Support For Expanded Review Of Business Method Patents.

While there are several anti-patent troll bills pending in Congress, the STOP Act seems to be gaining the greatest traction. It would make the U.S. Patent and Trademark Office’s Transitional Business Method Program permanent and expand it to other industries.

The new post-grant review procedures under the America Invents Act allow a third party to challenge a patent’s invalidity on a number of grounds, including prior art, lack of enablement, lack of novelty, or inadequate written description. Post-grant review allows parties to raise a number of new challenges that were previously reserved for litigation.

Under the proposed legislation, the definition of “covered business methods” would be expanded to include “an enterprise” or “a product.” The STOP Act, sponsored by Reps. Darrell Issa and Judy Chu, closely mirrors Senate legislation introduced by Sen. Chuck Schumer this spring.

In a letter to leaders of the judiciary committees of both the House and Senate, nearly 50 major U.S. companies, including Morgan Stanley, Google, Wal-Mart and Dell, expressed support for the legislation as a way to combat abusive patent litigation by patent-assertion entities (PAEs).

As the companies explain, “Too often, abusive PAE litigation exploits low-quality business method patents.
The vague and sweeping scope of many business method claims covering straightforward, commonsense steps has led to an explosion of patent claims against processes used every day in common technologies by thousands of businesses and millions of Americans.”

“Expanding an existing Patent Office program, the Covered Business Method (CBM) Program, beyond its current limitation of ‘financial services’ business method patents to all business method patents would accomplish this goal. An expanded CBM Program would enable the Patent Office to reconsider the validity of issued business method patents and provide a targeted “surgical strike” against the worst of these frequently abused patents. And it would increase certainty for innovators actually bringing new products to market, who now face an increasing threat of extortive demands based on low-quality patents,” the letter further argues.

How Can I Help?

I will be closely tracking the status of this legislation and all other patent reform initiatives currently pending in Congress. For additional information about how the proposed changes may impact you or your company, I encourage you to contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

USPTO Rule Change Eliminates Patent “Dead Zone.”

The U.S. Patent and Trademark Office (USPTO) recently issued a Final Rule to eliminate a “dead zone” inadvertently created by the America Invents Act. Petitioners can now file inter partes review petitions challenging first-to-invent patents and reissue patents upon issuance.

Under the original rules, inter partes reviews were available only for patents that had been issued for at least nine months. In addition, post-grant reviews were only available for patents examined under the first-to-file system. These provisions created two nine-month “dead zones,” in which first-to-invent patents and reissued patents could not be challenged in an inter partes proceeding during the first nine months after issuance.

Under the Final Rule, a petitioner may now file an inter partes review petition challenging a first-to-invent patent or reissue patent upon issuance. Accordingly, 37 CFR § 42.102(a) now states:

(a) A petition for inter partes review of a patent must be filed after the later of the following dates, where applicable:

  1. If the patent is a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act, the date that is nine months after the date of the grant of the patent;
  2. If the patent is a patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act, the date of the grant of the patent; or
  3. If a post-grant review is instituted as set forth in subpart C of this part, the date of the termination of such post-grant review.

The correction became effective March 25, 2013.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Final Rule on Statute of Limitations From The USPTO.

Among the host of new rules taking effect this weekend, the U.S. Patent and Trademark Office’s final rule regarding the statute of limitations provision of the Leahy-Smith America Invents Act (AIA) for USPTO disciplinary actions took effect on August 30, 2012.

A statute of limitation sets the maximum time after an event that legal proceedings based on that event may be initiated. In other words, the clock starts running for you to file a legal action from the time you either learn about the problem, or in some cases, when the problem began (even if you didn’t know about it).

The AIA requires that disciplinary proceedings before the USPTO be commenced not later than the earlier of either the date that is 10 years after the date on which the misconduct forming the basis of the proceeding occurred, or one year from the date on which the misconduct forming the basis of the proceeding was made known to an officer or employee of the USPTO. Prior to the passage of the AIA, disciplinary actions for violations of the USPTO Code of Professional Responsibility were subject to a five-year statute of limitations.

As detailed in the Final Rules, the USPTO has adopted the following procedural rules:

  • A disciplinary complaint must be filed within one year after the date on which the Office of Enrollment and Discipline (OED) receives a grievance forming the basis of the complaint, and in no event more than ten years after the date on which the misconduct forming the basis for the proceeding occurred;
  • A grievance is defined as a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner; and
  • The one-year period for filing a complaint may be tolled by written agreement.

