Filed under: Patents
When business managers, engineers, or non-patent attorneys are called upon to guide a corporate patent strategy, they often face a steep learning curve. The differences that separate a great patent from a mediocre (or worse) one can be very subtle, but the financial implications can be huge.
The new book Great Patents: Advanced Strategies for Innovative Growth Companies by David B. Orange tackles this problem head on. 
With sections focusing on “Strategies” and “Valuation,” Great Patents uses clear and concise explanations to introduce the reader to important patent terminology, explain why patent claims are so important, and help companies decide how to most efficiently dedicate resources to obtaining new patents.
The book includes several chapters that address industry-specific topics, such as
- academic authorship vs. patent protection;
- patent strategies for health technology companies;
- participation in standards setting organizations; and
- intellectual property ownership in government-funded projects.
The authors sent me a complimentary copy, and I am happy to recommend it to new companies and existing businesses alike. The book is a useful tool for business managers who need to understand the patent process and oversee a patent strategy that fits into the company’s overall business strategy.
Filed under: Patents
On November 23, 2011, the U.S. Patent and Trademark Office published a proposed rule with new requirements and incentives for the prompt recording of patent assignments. Under current laws and regulations, owners who fail to record patent assignments within three months of filing risk losing their rights to a subsequent purchaser. (35 U.S.C. 261). In addition, only the owner of record (or, in some situations, its exclusive licensee) can file suit to enforce the patent. However, there is no absolute requirement that assignments be recorded.
The USPTO’s new rule is intended to address deficiencies in this system. According to the new rule: (more…)
Filed under: Patents
In January 2012, the USPTO is scheduled to publish a report on the new “prior user rights” provision of the America Invents Act (AIA). The AIA revised Section 273 of the Patent Act to create a defense to infringement for any person who commercially used the invention in the United States in connection with:
- an internal commercial use,
- an actual arm’s length sale, or
- another arm’s length commercial transfer of a useful end result of the commercial use.
Filed under: Business Law
As businesses try to attract viewers to their websites, social media pages and online ad campaigns, online contests have become more prevalent. The opportunity to win a prize can provide consumers with an incentive to visit an advertising page, view a video, reply to a survey or take other action. Businesses who offer contests must be aware of the applicable state laws that regulate sweepstakes, contests and lotteries. In the online world, which knows no state boundaries, this means that businesses may need to consider many different state laws — register with state authorities as needed — because the online world knows no state boundaries.
However, the various state laws do exhibit some common themes. In general, a sweepstakes or contest includes the elements of a prize, and randomness or chance. If the contest also requires consideration, then it may be considered an illegal lottery in many states. Consideration is not limited to payment, but can also include a requirement that the user perform certain tasks (such as a purchase a product, or even visit a website multiple times).
In order to comply with the laws of various states and avoid registration requirements, advertisers who implement online contests should keep multiple rules in mind: (more…)
Filed under: Business Law
A new California law imposes a variety of supply-chain disclosure obligations on large retailers and manufacturers who do business in California. As summarized in a recent article by my partner Jane Luxton:
[P]oised to go into effect January 1, 2012, [the new law] will impose disclosure obligations on all retailers and manufacturers that do business in California and have global gross receipts of $100 million per year. The California Transparency in Supply Chains Act of 2010 will require businesses to disclose on their Web sites their efforts to eliminate the use of slave labor and human trafficking from their supply chains.
To view Jane’s full article and a detailed summary of the new law, click here.
Filed under: Licensing
Each year Intellectual Asset Management (IAM) magazine publishes the IAM Licensing 250: The World’s Leading Patent and Technology Licensing Practitioners. This week IAM announced the release of the 2011 edition of the IAM Licensing 250. According to IAM:
The second edition of a unique guide that names top patent and technology licensing practitioners in 25 key jurisdictions has been released today. IAM Licensing 250: The World’s Leading Patent and Technology Licensing Practitioners is the only research-based publication that names both lawyers and patent attorneys working in this increasingly important area of legal practice.
In order to find the individuals and firms named today, Intellectual Asset Management (IAM) magazine undertook an extensive four-month research process. A team of experienced researchers spoke with hundreds of licensing professionals in face-to-face and telephone interviews, as well as via email exchanges. They provided in-depth information on their individual practices, recent work and other firms and individuals that stood out for their expertise in patent and technology licensing in the jurisdictions covered in this publication. The final selection process was based on the comments received.
