Were you hoping to get some outsourced US patent filing work?

Bad news if you're a non-American (is the term 'alien' still used?): the Strategic Manufacturing & Job Repatriation Act seeks, among other things, to develop a national manufacturing strategy to create American jobs:

"The legislation would comprehensively align existing federal funding – at no new cost – to support job repatriation and manufacturing growth, study a new tax incentive to encourage repatriation, and bolster intellectual property protection".

Protecting American intellectual property is achieved by "restricting unnecessary foreign access to pending patent applications". Or am I reading too much into this?

Is it worth being an IP attorney litigator?

Writing in the current issue of the Journal of Intellectual Property Law & Practice (2010) 5(8):602-607 (JIPLP), fellow blogger David Musker (Jenkins; Class 99 blogmeister) has an article ("IP Attorney Litigators: will they fly or die?") on the viability of patent attorney litigators in the United Kingdom. David's abstract runs like this:

"Legal context: The Courts and Legal Services Act 1990 opened the way for bodies such as the Chartered Institute of Patent Attorneys (CIPA) and the Institute of Trade Mark Attorneys (ITMA) to certify litigators licensed to act in competition with solicitors in England and Wales. There are currently almost 100 such attorney litigators in the UK

Key points: The author makes use of comparative and demographic data to study the profiles of attorney litigators, including routes to certification, seniority by years post-qualification, gender. He explores comparisons with other UK hybrid legal professionals such as licensed conveyancers.

Practical significance: UK solicitors are at no risk from other professions within the UK. Even any competitive price pressure in UK IP litigation is far more likely to be intra-professional, from rival firms, rather than inter-professional. Regardless though of whether the CIPA and ITMA certification schemes ultimately live up to the competitive aims of the 1990 legislation, they are certainly capable of meeting more modest goals of "upskilling" the IP attorney".

If you are thinking of adding this qualification to your range of existing skills and talents, it's worth reading this article first. It has some interesting statistics too.

Case Law and IP Commentary: Searching for the Law

This morning I had to check out some cases on tactile trademarks. Since I have a Westlaw UK IP subscription, that was not a problem for me. Do you want one too?

The subscription is available to a solo solicitor, patent or trademark attorney or legal consultant but not a practising barrister. Its OK if you employ some support staff or even work with a partner but if the subscriber has more than 3 fee earning employees its not solo.

We are a very friendly group and are hoping to organise a WEBEX training session so our Westlaw representative can show you how to get the most our of the service and get just as much enjoyment from leaving through Kerly or the CIPA Black Book online as you do from making a trip to the library.  

I have been using Westlaw on my iPad - very satisfactory. Great excuse to buy yourself one.

June IP update podcast

This month I will blow my own trumpet: the June edition of my IPso Jure Lawcast is now available for download, featuring such exciting developments as Bilski, Edwards (and "reverse-Edwards"), Flos, the Court of Justice on whether perfume testers are “put on the market” (in the Lancaster case) and a malicious falsehood case in which the Court of Appeal rejects the single meaning rule (Ajinimoto Sweetners). It runs for about 75 minutes, meaning it's hard work for an hour's CPD, but there's a lot to talk about.

Download it, and the notes, from www.ipsojure.co.uk/p/lawcasts.html. The downloading part is still free, but if you want to get CPD for listening you must register - instructions and fees on the site.

Basic Bilski: answering the client queries

Now that the US Supreme Court has handed down its Opinion in the notorious Bilski case, the only thing our clients want to know is does this mean they can get software and or business method patents in the USA. Many Europeans have been sending clients to the US when they have to disappoint them that their ideas are not patentable in Europe. My conclusion is that if you could still get a business method patent it would be as much use as the collection of rubbish in my picture. As to a software patents, they seem to be much where they were before. 

Indeed the Supreme Court seems to be saying let nothing change. The only exceptions to patent eligibility remain "laws of nature, physical phenomena and abstract ideas".  That come from previous Supreme Court cases. The concept of hedging which was Bilski's alleged invention was deemed abstract and not patent-eligible. The main point of the Opinion is that the machine and transformation test is not the exclusive test for whether a process is patentable. It just provides a clue to the answer. Again this was also part of existing Supreme Court case law.

