Regulation Crowdfunding Arrives May 16, 2016

Regulation Crowdfunding, an investment regime enacted as part of the 2013 JOBS Act, received approval from the Securities and Exchange Commission and is scheduled to be available May 16, 2016.  Start-up ventures can use Regulation Crowdfunding as an alternative to the costly and time consuming process of making a public offering.  Although investments must be made through broker-dealers or authorized funding portals, investors will be able to contribute up to $2000 (investors having a net worth under $100K), or up to $100,000 (investors having a net worth over $100K), annually, depending on annual income.  Companies offering investments will be required to make detailed disclosures and provide financial statements, but the Regulation Crowdfunding process will circumvent the current registration and public offering SEC requirements.

U.S. to Join Hague Agreement on Industrial Designs

The Department of Commerce announced that the U.S. filed for ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.  When membership is finalized on May 13, 2015, design patent applicants in the U.S. will be able to file a single international design application with the USPTO to obtain protection in numerous countries.  Currently, the Hague system allows design applicants to register up to 100 designs in over 62 territories with a single application.  The Hague system is expected to grow significantly as more countries join the treaty.  South Korea was the last country to join, and Japan is expected to become a member concurrently with the U.S.

Invalidating Patent Research Offered on Contingency

When patent holders sue or threaten infringement, invalidating the patent-in-suit is as effective as proving an accused product avoids reading on the claims.  Successfully overcoming the presumption of validity avoids the time and expense of drawn out patent litigation.

Absent rare instances of applicant misconduct, defendants need relevant undisclosed prior art to succeed in reexamination.  Depending on the depth of an examiner’s search in prosecution, undisclosed prior art references may be difficult to obtain.  Typically, accused infringers’ only recourse is requesting one or more professional invalidity searches at great expense in the hopes that relevant prior art can be found.

Researchwire Knowledge Solutions (researchwire.in), an Indian intellectual property consulting firm, recently began offering invalidating prior art searches on a contingency fee basis.  Under this novel approach, the company charges only a per reference fee for references found useful in a validity contention/re-exam request.  Their searches include both foreign and domestic patent databases, and non-patent literature such as product manuals, technical disclosures and research papers.

 The incentive for identifying relevant prior art due to the contingent fee structure, may help ensure the quality of an invalidity search supporting a reexamination request.

Lower USPTO Fees Starting January 1, 2014

The USPTO’s revised fee schedule, which reduces certain costs in obtaining a U.S. patent, goes into effect on January 1, 2014.  The changes include a reduced utility issue fee for small and micro entities, from $890 and $445 to $480 and $240, respectively, as well as reductions for reissue, design issue, and plant issue fees.  Please see revised fee schedule for additional fee changes.

Innovation Act of 2013

Eleven members of the House of Representatives recently introduced the “Innovation Act” (H.R. 3309), a proposed bill that could have a “substantial impact on patent enforcement, procurement, and ownership.”  Some of the major proposed changes include: 1) a heightened pleading requirement for filing patent infringement claims; 2) limitations on discovery; 3) requiring the PTO to use standard claim construction in post-grant proceedings, etc.  See Article.

 

 

Possible Solutions To Patent Office’s New Examination Policy For Design Patents

The Patent Office held its annual Design Day in April 2013 and announced a change in the examination policy of design patents that could have significant impact on practitioner practices and limit thousands of pending applications.

Design patent practitioners routinely amend design drawings from solid lines to dashed lines in order to only claim a part of the design, rather than the overall design.  The USPTO has long permitted this practice and the amendment is “explicitly exempted from being treated as impermissible new matter in MPEP § 1504.04.”

The USPTO’s new policy, however, will no longer permit applicants to amend solid lines to dashed lines, whether it be as part of an initial filing application or as a continuing application, describing the issue as one where the design was “disclosed, but not described.”  Amendments may be permitted on a case-by-case basis, and the applicant must make “appropriate arguments” in order to overcome the rejection.

One possible solution may be to use language in the initially filed specification or additional views that point out what other embodiments are foreseen.  Specific language pointing out features to be disclaimed in alternative embodiments may provide practitioners with “case-by-case arguments.”  See Article.

Patent Fee Changes Taking Effect March 19th

Pursuant to the America Invents Act (AIA), adjustments to a variety of Patent Office fees take effect Tuesday, March 19, 2013.  In general, filing and maintenance costs are rising, while prioritization and post-grant review fees will be reduced.

