Journal of the Patent and Trademark Office Society

Tribute to Lou Zarfas

      I recently observed a change in the position of Editor-In-Chief at the Journal of the Patent and Trademark Office Society, and I would like to take a moment to thank Mr. Louis Zarfas for the fine job he has performed in this position over the past two decades.

      Lou's kindness and high intellect, qualities that are both important to being a good editor, enabled him to carry on the tradition of excellence that began with this Journal's first editor, in 1918, and has been continued through many notable editors including P.J. Federico.

      Lou came to the Office in 1972 when, after graduating from MIT, he took a government-wide exam, and listed Washington D.C. as the location in which he would like to work. Brad Huther, who was then a Personnel Specialist, learned of Lou's interest in architecture, and offered him a position as a Patent Examiner in the design group, and area in which Lou has been a Supervisory Examiner for the past eleven years.

      Lou became the editor of the Journal when Solicitor and former editor Gerald (Gerry) Bjorge suggested that Lou, who had recently graduated from law school, apply for the position.

      Lou's hobbies include a love of film, playing cards, and solving puzzles. He is also, I understand, an extremely talented artist.

      Any former editor will tell you how difficult these positions are, and Lou was there for over twenty years, introducing us to each issue with his signatory "That's all from here" (note that in the October issue, it says that is all from here).

      I am sure that I speak for many in expressing my appreciation for his being the catalyst in providing me with twenty years of informative information that has helped me in my work, and I wish him well in the future.

From the Editor

    In this September issue, the JPTOS published by mistake and without permission an incomplete version of the July 2006 draft of the article by James Farrand entitled: Territoriality and Incentives Under the Patent Laws: Overreaching Harms U.S. Economic and Technological Interests. We at The Society want to extend our apology to Mr. Farrand for this mistake. We regret any inconvenience this has caused the author. The final version of this article is being published by Mr. Farrand in the Fall 2006 issue of the Berkeley Technology Law Journal, which will be available in January of 2007.

Dear Readers:

      This September we look at Continuing applications, implementing eBay, Territoriality and Patent rights in India.

      Lawrence Ebert critiques the restrictions on Continuing applications in the proposed rulemaking.

      Hal Milton and James Bonnamy analyze the issues inherent in CIP practice beyond the scope of the proposed rule changes.

      Mitchell Stockwell looks at the effect of the eBay decision on enforceability of patent rights.

      James Farrand argues for the repeal or reduction in force of section 271(f) in view of the impact of recent judicial interpretations thereof.

      Lastly M. Qaiser and P Mohan Chandran argue for the benefits of the India Patents Act of 2005.

      This is the last issue of the Journal that I will have edited. I am stepping down after a 20 year run. I have enjoyed the task and appreciate all the help I have received over the years from the staff and the Board of Governors but primarily from the readership who has never ceased to contribute, critique and otherwise participate in this forum of IP ideas.

Dear Readers:

      This August month we consider Secrecy, Traditional Knowledge, and Electronic Filing.

      Thomas Kundert presents a primer on foreign filing, secrecy, and technical data in patent prosecution.

      Dr. Guido Westkamp explores the interface between traditional knowledge and I.P. protection.

      Don Levin provides a guide to electronic filing of documents in the USPTO.

      Lastly check the letter from Lawrence Ebert supplying the counter argument to a recent provocative piece in the Journal.

Dear Readers:

      This month we look at Tangential Amendments, the effect of Predictability of technology, Patent Harmonization, and Double Entendre Trademarks.

      Messrs Lowes and McCombs explore the Tangentiallity effect in retaining flexibility in the standard set forth in Festo on the presumption of surrender.

      Messrs Noud, Carlson and Meiklejohn analyze the areas of Patent Law affected by predictability of technology in the specific field of invention.

      Heinz Bardehle provides an update on the pursuit of the elusive butterfly of Patent Harmonization.

      Lastly, Joshua Dalton and Ilisa Horowitz explore the possible potential of a play on words to provide Trademark protectibility.

Dear Readers:

      This month we discuss Nanotechnology, Phillips v. AWH Corp., the Experimental Use Exception, Novel Technology, and Patent Continuations.

      In Peter Paredes proposes a proactive use of the Written Description Requirements in applications involving Nanotechnology.

      Holly Bonar investigates the intrinsic / extrinsic evidence dictionary in the aftermath of Phillips v. AWH Corp.