Bilski seems to have been much delayed because of a difference of opinion between two groups of judges. The Opinion of the Court was given by Justice Kennedy. He held that a business method had to be a process within the scope of the Patent statue because of a defence introduced in 1999 following the State Street case that opened the floodgates for non-technical patents in the USA:  Kennedy says:

Under 35 U. S. C. §273(b)(1), if a patent-holder claims infringement based on“a method in [a] patent,” the alleged infringer can assert a defense of prior use. For purposes of this defense alone, “method” is defined as “a method of doing or conducting business.” §273(a)(3). In other words, by allowing this defense the statute itself acknowledges that there may be business method patents.

Justice Stevens strongly disagreed and said that Section 273 is a red herring. He clearly wanted the Court to give a clear statement that methods of doing business are not patentable "processes".

There is some great material in the Stevens Opinion about the underlying policy of the Patent system. It is quite gratifying to see the recognition of the English influence.

Overall if you are a business man, please do not take your business ideas to the patent attorney, use them. Your investors may think you ought to patent them, if the competition is doing so. I suggest you tell them that means your competitors are not focusing on their job. The fear of  course is the troll with a patent. Justice Stevens offered this crumb of comfort:

... Members of this Court have noted that patents on business methods are of “suspect validity.” eBay Inc. v. MercExchange, L. L. C., 547 U. S. 388, 397 (2006) (KENNEDY, J., concurring).

Supply of IP services and the BSI

Wearing my IPKat hat I recently blogged on the subject of professional standards, asking: "Do you provide services relating to IP rights? Do you -- or your clients -- ever wonder if you're any good?" This was prompted by the publication by the British Standards Institute (BSI) of a request for comments by 31 July 2010 relating to its draft specification for the provision of services relating to intellectual property rights. The draft standard, BS 8538, can be reviewed if you register with the BSI here. It features an explanation of the scope of the proposed specification and a list of terms and definitions, then tackles (i) principles for ethical behaviour and (ii) process for service provision. There then follows a bibliography and an annex relating to non-disclosure agreements.

It seems to me that the quality of professional standards in the supply of IP services is a matter which requires particular attention among smaller practices, where time is a precious and often scarce resource and where compliance with legal and professional requirements can be onerous even in the absence of optional extras like BSI standards. If any debate on this issue takes place, can someone let us know? If there's sufficient demand, perhaps SOLO IP should hold an informal meeting to discuss the topic. Thoughts?

IP CPD, coming to a set of earphones near you ...

Our esteemed SOLO IP colleague Peter Groves is far too modest to blow his own trumpet on this weblog, but the information below (largely reproduced from a recent post on the IPKat weblog) looks like good news for IP practitioners who do not work for large practices or for companies with the resources to send them off to fancy conferences and seminars in order to satisfy continuing professional development (CPD) requirements.

In short, IP practitioners in the UK can secure CPD credits by listening to a monthly podcast and completing a short multichoice questionnaire. The IPso Jure Lawcast is produced each month by Peter, a solicitor with nearly 30 years’ experience in the field and the author of several books and many articles, covering the important developments affecting practitioners in England.

The May 2010 programme (now online) covers, inter alia,

(i) a failed attempt to use the tort of causing unfair harm by unlawful means, where there was no IP to rely on;

(ii) the Advocate General finding levies on equipment and media incompatible with the Information Society Directive;

(iii) a replica of Henry the vacuum cleaner that infringed no design rights but fell foul of passing-off law;

(iv) the EPO's Enlarged Board of Appeal rejecting the referral of questions about computer-implemented inventions;

(v) a patent application being found obvious against a Pedrick patent and

(vi) the Court of Appeal reluctantly following the Court of Justice in L’Oréal v Bellure.

The audio files can be downloaded free of charge, but for CPD you’ll have to register and pay a modest fee (£25 plus VAT per programme, £240 plus VAT a year (12 programmes each worth one hour CPD), £200 plus VAT for the first year if you subscribe by the end of June). You can try as much as you like without having to buy anything.

Links to the audio files, and the accompanying notes, are here, where you can also find the full terms and conditions. The Lawcasts are accredited for CPD by the Solicitors Regulation Authority, and solicitors can do 12 hours CPD per year by distance learning means. Barristers, patent attorneys and trade mark attorneys can also meet some of their CPD requirements this way.