Inter Partes Review: Challenging Amended Claims

By Michael Ginsberg An Inter Partes Review (IPR) is a procedure for challenging the validity of a United States patent and is conducted by the Patent Trial and Appeal Board (PTAB). Under Section 311(b) of the Patent Act, someone may only challenge a patent using an IPR only under the grounds that could be raised under 35 U.S.C. Section 102 (which generally relates to when an invention is already public) or Section 103 (which provides that a patentable invention must not have been obvious to a “person having ordinary skill in the art”). Additionally, the challenge can be made only based on the existence of a prior art. A patent owner can amend their patent claims for reexamination if their patent is found to be ineligible under an IPR and the reexamination would once again be an IPR conducted by the PTAB. In the case, Inc. v. Uniloc Luxembourg SA, Amazon challenged and filed for an IPR for claims 1-25 for

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Fourth Estate Public Benefit Corporation v.

Copyright owners cannot sue for infringement until the Copyright Office has granted registration by Michael Ginsberg The U.S. Supreme Court on March 4, 2019 announced a unanimous decision in Fourth Estate Public Benefit Corporation v., 586 US _ (2019) that a copyright owner must wait for registration from the Copyright Office before being able to claim infringement in court. Fourth Estate is a news organization that produces online journalism and licenses its articles to other websites while maintaining the copyrights for these articles. Fourth Estate and came to a licensing agreement that allowed to obtain the licenses to several articles produced by Fourth Estate. Under this agreement, Wall-Street was required to remove all content produced by Fourth Estate from their website if Wall Street were to cancel the arrangement. However, when Wall-Street cancelled the licensing arrangement with Fourth Estate, they did not remove the content from their website, triggering Fourth Estate to sue for copyright infringement. Yet, although Fourth Estate

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The U.S. Joins the Marrakesh Treaty

By Michael Ginsberg The landmark Treaty allows VIPs (Visually Impaired People) access to copies of books President Donald J. Trump signed the documents for the U.S. to ratify the Marrakesh Treaty on January 28   , 2019 and the United States Patent and Trademark Office (USPTO) has welcomed the recent ratification. The Treaty requires those involved to create exceptions to typical copyright rules in order to make published works in formats that VIPs (Visually Impaired People) would be able to read. Additionally it permits exchanging these works across borders by organizations that serve these VIPs. The definition of “works” within the Treaty is limited to materials in the form of text, notation and/or related illustration (including audiobooks). Works that fall within the scope of the Treaty must be publicly available in any media. An important element of the Treaty is the role played by authorized organizations which are the organizations in charge of providing the services to VIPs. The Marrakesh Treaty

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News Release: U.S. Ratification of the Marrakesh Treaty U.S. ratification of the Marrakesh TreatyLandmark treaty facilitates accessible copies of books to persons who are blind, visually impaired, and print disabled WASHINGTON – The United States Patent and Trademark Office (USPTO) welcomed the recent ratification of the Marrakesh Treaty, which allows limited copyright exceptions for the reproduction of published works in formats accessible to the blind and visually impaired. President Donald J. Trump signed the documents for the U.S. to ratify the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled on January 28, 2019. Follow link above for full news release.

Winton Machine Co. Wins Many Business Awards

Winton Machine Co., based in Suwanee, Georgia and one of our oldest clients has won the following awards over the past 3 years.  The attorneys of Stein IP are very proud to serve the IP needs of this growing company. Georgia Small Business ROCK STAR Award Nominee 2019 Gwinnett Chamber Pinnacle Overall Small Business Award 2018 Gwinnett Chamber Pinnacle Small Business 25+ Employees Award 2018 U.S. Commercial Service Export Achievement Award 2017 GLOBE (Georgia Launching Opportunities By Exporting) Award 2017, Global Atlanta Atlanta Metro Export Challenge (MEC) 2017 grant recipient as semi-finalist and finalist Women in Business Champion of the Year – Lisa Winton, National Small Business Week in Georgia 2017 Partnership Gwinnett – Movers & Makers Awards – Small Manufacturer of the Year 2015

