Ernest Grumbles III

Ernest Grumbles III is an IP (intellectual property) and business development attorney at the Minneapolis firm Adams Monahan, where he works with entrepreneurs and early stage, tech-oriented enterprise. He is also Co-Founder of MOJO Minnesota, a collective supporting entrepreneurs and promoting innovation policy and community in Minnesota. He enjoys fresh air and lots of caffeine and is constantly trying new things (instead of sleeping). He may be reached at: egrumbles@adamsmonahan.com.

Posts about Government

Patent Reform 2011 - Highlights of the America Invents Act

Posted by: Ernest Grumbles III Updated: October 6, 2011 - 11:15 PM
 
After much bluster and at times painful rhetoric, the U.S quietly passed the America Invents Act, the first major patent law overhaul since 1952. That the patent statutes have undergone no major changes in over 50 years is testament to the gap between law and the world of business and technology. While new and existing businesses often have to pivot overnight (watch what happens every time Facebook adds a new feature), statutes remain. The obvious exceptions to this are the court-made changes that occur every few months (decisions of the Supreme Court or Federal Circuit Court of Appeals, for example). And while those court decisions can and do plug gaps and clarify the law, many times the decisions leave the thorniest questions unanswered (like the Bilski decision on software and business method patents). Statutes can provide this clarity, for better or worse.  Below are highlights of the Act signed into law by President Obama on September 16, 2011.
 
Biggest Change: First to File Wins the Patent:  Under the revised statute (35 U.S.C. § 102), whoever files first on a legitimate and patentable invention will be the one who gets the patent, consistent with the standard long used in almost every other nation. Previously in the U.S., if Company A invented a concept and Company B later invented the same concept but filed for a patent before Company A, Company A could still file and use its earlier invention to get the patent. In reality, the Patent Office has dealt with very few of these types of disputes (called patent interferences). Now, effective for patent applications filed on or after March 16, 2013, Company B will generally be the one entitled to the patent. This does not mean someone can file first on a patentable idea that someone else conceived - just that the Patent Office will award the patent to the first legitimate inventor who steps forward.  As a practical matter, it’s always been better to get your patent application filed earlier than later, and that’s even truer now.
 
The law also expands protections for earlier inventors to continue to use their technology even if a later-inventing party receives a patent.  In essence, if you were using some technology (process or product) more than one year prior to a third party’s patent filing on such technology, you can continue to use it even after the third party’s patent issues. Your prior use becomes a defense to a later claim of infringement. Under prior law, this was limited to certain types of process inventions.
 
A Few Small Business Enhancements:  The America Invents Act includes a number of provisions aimed at improving the patent process for small business. These include:
  • Fast-Tracking Patent Applications – Addressing concerns of patent delays, which can harm early-stage businesses seeking financing, the PTO is rolling out a fast-track program that guarantees initial patent review within 12-months from filing (instead of average 3-year wait). The fees for fast-tracking are considerably higher than standard patent filings fees ($4800), but the PTO is to implement a 50% fee reduction for small business entities ($2400). Expect some quick activity on this front.
  • Micro-Entity Fee Reduction – Over the next 12 months, the PTO will be implementing a 75% patent fee reduction for very small businesses or individual inventors, referred to in the Act as “micro-entities.” This fee reduction is supplemental to the existing 50% fee reduction for “small entities.”
  • Establishment of a Patent Ombudsman for Small Business – Per the Act, the PTO is to establish a Patent Ombudsman office, which is to provide support and services to small businesses and independent inventors.

A Patent Quality Improvement: Post-Grant Patent Review:  The U.S. will have a new process to seek review of patents before they go into effect. For a 9-month period after issuance, persons can challenge a patent for any alleged defect. The person opposing a patent must show likelihood that at least one claim of the patent is unpatentable or that there are important legal questions raised that would affect several other patents. This provision will generally apply to patents filed in spring 2013. After the 9-month period, review may only be sought for based on claims that the patent is invalid due to an earlier patent or printed publication. 

Litigation-Related Provisions - While there had been efforts to place general limits on patent damages and new restrictions on where patent suits may be filed, these did not make it into the final bill.  Expect continuing controversy on these issues. Here’s what did go into law:

  • Effective immediately under 35 U.S.C. § 292, only the U.S. government can bring false marking claims based on public rights. Prior to this change, many claims had been filed by (intermeddling) private parties on behalf of the public against companies that (usually inadvertently) marked their products with inapplicable or expired patents. Companies experiencing actual competitive injury from false marking with an inapplicable patent can still seek damages from such injury. Marking a product with an expired patent will no longer be a violation of law.
  • New limits have been placed on the ability of plaintiffs to sue several unrelated parties in the same lawsuit. This is effective immediately under 35 U.S.C. § 299.
  • An inventor’s failure to disclose the “best mode” of practicing an invention is no longer a basis to invalidate a patent (although the inventor still has an obligation to disclose best mode).
Sum Up  The America Invents Act made a number of significant changes to U.S. patent law, some to harmonize U.S. practice with foreign practice, others to improve the patent examination process, including for small business, and a few to address some problematic litigation-related issues.  A number of the changes require further development or implementation by the USPTO.  So stay tuned to see whether and how the new provisions actually impact day to day process at the PTO and on the rights of our nation's inventors.

