Category Archives: Patent

Procter & Gamble Sued for False Patent Marking

Alchemy Asset Services, Inc., a Pennsylvania corporation, filed a false patent marking suit against Procter & Gamble in the Western District of Pennsylvania on May 12, 2010. The complaint alleges that Procter & Gamble marked, advertised, and marketed various products with expired patent numbers and/or marked, advertised, and marketed such products as patent-protected in violation of 35 U.S.C. § 292 with intent to deceive the public.

Alchemy Asset Services requests damages against Procter & Gamble equal to a fine in the amount of $500 for each instance of false marking. One-half of the damage award would be paid to the United States and the other half would be paid to plaintiff. The specific products named in the complaint include:

1. “Ultra Downy” fabric softener;
2. “Fixodent”;
3. “Always Maxi”; and
4. “Puffs” facial tissues.

An answer has not yet been filed.

USPTO Launches Patents Ombudsman Pilot Program

The USPTO announced in an April 6, 2010 Federal Register Notice that it is launching the Patents Ombudsman Pilot Program for a period of one year.

The Program is intended to provide patent applicants, attorneys and agents with assistance with application-processing issues regarding concerns with advancement of prosecution. Applicants, attorneys or agents who have application-processing concerns, and haven’t been able to get the assistance they need through normal channels in the Technology Center (TC), can contact the ombudsman representative for the TC through the USPTO website ( The applicant is expected tol receive a phone call within one business day for a discussion of the specifics of the issue. From there, the ombudsman representative will work with TC staff to address the concerns expressed by the applicant and try to get the application back on track.

“This program is a direct response to feedback we’ve received from members of the patent community who have told us that they need a dedicated resource they can turn to when they have concerns about the prosecution of their application,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “We are always striving for ways to improve the quality and efficiency of patent examinations, and we believe this initiative is an important step forward on both these fronts.”

After the one-year period the USPTO may extend the pilot program with appropriate modifications based on the feedback from participants, the effectiveness of the pilot program, and the availability of resources.

– Katie Cooper

Pennsylvania Company Files Patent Infringement Suit

N.A. Water Systems, LLC (“NAWS”) filed suit for patent infringement in the Western District Court of Pennsylvania on April 14, 2010.

The complaint alleges that Aquatech International Corporation and Debasish Mukhopadhyay infringe NAWS’s rights as an exclusive licensee of U.S. Patent No. 5,250,185 entitled “Reducing Aqueous Boron Concentrations with Reverse Osmosis Membranes Operating at a High pH.” NAWS seeks various declarations that:

1. NAWS’s process known as OPUS does not infringe U.S. Patent Nos. 5,925,255 and 6,537,456 owned by Mukhopadhyay;
2. Any actions by NAWS relating to promoting the OPUS process do not contribute to or induce infringement of Mukhopadhyay’s above-referenced patents; and
3. Mukhopadhyay’s above-referenced patents are invalid and unenforceable.

An answer has not yet been filed.

– Katie Cooper

USPTO Proposes Change to the Provisional Patent Application Period

In an April 2, 2010 Press Release, the USPTO proposed a change that would effectively provide a 12-month extension to the provisional patent application period. The proposed change would “give applicants greater flexibility, reduce costs, and conserve agency resources.”

The change would be implemented through the missing parts practice in nonprovisional applications. The proposed change is expected to benefit the USPTO and the public by adding publications to the body of prior art and by removing nonprovisional applications for which applicants have decided not to pursue examination from the USPTO’s workload.

The proposed change would provide applicants with more time to reply to a missing parts notice in a nonprovisional application that claims the benefit of a provisional application. Applicants would be permitted to file a nonprovisional application with at least one claim within the 12-month statutory period after the provisional application is filed, pay the basic filing fee, and submit an executed oath or declaration. The nonprovisional would need to be in a condition for publication and the applicant would not be able to file a nonpublication request.

Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said he learned at roundtables that were held with inventors across the country that additional time flexibility during the provisional period would greatly benefit them “because the existing 12-month provisional period may provide too little time for inventors to test the marketplace.”

The USPTO is seeking public comment on the proposed change.

– Katie Cooper

President Obama’s $2.322 Billion Fiscal Year 2011 Budget Request for USPTO

On February 1, 2010, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos announced President Obama’s $2.322 billion fiscal year 2011 budget request for the USPTO. The President’s budget request will support a five-year plan designed to significantly reduce the patent pendency periods, improve patent quality, and enhance intellectual property protection and enforcement. To achieve these goals, the USPTO will:

(1) achieve 3% annual efficiency gains in patents processing through the re-engineering of management and workflow processes; and (2) initiate a targeted hiring surge and hire 1,000 patent examiners annually during FY 2011 and FY 2012, targeting former patent examiners and IP professionals who will require minimum training and can be productive virtually from the start of their employment.

The FY 2011 budget request projects fee collections of $2.098 billion and the administration is proposing an interim fee increase on certain patent fees which is estimated to generate $224 million.

– Katie Cooper

Patent Term Adjustment Interim Procedure

The USPTO announced that it is providing patentees with a new interim procedure for requesting Patent Term Adjustment recalculation.   The new procedure allows for the request without a fee or petition that is usually required under 37 CFR 1.705(d).  This procedure is being put into place to comply with the Federal Circuit Decision in Wyeth v. Kappos, No. 2009-1120 (Fed. Cir., Jan 7, 2010).  In order to qualify the request must meet the following:

(1)   be filed no later than 180 days from the issue date of the patent;

(2)   be filed prior to March 2, 2010; and

(3)   the alleged errors must be the ones specifically identified in Wyeth.


John C. Thomas III

Correction to Inventorship After Filing an Unsigned Declaration

Often times when a new Patent Application is filed in a rush it is filed with an unsigned declaration listing inventors. In this situation the U.S. Patent Office will issue a Notice of Missing Parts requiring that an executed declaration be submitted. Sometimes during the process of attempting to obtain signatures from the inventors, it is found out that either not all of the listed inventors are not inventors or that there is an additional inventor. 37 CFR 1.48 covers Correction of Inventorship in Patent Applications. Fortunately, the fix to this situation is currently rather simple. 37 CFR 1.48(f)(1) specifically addresses the issue. All that is that is required is to file the signed declaration with the correct inventors.

Nonprovisional application-filing executed oath/declaration corrects inventorship. If the correct inventor or inventors are not named on filing a nonprovisional application under § 1.53(b) without an executed oath or declaration under § 1.63 by any of the inventors, the first submission of an executed oath or declaration under § 1.63 by any of the inventors during the pendency of the application will act to correct the earlier identification of inventorship. See §§ 1.41(a)(4) and 1.497(d) and (f) for submission of an executed oath or declaration to enter the national stage under 35 U.S.C. 371 naming an inventive entity different from the inventive entity set forth in the international stage.

37 CFR 1.48(f)(1).

John C. Thomas III