On September 16th, 2011, President Obama signed the America Invents Act (“Act”) into law. A wave of blog posts, CLEs, and articles have sprung up to discuss the sweeping changes to the United States patent system brought forth through the changing laws.  However, the full effects of the Act may not truly be realized for many months.  Indeed, the Director of the United States Patent and Trademark Office (“USPTO”) is empowered through multiple provisions of the Act to create and implement regulations that actually define how the changes brought forth through the Act will look in practice.

For example, Section 18 of the Act provides for a transitional program for covered business method patents.  This new program allows alleged infringers of covered business method patents to initiate a post-grant review process to have the USPTO review validity of one or more claims in such patents.

Clearly, it is unclear what patents fall under the definition of “covered business method patents”.  The only guidance provided in the Act is that “the term ‘covered business method patent’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.”

Nevertheless, the Director of the USPTO is given regulatory authority in the Act to determine whether a patent is for a technological invention.  In short, the Director will define what types of inventions will fall under this special program. Today, no one truly knows whether a patent is a covered business method patent or not. The Director’s regulations could be so broad as to include patents not intended to be included by Congress during the drafting of this specific section or so narrow as to exclude the exact patents Congress intended to include.

In another example, the Act allows patent owners to bolster their patents by submitting information to the USPTO after issuance to determine whether such information creates a substantial issue of patentability.  This new process is provided for in Section 12 of the Act and is called supplemental examination. The benefits of supplemental examination is that it removes the risk of a patent being held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination for the information submitted during supplemental examination.  Patent owners that failed to present known prior art to an examiner during prosecution may be able to use the supplemental examination process to cure such an error.

Under Section 12 of the Act, the Director is given regulatory authority to define requirements as to what information is allowed to be included in a request for supplemental examination: ” A patent owner may request supplemental examination of a patent in the [USPTO] to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish.” 35 U.S.C. 257(a) (new).

Today, it is unknown what information may be submitted during supplemental examination, and it is up to the Director through regulation to set these specifics.  The Director may create regulations that allow for information that effectively acts as post-issuance Information Disclosure Statements or something even more broad.

The above are only two examples of how the Act has given regulatory authority to the Director of the USPTO to define vague areas of the changing laws. It should be noted that there are many other areas of the Act that could have been included.  To learn more about how the America Invents Act is changing the United States patent system, visit Ice Miller’s website or email info@theiceloop.com.

Recently, the topic of “Social Business” has been gaining greater attention as a growing number of companies are now focused on integrating social media into every aspect of their business.  In fact, it has been estimated that the market will grow to $100 billion by 2015.  As one commentator explained, “A Social Business isn’t a company that just has a Facebook page and a Twitter account. Social Business means that every department, from [human resources] to marketing to product development to customer service to sales, uses social media the way it uses any other tool and channel to do its job.”  How to Build a Social Business, Dan Schawbel at http://www.forbes.com/sites/danschawbel/2011/10/13/how-to-build-a-social-business/ (October 13, 2011).

IBM has been a leader in the market with respect to integrating social media into its business.  In September, IBM representative Kat Mandelstein presented a case study conducted by IBM to Social Media Master NYC attendees.  Ms. Mandelstein’s PowerPoint presentation is available on slideshare, by clicking here [http://www.slideshare.net/katmandelstein/social-media-masters-2011-nyc-kat-mandelstein-ibms-journey-to-becoming-a-social-business].  During her presentation, Ms. Mandelstein explained that by shifting to a more social business, IBM has been able to “build brand advocates, listen to the market, connect inside and outside the organization, build communities and act small.”  Case Study:  How IBM Does Social Business at http://socialmediaclub.org/blogs/from-the-clubhouse/how-ibm-does-social-business (October 13, 2011).

In a recent interview, IBM’s Vice President of Social Business Evangelism, Sandy Carter, laid out her recommendations for starting the journey to becoming a social business.  Ms. Carter said that companies need to personalize a social business plan that addresses a number of factors including the company’s culture, risk management, and measurement of success.  In order to accomplish this, Ms. Carter recommends that companies use a five point process, which she referred to as an AGENDA, which stands for:

A – Aligning your goals and culture to be ready to become more engaging and transparent.

