Tag Archives: legal

Lawmaker Seeks to Expand Post-Grant Reviews

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Senator Charles Schumer recently introduced legislation that would expand the scope of covered business methods eligible for post-grant review.  The “Patent Quality Improvement Act of 2013” would also remove the sunset provision and make the program permanent.

Post-grant review procedures 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. Thus, post-grant review allows parties to raise a number of new challenges that were previously reserved for litigation.

Schumer’s bill would expand the availability of post-grant review by amending the definition of “covered business methods” to remove the phrase “financial product or service.” The new definition would read as follows:

IN GENERAL- For purposes of this section, the term ‘covered business method patent’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of an enterprise, product, or service, except that the term does not include patents for technological inventions. (Emphasis added)

If the bill passes, it would then be up to the USPTO to provide precise definitions for the new terms.  While Senator Schumer has stated that the bill would “crackdown on ‘patent trolls’” by providing “small technology start-ups with the opportunity to efficiently address [infringement suits] outside of the legal system,” it has the potential to benefit a wide variety of patent holders.

In addition to this bill there are several others that are pending votes as well:

Manufacturing Innovation in America Act of 2013 (H.R. 2605)

Patent Abuse Reduction Act of 2013 (S. 1013)

End Anonymous Patents Act (H.R. 2024)

Patent Litigation and Innovation Act of 2013 (H.R. 2639)

MODDERN Cures Act of 2013 (H.R. 3091)

PATENT Jobs Act (H.R. 2582)

STOP Act (H.R. 2766)

PACES Act (S. 1478)

PARTS Act (S.780)

Medical Innovation Prize Fund Act (S. 627)

I will keep you updated as the bills are passed or defeated.

How Can I Help?

For detailed advice about post-grant proceedings, 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 Copyright Office Wants to Hear from You on Copyright Policies in the Digital Economy.

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The Department of Commerce’s Internet Policy Task Force (IPTF) last week issued a green paper on copyright, and Chief Policy Officer and Director for International Affairs Shira Perlmutter commented on the highlight of the paper’s core content and goals.

The paper, Copyright Policy, Creativity, and Innovation in the Digital Economy (Green Paper), represents the most thorough and comprehensive analysis of digital copyright policy issued by any administration since 1995. Along with the National Telecommunications and Information Administration (NTIA), the USPTO has played a key role in its production, from gathering public comments to the drafting and releasing the paper .

The Green Paper calls for new public input on critical policy issues that are central to the  nation’s economic growth, cultural development and job creation. It is intended to serve as a reference for stakeholders, a blueprint for further action, and a contribution to global copyright debates.  The Copyright Office will be reaching out to the public for views on a variety of topics.

Shira states that: “In recent years, the debates over copyright have become increasingly contentious. Too often copyright and technology policies are seen as pitted against each other, as if a meaningful copyright system is antithetical to the innovative power of the Internet, or an open Internet will result in the end of copyright. We do not believe such a dichotomy is necessary or appropriate.

The goals espoused in the paper— ensuring a meaningful and effective copyright system that continues to provide the necessary incentives for creative expression, preserving the technological innovation and free flow of information made possible by the Internet, and delivering creative content in the broadest possible fashion to consumers—are ones that we think can, and must, be accomplished in tandem.

By intention, the Green Paper does not set out substantive policy recommendations, except where the administration is already on record with a stated position. Rather, it seeks to provide a thorough and objective review of the lay of the land—describing changes that have already occurred, identifying areas where more work should be done, and setting out paths to move that work forward. The paper expresses support for efforts underway to address some of the open issues in other forums—notably Congressional attention to music licensing, the Copyright Office’s work on orphan works and mass digitization, and the Intellectual Property Enforcement Coordinator’s facilitation of cooperative efforts by stakeholders to curb online enforcement.”

In  the coming weeks, the Copyright Office  will begin to move forward on the specific items outlined in the paper for IPTF action:

  • Establishing a multistakeholder dialogue on improving the operation of the notice and takedown system for removing infringing content from the Internet under the Digital Millennium Copyright Act (DMCA).
  • Soliciting public comment and convening roundtables on:
    • The legal framework for the creation of remixes—user-generated content that uses portions of copyrighted works in creative ways.
    • The relevance and scope of the first sale doctrine in the digital age.
    • The appropriate calibration of statutory damages in the context of (1) individual file sharers and (2) secondary liability for large-scale infringement.
    • Whether and how the government can facilitate the further development of a robust online licensing environment, including access to comprehensive public and private databases of rights information.

