Category: Blake’s Patents, Trademarks, and Copyrights

At the end of July, 2016 I will once again be attending the National Association of Patent Practitioners (NAPP) annual conference in Alexandria, VA at the United States Patent and Trademark (USPTO) Headquarters. I will be conferring with patent attorneys and patent agents on Patent Quality, and best patent practices. More information can be found here.

I attended a meeting of the Inventors Association of Connecticut last night at Fairfield University. Edward Goodwin, an angel investor, gave a wonderful talk on how to (and not to) approach an angel investor to raise money. He gave some very good advice, such as be able to talk about your management team, the market, and then the product/invention, all in that order of importance–from greater to lesser. More information is here.

I would like to congratulate my Milford, CT client Jay Jaser for getting a registered trademark for “SENIOR HELP DESK GUIDANCE, STRENGTH AND SAFE HARBOR FOR OUR SENIORS”. The mark can be seen here.

I would like to congratulate my Branford, CT client NEW ENGLAND COMPUTER SERVICES, INC. for obtaining a registered trademark for Entrée with respect to computer software for food inventory tracking; and Computer software for enterprise resource planning in the food distribution industry. The mark can be seen here.

In a memo dated May 19, 2016, the Deputy Commissioner for Patent Examination Policy,Robert Bahr, said the following:

“The Federal Circuit in Enfish stated that certain claims directed to improvements in computer related technology, including claims directed to software, are not necessarily abstract (Step 2A). The court specifically noted that some improvements in computer-related technology, such as chip architecture or an LED display, when appropriately claimed, are undoubtedly not abstract. Explaining that software can make non-abstract improvements to computer technology just as hardware can, the court noted that claims directed to software, as opposed to hardware, also are not inherently abstract. Therefore, an examiner may determine that a claim directed to improvements in computer-related technology is not directed to an abstract idea under Step 2A of the subject matter eligibility examination guidelines (and is thus patent eligible), without the need to analyze the additional elements under Step 2B. In particular, a claim directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have previously been identified as abstract by the courts.” Emphasis this author’s.

The memo can be found here.

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”.