Category Archives: Patent Prosecution

The Intersection of IP and Technology

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Registered Patent Attorney Greg Popowitz recently filmed a CLE focused on Understanding Intellectual Property (IP) and Attorneys’ use of Technology.  Greg discussed the important distinctions between patents, trademarks, copyrights, and trade secrets, along with the key considerations when attempting to secure protection for your IP.

The second part of the course is directed at what attorneys should look out for as they use technology. Greg discusses attorneys using efiling, the need to redact sensitive information, ediscovery, social media and websites, and cloud computing (confidentiality). The CLE goes over relevant portions of the Florida Rules of Civil Procedure and Florida Rules of Judicial Administration.

To learn more about the CLE and what CLE credits are available in your state, please visit the National Academy of Continuing Legal Education (NACLE) here.  NACLE is seeking technology credit in Florida as the new technology CLE requirement starts January 1 2017.

For any questions about patents, trademarks, and copyrights, or IP generally, please contact Greg Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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Protect Your Tech: Florida Bar CLE Edition

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Earlier this month, I had the distinct pleasure to present at the Florida Bar Basic Technology CLE about how businesses, and their lawyers, can protect technology using Intellectual Property.  This was the first time a Florida Bar Basic CLE was focused on technology.  To keep the CLE interactive, the presentations included live tweeting using the #CLEHistory hashtag, interactive polls with the audience, and post presentation video outtakes.  The interactive nature of the CLE was perfect for a technology focused CLE.

My portion of the CLE focused on how technology is used protect intellectual property, with the focus on patents.  There are several options when determining how to use patent law to protect technology, from design patents to provisional and non-provisional utility patents.  There are key timetables and strategic considerations to assess when protecting your technology, both before and after the technology is finalized.

One of the interactive questions, pictured below,  I posted to the live audience was whether someone could put “patent pending” on a product as soon as a patent application was filed.  The question was posted during my presentation and the audience texted their results to get an immediate response to the question.  36% of the audience correctly chose the right answer of A – Yes.  Meaning you can put patent pending on a product as soon as you file a patent application.  However, the application must remain active, i.e. not abandoned, to continue marking the product as “patent pending.”  Notably, 44% of the audience thought patent pending depended on what type of patent application was filed.  This is not accurate as it does not matter if the patent application is design, provisional, or non-provisional.

assouline & belrlowe, interactive polling

There are many misconceptions about patent law and it is important to consult with a registered patent attorney to review your technology and plan to maximize your protection.  It was an honor to speak at the first Florida Bar Basic Technology CLE and I enjoyed the interactive nature of the CLE.  Check the Florida Bar CLE page as the Technology CLE will be available for download in the near future.

For questions about Intellectual Property matters involving Technology, contact  Greg Popowitz below.

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

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Strategic Considerations for the Bankruptcy Practitioner when Intellectual Property is Involved

20130904_093101-1Assouline & Berlowe Registered Patent Attorney Greg Popowitz will be speaking as part of a panel discussing the interplay between bankruptcy and intellectual property.  The Bankruptcy Section of the Broward Bar Association is hosting the discussion on Wednesday, January 13, 2016 from 12:00-1:30pm.  The lunch is being sponsored by the Bankruptcy Bar Association of the Southern District of Florida (BBA).

To register for the event, click here.  It will be an excellent discussion between bankruptcy attorney John Hutton, patent attorney Allen Bennett, and patent attorney Greg Popowitz.

1 CLE credit is pending.

Date: Tuesday, January 13, 2016

Time: 12:00 – 1:30pm

Location: BCBA Conference Center

Cost:   FREE BCBA Bankruptcy Section Members;

$15 BCBA Member(non-section member)

$25 Non-Member of BCBA

No Charge BCBA Judiciary; Includes Hot Lunch

For questions about Intellectual Property matters, contact  Greg Popowitz below.