The USPTO has indicated that the new time lines may not be set in stone. Rather, it plans to evaluate these procedures in the future to determine their effectiveness.

According to the agency, “If the new one-year time frame proves to be administratively unworkable or impedes the effectiveness of the disciplinary process, the Office may issue a new notice of proposed rulemaking.”

How Can I Help?

If you, or someone you know, has had an issue while trying to file a patent, defend yourself from a patent lawsuit, or help to enforce your patent rights; please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman

The End Of SIRs.

SIRs or Statutory Invention Registrations will no longer be accepted by the United States Patent and Trademark Office (USPTO) after March 16, 2013.

A statutory invention registration is (was) a publication of an invention by the USPTO made at the request of the applicant.  Applicant’s had to meet certain criteria before a SIR would be published.

Historically, SIRs were used by applicants when they did not believe that they could get a patent on their invention. Publishing the patent application would place the invention(s)  in the public domain so no one else could subsequently get a patent on that idea.  It also lessened the likelihood that the applicant would be sued by someone that may have a similar invention.  At least that was the theory.

In fact, almost all patent applications  in the US have been published 18 months after they were filed in accordance with international treaties.  The published patent applications serve almost the exact same purpose as a statutory invention registration.

Once an application is published, the applicant only has to either let the application go abandoned or expressly abandon the application to put the invention into the public domain.  Additionally, you can, for a small fee, have the USPTO publish the application before the 18 month.  So, as the chart above shows, there has not been a real call for SIRs in recent history.

https://i0.wp.com/ipwatchdog.com/images/leahy-smith.jpg

This was considered during enactment of the Leahy-Smith America Invents Act (AIA).  It was agreed that provisions of 35 U.S.C. 157 pertaining to SIRs should be repealled.

The effective date of the repeal of SIRs is March 16, 2013, regardless of the filing date of the application. The USPTO will consider any pending requests for SIRs filed before March 16, 2013, but any SIRs requests filed on or after March 16, 2013 will not be accepted.

How Can I Help?

If you, or someone you know, need help to file a patent, defend yourself from a patent lawsuit, or help to enforce your patent rights; please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman

 

New First-Inventor-to-File Rules Go Into Effect This Weekend

The U.S. Patent and Trademark Office will finish transitioning The U.S. patent system from a “first to invent” system to a first inventor to file system.

The USPTO also will implement amended rules of practice and examination guidelines related to its interpretation of the first-inventor-to-file provision of the American Invents Act.

“The first-inventor-to-file provision of the America Invents Act, one of its hallmarks, brings greater transparency, objectivity, predictability, and simplicity in patentability determinations,” said Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos said previously prior to his departure from the USPTO. “At the same time, the provision brings the United States closer in harmonizing our patent law with those in other countries around the globe.”

The rules of patent practice will be amended to reflect the following changes made by the America Invents Act:
•    Convert the United States patent system from a ‘‘first to invent’’ system to a     ‘‘first inventor to file’’ system;
•    Treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the U.S. or in another country;
•    Eliminate the requirement that a prior public use or sale be ‘‘in this country’’ to be a prior art activity; and
•    Treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103.


The first-inventor-to-file provision is scheduled to take effect March 16, 2013.

How Can I Help?

If you, or someone you know, need help to file a patent, defend yourself from a patent lawsuit, or help to enforce your patent rights; please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman

 

Should You Wait To File A Patent Applicataion?

If you qualify under the new America Invents Act (AIA) as a micro entity, the answer might be yes.  Micro entities are entitled to receive a 75% discount on fees.  That can be a significant savings.  However, you must first qualify.

“Micro Entity” must certify that, among other things, that neither the applicant nor the inventor nor any joint inventor has been named as the inventor on more than four previously filed patent applications.

Also, neither the applicant nor the inventor nor any joint inventor had, in the calendar year preceding the calendar year in which the applicable fee is being paid, a gross income (as defined by the IRS) exceeding  three times the median household income for that preceding calendar year. The income level is initially set to $150,162, will entitle an applicant to “Micro Entity” status.

Additionally, the applicant has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that would not meet income level discussed above.

“Micro Entities” also include applicants who certify that:

(1) the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or

(2) the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education.

The USPTO also requires that any applicant claiming Micro Entity status must also qualify as a “Small Entity”.  This is intended to prevent Large Entities from qualifying for “Micro Entity” fees by granting some rights to an institution of higher learning.

How Can I Help?

I can help you figure out if you qualify as a micro entity and determine if you can wait for the fee reductions to come into play.  So if you are ready to file a patent application, or know someone that can use my help, please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman