Group Reminded to Guard Their Inventions Against Intellectual Property Theft

Alexandria, VA – U. S. Under Secretary of Commerce for Intellectual Property Jon Dudas today asked independent inventors to protect American ingenuity by safeguarding their inventions from intellectual property theft. Small businesses—such as independent inventors—are often at particular risk for IP theft, a growing problem around the world. Dudas urged attendees at the 10th annual Independent Inventor’s Conference to make patent, trademark and copyright protection a core part of their business strategy.

“The strength of our nation’s economy rests on the ingenuity of American inventors,” Dudas said. “In the 21st century, securing protection for your inventions is almost as important as the invention itself.”
“As inventors turn their ideas and discoveries into viable, marketable products, it is critically important for them to get the protection they need to safeguard their inventions and help protect our overall economy,” he continued.

From Willis Carrier’s air conditioning to Clarence Birdseye’s frozen food technology, independent inventors have shaped the American economy throughout history. More than 200 independent inventors at the conference heard from Al Langer, the engineer on the medical team that invented the first automatic implantable cardioverter defibrillator, a life-saving device. Langer’s device has revolutionized the way doctors treat heart patients, and his success as an inventor and entrepreneur provided valuable insights for conference attendees.

“Throughout history, inventors have helped people discover new worlds, build communities, and cure sickness and disease, said Deputy Under Secretary of Commerce for Intellectual Property Steve Pinkos. “This conference celebrates all that inventors have accomplished in our nation’s history, and will create in the future.”

The U.S. continues to be the driver of ingenuity around the world, evidenced by the surge in patent, trademark and copyright applications from inventors and the resulting patents issued by USPTO. In 2004, the USPTO received more than 376,000 applications for patents, and patent applications have more than doubled since 1992. In fact, the USPTO issued more patents in 2004 than it did during its first 40 years.

Dudas and Pinkos also used their remarks to talk to inventors about what the U.S. government is doing to combat intellectual property theft. While they pointed out that intellectual property theft poses a threat to all American businesses, both officials said that most small businesses and independent inventors are particularly at risk because they often lack the knowledge and expertise to effectively combat it. To address this, Dudas said that the USPTO is hosting the Independent Inventor’s Conference—which is co-sponsored by the National Inventors’ Hall of Fame—and a series of seminars across the country to help educate American inventors and small businesses about the realities of piracy and counterfeiting. During these events, intellectual property experts from the agency will provide attendees with details and useful tips about protecting and enforcing their intellectual property rights in the United States and around the world.

The USPTO is also currently conducting a nationwide awareness campaign that is providing information to small businesses about when to file for intellectual property protection, what type of protection to file for, where to file and how to go about it. The effort features outreach targeting industry sectors especially at risk of intellectual property theft, a Web site specifically designed to address the needs of small businesses, and informational materials informing small businesses about the problem and steps they can take to mitigate it. Materials and other information about the awareness campaign are available at www.stopfakes.gov/smallbusiness.

For more information about the U.S. Patent and Trademark Office’s effort to educate American small businesses about intellectual property rights, visit www.stopfake.gov/smallbusiness or www.uspto.gov.

The Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that beginning July 18, 2005, the agency will offer applicants for trademark registrations a new Trademark Electronic Application System (TEAS) known as TEAS Plus that will add up to considerable savings for many filers.

The fee for filing a trademark application will be reduced by $50 per class for those using TEAS Plus. Most filers seek trademark protection for more than one class of goods and services in their application. In return for paying the lower filing fee, applicants who file using TEAS Plus agree to submit complete applications electronically, and to communicate electronically only with the USPTO about the application.

"This change reflects the mandate of the President's Management Agenda for citizen-centered, results-oriented government," noted Under Secretary of Commerce of Intellectual Property and Director of the USPTO Jon Dudas. "Specifically, TEAS Plus offers applicants an opportunity to save money by filing and managing their applications electronically. We hope the TEAS Plus option will make our already popular system even more useful to the public."

Nearly 82 percent of all trademark applications filed so far this year were transmitted electronically. That represents an increase of nearly 20 percent over last year.

