Posts Tagged ‘United States Patent and Trademark Office’

USPTO Announces Regional Independent Inventors Conference

Tuesday, 17 April, 2012 22:03 Written by Mark Malek 0 Comments
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By: Mark R. Malek

The Florida Regional Independent Inventors Conference will be held on April 27 and 28 in Tampa, Florida.  “Senior USPTO officials, successful inventors and intellectual property experts will be on hand to provide a wealth of practical advice and information for novice and seasoned inventors.”  For more information on the conference please see this link at the USPTO.

“A pre-conference workshop on April 26 from 5-7 p.m. is included in the registration fee. It will cover the basics of the patent process. If you cannot attend, this session will be repeated as a breakout session on April 27.”  This is a great opportunity for inventors to get a lot of great information about the patent process.  Zies Widerman & Malek encourages our readers to attend the conference.

 

 

Does My Patent Infringe On Another Patent?

Friday, 06 April, 2012 05:45 Written by Mark Malek 0 Comments
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By: Mark R. Malek

My last article discussed the possibility of obtaining a patent, but that the patent may still infringe on the claims of an existing patent.  Yes, this is a rare situation, but one that is possible nonetheless.

The scenario that was laid out in the last article indicated that you have invented a chair with five legs.  The clear advantage is that this chair is much more stable than the typical chair that you normally sit on with four legs.  You have now filed a patent application on your chair with five legs.  During the examination, the Examiner has cited a chair with four legs as prior art.  Although the Examiner allows your patent, the Examiner indicates in the “reasons for allowance” that none of the cited prior art discloses the advantageous fifth leg and, therefore, the claims in your patent application define over the cited prior art.

Fantastic – you now have a patent.  You now also start manufacturing and selling your chair with five legs.  All of a sudden, you one day receive a letter from the owner of the patent on the chair with four legs.  The patent owner is accusing you of infringing on the claims of the patent, and instructs you to cease & desist from further infringement.  The letter explains that your chair, although it has five legs, still infringes on the claims of the patent.  It goes on to specifically indicate that your chair has four legs, and other stuff, i.e., a fifth leg.

Now you must engage in an investigation to make sure that the claims of the letter are founded.  You probably go to your favorite website on intellectual property, Tactical IP, or even your other favorite website on intellectual property, LegalTeamUSA, you will read one of my articles about what it takes to infringe a patent.  In the above article, it was noted that in order to infringe a patent, you must meet the claim limitations of at least one of the claims.  In other words, your invention has to include all of the elements of at least one of the claims in the patent.  You quickly figure out that your chair with five legs does meet the claim limitations.  Now what?

Now you engage in some sort of settlement negotiation that will hopefully end in a mutually beneficial license for you to continue manufacturing and selling your very lucrative chair with five legs.  You also do some investigation into the success of the patent on the chair with four legs.  Perhaps there is a cross licensing opportunity here.  I will discuss cross licensing in another post.  In short, cross licensing is where you grant a license to the owner of the patent on the chair with four legs a license to your patent so that the four leg chair patent owner can make chairs with five legs, and the four leg chair patent owner grants you a license so that you can continue to manufacture and sell your five leg chair patent.  Much of this is also laid out in my article about the various ways to make money from your invention.

Now you are asking how this could have been avoided.  The answer is a clearance search – also known as a freedom to operate search.  These searches are quite thorough and quite expensive.  This is a really good article on patent searches on IPWatchdog.  I will go into more detail about clearance searches in another post.  Until then, happy inventing!

The Patent Office Is Not Ready For The Java Update – Don’t Do It!

Friday, 11 November, 2011 09:58 Written by Mark Malek 5 Comments
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By: Mark R. Malek

Consider the title of this article a very mild way of stating my frustration with the Patent Office.  Yesterday, as I was trying to file a simple document using the Patent Office’s Electronic System, I kept getting an authentication error when I was trying to log on.  I could not figure it out.  I know that my digital certificate is up to date and I know that I had the right password.  What in the world could possibly be wrong?

Maybe it was because I was using Google Chrome.  My paralegal that does most of the filing uses Internet Explorer.  That had to be the problem, right?  Mind you that I am no 20 minutes into this frustrating process, all to file a document that took me 4 minutes to draft!  So, I open up IE and try to log on.  Guess what?  Authentication error again.  Now the mild cursing begins (if you know me, you know that this is when spectators start giggling).  I know what to do, I’ll delete the digital certificate from my computer and ask my paralegal to email me another one.  You guessed it – that didn’t work either.  How frustrating do you think it is that someone is able to log onto the PTO Electronic Filing System using my digital certificate just 10 feet from me???

No problem – I’ll just call the PTO.  After navigating through about four operators and explaining the problem, I finally get a very helpful technician on the phone.  I explain the problem to her and her first reaction was the following: “Did you update Java?”  Well, not intentionally.  I do remember that when I got into the office on Wednesday, my computer was restarted and I received the indication that Windows had performed some updates.  That’s when it must have happened.  To my surprise, the technician explained to me that the PTO system was not compatible with the Java update and that I would have to uninstall the update, and reinstall an old version of Java.  Really?  The United States Patent Office?  The forefront of technology was not ready for the?

