Maryland Intellectual Property Law Blog

Expo To Gather Maryland Entrepreneurs

Brian Wm. Higgins — Fri, 27 Jan 2012 05:44:19 -0500

The Maryland Technology Development Corporation (TEDCO) recently announced the date for the 2012 Entrepreneur Expo, its second year for the event. The BWI Airport Marriott will again provide the location for this year's gathering of over 300 entrepreneur companies and individuals. The event will kick off on Tuesday, November 13, 2012.

While T-Sizzle Takes to Gridiron, His Lawyers Tackle "Ball So Hard University" Trademark, Right of Publicity Dispute

Brian Wm. Higgins — Sat, 14 Jan 2012 10:50:07 -0500

Terrell “T-Sizzle” Suggs roams the gridiron looking to make his presence known to opposing quarterbacks by delivering some of the most devastating sacks in the game of professional football. His lawyers, meanwhile, tackle a different kind of foe off the field: people they say are violating Suggs’ trademark and affecting his right of publicity.

Few know that Suggs, a linebacker for the Baltimore Ravens, uses his fame and talents—and a reported $63 million football contract—off the field to build media and apparel businesses. He’s the current CEO and President of Team Sizzle Worldwide, an independent film company based in Baltimore, and an entrepreneur in the apparel industry, selling t-shirts and other merchandize with his likeness and the catch phrase “Ball So Hard University,” which is at the center of a burgeoning legal dispute.

Suggs used the fictitious university name, according to the Baltimore Sun, rather than his actual alma mater, Arizona State University, when he introduced himself on national television at the start of the November 6, 2011, Steelers vs. Ravens game. He later filed five trademark applications on November 17, 2011, in the U.S. Patent & Trademark Office, to protect the phrase. But he wasn’t the only one who thought the name was catchy, or that it would help sell merchandize.

Within hours of Suggs’ use of the phrase on television, Brian Bussells, Tonyshirt.com, and others reportedly began selling Ball So Hard University products on the Internet. In Mr. Bussells’ case, he also registered the domain name “ballsohardu.com” and filed a trademark application for the phrase, both on November 7, 2011. Bussells operates Busstees LLC, a design company in Maryland.

Suggs' lawyer—Kimberly Grimsley of Bowie & Jensen—responded with cease and desist letters, arguing that the use of BALL SO HARD UNIVERSITY on t-shirts sold by others creates the appearance of a connection with Terrell Suggs, which is false and misleading in violation of the Lanham Act, she says, and would likely create confusion between T-Sizzle’s products and those of others who are selling merchandise without Suggs’ permission. Ms. Grimsley also contends that Suggs’ right of publicity is being violated, and will cause damage to the “commercial value of his persona.”

The outcome of Suggs’ trademark dispute will depend on whether Brian Bussells has superior rights to the BALL SO HARD UNIVERSITY trademark. In the United States, trademark rights are based on the use of a mark in commerce, so if Bussells can establish that his use was legitimate and before Suggs’ (Bussells claims a first use in commerce on November 7, 2011), he may prevail against the linebacker (assuming the catch phrase is even registerable under the trademark laws, which is a different issue altogether).

Suggs’ lawyer’s diminished right of publicity argument may be even more tenuous than his trademark position. The right of publicity is the inherent right of a person to control the commercial use of his or her identity (or that of someone else’s). Based in state law, the ability to control an identity for commercial gain is an intellectual property right that, when infringed and shown to reduce the commercial value of the person’s likeness or persona, can be compensated through damages.

Maryland courts, however, do not explicitly recognize a right of publicity, though they would consider the same relevant facts under a right of privacy action, i.e., misappropriation of likeness for commercial purposes. To establish a case of liability for invasion of privacy through misappropriation, the plaintiff must establish that the defendant, without permission, used some aspect of the plaintiff's identity or persona in such a way that the plaintiff is identifiable from that use. The plaintiff must also establish that his peace of mind and dignity were damaged by the defendant's use of plaintiff’s identify or persona.

