PATENT: USPTO's New Pilot Program for Small Entity Inventors-Acceleration of Patent Applications, With a Price

The USPTO announced a pilot program that will give small entity inventors with two or more pending patent applications greater control over the priority in which their applications are examined, but at a cost.

The new program, announced by Undersecretary David Kappos during the 14th Annual Independent Inventors Conference on November 5-6, aims to reduce the backlog of unexamined patent applications by giving accelerated status to a pending patent application in exchange for the inventor abandoning a pending but unexamined application. The start date of the program will be announced in the near future.

More information on the program can be found on the USPTO website by clicking here.

PATENT: Microsoft Seeks Patent For Invention that Embeds Advertisements in Operating Systems

Apple, Inc. is seeking patent protection for an invention that would embed advertisements in a device's operating system, with the ability to disable the device until the advertisement is acknowledged. The patent application, bearing serial number 105916, was originally filed on April 18, 2008 and was published on October 22, 2009.

Claim 14 of the patent application states that the invention involves "A computer-implemented method for providing an advertisement in a device, the method comprising: providing an operating system of a device with at least one advertisement, the operating system configured to temporarily disable a function thereof and present the advertisement in the device while the function is disabled; and receiving a report from the device confirming that the advertisement has been presented." Purchasers might be allowed to access and use the operating system at a reduced cost by viewing or listening to the advertisements.

The invention would not be limited to operating systems on personal computers. Paragraph 0031 of the Detailed Description states that the invention could extend to any electronic device, such as "...portable and desktop computers, servers, electronics, media players, game devices, mobile phones, wireless devices, email devices, personal digital assistants (PDAs), embedded devices, televisions, set top boxes, etc."

While the buying public may find the forced viewing of advertisements out of character for Apple and unacceptable to say the least, the idea seems novel, and Apple's potential advertising income no doubt would be astronomical. No word yet on whether Apple actually intends to exploit the invention itself or develop a licensing scheme.

Apple's patent application can be found here.

TRADEMARK: New York City Seeks to Recover "Tavern on the Green" Trademark From Restaurant Operator in Bankrupcty Court

The City of New York recently filed suit against the operator of the famous Tavern on the Green restaurant, claiming ownership of the trademark "Tavern on the Green" and seeking to recover the restaurant's famous name. Tavern on the Green Limited Partnership, the restaurant's operator, filed for bankruptcy in September, 2009 after the City failed to renew the lease for the restaurant. The City alleges the operators fraudulently obtained federal trademark registration in 1981 without the City's knowledge or permission, and the restaurant's operators misled creditors, the public and the bankruptcy court by listing the trademark in the bankruptcy estate. The "Tavern on the Green" trademark is valued at approximately $19 million.

According to the City, the restaurant was originally named in 1934 by then Commissioner of Parks Robert Moses, and the limited partnership did not take over the restaurant's operations or use the famous name until 1973.

The LeRoy family, equity owners of the limited partnership, claims to have owned the famous trademark since 1978. The partnership obtained federal trademark registration for the name in 1981 which became incontestable in 1987. A second federal registration was obtained in 2007 for cooking oils and other products.

The LeRoy family has maintained the lease for the restaurant's location since 1974. The lease expires December 31 of this year. The City selected Dean Poll, owner and operator of the Loeb Boathouse in Central Park, to take over restaurant's operations and granted Poll a 25-year lease commencing January 1, 2010.

See In re: Tavern On The Green Limited Partnership, U.S. Bankruptcy Court, Southern District of New York (Manhattan) Bankruptcy Petition, No 09-15450 and 09-1513.

TRADE SECRETS: Rare Economic Espionage and Trade Secret Trial Underway

An American citizen and a Chinese national are facing more than 60 years in prison for economic espionage and theft of trade secrets. The defendants, Lan Lee and Yuefei Ge, are charged with violating the Economic Espionage Act of 1996 by allegedly stealing confidential computer chip information from former employer NetLogic Microsystems, Inc. and another company, Taiwan Semiconductor Manufacturing Company. NetLogic Microsystems, Inc. is a computer chip design and development company in Mountain View, California. Taiwan Semi-Conductor Manufacturing Company is a computer chip manufacturing company with offices in San Jose, Washington, Singapore and Taiwan. Trial is currently underway in the matter.

