Friday, October 25, 2013

In the “Believe it or not” category:

1)      The USPTO is reducing a number of its most used fees on 1/1/14.
The utility patent issue fee drops from $1780 to $960 for a large entity;
                                                                            $890 to $480 for a small entity;
                                                                             $445 to $240 for a micro entity.
            Similar drops for design and plant issue fees as well as reissue issue fees.

            The publication fees for early, voluntary or normal publication drops to $0.

The USPTO is eliminating the fee for recording a patent assignment that is submitted electronically.

2)       In the PCT world there will be price breaks for small and micro entities:

Transmittal fees
            Search fees (although probably still get better deals from Korea and Russia)
            Supplemental Search fees
            Late payment fees
            Fee for Transmitting Application to International Bureau to act as the RO;
            Preliminary Examination fees;  
            Supplemental Examination fees.

3)      Check here for the full fee schedule for fees paid on or after January 1, 2014.

Lilly scientists prosecuted for trade secret theft

Two former Eli Lilly scientists were arrested and charged by the U.S. Government for stealing and transmitting Lilly trade secrets to a Chinese company.  Guoqing Cao and Shuyu Li, both research scientists with doctoral degrees, have been charged with multiple counts of trade secrets theft and conspiracy in violation of 18 U.S.C. Sections 1832 and 371, according to an Indictment that was recently unsealed by the U.S. Attorney’s Office in Indianapolis.  The charges against the two naturalized U.S. citizens, who will remain in custody for leaking trade secrets to a Lilly competitor in China, provides an abject lesson for both pharmaceutical companies that fail to safeguard trade secrets and other proprietary information and employees who get caught by federal authorities.

Tuesday, April 9, 2013

The New U.S. Patent Law: What You Need to Know and How It Will Affect Your Strategy

Here is a presentation recently given to the SPIE Advanced Lithography Symposium in San Jose.

In "The New U.S. Patent Law: What You Need to Know and How It Will Affect Your Strategy," Charles Szmanda describes the most important aspects of the new patent law. These include: (1) the "first inventor to file" system, which takes effect on March 16, 2013 and replaces the "first to invent" system in current law; (2) new ways to challenge issued patents such as "Post Grant Review" and "Inter Partes" review; (3) prior art submission during prosecution of another inventor's patent application; (4) prioritized examination of applications; and (5) prior user rights. He also discusses how these new elements of the law will alter the competitive environment but will also present a number of opportunities for formulating a successful patent strategy within that new environment.

If you don't see the presentation on the screen, you can see it here:

Sunday, May 8, 2011

From Fabrics to Bottles and Back to Fabrics

On May 8, 1951, the first Dacron® men’s suits were introduced by the Hart, Schaffner & Marx Co. in New York City. The fabric was actually 55% Dacron® and 45% worsted wool, made by Deering, Milliken & Co. This was the first time polyester was used as used in clothing. It is durable, washes well, resists soaps detergents and dry cleaning solvents and resists mechanical abrasion. 

Dacron® was, at the time, a registered trademark of DuPont and is based on a polymer called polyethylene terephthalate (PET). This polymer is used in fibers for textiles, films, those familiar soda bottles and as engineering plastics. The water and soda bottles made of PET comprise a huge fraction of the floating garbage fields in the Atlantic and Pacific oceans. While these bottles eventually break up mechanically into a kind of “sand,” the polymer itself is not biodegradable. This PET “sand” is now washing up on beaches around the world.

But creative people are at work. At present, there are 2,721 issued U.S. patents that describe how PET bottles can be recycled and turned into fabric. Some of these patents were issued very recently. And the work has not stopped. There are now more than 2,000 pending patent applications that also cover how PET can be recycled into fabrics. While some of these technologies recycle the bottles directly, producing a stiff fabric useful in blue jeans, for example, others describe how the polymers can be broken down to lower molecular weight materials for softer, more supple fabrics. Still other patents describe breaking down the polyester all the way to its component monomers.

