VIP Community on Path to Patents in Brazil, Comma Matters, and DOCX-related Errors
VIP Community on Path to Patents in Brazil, Comma Matters, and DOCX-related Errors
Also: IP angle on US Army toy made in China and Clause 8 Update
Thank you to everyone who has read, subscribed to, and shared Voice of IP since the first update - featuring IP news that matters - two weeks ago! I was especially heartened that last week’s original reporting about the mystery letter and new Section 103 guidance from the USPTO got quite a bit of traction. I’m hoping that trying to shed light on what the USPTO is up to and why helps the USPTO and the rest of the innovation community. A bit more about last week’s topics below and much more in the weeks to come!
I’m still experimenting with what Voice of IP week’s weekly updates will look like but I definitely want readers’ insights to play a big role. In that spirit, this week’s update is mostly based on valuable perspectives that the VIP community has already graciously sent my way.
Brazil’s “Green Patents” Program
Brazil is increasingly becoming a go-to destination for patent enforcement because of the size of its market and predictable system for obtaining injunctions. But many who filed applications in Brazil in the past remember the process of obtaining a patent there being long and painful. Roberto Rodrigues and Chairin Kong, from Brazil’s top IP firm - Licks - write in about “one of several measures the Brazilian Patent and Trademark Office (BRPTO) has taken to combat its backlog and approach the international standards for the analysis period for granting patents” and a dramatic example how the market is growing.
The BRPTO has had the "Green Patents" program since 2016 to speed up the examination of patent applications related to “combating climate change.” Under the program, Applicants are entitled to request priority examination for the following five categories of green technologies: (i) alternative energies; (ii) transportation; (iii) energy conservation; (iv) waste management; and (v) sustainable agriculture.
In the last 5 years, 411 applications with priority examination have been requested for green technologies, of which 248 were granted and 151 rejected.
In addition, in 2023, the average time between the request for speed-up and a decision for these types of applications was of approximately 7 months, a very short period compared to the time that the Office takes for common patent applications, i.e., 6-7 years.
Growing auto market: several automotive companies, at the beginning of 2024, announced billion-dollar investments in the electric car segment in Brazil for the next years. France's Renault announced an investment of R$ 5.1 billion, the U.S. company GM R$ 7 billion, Germany's VW R$ 16 billion, Japan's Toyota announced R$ 11 billion, the Stellantis group R$30 billion, and South Korea's Hyundai announced R$ 5.5 billion.
Commas Matter?
“Jay from Brooklyn,” a longtime Clause 8 listener, passed along this recent PTAB decision with the following note: “good reminder about commas but Law360’s article missed that the limitation in question did not actually include ‘a comma.’”
He’s right. The decision actually turned on whether the absence of commas in the following limitation would doom the patent owner:
locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video
In another impressive victory for PTAB powerhouse Lowenstein & Weatherwax LLP, a majority of the PTAB panel agreed with the patent owner’s interpretation that:
it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).
The same judges noted that the following interpretation of the limitation “while not unreasonable, makes less sense”:
That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video.
The dissenting judge didn’t seem fond of the majority understanding the limitation “through the use of commas” while acknowledging that it “contains no commas.” It remains to be seen what the Federal Circuit thinks as the case (likely) makes its way back there.
With the benefit of hindsight, the issue would have likely been avoided altogether if the limitation was broken up, for example, to recite “locating encryption information within the requested portions of the selected stream of protected video, wherein the encryption information identifies encrypted portions of frames of video.”
Jay’s Takeaways:
Simple phrases are always better if you’re trying to draft clear claims
Every comma/lack of comma potentially matters in a claim
Anyways, a good day for patent attorneys who love discussing comma placement.
DOCX-related Errors at USPTO
Julie Burke and Michael Spector share a deep dive on IPWatchdog about patent practitioners’ “misadventures . . . when filing applications in the DOCX format” based on 19 petitions that pertained to errors that “occurred in filings before January 17, 2024, when the DOCX surcharge mandate went into effect.”
They rightly note that the best practice remains to “[c]ompare the documents to ensure no unintentional changes are there. Mark this is a mandatory step. You must compare the User-submitted DOCX to the USPTO-generated DOCX; the User-submitted DOCX to the USPTO-generated PDF; a User-submitted PDF to the USPTO-generated DOCX; and the User-submitted PDF to the USPTO-generated PDF,” as previously summarized by Pushpendra Dwivedi.
Licensed by US Army, Made in China
An eagle-eyed VIP reader notices an interesting IP licensing arrangement on his kids’ new US Army walkie talkies:
Clause 8 Podcast Update
Later this week, I’m looking forward to sharing an episode featuring an interview with someone who has recently stepped into the top patent job at one of America’s largest patentees. Most of the episode will focus on how to figure out and put into place a new patent portfolio development strategy at a large technology company. This will be the last episode of this (mini-)season…hope to share some exciting news about Clause 8 soon.
Do you know the real story of why the USPTO released the 112(f) Memorandum last week? Do you have special insights about how the US Army licenses its trademarks? Are you Morgan Chu and want to share the story about how you ended up representing Elon Musk v. OpenAI?
Please email me at eli@VoiceOfIP.com or find me on Signal at eli.92.
Would the comma issue (or lack thereof) be amenable to discussions of changing claims from their current forced structure of being a single sentence?
That’s an interesting idea. I do think breaking up the phrase at issue into separate clauses would have done the trick here.