01/06/15

Volume 96, Issue 4

The Editors, Administrative Staff and Board of Governors are pleased to announce the newest issue of the Journal of the Patent and Trademark Office Society.
  • Rebutting Obviousness Rejections by Disclosing Impermissible Hindsight Tom Brody Patent PR Eric L. Lane
  • The Google Art Project: An Analysis From a Legal and Social Perspective on Copyright Implications Katrina Wu
  • Short-Circuiting Contract Law: The Federal Circuit’s Contract Law Jurisprudence And IP Federalism Shubha Ghosh
  • Note: Trademarking Social Change: An Ironic Commodification Roger Stronach
  • Note: A Comparative Analysis of the Evolution of Trademark Law in Cuba and the Dominican Republic Ana Cristina Carrera
  • Note: Controlling the Patent Trolls: A Proposed Approach for Curbing Abusive Section 337 Claims in the ITC Matthew Duescher
  • 2014 Author Index
Rebutting Obviousness Rejections by Disclosing Impermissible Hindsight Tom Brody

Rebuttals against obviousness rejections of patent claims can take one or more approaches. The U.S. Supreme Court, as well as the Federal Circuit, has warned against obviousness rejections that are based on “impermissible hindsight.” The Federal Circuit has provided accounts of rejections based on hindsight, but only on a sporadic basis. No opinion from any court has directly addressed the fact that rejections based on “impermissible hindsight” can take a variety of forms, that is, can be recognized by a variety of features. This essay is based on a review of over 1,000 cases from the Patent and Trial Board (PTAB; "Board"), each of which reversed an obviousness rejection because impermissible hindsight had been used in formulating the rejection. This review demonstrates the existence of ten categories of rejections that are evidence that hindsight had been used: (1) Complete lack of any asserted rationale; (2) Secondary reference discloses a disadvantage of combining with the primary reference; (3) Teaching away; (4) Advantage of the secondary reference is already possessed by (redundant with) the primary reference; (5) Advantage provided by the secondary reference is not needed by, and not relevant to, the primary reference; (6) Disparate references, where the secondary reference is “disparate” with respect to the primary reference; (7) Context; (8) Non-analogous art; (9) Optimizing; (10) Missing claim element (failure of the cited prior art references to disclose all of the elements of the claim). These categories can be useful in rebutting obviousness rejections.

Patent PR Eric L. Lane This article sheds new light on patent signals by building and analyzing a data set of patent-focused press releases (PRs) generated by patent holders and cataloging the subject matter contained therein. It offers a taxonomy of patent-focused PR content and calculates the relative proportions of patent PR relating to the categories of Prosecution; Litigation; Transaction; Post-Grant Procedure; Honors/Accolades; Patented or Patent-Pending Product; ANDA Patent Challenge; and Miscellaneous. Within these top-level categories, this study calculates the relative proportion of second-level subject matter categories. In the Prosecution category, for example, this study calculates the proportion of press releases involving the categories of Patent Granted; Notice of Allowance; Application Filed; Application Pending; Application Accelerated; Response to Office Action Filed; Application Withdrawn from Issue; and Interference Declared. The Litigation category includes, inter alia, the categories of Settlement; Lawsuit Filed; Court Order or Ruling; Verdict; Comment; and Appealed. The study also analyzes patent PR by industry to determine which industries or technology fields generate the most patent-focused PR content and which subject matter areas are favored by particular industries. The data presented in this study enable us to determine which patent matters technology firms believe are important to signal and open a new window into how patent holders use patent information as signals. The Google Art Project: An Analysis From a Legal and Social Perspective on Copyright Implications Katrina Wu The Google Art Project is an ambitious effort by Google to curate worldwide artwork online in the highest resolution possible. Google accomplishes this by partnering with museums who provide access to art collections while Google provides the technology to capture high quality images. Under this model, Google places the burden of copyright clearances on museums and will remove online images if requested by copyright owners. An endeavor like the Google Art Project is not unprecedented however, Google attempted to put the world’s books online under the Google Books Project, scanning millions of titles and offering snippets for users to view online. The legal strategy seen in the Books Project differs drastically from the Art Project. Google proceeded aggressively with the Books Project, going forward without preemptively obtaining copyright clearances from authors and relying on fair use as a defense against infringement liability. As a result of the more restrained legal strategy for the Art Project, many works of contemporary and modern art are absent from Google’s collection, as newer works tend to be still under copyright protection. Short-Circuiting Contract Law: The Federal Circuit’s Contract Law Jurisprudence And IP Federalism Shubha Ghosh Federal common law is alive and well in the United States Court of Appeals for the Federal Circuit. However, as I demonstrate in this Article, a judicious application of intellectual property preemption and federalism principles can replace federal common law with appropriate and viable roots in state law Note: Trademarking Social Change: An Ironic Commodification Roger Stronach Note: A Comparative Analysis of the Evolution of Trademark Law in Cuba and the Dominican Republic Ana Cristina Carrera Note: Controlling the Patent Trolls: A Proposed Approach for Curbing Abusive Section 337 Claims in the ITC Matthew Duescher 2014 Author Index
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