Wyoming Entrepreneur Blog

The American Invent Act, First to File, and Provisional Applications

This blog continues the discussion from last week about patents.

The America Invents Act, First to File, and Provisional Applications

Karen Kitchens, Intellectual Property/Documents Librarian, Wyoming State Library, [email protected]

President George Washington signed the first U. S. patent statute in 1790.  Since that time, United States patent law has uthorized the granting of rights to the first to invent a patentable
invention, contingent upon meeting rigorous terms and conditions.  This means that the date the inventor envisioned the invention is the “date of invention” – thus the date of ownership.  Generally, this date preceded the date of filing with the United States Patent and Trademark Office (USPTO).  Soon, this will no longer be the case.

As of March 16, 2013, one of the most debated provisions of the America Invents Act (AIA) will take
effect.  As of this date, the “first-to-invent” system will change to the “first-inventor-to-file” system.  This provision changes the legal ownership of a patent onto the entity that is the first to file with the USPTO, thus bringing the U.S. system closer in line with most of the rest of the world.  The new version of § 102 (35 U.S.C. § 102) declares that a person is entitled to a patent unless the claimed invention was publicly disclosed prior to the effective filing date of the patent application. The exception to this being, (1) the disclosure was made less than one year before the filing of the patent
application (by the inventor themselves) and (2) the disclosure was made by the inventor or someone who derived the inventive subject matter from the inventor. 

Once this provision takes effect, filing patent applications as quickly as possible may
be in the best interest of the inventor.  In order to stay competitive, inventors of all sizes (including small business owners) will need to file patent applications quickly in order to stay ahead of competitors.  Filing a provisional patent application may be one way to quickly get a patent
application on file at the USPTO.  A provisional application allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a later filed non-provisional patent application.  A provisional application also allows the term “Patent Pending” to be applied in connection with the description of the invention.  Provisional applications have a pendency lasting 12 months from the date the provisional application is filed.  The 12 month pendency period cannot be extended.  This means, once a provisional is filed, you will have 12 months to file a non-provisional.  A provisional patent application may or may not be the path for you.  Provisional patent applications do not mature into a granted patent without further submission.  All provisional applications automatically become abandoned when the pendency period expires by operation of law.  Thus, all potential patent applicants are encouraged to gather as much information as possible on this option.  The USPTO website is the foremost information source on provisional patent applications. 

For further updates on AIA, check out the USPTO AIA Blog. 

A Blog version of this article and an opportunity to post comments is available at http://www.wyomingentrepreneur.typepad.com/blog/.

 For more information about the services of Wyoming SBDC, MRC or PTAC, or to ask a question, please call 1-800-348-5194, e-mail [email protected] or write 1000 East University Avenue, Department 3922, Laramie, WY 82071-3922. Additional help is available on our website www.wyomingentrepreneur.biz.

 

The Wyoming SBDC, MRC and PTAC partnership
program is funded in part through a cooperative agreement with the U.S. Small
Business Administration. Additional support is provided by the Wyoming Business Council and the University of Wyoming.

America Invents Act and Fast Track Patent Examination

WYOMING BUSINESS TIPS

A weekly look at business questions from the Wyoming Small Business Development Center (SBDC), Wyoming Market Research Center (MRC) and the Wyoming Procurement Technical Assistance Center
(PTAC), a partnership of business assistance programs at the University of Wyoming.

Can you tell me more about the changes happening with patent applications?  Anne, Cheyenne.

I checked with Karen Kitchens, an intellectual property librarian to give us an update.  This week and next she is providing us some input into changes in the patent process.