AIA: Changing How Non-Practicing Patent Owners Can Assert Their Patents

Brian Wm. Higgins — Wed, 11 Jan 2012 08:59:28 -0500

In an effort to reduce the number of multi-defendant patent infringement lawsuits often brought by non-practicing patent owners, the America Invents Act (AIA) includes a new statutory provision that addresses joinder of accused infringers in patent actions or trials not involving certain drugs and biologics. Under the new law (35 U.S.C 299), parties accused as defendants may be joined in one action in a single judicial district as defendants or counterclaim defendants only if:

(1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and

(2) questions of fact common to all defendants or counterclaim defendants will arise in the action.

For purposes of this new provision, accused infringers may not be joined based solely on allegations that they each have infringed the patent or patents in suit. Defendants may waive this provision, which is effective in any civil action commenced on or after the date of enactment of the AIA.

Number of IP Lawsuits in Maryland Increases in 2011

Brian Wm. Higgins — Sun, 01 Jan 2012 14:02:30 -0500

Patent litigation activity in Maryland increased in 2011 compared to the previous four years, as the chart at right shows. According to records available from Justia.com and PACER, plaintiffs filed 35 patent lawsuits in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) last year, compared to just 22 lawsuits in 2010 and 31 in 2009 (59-percent and 13-percent differences, respectively).

Plaintiffs filed 38 copyright lawsuits in the Maryland federal court in 2011, compared to 27 lawsuits in 2010 (a 41-percent difference) and 27 lawsuits in 2009 (a 12-percent difference).

Bucking the upward trend, trademark plaintiffs brought 34 lawsuits in 2011 compared to 40 in 2010 (a 15-percent slide), but matched the number of lawsuits in 2009.

All combined, plaintiffs brought 107 copyright, patent, and trademark lawsuits in Maryland's federal district court in 2011, a 20-percent increase over 2010, reversing a 10-percent drop in filings from 2009 to 2010 (note, these figures and those shown in the charts do not include cases with multiple plaintiffs or cases having multiple nominal counterclaim plaintiffs).

Maryland's neighboring federal district courts saw significantly more IP litigation last year: Delaware, 499 combined cases (compared to 272 in 2010); Virginia, 204 cases (compared to 176 in 2010); Pennsylvania, 265 cases (compared to 255 in 2010).

2011 Top 5 List: Music, Ravens, Jobs, AIA, Handbags

Brian Wm. Higgins — Fri, 30 Dec 2011 15:23:04 -0500

The Top 5 web page views on the Maryland IP Law Blog for 2011 are perennial favorites. The most popular web page for the second year in a row was one touting the "benefits" of downloading music on the Internet, published August 28, 2007. Bouchat's copyright lawsuit against the Baltimore Ravens and the NFL was the second most visited web page. The new IP JOBS Board came in third, followed by a post discussing the new America Invents Act. Rounding out the top 5 was a Fourth Circuit opinion regarding Louis Vuitton's trademark infringement case against Haute Diggity Dog:

Downloading Music Benefits Both Consumers and Artists, Study Finds

Bouchat Sues Ravens, NFL Over "Flying B" Design

Maryland IP Jobs Board

America Invents Act: Redefining What is "Prior Art"

Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC

Did You Know...

Brian Wm. Higgins — Fri, 30 Dec 2011 06:22:04 -0500

I am a full-time intellectual property law attorney. In case my "About" page was not as clear about that as it could be, I recently added a few "Representative Matters," which I hope will provide further insight into what I do when I'm not publishing this website.

I have a LinkedIn profile. Send me an invitation to connect with you if you're into networking on LinkedIn.

I also Tweet every once in a while. Check out @marylandiplaw on Twitter, and follow me.

