USPTO’s New Patent Fee Proposal
The USPTO has released a series of documents about the proposed new rules for patent fees. These new rules are part of the Patent Reform act of 2011, and were one of the main reasons the act received such wide bipartisan support, the patent office has a strategic issue with pendency, there are more patent application coming in than there are resources to handle the volume. Here's a list of the issues addressed in the announcement and the image of the proposed fee structure.
PowerPoint deck of the fee changes.
While this announcement may mean higher fees for larger R&D departments, Patent fees are overall a smaller portion of the cost of patenting when considering the costs of attorney fees. The bigger issues for R&D departments arise in making decisions about what to patent and what not to patent in light of the Patent Reform Bill’s changes from first to invent, to first inventor to file, and the effects those changes have on choices about what to patent when and if an invention is within a company’s overall technology strategy.
Insights For R&D On The US Patent Reform Bill By Robert Stoll
Newlogic is a management consultancy to R&D executives. So we think a lot about how the processes of R&D organizations operate. We’ve been wondering how R&D processes are going to change because of the US Patent Reform bill of 2011. So I’ve been conducting a number of interviews with industry colleagues, and writing a series of articles about Patent Reform, R&D and product development.
I decided to interview Bob Stoll, who is a new partner in the Drinker Biddle & Reath’s (link: http://www.drinkerbiddle.com/) Intellectual Property Practice Group., Mr. Stoll, is the former U.S. Patent Commissioner. Chatting during our interview he suggested that while the act wasn’t perfect, which Act is? He said, “The act is taking the system into the 21st century, and will stimulate economic growth and invention.” Here’s the rest of the interview.
John: R&D organizations are concerned with technology strategy, that process of determining which projects to develop based on the company’s business strategy. Given that what organizational changes do you think R&D organizations should make to prepare for the US Patent Reform bill?
Patent Reform At The University Of Hawaii Tech Transfer Office
Patent Reform will be rolling forward for the next few years culminating in the implementation of the final provisions on September 16th 2013. The USPTO announced some new rules about prior user right, so not only do we have to learn and consider what are the effects of patent reform will be on the R&D organization, but results will only become apparent over time.
Lee Marvin Taylor is a Specialist, in the Entrepreneurship Program (COE) for Technology Liaison at the University of Hawaii. Following my interview with Melba Kurman, I was introduced to Lee as running a top University Tech Transfer office in the US. He graciously answered my questions, and also asked Eric Cohen, Intellectual Property Attorney, at Brinks Hofer Gilson & Lione to clarify a point.
John: What steps has your college taken to prepare for the America Invents Act?
Lee: The deadline is March 16th of 2013, and we are really kind of business as usual, however we will have to file earlier and more often. The grace period will go away. And so that means that while a good many of disclosures are given to us after publication, many Universities have relied on 102 b for the grace period. This has been the existing M.O. at Universities; professors do the publications, and then go to the tech transfer office. Obviously if it’s a pharmaceutical matter, the professor and the office work harder. Now given the changes to the law the Technology Transfer Office will have to work harder, to get a professor to file before disclosure, because of the loss of US and foreign rights. Our education about the changes will happen in the fall of this year.
Patent Reform’s Effect On The University Tech Transfer Office & R&D Organizations
Melba Kurman is my next interview subject for my blog series on Patent Reform and R&D. I found Melba through the series of excellent articles she has written on the topic of Patent Reform and Universities. Melba Kurman is a strong advocate of both the value of university innovation, as well as the value of updating and evolving how university inventions are brought to market. Her insights and analysis arise from first-hand experience working inside a university technology transfer office and before that, in a large technology company. She is the president of Triple Helix Innovation, a consulting firm dedicated to improving innovation partnerships between companies and universities.
John: What organizational changes do you have to make to prepare for patent reform?
