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

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

 

Comming Soon: First-Inventor-to-File.

This marks the end of an era in the United States.  On March 16th, the last of the America Invents Act goes into practice.  The U.S. is to transitioning from a “first to invent” system to a first inventor to file system.  The USPTO proposed amended rules of practice and examination guidelines to inform the public and patent examiners of its interpretation of the first-inventor-to-file provision of the American Invents Act.

However, there may be some court challenges to this section of the law and/or how the USPTO interprets what Congress passed into law.  I won’t bore you with the Constitutional arguments about this portion of the law, you can Google a other blog posts on that subject.

The purported purpose of this change in the law was to bring “greater transparency, objectivity, predictability, and simplicity in patentability determinations,” said former USPTO Director David Kappos. “At the same time, the provision brings the United States closer in harmonizing our patent law with those in other countries around the globe,” he added.

The rules of patent practice will be amended to reflect the following changes made by the AIA:

  • 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.

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

Please note, under the currently proposed examination rules, it is advisable that you file a provisional patent application before you do ANYTHING else.  If you are not the first inventor to file, you will not be able to overcome someone’s patent application even if you did invent prior to them.

How Can I Help?

If you, or someone you know, need help to file a patent or defend yourself from a patent lawsuit, or need 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

Virtual Patent Marking.

As part of efforts to improve the patent process, the Leahy-Smith America Invents Act (AIA) modernizes the ways that patent holders may mark their products. It specifically allows patent owners to mark their products with an Internet address that provides the patent numbers associated with the product.

Patent marking is important because, without it, a patent holder may have a more difficult time proving infringement. Under 35 U.S.C. 287 (a), if a patent holder fails to properly mark a patented invention, “no damages shall be recovered by the patentee in any action of infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for the infringement occurring after such notice.”

Under the existing statute, patentees had to mark their products by puting  the word “patent” or the abbreviation “pat.” on the invention along with the patent number. If this could not be done easily, a notice could be provided by fixing a label containing the information to the article or to the package containing the article.  However, if there was more than one patented item in the object being sold, like a computer, or a smartphone, the amount of space required makes marking very difficult.

The AIA allows a patent holder to virtually mark the article “by fixing on the article the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent.”

The amended statute highlights that listing patents on a company’s website, by itself, is not sufficient to comply with the virtual marking permitted under § 287(a). The patent holder must still mark its product with the word “patent” in order to be afforded protection under the law.

How Can I Help?

Patent marking is an important part of the patent process. In fact, it is integral to protecting your rights. I work with clients in all phases of patent procurement, including patent marking. If you need help to marking your patented invention, 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