The deadline to submit your legal fiction short story to the Southwestern Law School legal fiction contest is March 15, 2012. SEAK is sponsoring another of its annual fiction writing contest for lawyers (and physicians) in conjunction with its Fiction Writing Conference for Physicians and Lawyers; entries due by August 1, 2012.

Court Dismisses Patent Complaint: No Plausible Claim of Indirect Infringement

Brian Wm. Higgins — Sat, 17 Dec 2011 07:53:25 -0500

Wright Mfg., Inc. v. The Toro Co., et al., slip op. (11:-cv-1373) (Md D. Ct., Dec, 13, 2011), J. Garbis

In Wright Mfg., Inc. v. The Toro Co., the U.S. District Court for the District of Maryland dismissed in part a complaint by Wright Manufacturing against competing lawn tractor companies, Toro and Exmark Manufacturing, saying that Frederick, Maryland-based Wright had not met the plausibility standard for pleading induced and contributory patent infringement. The court instructed Wright to follow the court's Local Rule 103.6, should it decide to submit an amended complaint against the Defendants.

Wright filed its complaint on May 20, 2011, alleging Defendants Toro and Exmark were engaged in the manufacture of lawn mowers and other equipment that infringes U.S. Patents 6,438,931 and 6,935,093. Defendants moved to dismiss under rule 12(b)(6) of the Federal Rule of Civil Procedure.

Pleading Standard in Maryland Federal Court

A 12(b)(6) motion to dismiss tests the legal sufficiency of a complaint, the Court said. A complaint need only contain “a short and plain statement of the claim showing that the pleader is entitled to relief, in order to give the defendant fair notice of what the . . . claim is and the grounds upon which it rests.” While allegations need not be exactingly specific, the Court noted, they “must be enough to raise a right to relief above the speculative level.”

In reviewing a 12(b)(6) motion, a court must assume that the facts presented by the plaintiff are true. This assumption, however, excludes “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements.” Consequently, in order to “survive a motion to dismiss, a complaint must contain sufficient factual matter” as to provide the court with enough plausible evidence to “draw the reasonable inference that the defendant is liable for the misconduct alleged.”

The U.S. Court of Appeals for the Fourth Circuit has held that a complaint will survive a
12(b)(6) motion when it states a plausible claim for relief. However, this determination is “a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.”

Pleading Standard for Direct Patent Infringement in Maryland Federal District Court

The Maryland Federal District Court looks at a complaint for compliance with Form 18 of the Federal Rules of Civil Procedure, which provides a guide for pleading, with sufficient plausibility, a claim for direct, literal patent infringement. Complaints that mirror the Form 18 format in patent cases are sufficient to survive a 12(b)(6) motion to dismiss. A Form 18 claim for direct patent infringement comprises five elements, but the plaintiff is not required to explicitly identify each element in its complaint. Nor is the plaintiff required to provide “notice” of infringement, and intent or knowledge of the infringement is not required to be plead.

In the instant case, the Court found that Wright's complaint specifically alleged all of the required Form 18 elements: jurisdiction, patent ownership, direct infringement, and a demand for injunction and/or damages. Although not particularly specific, the Court also found the allegations clearly identify the lawnmower models that allegedly directly infringed, all of which is adequate to establish a plausible basis for a claim for direct, literal infringement under § 271(a), the Court said.

With regard to the Doctrine of Equivalents, the Court noted an absence of either Federal Circuit precedent and "a fair preponderance of federal district court decisions," and so found Wright's complaint, following Form 18, sufficient to state a plausible claim for infringement by the doctrine of equivalents.

Pleading Standard for Indirect Infringement Patent Infringement in Maryland Federal District Court

To prove induced infringement, a plaintiff must prove direct infringement and that the infringer had knowledge of the existence of the infringed patent and acts of infringement. Global-Tech Appliances, Inc. v. SEB S.A., -- U.S. --, 131 S. Ct. 2060, 2068 (2011) (“We now hold that induced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement.”). Thus, inducement requires proof that "an inducer persuade[d] another to engage in conduct that the inducer knows is infringement.” The Court, therefore, concluded that a plaintiff must include factual allegations sufficient to create a plausible claim of intent and knowledge.

