Get Ready for the Next “Big Thing” on the Internet – gTLDs

Written by Kent on . Posted in News, Recent Developments

The internet is about to go through an important change.  ICANN (the entity responsible for internet domains) is releasing HUNDREDS of new top level domains (TLDs).  You are, undoubtedly, familiar with some of the 22 existing TLDs, such as “.com” or “.org” or “.net.”  However, ICANN is in the process of releasing new TLDs (referred to as gTLDs) such as “.love,” “.guru” and “.sexy” and industry-specific terms like “.sales,” “.bank,” “.build,” “.food,” “.bike,” “.plumbing” and “.wedding” — even — “.pizza.”

 

These new gTLDs may have substantial marketing value.  For example, there are certain advantages to owning an internet address, such as “financial.guru,” and many in the construction business may have an interest in a name like “quality.build.”  In addition, the new gTLDs provide opportunities to leverage trademark rights.  Owners with trademark registrations have certain additional rights under the ICANN rules that provide notice to trademark registrants that someone is trying to register their mark in conjunction with a gTLD.  Trademark registrants also have certain rights in obtaining the rights to their registered trademark name on gTLDs.

 

The rules regarding the coming “land grab” for gTLDs are complex and often counter-intuitive.  Many of the decisions depend on a clear understanding of traditional trademark rights in this evolving e-commerce context.  Our firm has experience navigating gTLD issues.  We are prepared to advise and help you secure the gTLD rights that protect your brand equity and maximize your business opportunities.  Arthur Chaykin, a former Vice President of Law – Marketing & Sales for the Sprint Corporation, is heading up our internet, TLD and gTLD practice.  Please feel free to contact Mr. Chaykin to discuss your needs in light of these important changes.

8th Annual LAKC Run for Justice 5K, May 6, 2012

Written by Maggie on . Posted in Firm News, News

Congratulations to Marvin Mastin who placed 2nd in the 8th Annual LAKC Run for Justice 5K, which was held on May 6, 2012.  Marvin was on the Erickson Kernell team, along with Randy Marquardt, Mike Heinz, Brad Renfrow, Aaron Reed, Kent Erickson, Ann Spivak, Sean Bradley, Maggie Jiles and Kyle Donnelly.  Team Erickson Kernell won the small firm participation award and finished 3rd overall, with our top three runners finishing 2nd, 17th, and 42nd.

This annual event raises funds to support Legal Aid of Western Missouri, which provides essential legal services to low-income citizens.  LAWMo staff attorneys, paralegals and volunteers assist over 20,000 people each year with problems that seriously affect their ability to provide for themselves and their families.

How Much is a Patent Worth?

Written by Kent on . Posted in Information, News

So you’ve got the next great invention and all that’s standing between you and a pile of money is the Patent Office.  It’s a safe bet that most people seeking patent protection have had such thoughts of financial gain cross their mind.  After all, the patent system is an incentive based system so who wouldn’t envision dollar signs at some point.

This begs the question, “How much is a patent really worth?”  Obviously, there are too many variables implicated in the hundreds of thousands of patents issued each year to make a generalized statement like, “the average patent is worth ___”, but we can certainly look at recent patent transactions in the market place to get a sense of what an upper-tier valuation might look like.

Last year, Apple led a consortium of companies (including Ericsson, Research in Motion, Microsoft and Sony) to purchase a portfolio of over 6,000 patents from Nortel at the hefty price of $4.5 billion.  That comes to roughly $750,000 per patent.  Apple alone agreed to fork over $2.6 billion on the purchase.

Apparently Microsoft was just warming up in the Nortel transaction because earlier this month it bought roughly 800 patents from AOL for $1.056 billion.  Granted, the purchase included licenses to the 300+ patents remaining with AOL, but even assuming each of those licenses cost half of the average purchased patent the transaction still equated to a cost of over $1 million per patent.  (On a quick tangent, if you’ve ever wondered what kind of patents the world’s biggest corporations might be interested in selling, check out the AT&T patent sale page.)

Even considering the players in these transactions are Apple, Microsoft, Sony, etc… these are astonishing sums of money for what amounts to a written description on how to “make and use” the technology at issue.  Of course the patents aren’t purchased for their instructional value, but because they allow the holder to prevent others from making, using, selling, offering for sale, or importing the claimed invention in the United States.

