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Intellectual Property

The Patent Process: Getting Started

The Patent Process: Getting Started

Laura Marmulstein

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When should you seek patent protection? When you have an idea? A prototype? A product? It is often a misconception that you need a prototype or product to seek patent protection. While you cannot obtain patent protection for a mere idea, you can, in fact, file a patent application with an idea (and no prototype or product), so long as the idea is sufficiently concrete.

To be sufficiently concrete, the idea must be well thought out such that you could describe the invention with enough specificity to enable another to make and use it. Your invention should provide a solution to a problem, and you should be able to explain how to achieve that solution. You want to file a patent application when you know your invention can and will work – otherwise, there may not be much value in obtaining a patent on something that doesn’t work. If you are not sure the invention will work as anticipated, you may want to make a prototype and test it out before you file. Finally, you want to consider all the different variations and possible improvements to avoid others designing around your invention.

A key consideration when determining whether to file is whether you plan to publicly disclose the invention. A public disclosure can be a non-confidential disclosure, a public use, a sale, or an offer for sale of your invention. Some common examples of a public disclosure include trade shows, press releases, publications, websites, product launches, advertising and marketing materials, and discussions with people outside your company (particularly without a confidentiality or non-disclosure agreement in place). A public disclosure of your invention can ruin your chances of obtaining a patent, especially if you are interested in foreign protection. In the U.S., there is a one-year grace period to file a patent application after a public disclosure. If over a year has passed since a public disclosure of the invention, you cannot obtain a patent. Most foreign jurisdictions do not have this grace period, and you will lose your patent rights in those countries if you disclose before you file. So best practice is to file before a public disclosure.

If you plan to publicly disclose your technology before it is fully developed, you can file a provisional patent application. A provisional patent application is not examined and remains confidential, but it provides you with a place in line at the U.S. Patent and Trademark Office to preserve your patent rights in the U.S. and foreign countries. The U.S. patent system is a first-to-file system, meaning whoever files first can obtain patent protection for an invention (so long as it meets the other requirements for a patent – e.g., is new and non-obvious). For this reason, it is best practice to file as early as possible.

For a provisional patent application, you want to include sufficient detail to teach others how to make and use your technology. You also want to provide a broad description of your technology to support a later-filed application – either a non-provisional application or an international or PCT application – which is substantively examined. The later-filed application receives the benefit of the filing date of the provisional patent application. However, this priority date only applies to the material disclosed in the provisional application. Any new material added to the later-filed application will receive the filing date of the later-filed application. For this reason, it is best to have sufficient breadth in the provisional patent application to cover any changes or additional details that you might add to the non-provisional patent application in order to obtain the benefit of the earlier filing date.

A provisional patent application may be beneficial if you are still developing your technology, you want to push costs to a later date, or you want to be able to say “patent pending” for a longer period. A provisional patent application gives you a year to develop your technology and add any additional improvements or variations before filing a non-provisional or PCT application. As a general rule for foreign filing, once you file the non-provisional or PCT application, you cannot add any new material to the disclosure. Further, the cost of filing a non-provisional or PCT application is much more expensive, so filing a provisional patent application gives you an additional year to obtain the finances and budget for the non-provisional or PCT application. See USPTO Fee Schedule for more on fees. Finally, once you file a provisional patent application, you can label your technology covered by the application as “patent pending.” Patent pending can be attractive to investors. For example, it shows investors that you are serious about your technology and think it is new, unique, and valuable. Patent pending can also be intimidating to competitors in your field, as they cannot predict the future scope of your protection. A competitor might think twice before developing technology that resembles your technology for fear of infringing on your rights. 

In conclusion, you should file a patent application before a public disclosure, when you have an invention that works, and when you can describe how to make and use the technology in sufficient detail. If you think you are ready to file a patent application, you should consult with a patent attorney.

ABOUT THE AUTHOR

ASSOCIATE

Laura counsels clients on legal issues related to intellectual property, including patents, trademarks, and copyrights. Laura helps clients build strong intellectual property portfolios, taking into account various types of protection options, such as utility and design patents, including both U.S. and foreign, trademark and trade dress registrations, and copyright registrations.

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Employment Law

Can Vaccination Requirements be Enforced in the Workplace?

Can Vaccination Requirements be Enforced in the Workplace?

Amanda Milgrom
Amanda Milgrom

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As COVID-19 continues to rage across the country, the question of vaccines – and whether they can be imposed on an individual or not – is a hotly debated topic. Folks have strong opinions on both sides of the discussion. Some stand for individual liberties, arguing the individual’s choice is more important. Others argue for the collective, contending that one person’s liberty should not come at the expense of exposing the group. As an employment lawyer, I get a lot of questions from my clients asking whether they can force their employees to get the COVID-19 vaccine. As we’ve written about in prior blog posts, the answer is a qualified yes.

Another way to analyze the question of imposing vaccine mandates is to ask: what would the Supreme Court do? Notably, the Supreme Court was forced to confront this issue back in 1905 during the smallpox epidemic. In Jacobson v. Massachusetts, 197 U.S. 11 (1905), the Supreme Court upheld the authority of states to enforce compulsory vaccination laws. In a majority opinion written by Justice Harlan, the Court concluded that individual liberty is not absolute and is subject to the police power of the state. There, the plaintiff had a bad reaction to a vaccine as a child, and so when the smallpox vaccine was made available, he was fined $5 for not getting it. The case wound its way through the courts until it reached our highest court. There, the Supreme Court declared in a 7-2 ruling that one man’s liberty could not deprive his community of their own liberty (i.e., avoiding disease).