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

 

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Learn How to Protect Your Clients’ Valuable Intellectual Property

Assouline & Berlowe

Assouline & Berlowe patent attorneys Peter Koziol and Greg Popowitz will be speaking at a webinar focusing on Intellectual Property for the Non-IP Attorney.  The Pincus Professional Education webinar will take place on August 06, 2015 at 3 p.m. EST

To view the full announcement and register for the event, click here.

An overview of the Intellectual Property Topics that will be discussed are highlighted below.

IP is a complicated area, even for IP attorneys. For the rest of us, the nitty gritty rules are sometimes a mystery.  Listen in on this IP for the Non-IP attorney webinar so you can understand how to best protect your client and their assets. You will learn:

Origins of Intellectual Property (IP) in the United States and Internationally

  • The USPTO is part of the U.S. Department of Commerce (Patents and Trademarks)
  • WIPO covers International IP rights
How a non-IP lawyer can identify IP to Protect their Clients and Generate Value for the Business (Emphasis on Patents)
  • Patents (patent process, patentability opinions, freedom to operate opinions; limited time)
    • Design, Utility, Plant Patents
  • Trademarks (common law, state, federal rights; rights continue with use)
    • Strategy of using intent to use application vs. actual use application
  • Copyrights, and
  • Trade Secrets
What Does IP Protection Provide?
  • IP creates value to the business (it is an asset owned by the business)
  • Protects inventions, brands, etc. of the business, which can provide a marketing and sales edge over competitors
  • Patents – generate new business opportunities since a patent gives you an exclusive right
  • Licensing and sales opportunities
  • Access to Financing
  • Leverage in Litigation (damage calculations and discovery access)
  • Leverage in Business (assets and monopoly like rights)
How to Secure International Protection
  • Work with international: IP counsel, companies and connections, and markets
  • Patent Cooperation Treaty (PCT)
  • Madrid Protocol (trademarks)
  • Industrial Designs Treaty
  • Berne Convention
General Considerations for IP
  • Coordinate with transactional and litigation counsel, insurance providers, venture capital, and tax counsel
  • Bankruptcy and creditor rights impact
  • Receiver/trustee
  • Estate planning
Common Mistakes and Misconceptions
  • Poor man’s copyright
  • Statutory Bar Date (Loss of Rights)
    • Public Use/Disclosure (trade shows, publications, offers to sell)
    • Social Media Posts
  • Non-Disclosure Agreements
  • Priority of Use

For questions about the webinar or any Intellectual Property matters, contact Peter Koziol or Greg Popowitz below.

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

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Patent Claim Construction: SCOTUS says – Do Not Disturb!

Do Not DisturbSociety at large is becoming very familiar with patents from shows like The Shark Tank.  Investors repeatedly want to know if your new company has a product that is protected.  Meaning, can you stop someone else in the marketplace from making and selling a product like yours?  A patent does not give you the right to make your product, it gives you the right to stop others from making, using, or selling the invention claimed in your patent.  Did you notice the distinction between your product and what is claimed in the patent?

It is a bedrock principle of patent law that the claims of a patent define the invention.  Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).  This is difficult to understand since you are claiming the boundaries of an intangible object, intellectual property.  Try this comparison.  When you purchase a piece of real property (land), the boundaries are defined by the metes and bounds of that property.  Want to know where to put a fence?  Is this your property or the city’s?  Check the survey and the metes and bounds.  That is exactly what the claims of a patent do.  They define the outer boundaries of your invention.  It is not merely a picture of your product, it is the boundary of what your invention covers.

As part of any patent litigation, the judge will construct claims that are in dispute by both parties.  Parties will often have differing interpretations of what a word or phrase in a patent claim means, which has far reaching implications to the liability of the alleged infringer.  The judge will decide at a Markman hearing what the word/phrase in the claim means and that will be the definition used by the court and potentially the jury in determining whether the other party infringed the claims of your patent.