Wright’s intent and knowledge allegations, the Court said, were merely conclusory. It found that Wright alleged knowledge only through a broad statement that “Toro has known of [been aware of] [the patent] since at least 2008.” "More is required," said the Court. Wright merely provides “[t]hreadbare recitals of the elements of a cause of action” that are inadequate.

To prove contributory infringement, a plaintiff must prove that the defendant knew that the combination for which his component was especially designed was both patented and infringing. Thus, contributory infringement requires proof that the defendants (1) offered to sell within the United States or imported into the United States a component of the patented
machine; (2) for use in practicing a patented process, constituting a material part of the invention; (3) with knowledge that the invention was patented and that such use was
infringing.

Comparing those requirements against Wright's complaint, the Court found the complaint inadequate, noting that, while “the pleading standard [of the Federal Rules] do not require ‘detailed factual allegations,’ . . . it demands more than an unadorned, the-defendant-unlawfully-harmed-me accusation.” Wright's complaint must include, the Court said, at least some factually-supported allegations of knowledge in claims of contributory infringement. Wright provided highly generalized statements concluding that Toro and Exmark are “aiding and causing distributors and/or
dealers to sell and offer to sell mowers, including Grandstand [and Vantage] mowers, within the United States.” This recitation, the Court said, parrots the required elements of the statute without providing any factual setting.

Requirement for Amending Complaints in Maryland Federal District Court: Local Rule 103.6

In Maryland, amending a complaint is not as simple as in other federal districts. Rule 103.6 states that a party must:

(1) File a motion requesting leave to file an amended pleading (assuming the time period for amending has expired).

With the motion, the original of the proposed amended pleading must accompany the motion. The Court will review the sufficiency of the amended complaint before granting the motion. Generally, only newly added exhibits are to be attached to an amended pleading, however, a new party may be added. The party filing an amended pleading shall file and serve (1) a clean copy of the amended pleading and (2) a copy of the amended pleading in which stricken material has been lined through or enclosed in brackets and new material has been underlined or set forth in bold-faced type.

(2) Attempt to obtain consent from other counsel before filing the motion requesting leave to file an amended pleading. Counsel shall state in the motion for leave whether the consent of other counsel has been obtained.

"Madden NFL" Target of Bouchat Copyright Lawsuit

Brian Wm. Higgins — Wed, 07 Dec 2011 10:40:52 -0500

The National Football League (NFL) Properties, Inc. and Electronic Arts (EA), maker of, among other computer video games, "Madden NFL 11," were sued by Frederick Bouchat for allegedly infringing his copyright in his "Flying B" artwork (pictured at right). Filed in the U.S. District Court for the District of Maryland (No. 11-CV-02878, Oct. 7, 2011), Bouchat alleges in his complaint that the NFL licensed the infringing logo to EA and then EA reproduced and displayed it on "retro" uniforms worn by players depicted in its video game.

According to Bouchat, sometime in 1996 the Baltimore Ravens adopted a helmet and uniform design that included his copyrighted artwork. The NFL then licensed the infringing logo to EA in return for royalties. EA then depicted the infringing logo in the Madden NFL 11 game (see screenshot at right, from The Daily Record).

Madden NFL 11 is one of over 20 iterations of the widely popular "Madden NFL" video game, reportedly selling over 85 million copies since its debut in 1988.

Bouchat is seeking actual damages, profits attributed to the alleged infringement, copyright statutory damages, and a permanent injunction.

Howard J. Schulman of Shulman & Kaufman LLC (Baltimore) represents Bouchat in the lawsuit.

At the time of this posting, the NFL and EA had not filed their answers to Bouchat's complaint.

