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White House Nominates Andrei Iancu as New Head of U.S. Patent and Trademark Office

August 28th, 2017 | Comments Off on White House Nominates Andrei Iancu as New Head of U.S. Patent and Trademark Office | IP Watercooler Blog

On Friday, August 25, The Trump administration nominated Andrei Iancu to serve as the next head of the U.S. Patent and Trademark Office.  The position had formerly been held by the former head of Google’s patent program, Michelle Lee, who resigned from the position in June.

Iancu, who is currently the managing partner of a large law firm, has a long history in helping patent owners enforce their patents.  For example, Iancu helped secure separate settlements of $490 million and $500 million enforcing TiVo’s patents against various telecommunications companies including Cisco Systems, Inc., Motorola Mobility, Inc., and EchoStar Communications Inc.

Iancu has also been successful in defending clients in patent infringement cases, including a high-profile case, Ariosa v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015).  In that case, the District Court granted summary judgement that the patent at issue, which covered a prenatal DNA test, was invalid for claiming naturally-occurring phenomena.  The Court of Appeals for the Federal Circuit upheld the decision.

We have been impressed with several recent U.S. Patent and Trademark Office Directors – especially David Kappos and Michelle Lee.  During their tenures, the Patent Office cleared much of its backlog, and put procedures in place for expediting the handling of patent applications.  Under these new “Track I” procedures, we have had a number of patent applications allowed very quickly, including three recent patent applications that were allowed in less than three months.

With his history of helping patent owners enforce their patents, and his background in leading a large, successful law firm, we’re hopeful that, if confirmed by the Senate, Mr. Iancu will continue the Patent Office’s current, forward momentum.

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SCOTT E. BRIENT

Scott, who is the managing attorney of Brient Globerman LLC, has helped clients obtain patent protection for their unique computer systems and mechanical technologies since 1999.

EMAIL: sbrient@brientip.com // TWITTER: @scottbrient; @brientgloberman

Strategies for Seeking Expedited Handling of Patent Applications

August 17th, 2017 | Comments Off on Strategies for Seeking Expedited Handling of Patent Applications | IP Watercooler Blog, Patents

Many of our clients – especially early stage startup companies – have a need to protect their new technology very quickly. Fortunately, the U.S. Patent Office and many other patent offices have implemented relatively new, very effective mechanisms for the speedy examination of patent applications. In the U.S., for example, for an additional patent office fee of about $2,000, small entities can arrange to start negotiations with the patent office within about three months from the filing date of a new patent application. This fee is about $4,000 for larger corporate entities, and about $1,000 for patent applicants who qualify as “micro-entities” under U.S. Patent Office rules.

The benefits associated with pursuing expedited review under the U.S. Patent Office’s “Track 1” program extend beyond just receiving expedited handling of patent applications – we have generally seen a noticeably higher early-allowance rate for these patent applications. This may be due to the fact that the applications tend to be routed to more senior patent examiners who are more experienced at working with patent applicants to quickly finalize negotiations. In many cases, we have had these expedited patent applications allowed in less than 6 months, and recently had two applications allowed in about 2 months.

Once the U.S. Patent Office allows particular patent claims, it is possible to pursue expedited patent protection in any of a large number of foreign countries under the Patent Prosecution Highway program. Under this program, participating patent offices, such as the European, Australian, Chinese, Canadian, Japanese, Korean and Russian patent offices have agreed to expedite handling of patent applications that have been allowed by other participating patent offices. Although the speed of this process can vary significantly from country to country, some countries, such as Australia, offer extremely fast processing of patent applications under this program. In some recent cases, we have had Australian patent applications allowed in less than a month after filing a request for expedited handling under the Patent Prosecution Highway.

So if you need to obtain patent protection quickly, we would strongly recommend considering pursuing expedited patent protection under the U.S. Patent Office’s Track I program and the Patent Prosecution Highway program. In many circumstances, this can result in the allowance of U.S. and foreign patents within less than a year.

Recommended Procedures for Setting Up a Corporate Patent Program

March 3rd, 2017 | Comments Off on Recommended Procedures for Setting Up a Corporate Patent Program | IP Watercooler Blog

Below are some recommended procedures to help corporate entities identify and protect new, potentially patentable inventions.

1. Make sure that your employees are under an obligation to assign, to your company, their rights in any inventions that they develop in the course of their work. Otherwise, it may be difficult for your company to obtain ownership rights in those inventions.

2. Institute a policy under which your employees are encouraged to submit new ideas as candidates for potential patent protection. In this regard, we have found that it works well to put financial incentives in place to reward inventors for the extra work involved in working with outside counsel to prepare patent applications. For example, many of our clients pay their employees a small bonus (e.g., $1,000) when their patent application is filed, and another bonus (e.g., $2,000) if the application issues as a patent. Other clients let their employees know that their patent activities will be taken into account in year-end reviews. Another good approach is to hang plaques of the company’s issued patents where they can be seen by everyone. This can be helpful in encouraging and supporting future innovation.

3. Make patent disclosure forms available for employees to use in preparing disclosures of their ideas. This can help streamline the patent disclosure process.

4. Appoint a “patent committee” of about four to five people to review new ideas (as documented in the patent disclosure forms) on a regular basis – typically monthly or quarterly. It’s a good idea to have the patent committee include a diverse set of people. For example, the committee might include at least one representative from your management, engineering, sales, and legal teams. It can be important to keep salespeople in the loop on patents, since they often are the most likely to prematurely disclose new inventions outside the company.

5. Set a flexible target number of patent applications that you would like to file each year, and use that number to help determine which of the ideas to protect. (For example, you might decide to protect one invention per quarter.) Another approach would be to define criteria that an idea must meet in order to merit patent protection, and apply those criteria when deciding whether to protect a particular idea.