G – “Gain Friends through Social Trust” focuses on finding your fans, friends and followers, and forming best friends from your tippers or most influential clients or outside parties.  It dives into what social trust is all about and how you instill it.

E – Engage through experiences focuses on how a company can engage its clients and employees and dives into gaming, virtual gifting, location based, mobile, or other stellar experiences to drive that engagement.

N – Network your processes.  Since this is about business, figuring out how to add social to your processes is critical.  Think about customer service — adding in Twitter to address your customer’s concerns.  Or Crowdsourcing for product innovation, or Communities for incrementing your marketing processes around loyalty.

D – Design for Reputation and Risk Management!  This is the #1 areas of focus for the C-level — managing the risk of having your brand online, your employees being your brand advocates, and even your clients becoming your marketing department!

A – Analyze your data!  Social analytics are the new black!  You need to see the patterns of sentiment, who your tippers are, and listen daily.

How to Build a Social Business, Dan Schawbel at http://www.forbes.com/sites/danschawbel/2011/10/13/how-to-build-a-social-business/ (October 13, 2011).

IBM encourages its employees to use social media sites, such as Twitter, Facebook, LinkedIn, and blogs, to support their sales, communication, marketing and recruiting efforts.  See Why IBM Represents The Future of Social Business, Mark Fidelman at http://articles.businessinsider.com/2011-07-20/tech/30034737_1_ibm-executive-ibm-employees-sametime.  However, with this level of social interaction, it is virtually impossible to monitor all employee communications.  IBM has, therefore, developed detailed guidelines that govern their employees’ social interactions.  You can find a copy of IBM’s Social Computing Guidelines here [http://www.ibm.com/blogs/zz/en/guidelines.html].

If your company is interested in becoming a Social Business or increasing its use of social media, Ice Miller LLP attorneys can assist you in developing a plan and a policy that are specifically designed for your company.

On September 28, 2011, Administrative Law Judge Joel Biblowitz ruled in favor (https://www.nlrb.gov/category/case-number/13-ca-046452) of an employer that the National Labor Relations Board (NLRB) claimed had violated an employee’s rights under Section 8(a)(1) of the National Labor Relations Act (NLRA) when the employee was fired after posting comments and photos making fun of his employer on his personal Facebook page.

 Robert Becker, a former employee of the Lake Bluff, Illinois luxury car dealership Karl Knauz BMW, was fired in June, 2010 after he posted photos and comments on his Facebook page mocking his employer. In the first instance the judge considered, Becker posted pictures and sarcastic commentary questioning the dealership’s decision to serve hot dogs, chips and bottled water at a launch event for a new model BMW. In the second instance, Becker posted photos and similarly mocking commentary regarding a car accident that took place at a neighboring sister-dealership after a sales employee permitted a 13 year old boy to sit behind the wheel of a car, which he then crashed into a pond. Shortly after these postings, Becker was fired.

 The NLRB subsequently filed a complaint against the dealership, arguing that Becker’s postings constituted protected employee concerted activities and that firing Becker as a result of these allegedly protected postings violated the NLRA. The Administrative Law Judge agreed that the posts regarding the dealership’s decision to serve hot dogs at the event did constitute protected concerted activity, and that Becker’s commentary constituted legitimate complaints about working conditions (Becker testified that he, as a salesman who worked on commission, would be negatively impacted by the perception of cheapness associated with serving hot dogs). On the other hand, however, Judge Biblowitz held that Becker’s posts showing pictures of and mocking the accident were “obviously unprotected” activities that “had no connection to any of the employees’ terms and conditions of employment.” Finding that Becker was fired because of the postings about the car accident, and not because of the hot dog postings, the Judge held that the NLRB failed to meet its burden of proof in establishing a violation of the NLRA.

