“Patent Your Products” Webinar

If you have any questions, please feel free to contact Rick Michaud (michaud@mkgip.com) or John Mutchler (mutchler@mkgip.com).



By his signature on September 19, 2011, President Obama enacted the most sweeping changes to U.S. patent Law in over fifty years.  The Leahy-Smith America Invents Act (“the Act”) changes many aspects of U.S. Patent law that will impact inventors, patent owners and patent attorneys.  A brief summary of some of the most important changes is provided below.

First to File System

The most significant change introduced by the Act is the switch to a First to File System.  This change will occur 18 months from the date of enactment.  Prior to the Act, the U.S. was a first to invent system, meaning whoever invented first was entitled to patent protection regardless of whether they filed a patent application first or last.  With passage of the Act, the U.S. will join the rest of the world by awarding patent protection to the first inventor to file a patent application for a particular invention.  Despite the change to a first to file system, the one-year disclosure grace period is being maintained.

Give the transition to a first to file system, the U.S. Patent and Trademark Office (“USPTO”) will no longer conduct interference proceedings.  Instead, the USPTO will conduct derivation proceedings for instances where inventorship and patent rights are questioned.

Best Mode Requirement

Another significant change under the Act is that an issued U.S. Patent cannot be held invalid or unenforceable if the best mode of the invention is not disclosed in the patent.  However, since the best mode is still required under the disclosure rules an Examiner may still reject a patent application as lacking the best mode.  Accordingly, we recommend patent applicants make note of the best mode of their invention and that patent attorneys draft applications to include the best mode of the invention.

False Marking

You may have noticed the recent flurry of lawsuits involving a third party suing an apparent patent holder for falsely marking products with expired U.S. Patent numbers.  Commentators have opined that such lawsuits clog the courts and waste the time and money of all parties involved.  In an attempt to staunch these lawsuits, the Act limits who can sue another for false marking to the U.S. government and those who have suffered actual competitive injury due to the false marking.

Fee Increases

The Act imposes a fifteen percent (15%) surcharge on certain patent fees that is effective beginning September 26, 2011.  The increased fees can be found at http://www.uspto.gov/aia_implementation/15_Percent_Surcharge_Fee_Changes.pdf.  According to the USPTO, if payment or authorization for payment is sent through the mail using the proper procedures described in 37 CFR 1.10, then “fees paid by using express mail will not be subject to the 15 percent fee increase when deposited with a U.S. post office, under the provisions of 37 C.F.R. 1.10, prior to September 26, 2011.”[i]

Conclusion

These changes, as well as others, are sure to be examined and dissected by commentators, the scientific and engineering communities as well as the courts.  Further client advisories will be issued accordingly.  However, should you have any questions or concerns regarding these changes and how they may impact your business, please contact one of the patent attorneys at the Michaud-Kinney Group.

http://www.proactiveresources.com/Media/BestofHartford_072711.htm

The Commissioner announced this milestone on the USPTO’s director’s blog.  More information about expected timelines for pending applications can be found here.

In addition to the lawsuit, it appears that Tory Burch LLC has taken a proactive approach to counterfeit goods by posting FAQs on its website, which alerts customers to known websites selling counterfeit Tory Burch items.  The FAQs also give customers some information about why counterfeiting is harmful.  More information about Tory Burch LLC can be found here, and its FAQs can be found here.

The Therasense v. Becton, Dickinson Decision concerns the duty of disclosure and the standards for inequitable conduct. The decision rendered by the Federal Circuit clarifies the requirements to establish inequitable conduct and in so doing, appears to make it harder to establish inequitable conduct. 

More information about the decision, and a copy of the decision itself, can be found at Patently O.

We found quite a few!  Here’s some of the light-hearted patents we uncovered.

First up, US Design Patent D513578, for Cutter Tool

Next up, patriotic duct tape, which can be found in U.S. Design Patent D513768

And last, but certainly not least, U.S. Design Patent D545027 for Patriotic Cube Puzzle

Hope you have a safe and happy Memorial Day.

Also, you can subscribe to various e-publications the USPTO publishes on a regular basis. To learn more about the publications and to sign up, visit the USPTO at their subscription center: http://enews.usptoenews.gov/lists/?p=subscribe&id=1

Coach Inc. appears to be policing its trademark rights aggressively, as they have at least four other trademark infringement lawsuits pending in the Federal Courts.