Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

 
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Entries in AIA (3)

Friday
May102013

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.

 

Monday
Sep262011

Revised Novelty Standard under AIA

The Leahy-Smith America Invents Act (AIA) changed the standard for novelty under 35 USC § 102.   This language establishes the First-to-File System.  The purpose of this blog is to provide information to non-patent attorneys and inventors.  In this case, while the language of the statute is "legalese", the wording of the statute is significant enough to post directly.

The amended statute now reads as the following:

‘‘§ 102. Conditions for patentability; novelty
‘‘(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
H. R. 1249—3
‘‘(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
‘‘(2) the claimed invention was described in a patent issued under section 151, or in an  application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
‘‘(b) EXCEPTIONS.—
‘‘(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE
FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
‘‘(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint
inventor; or
‘‘(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
‘‘(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—
A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
‘‘(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
‘‘(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor;
or
‘‘(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
‘‘(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.—
Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying
the provisions of subsection (b)(2)(C) if—
‘‘(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;
‘‘(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
‘‘(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
‘‘(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS
PRIOR ART.—For purposes of determining whether a patent or
H. R. 1249—4
application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—
‘‘(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or
‘‘(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section
120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.’’.
(2) CONTINUITY OF INTENT UNDER THE CREATE ACT.—The enactment of section 102(c) of title 35, United States Code, under paragraph (1) of this subsection is done with the same
intent to promote joint research activities that was expressed, including in the legislative history, through the enactment of the Cooperative Research and Technology Enhancement Act of 2004 (Public Law 108–453; the ‘‘CREATE Act’’), the amendments
of which are stricken by subsection (c) of this section.
The United States Patent and Trademark Office shall administer
section 102(c) of title 35, United States Code, in a manner consistent with the legislative history of the CREATE Act that was relevant to its administration by the United States Patent
and Trademark Office.
(3) CONFORMING AMENDMENT.—The item relating to section 102 in the table of sections for chapter 10 of title 35, United States Code, is amended to read as follows:
‘‘102. Conditions for patentability; novelty.’’.

Thursday
Sep222011

New Patent Fee Schedule Announced by USPTO

The United States Patent and Trademark Office (USPTO) announced its September 26, 2011 Fee Schedule.  The new schedule is effective on September 26, 2011.  A surcharge of 15% will be added to most patent fees.

A side-by-side comparison of prior and new patent fees is posted on the USPTO website.

The surcharge was provided by Section 11 of the recently enacted America Invents Act (AIA).  The surcharge fees are to be held for patent office expenses only and are not to be designated for other purposes.

Micro-entities will NOT be provided a 75% discount, at this time.  The AIA gives the USPTO the power to especially micro-entity discounts.  Rules regarding micro-entities are to be created before the reduction is enacted.  Small entities will continue to be entitled to 50% discounts on all fees.

Fees that are payable now with deadlines after September 26, 2011, can be paid before the deadline to avoid the surchage.