Fee Increases:

Due to an increased examination fee, the total fees (filing, search and examination) for filing non-provisional patent applications will rise from $630 to $800 for small entities ($1,260 to $1,600 for large entities).

Likewise, maintenance fees for small entities will go up substantially, from $575 to $800 at 3.5 years, $1,450 to $1,800 at 7.5 years, and $2,405 to $3,700 at 11.5 years.  Maintenance fees for large entities are increasing from $1,150 to $1,600, $2,900 to $3,600, and $4,810 to $7,400 as well, respectively.

While small and large entity filing fees are rising, applicants should be aware, under the new AIA rules, of the ability to file as a micro entity, defined as a small entity, not named on more than four previously filed patent applications, with a gross income not more than three times the national median household income.  Micro entity applications, previously unavailable, are an effective way for qualified inventors and small companies to avoid the current filing fee increases.

Fee Reductions:

While filing and maintenance fees are rising, the Patent Office reduced fees for prioritization and reviewing issued patents.  Requests for prioritizing prosecution will be lowered from $2,400 to $2,000 for small entities ($4,800 to $4,000 for large entities).

For issued patents, filing fees for Ex Parte reexaminations will be lowered from $17,750 to $12,000, and total fees for Inter Partes review from $27,200 to $23,000.  Notably, the addition of a small entity fee for Ex Parte reexaminations should make them much more available to the general public and small businesses.  In particular, small entities may file for Ex Parte reexamination with a small entity fee of $6,000, effectively lowering the current fee by $11,750.

First-Inventor-to-File Implemented

As of March 16, 2013 the new first-to-file rule under the America Invents Act will be implemented by the Patent Office.  This change – from the previous first-to-invent rule – grants patent rights to the first person who files a patent application on an invention before the USPTO, rather than the first inventor.

To preserve first-to-invent rights applicants should consider filing patent applications prior to the March 16 deadline.  If completing and filing a regular patent application is not feasible, as an alternative, applicants may file provisionally prior to the deadline to establish a priority date prior to the change.

Since any claim in a subsequently filed patent application not supported by the earlier-filed provisional will not be entitled to the existing first-to-invent law, applicants should take care to submit as comprehensive a disclosure as possible in pre-March 16 applications.

PTO Suggests Changes to Streamline Examination

The USPTO is requesting email comments on proposed ideas for streamlining the patent process, specifically whether the following practices should be used by applicants when to place applications in a better condition for examination:

To clarify the scope of the claims:

1. Presenting claims in a standardized template with each claim component in separate fields. For instance, preamble, transitional phrase, and each particular limitation.

2. Identifying corresponding support in the specification for each claim limitations utilizing, for example, a claim chart.

3. Indicating whether examples in the specification are intended to be limiting or merely illustrative.

4. Identifying whether the claim preamble is intended to be a limitation on claim scope.

5. Expressly identifying clauses invoking 35 U.S.C. 122(f) (means plus function) and pointing out where relevant structures, materials, or acts are disclosed in the specification

6. Using textual and graphical notation systems known in the art, such as C-like pseudo-code or XML-like schemas for textual notation and Unified Modeling Language (UML) for graphical notation.

To clarify the meaning of claim terms in the specification:

1. Indicating whether terms of degree—substantially, approximately, about, essentially, etc.—have a lay or technical meaning and explaining the scope of such terms.

2. Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to technologies such as software

3. At the time of filing the application designating a default dictionary (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of claim terms.

Email responses to these suggestions should be submitted by March 15, 2013, and may be submitted to qualityapplications_comments@uspto.gov.

USPTO Warns of Unofficial Solicitations

The USPTO recently warned that private companies not associated with the Trademark Office are using trademark application and registration information from publicly available USPTO databases to mail or e-mail trademark related solicitations.

The companies usually offer legal services, trademark monitoring services, recordation of marks with U.S. Customs and Border Protection, and “registration” on a private registry.

While legal, the services often deceptively resemble the USPTO name, or expressions such as “United States” or “U.S.”   USPTO customers may be induced to pay fees to companies offering the services, believing they are affiliated with the Trademark Office.

The USPTO encourages recipients of misleading communications to contact the USPTO about them by emailing TMFeedback@uspto.gov.  When notifying the Office about a misleading communication, include a copy of the communication (including envelope), indicate whether the recipient thought the communication was an official U.S. government communication, and indicate whether fees were mistakenly paid.