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By: Mark R. Malek

Hi all.  Just a quick note to let you know that the TacticalIP Blog has not gone away.  We moved it to the home page of Zies Widerman & Malek.  You can access it by clicking here.

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As I mentioned in my previous post regarding the legal substance of the Bert J. Harris Private Property Rights Protection Act (the “Act”), this post will center on the procedural aspects of the Act.

Maybe not quite as exciting, but very important to know. If the procedure isn’t followed correctly, the claim has no leg to stand on.

As a quick refresher, the Act was formulated to provide protection (often by way of compensation) to private property owners when a rule, regulation, law, or ordinance of the state or political entity in the state restricts or limits private property rights.

As for the procedure, a claim brought under the Act must be presented to the government entity no later than one year after the rule, regulation, ordinance, or law is first applied. However, the 1 year deadline is tolled while the property owner seeks other available administrative or judicial relief.

To begin an action, the Act requires that a property owner (also referred to as the claimant) give at least 180 days notice to the governmental entity before filing a claim under the Act. A property owner wishing to bring an action must present the claim in writing to the head of the governmental entity against whom he/she intends to file. If more than one governmental entity will be involved in the action, the property owner must present the claims to each of the governmental entities separately. Along with the notice of the claim, the property owner must submit a bona fide, valid appraisal that supports the claim and demonstrates the loss in fair market value to the real property (i.e. the inordinate burden).

After receiving notice of the claim, the governmental entity must report the claim in writing to the Department of Legal Affairs in Tallahassee within 15 days. Additionally, the governmental entity must provide written notice of the claim to all property owners of real property contiguous to the claimant’s property. This step is done is to ensure that adjacent property owners are made aware that they may have a similar claim.

During the 180 day notice period, the governmental entity must make a written settlement offer to the claimant. The governmental entity may offer to:

  • modify, adjust, or change the application of the rule, regulation, or ordinance;
  • issue a development order, variance, or special exception for the claimant;
  • purchase the real property from the claimant; or
  • make no change at all to the rule, regulation, or ordinance.


However, any settlement offered by the governmental entity must protect the public’s interest and represent necessary and appropriate relief and may not be solely to avoid the claim.

Once the offer has been conveyed, the claimant may decide to accept or reject the offer. If the claimant does not accept the offer, the governmental entity must issue a written ripeness decision identifying the ‘allowable uses’ of the property, or the uses to which the subject property may be put. The ripeness decision basically means that a claimant has exhausted all the administrative avenues to address their issues and has established a sufficient factual basis for the claim.

If the property owner rejects the settlement offer and the ripeness decision, the property owner may file a claim for compensation in the circuit court in the county where the property is located.

The circuit court will then decide whether an existing use of the property or a vested right to a specific use of the property existed and, if so, whether the governmental entity has inordinately burdened the property. If more than one governmental entity is involved, the court must determine the percentage of responsibility each governmental entity contributed.

If the court determines that the governmental entity has inordinately burdened the property, the court will impanel a jury to determine the total amount of compensation that should be paid to the property owner. The jury will determine the amount of compensation by evaluating the difference in the fair market value of the real property prior to the governmental action and the fair market value of the real property as inordinately burdened. Additionally, the property owner will be entitled to recover reasonable costs and attorneys’ fees. However, if the governmental entity prevails in the litigation, it will be entitled to costs and attorneys’ fees.

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Dan Pierron

In the ever-changing world of the USPTO to comply with changes in the AIA, satellite offices are being established remote from the Alexandria headquarters.  A first branch was opened July 13 in Detroit, with others to follow in Denver, Dallas, and Silicon Valley.  The stated purposes are included in the enacting law, and are worth going through with a critical eye.

The first purpose is to “increase outreach activities to better connect patent filers and innovators with the Office.”  The way this seems most likely to happen is with an increase in interviews, more specifically video interviews, as is indicated will be possible in the Detroit office, and hopefully will also be the case for each of the other satellite offices.  Aside from that, unless the Patent Office opens up the satellite offices to in-person interviews, I cannot see how outreach will increase by that much.  Mixers with examiners probably wouldn’t be social events of the season.  Levity aside, reaching out to individual inventors through outreach programs at the satellite offices could be a real boon to garage-inventor types, encouraging them to start pursuing patent protection for inventions where they otherwise might not be aware or be somewhat disillusioned or discouraged from doing so.

