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IBA: Startup Launches as a Result of America Invents Act

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For most patent attorneys, the American Invents Act has created an opportunity to engage clients on a variety of legal matters. For one Indianapolis-based entrepreneur, James Burnes of Project Brilliant, it sparked an opportunity to launch a new software venture.

Among many changes, the AIA added a new method for marking in U.S. 35, Section 287(a). Virtual marking, the use of a web address in addition to “pat.” or “patent” (e.g. patent.companyurl.com). This new method offers significantly lower costs and efficiencies for companies to implement a marking strategy than the centuries old method of traditional marking. “The AIA’s treatment of product marking is one of the few changes made to patent law by the AIA that truly makes the business of patenting more efficient,” said John Daniluck, patent attorney and partner at Bingham Greenebaum Doll.

Burnes recognized that the cost and resources necessary for a company to effectively design, build and maintain its own virtual marketing database and publishing platform would be a time consuming, expensive endeavor; perfect for a software-as-a-service business. His company, PatentStatus (www.patstatus.com), is the first virtual patent marking software solution to enable corporate counsel to quickly build and launch a virtual marking database on their website without resources from IT, marketing or web staff.

“We worked with a variety of intellectual property attorneys to determine what functionality made sense,” said Burnes. “PatentStatus enables corporate counsel to create, build and maintain a registry on their company’s website without requiring lots of resources from their company’s IT department. It’s literally as easy to use as email.” According to Burnes, the only task a client’s IT staff has takes five minutes to update the company’s domain name servers to point their unique virtual marking URL (e.g. pat.companyurl.com) to PatentStatus’ secure servers.

Marking = revenue

Proper patent marking provides constructive notice to infringers and maximizes potential infringement damages for patent owners. “Virtual marking allows a patent owner to use technology to greatly reduce the cost of marking and at the same time increase the certainty of marking all the right products,” said Daniluck. That can mean additional revenue in successful infringement litigation.

Virtual marking offers the fastest and most cost effective method to providing constructive notice to their competitors while also mitigating the risk of improper marking that can occur due to employee error or negligence. Prior to virtual marking, traditional marking was time consuming and expensive and prone to employee error. “PatentStatus software allows our clients to use a single marking across every product, part and article they make and then publish the related patent information on their web site to provide constructive notice,” said Burnes. “As patent claims or associated patents change in the future, our clients can simply update their database and immediately make live changes.”

Understanding utilization creates opportunity

“Companies need to understand which patents in its portfolio they are using,” said Rick Rezek, patent attorney and partner at Barnes & Thornburg. “Having a complete, up-to-date database that links products and parts with the related patents is the first step in maximizing the use of the patent portfolio.”

The challenge for most companies implementing a virtual patent marking strategy will be getting that data together. Burnes says PatentStatus makes it easy to upload data in bulk or to add information individually as those patent-to-product or patent-to-part relationships are identified. “If you have a spreadsheet or existing patent management software, you can also bulk import your data into PatentStatus in seconds,” he said. What about publishing the wrong data? While not foolproof, PatentStatus includes a variety of fail-safes as well, to avoid publishing data that is inaccurate.

Build it or outsource it?

Burnes makes his case why outsourcing to a service like PatentStatus makes more sense than building it in-house. “You need software that is secure, scalable and has all the data tracking and historical logs to stand up in court, “said Burnes. “If our clients sue an infringer, we can be a trusted, independent third-party authority to the courts providing testimony on what was in our system and when,” he said.

This last point is key—and a big consideration when thinking about building a system in house Burnes said. “We’ve worked with multiple IP firms to identify how to create the strongest-legal-standing product that can be built. Our software not only holds the data securely, but has multiple methods of tracking, storing, archiving and logging the data.”

The other consideration is ongoing maintenance costs. As case law changes or USPTO guidelines emerge, corporations will have to update their systems with each new change. Those costs can add up over time versus a consistent budgeted expense using a third party service like PatentStatus.

