Tucson attorney Stephen Kimble outside the Supreme Court, which considered his legal battle with Marvel Entertainment over royalties to a toy he patented.

Tucson attorney Stephen Kimble outside the Supreme Court, which considered his legal battle with Marvel Entertainment over royalties to a toy he patented.

Who has not dreamed of being a spider person? Spider-Man, specifically.

If you have, then your dream may have included depressing your middle finger into your palm, and so projecting web material onto your nemesis.

Stephen Kimble sculpture award in May 2006 Arizona Attorney

Stephen Kimble sculpture award in May 2006 Arizona Attorney

Sound familiar? Then you may want to thank attorney Stephen Kimble.

On Wednesday, the UA Law School features Kimble, an alum, as it kicks off its series called “Contemporary Developments in Law.” Kimble is also a previous winner in the Arizona Attorney Creative Arts Competition.

Here’s why Kimble’s the first speaker:

“Mr. Kimble, a lawyer and artist, is the inventor of the toy that Marvel Entertainment, through Hasbro, marketed as the ‘Web Blaster.’ The toy ‘makes it possible for a player to act like a spider person by shooting webs from the palm of his or her hand.’”

Stephen Kimble Web-Blaster patent

Stephen Kimble Web-Blaster patent

The Web Blaster sounds pretty cool, right? Unfortunately, that wasn’t enough to sway the U.S. Supreme Court, where Kimble was a petitioner in Kimble v. Marvel Entertainment, 135 S. Ct. 2401 (2015).

“In Kimble, the Supreme Court declined an invitation to overturn a 1964 precedent, known as the Brulotte rule. Under the Brulotte rule, a patent royalty agreement cannot extend beyond the expiration date of the patent. The rule has significant implications in many industries, though its legal and economic premises were abandoned long ago. The Court decided to use Kimble as an opportunity to clarify its stare decisis jurisprudence. It held that a ‘superspecial justification’ may be needed to overrule statutory stare decisis and that wrong precedent does not offer such a justification.”

In other words, he did not prevail. You can read more about his case here and here.

For those who want more detail, here’s more case description:

“Marvel Entertainment used Kimble’s idea and successfully marketed it, through Hasbro, as the ‘Web Blaster’ (still available in stores). Mr. Kimble fought in courts against Marvel and won. Marvel was required to pay Kimble royalties: 3% on its sales of the Web Blaster.

“Under a 1964 precedent, known as the Brulotte rule, a patent royalty agreement cannot extend beyond the expiration date of the patent. Kimble and Marvel were unaware of the rule when they settled their original dispute. Later, Marvel sought to stop paying royalties using the Brulotte rule. Kimble challenged the rule. In Kimble v. Marvel Entertainment, the Supreme Court chose not to overturn the Brulotte rule. Instead, it issued an opinion about its commitment to statutory stare decisis.”

This pilot event is co-organized by the Arizona Law Review and with the Business Law Program, and will focus on Kimble v. Marvel Entertainment, 135 S. Ct. 2401 (2015). The petitioner, Stephen Kimble (UA Law ’83), will describe the events that led to the case and its implications.

  • What: Kimble v. Marvel Entertainment: A Conversation With Stephen Kimble
  • When: Wednesday, Sept. 9, 2015, 12:00-1:15 p.m.
  • Where: The University of Arizona, James E. Rogers College of Law at the Faculty Lounge. Lunch will be served.

RSVP to Nstanley@email.arizona.edu.

Meantime, you can still buy a Web-Blaster today. Not that it’ll do Stephen Kimble much good.

web-blaster spiderman Stephen Kimble

Would pro bono legal help lead to the patenting of more useful items? (Here, an 1879 plow)

Would pro bono legal help lead to the patenting of more useful items? (Here, an 1879 plow)

I routinely hear about—and share—stories of the need for increased legal services, and how pro bono service fills some of that gap.

The needs are great and often thought of as being in areas such as bankruptcy, landlord–tenant, or employment law.

But what about a more esoteric area of law? Could there be a pro bono need for practice experts like that—such as in patent law?

That was the kind of thinking that led to the creation—the invention, you might say—of a patent law pro bono program. A friend, Diane D’Angelo, shared a recent story with me. It’s from the Denver Post, and you can read the whole thing here.

As the story indicates, the initiative, launched in 2012, involves a bar association and its attorneys in that practice area. The Pro Bono Patent Program is “led by Mi Casa Resource Center and Colorado Bar Association Intellectual Property Section to pair low-income inventors with patent professionals. Since its launch, 67 inventors have begun the application process and two were able to get their ideas patented.”

The U.S. Patent and Trademark Office describes the initiative well; it arose from a law signed in 2011:

Patents and the ideas behind them are an engine of the economy (like this Scuderi split-cycle engine).

Patents and the ideas behind them are an engine of the economy (like this Scuderi split-cycle engine).

“The United States Patent and Trademark Office (USPTO) understands that one of the main barriers to getting a patent is cost-not necessarily the USPTO fees associated with patents, but the cost of hiring a skilled patent attorney to file and prosecute an application.”

“On September 16, 2011, President Obama signed the America Invents Act (AIA) into law. Section 32 of the AIA specifies that, ‘The Director shall work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.’ ‘Pro bono’ is a Latin phrase meaning ‘done for the public good without compensation.’ With this directive, the USPTO effectively switched into full gear to implement its AIA Pro Bono Program, which it had already been developing in anticipation of the legislation. The president’s ink was still drying when the first client signed with the pilot program in Minnesota. Since that date, the program has expanded to connect clients with volunteer pro bono attorneys across the country in multiple regional programs.”

Read the full history here.

Just as important—and why I share the story now—on May 12, “Mi Casa, the Colorado Bar Association and the U.S. Patent and Trademark Office announced the extension of the program—or ProBoPat—to the states of New Mexico, Utah and Wyoming.”

According to the story, that increases the program’s range to 49 states. And the U.S. PTO shows Arizona as being one of those. Unfortunately, its link to the Grand Canyon State takes you to a California program. So I’m curious: Who in Arizona is participating in or coordinating this program here? (I’m being a little inventive myself and crowd-sourcing the answer!)

If it’s you—or if you know who it is—contact me. I’d like to hear more about patent pro bono in Arizona.

Today I point you to some content that examines recent patent law changes.

Not grabby enough? Well, what if you knew that it covers a law—the Leahy–Smith America Invents Act—that altered our patent law system more than at any time since the early 1950s?

The law has not been without controversy. Opponents had said that it would disadvantage small and startup companies—where innovation often arises—and that its approach could make the U.S. patent system irrelevant.

In any case, here is the article by Sheri Qualters titled “Top 10 Things You Should Know About the New Patent Law.” For the article, she contacted practitioners to ask what people need to know about the law enacted on Sept. 16, 2011.

She opens with the top piece of guidance: File Early and Often:

“When first-to-file takes effect on March 16, 2013, it’s critical for inventors to race to the U.S. Patent and Trademark Office with high-quality provisional filings, which can be turned into full applications within a year.

“‘They should make sure their initial filing provides good support for all of those features that they’re later going to claim,’ said Steven Koffs, a partner and senior patent attorney at Philadelphia’s Duane Morris. Making additional provisional filings when there’s a significant improvement is also key for important inventions, Koffs said. Speedy filing is equally critical for lawyers concerned about potential liability. ‘The AIA has greatly increased the possibility of malpractice or even just malpractice allegations,’ said William Dippert, a White Plains, N.Y., partner at Eckert Seamans Cherin & Mellott.”

Keep reading here.