Category: Blake’s Patents, Trademarks, and Copyrights

The patentlyo blog has a nice write up on what is required for a person or entity to qualify for micro-entity status and the resultant 75% off of patent fees. In general, the applicant needs to answer the following:

• Does the applicant qualify as a small entity? (If no, then no micro-entity);Has the applicant or any joint inventor filed more than four US non-provisional patent applications? (If yes, then no micro-entity, unless those applications were from a prior employment and assigned to the prior employer);
• Did the applicant or any listed inventor have an income for the past year that was greater than $150,000? (If yes, then no micro-entity). This number will change annually based upon median US household income; and
• Have rights in the application been promised or licensed to a non-micro-entity? (If yes, then no micro-entity).

Last week I attended an Inventors Association of Connecticut meeting where the presenters were from the Stamford Innovation Center (SIC). The SIC provides an environment where entrepreneurs and early-stage startups can gather, collaborate, and innovate. According to Peter Propp, the SIC has powerful network of entrepreneurs, investors, mentors, and industry leaders, who can provide the resources, expertise, and talent an entrepreneur needs. Contact the SIC for more information.

An article at ARS TECHNICA describes how small businesses are being targeted by non-practicing entities (aka Patent Trolls) for patent infringement if they own a scanner that has the capability of scanning a document, then emailing that scanned document to someone. Many new scanners, printers, all-in-one devices now have that capability, and these Patent Trolls are sending out demand letters to all sorts of businesses, including at least one in Connecticut. If you ignore the letter, however, you could be setting yourself up for a default judgement if the Patent Troll files a law suit! Please contact a patent attorney if you do receive such a letter from a Patent Troll.

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.