Proposed Patent Rule Would Allow Third Party Prior Art Submissions

by Sheldon Mak & Anderson on January 31, 2012

As we mentioned last week, the U.S. Patent and Trademark Office recently published several proposed patent rule changes in connection with the Leahy-Smith America Invents Act. One of those changes relates to third party submissions of prior art in a patent application.

Specifically, the proposed rule is needed to implement the preissuance submissions by third parties provision of the Leahy-Smith America Invents Act. Under this provision, third parties may submit, for consideration and inclusion in the record of patent applications, any patents, published patent applications, or other printed publications of potential relevance to the examination of the applications.

Below are a few additional details regarding the proposed rule:

• A preissuance submission may be made in any non-provisional utility, design, and plant application, as well as in any continuing or reissue application.
• A third-party preissuance submission must include a concise description of the asserted relevance of each document submitted and be submitted within a certain statutorily specified time period.
• The third party must submit a fee as prescribed by the Director and a statement that the submission complies with all of the statutory requirements.
• The third-party preissuance submission provision of the Leahy-Smith America Invents Act is effective on September 16, 2012, and applies to any application filed before, on, or after September 16, 2012.

The USPTO is soliciting feedback on the proposed rule changes and will accept public comments through March 5, 2012.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Copyright FAQ: What If I Want to Use a Pseudonym?

by Sheldon Mak & Anderson on January 30, 2012

Sometimes, authors want their true identity to remain hidden from the public. For instance, popular author Dean Koontz has written under at least eleven pen names. Many often wonder if authors who use pen names or pseudonyms can still copyright their work.

The answer is yes. As detailed by the U.S. Copyright Office, a work is considered “pseudonymous” if the author is identified on copies of the work by a fictitious name. Nicknames and other diminutive forms of legal names are not considered fictitious.

If you write under a pseudonym but want to be identified by your legal name in the Copyright Office’s records, you should provide your legal name and your pseudonym on your application for copyright registration. Check “pseudonymous” on the application if the author is identified on copies of the work only under a fictitious name and if the work is not made for hire.

If an author’s name is given, it will become part of the Office’s online public records, which can be searched via the Internet. Therefore, if you want to completely conceal your identity, you should provide your pseudonym and leave the space that asks for the name of the author blank.

The Length of Copyright Protection

It is also important to note that the use of a pseudonym can impact the length of your copyright protection. Copyrighted works published under a pseudonym are awarded copyright protection that is the earlier of 95 years from publication of the work or 120 years from its creation. However, if the author’s identity is provided in the registration records of the Copyright Office, including in any other registrations made before that term has expired, the term then becomes the author’s life plus 70 years.

Legal Concerns to Discuss With a Copyright Attorney

It is important to note that you should never omit the name of the copyright claimant. While you can use a pseudonym for the claimant name, it is important to understand that using a fictitious name has several drawbacks. For instance, business transactions involving the copyrighted property may be more difficult, as contracting parties may raise questions about the copyright’s ownership.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas. 

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Doctor, Doctor Give Me the News: Dr. Pepper Settles Trademark Lawsuit

Dr. Pepper Snapple Group Inc. is parting ways with its oldest bottler, after a trademark dispute soured the business relationship. According to a joint statement, Dr. Pepper Snapple Group has bought all of the bottler’s sales and distribution operations under the terms of a settlement agreement.

The soda company Dublin Dr. Pepper Bottling Co. was accused last summer of diluting the Dr. Pepper brand by selling bottles with the label “Dublin Dr. Pepper.” It also contended that the Texas bottling company was selling the soft drink beyond its approved territory, a 44-mile radius around the rural Texas town of Dublin.

The main issue of contention was a product known as “Dublin Dr. Pepper.” The bottler used the classic formula of Dr. Pepper sweetened with the traditional cane sugar (high fructose corn syrup is commonly used today) and sold the soda in retro glass bottles. The trademark dispute arose as the product grew in popularity and Dublin began selling it on its website.

Pursuant to the settlement, Dr. Pepper Snapple will now distribute Dublin’s version of Dr. Pepper in the bottler’s former six-county territory and some other parts of Texas, without “Dublin” on the label. Meanwhile, Dublin will continue to bottle several smaller soft-drink brands, including Triple XXX Root Beer, under distribution deals with other companies.

Source: The Wall Street Journal

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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California Trade Secret Lawsuit: Who Owns a Twitter Account?

As the use of social media continues to grow, many companies may be wondering who owns an employee’s social media account, particularly when it is used for business purposes. A trade secret lawsuit currently pending in California will likely shed light on the issue.

