by Mike Oliver | Aug 22, 2013 | Intellectual Property, Patents
Oliver & Grimsley, LLC recently revived an abandoned patent application for a client. We come across this issue from time to time, and wanted to discuss this topic, as many patent holders or applicants may not be aware that a technically abandoned application or patent can often be revived, long after the abandonment occurs.
This issue also affects freedom to operate opinions, as technically abandoned patents that might read on a particular device, system or process could be revived and come into play – and hence, patent searches for these opinions often must take into consideration abandoned patents.
Failure to take certain actions required by the USPTO can result in the abandonment of a U.S. patent application or issued patent. Some of these required actions include, among other things: (1) replying to an office action within six months of issuance; (2) paying an issue fee within three months of the issuance of a Notice of Allowance; and (3) timely paying a maintenance fee for an issued patent.
A question arises after a technical abandonment whether the application or issued patent can be revived? Section 711.02 of the Manual of Patent Examining Procedures (MPEP) outlines this issue.
Fortunately, the USPTO provides for two types of petitions to revive a technically abandoned U.S. patent application or issued patent depending on the circumstances: (1) a petition to revive for “unavoidable” abandonment; and (2) a petition to revive for “unintentional” abandonment.
(1) Petition to Revive for “Unintentional” Abandonment
This petition is usually the more commonly selected petition and although it is the more expensive, usually costing about $1900, applicants and patent holders generally select this option because it is the least burdensome petition to complete and file and usually ends with successful results. The petition is an executable form and the USPTO rarely requires any factual showing of delay. Instead, in the vast majority of petitions under 37 CFR 1.137(b), the USPTO relies upon the applicant’s duty of candor and good faith and accepts the statement that “the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional” without requiring further information. Note, a petition to revive for unintentional abandonment is only available within a two-year time period from the time the application or patent went abandoned.
(2) Petition to Revive for “Unavoidable” Abandonment
This type of petition is less likely to be granted than a petition for unintentional abandonment. While these petitions are less expensive, generally running about $640 (three times less expensive than a petition to revive for unintentional abandonment), these petitions are nearly impossible to prove.
A petition to revive for unavoidable abandonment requires a showing that the abandonment could not have been avoided. This is difficult to prove because the applicant must supply foundational evidence and provide the details of the events as to why the application was unavoidably abandoned.
A showing of unavoidable delay requires: (1) evidence concerning the procedures in place that should have avoided the error resulting in the delay; (2) evidence concerning the training and experience of the persons responsible for the error; and (3) copies of any applicable docketing records to show that the error was in fact the cause of the delay.
The showing required to establish that abandonment was “unavoidable” is so stringent that many times it is not worth the time and effort (or attorney’s fees) required to file the petition.
With either petition, it is important to seek a revival of the application or patent as soon as possible. Excessive delay between discovery of the abandonment and the filing of a petition may not qualify as being “unintentional” or “unavoidable” for the purposes of filing a petition to revive the application or patent. In addition, both petitions require that the applicant submit the response that was originally due at the time of abandonment (e.g., the office action response or issue fee payment). If all goes well, the Petitions Office with revive the application or patent and will leave the application or issued patent in the position it was in at the time of abandonment (less the time of delay) for any issued patent or application that moves forward to issue.
An applicant that has had the unfortunate mishap of having his or her application or patent go abandoned may be able to revive the application or patent by taking timely action and filing a petition with the USPTO. While the petition for unintentional delay is more costly to file, it is generally the least expensive and most successful procedure in reviving an application or patent in the long run.
For more information on this topic, please contact Pamela K. Riewerts, Esq. at pamela@olivergrimsley.com
by Mike Oliver | Aug 2, 2013 | Office News, Uncategorized
Kim, Pamela, Tina, Larry and I opened our firm’s principal office today at 502 Washington Ave, Suite 605, Towson Maryland. While we started business on May 1, 2013 it was not really until today that we felt like a complete firm in our own place. So, we think of today as our first real day in business. The first 90 days of a new business are brutal – trying to balance client demands, administrative matters, and the variety of oddbird things that you just cannot anticipate. Many things went right, some went wrong, some were unexpected. I hope to chronicle some of what we went through in future posts – as a teaser, we started inauspiciously – after engaging a tenant rep (see below) we set off to review space for leasing – and the first two buildings we visited had power out-tages just as we arrived to view the property! Needless to say, we were a little worried that was a bad omen ;-).
