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Conference — Worldwide Patent Statistics for Forecasting Technology-Related Activities

October 19, 2011 by · Comments Off
Filed under: Business, Inventor & Entrepreneur Updates, Patent Articles 

The USPTO will host the Patent Statistics for Decision Makers on November 16 & 17 in Alexandria, VA.

Patent data is increasingly used in sophisticated analyses, helping experts to investigate innovation, the advancement of science, and technology-related activities. Patent information is also employed by industry to do competitive analysis and to help plan R&D and technology strategies and in government to gather important information about the patent system and its performance. Advances in computing power and the availability of patent databases have expanded the possibilities for conducting statistical analysis and research, while the demand for patent statistics is rising as economic performance is increasingly tied to technological innovation.

The “Patent Statistics for Decision Makers 2011” Conference will explore advances in the analysis of patent information in the context of the changing legal, economic, competitive and technological landscapes. The Conference aims to educate and share best practices by surveying the breadth of thinking – while exploring the frontiers of our knowledge – on issues relevant to using patent information by industry, academic, and government decision makers, such as:

1. Next generation of patent-related indicators, such as indicators of patent quality;

2. Patent valuation and Intellectual Property (IP) taxation regimes;

3. Patenting strategies and patents’ use in knowledge networks and markets;

4. Business dynamics and technology-based entrepreneurship;

5. Competitive analysis (including patent mapping and visualization);

6. Patenting in growing technical fields (such as clean technologies);

7. Planning R&D investments and measuring R&D performance;

8. Understanding the operation of the patent system and formulating IP policy reform;

9. Sustaining patent office operations in a fee-based system.

Statistical analysis of patent data commonly aids decision makers in assessing the opportunities available to them, and provides key insights into the risks and challenges associated with their decision options.

On November 15, 2011, registrants will also have an opportunity to learn how to use the EPO’s PATSTAT statistical system.

October 27 & 28 – Free Inventors Conference Presented by USPTO

October 19, 2011 by · Comments Off
Filed under: Business, Inventor & Entrepreneur Updates, Patent Articles 

As part of a series of programs that complement the Great American Hall of Wonders exhibition, The United States Patent and Trademark Office (USPTO) and the Smithsonian American Art Museum are sponsoring a FREE Inventors Symposium, Thursday, October 27, 2011 and Friday, October 28, 2011.  Registration is available at this link — http://events.invent.org/invsym/.  This unique day and a half long event in the museum’s  Nan Tucker McEvoy Auditorium is specially designed for independent inventors and small business entrepreneurs.

On Thursday, the first day of the symposium, the focus will be on the recently enacted America Invents Act and its impact on independent inventors and small businesses.   Senior officials of the USPTO will also appear throughout the day and provide important information about patents, trademarks and intellectual property protection.  The day’s program will conclude with a networking reception.

On Friday, October 28, 2011, a number of experts will address how inventors and entrepreneurs can take their ideas and innovations to the next level. Topics to be covered include manufacturing, marketing, and licensing– to start and grow a business.  In the afternoon, the program will feature government officials discussing programs that are designed to assist and support independent inventors and small business entrepreneurs.

The day will conclude with a docent guided tour of the Great American Hall of Wonders exhibition.

While the Inventors Symposium is a FREE event, space is limited and registration is strongly encouraged!

Ms. Walters is a USPTO registered patent attorney (#45,197).  This blog post is not meant to provide legal advice, and if you if you don’t have time to attend, but need help answering a patent question, then please contact Bambi Walters at bambi@bfwpc.com.

Native American Artists and Craftsman: GAO Discusses Violations and Lack of US Enforcement

Every American supposedly enjoys Constitutional rights to protect his or her creative works and inventions.  However, the recent report by the General Accountability Office (GAO) suggests that Native American artists might not have those same rights. Or maybe, to make what is obvious more palatable, I should just describe that there are “challenges” for Native American’s to enjoy these rights as well as other alleged Intellectual Property protection provided to Native Americans.

