LoTempio Law Blog

Blawg Review #274

Vincent LoTempio — Mon, 26 Jul 2010 03:39:18 -0500

Welcome everyone to Blawg Review #274! Blawg Review is still the place to find out where the best law blogs are posted, and because today is the 20th anniversary of the Americans Disabilities Act of 1990 (ADA) I am going to share some informative and interesting stuff about the ADA. But I will also try to point your browser at a few excellently written posts by Blawgers.

Although the legal community may be thinking of other things on July 26, 2010 I thought I would let you know that this particular piece of legislation signed into law on July 26, 1990, by President George H. W. Bush advanced the rights of a large segment of the citizens of the United States of America. The ADA was enacted by the U.S. Congress in 1990 to "establish a clear and comprehensive prohibition of discrimination on the basis of disability."

Even though George H.W. Bush signed the act into law, it is Justin Dart, Jr., who is thought of as the “father” of the ADA. Stephanie Woodward, Transportation Systems Advocate commemorates this in a nice Center for Disability Rights blog post A Short History of Justin Dart, Jr., “Father” of the ADA.

The protection of the rights of individual United States citizens has come a long way since John F. Kennedy was president, I believe that he was our moral compass and set this country in the right direction.

We are confronted primarily with a moral issue, it is old as the scriptures and is clear as the American Constitution. The heart of the question is whether all Americans are to be afforded equal rights and equal opportunities? Whether we are going to treat our fellow Americans as we want to be treated?

"The ADA is kind of like our own civil rights act," said Rick McWilliams, program manager for the Westmoreland County Disabilities Task Force to Cody Francis of the Pittsburgh Tribune. "We liken it to the Civil Rights Act of 1964. We like to not only make people with disabilities aware but also increase public awareness that people with disabilities are like everyone else."

I don't think anybody really wants to be like everyone else. Today kids get tattoos so as to separate themselves from the crowd. But being separated from the crowd because of something negative is not what anybody strives for. I like the idea of taking pride in who you are, knowing that no matter the level of your ability you can help make society a better place.

Jonathan R. Mook writes a comprehensive history how the act came about as well as how it evolved through the courts in the past 20 years in the Workers Compensation Law Blog:

This month, therefore, is a time for celebration of what has been termed the “declaration of independence” of individuals with disabilities. For far too long, individuals with disabilities had remained largely hidden due to discriminatory attitudes and misconceptions which prevented them from working, taking mass transit, going to theaters, museums, and restaurants, and other places where the public gathers.

There were many events to commemorate the ADA that occurred in the past week and are planned for today.

Seriousinjurylaw Blog reminded us that The Christopher and Dana Reeve Foundation called on people to help it smash the Guinness World Record for the most wheelchairs in a moving line.

Disability pride parades were held this weekend in Chicago and San Jose. I think the idea of not hiding in the closet because you have any disability but to revel in who you are is wonderful. The theme in San Jose was "Say it loud, We're disabled, and we're proud."

A guest post for the Fehribach Group Blog Juli Paini, the director for the City of Indianapolis Office of Disability Affairs, says that "The ADA helped raise my comfort level talking about my disability, as well as the comfort level of the people around me.

The Americans with Disabilities Act (ADA) prohibits discrimination on the basis of physical or mental disability. The ultimate goal of the ADA is to break down the stigma associated with people with disabilities and to "to promote equal opportunities for persons living with disabilities" in all major life activities such as:

Employment: Employers may not discriminate against an individual with a disability in hiring or promotion if the person is otherwise qualified for the position. Employers must provide “reasonable accommodation,” such as job restructuring and modification of equipment when necessary.
Public Entities: State and local governments must remove communication and physical barriers that restrict people with disabilities from using their services and activities.
Public Accommodations (and Commercial Facilities): Auxiliary aids and services must be provided to individuals with hearing or vision impairments.
Telecommunications: Telephone companies must provide telecommunications relay services for hearing-impaired and speech-impaired individuals 24 hours per day.

The Deaf News Today Blog has a nice breakdown of what The Americans with Disabilities Act covers and does not cover in Getting to Know.. ADA.

In a guest post at Disability Blog, Harvard Law school graduate, Carrie Griffin Basas, Esq. stated that

“When I asked Harvard if it tracked disability as a diversity category among alumni, and how I might reach others with disabilities, I didn’t receive a lot of support, let alone understanding. Why would we track disability? Isn’t that a bad thing, one we don’t talk about?”

Generally speaking, “Disability” under the ADA means a person with a physical or mental impairment that substantially limits one or more major life activities. While it is important that the act defines the term "disability" in the end it is just a matter of semantics.

FWD/Forward Blog FWD (feminists with disabilities) for a way forward has an ongoing FWD/Forward series called "Ableist Word Profile "in which they explore ableism and the way it manifests in language usage. Are you an Ableist?

What's in a name anyway? The term "retardation," once viewed as clinical and neutral, is now considered so demeaning that it required "Historic" legislation signed by Gov. David Paterson to remove the term "mental retardation" from the title of the New York’s agency “Office of Mental Retardation and Developmental Disabilities” and from anywhere in the state statutes and regulations. Now it is the Office for People With Developmental Disabilities.

You may be wondering by now why a patent and trademark attorney was asked to host Blawg Review. I lost my hand and part of my right arm in an accident in 1972. But I continued to participate in many sports. People that know me don't consider me disabled. But believe me there is a stigma with name calling as children and it carries over as discrimination in the job market and other areas of life when we become adults.

Although Rick McWilliams says he wants to be like everyone else, I think what he really means is he wants to be treated like everybody else. Click on the picture below and take a look at the video of me demonstrating how to catch and throw a ball with one arm with my daughter and let me know if you think I'm disabled or if you have an opening for me on your softball team.

Are you disabled? Think of a number in your mind. How many times do you need to fall before you give up? What about Aaron Fotheringham? There is no number of times for this guy, he doesn’t know how to give up. Watch the number of times he falls in the beginning of this video and then go and get your in-line skates or bike and try to do what he does in the wheel chair. Not too many takers? I thought so.

What about just getting community-based services to help you bathe, dress and eat?

Michele Haddad, a 49-year old mother, was in a motorcycle accident with a drunk driver which caused a spinal cord injury that left her paralyzed. Michele needed community-based services for the bare necessities of life. The state of Florida would only provide her the services if she would first enter a nursing home for 60 days even though it would have been less expensive just to provide the services. Haddad’s lawsuit argued that by failing to provide community-based services to Medicaid-eligible individuals with spinal cord injuries who are at risk of institutionalization, the State of Florida violated the ADA because it would deprive her of her right to live in her community.

The ADA requires that individuals with disabilities be provided services in the most integrated setting appropriate, as determined by the Supreme Court in the landmark decision Olmstead v. L.C.

What do you do if you are refused access to a RV park because of your disability?

Charles Glover was undergoing treatment for late-stage non-Hodgkin’s lymphoma. He and his wife, Sylvia, were in the process of adopting their two-year-old foster-child, C.G., who was born with HIV. The Glovers reserved an RV campsite at Wales West RV Resort for the month of July. After one day in the park they were asked to leave because of their medical conditions even though no one else was put at risk.

The Justice Department’s Civil Rights Division filed a lawsuit against Wales West LLC, alleging that it violated Title III of the ADA when it unlawfully denied full and equal services. In January 2010, the Department and Wales West reached a settlement under which Wales West agreed to pay $36,000 in damages to the Glover family and $10,000 to the United States as a civil penalty. Wales West also agreed to adopt nondiscrimination policies at its RV resort and will annually train all staff on these policies.