The Facts of the Case

Phone Dog Media filed the lawsuit against its former website writer Noah Kravitz after he left the company in October 2010. The dispute centers on his Twitter name “Phonedog_Noah” (tied to his personal email) and its 17,000 followers, which he took with him when he left.

Phone Dog contends that it is the rightful owner of the Twitter account, characterizing it as a proprietary customer list. The company is seeking damages of $340,000, which amounts to $2.50 a month for every follower for the eight months Kravitz used the Twitter handle.

Meanwhile, Kravitz contends that the company told him that he could keep the “Phonedog_Noah” account in exchange for tweeting for the company “from time to time.” He further claims that Phone Dog filed the trade secret lawsuit in retaliation for his claim to 15 percent of the site’s gross advertising revenue because of his position as a vested partner, the New York Times reports.

The Legal Ramification of the Case

Because social media ownership is such a novel issue, the court’s decision promises to have broad legal ramifications. In addition to shedding light on how ownership should be determined, it may also dictate how the value of Facebook friends and Twitter followers should be calculated.

We will, of course, keep you updated.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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Proposed Patent Rule Would Change Administrative Requirements for Inventor Oaths

As we mentioned yesterday, the U.S. Patent and Trademark Office recently published several proposed patent rule changes in connection with the Leahy-Smith America Invents Act. This is post is the first of several that will discuss the changes outlined by the USPTO.

In the first proposed rulemaking, the USPTO seeks to revise and clarify the rules of practice relating to the inventor’s oath or declaration, including reissue oaths or declarations, assignments containing oath or declaration statements from inventors, and oaths or declarations signed by parties other than the inventors.
These changes are good news for inventors and assignees because the existing oath requirements for patent applications were often inconsistent and overly burdensome.

Significant changes include the following:

• A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent.
• A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of, and as agent for, the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties.
• If an inventor or legal representative thereof refuses to execute the oath or declaration, or cannot be found or reached after diligent effort, the assignee, or a party who otherwise shows sufficient proprietary interest in the matter may execute the oath or declaration.
• When carrying over a power of attorney from a parent case to a continuing case, a copy of the power of attorney from the prior application must be filed in the continuing application (even where a change in power did not occur in the prior application).
• A payment by credit card in patent cases may only be submitted with an original handwritten signature personally signed in permanent dark ink or its equivalent.

Please stay tuned for additional information about the other proposed rule changes next week.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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USPTO Releases Four Proposed Rule Changes Under America Invents Act

The U.S. Patent and Trademark Office has begun rolling out a series of proposed rule changes as part of the Leahy-Smith America Invents Act. Earlier this month, the USPTO published four notices of proposed rulemaking in the Federal Register.

The proposed patent rule changes address the following:

• Inventor’s oath and declaration
• Third party submission of prior art in a patent application
• Citation of prior art in a patent file
• The statute of limitations for Office of Disciplinary Proceedings

We will address each of the proposed changes on this blog the coming weeks, beginning with a discussion of the inventor’s oath tomorrow.

What’s Next?

The USPTO is soliciting feedback on the proposed rule changes and will accept public comments through March 5, 2012.

According to a USPTO press release, the office will publish additional AIA-related proposed rules in the Federal Register for public comment in the coming weeks.  The soon-to-come proposed rule publications cover supplemental examination, post-grant review, inter partes review, transitional program for covered business methods, and derivation proceedings.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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California Copyright Law: Is SOPA Really Dead?

The national day of protest against the Stop Online Piracy Act (and its counterpart the PROTECT IP Act) certainly caught the attention of the American public. Now, it appears that Congress was listening as well.

On January 18, dozens of websites went dark or ran protest messages against SOPA, including popular sites Wikipedia and Google. As we have discussed on this blog, critics of the bill argue it goes too far to prevent online piracy and would unduly burden legitimate businesses.

Shortly after the protest, Sen. Harry Reid (D-NV) stated that he is putting PIPA on hold. While SOPA’s primary sponsor, Rep. Lamar Smith (R-TX), initially indicated he would proceed with marking up the bill, he ultimately decided to pull the measure from consideration “until there is wider agreement on a solution.”

Even before the protest, critics of SOPA got a boost when the Obama Administration voiced concerns about the legislation. The White House released a statement indicating that while it supported efforts to address online piracy by foreign websites, “[it] will not support legislation that reduces freedom of expression, increases cybersecurity risk, or undermines the dynamic, innovative global Internet."

At this point, it looks like these bills may be dead, at least in their current form. We will, of course, keep you updated as new developments arise.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. As a full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) to find out how we can provide powerful protection for your unique ideas.

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