On September 8, 2011, the U.S. Senate passed and sent on to the White House the patent reform bill referred to as the “America Invents Act.”  It passed the House this past March.  President Obama is expected to sign it into law.

A stated purpose of the bill was to bring U.S. patent law into harmony with the patent laws of those countries that grant patents to the entity that is first to file rather than the first to invent.  The U.S. Patent and Trademark Office (USPTO) says that issuing patents to the first person or company to file for the patent will bring clarity to the process by preventing inventors from coming out of the woodwork to challenge pending patents.  Practically speaking, a switch to first-to-file will favor companies which treat the acquisition of patents as a core part of the inventive process.

The new law makes many other changes especially in the area of government fees to be charged.  The USPTO is now authorized to set its own fees.  The law allows it to increase its fees by 15% ten days after the law takes effect.  Allowing the USPTO to increase its own funding may alleviate some of the backlog of patent examination.

The new law also does away with lawsuits based upon a patent owner’s failure to remove expired patent numbers from the patent markings on its products, so-called “false marking.”  Also, private parties will no longer be able to share in penalties for other acts of false marking.

There are many other substantive changes in the patent law embodied in the bill including, for example:

• Assignees will now be allowed to file patent applications.
• Post-grant USPTO proceedings, especially ex parte reexamination, have been amended, and inter-partes reexaminations have been abolished.  The patentee may also request “post-grant review” to consider all grounds for invalidity.
• Failure of an applicant to disclose the “best mode” for practicing the invention will no longer be grounds for invalidating the patent.

The various changes do not come into play all at once.  Some do not become effective for sixty days after the President signs, and others not for a year.

Tom Nikolai                 (612) 392-7307           Tom.Nikolai@nm-iplaw.com

National Flooring Equipment is a family-run business known for its innovative designs related to tools used for flooring installation, care and removal.  For more than 24 years, Nikolai & Mersereau has helped National protect its intellectual property.

In 2001, Marty Anderson came to us seeking to protect a novel walk-behind floor stripping machine with a hydraulic drive.  We filed a patent application covering the design in June of 2001 and U.S. Patent 6,609,762 was granted in August of 2003 covering Mr. Anderson’s invention.

Almost immediately upon their introduction, products incorporating Mr. Anderson’s invention became a huge commercial success.  Despite the success of the products, competitors stayed away based on the strength of the patent, that is, until early last year when a competitor, EDCO, introduced two infringing products under the Trademark SPTS-12 Tile Shark.  Recognizing the threat this infringement created and despite the economic downturn affecting the building trades, National asked us to take action to abate the infringement.

On behalf of National, we filed suit on April 24, 2009.  That suit was concluded last week.  EDCO acknowledged the validity of the patent’s claims as originally granted.  As a result of the settlement reached, the competitor will no longer be offering the SPTS-12 Tile Shark products which the parties agreed infringe.

The United States Patent and Trademark Office (USPTO) has been closed since Monday, February 8, 2010 through Wednesday, February 10, 2010 due to inclement weather.  The USPTO has issued a statement notifying inventors and businesses each that Monday, February 8, 2010 through Wednesday, February 10, 2010 is a “Federal holiday within the District of Columbia”.  Any action or fee due on any of Monday, February 8, 2010 through Wednesday, February 10, 2010 (or the preceding Saturday (February 6, 2010) or Sunday (February 7, 2010)) will be considered as timely if the action is taken, or the fee paid, on the next succeeding business day on which the USPTO is open; thus, Thursday February 11, 2010.

USPTO rules state correspondence deposited in the Express Mail Service of the United States Postal Service (USPS) will be considered filed on the date of deposit with the USPS.  Thus, any paper or fee properly deposited in the Express Mail Service of the USPS on Monday, February 8, 2010 through Wednesday, February 10, 2010 will be considered filed on its respective date of deposit.