U.S. Secretary of Commerce Carlos M. Gutierrez has named John J. Doll to be Commissioner for Patents at the United States Patent and Trademark Office (USPTO). Doll has been Acting Commissioner for Patents since April 2005.

In response to the appointment, Under Secretary of Commerce for Intellectual Property Jon Dudas noted, “I am pleased that the Secretary has chosen John Doll to be the Commissioner for Patents. John has excellent management skills combined with a dedication to outstanding service to the public and a focus on internal reform.”

As Commissioner for Patents, Doll is responsible for the productivity and quality of the work done by more than 4,000 patent examiners, paralegals and other support professionals, for patent examination policy, budget decisions, and for patent-related Information Technology (IT) decisions.

From January – April 2005, Doll served as the Deputy Commissioner for Patent Resources and Planning directing information processing and technology, and budget formulation and execution for patent operations. He previously served as Special Assistant to the Under Secretary. Doll was a group director from 1995-2005 in the technology center responsible for examination of biotechnology, organic chemistry, and pharmaceutical patent applications. He was an integral part of the team responsible for last year’s implementation of the Image File Wrapper (IFW), the USPTO’s electronic patent application processing system.

Doll has received numerous awards throughout his USPTO career, including the Vice Presidential Hammer Award for his work in establishing the Biotech Customer Partnership; a Department of Commerce Gold Medal for his work on the team that implemented IFW; and a Silver Medal for his work on automating patent examiner tools.

During his tenure as a group director, Doll managed the development and implementation of training materials used by patent examiners to apply the enablement provisions of the patent statute in reviewing applications. He also helped develop and implement the guidelines and training materials used by examiners evaluating patent applications for compliance with the utility and written description provisions of patent law.

Doll holds a Bachelor of Science degree from Bowling Green State University in chemistry and physics and a Master of Science degree in physical chemistry from Penn State University. He joined the USPTO in 1974.

Posted using Meow ]]> http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear_3.html http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear_3.html Wed, 27 Apr 2005 20:34:32 -0500 To fully round out the circle, let me offer this:

In many art areas, the most relevant art may come from sources other
than the USPTO databases (think chemical, biotech, etc). The electronic
services that merely index the USPTO sources are completely missing
these other sources (as are "hand search" techniques conducted at the
PTO).

My position is this -- every invention is different. Some may justify a
search (a hedge on the gamble to which Steve refers), and some may not.
Some may only need a quick electronic search of USPTO-based info, while
others may need a more comprehensive look that includes non-USPTO
sources.

The attorney's role, in my mind, is to help the client make a decision
on "the gamble" and, if a search is in order, match it with the most
appropriate approach. All while keeping expenses in mind.

I hope this adds to the already fascinating discussion.

-- Matt

Posted using Meow ]]> http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear.html http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear.html Wed, 27 Apr 2005 20:34:27 -0500 Let me go on a rant...

It doesn't make sense to spend "thousands" to have a patent search done
when a patent application may cost $4-7K to prepare and file (thus that
might explain why small metro patent firms have much cheaper patent
searches...the apps themselves are cheaper). At some point it becomes a
gamble...the risk of prior art /cost of the patent search vs the
application cost (what % added to the cost of the patent application is
worth having the search done???).

Thanks again for the input and post ideas.

-- Steve

Posted using Meow ]]> http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear_5.html http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear_5.html Wed, 27 Apr 2005 20:32:34 -0500 And the questioner wrote back:

Thanks for the responses. This is a topic I've been curious about for a
while and even contacted one of the patent search companies at one time
inquiring as to how they could do a thorough patent search and offer
patentability opinions at cost so much lower than what I understood to
be the cost of hand searches. The response was that they have
catalogued everything in the USPTO on their databases and feel that they
can do at least as good of a job, if not better, with computer searches
(I don't know if they use keywords or whatever) as someone doing the
physical search. When pressed on the cost issue, the response was that
they offer the search services as a "loss leader" in order to open the
door for the possibly more lucrative patent work. An interesting, and
somewhat candid, response.