6. After your patent committee nominates a candidate idea for patent protection, have a patent attorney conduct a brief patentability study to see whether the idea has been done before by others (in which case, we would recommend not pursuing patent protection for the concept).

7. If the idea still looks promising in light of the results of patentability study, have a patent attorney prepare and file a patent application for the concept.

Checklist For Addressing IP Issues In Mergers and Acquisitions

March 3rd, 2017 | Comments Off on Checklist For Addressing IP Issues In Mergers and Acquisitions | IP Watercooler Blog

Scott E. Brient – Brient Intellectual Property Law, LLC

1.  Assess the patent-related practices of the target company.

a.  Does the target company have a concrete set of procedures in place for identifying and protecting new innovations, including business methods and systems inventions?

b.  Does the target have an IP ownership provision in place that assures that all company-related IP will be owned by the company (e.g., that requires employees to assign all patent rights related to the target’s business to the target)?

2.  Assess the value/quality of the target company’s IP Portfolio:

Patents

  1. Do the target’s patents cover the key aspects of its current and planned future business?  Make sure to consider business methods, unique financial products, and any unique computer or call center technology developed by the target.
  2. Are the patents drafted broadly enough to prevent simple design-arounds?
  3. Were any statements made during the prosecution of the patents that would lead to an unnecessarily narrow interpretation of the patents?  For example, did the patent attorney who filed the patent application make any written statements to the patent office indicating that a particular term within the patent’s claims should be interpreted more narrowly than it normally would be (e.g., that the term “vehicle” within the patent should be understood as referring to package delivery vehicles, and not other types of vehicles).
  4. Can the target’s patents be used to generate licensing revenue (e.g., through licenses to those in non-competing fields)?

Trademarks

  1. Does the target have federal trademark registrations in place to protect its key trademarks?
  2. Does the target have procedures in place to police its trademarks, and to prevent the trademarks from becoming “generic”?  For example, does the target company have procedures in place for making sure that others do not use its trademarks (e.g., the unique names of its key financial products) in a way that would make it unclear as to which company offers the trademarked products or services.  As an example, the Coca Cola company is known for strictly monitoring any use of the trademark “Coca Cola” in conjunction with beverages and other products.

Trade Secrets

  1. Does the target have proper confidentiality procedures in place to protect its trade secrets?  For example, does the target company: (1) have non-disclosure agreements in place with its employees that prohibit the employees from disclosing the company’s confidential information; (2) limit the disclosure of the company’s confidential information to those who need to know the information; and (3) have a process in place for entering into confidentiality agreements with those parties outside the company before disclosing confidential information to those parties?  In making this determination, it is particularly important to determine whether the company’s sales force complies with proper confidentiality procedures before disclosing any confidential information to potential customers.

Copyrights

  1. Assess the value of target’s copyrighted material (e.g., the target’s copyrighted software, written materials, and artistic works).

3.  Verify that the company owns all of the intellectual property referenced above.

  1. Verify that assignments have been received from all inventors on patents and patent applications and that these have been recorded with the patent office.
  2. Review all patent office recordations and UCC filings in the name of the company to identify any potential clouds on title.
  3. Verify that the target owns any other key intellectual property.
  4. In the course of steps a-c, above, review the target’s employment agreements, license agreements, partnership agreements, and contracting agreements.
  5. If any issues are raised in steps a-c, above, develop a plan to correct them, if possible. This typically involves having the ownership of the intellectual property rights at issue transferred to the target company (e.g., by having an employee inventor sign a standard “assignment” document transferring ownership of the employee’s rights in a patented invention to the target company.)

4.  Determine whether the target is likely to infringe any existing patents in its normal course of business.

  1. Review any “cease and desist” letters or any “invitations to license” received by the target.
  2. Review any patent-related opinion letters rendered by the target’s patent counsel on the target’s behalf.
  3. Conduct a freedom to operate search to assess the landscape of patents in the target’s field of business.  This would typically involve having a patent attorney conduct a search of patent databases (e.g., the U.S. Patent Office’s patent databases) to identify any patents that may potentially cover the target company’s current or planned business activities.  This will help assess the risk of the target company being sued for patent infringement in the future, which can have a significant impact on the value of the company.
  4. Can any problem patents be addressed via a design-around, license, or cross-license?  This process would typically involve working with a patent attorney to assess the scope of coverage of a particular patent and determining whether the target’s business practices can be modified to place the target’s practices outside the scope of the patents.  If not, it may be desirable to contact the patent owner and discuss a potential license under which the target would be allowed to practice the patented technology in exchange for royalty payments, or in exchange for permission to use the technology covered by the target company’s patents (which is referred to as a cross-license).

5.  Determine whether the target is likely to violate any non-patent intellectual property rights of others.

This would involve, for example, taking steps to determine whether the target company is misusing the trademarks of others, has misappropriated the trade secrets of competitors, or has violated the copyrights of others (e.g., by using unlicensed copies of copyrighted software).

6.  Assess whether the target uses any open source software and, if so, whether the target is in compliance with the terms associated with the open source software.

Open source software is software that is typically made available for use at no cost under the condition that the user comply with the terms of an open source license.  Typical open source licenses require the user to preserve the original names of the authors of the software and the original copyright statement within any modifications of the software.  These licenses also may require users to make any modified versions of the software available to others under the copyright terms that apply to the original open source software.

7.  Obtain appropriate representations and warranties regarding the various aspects of the target’s intellectual property portfolio discussed above.

8.  If any issues identified in the steps above cannot be properly addressed, consider adjusting the price of the target to compensate for the unresolved issue, or set up offsets and escrows that serve to secure the representations and warranties.  If the price cannot be adjusted to properly compensate for the unresolved issue, consider not moving forward with the deal.