The IAM Licensing 250 is available on the IAM website via this link. My law firm (Pepper Hamilton) and I are proud to be profiled in the 2011 edition (available to registered IAM users here.)
Filed under: Patents
On September 23, 2011, the USPTO published a final rule that will allow applicants to speed up the patent examination process in exchange for a substantial fee. Similar to a program that the USPTO launched in April 2011 but then withdrew due to funding cuts, the new rule implements the prioritized examination requirements of the America Invents Act.
In most cases, the new prioritized examination program will result in either allowance or final rejection within 12 months of filing. The price for this expedited review will be $4,800 ($2,400 for small entities), plus the typical filing, search and examination fees that must accompany an application.
Only new, original applications filed after September 23, 2011 will be eligible for the fast-track program. Continuing applications are also eligible so long as the applicant pays the fee for each continuing application. The application may not contain more than 4 independent claims or more than 30 total claims. The request for prioritized examination, all fees, and all inventor declarations must be filed at the time that the application is filed.
As more businesses store and share data via third-party “cloud computing services”, privacy risks and Federal Trade Commission enforcement actions have also increased. Many companies’ standard vendor services contracts are woefully inadequate to address these risks. When contracting for cloud computing services, the contract should specifically describe data handling practices, security breach notification procedures, and data return requirements when the contract ends.
My colleagues Sharon Klein and Tabitha Sullivan recently wrote an article that includes tips and traps to consider when negotiating or drafting a cloud computing services contract. As they note in the article:
The scope of the cloud computing services will impact the respective responsibilities of the vendor and the customer. This contractual clarity is especially important given that most cloud computing vendors believe security of data is the customer’s responsibility, not theirs. . . . The [customer's] contracting department should work closely with the IT department to identify the company’s specific requirements and incorporate appropriate provisions to ensure the company’s needs are met.
To view the full article on the Pepper Hamilton website, click here.
Filed under: Electronic Communication
The Federal Trade Commission (FTC) has proposed an updated set of online privacy rules to address the use of new technologies — including mobile technologies – by children under the age of 13. The original rules, issued in 2000 to implement requirements of the Children’s Online Privacy Protection Act (COPPA), require operators of commercial websites and online services directed to children under age 13 to:
- post a privacy policy describing how the site handles children’s personal information;
- provide direct notice to parents and obtain verifiable parental consent before collecting children’s personal information;
- give parents the option to allow the operator to collect and use a child’s information, but not disclose it to third parties;
- give parents access to their child’s personal information for review and/or deletion;
- give parents the opportunity to prevent further use of the information; and
- maintain the confidentiality, security, and integrity of information collected from children.
Changes proposed in the new rule include:
- an expanded definition of “personal information” that includes substantially all information that can be used for online profiling or directed behavioral advertising – including geo-location information, instant messaging user IDs, voice over IP (VOIP) identifiers, video chat user IDs, and tracking cookies;
- a requirement that key information be presented to parents in a succinct “just-in-time” notice, and not just in a privacy policy;
- new methods to obtain verifiable parental consent, including electronic scans of signed parental consent forms, video-conferencing, and use of government-issued identification checked against a database, provided that the parent’s identification is deleted promptly after verification is done;
- a requirement that website operators ensure that service providers or others to whom they disclose a child’s personal information implement reasonable procedures to protect it, retain the information for only as long as is reasonably necessary, and properly delete the information; and
- a requirement that self-regulatory “safe harbor programs” audit their members at least annually and report the results of those audits to the FTC.
The FTC will accept comments on the proposed rules through November 28, 2011.
Filed under: Patents
On Friday, September 16, 2011, President Obama signed the America Invents Act into law. As described in a previous IP Spotlight post, the new law creates several immediate and important changes to U.S. patent law. However, some of the most important changes will not take effect until late 2012 or early 2013. The following is a summary of changes that patent applicants should prepare for over the next 12-to-18 months:
Changes that will take effect September 16, 2012:
- Post Grant Review: The USPTO will implement a post-grant review (PGR) process in which (more…)
