Support Local Entrepreneurs & Small Businesses

Update (Nov. 26 ’11): President Obama lent his support to Small Business Saturday today with a visit to Kramerbooks & Afterwords Cafe in Washington’s Dupont Circle. [CNN]

Original post: Small Business Saturday is November 26, 2011. This “shopping holiday” was created last year by American Express to encourage consumers to support small, local businesses the day after “black Friday,” which typically benefits larger chain retailers.

Please consider getting out to support your fellow entrepreneurs!

Legal Notice

Patent Reform 2011 – What Does It Mean For Inventors and Entrepreneurs?

On September 16, President Obama signed into law the Leahy Smith America Invents Act, formerly termed the Patent Reform Act of 2011 (background to the America Invents Act), in the first sweeping changes to the patent laws since the 1952 Patent Act.

Given the scope of the act, the gravity of many of the changes, and the uncertainty as to the practical impact of a number of its features, this is likely to be the first of many posts on the topic, in an effort to address its potential significant impact on clients, from individual inventors and entrepreneurs to small businesses to larger corporations, as well as patent holding companies and intellectual property attorneys, among others.

One aspect of the Act that is getting a lot of attention is the transition to a so-called first-to-file system from the current first-to-invent system, which gives rise to interference proceedings for determining priority of inventorship, independent of application filing priority. In the first-to-invent system, in contrast, which is set to kick in on March 16, 2013 (18 months), the timing of application filing becomes more important than when an invention is conceived, for purposes of determining the proper inventor(s). A later filing applicant may, however, still prove inventorship through a derivation proceeding under Section 135 (or 291, in cases where two patents have already issued)(all section references herein being to 35 U.S.C.), in which the “true” inventor seeks to demonstrate that the earlier applicant derived the invention from the later-filing inventor.

While the move to a first-to-file system was intended (per the legislative history) to bring the U.S. more in line with the policies of much of the rest of the IP world, the U.S. remains distinct from most other countries in hanging on to its one-year “grace period”, albeit in a modified form. Under Section 102(b)(1)(A), a public disclosure by the inventor is not prior art against that inventor if made a year or less prior to filing of an application, nor, under 102(b)(1)(B), is the same disclosure by another, if the inventor made the same disclosure first (and assuming that earlier disclosure is not otherwise a bar under 102(b)). Sections 102(b)(2)(A) and (B) spell out further exceptions relating to prior patents and published applications and will not be further discussed here.

Among the concerns and complaints by entrepreneurs is that while the grace period continues to apply to disclosures, it no longer applies to offers for sale or public uses, severely damaging an inventor’s or start-up’s ability to test and perfect an invention, begin lining up sales or take other steps to commercialize the invention, seek investors, etc. Patent attorneys and other intellectual property practitioners and academics are further concerned that a practical effect will be an increased rush to the Patent Office with “just-in-case” filings of dead-end inventions, something the already overburdened patent examiners and system surely do not need.

Much more discussion is to follow.

Legal Notice

Patent Reform 2011? – Proposed Patent Legislation

Every year it seems some proposed bill or another makes its way through Congress with the potential to shake up the patent law community. See e.g., Patent Reform Acts of 2005-2010. This time, however, things just seem different, with followers giving it a solid chance of ultimately passing this year.

On January 25, 2011, Senator Patrick Leahy (D-VT) introduced Senate bill S.23, then entitled the Patent Reform Act of 2011. That bill had origins back at least to the 2005 bill, legislation introduced by Rep. Smith (R-TX). S.23 was introduced, among other reasons, to address perceived slippage of the United States’ place in the world with respect to invention and innovation, particularly with respect to China. After a number of amendments, the Senate passed the bill 95-5 on March 8, 2011. Companion bill HR.1249 was introduced in the house by Rep. Smith on March 30, 2011.

Among the potential implications of this legislation are a move to a first-to-file system, including replacement of interference proceedings with new derivation proceedings, post-grant patent review, modified patent damages standards, a change in the standard for initiating inter partes review proceedings, and priority examination procedures, among others.

Legal Notice

Can the Phrase “Can’t Wait” be Registered as a Trademark?

Yahoo!’s sports blog Shutdown Corner recently posted the article “Bart Scott trademarks the phrase, ‘Can’t Wait!'” For starters, though a trademark application for the phrase was filed by one Bartholomew E. Scott, the application has not been approved (i.e. the mark registered), nor even examined, by the United States Patent and Trademark Office (USPTO). Filed January 21, it is typical for 3 to 4 months to pass before an application is even picked by an Examiner for review. Regardless, the news has led to a firestorm of wild speculation (more…)

Legal Notice

Innovation in America – White House Requests Comment

[Video]Advise the Advisor: Your Direct Line to the White House

Update (Feb. 17 ’11): The referenced video and a follow-up blog post may be found here: VIDEO and BLOG. The main link in the ongoing program now seeks input regarding specific questions on Entrepreneurship, Capital, Workforce Development, Exports and Clean Energy (Advise the Advisor).

Original Post: The White House recently launched a new program termed Advise the Advisor, purported to be your “direct line to senior staff at the White House.” Whatever your politics or your thoughts on the current state of the federal government, this program begins (more…)

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