For an interesting history of Baltimore's professional football teams and the various iterations and uses of their logos, click here.

Other litigation involving the copyrighted subject matter of this lawsuit, see Bouchat v. Baltimore Ravens, Inc., 241 F.3d 350 (4th Cir. 2001), Bouchat v. Baltimore Ravens, Inc., 215 F. Supp. 2d 611 (D. Md. 2002), Bouchat v. Baltimore Ravens, Inc., 346 F.3d 514 (4th Cir. 2003), Bouchat v. Champion Products, Inc., et al., 327 F. Supp. 2d 537 (D. Md. 2003), Bouchat v. The Bon-Ton Dept. Stores, Inc. et al., 506 F.3d 315 (4th Cir. 2007).

AIA: Expanding "Prior User" Rights

Brian Wm. Higgins — Mon, 28 Nov 2011 06:11:38 -0500

Under current law, an accused patent infringer may offer a “prior user” defense when the patent in question is related to doing or conducting business (i.e., “business methods”) and the accused infringer used the invention but never filed a patent application for it. If the same invention is later patented by another person, the accused infringer may not be liable for infringement to the new patent holder, although all others may be. In passing the America Invents Act (AIA), Congress found that the prior user provisions of the earlier law were particularly important to high-tech businesses that prefer not to patent every process or method that is part of their commercial operations. When the new law becomes effective, the prior user defense may be asserted in limited situations against any patent, not just method patents.

According to the new law, 35 U.S.C. 273 (Defense to Infringement Based on Prior Commercial Use), the prior user defense may be raised by a defendant who reduced the subject matter of the patent to practice and commercially used the subject matter at least one year before the effective filing date of the patent or the date that the patentee publicly disclosed the invention and invoked the § 102(b) grace period, whichever is earlier.

The law defines a commercial use as either in connection with an internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use.

To prevail, the defendant would have to produce clear and convincing evidence of his or her activities that demonstrate the invention was reduced to practice and was commercially used, which is a relatively high burden and would likely require corroborating evidence, particularly in the case of non-documented evidence of human activities.

Subject matter for which commercial marketing or use is subject to a premarketing
regulatory review period (e.g., pharmaceuticals) during which the safety or efficacy of the subject matter is established, including during any patent term extension period, shall be deemed to be commercially used for purposes of the new law during such regulatory
review period.

A use of subject matter by a nonprofit research laboratory or other nonprofit entity,
such as a university or hospital, for which the public is the intended beneficiary, shall be deemed to be a commercial use for purposes of the new law, except that a prior user defense may be asserted only for continued and noncommercial use by and in the laboratory or other nonprofit entity.

The prior user defense cannot be asserted if the subject matter was derived from the patent holder or persons in privity with the patent holder. Prior user rights may not be assigned, licensed, or transferred to another, except as part of an acquisition of an entire business enterprise (e.g., an asset acquisition, merger, etc.).

Congress stated that the change to the existing law was a “narrow expansion of prior user rights [that] balances the interests of patent holders, including universities, against the legitimate concerns of businesses that want to avoid infringement suits relating to processes that they developed and used prior to another party acquiring related patents.” Notably, the use of the term "processes" in describing the new law appears to relates back to the old law that was limited to method patents.

Maryland Innovator of the Year Announced

Brian Wm. Higgins — Wed, 23 Nov 2011 11:40:55 -0500

The top 2011 Maryland Innovator of the Year award was presented to Jeff Walker of Innovative Mobility Solutions LLC during a presentation ceremony held at Baltimore's American Visionary Art Museum in October. Mr. Walker was recognized as the top innovator among 24 award honorees in recognition of his patent pending motor vehicle device for use by those with physical disabilities.

The award is given annually by The Daily Record. Daily Record Publisher Suzanne Fischer-Huettner, Daily Record Executive Editor Tom Linthicum, and Joe Buchholz, enterprise sales manager of Comcast Business Class, handed out the awards.

