IP NEWS

New Third-Party Requester Rights for Inter Partes Re-examinations

The rights of a third-party requester in an inter partes re-examination are about to change. Currently, a third-party requester has no right to appeal an adverse decision by the Board of Patent Appeals and Interferences (BPAI). The new proposed rules would allow a third-party requester to appeal a BPAI decision to the federal circuit and to participate as a party to a federal circuit appeal brought by a patent owner. See 68 Fed. Reg. 22343-44 (Apr. 28, 2003). See 68 Fed. Reg. 223434 (Apr. 28, 2003). The new changes will be codified in 37 C.F.R. ” 1.979 and 1.983.

District Court Gives Noerr-Pennington Antitrust Immunity to Infringement Notices

The District Court for the Eastern District of Wisconsin ruled recently that infringement notices were immunized from an antitrust suit under the Noerr-Pennington doctrine. In Versatile Plastics, Inc. v. Sknowbest!, Inc., 2003 U.S. Dist. LEXIS 3264 (E.D.Wis. 2003), the plaintiff filed a declaratory action for non-infringement of a patent claiming a gliding mechanism for loading snowmobiles onto trailers. Id. at *3. The plaintiff included an antitrust claim alleging that the defendant sent several infringement notices it knew were baseless. Id. at *2-*4. Plaintiff asserted that 'defendants sought to use the patent as a 'bludgeon,' the letters being 'carefully calculated' to harm plaintiff's business.' Id. at *4. Defendant moved to dismiss the antitrust claim by relying on the Noerr-Pennington doctrine, which immunized individuals from suit in petitioning the government for action. Id. at *14-*16. Plaintiff countered by arguing that Noerr-Pennington immunity does not apply to private correspondence and 'private threats.' Id. at *16.

The court found it significant that the case involved a claim for patent infringement. Id. at *17-*18. Specifically, the court stated that since the patent laws expressly require infringement notice, unless the patented item is clearly marked with the patent number, the letters could not be seen as a 'private threat' and were immunized under the Noerr-Pennington doctrine. However, the court stated that this immunity was not unlimited. Id. at *20. The court indicated that the immunity would not apply if the infringement notices were 'sham' letters written in bad faith. Id. at *21. The court cited a Supreme Court case that defined a sham litigation as one that is objectively baseless and brought in an attempt to interfere directly with a competitor's business relationships. Id. at *22. Since the plaintiff had not sufficiently alleged bad faith in the complaint, the court dismissed the case, but gave the plaintiff leave to amend the pleading. Id. at *25.

USPTO Fee Increase Announced

The USPTO announced a proposed patent statutory fee increase to reflect the fluctuations in the Consumer Price Index. Under the proposal, which would go into effect October 1, 2003, the average fee would increase by 2.17 %. For example, the basic fee for a utility patent application would increase $20 from $750 to $770 and the 7.5-year maintenance fee would increase $40 from $2,050 to $2,090. See 68 Fed. Reg. 23092-93 (Apr. 30, 2003). In raising the fees, the USPTO considered the effect the increased fees would have on small entity applicants. Since the average increase was less than $10 for small entity filers, the USPTO determined that there would be no significant economic impact to small entities. See 68 Fed. Reg. 23093 (Apr. 30, 2003). Any item filed on or after October 1, 2003 would be subject to the increased amounts. A complete listing of the proposed fee structure can be found at http://www.uspto.gov/web/offices/ac/qs/ope/fees.htm.

Kathlyn Card-Beckles is an associate with the New York office of Kenyon & Kenyon. She can be reached at 212-908-6478 or [email protected].

USTR Identifies Problem Intellectual Property Protection Countries

On May 1, 2003, the Office of the United States Trade Representative (USTR) announced the results of the 2003 Special 301 annual review. The 301 review lists countries that the USTR determined did not provide effective intellectual property protection or that denied equitable market participation to the United States. This year the list includes approximately 74 countries that are categorized as Priority Foreign Countries ' where intellectual property protection is most onerous and severely adverse to U.S. interests ' and as Priority Watch List or Watch List ' where intellectual property protection issues are respectively less egregious. This year, the USTR paid special attention to the issue of counterfeiting and piracy, with a particular emphasis on the unauthorized copying of 'optical media' including CDs, DVDs and CD-ROMs. The USTR also focused on other important issues including Internet piracy, health-related intellectual property issues, and the implementation of Trade-Related Aspects of International Property Rights (TRIPS Agreement).

