Littler, the world’s largest employment and labor law practice representing management, has added Eric Compere as of counsel in its Workplace Safety & Health Practice Group. Compere, who will be based in Los Angeles, was previously an attorney with the California Department of Industrial Relations’ Division of Occupational Safety and Health (Cal/OSHA). Since the onset of the pandemic, Littler’s deep bench of attorneys in the Workplace Safety & Health Practice and the firm’s COVID-19 Task Force have counseled clients on the myriad of issues brought on by COVID-19.

Compere’s addition further strengthens Littler’s Workplace Safety & Health Practice, which also brought on former Cal/OSHA attorney Melissa Peters in 2019. With in-depth insight into the complex network of workplace safety regulations across the country, the practice provides employers with the tools to maintain safe workplaces and counsel to anticipate changing compliance regulations and emerging issues.

At Cal/OSHA, Compere represented the division in a range of matters, including administrative hearings, appellate briefings and oral arguments. He also advised California’s governor’s office on matters related to safety and health in the workplace and conducted legislative reviews of proposed regulation for the state’s Labor & Workforce Development Agency. During the coronavirus pandemic, Compere conducted statewide training on the California Aerosol Transmissible Diseases (ATD) standard and COVID-19 citation issuance and served as a Cal/OSHA contact to the California Department of Public Health and the state Department of Justice.

Compere received his J.D. from Loyola Law School in Los Angeles and his B.A. from Williams College.

“The COVID-19 pandemic has had profound effects on US health care markets,” write Roslyn Murray, Suzanne F. Delbanco and Jaime S. King in HealthAffairs Blog.

“As demand for office visits and elective procedures have declined, independent physician offices have suffered unprecedented revenue losses that make them vulnerable to foreclosure or acquisition by large health systems. Many independent hospitals, including safety-net and rural hospitals, likewise have sustained huge losses, and they have not received adequate support from the federal government. Funds allocated to hospitals via the Coronavirus Aid, Relief, and Economic Security (CARES) Act and the Paycheck Protection Program and Health Care Enhancement Act, have been distributed mainly to large health systems with sizable amounts of cash and investment income, a relatively large share of patient revenue from private insurance, and market power.”

This article highlights “three types of state legislation that could help maintain or encourage competition in the face of provider closures and acquisitions.”

Read the article.

Lowenstein Sandler is proud to announce that seven lawyers have been elected to the partnership in 2021: Dotan Barnea, Annie Nazarian Davydov, Eric Jesse, Michael A. Kaplan, Kathleen A. McGee, Chandra K. Shih, and Daniel A. Suckerman.

The firm also elevated 20 associates to counsel: Kent Anderson CIPP/US, Scott Balterman, Robert Bee, Andrew Bisbas, Konstantin Chaus, Eugene R. Cheval, Justin Corbalis, Alexander Dinur, Sarah Gore, Phillip Khezri, Paula Ladd, David Lifshitz, Brian Nistler, Alex H. Rosenthal, Amy C. Schwind, Bryan Sterba, Eric R. Suggs, Eric Swartz, Kristin V. Taylor, and Alexander D. Zozos. Kimberly E. Lomot has been named senior counsel.

All promotions became effective January 1, 2021.

New Partners

• Dotan Barnea, co-Chair of the Israel Practice and member of The Tech Group and Seed Stage Investing & Startups group, provides strategic support and advice to tech companies, investors, and entrepreneurs. He focuses on corporate and business matters as well as financing and M&A transactions. A significant part of Barnea’s practice involves work with non-U.S. startups as they raise money from U.S. investors and grow their businesses in the United States. Barnea is a member of the bar of New York and Israel. Before joining Lowenstein Sandler, he practiced law in Tel Aviv, Israel. Barnea received both his B.A. and his L.L.B., magna cum laude, from Tel Aviv University. He served as a commander in the Israeli Defense Forces’ Infantry Corps.

• Annie Nazarian Davydov, member of the Transactions & Advisory Group, Private Equity practice, and The Tech Group, handles complex private and public mergers and acquisitions and divestitures. She represents all manner of entities, from strategic buyers, sellers, and sponsors to investment funds and private growth-stage technology companies. Davydov also advises clients on general corporate governance matters. She has represented The Estée Lauder Companies Inc. in numerous acquisitions, including its $1.45 billion acquisition of Too Faced. Davydov received her J.D. from the New York University School of Law and her undergraduate degree from the University of California, Los Angeles.