 

Minnesota Radical CEO #4

Posted by: Ernest Grumbles III Updated: June 5, 2011 - 9:54 PM
What’s old is what’s new. Or at least, what’s new is what’s happening for the old. We are about to experience a massive demographic shift in the United States such that by 2050, senior citizens will make up 20% of the population. Our nation, still young itself on the world stage, has never focused on the needs of the aging as much as other cultures have. Marketers, product developers, and software developers have seen those 18-30 as the drivers of demand and innovation. Well, get ready for the shift.
 
Kathryn Roberts, President and CEO of Ecumen (www.ecumen.org), a 4,000 employee senior services non-profit based in the Twin Cities, recognized this coming change for the opportunity that it is. Ecumen, aiming to better serve what will be the largest population group in new, positive ways, has led the way with an open focus on innovation and technology. As a result of Kathryn’s vision, Ecumen, formerly the Board of Social Ministry, re-branded in 2004, shifted primary focus from nursing homes to senior housing, and now routinely engages with the tech community to look for ways to improve the life of its clients. 
 
As one example, Ecumen now employs GE’s QuietCare technology in much of its housing. QuietCare monitors and transmits information on residents’ daily activities, looking for deviations from routine that could indicate distress or incapacitation. Ecumen is also an active partner with Mill City Commons, working to build a virtual senior-oriented community that overlays the real neighborhood in view of the Guthrie and aims at keeping people in their neighborhood “for life.”   Seniors in Ecumen’s system also have access to Ecumen Connects, a social network that connects seniors with each other and allows for viewing and sharing many types of digital content. 
 
As a result of these other critical innovation steps, Ecumen is on solid financial and operational footing and is a national leader in harnessing technology for the benefit of our growing aging population (not just for teens and 20-somethings).
 
Kathryn Roberts Facts:·        
  • Kathryn graduated from the University of Minnesota with a B.A. in Psychology, received an M.S. in Special Education from Mankato State University and has a Ph.D. in Educational Administration from the University of Minnesota
  • The first woman appointed to lead a major zoo, at age 34, she took over operations of the Minnesota Zoo, dramatically increased attendance and revenues and built the first environmental high school located at a zoo.
  • Kathryn led the Metropolitan Sports Facilities Commission in the effort to keep the Minnesota Twins in Minnesota (successfully!).
  • She is chair of the Minnesota Veterans Health Care Advisory Council.
  • Prior to joining Ecumen, Kathryn was vice president of the Minneapolis Foundation.
Her Awards/Recognitions:
  • Named as one of the Twin Cities’ “Best Brains” by MSP Magazine in 2008.
  • Member of the Boards of LeadingAge, VocalEssence and Northland College in Ashland, WI
  • Honored by the U. of Minnesota’s College of Education as one of its 100 Distinguished Alumni in the first 100 years of the College
Some quotes by Kathryn:
  •  “[P]eople want to stay in their own homes and . . . people really need support to do it so that they’re not isolated and they’re getting the services they need. They need to be empowered to be as independent as they possibly can be.”   
  • “This is an incredible time to be doing work in changing aging. The forces of consumer desire, demographics, technology, public policy and longevity have created such fertile ground for collaboration and innovation in Minnesota and far beyond.”
  • "We are working to create a suite of services that will give a dispersed group of individuals a shopping suite of everything from groceries delivered to dog-sitters to picking up your daughter at the airport, with Ecumen’s stamp of approval. There would be health components. Within a neighborhood people would communicate and have a social network and support for each other. It’s all about creating ways to empower people.”  

 

Bilski, Business Method Patents and the Uncertainty Principle

Posted by: Ernest Grumbles III Updated: July 15, 2010 - 7:00 AM

On June 28, 2010, the U.S. Supreme Court issued its ruling in the biggest patent case in recent years, In re Bilski.  The case related to the patentability of business methods (steps in accomplishing a business task) and has been a lightning rod in the intellectual property world (and elsewhere) during its long path to conclusion.  These business method patents, typically directed to financial, Internet commerce, data analysis and business processes, are often written such that the particular machine or system used to perform the method is irrelevant.  Bilski himself had tried to get a patent on various methods of managing hedge fund risk.

In one view, the patent system is simply evolving to protect modern methods of technology, which may be platform neutral.  Think of the iPod, which can replace several other physical hardware tools.  In another view, such methods may not seem to require the perspiration of genius of physical hardware and seem to some to be too easy to create and protect.  Thus the questions posed to the Supreme Court: (a) do patentable methods require use of a particular machine or the transformation of physical matter; and (b) are business methods outside the bounds of patentability; and (c) what of Bilski’s methods of managing hedge funds.

If you’re Bilski, you now have certainty.  The Supreme Court unanimously rejected his claims as being “abstract” and unpatentable math formulas.  As to the other questions, we only know what’s not true.  Per the Court, methods or processes, to be patentable, don’t necessarily require the use of a particular machine or the transformation of matter.  That is simply one of the ways of evaluating whether a claimed method is too abstract to be protected.  Finally, the Court ruled that business methods are not per se unpatentable.  However, the converse is not true either – business methods are not always patentable.  Rather, each inventor’s claims will have to be evaluated individually as to whether they are too abstract. 