In a recent decision, the Supreme Court of the United States held in Teva Pharmaceuticals USA, Inc., et al. v. Sandoz, Inc., et al., No. 13-854 (January 20, 2015) that when the district court uses extrinsic evidence during claim construction (information outside of the patent specification itself), the appellate court must use a “clear error” standard of review.  Extrinsic evidence could be dictionaries, experts in the industry.   If the district court only looks at the intrinsic evidence, information disclosed in the patent itself, the appellate court should continue to use a de novo standard of review.

The rationale is based on the premise that when the district court looks at evidence outside evidence for claim construction, the court is making a factual finding regarding the dispute.  Based on this factual finding, the judge is interpreting the claim term.  As a result, the appellate court must look at the factual finding under a clear error standard of review.  The Supreme Court stated that when only the information contained in the patent itself is used to determine the meaning of a patent claim term, it is a legal determination and should be reviewed under a de novo standard.

If you have any questions about the patent process, contact Mr. Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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Patent Pilot Program in Southern District of Florida Scrubbed

SDFLUSPTO Seal

On June 20, 2011, Judge Federico A. Moreno, Chief Judge for the United States District Court for the Southern District of Florida, signed Administrative Order 2011-53 establishing a pilot program to encourage the enhancement of expertise by assigning certain judges to hear cases involving patents.  This pilot program was a trial program that would run for a period of ten years.  However, and unfortunately, after only three years into the pilot program, Judge Moreno, after conferring with his brethren on the bench, have decided to terminate the pilot program.

According to Administrative Order 2014-58, issued by Judge Moreno, “the administration of justice would best be served in this District by terminating the pilot project and allowing patent cases in the future to remain assigned at random to the Judges to whom they are initially assigned.”

The rationale in establishing the patent pilot program was actually quite intuitive.  Looking at patent law at the appellate level, the Federal Circuit of Appeals, which is one of only twelve courts in the federal appellate system, has exclusive jurisdiction to hear patent case appeals from lower district courts across the nation.  This provides patent dispute litigants with a central judicial body to have exclusive jurisdiction to hear appeals involving patent cases.  Such a centralized appellate court avoids potential variation in holdings between the various appellate courts across the United States.

At the trial court level, district court judges nationwide are randomly assigned patent cases based on where the action is filed.  Any particular judge may have tried numerous patent cases, or not a single one.  Oftentimes, a district court judge’s docket is consumed with criminal trials and general civil litigation.  Intellectual property cases, especially patent cases, are few and far between, making up a small fraction of total cases filed annually.  As a result, most district court judges have limited experience concerning the nuances that go into trying a patent case.

By instituting the patent pilot program, the United States District Court for the Southern District of Florida was selected as only one of the fourteen to participate in the program.  The program attempted to streamline patent cases filed in the district by having all patent cases assigned to a specific set of judges.  This would increase the frequency in which the judges heard patent cases, thereby building a foundation of knowledge needed to try patent cases.  The pilot program sought to replicate the Federal Circuit by having judges that specialized in hearing patent cases.

As the pilot program has now been terminated in the Southern District of Florida, all newly filed patent cases are randomly assigned to a judge in the Southern District of Florida, just like every other case.  I was excited to learn of the pilot program in 2011 and hoped the program would make the judicial system more efficient for judges, litigants, and counsel to try patent cases in this jurisdiction.  District court judges handle a wide array of cases.  The pilot program was a great way to route the few patent cases filed in the Southern District of Florida to specialized judges who had a solid foundation of the specialized aspects of patent litigation.  Although, through this experimental pilot program, the local patent bar had wished the program would have become a permanent system, it has come to an end.  Fortunately, the judges of the Southern District are excellent and we will be fine without it.

If you have any questions about the patent process, contact Mr. Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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Want to File a Patent? Here are your options.

Patent Trademark Copyright IP InventionSo you want to file a patent.  There are few things you should consider in developing your strategy for protecting your Intellectual Property.

As an inventor, you should consider the benefits of a patent search and the preparation of a patentability opinion to determine what inventions and publications are publicly available.  This helps to prepare your patent application and also lets the inventor know about other patents they could be infringing with their own invention.  This is critical information to determine during the infancy of a new business.  Although a patent search and opinion is not required under patent law, it is often helpful pre-filing.  It is important to emphasize that any patent references, publications, or materials relating to the applicant’s invention must be disclosed to the United States Patent and Trademark Office (USPTO), or any patent rights could be forfeited during prosecution, or later invalidated through the courts.