Satellite Office – the new recruiting pools for local law firms?

The second stated purpose is to “enhance patent examiner retention.”  This might be the most worthwhile of the goals of the satellite offices.  Unfortunately, it might also be the most difficult to achieve.  Ostensibly, it seems like the thinking is if an examiner  lives near a satellite office, their satisfaction with the job will increase, hence increasing retention.  However, I can easily imagine the scenario where now, an examiner can put in his time as an examiner in the technology hub of his choice, selected from any of the satellite office locations, all the meanwhile starting his search for his next position as a patent agent or attorney, depending on his education  background.  Time will tell which scenario plays out.

The third stated purpose is to “improve recruitment of patent examiners.”  I’m not too sure how this one will play out.  Will representatives from the patent office tour nearby engineering and life sciences programs at local universities, trolling for recruits?  Perhaps it will be the aforementioned mixers that generates interest in employment at the satellite offices.

The fourth stated purpose is to “decrease the number of patent applications waiting for examination.”  There are of course two obvious ways to reduce the backlog of applications: increase the examining core, and reduce the average pendency for applications.  In announcing the opening of the Detroit office, the USPTO said 120 highly-skilled positions would be created.  I don’t know how many examiners will be included in that number, but there is a good chance a significant portion of those positions will be examiners.

The fifth and final purpose is to “improve the quality of patent examination.”  This seems to be a derivative benefit of the enhancing retention and improving recruitment of examiners.  If in fact examiners are successfully recruited and retained as a result of the satellite offices, it stands to reason the quality of examination would go up.  We’ve seen a mix of problems and solutions to attacking the backlog dilemma, with varying degree of success.  However, there seems to be agreement that the satellite offices will be a net benefit to the system, with many of the questions discussed above remaining open.  One thing is certain; with the increasing rate of applications being submitted, bold action must be taken to tackle the backlog of applications, before it becomes as unwieldy as some other government figures.

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The unspoken rule is that lawyers have to profess an affection for mediation. Naysaying runs counter to mediation’s self-professed mantra to “just give it a chance”. And it’s true, you don’t know until you try. But, we usually have a good idea.

In Florida, in most civil cases in which the parties cannot resolve their differences themselves, the court will eventually refer the case to mediation. And sometimes it works. The parties each take a hit, accept more or less than they wanted to, and go their separate ways. But this is often not the case. For a variety of factors, mediation may be, well, pointless. The parties may not yet be appropriately “softened up”, it may be more of a “winner takes all” type of case, or a party simply has nowhere near the money needed to make a meaningful settlement offer. What to do if you don’t want to mediate, or want to, just not until later?

Pursuant to Florida Rule of Civil Procedure 1.700, any party may, within 15 days after the order of referral, move to dispense with mediation or arbitration if:

(1) the issue to be considered has been previously mediated or arbitrated between the same parties pursuant to Florida law;

(2) the issue presents a question of law only;

(3) the order violates the rules pertaining to exclusions from mediation or arbitration; or

(4) other good cause is shown.

Any party may, within 15 days of the order of referral, file a motion to defer the proceeding. The motion must set forth in detail the facts and circumstances supporting the motion, set the motion to defer for hearing prior to the scheduled date for mediation or arbitration, provide notice of the to all interested parties, including any mediator or arbitrator who has been appointed. Mediation or arbitration will be tolled until the disposition of the motion.

Subsection (4) is of interest because it is open-ended. What is “good cause”? I can’t find a single case construing “good cause” in the context of Rule 1.700(c). But, I would argue that a belief that compromise is very unlikely and mediation a waste of time could be good cause.