Anya Petersen-Frey, MBA

Regional Director SE Wyoming

 The America Invents Act and Fast Track Patent Examination

Karen Kitchens, Intellectual Property/Documents Librarian, Wyoming State Library, [email protected]

 Fast tracking your U.S. patent application may be the right move for your small business.  Using traditional filing avenues, you can anticipate an average wait time of nearly three years until your patent’s final determination.  Such a long wait period may negatively affect the valuation of your business, as you do not have any incontrovertible rights while a patent application is pending.   Remember, the rights granted to patent holders include the rights to exclude others from making, using and selling your invention. These rights do not take effect until after the United States Patent and Trademark Office (USPTO) completes its examination of the patent application.

As of September 26, 2011, the USPTO began offering a Track I Prioritized Examination Program, as part of the America Invents Act (AIA).  This program gives inventors an opportunity to have their patent application reviewed within a reduced timeframe, for a fee.  To participate in the Track I
program, the applicant must pay an additional fee to the USPTO on the same day the patent application is electronically filed.  For patent applications that have already been filed, the Track I fee must be paid upon or after the filing of a request for continued examination, but before the USPTO issues a first office action. For companies with less than 500 employees (considered a small entity), the Track I fee is $2,400.  This is a 50 percent discount on the $4800 fee for the fast track option. 

The AIA also created a new applicant status called micro-entity.  To qualify as a micro entity, an applicant must:

• 
  Qualifyas a small entity;
• 
  Have not been named as an inventor on more than 4 previously filed patent applications;
• 
  Did not, in the calendar year preceding the calendar year in which the applicable
  fee is paid, have a gross income exceeding 3 times the median household income;
  and
• 
  Have not assigned, granted, or conveyed (and is not under obligation to do so) a
  license or other ownership interest in the application concerned to an entity
  that, in the calendar year preceding the calendar year in which the applicable
  fee is paid, had a gross income exceeding 3 times the median household income.

A micro-entity is entitled to receive a 75% discount on fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.  The micro entity 75% discount will apply to fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.  Micro entity fees were included in the FY2013 fee schedule proposed in May 2012, the first fee setting by the USPTO under the authority granted by the AIA.  However, these fees might not actually be implemented until as late as March 2013.   A 17-month implementation timeline is located on the USPTO website here. 

Patent ownership is a critical factor that some venture capital companies consider when investing in entrepreneurs and small businesses who hope to grow their businesses. Therefore, prioritized patent examination may be a good investment for your small business.  

A Blog version of this article and an opportunity to post comments is available at http://www.wyomingentrepreneur.typepad.com/blog/.

 For more information about the services of Wyoming SBDC, MRC or PTAC, or to ask a question, please call 1-800-348-5194, e-mail [email protected] or write 1000 East University Avenue,
Department 3922, Laramie, WY 82071-3922. Additional help is available on our
website www.wyomingentrepreneur.biz.

 The Wyoming SBDC, MRC and PTAC partnership program is funded in part through a cooperative agreement with the U.S. Small Business Administration. Additional support is provided by the Wyoming Business Council and the University of Wyoming.

New Patent Classification System

Are you an inventor? Have you ever wanted to file a patent?

Changes concerning the classification system are coming. Beginning January 1, 2013 a new classification system will be in place. The United States Patent and Tradmark Office (USPTO) and the European Patent Office have been collaborating since 2010 to put together a classification system to incorporate the best practices of both systems. This joint collaboration resulted in the formation of the Cooperative Patent Classification or CPC for short. Patent searches will be easier and more efficient using a global classification system. 

I wanted to simply explain the changes you will be confronted with if you want to file a patent. I read the newsrelease from the USPTO and frankly with all of the acronyms (an alphabet soup) it just isn't an easy read. But if you want read it yourself, follow this link: http://www.cooperativepatentclassification.org/index.html. 

The USPTO is hosting a CPC External User Day December 14 to educate and inform external stakeholders about the current development and future implementation plans of the CPC. To register and read more about this webinar click this link:  http://www.uspto.gov/patents/init_events/cpc_external_user_day.jsp.

