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Christina Sperry is a Member based in the firm’s Boston office. She is an experienced patent attorney whose clients, from start-ups to large corporations and academic institutions, are focused in the medical technology space. Christina advises on patent preparation and prosecution, and provides infringement, validity, and right-to-use opinions for clients in the United States and internationally. She is particularly focused on mechanical, electrical, and electromechanical technical fields; printer and imaging technology; wireless technology; semiconductors; computer hardware; computer network technology; software; financial services; cell sorting technology; and radar technology.

This post is a follow-up to our prior post To Seek Design Protection or Not, That is the Question! where we discuss situations where it is worth considering seeking a design patent.  Here we highlight takeaways from a USPTO Inventor Info Webinar (the “Webinar”) held on September 21, 2017, that focused on design patent drawing requirements, as well as on other issues on design patents. The Webinar’s slides can be found here.

As a brief recap, 35 U.S.C. § 171 states that “Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.”  Thus, the statute requires that a design be for an article (i.e., rather than a disembodied design, a design per se) and that the article have one or both of some surface ornamentation and configuration that differs this article from others.

Continue Reading Recap on Design Patent Drawings

This post is the second in a series of weekly blog posts covering legal issues for consideration during the early stages of development of a health app and providing best practices to help guide you through a successful launch. Consideration of intellectual property (IP) protection early in the development of a health app is important.  Otherwise you could lose the opportunity to do so in the future or be forced to change the name or other details of your app after you have already invested time and money in the app.

Trademark

Does your health app have a name? A logo? A tagline or slogan? Will it be marketed anywhere? If the answer to any of these questions is “yes,” you should think about applying for trademark protection.  Words, names, slogans, sounds, symbols, and more can be protected by trademark if used to indicate a source of the goods/services (i.e., the health app) and to identify and distinguish the health app from those offered or sold by others.

To read the rest of the post on our Health Law & Policy Matters blog, please click here.

This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications.  While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this article addresses how the filing of various papers during prosecution can affect PTA.  In particular, Requests for Continued Examination (RCEs), terminal disclaimers, and information disclosure statements (IDSs) can all cause adverse PTA effects if not carefully considered.

General Overview

Typically, U.S. patent term is 20 years from the earliest effective filing date, regardless of how long it takes the United States Patent and Trademark Office (“USPTO”) to examine and issue the patent.  In an effort to minimize the possibility of shortened patent term, Congress created the system of PTA, codified at 35 U.S.C. § 154(b), that allows, in certain circumstances, the effective patent term to be extended past 20 years from an application’s earliest effective filing date.  But as with many rules, there are exceptions.

Continue Reading Calculating Patent Term Adjustment: Part 2

This article is first in a series focusing on various issues related to Patent Term Adjustment.  Part 1 is a general overview of how to calculate patent term adjustment, without addressing the numerous factors that can affect patent term adjustment that will be examined in future articles.

Why PTA Exists

Under the pre-GATT regime, Patent Term Adjustment (“PTA”) did not exist in the U.S. because patent term was 17 years from issuance.  Consequently, any delay during examination, on the part of the United States Patent and Trademark Office (“USPTO”) or Applicants, was not a concern.  In fact, during this time, Applicants were in a way incentivized to, and sometimes would, delay examination to prolong their effective patent term, particularly since at the time publication of applications did not occur until issuance of the patent.  However, in 1995 GATT was adopted in an effort to harmonize U.S. patent term with the rest of the world, with patent term in the U.S. now being limited to 20 years from the earliest effective filing date.  As a result, any delays during examination would now erode a patent’s period of enforceability, which could cost Applicants millions of dollars or more.  Unfortunately, the onus was only on Applicants to avoid delays during examination, resulting in USPTO delays costing Applicants days or years of patent term without any recourse.  In an effort remedy this, Congress created PTA.

Continue Reading Calculating Patent Term Adjustment: Part 1

USPTO SealThe U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a Patent Quality Chat webinar on May 9, 2017 (click here for the webinar slides).  Highlighted features and the status of the eMod project are described below.

