US & USPTO Patent - General Information

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

US & USPTO PATENT GENERAL INFORMATION

Introduction
The US law provides for patent and trademark protection. The administrative agencies responsible for this are the US Patent Office and the US Trademark Office, which are combined and called the US Patent and Trademark Office, abbreviated as USPTO. In the following, the abbreviation USPTO will be used throughout.

Preparing a patent application
A US Patent Lawyer, also called a US Patent Attorney, normally prepares a US Patent Application for filing with the USPTO. The US Patent Lawyer works with the inventor to draft a specification having a description of the invention, including drawings when possible. The draft is then studied by the inventor, and changes are made if necessary. When the draft is accepted by the inventor, the inventor signs a form called a Declaration, claiming inventorship of the application. Once it is filed, it receives a Serial Number and an Official Filing Receipt, and thus becomes an official US Patent Application.

At some point in this process, it is advisable but not necessary to perform a US patent search. The US patent search can find prior art patents that show the extent of the closest prior art, and whether the invention has been patented at an earlier time. If an expired patent is discovered which is very close to the invention, then that expired patent can confer a “right to use” that invention. If a pending US Patent covers the invention, and has claims which are sufficiently broad to cover the invention, then it is possible that infringement would occur. It is important to know if a new product might infringe an existing unexpired US Patent. If no patent exists which covers the invention, then it is possible that the invention can be patented. As noted above, it is not necessary to conduct a patent search prior to filing a new patent application.

The Role of the USPTO in Examining the Patent Application
The US Patent Application is examined in due course by a patent examiner. The US patent examiner will be an expert in the particular art in which the invention resides. The US patent examiner will search the prior art patent literature, and will make a search report and send it to the inventor along with a first Office Action on the merits.

If an invention is finally rejected, that rejection can be appealed. In that case, it is taken up for review by a board of appellate examiners. Each appellate examiner is likely to be a USPTO Patent Attorney or USPTO Patent Lawyer. If the appeal is refused, it can be taken further to a US District Court, in which case the USPTO is represented by the Solicitor’s Office. In that case, the Solicitor in Court will be a USPTO Patent Lawyer or USPTO Patent Attorney. Such higher appeals are not frequent, but are more likely to occur when the invention is particularly valuable.

The Role of the US Patent Attorney in the Examination Process
The US Patent Attorney or US Patent Lawyer considers the Office Actions received from the USPTO, and transmit’s the Office Action to the inventor along with any advice or comments on how to respond. The US Patent Attorney or US Patent Lawyer then responds to the Office Action, usually by providing legal arguments in support of patentability.

If the Office Action is a Notice of Allowance, then the response by the US Patent Attorney or US Patent Lawyer simply transmits the Issue Fee Due along with a transmittal form required by the USPTO.

During this time, the inventor may be commercializing the invention. In this case, a successful invention might be licensed or assigned, or distribution agreements may be made. In all these cases, the US Patent Attorney or US Patent Lawyer performs an important role in making sure these agreements serve the interests of the inventor.

The Role of the US Patent Attorney or US Patent Lawyer after the Patent is Issued
Once the patent issues, it can be enforced against competitors. In that case, the US Patent Attorney or US Patent Lawyer normally first sends a warning letter to the infringing competitor. If the infringement continues and no licensing agreement or assignment agreement is reached, then a lawsuit can be filed by the US Patent Attorney or US Patent Lawyer in a US District Court or in a state court.

The filing of a lawsuit, and the defense of such a lawsuit, are usually referred to as US Patent Litigation, or simply Patent Litigation. Such lawsuits can be short or long, and many businesses with successful products consider it commercially economical to conduct Patent Litigation to protect their rights.

Foreign Entities
Foreign entities must be represented by an attorney or lawyer, in order to obtain a patent or trademark, and in order to maintain a lawsuit in the US. In a Trademark case, the US Patent Attorney or US Patent Lawyer can be appointed as the Domestic Representative of the foreign entity.

Preparing a Trademark Application
A US Trademark Lawyer, also called a US Trademark Attorney, normally prepares a US Trademark Application for filing with the USPTO. The US Trademark Lawyer works with the applicant to draft an application having a description of the goods/services together with a drawing showing the trademark. The draft is then studied by the applicant, and changes are made if necessary. When the draft is accepted by the applicant, the applicant signs a form called a Declaration, claiming ownership of the application. Once it is filed, it receives a Serial Number and an Official Filing Receipt, and thus becomes an official US Trademark Application.

Read More >> http://internationalpatentservice.com/US-USPTO-Patent.html

Intellectual property strategies for startups

By: Benjamin Lehberger

Intellectual property protection is an important consideration for most startups. Obtaining intellectual property protection, such as patents, can minimize competition and act as a defensive mechanism against infringement claims from others. Intellectual property also can attract or solidify funding and partnerships. In formulating an intellectual property strategy for your startup, consider the following.

File early, and keep quiet

Your time to file for patent protection is limited and patents should be contemplated early on in development. In the United States, an inventor has a one-year “grace period” from first publicizing an invention to filing for patent protection, after which it is too late. However, you should not wait even that long. In 2013, the U.S. patent system switched from a first-to-invent to a first-inventor-to-file system. This subtle difference in terminology could mean dire consequences for those who delay seeking patent protection.

Under the old first-to-invent system, you could be the first to conceive of an invention and still obtain patent rights over an earlier filer by showing that you conceived first and continued to diligently work on your invention. Today, it is a race to the patent office. Regardless of who conceived of the invention first, the first one to file their patent application “wins.”

Also, it is important to note that the one-year “grace period” to file a patent application is not available in most countries outside of the United States. If you plan to seek patent protection abroad, publicizing your invention at any time before filing a patent application could put your foreign intellectual property rights in jeopardy. Therefore, file early and keep quiet until you do.

