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America Invents Act: Patent Overhaul Becomes Law
The United States Senate voted 89-9 in September to pass legislation to make sweeping changes to the U.S. patent system, culminating a six-year effort on patent reform. President Obama quickly signed the bill into law on September 16th.
The legislation fundamentally alters how inventors and companies are awarded patents. Most importantly, the legislation converts the U.S. to a "first to file" system effective September 16, 2013. The first to file system awards a patent to the first person to file a patent application in the case of conflicting patent applications, while the prior "first to invent" system awarded the patent to the first person to invent.
Proponents say the changes bring the U.S. in line with European and Asian countries, which currently award patents on a "first to file" basis. They say it will eliminate costly legal disputes over who invented something first that stem from the current "first to invent" system. Some small businesses and inventors opposed the change, saying individual inventors will be disadvantaged because they don't always have the financial and legal resources to fully develop their inventions and swiftly file patent applications.
The legislation also institutes new rules that allow third parties to challenge patents after they are awarded, but maintains a one-year grace period for allowing inventors to file applications after publicly disclosing their invention. The reform also gives the U.S. Patent and Trademark Office (USPTO) authority to raise its own fees. This step is supported by many companies and industry groups, which have expressed frustration that the patent office is underfunded, understaffed and backlogged.
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New Micro-Entity Status
Certain inventors will experience reduced U.S. Patent and Trademark Office (USPTO) fees under a new micro-entity classification included in the new patent reform law. Fees charged to micro-entities will be 75 percent less than fees charged by the USPTO to large entities. The new legislation retains the traditional small entity classification, which provides a 50% reduction in fees charged to small entities.
In order to qualify as a micro-entity, an applicant must be an individual inventor, a small business with fewer than 500 employees, a university or a non-profit group. An inventor also cannot be named in more than four patents that have been previously filed with the USPTO and cannot have a gross income of more than three
times the U.S. median household income in the year prior to this reform. And finally, the application must not be assigned to an entity earning more than three times the U.S. median income.
The new patent reform law includes numerous changes that may impact your invention protection and enforcement strategies. For more information on how these changes might affect your intellectual property rights, look for updates in Pat. Pend., the Boyle Fredrickson newsletter, or contact your Boyle Fredrickson attorney.
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Client Spotlight: Trek
This past summer Trek Bicycle, a Boyle Fredrickson client since 1999, donated $2 million to establish a citywide B-cycle bike sharing network in their hometown of Madison, Wis. As one of the founding members of B-cycle, the United States' largest and fastest growing bicycle sharing systems, Trek has helped create a transportation alternative that holds huge potential for some of America's most complex transit problems.
"B-cycle is a perfect option for municipalities looking to improve the health, congestion and overall livability of their city," says B-cycle President Robert Burns. "By reducing the need for cars in urban environments, you solve so many issues cities have with transit."
Recently named to Fast Company's "Top Ten Most Innovative Transportation Companies," B-cycle is a next-generation bicycle sharing system that replaces the need for a car for short trips in and around urban areas.
"Trek is constantly looking forward with innovative ideas—whether it's the latest advances in bicycle technology or as a corporate partner trying to make the community a better place to live," notes Boyle Fredrickson shareholder James Boyle.
In addition to Madison, B-cycle bike sharing systems can now be found in eight other cities.
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Boyle Fredrickson Supports Habitat for Humanity
Boyle Fredrickson, Wisconsin’s largest intellectual property law firm, recently participated with Habitat for Humanity in building a single-family home on Milwaukee’s north side.
About a dozen attorneys, staff members, and friends spent half a day on a home construction site cutting and hanging drywall.
This charitable effort is part of the “Boyle Fredrickson Cares” program developed five years ago to cement the firm’s commitment to the community. Since then employees have logged hundreds of hours in more than a dozen local projects like Habitat for Humanity, Making Strides for Breast Cancer and the Salvation Army Toy Shop.
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Boyle Fredrickson Attorneys & Awards
Congratulations to Boyle Fredrickson shareholder Kirk Deheck, who was recently named to the Wisconsin Law Journal’s list of "Up & Coming Lawyers." More on the honor can be found by watching this special video.
Three Boyle Fredrickson attorneys have been named to the 2012 Best Lawyers in America. Keith Baxter, James Boyle and Andrew McConnell received honors from the publication. Selection for this honor is based on reviews from other attorneys.
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Fredrickson Hands Off Trademark Advice
Boyle Fredrickson shareholder John Fredrickson addressed the Wisconsin Chapter of the Association of Corporate Counsel (WISACCA) during the group’s annual conference in May. During his presentation – “Why They Call the Super Bowl the Big Game: Where to Draw the Line when Celebrating the Local Team’s Success” – Fredrickson discussed how companies use the popularity of sports and leading athletes for promotional purposes. But with billions of dollars at stake and complex sponsorships in place, companies are wise to consider the issues of trademarks, copyrights and licensing agreements.
When it comes to trademarks, Fredrickson suggests asking whether a mark or designation is protected as a trademark and whether an action—from printing a T-shirt with a logo to using a team name in a promotion—could create confusion. If the answer is yes in either case, you might need to gain consent before use.
“Sports capture the fascination of Americans in a remarkable way, so it’s no wonder marketers want to profit from that interest,” explains Fredrickson. “But it‘s also why the sports leagues and teams like the Packers tightly monitor their legal rights.”
For particular advice on protecting your company’s trademark rights, and respecting the rights of others, contact your Boyle Fredrickson attorney.
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