Independent Clarification on Patent Laws

What am I missing in this clarification? It seems to suggest the same thing some of us have been stating from day one.

As for rejections being normal, thats a matter of ones opinion, but the re-exam statistics published tend to differ. There are some re-exams where the patent survives in its entirety. There are others where there are rejections, and the patent holder modifies their claims, by making them narrower, or less broad, and then there are some that get rejected in their entirety.

At this point in time, in the case of Neom, as has been stated, they can address the 95 rejections, and modify the claims, as your attorney has suggested, and as we have stated from the beginning. The USPTO may then see the idea as patentable under the modified claims, and rule as such. Or their explanations or modifications may not suit the USPTO, and the rejections stand.

The odds that the USPTO will allow all 95 claims to stand at this point, as they are written is slim to nil.

So the question then becomes, what modifications were necessary, and then how strong does the patent remain in this space, after such modifications.

So really there has been no clarification from whats been said here that I can see, because it all depends on what claims Neomedia now submits to the USPTO, to get them to over ride their rejections. Then what impact that has on the market if they have to significantly narrow those claims.

This is all standard practice with the re-exam process, and no one will know the outcome, until Neomedia submits their response in the next 60 days, and the USPTO reviews that response and makes a new ruling. This process can go on for a very long time, with Neomedia responding to each new ruling and then the USPTO reviewing that response, until there is a final action ordered.

As for attorneys opinions, have you ever noticed, there is always two different views in every case, one on each side of the issue?

By the way, I have never heard a patent owner has to change their patent to make it fairer. Fairer to who? The US does not have a standard that requires a patent to be fair. Just the opposite. A patent is supposed to give the inventor exclusive rights to their invention, for a 20 year period, so they can profit off it exclusively during that time period to cover their expenses they incur in inventing the idea or object.

They do require that some patents claims be made narrower, because the broadness of the claim, covers areas already patented by others. Thats not to be fair, but so this patent does not impede the rights of the original prior art this patent is duplicating.

Tessera Addresses Mischaracterizations of Patent Validity and Legal Process
http://www.tessera.com/news/press_releases/?releaseId=1115927

“Nothing issued by the U.S. Patent and Trademark Office (PTO) in these reexaminations has overturned our patents. We believe the market may have misunderstood the PTO’s terminology, and we are taking this opportunity to clarify the process,” said Scot Griffin, senior vice president and general counsel, Tessera. “Claims of a patent can not be invalidated in reexamination until the process is fully complete, including all appeals.”

The PTO recently issued office actions regarding claims in five Tessera patents, and the company anticipates an initial office action for a sixth patent sometime in the coming weeks. These office actions are a usual step in the PTO reexamination process and are in no way a final determination on the validity of the patents. Even after a final determination in the PTO, Tessera would have ongoing opportunities to appeal any decision; the patents would remain in force throughout all appeals. Tessera is very familiar with the prior art to the patents under reexamination because of its previous lawsuits, which were uniformly resolved in Tessera’s favor.

The claims of a patent undergoing reexamination are
not invalidated until a reexamination certificate canceling the claims is issued.

In NeoMedia’s case, that hasn’t happened yet.

Elin are you new to GoMo? Have you seen the articles I have written on Scanbuy re: Telefonica and pictures of Times Square? Or my interview with Jonathan Bulkeley?

If you feel that I am not indepentent then please just read something else. This is the second time this week I have been accused of this and its getting boring.

I fear you might even be the other person in disguise - as it seems as though only women have an issue with me.

Anyone that knows me knows that I am even harder to companies that I like as I want them to succeed.

With this - I have no idea of barcode laws and Dean wrote some strong comments that I had no idea about and I wanted to check them.

Believe me anyone can sponsor GoMo News - but this is my passion it is not my main source of income - but anything that comes in pays other bloggers to write for me.

I do this because I simply love it.

Iis not a question of you being independent. I just felt you were writing an article entirely based on assumptions, to cast the situation Neomedia is in in a favorable light, when we really do not know which way the pendulum will swing at this point.

But statements like:

Patent rejection is normal. It is common to reject patents –but that does not mean that the IP of the company just vanishes. In many cases they are changed or adapted to meet requirements or to make them fairer.”

and

“I am not an expert but it sounds more likely to work around a patent then to simply reject it – I have 2 patents and they weren’t cheap. So that money has to be for something – no?”

Don’t really add much. First of all, there is no such thing as fair resolution as others have pointed out. What will happen is Neomedia will have to narrow its patent down to something that is patentable. The problem is what they may be left with may be so narrow, that while it protects their process, it will not stop others from playing in the barcode process using their own methodology. And we all know that until now (that is until its patents were being reviewed) Neomedia’s only source of revenue, or potential was in suing other companies for infringement. Now that they see the writing on the wall, they made announcements that the patents wont be the focus of their business. So if that is the case, move on. They cant have it both ways. Either the patents are important, or they are not.

Also, what is you point, that the money has to be spent for something? This is just a false statement.

Thanks for clearing the muddied air.

This was my impression also.

P.S. Keep on doing what you are doing. I am all for fair. But, I also have my opinions, so will others.