File again as the invention evolves

As your startup continues to develop its product or products, consider each new feature as a possibility for patent protection. Startups that file one early patent application and stop may find that, once the patent issues, the product has moved far beyond what was in the original patent application. The product may end up being under-protected or not even covered by the patent at all.

It is important to reevaluate patent protection on a regular basis and consider filing on new features of the invention when applicable. If the product is evolving quickly, consider filing a provisional patent application or a series of provisional patent applications within a year before filing a utility patent application.

Read More >> https://techcrunch.com/2016/10/31/intellectual-property-strategies-for-startups/

How to Patent a Design

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

A design 
Each “how to patent” subject is discussed in detail below. Here are ways to get a patent.

A design is anything which is not functional. A casing or cover for a working device can be a design. Other things can be designs too. A design can best be protected by a design patent application, and usually costs much less to file than a utility (“regular“) patent application. Even the government filing fee is much lower for a design patent application.

What is needed to get a design patent application? You will normally need drawings showing the design from six different orthogonal views. The application itself is very short, and has text naming the invention, describing the drawings, and ending with a claim. The drawings do not need to be like blueprints; instead, they are simplified. And, it is not necessary to have a working model.

Once filed with the US Patent Office, the design application is examined, and if granted, can mature into a design patent. But why get a design patent? For one thing, a design patent protects not only the design itself, but all obvious variations that are not within the public domain already.

By contrast, a copyright only covers copies made, which must be exact copies. And, a copyright does not cover any design, even if identical, which was not copied. So, if two inventors both make the same exact design by sheer chance, and one inventor gets a copyright, that copyright would not be usable against the other inventor. The reason is, a copyright only covers copying.

A design patent covers any design that is sufficiently close so as to infringe, even if there was no copying. A design patent is therefore valuable, yet different from a copyright.

Before getting into the details, we would like to mention that there is also something called a “provisional patent application” discussed hereunder. It gives patent pending status for one year, permitting a utility patent application to be filed at any time during that year. That is another way to get a patent. The provisional application is much less expensive than a utility patent application, and can be recommended when there is an urgent need to get a patent application on file with the US Patent Office. For example, just prior to a trade show or publication of the invention, there is an urgent need to have the idea on file with the US Patent Office. For further information, see the section below called “How to patent using a provisional patent application.”

Standard text is then added including sections titled: background of the invention; summary of the invention; brief description of the drawings; and an abstract of the disclosure. These are not usually hard to do for a design patent application.

Then, a Declaration is prepared showing the name of the inventor and title of the invention. This is from a standard form provided by the US Patent Office.

Last, a cover page including a Transmittal sheet is prepared, listing what is being filed with the US Patent Office. The Transmittal page normally will include a check for the amount of the US government filing fee, and a postcard filing receipt. The check can be omitted, as can the signed Declaration, but in that case the US Patent Office will send a notice asking for those items along with a relatively small late fee.

The drawings may or may not be accepted as filed. If not accepted, the US Patent Office sends a notice, and sets a time period for submitting the formal drawings. A specially skilled draftsman normally prepares the formal drawings, since the US Patent Office has very specific and detailed requirements for the drawings. We work with such a skilled patent draftsman, to provide the formal drawings.

The application is examined by the US Patent Office. If granted, the application matures into a design patent. A granted design patent can be enforced in court, and it can be assigned and licensed too.

If you call or email us, we would be happy to discuss your invention or idea. There is no charge for discussing how to patent your idea or invention. Sometimes we can provide an insight into how to manufacture or market the invention, based on our experiences.

Read More >> http://internationalpatentservice.com/How-to-Patent-a-Design.html

What Cannabis Entrepreneurs Need To Know About Intellectual Property

By: Larry Sandell

Marijuana industry leaders stay busy developing business plans, building brands, inventing technologies, creating supply chains, cultivating new strains, hiring employees, securing funding, and obtaining licenses. But it is essential for cannabis entrepreneurs to understand intellectual property (IP) rights and the benefits they can provide—and, perhaps most importantly, the potential problems that may occur when IP rights are ignored or overlooked for too long.

Because of ongoing federal cannabis prohibition, businesses in this space face additional IP challenges that don’t exist in other industries. This article will give you a quick sense of what you need to know in order to protect your rights.

Fundamentally, the law gives IP owners the right to exclude. Effectively acquired IP rights can give cannabis entrepreneurs the legal footing to prevent competitors from ripping off their brands, their technologies, their designs, and their secrets. In the cannabis space, where the law excluded so many for so long, it may seem untoward to engage in exclusionary practices, but IP is a very different animal than prohibition. As the cannabis industry continues to grow and established companies enter the market, early-acquired IP rights will prove indispensable. Beyond offering market protections and a competitive edge, IP rights can be licensed to generate additional recurring revenue, help attract investment, and enhance valuation for exits.

Without a clear understanding of the myriad types of IP protection available—and the benefits, potential pitfalls, and resource requirements of each—many entrepreneurs view obtaining effective IP protection as a daunting task. And unless an experienced IP attorney is retained, they are not wrong. Nonetheless, IP rights should be considered early and often in any business venture, especially in a nascent industry like this one. Those who procrastinate this critical business task risk permanently forfeiting rights, and may sometimes find IP roadblocks placed in their path by competitors who beat them in a race to the U.S. Patent and Trademark Office (USPTO) that they didn’t even know they were competing in.

IP rights vary widely, but are best understood by first considering which aspects of your budding cannabis business that you want to protect—namely: your brand, your technology, your cannabis strains, your designs, or your business secrets.