Your local USPTO contact is Karen Kitchens, Intellectual Property/Documents Librarian, Wyoming State Library, [email protected]. If you have questions or suggestions, please contact  Karen Kitchens by telephone at 307-777-7281, or by email to [email protected].  Or the national Patent and Trademark Resource Center Office by telephone at 800-435-7735 option 2, or by email to [email protected].

 

 

 

When Should A Business Use Copyrights?

Can you provide information regarding copywrites? Is it necessary for me to protect documents I produce internally for my consulting/coaching business? If so, what do I need to do?

By Karen Kitchens, Intellectual Property/Documents Librarian, Wyoming State Library, [email protected], guest submitter.

Businesses generally possess a wealth of copyrightable information. Copyright is a form of intellectual property (IP) protection that protects original works of authorship that are fixed in a tangible form of expression, including literary, dramatic, musical, and artistic works such as poetry, novels, movies, songs, architecture. Literary works, meaning those expressed in letters and numbers, possessing a minimum of creativity, are eligible for copyright protection. This protection is available to both published and unpublished works. Examples of copyrightable works your business may possess include advertising and marketing materials, Power Point® presentations, and other audiovisual works.  Copyright is granted by the U.S. Copyright Office. Since March 1, 1989, works are not required to display a copyright notice – the symbol © (the letter C in a circle), or the word “Copyright,” or the abbreviation “Copr”.

Copyright is protected under title 17, United States Code. It is illegal for anyone to violate any of the rights provided by this law to copyright owners. Protection under The Copyright Act of 1976 is secure until seventy years after the death of the author. Just as patent protection extends to any useful, nonobvious, novel application of an idea, copyright protection is centered on the original expression of an idea. The basic concept of copyright is originality. 

It is not necessary to formally register your creation by officially filing with the U.S. Copyright Office. Nonetheless, you are free to display the symbol © with your work as soon as it is made. It is important to recognize that even though copyright status is automatically granted; legal action can only be taken by you against an infringement if your work is registered.

Whether or not your work is currently registered, you may wish to use the © symbol. This leaves no doubt that your IP belongs to you. Registration with the U.S. Copyright Office is only valid within the United States. There is no international copyright.  Protection against unauthorized use in a particular country depends on the national laws of that country.
In general, copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright. If made before or within three months after publication of the work or prior to an infringement of the work, statutory damages and attorneys’ fees will be available to the copyright owner in court actions. Registration also allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringing copies.

To register a work, contact:
Library of Congress
Copyright Office
101 Independence Avenue SE
Washington, DC 20559-6000
1-877-476-0778 (toll free)

When Is A Patent Needed?

I’m more than a bit confused about why and when a patent is needed. Also, are all patents the same? Can you help clarify the process for me or perhaps direct me to patent training for inventors? Carrie, Laramie

By Karen Kitchens, Intellectual Property/Documents Librarian, Wyoming State Library, [email protected], guest submitter.

Among the various forms of intellectual property (IP), patents can be the most important for small businesses, which are often the leading agents in new and developing technology.  Because of this, small businesses provide an active and unique investment opportunity for investors.  As a small business owner, your intangible IP assets may far exceed your tangible assets in value to both you and potential investors.  Thus, patents can play an important role in the economic health of your small business.   

A patent is a grant from the federal government conferring the right to exclude others from making, selling, or using an invention for the term of patent protection.  Unlike trademarks and trade secrets, patents are governed exclusively by federal law.  There are three types of patents: those for useful objects (utility patents), those for ornamental design (design patents), and those for asexually reproduced plants (plant patents).  Whereas trademarks and trade secrets can last forever if properly maintained, and copyrights have a long term of duration (generally the author’s life plus seventy years), patent protection lasts only twenty years from the application date for utility and plant patents, and fourteen years from grant date for design patents.
 
Basic requirements for patentability are new (not previously known by others or previously available in the public domain), useful (must have practical utility to accomplish a useful purpose), and non-obviousness (the invention must be considered not obvious to one of ordinary skill in the art). 