• As a representations and warranties (R&W) insurance specialist for over a decade, Eric Jesse of the Insurance Recovery group brings deep experience to private equity and strategic buyers’ deals and claims. He also counsels policyholders on their directors and officers (D&O) and cyber insurance programs to identify key policy enhancements available in the market. When policyholders have encountered insurers that refused to pay claims, Jesse resolved those claims under a host of policies, defeated a wide range of coverage defenses, and recovered hundreds of millions of dollars in insurance proceeds. Jesse received his J.D., with honors, from The George Washington University Law School and his B.A. from The George Washington University’s Columbian College of Arts & Sciences.

• Michael A. Kaplan, member of the Business Litigation, Products Liability & Specialty Torts, and White Collar Criminal Defense groups, has significant experience in litigating all phases of bankruptcy matters and in fiduciary litigation, products liability, tort, and dram shop cases. He handles a wide array of civil litigation and appeals in both state and federal courts across the country and is experienced with U.S.-based and international arbitrations. In addition to his civil practice, Kaplan represents individuals and corporations in white collar criminal defense matters involving allegations of fraud and tax evasion. He conducts internal investigations and defends entities in investigations and civil proceedings brought by regulatory authorities. Kaplan earned his J.D., summa cum laude, from Syracuse University College of Law and his B.A., summa cum laude, from Temple University.

• With close to two decades of experience as a prosecutor and leading regulator, including as Bureau Chief of the New York Attorney General’s Bureau of Internet and Technology, Kathleen A. McGee leverages her extensive experience in the public sector by representing clients before federal, state, and local law enforcement and regulators on issues ranging from white collar criminal defense matters and criminal and civil investigations before the DOJ, SEC, FTC, and state attorneys general, to commercial disputes and advisory matters involving technology, data commodification, cybersecurity and privacy, consumer protection issues, tech M&A, data governance, and corporate governance. A member of The Tech Group and the White Collar Criminal Defense practice, McGee counsels established global businesses, scale-ups, and startups (including fintechs, investment groups, and governments) in multiple sectors, including ad tech, financial services, insurance tech, biotech, IoT, and retail, on a broad spectrum of regulatory issues concerning technology, data security, and privacy. She has a J.D. from Boston University, an M.A. from the University of Chicago, and a B.A. from Sarah Lawrence College.

• Chandra K. Shih of The Tech Group, Seed Stage Investing & Startups, and Venture Capital & Tech M&A works with growth-stage and early-stage startups and venture firms and the angel and strategic investors who fund them. She provides legal and strategic advice to founders, investors, and boards on corporate governance matters, debt and equity financings, and mergers and acquisitions. Shih also provides general legal and strategic guidance through all phases of her startup clients’ life cycles, from formation to exit and everything in between. Shih is a member of the leadership committee for both the Women’s Initiative Network and the Diversity Leadership Network at Lowenstein. She has a J.D. from Santa Clara University School of Law and a B.A. from Santa Clara University.

• Daniel A. Suckerman of the Real Estate practice represents a broad range of clients in diverse commercial real estate transactions, including acquisitions, leasing, financing, joint venture agreements, and matters relating to asset management. Suckerman’s practice is national in scope and crosses all asset classes, with a focus on acquisitions and dispositions and significant experience in multifamily, industrial, self-storage, and retail. Also among Suckerman’s areas of emphasis is commercial leasing, covering both landlord and tenant clients and office (with a particular focus on New York City), retail, and industrial. He received his J.D., cum laude, from the Benjamin N. Cardozo School of Law and his B.A. from Rutgers, The State University of New Jersey.

“A suburban New York jewelry wholesaler pleaded guilty on Wednesday to fraud for running a $200 million Ponzi scheme targeting current and retired police officers and firefighters who were promised big profits from the resale of jewelry,” reports Jonathan Stempel in Reuters U.S. Legal News.

“Federal prosecutors said Gregory Altieri, 53, of Melville, New York, pleaded guilty to wire fraud and admitted to securities fraud at a hearing before U.S. District Judge Brian Cogan in Brooklyn.”

“The defendant faces up to 20 years in prison at his scheduled March 31, 2021, sentencing.”

Read the article.

“After nearly three years of legal wrangling, 23 foreign investors in the scandal-plagued Jay Peak projects have settled with their former immigration attorneys, Carroll & Scribner,” reports Anne Galloway and Alan J. Keays in VT Digger’s Crime and Justice.

