Posts Tagged ‘Legal’
Wednesday, September 14th, 2011
 BizFilings, which provides online incorporation services, has joined the Startup America Partnership to strengthen entrepreneurship in the United States. As part of this partnership, BizFilings has pledged to invest $1 million in incorporation products and services to provideresources to start-up companies and promote entrepreneurship within the Startup America Partnership.
“BizFilings has a long history of dedication toward helping entrepreneurs start their dream businesses,” says Karen Kobelski, a member of the leadership team at BizFilings. “We are pleased to join the Startup America Partnership and consider this partnership an important step to continue to promote and support entrepreneurship across America.”
The Startup America Partnership is focused on bringing together some of the country’s most successful organizations to provide valuable resources to young companies with high growth potential. Those resources fall into five key areas that entrepreneurs find critical to success: Talent, Services, Expertise, Customers and Capital.
The Partnership is also working on a regional basis to identify and help accelerate entrepreneurial ecosystems across the country. Since launching at the White House in January of this year, the Partnership has announced nearly $1 billion in private-sector commitments to support startups.
Tags: BizFilings, incorporation services, Legal, pledge to Startup America, Startup America
Posted in Economic Development, entrepreneurship, Legal | Comments Off
Tuesday, June 28th, 2011
By Elizabeth Johnson and Kevin Ceglowski
Poyner Spruill
 Elizabeth Johnson Recent controversy about the tracking capabilities of mobile software, including apps provided by Apple and Google, highlights the increased push for privacy policies covering mobile applications.
Senator Al Franken of Minnesota, chairman of the Senate Judiciary Committee’s privacy subcommittee, recently sent a letter to the CEOs of Apple and Google asking them to require “clear and understandable” privacy policies for all applications in the Apple App Store and Android App Market. Currently, neither company proactively enforces a requirement for apps to include these policies.
Senator Franken’s letter cites a study by TRUSTe and Harris Interactive that found less than 20 percent of the top free mobile applications link to a privacy policy. The effort to expand the use of mobile privacy policies follows increased scrutiny of online privacy policies by the Federal Trade Commission (FTC). In December 2010, the FTC released a privacy report criticizing privacy policies as overly lengthy and difficult for consumers to understand.
This push for mobile app privacy policies comes on the heels of Senator Franken’s Congressional hearing in early May after high-profile coverage about a location database discovered in Apple iOS software for iPhones. That tracking file, which contained information about users’ locations using data from Wi-Fi hot spots and cell towers, was extensively covered by major news organizations. Google’s Android software has similar tracking capabilities and creates a similar log file.
In addition to the bad publicity related to these tracking issues, lawsuits have resulted. On June 9, 2011, two plaintiffs in Florida filed a class action complaint against Google alleging the Android software engaged in illegal tracking and recording of users and that Google violated the Computer Fraud and Abuse Act and Florida law by failing to inform Android users that they were being tracked. Apple has faced similar lawsuits recently.
Mobile app developers should include comprehensive privacy policies
In light of the recent press about mobile tracking and the increased attention to mobile devices and apps from Congress, mobile application developers should include comprehensive privacy policies with their software. In so doing, developers should bear several key points in mind and learn from the mistakes made by past targets of government enforcement.
Privacy policies must be carefully crafted to comply with the various laws dictating required content. The laws that apply will vary based on industry, the type of data collected, and the age and residency of users. Age and residency can be particularly challenging to discern in a mobile environment.
Mobile application providers face special challenges in drafting comprehensive privacy policies that can be read and understood by users reading them on small screens. Short form notices, sometimes called “highlights notices,” can be helpful, but developers must ensure material information is conveyed without excessive linking that can bury crucial content.
The FTC frequently targets companies that make overly broad privacy promises and then fail to follow them. These companies typically make promises regarding information sharing or security that they inadvertently violate. For example, in 2010, the FTC took an enforcement action against Twitter, which stated in its privacy policy, “Twitter is very concerned about safeguarding the confidentiality of your personally identifiable information.
We employ administrative, physical, and electronic measures designed to protect your information from unauthorized access,” but subsequently failed to secure users’ accounts and fell prey to hackers. The resultant settlement required Twitter to implement a comprehensive security program and submit to a third party audit of that program every other year for 10 years, among other equitable remedies. This action is representative of dozens of similar actions by the FTC in recent years.