      Robert Migliorini analyzes the application of the Narrowed Experimental Use Exception in infringement of patented computer software.

      Jonathan Linton proposes a strategy for maximizing value in patenting and licensing new technologies.

      Stephen Schreiner and Patrick Doody critique the PTO's proposed new rules and patent continuation applications.

      Lastly, look at the Letter to the Editor.

Dear Readers:

      This month we look at Copyrights, Continuations, and Pharmaceutical Patents.

      Robert Rogoyski concludes his treatise on Copyrights and protecting discrete musical elements.

      Bruce Kaser offers his views on Continuations, then impact on quality and the USPTO proposed response.

      Lastly, Thomas Noud and Paul Meiklejohn analyze the developments in Pharmaceutical Patent Enforcement.

Dear Readers:
      This month we look at Interferences, Copyrights, Trademarks, and Trade dress.
      Chico Gholz concludes his annual of Recent Opinions in Patent Interferences.
      Robert Rogoyski analyzes the issues created by copyright protection of discrete musical elements.
      Jeff and Linda Samuels review recent developments in Trademark jurisprudence.
      Rita Marie Cain clarifies the criticality of timing in Copyright registration and preregistration.
      Paul Mays delves into the definition of Trade dress.
      Lastly, look at the 33rd annual Rossman Award report by Rich Stouffer.

Dear Readers:
      This month we look at Trademarks, Interferences, Inequitable Conduct, Injunctions, and Claim construction.
      Jeff and Linda Samuels review recent court decisions affecting PTO Trademark practice.
      Chico Gholz critiques the most recent opinions in Patent Interferences.
      Lawrence Ebert looks at the lessons arising from the recent scientific fraud of Mr. Hwang.
      Alyson Barker analyzes the real property analogy in patent permanent injunctions brought up by the Blackberry case.
      Joel Miller mulls over the "Broadest Reasonable Interpretation in Claim construction.
      Lastly, we bid adieu to Administrative Patent Law Judge Jeff Nase retired on February 28th, 2006. Judge Jeffrey V. Nase was an outstanding PTOS Volunteer. Former PTOS Board of Director, Membership Chair, Science Fair Judge, and International Science and Engineering Fair (ISEF) Judge.

Dear Readers:
      This month we look at Oppositions in Japan, Broadening Claims in Reissue and Reexamination, and Recent Opinions in Patent Interferences.
      Dale Carlson and Robert Migliorini look at the Japanese Experience with Oppositions as an alternative for U.S. Patent Reform.
      Scott Kamholz analyzes the Conflict between the Board of Patent Appeals and Interferences and the Federal Circuit with respect to the interdiction against Broadening Claims in Reissue and Reexamination.
      Lastly Altoon Rollins and Chico Gholz conclude their Critique of Recent Opinions in Patent Interferences.

Dear Readers:
      This month is named for god of Janus, who simultaneously looks forward and backward. In honor of Janus we look back at recent Interference Opinions and recent Patent Decisions while looking forward to Patent Law Reform and Patent Prosecution for Stem Cells and Pharmacogenomics.
      In our lead article, Bill Rooklidge explicates AIPLA's recommendations for Patent Law Reform and the rationale behind them.
      Alton Rollins and Chico Gholz offer the first installment in their critique of Patent Interference Opinions.
      Christopher Cotropia brings us his review and observation on the Patent Decisions of 2005.
      Jenny J. Yeh, Dennis Fernandez, and Nels Hansen present Prosecution Strategies for Stem Cell-Related Cases.
      In our penultimate piece, Messieurs Khaleeli and Fernandez also focus on Prosecution in Pharmacogenomics.
      Lastly don't miss Assistant Editor Mel Cashion's tilt at Windmills and Wind Energy in his book review.

    This month's issue includes the 2005 Annual Index. In addition, we look at pharmaceutical patent enforcement, trademarks and service marks, and signal claims.
      Thomas P. Noud and Paul T. Meiklejohn discuss the legal development of pharmaceutical patent enforcement under the Hatch-Waxman Act.
      Paul M. Schoenhard looks at the conflation of trademarks and service marks resulting from their enforcement in a manner that blurs the boundary between them.
      Stephen G. Kunin and Bradley D. Lytle provide an overview of the patent eligibility of signal claims.