While the Justice Department has had its share of success stories and Walter Olson's blog post at Cato@Liberty lists a few large monetary recoveries, he points out that it shouldn't be immune from criticism. Like any other well-intentioned act, there is no such thing as perfect.

Accessibility in the Digital Age

What we take for granted in the digital age is an obstacle for many with disabilities. With the high cost of print text books, colleges and universities nationwide are eliminating traditional print text and replacing it with electronic course materials. But in order for some individuals with disabilities to take full advantage of new technologies, those technologies must be accessible.

On June 30, Assistant Attorney General for Civil Rights Thomas E. Perez and Assistant Secretary of Education for Civil Rights Russlyn Ali jointly issued a letter to colleges and universities expressing concern over their use of electronic book readers that are not accessible, and soliciting the assistance of university leadership in ensuring that emerging technologies used in education are fully accessible to individuals with disabilities in the future.

This resulted in a series of settlement agreements that the Department of Justice entered with colleges and universities using the Kindle DX in the classroom as part of a pilot study with Amazon.com Inc.

The Justice Department is fully committed to ensuring that all individuals, including those with disabilities, have equal access to new technologies in the digital age. Samuel R. Bagenstos, Principal Deputy Assistant Attorney General for Civil Rights testified before the House Judiciary Subcommittee on the Constitution, Civil Rights and Civil Liberties where he stated

“…access to the Internet and emerging technologies is not simply a technical matter, but a fundamental issue of civil rights. As more and more of our social infrastructure is made available on the Internet - in some cases, exclusively online - access to information and electronic technologies is increasingly becoming the gateway civil rights issue for individuals with disabilities.

What about pro-golfer Casey Martin, who was unable to compete at a high level of golf without the aid of a golf cart (which was prohibited by the rules of the Pro Golfing Association for tournaments). "Without the ADA I never would have been able to pursue my dream of playing golf professionally."

What about a simple thing like just going on a date? Here are some Quick Tips To Enjoy Disabled Dating Fun from The ZH Laywyer blog.

What about something as simple as walking up the stairs? AT Program News (ATPN) blog created to serve the common mission of the State Assistive Technology Act Programs bloged about how there "Ain’t No Mountain High Enough."

"Twenty years ago this past spring, a group of ADAPT activists demonstrated the need for the passage of the Americans with Disabilities Act (ADA) by abandoning their wheelchairs at the foot of the United States Capitol and crawling up the steps that, at the time, afforded the only means of access to the legislative branch of the U.S. government.

This action, which is now an iconic part of U.S. civil rights history, was just one of a series of protests the group organized that week in D.C. As with previous civil rights movements, protesters were arrested for acts of civil disobedience; unlike scenes typical to earlier movements, however, the authorities had trouble carrying out their law enforcement obligations. At the time, few court houses, jail cells, or even elevators were accessible to law-breakers with disabilities.

See Tom Olin's photo of ADAPT members climbing the Capitol steps at DisabilityMuseum.org

One of the things you should note when you go to AT Program News (ATPN) blog is that there's a gadget to click labeled "listen now. "

I guess I should apologize to all the disabled readers that need this in order to participate in Blawg Review and read my blog. I will look into having this technology added to my blog.

In case you're wondering the construction of the U.S. Capitol began in 1793 and since that time, the U.S. Capitol and its stately dome have become international symbols of our representative democracy. But as a result of ADA people with disabilities have equal opportunities to visit.

So you don't want to climb a mountain? What about being prevented from crossing the street because the curb is too high? Take a look at Media dis&dat blog where they are changing landscape of disability “news.”

Nearly five years after a federal judge ordered the City of Detroit to comply with the Americans with Disabilities Act by installing curb ramps at intersections, several streets still have not been fitted with properly constructed access ramps."

Some businesses and building owners wrongly believe that “we are ‘grandfathered in’ so we don’t have to do anything to make our buildings accessible." But Kyle Glozier posted on the Center for Disability Rights Inc. blog that they may do less than what’s required for a newly constructed or significantly renovated building, but they are still required under Title III of the ADA, that ”Public Accommodations Built Before the ADA Must Make Readily Achievable Access Improvements.

Dog Law Reporter blog reported that the U.S. Supreme Court held that ADA requirements regarding disabled passengers applied to a foreign-flag vessels, so if you want to go on the cruise and your dog is considered a service animal you are covered under the ADA.

Unfortunately, the ADA does not guarantee access for emotional support animals in public places. The ADA and other federal and state laws do, however, support the right to emotional assistance animals in housing according to the Animal Law Attorneys blog.

It must be difficult to figure out what you can do and what you can't do to make sure you are in compliance with the ADA. That's why employment law blog posted a link to an online tool to help you figure out the dos and don'ts of the act entitled DOL Offers Disability Law Advisor Tool Online.

Because of the ever changing landscape in electronic technology, the Department of Justice announced Plans to Prepare a New ADA addressing:

the accessibility of websites,
the captioning and video description in movies shown in theaters,
accessible equipment and furniture, and
the ability of 9-1-1 centers to take text and video calls from individuals with disabilities.

Review of Other Blawg Posts

Well I guess that's enough of the ADA regulations for one blog post. There were some pretty good blawg posts this last week to review.

Intellectual Property (Patents, Trademarks, Copyright)

Starting with Erik Heels post about the Supreme Court decision in Bilski versus Kappos, A Mere Mortal's Guide To Patents Post-Bilski (Or Why §101 Is A Red Herring). God I wish I posted this one. Great job Erik! This post concludes the Supreme Court blew a chance to define what is patentable method of doing business, instead all we end up with is a bunch of questions.

I think that by simply ruling an abstract idea is not patentable (presumably including any business method) whether or not it (1) produces a useful, concrete, and tangible result, (2) is applied in a useful way, or (3) is reduced to a practical application may allow many legitimate new internet based methods of doing business go unprotected.

Doesn't the Supreme Court understand that many abstract ideas (such as virtual ways of doing business on the Internet) aren't tied to any machine or transformation?

Patently-O has a nice 3 part series Patenting by Entrepreneurs: The Berkeley Patent Survey (Part I of III) where Guest Posters Robert Merges and Pamela Samuelson, UC Berkeley School of Law and Ted Sichelman, University of San Diego School of Law answer the question "Why do entrepreneurs and startup companies file for patents?"

Legal Tech (iPad etc)

In Technology’s Effect on the Legal Profession, by Law Sites Blog, he looks back at some old stuff… right now writing this I feel enslaved but I do hope to feel empowered by the time I’m done.

What electronic portable electronic device do you bring to work with you? When Everyone Has Their Own Smart Phone, What Does That Mean for the "Workplace"? It means that today's companies should know that the firewalls on the workplace computers will not keep them "protected" from social media.

Do you think you can anonymously make comments on a blog or on an Internet webpage regarding a product ? Well you better be careful what comments you make on the Internet because as the Citizen Media Law Project will tell you in Internet Anonymity cases the federal courts have recently created an expansive category of "commercial speech" which is not entitled the same freedom of speech protections afforded to US citizens in the Constitution.

JD Supra Powers New LinkedIn Legal Updates, JD Supra content will now be seamlessly integrated into Linkedin. I haven’t tried this but it looks promising. I think I’m going to play around with it if I ever finish this Blawg review.

Flipboard Wades Into Murky Copyright Waters Where Google Lives points out Flipboard as a cool app for your I-pad, but does it violate copyright law?

Getting Files into the Cloud from your i-Pad is a great blog because of the practical tips it gives on how to make your i-Pad more productive.