Protecting Your Brand:

Trademarks identify the source of a product or service, and serve to protect the goodwill and market recognition that a business has developed. Most commonly, a trademark is embodied in the name of a product, service, or business, its logo, or a slogan. Trademarks do not have a set expiration date, but generally remain enforceable so long as they are being used in commerce. However, to maximize rights (and avoid getting sued), it is important to search to make sure your proposed brand is “clear” prior to using it in commerce and, once in use, to effectively control your brand in the marketplace.

Federally Registered Trademarks provide the strongest protection for your brand, and enable you to enforce your trademarks anywhere in the United States. Registration requires both legal “use in commerce” and a lack of “confusingly similar” trademarks in your business area. If you aren’t using your trademark in commerce yet, but intend to do so, an “Intent to Use” (“ITU”) application can preserve your rights until you actually begin legal commercial activity. Federally registered marks are denoted by the ® symbol. Having an experienced trademark attorney file an application on your behalf typically costs $1,000-$1,500, and can help you maximize protections and avoid pitfalls.

Because marijuana is still federally illegal, the requirement for legal “use in commerce” presents a unique challenge for cannabis entrepreneurs seeking federal trademark protection. There are two proven strategies. First, you can trademark around the edges: While federal trademarks on cannabis, itself, may be unavailable, trademarks for most ancillary products and services can be obtained. For example, federal trademark registration is available for products and services supporting consumption and cultivation, and for sales of legal medical herbs.

Read More >> https://www.marijuanamoment.net/what-cannabis-entrepreneurs-need-to-know-about-intellectual-property/

How to Patent a Program

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

A program 
Each “how to patent” subject is discussed in detail below. Here are ways to get a patent. A computer program can be copyrighted, but it can also often be patented. The types of protection are very different. Specifically, the inventive steps of the program can be patented, and because of this the patent can provide protection far beyond just the specific program language used.

First, a drawing is made showing the most important steps of the program as a flowchart diagram. It is usually not necessary to give every detail of the operation of the program; instead, the main features should be illustrated. The program should be protected by a utility patent application, since that will cover any type of program language. This is also sometimes called a “regular” patent application. The program steps can be explained in words and by the flowchart drawings. The drawings do not need to be like blueprints. And, it is not necessary to have a working program, as long as the steps could be followed by a skilled programmer.

This is a good point to mention that there is also something called a “provisional patent application” that gives patent pending status for one year, permitting a utility patent application to be filed at any time during that year. This is much less expensive, and is recommended when there is an urgent need to get something one file, for example just prior to a trade show or publication. Further below, there is a section called “How to patent using a provisional patent application.”

Here's a simple example showing how to patent an idea for a simple and amusing invention, where a computer program is used. The program determines sequential prime numbers and activates a light for a time corresponding to the prime number. Here, the blinking light is connected to a pencil eraser. For the moment, we aren't concerned with whether it has been done before, it is just an example. For now, the idea would be expressed in words, written just as above. Let's say the steps are: determine prime numbers in sequence from 1; wait until that number of seconds has elapsed; then blink the light ON for a number of seconds equal to the value of the prime number that has been reached. These steps would be shown in a simple flowchart. And, since it is possible to illustrate the idea in a drawing, we would also add a sketch showing where the light should be placed on the eraser. What else should be shown? The light should have a power source, for example a small solar panel or a small battery, and connecting wires should be shown connecting the power source to the light.

Read More >> http://internationalpatentservice.com/How-to-Patent-a-Program.html

The Best Actions Entrepreneurs Can Take to Protect Intellectual Property

By: Eric Pesale

One important thing to consider as you’re growing your company: Making sure that you’re taking the right steps to protect your proprietary brand names, products, and technologies from potential infringers. If you don’t, you could jeopardize all of your hard work—and your reputation. And, worse, you might have to fork over millions of dollars in legal fees to resolve pertinent disputes.

Researchers at the American Intellectual Property Association found that total patent litigation costs an average of about $3 to 6 million for disputes valued between $1 million to 25 million. Yes, that’s a lot.

Fortunately, your company has options available to go against competitors and other malicious actors. Here are some actionable steps you should be taking to protect your company’s growing intellectual property portfolio.

Protect Your Business Trademarks

Registering your business and product names as trademarks with the United States Patent and Trademark Organization (USPTO) is highly recommended. You want to ensure that you can seamlessly conduct business across state lines while also enjoying heightened legal protections against infringers.

First, File for Trademark Protection Online

The USPTO allows companies to file trademarks online using its TEAS Plus application either before or after your company is using its brand and product names in interstate commerce.

If you decide to file your application after conducting your first interstate sale, you’ll have to include images or other examples showing how you’re using your product and brand names in commerce. If you plan to use your trademarks in interstate commerce in the future, you can register your trademarks on an Intent-to-Use (ITU) basis. Then, you can subsequently file a Statement of Use (SOU) form. You’ll need examples attached showing how you’re using your trademarks in commerce.

Heads up: This process entails additional fees, but the USPTO will prevent other companies from registering similar marks they file after the date you filed your ITU application. And that’s definitely what you’re looking for. Alternatively, you can register your trademarks with your state’s Secretary of State office if you only plan to conduct business in one state.

How to Report on Trademark Infringement

Although online marketplaces such as Amazon and Etsy offer internal trademark dispute procedures, they’re only helpful for removing infringing product listings. That might not be enough for every small business owner—especially if you’re seeking damages or injunctions against infringing merchants.

If that’s the case for you, you’ll want to explore your litigation, arbitration, and alternative dispute resolution options. In these instances, judges will usually compare the similarity of both trademarks using multifactor balancing tests.

Read More >> https://www.fundera.com/blog/enforce-intellectual-property

How to Patent

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

An idea or any useful device or method 
Each “how to patent” subject is discussed in detail below. Here are ways to get a patent.