The 24 honorees were selected from dozens of nominees by a panel of volunteer judges, including myself and last year's top winner, Yuying Shu, catalyst scientist at Columbia, Maryland's, W.R. Grace.

AIA: Redefining What is "Prior Art"

Brian Wm. Higgins — Mon, 31 Oct 2011 16:39:49 -0500

Under the America Invents Act (AIA), any evidence showing that an invention was "in public use, on sale, or otherwise available to the public" can be used as prior art, even if that evidence relates to events that take place outside the U.S. Thus, companies and inventors who publicly use or offer their inventions for sale outside the U.S. could be barred from obtaining patent protection for those inventions in the U.S., depending on the circumstances. That change in the patent law is intended to harmonizes U.S. law with the patent laws of other countries. As discussed below, the AIA make many other changes to the definition of "prior art."

The AIA also abolishes the 1-year statutory bar under 35 U.S.C. 102(b), making any prior disclosure of an invention, with few exeptions, eligible as prior art. The new law excludes the inventor’s own disclosure of his invention and any subsequent disclosures of the inventor's own invention as prior art. While that may seem to encourage early disclosure by the inventor, any public disclosure of an invention could affect an inventor's ability to obtain protection outside the U.S., since many other countries still require absolute novelty and do not grant a grace period for public disclosure, even by the inventor.

Under the AIA, it is not entirely clear whether the on-sale bar is included in the one year grace period. A colloquy on the floor of the U.S. House of Representatives during debate over the AIA indicates that Congress intended that the grace period also include "on sale" activity.

The AIA expands the prior art common ownership exception under 35 U.S.C. 103(c). Under the current law, a prior published patent application would not be eligible prior art to show a claimed invention is obvious "where the subject matter [of the published application] and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person." The new law, however, would remove any published patent application or patent as prior art if "the subject matter disclosed [in the published application or patent] and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person." Under those circumstances, the earlier published application, if co-owned, will not be prior art under both an anticipation and obviousness inquiry.

The AIA also prohibits the patenting of any tax preparation invention by deeming those inventions indistinguishable from the prior art. This provision is already effective and applies to all pending U.S. patent applications. The provision excludes, however, computer programs or systems for preparing tax. As such, it may be possible to formulate a tax preparation invention as a computer program or system to avoid the statutory prohibition.

AIA: Post-Grant Review Intended to Curb Litigation

Brian Wm. Higgins — Sat, 29 Oct 2011 15:32:39 -0500

Nearly 30 years ago, Congress created the administrative reexamination process. It was intended to be used by the Patent Office to review the validity of already-issued patents on the request of either the patent holder or a third party challenger. It was expected that reexamination would serve as an effective and efficient alternative to often costly and protracted district court litigation.

The initial reexamination statute had several limitations that later proved to make it a less viable alternative to litigation for evaluating patent validity than Congress intended, and changes to the system did little to put a dent in patent enforcement litigation. Indeed, the reexamination process became another litigation strategy by accused infringers.

Whether the new post-grant review procedure will in fact reduce patent litigation will be measured over time. But what is clear is that the filing or institution of a post-grant review proceeding does not limit a patent owner’s ability to commence litigation to enforce his or her patent rights.

AIA Goal: Reduce Patent Litigation

Brian Wm. Higgins — Sun, 16 Oct 2011 04:59:04 -0500

Designed to limit unnecessary and counterproductive litigation costs, the America Invents Act (AIA) was signed into law by President Obama on September 6, 2011, to the praises of many in industry. The law changes how and where patent lawsuits can be filed, eliminates certain defenses to patent infringement allegations, and effectively eliminates certain private rights of action. Even now, parties whose patent enforcement cases are pending in federal courts around the country or are about to be filed, are having to step back and rethink their litigation strategies. One of the goals of the AIA is to reduce the amount of litigation in the United States.

