H&A IP Law Administrator Abe Hershkovitz gave a presentation on the Patent Prosecution Highway (PPH) at the Mexican Association for the Protection of Intellectual Property (AMPPI) Conference held in Mexico City from March 21 to 23, 2012. The AMPPI is the Mexican Group of the International Association for the Protection of Intellectual Property (AIPPI).

The theme of this first annual AMPPI conference was the “Current Situation of Intellectual Property in the World.” A number of other U.S. presenters were included in the conference, along with Mr. Yusuke Okuda, Assistant Director of the International Affairs Division of the Japan Patent Office (JP), and many Mexican dignitaries, including Mr. Rodrigo Roque, General Director of the Mexican Institute of Industrial Property (IMPI); Mr. Manuel Guerra, General Director of the Mexican Copyright Office (INDAUTOR); and The Honorable Margarita B. Luna Ramos, Justice of the Supreme Court of Mexico.

While attending the AMPPI conference, Mr. Hershkovitz also visited with client firms in Mexico City.

Click here to view the slides from Mr. Hershkovitz’ presentation on PPH, which also included biologics, software and business method patents, and Swiss type claims.

Abe Hershkovitz during his IPR Summit 2012 presentation on "Reexamination Practice Before the USPTO" in Ahmedabad, India

As at no other time in history, the internet has caused an information explosion heard around the world, and universal changes brought about by modern computing. Now, more than ever, protection of IP, and most notably of patents, becomes imperative for the economic stability and development of the global village. This view is confirmed by, arguably, the most sweeping changes in United States patent law in over 100 years.

On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act. This Act includes reforms of unprecedented magnitude, such as a change from “first to invent” to “first to file” that will now determine patent rights, and make significant post-issuance changes in the review and reexamination processes, reforms aimed at confirming the validity of issued U.S. patents. More and more companies and inventors have either been the target of, or have themselves initiated, a challenge to the validity of the claims of a competitor or pursued aggressively potential infringers. It is envisioned that the provisions of the new U.S. patent laws and regulations to be implemented could reduce litigation in Courts, but increase disputes and prosecution before the USPTO. U.S. and Indian patent firms will likely form strategic alliances to reduce litigation costs for their clients by employing additional prosecution steps before the USPTO like pre-grant reviews and post-grant reissue and reexamination. Successful validity and reexamination practice requires exhaustive searching of available prior art, analysis of that art, and making strategic decisions relative to modifying the original claims, adding new ones, etc.

U.S. practitioners will try to make use of the additional mechanisms to evaluate and re-evaluate the validity of the claimed invention, not just before issuance of a patent, but also by use of the new “post-grant review” process for a period of 18 months directly after issue, and the new rigorous “inter partes review” at no less than nine months after issuance.

It is foreseen that India, with its wealth of highly talented and educated professionals, will likely play a major global role in delivering the support needed by the prosecution and litigation firms to fully comply and take advantage of new U.S. patent laws, and to help reduce the costs associated with resolving patent validity disputes for their clients.

Article by H&A Administrator Abe Hershkovitz, published in “Summit Today” by the 5th Annual Intellectual Property Rights Summit held January 2012 in Ahmedabad, India.

Click here to view a video of Mr. Hershkovitz’s presentation on “Reexamination Practice Before the USPTO” given at the Summit.

IPR Conference organizers awarding a recognition plaque to Abe Hershkovitz

H&A Administrator, Abe Hershkovitz, was a featured speaker at the 4th International Intellectual Property Rights Conference held in New Delhi, India from January 5 to 8, 2012, on the topic of Reexaminations, Petitions and Prosecution Tips Before the USPTO. Among other featured Conference speakers from around the globe was Ms. Teresa Stanik Rea, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO.  (Photo used with permission.)

Abe Hershkovitz at the IP Summit in Ahmedabad, India

Mr. Hershkovitz was also a featured speaker on the topic of Reexamination Practice Before the USPTO (watch the video below) at the 5th Annual Intellectual Property Summit held in Ahmedabad, India from January 7 to 8, 2012. Also speaking at this Conference, which received wide media coverage in India, were high level Ministry officials from the Government of India. After these two Conferences, Mr. Hershkovitz visited client firms in Mumbai, Singapore, Thailand and Malaysia.

H&A Intellectual Property Law, PLLC has established its International Trade Commission practice for handling Section 337 Proceedings before the International Trade Commission (ITC).

Over the past number of years, Section 337 proceedings have been on the rise. More than 70 proceedings were filed in 2011. Approximately 90% of ITC proceedings involve violations of Section 337 of the Tariff Act of 1930, for importation of infringing products into the United States. One goal of the Act of 1930 is to protect domestic industry from unfair trade practices, such as patent infringement, trademark infringement, and copyright infringement.