Other Interesting Stuff

In the Blog of Rights post entitled Our Secret Security Establishment: the Big Picture, Jay Stanley tells us the government is spending $75 billion to obtain information and that much of the information is obtained in violation of our civil liberties. As usual the US government is drowning in a sea of information..."it is no exaggeration to say that our secret intelligence establishment has spun out of control."

I hope we don’t get nuked while the government protects Shrek, but if you want laugh at or cry about what the government is doing take a look at Department of Homeland Security Deploys Ogre-Protection Force.

The Influence of Law Blogs (2006-Present) gives blawgers evidence of their relevance in solid numbers. In fact you can download an excel spread sheet of all law blogs that have been cited in law journals since 2006.

Getting into blawging late in the game, I ‘m still trying to wrap my head around what it is all about. Kevin O’Keefe calls it “sipping from the fire hydrant.” But I think Kevin’s got it right when he says it’s all about Relationships. I met Kevin in Toronto this past December when I started on this Social Network path and I understand why he is such a success, I feel as he is a friend I’d like have beer at a Cubs game with, because I know he will help me succeed and he's a cool guy. Relationships is again the reason Why blogs ought not drive traffic to your law firm's website.

Please comment on this post if you would like expand your network of relationships...I will reply.

Now I would like to "handoff" the baton to the next host of Blawg Review, this month's host of Carnival of Trust, Charlie Green, author of The Trusted Advisor, at his blog Trust Matters. Good luck.

Blawg Review has information about next week's host, and instructions how to get your blawg posts reviewed in upcoming issues.

2010 National Trademark Expo

Vincent LoTempio — Fri, 23 Jul 2010 14:25:47 -0500

The United States Patent and Trademark Office (USPTO) is hosting the 2010 National Trademark Expo.

The deadline for trademark owners to apply for exhibit space at the Trademark Expo has been extended to August 16. Now is your chance to showcase the vital role trademarks have played in your business.

The National Trademark Expo focuses on educating the public about the important role trademarks play in our society and the global marketplace, and highlights advances in the electronic filing and processing of applications for federal trademark registration at the USPTO.

The purpose of the National Trademark Expo is:

to illustrate the value of protecting brand names and other trademarks in the increasingly competitive global marketplace;
to showcase the breadth of marks used by one source;
to educate consumers on the variety of types of trademarks used in the marketplace;
to engage the public’s interest in branding;and
to educate the public about considerations factored into mark selection and brand development.

The Expo will include themed displays, exhibitors’ booths, costumed characters and much more. Exhibit themes may include, but are not limited to, celebrity trademarks, trademarks identifying products often subject to counterfeit, unusual trademarks (sound, scent, color, configurations, motion marks, etc.), certification trademarks, trademarks commonly misused as a generic term, the breadth of different types of trademarks used by one source, the evolution of certain trademarks, people behind the names of trademarks, 100-year-old trademarks, and interesting stories about trademarks and their creation.

Any owner of a United States trademark registration may apply to exhibit. Apply now to Exhibit.

US Celebrations for the 20th anniversary of ADA

Vincent LoTempio — Tue, 20 Jul 2010 11:19:10 -0500

Guest Blogger: Adam Singh

The Americans with Disabilities Act (ADA), was signed on July 26, 1990 by then President George H. W. Bush. The ADA prohibits any discrimination based solely on a person's disability.

As defined by the ADA, a disability is "a physical or mental impairment that substantially limits a major life activity." The ADA provides a wide variety of protections for disabled US citizens in areas of every day life such as:

employment
public entities
transportation
public accommodations
telecommunications

"any form of retaliation or coercion, including threats, intimidation, or interference, is prohibited if it is intended to interfere [with the ADA]."

Around the nation, there are many celebrations planned to commemorate the signing of the ADA. A few of the celebrations include:

World Cup Trademarks

Vincent LoTempio — Mon, 12 Jul 2010 20:24:15 -0500

Congratulations to Spain for winning the World Cup in soccer. But the big money winner is the Fédération Internationale de Football Association (FIFA) for the marketing of the event. The Hollywood Reporter said that 700 million people worldwide watched the World Cup 2010 yesterday.

About 24 million Americans watched Spain win the World Cup over the Netherlands, while 106.5 million viewers in the US watched the New Orleans Saints' 31-17 upset of the Indianapolis Colts on Superbowl Sunday on CBS.

So I got to wondering about how the trademark for the World Cup was being used, registered and protected around the world. I found a blog called the Worldcupblog.org which reported that FIFA owned a slew of trademark registrations/applications for many different trademarks all over the world. I searched the USPTO webpage and found that there were 150 trademark registrations/applications owned by the organization known as FIFA.

I also found that back in 2006 the World Cup Blog had their wrist slapped by the attorneys of FIFA for what they considered inappropriate use of the trademarks. Although the blog didn't agree with FIFA that their use was inappropriate, in fact the blog considered the use to be a promotion of the event. See how they comically recite why they took down the trademark as requested,

"We have complied with FIFA’s request but not because we agree in the least with their draconian rules. We are just nice people and the only lawyer we could afford to hire to represent us in this dispute was our brother-in-law whose entire legal education comes from watching Perry Mason, LA Law and Law and Order."

Google posted an innocuous drawing on their famous search engine search page. You can see they clearly tried not to infringe on any FIFA trademark. But do you think that the FIFA organization profited by the exposure on Google yesterday?

There have been many examples of overzealous attorneys sending cease and desist letters, the funniest one was the "other white meat" April fools ad for unicorn meat by Thinkgeek.com. In the Unicorn case there was a 12 page letter telling Think Geek Inc. how the National Pork Board was injured by the sale of unicorn meat.

So what does trademark registration protect? Non-commercial use of another's trademark is not actionable as dilution. What is fair use? A trademark can be used when the use does not suggest sponsorship or association with the trademark owner's product or services and therefore is not being used in a manner to confuse the reader.

Use of another's trademark is not considered to be infringement if it falls under one of the following categories of permissible use:

Fair Use - this is most commonly seen in comparative advertising; i.e. "In a blind taste test, our cola ranked higher among consumers than Coca-Cola or Pepsi."
First Sale Doctrine - Protects resellers/repackagers - this is illustrated by auction websites like Ebay. Resellers frequently list items using another's trademark without authorization, i.e. selling genuine Windows software without being an authorized distributor/retailer.
Use in parody or speech - does anybody remember Weird Al Yankovic?

Blawg Review #274 on July 26th

Vincent LoTempio — Wed, 07 Jul 2010 22:07:14 -0500

I'm scheduled to host Blawg Review to mark the 20th anniversary of Americans with Disabilities Act (ADA) on Monday July 26, 2010.

Blawg Review is the blog website for everyone interested in law blogs. "A peer-reviewed blog carnival," where the host of each Blawg Review decides which of the submissions and recommended posts are suitable for inclusion in the presentation.

Please submit blogs that can be used in the blog review by just leaving a comment here! Thanks.

- Posted using BlogPress from my iPad

Location:Buffalo, New York United States

Senator Leahy Uses Bilski to Push Patent Reform

Vincent LoTempio — Fri, 02 Jul 2010 14:32:39 -0500

In an effort to push forward patent reform, Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) posted a press release using the highly publicized Supreme Court decision in Bilski v. Kappos (.PDF) as a reason as to why reform is needed.

Bilski affirmed a Federal Circuit decision denying a patent for a process for hedging on energy commodities because it was deemed merely an abstract idea. Here is what he said:

In Bilski v. Kappos, the Court unanimously affirmed the judgment of the Federal Circuit that the application for a patent on a business method should be rejected. The Court’s opinion, joined by only five of the Justices, however, needlessly left the door open for business method patents to issue in the future, and I am concerned that it will lead to more unnecessary litigation.