Patent Center

The eMod project will provide a new interface, Patent Center, that combines EFS-Web and PAIR into a single interface for filing and managing patent applications.  Benefits of Patent Center include an improved interface and improved processes for submitting, reviewing, and managing patent applications and increased application processing and publication accuracy.  The Patent Center aims to be more efficient and have more functionality and features than EFS-Web and PAIR, including:

Continue Reading USPTO eMod Project To Improve E- Filing/Managing Patent Applications

USPTO SealOn April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings.  The effort includes analyzing five years’ worth of historical data covering PTAB proceedings and user experiences.  The USPTO hopes to use this data analysis to ensure the proceedings are as “effective and fair as possible within the USPTO’s congressional mandate to provide administrative review of patentability of patent claims after they issue.”

Continue Reading USPTO Launches PTAB Procedural Reform Initiative

The U.S. Patent and Trademark Office (USPTO) announced this week that the Global Dossier program has expanded to include access to more patent applications worldwide.  The public including applicants, patent holders, businesses monitoring global patent activities, and patent examiners should benefit from this expansion.

Global Dossier is a website created in November 2015 with secure access to patent prosecution histories from the USPTO, European Patent Office, Japan Patent Office, Korean Intellectual Property Office, and the State Intellectual Property Office of the People’s Republic of China (collectively, the IP5).

Continue Reading Global Dossier Expanded To More Patent Applications Around the World

webinarAs regular readers of this blog will know, our cross-disciplinary Trade Secrets team has been closely monitoring the development of the Defend Trade Secrets Act (DTSA).

In a webinar organized by The Knowledge Group, Bret Cohen will discuss the DTSA in 2017, and will address the following topics:

  • The DTSA Under Trump’s Administration
  • Defend Trade Secrets Act – In the 2017 Landscape
  • DTSA in the 2016 Landscape: A Recall
  • Trade Secret Litigation Trends in 2017
  • Trade Secret and Non-Compete Law
  • Investigations Under DTSA
  • DTSA Injunctions
  • Seizure Provisions of the DTSA
  • Threatened Disclosure vs Inevitable Disclosure Injunctions
  • New Immunity for Whistleblowers
  • Recent Cases and Hot Topics

Please click here for additional details, or use this link to register.

USPTO SealThe U.S. Patent and Trademark Office (USPTO) recently released a Performance and Accountability Report (PAR) for the 2016 fiscal year, evaluating a variety of programs at the USPTO and detailing ongoing goals of the USPTO.  The following aspects of the PAR may be of particular interest to patent and trademark practitioners.

Regional Patent Offices

The USPTO opened its two newest regional offices in Silicon Valley (San Jose) and Dallas in 2016, which increases the total number of regional offices to four.  The two previous regional offices are in Detroit and Denver.  The USPTO wants the regional offices to serve as hubs of education, outreach, and innovation, going beyond simply processing applications and Patent Trial and Appeal Board cases.  The USPTO is making a push to reach out to the technology and innovation communities to ensure that the two new regional offices serve their region’s innovation and intellectual property communities by providing access to tools for innovators who need assistance at every step of the business lifecycle.  The USPTO is also trying to ensure that the regional offices teach innovators about the basics of intellectual property, including patents, copyrights, trademarks, and trade secrets, and provide search terminals to help evaluate novelty.  All of the USPTO’s regional offices now have directors and regional outreach officers on site, and the USPTO has been actively hiring new examiners in Detroit, Silicon Valley, and Dallas.

Continue Reading Highlights of the USPTO Performance and Accountability Report for Fiscal Year 2016

On January 16, 2017, the European Unified Patent Court (UPC) announced that a Preparatory Committee is currently working under an assumption that the Provisional Application Phase (PAP) of the UPC will presumably begin in May 2017, and the UPC can become operational in December 2017.  Commencement of the PAP will establish an organization that will include the start of operation of the UPC’s formal governing bodies. It will also allow judicial interviews to begin and appointments to be eventually confirmed. For an in-depth explanation of the UPC, please consult Mintz’s 2016 alert on the UPC and the Agreement on the Unified Patent Court (UPCA).

Continue Reading European Unified Patent Court Roll-Out Planned For 2017