Introduction and types of patent
Many types of ideas can be patented. Anything that has a function or use can be patented. Also, patent protection can cover many (but not all) types of business methods, most types of computer programs, new methods and processes, new chemicals and compounds, and new materials or new uses for old materials. Where the invention is for a design feature or an ornamental cover or casing, for example, then a design patent is the best way of protecting the invention. How to get a design patent, and how to patent a design, is explained in a separate section below.

How to Patent an Idea
An idea can best be protected by a utility patent application. This is also sometimes called a “regular” patent application. The idea can be explained in words and, if possible, by drawings. The drawings do not need to be like blueprints; instead, they are simplified and do not usually have to show conventional features. And, it is not necessary to have a working model.

Before getting into the details, we would like to mention that there is also something called a “provisional patent application” discussed hereunder. It gives patent pending status for one year, permitting a utility patent application to be filed at any time during that year. That is another way to get a patent. The provisional application is much less expensive than a utility patent application, and can be recommended when there is an urgent need to get a patent application on file with the US Patent Office. For example, just prior to a trade show or publication of the invention, there is an urgent need to have the idea on file with the US Patent Office. For further information, see the section below called “How to patent using a provisional patent application.”

Here's a simple example showing how to patent an idea for a very simple and amusing invention. The simple idea: add a blinking light to a pencil eraser. For the moment, we aren't concerned with whether it has been done before; we could find that out using a patent search if we wished. For now, the idea would be expressed in words in the patent application, written just as above. And, since it is possible to illustrate the idea in a drawing, we would also add a sketch showing where the light should be placed on the eraser. What else should be shown? The light should have a power source, for example a small solar panel or a small battery, and connecting wires should be shown connecting the power source to the light. Then, text is added to the patent application by describing the parts shown in the drawings, explaining possible uses and advantages, and mentioning possible alternatives that are included in the invention such as various types of light sources such as LEDs, incandescent bulbs, phosphorescent lighting, and so on.

Next, a claim is added to describe the invention broadly, such as the following: 

Claim 1: A pencil eraser having a light, comprising: a pencil body; an eraser member attached at one end of the pencil body; a light source mounted on the eraser; and a power source connected to supply power to the light source.

Standard text is then added including sections titled: background of the invention; summary of the invention; brief description of the drawings; and an abstract of the disclosure. These are not usually hard to do, but can take some time.

Read More >> http://internationalpatentservice.com/How-to-Patent.html

Trademarks, Copyrights and Patents: 
A Mid-Year Update

By: Emily Hart and David Marcus

Trademark Law

First They Came for Disparaging, Then They Came for Scandalous

In June 2017, the Supreme Court held in Matal v. Tam that the disparagement clause of the federal Lanham Act violates the Free Speech Clause of the First Amendment. As a result, marks such as THE SLANTS and WASHINGTON REDSKINS cannot be denied federal trademark registration on the grounds they are “offensive.” In January 2018, the Fourth Circuit finally vacated a lower court decision that canceled the Washington Redskins’ federal trademark registrations.

In the wake of Matal v. Tam, the Federal Circuit ruled that the Lanham Act’s ban on scandalous and immoral trademarks was unconstitutional, which reversed the United States Patent and Trademark Office’s decision to refuse registration for the trademark FUCT. In April 2018, the Federal Circuit denied reconsideration of its 2017 ruling.

Breakfast at Costco?

Several years ago, Tiffany & Co. discovered that Costco Wholesale Corp. was advertising and selling “Tiffany” engagement rings and slapped Costco with a trademark infringement lawsuit. Costco claimed it was using TIFFANY as a generic term to refer to a “Tiffany setting” style of ring. In 2015 a court found that Costco had willfully infringed ­Tiffany’s trademark rights, and a jury awarded Tiffany millions of dollars in profits and punitive damages. In August 2017, a judge reduced the jury’s award but awarded Tiffany treble damages for Costco’s willful infringement to the tune of $11.1 million in trebled profits and $8.25 million in punitive damages. Costco has appealed the $19 million damages award it owes Tiffany to the Second Circuit, and in 2018 we may see a ruling from the court reducing that award.

This case demonstrates the high cost of using another brand’s trademark to describe the same or similar goods or services. A purportedly “generic” use of the trademark could be willful infringement in the eyes of the trademark owner and a judge or jury. Even if the trademark has become common (e.g., Google, Kleenex), many trademark owners vigorously protect their trademarks from so-called “genericide.”

Driving a Wedge Between Kia and Allstate

In November 2017, a jury found that Kia’s DRIVE WiSE trademark infringed Allstate’s DRIVEWISE trademark. For more than seven years, Allstate had been using the mark DRIVEWISE in connection with a driver safety program. In 2017, Kia began using its DRIVE WiSE trademark in connection with driver safety features available in Kia vehicles. The jury found in favor of Allstate, but in early January 2018, a judge reversed the jury’s “advisory” verdict, finding no likelihood of confusion between the marks. Notably, the judge found that Allstate’s DRIVEWISE mark was weak, that the goods and services were not closely related, and that there was no evidence of actual consumer confusion. Allstate appealed. In February, the company filed an opposition proceeding before the Trademark Trial and Appeal Board against Kia’s application to register its DRIVE WiSE logo. The opposition proceeding was suspended pending final disposition in the civil case.

As this case shows, the test for trademark infringement – likelihood of consumer confusion – is extremely subjective and highly fact-specific. It is often difficult to predict whether a factfinder will believe confusion is likely and which factors will be most persuasive in making this determination.