In 1935 the Indian Arts and Crafts Act was enacted, establishing the Indian Arts and Crafts Board as an entity within the Department of the Interior. A priority of the Board is to implement and enforce the act’s provisions to prevent misrepresentation of unauthentic goods as genuine Indian arts and crafts. As the market for Indian arts and crafts grew and the problem of misrepresentation persisted, the Act was amended to, among other things, enhance the penalty provisions and strengthen enforcement. GAO was asked to examine (1) what information exists regarding the size of the market and the extent to which items are misrepresented and (2) actions that have been taken to curtail the misrepresentation of Indian arts and crafts and what challenges, if any, exist. In addition, this report provides information on some options available to protect Indian traditional knowledge and cultural expressions. GAO analyzed documents and interviewed international, federal, state, and local officials about the arts and crafts market and enforcement of the act. GAO is making no recommendations in this report. In commenting on a draft of this report, the Departments of Commerce and Homeland Security generally agreed with the contents of the report. The Departments of Commerce, Homeland Security, the Interior, and Justice also provided technical comments which were incorporated into the report as appropriate.

The size of the Indian arts and crafts market and extent of misrepresentation are unknown because existing estimates are outdated, limited in scope, or anecdotal. Also, there are no national data sources containing the information necessary to make reliable estimates. For example, the most often cited national estimates about the size of the market and the extent of misrepresentation come from a 1985 Department of Commerce study. GAO found that not only is this study outdated, but the estimates included in the study are unreliable because they were based on anecdotal information and not systematically collected data. No national database specifically tracks Indian arts and crafts sales or misrepresentation, and GAO found that no other national databases contain information specific or comprehensive enough to be used for developing reliable estimates. Moreover, GAO determined that to conduct a study that could accurately estimate the size of the Indian arts and crafts market and the extent of misrepresentation would be a complex and costly undertaking and may not produce reliable estimates. Federal and state agencies have relied largely on educational efforts rather than law enforcement actions to curtail misrepresentation of Indian arts and crafts, but these efforts are hampered by a number of challenges, including ignorance of the law and competing law enforcement priorities. From fiscal year 2006 to fiscal year 2010, the Indian Arts and Crafts Board received 649 complaints of alleged violations of the Indian Arts and Crafts Act. The Board determined that 150 of these complaints, or 23 percent, involved an apparent violation of the law, and it referred 117 of the complaints for further investigation by law enforcement officers, but no cases were filed in federal court as a result. According to the Board and law enforcement officials, support from law enforcement personnel and others to prosecute these cases has been sporadic because of higher law enforcement priorities. Therefore, the Board has relied primarily on educational efforts to curtail misrepresentation. For example, in response to complaints, the Board sent educational and warning letters to about 45 percent of alleged violators, and it produced educational brochures and participated in other educational efforts for artists, sellers, consumers, and law enforcement officers. GAO identified one arts organization that has successfully used civil actions to curtail misrepresentation, but this approach can be costly and time-consuming. U.S. federal and state laws protecting intellectual property do not explicitly include Indian traditional knowledge and cultural expressions–such as ceremonial dances or processes for weaving baskets–and therefore provide little legal protection for them. Some international frameworks offer protection for traditional knowledge and cultural expressions, but the federal government has not yet undertaken steps to implement these frameworks in the United States. Other countries, like Panama and New Zealand, have taken actions–which offer options for consideration–to protect the intellectual property of indigenous groups.

USPTO Extended Missing Parts Pilot Program: Lay-A-Way Option Available to December 7, 2011

January 2, 2011 by · Comments Off
Filed under: Business, Inventor & Entrepreneur Updates, Patent Articles 

Note:  this article is not intended to provide any legal advice.