Power-outages notwithstanding, today we poured a little champagne in plastic cups, and toasted our office opening to a hoped for success in the future, for us and our clients. More pictures will come as we get fully up and running (our main lobby sign is not done yet, and the walls are pretty bare).
I cannot possibly fully express my thanks to the three young ladies pictured here (left to right, Kim Grimsley, Tina Neuman and Pamela Riewerts) and Larry Guffey, for taking a real big leap with me on this firm. I could not be practicing law with better lawyers, or with people that I enjoy working with more. I am sure we face some challenges ahead, but we are all very focused on client service, upholding high ethical standards, having a fun work environment (a little more on that below), and providing the best legal services we can at a fair and reasonable fee.
That brings me to another thank you – to the clients, service providers, landlords, and friends who have offered advice or just a “good luck” wish at an opportune time. At the risk of forgetting some, and the risk of the proverbial academy awards music playing to stop the speech, here goes:
First, to the clients that followed us from our prior firm (for privacy reasons we do not list here individuals): Chesapeake System Solutions, Inc. (thanks Peter and Jim), Talascend, Inc. (Thanks Ron, Jason and Bruce), Key Technologies, Inc. (Thanks Brian, Jenny, Keith and Scott), Delmar Brewing Company, LLC (thanks John), Digital Innovation, Inc. (thanks John and Tim), Woofound, Inc. (thank you Dan, Josh, Ken and whole gang there), Calvert Education Services, LLC (thanks Brady), OmniTI Computer Consulting, Inc. (thanks Jim and Theo), Reportsee, Inc./SpotCrime (thanks Coli), Better Business Bureau of Greater MD (thanks Angie and Jody), BJQ Sales & Service, LLC (thanks Tom), Trigger Agency, LLC (thanks Greg), Merritt Properties, LLC (thanks Melissa), Message Systems, Inc. (thanks to Joal, James, George and Alec, and all the staff), Intersect Healthcare, Inc. (thanks Brian and Bob), Celebree Learning Center (thanks Lisa), eCoast Sales Solutions, Ltd. (thanks Chris, Allen and Erik), TenantRex, LLC (thanks Adrian, Sammy and Zach), Art With a Heart, Inc. (thanks Randi), CCL Biomedical, Inc. (thanks Nina and Judy), Bloomery Plantation Distillery, LLC (thanks Linda), Baltimore Technology Group, LLC (thanks James), Barcoding, Inc. (thanks Jay), Mario Armstrong Media, LLC (thanks Mario and Nicole), Founders Financial Securities, LLC (thanks Brad, Kurt, Mike and the whole team there), Maryland Speed, LLC (thanks Branden), Business Stress Management Services, Inc. (thanks Adam), WePassed, LLC (thanks David), Enterprise Insurance Training, Inc. (thanks Tom), American Society for Colposcopy and Cervical Pathology (thanks Kerry), Blackbee Media, LLC (thanks Allison), CAM Technologies, Inc. (thanks Chris), Early Morning Software, Inc. (thanks Cecil and Donna), East-Coast Equipment, LLC (thanks Shad), Finding Definitions, LLC (thanks Mia), Figure 53, LLC (thanks Christopher), HackSurfer, LLC (thanks Jason and Rebekah), MsgWorx (thanks Rick and Sallie), Liaison Group, LLC (thanks Lou), Hertzbach & Company, P.A. (thanks Don), Workuments, LLC (thanks Joe), Randall Point Enterprises (thanks Anthony), OTB Consulting, LLC (thanks Bob and Tom), Mansbach Health Tools, LLC (thanks Bill), Icon Logic, Inc. (thanks Kevin), Sonex Research, Inc. (thanks George), Securities Pricing & Research, Inc. (thanks Brad), Reed Street Productions, LLC (thanks Ryan), South River Technologies, Inc. (thanks Mike and Tracy), Stanton Communications, Inc. (thanks Peter), Star Management Services, Inc. (thanks Eric), R. Boutique LLC (thanks Robert), Impresst Business Solutions, Inc. (thanks Steve), Nut House, LLC (thanks Joanna), Algiatry, LLC (thanks Paul), White Horse Consulting (thanks Dave), Spread Concepts (thanks Michal), Genesic Semiconductors (thanks Ranbir), RevMax Hospitality Management, LLC (thanks Sonny), Smartlegal Forms (thanks Richard), Seven Swells, LLC (thanks Tyler), Sobosoft, LLC (thanks Brian), SOEP Networking & Comm. Solutions, LLC (thanks Daryl), Sweet Satisfaction, LLC (thanks Kathy), The Prosperity Consulting Group, LLC (thanks Don), The Sandy Bottom Enterprise, LLC (thanks Sandy), Tonar, Inc (thanks Asgerdur), W. L. Gore & Associates, Inc. (thanks Laura).
