MMH - InBrief #6

Miller Matthias & Hull - Ideas Protected

In this Issue: USPTO Goes Green, Patent Annuity Payments, and Jack Fassnacht

Practice Tips

USPTO Goes Green:
Program Instituted to Expedite Examination of Patent Applications Directed to Energy Conservation and Environmentally Friendly Technologies

As we all know, the environment continues to be a hot topic. Everywhere you look the world is turning its focus to green causes. Detroit markets hybrid vehicles, local utilities offer rebates to businesses and home owners employing solar, geothermal or other alternative energies, recycling is increasingly commonplace, and wind turbines are being built at a rate never seen before. Even nuclear power, with its incumbent radioactive waste and containment issues, is being revisited by politicians, including the current administration, as an alternative to solve the energy crisis and reduce dependence on foreign oil.

With that in mind, it should not be surprising that the US Patent & Trademark Office (USPTO) recently launched an initiative to help foster green technology. To be exact, on December 8, 2009, the USPTO announced the Green Tech Pilot Program, announcing the program days before the United Nations.

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International Section

PATENT ANNUITY PAYMENTS:
Leave It To the Pros

A patent application and/or a patent needs to be renewed in every country where the application was filed and/or where a corresponding patent has been issued. In contrast to the United States where renewal or maintenance fees are paid at 3 1/2 years, 7 1/2 years and 11 1/2 years only after the US patent has issued, almost every other foreign country complicates the renewal process by charging an annual annuity or tax after the patent application is filed. Thus, managing the payment of these annual foreign taxes for a patent portfolio can be a time-consuming, labor-intensive process and generally, a headache. As the client, you should also annually assess the profit benefits against the costs associated with renewing a foreign portfolio for a particular invention.

The time limits imposed by the PCT are clear and steadfast, however. Taking a US applicant as an example, under the Paris Convention, a US patent applicant has a period of one (1) year from the date of the US application filing in which to file non-US applications and gain the priority of the US case. If no such foreign applications are filed, non-US patent rights are irrevocably lost. This is where the PCT application often is of benefit. While never granting any patentable rights, a PCT application can serve as that foreign patent application if filed within the twelve months afforded by the Paris Convention. For example, a US applicant can file a PCT within that one year Paris Convention period, and in so doing extend the deadline for filing national cases by an additional eighteen (18) months for a total of thirty (30) months from the US application date.

Because the payment procedure in each country can vary, and because renewal decisions may not be made until the last minute, the renewal process is fraught with risk for patent law firms. Accidentally allowing an application or patent to lapse can cause a loss of rights, which could potentially lead to loss of revenue. Because our expertise at MMH lies in obtaining patents and not renewing patents, we highly recommend that our clients use a third-party renewal service to pay their renewal fees, maintenance fees, annuities and taxes associated with their patent and trademark portfolios. Read more . . .

Focus on Service

MMH ADDS JACK FASSNACHT:
Experienced Practitioner To Bolster Patent And Trademark Practice Groups

Jack Fassnacht has joined Miller, Matthias & Hull in an of counsel capacity. A veteran patent and trademark practitioner, Jack comes to MMH with twenty years of IP experience. Jack's chemical engineering background and depth of trademark experience will enhance these practice areas at MMH. Jack is also committed to MMH's core values of delivering high quality work product at reasonable rates.

Jack is a native of the Midwest - having been born and raised in Cincinnati, Ohio. He graduated from Washington University in St. Louis in 1977 with a degree in chemical engineering. After college, he worked as a Chemical Engineer with Phillips Petroleum Company in Bartlesville, Oklahoma. Jack's work at Phillips complements our partner Mike Hull's professional experience at Halliburton, providing MMH an extensive wealth of technical experience in the oil and gas industry, in both upstream exploration technologies and downstream refining and fuel production areas.

After eight years with Phillips, Jack attended IIT Chicago-Kent College of Law, where he was a member of the Moot Court Society and elected to the Order of the Coif. Jack graduated law school with High Honors in 1990 and began practice as a patent, trademark and copyright attorney with the firm of Neuman, Williams, Anderson & Olson. Jack gained experience at various IP and litigation firms in Chicago prior to joining MMH in December of 2009.

Jack's practice is focused on prosecution of both patents and trademarks. With his academic background in chemical engineering, Jack is well-qualified to prepare and prosecute patent applications in the chemical, material science, and mechanical arts. During his career as an IP attorney, Jack has also developed considerable experience prosecuting and counseling clients regarding trademark matters. Jack handles all facets of trademark law, including registration of trademarks, inter partes proceedings, and drafting opinions.

In addition to rounding out and strengthening the firm's practice areas, Jack also approaches his practice with a commitment to MMH's core values of providing quality legal services at a discounted rate. We are proud to add an attorney of Jack's caliber to the MMH team. For more information about Jack or our firm, please visit our website at www.millermatthiashull.com and sign up for our "Capabilities Presentation."