Patent Term Calculator Released by USPTO

The USPTO release a patent term calculator.  As its name suggest, the patent term calculator determines when a patent will expire.  The calculator is in the form of an Excel spreadsheet that is available for download.

The calculation is surprisingly complicated; the revised final rules in the federal register are available for viewing.  The term can be extended for the Office's delays: for example, when the USPTO takes longer than fourteen (14) months to examine initially an application.  The extension can be reduced when the applicant extends a deadline.

The patent term calculator should be used in several situations:

1. When a patent issues, the notice of allowance will include a calculation of the extension.  Applicant's should confirm the USPTO's calculation so they can petition if an error is found;
2. When calculating a license, the length of the patent most likely will affect the price of the license because the length of the license period is changed; and
3. When a competitor is timing its entry into a market and the competitor does not want to commit an act of infringement before the patent has expired.

What Applicants should remember:

1. Applicants may petition the USPTO if a mistake in the USPTO's term extension calculation is discovered; and
2. Extensions of time when responding reduce the patent-term extension on a day-for-day basis.

Dilbert Comic--Patent Juries

I read a Dilbert comic from February 26, 2013, about patent juries that I thought was worth sharing.  The link is below:

Issues of infringement and damages are usually decided by a jury in a patent infringement lawsuit.  The cartoon demonstrates how important it is to have a lawyer that can explain to a jury the nuances of an invention involving cutting-edge technology.

Dan Weiss forwarded this comic to me.  Dan practices in the area of municipal law, including property tax appeals.

Divorce and Patents

In Taylor v. Taylor Made Plastics, 2013 WL 1798964 (USDC MD FL, 2013), Judge Kovachevich dismissed the plaintiff's patent infringement lawsuit because the plaintiff, one of the joint owners Mr. Taylor, failed to join all other co-owners (i.e. Mr. Taylor's ex-wife, Ms. Taylor).

Two things to take from this case:

1. Before bringing suit for patent infringement or answering a complaint, investigate if all of the owners have been joined, , especially when the plaintiff is an individual and may be divorced; and
2. When drafting a divorce settlement (or any other redistribution of property) involving a patent as marital property, address the issue of ownership of patents and other IP explicitly and consider the distributions affect on standing;  compare Enovsys LLC v. Nextel Communications, Inc., 614 F.3d at 1335-36.

by Loren Pearson

USPTO Offers 75% Discount to Micro Entities

The United States Patent and Trademark Office (USPTO) enacted rules establishing a 75% discount of some patent fees for qualifying patent applicants on March 19, 2013.  The USPTO published the final rules in the Federal Register at 77 Fed. Reg. 75019  Micro-entity status is meant to reduce the cost to inventors who are not affiliated with business and that do not yet have access to capital.

To qualify, a patent applicant must meet the following criteria:

1. Does the applicant qualify as a small entity?   (i.e. an individual, business with no more than 500 employees, or nonprofit).
2. Has applicant or any joint inventor filed no more than four US non-provisional patent applications? An exception exists if prior-application were assigned to a past employer.
3. Did all applicants and listed inventor make no more than $150,000 in the past year?  $150,000 is the number for income in 2012.  The amount is adjusted annually.
4. Are no rights in the application promised or licensed to a non-micro-entity?

If you have a pending application or patent and qualify, contact Loren Pearson via email or phone at (305)567-5576 to update the status of your application.

S.H.I.E.L.D. Bill Hopes to Curb Patent Trolls

The Saving High-Tech Innovators from Egregious Legal Disputes (SHIELD) Act of 2012 H.R. 845 was introduced by Representatives Defazio and Chaffetz to provide patent-infringement defendants with a means to reflect the cost of successful defense back on a non-practicing entity/plaintiff/patent holder.

A very good discussion of the problem and the pros of the bill are provided on Dennis Couch's PatentlyO Blog.

The article does not discuss any of the cons.

The significant cons of the bill are that owners of presumptively valid patents are subjected to the significant cost of buying a bond to guarantee the cost of the defendant's defense.

Exceptions are provided to original inventors, owners who exploit the technology, and universities.

My opinion is that the current system provides adequate checks to a plaintiff.

Rule 11 provides an adequate check to non-infringement.  To avoid Rule 11 sanctions, a plaintiff should conduct an investigation of an accused device and a claim analysis (i.e. a claim chart) before filing suit.  If none is conducted and the accused device is not infringing, the plaintiff may face a Rule 11 motion by the defendant for the cost of the defense.

The USPTO's procedures provide a means to challenge validity.  The purpose of the USPTO's examination is to provide a presumptively valid document.  Why attach further burdens on the inventor?  A defendant can challenge the validity of a patent through administrative remedies.