But, that left me with the question, if this theoretically more
efficient method of doing searches is "better" then why do patent
practitioners not use it more often in their practices. The answer from
the patent search service person who I started a dialogue with (an
attorney) was that the more expensive hand search method used by large
firms was used because "that was the way they've always done it." I
gave some credence to this response as I know in my own practice area
there are many things that we do not because it is the best or most
efficient solution but it is the one that the lawyer has become the most
comfortable with. I had first approached the cost of a patent search
with a colleague of mine who works for XYZ Firm who told me that they
typically charge in the thousands for patent searches. That led to my
curiosity about how the online services, if they are on the level, can
offer the "same" service at such a reduced rate and eventually led to my
questions to you.

Posted using Meow ]]> http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear_1.html http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear_1.html Wed, 27 Apr 2005 20:31:28 -0500 Interesting questions -

I started in Chicago, so we would fly out at 6am, do searches all day,
and fly back that night. Can't do that from Oklahoma.

We also hire a searcher in Washington DC to do our searches -- for
mechanical inventions where the applicant can use any number of terms,
searching electronically by keyword is almost useless. Chemical, bio
and electrical - we can do most of that over the Internet and do keyword
searching.

My practice differs from Steve somewhat - most of my inventors are the
experts in their fields (bio and chem) and they are usually the best
folks to be doing searching and review. As a consequence, I don't do
much searching prior to filing anymore -- they would know if there was
anything out there and we err on the side of filing an application and
seeing what will come out of it. I try not to foreclose the option of
protection on the front end of things.

The PTO has available on-site in Virginia an electronic database of
images where you can "flip" through the mechanical drawings of patents
one page at a time. If they ever make this available online -- it will
be a breeze to search classes of mechanical patents and look for prior
art. Until that time, there really isn't a better way to do a thorough
search online.

A couple of my clients have done the electronic route - they got crap
back. I have received some interesting emails from search firms in
India and the Canary Islands - offering to do electronic searching for
prior art. I haven't used them yet -- but I am thinking about giving
them a whirl just to see what they come up with.

-- Douglas

Posted using Meow ]]> http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear_2.html http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear_2.html Wed, 27 Apr 2005 20:30:31 -0500 I've never seen a review of patent searching services.

I can't opine on what the industry does...only on what I do (for simple mechanical searches). I use a patent searcher in DC who does the physical side (determines appropriate classification and then digs through the PTO paper files...old school). He does it very economically (again, simple mechanical applications) and sends me the results (usually the 5-10 best patents he finds) by email within a couple weeks. If he doesn't knock it out I usually spend at least a little while doing my own keyword search supplementing his results.

I guess we still use old school for simple mechanical 'cause it is so economical (and we can pass the savings on to our clients).

-- Steve

Posted using Meow ]]> http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear_4.html http://www.phlexability.com/phlex/archives/2005/04/_re_patent_sear_4.html Wed, 27 Apr 2005 20:29:33 -0500 Rethink'rs - we received this email message - any thoughts?

********

I am not a patent lawyer by trade but find the topic interesting and try
to keep informed. I became curious about this issue after seeing a few
of the websites that offer this type of service and comparing that to
what my colleagues have told me the typical fee is for a physical patent
search that so many of the "big" firms still use. Is it the norm in IP
practice to still physically send a person down to the USPTO or is that
a practice that has fallen largely by the wayside. My suspicion is that
much like other areas of the practice of law, the use of physical
searches is somewhat of a vestige and tool of older attorneys who don't
really think about efficiency or cost effectiveness for their clients.
This stems also ties in to the discussion on your other website
(rethink(ip)) about the billable hour and the evils that concept
entails.

Posted using Meow ]]> http://www.phlexability.com/phlex/archives/2005/04/_patent_searchi.html http://www.phlexability.com/phlex/archives/2005/04/_patent_searchi.html Wed, 27 Apr 2005 20:28:30 -0500 J. Matthew Buchanan

J. Matthew Buchanan has a Bachelor of Science degree in Microbiology from The Ohio State University and a Master of Science degree in Microbiology and Immunology from the Medical College of Ohio. Mr. Buchanan earned his Juris Doctor degree, cum laude, from the University of Toledo where he served as a Note and Comment Editor on the University of Toledo Law Review and became a member of the Order of the Coif, a national honor society for law school graduates.