On December 8, 2010, the USPTO launched an “Extended Missing Parts” Pilot Program that permits applicants to delay some fees and some costs associated with patent formalities for another twelve months for original U.S. non-provisional applications that directly claim priority to a U.S. provisional application filed within the previous twelve months. To participate, an applicant’s patent application must include at least the following:

  • Basic USPTO filing fee and the Extended Missing Parts surcharge fee.  For small entities, the electronic filing fee is $82 (current as of December 8, 2010), and the surcharge fees are $130 for large entities and $65 for small entities.
  • A Certification and Request For Extended Missing Parts Pilot Program. See, http://www.uspto.gov/forms/sb0421.pdf.
  • Abstract in compliance with 37 CFR 1.72(b).
  • Specification pursuant to 35 U.S.C. 112, 1st paragraph.
  • At least one claim pursuant to 35 U.S.C. 112, 2nd paragraph.
  • At least one drawing that shows every feature of the invention specified in the claim(s).
  • Executed Oath/Declaration in compliance with 37 CFR 1.63.
  • English language translation and statement in compliance with 37 CFR 1.52(d) (if required).
  • Sequence listing in compliance with 37 CFR 1.821-1.825 (if applicable).

The Extended Missing Parts program enables an applicant to delay payment of some of the USPTO fees, and more importantly, for independent inventors, to potentially delay increased patent practitioner fees for detailed preparation of a nonprovisional application patent.   Many independent inventors need more than 12 months to raise capital, possibly develop a prototype or manufacture products to test in the stream of commerce, and/or to gain outside interest.  On a fundamental level, the more time that an inventrapreneur (inventor/entrepreneur) has, the more information the inventrapreneur has to identify if the invention might be commercially successful.  And, if the invention is in the development stages, the patent application that is filed earlier in time often doesn’t fully protect the earlier versions of the invention and often requires later filed continuation applications and/or continuation in part applications.   For many of these independent inventors, money is scarce and having additional time seems to enable an independent inventor to have more information about making an investment decision to pay to pursue an earlier filed patent application in the Extended Missing Parts program, or perhaps, to file a later Preliminary Amendment, a Continuation Application, and/or a Continuation-In-Part application that clarifies the earlier filed patent application and/or that includes potential new matter. Independent inventors who need to take “short cuts” might consider the Extended Missing Parts program for at least the following possible reductions in costs:

  • At the time of filing the Extended Missing Parts application, use informal figures.  This potentially delays payment to a draftsman to prepare formal figures (estimated at about $100+ per sheet), and instead opt to amend the application at 24 months with formal figures.
  • At the time of filing the Extended Missing Parts application, instruct a patent practitioner to not develop or write out all claims.  That is, the Extended Missing Parts program enables an applicant to file one claim ‒ the “omnibus claim” ‒ a claim to everything that is disclosed and that is patentable in the application.

While many patent practitioners may agree to delay preparation of formal figures, some patent practitioners may be hesitant to file an omnibus claim without informed consent of the applicant, and even then, the risks of filing an application under the Extended Missing Parts program might outweigh the benefits.  Early development of a claim set allows the applicant, the inventor(s) (who may be different from the applicant if the invention has been assigned), the patent practitioner and the USPTO (at the time of filing) to identify the potential targeted patentable subject matter.  More importantly, the claim set enables the patent practitioner and applicant to identify the inventors for the claimed patentable subject matter.  If there is an omnibus claim, then inventorship may be extremely difficult to determine.  On the other hand, most independent inventors as well as other small entities, tend to only have one or two potential inventors, so this may not be an issue for independent inventors who file to protect “closely held” inventions.  Since patentable subject matter is not targeted with filing an omnibus claim, any participating patent practitioner may want to discuss inventorship and consider naming all potential inventors at the time of filing the patent application in the Extended Missing Parts program.  Inventorship can then later be considered for amendment when the claims are amended which is consistent with current patent practice.

For more information about Extended Missing Parts Pilot Program, please see some of the questions and answers below.  And, hopefully stay tuned for more information from the USPTO’s IAC in the next few months.