Copyright Law

2018: A Rocky Start for Fair Use

In February of this year, the Second Circuit issued an opinion on the long-running fair-use battle between Fox News and TVEyes, a search engine for broadcasted content. TVEyes recorded television and radio broadcasts 24/7 and allowed users who want to study and monitor broadcast media to search its database for clips. In 2013, Fox News sued TVEyes for copyright infringement. In two separate rulings, a district court judge said the service is fair use, but that specific features of the service, such as the ability to download and email clips, are not fair use. The Second Circuit overruled the district court’s ruling, finding no fair use. Although the ­Second Circuit found TVEyes’ service “transformative” under the first fair-use factor, other factors, which considered the amount of content copied and Fox’s opportunity for licensing its content, weighed against a finding of fair use.

In March, the Federal Circuit ruled that Google’s use of Oracle’s Java application programming interface (API) in its Android operating system is not fair use. The court found that Google’s use of the APIs was “overwhelmingly commercial,” and not “transformative,” as Google copied and moved the APIs from platform to platform without changes. The court acknowledged that elements of the APIs were functional but gave this factor little weight. As to the amount and substantiality of the APIs used, the court found this factor neutral. In considering the potential market harm to Oracle, the court found that the APIs had been used in mobile devices prior to Android’s release, and that Google’s use thwarted Oracle's licensing opportunities and “prevented Oracle from participating in developing markets.”

The four fair-use factors are: (1) the purpose and character of the use (“transformative use”); (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used; and (4) the effect of the use upon the potential market or value of the copyrighted work. As these cases demonstrate, fair-use analyses are notoriously inconsistent and unpredictable. Generally, a fair-use defense should not be relied upon to excuse copyright infringement.

Read More >> http://ccbjournal.com/articles/35677/trademarks-copyrights-and-patents-%E2%80%A8-mid-year-update

A New Startup Business: What Is Needed For Success

By: Michael J Foycik Jr. 
June 22, 2016
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

So you're starting a new business, congratulations! The sky's the limit. If your new startup business is based on a new idea, a new concept, or a new invention, then you'll need something first.

What will you need for success? At least one thing: something unique that you own. The key word here is “own” and that includes intellectual property: patent rights, trademark rights, copyright rights, and trade secret rights. Otherwise, your initial success can be copied or taken by anyone.

You should have a pending application of some type. That is, unless you already have an issued patent or a registered trademark, though a startup is unlikely to have either one. What you can have is a pending application: a pending patent application, a pending trademark application, or both. For some businesses, a copyright application is needed instead of, or in addition to, a patent application.

A pending application documents ownership, as of the filing date. For patent applications, the law now is first-to-file. If you wait to file a patent application, anyone can take your idea and file on it. So be the first! If you are first, then your rights are documented by the filing of the application.

Costs can be kept fairly low on the patent side by filing a provisional patent application (PPA), which gives true patent pending rights for one year, which can give priority rights for any later filed utility patent application. The PPA also documents trade secret rights when the subject matter is kept confidential, and such rights can be valuable.

A pending federal trademark application also documents rights. What's in a name? Sometimes an entire business depends on a catchy name. Even if there are no other types of rights, just having trademark rights can mean success. Even a pending trademark application can be valuable!

Read More >> http://internationalpatentservice.com/A-New-Startup-Business.html

Battle Over Thank You Trademark on Wine Bottles

By: Kerana Todorov

A Southern California company is in federal court over the right to use its trademark “THANK YOU” on its wine labels, according to court records.

Hidden Wineries Inc. of Temecula is challenging a 2017 decision by the administrative board of the U.S. Patent and Trademark Office to declare its trademark “THANK YOU” abandoned. On April 11, the company filed a complaint against Modern House LLC of Oakville. Modern House is based at Swanson Vineyards, a division of Vintage Wine Estates of Santa Rosa.

Modern House’s lawyers in 2014 petitioned federal officials that Hidden Wineries had abandoned its trademark “THANK YOU.” In August, the Trademark Trial and Appeal Board, an administrative panel of the U.S. Patent and Trademark Office, sided with Modern House and issued a ruling to cancel “THANK YOU.”

That decision cleared the way for Modern House to register its own trademarks “MERCI” and “THANK YOU MODERN HOUSE” with the U.S. Patent and Trademark Office. Modern House had not been able to register “MERCI” with the Patent and Trademark Office for years.

Federal officials in 2013 declined to approve Modern House’s applications to register “MERCI” and “THANK YOU MODERN HOUSE,” stating these labels would create confusion with Hidden Wineries’ “THANK YOU” mark. “Merci” means “thank you” in French.

In 2014, Modern House filed a petition to cancel Hidden Wineries’ trademark. An attorney argued Modern House “is and will continue to be injured and damaged” by the existing trademark “THANK YOU,” according to records on file with the Patent and Trademark Office.

In its lawsuit, Hidden wineries, seeks a ruling that it never abandoned the trademark. Hidden House’s trademark “THANK YOU” was approved in 2010. Alcoholic Beverage Control records indicate Madonna Mahoney of Temecula is Hidden Wineries’ chief executive officer.

Read More >> https://www.winebusiness.com/news/?go=getArticle&dataid=198449

Now is the Time to Consider an EPO Patent Application for Coverage in European Union Countries

By: Michael J Foycik Jr. 
August 6, 2014 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

Thinking of foreign patents? Then its time to consider an EU (European) patent application!

Why now? Because the EU law is transitioning toward a single filing to cover all of the subscribing EU member countries.

Applications filed now are said to be covered by the new law when it changes, likely in 2015 or 2016. Such an application is examined, and if granted provides patent protection in all subscribing EU countries. The filing can be in any EU language, which includes English, removing the need for expensive translations.

Most companies need protection in the US, but dread the costs of filing in multiple European countries. Sure, you've heard of companies spending hundreds of thousands of dollars. But, consider that an EU application can be filed for less than USD 7500 in many cases, including attorneys fees and government filing fees. Design patent applications are even less.