Since the debate over comprehensive patent reform began many years ago, the Supreme Court has demonstrated an increased interest in patent law cases. The Court’s decisions have moved in the direction of improving patent quality. While today’s decision will take time to analyze and may not have advanced the law and created the stability and certainty that it could have, it appears to continue this trend, which is consistent with the goal of patent reform legislation pending in Congress. The courts, however, are constrained by the text of our outdated statutes, and it is time for Congress to act.

I wonder what he meant about needlessly leaving the door open for business method patents? Does he believe a business method is not a viable subject matter for a patent? Does he believe that if a patent application for a business method passes the machine-or-transformation test it shouldn't be allowed a patent?

I wish there was more substantive information in the press release. But I guess it's a political maneuver to use a well-publicized case to draw attention to his pet project, the Patent Reform Act of 2010. Still, with summer recess approaching, even with the publicity that Bilski has drawn is it possible that we will see anything in the way of progress on S.515 until the fall?

Other related posts:

USPTO Sends Bilski Memo to Patent Examiners

Bilski vs. Kappos Decision

Bilski vs Kappos

Legal community weighs in on Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

Patent Reform Act of 2010: An Overview

"Patent Reform Act of 2010" and "First Inventor to File" Rule Change

USPTO Sends Bilski Memo to Patent Examiners

Vincent LoTempio — Tue, 29 Jun 2010 00:45:34 -0500

Almost immediately after the Supreme Court handed down the Bilski decision Robert W. Bahr, Acting Associate Commissioner for Patent Examination Policy sent a memorandum to the patent examining corps which gave guidance as to how the USTPO examiners should interpret the case.

Bahr told examiners to examine patent applications for compliance with section 101 using the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101.

If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea.

Bahr summarized what the Supreme court decided in the short memo:

The Supreme Court confirms section 101 specifies four independent categories of inventions and discoveries that are eligible for protection: process, machines, manufacturers, and compositions of matter.

The Supreme Court confirms that laws of nature, physical phenomenon and abstract ideas are not patentable subject matter.

The Supreme Court decided claims of Bilski not patent-eligible because under section 101 because they are an attempt to patent abstract ideas.

The Supreme Court indicated machine for transformation test is only a threshold inquiry and is not the sole test for patent eligibility of processes under 35 USC 101.

Significantly, the Supreme Court also indicated that a business method is at least in some circumstances eligible for patent under section 101.

Bahr concluded by saying an examiner should continue to examine patent applications for compliance with section 101 using "existing guidance" concerning the machine-or-transformation test.

I tried to figure out what the existing guidelines are for the USPTO regarding the examination of a process claim. I found another memorandum dated January 7, 2009, by John J. Love, Deputy Commissioner for Patent Examination Policy, addressed to the Technology Center Directors and the Patent Examining Corps which explained that the Bilski machine-or-transformation test for a method claim is whether or not the claimed method is:

Tied to a particular machine or apparatus; or
Transforms a particular article to a different state or thing.

The "guidelines" go on to say that there are two corollaries to the machine-or-transformation test :

First, a mere field of use limitation is generally insufficient to render otherwise eligible method claim patentable. This means the machine or transformation test must impose and meaningful limits on the method claim scope to pass the test; and
Second, insignificant extra-solution activity will not transform an unpatentable principle into a credible process. This means for citing a specific machine work or a transformation of a specific article is an insignificant step, such a data gathering or outputting, is not sufficient to pass the test.

Other related posts:

Senator Leahy Uses Bilski to Push Patent Reform

Bilski vs. Kappos Decision

Bilski vs Kappos

Legal community weighs in on Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

Bilski vs. Kappos Decision

Vincent LoTempio — Mon, 28 Jun 2010 11:31:10 -0500

To summarize today's Supreme Court ruling in Bilski (PDF), business method patents remain viable subject matter and the machine-or-transformation test enunciated as the sole test by the Federal Circuit is not the exclusive test, but merely one tool in the Examiner toolbox.

The court affirmed that Bilski’s risk-management method was not patentable subject matter. "Indeed, all members of the Court agree that the patent application at issue here falls out-side of §101 because it claims an abstract idea."

You can not patent laws of nature, physical phenomena, and abstract ideas.

Indeed, Justice Kennedy writing for the Court found that 35 U.S.C. §273 acknowledges the existence and statutory protection of business method patents.

Adopting the machine-or-transformation test as the sole test for what constitutes a “process” (as opposed to just an important and useful clue) violates these statutory interpretation principles. Section 100(b) provides that “[t]he term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”

"The Court is unaware of any “‘ordinary, contemporary, common meaning...of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article..., under the doctrine of noscitur a sociis."

The Court found that the invention in Bilkski, is an attempt to patent an abstract idea as well as a mathematical formula to express that idea. The Court reasoned that this was not patentable subject matter under 35 U.S.C. §101.

In his concurring opinion, which was joined by Justices Gindburg, Breyer, Sotomayor and Stevens, Kennedy agreed with the majority that Bilski revolved around the attempt to patent an abstract idea and therefore ran afoul of §101.

Nevertheless, Stevens (and the concurring justices) would have taken this decision further by reiterating their position that business method “patents” are not patent-eligible subject matter in the first place.

I asked patent attorney John Del Vecchio of the Buffalo patent law firm of Del Vecchio and Stadler about his thoughts regarding this much anticipated Supreme Court Decision, he highlighted the following quotes from the Biliski opinion (PDF):

Page 8
This Court’s precedents establish that the machine-or- transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or- transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.”

Page 9
As a result, in deciding whether previously unforeseen inventions qualify as patentable “process[es],” it may not make sense to require courts to confine themselves to asking the questions posed by the machine- or-transformation test. Section 101’s terms suggest that new technologies may call for new inquiries.

Page 10
Section 101 similarly precludes the broad contention that the term “process” categorically excludes business methods.

Page 12
But beyond this or some other limitation consistent with the statutory text, the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101.

Page 13
Petitioners’ claims are not patentable processes because they are attempts to patent abstract ideas.

Page 16
In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act.

Del Vecchio concludes, "So, it looks like the machine/ transformation test is a great clue, but not the sole test under 101. And, it looks like business method patents are alive and well.

Too bad the Court failed to spell out what the other 101 clues are!!! Seems like we might be back to the machine/transformation test as the only sure way of satisfying 101."

Based on today’s ruling and the concurring opinion of Justice Stevens, it will be interesting to see whether the Supreme Court will further define patent eligible subject matter and grant certiorari (PDF) in Mayo v. Prometheus (PDF) a case challenging the patentable subject matter of Prometheus Labs' patents that cover a method of optimizing the dosing of a drug.

Other related posts:

Senator Leahy Uses Bilski to Push Patent Reform

USPTO Sends Bilski Memo to Patent Examiners

Bilski vs Kappos

Legal community weighs in on Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

Rights Protected in Trademark Registration

Vincent LoTempio — Thu, 24 Jun 2010 11:33:32 -0500

How does a trademark benefit your company? Every one knows the value of a name. I wonder what the value of the Nike name and swoosh design is versus all the inventory and assets the company owns. I would guess the name has more value.