Some of the patents acquired will likely include relatively broad claims directed to important technologies for the relevant industries while many or most will provide relatively narrow claim coverage.  Correspondingly, a relatively small number of the patents included in the portfolios acquired probably account for the largest share of the value – some may be worth tens of millions while others are only worth tens of thousands.  However, the value of acquiring these large patent portfolios is multi-faceted and includes the following benefits:

  1. The purchaser removes these patents as barriers to commercializing new technologies while at the same time controlling those barriers to use against its competitors;
  2. The purchaser increases its cache of patents available to draw on to assert against competitors who threaten to sue for infringement of their patents; and
  3. The purchaser can attempt to generate licensing revenue by licensing rights to use the technology covered by patents in its growing portfolio.

So what can we take away from these ramblings about patent price tags?  Well, it’s safe to say that companies are looking at patents as a must-have asset in their corporate coffers.  As the upper-tier per-patent asking price climbs to astounding levels it is easier than ever for inventors to get lost in dollar signs before they even put the title on their patent application.

Although a single patent, with relatively broad claims, can have significant value, most patents have a more limited value and some have minimal or no value.  Developing a portfolio of patents covering a wide variety of features or aspects of a product line or technology can create a synergistic effect on the value of the patents.  Although it may be relatively easy for a competitor to design around a single patent, trying to design around a phalanx of patents becomes more difficult thereby increasing the value of a larger patent portfolio.

 

USPTO Takes Steps to Incentivize Examiners to Consider Amendments After Final

Written by AnneQ on . Posted in News

by Kent R. Erickson

In an effort to reduce protracted examination of patent applications, the USPTO will be implementing a pilot program referred to as After Final Compact Prosecution (“AFCP”). We are optimistic that this pilot program will be effective in increasing the number of cases which will be allowed based upon an amendment after final without having to incur the additional expense of filing a request for continued examination.

AFCP authorizes a limited amount of non-production time for examiners to consider responses filed after a final rejection. An examiner’s performance is evaluated based upon a count system with the examiner receiving counts for each action they take which moves applications towards resolution. Examiner’s do not have to consider any amendments filed after a final rejection if the amendments do not place the claims in condition for allowance or in better form for appeal. In addition, examiners do not have to consider the merits of any amendment after final if it raises new issues or would require further searching by the examiner. Under current practice, examiners are not inclined to consider new arguments or amendments raised in amendments after final, no matter how wonderful we practitioners think the new amendment might be, as doing so does not add to the examiners count total.

Under the pilot program, for utility, plant and reissue applications, an Examiner will get credit for up to three hours for considering the merits of an amendment after final in order to determine whether the amendment and response places the application in condition for allowance. For design applications, one hour of “non-production” time will be allowed. The non-production time credit will offset the number of counts the examiner is otherwise required to obtain and therefore there is an incentive for the examiner to spend some time considering amendments after final that may require additional searching or consideration of the amended claims.

The credit will generally apply to those situations in which additional searching or consideration of the amendments would be required and not cases in which the applicant is simply rewriting objected-to claims in independent form or complying with formal requirements in response to an objection from the examiner. The “non-production” time allowance will include up to one hour for an interview. The USPTO press release, announcing the pilot program indicates that “examiners will be encouraged to use their professional judgment to decide whether a response can be fully considered, including any additional search required, within the time limit in order to determine whether the application is in condition for allowance.” The pilot program is scheduled for the 3rd quarter of Fiscal Year 2012 which runs from April 1 through June 30, 2012. The goal of the pilot program is to see if authorizing the non-production time will increase the number of applications that are allowed at that point in prosecution and reduce the number of Requests for Continued Examination (RCEs).

Our practice has been to file RCE’s with most amendments after a final rejection due to the difficulty in getting examiners to consider such amendments without an RCE. In addition, examiners were disinclined to agree to interview a case on final rejection requiring the filing of an RCE to get an interview which could help reach an agreement on amendments which would place the claims in condition for allowance. We are optimistic that this pilot program will incentivize examiners to now consider such amendments without having to file an RCE and result in more interviews being allowed after final rejections resulting in savings to our clients and earlier issuance of their patents.

The USPTO press release may be accessed at: http://www.uspto.gov/news/pr/2012/12-23.jsp