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 Provisional Rights (1)

Tuesday
Oct162012

"An Inventor's Lament" Misses a Few Strategies

Stephen G. Perlman, a well-known inventor quoted in the NY Times Bits Blog lamented:

Part of the problem for onLive [Mr. Perlman's company] ... was that it was five years before government patent examiners looked at the application for its basic patent--and three years before it was granted.  All the while, .... onLive could not enforce its patent or use its patent asset to help raise further funding.

Mr. Perlman overlooks two possible strategies:

  1. Track One Prioritized Examination
  2. Requesting early publication and Establishing Provisional Rights Under 35 USC 154(d)

Track One Prioritized Examination provides that applicants may be a fee for an expedited examination.  Thee fee is $4,800 for large entities and $2,400 for small entities.  The program promises examination within one year.

35 USC 154(d) provides that a defendant can serve a published application on a potential defendant.  The defendant can be liable for damages retrospectively from the time of receiving the defendant infringes claims in the publication, which are ultimately allowed.

If Perlman could have pursued these strategies, his prosecution time would have been shorter.  His competitors would have avoided the threat of liability and his company might have been saved.

The blog post can be read at "In the High-Tech Patent Wars, an Inventor's Lament."