I will be attending the Entrepreneurship Foundation next event tomorrow which will be the 23rd Connecticut Business Conference and Competition. The event will be held on December 6, 2019 at Gateway College, Room N100, New Haven CT. There will be $20,000 in startup grants and $5,000 in startup services. The event will have A. BUSINESS CONCEPT ELEVATOR PITCH; B. GLOBAL STUDENT ENTREPRENEUR AWARD; C. INNOVATION CHALLENGE; and D. DESIGNER and DEVELOPER COMPETITIONS and EXHIBITIONS. More information can be found here.
I will be attending the Inventors Association of Connecticut meeting tomorrow night, November 26, 2019 at Fairfield University. Game and Toy inventor Mary Ellroy will be presenting on “Licencing Your Game and Toy Inventions”. Mary will talk about investigating the successful ideation and go-to-market strategy that she used. of a serial inventor and former IACT President, Mary Ellroy. Mary Ellroy has been in the toy business since 1990, and is an inventor of toys and games and an agent for toy and game inventors. She comes to toy invention with a corporate marketing background. She received an MBA from the Boston College School of Management (now the Carroll School of Management at Boston College.) Past positions included a Director position at a Fortune 50 company, a vice presidency/ownership position in a newspaper advertising firm, and various advertising and media positions. Her creative accomplishments in consumer marketing inspired her to turn that creativity to toys and games. More information on the meeting can be found here.
I would like to congratulate my University of Connecticut IP Clinic clients on receiving their patent on a “System and method for issuing, authenticating, storing, retrieving, and verifying documents”. Eli and Liwen Yaacoby were the inventors and their company Wymsical, Inc. of Greenwich, CT, is the owner of the patent. The patent can be seen here. These type of patents can be very difficult to get, since they deal with business methods after Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).
I would like to congratulate my client Eirik Skeid. Mr. Skeid recently obtained a design patent for his Storage and transport container invention. Mr. Skeid is the CEO of SHARKCAGE with offices in San Antonio, TX, and Oslo, Norway. SHARKCAGE makes and sells containers for shipping equipment, such as military equipment. For more information on SHARKCAGE, go here. You can see the patent here.
A patent was issued for a method of cooking bacon, where the cooked bacon was sold to consumers. Plaintiffs sued defendant infringer for patent infringement. Defendants counterclaimed that the patent was indefinite. The claims language that was indefinite was in the preamble to claims 1 and 3 which recites “[a] process … to produce a pre-cooked sliced bacon product resembling a pan-fried bacon product.” (as distinguished from microwaved bacon) The issued patent did not define or identify specific criteria for measuring or determining the texture, mouth feel, bite, appearance, or color of pan-fried bacon. The district therefore ruled that the bacon patent is invalidated due to indefiniteness.
Two interesting points, first, the method of cooking bacon would have been patentable, if the patent specification defined or identified specific criteria for measuring or determining the texture, mouth feel, bite, appearance, or color of pan-fried bacon. Second, the preamble to the claims, were considered limiting on the rest of the claim. Many attorneys have been taught that preambles are not limiting. The case is HIP Inc. v. Hormel Foods Corporation et al., case number 1:18-cv-00615 (D. Del.), and can be found here.
I would like to congratulate my client John M. Schuld for obtaining a new patent for his “Ammunition replica bottle opener”. I was his patent attorney on this matter. The patent can be found 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.