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 America Invents Act (5)

Monday
Oct102011

New Issue When Choosing a Patent Attorney

The New York Times reported, "New Law Creates Demand for Patent Specialists."  The America Invents Act, which was enacted on September 16, 2011, has indeed changed the rights of every inventor, patent applicant, and patent owner.  Every patent owner should have his or hers patent rights reviewed.  As reported in the article, the result has been a wave of hiring of patent attorneys, especially at large firms.

This leads to the question, when you deal with a huge firm who are you actually hiring to do the work?  Perhaps a newly-graduated attorney or a patent agent.

My white paper on how to hire a patent attorney provides a set of criteria that everyone should consider before hiring a patent attorney. 

Do not assume that the firm in the tallest skyscraper has the best patent attorney.

 

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.

 

Tuesday
Sep202011

America Invents Act signed into Law on September 16, 2011

President Obama Signing America Invents ActPresident Obama signed the America Invents Act into law on September 16, 2011.  The law is a significant change in the substantive rights of inventors and patent owners.  The effective date of many provisions is immediate.

The following are significant provisions:

  • Transition to First-Inventor-to-File System
  • Improving Patent Quality by establishing the opportunity for third parties to submit information related to a pending application for consideration by a patent examiner. The Patent Reform Act also creates a “first window” post-grant opposition proceeding, open for nine months after the grant of the patent, to allow challengers to weed out patents that should not have been issued.
  • Improves Administrative Challenges of Patent Validity by creating adversarial inter partes review conducted by Administrative Patent Judges.
  • Provides More Certainty In Damages Calculations
  • Creates a Supplemental Examination Process to incentivize patent owners to commercialize their inventions despite flaws in the application process.
  • Provides PTO Fee Setting Authority. The bill mandates a reduction of fees by 50 percent for small entities and 75 percent for micro-entities.
  • Bans Tax Patents

If you have an invention, patent application, or patent, an audit of your portfolio may be necessary to assess a change in your rights. 

Subscribe to my newsletter for free white papers on the substantive changes.

 

Wednesday
Jun222011

US House Takes Up First-to-File System

The US House of Representatives has taken up the America Invents Act.  The legislation moves the US to a first-to-file system and, in a legislative compromise, excess fees raised by the USPTO will be kept in a reserve fund.

A final vote is expected later this week.

The US Senate has already approved the legislation.