Innovators: Consider the Benefits of Microlayer Films

Microlayer films are stacks of think extruded layers of plastic materials which can impart unusual properties to an object or a package, including iridescence, mirror-like properties, and high strength. Microlayers are used in some Nike shoes (e.g., the Air Max 360) to provide elastomeric barrier films for air bladders, keeping the air contained much longer than would be possible for most single-component materials. Microlayers add security against thieves in windows reinforced with 3M's Scotchschield® Ultra films. A variety of perfume containers and other packaging have beautiful iridescent coloring from microlayer films. And these are just the beginning of the many applications.

A great article reviewing the potential of microlayer films is "Microlayer Films" New Uses for Hundreds of Layers" by Jan H. Schut in the March 2006 edition of Plastics Technology.

I would encourage you to think creatively about what this versatile technology can do for you and your product ideas.

Legal Protection of Digital Information: Online Treatise by Dr. Lee Hollaar

Professor Lee Hollaar of the University of Utah has written a detailed treatise on protecting digital content. It covers copyright protection and patent protection in significant detail, with information that is applicable to non-digital content as well (i.e., basics of copyright and patent law). His work, "Legal Protection of Digital Information," was published by BNA Books in 2002, but is now available for free online at Digital-Law-Online.info.

From the BNA Books introductory page:

Your complete guide to understanding-and strategically applying-intellectual property law in the dynamic digital age.

* Are computer programs copyrightable?
* What are the four "safe harbors" for network service providers?
* How do "Notice, Takedown, and Put-back" procedures impact your clients?
* What is fair use in the Internet environment?

Gain new insights into intellectual property law in the electronic age-and discover the key to protecting your clients' digital information-with this up-to-date and comprehensive treatise. Dr. Hollaar, registered patent agent, software and hardware developer, and lead technical expert in the Microsoft antitrust suit, has long been active in the interface between computer science and law. Now, the former Fellow with the United States Senate judiciary committee who advised on computer-related issues such as encryption, copyright and patent law, and regulation of the Internet, brings you insider information on the burgeoning area of intellectual property law as it applies to digital material.

Just as the Internet has made knowledge of copyright law important to millions, patents on software and business methods have made it necessary for corporate counsel to understand what is patentable and why. This expansive resource provides an introduction to patent and copyright law in the digital arena; cites key cases that define the scope of what can be patented; and gives incisive interpretations of important copyright and patent statutes, including one of the most complete discussions and analyses of the Digital Millenium Copyright Act (DMCA).

Drawing on his unique experience, Dr. Hollaar offers practical analysis of patent and copyright law in the electronic age and presents critical information in clear, straightforward language.

Two Recommended Blogs on Trademarks

TTABlog® deals with trademark cases handled by the USPTO's Trademark Trial and Appeal Board and contains many lessons on trademark practice. Some of them can be valuable for anyone interested in trademarks. Another blog to consider is the Trademark Blog from the
Law Offices of Martin Schwimmer in Westchester, New York.

One of the significant cases mentioned on Martin Schwimmer's blog involves Adidas and Payless Shoes. Payless is facing a $305 million penalty for infringing the three-strip tennis shoe trademark of Adidas, one of the largest trademark awards ever. See comments at ConcurringOpinions.com/.

PTO's Checklist for Business Method Patents

If you file a patent that has the misfortune of being treated as a "business method patent" by the PTO - meaning that it is in Class 705 - then there is a special checklist that the PTO will use during prosecution. Check out the Business Methods Allowance Checklist - one of several valuable resources on the PTO's page on business methods.

Business Methods Allowance Checklist

• Useful, concrete, and tangible result.


• Not a judicial exception per se.


• Not just data per se.


• Not simply automating a known or obvious process on a computer or on the internet.


• Not a computer program per se.


• Not merely non-functional data on a storage device, i.e., music on a cd.


• If functional signal is being claimed, must be statically embedded in a computer-readable medium.


• The feature that appears to distinguish over the prior art does not merely appear in a recitation of intended use, the name or title of a feature or in non-functional descriptive material.


• Searches for analogous art related to the distinguishing feature were conducted.