If you are a copyright stakeholder you need to  continue to engage energetically and productively to develop the best possible copyright policy for the Internet.  In order to do this the Copyright Office needs to hear from all affected interests, including those who create works, those who distribute them, and those who enjoy them.

You can add your comments here.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, 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

Reminder: Be On Alert For Fraudulent Solicitations.

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Our readers should be aware that fraudsters continue to target trademark and patent applicants with solicitations that purport to be from the U.S. Patent and Trademark Office or other official regulatory bodies. As new scams continue to surface, it is important to remain vigilant.

The most recent fraudulent trademark solicitation brought to our attention targets international trademarks. The company, Worldwide Database of Trademarks and Patents (WDTP), requests payment of a filing fee for the registration of an international trademark in its Internet database. The official looking communication references the registrant’s trademark, registration number, and registration date. An example of the fraudulent solicitation can be found here.

Unfortunately, theses scams can take many different forms. They often include offers: (1) for legal services; (2) for trademark monitoring services; (3) to record trademarks with U.S. Customs and Border Protection; and (4) to “register” trademarks in the company’s own private registry.

As highlighted by the USPTO, these solicitations increasingly mimic the look of official government documents. For instance, they may include official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records. They may also cite to other government agencies and sections of the U.S. Code.

How Can I Help?

If you receive any document that references your intellectual property and requests the payment of a fee, it is imperative to conduct due diligence before sending any money. The bottom-line is that if the communication did not come from the USPTO or your attorney, it is most likely fraudulent. Please feel free to check with 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

Jury Still Out on Post-Grant Review

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Post-grant review became available on September 16, 2012, along with several other America Invents Act provisions. However, the jury is still out on the potential impact of the new method to challenge a patent’s validity.

The new post-grant review procedures 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. Thus, post-grant review allows parties to raise a number of new challenges that were previously reserved for litigation.

Post-grant review is also designed to proceed quickly. Under the rules established by the U.S. Patent and Trademark Office, post-grant review proceedings should be completed within one year of their commencement. In addition, although it contains several aspects of litigation, including limited discovery, protective orders, and settlement, it should cost considerably less.

Challengers may also have a better chance of success. While courts presume that patents are valid unless “clear and convincing” evidence demonstrates otherwise, there is no similar presumption in post-grant review. Rather, patents are invalidated based on a preponderance of the evidence.

Although post-grant review certainly has substantial benefits, there are several limitations that may impact how widely it is used. First, challengers must act quickly. The proceedings must be commenced within nine months of a patent’s issuance. More importantly, the petition must include all of the evidence needed to prove invalidity.

In addition, post-grant review has several important implications when it comes to estoppel. Estoppel applies to any invalidity claims that were raised or reasonably could have been raised during the post-grant review. Because the grounds available for challenging invalidity are so broad during post-grant review, estoppel can severely handicap any subsequent litigation. Unlike inter partes reexamination, estoppel applies not only to district court litigation, but also to all USPTO and International Trade Commission proceedings.

Post-grant review is currently only available for “covered business-method patents,” and it will be some time before it expands to all patents. Therefore, the full impact of the new process will likely not become evident for several years.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, 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

Apple Registers Trademark for Its Distinctive Store Design

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Apple fiercely guards its intellectually property, like all trademark owners should.  So it isn’t surprising that the company recently obtained a trademark registration for the design of its retail stores.

According to the trademark description, Apple seeks to protects its minimalist design and layout, which includes “a clear glass storefront surrounded by a paneled facade” and, within the store, an “oblong table with stools…set below video screens flush mounted on the back wall.”

While the Apple trademark made headlines, this type of trademark right—known as trade dress—is not unusual. It generally covers the design and shape of the materials in which a product is packaged.  Examples include the layout of a magazine cover and the distinctive shape of a bottle. In 1992, the U.S. Supreme Court allowed a fast-food chain to protect the appearance and décor in its Mexican restaurants.

As with other trademark registrations, trade dress applicants must be able to show not only that the design is distinctive, but also that the average consumer would likely confuse its products with others of similar appearance.

