Author - baystatenew

On June 19, 2014, the Supreme Court unanimously ruled in Alice Corp. v. CLS Bank International, that basic business methods could not be patented, even if computers are used to apply them. An Australian company, Alice Corporation, owned the patents at issue. The case questioned the patent eligibility of Alice Corp.’s claims to a computerized method, a computer-readable medium containing computer instructions, and a computer system that implements those instructions. Justice Clarence Thomas wrote for the court and determined that “merely requiring generic computer implementation fails to transform [the] abstract idea into a patent-eligible invention.”

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In today’s global economy coupled with the continued growth of e-commerce, businesses no longer exist only as brick and mortar locations, but instead must maintain an active online presence in order to gain and maintain a customer base. For better or worse, a business is associated with their online presence through their domain name. In most cases, a business has no issue in securing an appropriate domain that represents their interests, and assists with their search engine rankings. For instance, Company ABC, would most likely desire to register a domain for their business such as www.abc.com, however what happens if this domain is not available.

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Intellectual Property, namely patents, trademarks and copyrights are some of a company’s most valuable business assets, and accordingly, care should be taken to ensure that there is a clear chain of title with respect to ownership of these assets and that it is identified and determined at the onset of these creations. Unfortunately, there are many instances where ownership issues arises due to either poor planning on the part of the company, vague definitions as to what qualifies as a company asset and/or failure to have the necessary documents in place to automatically transfer an employee’s contribution directly to the company.

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A common question that arises during an initial consultation, especially with start-ups and individual inventors is whether or not a prototype of their proposed invention needs to exist before they are able to submit a patent application.  The simple answer is that an inventor does not need to have a prototype built in order to move forward with a patent application.

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All of a sudden, one day you are sitting at work or at home and something pops into your head, you believe you have an idea that if marketed properly would be valuable and desired by the public.  On average, individual inventors usually develop ideas as a result of an everyday problem they have to deal with and yet the solutions available to them are not optimal, and thus feel that they can create a new product that fills this gap and will make everyday life a little easier.

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When deciding to form a start-up company, there are several important legal documents that should be prepared and evaluated, specifically with respect to Intellectual Property.  One area of Intellectual Property that should not be overlooked is the protection of the brand of the company through a Federal Trademark Application, which ensures that the name or logo associated with the goods and services provided by the start-up will not be copied or infringed upon.  This article will continue the discussion of a previous posting, wherein once a trademark search has been completed, it is time to consider the benefits and drawbacks related to the timing of filing a Trademark Application as it pertains to a start-up company or any other early-stage entity.

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Whether you are an individual who invented a new gadget and came up with a name for it, a start-up looking to launch a new service and protect your company name, or an established business releasing a new product line, serious consideration should be given to have a Trademark Search performed to identify any potential conflicts that may derail your project before it even gets off the ground.

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On January 1, 2014, the United States Patent & Trademark Office released their latest fee schedule, and of note several fees have been reduced from their previous levels which should assist individual inventors and those able to qualify as a micro entity in containing their patent prosecution budgets.

Issue Fees

The new fee schedule reduces the issue fee required for an application to proceed to grant across the board regardless of entity size.  Furthermore, the USPTO has eliminated the publication fee that accompanied the issue fee for all entities; previously the publication was a set price that was not eligible for reduction if individuals were either a small or micro entity.

In particular, the new schedule reduces the issue fees and publication fees as follows:

                                     Micro Entity    Small Entity     Large Entity

OLD                                      

Utility  Issue Fee       $445                 $890                   $1780

Publication Fee          $300                 $300                  $300

Design Issue Fee        $255                 $510                    $1020

NEW                         

Utility Issue Fee        $240                 $480              $960

Design Issue Fee        $140                 $280                  $560

Publication Fee          $0                      $0                        $0

Assignment Fees

The new schedule eliminates the previous $40 recordation fee for patent assignments if the assignments are recorded electronically with the USPTO.

Patent Cooperation Treaty Fees

Although the fees for submitting a PCT Application to enter the International National phase remain the same, applicants can now take advantage of being able to qualify as a Small Entity or a Micro Entity and be entitled to a reduction in certain fees as follows:

                                   Micro Entity    Small Entity     Large Entity     

OLD

Transmittal Fee           N/A                 N/A                 $240

Search Fee (US)           N/A                 N/A                 $2080

Prelim. Exam Fee        N/A                 N/A                 $600

Suppl. Exam Fee          N/A                 N/A                 $600

NEW

Transmittal Fee           $60                  $120                $240

Search Fee (US)           $520                $1040              $2080

Prelim. Exam Fee        $150                $300                $600

Suppl. Exam Fee          $150                $300                $600

Summary

Overall, the reduction in fees offers some modest relief to all entities, however applicants that qualify as either Small or Micro should see the most benefit from these changes, especially given in the increases in overall fees at the USPTO the last several years.  While much attention may focus on the decrease in issue fees, perhaps an overlooked and underappreciated aspect of the changes in the fee schedule relate to the applicability of small and micro entity rates for some PCT fees.  Individual inventors, start-ups and small sized companies who maintain a modest budget for patent prosecution, and may have been previously dissuaded to submit a PCT Application, may now reconsider and look at filing such an application.

We would like to welcome everyone to the launch of our firm’s blog, where we will be discussing all areas of Intellectual Property law, ranging from important Patent, Trademark and Copyright cases pending in the Federal Courts to helpful tips for first time inventors and start-ups.

At Bay State IP, our team understands the value that Intellectual Property plays in today’s world, whether you are an individual inventor trying to protect a new device you created in your spare time, a start-up securing their brand for a new service, or an established company seeking to develop and license their latest technology.

Through our years of experience working with clients of all sizes and different stages of development on a variety of projects, we are looking to provide another resource to everyone based on discussions, comments and questions we have been asked, along with the common themes we see every day relating to Patents, Trademarks and Copyrights.

Once again, we want to welcome everyone to our blog, and please feel free to take a look around our website for additional information on all areas of Intellectual Property.