2020 April

The law firm of Woodard, Emhardt, Henry, Reeves & Wagner, LLP is proud to announce that Thomas Q. Henry was chosen as a Distinguished Barrister by The Indiana Lawyer as part of its 2020 Leadership in Law Awards.

The Indiana Lawyer annually recognizes Indiana attorneys who have demonstrated a commitment to their profession, the clients they serve, and to the community by presenting Distinguished Barrister award.

As a senior partner with the Firm, Mr. Henry concentrates his practice on the strategic development and management of IP portfolios with special emphasis on providing business-focused legal advice. He assists clients in evaluating IP coverage, protecting core IP assets, handling Hatch-Waxman cases, domestic and international patent prosecution, and preparing infringement, non-infringement, freedom to operate, and validity opinions.

Mr. Henry has served as President of the Indianapolis Bar Association and as a member of the Board of Directors of the Indiana State Bar Association. He served on the Board of the Indiana Bar Foundation and was as an Adjunct Professor at the Indiana University Robert H. McKinney School of Law, teaching both Intellectual Property Law and Patent Law to more than 1,000 students over a 20+ year span. He was also Chair of the Indianapolis School of Law Alumni Association, and recipient of the school’s Distinguished Alumni Award. Mr. Henry has also served on multiple community boards and held several leadership positions with nonprofit organizations including Chairman of the Board of Directors of Make-A-Wish Foundation of Indiana, and of the American Pianists Association, and on the Board of Young Audiences of Indiana. He also served as a member of the Board of Directors of the Indianapolis Zoological Society, Indiana Repertory Theater and Indianapolis Symphony Orchestra.

In the April 29, 2020 issue of The Indiana Lawyer, Firm Partner, Lisa A. Hiday, is featured in the article, Enjoying the view: Attorney tackles mountain backpacking adventures with son.

“The Hoosier attorney started backpacking when she was a teenager. She’s traveled the country on a variety of treks ranging from shorter backpacking trips in Utah’s Zion and Arches national parks to longer hauls in California’s Yosemite and Sequoia national parks. She’s also ventured across the globe, summiting Tanzania’s Mt. Kilimanjaro in the middle of a blizzard and scaling high passes in northern Peru.” To read the entire article,visit: The Indiana Lawyer.

Sunday, April 26 is World Intellectual Property Day, a day to celebrate and learn about the role that intellectual property rights play to encourage and facilitate innovation and creativity.  Originally created by the World Intellectual Property Organization (WIPO) in 2000, World IP Day is celebrated on April 26 to mark the anniversary of the WIPO Convention becoming law in 1970.

The theme for this year’s World IP Day is Innovate for a Green Future, highlighting innovation that supports eco-friendly technologies and the IP rights that support that innovation.  Intellectual property is used in many different aspects of the effort to create a cleaner, more environmentally friendly future.   Patents, trademarks, and copyrights support the development and growth of businesses and individuals that are committed to environmental sustainability.

If you are interested in learning more about how intellectual property can protect your innovations, please contact one of our attorneys.

Earth Day is upon us, and the World Intellectual Property Organization has announced a theme of “Innovate for a Green Future” for World Intellectual Property Day on April 26. Here are two bits of eco-minded intellectual property law.

Special treatment

Energy-saver patent applications can get special treatment. Technologies aiming to reduce energy consumption, move to greener sources of energy or improve the environment are highly prized. The U.S. Patent and Trademark Office recognizes that fact with opportunities to move such patent applications ahead in the queue.

By rule (37 CFR 1.102) and policy (Manual of Patent Examining Procedure (MPEP) 708.02), the USPTO will advance (or make “special”) applications for inventions which “materially enhance the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil.” MPEP 708.02 (III); see 37 CFR 1.102(c). The applicant must file a petition requesting “special” status, and no fee is required. In cases where the environment-improving quality may not be evident, a statement explaining how the application fits the above standard should be filed. The MPEP notes the standard may not be met where there is “speculat[ion] as to how a hypothetical end-user might specially apply the invention” in an appropriate way, or where “some minor aspect of the claimed invention may enhance the quality of the environment.” MPEP 708.02 (III).

Another category for “special” applications concerns inventions that “materially contribute to (A) the discovery or development of energy resources, or (B) the more efficient utilization and conservation of energy resources.” MPEP 708.02(IV). Applications that develop hydrogen fuel technologies or solar power, or provide a reduction of energy consumption in equipment or household appliances, can be eligible for “special” status. A fee-free petition must be filed, with explanations if the necessary material contribution is not evident. Likewise, speculative effects or minor aspects of the invention may not be sufficient to move the application ahead in the examination line.