Apple has good reason to want to protect the design of its retail outlets. Locations in the U.S. generated an average of $43.3 million in FY2011. In addition, while the most recent registration only applies in the U.S., counterfeit stores have popped up overseas. As Reuters reports, a counterfeit store that opened in China looked so authentic that employees thought that they were working for Apple.

How Can I Help?

Consistently using a distinctive “look” for your company can be extremely valuable and certainly worthy of protection. For more information about trade dress rights, 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

What Does First-to-File Patent Mean for Inventors?

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On March 16, 2013, the United States officially moved from a “first-to-invent” system to a “first-inventor-to-file” system. The switch is one of the most significant changes under the America Invents Act. Under the new patent rules, the first filed application for an invention has priority over subsequently filed applications, regardless of which applicant was first to invent.

For inventors, it is now all about timing. Applications filed before March 16, 2013 will follow the old system under which the first to invent will often prevail. However, applications filed after the implementation date that do not claim priority to an application filed prior to March 16, 2013 will be prosecuted under the new law.

Given the potential downsides to the new first-to-file system, inventors should consider these important points:

  • First, it may be more difficult to obtain a patent under the new system. The new rules under the AIA expand the range of disclosures that will be considered prior art, making it more difficult to successfully secure a patent. The existing one-year grace period, which eliminated some prior art references, is also more limited under the new rules.
  • In addition, it may also be more difficult to defend a patent application because patents filed under the new system are more susceptible to invalidity challenges. As I have previously discussed, the new post-grant review proceedings allow patents under the first-to-file system to be challenged in the first nine months after issuance.  Also, invalidity challenges may be brought on a wide variety of grounds that were previously reserved for litigation.
  • Finally, there will also be a learning curve for patent applicants, USPTO examiners, and the courts, all of which are accustomed to the old system. So, to avoid the uncertainty that exists, if you have an application that can claim priority before March 16th, 2013, you may want to consider filing your non-provisional patent application taking priority from that provisional patent application.

How Can I Help?

If you have any questions about the timing of your patent application, 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

How Long is My Patent Term?

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After you have spent all the time an effort to get your patent granted, determining the length of  time your patent rights are valid is the next step.

Normally, your patent term runs for 20 years from the filing date of the earliest U.S. application to which priority is claimed.  However, that isn’t the whole story.  Various issues can arise during the prosecution of your patent, so adjustments are made to the patent term.

As you might expect, this can make determining how long you patent rights exist a bit more difficult.
Fortunately, the U.S. Patent and Trademark Office recently announced a new tool for patent holders. The online calculator enables members of the public to estimate the expiration date of a utility, plant, or design patent.
The tool can help determine if the patent term has been shortened or extended by a number of factors, including:
•    Type of application (utility, design, plant);
•    Filing date of the application;
•    The grant date of the patent;
•    Benefit claims under 35 U.S.C. § 120, 121 or 365(c);
•    Patent term adjustments and extensions under 35 U.S.C. § 154;
•    Patent term extensions under 35 U.S.C. § 156;
•    Terminal disclaimer(s); and
•    Timely payment of maintenance fees.

The USPTO’s new calculator tool “provides a best estimate of a patent’s expiration date, based on a comprehensive list of factors than can be found in USPTO records.”

The calculator can be downloaded here.

How Can I Help?

While the calculator can provide valuable information, I recommend that individuals and companies still consult with an experienced patent attorney to determine if a patent is still in force. The USPTO also agrees, noting, “Before relying on an expiration date, individuals should always carefully inspect all relevant documents available through the USPTO, court records and elsewhere, and consult with an attorney.”

So, if you, or someone you know, need help with determining patent terms or any other Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, 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

Patent Harmonization.

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The U.S. Patent and Trademark Office held public hearing on March 21, 2013 seeking input on international harmonization of substantive patent law.


World intellectual property leaders are increasingly making patent harmonization a priority.  In addition its work with IP5, a collaboration of the world’s top five IP offices, the United States has also been meeting with leaders from the patent offices of Denmark, France, Germany, Japan, the United Kingdom, the United States, and the European Patent Office.

At the most recent meeting of the “Tegernsee Group” (named for the city in Germany where the first meeting was held), the members were asked to collaboratively develop a joint questionnaire to aid in the acquisition and analysis of stakeholder views across jurisdictions. The questionnaire specifically seeks information and views on four issues of particular interest to harmonization of substantive patent law:
•    The grace period;
•    Publication of applications;
•    The treatment of conflicting applications; and
•    Prior user rights.