The San Jose federal court case, U.S. vs. Lan Lee and Yuefei Ge (Case No. C 06-0424 JW), alleges that the pair illegally downloaded secret technical descriptions of an unreleased computer chip. Lee and Ge then started a company called SICO Microsystems, Inc. and solicited venture capital funding from China under its “863 Program” and its General Armaments Department to fund the company and commercially exploit the stolen information, in competition with their former employer. The FBI was apparently tipped off though e-mails sent by Ge's wife. The pair were originally arrested in 2006 and indicted in September, 2007.

The Economic Espionage Act of 1996 was enacted to prevent illegal technology transfer to foreign governments. The case is one of only a handful brought under the Act and only the second to be decided by jury trial. Prior cases under the Act were decided almost exclusively by judges and most involved domestic espionage.

China's “863 Program,” also known as the “National High Technology Research and Development Program of China” and the “State High-Tech Development Plan,” was created to stimulate the development of advanced technologies and eliminate China's dependence on foreign technologies. The program focuses on developing communications and laser technology for military applications.

Electronic court filings and further procedural and docket information on the case are available at https://ecf.cand.uscourts.gov/cgi-bin/login.pl. Court calendars with schedules for upcoming court hearings can be viewed on the court’s website at www.cand.uscourts.gov.

IP GENERAL: Boalt Hall IP Professor Stephen Barnett Passes Away

Stephen Barnett, Boalt Hall School of Law Professor Emeritus, passed away after a heart attack on October 13.  He was 73.  Mr. Barnett taught at UC Berkeley for 36 years and was an authority on intellectual property law.  Boalt Hall School of Law is planning a memorial service in November.  Donations in Mr. Barnett's memory may be made to the Parkinson Association of Northern California, 900 Fulton Ave., Suite 100-5, Sacramento, CA 95825.

COPYRIGHT, TRADEMARK: NBC sued for Copyright and Trademark Infringement of Typeface Font Software

The Font Bureau, Inc., a well known typeface font designer and provider of typeface font software, sued NBC Universal, Inc. and CNBC, Inc. ("NBC") for trademark and copyright infringement of its typeface font software.  NBC allegedly used the font software on NBC's websites and distributed the software to third parties in breach of its end user license agreement and without obtaining The Font Bureau's permission.  The Font Bureau is seeking an injunction, $150,000 in actual damages or $2 million in statutory damages, whichever is greater, plus attorneys' fees and costs.  The Font Bureau has designed typeface fonts for Apple, American Express, Palm Computing, Hewlett Packard and The Wall Street Journal.
Read more about the case here.

PATENT: Red Hat Urges Supreme Court to Uphold Federal Circuit's "Machine-or-Transformation" Test in Bilski Case

Red Hat, Inc. recently filed an amicus brief in the Bilski vs. Kappos matter, urging the Supreme Court to uphold the Federal Circuit's "machine-or-transformation" test for software patents.  A leading provider of open source software solutions, Red Hat argued that the proliferation of software patents has resulted in new and unknown risks of infringement that many inventors are not willing or financially able to take.  Without the test's limitation on the scope of patentable subject matter, software patents will stifle innovation due to the sheer number of patents granted and the vague boundaries existing in software patent claims.  Bilski  v. Kappos is set for oral argument before the Supreme Court on November 9.  

Red Hat's amicus brief is available by clicking here

PATENT: USPTO Rescinds Controversial New Patent Regulations

The USPTO announced yesterday that it will rescind its highly controversial new patent regulations that were published in the Federal Register in August, 2007 and the subject of a two year battle.  The new rules set limits on the examination of claims in patent applications, continuation applications and requests for continued examinations.  Tafas v. Dudas (now Tafas v. Kappos), 511 F. Supp. 2d 652 (E.D. Va. 2007) sought to invalidate the new rules on the grounds that the USPTO lacked substantive rulemaking authority. A motion to dismiss and vacate the district court decision will be filed jointly by the USPTO and co-plaintiff/appellee, GlaxoSmithKline. 
Read more in the USPTO's 10-8-09 press release, here.