Obama Signs AIA Into Law – New Patent Fees Set

As many of you now know, President Obama signed the AIA into law on September 16th. While many of the provisions of the new Patent Act will be staggered, the USPTO will be changing its fee structure as of September 26th (just a few days away).

The new listing is at http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm.

A few other points that are being currently addressed and discussed about the new act include:

  • Tax strategy inventions. Provides that any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.
  • False marking. Would eliminate false marking suits except for ones filed by the US government or filed by a competitor who can prove competitive injury.
  • Filing by other than inventor. Would enable an entity to file an application on behalf of an inventor who assigned, or is under an obligation to assign, the invention rights to the entity, without seeking the inventor’s execution of the application.
  • Oath and declaration. Would make it easier for a corporation to file a substitute inventor’s oath when the inventor cannot be reached or is non-cooperative.
  • Best mode. Although an inventor will still be required to “set forth” the best mode for accomplishing the invention, the bill would exclude failure to disclose a best mode from being used as a basis for invalidating an issued patent

Leahy-Smith America Invents Act Passes United States Senate – Up for Signature before President Obama

As many of you may have learned during tonight’s Joint Session of Congress to address the proposed American Jobs Act, the Leahy-Smith America Invents Act (H.R. 1249) has passed the Senate as expected. The Act is slated to become a law as soon as President Obama signs it.

The act was passed earlier in the Senate and another version in the House earlier but the differences in the versions passed sent the act back to the Senate and it passed after the Senate came back from the anual recess in August.

Commentators differ in opinion of whether or not this represents a dramatic change in the Patent Law, or is simply rhetoric. Case in point, legislators suggested that this act would create 200,000 new jobs.

Well known blog PatentlyO perhaps said it best:

“To be patentable, an invention must still be new, useful, and fit within one of the statutory classifications. The primary difference on that front will be that the inventor’s pre-filing activity becomes even less important and third-party activity just prior to the filing date becomes more important. Innovative companies will need to rethink filing strategies to fit the new rules, but this will not normally be CEO level strategic rethinking – but instead general counsel and chief patent counsel planning. The law of patentability will be more complicated and unstable for the next decade as we go through the transition, but the dust will settle and the patent system will remain.”

State Trademark Examination Procedures Task Force Takes Shape

The committee’s task force on state examination procedures continues to take shape, and is now set to begin the job of revamping the guidelines as to how the Florida Department of State Division of Corporations reviews and examines trademark applications based upon the Florida State Trademark Act, Fla. Chapter 495.

The most recent form of the state trademark act became effective on January 1, 2007, and was based upon the Model State Trademark Bill (MSTB) of the International Trademark Association (INTA) and made several changes that conformed Florida’s law to the current federal trademark statute, the U.S. Trademark Act of 1946, as amended, 15 U.S.C. § 1051 et seq.

The short term goal of the task force, which is being chaired by Darren Spielman, is to begin identifying specific areas of concern and/or problems with application of Chapter 495.  One identified issue of concern is the current inability to amend a registered state trademark.   These short term goals will also include providing an initial proposed edit of the current examination procedures, which are approximately 30 years old.

The current task force, which now includes new members who volunteered at the recent Business Law Section Retreat, include Heather Schwarz, Keith Lipscomb, Jeannie L. Seewald, Michael Chesal, and Dineen Wasylik.

Next IP Committee Meeting Announced – December 1st, Tampa Westshore Hilton

Coming off a successful and well attended meeting as part of the Business Law Section Retreat in Naples, the Intellectual Property Committee is happy to announce that its next meeting will be held on December 1, 2011 (Thursday) at the Tampa West Shore Hilton proximate the Tampa International Airport. The meeting time and room will be announced later.

The meeting will focus on increasing our pro bono efforts, increasing diversity within our committee, and reaching out to new potential members in our practice area.  The meeting will also serve as a break out session for our task force on state trademark examination procedures.

Summary of IP Committee Meeting Session at Naples Section Retreat

The IP Committee is happy to announce it had a well attended and active two hour meeting today, Saturday September 3rd at the Ritz Carlton in Naples, Florida. Here is a summary (rundown) of the proceedings for those who where not able to attend:

1. CLE Presentation: Mike Tschupp of Espinosa Trueba in Miami – the author/moderator of the well know and acclaimed “green” blog sustainablemarks.com – provided a comprehensive discussion of green initiatives in the US Patent & Trademark Office. The presentation also addressed false advertising issues facing green initiatives. This CLE provided 1.0 hour of credit that can be used for IP Certification. Please note that the committee is actively looking at other relevant topics for CLE presentation in the upcoming Tampa fly-in in December (as well as for lunch programs).

2. Update on the Third Annual Symposium: The committee has been actively preparing for the third-annual IP symposium to be held on March 1 & 2 at the DoubleTree Hilton in downtown Orlando. Keynote speakers will be announced soon. Please calendar this event – as it is going to be another great event. Special thanks to Ury Fischer, Leora Herrmann, Mike Colitz, and Woody Pollack – and the subcommittee members for working hard this summer to make this a well planned and great event !

3. Substantial Involvement Bar Raised for IP Certification: Mike Chesal and Steph Nagin provided cogent yet diverging points of view as to raising the substantial involvement standard from 30% to 50% for the three year period prior to the initial application to seek IP certification. After which there was a vetting of the membership. After closing the commentary period, a vote of 20-1 approved the measure. We thank everyone who helped discuss and address this important matter. IP Certification remains a top priority of our committee – and we appreciate the work of the Certification Committee.

4. Membership: This remains a top priority of not only our committee, but the Business Section as a whole. We have a wonderful group of core and longstanding supporters and volunteers, and we thank them for their service. However, the committee is an open committee and we want new and young practitioners in the intellectual property field to become more active. Bob Persches of Boca Raton is championing this issue for our committee and is working hard to reach out to the future leaders of our practice group. Please reach out to him if you are interesting in increasing your role with the committee.

5. State Trademark Examination Procedures: Darren Spielman from Kain & Associates in Fort Lauderdale is leading this task force which currently includes Heather Schwarz, Keith Lipcomb and Mike Chesel. The group is seeking to revamp our state examination procedure guidelines for prosecution of state trademarks. The group will also be looking at potential amendments to the current state trademark act. Please contact Darren if you would like to participate as this is an open task force and effort.

6. Diversity: Our section prides itself on diversity and openness and the committee represents one of the most diverse facets of the section. That doesn’t mean we can’t do more. Openness is a key goal of our committee so that all voices can be heard.

7. Pro Bono: With the challenges in our economy and the increased costs of intellectual property protection, pro bono represents a key and viable goal of our committee. Each one of us can do more – and pro bono provides invaluable experience to help us advance our practice area. For those of us at law firms, pro bono can be a tool to help train our younger practitioners. In addition, it allows us to help our local community. Think about helping out any local nonprofits or religious organizations with help in trademark and/or copyright protection. Consider helping out a local start up with help on their privacy policy or terms of use. Pro bono is one of the most rewarding parts of our practice – so make it a priority in the coming year.

8. Case Law Overview: The committee very much thanks Carly Hammond from Peretz Chesel & Hermann in Miami for her concise and very informative case law overview regarding works for hire issues under the 1909 Copyright Act.

9. Summary: Our committee stands at a cross roads. We have accomplished a lot over the past several years, attained the goal of seeking certification, and increasing our membership. We also now have a viable yearly symposium to allow members to hear from national leaders in our field. Now is the time not to rest on our laurels, but instead look at how we can improve and grow. Our practice group remains one of the most viable and changing components of the law. We look forward to continued success with an understanding that this cannot happen without the support and efforts of our members.