Melba: The unit that manages patents -- the technology transfer office in the case of a university -- will have to think through whether it can afford the time and cost of getting a provisional patent on most newly submitted inventions. If a university is going to make the commitment to patenting more of its inventions, then many universities will need to make changes to their tech transfer workflow and budget allocations. In terms of outreach, technology transfer staff should reach out to university researchers to make sure that researchers understand that there’s a weakened grace period, and that they should submit new inventions as soon as they can.
Insights On The Patent Reform Act Of 2011 At Michigan Technological
The Patent Reform Act of 2011 has important ramifications for R&D organizations. As the start to a series of articles on the topic I spoke with Jim Baker, Ph.D., Executive Director, Innovation and Industry Engagement, at Michigan Technological University about his University’s preparation ahead for Patent Reform.
John: What steps has your college taken to prepare for the America Invents Act?
Jim: We have not done anything very much dramatic, no structural changes. One thing, we have tried to do, is better educate people on the consequences on public disclosure.
Rebecca Oesterle: Energizer Case At Structural Packaging Summit
The “Structural Packaging Summit,” will be kicking off in only a couple of months. As Newlogic’ President, Marc Drucker, continues to review patent reform and it’s relation to the future of packaging the rest of Newlogic is hard at work reviewing upcoming presentations.
Rebecca Oesterle has worked at Energizer for 26 years and is currently the manager of global packaging development at Energizer Holdings. Rebecca will be presenting “Case Studies in Success: The Easy-Open Battery Package,” which describes the collaboration with Tegrant to develop an EZ Turn and Lock battery blister package for hearing aids.
Christopher Yows & Dr. Pepper Case At The Structural Packaging Summit
The “Structural Packaging Summit,” is approaching in Feb/March of 2012 and Marc Drucker, President of Newlogic will be discussing patent reform coming and the dramatic change it will have on R&D. As we ramp up for the summit, we thought we’d interview some of the other presenters.
Christopher Yows is a 17 year veteran a R&D/Leverage, and runs its Structural Brand Development Business unit. He will be co-presenting with Patrick George Director of Engineering at Dr. Pepper Snapple Group on the topic, Rapid Refresh in 28 weeks – An “Idea to tool” process.
Apple’s Consumer Insights & Product Portfolio Process
In reviewing the process of Apple’s product development, we discuss how two R&D strategies have led to its innovation success and ultimately the establishment of category leadership: its strategic project portfolio management and consumer insights research.
Looking at the consumer electronics industry, Apple is a category leader with a small product portfolio that only features the iPod, iPhone, iPad and Mac. Apple benefits from its strategy of choosing R&D projects and refining project goals. Apple has been providing consumers with different and exceptional experiences, yet they understand their audience by observation and using internal resources.
This week, we will recap several decisions in the product development process of the iPhone and iPad to explain Apple’s R&D strategies.
2 Approaches To Cosmetics Preservation Strategy
In
this week’s cosmetics and personal care industry roundup, Newlogic's strategy team review some of the latest developments in preservation systems.
The method for preserving formulations has always been a challenge in cosmetics and personal care products. Cosmetic formulators need to adopt an appropriate strategy that is safe for users and able to preserve products from microorganism contamination. An effective way to achieve both goals is to combine safe preservation with protective packaging.
Reviewing Maybelline’s ‘Great Lash’ Mascara R&D Strategy
In this week’s cosmetics and personal care roundup, Newlogic's R&D team cover the R&D strategy behind Maybelline’s Great Lash mascara, which just turned 40 in the U.S.market this year.
Mascara technology requires a precise combination of formulas and application systems. Over 40 years this means continuous innovations of applicators to match the ever-changing formula. However, Maybelline, except for minor changes per new FDA regulations, the Great Lash formula hasn’t changed since its introduction. Makeup artist Dani Weiser mentioned the dilemma of substituting products in last week’s interview. Maybelline’s main concern were Great Lash loyal consumers who disliked any attempt at upgrading the formula, as discovered from consumer insights research in the 1990s. While the original formula functioned to thicken and lengthen lashes, the upgraded version was developed to soften lashes and prevent them from loss. The new formula was released instead as the Full ‘N Soft Mascara in 1999.