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The Impact of the First-to-File System on Premature Disclosures of Inventions on Social Media Websites

Social media websites such as Facebook, LinkedIn and Twitter, have changed the manner that businesses communicate and market their products and innovations. Although these tools may be beneficial by creating market “buzz” for new products through rapid information sharing, they may also be detrimental to a company’s patenting practices for the same reason. If disclosures of up and coming products are made on social media websites without the company first filing for patent protection, and the disclosures are then copied by a second party who then files an application based on the company’s social media disclosures, before the company does, then the first-to-file law could bar the company from patenting the invention, whereas the second party could then obtain patent rights to the invention disclosed on the social media site.

WIPO Director General Says its Time for Legal Digital Marketplace

Looking forward to an intermediate and longer-term horizon, Gurry explained that Member States should seize the moment to work toward establishing a legal global digital marketplace to replace. He explained that fears about such a global marketplace should not bog down the effort because there is already a global digital marketplace in effect, but that the one currently in existence is one that is an illegal marketplace that does not respect the rights of creators.

WIPO Member States Meet in Geneva Amid Internal Unrest

The friction between Pooley and Gurry has been something of an open secret. While not widely reported, as far as I can tell Wegner is accurate when he says this Congressional letter touches on a point of friction. I have heard at various times about the cool relationship between the two, and I have been told that Pooley unsuccessfully objected to WIPO’s sale of computers to North Korea.

Microsoft Seeks Patent on Tastemaker Recommendations

One patent application we explore in-depth is for a recommendation service that improves the ability of users to browse through application stores quickly. This system takes recommendations from other expert application users within a user’s social circles and implements that information when a user searches for mobile programs. Other interesting applications include a few electronic device improvements, including a rotatable kickstand, and some innovations regarding user interfaces, including the ability for a touchscreen to discriminate between touch inputs from multiple users. A number of issued patents also stick out as interesting developments from Microsoft. A couple of patents protect improvements to entertainment systems created by Microsoft, including a better system for matching XBox players by ranking and a messaging system for notifying television viewers of programs that they might want to watch. Another patent makes it easier for advertisers to create ads for multiple platforms from a single template.

Starting the Patent Process on a Limited Budget

It is possible to succeed even starting with a limited budget, but you really do need to plan ahead and develop a strategy that makes sense within your resources and one that doesn’t invest unnecessarily or recklessly. This conserves resources in a responsible way, while still laying the ground work for obtaining the benefits and protections offered by the patent laws. The nightmare scenario you need to avoid is spending to much on any one invention that winds up going nowhere. If this happens you not only lose what you invested, but you also potentially lose valuable funds that could be used to pursue the next great idea you have. Over the years as I have worked with inventors and musicians what I have learned is that creative people are rarely, if ever, only going to create once.

Nielsen to Divest and License Assets and IP to Acquire Arbitron

According to the FTC’s complaint, the elimination of future competition between Nielsen and Arbitron would likely cause advertisers, ad agencies, and programmers to pay more for national syndicated cross-platform audience measurement services. Thus, Nielsen agreed that it will divest and license assets and intellectual property needed to develop national syndicated cross-platform audience measurement services.

Johns Hopkins Seeks Patent on Surgical Robot Systems

The medical research university is heavily involved with developments for medical diagnostics, as many of the following applications show. One patent application describes a system of searching for similar images within a medical imaging database to aid in diagnosing issues. Another patent application would protect a system of developing a personalized library of tumor development indicators for cancer patients to determine if a cancer recurrence is forming. A third application discusses a method of analyzing albumin/peptide compounds in a patient’s plasma to determine if a blood flow issue exists. Other patent applications we feature here focus on improvements to surgical procedures. One patent application explains a new development for specialized surgical robotics and an improved interface for surgeon control. Finally, we feature a patent application discussing a minimally invasive surgical treatment for obesity using a gastric sponge.

AIA Oddities: Third Party Submissions of Prior Art

A preissuance submission may be made in any non-provisional utility, design, and plant application, as well as in any continuing application. It is worth specifically noting that preissuance submissions may be made regardless of when the underlying application was originally filed. Thus, a third-party preissuance submission can be made in any application filed on, before or after September 16, 2012. A third-party preissuance submission must include a concise description of the asserted relevance of each document submitted, and must be submitted within a certain statutorily specified time period. If a non-compliant submission is presented the Office will not set a time period for a third party to file a corrected third-party submission. Additionally, the Office will not accept amendments to non-compliant submissions that were previously filed. Instead, a third party who previously filed a non-compliant submission may file another complete submission, provided the statutory time period for filing a submission has not closed. In other words, the filing of a non-compliant submission will not toll the statutory time period to file.

