Charles P. Schmal

Woodard, Emhardt partner Chuck Schmal was one of the featured speakers at a recent CLE reviewing interesting case law and other developments in the past year in the areas of patent, trademark, copyright and internet law. Mr. Schmal’s presentation focused on developments in patent law during 2009. The seminar was held at the new Indianapolis Bar Association (“IBA”) Education Center on April 27, 2010 and was hosted by the Intellectual Property Section of the IBA. Please contact us for more information on Intellectual Property CLEs sponsored by the IBA.

Mr. Schmal’s presentation materials can be accessed by clicking here.

Congratulations to Woodard Emhardt partner Chuck Schmal for being selected as a judge for the Enterprise 8 Business Plan Tournament. The Enterprise 8 is a business plan tournament for entrepreneurs hosted by Ball State University’s Entrepreneurship Center. It attracts students from universities across the United States and Canada. More information is available at Ball State Enterprise 8: Business Plan Tournament

Please mark your calendars for Tuesday, April 27th, as Woodard, Emhardt partner Chuck Schmal will be one of the featured speakers reviewing interesting case law and other developments in the past year in the areas of patent, trademark, copyright and internet law.  The seminar will be held from 9:00 a.m. to 12:30 p.m.. at the IBA Education Center (135 N. Pennsylvania St., Suite 1500), and is hosted by the Intellectual Property Section of the IBA. To register for the seminar, please click here. 

The Midwest Intellectual Property Symposium was held November 19 & 20 at the University Hotel and Conference Center in Indianapolis, IN.  The event was sponsored by the Indiana Continuing Legal Education Foundation and featured presentations by speakers in a variety of intellectual property areas, including patent prosecution, trademark prosecution, biotechnology practice, intellectual property litigation, and ethics.  Woodard Emhardt Trial Practice Group Co-Chair, Holiday W. Banta, served as moderator for the event.  In addition, the following Woodard Emhardt attorneys were featured among the presenters and panelists (click on the topic titles to access presentation materials):

T.J. Cole
Hot Topics in Patent Law

Thomas Q. Henry
Top Patent Prosecutors Roundtable:  Prosecution and Client Management Tips from Indianapolis’ Leading Practitioners

Charles P. Schmal
Current Topics Concerning Corporate Ownership and Licensing of Intellectual Property

Kenneth A. Gandy (material preparation), Gilbert T. Voy (Eli Lilly & Co., presenter)
Patenting Therapeutic and Diagnostics Medical Methods Around the World:  Practices and Pitfalls in Divergent Systems

James R. Blaufuss
Hot Topics in Trademark Law – Part 1
Hot Topics in Trademark Law – Part 2

Daniel J. Lueders
‘You Really Should Settle This Case’ – Do the Courts Practice What They Preach?

The Symposium was a huge success, with over one hundred faculty, attorneys, and IP professionals from around the world in attendance.  Special thanks go out to all of the individuals involved who helped with organizing and presenting at the event.

Related Links:
Midwest Intellectual Property Symposium, Nov. 19-20, 2009

Patent searching is typically the first step in determining whether to pursue patent protection for an invention.  On November 11, 2009, Woodard, Emhardt attorneys Chuck Schmal and Doug Gallagher presented a class on techniques for conducting patent searches using the US Patent & Trademark Office’s Public Web-based Examiner Search Tool (PubWEST) System to members of the Indiana Inventors Association and the Central Library staff.  The PubWEST System allows the public to access the same computer databases used by Examiners at the U.S. Patent and Trademark Office in Alexandria, Virginia.

The hour-long program included a general overview of the PubWEST System and a tutorial on conducting patentability searches.  Topics included basic search concepts and recommendations for organizing a search, recommendations for which PTO databases to use, specific techniques for conducting various types of searches (word, party, citation, and classification), and the various ways of viewing the information using PubWEST.

This program was conducted in conjunction with Woodard, Emhardt’s donation of upgraded PubWEST search terminals at the Library.  The class was provided as a companion resource to inventors as part of Woodard’s effort to improve patent searching capabilities at the Central Library.  For more discussion on the search terminals, please see Dedicated Patent Searching Terminals Available at the Central Library

The US Patent & Trademark Office (USPTO), via a press release on its web site, has announced that the USPTO Joint Labor-Management Task Force has issued a joint proposal for amending the Examiner Count System.  The task force comprised senior managers from the USPTO and leadership of the Patent Office Professional Association (POPA), which is the union that represents Patent Examiners.  These proposed changes to the count system are the most significant in the last 30 years.  This proposal, however, still needs to be ratified by POPA’s membership.

The Examiner Count System is one means the USPTO uses to evaluate examiner efficiency.  The count system was originally created around the mid 1960s and has not been dramatically revised since 1976.

