Category: Blake’s Patents, Trademarks, and Copyrights

Hello inventors. Micro entity fees are set to become effective on March 19, 2103 according to the federal register . Micro entity status will reduce patent fees by 75% for those who qualify as micro entities.

In general to qualify for micro entity status one must satisfy these four requirements:

(1) the applicant qualifies as a “small entity”, as defined in 37 CFR 1.27,

(2) neither the applicant nor the inventor nor any joint inventor has been named as the inventor on more than four previously filed patent applications – but the following applications do not count toward the four application limit:
applications filed in another country ;

provisional applications ;

international applications for which the National Stage fee was not paid – in other words, PCT applications which did not go past the International Stage;

applications resulting from prior employment, if the applicant has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s previous employment. Note that this does not apply to the applicant’s current employment.

(3) neither the applicant nor the inventor nor any joint inventor had, in the calendar year preceding the calendar year in which the applicable fee is being paid, a gross income (as defined by the IRS) exceeding three times the median household income for that preceding calendar year (as most recently reported by the Bureau of the Census). The income level which will entitle an applicant to “Micro Entity” status (criteria (3), above) is initially set to $150,162, based on the 2011 figures (the latest year available when the regulations were issued in December 2012); and
(4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that would not meet (3), above.

Inventors, be aware! Patent applications filed on March 16, 2013 and after will fall under First to File scheme created by the America Invents Act of 2011. What that means is that those new applications (dated 3-16-2013 and after) cannot claim to an “invention date” prior to the application filing date, the 1 year grace period will be limited due to prior user rights, and there will be post-grant review, and the patent application may be invalidated by public uses and sales of similar inventions in foreign countries. The good news is that secret prior invention or reduction to practice by a third party will, generally, no longer be relevant to patentability.

Tuesday night we had a great Inventor’s Association of Connecticut Meeting. The meeting was in the form of a discussion panel, with two patent attorneys and one patent agent. A video of the event is here.

Wired Magazine had an interesting article on Toshiba’s inelegant use of copyright. Basically, Toshiba has been sending cease and desist letters to 3rd parties who make available old Toshiba computer manuals. People with old toshiba computers, and people who repair old Toshiba computers are pretty mad at Toshiba for their heavy handed way in trying to stop the easy availability of the old Toshiba computer manuals. However, Toshiba does own the copyright in their manuals, and can legally prevent the copying and distribution of those manuals.

I just found this article on Forbes.com that gives both sides of the argument regarding whether the America Invents Act (AIA), which will go into further effect in the Spring of 2013, is good or bad. I like how the article is not just an anti-AIA screed from the perspective of individual inventors and small businesses. My view has long been that there will be very little negative impact on individual inventors and small businesses now that we have become generally a first to file county (whereas we used to be a first to invent country). The reason is, there is still the 1 year grace period, which means no matter what, if you publicly disclose or offer for sale your invention, you only have 1 year from that date to file a US patent application. Thus, there is still a “race” to the patent office. What is clearly on the plus side for individual inventors and small businesses is that patent fees will go down when the “micro-entity” fees take effect, presumably this spring.

Please note that I had previously posted that I would be on a Panel Discussion this Tuesday (10-30-2012) at Fairfield University regarding the American Invents Act and You. However, that panel discussion and the Inventor’s Association of Connecticut meeting scheduled for that day will be postponed due to Hurricane Sandy.

AVVO had an interesting discussion on the topic of How do you tell if a patent was ever “pending?” and has since been denied
? Other patent lawyers had already suggested going to the USPTO.GOV website and searching for patents and applicaitons by the company or person you are interested in. Of course only issued patents and published patent applications are searchable. Patent applications generally publish 18 months after the filing date. My suggestion was to search the assignment database at the USPTO.GOV website. There you can search patents and published patent applications by assignees and assignors.
As for determing whether a patent application has been denied, you should be able to see published patent applications in public pair at the USPTO.GOV website, and look up their prosecution history and determine if the patent application issued, or was abandoned.

Please take note that USPTO fees will be going up again on Oct 5, 2012. The new fees are here.

I will be sitting on a panel discussion put on by the Inventor’s Association of Connecticut (IACT) entitled: “The America Inventors Act and You”. The panel discussion will take place on October 30, 2012 at Fairfield University. Check the IACT website for more information as it becomes available.

The focus will be implications of the new Patent Process, First to File versus the historical First to Invent. The panel will discuss:

(1) understanding the new process,
(2) becoming aware of the differences and
(3) implications to the independent inventor including opportunities, and potential negatives, associated with the changes.

I look forward to seeing my readers there!

On Saturday I received an email from the USPTO disclussing how the patent office is in the process of modernizing their electornic filing system. Included in the updated system will be the following improvements: (1) applicant can use a validation wizard to assure that any formatting, generic such as edits tracked from the original document due to revisions, and private information are not part of the file, and that application parts can be recognized; (2) applicant can run an optional analytics report to ensure the abstract length is correct, generate an automated claims tree, and identify any errors in claims numbering; and (3) Based on information submitted in the Application Data Sheet (ADS), the USPTO will be able to generate maps that show relationships between patent applications, or patent family maps.

Although the patent office has not yet introduced these improvements, they are currently seeking input to help define and design these processes.