AIA Oddities: Trade Secrets, Re-patenting and Best Mode

Not every claimed invention will be able to be re-patented, but there will undoubtedly be some that will be able to be re-patented. This is possible thanks to 35 U.S.C. 102(b)(2)(C). So, if a patent or published patent application is commonly owned it may not be considered prior art against an identical set of claims in a subsequently filed patent application. Of course, 102(b)(2)(C) does not eliminate prior art that qualifies under 102(a)(1), but 102(a)(2) makes the patent application prior art as of its effective filing date of the claimed invention. So if you keep your invention secret and file a patent application it will be secret (and not prior art) up until the application publishes 18 months after filing. If you then re-file a second application with identical claims before publication of the first application there would be no 102(a)(1) prohibition. 102(a)(2) would make that first filing prior art as of its effective filing date, but if you remove 102(a)(2) through common ownership then a common owner would be able to effectively extend their patent term by up to 18 months; longer if publication doesn’t occur at 18 months.

The University of Texas: Biomedical Innovation Focus

Many of the University of Texas’s medical developments involve the use of synthetic materials to aid in treating patients. One patent application would protect a scaffold for tissue engineering that biodegrades and delivers treatment over time. Another application describes a system of using nanoparticles to stimulate hyperthermia to treat tumors. A third application discusses an improved bioadhesive for sealing tissues together. Other notable patent application filings pertain to improved systems of diagnosing and treating diseases that usually cause a poor prognosis in patients. One patent application deals with a system of analyzing gene expressions to determine a patient’s susceptibility to renal cell carcinoma. A final application we feature provides for a more effective course of treatment for most gastrointestinal tract infections.

InventionHome Seeks Inventors to Pitch DRTV Companies

InventionHome will be hosting the DRTV Product Summit, a one-day event on October 24, 2013, at Robert Morris University that will give everyday inventors the opportunity to pitch their products to six (6) leading “As Seen On TV” companies in one location. Twenty-four (24) inventors will be selected from all of the submissions received and invited to attend the event. Submissions are due by September 30, 2013. The selected inventors will receive 10-minute private pitch sessions with each of the six companies in attendance (60 total minutes). Essentially, this is the inventor/licensee equivalent of speed-dating.

Bayh-Dole: A Success Beyond Wildest Dreams

Of course it would be wonderful to live in a world where self-interest takes a back seat to humanitarian efforts and altruism on all occasions; where financial incentives are not required to promote the greater social good. That, however, is not the world we live in and the regimes where this economic philosophy has been tried have unanimously faltered or failed. If we want maximum good for society pursuing a path that results in maximum good ought to be the agenda, not some pollyannish pursuit of the impossible because it feels better or fits into some pre-ordained social narrative that some deem acceptable. Failure for an altruistic reason is still failure, and when we are talking about the economy, jobs and hundreds of life saving treatments and cures the right thing is to do the most good. It is truly a pity that some would choose not to maximize social good simply because it means someone else will make money in the process.

Professor Colleen Chien Joins Obama White House OTSP

Santa Clara University School of Law Associate Professor Colleen Chien has been selected to serve in the White House Office of Science and Technology Policy (OSTP), as senior advisor for intellectual property and innovation to Todd Park, the U.S. chief technology officer. Chien will take a leave of absence from her teaching duties for at least a year to fulfill her new appointment, which begins Sept. 16.

The Benefits of a Provisional Patent Application

Like any other patent application, a provisional patent application is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a “patent pending.” Perhaps most importantly, now that the United States has become a first to file country and abandoned our historic first to invent ways it is critically important to file a patent application as soon as practically possible. Filing a provisional patent application that adequately describes the invention will establish priority and satisfies the need to act swiftly under first to file rules. A well prepared provisional patent application is your best friend in a first to file world.

Acting Director Teresa Rea Leaves the USPTO

Now the wait continues for the announcement of a new Director, which could come at any time. I have been hearing rumors about who it may be, but at this time I’m not ready to publicly speculate. There seems to be a political candidate with ties to the tech industry that has risen to the top of the Obama White House list.