But what are the benefits of registering the trademark? Here is a list of benefits of owning a Federally registered trademark in the United States:

Registration is proof of validity;
Proof of registrant's ownership of the trademark;
Exclusive right to use the trademark in commerce;
"Incontestability" after five (5) years registration (stops attacks based on prior use or descriptiveness of the trademark);
Constructive notice nationwide of the trademark owner's claim;
Nationwide rights in the trademark (trademark rights can be obtained by registering it in an individual state);
Right to bring suit in federal court regardless of jurisdictional diversity;
Registration rights under the Paris Convention can be used as a basis for obtaining registration in foreign countries;
Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods; and
Allows you to use the ® symbol.

Bilski vs Kappos

Vincent LoTempio — Tue, 22 Jun 2010 10:15:17 -0500

What's taking the Supreme Court so long to hand down an opinion on the Bilski vs Kappos case? Bilski was argued on Nov. 9, 2009... 225 days ago. There has been much speculation that the decision will be published when the Supreme Court next releases its opinions on Thursday (June 24, 2010) or next Monday.

Dennis Crouch's Patently-O blog posts a nice chart of Joseph Miller, a professor at Lewis & Clark Law School, which shows the length of time it took the Supreme Court to render decisions on 20 other patent cases. The range was between 35 and 153 days. Dennis Crouch concludes:

"If you feel like you've been waiting a long time to see the Bilski opinion, it's because you have been waiting a longer time than usual."

My first thought was how can you compare Bilski, a case that's going to have long reaching consequences to many existing patents and software companies futures, with any other patent case? Wouldn't you expect it to be longer than the rest?

But a quick glance at the list and I saw a couple of the seminal cases in patent law history and a big one is right there at 140 days- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a case that was pending for almost twenty years and a case the Supreme Court looked at twice regarding the scope of prosecution history estoppel under the doctrine of equivalents.

The questions presented to the supreme Court in Bilski were:

Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas."
Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business." 35 U.S.C. § 273.

The Bilski decision may affect whether any business method, software, e-commerce and/or medical diagnostic technology is patentable. It will be interesting to see what and when they decide this case. Stay tuned for my next post on the Bilski decision.

Other related posts:

Senator Leahy Uses Bilski to Push Patent Reform

USPTO Sends Bilski Memo to Patent Examiners

Bilski vs Kappos Decision

Legal community weighs in on Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

Building Brand Recognition thru Trademark

Vincent LoTempio — Mon, 14 Jun 2010 11:54:19 -0500

What Inventors Need to Know...

Tom Demitry is an entrepreneur, an inventor, a salesman, a marketer, a man of ideas and as he will tell you first and foremost a father and a man of God. He is constantly coming up with new ideas and new ways to reinvent himself. His passion and enthusiasm are endless.

I met Tom about 10 years ago when I first became a patent attorney and he was looking for someone to help him file a patent application and get a patent for his invention, the PaintMat (PDF). Little did he know that he was my first client! It was the beginning of a long term working relationship and friendship.

Although that product never really became a financial success, Tom took the PaintMat idea across the country selling the product he had patented, manufactured and marketed and learned a lot of lessons in the process.

Since then he started a new endeavor selling baseball caps and various styles of hats with a Christian theme and marketing the hats under the registered trademark (.PDF) SpiritDomes®. This time it seems that Tom is on his way.

I thought a blog post about him might give inspiration and guidance to other inventors and entrepreneurs who are starting out. Here are a couple questions and answers from our interview:

How did you establish a national brand and hat line in this difficult economic climate?

I have 30 years experience in the head-wear business and I received my vision in church on one fateful Sunday. I was thinking of ways I could spread the word of God and had an awesome idea that was very unique in the industry.

The idea is to imprint a quote from scripture on the under-visor of my product and design the artwork for a hat around the particular quote from the bible; a "SpiritDome".

No one in the world was doing this so I wanted to establish my own unique niche. Being different than everyone else is what helped the brand really take off. The key is to be different and it is what our target consumer, the youth of today want to be- unique and different!

What have you done to protect your idea?

I thought the best way to protect my brand was by filing for a registered trademark. I filed a trademark application with the United States Patent and Trademark Office (USPTO) through KlossLaw and SpiritDomes was a registered trademark within one year of filing. I believe a registered trademark is the best protection available because no one can ever use it in business. It's also versatile in that I can create product line extensions with the brand and the new products would carry the same protection.

What else do you do to build brand recognition?

I've always felt that if a brand was started at the grassroots level and done consistently over a long period of time, that would be the greatest protection of all. Next, all consistent marketing done to promote building the brand such as signage, promo cards, websites, Twitter, facebook, Linkedin, labels, etc. helps to shape the brand properly as well. What's great about the times we live in is that network marketing to get the word out is affordable and effective. The internet is amazing!

Another thing we're doing is partnering with producers, directors, musicians, speakers, etc. to spread the word about our brand. The value of word of mouth really adds up. We also label our products with SpiritDomes.com to promote our website so that the public knows of and has a direct link to us. The web page is the easiest way to learn more about what we do.

What is the value of Trademark and brand recognition?

Building a profitable company is what we all try to do. The company builds equity in assets like inventory, real property and cash which have a value or net worth. The beautiful thing about brand building is that the brand name itself has what you call Brand Equity. The brand and goodwill in the company itself has value that can be sold for profit depending how famous it becomes. Just like real-estate appreciates in value when people recognize the great location, the brand gains in value as more people know and recognize the name and associate it with a company that provides a quality product.

"A patent is limited by time but a trademark can last forever if the brand is built consistently and properly over time."

Interview with President of Rolite Manufacturing

Vincent LoTempio — Thu, 10 Jun 2010 22:40:33 -0500

Recently I met with Ron Roberts, President of Rolite Manufacturing. Rolite is a roll forming manufacturer that produces metal products of all shapes and sizes for large and small companies.

I toured their manufacturing facility and was amazed at how a compact roll of sheet metal can be stretched, cut, pounded, bent, stamped, shaped and sized into a variety of configurations.

Take a look at the video I uploaded to Youtube of all the different ways they can manufacture metal products.

Ron told me that every product they make must be made to have the right "Form, Fit and Function."

Form: the look of the product projects the presentation the inventor intends;
Fit: the product meets all the requirements necessary; and
Function: the product must work the way it was intended.

Here are few questions and answers from my interview with him:

Can you help inventors make prototypes to use as a sales prop?

Many times we’re able to work with the inventor and help figure out the manufacturing details. We can gear their idea to existing equipment and help them lower startup costs. We help inventors in the process of manufacturing, we call it "engineering time" it's kind of like a research and development of the product without actually stepping on the toes of the inventor.

Our goal is to have cheaper startup costs for the inventor. Truthfully, independent, individual inventors are a small percentage of our business. Typically they don't have the financial wherewithal and know how to take it to the next level and we try to help them bridge the gap.

What are some of the biggest problems that inventors have that you are able to resolve?

We think outside the box, we have tooling and the presses that are capable of shaping and bending any piece of sheet metal into almost any position. We try to do it as simple as possible and we often design ways to make products inexpensively as possible. We also work with other companies to make a product, for example we've recently made a metal product which needed an attachment combination of a piece of cloth material and small brass fittings which were produced by outside sources and attached by our company.

What can you do to make a salable product better than a company located overseas?

Others need to find a manufacturer overseas in places like China because of cheap labor. We can do it better than an overseas company because we can:

Produce a high quality product (Assembly and manufacturing is done locally).
Avoid Secondary and third operators.
Provide a short response time to customers problems and queries.
Take care of quality issues as soon as they happen. If you're using somebody in China and there's a problem they would say “maybe we'll implement it on the next run” with us we fix it now.
We deliver on time because there is not an ocean we have to ship across.
If there's a legal problem outside the USA what legal recourse do you really have?

What considerations do you take into account before making a product?