What about EU trademark applications? Those are affordable too! Filing can be at a total cost of less than USD 6500, including legal fees and government fees. No actual use is needed for filing. Ideally, your company name should be protected as soon as possible, before competitors can try to get rights in the EU on your trademark.

Read More >> http://internationalpatentservice.com/Now-is-the-Time-to-Consider-an-EPO-Patent-Application-for-Coverage-in-European-Union-Countries.html

Intellectual Property: Difference Between Trademarks, Copyrights, and Patents

By: Sam Mollaei

Considering the complexity of intellectual property law, it is understandable that many individuals like artists, authors, bloggers, journalist, etc. are likely to confuse the terms Patent, Copyright, and Trademark. Often you may hear them speak of “patenting a book” or “copywriting a new gadget”. These are legal terms that are on occasion confused by a lot of people. In this post, you will get to know the difference between:

>> Patent

>> Copyright

>> Trademark

So what is Intellectual Property?

Intellectual property is the ownership of tangible and non-physical goods. Since intellectual property is intangible, then it becomes a lot more difficult to protect it as compared to other kinds of property.

A simpler definition of intellectual property is something that is created by an individual’s or professional’s mind. However, intellectual property does not protect the bare ideas; rather it is basically the expression or the symbolic power/recognizability of the ideas that have been protected.

The intellectual property, in this case, is the design of a car that is patented. But not the idea of the car itself. It can be the painting of a beautiful house that is copyrighted but not the idea of the house. The intellectual property is the consumer recognizable logo that has been trademarked but not the idea of the logo. Therefore, the intellectual property only protects how we can express and identify ideas in concrete ways. But not the idea itself.

What is a Trademark?

A trademark is a device, a symbol, a name that is used in trade with goods to indicate the source of the particular product or service that will distinguish it from the goods and services of others. The trademark rights that are offered to a company may be used to prevent other businesses from making the same goods or rather from selling the same goods or services under a clearly different mark.

The trademarks protect any symbol that shows or indicates the source of the origin. While the trademark of a particular company may be very important to the owner of the company, its ultimate purpose is to protect the consumer, by informing them about the origin of the product.

What is Copyright?

The copyright can protect the specific creative expression of an idea that can be through any medium of artistic or creative expression. Examples can be paintings, writings, sculptures, photographs, software, etc. It is generally a form of protection that is offered to the authors of original works of the authorship.

Read More >> https://invoicebus.com/blog/intellectual-property-trademarks-copyrights-patents/?ref=quuu

Some Indiegogo Success Tips

By: Michael J Foycik Jr. 
August 6, 2014 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

If you're planning an Indiegogo campaign or other enterprise funding site, then these tips may help.

Have IP protection. What's that? It is intellectual property. It is not necessary to have an issued patent, but for success raising capital it is important to have at least patent pending protection. Trademark protection can help too. Don't neglect copyright protection and trade secret protection, if those are appropriate for your enterprise.

Get publicity. Use an inexpensive service that does e-press releases. Such a service can even help you write the press releases, for a small additional fee. And, try giving interviews to journals and magazines that might review your product or service.

Line up your tech resources ahead of time, to list on the site. These services would include affordable software technical services. Your product will need technical support services, so it may be a good idea to list such a company on your site. Other software services are important, as you're well aware already: sales support software, inventory management software, and employee management software, among others.

Read More >> http://internationalpatentservice.com/Some-Indiegogo-Success-Tips.html

Patent workflow and technology

By: Paul Kidd

The machines are taking over

Are you ready for R2D2 and C3PO to take over? No, Yes, Maybe or Does not compute?

Ready or not, Machine Learning and Artificial Intelligence (AI) are steadily taking over every aspect of routine life including automation in the field of IP. In all aspects of life, the AI revolution is here to help us, even though the solution is removing the human broker from the workflow.

Over the last 20 years, Machine Learning and AI have helped to change and shape the IP patent information industry. OCR (Electronic Optical Character Recognition), Machine Translations and Semantic Search are three areas where technology has already helped.

The current status

OCR processing of patent PDFs and printed patent documents has been with us for a few decades and is a mainstream technology.

>> Machine Learning – Mature Technology

>> Benefits – Accuracy and Speed

Machine Assisted Translations are again a mainstream technology making global patent documents available in your choice of language format including on-the fly translations.

>> Machine Learning – Mature Technology

>> Benefits – Accuracy and Speed

OCR and Machine Assisted translations are standard background technologies. Deployment of these technologies was important due to the increasing volumes of global patents ensuring quicker access to the latest publications for patent professionals and organizations.

Semantic Search and the application of this technology for IP opened up patent searching to non-patent professionals. Semantic Search has made it possible to search patent data effectively without having to think for many hours how to formulate a Boolean search query or what the IPC or CPC code is for a washing machine.

>> Machine Learning – Maturing Technology for patent searching

>> Benefits – Precision (Accuracy), Relevancy and Speed

Semantic Search for patent searching is a developing technology. It will continue to improve and, just like the giant on-line search engines, the algorithms will “learn” with human feedback to improve the patent search results for users.

The focus now for both patent offices and organizations is managing the huge volumes of information with an increasing focus on technology and data scientists to help manage IP workflows.

How patent offices are evolving

Major patent offices are implementing technology including machine learning and AI as the future for their patent, trademark and design application workflow solutions. The Japan Patent Office have announced publicly that it is investing in the use of artificial intelligence technology to automate processes such as screening patent, trademark and design applications.

Read More >> https://www.lexology.com/library/detail.aspx?g=bbfd7619-3d9d-4780-8bc1-2ba51b64fe90

Unpatentable - No Problem! Tips To Protect Your Idea Anyway

By: Michael J Foycik Jr. 
February 20, 2014
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

So your new idea might not be patentable. Don't let that stop you! Here's some tips on what to do when your invention is not patentable.