Reducing Litigation Through Implementation of Post-Grant Review Proceedings

Nearly 30 years ago, Congress created the administrative ‘‘reexamination’’ process. It was intended to be used by the Patent Office to review the validity of already-issued patents upon the request of either the patent holder or a third party challenger. It was expected that reexamination would serve as an effective and efficient alternative to often costly and protracted district court litigation. But the initial reexamination statute had several limitations that later proved to make it a less viable alternative to litigation for evaluating patent validity than Congress intended, and changes to the system did little to put a dent in patent enforcement litigation. Indeed, the reexamination process became another litigation strategy used by accused infringers, often used as a delay tactic.

The AIA amends existing reexamination procedures and establishes a new post-grant review procedure. The new procedures are expected to change the standard for instituting reexaminations and reviews, time limits, burdens of proof, and how discovery is taken. Whether the new post-grant review procedure will in fact reduce patent litigation will be measured over time. But what is clear is that the filing or institution of a post-grant review proceeding does not limit a patent owner’s ability to commence litigation to enforce his or her patent rights.

App Provides Maryland Lawyers With New Tools

Brian Wm. Higgins — Thu, 06 Oct 2011 15:23:03 -0500

The Maryland State Bar Association's (MSBA) 20,000 attorneys and judges now have a new tool for accessing rules of evidence, rules of professional conduct, and codes of civility right on their iPhone, iPad, Android, and Blackberry device. The MSBA app also allows Maryland practitioners access to Attorney Trust Accounts rules and provides a link to "Ideals of Professionalism." Rules are conveniently grouped by chapters, rule number, and title, and search and bookmark features allow easy repeat access to favorite content.

PTO Implements America Invents Act With Prioritized Examination

Brian Wm. Higgins — Wed, 05 Oct 2011 14:39:49 -0500

The America Invents Act includes provisions for prioritized patent application examination that emulate the requirements of the Patent Office's "Track I" final rule. 76 FR 185 (September 23, 2011). Under the system, a patent applicant pays an extra $4,800 fee ($2,400 for small entities) to have his or her patent application undergo accelerated examination.

To qualify for the procedure, the application must have no more than 30 total claims and 4 independent claims.

Only the first 10,000 patent applications (per fiscal year) that pay the fee and meet the requirements will be accepted into the system.

According to the Patent Office, unlike the prior accelerated examination system (which continues to exist as well), a prior art search and an examination support document (ESD) are not required to be submitted with the application. Those two elements of the prior accelerated examination system were disliked by many patent practitioners because of the belief the search and ESD could create estoppels and provide fodder for inequitable conduct arguments by third parties during litigation.

Patent Reform Ushers in Higher Patent Fees

Brian Wm. Higgins — Thu, 22 Sep 2011 13:47:53 -0500

Yesterday, the U.S. Patent & Trademark Office (PTO) published a revised fee schedule, which reflects a 15% increase in many fees required to be paid by users of PTO patent-related services. On and after September 26, 2011, the basic filing fee for a utility patent application, for example, will increase from $330 to $380. Mandated by Section 11(i) of the America Invents Act of 2011 (AIA; H.R. 1249; Public Law 112-29), the so-called "surcharge" fees are intended to make the PTO more "efficient and productive" by allowing it to set its own fees and use all fees collected for agency operating purposes. For more on the PTO's fee changes, see the public announcement here.

By Wide Margin, Senate Passes Patent Reform Legislation

Brian Wm. Higgins — Thu, 08 Sep 2011 20:01:54 -0500

The last major revision of the U.S. patent laws was in 1952. Now, after several years of trying to get patent reform measures through Congress, the Senate today passed H.R. 1249, America Invents Act, which will make sweeping changes to how patents are filed, reviewed, granted, and litigated. The Democratic-held Senate voted 89-9 in passing the bill, which originated in the House of Representatives earlier this year, where it passed by a bipartisan vote of 304-117. Both Maryland Senators--Cardin and Mikulski--voted in favor of passage today. President Obama is expected to sign the new legislation into law.