“Case-law compliancy is our number-one focus. We’re taking on the burden of being a compliant platform for our clients,” said Burnes. “Because this is our specialty, we’re able to deliver a solution at a fraction of the annual costs to what companies can do on their own—and we can deliver it instantly while companies who in-source it may wait weeks or months for their IT departments to prioritize the project.”•

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  1. Am I the only one who sees that the City is essentially giving away the MSA site AND giving millions to build new buildings on the site when this site would be the perfect place for the Justice Complex? Across from City-County, check; keeping it centrally located, check, etc. It's my understanding that the GM site must be purchased by the City from Motors Liquidation Company. STOP WASTING WHAT WE ALREADY HAVE AND OUR TAX DOLLARS! The Ballard Administration has not been known for it's common sense...never voted for him and never will!

  2. This guy sounds like the classic molester/manipulator.

  3. Louis D. Brandeis was born in 1856. At 9 years of age it would have been 1865. The Brandeis family did not own slaves. My source Louis D. Brandeis: A Life, by Melvin L. Urofsky.

  4. My name is Matthew Lucas Major, I recently went through a jury trial in Bloomington , In. It was the week of Feb 19-21. Although I have been incarcerated since August 5, 2014. The reason I 'am writing to you sir is on the 21 of February the jury came in with a very excessive and wrongful verdict of guilty on 6 child molesting charges against my daughter who was 9 at the time I was accused. I also had 2 other Felonies one of Intimidation and 1 of Sexual Vicarious Gratification. Judge Marc Kellam on the second day of trial gave me a not guilty on those 2 felonies. The jury was sent out during that time and when brought back Judge Kellam told them to not concern themselves with the 2 Felonies that he ruled on them. They were told to not let evidence they had already heard influence there verdicts. I never in my life touched any child sexually and definitely not with my own daughter. When I was arrested Detective Shawn Karr told me I would be convicted guilty just on my daughters word even without evidence. That's just what happened. my public defender did me so wrong he never once proved to the court and jury all the lies the child told, and Jeremy Noel my public defender could of proven the lies easily. The stories in Serenity's depositions and Forensic interview changed and were not consistent as Prosecutor Darcie Fawcett claimed they were. Yet my attorney never mentioned that. The facts that the child accused me of full penetration in her vagina and rectum was proven lies. Doctor Roberta Hibbard of Riley hospital in Indianapolis confirmed Serenity's hymen intact, no scars, no tearing, no signs of rape to her. Yet my attorney didn't use that knowledge . the DNA was all in my favor. I tell you I will spend my entire life in prison going through rape and beatings etc. even Judge Kellam abused his authority by telling the jurors to listen and believe what the prosecutors side in evidence like my daughters testimony. In one interview with the detectives my daughter got flustered with her mom and said on camera " I'm saying what you told me to mom"!! Yet Mr. Noel said nor did anything to even resemble a defense attorney. Judge Kellam allowed edited version of a taped conversation between the child and her mother. Also Judge Kellam allowed the Prosecutor too bring in to my case a knife found under my seat, the knife wasn't part of my case. She was allowed by my attorney and the judge to put a huge picture of it on the screen and huge picture of my naked privates in a full courtroom and open court. Ms. Fawcett says to jury see how easy Mr. Major could reach the knife and cut his Childs throat. Even though I had no weapons charge against these cases. This gave the jurors prejudice thought against me thinking I threatened her with that knife and how scared she would of been knowing i could get it and kill her. On my sentencing court March 19, 2014 my public defender told Judge Kellam he wish to resign from being my attorney and wished for the court to give me outside council to file a error to trial or appeal. We were denied. Now after openly knowing my public defender don't want to represent me he has to. Well when as parents we make our kids clean a room when they really don't wish to, well the child will but don't mean she will do a good job, that's where I'm at with Mr. Noel. please dont ignore mine and my families pleas for your help . we have all the legal proof you could need to prove Im innocent. Please dont make my spend years in prison innocent when you can fix this wrong. Im not saying Im a perfect man or that I was a perfect dad to my 2 children none of us are. Ive made some bad choices in life and I paid for them. But I didnt ever touch or rape my daughter . I love my children with all my heart. And now through needing attention and a ex-wife who told my granny several times she wish she could put me in prison to get me out of their lives. Well my ex finally accomplished her goal. Sad part is she is destroying our daughter with all