and Spangenberg helped companies on the brink of financial disaster, like Parallel Iron, monetize their patents and generate a sizeable profit for IPNav and Spangenberg personally. Another quotes Peter Detkin of Intellectual Ventures describing patent litigation as “just another form of licensing.” A New York Times writer posits that maybe these patent assertion entities are just profiting from a “flawed and creaky legal system.” Other industry experts predict that there will be a push for legislation to take care of the “troll” issue, with the state of Vermont and various measures in the Congress, including the SHIELD Act and the Patent Abuse Act, leading the way. Indeed, last Thursday, the Attorney General of Nebraska issued a cease and desist letter against a law firm that has filed several lawsuits on behalf of non-practicing entities barring it from initiating any new patent lawsuits in Nebraska.
The reality is that there is no quick fix for the issues facing clients involved in frivolous litigation in federal court (whether patent cases or otherwise). Even if all of the proposed legislation in Congress today passed, the proposals often contemplate an end-of-case award of costs and fees to a prevailing party, presumably the alleged infringer in these targeted cases. Unfortunately, that means that a client is still faced with the risk of having to fund and support a litigation through summary judgment or even trial before it can attempt to recover fees and costs. In contrast, NPEs are in the business of taking and capitalizing on risk, and fee-shifting seems unlikely to change their behavior significantly because the cost of patent litigation as it now stands often forces settlement well short of the courtroom.
In addition, it’s unclear whether legislation, however well-intended, will do anything more than change the tactics of NPEs (or the courts for that matter). For example, the AIA’s requirement that unrelated defendants not be sued in the same suit has done little to stem the tide of NPE litigation or change the practice of the Courts in consolidating cases for at least the purposes of discovery. Yet to be seen is whether the AIA’s new post-grant review (PGR) processes will level the playing field in the enforcement of unworthy patents.
Despite the current maelstrom of events surrounding NPEs, it seems the only reliable advice for clients right now comes from the British (royal babywatchers, I’m sure the Duke and Duchess of Cambridge would agree): keep calm and carry on.
From All Sides: The Erosion of Patent Rights
Gene Quinn, Founder & Editor, IPWatchdog Blog
Tuesday, July 23, 2013; 12:00 PM
Gene Quinn is a patent attorney with Zies, Widerman & Malek, but is better known by many as “The IPWatchdog” from his widely popular intellectual property website and blog, IPWatchdog.com. The site has had millions of unique visitors and was voted in 2010 by the readers of the ABA Journal as the top Intellectual Property Law Blog on the Internet. He will be speaking about recent trends in patent law and their continued erosion of patent rights.
Cost: $35 for IP Section Members, $45 for the general public, and CU/DU Law students are free. Includes a catered lunch. You can register for the lunch by going to:http://www.cobar.org/cle/item.cfm?eventid=IP072313. RSVP by calling (303) 860-1115 ext. 727 or by emailing firstname.lastname@example.org before 5 PM on Friday, July 19, 2013.
Cancellations after Friday, July 19, 2013 and no-shows will be billed for the cost of the program. Checks can be sent to the Colorado Bar Association, 1900 Grant St., Suite 900, Denver, CO 80203. Also, please call or e-mail your RSVP when sending a check. Checks should be made payable to the CBA. If leaving a message, please spell your name, specify that you are attending the Intellectual Property Section July Luncheon, leave your phone number, and specify if you would prefer a vegetarian lunch.
FOR IMMEDIATE RELEASE
July 11, 2013
National Inventors Hall of Fame Seeking Nominations
Denver – The National Inventors Hall of Fame — a not-for-profit organization dedicated to honoring the people whose ideas, discoveries, and entrepreneurial spirit have made human, social, and economic progress possible – is seeking nominations of individuals whose patented work has helped change the world and how we live our lives.
The Hall of Fame inducts a new class of inventors each year. People are recognized not only for their inventions but for their ability to inspire future generations of innovators as well.
The criteria for nomination include:
- Nominee must hold a U.S. patent for the invention;
- Invention must have history of contributing to the nation’s welfare; and
- Invention must have contributed to the progress of science and useful arts.
A National Selection Committee consisting of representatives of scientific, technical, engineering, and patent organizations, a Blue Ribbon Panel of experts, and the United States Patent and Trademark Office (USPTO) contribute to the Inductee selection process. Nominations are accepted from all responsible sources.
Nomination forms are due on July 24, 2013 and are available at http://www.invent.org/hall_of_fame/1_3_2_submit.asp and may be submitted to:
Vice President for Selection
National Inventors Hall of Fame
600 Dulany Street
Madison W, Suite 1C65
Alexandria VA 22314
While there are no current Colorado inductees in the National Inventors Hall of Fame, many believe it’s time for the state’s inventors to be recognized.
“Colorado companies and our residents have a rich history of collaboration on inventions that have had life-changing affect on people throughout the world,” said U.S. Senator for Colorado, Michael Bennet. “Our proven scientific and technological contributions and leadership in diverse industries, coupled with our newly appointed U.S. Patent and Trademark Office helps position our state and its tremendous inventors among the world’s best. It’s time that we help recognize those individuals with our nominations and inductions into the National Inventors Hall of Fame.”
Founded in 1973 by the USPTO and the National Council of Intellectual Property Law Associations, the Hall of Fame is headquartered in Alexandria, Va., where its museum is featured on the campus of the USPTO. Admission is free.
The National Inventors Hall of Fame is part of Invent Now, Inc. which facilitates education programming, inventor and entrepreneur recognition and outreach, and new ways to spread the inventive spirit. Key programs of Invent Now such as the Camp Invention summer enrichment program and the Collegiate Inventors Competition were directly influenced by Inductees of the Hall of Fame. For more information, including Inductee nomination forms and information on existing Inductees, please visit www.invent.org.