Google provides another example of privacy policy enforcement. When launching Google Buzz in 2010, Google told consumers “When you sign up for a particular service that requires registration, we ask you to provide personal information. If we use this information in a manner different than the purpose for which it was collected, then we will ask you for your consent prior to such use.”
The FTC enforced
The FTC enforced, claiming that Google: (1) violated its privacy policies by using information provided for its Gmail email program for social networking purposes without obtaining users’ permission in advance, misrepresented that users who clicked on certain options in the Gmail system would not be enrolled in Buzz, (2) misrepresented that users could exercise control over what personal information would be made public, and (3) failed to disclose adequately that users’ frequent email contacts would become public by default.
Consumers sued on similar grounds. Google’s settlement with the FTC requires it to implement a comprehensive privacy program and calls for privacy audits by a third party biennially for the next 20 years. This action represents the first time an FTC settlement ordered a company to implement a comprehensive privacy program to protect the privacy of consumers’ information. Google’s settlement of the consumer class action lawsuit requires it to create an $8.5 million fund to award money to groups that provide education on Internet privacy.
As a last point of practice, mobile app providers should ensure that they understand precisely what information they will receive from operating platforms, device providers, and social networks, as applicable. Failing to disclose to consumers with particularity the types of information received when the app is used often serves as grounds for government enforcement, Congressional inquiry, and lawsuits. Keep in mind that an ever-broader array of data, such as user location, IP address, and device identifiers may be considered “personal information” that should be subject to a privacy policy.
Despite the risk inherent in making enforceable privacy promises to consumers, the abundance of lawsuits related to online and mobile tracking, the applicable legal requirements and the scrutiny from the press, regulators, legislators and consumers collectively mean that implementation of privacy policies is strictly necessary for mobile apps. The key to managing these risks is to understand the legal landscape, to understand the operation of the software, and to develop a prudent approach that serves the application developers and the companies providing mobile apps to their consumers and employees.
Kevin Ceglowski may be reached at 919.783.2853 or kceglowski@poynerspruill.com. Elizabeth Johnson may be reached at 919.783.2971 orejohnson@poynerspruill.com.
Tags: Elizabeth Johnson, FTC, Google privacy, Kevin Ceglowski, Legal, Mobile app development, need for comprehensive mobile app privacy policies, Poyner Spruill, Sen. Al Franken on privacy
Posted in Carolinas, Google, Internet/New Media, IT, Legal, Mobile, North Carolina, Security | Comments Off
Friday, June 17th, 2011
 WASHINGTON, DC – The U.S. Senate Judiciary Committee has approved a bill that would make streaming copyrighted movies or TV shows online a felony.
The Commercial Felony Streaming Act, sponsored by Sens. Amy Kkobuchar (D-MN) and John Comyn (R-Texas), has seen heavy lobbying by industry groups.
The bill, which stipulates that streamed video would have to be worth more than $2,500 retail or $5,000 in licensing fees, would make some violations punishable by up to five years in prison.
Under current federal law, a legal distinction exists between illegal streaming and downloading – two methods of distributing the same stolen, digital content. This bill makes penalties similar for either offense.
To the technicians, designers, construction workers, and artists who support their families through their work in entertainment, there’s no difference between illegal downloading and illegal streaming it’s all theft that hurts their work, their wages and their benefits. There should be no difference in the law, either,‖ said Michael O’Leary, Executive Vice President, Government Affairs for the MPAA.
In a joint statement, the industry groups said, “The bill would apply only in cases in which a website operator has willfully and knowingly violated a copyright and profited from it, and does not allow law enforcement to prosecute people who stream videos without intending to profit — a parent sharing a video of her child with friends and family, for example.”
Tags: Internet/New Media, Legal, Senate bill would make streaming copyrighted video or movies a felony
Posted in Government/Defense, Internet/New Media, Legal, video | 1 Comment »
Friday, May 20th, 2011
 Lawrence Lessig RALEIGH, NC -A bill to restrict municipal broadband efforts in North Carolina has drawn national attention. Lawrence Lessig, the Harvard Law professor well known for his expertise in Internet legal matters, has written an open letter on the Huffington Post urging NC Gov. Bev Perdue to veto the bill. Perdue has until midnight tonight to decide whether or not to sign or veto the bill.
