John Fulton, Jr.

John Fulton, Jr.

Mr. Fulton is a Registered Patent Attorney and Senior Counsel with Malloy & Malloy, P.L., Board Certified in Intellectual Property Law, and rated AV Preeminent by Martindale-Hubbell. His practice includes all aspects of Intellectual Property Law with a focus on patent and trademark prosecution and related transactional matters, and patent infringement litigation. He has a Bachelor of Science in Chemical Engineering from Cleveland State University, and obtained considerable engineering experience prior to receiving his law degree, with honors, from the University of Miami School of Law. In addition to the Florida Bar, he is admitted to practice in the U.S. District Courts for the Southern District of Florida, the Middle District of Florida, and the Eastern District of Texas, and the U.S. Courts of Appeals for the Eleventh and Federal Circuits. Mr. Fulton also maintains his Registration as a Professional Engineer in the State of Florida.

Mr. Fulton is an active member of the Florida Bar, and currently serves on the Intellectual Property Law Certification Committee. He is also a member of the Federal Bar and Dade County Bar Associations, and provide Pro Bono services through the DCBA’s Small Claims Clinic and Venture Law Project initiatives. He has served as an Officer and Director of the Inventors Society of South Florida, and regularly provides complimentary “Office Hour” consultations to participants at Venture Café Miami. He has also had the honor to serve as President of his Rotary Club, the Rotary Club of Miami Brickell.

Wednesday, 08 June 2011 21:15


As patent practioners well know, and Applicants are often, albeit begrudgingly, forced to accept, Patent Examiner's exhibit considerable latitude when it comes to rejecting patent claims as obvious under 35 U.S.C. §103.  A recent opinion of the U.S. Court of Appeals for the Federal Circuit, In re Klein, should provide greater leavarage for practitioners and Applicants faced with obviousness rejections in the future, particularly when there is a question as to whether a reference cited by an Examiner is analogous prior art.

The U.S. Supreme Court recently granted certiorari to Microsoft in a case involving patent invalidity.  Microsoft is challenging a Federal Circuit Court of Appeals finding of validity in favor of patent holder, i4i, in a case that has been long fought in the lower courts, and resulted in an award of over $200 million in damages to i4i.  In its decision, the Federal Circuit relied on its long standing precedent that patent invalidity must be proven by "clear and convincing evidence."

Wednesday, 01 September 2010 20:36


Based upon a recently published U.S. patent application assigned to Apple, Inc. it appears that Apple is or has developed technology to do exactly that, under the guise of identifying unauthorized users.

The Federal Circuit recently denied a request for rehearing en banc in the matter of Avid Identification Systems, Inc. v Crystal Import Corp.  In the underlying District Court case, it was determined that the president of Avid failed to disclose a demonstration of a "precursor product" at a trade show to the U.S. Patent and Trademark Office during prosecution of the Avid patent, and the Federal Circuit affirmed the District Court's decision that this failure was sufficient to hold the Avid patent unenforceable based on inequitable conduct.

The interesting, and somewhat disturbing, impact of this decision is the fact that the District Court jury found that Avid's trade show demonstration did not constitute invalidating prior art, i.e., Avid's demonstration was not an invalidating disclosure of the invention, nor a sale to offer to sell the patented invention.

Thus, this decision begs the question: When [and how] is non-invalidating prior art material to patentability?

For more, click here to read Judge Newman's Dissent to the En Banc Order.

Wednesday, 26 May 2010 19:58


On remand from the Federal Circuit, the U.S. District Court for the Southern District of Texas based a damages award for false patent marking on the highest selling price of the falsely marked products.

In Forest Group Inc. v. Bon Tool Co., 2010 U.S. Dist. LEXIS 41291 (S.D. Tex. Apr. 27, 2010), the Court found "the appropriate fine in this case is $180.00 per article, the highest point of the [sales] price range. This will deprive Forest of more than it received for the falsely marked stilts, fulfilling the deterrent goal of §292's fine provision." (emphasis added).
The U.S. Patent and Trademark Office is considering a new program which will provide applicants the option to defer payment of a considerable portion of the fees due upon filing certain U.S. patent applications for up to 12-months. The program is intended to allow applicants additional time to evaluate the market potential of their invention, before incurring the full costs of pursuing a U.S. patent.
The fee deferral program is proposed for applicants filing non-provisional applications which claim priority to a provisional patent application, within the 12-month provisional period.  Applicants electing to take advantage of the deferred fee option would not be entitled to file a Request for Non-Publication with the non-provisional application. Under the proposal, applicants would only be required to pay the basis filing fee, currently $330 (or $165 for small entities), and would be allowed up to 12-months from filing a qualifying non-provisional patent application to pay the search and examination fees, currently $760 (or $380 for a small entity), along with a surcharge and any additional fees which may have been incurred.  Of course, until the additional fees have been paid, the application will not be placed into the queue for examination by the PTO.
The U.S. Patent and Trademark Office ("PTO") has announced a pilot program to grant special status to patent applications directed to green technologies for the reduction of greenhouse gas. The program is available to applicants with currently pending patent applications pertaining to environmental quality, energy conservation, development of renewable energy resources or greenhouse gas emission reduction.
Significantly, the PTO will accept petitions under this pilot program without requiring applicants to comply with the rigorous procedural hurdles normally associated with petitions to make special on the basis of the underlying technology including, among other things, an extensive (and expensive) review and analysis of the relevant prior art which must be presented to the PTO in an examination support document. As a further incentive, the PTO has waived the petition fee for qualifying applicants.
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