There are many advantages to ITC proceedings as opposed to federal litigation for the US domestic industry. First of all, the speed at which a party can obtain an injunction in ITC proceedings is much faster than in most federal courts. Additionally, a Temporary Exclusion Order may be available which provides an injunction stopping the potentially infringing activities, if granted. A Temporary Exclusion Order may be granted based on the same standards for obtaining a Preliminary Injunction in Federal District Court (i.e., irreparable harm, substantial likelihood of success on the merits, inter alia).

Further, not only can relief be granted more quickly, but the types of injunctive relief have advantages as well. The three types of remedies that are available include the following:

A Limited Exclusion Order will prevent only the named respondent from importing the infringing products into the United States;

A General Exclusion Order will prevent all imports by anyone of the infringing product, regardless of whether the party is named to the proceeding; and

A Cease and Desist Order will prevent all products from being sold in the United States, including already existing inventories.

The advantages of the above injunctive remedies over a Federal District Court injunction are that Complainants do not need to enforce the Order themselves. The ITC enforces the Cease and Desist Orders and the Customs and Border Protection enforces Limited and General Exclusion Orders. Thus, obtaining an Order from an Administrative Law Judge (ALJ) can mean more, in some cases, than a District Court Order that may be practically impossible to enforce.

Section 337 proceedings start with the filing of a Complaint. Within 30 days of the filing of the Complaint, the ITC will decide if they want to initiate an investigation. If an investigation is commenced, the case will be assigned to an ALJ and the ITC will serve the Complaint on the party or parties (Respondent(s)) to the action. Then the Respondent will have 20 days to file a response.

A Complaint must contain certain averments when submitted to the ITC so as to meet statutory requirements. A valid and enforceable patent must exist; the patent prosecution history must accompany the complaint; claim charts if practicable must be filed; evidence of at least one infringing product needs to be submitted; proof of a domestic industry that is practicing a claim protected by the subject patent must be shown; and sufficient evidence of a domestic industry must be shown through evidence of investment in labor, capital, plant and equipment expenditures, for example.

Many of the discovery rules parallel those of the Federal Rules of Civil Procedure, including FRCP 26 through 37 with regard to interrogatories, requests for production of documents, and requests for admissions. However, discovery is not limited in Section 337 cases as it is under the FRCP. For example, interrogatories are not limited before the ITC nor are the number of depositions, although an ALJ can always exercise his discretion in this regard.

Overall, Section 337 proceedings have many advantages over actions in federal court and they do not have the res judicata preclusive effect that an Order from a Federal Judge has. Appeals from Section 337 decisions from the Administrative Patent Judge are available to the ITC Commission and then can be appealed to the Court of Appeals for the Federal Circuit. The Final Determinations by the ITC can be used as evidence in a concurrent or subsequent District Court proceeding.

A disadvantage of the ITC proceeding over a Federal District Court infringement litigation is that no damages can be awarded by the ITC. A severe disadvantage for Respondents is that the Respondent would have but 20 days to respond to the ITC complaint. Hence, exporters of goods into the US should be well advised to have a service to monitor the filed ITC complaints so as to have sufficient time to react to the complaint.

Contact H&A Intellectual Property Law for representation in your matter or to inquire as to the benefits of a watching service to prevent surprise complaints being served upon an unsuspecting company.

Article by Jared D. Barsky

H&A IP Law Administrator, Abe Hershkovitz, along with H&A Intellectual Property Attorney Brian Edward Banner, attended the 59th Asian Patent Attorneys Association (APAA) Council Meeting in Manila, Philippines on November 12-15, 2011. While in Asia, Mr. Hershkovitz met with clients and prospective clients and lectured in Manila, Beijing, Hong Kong, Shanghai, and Taipei on the America Invents Act (AIA), and Patent Reexamination Practice Before the USPTO. Mr. Banner met with a number of potential clients in Manila and Tokyo and discussed recent developments in U.S. Trademark practice before the USPTO and in the courts.

While there were many serious topics discussed during the conference, it was not all work. There were opportunities for less serious activities, such as a soccer game with patent attorneys from the many different countries in attendance at the conference.

Please click an image for a larger view with caption.

Today, President Obama signed the Leahy-Smith America Invents Act (“AIA”) into law. The AIA calls for some important provisions to go into effect ten (10) calendar days after the law is enacted, which is September 26, 2011. This includes imposition of a 15% surcharge on most USPTO fees. A link to the new USPTO fee schedule is below. Accordingly, we recommend that all USPTO patent prosecution fees that are currently payable, as well as those which are likely to be paid, should be paid before September 26, 2011 so as to avoid imposition of the 15% surcharge.

Other new provisions included in the AIA call for additional changes to U.S. patent practice, e.g., the U.S. will now be based on a “first-to-file” system rather than a “first-to-invent” system. This provision and others will not go into effect until 12 or 18 months after enactment. A brief overview presentation of the AIA is available in English and Korean on our website through the links below. We are presently making an in-depth study of the AIA, and we will be advising you shortly of the timetable and ramifications of its provisions. We will also be providing to you our recommendations to aid you to more easily transition to the new U.S. practice in all of the cases that our firm handles for you. Please do not hesitate to contact us directly by e-mail, facsimile or telephone with any questions you have regarding a specific situation in one of your matters.