On this last point, if the Court had offered a definitive rule of unpatentability, thousands of patents across the country would have died a silent death.  Depending on your perspective, this was a good or bad thing.  For example, in the software community, there are many companies with valuable patent portfolios such as IBM who breathed a sigh of relief at the Court’s ruling.  And there are others in that community who believe there should be no patents on software inventions who were equally dismayed.

For the inventor community as a whole, the upshot of Bilski is that there is no strict test for determining patentability of methods and processes.  Flexibility and creativity in patent protection still reign.  But the lack of a bright-line test means that more cases will fall within the zone of uncertainty, which may increase the cost of patent protection and litigation.  While the Supreme Court may have been properly cautious in not issuing a ruling that stifled patent protection for future technologies, it did little to change the current realities faced by inventors and industry.  They will keep working and keep inventing, and the Patent Office will continue to sift the wheat from the chaff.

 

How to Choose Minnesota Judges? Quietly.

Posted by: Ernest Grumbles III Updated: April 5, 2010 - 8:17 PM

Since the dawn of recorded time, one of the functions of government is to help decide disputes between citizens and between citizens and government.  This prevents the unnecessary (and occasionally bloody) conflicts that ensue from self-enforcement of legal rights.  Think vigilante mobs and feuds.  If justice is going to be something more than vengeance, then it should be rendered impartially and equitably.  Citizens need to have confidence that the person deciding their disputes has an open mind, knows the law and complies with the law.  The process for selecting such people has been the challenge.

In the U.S. federal court system, judges are primarily chosen by presidential appointment. The U.S. Constitution provides for the Executive Branch to select, and Senate to approve, candidates for federal judge, who serve for life.  This system provides a deliberative screening process for candidates by elected officials, but also then shields those candidates from political influence after approval.  While there are rancorous confirmation hearings at times, they are infrequent.  If candidates are well-chosen and the process well-handled, the appointee humbly takes his or her position and begins handling legal disputes that are typically free of any political content.  Do you care how the Minnesota federal courts decide random breach of contract suits?  Likely not, unless you're personally involved.  But you do likely want the disputes handled properly.

An appointment system, free of nasty election politics, favors a quiet, neutral and independent judiciary, which is essential for public confidence in justice.    The downsides are that work performance can vary over a lifetime, and federal courts are largely left to have to police their own performance.  This is in marked contrast to legislators who are regularly turned out of office for policy or performance reasons.  There are bad judicial eggs occasionally and the U.S. Constitution provides for impeachment.  Thankfully, this rarely occurs - mostly because judges tend to behave themselves! 

The U.S. Magistrate judge system provides another good model for balancing the need for qualified candidates with judicial independence.  U.S. Magistrate Judges were a creation of Congress under Article I of the Constitution to relieve some of the occasionally severe backlog in the federal court system.  Magistrate Judges in Minnesota are appointed by the local District Court for fixed terms - with the input of a local merit advisory panel of attorneys.  Persons can apply for the positions openly, and the process typically produces high-quality judges - again free of any political contest or election.

And now on to Minnesota state court judicial selection and the current controversy.  Being a populist state, Minnesota requires judicial elections.  The Governor, however, may appoint persons to judgeships that become open in between terms (whether through retirement or death).  In actuality, most judges in Minnesota get on the bench initially through appointment because most judges leave before the end of their term.  This is largely a function of custom.  The Commission on Judicial Selection then handles applications for appointment and makes recommendations to the Governor. 

Nonetheless, all Minnesota judges, whether initially appointed or elected have to eventually stand for election, which can be contested.  While few judges are turned out in these elections, which happen every six years, the people have a direct say in who gets to decide civil and criminal disputes.  Incumbents are typically re-elected because really there's no reason to move them out.  They're not public figures regularly clashing with opponents on matters of social controversy.  Rather, they're doing their job of processing and disposing of the 1000s of lawsuits, criminal proceedings, family court spats and other matters requiring calm and impartial intervention. 

So what's the problem?  Some have tried to push judicial elections in Minnesota in the direction of partisanship, campaign promises and big money.  Recall the Wersal case to the Supreme Court.  Full-fight elections would be a bad way to go.  The beauty of the impartial court system is that when and if we show up there we will get a fair hearing from someone who has not already announced their position on certain issues.  Compare this to legislative elections where that's exactly what we want. 

In response to the increased conflict in judicial elections, there are current efforts to move Minnesota to a retention election system.  All candidates would be appointed by the Governor and all candidates would be subject to periodic retention elections.  The public would get to vote yea or nay on keeping the judge.  If a majority votes nay, the Governor would then need to pick a new candidate. This system would preserve public input, but would keep the current relative low profile of judicial elections.  Whether this method goes forward should be a matter of clear and open public discourse, though it seems a sensible compromise.  One thing does seem clear though:  expensive, partisan and bitter judicial elections will do nothing to promote public confidence in the quiet branch.  That's not the Minnesota way.

 

      

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