Photo of Derek Constantine

Derek is an Associate in the firm’s Boston office. His practice focuses on the intellectual property assets and technology application portfolios of both domestic and international companies. While mainly focused on medical devices, his practice spans a wide range of industries including life sciences, robotics, and technology.

If you purchased anything from a website using a one-click purchase button, you indirectly paid Amazon for that ability, at least up until September 11, 2017 when Amazon’s patent to this technology expired. As a result, one-click purchasing might become the new norm.

In 1997, Amazon filed for a business method patent to one-click purchasing, which allows return shoppers to purchase items with just a single click of a button instead of having to proceed through a prolonged checkout process. The patent issued in 1999, at which point Amazon sued Barnes & Noble for patent infringement based on a similar technology used during Barnes & Noble’s checkout process. After extended litigation, the two companies settled in 2002. Not wanting to face similar litigation, Apple licensed the patent in 2000 to simplify ordering from the Apple Store.

The patent was extremely contentious, causing multiple calls to tighten patent laws or eliminate business method patents entirely. In response to the numerous attacks on the patent, Jeff Bezos called on the US Patent and Trademark Office to reduce the lifespan of patents to only 3 to 5 years, which prompted the US Patent and Trademark Office to issue an action plan to work with e-commerce companies to strengthen issued business method patents. But despite facing numerous challenges over the years, the patent survived. Thus if you have ordered anything online using a one-click purchase process, that company likely paid a licensing fee to Amazon to be able to provide that option.

Since the patent is now expired, one-click purchasing is now open to every online retailer. Large technology companies, such as Apple, Facebook, and Microsoft, are developing standardized one-click checkout procedures that can be applied internet-wide and that follow you from website to website. Google is likewise developing technology to incorporate one-click purchasing into its internet browser, Chrome.

A variety of options are available to applicants to speed up patent application examination at the U.S. Patent and Trademark Office.  Four of the more common programs are explored in depth below, and other options for speeding up examination are available in a previous post provided by Mintz Levin.

Track One Prioritized Examination

Track One examination allows an applicant to pay for prioritized examination and to receive a final disposition usually in less than one year (compared to two to four years for regular examination) from the time Track One status is granted.  A final disposition may be a Notice of Allowance, a Final Rejection, or a Notice of Abandonment.  The program on average boasts a first Office Action in approximately 4 months and final disposition in less than 8 months. Continue Reading Fast Track Examination in the U.S. Patent and Trademark Office

The U.S. Patent and Trademark Office (USPTO) has launched a new Automated Interview Request (AIR) Form that allows practitioners to submit an online request for an interview with an examiner.  The online form allows applicants to request an interview at any time without calling the examiner over the phone and leaving a message, which is a common practice now.  The form also is intended to be used instead of the older Applicant Initiated Interview Request Form, which is a separate form and is no longer recommended by the USPTO.

Continue Reading Why You Should Use the USPTO’s Automated Interview Request (AIR) Form

Prior Art SearchThe latest trend in patent examiner prior art searches is pushing examiners to use the Scientific and Technical Information Center (STIC) Program to use more foreign patents and foreign non-patent literature during patent prosecution.  The U.S. Patent and Trademark Office (USPTO) wants to increase the quality of examiner searches using non-patent literature and foreign patents generally.  To achieve this goal, STIC provides examiners with access to foreign patents, foreign applications, journals, books, commercial databases, translations, and a specialized collection of resources in the biological and chemical fields.  STIC also has search strategy experts that can assist examiners in search activities and understanding certain technology areas.

Continue Reading How to Search Like an Examiner With the Scientific and Technical Information Center

The Clarity of the Record Pilot program is an ongoing and evolving program that is part of an attempt by the U.S. Patent and Trademark Office (USPTO) to produce high-quality patents as part of the Enhanced Patent Quality Initiative (EPQI).  This is all part of a larger push by the USPTO to document on the record everything that happens during prosecution of an application, which can affect any issued patent and any patent family members in later legal proceedings.

