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Patent attorney Malek sees system overhaul boost to entrepreneurs

By Ken Datzman, Brevard Business News 05/28/2012

Mark Malek


There are few government entities like the U.S. Patent and Trademark Office.

Beyond Wall Street, it is the rooted center of the universe of American capitalism. The office receives patent applications from entrepreneurs and businesses at the rate of more than 450,000 a year, with the majority filed electronically.

Some 6,000 examiners, generally scientists and engineers, review the applications, of which more than 150,000 a year are approved for patents.

As far as who can file to protect their invention, the patient office specifies only that the subject must be “useful.” The USPTO has granted more than 8 million patents since 1790.

These patented inventions help power the economy, in a big, sweeping way. Intellectual–property–intensive industries today support at least 40 million jobs and contribute more that $5 trillion to the U.S. gross domestic product, according to a U.S. Department of Commerce report

The  first–of–its–kind report, “Intellectual Property and the U.S. Economy: Industries in Focus,” was released in April by the department. Intellectual property accounts for nearly 35 percent of GDP. Some of the most intensive IP–industries include computer and peripheral equipment, audio– and video–equipment manufacturing, newspaper and book publishers, and pharmaceuticals.

The numbers might even be more impressive if the patent pipeline unclogged — the USPTO says there is a backlog of nearly 700,000 patent applications — and entrepreneurs and businesses were able to bring their inventions to the market sooner.

Now, thanks to the newly enacted Leahy–Smith America Invents Act, the first “significant” reform of the Patent Act in 60 years, that is about to happen.

President Obama signed the historic patent–reform legislation late last year, which is designed to speed up the outdated system, weed out bad patents efficiently, and most importantly, align it with the international market.

“The single, biggest thing the America Invents Act does is change the U.S. patent system from a ‘first–to–invent’ country to a ‘first–to–file’ country, and that brings us in line with Europe,” said Mark Malek, a registered patent attorney with Widerman Malek, PL in Melbourne, who works with businessowners and inventors in the region.

“A lot of people invent and want to tweak the invention first. Technically, it’s now disadvantageous for the inventor to hold off filing his or her patent application. With the America Invents Act, it’s truly a race to the patent office.”

Supporters of the law believe that this will assist people filing for patents in multiple countries. Many other countries use a first–to–file system, Malek said. The USPTO has expanded work–sharing with other patent offices around the world to speed patent processing for applicants seeking protection in multiple jurisdictions.

Under the first–to–invent system, inventors had a one–year grace period where they could find investors to help pay for the patent–application fee ($7,000 to $10,000) and determine whether there is a market for their invention.

Many saw the old system as a barrier to innovation, unnecessarily delaying American inventors from marketing new products and creating jobs in this country.

This year, for the first time, China is expected to become the world’s number–one patent publisher, surpassing the U.S. and Japan in the total number of patents. But with the new changes in place, the U.S. is positioned to regain its patent dominance.

A key element of the America Invents Act is a fast–track option for patent processing. Instead of an average wait time of almost three years, the USPTO will be able to offer startups and growing companies an opportunity to have their patents reviewed in one–third the time. The fast–track option has a “guaranteed” 12–month turnaround.

“For a fee, you can advance your application to be completed in 12 months,” said Malek, whose areas of practice include patent, trademark, copyright, and intellectual–property litigation. “But there are other ways to do it as well, such as filing a ‘petition–to–make–special.’ We do this for a lot of inventors in Florida who are over the age 65.”

A petition–to–make–special is a formal request submitted to the USPTO asking that a patent application be examined ahead of other pending applications in the same field, as opposed to the “first–come, first–served” principle.

“It can move an application from the bottom to the top of the stack,” said Malek, who earned a bachelor’s degree in civil engineering from the University of Dayton and worked in his field with a company that built wastewater treatment facilities around the nation, before going on to law school.

In addition to the senior–citizen status, the petition–to–make–special, an accelerated examination, can be granted in a number of categories including green technologies, he said. Under the Green Technology Pilot Program, pending patent applications in that field are eligible to be accorded special status and given expedited examination. Another petition–to–make–special area is cancer research, Malek said.

During the last four years, the USPTO, under the Department of Commerce, has reduced the patent backlog from more than 750,000 to 680,000, despite a 4 percent increase in filings. Much of the credit goes to its director, David Kappos.

“David Kappos is doing a phenomenal job,” said Malek, who worked as a intern in 1999 and passed the patent bar examination in early 2000, allowing him to practice as a patent agent before the USPTO.