“The immigrant investors sued Ed Carroll and Mark Scribner, claiming the two attorneys gave the developers of Jay Peak the legal tools to hoodwink them.”

“The Burlington based firm had a built-in conflict of interest: Carroll & Scribner served both as corporate attorneys for Jay Peak and as immigration attorneys for the investors.”

“In a lawsuit filed in 2018, investors alleged negligence, breach of contract and breach of fiduciary duty.”

Read the article.

“It’s been a tumultuous year for in-house legal chiefs. The coronavirus pandemic led many companies to cut law department pay or headcount while increasing workload. Several leading general counsel added job titles or got new gigs. Others left the in-house world completely,” writes Caroline Spiezio in Thomson Reuters Westlaw Today.

Read the article for some of the biggest in-house shakeups of 2020.

“… public health issues dominated 2020 and with the country’s attention focused on COVID-19 testing, status, transmission and care, HIPAA went mainstream. Health information became critical not only for health care providers, but for all manner of businesses, employers, property owners, and the national media. HIPAA – or more often than not ‘HIPPA’ – was frequently touted in the news and on social media as the reason why COVID-related information could or could not be shared. As we head into 2021 with the pandemic raging on, the vaccination program underway, and a new administration taking over, here is a look at what we expect for ‘HIPPA’ in 2021,” write Dianne J. Bourque, Ellen L. Janos and Michelle L. Caton Mintz’ Insights Center.

Read the article.

“The COVID-19 pandemic continues to shake up the nation’s economy. Long-standing companies such as JC Penney, J. Crew, Neiman Marcus, Modell’s Sporting Goods, Brooks Brothers, Lord & Taylor, Men’s Wearhouse, GNC, California Pizza Kitchen, 24 Hour Fitness, and Gold’s Gym have filed for bankruptcy. Unfortunately, it is highly likely that many more companies, large and small, will file for bankruptcy protection in the coming months,” write Gary Kaplan and Greg Shean in Farella, Braun and Martel’s Publications.

“For landlords of commercial real estate, these bankruptcies can have significant impacts on their rights and remedies under their leases. When confronted with a tenant who has filed for bankruptcy or may be considering it, understanding the basics of those effects is helpful.”

Know the Code.

“On Sunday, December 27, 2020, President Trump signed into law a COVID-19 relief and government spending bill entitled the ‘Consolidated Appropriations Act, 2021.’ Within its nearly 5,600 pages are significant new trademark and copyright provisions unrelated to either the coronavirus or the funding of the government. For trademark owners, the legislation incorporates the Trademark Modernization Act of 2020, H.R. 6196, likely the most significant trademark legislation since the Lanham Act’s enactment nearly 75 years ago. It will change trademark practice in several ways, including: (i) providing a statutory rebuttable presumption of irreparable harm to benefit brand owners in trademark litigation; and (ii) creating new expungement and reexamination proceedings before the United States Patent and Trademark Office (USPTO) to more efficiently remove unused marks from the registry,” write David A. Bell, Jason P. Bloom, Joseph Matal and Wesley Lewis in Haynes and Boone’s News.

“For copyright owners, the legislation creates a new ‘Copyright Claims Board’ within the United States Copyright Office to adjudicate certain ‘small-claims’ copyright disputes rather than trying them in the courts. It also increases criminal penalties for illegally streaming content, making certain streaming of copyrighted content for profit a felony punishable by up to 10 years of imprisonment.”

Read the article.

“On December 27, 2020, President Trump signed H.R. 133, the ‘Consolidated Appropriations Act, 2021,’ an agglomeration of dozens of individual pieces of legislation which together total nearly 6,000 pages. While general press coverage has mostly focused on the controversy concerning the size of relief checks that will be sent to most taxpayers, and on appropriations to prevent a federal government shutdown, the Act contains substantial, and potentially historic, provisions addressing energy, climate change, and sustainability. The Act helps lay the groundwork for what promises to be a major push towards renewable energy sources and reductions in greenhouse gases (GHGs). These developments create a tremendous opportunity for renewable energy and GHG reduction projects, but also create new compliance burdens across a variety of industries,” write Eric L. Christensen, Brook J. Detterman Aron H. Schnur, Allyn L. Stern and Deepti B. Gage in The National Law Review.

For a summary and key takeaways, read the article.