"What are the fixed costs? How much is it to make? Can it be sold for a profit at every level? If not we can’t make it."

There are a five tiers of cost on any product:

Manufacturer
Distribution representative
Wholesaler
Retailer
Final Customer cost

What steps do you take to preserve the rights of your clients?

"With us it is mum's the word, we do our best to keep everything confidential. We have an in-house Nondisclosure Agreement (NDA) which is fair and protects both the inventor and our company. If the inventor has their own NDA we will sign it if it is fair and reasonable."

A roll forming manufacturer, Rolite Manufacturing offers inexpensive aluminum angles in any shape (simple to complex), as well as other metal channels & steel grades. They also offer aluminum channels, metal rings, light gauge metal trim, steel angles, and steel channels, in any length with close tolerances. Their roll formers can develop many complex cross sections.

What is Non-obvious and can be Patented?

Vincent LoTempio — Sat, 05 Jun 2010 20:12:36 -0500

What is patentable subject matter? Many people believe that they can patent anything. But the truth is there is only certain statutorily allowable subject matter that can be patented (35 USC 101).

Here's a list of the basic allowable subject matter:

Process (Method of making infrared heaters which reduces costs by 25%)
Machine (Motorized device for clearing leaves out of a gutter without climbing)
Article of manufacture (Pencil, chair)
Composition of matter (Paint, drugs)
Or any new and useful improvement thereof (Chair with a footrest)

If your invention falls into one of the above categories it must also be:

New (no one has ever done it before) 35 USC 102
Useful (it can't be something that has no use whatsoever) and
Non-obvious 35 USC 103 (It must be non-obvious to one having ordinary skill in the pertinent art at the time the invention was made)

It doesn't take much to show that your idea is new because the slightest change will cause it to be original. And useful isn't really much of an obstacle, almost everything has some sort of use. There is a joke among chemical patent attorneys, "Any chemical composition has a use, it either kills grass or helps it grow!"

The hard thing to understand and to teach is what is non-obvious! I sometimes use the example of the invention of a table to get this idea across.

Let's pretend you were around 10,000 years ago and you were the first person to invent a table. Your table has a square top, a bottom and four legs.

Now someone makes an improvement on the table and tries to get a patent. The improvement is that the top is circular in shape instead of a square. The argument by the patent office may be someone skilled in the art (a carpenter) would think it obvious that the top could be made in any shape or dimension and a round top would be rejected as an obvious improvement.

Even though the improvement of the first ever circular top is new, and it is useful it would be arguably not patentable if it was determined that it would be an obvious improvement for a carpenter to make a table top in any shape.

Now let's take a different approach. Let's say that the new inventor was the first to invent a table with pedestal legs connected to the center of the bottom. It could be argued that this way to connect the legs to the top is a non-obvious improvement and would be potentially patentable in the prehistoric patent office.

But obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so.

So if there was a chair in the prior art with a with similar legs like the pedestal legs of the invention table the examiner might combine the references of the square table with the chair and say it was obvious to come up with the new table.

I am not trying to replace the many legal treaties and case law on this the question of obviousness, not to mention the Manual of Patent Examining Procedure (MPEP) where there are many examples of what is non-obvious. I hope the simple logic of the table scenario is an easy way to generally grasp this concept.

"Clipart courtesy FCIT"

Patent an Idea?

Vincent LoTempio — Mon, 31 May 2010 20:54:04 -0500

Can you patent an idea? No.

Many potential inventors say to me “I have an idea I would like to patent” but what they do not understand is that the invention itself is patentable, not the idea. In order for an idea to become a patented invention, the inventor must be able to teach someone of ordinary skill in the art how to make and use the invention.

In 1966 Eugene Wesley "Gene" Roddenberry came up with the “idea” for the transporter. In the Star Trek television series Captain Kirk would use his communication device (which looked a lot like the cell phones of today) from a planet’s surface to order his engineer to “beam me up Scotty.”

Could Roddenberry have applied for a patent in 1966 for the cell phone or a transporter? Not unless he could describe to someone skilled in the art how to make and use it.

The law doesn’t even require that you actually make it (“reduction to practice”) you just have to be able to describe how to make and use it. 35 U.S.C. 112 often referred to as the enablement clause reads

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same…”

§ 112 paragraph 1 requires nothing more than objective enablement. In fact, an inventor can "constructively" reduce an invention to practice, which is unique to patent law.

"The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented. Neither the statutory definition of the term in § 100 nor the basic conditions for obtaining a patent set forth in § 101 make any mention of "reduction to practice.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60-61 (1999)."

As Judge Pauline Newman as described, "[t]he inclusion of constructed examples in a patent application is an established method of providing the technical content needed to support the conceived scope of the invention" because "[u]nlike the rules for scientific publications, which require actual performance of every experimental detail, patent law and practice are directed to teaching the invention so that it can be practiced." Hoffmann-LaRoche, Inc. v. Promega Corp., 323 F.3d 1354, 1377 MPEP § 608.01(p).

People often come to me with an idea of how some type of machine might help solve a problem. But when I ask "how do you make it?" they cannot describe the inner workings of the machine. I ask them to tell me how it works and they say "can’t we get someone like an engineer or an electrician to make it work?" I reply "wouldn’t that engineer be the inventor?"

If we go back to 1969 and the wireless phone idea... just having the idea to transmit voice signal wirelessly wouldn’t be enough to get a patent. You would have to be able to describe it like George Sweigert of Euclid, Ohio did on June 10, 1969. Sweigert is the man who is credited as the person who came up with the first cordless phone and was awarded US Patent Number 3,449,750 (.PDF). Download the patent to see the way he described how to make and use his invention.

The bottom line is that your new idea of a way to solve a known problem can only be patented if you can describe how to make and use it. You cannot get a patent on the idea alone.

The USPTO Has A Facebook Page

Vincent LoTempio — Fri, 21 May 2010 17:09:59 -0500

The official United States Patent and Trademark Office (USPTO) Facebook page promises to deliver the latest USPTO news, photos and videos.

Through Facebook the USPTO will directly connect with the public and the intellectual property community.

According to David Kappos the USPTO’s Facebook page is meant provide

“a place where users can tell US what YOU think. Users are encouraged to comment on our posts and tell us what you “like” and “dislike” about to the USPTO."

The Invent Blog reported that under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said:

“Technology has profoundly impacted the way we all consume information and communicate with one another... “I’m confident our Facebook presence will complement the USPTO Web site as a means of communicating and connecting with the public and our stakeholders in the intellectual property community.

With more than 400 million people on Facebook, we knew it was an important place for us to be.”

USPTO Director David Kappos welcomes Facebook users with the following message:

Welcome to the USPTO’s page on Facebook! We're excited to be launching this forum to communicate with you and share the latest news from the USPTO. We know thousands of innovators, members of the intellectual property practice community, and USPTO employees are active on Facebook, so we’re pleased to be able to bring information and updates to you here...

Check back here daily, as we will be providing regular updates including press releases and other news, details on upcoming events, speeches, updates from my blog, photos, video, fun facts and more. Just like checking your Facebook page, we hope visiting our page will become part of your daily routine.

The USPTO’s Facebook page is a supplemental page to the official USPTO web page. It makes you think, doesn't everyone need a Facebook page? I enjoy connecting with over 1000 long lost friends from the good ole days at my Vincent LoTempio facebook page and I launched a page for my law office at Kloss, Stenger & LoTempio, although I have to admit there has not been much action there. But I love this social networking. Everyone is getting involved.

Sony Patent Application: Preview of InteractiveTV?