“North Carolina is an overwhelmingly rural state. Relative to the communities it competes with around the globe, it has among the slowest and most expensive Internet service. No economy will thrive in the 21st century without fast, cheap broadband, linking citizens, and enabling businesses to compete,” Lessig writes in the post.
That’s why several municipalities in the state, such as Wilson, Salisbury and others, created their own city networks.
“These networks have been extraordinarily effective. The prices they offer North Carolinians is a fraction of the comparable cost of commercial network providers. The speed they offer is also much much faster,” Lesig notes.
Lesig notes that many communities and businesses in and out of the state oppose the bill.
Lesig argues, as we have repeatedly, that the Internet is as much essential infrastructure in the 21st century as electricity and water.
Stand with the majority of NC citizens
“And communities that rely solely upon private companies to provide public infrastructure will always have second-rate, or inferior, service,” he writes.
We should note that Time Warner Cable just this week boosted its Internet speed substantially for all NC Triangle area subscribers, but still falls short of the speeds offered via municipal broadband networks in the state such as Wilson’s.
Lesig urges Gov. Perdue to “Stand with the majority of North Carolina’s citizens, and affirm the right of communities to provide not just the infrastructure of yesterday — schools, roads, public lighting, public police forces, and fire departments — but also the infrastructure of tomorrow — by driving competition to provide the 21st century’s information superhighway.” — Allan Maurer
Additional resources:
Tags: Gov. Bev Perdue, Huffington Post, Lawrence Lesig, Legal, muncipal broadband networks, municipal broadband battles, Municipal broadband in NC, NC, restricting municipal broadband, Salisbury, Wilson
Posted in Carolinas, Internet/New Media, IT, Legal, North Carolina | 1 Comment »
Thursday, May 12th, 2011
 Leading family law firm Bross Bennett is warning just how damaging digital communications can be if used incorrectly, with detrimental effects going further than recipients and online communities, and right into courts of law.
Only this week a US court has slashed maintenance payments to an ex-wife because of her blog posts. Far too frequently users of social media don’t think before they post and don’t consider that once they post information, it is out there for just about anyone to see and use.
Says Sharon Bennett of Bross Bennett; “It’s important that everyone thinks about the possible consequences before they type. They don’t think about the impact of what they have done, and we have seen first hand just how damaging the written word can be in a court of law, especially in the case of divorcing couples who send aggressive tweets, texts or emails in the heat of the moment.
People need to remember that not only can these pour fuel on an already flaming relationship, they can later be used against them as written evidence. Both outcomes are hugely damaging.”
If used correctly, modern technology can be very helpful. For divorcing couples in particular, texting and emailing can be a great way to help you avoid confrontational verbal conversations. Modern technology allows us the luxury of time to think and create a constructive response that can diffuse a situation and preserve your dignity, something that can be very hard face to face.”
We think these guidelines apply to people in business as well as to personal communications. We’ve seen some businesses jump on Facebook comments in accusatory ways that can only alienate not only the specific customer, but also potential future ones.
The five steps to good social media etiquette
1. Before you post or send anything that may be inflammatory or controversial, wait for 24 hours, after which you’ll be able to consider what you’re writing more objectively. Try and think how your communication will be viewed if read out of context, perhaps by your child or a Judge.
2. Don’t respond to or initiate inflammatory language, and resist replying immediately to anything you do receive of this nature. If you feel you have to respond, adopt the 24 hour delay rule. Get your thoughts and feelings down on paper, but give yourself a day or two to reflect on your response.
3. Consider getting the input of your solicitor before you send anything other than the most simple of communications. They can give you invaluable and constructive advice and remove any sting that you may not even have been aware was there.
4. Do not ever vent your frustrations on Facebook or Twitter, where things can ‘mushroom’ and get out of hand. Anything of this nature can end up being viewed very unfavourably by a judge in a court of law and your children or family might be very hurt by it.
5. Treat correspondence as business-like and straight to the point, rather than emotional – there are better ways and places to express this.
