Archive for May, 2015

Recording Telephone Conversations

Saturday, May 30th, 2015

During a recent oral argument, Judge Wallach asked counsel about a recording that had been made of a telephone call  without the other side’s consent. Apparently, the telephone call was presented as evidence at trial.  As you may know, states take different positions on whether notice must be given to the other party of a telephone conversation when a recording is being made. Thirty-eight states are single-party-consent states, whereas twelve states are two-party-consent states.  Judge Wallach emphasized that regardless of whether a state is a lenient single-party-consent state, that state’s bar opinions might take a stronger position.  In such an instance, the state bar opinions trump the criminal statute for purposes of controlling conduct of lawyers within the state.

Here’s a link to a presentation on Colorado law that illustrates the issue in more detail:  [Link].

USPTO Updates Patent Eligibility Guidance Web Page

Saturday, May 23rd, 2015

The PTO has updated its Patent Eligibility Guidance page with Abstract Idea Workshop Materials for use with the previously published Abstract Idea Examples.  Also provided is the USPTO’s case law summary.  What appears below is from the PTO website [Link].

Prison Labor and Patent Publications

Tuesday, May 19th, 2015

wordprocessing Having been a registered patent attorney for over 20 years, I was surprised to learn the other day that prison labor is used as part of the USPTO’s printing process.  I had never heard of that before.

Apparently since at least 1989, the PTO has outsourced some document proofing and printing operations to a contractor that then contracts with UNICOR — the Federal Prisons’ corporate entity that employs prisoners.

In a UNICOR report from 2009, the process is described as follows:


UNICOR has more than 35 years of experience supporting both military and civilian agencies and their contractors in data entry and document conversion. And contract awards can be made without the hassle of time-consuming competitive bidding.

The Challenge

Reed Technology and Information Services, Inc. (RTIS) was seeking a subcontractor counterpart that was passionate and reliable to meet the stringent requirements of the U.S. Patent and Trademark Office (USPTO) in support of its complex technical, high volume data needs, within the United States and abroad.

A Proven Performance History

UNICOR’s history of quality and timely performance in providing data conversion, pre-press composition, and searchable database creation services made UNICOR Data Services a sure investment. For more than 20 years, UNICOR has enjoyed a “win win” relationship with RTIS, effectively supporting the company by providing electronic information services such as data capture management and distribution tailored to the clients’ unique and time- sensitive specifications. RTIS specializes in the conversion of complex technical information, containing text, drawings, complex chemistry, mathematical formulas, statistics, and data tables, converting them into searchable formats, utilizing standard software conversion tools and RTIS’ proprietary applications.

A “Win Win” Solution

For almost 40 years, RTIS has consistently delivered to the USPTO high accuracy, high volume data conversion and handling, along with leading edge technical and process flow solutions that enable the USPTO to meet its statutory requirements for publishing patent applications and granting issued patents weekly. Confident that it would rise to the challenge, RTIS engaged UNICOR’s services without hesitation. Work performed under the subcontract includes data entry, data cleanup, verification, SGML-like tagging of all data, quality control, and return of patent information to RTIS.

Overwhelming Success!

UNICOR was RTIS’s “win-win” answer to fulfilling the stringent requirement from USPTO. Each week RTIS delivers over 160,000 pages of complex technical documentation to the USPTO with UNICOR’s support and expertise.

The process is complex. The USPTO contract details strict quality requirements and requires contractor flexibility to accommodate variations in the patent volume. RTIS forwards new patents for processing on a daily basis. The daily volume can range up to 35,000 pages a day. The work assigned must be completed within five days, regardless of volume surges. UNICOR cannot have more than 12.5 errors per 100,000 key strokes per category of patent, whether it is an abstract, text or a claim. UNICOR’s performance is measured on a weekly basis and according to RTIS, UNICOR has consistently out-performed the contractual requirements.

A Mutually-Rewarding Relationship

This longstanding relationship supports our respective missions and the services performed are highly adaptable to the federal inmate workforce. The exceptional work provided by the inmates, at cost-competitive rates, ultimately benefits the “bottom line” and reaffirms this trusted bond.

One prisoner blogged about the job at this link: [Link].   It was interesting to hear that a prisoner in the patent processing division works from 7:30-4:30 and can earn $300 a month, after several promotions.  And, apparently, there is software that detects if the prisoner adds any profanity to a document.

Another blogger wrote about the process here:  [Link].

I can’t help but wonder if Cool Hand Luke would have met with a better fate if he had worked as a patent formatter as opposed to tarring roads and clearing brush.

Did you stay up to date in 2014?

Thursday, May 14th, 2015

Over the past few years, I have been writing the intellectual property chapter for the Colorado Bar Association’s book Annual Survey of Colorado Law. While the book focuses on Colorado law, the intellectual property chapter tends to be dominated by federal developments. This year’s publication is now available for download (for a nominal fee) in its entirety or by individual chapter from the CBA-CLE website: [Link].

Here’s a link to some of my other CBA-CLE materials: [Link].

Judge Sue Robinson Elected to American Law Institute

Wednesday, May 13th, 2015

Judge Sue Robinson is one of the newest members of the American Law Institute, elected this past April.  Judge Robinson is a US District Judge in the District of Delaware who carries a significant docket of patent cases.

As I look over the membership of the ALI and wonder if a Restatement of Patent Law could be far off — the ALI is currently drafting the first Restatement of Copyright Law — it occurs to me that the ALI ranks might benefit from additional new members with practical patent expertise.  Some possible additions that come to mind are Judge Linn, Judge Moore, Dennis Crouch, Ted Sichelman, Donald Chisum, and Carl Moy.

Judges Bryson, Wallach, O’Malley, and Dyk are already members of the ALI.