Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Continuing its transformation from a backwater agency into a key player in the new economy, the Patent and Trademark Office had its busiest year ever in 2000. Patent and trademark applications poured into the PTO in record numbers — trademarks were up 27 percent over last year, and patents jumped 8 percent. The reason? Intellectual property is more valuable than ever, according to the newly formed Patent Public Advisory Committee, and now accounts for two-thirds of the market value of corporate America. Keeping up with the work has been a challenge for the PTO, especially since in both 1999 and 2000 Congress withheld more than $100 million in fees paid by agency users — money that would otherwise fund PTO operations. This year, after the House passed a budget diverting $295 million in PTO revenue, the normally low-key IP community fought back and, in the process, found its voice on Capitol Hill. In a June 22 “Emergency Legislative Alert,” for example, the Intellectual Property Owners Association sent out a rallying cry to its 500 members — large companies, small businesses, universities, and inventors — urging, “Every patent or trademark owner, attorney and inventor in the United States, ideally, should call his or her own U.S. representative today. … Forward this e-mail to friends or colleagues, asking them to make calls and to forward the e-mail to their friends or colleagues.” The lobbying effort paid off. The Senate awarded the PTO a hefty $262 million more than the House did. Ultimately, the two bodies compromised by awarding the agency roughly $1 billion. This year, the agency was also compelled to wade into some of the murkier areas of patent law, coming up with new ways to handle patents involving business methods and human genes. In the wake of the 1998 case State Street Bank & Trust Co., the PTO has seen a sharp uptick in business-method patent applications. But the agency has been roundly criticized for granting patents described as overly broad or obvious. In late March, the PTO responded by implementing new procedures, including enhanced training of patent examiners, new databases of prior art, and a new second-level review of all business-method patent applications. But that may not be enough. In October, Howard Berman, D-Calif., introduced a bill, still in subcommittee, designed to raise the quality of business-method patents by allowing members of the public to present prior art to disqualify patents. Also, the bill establishes that where an invention differs from prior art only because it is implemented using computer technology, it should be considered obvious, and thus unpatentable. “Surely, the patent system is functioning in a curious manner when patents have been issued on a technique for measuring a breast with a tape to determine bra size (Pat. No. 5,965,809),” said Berman when he introduced the bill. The PTO has also been under the microscope for its handling of patents involving human genes. A year ago, the PTO moved to raise the bar for human genome patents, releasing interim guidelines that require patent-seekers to demonstrate a higher utility standard for their inventions. “One cannot merely patent a gene itself without disclosing a use to which that gene can be put,” PTO Director Q. Todd Dickinson told the House Judiciary Subcommittee on Courts and Intellectual Property in July. Final guidelines are expected to be released before year-end. Still, critics including the National Institutes of Health argue that the standard remains too low, while some members of the biotech industry believe it is too high. A test case on the question, almost certainly bound for federal court, is currently making its way through the PTO. Looking ahead, another hot topic in IP is the effect of a recent en banc decision from the U.S. Court of Appeals for the Federal Circuit in Festo Corp. v. Shoketsu Kinzoki Kogyo Kabushiki Co. In an 8-4 ruling, the court barred inventors in some circumstances from invoking the doctrine of equivalents — the legal argument patent-holders use against competitors who sell knock-offs of patented inventions. “This puts a premium on sophisticated claim drafting,” says patent litigator Joe Micallef, a partner at Arnold & Porter. “It will make it more expensive to prosecute patents. People will need better lawyers and more time.”

This content has been archived. It is available exclusively through our partner LexisNexis®.

To view this content, please continue to Lexis Advance®.

Not a Lexis Advance® Subscriber? Subscribe Now

Why am I seeing this?

LexisNexis® is now the exclusive third party online distributor of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® customers will be able to access and use ALM's content by subscribing to the LexisNexis® services via Lexis Advance®. This includes content from the National Law Journal®, The American Lawyer®, Law Technology News®, The New York Law Journal® and Corporate Counsel®, as well as ALM's other newspapers, directories, legal treatises, published and unpublished court opinions, and other sources of legal information.

ALM's content plays a significant role in your work and research, and now through this alliance LexisNexis® will bring you access to an even more comprehensive collection of legal content.

For questions call 1-877-256-2472 or contact us at [email protected]


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.