Tag Archive: intellectual_property

Patent Upending: What Small Businesses Need to Know About Recent Patent Law Changes

Patent Upending: What Small Businesses Need to Know About Recent Patent Law Changes
By Sherron Lumley.

Vast changes to U.S. patent law—the most sweeping since 1952—are rolling into effect through 2013, and for small business owners and inventors with patents, it’s time to get in the know. The U.S. Patent and Trademark Office is working under a new law, called the America Invents Act of 2011 (AIA). It was signed into law on September 16, 2011, with some elements taking effect immediately and others being phased in over an 18-month period.
PQ_PatentUpending.jpgGet that patent filed

John Boyd is a patent attorney in New York and he also holds five patents himself that he sold to Apple in 2010. Historically, the first-to-invent system relied on various methods to prove the date of the invention. “This is no longer the case,” says Boyd, a partner at Rimon Law PC in New York. “Now it’s whoever files first, and this harmonizes us with international law,” he says.

Indeed, getting the U.S. in line with the times was a key motivator behind the patent law reform, seen by many technology firms as long overdue. Supporters of the new law included the likes of 3M, Apple, Dell, eBay, Facebook, General Electric, Google, IBM and the Small Business & Entrepreneurship Council representing more than 100,000 members.

“There’s been a lot of concern in the small business world about the changes to patent law,” says Boyd. As an inventor and an attorney, he is not only interested in the current law changes, but can see the pros and cons clearly from different perspectives.

The core AIA change to patent law is to do away with the old system that gave preference to first-to-invent dates and adopt the international standard of first-to-file. This means for all patent applications having a filing date on or after March 16, 2013, the new patent law takes effect and the first person or entity to file will be granted the patent regardless of who can prove they invented it first.
What’s to like in the new law for small businesses

Judith Szepesi has been a patent attorney for 15 years and is a partner at Blakely Sokoloff Taylor & Zafman LLP in Sunnyvale, Calif., in the heart of Silicon Valley. She works primarily with start-ups and small businesses and focuses on intellectual property protection in the software, hardware, security, and telecommunications industries. And for fun, “I do write the occasional bicycle seat, manual toy, or other mechanical device patent,” she notes.

Szepesi follows patent law carefully for her clients large and small, and points to one piece of good news for small businesses. The AIA has added a micro-entity status for very small inventors with no more than four patents (not including those assigned to an employer) and with gross income of less than triple the national median household income. Although a 15 percent patent fee increase went into effect with the new law on September 16, 2011, Szepesi says a file fee reduction of 75 percent is on the way for micro-entities, pending further definition by the fee setting authority of the U.S. Patent and Trade Office.

One part of the AIA law that has already gone into effect—which, according to Szepesi, can be an key advantage to small inventors—is that the Patent Office now permits virtual marking of products. “Previously, whenever a new patent was issued or a patent expired you would need to change your packaging to reflect the updated patent coverage,” she explains. “Under virtual marking, the product can be marked with a URL (such as the company’s website) and the company can simply update the website when patent coverage changes.” This can be a big plus for a small manufacturing company, as they would no longer have to spend money reworking or buying all new dies when their patent coverage changes.
Potential concerns

Some in the patent industry, however, worry that the impact of this patent reform might weaken the rights of patentees and, as a result, patents owned by startup companies, research institutions, and solo inventors might be easily encroached upon by large corporations. Alexander Poltorak, CEO of General Patent Corporation and founder of the American Innovators for Patent Reform, suggests small inventors and small business owners have their patent attorneys regularly review their current inventions to determine which will require patent protection, and then file a provisional application as soon as possible under the new first-to-file law. And if a small business does suspect a patent infringement Poltorak says it’s imperative to hire a good patent attorney who is experienced in litigation.
Additional links from the U.S. Patent and Trademark Office

AIA timeline and effective dates

Independent Inventors Newsletter

Patent Forms (web-file)

Inventor Resources

Scam prevention

For more information regarding specific patent law changes and potential impacts to your business, you should consult an experienced patent attorney.

Protecting Your Intellectual Property: Why Small Business Owners Should Care

The theft of intellectual property (IP) is estimated to cost U.S. businesses (small, mid-size and large) up to $250 billion a year due to stolen ideas and lost revenue. The unlawful use of a business idea, a competitor using a similar logo, copied packaging or the disclosure of a secret recipe to the public are events that can cause hardships for a business. In fact, the U.S. Patent and Trademark Office (USPTO) created a dedicated website to help small businesses counter intellectual property threats and to inform the public on the benefits of a strong IP protection.

As you start considering how to protect your company’s intellectual property, here’s a broad overview of the different types of protection available:

Trademarks are used to protect words and symbols that represent your company or brand. You can either officially register your trademark with the USPTO or eventually qualify for common-law trademark rights if you use your trademark for business purposes consistently and continuously.

Copyrights are designed to give writers, artists and musicians, or companies that house this kind of intellectual capital, exclusive rights to control when and how their work is reproduced and distributed.

Patents are used to exclude others from making, using, selling inventions or offering to sell them. The idea is to prevent others from using the invention or claiming it as their own.

Pull Quote.pngIn addition to protecting your intellectual property, you may be able to derive additional business value from it. You can start by taking an inventory of what undiscovered IP you may have in your company. Intellectual property may be obvious, like software or a unique invention. However, the following may also be intellectual property: business models, customer data and employee expertise and software code are also intellectual property. According to Inc., the following are some examples of ways to capitalize on intellectual property:

If you have a great brand, you can license your name or logo to other companies for co-branding.
If your business is data or research heavy, you may be able to repackage customer, market and industry information for sale to other companies or to raise your profile as an industry leader.
If you have a homegrown product that has more than one use, you can license it to a wide variety of unrelated industries.

You wouldn’t think of taping your business plan to the front window of your business, or leaving your inventory on the front curb. Why would you leave your IP exposed, vulnerable and free for the taking? Take steps today to protect your small business.