• The meanings attributed to the words of the claim are the plain, ordinary, meanings unless criteria for a special definition have been met.

*You must be able to answer yes to all of these statements.

Preliminary Interviews with Patent Examiners?

In light of the new obviousness challenges with the Supreme Court's KSR decision, patent seekers may wish to take proactive steps to help the patent examiner understand the story of the invention and its nonobviousness of the prior art. In some cases, it may even make sense to request a preliminary interview with the examiner -- before the first office action has been issued -- in order to expedite examination and address the inevitable obviousness issues.

Some have asked if such interviews are even possible. It used to be that they weren't, but on Sept. 26, 2005, the law was amended to make it possible.

Authority for a preliminary interview at the discretion of the Examiner is found in 37 C.F.R. 1.33(a)(2):

An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the examiner determines that such an interview would advance prosecution of the application.

So yes, it is possible.

But how can you do this before the first office action, when you don't even know who the examiner is? No problem! You can simply call the PTO and ask who the examiner is. I just did this recently for a patent I filed last year and was given the name and phone number of the examiner after providing the serial number of the application.

Now the examiner may not be willing to grant a preliminary interview - depends on the case and the person. And if they do grant a preliminary interview, they may request some additional info from you such as a general statement on the prior art, a list of up to three references of "closest" prior art, and an explanation of your novelty over these references. That possibility was raised by the PTO in a "PTO Day" presentation in 2005. See the bottom of page 8 in www.ipattorneyfirm.com/forms/PTOdayArticleNAPP.pdf for a summary of a PTO presentation where they stated that they may ask for additional info in a preliminary interview.

Will a preliminary interview really help? From my personal experience, I know that face-to-face interviews in general are a powerful tool in helping to expedite examination, though it will take some time to see how much traction preliminary interviews afford. I think that if the examiner is willing, it could save you many months of prosecution time and perhaps even an extra continuation fee. If you can afford to wait, fine. But if time is of the essence, think about a preliminary interview to help deal with KSR and otherwise expedite examination.

Got a Bill from PatentOnline.org? Beware Trademark Fraud

Our company, Innovationedge, has pursued a couple of trademark registrations. This week we received two bills apparently for European trademark registration. Each bill showed our recently published trademark and requested over $2000 for registration, payable to an office in Switzerland. It looked official, but a careful examination revealed several problems. First, there was no telephone number to call to verify details. There was also no evidence that this was in response to a request we had made. Most telling, there was fine print at the bottom in bad English indicating that this was for registration in their private database and not on behalf of any government organization.

Ah, right! Pay a couple thousand dollars and they'll list you in a private, unofficial database,. Hey, I can do the same on my laptop - and I'll only charge $1000.

The envelope it came in indicated that it was mailed from the Slovak Republic.

My recommendation if you get any strange trademark registration invoices from the Slovak Republic that are associated with patentonline.org, don't pay! It's a fraud, A scam. A con. Theft. Sickening!

Pitfalls of Filing Non-English International Patent Applications

"When English is Best—Pitfalls of Filing Non-English International Patent Applications" by Gladys H. Monroy and Barry E. Bretschneider (June 2005) is a good resource for clients considering parent patent applications in foreign countries. One recommended strategy if a non-English application is being filed is to also file it as a provisional non-English application in the US, and later claim priority to it in an international PCT application. This can maintain the earliest possible 102(e) date. Here is the specific recommended strategy:

(1) On the same day that the foreign application is filed in the foreign patent office (January 1, 2001), file that foreign application in the foreign language as a provisional application in the USPTO under 35 USC 111(b).

(2) File an IA under the PCT in the English language in the foreign patent office within twelve months of the filing date of the provisional application claiming benefit of the provisional application (January 1, 2002). The IA must designate the United States, and be published in the English language by WIPO (under PCT Article 21(2)).

(3) File a certified English translation of the provisional application at the USPTO within sixteen months of the filing date of the provisional application or within four months of the filing of the IA (whichever is earlier).

(4) File a U.S. national stage application under 35 USC 371 in the U.S. within thirty months of the filing date of the provisional application (July 1, 2003).