Blank Rome LLP is pleased to announce that Arash Beral has joined the Firm’s Los Angeles office as a partner in the Corporate Litigation group. Beral regularly represents clients in complex and high-stakes business litigation matters, many of which have national and international implications. Arash joins the Firm from Freeman, Freeman & Smiley LLP.

Beral has considerable litigation, first-chair trial, and appellate experience. He represents clients in everything from complex business and commercial matters to trade secrets, lending, partnership, corporate governance, shareholder, and real estate disputes. Beyond his litigation counsel, Beral has also helped clients facilitate multiple transactions ranging from private equity, investment, and financial services transactions to real estate dispositions and acquisitions of more than one billion dollars in assets to date.

Lauren A. Ferrante has joined Duane Morris LLP as a partner in the Corporate Practice Group in the firm’s Chicago office. Ferrante offers experience representing clients in state and local tax (SALT) controversies and planning matters. Prior to joining Duane Morris, she was a partner in McDermott Will & Emery LLP’s SALT Practice.

Ferrante represents taxpayers with respect to multi-state and local tax issues, including at all stages of controversy disputes at the audit, administrative and judicial levels. She has extensive experience defending clients against tax claims brought under state false claims acts. Ferrante also assists taxpayers with SALT planning, transactional and compliance matters. She is a frequent writer and speaker on SALT issues and former chair of the Chicago Bar Association’s State and Local Tax Committee.

Ferrante is a graduate of Northwestern University School of Law (LL.M. in Taxation, with Honors, 2010), the University of Illinois College of Law (J.D., magna cum laude, 2009) and Miami University (B.A., magna cum laude, 2006).

Farrell Fritz is pleased to announce the promotions of Bernadette T. Kasnicki and Irene A. Zoupaniotis to counsel effective January 1, 2021.

Kasnicki, a Garden City, NY resident, is a tax attorney. She received her J.D. from Georgetown University Law Center, her B.A. from Davidson College, and her LL.M. from New York University School of Law.

Zoupaniotis, a Long Island City, NY resident, is a labor & employment attorney. She received her J.D. from Hofstra University School of Law, her B.A. from the William E. Macaulay Honors College at Queens College, and her LL.M. from Columbia Law School.

Eversheds Sutherland is pleased to announce the election of 11 new US counsel effective January 1, 2021.

The following attorneys have been elected counsel:

From our Corporate and Financial Services Practice Group:

Ronnie Dabbasi, resident in the Houston office, has a broad corporate and commercial practice and advises clients on all aspects of acquisitions, dispositions, joint ventures, and project development in the energy sector. His client base includes private equity firms, oilfield service companies, electric and gas utilities, renewable and oil & gas project developers and sponsors, commodity trading firms, mining companies, diversified public companies, chemical and petrochemical producers, and other strategic and passive investors. He advises on domestic and cross-border mergers and acquisitions, joint ventures and co-development structures, energy trading arrangements, project development and financing, and related corporate and commercial matters.

Dwaune Dupree, resident in the Washington DC office, counsels investment funds and business development companies (BDCs) on a broad range of corporate, regulatory, compliance and corporate governance matters. He also advises clients on various capital markets transactions, and ensures compliance with federal securities laws and regulations promulgated by the U.S. Securities and Exchange Commission (SEC).

Aaron Moody, resident in the Atlanta office, focuses his practice on critical business transactions, including mergers and acquisitions (M&A), joint ventures, financings, venture capital investments and private placements. He also routinely provides general corporate representation and advice to clients and negotiates complex commercial arrangements. He has represented clients in diverse industries, including private equity funds, payments, building products companies, insurance companies, and energy, technology and media companies. He also assists with many in-bound cross-border acquisitions.

Darius I. Ravangard, resident in the Washington DC office, represents issuers and investment banking firms in connection with public and private offerings of equity and debt securities, and counsels public companies on compliance with reporting obligations under the Securities Exchange Act of 1934 and listing standards and requirements of national securities exchanges. Darius also handles matters relating to the formation, operation and regulation of public and private investment funds, including business development companies, as well as strategic transactions. More generally, Darius counsels clients with respect to the Investment Company Act of 1940, the Investment Advisers Act of 1940 and corporate governance matters.

Jessica Rissmiller, resident in the Atlanta office, focuses on secured and unsecured commercial lending and finance. Jessica primarily represents lenders and borrowers in negotiating and documenting syndicated and single lender credit facilities.

