CanadaPatentBlog

I recently encountered a file which I took over mid-prosecution. So far we have filed two RCE’s. Based on time logged, the client has been billed several tens of thousands of dollars. The file is important, but the client is bitter; he wants a discount.

Meanwhile, I have other files where matters are handled on a perfunctory basis at highly competitive prices and I do not wish to implement a discount policy with respect to those files.

I’m toying with the following formula: after the first $5,000 of billings the next $5,000 of billings will receive a 5% discount and as cumulative billings accrue in $5,000 increments, this policy will be repeated until the client has been billed $30,000, the last $5,000 of which will be subject to a 25% discount. At that point, the discount rate could stop increasing, or could mount further to 30% or even 40%. In all events, when the bill gets large, the client eventually gets a significant discount.

I’d like to know whether anyone else thinks that this is a rational formula for addressing the special case where time spent on a file balloons out of all proportion to anybody’s expectation.

Many persons in the patent profession are calling this the most important decision that the Supreme Court will address for years on the subject of patent law. The issue is when to reject an application on the grounds that the invention is “obvious”.

Previously, the US Court of Appeals for the Federal Circuit (CAFC) has been applying the test: for an invention to be considered obvious, there must be something in the prior art that would provide a “motivation, suggestion or teaching” that elements of the prior art could be combined to produce the invention. This test has been seriously criticized by those who oppose the granting patents. This test has been applauded by those who support the granting of patents. Now the Supreme Court has undertaken to visit this issue.

Here is a suggestion for new language on the topic of invention obviousness.

The Golden Rule of patent law is that a patent, once granted, should not interfere with anything that was previously available to the public. What is previously available to the public includes, not only that which has been done or described previously, but also obvious variants on what has already been done or described. 

In other words, the test for “obviousness” is whether what is proposed as a new invention is so similar to the prior art that it was, effectively, already “available to the public”. In which case, this obvious variant is assimilated under the Golden Rule as being part of the prior art and should not be patentable.

I’m simply searching for a new perspective on the issues, even if this perspective does not provide a perfect criterion for resolving this very complex type of issue.

Comments would be most welcome.

Rarely, a dissenting judicial opinion is more significant than the decision of the majority. This is just such a case.

Many patent professionals have felt that the United States patent system was on trial when the US Supreme Court granted certiorari to review the concurrent Trial and Court of Appeal for the Federal Circuit decisions upholding LabCorp’s patent claims to a method for identifying a vitamin deficiency in a human being. The majority of the Supreme Court in its June 22, 2006 decision declined to make a ruling, stating that they had granted certiorari “improvidently”. Consequently the lower court decisions will stand. But the dissent by three Supreme Court justices cannot be ignored. In fact, this dissent may portend major upheavals in the US patent system in the future.

Before reviewing the dissent, which constitutes 98% of reasons provided in the Supreme Court decision, it must be observed that US patent law is on the brink of major reforms. The US patent office is experiencing a management crisis. Bills have been tabled before Congress to amend the law in ways that are as fundamental as the amendments of 1836. And an outcry is growing as to the over reaching impact of patents in such newly recognized fields of business methods and genetics. Read the rest of this entry »

Today the Supreme Court of Canada made its decisions respecting the scope of coverage of two famous trademarks, BARBIE and VEUVE CLICQUOT. The first mark, for a famous child’s doll, was asserted against a restaurant using the same name. The second mark, for a famous French champagne, was asserted against a women’s clothing retail outlet using as its mark: “Cliquot”.

The court upheld three concurring lower decisions in the Barbie case, starting with a ruling by the Opposition Board in the Trademarks Office. The decisions of the Federal Court Trial Division and the Federal Court of Appeal to reject the Mattel application to introduce fresh evidence in the form of a survey to show a likelihood of confusion between the marks were also upheld. Read the rest of this entry »