Core of the Matter: O&G Maneuvers through USPTO Securing Patent
We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 9,193,081 entitled, “Child-Safe, Hand, Fruit Corer and Slicer,” that proceeded through the patent office barring only one rejection. The invention relates to hand, fruit corer and slicer.
Generally, the length of time to navigate the patent system is 2-3 years for a regularly filed application. In addition, the USPTO generally rejects 85%-90% of all filed patent applications at least once. In this case, Oliver & Grimsley, LLC was able to successfully clear the patent prosecution phase of the application in about two years.
Congratulations to Peter Wright on this recently issued patent!
We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 9,220,307 entitled, “Dual-Use Clingable Handcovering for Protecting the Hand of Wearer from the Atmospheric Conditions in the Surrounding Environment”. The invention relates to a handcovering typically worn by an individual who is running for exercise in non-ideal atmospheric conditions, in order to keep warm and make time outdoors more comfortable. Although various styles of gloves and mittens exist on the market, this handcovering is unique in that it encloses all fingers and the entire thumb together in a capped enclosure to assist the individual with maintaining body heat, while allowing the individual to remove the capped portion when use of the individual’s fingers are needed.
Congratulations to Susan Clayton on her recently issued patent!
Trimming the Excess: O&G Succeeds in Obtaining Baking Form Patent in USPTO
We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 9,220,277 entitled, “Form Insert for Use with a Springform Pan to Make a Uniform Thickness Crust” that proceeded through the patent office in one year and six months, as a prioritized application.
The invention is designed to allow a baker to utilize a baking form in combination with a springform pan to cut and trim excess crust in order to achieve a consistent and substantially uniform thickness crust for a baked good. Use of the baking form is particularly suited for a baker in making a single or multiple baked goods on a repeated basis. The uniform crust thickness provides for consistent baking throughout the baked good and also provides for aesthetic visual appeal.
Congratulations to Michelle Allen for her recently issued patent!
We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 8,827,115 entitled, “Container for Storing, Measuring and Dispensing a Liquid” that proceeded seamlessly through the patent office in 3 months, 26 days. The invention relates to an improved device for storing, measuring and then dispensing, using only gravitational forces, a user-selected specific volume of liquid.
Generally, the length of time it takes to navigate the patent system is 2-3 years for a regularly filed application. For an additional filing fee, a prioritized application may be filed to expedite the examination process to about one year, which is how our client elected to proceed.
In addition, the USPTO generally rejects 85%-90% of all filed patent applications at least once. In this case, however, Oliver & Grimsley, LLC was able to successfully clear the patent prosecution phase without any rejections, which allowed the application to issue in record time — 3 months, 26 days, much earlier than the one year anticipated time frame.
Congratulations to Victor Katz for his recently issued patent!
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 byIntellectual 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 firstname.lastname@example.org
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.
A patent applicant who seeks the benefit of marking an article as “Patent Pending” must make a good faith effort to ensure that the articles are properly and consistently marked. An effective way to do this is to mark the article as “Patent Pending”. Use of this notice alerts the public that your article may soon be patent protected and that once a patent is issued, you have the right to initiate a patent infringement lawsuit against someone who is potentially infringing on that patent and wherein you seek monetary damages or other remedies for the copying, etc. of your patented article.
An applicant may only mark an article with “Patent Pending” once a patent application is filed with the Patent Office. It is also pertinent to note that it is a criminal offense to mark or offer to sell an article as “Patent Pending,” when an application for the invention has not yet been filed.
In deciding how and where to mark articles as “Patent Pending”, a patent applicant should be mindful of the purpose of giving public notice and also use common sense. For example, patent markings may be formed directly on the “Patent Pending” article by etching, molding, or printing, or if you are unable to place the marking on the article itself due to “the character of the article”, the notice may be provided on any packaging of the article, including the box and enclosed packaging papers, or marketing and promotional materials. In addition, there may be particular challenges that a patent applicant or patentee endures to properly mark an article. For example, often times, labels may fall off of the articles in transit, etc. The courts generally follow the “rule of reason” approach to hold that constructive notice is achieved when the patent applicant or patentee consistently marks substantially all of the articles.
Once a patent has been issued for the invention and you are a patentee rather than a patent applicant, the marking on the article should be changed from “Patent Pending” and instead be marked with the patent number and marked in the following manner: e.g., “U.S. Pat. No. X,XXX,XXX”, where your patent number is inserted therein. Examples of the proper use of this patent number marking can be found on the products and packaging of many reputable manufacturers.
More recently, the America Invents Act (AIA) allows patented articles to be marked “virtually” by using the internet. In order to comply with virtual marking requirements, the owner must mark the article itself, or the article packaging if it is not possible to mark the article, with the word “patent” or “pat.” along with a freely-accessible, internet address where one can find the patent numbers applicable to the patented article. Virtual marking provides certain advantages including aesthetic appeal as well as being able to easily update and identify later issued patents relating to the article without having to remark the articles individually. Instead, only a revision to the website page is needed. Examples of virtual marking via internet webpages may be found here: Examples of Virtual Marking
Please note that we recommend consulting with a patent attorney before moving forward with any marking or notice provisions.
Copyright 2013 Oliver & Grimsley, LLC
Disclaimer: The information provided in this article is not legal advice. It cannot be such since legal advice must be tailored to the specific circumstances of each case, including the consideration of federal law and jurisdictional law that can vary greatly from state to state. However, it is hoped that the information provided above will be helpful in familiarizing its readers with issues that may affect them.