Maryland Innovator of the Year Awardees

Brian Wm. Higgins — Fri, 19 Aug 2011 10:27:23 -0500

The Maryland Daily Record announced today its 2011 Innovator of the Year Award winners. The top winner will be revealed at an awards ceremony to be held October 26, 2011, at the American Visionary Art Museum in Baltimore.

Senate Inches Closer to Considering Patent Bill

Brian Wm. Higgins — Thu, 04 Aug 2011 15:37:50 -0500

On August 2, 2011, Harry Reid, along with several other senators, moved to bring to a close in the Senate any debate on the motion to proceed to calendar H.R. 1249, the previously passed "Leahy-Smith America Invents Act" (originally the Patent Reform Act when its companion bill started out in the Senate). According to the Congressional Record, on September 6, 2011, the Senate will proceed to vote on the motion to invoke cloture on the motion to proceed to Calendar No. 87, H.R. 1249.

A cloture motion cannot be voted until two days after it is proposed, and must be by way of a petition signed by 16 senators. In the Reid motion, the following Democratic senators signed the motion: Harry Reid (D-NV), Patrick J. Leahy (D-VT), Thomas R. Carper (D-DE), Joseph I. Lieberman (I-CT), Richard Blumenthal (D-CT), Charles E. Schumer (D-NY), Amy Klobuchar (D-MN), Robert Menendez (D-NJ), Jeanne Shaheen (D-NH), John F. Kerry (D-MA), Mark Udall (D-CO), Mark R. Warner (D-VA), Ben Nelson (D-NE), Jeff Bingaman (D-NM), Max Baucus (D-MT), Mark Begich (D-AK), Robert P. Casey, Jr. (D-PA).

Until H.R. 1249 is calendared, floor debate cannot occur on the merits of the patent reform bill previously passed by the House on June 23, 2011, by a vote of 304 Ayes, 117 Nays. Patent reform legislation had previously received overwhelming support in the Senate, when Senators passed their own patent reform bill, S. 23, on March 8, 2011. But that was before the acrimony surrounding the debt ceiling debate engulfed Congress the last few weeks.

Maryland's Representatives Vote For America Invents Act

Brian Wm. Higgins — Tue, 28 Jun 2011 12:26:42 -0500

When the U.S. House of Representatives voted for passage of H.R. 1249, the Leahy-Smith America Invents Act, on June 23, 2011, 304 voted in favor of passage ("aye"), while 117 said no. Below is a list of Maryland's Representatives in Congress and how they voted for the bill:

Andy Harris [R, Dist. 1]: Aye
C.A. Dutch Ruppersberger [D, Dist. 2] : Aye
John Sarbanes [D, Dist. 3]: Aye
Donna Edwards [D, Dist. 4]: No
Steny Hoyer [D, Dist. 5]: Aye
Roscoe Bartlett [R, Dist. 6]: No
Elijah Cummings [D, Dist. 7]: Aye
Christopher Van Hollen [D, Dist. 8]: Aye

On his website, Rep. Lamar Smith of Texas, who introduced H.R. 1249, indicated that the bill had been held up while the issue of the diversion of fees generated by the U.S. Patent and Trademark Office (PTO) was resolved. He stated that since 1992, nearly $1 billion had been diverted from the PTO by Congress and used for other purposes, this while the average wait time for a patent to issue from the PTO had increased to three years from the filing date of a patent application. The Manager’s Amendment to H.R. 1249 ends fee diversion by creating a fund for fees collected by the PTO. The money in the fund will be reserved for and used by the PTO. According to Smith, this will allow for congressional oversight, while making sure that fees collected by the PTO can no longer be diverted. The intent, of course, is that more patent examiners can be hired, and more modern systems can be aquired to help reduce the three-year pendency of patent applications in the PTO.