TechJournal South is a TechMedia company. TechMedia presents the annual conferences:
SoutheastVentureConference: www.seventure.org
Internet Summit: www.internetsummit.com
Digital East: www.digitaleast.com
Digital Summit: www.digitalsummit.com
Tags: best practices for social media, Five steps to social media etiquette that may keep you out of court, Legal, Viewpoint
Posted in social media, Studies, surveys, reports, Viewpoint | Comments Off
Monday, April 25th, 2011
 When a federal jury ruled against Google last week, awarding Bedrock Computer Technologies Inc. $5 million for infringement of a Linux kernel patent, it stirred up fears that the decision could have implications for other Linux users and Google’s much-sued Android mobile device operating system.
While Bedrock got no where near the $180 million it asked for in its suit against Google in the Eastern District of Texas federal court, it is cause for worry to other Linux users. Bedrock has also sued Amazon, MySpace, PayPal, Yahoo, AOL, and others, while Raleigh-based Red Hat, a Linux distributor, is suing Bedrock in an attempt to invalidate its patent. The Linux kernel is at the heart of Google servers and its Android OS is also built on Linux.
The patent in suit is: U.S. Patent No. 5,893,120, on “methods and apparatus for information storage and retrival using a hashing technique with external chaining and on-the-fly removal of expired data.”
In a statement, Google responded to the court decision, saying, “”Google will continue to defend against attacks like this one on the open source community. The recent explosion in patent litigation is turning the world’s information highway into a toll road, forcing companies to spend millions and millions of dollars defending old, questionable patent claims.”
Google’s Linux-based Andoid OS faces 14 other patent suits even as it has rapidly become the leading smartphone operating system.
This case and others – such as Apple Inc.’s against Samsung Electronics that claims Samsung copied iPad and iPhone designs – point up the need for some sort of patent reform when it comes to software.
Following the verdict in the Texas case, some analysts suggest others being sued may elect to pay fees rather than go to court.
TechJournal South is a TechMedia company. TechMedia presents the annual conferences:
SoutheastVentureConference: www.seventure.org
Internet Summit: www.internetsummit.com
Digital East: www.digitaleast.com
Digital Summit: www.digitalsummit.com
Tags: Amazon, Android OS, AOL, Bedrock Computer Technologies, East Texas District Court, Google loses Linux patent suit, Legal, Linux kernel, MySpace, PayPal, Red Hat, smartphones, Yahoo
Posted in Google, Internet/New Media, IT, Legal, smartphones | Comments Off
Wednesday, April 13th, 2011
 Priceline founder Walker Digital filed lawsuits Tuesday in the U.S. District Court of Delaware alleging that Apple, Sony, Facebook, Groupon, Microsoft, Google, Amazon and more than 100 other companies are infringing parts of its patents.
Its 15 suits claim the companies are infringing on Walker Digital patents that cover e-commerce, private social-networking communications, online auctions, and driving directions with visual cues.
Walker Digital’s Chairman Jay Walker said in a statement, that “A number of great companies can trace their genesis to technology that was first developed at Walker Digital in the mid-to-late 1990s. We are proud of our inventions and the number of innovative businesses and activities founded on these inventions. These businesses have not only changed the way people around the world live, work, travel and interact socially and commercially, but also have given rise to numerous American jobs.”
Companies not negotiating
“Filing these lawsuits is not a step we sought or preferred,” said Walker Digital’s CEO Jon Ellenthal. “We have reached out to a wide range of companies that are engaging in commercial activities that clearly depend on inventions created and owned by Walker Digital. Unfortunately, many of these companies have refused to engage in meaningful negotiations that acknowledge the market value they derive from the use of our property.”
“Our portfolio is the work of more than 100 people and enormous private financial investments over the past 17 years. As with any commercial inventor, our overriding goal is to see our inventions profitably reach the marketplace, either directly by founding start-ups or indirectly by enabling third-parties through licenses that allow us to participate in the economic value created from our property.”
More than 400 patents issue or pending
Founded in 1994, Walker Digital has invested several hundred million dollars to create what is now a broad portfolio of inventions and operating companies. The company’s inventions are covered by more than 400 issued and pending U.S. and foreign patents. Several hundred patent applications are currently pending.