Further, USPTO rules state patent and trademark-related correspondence transmitted electronically to the USPTO will be considered filed in the USPTO on the date the USPTO received the electronic transmission.  Thus, any patent and/or trademark-related correspondence transmitted electronically to the USPTO on February 8, 2010, February 9, 2010, or February 10, 2010, will be considered filed in the USPTO on the date the USPTO received the complete electronic transmission.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

The United States Patent and Trademark Office has commenced a pilot program for accelerated examination of patent applications related to green technologies.  This pilot program became effective on December 8, 2009, and will run for twelve months or until 3,000 applications are submitted for petitions to make special.  The USPTO then will have the option to renew the program or cancel it. It is the goal of the USPTO for application pendency for any valid petition to make special under this pilot program to be reduced by at least a year.  The USPTO has stated that the average current pendency for such patents is approximately thirty months to receive a first office action and approximately forty months to receive a final decision.  The overarching purpose of this program is to “accelerate the development and deployment of green technology, create green jobs, and promote U.S. competitiveness in this vital sector.”

Petitions to make special, under this program, may only be submitted for previously filed patent applications which have not received a first office action as of the date of the filing of a petition.  A petition to make special must be filed no later than December 8, 2010, one year after the commencement of this program.  Petitions to make special must be electronically filed and must state that special status is sought because the invention materially enhances the quality of the environment by contributing to the restoration or maintenance of the basic life-sustaining natural elements.

For a patent application to qualify for the green technology petition to make special, it “must be a non-reissue, non-provisional utility application … or an international application that has entered the national stage.”  A patent application must have been filed before December 8, 2009 if the applicant wishes to participate in this program.  Such patent applications cannot contain more than three independent claims and twenty total claims.  The applications cannot contain any multiple dependent claims.  The claims in an application must be drawn to only one invention.

The invention in such a patent application must materially contribute to: (1) the discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) the reduction of greenhouse gas emissions.  Renewable energy resources include the following: hydroelectric, solar, wind, renewable biomass, landfill gas, ocean, geothermal and municipal solid waste.  The second category above relates to inventions for the reduction of energy consumption in combustion systems, industrial equipment and household appliances.  The third category relates to advances in nuclear power generation technology or fossil fuel power generation, or industrial processes with greenhouse gas abatement technology.

For more information please see:

U.S. Commerce Department’s Patent and Trademark Office to Accelerate Review of Green Technology Patents to Speed Deployment to Marketplace at http://www.uspto.gov/news/pr/2009/09_33.jsp

Pilot Program for Green Technologies Including Greenhouse Gas Reduction, 74 Fed. Reg. 64666 at http://www.uspto.gov/patents/law/notices/74fr64666.pdf

Laurie Young                (612) 392-7309           Laurie.Young@nm-iplaw.com

The holiday season is upon us, therefore, it only is appropriate for your friendly intellectual property law attorneys to remind you that while everyone may be taking things more slowly than normal and putting what they feel is not important “on the back burner,” you may not want to relax if you are dealing with certain areas of intellectual property law, namely patent law.  In U.S. patent law, there are strict statutory time limits regarding how long an inventor can disclose, sell or offer for sale an invention before he or she loses rights to patent the invention.

According to 35 U.S.C. §102(b): “A person shall be entitled to a patent unless … the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.”  This means that an inventor will not be entitled to a patent if the invention was patented more than a year before the inventor filed a patent.  The inventor will not be entitled to a patent if the invention was described in a printed publication (magazine, journal, book, internet website, brochure, published patent application, etc.) whether the printed publication was in the U.S. or another country more than a year before the date of filing for a patent. The inventor will also not be allowed to obtain a patent if the invention was used in public in the United States (whether at a trade show, by members of the inventor’s family or other uses) more than a year before the inventor filed for a patent.  Finally, the inventor will not be allowed to obtain a patent on the invention if the inventor sold or offered the invention for sale in the United States more than a year before the application for a patent was filed. 

For example, if you invented a new type of outdoor decorative lights and offered your lights to Target^® for sale on December 4, 2008, you would have until December 4, 2009 to file an application for a patent for your invention.  If you attempt to file an application for a patent after December 4, 2009, you will not be allowed to get a valid patent for that invention.  It does not matter whether or not you actually sold the lights to Target^®, the offer for sale is enough.  However, if you were to go on vacation in Canada and offer your invention for sale, or sell your invention to a business in Canada on December 4, 2008, you would not be limited by §102(b) because you did not offer your goods for sale in the United States. 

During this holiday season, if you have invented something, give yourself the greatest gift: protection of your invention.  Consider the statutory time limits and do not let something as important as your invention “sit on the back burner” while you relax in front of a warm fire with your family and friends.

Laurie Young                (612) 392-7309           Laurie.Young@nm-iplaw.com