From our Energy Group:

Jackson Allen, resident in the Atlanta office, represents clients in the power, natural gas and renewable energy sectors in connection with commercial transactions, project development, mergers and acquisitions, power purchase agreements, operations and maintenance agreements, engineering, procurement and construction agreements, and natural gas and power transactions.

Will Pickens, resident in the Atlanta office, advises clients on a variety of transactional matters, with a focus on energy- and infrastructure-related lending and capital markets transactions. Will’s practice primarily consists of representing borrowers entering into credit facilities, secured and unsecured, with both private and governmental lenders, and representing corporate issuers and their underwriters in the issuance of debt securities, through public offerings, Rule 144A and Regulation S placements and 4(2) private placements. Will also regularly represents clients in economic development incentives transactions for energy and industrial facilities, real estate developments and other major capital projects and has experience advising energy-industry clients on acquisitions, project development and various commercial transactions.

From our Intellectual Property Group:

Robert Ward, resident in the San Diego office, counsels both growth-stage innovative companies and global brands on intellectual property and technology related matters including strategic patent counseling, intellectual property due diligence, technology transactions and intellectual property disputes.

From our Litigation Practice Group:

Ulyana Bardyn, resident in the New York office, represents clients in complex cross-border disputes, including international commercial arbitrations, investor-state disputes and business litigation matters. Ulyana’s experience includes acting as counsel in arbitration cases governed by the rules of the International Centre for Settlement of Investment Disputes (ICSID), the International Chamber of Commerce (ICC), the London Court of International Arbitration (LCIA), the American Arbitration Association (AAA) and the United Nations Commission on International Trade Law (UNCITRAL). Ulyana also counsels clients in high-stakes complex commercial litigation matters in US federal and state courts, particularly in matters that traverse arbitration and litigation fora, including parallel proceedings, enforcement matters, interim relief and Section 1782 discovery.

Alex Fuchs, resident in the New York office, advises insurance companies on complex, large-scale litigation matters. He focuses his practice on defending challenges to insurers’ business practices in class action cases and coverage disputes. He also assists clients with defense of tort, contract and subrogation matters in New York state and federal court.

Amanda Giffin, resident in the Atlanta office, counsels clients on a variety of complex business litigation. Her practice focuses on professional liability matters, with a particular emphasis on accounting liability.

Inventors often ask patent attorneys whether they should file a provisional patent application (which expires after one year and can never issue as a patent) or a non-provisional patent application (which is examined by the USPTO and can issue as patent).

To answer this question, it is first important to understand the history of provisional patent applications (PPAs) in the United States, why they were added to U.S. patent law, the differences between provisional and non-provisional patent applications, and how other provisions of U.S. patent law impact their use. Against this backdrop, we can lay out some scenarios when one might find it advantageous to file a provisional patent application, instead of proceeding directly to filing a non-provisional patent application.

To give you a brief preview, since the U.S. now has a “first to file” patent priority system, a provisional patent application should be filed as soon as an invention has been conceived, such as when it is memorialized in an invention disclosure or a patent search letter. You should continue to keep the invention secret (i.e., do not offer to sell, sell, use in public, or otherwise commercialize the invention) until an enabled patent application has been filed that claims benefit of the PPA and covers the full scope of what you wish to protect. Another situation when a provisional patent application can be useful is when an invention is about to be disclosed (e.g., at a tradeshow, in a presentation at a conference, to a customer, etc.).

It should be noted at the outset that both provisional and non-provisional patent applications are “utility” patent applications, in contrast to the other two types of patent applications, i.e., “design” and “plant”. In layman’s terms, a “utility” patent covers the way a product or process functions or the way it works, whereas a “design” patent covers ornamental features of a product or the way it looks. “Plant” patents, which are relatively rare in comparison to “utility” and “design” patents, obviously cover plants. To be clear, there is no such thing as a provisional “design” or “plant” patent application; only provisional “utility” applications.

The Birth of Provisional Patent Applications in the United States

The “provisional patent application” (or “PPA”) celebrated its 25th birthday this year in the United States. While provisional patent applications had long been part of many foreign patent laws, they first became part of the United States patent law on June 8,1995.