All of Walker Digital’s patents were created internally by invention teams at the company focused on generating new solutions to business problems. No patents have been purchased from other companies or inventors.
Walker Digital has started several operating companies, in addition to supporting several others with licenses, to commercialize its inventions in e-commerce, gaming, publishing, retailing, education and other industries.
These companies have collectively served more than 100 million consumers, generated billions in revenue and created thousands of new jobs.
The best-known company based on Walker Digital’s inventions is priceline.com, with a current market value of more than $22 billion. Priceline, launched in 1998, is one of the biggest success stories of all of the first-generation e-commerce companies.
TechJournal South is a TechMedia company. TechMedia presents the annual conferences:
SoutheastVentureConference: www.seventure.org
Internet Summit: www.internetsummit.com
Digital East: www.digitaleast.com
Digital Summit: www.digitalsummit.com
Tags: Amazon, Apple, e-commerce, facebook, Google, Groupon, Jay Walker, John Ellenthal, Legal, Microsoft, patent infringement, Priceline founder sues more than 100 companies, social networking communications, Sony, Walker Digital
Posted in IT, Legal | Comments Off
Tuesday, April 5th, 2011
By John L. Watkins
 John Watkins I recently attended an event that involved a discussion of current issues facing information technology, security, privacy, compliance and e-discovery experts. One of the subjects discussed is whether corporate America is entering a period of “convergence” of these areas.
The discussion was in reference to management issues in this context, so I will use the term “management convergence.” What does management convergence mean?
In a corporate governance sense, it means coordination of these areas in a business unit reporting to a single executive. At a minimum, it means the management personnel in these areas should at least talk to each other and understand the specific concerns and functions of each discipline.
Given that we are living in a time in which businesses are still being asked to do more with less, but with electronic information multiplying at an ever-increasing rate, the potential benefits of management convergence struck me — as perhaps the lone generalist in the room – as rather obvious.
Nevertheless, the discussion indicated that many businesses are still using a “silo” mentality, in which, for example, the compliance professionals work separately from the e-discovery professionals and there are multiple fiefdoms.
Upon further reflection, the predominance of the silo mentality is not surprising. Silos reflect the all too human characteristic of preferring to build and control a small empire rather than serving as a part of a larger organization. In addition, for many companies, silos simply reflect the way that business has always been done. Sometimes, for example, silos are adopted as a way to assuage the competing egos of executives.
Businesses continuing with a silo approach, however, are likely missing the boat both with respect to both minimizing costs potential liability. In many respects, a company using the silo approach is in a situation much like the U.S, intelligence agencies found themselves after 9/11: They did not talk to each other and share information, and hence no one “connected the dots.”
The common thread in all of these disciplines is the management and control of electronic information. The proper management of information is especially critical in the financial institution and healthcare sectors, but, in reality, it is important in almost any industry.
The benefits of management convergence would appear to be obvious:
- Compliance and security personnel would almost certainly benefit from tools developed for e-discovery.
- E-discovery personnel would benefit from understanding compliance and privacy concerns, which could lead to proper protection of sensitive information in discovery.
- Compliance personnel need to understand privacy issues in performing their jobs.
- Risk management personnel need to understand all of this and to make sure that risks are properly assessed and that insurance and risk controls are in place.
These are only a few examples why managers in these various areas should at least talk to each other. At an absolute minimum, the Chief Information Officer or Chief Technology Officer should be coordinating with the General Counsel. Even greater benefits might be achieved my managing these different, but related, disciplines in one unit reporting to one executive.
The C suite needs to consider these issues carefully. In the event of a class action lawsuit or governmental inquiry, it will be important for officers and directors to show that (a) they paid proper attention to all of these subjects; (b) considered carefully how these disciplines fit together; and (c) implemented a strategy for making sure that those involved in managing and controlling the company’s information work together.
A massive data breach will result in numerous issues. Those involved in IT management and security will be focused on the technical issues – determining why the breach occurred and what can be done to prevent it.
Regulatory and compliance personnel will be involved in, as may be necessary, reporting the breach and providing redress to those affected. Those involved in risk management will need to assess potentially available insurance coverage, and put carriers on notice. The legal department will, of course, have to be involved generally, and those involved in e-discovery will likely need to implement a hold to preserve information for litigation that is likely to follow.