Don’t get the wrong impression. In the right circumstances, mediation is great. It takes pressure off the courts and resolves some cases. My point is that in some cases, the parties are too far apart, or there can be little to no compromise (e.g. an eviction). In those cases, mediation may not waste the court’s time, but it may waste the parties time, and their money.

Attorney Aaron Thalwitzer practices law in Melbourne, Brevard County, Florida in the areas of civil litigation, real estate law, and intellectual property.


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By: Bill Harding

So your company would like to license its trademark to another company.  Sounds simple, right?

Wrong.  A legal “twilight zone” exists between 1) a licensor adequately policing the licensed use of its trademark, and 2) a franchisor providing significant assistance to or exercising control of a licensee’s business.

A trademark identifies goods to consumers by both their origin and their quality.  The federal Lanham Act requires a licensor of a registered mark to control the quality and uniformity of goods and services associated with the licensed mark to ensure the mark is not used by a licensee in “such a manner as to deceive the public.”  Failure of the trademark owner to exercise sufficient control may constitute abandonment of the mark and result in loss of trademark protection.  A license without sufficient quality controls is termed a “naked” license.

But by taking steps to exercise sufficient control over licensee use of a mark, the licensor may accidentally fashion a trademark license that constitutes an “accidental” franchise agreement.  Such a mistake may be very costly for a mark owner, as applicable franchise laws may impose unexpected registration and/or disclosure requirements on the licensor, and/or may regulate important aspects of the business relationship between the license parties, such as termination and non-renewal of the agreement.  The parties to a trademark license agreement cannot avoid an accidental franchise by calling their agreement by another name or by including provision language that disclaims the existence of a franchise.

Defining “Franchise”

Although federal and state jurisdictions that regulate franchises vary in their approaches, creation of a franchise generally consists of three elements:

1) grant of use of the franchisor’s mark in association with franchisee’s business,

2) a franchise fee paid to the franchisor by the franchisee, and

3) control exerted by the franchisor over the franchisee.

If all three statutory elements are present, a franchise relationship exists regardless of the intentions of the parties.

Be careful out there, aspiring trademark licensors.  Better yet, get a lawyer!

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By: Mark R. Malek

Someone brought to my attention a very well put together video on some of the nuances of the America Invents Act.  Essentially, the video discusses the first to file requirement and shows us that it is now truly a race to the patent office.  We can pick the video apart all day long, but take it for the joke that it is, and not as an indication that anything and everything under the sun is actually patentable.  By the way, I especially like the cameo appearance by USPTO Director David Kappos.  I thought he did a great job in his acting debut.



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By: Mark R. Malek

In my morning slew of emails that I receive regarding intellectual property updates, I noticed that Dennis Crouch, author of Patently-O posted an article that he projects that the USPTO will issue more than 250,000 patents in 2012.  My initial reaction was “Holy Crap,” but that made me immediately go check the backlog.

You may recall that the USPTO has provided the patent dashboard to the public which gives us a great view of the status of the patent backlog.  According to the patent dashboard, we are now down to a patent application backlog of 627,367 patent applications.  That is down significantly from the 900,000+ patent applications that I remember being pending with Director Kappos took over.  Say what you will about the management of the patent office, but I look at the patent backlog as having been the single biggest issue with the USPTO and, somehow, Director Kappos and his team have found a way to put a significant dent in it.

Undoubtedly, there have been a number of changes over the past few years under his leadership.  For the most part, I believe they have been good ones.  The questions remains, however, as to whether or not the Patent Office is equipped to handle the many changes coming down the pike with the America Invents Act.  A great article about one of the biggest issues facing the USPTO, i.e., the underfunding of the USPTO, can be found here.  Although the America Invents Act moves funding of the USPTO a step in the right direction, it is not all the way there yet.

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Dan Pierron

Having only recently become aware of the genius that is The Oatmeal, I’ve had to digest its wealth of top-shelf comics, as well as informative comics rivaling those of XKCD, in a relatively short time.  My interest was first drawn when TO became embroiled in what is universally recognized as a frivolous suit filed on behalf of Funny Junk, a comedy-aggregating website, filed by Mr. himself, Charles Carreon.