Tip one: mark everything “confidential” and protect it under trade secret law.

Tip two: anything can be a trade secret. It just depends on the person seeing it. If it's new to them, and it's marked confidential, then it's a trade secret.

Tip three: a trade secret is probably better than a patent when it comes to those you have direct contact with. This is helpful if the idea is misappropriated by a retailer, distributor, developer, investor, and anyone else who sees the idea through you.

Tip four: file a provisional patent application (“PPA”). It documents your trade secret, the date of filing, and the ownership. As a government record, it is evidence. Few things could be as good.

Tip five: mark your materials with a copyright symbol. It triggers at least some degree of copyright protection in many cases. This is done by use of the copyright symbol followed by the date and owner. Here's a made-up example: © 2014 ZYX Corp.

Tip six: use the trademark symbol on key terms/phrases to gain trademark rights. Trademark rights depend on actual use, for example here's a made-up example: ZYX Dessert TM . Here's another example: ZYX Dessert is a trademark of ABC Corp.

Read More >> http://internationalpatentservice.com/Unpatentable-No-Problem-Tips-To-Protect-Your-Idea-Anyway.html

Intellectual property basics for startups: patents

By: Victoria Lee

The crown jewel of a typical technology company is its intellectual property portfolio. Having a good basic understanding of intellectual property protection is essential for entrepreneurs to extract value out of their company's key assets and manage opportunities and risk arising from them. One important type of intellectual property that may be part of an intellectual property portfolio is a patent.

What is a patent?

Utility patents are the types of patents that are typically filed by technology-oriented startups.1 They protect inventions which are new, useful and non-obvious. Such inventions can be electrical, biological, mechanical, chemical or even a business process. In order to obtain any patent rights, the startup must apply to the government in each jurisdiction in which protection is sought and comply with such jurisdiction's legal criteria. Currently, a patent in the United States has a term of 20 years from the filing date but the term may be extended under certain conditions.

When do you need a patent?

Most products and services can be protected by a combination of intellectual property rights. For example, computer software can be protected by patents, copyrights, trademarks and trade secrets. Microsoft protects certain functions of its Windows software with patents; it uses copyright to protect the actual code of the Windows software from copying; it uses trademark law to protect the ''Microsoft'' and ''Windows'' trademarks which identify the product; and it uses trade secret law to protect the structure and methodology of its source code. However, once a patent is issued, trade secrets in the part of the computer software protected by the patent will be disclosed and will no longer be protected by trade secret law.

Patents permit the owner to ''exclude'' others from making, using, selling, offering for sale, and importing a product or service embodying the invention. The fact that a patent is a ''negative'' right is very important because it means that obtaining a patent does not give a startup the right to sell a product or provide a service: many products and services are covered by the claims of multiple patents owned by different parties.  Patents are generally viewed as the strongest form of intellectual property because they can prevent a competitor most effectively from making its product.

Many startups miss the opportunity to protect the most important elements of their products by not understanding the deadlines in patent law or not implementing a strategy for patent protection of products and services. Briefly, most countries will not permit patent protection for an invention unless the application is filed prior to public disclosure of the invention, such as by demonstrating a product at a trade show, publishing technical papers or offering it openly for sale to third parties. The United States, like the rest of the world, now follows the ''first to file'' rule with certain modifications rather than the previous ''first to invent'' rule. Startups need to be aware of this framework and ensure that they make appropriate decisions regarding protection before demonstrating their products at a tradeshow, publishing technical papers about it or offering it for sale to third parties.

Patents are sufficiently important that we have included a separate overview specifically discussing patent strategies for startups, including a discussion about the deadlines for patent prosecution. You can access our patent strategy overview.

Read More >> https://www.dlapiperaccelerate.com/knowledge/2017/intellectual-property-basics-for-startups-patents.html?platform=hootsuite

Quick And Easy Steps To Get Your Patent Application On File

By: Michael J Foycik Jr. 
February 20, 2014
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

Need a patent application on file in a hurry? This happens, for example, if you have a trade show coming up, or want to show your idea/invention to anyone.

First, write some things down: what it is called; what it does; how it works; and what it is made of. This part can be short or long, as you prefer. It is a great start either way!

Second, make simple sketches of what your idea/invention looks like. Show the parts, too. It's good to have several views, such as top, front, and side views.

Third, get an official patent office cover sheet for a provisional patent application online at www.uspto.gov, at the forms page. It's easy to find.

Fourth, check out the micro entity form and instructions. If you qualify (most do), you are entitled to much lower government fees, and fill out the micro entity form.

Fifth, put the information from the above first and second steps into the form of a standard specification with headings. This is easy to find at the www.uspto.gov site.

Sixth, file online or by Express Mail. The above-noted official patent office site has easy instructions for this.

Read More >> http://internationalpatentservice.com/Quick-And-Easy-Steps-To-Get-Your-Patent-Application-On-File.html

What is Intellectual Property and Why Does it Matter to You?

By Shireen Smith

Every business will have intellectual property to protect, although the actions to take will be very different depending on the business and the intellectual property involved.

Say you’ve invented some innovative way to solve a problem that no one else has managed to solve. In the case of Anywayup cup it was a baby cup with an innovative lid that didn’t spill. For C-Pen it was a pen that scans the text of a document directly to your computer. A patent is available in both these situations to protect your investment.  Arguably, for product-based inventions a patent is essential because it gives you a legal monopoly in the invention. The patent, if well drafted, makes it difficult for others to copy your invention. Without patent protection well-resourced manufacturers could enter the same market once they realise you are onto something, and use their greater financial muscle to produce and publicise a similar offering.