It goes without saying, without clients, we would not have a firm. Thank you for bearing with us when we could not quite manage the turnaround times you might have been used to.
Next, we thank the lawyers, accountants and others that place their trust in us and continue to refer their clients to us for legal services in our practice area. When we can, we will return the favor of referrals.
Next, to some folks who helped us out at the beginning – Elliott Wagonheim – thanks Elliott for meeting with us and helping us on some of our own legal issues; Stephanie Cereijo at Towson Executive Offices – for renting us temporary space, and her staff for being absolutely fantastic to work with; Chris Murray, Gates Blair and Natalie Meconi at Mid Atlantic Properties, our new landlord – they have been utterly fantastic to deal with, soup to nuts; and Matt Mueller at Mackenzie Properties, who worked with us as a tenant rep and told us the staff at Midap were great to work with.
Next to our new clients who are taking a risk on a new firm – and that somehow found us even though we have done absolutely no marketing of any kind – we have just not had the time.
Finally, but not in the least, to our spouses, children, and extended families for putting up with us. We have been working essentially non stop the last 90 days (and even before that) and that puts a lot of stress on our loved ones.
As we get going and find the time, we hope to begin posting spotlights of some of our clients and referring parties.
We are incredibly lucky to have a viable business and as soon as we fully get our feet on the ground and find some free time (what small business owner has any of that!), we want to give some back as well – and help someone the way all of the above named and unnamed people have helped us or if we can, provide pro bono services.
And now to that teaser about a fun place to work – two of us are trekkies (mostly closet trekkies), so we got this little device – Star Trek Electronic Door Chime – so when you come into my office or Tina’s, if we have it on, you hear that turbolift sound.
More later. Best regards to all, Mike
by Mike Oliver | Jul 12, 2013 | Cybercrime, Uncategorized
This column starts my foray into working with Hacksurfer (a client here) in explaining the legal side of cybercrime. These articles are first published at the Hacksurfer site, which is a very good resource for this issue. This article was published there about 3 months ago; more current articles are located there. In the coming articles I am going to start from ground zero, introduce basic legal constructs and concepts, go through primarily federal criminal statutes, and then start working through major cases. If I am successful and you manage to stay awake through it, you will have a deep understanding of the major aspects of cybercrime law. I will throw in a little procedure as well, but criminal procedure is tedious, heavily constitutional, and frankly, more relevant to prosecutors and defense counsel than the average reader here. I will also be reviewing all of the computer security laws that impact regular businesses, and going over common pitfalls, errors and issues that businesses face trying to navigate through the mass of computer security laws, rules, regulations and orders.
Just a real quick background on me – I grew up in the early 70’s and worked on every computer I could get my hands on – and learned any programming language I could when I was young. Back then there were no remotely affordable hard drives – I learned on old IBM punch card decks, mainframes and low level consumer computers like the “Trash” 80, Commodore 64 and similar products. There was no internet as we know it today, no email, and really, no electronic communications like electronic mail, short message service or instant messaging that someone not inside of ARPANET could get their hands on. To me, “hacking” always meant “hacking code” that is, trying to make the code more efficient elegant, robust, and resilient. After a few movies popularizing unauthorized acces to computers, which labeled that activity “hacking” – the term has become more criminal sounding than programming sounding. In these articles I will usually use “cracking” to describe the efforts to gain unauthorized access to a computer, and “hacking” to refer to source code development – i.e. “code hacking.”