Following the Uruguay Round of negotiations on the General Agreement on Tariffs and Trade (GATT), President Bill Clinton signed into law the Uruguay Round Agreements Act (URAA) on December 8, 1994. The URAA made many changes to U.S. patent law that were designed to harmonize various U.S. intellectual property laws with international intellectual property laws. For example, the URAA changed the term of a U.S. patent from 17 years from issuance to 20 years from filing. The URAA also introduced provisional patent applications into U.S. patent law for the first time ever. These provisions took effect on June 8, 1995, six months after President Clinton signed the URAA into law.

One of the ways in which the URAA placed American inventors on common ground with foreign inventors related to the circumstances that can trigger the start of the new 20-year-from-filing patent term. Prior to June 8, 1995, foreign inventors could file a provisional patent application, then file a non-provisional patent application a year later, and enjoy a 20-year patent term that ran from filing of the non-provisional application, not the provisional application. This gave them an extra year of patent term. The URAA implemented the same rule for U.S. inventors.

When provisional patent applications became part of U.S. patent law in 1995, they were heralded as a low-cost alternative to filing a non-provisional patent application. This lulled, and still lulls, U.S. inventors into thinking a provisional patent application gives them the same level of protection as a non-provisional application, but for a lot less money. Not so. For reasons discussed below, the old adage “You get what you pay for” applies here.

The Basics of U.S. Provisional Patent Applications

At a high level, a provisional patent application “expires” after one year, is not examined by the United States Patent and Trademark Office (“USPTO”), and will never mature into an issued patent (i.e., a “provisional patent” can never exist). The PPA does, however, give you “patent pending” status, and a priority date that may or may not be helpful depending on how well the PPA is drafted (more on that below).

A provisional patent application can also form the basis for a non-provisional patent application, which can lead to issuance of a utility patent. But the non-provisional patent application must be filed within one year of the filing date of the provisional patent application and claim benefit of the provisional patent application. While in certain circumstances, you may be able to extend the 12-month deadline by up to two months, prudence dictates that you make it a best practice to file your non-provisional application within 12 months of the provisional filing date.

You should also be aware that any foreign counterpart patent applications must also be filed within that same one-year period if you wish to claim the benefit of the provisional patent application in foreign countries.

A provisional patent application does not include all of the formal requirements of a non-provisional patent application. For example, a provisional application does not need any “claims” or an oath or declaration. (A “claim” is a numbered paragraph at the end of an issued utility patent, which defines the legal “metes and bounds” of the protected invention.)

The requirements for a provisional patent application include: (1) a specification (e.g., written description of the invention) pursuant to 35 U.S.C. § 112 (note this is the important part that must adequately describe the invention you seek to protect with a later-filed non-provisional patent application); (2) a drawing “where necessary for the understanding of the subject matter sought to be patented” pursuant to 35 U.S.C. § 113; (3) the required USPTO filing fee, which is currently $150 for a small entity; and (4) a cover sheet (such as Form SB/16 available at www.uspto.gov) that identifies:

• The application as a provisional patent application;
• The name(s) of all inventors;
• The residence address for each inventor;
• The title of the invention;
• Any attorney or agent by name and registration number; and,
• The correspondence address.

How is a Non-Provisional Patent Application Different?

Non-provisional patent applications, on the other hand, are examined by the USPTO and, if allowed by the USPTO, will result in an issued utility patent. Non-provisional patent applications must also include an oath or declaration of the inventors, and at least one claim (i.e., the numbered paragraphs at the end of a patent that define the scope of the invention). The filing fee (including the search and examination fees) for a non-provisional is currently $830 for a small entity, which is much higher than the $150 fee for a PPA.

New Regime: “First to File” vs. “First to Invent”

For many years, U.S. patent law provided that priority disputes between inventors were decided in favor of the inventor who was the first to invent the invention. This is why it was important to keep records of the date of conception of the invention along with the inventor’s activities showing diligence from conception up to “reduction to practice,” whether that “reduction to practice” was actual (by actually building the invention) or constructive (by filing a patent application). That all changed when the American Invents Act (AIA) was signed into law. The AIA was enacted on September 16, 2011; its various provisions became effective in phases on different effective dates. The “first to file” provision discussed below became effective on March 16, 2013.

Under the AIA, Congress enacted a broad spectrum of changes to United States patent law. One thing Congress did in the AIA was to further harmonize United States patent law with the foreign patent laws by replacing the old “first to invent” system with the “first to file” system. Under the new “first to file” system, the first inventor to file a patent application wins priority. It’s as simple as comparing filing dates. There is no need for expensive litigation to depose inventors, produce documents showing conception, diligence and reduction to practice activities, determine each party’s conception date and reduction to practice date, etc. Under the new system, priority boils down to a “race to the Patent Office.”

