Author: Michael Blake

Wired Magazine had an interesting article on Toshiba’s inelegant use of copyright. Basically, Toshiba has been sending cease and desist letters to 3rd parties who make available old Toshiba computer manuals. People with old toshiba computers, and people who repair old Toshiba computers are pretty mad at Toshiba for their heavy handed way in trying to stop the easy availability of the old Toshiba computer manuals. However, Toshiba does own the copyright in their manuals, and can legally prevent the copying and distribution of those manuals.

I just found this article on Forbes.com that gives both sides of the argument regarding whether the America Invents Act (AIA), which will go into further effect in the Spring of 2013, is good or bad. I like how the article is not just an anti-AIA screed from the perspective of individual inventors and small businesses. My view has long been that there will be very little negative impact on individual inventors and small businesses now that we have become generally a first to file county (whereas we used to be a first to invent country). The reason is, there is still the 1 year grace period, which means no matter what, if you publicly disclose or offer for sale your invention, you only have 1 year from that date to file a US patent application. Thus, there is still a “race” to the patent office. What is clearly on the plus side for individual inventors and small businesses is that patent fees will go down when the “micro-entity” fees take effect, presumably this spring.

Please note that I had previously posted that I would be on a Panel Discussion this Tuesday (10-30-2012) at Fairfield University regarding the American Invents Act and You. However, that panel discussion and the Inventor’s Association of Connecticut meeting scheduled for that day will be postponed due to Hurricane Sandy.

AVVO had an interesting discussion on the topic of How do you tell if a patent was ever “pending?” and has since been denied
? Other patent lawyers had already suggested going to the USPTO.GOV website and searching for patents and applicaitons by the company or person you are interested in. Of course only issued patents and published patent applications are searchable. Patent applications generally publish 18 months after the filing date. My suggestion was to search the assignment database at the USPTO.GOV website. There you can search patents and published patent applications by assignees and assignors.
As for determing whether a patent application has been denied, you should be able to see published patent applications in public pair at the USPTO.GOV website, and look up their prosecution history and determine if the patent application issued, or was abandoned.

Please take note that USPTO fees will be going up again on Oct 5, 2012. The new fees are here.

I will be sitting on a panel discussion put on by the Inventor’s Association of Connecticut (IACT) entitled: “The America Inventors Act and You”. The panel discussion will take place on October 30, 2012 at Fairfield University. Check the IACT website for more information as it becomes available.

The focus will be implications of the new Patent Process, First to File versus the historical First to Invent. The panel will discuss:

(1) understanding the new process,
(2) becoming aware of the differences and
(3) implications to the independent inventor including opportunities, and potential negatives, associated with the changes.

I look forward to seeing my readers there!

On Saturday I received an email from the USPTO disclussing how the patent office is in the process of modernizing their electornic filing system. Included in the updated system will be the following improvements: (1) applicant can use a validation wizard to assure that any formatting, generic such as edits tracked from the original document due to revisions, and private information are not part of the file, and that application parts can be recognized; (2) applicant can run an optional analytics report to ensure the abstract length is correct, generate an automated claims tree, and identify any errors in claims numbering; and (3) Based on information submitted in the Application Data Sheet (ADS), the USPTO will be able to generate maps that show relationships between patent applications, or patent family maps.

Although the patent office has not yet introduced these improvements, they are currently seeking input to help define and design these processes.

From an answer I posted to LawGuru.
Question: Am I required to post my trademark certificate? Is the certificate itself (the paper) valuable?
Your Reply: No, there is no requirement to post your trademark certificate. The certificate is often framed by the owner and hung in a prominent place. Be sure to use the proper marking when using your trademark!

Some important changes are going into effect on September 16, 2012 at the patent office. Those changes include: Inter Partes Reexamination being replaced by inter partes review, and the review will proceed only if it is determined that there is a reasonable likelihood that the challenger will prevail with respect to at least one claim; Third parties may now institute post-grant reviews of a patent; Third parties may now submit printed publications for consideration and inclusion into the record of any patent application; the inventor’s oath or declaration must contain new statements. A nice summary of the upcoming changes are provided here by Cole Richter of McDonnell Boehnen Hulbert & Berghoff.

I recently saw this article that talks about how to protect your invention when you are thinking of pitching it to a company or an individual. It gives much of the same advice that I would give to a client. Such advice includes: consider filing a patent application (design or utility) prior to pitching your invention, get a confidentiality agreement signed by the party you are disclosing to prior to the pitch, and relying on copyright protection are some of the ways to protect your invention.