Vincent LoTempio — Tue, 18 May 2010 17:24:36 -0500

Tweet of the week

Thanks to Innovator, Consultant, Strategist, Emerging Media, Social TV, Canadian Expatriate Richard Kastelein for tweeting @expathos this week about a Sony patent application that may give us a preview on how viewers could interact with their TVs. What is the future TV of and TV apps?

We all know that one day the computers and TVs will be the same; there will be central location in your house that will control all your entertainment from movies, games, music, internet and the television. But who will bring us there first? Will it be the Sony 'Smart TV'?

Richard Kastelein reported for appmarket.tv that Financial Times (FT) and the UK Ti mes said that Google and Intel are expected to announce Google’s I/O conference on May 19th, in San Francisco a significant breakthrough into consumer electronics and the broadcast industry with the launch of a “Smart TV” platform.

“The technology is allegedly powered by Android and Intel's chips, and will make Sony televisions and even Blu-ray DVD players function like computers, running Google's search, Chrome Web browser, YouTube and other programs.

Kastelein thinks that this smart TV will be a windfall for the App industry, he quoted Julie Jacobson

"...that by 2015, more than half of all TVs shipped worldwide will have a network connection - and seven out of ten of those units will ship with an embedded app platform and app store, according to a new report from Gigaom Pro called, “TV Apps: Evolution from Novelty to Mainstream” (subscription required)."

Janko Roettgers authored an article for newteevee.com "Is This the Sony Smart TV?" And Paul Johnson of appmarket.tv wrote an article "Google TV - Does Sony patent give us a view on how viewers could interact with their tv's?" Both are of the opinion that a recent Sony patent applicattion entitled NETWORK MEDIA PLAYER WITH USER-GENERATED PLAYBACK CONTROL(.PDF) may be the basis for the announcement.

The patent application essentially describes a network media player able to generate and consume XML-based metadata for programming from any source, including over-the-top, local media and cable TV. This type of metadata would then be stored on a central server and exchanged between users through social networks, or made available by broadcasters or other entities.

Here is a excerpt from the patent application:

It is desirable to provide a mechanism to create, use, and/or share different playbacks of television programs and other sensory works. For example, it is desirable to provide an individual who has recorded the Super Bowl only to watch the commercials with the ability to playback his recording of the Super Bowl on his PVR such that only the commercials are shown. Similarly, an individual who has recorded the Super Bowl only for the football may desire to only see each football play during playback. This [patent application] discusses techniques and systems that may be used to create metadata or the like that controls or varies the playback of a sensory work, such as, a television program.

It also gives a hint as to how big business will profile the American consumer and narrowly direct advertisements at a specific communities. The next step will be to direct ads at a specific household or individual. Talk about "big brother" getting closer to reality. Take a look at this:

In some instances, it may be desirable to insert additional information, video, audio, and the like, during the playback of a sensory work. For example, a user may desire to insert media from another source, from another segment within the same source, or to insert new data. One implementation of this technique would be to insert profile-based advertising during playback. For example, during the playback of the Super Bowl, viewers may be shown advertisements based on demographics or any other information available. Thus, viewers living within one census block group may be shown a Lexus advertisement, while those in another census block group may be shown a Toyota advertisement.

What are you able to afford? The Lexus or the Toyota? So will big business/brother show the Lexus to you or just to your rich brother?

How to Evaluate the Retail Opportunity of a Product

Vincent LoTempio — Thu, 13 May 2010 06:09:58 -0500

What Inventors Need to Know...

Most independent inventors want to license their invention to a retailer. Usually an inventor does not have the experience nor the money to market, manufacture and distribute a product on their own. So when I ask an inventor if I had a magic wand and instantly gave you a patent, what would you do with it? I get an answer like “I would take it to a large retail chain and work out an exclusive licensing agreement.

Whether they could even get their foot in the door is a long shot in itself, but let’s just say an inventor has a buyer’s ear or is working with a product developer. No matter how good the product is, it will not sell itself.

Are you looking to make a deal? What bargaining power do you have if all you have is the idea? What else can you bring to the table? The more information you have, the better negotiating leverage you have when bartering the licensing royalty rate.

In order for a product developer to properly analyze and evaluate the retail opportunity of a product the following critical points need to be addressed (not listed in any particular order as to importance):

Wholesale price range
Suggested retail pricing
Unit Cost
Current inventory (number of units on quantity)
Sales presentation material
A good presentation of all of the products benefits and features
Target market
Estimate of market size
Close up image or text version of packaging
Bar code
How many fit in store case pack
Overall product dimensions
Product weight (single item)
Intellectual property protection: trademark (brand name) and patent protection
Current retail stores or on-line retailers carrying product
Do you have current manufacturing? domestic or international
Current competing products in the market: sizes and pricing
Estimated production time for new inventory
Are there any other variations or a contemplated next generation of the product?

Each side in the negotiation brings certain elements to the table. Every element you can add raises the odds that an agreement will be made. And each element raises the bargaining power to negotiate and profit from any deal.

Buffalo Law Journal Report on Intellectual Property

Vincent LoTempio — Wed, 12 May 2010 07:29:51 -0500

The Buffalo Law Journal May Special Report focusing on Intellectual Property is now available.

Thanks to Matt Chandler and the staff at Buffalo Law Journal for allowing me to author a guest column in this months issue.

If you haven't had a chance to check it out, here is a sneak peek at what's inside:

A look at SPLiCE, the Society of Product Licensors Committed to Excellence, through the eyes of its executive director Kimberly Billoni written by David Bertola.

Billoni shares her thoughts on the role her group plays in bringing businesses together.

An overview of the IP practice in WNY by Matt Chandler. Local attorneys say business is strong despite economic concerns. Comments of registered patent attorneys from both large and small firms to get a sense of what they are seeing as well as what the future holds for the practice of IP law.

A guest column by me Vincent LoTempio, looking at an overview of the Patent Reform Act of 2010.

Stepping away from the IP world, Matt Chandler takes a look at what impact recent health care legislation may have on companies considering implementing wellness programs in the workplace.

A spotlight on Lancaster Town Justice Mark Montour who was recognized for his efforts to reach troubled teens battling addiction in Lancaster.

Follow the Buffalo Law Journal on Twitter @BufLawJournal and Facebook.

IP.com Global Patent Search

Vincent LoTempio — Fri, 07 May 2010 07:14:14 -0500

What Inventors Need to Know...

The "IP.com Global Patent Search" tool may be your answer if you're looking for a free and easy way to search for prior art patents. The speed of this search engine is amazing. It finds a result almost immediately.

IP.com offers a free search engine box to be integrated into a web site or blog. The search box enables the user to search patents and selected non-patent literature. It takes just seconds to copy and paste the HTML code snippet in an appropriate location on your website, allowing visitors to quickly access patent searching.

Try searching something in the Global Patent Search box below to see how it works!

I tried a few searches myself and was impressed with the database and its ease-of-use. While the USPTO search site makes it difficult to see images and to download patent documents in .PDF format, the IP.com search engine allows you to do both seamlessly.

However there was a point it asked me to type in a CAPTCHA to ensure that my search was not generated by a computer and I was a real person. What a pain in the neck! My eyes aren't what they used to be, but I managed to type it in okay.

Below I pasted a sample of what a search result page looks like. I particularly like the "Options" box, especially its "More Like This" option because it instantly gave a neat organized list of prior art under the following titled headings:

US Utility Registered Patents;
US Utility Patent Applications; and
Prior Art Database English Language Disclosures.

The "More Like This" feature certainly saves time because it allows you to get many similar examples of prior art with one simple click. This is faster than a search on the USPTO search page where you have to go back and forth from the Patent Application search page to the Registered Patent search page.