In each case, the MPEP provides additional requirements for applications, including limitations on the number of claims and inventions claimed, an acknowledgement that dependent claims will not be argued separately on appeal, and an agreement to conduct an early interview with the examiner. See MPEP 708.02(a). In many cases, these additional requirements will not create a significant additional burden. Nevertheless, in addition to normal precision in preparing claims, the applicant should give proper thought to whether these requirements may significantly impact future prosecution or arguments, and should organize the claimed subject matter carefully.

Practitioners will note there is a generalized request to prioritize examination by which up to 12,000 applications per year can be moved forward. Limitations on claims similar to those noted above apply to prioritized applications. The principal advantage to using the petition process for environmental-quality or energy-related inventions is cost savings. No petition fee is needed for them, while the prioritized examination fee for a large entity is $4,000. While the annual ceiling on prioritized applications has never been reached, the numbers are increasing, so there is a chance prioritized examination would not be available late in a year.

‘Green’ may not mean go ahead…………

To read the full article, visit The Indiana Lawyer

On April 8, 2020 Woodard Emhardt partner, Chuck Schmal, joined members of Indiana’s venture capital and entrepreneurship communities as an “E-Day” (Evaluation Day) judge for Ball State University’s Entrepreneurship Center New Venture Creation Course. During E-Day, seniors majoring in entrepreneurship present their business plans to a panel of judges who decide whether a student passes or fails out of the program. Chuck has served as an E-Day judge since 2011 and has always been impressed by the student teams, thoughtful presentations and overall business plans.

Woodard, Emhardt, Henry, Reeves & Wagner, LLP attorneys Christopher A. Brown and Charles P. Schmal recently celebrated their 25th and 20th anniversaries with the Firm.

Mr. Brown and Mr. Schmal provide comprehensive intellectual property legal protection to help clients achieve and protect market share. During the course of their careers, both Mr. Brown and Mr. Schmal have positively influenced the legal community and the Firm, contributing in the areas of writing, teaching and mentoring.

Please join us in congratulating Mr. Brown and Mr. Schmal on their years of service to clients, the Firm and the legal community.

The United States Patent and Trademark Office has made several temporary rules changes in response to the coronavirus outbreak. These rule changes include:

Extension of patent and trademark related deadlines. On March 31, the USPTO announced extensions to the time allowed to file certain patent and trademark related documents and to pay certain required fees. This extension adds an additional 30 days for the due date for most responses to USPTO notices that are due between March 27, 2020 and April 30, 2020 as long as the filing is accompanied by a statement that the delay in filing or payment was due to the coronavirus outbreak. An acceptable reason for delay could be office closure, cash flow interruption, inaccessibility of files, travel delays, illness, or any other similar circumstance. A full list of the types of actions for which an extension is available can be found at the USPTO website at https://www.uspto.gov/sites/default/files/documents/Patents%20CARES%20Act.pdf for patents and https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act.pdf for trademarks.

USPTO offices closed to the public. Until further notice, all USPTO offices have been closed to the public. However, all USPTO operations continue to function without interruption. All examiner interviews, oral hearings in front of the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB), and other in-person meetings are being conducted solely by video or by telephone.

Waiver of petition fees. The USPTO considers the coronavirus outbreak to be an “extraordinary situation” for patent and trademark applicants, patentees, and trademark owners under the Code of Federal Regulations. Therefore the USPTO has waived petition fees in certain situations for customers that have been impacted by the coronavirus. These petition fees that have been affected include petitions to revive for patent applicants or patent owners who were unable to timely reply to a USPTO communication which resulted in the application being abandoned. Additionally, the USPTO is waiving the petition fee to revive for trademark applications and registrations that were abandoned, canceled or expired due to an inability to timely responds to an Office communication as a result of the effects of the coronavirus outbreak.

Waiver of original handwritten signature requirement. The USPTO has waived the requirement of an original handwritten signature for correspondence relating to: registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations or disciplinary proceedings, and payments by credit cards where the payment is not being made via the USPTO’s electronic filing system.

On Tuesday, March 10, 2020, the Rotary Club of Indianapolis elected Charles J. Meyer to serve on the Board of Directors for two years, beginning on July 1, 2020.

Mr. Meyer has been of member of the Rotary Club since 2001 and previously served as a member of the Board of Directors from 2005-2007. Mr. Meyer has enjoyed serving with like-minded professionals and working with the Rotary membership on philanthropic projects that help make Indianapolis a stronger community.

The Firm congratulates Mr. Meyer on his election and thanks him for his service to our community.

About Rotary Club of Indianapolis
The Rotary Club of Indianapolis is an inclusive organization that brings together engaged professionals from all sectors of business and the nonprofit world to create service projects that result in meaningful networking and professional development opportunities.  Rotary Club of Indianapolis