Intellectual Property Law



Published:

John M. Halan


Shareholder


Brooks Kushman, Southfield

Metro Detroit will benefit directly from the recent passage of the Leahy-Smith America Invents Act, which designates that one of three new regional satellite offices of the U.S. Patent and Trademark Office will be located in Detroit. It is anticipated that the facility, set to open in the next three years, will employ more than 100 workers — many of them highly-skilled patent examiners.

“During the patent application process, it is sometimes very beneficial to meet in person with a patent examiner to weigh the merits of an invention,” says John M. Halan, shareholder for Brooks Kushman in Southfield. “At present, that means an expensive flight to Washington, D.C. With the new office, we can save that expense. Plus, the office should draw patent attorneys from the surrounding region — from Chicago or Indianapolis, for example.” In addition, Halan says, it is anticipated that a share of patent examiners slated for Detroit will be well-versed in regional technologies such as the automotive industry.

Overall, the new law is designed to reduce a backlog of 700,000 patent applications while streamlining fee-hike approvals and other internal operations. The crux of the new measure, set to take effect in spring 2013, provides for a “first-to-file” application process, rather than “first-to-invent.”

Along with other changes in the law, small businesses and independent entrepreneurs in some cases will have a tougher time competing against large corporations in the patent application arena.

For example, patent applications and patents can be challenged under certain circumstances and within limited time periods. This should favor large companies that have the resources to monitor patent applications and grants. As to the first-to-file process, “large companies have lots of resources to throw at developing ideas and filing applications on inventions as soon as possible,” Halan says. “But smaller companies are more nimble and may win the first-to-file race because they don’t have layers of bureaucracy to get through.”

Another benefit of the new law is that it allows “virtual” patent-marking on a product, such as the word “patented,” followed by a website address where pertinent patent numbers can be found. Under the system, product tooling doesn’t have to be changed every time a new patent pertinent to the product is issued.

“Any updated information about the patent can be easily accessed on a website,” Halan says. “This can save manufacturers thousands of dollars in retooling or labeling costs, and allow businesses to use those resources for more productive uses.” —R.J. King

Edit Module
Edit Module Edit Module
Edit ModuleShow Tags

Related Articles

DBusiness magazine's Top Lawyers Party 2015 Video

DBusiness magazine celebrated with the 2015 Top Lawyers on January 22 at Tre Monti Ristorante in Troy. Guests enjoyed cocktails, appetizers and music from the BBSO.

Top of Their Game

Now, for the second year, DBusiness honors six young lawyers as nominated by our readers and their peers.

Health Care Law

Immigration Law

Banking and Financial Service Law

Edit ModuleShow Tags

Most Popular

  1. Decorated Pianos to be Placed in Key Locations Across Detroit
    Detroit nonprofits have partnered to bring local artist-decorated pianos to public spaces across...
  2. MSU College of Law Opens New Legal Research Center
    Michigan State University College of Law has opened the Center for Legal Services Innovation,...
  3. Metro Detroit Home Prices Jump 16% in First Half of 2015
    While home sales in metro Detroit continue to inch up, the median price for homes sold in the...
  4. Jolly Pumpkin to Host Jordan Morgan Foundation Launch
  5. Livonia-based Marketplace Homes Offers Buyout Option for Homeowners
    Homeowners looking to sell and move into a newly constructed house now have the option to bypass...
  6. Rhonda Walker Foundation to Hold 5k Run to Raise Awareness for Childhood Obesity