Intellectual Property News Updates

"Pending Patent" Legislation Making it Tougher for Small Companies:

In April of 2007 significant patent reform bills were introduced in the U.S. Senate and the U.S. House that would have tremendous impact on small companies with that rely on patents and individual inventors. Currently in the U.S. we have a first-to-invent patent system to determine who is entitled to an invention when more than one inventor claims patent rights. Under law, the first person to actually invent is entitled to patent rights, regardless of whether or not he was the first to file an application. This helps small companies and individual inventors who may not have early stage funding available to large companies. Proposed changes would award patent rights on a first-to-file basis meaning inventors have to commit to filing patents sooner in order to preserve their rights.

Another provision of the law creates certain "post grant review" procedures where patents could be challenged for a 9 month period after they are granted, and in certain other circumstances.

New Accelerated Patent Examination Process:

Normally patents take 18 months to 4 years to issue after a patent application is filed. In September 2006 the United States Patent and Trademark Office (USPTO) began an "accelerated patent examination program" offering inventors an opportunity to obtain a commitment that their patents would be examined by the USPTO and a decision would be made in 12 months. (It can take several years otherwise.) In exchange, inventors and their attorneys are required to submit extensive background research on the novelty of their invention (called a "prior art" search). Attorneys have generally avoided filing under the accelerated examination process out of concern that it creates greater legal exposure for their clients. On August 2006, the first "accelerated" patent issued. It is for a printer ink gauge, and was awarded to Brother, Inc.

Debating the Fate of Patent Trolls:

As a patent reform initiative, on June 15, 2006, Congress held hearings to figure out whether legislative action should be taken to stop the so called "patent troll." Expert witnesses (mostly patent holders and patent attorneys) included Ed Reines (Weil Gotshal), Dean Kamen (Inventor), Paul Misener (Amazon.com), Chuck Fish (Time Warner). One witness defined a patent troll as a an evil being or entity which:

• Has no significant assets except patents
• Produces no products
• Has attorneys as its most important employees; and
• Acquires patents, but does not invent technology itself.
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Cisco Systems, Inc. plans to sue Apple Inc.

Cisco Systems, Inc. plans to sue Apple Inc. in federal court over Apple's use of Cisco's registered iPhone trademark for its new handheld device. Cisco has owned the trademark on the name "iPhone" since 2000. It aquired the mark when it purchased a company InfoGear Technology Corp., which originally registered the name.

Intellectual Property Protection Act of 2007

The proposed Intellectual Property Protection Act of 2007, strongly supported by the movie and music industries, would represent a dramatic rewrite of copyright law. You can find the text of this Act here.