The current nature of the present count system has a tendency to encourage Examiners to extend the length of prosecution for patent applications.  For example, under the current systems Examiners are incentivized to have applicants submit multiple Requests for Continued Examination (RCEs), which can be quite costly for applicants.  To see how the proposed count system will change the incentives for examiners, tables from the report comparing the current count system to the proposed count system have been reproduced below.  At first glance, it appears that the proposed changes will reduce the incentive for examiners to extend prosecution by requiring multiple RCEs.

A more detailed analysis of the proposed changes will follow shortly.

Following up on a previous posting regarding the Patent Office’s request for comments on its Interim Guidelines for Patentable Subject Matter, the Patent Office has now extended the previous 11 day period in which to submit comments to 30 days from the publication date of the Notice.  The new deadline to submit comments is now October 17, 2009.

These interim guidelines are intended to aid Examiners in analyzing whether the claims in a patent application are directed to patentable subject matter.  Again, it should be emphasized that these are merely interim guidelines, and it is likely that these guidelines will change depending on the Supreme Court’s ruling in the Bilski case.

The US Patent & Trademark Office (USPTO) has issued a Notice to request comments on the Interim Examination Instructions for Evaluating Subject Matter Eligibility.  The Interim Guidelines are available at  Interim Instructions.  The link for the notice is here: Notice.  The deadline to submit comments in September 28, 2009.

The Interim Guidelines were developed in view of the Federal Circuit’s recent Bilski decision, which is currently being reviewed by the Supreme Court.  Please refer to our previous discussion of the Bilski decision at the following link: Bilski.  These Interim Guidelines were provided to the Examiners pending the final decision from the Supreme Court.  The Notice indicates that the USPTO will revise these guidelines once the Supreme Court’s decision in the Bilski case is issued.

One of the most important parts of intellectual property, which tends to be overlooked, is establishing ownership of intellectual property.  In many cases, employees are hired without having to sign any type of employment agreement, or if they do sign an employment agreement, it does not contain the language that establishes ownership of intellectual property created during the course of their employment. 

 If ownership is not established, it can be a fatal flaw in the ability to enforce a business’ intellectual property rights.  For patents, especially, dire and unforeseen consequences can occur if in trying to establish property rights abroad. 

The main point to establishing ownership is to stake your claim at inception—that is, have an assignment executed as early as possible.  Here are just a few tips that can be generally applied, but are more relevant to patent protection:

1)   Consider having a lawyer experienced in intellectual property matters review your employment agreements to make sure the business has ownership of the various forms of intellectual property, such as patents, copyrights, and the like.

2)   Make sure your employees, especially key employees such as engineers and marketing/sales representatives, sign the employment agreements.

3)   Save the signed employment agreements in a secure place where they can easily be found and tracked.  Nothing is worse than having employees sign agreements that cannot be found later when they are most needed.

 4)   If you have not already done so, establish an invention disclosure program in which employees memorialize and record their various inventions for your business.  By memorializing the invention, it is easier to establish the employee invented a particular invention during the course of their employment.

 5)   In the invention disclosure, consider incorporating an assignment that immediately assigns the rights for the invention to the business.  In today’s economy, employees often tend to move between jobs, and sometimes, it is extremely difficult to locate them later to have them execute an assignment.  Having the assignment within the invention disclosure helps avoid any later difficulty in locating the employee, especially one that has left on less than desirable terms.  It is a simple thing to do, considering the employee is typically signing the invention disclosure anyway.  While having the assignment in the invention disclosure might not be perfect, especially if the invention changes, it is better than having nothing.

6)   Have the employee sign a formal assignment for the patent application as early as possible and have it recorded as soon as possible.  Even have the inventors sign an assignment for provisional applications.  This may help avoid any problems with proper title that is required by many foreign patent offices.  In particular, some foreign patent offices require continuity of applicants between applications.  For example, if no inventor signs an assignment to a business for a US Patent Application before a PCT application claiming priority to it is filed and the PCT application only lists the business as the applicant (i.e., not the inventors), the ability for that business to claim priority to the earlier-filed US patent application may be lost once nationalized in some foreign countries because of a lack of continuity of applicants between the applications. 

 In summary, businesses often discover too late that former employees were not required to assign various forms of intellectual property to the business.  By taking some proactive steps to ensure your business has ownership of its intellectual property, you can avoid significant headaches and legal fees in the future.

Many of Woodard, Emhardt’s attorneys serve the Intellectual Property community in Indiana by teaching courses at Indiana law schools.  This fall, partners Charles P. Schmal and Charles R. Reeves are serving as adjunct law professors at Indiana University School of Law – Indianapolis, teaching a course in International Protection of Intellectual Property.  Also this fall, partner Christopher A. Brown is teaching a course in Patent Law at Indiana University School of Law – Indianapolis.  Partners Kenneth A. Gandy and Daniel J. Lueders regularly serve as adjunct law professors at Indiana University Maurer School of Law, with Mr. Gandy teaching a course in Patent Prosecution and Mr. Lueders teaching a course in Patent Litigation.  Additionally, partner Troy J. Cole regularly teaches a course in Patent Prosecution at Indiana University School of Law – Indianapolis.