In September 2011, the President signed into law the Leahy-Smith America Invents Act. This Act is an extensive overhaul of current patent laws.  One of the most discussed changes was the move from first-to-invent to first-inventor-to-file.  Before, patents went to the person who invented first, which had to be demonstrated using “prior art” — documentation like inventor notebooks, academic papers, etc.  Anyone wanting to challenge a patent did so by using “prior art” — generally public documents published before the patent was granted.  Private evidence like dated sketches, notebooks and models could then be used to contest the challenge. Beginning on March 16, 2013, patents will be issued according to which inventor files first, aligning our system with most other countries.

The USPTO will be hosting eight roadshows during September 2012 (September 17, 2012 at the Denver Public Library) to share information about new final rules implementing provisions of the America Invents Act that become effective on September 16, 2012.  As a small business owner, you may wish to attend this discussion for further information on the final rules that relate to provisions for inventor’s oath/declaration, pre-issuance submissions, citation of patent owner statements, supplemental examination, inter partes review, post grant review, and covered business method review.

Keeping Trade Secrets From Competitors

By Karen Kitchens, Intellectual Property/Documents Librarian, Wyoming State Library, [email protected], guest submitter.

How can I protect information about my business from becoming known to my competitors, which could potentially give them a commercial advantage?

As a small business owner, you likely have a wealth of information which is valuable to your business that, if known to your competitors, would give them an advantage over you in the business market. This Intellectual Property (IP) is known as trade secrets. Virtually any type of information may be designated for IP protection. The United States Patent and Trademark Office (USPTO) definition of trade secrets: “Information…can include a formula, pattern, compilation, program, device, method, technique or process. To meet the most common definition of a trade secret, it must be used in business, and give an opportunity to obtain an economic advantage over competitors who do not know or use it.”^[i] In other words, the information derives its economic value from not being known to the public or others and is the subject of reasonable efforts to maintain its secrecy. Both information which is valuable, and information which possesses the potential to be valuable, can be protected. Customer lists, product sales information, financial forecasts or the methods by which you conduct your business are examples.

Trade secrets are protected by both Wyoming law (Wyoming §40-24-101 through 110) and federal law (18 U.S.C. Sec. 1831-1839). Trade secrets are subject to legal protection as forms of valuable property – but only if you, the business owner, have made reasonable efforts to safeguard information secrecy. The criteria of reasonable effort vary with each case. In general, the following factors are considered when resolving whether information qualifies for trade secret protection:

• The extent to which the information is known outside the business.
• The extent to which the information is known within the company.
• The extent of measures taken to protect the secrecy of the information.
• The value of the information to the company and its competitors.
• The effort expended in developing the information.
• The ease with which other companies could develop the information.

Because the key factor in determining whether information constitutes a trade secret is the secrecy of the information, it is critical your business develop a program to protect valuable information. There are two ways you can do this: physical measures and written agreements.

Physical Measures

• Restricting access to confidential materials.
• Providing secure passwords for company computer systems.
• Destroying or shredding sensitive written documents or samples on company premises.
• Permanently erasing or purging materials from company computers of departed employees or computers which are to be discarded or sold.
• Providing locked cabinets for proprietary materials.

Written Agreements

For the best protection, employees should sign simple agreements confirming that the company’s information is confidential. Three key components of such agreements:

• A nondisclosure section requiring employees to hold the company’s proprietary information in confidence.
• A section confirming work created by employees is owned by the company.
• Restrictive covenants, which prohibit an employee who leaves the company from soliciting other employees or competing against the company for a limited period of time in some geographical area.

Because trade secrets are likely an essential element of your business, it is important you check with your legal counsel to be sure of the specific legal requirements.

 

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[i]  “USPTO Office of the Administrator for Policy and External Affairs: Patent Trade Secrets,” last modified October 4, 2010, http://www.uspto.gov/ip/global/patents/ir_pat_tradesecret.jsp .