Here’s my single biggest gripe.  I receive an update from the PTO every couple of days via email.  It is some sort of breaking news, or some story about happenings within the PTO.  Would it have killed you to let me know about this problem that way?  How hard would it have been to send a quick email blast to every patent practioner out there about this issue?  I was humored when the technician told me that about 80% of the calls she received lately were for this very issue.  By the way, I had about 1 hour of my day into this disaster by that point.

As promised by the technician, uninstalling the update and reinstalling the old version of Java did the trick.  I can’t say that the Oracle site is the easiest thing that I have ever navigated, but, with a little help, I was able to find the old Java update 27 and install it.  I haven’t even told you the good part yet.  Once I got everything working, and once I was able to log onto the PTO Electronic Filing System, I was presented with a notice in big bold letters – something along the lines of “the Java update 29 is not compatible with the PTO Electronic Filing System.”  What the heck kind of government operation was this?  When I saw that notice, a string of profanity flowed from my mouth that was unmatched, even by the standards of Ralphie’s Dad from A Christmas Story. I sometimes refer to these types of meltdowns as an “Egyptian Conniption.”  Present me with a government issue like this again, and you are sure to witness it.

To my friends at Patently-O that posted a story about this issue today, I am here to confirm that it is an issue.  A little note to Director Kappos – I have been very pleased with all that has been accomplished by you as the PTO Director, but I can’t believe this one got by the IT folks at the PTO.

 

 

Commissioner for Patents Retires

Saturday, 05 November, 2011 23:20 Written by Mark Malek 0 Comments
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By: Mark R. Malek

According to a press release http://www.uspto.gov/news/pr/2011/11-62.jsp issued by   the United States Patent and Trademark Office, the Commissioner for Patents, Robert   Stoll, has announced his intention to retire.  His retirement will be effective December 31, 2011.  Director Kappos has already announced his nomination for the vacancy, current Deputy Commissioner for Patents, Peggy Focarino.

Stoll served at the patent office for over 29 years.  He held numerous leadership positions, and was instrumental in reducing the patent backlog to just below 670,000 patents.  I know that doesn’t sound like good news, but remember that the patent backlog was well over 900,000 patents not too long ago.

“Having spent over 30 years in government, there has been no greater honor than helping to lead our nation’s innovation agency—the USPTO,” said Stoll. “The Office has made historic progress under Director Kappos. As the new Commissioner, I know that Peggy will provide extraordinary leadership that will ensure the continued improvement of patent operations and the successful implementation of the America Invents Act. I wish everyone at the USPTO the very best in your continuing efforts to assure that the United States leads the world in protecting and promoting intellectual property.”

All of us at Zies Widerman & Malek wish Commissioner Stoll all the best.

 

 

Patent Reform Bill Passes the Senate an on its way to the President

Friday, 09 September, 2011 09:14 Written by Mark Malek 2 Comments
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By: Mark R. Malek

The United States Senate has now passed the American Invents Act by a vote of 89 to 9.  See Gene Quinn’s recent article on IPWatchdog.com for some great insight on how the vote went.  I do agree with Gene that this version of the patent reform bill is not a great one.  My biggest gripe is that the bill continues to divert fees away from the patent office.

There was a point during this process when I thought that fee diversion was finally over.  I wrote an article back in February when PTO Director David Kappos announced President Obama’s 2012 budget.  The great news during that announcement was that the budget provided $2.71 Billion for the PTO.  It is not a coincidence that the PTO was budgeted to raise $2.71 Billion in fees this year.  In other words, the PTO was pulling its own weight as far as the federal budget was concerned.  Tax payers did not feel any burden by the PTO.  As we all know, any thought that the PTO could keep the fees that it generated in order to enhance its efficiency was over quickly when the folks that we trust to run our country could not agree on a budget, and almost shut down the entire country.  Here’s my other article about that disaster, and about how the brilliance of DC cost the PTO a big cut in funding.  Aaron Thalwitzer also wrote a great article about how the budget crisis screwed some of the PTO improvements.

I just don’t get it.  What exactly has this patent reform accomplished?  I keep hearing that this will create jobs, but the only jobs that I can almost guarantee will be created is going to be for patent attorneys!  With the first to file system that is imminent, I plan on getting even busier with new patent filings.  Gone are the days when the inventor can give the market a quick test before filing.   Gone is the time to try to tweak your invention prior to filing the patent application.  Now is the time to file early and file often.

Let me ask this other question of Congress – how is it that innovation will grow and patents will get issued quicker if you have stripped the Patent Office of the funding it needs to hire more Examiners and enhance their technology?  If the fundamental problem of lengthy patent pendency remains, then how are more jobs going to be created?  Seriously, these folks just find a catch phrase and stick with it.  “Patent Reform with create jobs” is the most ridiculous one that I have heard to date.

 

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