The initial pilot is over, and the results of the pilot are now being reviewed as part of the ongoing program.  The pilot ran through August 20, 2016, and worked to identify best examiner practices for enhancing the clarity of the prosecution record and, in particular, greater clarity in claim interpretation, interview summaries, and reasons for allowance.  The pilot consisted of about 130 utility patent examiners, and the participants participated in a variety of different activities, such as ongoing training activities and Quality Enhancement Meetings (QEMs).  The USPTO has provided public access to training slides presented to the participants regarding Documenting Claim Interpretation, Interview Summaries and Pre-search Interview Option, and Reasons for Allowance.

Continue Reading Beware of the USPTO’s Push for Clarity

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

George Bailey stands on a bridge begging for another chance at life. Upon being granted a second chance, he joyously runs home to embrace his family. As the community of Bedford Falls rallies around him and raises funds to save the endangered Building and Loan and George Bailey personally from an unjustified failure, someone proclaims a toast to George Bailey, “the richest man in town.” It’s a powerful ending to a beloved holiday classic, and it would have been forgotten over time but for accidentally allowing a copyright to expire.

Continue Reading When a Quirk of Copyright Law Creates a Christmas Classic: It’s a Wonderful Life and the Public Domain

A recent U.S. District Court decision has clarified a potential danger when filing terminal disclaimers that contain overly-broad language. The U.S. District Court for the Northern District of Illinois in Hagenbuch v. Sonrai Systems interpreted the terminal disclaimer language “I hereby disclaim the terminal part of any patent granted on the above-identified application or any continuation of it” as applying to any continuation application claiming priority from the application in which this terminal disclaimer was filed. Hagenbuch v. Sonrai Systems, 2015 U.S. Dist. LEXIS 39083, *4 (N.D. Ill. Mar. 27, 2015) (emphasis added).
Continue Reading When Prior Terminal Disclaimers Continue to Punish Subsequent Applications: A Potential Danger in Filing an Overly-Broad Terminal Disclaimer

This is the third in a 3-part series about the use of crowdfunding in health and biotech start-ups. We started with the story of a tech start-up which set records for funding through a Kickstarter campaign, triggering the interest of entrepreneurs in capital- intensive industries.  Part 2 discussed the JOBS Act and the government’s attempt to overcome regulatory hurdles facing companies which want to use crowdfunding to raise equity investment capital. Part 3 addresses some Potential Dangers inherent in the system of crowdfunding being devised.  We hope you find the series educational and invite you to contact the authors with questions. Crowd Funding Image

PART III:  First, the JOBS Act requires the SEC to issue complex implementing rules prior to crowdfunding becoming a reality.  For any startup seeking funding through a crowdfunding source, the rules proposed by the SEC under the Act demand detailed disclosures regarding the company.  The company must also describe exactly how the securities it is offering are being valued.  Additionally, the Act requires ongoing, annual financial reports from the company after any successful crowdfunding campaign.  These facts alone may scare off some entrepreneurs.

Continue Reading Crowdfunding and IP in Health and Biotech Start-ups (Part 3): Potential Dangers

Crowd Funding ImageThis is the second in a 3-part series about the use of crowdfunding in health and biotech start-ups. We started with the story of a tech start-up which set records for funding through a Kickstarter campaign, triggering the interest of entrepreneurs in capital- intensive industries (Part 1: The Beginning). Part 2 discusses the JOBS Act and the government’s attempt to overcome regulatory hurdles facing companies which want to use crowdfunding to raise equity investment capital. Part 3 will address some Potential Dangers inherent in the system of crowdfunding being devised.  We hope you find the series educational and invite you to contact the authors with questions. 

PART 2: he US government began to address these investment challenges through the Jumpstart Our Business Startups Act (JOBS Act) in April 2012. While companies like Kickstarter allow startups to sell products or services, the JOBS Act envisions companies actually selling equity in themselves through crowdfunding campaigns.  Certain provisions of the JOBS Act allow investments by accredited investors, and Title III of the JOBS Act anticipates allowing large numbers of non-accredited individuals to invest in startup companies.  Rules proposed by the Securities and Exchange Commission (SEC) to implement the Title III crowdfunding provisions of the JOBS Act were expected by the end of 2013, but they have continually been delayed.  Expectations now place release of the rules at the end of 2015.

Continue Reading Crowdfunding and IP in Health and Biotech Start-ups (Part 2): The JOBS Act