Blockchain And IP Law

As a fourth post on this blog series regarding blockchain, Stein IP introduces “Blockchain and IP Law.” Due to Blockchain is frequently related with Bitcoin exclusively, people might think Intellectual Property (‘IP’) Law and Blockchain are incompatible or perhaps never thought of a potential combination of these two. But what if we were able to trace an intellectual property right from its beginnings? Seems like Blockchain may have the answer to that question and many others, opening a wide range of opportunities where IP Law proceeds. First of all, Blockchain could help fix IP registration system inefficiencies. In the United States, according to the US Patent and Trademark Office (USPTO), it takes more than a year to take action after a filing because a lot of applications are subject to manual review, resulting in the total length of time from filing to completing the registration to be 2 years in most cases. This is a real problem if we talk

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A New Measure In the Electronic Retrieval Method for Priority Documents between USPTO and KIPO

There has been a change, effective December 1, 2018, on how documents are electronically retrieved between the United States Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO). From that date on, electronic retrievals of priority documents between the USPTO and KIPO will be managed via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS). By notification on April 20, 2009, the USPTO expanded its PDX (Electronic Priority Document Exchange) program by agreement with the World Intellectual Property Organization (WIPO) to participate in the multilateral exchange of certain priority documents with other IP offices participating in the WIPO Digital Access Service (DAS) for Priority Documents. DAS is a service currently provided by WIPO that offers a simple and safe digital alternative to filing paper copies of priority documents with multiple IP Offices. It enables an applicant claiming priority to ask Offices of second filing to retrieve a copy of the priority document themselves via the service.

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How Is The World Using Blockchain?

As a third post on this blog series regarding blockchain, Stein IP introduces “How is the world using blockchain?” In our previous two posts we have explained what blockchain is and how it affects businesses, in this post we will be talking about the different uses blockchain has or can potentially have in different sectors. From financial services, to voting, to healthcare, blockchain has many applications to today’s world and companies and individuals are starting to dive into them. Cryptocurrencies Probably the most known application of blockchain has been cryptocurrencies. Cryptocurrencies are essentially digital money, digital tools of exchange that use cryptography and with blockchain technology it can facilitate secure and anonymous transactions among users. Cryptocurrencies like Bitcoin and Ethereum (the two biggest cryptocurrencies of this technology) are necessary for many of the applications and transactions in blockchain. Even when writing and executing smart contracts in the network, participants in the transaction must have a cryptocurrency stake and unlike traditional markets,

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Expanded Collaborative Search Pilot Program

by Michael D. Stein Beginning November 1, 2017, the United States Patent and Trademark Office (USPTO) is participating in a new, expanded Collaborative Search Pilot Program in which applicants may request that multiple partnering Intellectual Property (IP) offices exchange search results for their corresponding counterpart applications before producing and issuing their office actions.  In Expanded CSP, each designated partner IP office will independently conduct a prior art search for its corresponding counterpart application.  The search results will then be exchanged between the designated partner IP office(s) and the USPTO before any IP office offices issue an office action.  A copy of the Notice in the Federal Register is attached herewith.   Initially, under the Collaborative Search Pilot Program (CSP) which began on August 1, 2015, only the Japan Patent Office (JPO) and Korean Intellectual Property Office (KIPO) were participants.  And the applicants had to follow the First Action Interview Pilot Program (FAI).   Under the Expanded Collaborative Search Pilot Program

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Fair Use Doctrine

By Michael Small   The Copyright Office defines Copyright as the exclusive right for a person (mainly the author) to reproduce, publish, sell, or claim ownership of his or her original works of creation under Section 106 of the Copyright Act of 1976.[1]  The copyright symbol (©) identifies the work as protected to the copyright owner and the audience.  This intellectual property right grants protection to the author’s creative works such as literature, music, drama, arts, or architecture upon the creation of his or her product in a fixed media.  This protection remains valid until the owner’s death plus 70 years.  Afterwards, the work becomes public domain, which allows for anyone to use the work for any purpose.  However, to prevent potential conflict with the First Amendment’s grant of freedom of speech, religion, and the press, the court created the fair use doctrine as a check and balance to copyright’s power. The Fair Use Doctrine is a declaration that allows

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