Each patent office in the Tegernsee Group will be separately administering the joint questionnaire to its respective stakeholders. The questionnaire being administered by the USPTO can be found here.
As with other pubic hearings, the USPTO also plans to make the public roundtable available via Webcast.  Webcast information will be available on the USPTO’s Internet Web site at www.uspto.gov/ip/global/aia_harmonization.jsp before the public hearing. A transcript of the hearing along with comments from the public will also be posted online.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, 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

Businesses Reminded That NFL Fiercely Protects Trademarks

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With the new season around the corner and training camps underway, I want to remind businesses that the National Football League and the teams in the league fiercely protect their trademarks and especially the “Super Bowl” trademark.  Additionally, each team owns their respective trademarks and aggressively protect them as well.

File:National Football League 2008.svg

Licensing trademarks is big business for the NFL and the league teams. Sponsors like Pepsi, Verizon, Motorola, and Castrol pay more than $100 million annually to be affiliated with the league. However, those who are not officially licensed by the NFL may receive one of the 80 to 100 cease-and-desist letters the league sends each year to businesses using the brand without permission.

Prior to last year’s (2012-2013 season) game, the NFL took legal action against an Indiana man who had the foresight to predict that Jim Harbaugh, coach of the San Francisco 49ers, and John Harbaugh, coach of the Baltimore Ravens, would one day face off in the Super Bowl. Ron Fox filed trademark applications for the terms “Harbowl” or “The Harbaugh Bowl.”

However, the NFL quickly put the brakes on the trademark registration. League attorneys contacted Fox and warned him that they believed that the trademarks could easily be confused with the NFL’s Super Bowl mark.

The argument is tenuous at best; however, we will never know how a court might have ruled on the case. Unsure of his legal rights and unable to afford a costly legal battle with the NFL, Fox ultimately abandoned the application.

Because neither the NFL nor Fox registered the trademark, some may see it as fair game. However, businesses should still expect a letter from the NFL.

How Can I Help?

Strongly enforcing your trademark has its advantages. For more information about how to best protect your rights, 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 Seeks Feedback to Improve Patent Quality.

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Patent quality is a hot topic for 2013.  The U.S. Patent and Trademark Office (USPTO) recently announced a series of roundtable discussions intended to foster a partnership with the software community to enhance the quality of software-related patents.

More recently, the USPTO put out the call for feedback on how to improve overall patent quality.

As detailed in this Federal Notice, the USPTO is specifically interested in potential practices that applicants can employ at the drafting stage of a patent application in order to facilitate examination and bring more certainty to the scope of issued patents. The issues for comment are broken down into two distinct areas—clarifying the scope of the claims and clarifying the meaning of a claim term in the specification.

The USPTO is seeking public comment on advantages and disadvantages of applicants employing the following practices when preparing their patent applications:

  • Presenting claims in a multi-part format by way of a standardized template that places each claim component in separate, clearly marked, and designated fields. For instance, a template may facilitate drafting and review of claims by separately delineating each claim component into separate fields for the preamble, transitional phrase, and each particular claim limitation.
  • Identifying corresponding support in the specification for each of the claim limitations utilizing, for example, a claim chart or the standardized template described above. This practice could be particularly beneficial where claims are amended or where a continuing application (continuation, divisional, continuation-in-part) is filed.
  • Indicating whether examples in the specification are intended to be limiting or merely illustrative.
  • Identifying whether the claim preamble is intended to be a limitation on claim scope.
  • Expressly identifying clauses within particular claim limitations for which the inventor intends to invoke 35 U.S.C. 112(f) and pointing out where in the specification corresponding structures, materials, or acts are disclosed that are linked to the identified 35 U.S.C. 112(f) claim limitations
  • Indicating whether terms of degree–such as substantially, approximately, about, essentially–have a lay or technical meaning and explaining the scope of such terms.
  • Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to certain technologies, such as software.
  • Designating, at the time of filing the application, a default dictionary or dictionaries (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of the claim terms.

Finally, the USPTO also plans to issue a separate notice directed towards identifying potential practices that it can employ to achieve the same goals.

I will be sure to post an update when the notice is published.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, 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