this horrific lies and things she taught my daughter to say. My daughter will need therapist to ever hope for a chance of a normal life after what she had done to her by her mom and their side of the family. My daughter told everyone even on stand she had a dream months before i supposedly molested her in this dream I was molesting her and when I finally did it matched her dream perfectly. She admitted to watching movies about little girls being molested and watching U-Tube videos about child molesting all before it happened supposedly to her. Doesn't that sound very unusual that a non molested 9 yr old would need to know so much about being molested? The only reason I could think a 9 year old would need so much information is to be prepared to know what to say and be able to say how it felt what took place etc.. So when questioned by authorities she would be prepared. And there again sir if a parent is pre grooming a 9 year old child she would need intimate details . Like telling her daughter about a couple moles on my private area. The child admitted to sneaking my cell and looking many many times at nudes of me and my girlfriend even one where my penis was entering my girlfriends vagina. In that picture my moles are obvious. Yet when prosecutor showed everyone in court my privates and pictures of the moles she said the only way the child would know about them is if she saw them for herself. My attorney once again said nothing about the pictures my child saw. Or could a ex-wife be able to describe my moles to help her case against getting rid of me? I beg you help me. This is my very existence. Ive lost everything , a good job, a wonderful girlfriend, my freedom, but worse thing Ive lost is my children. They were my reason to get up every morning and strive to be better. The wonderful bond I had with my Serenity is gone. After this I would be afraid to even hug her for fear of what next can they do to me. I'm not afraid to tell you I sit here in this cell and try to hold back my tears. Everyone knows you cant show weakness in prison. My life has already been threatened here at Wabash Valley Prison. After only 3 days of arrival. I was tricked into signing a waiver now Im in G Block General Population with 6 child molesting felony charges. Mrs. Hart as a 18 year old I almost died hooked to machines in hospital almost 1 month and now I know that fear was childish compared to this . I cant help but put emotions in this, after all Mrs. Hart Im human and God help Me I never been more afraid in my life. I didnt hurt my little girl I didnt touch her sexually. As much as it shreds me and fills my mind what Im facing I worry more about my mom and granny because of their great love for me mam they are suffering so deeply. I aint done this things but my loved ones suffering right along beside me and If you take my case you will be in essence freeing them also. I sent momma this letter and asked her to email it to you. I'm scared I have been done so unjustly by our legal system and I need you to fix this and give me freedom. I ask you please don't just ignore my pleas. Here in America its nice to be able to trust our legal justice system, well they destroyed my and my loved ones trust in our justice system . And I'm trusting in You !!! My entire family is suffering this nightmare with me. My 77 year old granny had a stroke and isn't doing so well. My single mother that raised 3 kids alone is dying from Lupus and since my arrest has stayed so sick and weary. Our lives torn to peices by a government I was taught I could trust in. my momma has tried so many innocent project and wrongfully accused and cant get anywhere. please please help me. A quote from the late Nelson Mandela: To be free is not merely to cast off ones chains, But to live in a way that respects and enhances The Freedom Of Others. I have Faith in you and your clinic to cast my chains off and give me freedom I do deserve as a wrongfully accused Man, son, brother, father, friend. Matthew Major DOC# 246179 Cause # : 53c02-1308-FA-000779 God Bless you. Please contact me with your decision so I know you made a life changing decision for me , just please at least write me so I know you care enough about your citizens to respond to cries for your help. You can speak openly with my mother Charlotte Spain (828) 476-0406: 71 Lakeview Dr. Canton, NC 28716 Thank You Matthew Major I know yall get thousands of request and inmates claiming innocence, and each person who are innocent deserve to have organizations like yours willing to fight for them and I give yall so much Thanks and I thank God everyday yall are out there caring enough to help free the innocents. Since discovering firsthand how easily lives and families can be destroyed by Poor Defense attorneys not doing their job . And Prosecutors allowed to do as they please in court

  5. Frankly, it is tragic that you are even considering going to an expensive, unaccredited "law school." It is extremely difficult to get a job with a degree from a real school. If you are going to make the investment of time, money, and tears into law school, it should not be to a place that won't actually enable you to practice law when you graduate.

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