It is nothing new for a party caught red handed and exposed for making a cheap buck to get angry and sue, but what makes this story interesting is how TO redirected the venom of this blunder in a judo-like maneuver to utilize TO’s immense popularity for a charitable purpose.  TO flipped Funny Junk’s demand for $20,000 on it’s head, calling on his fans to donate the money instead to WWF (not WWE for trademark fans out there) and ACS.  Not only did TO’s fans pony up the asked-for 20 grand, they added 200 thousand more.

Intermixed in this tale of delicious retribution is the site, a kind of Kickstarter for non-profits.  This type of microfinancing, popularized by the likes of Prosper, LendingClub, and Kiva, has been adopted for the purpose of funding projects for the greater good.


It seems that, based on TO’s success in its earlier outing, he decided to take the next step by undertaking a bigger project, the creation of a museum honoring Nikola Tesla at his Wardenclyffe facility.  In order to exceed a competing bid, TO set about collecting $850,000 in donations, which would be matched by the state of New York.  Once again, TO’s fans answered the call, exceeding the desired amount by nearly $350,000.

We are in the midst of a shift, a realization of what the earliest internet visionaries imagined.  Along with the much-reported use of social media as a vital means of communication in the Arab Spring, social change is occurring.  More than that, its genesis is completely online.  When a site like TO and its kind, including the likes of Penny Arcade, are able to create communities through common interest and spur action from that community.  Maybe it’s just me, and maybe I’m just recently becoming aware of it, but this type of activism for causes generally unrelated to the reason for the formation of a group seems unprecedented.  It’s like new societies are being created.  Sure, the fact that they are created around a webcomic might make some doubt their sincerity or worth, but they would be ignoring the hard evidence, in the form of dollars and cents, that the communities are donating, taking worthwhile causes on their backs and acting out of nothing but interest in the cause.  And that is something I am proud to be a part of.  I encourage anyone reading this post to engage with the online communities that already exist around sites you likely visit every day, and join in their charitable efforts.

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Business assets have value.  Understanding the value of assets on hand is important to starting a business, to conducting a business, and to dissolving a business.  Ironically, many business leaders who are diligent about routinely tracking the value of hard assets, like a truck or a building, have no similar discipline in place to measure and monitor the value of the business’s intellectual assets.

Why To Value?

Many business eventualities may bring about a need to estimate the value of a company’s intellectual assets.  The following are just a few examples of common business questions that may imply a need to perform a valuation on a company’s intellectual assets :

- Is now the time to sell a particular asset (or even the entire business) while its value is high?

- Is our company earning a reasonable royalty (or charging an optimal price) for an asset given current market realities?

- How much is a fair settlement amount in exchange for dropping a lawsuit for infringement of an asset?

- Should we build a new intellectual asset that the company needs, or instead seek to buy such an asset from another?

- Is now the right time to drive our current intellectual asset to end of life by introducing the next generation replacement?

- May the company leverage an intellectual asset by using it as security to borrow needed funds?

- What are the tax implications of a given transaction involving an intellectual asset, or of the fluctuation in the value of the asset over the past year?

- Is the company in compliance with all regulatory requirements that apply to a certain transaction involving an intellectual asset?

How To Value?

Several valuation models are commonly used to estimate the value of intellectual assets, whether in a business context or in a court of law (e.g., damages calculation).  Furthermore, more than one model may be applicable in a given set of circumstances.  The following are some of the most commonly used valuation models:


  • Market Approach – the fair market value of an asset is ascertained by researching the real-world marketplace for transactions involving sales, listings, and offers to purchase or license comparable assets


  • Cost Approach – value is based on the cost to obtain an asset of equal value, taking into account one or more of reproduction cost (building an exact replica of the asset), replacement cost (recreating the functionality of an asset), and cost avoidance


  • Income Approach – value is calculated from expected returns attributable to an asset, based on the present value of expected income to be earned (e.g., license royalties)


Who Can Value?