The company will also probably be faced with a public relations emergency. The company will want to present a coordinated and transparent response. Mixed messages or incorrect publicly disseminated information will only make the situation worse. If the company has made no effort to coordinate among the involved disciplines, the chances of an effective public response are greatly diminished.
There is also the strong possibility of litigation. Potential claims include multiple claims or a class action by those affected. If the event resulted in financial loss to the company, there may be a class action against officers and directors. In the event of litigation, it is a virtual certainty that plaintiffs’ counsel will seek to depose not only the managers of the various disciplines, but those in the C suite.
If the officers and directors have not already asked questions regarding coordination of those involved in handling and managing electronic data, the plaintiffs’ lawyers surely will.
One of the companies represented at the event – a large financial services company – has already adopted a coordinated approach under which all of the affected disciplines report to one senior officer. Those companies stuck with silos should consider knocking them down and adopting a similar approach. Coordination and convergence of disciplines should decrease risks, make breaches or incidents that do occur more manageable, and may have the happy incidental effect of lowering total costs.
John L. Watkins is a partner in the Atlanta office of Barnes & Thornburg LLP, and a member of the firm’s Litigation Department. He currently focuses his litigation practice on complex litigation matters involving trade secrets and confidential information, insurance coverage and insurance bad faith, corporate disputes, and other commercial matters. He is with the firm’s cloud computing and cyber security practice.
TechJournal South is a TechMedia company. TechMedia presents the annual conferences:
SoutheastVentureConference: www.seventure.org
Internet Summit: www.internetsummit.com
Digital East: www.digitaleast.com
Digital Summit: www.digitalsummit.com
Tags: Atlanta, Barnes & Thornburg, compliance, e-Discovery, future of IT, John Watkins, Legal, privacy, Security, Viewpoint
Posted in Business advice, Internet/New Media, IT, Legal, Viewpoint | 1 Comment »
Friday, November 12th, 2010
By R. Brian Drozd, Moore & Van Allen
 Brian Drozd Many companies, especially companies trying to save money, file provisional patent applications to protect inventions. Provisional patent applications differ from regular patents applications because they do not mature into an actual patent unless a patent application (commonly referred to as a “non-provisional” application) is filed within one year claiming priority to the provisional application.
Benefits:
First, the U.S. Patent and Trademark Office (“PTO”) filing fee of a provisional application is relatively low: only $110 for a small entity (i.e. a company with less than 500 employees) or $220 for a large entity. The PTO filing fees for a non-provisional application generally range between $450 and $2,000 (depending on the size of your company and claims made in your application).
Second, the requirements for a provisional application are much easier to meet than a regular patent application. In order to obtain a filing date, all that is needed in a provisional application is a coversheet, the PTO filing fee and a specification. Accordingly, preparation and filing of a provisional application is a simple and quick process for patent attorneys, which greatly reduce attorney’s fees.
Third, the filing of a provisional application affords patent protection for an added year before filing a non-provisional application, effectively extending the normal 20 year patent term to 21 years.
Fourth, the filing of a provisional application can be used to satisfy the U.S. requirement that a patent application must be filed within one year of publication, first public use or offer for sale of an invention. Thus, if one of these activities is imminent, then filing a provisional application is the typical way to go since there is not much time to prepare and file a non-provisional application.
Fifth, the filing of a provisional application enables the applicant to claim patent pending status on its products.
Sixth, the timely filing of a provisional application preserves U.S. and foreign patent filing rights.
Considerations:
In order to retain the priority benefit of the filing date of a provisional application, a regular non-provisional patent application (and if foreign rights are contemplated, any foreign applications) must be filed within one year of the filing of the provisional application and must claim priority based on the provisional patent application.
It is also important to keep in mind that provisional applications are generally held confidential by the PTO, which many companies prefer due to the sensitive nature of the subject matter. However if the applicant decides to file foreign patent applications claiming priority to the provisional application, the provisional application will be published 18 months from the filing date of the provisional application. Likewise, once a U.S. non-provisional application (claiming priority to the provisional application) has been pending for 12 months or has issued, the provisional application will be published.