Countries including the Ukraine and China were classified as Priority Foreign Countries because of their failure to take effective action against copyright piracy and trademark counterfeiting. The USTR added several countries that had not previously been on the Watch List such as Ecuador, whose Ecuadorian Institute for Intellectual Property canceled a patent covering a major U.S. pharmaceutical product. The USTR also recognized the progress of certain countries, such as Israel, by moving it from the Priority Watch List to the Watch List. For the entire Special 301 Report visit http://www.ustr.gov.

New Third-Party Requester Rights for Inter Partes Re-examinations

The rights of a third-party requester in an inter partes re-examination are about to change. Currently, a third-party requester has no right to appeal an adverse decision by the Board of Patent Appeals and Interferences (BPAI). The new proposed rules would allow a third-party requester to appeal a BPAI decision to the federal circuit and to participate as a party to a federal circuit appeal brought by a patent owner. See 68 Fed. Reg. 22343-44 (Apr. 28, 2003). See 68 Fed. Reg. 223434 (Apr. 28, 2003). The new changes will be codified in 37 C.F.R. ” 1.979 and 1.983.

District Court Gives Noerr-Pennington Antitrust Immunity to Infringement Notices

The District Court for the Eastern District of Wisconsin ruled recently that infringement notices were immunized from an antitrust suit under the Noerr-Pennington doctrine. In Versatile Plastics, Inc. v. Sknowbest!, Inc., 2003 U.S. Dist. LEXIS 3264 (E.D.Wis. 2003), the plaintiff filed a declaratory action for non-infringement of a patent claiming a gliding mechanism for loading snowmobiles onto trailers. Id. at *3. The plaintiff included an antitrust claim alleging that the defendant sent several infringement notices it knew were baseless. Id. at *2-*4. Plaintiff asserted that 'defendants sought to use the patent as a 'bludgeon,' the letters being 'carefully calculated' to harm plaintiff's business.' Id. at *4. Defendant moved to dismiss the antitrust claim by relying on the Noerr-Pennington doctrine, which immunized individuals from suit in petitioning the government for action. Id. at *14-*16. Plaintiff countered by arguing that Noerr-Pennington immunity does not apply to private correspondence and 'private threats.' Id. at *16.

The court found it significant that the case involved a claim for patent infringement. Id. at *17-*18. Specifically, the court stated that since the patent laws expressly require infringement notice, unless the patented item is clearly marked with the patent number, the letters could not be seen as a 'private threat' and were immunized under the Noerr-Pennington doctrine. However, the court stated that this immunity was not unlimited. Id. at *20. The court indicated that the immunity would not apply if the infringement notices were 'sham' letters written in bad faith. Id. at *21. The court cited a Supreme Court case that defined a sham litigation as one that is objectively baseless and brought in an attempt to interfere directly with a competitor's business relationships. Id. at *22. Since the plaintiff had not sufficiently alleged bad faith in the complaint, the court dismissed the case, but gave the plaintiff leave to amend the pleading. Id. at *25.

USPTO Fee Increase Announced

The USPTO announced a proposed patent statutory fee increase to reflect the fluctuations in the Consumer Price Index. Under the proposal, which would go into effect October 1, 2003, the average fee would increase by 2.17 %. For example, the basic fee for a utility patent application would increase $20 from $750 to $770 and the 7.5-year maintenance fee would increase $40 from $2,050 to $2,090. See 68 Fed. Reg. 23092-93 (Apr. 30, 2003). In raising the fees, the USPTO considered the effect the increased fees would have on small entity applicants. Since the average increase was less than $10 for small entity filers, the USPTO determined that there would be no significant economic impact to small entities. See 68 Fed. Reg. 23093 (Apr. 30, 2003). Any item filed on or after October 1, 2003 would be subject to the increased amounts. A complete listing of the proposed fee structure can be found at http://www.uspto.gov/web/offices/ac/qs/ope/fees.htm.

Kathlyn Card-Beckles is an associate with the New York office of Kenyon & Kenyon. She can be reached at 212-908-6478 or [email protected].