It is interesting how things can come full circle.

Friday, April 15, 2011

Accelerated Examination about to start

A new accelerated patent application examination program is beginning May 4, 2011. Applicants can obtain accelerated examination for eligible patent applications upon payment of an appropriate fee.

The basics:

- The application must be filed on or after May 4, 2011. If a patent applicant has a patent pending prior to this time, the applicant can still take advantage of the accelerated examination program by filing a continuation on or after May 4, 2011.

- U.S. national stage entry patent applications from PCT patent applications are not eligible for prioritized examination. However, a continuation patent application filed from such a U.S. national stage entry patent application may be eligible.

- The fee will be $4,130. No small entity fee reduction.

- A publication fee of $300 is also required, normally required when the patent is issued.

- The claims are limited to no more than 30 total claims, of which no more than four can be independent.

- The application must contain a signed Declaration and include all USPTO fees that are due when filing.

- The number of accelerated applications is limited to 10,000 patent applications for the current year. - Requests for non-publication are not allowed

- Extensions of time are not allowed.

The USPTO states it will provide a final disposition of a patent application through this program within 12 months of the accelerated examination request. “Final disposition” is defined as:
1) Mailing a Notice of Allowance
2) Mailing a final Office Action
3) Applicant filing a Notice of Appeal
4) Declaring an interference
5) Applicant filing a Request for Continued Examination (RCE)
6) Applicant abandoning the patent application.

Typical examination takes 3 years or longer depending on the technology area. The program provides significant acceleration of the examination process. Accelerated examination can be particularly valuable in technology areas that rapidly moving. Accelerated examination can also be valuable to start-ups that need to rapidly protect their technology. Extensions of time for responding to Office Actions during the examination process are still allowed but that will remove the application from the accelerated examination program.

Friday, April 8, 2011

U.S. Government Shutdown Looms: Effect on Patent Filing and Prosecution

We have received the following press release from the U.S. Patent and Trademark Office:

USPTO Prepares for Possible Government Shutdown

In the event of a government shutdown on April 9, 2011, the United States Patent and Trademark Office will remain open and continue to operate as usual for a period of six business days – through Monday, April 18, 2011 -- because the USPTO has enough available reserves, not linked to the current fiscal year, to remain in operation until then. Should a shutdown occur and continue longer than the six-day period, we anticipate that limited staff will be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions. More information will be posted on [the USPTO] website as it becomes available. Thank you.

Sunday, April 3, 2011

Mr. Shaw and the Flashing Cat's Eyes

You know those little reflectors in the middle of the road that show you where the lanes are?  Someone had to invent them.  And someone did.  On April 3, 1934, Mr. Percy Shaw applied for a British patent entitled "Improvements relating to Blocks for Road Surface."   

A key aspect of the invention was not only that they reflected the light from oncoming cars but that their raised surfaces “yield when travelled over by a vehicle wheel and sink to the level of the road surface," so that they would not be damaged when run over by vehicle tires or, worse, a snow plow.  They were mounted on a resilient white rubber cushion in a metal holder below the road surface so that they could be pushed down and pop right back up again.

As the story goes, Mr. Shaw was driving down the curvy road from the Old Dolphin public house in the town of Clayton Heights to his home in Halifax.  As Mr. Shaw was rounding a curve, a cat on a fence along the edge of the road looked at the car – and its eyes reflected his headlights back to Shaw, allowing him turn and stay on the road.  That's how he got the idea.

According to British patent No. 436,290, Mr. Shaw’s first claim reads, “A block of the type specified for road surface marking wherein the base of the rubber filling is partially supported within the metal holder so that the filling will yield by displacement and deformation or by either, when travelled over by a vehicle wheel or stepped upon by a pedestrian and sink to the level of the road surface or thereabouts.”  

Based on his invention, Mr. Shaw started Reflecting Roadstuds Ltd. to manufacture and sell his reflectors.

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