Prior to practicing law, Mr. Buchanan worked in various capacities in the medical device industry, gaining experience with the scientific and legal aspects of the regulatory approval processes in the United States and around the world. He has worked in the medical device practice group of a large Washington, D.C. law firm, focusing on FDA regulatory law, and in a large Chicago intellectual property firm where he focused exclusively on patent law. Mr. Buchanan is admitted to practice in Michigan, the U.S. Patent and Trademark Office, and before the U.S. District Court for the Eastern District of Michigan. He is a member of the State Bar of Michigan, the Wood County Bar Association, the Toledo Patent Law Association, the Licensing Executives Society, and the American Intellectual Property Law Association (AIPLA).

Mr. Buchanan has published several articles in peer-reviewed journals on various topics, including immunology research and medical device regulatory and patent law. Currently, Mr. Buchanan writes for American Lawyer Media's law.com as a special contributor on intellectual property and technology law issues.

Stephen M. Nipper

I am a registered patent attorney working in Boise, Idaho patent firm Dykas, Shaver & Nipper, LLP (http://www.dykaslaw.com). I am licensed to practice law in the state of Idaho, the Federal District Bar for Idaho and before the United States Patent and Trademark Office.

Our Boise patent firm works with an emphasis in patent prosecution, trademark prosecution, patent litigation, patent infringement opinions, trademark and tradedress litigation, patent drafting, and patent licensing. My main experience is in agriculture, biological and chemical sciences, pharmaceuticals, mechanical arts, as well as with computer and Internet related technologies.

While most of my business is through referrals and existing clients, I am always looking for new clients. Give me a call (1-877-611-1122) or sent me an e-mail (stephen @dykaslaw.com) if you want to chat about how my firm can help you and/or your company protect your inventions, trademarks and other intellectual property. I love to answer questions about my services...so feel free to ask.

I am an Idaho native, received my Bachelor of Science Degree in Biology from Truman State University in Kirksville, Missouri and my Juris Doctor degree from Southern Illinois University School of Law at Carbondale.

Some recent publications [pdf]:
June 9, 2004 TechnoLawyer.com IP Memes
July 19, 2004 TechnoLawyer.com IP Memes
August 16, 2004 TechnoLawyer.com IP Memes
September 20, 2004 TechnoLawyer.com IP Memes
October 18, 2004 TechnoLawyer.com IP Memes
November 2004 TechnoLawyer.com IP Memes

Douglas J. Sorocco

My law practice focuses on the areas of intellectual property counseling and transactions, technology licensing, life sciences and patent acquisition and commercialization. I am registered to practice before the U.S. Patent and Trademark Office.

Although I work in many different technological fields, I concentrate primarily in the biotechnology and life sciences sectors, including molecular biology, cell biology, glycobiology, biochemistry, developmental biology, immunology, microbiology, virology, and genetics; pharmaceutical compositions; molecular diagnostics and techniques; medical devices and equipment.

My passion: providing strategic and tactical intellectual property counsel to individual clients, universities, large pharmaceutical and manufacturing companies, as well as start-up biotechnology companies.

In addition to practicing law, I am an adjunct faculty member at the Oklahoma City University School of Law and in the Physiology Department at Oklahoma University Health Sciences Center.

Admitted to the Bar:
State of Oklahoma 1997
State of Illinois 1996
U.S. Patent and Trademark Office, 1998

Education:
University of Dayton School of Law, J.D. 1996
Northwestern University School of Law – Visiting Student 1995-96
Butler University, B.S. 1993 Chemistry

Organizations:
Mr. Sorocco is the editor and an author of DCR's award winning and innovative intellectual property legal weblog ("weblawg" or "blawg") and resource center, PHOSITA.

Mr. Sorocco is also currently serving as the Chairman of the Board of Directors of the Spina Bifida Association of America and is the Oklahoma Chairman of the Licensing Executives Society

Activities / Interests:
B&W Photography
Woodworking and cabinet making.
Restoration and renovation of 1920s homes.