Question: Are foreign applications eligible?
Answer
:
PCT applications and U.S. national stage applications are not eligible for the program.  Similarly, continuation and divisional applications are not eligible since these applications do not claim priority to a provisional application.

Question: How does it work?
Answer
:
If a qualified application is filed with a Certification and Request, the USPTO issues a Notice to File Missing Parts that sets a non-extendable 12 month deadline for paying the search fee, the examination fee, any excess claim fees, and the missing parts surcharge. Once those fees are paid, the application is placed in the examination queue based on its actual filing date. Thus, participating in the program should not negatively impact examination (unless the application might have been taken up for examination within those first 12 months). If those fees are not paid by the end of the 12 month period, the application is abandoned. The application is published in accordance with normal 18 month publication procedures, so no non-publication request can be filed.

Question: What happens if my application does not qualify?
Answer
:
If an unqualified application is filed with a Certification and Request, the USPTO will issue a Notice to File Missing Parts that sets only the standard extendable 2 month deadline for satisfying all requirements.

Question: What are the costs?
Answer
:
In addition to the missing parts surcharge, there are other costs to participating in this program:

  • Administrative costs of monitoring new deadlines to complete filing formalities.  One for the basic filing fee and executed inventors’ declaration and one for the search and examination fees as well as any Preliminary Amendment with formal figures and a more detailed claim set.
  • Potential USPTO patent fee increases.  In accordance with standard USPTO practice, the fees are paid at their current rate at the time of payment, rather than at the rate in effect at the time the Notice to File Missing Parts was issued. Thus, if the search and examination fees go up during the 12 month period, the higher fees will have to be paid.
  • Patent Term Adjustment consequences.  The Federal Register notice makes clear that applicants will be charged with “delay” under the Patent Term Adjustment (PTA) provisions, for paying the fees more than three months after a Notice to File Missing Parts is issued. For patents directed to pharmaceutical or biotechnology inventions, the costs of this potential loss of additional patent term might outweigh the benefits of the program.

Question: How long is the Extended Missing Parts program available?
Answer
:
The effective date of the Pilot Program is December 8, 2010, and it is set to run for one year, until December 7, 2011. The USPTO intends to use this time period to assess the Extended Missing Parts program and determine if it should be continued and/or modified.

*Note:  This article is not intended to provide legal advice.

Virginia Imagination Made Real EXPO for Innovators

August 31, 2010 by · Comments Off
Filed under: Business, Copyright Articles, Inventor & Entrepreneur Updates, Press release 

The Virginia Inventors Forum, Inc. (VIF) announces the “Imagination Made Real Expo 2010” to be held on October 23, 2010 at the Historic Triangle Community Center located at 312 Waller Mill Road in Williamsburg, VA.

The “Imagination Made Real Expo 2010” will provide all artists, students, inventors, entrepreneurs, small businesses, and creators of innovative work with an incredible opportunity to showcase their inventions, ideas and creative works while meeting with other inventors, entrepreneurs and imagineers.  VIF is excited to feature for the first time…representatives from the United States Patent & Trademark Office (USPTO), US Copyright Office, prototype engineers, marketers, and others who can help bring ideas to life will also be attending this event.

Highlights from the event program include:  special presentations from the Imagination Made Real Panel, featuring Catesby Jones (Peace Frogs), Gary Warren (IPX Partners) and M’Jestie (Dream Little Dreamer), and representatives from the USPTO and US Copyright Office; opportunities for one-on-one consultations with these representatives; and an exhibit hall full of innovative products and services.

For more information about this event or to register, please visit www.virginiainventors.org.  Limited exhibitor space/opportunities and sponsorships are still available.  Please contact VIFexpo@gmail.com for more information.

And, if you have a Facebook account, VIF would appreciate you logging in and joining their fan page.  Check it out http://www.facebook.com/home.php?#!/pages/Williamsburg-VA/Virginia-Inventors-Forum/138770999481162?ref=ts&__a=17&ajaxpipe=1