The IP.com search engine provides many other features, like an Advanced Search page that allows the searcher to customize a search to more efficiently find what their looking for. All in all I believe the IP.com Global Patent Search engine is a valuable tool for inventors and patent practitioners alike.

Patent Reform Act of 2010: An Overview

Vincent LoTempio — Mon, 03 May 2010 20:11:46 -0500

Is the United States patent system broken and does it need to be fixed? Can our governmental leaders fix the patent system through legislation? Patent reform legislation has been introduced in each of past three Congresses and has yet to be ratified. Through the current Reform Act it is hoped that better patents are issued, patent rights will be enforced and the flow of technology advances our society for the good of us all. The argument over the many proposed changes appears to be getting closer to a conclusion.

Versions of the bill have been introduced in both the House and Senate (H.R. 1260 in the House, S.515(.PDF) in the Senate). The Senate Judiciary Committee has passed the bill and the House Judiciary Committee has held hearings on it. It will need to pass both committees and both chambers of Congress for it to be sent to the president.

The Obama administration has signaled support for a bipartisan patent reform agreement in the Senate. Senate Judiciary Committee Chairman Patrick Leahy (D-VT) recently came to agreement with Jeff Sessions (R-AL) regarding changes to the Patent Reform Act of 2009 (S. 515), increasing the chance that patent reform will actually happen.

In an April 20, 2010, letter addressed to both Senators Leahy and Sessions, Commerce Secretary Gary Locke pointed out that President Obama supports patent reform and would like to see the bill brought to the floor of the Senate and passed. Here is an excerpt from Locke’s letter:

The Obama Administration strongly supports your efforts to achieve such reforms and is committed to working with members of both houses of Congress to bring these efforts to fruition as you seek to bring a bill to the Senate floor. Regardless of any issues that remain under discussion, there is a consensus that a strong patent system, including an appropriately funded and well-functioning United States Patent and Trademark Office (USPTO), fosters innovation that drives economic growth and creates jobs.

Leahy’s procedural move is called a “hot line,” in which Senate Majority Leader Harry Reid (D-NV) will ask all Senate offices for unanimous consent to proceed to the bill, substitute the new language, and consider it passed.“Hot line” is the term used for a request to Senators to agree to allow a bill or resolution to be considered approved by the Senate without debate. It is has been reported by Dan Friedman of the NationalJournal.com that Senator Leahy is seeking floor time for consideration of S. 515, and hopes it will be taken up by the full Senate prior to Memorial Day.

Some of the proposed changes to current law are outlined below:

First Inventor-To-File: The U.S. currently uses a "first-to-invent" system, which seeks to determine which applicant actually invented it first. The proposed reform would grant a priority of a right to the inventor who first-filed a patent application. Currently an inventor has a one-year grace period to file a patent application from the time the invention is used in public, published or offered for sale. This change would eliminate the one-year grace period unless the inventor was the "first-filer."
False Marking: The proposed reform would eliminate the right of "any person" to file a false marking claim. Claims would be limited to individuals who have "suffered a competitive injury." This change would apply to apply to all cases, without exception, pending on or after the date of the enactment of this Act.
Damages: The Patent Reform Act of 2010 attempts to address allegations that awards in patent cases are at times unfair and inconsistent. The Act proposes that courts be required to "identify the methodologies and factors that are relevant to the determination of damages, and the court or jury shall consider only those methodologies and factors relevant to making such determination." In other words, juries will only be allowed to award damages if the contentions are supported by substantial evidence. Each party would be required to "state, in writing and with particularity, the methodologies and factors the parties propose for instruction to the jury in determining damages … specifying the relevant underlying legal and factual bases for their assertions." This approach looks to strike a balance between the rights of patentees and accused infringers. However, as this approach does not actually limit damage awards, it remains to be seen how much this will affect a jury’s determination of damages.
Trial: Right to split trial into segments: damages; infringement; validity; and willfulness.
Willful Infringement: Under the current law, if it is determined that an accused infringer willfully infringed on another’s patent, "the court may increase the damages up to three times the amount found or assessed" (see S. 515 – Patent Reform Act 2009). Understandably, willful infringement was asserted in a majority of cases, and was found in many of them. This led to a number of unforeseen consequences. For instance, since one defense to willful infringement is reliance on an opinion from a patent attorney that there was no infringement, a number of lawyers were charging outrageous amounts (in excess of $100,000) for these opinions. In other cases, it was found that some businesses deliberately avoided learning about patents in order to avoid willful infringement claims. This completely goes against the whole purpose of the patent system, which is to promote science and useful arts. As a result, the Patent Reform Act of 2010 attempts to fix the willful infringement doctrine by increasing the standard for finding it. The 2010 Act proposes that, in order to be found “willful,” you must be found to be “objectively reckless” by clear and convincing evidence. It would also be made clear in the statute that knowledge alone is not enough to establish willfulness, and that any close cases should ere against a willfulness finding. This approach strikes a nice balance by making it much more difficult to assert willful infringement without getting rid of the doctrine all together.
Pre-Issuance Submissions of Prior Art by Third Parties: The statute would expand the time frame for third-party submissions and allow third-parties to submit references and a statement regarding the relevance of the reference to patentability during examination of a patent application. This provision will benefit the public, the Patent Office, and inventors by giving the public additional time and the ability to make arguments to the Office; the Office more thoroughly examines an application in the first instance thereby decreasing potential reexamination proceedings; and the inventor is granted a patent which has been more thoroughly examined thereby decreasing the likelihood that the patent will later be invalidated through a novelty/nonobviousness argument.
Litigation Venue: Patent cases could be transferred for the convenience of the parties to venues clearly more convenient than the venue in which the civil action is pending.
Federal Circuit Judicial Residency: Federal Circuit Judges would no longer be required to live in the Washington, DC area.
Micro-Entity: A new type of entity defined as a "micro entity" for an inventor that has not been named on 5 or more previously filed patent applications would qualify for reduced fees.
Best Mode Requirement: The Best Mode requirement would no longer be an invalidity defense and it cannot serve as a basis for holding a patent unenforceable. If the bill is made into law it will result in: Patents that do not teach the best way to make the invention, but teach “a way” to make the invention; this change favors the inventor over the infringer because it will make it harder to invalidate a patent.
Inequitable Conduct: Currently, when applying for a patent, the patentee is required to supply to the Patent Office any information deemed relevant to the invention’s patentability. If you intentionally mislead the Patent Office at this time, you are guilty of inequitable conduct, and the penalty is unenforceability of your patent. While that appears to be fair, it turns out that because of the penalty at stake, inequitable conduct is alleged in almost every major patent case. As a result, the Patent Reform Act of 2010 proposes to allow patent owners to request “supplemental examination” prior to litigation. During this time, the patent owner could submit relevant information to the Patent Office for consideration. Any patentee surviving this reexamination would be exempt from an allegation of inequitable conduct based on the initial examination process. However, a big question mark is the ability of the Patent Office to handle the changes created by this proposed law, including processing a host of new reexamination proceedings. With 750,000+ applications sitting in its backlog, can the USPTO afford to devote manpower to this?

The Patent Reform Act of 2010 appears to balance the playing field for patentees in defending their patents.In the long run, the pressures of market competition will determine the fate of the patent system based on its performance. If the patent system fails, over time it will make the United States economically less competitive, and industry will demand change.

The new amendment to the "Patent Reform Act of 2010" proposes a number of so-called improvements that are the subject of other LoTempiolaw Blog posts: