We are pleased to announce that Oliver & Grimsley, LLC has been named as one of the 2015 Top Patent Law Firms in the United States by Intellectual Property Today Magazine (IP Today). We are truly grateful and glad to be of service. A special thanks to our clients who have trusted us with their patent matters.
Oliver & Grimsley, LLC receives questions from time to time regarding the patent process and the time it takes for an application to proceed through the U.S. Patent and Trademark Office (USPTO).
The timeframe for a regular application to proceed through the USPTO is on average 2 to 3 years, and in some cases even longer, depending on the subject matter of the application. It is hopeful that with the recent opening of additional satellite offices, the USPTO can reduce the number of applications per examiner and enhance the overall speed with which examiners handle and review pending patent applications.
With the signing of the America Invents Act (AIA) in 2011, the USPTO moved forward with the plan to open four satellite offices over the next several years. In July 2012, the USPTO opened its first ever satellite office in Detroit, Michigan and more recently, on June 30th, the USPTO opened the Denver, Colorado satellite office. The USPTO will create a regional presence across every continental U.S. time zone with the upcoming addition of two more satellite offices. In 2015, the USPTO plans to open the permanent Dallas, Texas and San Jose, California satellite offices. Through these satellite offices, the USPTO plans to aid inventors in their respective time zones and help to alleviate the backlog at the USPTO Head Quarters, although patent examiners have not yet been hired.
In addition, in order to increase the speed of the patent examination process, the USPTO also initiated two fast-track application options in 2012. The Fast Track Option for an “accelerated examination” of applications will take, on average, about six months to proceed through the patent office. This option requires the applicant to submit detailed explanations and arguments up front with the filing of the application. Therefore, work that is generally conducted throughout the examination process is submitted upfront with the filing in order to aid the speed at which the application is examined. The Fast Track Option for a “prioritized examination” of applications will take, on average, about one year to proceed through the patent office. These Fast Track Options come with additional costs to the applicant, but do provide the additional speed at which an applicant may seek to have their application proceed through the examination process (depending on the applicant’s circumstances).
At the opening commencement ceremony of the Denver, Colorado satellite office, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee commented that “[w]e are excited to bring our department closer to our customers by opening the doors of this new USPTO satellite office – a one-stop-shop for intellectual property services that will help the Rocky Mountain region’s inventors and entrepreneurs speed their innovative products and technologies into the marketplace.”
In addition, “[b]y retaining and hiring more talented examiners locally, we can further improve the overall quality and transparency of our operations while continuing to reduce patent pendency on a national scale,” said Lee.
While some are doubtful, we will keep our fingers crossed that the USPTO follows through on its intention to hire examiners in order to increase the speed of applications being reviewed in the patent office. In addition, we look forward to the positive effects that satellite offices will have on the patent system as a whole and the benefits that will be conveyed to inventors as they continue to file and proceed through the patent application process.
For more information on this topic, please contact U.S. Registered Patent Attorney — Pamela K. Riewerts, Esq. at pamela@olivergrimsley.com
The Maryland Legislature passed Senate Bill 585, adding a new section to Md. Commercial Law Annotated Section 11-1605, “Bad Faith Assertions of Patent Infringement” That law was signed by the Governor and became effective June 1, 2014. That bill contains a litany of requirements to be met before sending a patent infringement letter to an accused infringer in Maryland. As a result of the bill, sadly, a patent rights holder needs to strongly consider NOT sending any pre-litigation letters, and instead, simply suing first. More on why that is an important consideration below.
SB 585 is one of many similar bills passed in several states, is aimed squarely at non practicing entities that assert allegedly unviable patents as a “shakedown” to extort license fees – also euphemistically labelled “patent trolls.” The problem is that not every non practicing entity is a “patent troll,” and diluting the right to enforce patents can have a negative impact on innovation. For a good article on why this may be a bad thing, see Inventing the Smart Phone: Why the ‘Trolls’ Were Saviors.
Bad faith assertion of intellectual property rights is nothing new in the law, the Supreme Court has addressed it numerous times. The Supreme Court settled a long standing issue under the Noerr-Pennington doctrine (the 1st amendment doctrine that determines when a person is validly exercising 1st amendment rights to petition the government for redress of grievances) in PREI, INC. v. COLUMBIA PICTURES, 508 U.S. 49. There, the Supreme Court held that “First, the lawsuit must be objectively baseless in the sense that no reasonable litigant could realistically expect success on the merits. If an objective litigant could conclude that the suit is reasonably calculated to elicit a favorable outcome, the suit is immunized under Noerr, and an antitrust claim premised on the sham exception must fail. [n.5] Only if challenged litigation is objectively meritless may a court examine the litigant’s subjective motivation. Under this second part of our definition of sham, the court should focus on whether the baseless lawsuit conceals “an attempt to interfere directly with the business relationships of a competitor,” [], through the “use [of] the governmental process–as opposed to the outcome of that process–as an anticompetitive weapon,” []. This two tiered process requires the plaintiff to disprove the challenged lawsuit’s legal viability before the court will entertain evidence of the suit’s economic viability. ” While the Noerr Pennington Doctrine is most often applied in the context of antitrust law, the rule is one based on the 1st Amendment – and hence, applies across all rights-assertion scenarios, and is the Supreme Law of the land.
Pre-litigation demand letters are pre-cursors to effective petitioning of the government. Indeed, numerous cases have held that the the law favors dispute resolution, and favors the parties communicating before filing suit, in an effort to settle their disputes. However, under SB 585, engaging in those efforts could cost you $50,000 if you fail to comply with the requirements.
In general, SB 585 requires that a patent rights holder include in the letter several pieces of information (the patent holder’s real identity, the patent number, certain facts about the accused infringer), that the patent rights holder engage in specific analysis regarding infringement, and that the accused infringer be given a not “unreasonably short” time to respond. Further, the law requires that the demand be based on a “reasonable estimate of the value of the license.” As a practicing lawyer, I can tell you that if you put any two (or more) lawyers in the same room and asked them what a reasonable royalty was or what an “unreasonably short” period of time was – they would not agree.
If the patent rights holder gets it wrong in the letter, the risk is huge. The court can award 3 times “damages” (whatever that is in this context) or $50,000, and reasonable attorneys fees.
SB 585, while aimed at some of the more reprehensible “patent trolling” conduct in the news, is unfortunately a law that is going to promote patent rights holders to not engage in pre-litigation resolution effort, and instead sue. A person who sues still must engage in pre-litigation investigation to avoid numerous other bad faith litigation related remedies, like Fed R. Civ. P Rule 11 relief. However, that standard applies to the substance of the claim – not the demand for resolution – and is much harder for a defendant to meet.
SB 585 also appears to apply both prior to, and during litigation, so even making written offers of settlement during litigation is dangerous.
We strongly urge our clients who are considering sending patent enforcement/settlement letters to consider whether or not to do so. If they do, they need to comply with this law or risk severe penalties.
For more information, contact Mike Oliver
All of life is an adventure. Our current adventure – which is celebrating its first birthday today – started off ominously. After Mike and Kim gave notice at our former firm, we needed to find office space. On the first day our tenant rep scheduled property visits, we first looked in our own building and literally, just as we got to the offices we were going to look at, the entire building’s power went out! Thinking that was a little odd, we trudged on. A few days later, on our second office visit, we noted that shortly before we walked in, that buildings entire power had also went out! (and that building had multiple redundant generators that somehow also had failed). At this point we had to wonder if someone was sending us a sign. But we trudged on . . . . Time was not on our side and we knew that we could not get into new offices by the date of our departure, so we rented two temporary offices for 3 months at 100 West Road.
The week we started our firm was tough – Mike was leaving an 18 year career and Kim was leaving even more time there, as she was a paralegal when that firm first started. We worked the first 2 days of that week at the old firm, woke up the next morning (Wednesday May 1, 2013) and came in to temporary space at 100 West Road. Unfamiliar surroundings – no support staff. A complete reboot of our lives. At least Mike was able to get in a few days earlier and set up the computers and phones. On our first day we had received wonderful welcome plants from our former firm’s receptionist Jean and from Tina and Lisa – the staff we had worked with closely. A good friend, Leslie Ries, also sent us some wonderful tea from New York, and to our amazement, a retainer check from one of our clients was delivered our first day. Many clients congratulated us by phone calls and email.
Consistent with the first 2 power outages, wouldn’t you know that as Kim arrived at the temporary office on Day 1, her iPhone was dead – literally dead as in would not power on! A sign? Heck no, we trudged on . . . ran over to Verizon, and got Kim a new phone. We also went to Staples and bought our first office supplies, and grabbed a quick lunch out.
Needless to say, the first few days and weeks (and really at least the first 90 days) were a blur. In the middle of trying to keep up with client work, we had to learn a new accounting system, phone system, organize documents, set up accounts at the USPTO, buy computers and furniture, rent new offices, upload trademark files into our new trademark system, obtain insurance – and do so many other things that it seemed like we just worked and worked. Kim and Mike regularly talked on the phone on calls that would start at 10pm or 11pm and go much later.
Mike did not want to have a lot of maintenance on computers so we elected, with Kim’s consent, to adopt Apple as the main computer system. Apple computers have their plusses and minuses – but the main issue for us was overall cost to own, when you add in the maintenance and support issue. Everyone here but Mike had not really used MACs before – but everyone smiled and learned a whole new way of working with computers, and never complained once – despite I am sure a number of frustrations – and Mike not being the best trainer (think Jimmy Fallon in his SNL role as computer guy Nick Burns 😉
We had expected to be less busy with client work – not knowing who would come with us. However, it very quickly became apparent that we needed help at least on the trademark side. We reached out to our good friend Ellen Feldman at Special Counsel and she filled our need with a short term paralegal, Delrose. In the first month we only had two offices, so we “office shared” – on some days Mike would work from home and Delrose and Kim would work in the office, and on others, Kim would work from home. We knew we needed to design the firm to be able to operate from anywhere, so we used laptops, VOIP, and cloud based services for accounting and documents.
Somehow we managed to stay awake, bill a little time, and start slowly working on client matters. We also knew we wanted a complete IP, corporate/business and technology based firm – so we decided to ask Pamela, Larry and Tina to come over. All of them were friends in addition to being professional colleagues – and a critical part of our IP practice. We knew that what we were asking them was a huge risk – they had great jobs with an established firm. Nevertheless, you have to ask – or you may regret it for the rest of time. The worst that could happen was they would say no – and then at least we would know we made an effort. Somewhat to our surprise they agreed to join us, and by June 1st, we had grown from 2 lawyers to 4 lawyers and an office manager / paralegal (though the only smart one of us, Pamela, took some time off before starting full time).
We had signed a lease for what would become our permanent offices in mid-May, but we had not yet selected the carpet, paint, finishes etc. So, this was the first test of how we would work together on simple decisions (you know, its always the small things that cause the biggest problems). The landlord gave us the paint chips and samples – but the carpet did not thrill us so we scheduled a meeting at the flooring place. The day we went it was pouring rain. We got down there and as better omen than the rain, we rather quickly picked a carpet and hardwood laminate for the outer offices. The rain was a signal though, as you will see later in the story. We then did what we do a lot together as a firm – went to have sushi! Later we had to pick the paint color – we are not traditional in the least, so the consensus was (with Mike abdicating ;-)) we picked a yellow color – something to brighten up the offices. (After the offices were done, Mike did get to pick the gunmetal titanium grey refrigerator color – at least one item here had to be more masculine in color)
As the build out was being done Mike would periodically review the progress, because we have learned from past cases that you really have to bird dog that to make sure it is right. Our landlord’s staff were great though, really almost no issues at all. However, the first day Mike got over after they had done the paint . . . well that was quite a surprise – that yellow really grabs you, especially with nothing else on the walls!
As luck would have it (remember the rain omen…) the flooring people installed the wrong floor – and thanks to the actual floor style being on the order form, our first big break was we got the hardwood part of the floor for no cost – though there was some debate about whether to replace it with a closer color than we had picked. Turns out the color worked well.
With the leased space coming together we were getting busier. It seemed unfair to ask Tina to support all of us lawyers, so we decided to advertise for an administrator. At this point we had several applicants, including Lisa, the admin we had worked with at our prior firm. After several interviews we hired Lisa and she started in August. By this time we were in our current offices and things started to settle in. Though worried we would not have enough work for her, Lisa is always busy – and she is a critical part of our team now.
We decided to have an office warming party, which we scheduled for November 14, 2013 – we love a party and everyone enjoyed planning it (though Mike claims it was really Kim, Pamela, Tina and Lisa that did everything that made it a success). One rush – the walls were bare, so we engaged in a brief art buying spree – not being able to afford a real interior decorator. ETSY is your friend. But even with that – we were still missing art, so Mike asked his Philosopher and co-professor friend, Richard Wilson – an avid art collector, for help. Richard delivered – literally – he came over and loaned us some beautiful artwork from his vast collection. He was hanging much of it just a few hours before the party started! Many of our clients helped us – several of us visited our client Bloomery Plantation Distillery in West Virginia where we bought their wonderful aperitifs for the party – we also had food from our client Birroteca, and drinks from clients Sandy Bottom, Evolution Craft Brewing Company and IndiBlue. The party was a lot of work, but we had a lot of fun, and our clients and friends seemed to enjoy it.
We survived end of year, and made it through tax season with the help of our accountant and our clients, and funded our first retirement contributions.
We have so many people we are grateful to and need to thank for making it this far – our clients – for trusting us with their legal issues and paying our bills, our families – for putting up with some odd work schedules, and our friends that we leaned on for help, advice and assistance. If given the opportunity to help someone – even in some small way – we will, because we will not forget the help we received.
All of us are looking forward to our second year!
Best regards to everyone,
Mike, Kim, Pamela, Larry, Tina and Lisa.
We all know that guy or lady – the one who does impressions, or makes up a character and has us laughing all nite. Well, it was no laughing matter to Hank Azaria when he was threatened with infringement of a character he created that went viral. Azaria v. Bierko, C.D. Ca CV 12-9732 GAF (2/21/2014).
Azaria is an actor and voice performer (among many other voices, he voices several characters on the Simpsons). Since about 1986 Azaria kept his guests in stitches at parties with a fictional baseball announcer voice. In 1990 he was introduced by a mutual actor friend (Matthew Perry) to Craig Bierko – another comedian, who also did a fictional baseball announcer voice and character. They interacted with their characters and often “riffed” on their characters. Azaria wanted to use the voicing of Bierko’s announcer but Bierko refused.
Fast forward to 2010 (about 10 years later) when Azaria publishes a video on Funny or Die (note: has mature content) with a Baseball announcer character “Jim Brockmire”, and it goes viral. Azaria is considering expanding the “character” into more short stories or videos, but Bierko threatens Azaria for violation of his Baseball announcer voice and character – and Azaria sues for a declaratory judgment of non infringement/non violation of rights.
Bierko’s “character” was not well defined – and it was only twice fixed in a tangible medium – both times only in audio and in both cases, only the voice provided character definition. Azaria’s character was only fixed in a tangible medium once – however, the video has other announcers who “define” the character traits by describing Jim Brockmire, and Azaria’s portrayal of the fictional Jim Brockmire in the short video gave the character additional identifiable traits (type of clothing, style of announcing, over the top movie references etc) – many more attributes than those of Bierko’s 1 dimensional voice character. Ultimately the court ruled in Azaria’s favor. The court also held Bierko’s character was not protectable.
There is no legal question that fictional characters can be copyrighted, and hence, achieve protection from infringement. However, the character must be rather well developed – either textually or via audio or video means.
This case demonstrates a number of issues we see regularly in our media practice – a confluence of ideas (which are generally not protectable absent a contract), and multiple people building one thought or idea on top of another until something actually creative and protectable is born. When that happens – what are the rights of the parties? Who owns the character that is born?
Likewise, we often encounter the reverse issue – a creative person sees a short video or skit, or reads some story (whether about a real or made up person) and then their ideas start to form and they develop a story or character from that interaction with existing content. If they write that story or make the video, will they infringe the person/content they referenced or built upon? Was it fair use? Was the content even protectable?
The court avoided the 1st Amendment issue – but there is a also a strong question here whether the video – which is a classic parody of baseball announcers in general, would be actionable. Recall the numerous funny skits of Will Ferrell as Harry Caray – all protectable as fair use paraodies.
We enjoyed the Azaria case because it describes a rather typical scenario . . . where the creative thought process takes a long time to develop and sources from interactions with third parties (sometimes at parties) who at least provided a germ of an idea. If the facts had been changed only slightly (say that Azaria had never done a baseball announcer until he met Bierko) would the result have been different?
Determining whether a creative character is infringed, or can be protected, and to what extent, can be complex. If the media presentation is a classic parody you can fall back on the 1st Amendment in many cases – but if the character is going to be used in a more mainstream manner, it is important to consider both possible infringement issues, as well as protection issues. In terms of protection issues, as the Azaria case demonstrates, it is important that the fixation of the character (e.g. in audio, audio-visual, or textual mediums) describe a multidimensional and complete character.
For media clearance and protection issues please feel free to contact Mike Oliver or Kim Grimsley at Oliver & Grimsley.