As another filing consideration, filing a provisional application delays when examination will commence, effectively delaying when the patent will eventually issue. Some companies view this as a negative if their technology is quickly-changing, such as software, cell phones, etc. Quickly-issued patents are key to protecting technology that is changing rapidly in the marketplace. On the other hand, some companies actually prefer to have a patent pending as long as possible so that potential infringers will not immediately know how broad the issued patent will eventually be and so the potential infringers cannot actively design around a patent application since the patent claims have yet to issue.
Another filing consideration is litigation, as provisional applications are discoverable during a lawsuit. This makes provisional applications a potential litigation exposure because it is possible to attack the scope of an issued patent based on the differences in language between the provisional application and the non-provisional application. Many conclude that a non-provisional application should have the exact same language as the provisional application and, at that point, it may be better in the long run to file the non-provisional application rather than the provisional application.
In conclusion, the decision regarding filing a provisional application will be based on costs, timing and confidentiality of the invention. Additionally, a company should take into account non-patent business factors that are normally associated with putting a new product on the market.
Brian Drozd is an associate in the Charlotte office of Moore & Van Allen. Mr. Drozd concentrates his practice in intellectual property with a focus on patent preparation and prosecution.
Tags: best practices, Charlotte, Legal, Moore & Van Allen, NC, provisional patent applications
Posted in Business advice, Carolinas, Legal, North Carolina, Viewpoint | 1 Comment »
Friday, October 8th, 2010
by Andrew Gerschutz
 Andy Gerschutz The average utility patent takes three years from filing to issue because of an extended examination process and a large backlog of patents. This extended examination process is undesirable for inventors and companies that want to bring a product to market quickly or prevent infringing products from capturing market share.
To address this issue, the U.S. Patent and Trademark Office developed an Accelerated Examination program that expedites the examination process. The goal of the program is to take an application from filing to a final decision within one year. While expedited examination may be beneficial to applicants, there are major concerns that need to be considered before enrolling in the program.
To qualify for the Accelerated Examination program, the applicant must submit a complete patent application and two supplemental documents to the Patent Office. The first supplemental document is a pre-exam search document disclosing the results of a prior art search. In contrast, an applicant must disclose known prior art but does not have to conduct an expensive search during a standard examination.
Moved to the top of the docket
The second supplemental document is a support document comparing the applicant’s claims to the references found in the search and explaining why each claim is patentable. Typically, the applicant only argues for the patentability of claims after they have been rejected by an examiner. By requiring the applicant to characterize the claims in advance, the support document may result in unnecessarily narrow claims.
Once in the Accelerated Examination program, the application will receive special treatment in the Patent Office. The application will be moved to the top of the examiner’s docket, multiple conferences will be held with the applicant, and there will be shortened time frames to respond to Patent Office requests. The application will be moved to a final decision, which can be an allowance, a final office action, an appeal, a request for continued examination, or abandonment, within one year of filing.
Not for everyone
While this program may be beneficial to applicants, there are drawbacks to consider. In addition to the risk of unnecessarily narrow claims, there is also a risk of inequitable conduct when characterizing prior art. If a reference is accidentally mischaracterized, e.g., a reference is thought to be irrelevant, a party opposing the issued patent could argue that the patent is invalid.
Another limitation of the process is that the pre-exam search must encompass the full breadth of the claims. If the claims are amended during examination but the original search did not encompass those amendments, the applicant needs to conduct another search and provide the results to the Patent Office.
Given the risks and costs associated with Accelerated Examination, the program may not be appropriate for most applicants. The program may be worth considering if the applicant needs an issued patent very quickly or if the applicant has already conducted an extensive patentability search and did not uncover relevant references. We recommend speaking with qualified patent counsel to discuss your particular needs and the appropriateness of the Accelerated Examination program for your circumstances.
Andy Gerschutz is an associate in the Research Triangle Park office of Moore & Van Allen. Mr. Gerschutz concentrates his practice in intellectual property with a focus on patent prosecution. Mr. Gerschutz’s areas of scientific expertise include plant biology, molecular biology, and biochemistry.
Tags: Accelerated examination in the US Patent & Trademark Office, Andy Gerschutz, Legal, Moore & Van Allen, MVALaw, Viewpoint
Posted in Carolinas, Columns, IT, Legal, North Carolina, Viewpoint | Comments Off
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