Valuation is more an exercise in accounting and/or finance than it is of law.  Traditionally the purview of accounting professionals like Certified Public Accountants (CPAs), the field has more recently spawned certification programs specifically for valuation practitioners.  Recommendation:  When valuing intellectual assets, seek the help of a specially-trained and experienced professional.  In almost all valuation scenarios, the stakes are too high to get it wrong.

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Under the Fair Debt Credit Protection Act (“FDCPA”), the below activities are violations. It is a FDCPA violation to make misleading or false representation through a phone call, email, voice mail or letter. Misleading information or FDCPA violations can include.

  • Threatening to sue or pursue any type of legal action, damage your credit rating, impose any type of property repossession, or wage garnishment which the collection agency does not intend to pursue is a FDCPA violation of consumer’s right.
  • Mislead the consumer with the amount or the status of the debt.
  • Contacting someone other than the actual debt holder or cosigner for debt collection. This can include: neighbors, friends, employer or relatives.
  • Calling on multiple occasions at inappropriate times. The FDCPA defines inappropriate times as any contact after 9:00 PM or before 8:00 AM.
  • If the collection agency calls an individual at work they may not notify an employer of the reason for the call before being asked.
  • Making misleading statements to make an individual believe the collection agency is affiliated with the state of federal government and the debt collection documents are official government documents such as a subpoena or court order to pay.
  • Making any type of inappropriate racial slur, insult or obscene comment in letters, calls or emails.
  • Making the individual think they have committed some type of crime by failing to pay their debt obligations.
  • Collecting information under false pretentions such as conducting “surveys”.
  • Suing you in a court unusually far from your home.
  • Charging interest or fees not allowed under state laws or outlined in contracts.
  • Calling an individual at inconvenient locations such as work when an individual has asked the debt collection agency not to call them in either written or verbal form.
  • Making threats to violently harm an individual if they fail to pay their debts.
  • Publishing the names of the people who fail to pay their debts (other than by giving the information to a credit reporting agency).
  • Using a false company name.
  • Providing incorrect information about an individual to someone else.
  • Depositing a post dated check early in efforts to get the check to bounce.
  • Contacting an individual via postcard.

A “debt collector” is someone who regularly tries to collect debts owed to others. A debt collector may contact you if you are behind in your payments to a creditor on a personal, family or household debt, or if an error has been made in your account.

Make no mistake, a debt collector may contact you in person, or by mail, email, telephone, fax (and even telegram, for those of you in the old west).

A debt collector is required to send you a written notice within five days after you are first contacted, telling you the amount of money you owe. The notice must also specify the name of the creditor to whom you owe the money and what action you should take if you believe you do not owe the money.

Question: What can I do to make them leave me alone?

Answer: Two things. Settle the debt, or write them a letter telling them to stop.

Once the debt collector receives your letter, they may not contact you again except to say there will be no further contact, or to notify you if the debt collector or the creditor intends to take some specific action.

If you do not believe you owe the debt, you may write to the collection agency within 30 days after you are first contacted, saying you don’t owe the money. The agency may not contact you after that unless you are sent proof of the debt, such as a copy of the bill.

In addition, debt collectors are required to accurately disclose their identities to the person at the called number, though in practice you are just as likely to hear a dial tone if you ask for the name of the actual human being calling you.

A debt collector may not use false statements, such as falsely implying that they are attorneys, that you have committed a crime, or that they operate or work for a credit bureau or misrepresenting the amount of your debt, the involvement of an attorney in collecting a debt, or indicating that papers sent to you are legal forms when they are not.

There are obvious advantages to writing a cease and desist, but a less obvious one is that violations of the FDCPA can be a basis for a lawsuit, or used as a setoff to lessen the amount you might owe to a creditor such as a credit card company or bank threatening foreclosure. In other words, when they sue you, you can tell the court that they have been harassing you. If the judge finds that you are right, he or she should deduct the damages from your debt. For credit card companies, this could be a large fraction (or even all) the debt, and for mortgage foreclosure cases, it provides a basis to ask for a jury trial (more on that later), and gives the bank a lot to think about if they haven’t been willing to discuss settlement.




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