New USPTO Fees Effective September 26, 2011

U.S. Patent Reform Slide Presentation – English

U.S. Patent Reform Slide Presentation – Korean

In an 89-9 vote on September 8, 2011, the U.S. Senate passed the America Invents Act (H.R. 1249), which had been previously passed by the House. The Act changes patent law by amending title 35 of United States Code, and will be sent to the President for his signature.

Among the many changes to U.S. patent law will be a switch from a first-to-invent system of priority to a first-to-file system of priority. This will eliminate in the future all patent interferences, which determine the first to invent, and brings the U.S. patent law more into conformity with the rest of the world. The law also changes the U.S. definition of prior art by amending the provision on anticipation. Also, the law will impose a 15% surcharge on all patent fees, effective 10 days after the law is enacted.

According to a statement released by USPTO Director David Kappos:

“Once signed into law by President Obama, this bill will give the United States Patent and Trademark Office the tools it needs to deliver cutting-edge technologies to the marketplace sooner, drive down the backlog of patent applications, and expedite the issuance of high-quality patents—all without adding a dime to the deficit.

“Significantly, as stated by leadership in both houses of Congress, this legislation enables us to access all of our fees. We intend to aggressively implement that mandate by immediately hiring new examiners, instituting new patent acceleration tools, and aggressively modernizing our IT infrastructure.

In addition to the patent prosecution implications of the “Patent Act,” the patent litigation consequences are likewise numerous.

For example, the “Advice of Counsel” section of the Act provides that the failure to obtain an infringement opinion in a litigated case may not be used to prove that the patent was willfully infringed. Now, the failure to obtain such an opinion shall not give rise to an adverse legal inference.

In addition, the Government Accountability Office (GAO) has been ordered to study the impact of patent litigation over the last 20 years including factors such as job creation, the impact on consumers, employers, non-practicing entities (NPEs), etc. The results of the patent litigation study will be reported to the Congress no later than one year from the effective date of the legislation.

For further information, please see:

http://www.uspto.gov/news/pr/2011/statementaia.jsp

http://www.uspto.gov/patents/init_events/aia_implementation.jsp

http://thomas.loc.gov/cgi-bin/bdquery/z?d112:HR01249:@@@D&summ2=m&

Participants in the 2011 Hongik University Internship on U.S. IP Law and Practice Presented by Hershkovitz & Associates and H&A IP Law

Graduate students of Hongik University College of Law in Seoul, Korea, participated in a one-week internship on U.S. intellectual property law and practice presented by Hershkovitz & Associates and H&A Intellectual Property Law in Alexandria, Virginia on July 23-31, 2011, followed by a one-week internship at Cornell University in New York.

The internship curriculum presented by Hershkovitz & Associates consisted of intensive training in U.S. patent law and prosecution before the USPTO – including patent filing and practice procedures regarding the Patent Cooperation Treaty (PCT), examinations, petitions, reexaminations, and the Board of Patent Appeals & Interferences (BPAI). H&A Intellectual Property Law’s curriculum included U.S. trademark and copyright law and procedures.

In addition to academic programs, the students were given guided tours of the USPTO in Alexandria, Va., and the U.S. Copyright Office and U.S. Library of Congress in Washington, D.C. Chief Judge Randall R. Rader of the United States Court of Appeals for the Federal Circuit in Washington, D.C. received the students and select employees of Hershkovitz & Associates and H&A IP Law in his chambers for a discussion of events related to the Court. Judge Edward J. Damich of the U.S. Court of Federal Claims also met with the group for a discussion held in his courtroom.

The students were accompanied by Hongik University Professor of Law Sun-pil Eum. The internship program was coordinated by Dr. Wan Sik You of Hershkovitz & Associates. The presenters were Messrs. Abe Hershkovitz, Eugene Rzucidlo, Harold Novick, Brian Edward Banner, Dinh Nguyen, and Steve Jaeyoun Kim of Hershkovitz & Associates and H&A IP Law.

Extracurricular events included a barbeque picnic lunch and a soccer game with Hershkovitz & Associates and H&A IP Law staff. The final day’s graduation ceremonies were held during a Potomac River luncheon cruise aboard the ship, “Nina’s Dandy.”

Brian Edward Banner, an Intellectual Property Attorney at H&A IP Law, lectured on IP matters at the 4th Intellectual Property Summit in Ahmedabad along with other distinguished panelists from Germany, Japan, and India on January 22-23, 2011.

H&A IP Law Administrator, Abe Hershkovitz, and Ms. Sujin Park, an attorney at H&A, attended the 58th Asian Patent Attorneys Association (APAA) Council Meeting in Jeju, Korea on October 16-19, 2010.  While in Asia, Mr. Hershkovitz lectured in Tokyo, Seoul and Taipei on various topics related to patent prosecution and reexamination practice before the USPTO.