This change in the law to “first to file” system created one of the most important uses of provisional patent applications. Under a “first to file” system, the sooner you file your patent application the better. So even if your invention is not fully developed, a good strategy is to file a provisional patent application as soon as you have conceived of your invention, even if you file a less-than-fully-developed PPA. A good time to do this is at the same time you send a patent search letter. Just continue to keep your invention secret – no public uses, no offers to sell, no sales, no commercial activities – until after you file your fully-developed/enabled PPA or non-provisional patent application. You can also file additional PPAs with incremental developments to the invention, and then claim benefit of all of the PPAs – just make sure to file the non-provisional within one year of the earliest PPA filing date.

The PPA “Emergency”

Another good use for a PPA is when a client rings up its patent lawyer and announces I’m getting ready to do X tomorrow, e.g., launch a new product at the leading annual industry trade show, make a presentation at an industry convention, or pitch a new offering to a key client. The client then follows up by asking: Is there anything we should do to protect the invention before tomorrow? At that point, the patent lawyer knows there is an emergency, and something must be filed with the USPTO today. At bare minimum, you should prepare a PPA cover sheet and file it with the USPTO along with whatever documentation the client plans on showing to the public. This will give you some level of protection, and depending on the level of detail, it may very well be that the PPA discloses everything you need to support enabled claims in a later-filed non-provisional patent application that claims benefit of the PPA.

A word of caution: Back in the “old” pre-AIA days, there was a one-year grace period after certain acts (e.g., sales, offers for sale, public uses) to file a patent application. That one-year grace period went away with the AIA, although it is not uncommon to still hear some patent lawyers talk as if that one-year grace period still exists. It doesn’t! True, the AIA includes a narrow one-year grace period; but you should know that if you try to avail yourself of that clause you are flirting with disaster. The prudent practice is to assume that you will not get any protection from the new one-year grace period, and act as if it does not exist.

Client Can’t Afford to file a Non-Provisional Patent Application

A common misconception or myth among inventors is that a PPA is cheaper than a non-provisional patent application, yet still provides the same level of protection as a non-provisional patent application. Not so. Part of what has fueled this myth is the way PPAs were promoted when they first came into being in the U.S. back in 1995, i.e., as a cheap alternative to a non-provisional patent application. It is true that a PPA can be prepared for less money than a non-provisional patent application. But the reason a PPA can be cheaper is because it can be prepared in much less time. The trade-off, however, is that while you can spend less, you likewise get less, i.e., you get less protection.

This problem often does not become apparent to the inventor until much later when the non-provisional patent application that claims benefit of the PPA is being examined in the USPTO, and the Examiner rejects claims in the non-provisional patent application based on prior art dated after the PPA was filed. The inventor says: How can this be? I have an earlier filing date. True, but the problem is the PPA does not include sufficient disclosure to enable the claims in the non-provisional patent application. Worse yet is the situation, which could arise in litigation, where the inventor’s own commercial activities after filing the PPA and before filing the non-provisional application are used to invalidate the claims of the non-provisional patent application. This is why it is important to make sure you have a patent application on file that includes sufficient disclosure to enable the claims you want to protect by a patent, and that you do so before any public use, sale or offer to sell your invention.

So if you are faced with a situation where the client does not have the funds to file a non-provisional patent application, and wants to file a “cheap” or inexpensive PPA, just make sure the client understands the risks of doing so, and that even if a less-than-complete PPA is filed, the best course of action is to avoid potentially invalidating acts until after a complete / enabled patent application is filed.

Effect on Patent Term – PPAs Do Not Start the 20-year Term

The general rule is that the term or “life” of a utility patent is 20 years from the filing date of the non-provisional patent application from which it issued. The patent law further says that the 20-year life span can begin earlier if the patent application from which the patent issued claimed priority to certain types of earlier patent applications (e.g., a parent non-provisional patent application, an intervening continuation non-provisional patent application, etc.). Significantly, however, excluded from those earlier types of patent applications are provisional patent applications. In other words, a provisional patent application does not start the 20-year patent term. As mentioned above, the law changed in this respect when PPAs were added to U.S. patent law to place U.S. inventors on equal footing with foreign inventors.

