Join the next USPTO Inventor Info Chat webinar, “Trademark: Live demonstration of how to file a trademark application,” on February 21, 2019 from 11 a.m. to noon ET. Through this live demonstration, you will learn how to effectively file your trademark application using the Trademark Electronic Application System (TEAS). You will also have an opportunity to ask questions by emailing firstname.lastname@example.org. To register, visit the Inventor Info webinar event page on the USPTO website, or click here.
Cliff Ennico will be presenting at the Inventors Association of Connecticut (IACT) meeting tomorrow night at Fairfield University, Fairfield, CT.
Cliff is widely considered to be one of America’s leading experts on the legal and tax problems facing entrepreneurs, small businesses and self-employed professionals. Cliff will be presenting on Equity Crowdfunding. Thanks to SEC regulations passed last year under the federal JOBS Act, it is now possible for small businesses, startup companies and other privately-owned enterprises to raise capital and sell securities via crowdfunding websites such as Kickstarter and IndieGoGo. Cliff will discuss the pros and cons of Equity Crowdfunding. More information can be found here.
The 2019 National Hardware Show takes place May 7-9 at the Las Vegas Convention Center. With nearly 15,000 retailers, wholesalers and distributors attending, 2019 NHS is the best place to gain maximum exposure in the industry. You may want to exhibit your inventions. According to the National Hardware Show, they are the prime time and place for face-to-face sourcing, trading and learning with over 20,000+ industry professionals, 120+ media outlets and 15+ different product categories.
The United Inventors association (UIA) is hosting the Inventors Spotlight, the area for new inventors to showcase their products. Always a high traffic area, exhibiting in the Inventors Spotlight brings an unprecedented opportunity to network with and demonstrate your product to decision-makers who know this is the place to find the most innovative products and services. Take advantage of this opportunity to be in front of retail buyers, potential inventors and industry professionals looking for fresh, new products. More information on UIA can be found here.
Sign up for the National Hardware Show here.
I would like to congratulate my client Razvan Tata of Stratford, Connecticut for receiving a patent on his Napkin Band with Dental Floss invention. The patent can be seen here.
On January 22, 2019, the US Supreme Court decided Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc. The main issue in that case was whether a “secret” sale of the invention triggers the 1 year time period to apply for a US patent application.
The America Invents Act (AIA) amended 35 U.S.C. §102 as follows: “A person shall be entitled to a patent unless . . . 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.” The underlined portion was added by the AIA.
Plaintiff Helsinn argued, that the addition of the phrase “or otherwise available to the public” in the AIA statute altered the meaning of on sale in such a way that if an invention’s sale was confidential (and, therefore, not available to the public), the invention was not on sale under the AIA statute. The Supreme Court disagreed.
Thus, inventors and patent owners should be aware that any sale, secret or public, triggers the on-sale bar, and a patent application must be filed within 1 year of the first sale, or public disclosure of the invention—otherwise the invention is ineligible for patent protection. Stated another way, PATENT EARLY!
The case can be read here.
I just read an interesting article on How Trade Shows can Help Inventors from the United Inventors Association of America. Two sentences jumped out at my from the article. The first was: “Manufacturers often look to independent inventors to find their next great product, and might enter into a licensing agreement with you if you have that product.” The next was: “Cathie Kirik, our Trade Show Director, mentioned, ‘participating in a trade show is an opportunity for new inventors to test the waters, it can be very beneficial to practice pitching your product and even more important to listen to the feedback, good or bad.’ ”
Read the article here.
On January 17, 2019, the USPTO is offering a new Inventor Info Chat webinar: “Learn to create and use your new uspto.gov account.” Learn how the USPTO is consolidating access to many systems with one secure, convenient sign-in: the new uspto.gov account. The account already combines credentials for several fee payment tools, and the USPTO is working on adding even more.
USPTO experts will show you how to create your uspto.gov account and start customizing your MyUSPTO page. You can send questions to email@example.com during the event.
Please visit their event page on the USPTO website for more information.
The USPTO has issued new subject matter eligibility guidelines, which can be found here. I have reviewed the 27 page guidelines and have the following comments.
The USPTO now has expressly identified groups of abstract ideas to be used in the Alice/Mayo test. The groups of abstract ideas are:
a) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
b) Certain methods of organizing human activity;
c) Mental processes.
In addition there is a “…rare circumstance in which a USPTO employee believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea”.
Further, the USPTO states that claim are NOT directed to a judicial exception (abstract idea), “if the claim as a whole integrates the recited judicial exception into a practical application of that exception”. The USPTO goes on to state:
“If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis.
“If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B (where it may still be eligible if it amounts to an “inventive concept”).”
With respect to the “integrated into a practical application” determination, the USPTO states the following:
“Examiners evaluate integration into a practical application by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit, for example those listed below.”
“Examiners should note, however, that revised Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity.”
“In the context of revised Step 2A, the following exemplary considerations are indicative that an additional element (or combination of elements)24 may have integrated the exception into a practical application:
“an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
“an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
“an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
“an additional element effects a transformation or reduction of a particular article to a different state or thing; and
“an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.”
I believe the above guidance will help inventors and patent attorneys in protecting inventions in the business method and software arts.
I am happy to announce that I will be teaching another class on Patents, Trademarks, and Copyrights for individual inventors and small businesses. An overview of the U.S. patent system, trademarks and copyright will be presented. The class also includes: the patent process, preparation, prosecution, and issuance. In this class you will learn about how to protect your inventions. The course will be held on two nights, Thursday March 7, 2019, and Thursday March 14, 2019, from 6:30 pm – 8:30 pm at Jonathan Law High School, 20 Lansdale Ave, Milford, CT 06460, room 101. To sign up, please visit the Milford adult education website, which can be reached here.