Posted: Saturday, Aug 16, 2014 @ 9:42 am | Written by Gene Quinn | 2 comments
In my experience the reason most people do not succeed is because they just don’t know what to do, not because they are lazy or unmotivated. My hope is that this article will educate inventors and help take some of the mystery out of the steps associated with turning an invention into a profitable endeavor.
Before you consider contacting anyone the best first place to start is with a simple question, which will help you chart the right course. Ask yourself: What you want to do with your invention? Do you want to make and sell your invention? Or, do you want to sell your invention rights to an individual or company who would make and sell your invention? Or, do you want to try and license one or more individuals or companies to make and sell your invention? After you make this determination your initial strategy should come into focus.
Posted: Friday, Aug 15, 2014 @ 12:06 pm | Written by U.S.P.T.O. | 1 Comment »
On August 17th through 18th, the USPTO will perform maintenance on the following trademark systems:
(1) The Trademark Electronic Search System (TESS) will be unavailable from 12:01 a.m. until 5 a.m. on Sunday, August 17th.
(2) The Trademark Official Gazette (TMOG), Trademark Status and Document Retrieval (TSDR), Trademark Electronic Application System (TEAS), and Trademark Electronic Application System International (TEASi) will be unavailable from 12:01 a.m. until 8 a.m. on Sunday, August 17th.
(3) The Trademark Trial and Appeal Board Inquiry System (TTABVUE), Trademark Identification Manual for Acceptable Goods and Services (TIDM), TEAS, TEASi, TESS, TMOG, and TSDR may experience intermittent service disruptions from 11:30 p.m. on Sunday, August 17th until 3 a.m. on Monday, August 18th.
In the Federal Register Notice the USPTO explains that electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. It is hard to argue with this statement given the worldwide growth of patent applications. Truthfully, whenever there is a public forum at the USPTO of leaders from patent offices around the world it almost seems like everyone is overwhelmed. Working together in bi-lateral fashion has given us various Patent Prosecution Highway pilot programs that seek to accelerate applications. The United States worked with the European Patent Office to streamline and update patent classification systems. Sharing files electronically is another step toward streamlining the process for applicants and Offices alike.
Standing in the way of file sharing with other offices is the confidential nature of unpublished U.S. patent applications, as set forth in 35 U.S.C. 122. An applicant now must provide the United States Patent and Trademark Office (USPTO) written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.
Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of 35 U.S.C. § 154(b)(1)(B). As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.
Posted: Thursday, Aug 14, 2014 @ 8:05 am | Written by Gene Quinn | 3 comments
By agreement signed with the Patent Office Professional Association on June 24, 2014, the United States Patent and Trademark Office is once again providing tuition reimbursement for employees who are enrolled in law school seeking a Juris Doctor degree. See 2014 Supplemental Agreement on the Non-duty Hours Legal Study Program. To qualify the employee must have at least 2 years of USPTO experience and sign a continuing service agreement.
The continuing service agreement requires an employee who received tuition reimbursement to provide continued service with the federal government for 30 days for each credit paid for by the USPTO. If the employee leaves the federal government prior to completing the required length of the continued service, the employee’s tuition reimbursement obligation will be on a pro rata basis (based on thirty-day increments).
Posted: Wednesday, Aug 13, 2014 @ 11:15 am | Written by Gene Quinn | 7 comments
Last week the United States Court of Appeals for the Federal Circuit issued a decision in State of Vermont v. MPHJ Technology Investments, LLC. The decision, which was really not much of a decision because the Federal Circuit concluded they lacked jurisdiction, is interesting for at least several reasons.
While Vermont’s actions are undoubtably laudable, despite what some conclude I suspect that when challenged the legislation will fall because it pre-empts patent law, which is federal. For example, one of the factors that would suggest a bad faith patent enforcement under the Vermont statute is if there has previously been a lawsuit or threatened lawsuit based on the same or similar claim of patent infringement.
Currently, the USPTO targets of 10 months on average to a first office action, and an average of 20 months for total pendency were established with stakeholder input in the previous USPTO 2010–2015 Strategic Plan. In an effort to continue to take into consideration industry realities the USPTO would like to ensure a balance between workload, production capacity and the requirements of the stockholder community.
Time was, patent lawyers were magicians, and their bags of tricks were filled with claim drafting tools. Write “a widget,” and shazam! “a widget” becomes as many as one could desire, all through the rules of claim construction. Single sentence claims went on for days, every other word was “said,” and language included words like “slidingly.” The mechanical people all said “comprising,” and the chemical people all said “consisting,” but nobody knew why, except maybe Judge Rich and Irving Kayton.
Now we have patent practitioners. We think about monetization. Edison, Tesla, Kilby, Noyce—they are all gone, and now our idea of high-tech is a patented tax strategy. If a person commits the sin of colorful language, some guy from Chicago puts a price on his head.
The claim drafting wizard is gone, but no one notices that his passing is not a normal, stylistic change, going from gray flannel to bellbottoms to designer jeans.
Epson is a company that we’ve taken some time to examine in past columns published in our Companies We Follow series. Recently, the president of the Seiko Epson Corporation, Minoru Usui, was quoted in comments about his commitment to developing intellectual property and how it protects the corporation’s financial success. We’re always excited to discover innovations from a company dedicated to increasing the strength of their patent portfolio, and we found plenty of patent applications and issued patents from the U.S. Patent and Trademark Office related to Epson’s core printing business, as well as some intriguing side pursuits.
Posted: Monday, Aug 11, 2014 @ 5:48 pm | Written by Michael Lin | 31 comments
As a US Patent Attorneywho has been working abroad in Asia for a while, I’m often the Asia interface with US companies and firms seeking to get their patents granted in Asia, especially China. US Attorneys/Agents always complain about the narrowness of Asian claims – oftentimes limited to just what the examples describe – when the corresponding US claims are so much broader. My 2 cents: broader Asian Patent scope is possible – not easy, but possible. This past week I’ve struggled with 2 applications which we’ll get granted, but with claims merely covering the examples in the spec. However, given a little forethought, we would have achieved a broader scope. So I’m putting down my thoughts in the hope of helping US practitioners a bit with their Asian prosecution.
Laws & Practice Are Different
If you are experienced in Asia practice, know the risks, and have made a conscious decision to write applications in a certain way (i.e., because your US application is the most important), then that’s fine. That’s your decision and I’m all for it. Stop reading now and don’t waste your time. I’m writing this for those who never made that conscious decision and assume that patent practice everywhere is the same as the US. Sorry, but it’s not the same.