Key Takeaways

A provisional patent application should be filed as soon as an invention is conceived to establish an early filing date under the first-to-file priority system. Keep everything secret with no commercial activities until a fully-enabled patent application is filed. PPAs are also useful in “emergencies” to quickly file on subject matter about to be disclosed. PPAs can also be used in low-budget situations to establish a filing date, but make sure the client understands the risks of doing so.

About the author

C. Dale Quisenberry is an AV Preeminent-Rated intellectual property and registered patent attorney based in Houston, Texas with 28+ years of experience in the practice of intellectual property law. He is the Founder and Managing Shareholder of Quisenberry Law PLLC. If you have any questions about protecting your intellectual property rights, contact Dale for a no-charge initial consultation at (832) 680-1000 or dale@quisenberrylaw.com. For more about Dale and the firm, please visit www.quisenberrylaw.com.

“Eight acrobats severely injured when the rigging suspending them by their hair plummeted to the floor during a circus performance in Rhode Island in 2014 have reached a $52.5 million settlement with the ownership and management of the arena where the circus was held, their lawyer confirmed Monday,” posted in AP News.

“A metal clip that held the acrobats 20 feet (6 meters) above the floor of the Dunkin’ Donuts Center snapped during the May 2014 performance, causing the women to suffer broken bones and spinal injuries. A ninth worker on the ground was also hurt.”

“Some of the women still suffer from ‘life-altering’ injuries, according to Mandell, who said he could not get into specifics because of medical privacy laws.”

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“The attorney-client privilege is one of the bedrocks of the legal profession,” write James Dawson and Kevin E. Packman in Holland & Knight’s Insights.

“It permits communications between a client and an attorney to remain privileged. The U.S. Supreme Court has stated that by assuring confidentiality, the privilege encourages clients to make ‘full and frank’ disclosures to their attorneys, who are then better able to provide candid advice and effective representation. Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). On the other hand, courts sometimes view the attorney-client privilege as preventing full disclosure. As a result of these conflicting views, the attorney-client privilege ‘protects only those disclosures necessary to obtain informed legal advice which might not have been made absent the privilege.’ Fisher v. United States, 425 U.S. 391, 403 (1976).”

This article discusses Taylor Lohmeyer Law Firm P.L.L.C. v. United States and the prior decision.

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“Earlier this month, both houses of Congress passed the 2021 National Defense Authorization Act (‘2021 NDAA’),” write Pooja Shah Kothari and Michael M. Lloyd in Covington’s Information Reporting.

“Included in Title LXIV of the 2021 NDAA (Title 64 for those of us rusty on Roman numerals), are new information reporting requirements intended to identify individual beneficial owners of certain business entities. Subject to a number of exceptions, the bill requires certain U.S. and foreign entities to file annual reports with the U.S. Treasury Department’s Financial Crimes Enforcement Network (“FinCEN”) that will disclose information regarding the beneficial owners of reporting companies. Overall, the reporting will identify those individuals exercising “control,” as the term is defined, over those entities required to report. According to the legislation, over two million corporations, LLCs, and similar entities are formed under state law in the United States each year, and many “malign actors seek to conceal their ownership” of various entities intended to facilitate illegal activity. Accordingly, the reporting mandated by the legislation is intended to help protect national security interests and interstate and foreign commerce, as well as counter the financing of terrorism.”

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“Marquette University named the former top attorney at Harley-Davidson Inc. as its new vice president and general counsel,” reports Sari Lesk in Milwaukee Business Journal’s Education.

“Paul Jones starts Jan. 4 in his new position. He spent 10 years as an executive officer for the Milwaukee-based motorcycle manufacturer. There, he managed Harley’s global legal risk and oversaw the company’s legal matters, according to the Milwaukee university.”

“The Milwaukee Business Journal named Jones a top corporate counsel in 2019. Jones left Harley-Davidson last year as its chief legal officer and chief compliance officer.”

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“This year, Biglaw bonus season generally consists of two components — the traditional year-end bonus and special bonuses given in appreciation of associates’ hard work during this particularly challenging time. And if the total bonuses don’t add up to those combined numbers, well, then a firm is below market,” reports Kathryn Rubino in Above the Law’s Biglaw.

“At Alston & Bird, the year-end bonuses are individualized and tied to hours, not class year, as at most Biglaw firms. But even beyond that issue, tipsters at the firm are reporting that the bonuses are only year-end money with no special bonus money.”

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