Also a brief word about citations. I will cite to both primary source materials (i.e. the actual code, case etc) and to secondary sources, such as Wkipedia. My articles are not intended to be scholarly, so I have not verified any source or statement. I merely provide the user with additional points of reference if they are interested. Note that I am also not treating the telephone system as a general purpose computer, and for the purposes of these articles, excluding unauthorized access to non digital telephone networks.
So, let’s start at the beginning. The first real digital computer, the ENIAC, was invented in 1945, and began operations in 1946. [Ref] That computer, and all digital computers after it, until a digital transmission network was reliably established (the first true digital communication packet was transmitted on October 29, 1969 via ARPANET) had one important common feature – they were accessible only from a standard input terminal and had physical limitations, that is, they were generally not accesible remotely.
While these computers could be accessed without authorization, early computers had extremely proprietary software interfaces, it was very hard to gain physical access to them, and they tended to be operated for military or other government activity and hence were very secure. The number of reported computer crimes against these early computers is very low, and tended to be committed by employees or other persons who had physical access to the computer – true computer crime was likely related to spying. See generally, Kabay, M.E., A Brief History of Computer Crime: An Introduction for Students, at p. 5 (2008).
So before there was “cyber crime” there was “computer crime” – and conceptually this is quite a distinct crime. Computer crime was more akin to breaking and entering, or vandalism, because it tended to be destruction of the computer itself. Cybercrime as we know it today involves unauthorized access to, or exceeding authorized access in respect of, a protected computer. The key to most current cybercrime statutes is this concept of a protected computer. A protected computer is defined as “a computer— (A) exclusively for the use of a financial institution or the United States Government, or, in the case of a computer not exclusively for such use, used by or for a financial institution or the United States Government and the conduct constituting the offense affects that use by or for the financial institution or the Government; or (B) which is used in or affecting interstate or foreign commerce or communication, including a computer located outside the United States that is used in a manner that affects interstate or foreign commerce or communication of the United States” See 18 USC Sec 1030(e)(2). (emphasis added).
The emphasized language is the first step into the green is blue world of law, and your first introduction to legal terms of art. A term of art in law is a word or phrase that has a common english meaning, but has a very technical specific meaning in the legal context. In this particular case, “used in or affecting interstate commerce” essentially means any computer connected to the internet.
More on how we get there in the next installment, where we will discover how the law impacts a person accessing a protected computer. (consider momentarily you and your spouse are separating, and you want to view your spouses emails for infidelity . . . how does this concept of “protected computer” impact what you can do without committing a felony?) We will see . . .
Best – mike oliver
by Mike Oliver | Jun 4, 2013 | Intellectual Property, Trademarks, Uncategorized
Trademark Symbols – The Difference Between the ™ and ® Symbols and When Is A Trademark Owner Permitted Use of The Symbols
A common question among trademark owners is what’s the difference between the ™ symbol and the ® symbol and when can I use them on my trademarks. It is also a common misconception that you have to obtain a federal trademark registration on your trademark before you can use the ™ symbol. That is not the case.
You may use the ™ symbol on a trademark even though the trademark is not registered (or even applied for). Thus, whether you have a trademark application pending at the United States Patent and Trademark Office, but it has not reached registration yet, or you have yet to file a trademark application, you may use the ™ symbol on your trademark. The ™ symbol is notice to others that you are using a word, phrase or logo as a trademark. It also potentially wards off third parties from using the same or similar mark. Thus, once you begin using a trademark on a good or service you are providing, you may use the ™ symbol on the mark (or the ℠ symbol if you prefer to distinguish a service mark although ™ may be used on trademarks used in connection with goods or services). Note – although this is a whole new topic for another article, you should make sure that another party is not already using the same or similar trademark in the same, similar or related area before you begin using the trademark.
As for the ® symbol, you may use that once the U.S. Patent and Trademark office issues a registration for your trademark. You should not to use the ® symbol on your trademark prior to obtaining a federal registration – such use is considered a misrepresentation to the public that you have a federally registered mark. Upon registration, you may (and should) use the ® symbol on the trademark.
This ® symbol provides notice to others that you have a federal registration. It is important to note that the failure to include the ® symbol can potentially result in a limitation in damages that you would have been entitled to in a trademark infringement action as your damages could potentially run later. Thus, it is beneficial to include the ® registration symbol once the U.S. Patent & Trademark Office issues the registration to you.
For additional information, please contact Kim Grimsley at kim@olivergrimsley.com.