“He made it a point to do away with a lot of the ‘red tape.’ He freed up the hands of the examiners and gave them the infrastructure they needed to do their jobs. It has resulted in a reduced backlog at the patent office. The examiners are really doing a great job, I think,” added Malek, who also has an MBA degree from the University of Orlando.

Entrepreneurship is alive and well in the U.S., although the rate of new business formation dipped during 2011 and startup founders remained more likely to fly solo than employ others, according to the new “Kauffman Index of Entreprenurial Activity,” a leading indicator of business creation in America published annually by the Ewing Kauffman Foundation in Kansas City, Mo.

The index shows that 0.32 percent of American adults created a business per month in 2011 — a 5.9 percent drop from 2010, but still among the highest levels of entrepreneurship over the past 16 years.

Business is up at Widerman Malek, PL, a nine–attorney firm with an office in Washington, D.C. “We are really smart about our growth,” said Malek, whose partners include Scott Widerman. “We don’t try to overgrow. We are very good at knowing what we don’t know. In other words, we stick to our niche, our areas of expertise. We are not going to roll the dice. That has been a huge key to our success.”

He added, “We are thankful to our colleagues in Brevard County who refer intellectual property work to us because it is out of their specialty area. We really appreciate the firms that have the same mentality as we do.” Intellectual property and the patent–application process in general are complex areas of law. The USPTO says it cannot assist in the preparation of patent–application papers. If you are ready to apply for a patent, the USPTO “strongly advices” contacting a registered patent attorney or patent agent.

Besides intellectual property, Widerman Malek, PL specializes in a number of other areas, including real–estate law, foreclosures, and estate planning and probate.  Their firm has successfully melded the practice of law and community engagement. Malek said the firm prides itself on being plugged into the community through their volunteerism. Firm members sit on committees and nonprofit boards, giving their time to improve the county’s quality of life.

“As a firm, we support a number of organizations. We put a lot of time and energy into programs that really help kids in general. And we like to do everything we can to reach out to veterans. We wouldn’t have the pleasure of sitting here today having this  conversation without the sacrifices that veterans and their families have made.”

Malek himself was just named to the Brevard Field of Dreams Inc. board, an organization that was founded byretired Atlantic City, N.J., firefighter and area resident Jim Tapp.

The group is trying to raise $3 million in private funding to build a customized sports park, which will feature leagues and programs for children and young adults with disabilities. Brevard Field of Dreams, which kicked off a capital campaign in January, has secured a site in West Melbourne to develop the facility.

“Brevard Field of Dreams is a great project,” said Malek. “There isn’t a park in the county that serves the needs of handicapped individuals and their families.”

He continued, “Looking at it just from a business perspective, if you are a sizable employer who might be interested in relocating to Brevard County, this is something that could help attract them. There are a lot of families who have some sort of special needs.”

Malek, whose 6–year–old son Andrew has been diagnosed with a mild form of autism, is a supporter of Florida Tech’s Scott Center for Autism Treatment on the school’s campus in Melbourne. “The Center’s programs have a big impact on families. It helps them tremendously.”

He chaired the recent “Evening of Hope IV” committee, a fund–raising event for the Scott Center hosted at the home of Joe Flammio, a Florida Tech board of trustees member. The event raised $190,000. “It was a “tremendous success,” said Malek.

The funds were raised through sponsorships, an auction and a Rolex watch raffle. Kempf’s Jewelers in Indialantic donated a Rolex valued at $6,325. “I was honored to have called the local person who won the watch,” said Malek.

His participation in the community as a volunteer reaches across the county, with the Epilepsy Foundation, Sentinels of Freedom, Junior Achievement of Space Coast, Melbourne Main Street, Rolling Readers of the Space Coast, Harmony Farms, the Danny Craig Foundation, and other groups and organizations.

The Danny Craig Foundation was started by Carol Craig, founder and chief executive officer of Cape Canaveral–based Craig Technologies Inc. Her son Danny has Prader–Willi Syndrome, a rare genetic disease.

On the Community Foundation for Brevard website (, under, you can learn more about the nonprofit organizations and the community needs in the county.

Malek says his family oriented firm feels it has a responsibility to give back to the community, not only by providing pro–bono services but also by participating in charity events and advocating on behalf of those in need.

“We are a group of young lawyers who have families.  Some of us came from big law firms, where we put in countless hours. At ZW&M, the priorities are our families and the community. We just had our company picnic. Kids were everywhere. We all loved it. It was great.”