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I will be attending the National Association of Patent Practitioners (“NAPP”) Conference this year at the end of July. It will be held in Alexandria, VA at the patent office! I have been a member of NAPP since 2004, and this will be the third NAPP Conference I have attended. NAPP is a nonprofit organization dedicated to supporting patent practitioners and those working in the field of patent law in matters relating to patent prosecution and its practice. More information on the NAPP conference can be found here.

I have heard some people say that there is no longer a 1 year grace period under the America Invents Act. The currently enacted 35 USC Section 102 states in relevant part:
“35 USC § 102. Conditions for patentability; novelty
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) 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; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or aFILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor…”pplication, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor…”
In fact, if “disclosure”, as some have suggested, doesn’t mean “on sale” or “public use”, then it also should not mean the other prior art listed in 102(a)(1), namely: “described in a printed publication”, or in “public use”, or “otherwise available to the public”. And if that is the case, what is left for “disclosure” to mean? Almost nothing. Thus, it is my view that there is still a 1 year grace period for when an inventor publicly discloses his invention, or offers his invention for sale, or otherwise makes a public disclosure of his invention. Of course, there has been no cases directly on point since the AIA was enacted in 2011.

On April 26, 2016 at 7 pm at Fairfield University, IACT presents Frank Morse talking about Valuing Start-up & Early Stage Companies: Art or Science. Frank currently serves on the state board of Crossroads Venture Group and has served on the boards of several Connecticut based companies. More information can be seen here. This is a good opportunity for inventors to meet other inventors.

My client Faria Beed Instruments in Uncasville, CT recently received an issued patent on a patent application I worked on for them. The patent can be found here!

The supreme court of Massachusetts decided in December of 2015 that just because a firm represented two competitors in patent preparation and prosecution in the same technological area before the USPTO, that that alone does not arise to a conflict of interest. The case is called CHRIS E. MALING vs. FINNEGAN, HENDERSON, FARABOW, GARRETT&DUNNER, LLP, & others and can be found by doing a search for “Maling” here.

As stated by the court on page 9:
“Maling advocates for a broad interpretation of rule 1.7 that would render all subject matter conflicts actionable, per se violations. We disagree. We conclude that although subject matter conflicts in patent prosecutions often may present a number of potential legal, ethical, and practical problems for lawyers and their clients, they do not, standing alone, constitute an actionable conflict of interest that violates rule 1.7.”

Also, at page 14: “Maling’s conclusory allegations as to the high degree of similarity between his device and the Masunaga device are contradicted by his acknowledgment elsewhere in the complaint that patents issued for both his applications and the Masunaga applications. Although Maling alleges that the Masunaga and Maling applications are “similar . . . in many important respects,” he does not allege that the claims are identical or obvious variants of each other such that the claims in one application would necessarily preclude claims contained in the other.”

The underlined part above is the important take away as to what might constitute an actionable conflict, that is a conflict may exist when preparing or prosecuting patent applications for different clients when the “claims are identical or obvious variants of each other such that the claims in one application would necessarily preclude claims contained in the other”.

Donghia, Inc. out of Milford, CT has received a design patent on their unique Anchor Table Base. The patent can be seen here.

I will be starting my fourth semester as a supervising patent attorney and assistant clinical professor at the UCONN Law School IP Clinic this month. Classes at the Law School begin January 19, 2016. More information on the IP CLINIC can be found here.

I am proud to be giving a presentation to UConn’s Entrepreneurship Bootcamp for Veterans with Disabilities for the second year in a row. On October 8, 2015, I will be presenting on Intellectual Property for Entrepreneurs at the bootcamp. You can find more information on the bootcamp here.

I would like to congratulate my client Tracey Couto who received a design patent on her design for a Onesie with Loops and Links. The patent can be seen troche 024.PN.&OS=PN/D737,024&RS=PN/D737,024″>here.

I would like to congratulate my client Donghia, of Milford, CT for recently obtaining three design patents. The patents were for a console table , cocktail table, and sofa bases .