 Although this decision is favorable to employers, the lack of a uniform rule regarding how firings arising out of an employee’s use—or misuse—of social media will be resolved by the NLRB may create more confusion than clarity going forward (a concern echoed by the Knauz BMW dealership’s attorney). (http://www.chicagotribune.com/business/ct-biz-1001-nlrb-20111001,0,6807418.story)

In a September 23, 2011 opinion, Apple Inc.’s application for registration of the term “multi-touch” was denied by  the United States Patent and Trademark Office’s Trademark Trial and Appeal Board. The application, originally filed on January 9, 2007 – the same day the iPhone was announced – was first denied by the examining attorney, who maintained that multi-touch is “highly descriptive.” Apple appealed the decision, arguing that the term had acquired distinctiveness sufficient to warrant a trademark.  

Noting that Apple waived any argument that the applied-for mark is not merely descriptive, the Board focused on whether Apple met its burden of establishing that the term ‘multi-touch’ had “acquired distinctiveness.”  Where an applied-for mark – as here – is highly descriptive, a trademark may be issued if the mark has developed a secondary meaning such that consumers associate the mark with a particular source (i.e. the trademark owner). While no one factor is determinative, the Board will consider copying, advertising expenditure, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies in determining whether the term has “acquired distinctiveness.” Typically, the burden on the applicant is heavier when the mark is highly descriptive.

Ultimately, the Board determined that Apple failed to meet this burden, as its evidence consisted primarily of articles and webpages describing Apple’s iPhone product. While the evidence “establishes that the iPhone is a very successful product that has generated much interest among potential purchasers,” the Board explained “the applied for mark is not iPhone, it is multi-touch.” Thus, evidence submitted by Apple relating to the iPhone “is not helpful in establishing that the purchasing public associates the term multi-touch with applicant.” Furthermore, the evidence did not demonstrate that the term had been used on the goods or in packaging for the goods.  Nor did Apple submit evidence typically considered by the Board, like affidavits, depositions, or statements from the public showing the extent of Apple’s use of the term. In sum, the Board concluded that the record “contains little direct or circumstantial evidence” that purchasers of Apple’s goods view multi-touch as a “distinctive source indicator” for Apple’s goods. Putting it succinctly, the Board concluded its opinion: “Again, simply because the applied-for term has been used in association with a highly successful product does not mean the term has acquired distinctiveness.”

For more information about acquiring a trademark or otherwise protecting your intellectual property rights, contact info@theiceloop.com.

Ice Miller LLP played host to the TechPoint Measured Marketing Roundtable on September 27, 2011 featuring Aprimo and FifthGear, both of these companies speaking to the “Hyper-Competitive E-Tailing Space.”

Jeff Chamberlain, Vice President of B2B Solutions Marketing for Aprimo kicked off the discussion regarding the Marketing Revolution and why marketers are becoming paralyzed by all the data that is being thrown at them. He touched on five new reality’s that surround this revolution.

Reality 1 — Massive Data Growth

Reality 2 — New Multi-Structured Data

Reality 3 — Advanced Iterative Analaytics

Reality 4 — Big Data Analytics is a Competitive Advantage Across Industries

Reality 5 — New Types of Marketers

All of this comes down to “measuring marketing so we can do it better” Jeff says. With all of the available data companies need to find the balance and collaboration between the art and the science of marketing.

Steve Warren, Vice President of Business Development, Sales & Marketing with order fulfillment provider Fifth Gear furthered the conversation surrounding measured marketing by discussing the impact in the B2C online retail world.

This is a very timely topic considering people can now make purchases on-the-go from their cell phones or tablets.

Steve shared the B2C analytics challenge as the following: abundance of data, rapidly emerging channels, the uncertainty as to what to measure, the availability of multiple management tools and the difficulty in setting ROI goals. All of these analytics can be a distraction for marketers who are, in some cases, already stretched too thin. 

Once you know what can be measured and what those measurements tell you, business can identify “actionable analytics” from marketing efforts and improve on merchandising, identify and capitalize on shopping trends, optimize inventory assortment, improve retail promotions and gain increased visibility across their supply chain. 

Overall, the theme that both of these presentations drove home, was that with all of the data available, marketers cannot afford to turn their heads the other way, marketing efforts must be measured.

To learn more about TechPoint’s Measured Marketing Initiative, please visit: www.techpoint.org.