Utility Patents:  Provisional & Non-Provisional

As it relates to a utility patent, which is any invention of a new and useful process, machine, manufacture, or composition of matter, there a few options when filing for patent protection in the United States.  There are two primary mechanisms to apply for a patent, either a provisional patent application or a non-provisional patent application.  A provisional application does not have as stringent filing requirements, but it must include and properly describe the invention and what it covers.  Once submitted to the USPTO, the provisional patent application will establish your filing date (which is key for the new “First to File” system, now in place since the passage of the America Invents Act) but cannot on it’s own mature into a patent.

A provisional patent application is used as a placeholder to establish your filing date but literally sits in the Patent office and will not be examined by the USPTO for patentability.  However, a provisional patent application stays pending at the USPTO for only one year.  The applicant must file a non-provisional patent application (with a separate filing fee) claiming priority to the provisional patent application in order to establish the earlier priority date within that one year.   This is a hard deadline (referred to as a statutory bar deadline) with the USPTO that cannot be extended, for any reason.

If you decide not to file a non-provisional patent within a year of the date you filed you provisional patent application, you can still file a non-provisional patent application.  You may still be able to obtain a patent, but you will not be entitled to the benefit of the earlier date that of the previously filed provisional patent application.  As a result, if someone else invents something similar to your invention, or someone discloses the invention publicly, you may be forever precluded from securing patent rights in the United States, and possibly internationally.  Therefore, establishing the earliest filing date is key and should be highly guarded!

Alternatively, you can always bypass the provisional patent application all together and file a non-provisional patent application.  It really depends on the business needs and the development of the invention.

There is also the cost issue.  The government filing fees vary depending on the size of the applicant but assuming the applicant has a business with 500 or fewer employees and has not assigned the rights to a company with over 500 employees (small entity), a provisional filing fee is only $130, whereas the non-provisional filing fee is $730.

In addition to the cost that is paid to the USPTO, there is also a legal fee for preparing the patent, whether a provisional or non-provisional application.  Without knowing the specifics about the invention and its complexity, it is often difficult to estimate the legal fees for preparing a patent application.  Typically, a provisional patent application will run $3,500-$4,500 and a non-provisional will be $5,500 and up.  It really depends on the complexity of the invention and the amount of disclosure required in the application.  Also, formal drawings, if required, are usually $100 per figure.  The legal fees are for the preparation and filing of the patent application.  Any assignments, responses to Office actions, and other post filing work would be a separate legal fee and may require a corresponding government filing fee.

Design Patents

Design patents protect the visual ornamental aspects in or applied to an article of manufacture.  Unlike a utility application, a design patent protects the appearance of the invention.  The design may focus on the shape, pattern or the article, or the combination of both.  However, a design patent does not focus on the function of the invention like a utility patent, only the ornamental design.  The government filing fee for a small entity is $380 for a design patent application; the legal fee to prepare and file the design patent application is, on average, $1500.  Given the visual importance of the ornamental features of the invention, design applications typically include at least six drawings.

Myth:  The Poor Man’s Patent

It is important to dispel a common belief of inventors referred to as the Poor Man’s Patent.  Some inventors think they can sit down, write about what their invention is and how it works, put it in a self-addressed stamped envelope, and mail it to themselves through the U.S. Postal Service.  The hope is that in the future, the inventor can show when they first conceived of the invention by using the unopened envelope date stamped by the Postal Service.  The Poor Man’s Patent, as it’s commonly called, is a farce.  This in no way will help you establish an invention conception date.  Moreover, given the current First to File system, the first inventor to file their application with the USPTO gets the earliest filing date.  If you have an innovative and novel invention, contact a patent attorney to properly protect your rights.

If you have any questions about the patent process, contact Mr. Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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