The Plaintiff’s arguments were very similar to those we are hearing today: that the U.S. Constitution protects your right to decide whether to inject a vaccine into your body; that the government does not have the authority to intervene and impose it on you. These challenges have not yet come before a court regarding the COVID vaccine. However, as more employers are imposing a vaccine requirement on their employees, (see Delta Airlines, for example), we can expect that they will. Particularly now that the vaccine has passed full FDA approval. At that time, it will be interesting to see how Courts apply Jacobson and its precedential ruling that a state can impose a vaccine requirement.

While the structure of the Court is quite different today compared to 1905, the Jacobson case offers us significant insight into how a challenge against a vaccine mandate would be handled and can provide employers further assurance that a mandate is permissible under the law.

ABOUT THE AUTHOR

PARTNER & EXECUTIVE DIRECTOR

Amanda Milgrom represents individuals and businesses of all sizes in various litigation matters regarding employment, intellectual property, and business disputes. She practices employment law, representing employees in discrimination lawsuits and counseling employers on best practices, drafting employee handbooks, and putting together suites of employment contracts.

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Steps Small Businesses Can Take to Combat Climate Change

Steps Small Businesses Can Take to Combat Climate Change

Milgrom Team

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The science is clear, and when we look outside and see smoke-ridden skies, experience unprecedented flooding, or suffer the consequences of historic droughts, it’s in our face: climate change is here. Our climate and environment are changing–and how we interact with it should change.

As the recent and somewhat terrifying UN Report informed us, we are well past the point of stopping climate change. But we can slow it down. And we need to slow it down.

According to the UN Report, we need to halve greenhouse emissions by 2030 and achieve net zero emissions no later than 2050 to avoid the worst effects of climate change.

How can small businesses help achieve these goals?

Much climate news has focused on the emissions and energy outputs of large, international corporations. And for good reason: their business decisions are expansive and have a significant climate impact in many sectors of the economy, government, and environment. These industry titans must change their behavior if we want to achieve the UN’s goals, but small businesses should as well.

Small businesses make up the majority of businesses in the United States. Despite their diminutive qualifier, small businesses have a big impact. Both in how they affect the climate and how they shape the fabric of our society and economy. Thus, any changes small businesses can make to reduce their carbon footprints are essential to meeting the UN’s goals.

Studies have shown that such climate action is also desirable to potential employees, who are increasingly drawn to employers with environmental initiatives. There are also branding benefits for certificates and labels associated with businesses that meet certain environmental standards that may draw in environmentally conscious consumers and/or clients.

Steps for small businesses to combat climate change.

1. Set Goals

Some goals may include reducing the company’s energy consumption or greenhouse gas emissions. But most of us don’t have the expertise to meaningfully and quantifiably reduce our carbon footprint. Luckily, there are certification standards and organizations that help. For example, you can join the SME Climate Hub, sponsored by the UN which teamed up with Oxford University to create a library of tools and resources for small and medium enterprises for how to reduce their carbon footprints. These resources include but are not limited to: tools from the B Lab, Landlord-Tenant energy agreements, supply chain tools, guidebooks on reducing the environmental impact of freight logistics, company transportation toolkits, and many more.

The Climate Neutral Certified stamp is another popular certification that you can put on your business’ brand and marketing materials. This certification measures and directly addresses a brand’s commitment to stopping climate change. Some businesses that are Climate Neutral Certified include REI, Allbirds, Numi Tea, and Klean Canteen. The certification imposes a fee for every ton of carbon produced by the company, but that fee is used to invest in carbon reduction and sequestration projects around the globe and accomplishes carbon pricing.

Finally, if a business’ goal is to partner with environmental nonprofits, 1% For the Planet is an organization that pairs businesses, individuals, and nonprofits and commits 1% of the committed business’ profits to environmental nonprofits and organizations. Milgrom & Daskam is a proud 1% member.

2. Measure your climate impact

In addition to setting goals and potentially joining organizations and initiatives that direct small business leaders, it’s important for small businesses to measure their climate impacts. There are plenty of climate calculators for businesses to measure the impact of their brands, products, and services. These calculators take into account business’ energy consumption, emissions, and overall carbon footprints, and can be useful resources for informing businesses about how they can best reduce their environmental impacts.

3. Offset your emissions

Carbon offset programs are not perfect, but they have been found to be a powerful decarbonization tool. Furthermore, they provide small businesses opportunities for creativity. For example, companies can engage in tree-planting days to offset their carbon emissions. Companies can also purchase carbon credits that offset their emissions, which on average equal ~0.4% of a company’s revenue.

Some other ideas for business owners include encouraging employees to work from home to reduce commute-based emissions, incentivizing and paying for employees to use public transit and other climate-friendly travel options when commuting to work, reducing emissions produced by your business’ online activity and energy demands, using more sustainable packaging, or switching to natural resource energy for your business.

In conclusion, although climate change is daunting, all hope is not lost, and we as individuals, businesses, and communities can make meaningful changes to actualize the UN’s 2030 and 2050 goals to preserve our planet and everything it offers us.

For additional information, please contact us.

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