Then suppose you have selected the perfect name for your invention and had a logo developed for it with an attractive design. How would you feel if you were to find out after spending time and resources promoting the name, that it couldn’t be exclusive to you because the name is incapable of functioning as a trademark? This is what happened to Tesco’s Clubcard. The name it chose for its loyalty program has proved impossible to protect. If this was you, wouldn’t you prefer to know about it in advance, so you could make a better choice? Or, say you find that the name is not legally available and you then lose everything overnight when a trade mark owner is able to put a stop to your continued use of your name? This is what happened to Scrabulous whose business on Facebook went up in a puff of smoke. And did you know that if you don’t take the right actions in relation to your logo, you could find yourself on the wrong end of a dispute as happened to Innocent who at one point lost the right to use their iconic logo. Would you have the resources to appeal such a decision as they did? These are just some examples of what can happen when you don’t get timely IP advice.

Every business has IP issues to consider because every business has a name, a logo, a website, a database of contacts and more. These are all intangible assets which are important to the success of a business.

What is IP?

IP is the collective name for the rights that protect creativity, imagination and ideas. It’s very wide ranging and the rules are often complex.

Trademarks identify your products or services, secure exclusive rights over the name of your business and contain the value of your brand. With the right name you can stop competitors stealing business away from you. Copyright is another essential intellectual property right. Every business uses copyright works because every business is likely to have a logo, website, brochures, photographs, packaging, software etc. Design protection is another type of IP right which is often overlooked. However, it is a powerful tool for protecting your market share and preventing competitors from copying your ideas.

The Benefits of Protecting Your Intellectual Property

Strategic decisions about IP should be made early in the business so as to make good choices of IP, and determine how best to protect yourself with your available resources.

IP presents both risks and opportunities. Used wisely, IP advice and protection

>> increases the value of your business,
 >> helps grow your profit margins,
>> creates income streams,
>> attracts finance,
>> protects your market share,
>> prevents competitors from copying your ideas,
>> reduces future risks and liability (including personal liability of directors),
>> protects the effort you put into your business, and
>> gives you a legal monopoly.

Read More >> http://www.azrights.com/media/news-and-media/blog/intellectual-property/2016/12/what-is-intellectual-property-and-why-does-it-matter-to-you/

Google Secrets No More - What Recent Google Patents Tell Us About SEO, Ads, and More

By: Michael J Foycik Jr. 
January 9, 2014
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

There are interesting features in several recently issued Google patents.  There are interesting insights, possibly secrets revealed, and opportunities too.  Let's have a quick look.
A favorite of this author is Patent Number 8,589,391, which relates to a method for generating web site ratings for a user.  This seems to be very useful.  You can look this patent up online by searching “google patents advanced search” which brings up an option to search by patent number.  I do recommend this, since there is an option to download the patent as a pdf file; this applies to the following patents as well.

And, something functional: Patent Number 8,589,387, for an Information Extractor from a Database, also assigned to Google.  Here's an opportunity – if this is so important, other firms may well be able to develop improved/different methods for doing this which may well be of interest to search engine companies like Google.

More insights into the Google field of interest: Patent Number 8,589,399, for identifying terms of interest to an entity.  This has obvious interest to marketers, but may have broader implications.  And, there could be secrets revealed therein.  Worth a look!

More opportunities for programmers and marketers may be in Patent Number 8,549,032, also to Google, for determining proximity to topics of advertisements.  If this is still of importance now, other methods could well be of importance too.  There seems to be room for growth in this field.

Read More >> http://internationalpatentservice.com/Google-Secrets-No-More.html

Intellectual Property Rights Over Emojis: Transforming Expressions Into Assets

By: Shubham Kataruka

A Popular Medium of Communication

Emojis’ purpose is not only to present the speaker’s emotion but to help smooth out interpersonal relationships and to convey features such as irony. They are not about how the sender feels so much as how the sender wants the receiver to feel. Apparently, the world is preferring conversation on Mobile Apps such as WhatsApp and Facebook Messenger over a voice call. Nevertheless, legal issues concerning emojis have rendered them vulnerable to prohibitions on its unfettered usage.

Categorization

The standardization of emojis has been carried out by the Unicode Consortium. For this purpose, the Unicode has assigned a unique number, a black-and-white shape outline and a short description to nearly 2,000 emojis.

On the other hand, platforms implement emojis which are functional only on such respective platforms. These are known as “proprietary emojis” or stickers. For example, the twitter hashtag triggered emojis have gained recognition as a separate brand.

Copyright Considerations

Prima facie, emojis appear to be copyrightable as they are a form of graphical image. However, there are sufficient reasons which cause hindrance in obtaining copyright for these graphical representations:-

>> Emojis may not constitute a work of authorship as it is difficult to prove creativity in the designing irrespective of the variations which different platforms come up with .

>>  As far as emojis are concerned, merger doctrine comes into picture i.e., when an idea can be expressed only in a limited number of ways the copyright protection cannot be granted for the same. Also, scènes à faire eliminates copyright protection for emojis because of a common conception regarding the expression of a particular emotion.

However, some platforms come up with proprietary emojis or branded emojis which are significantly different and of non-similar nature with that of Unicode based emojis. In such cases, applicants are likely to succeed in obtaining copyright protection for their emojis.

Trademark Considerations

It is possible that multiple persons may hold trademark rights in the same emoji for different class of goods. However, communication based platform are least likely to obtain trademark rights in an emoji because they cannot prove “use in commerce” requirement. The emojis are being used descriptively and hence unlikely to receive trademark protection. Whereas, producers or marketing firms which intend to use emojis for the purpose of branding their product the “use in commerce” requirement is likely to be fulfilled and hence trademark protection can be obtained.

Read More >> https://www.intepat.com/blog/intellectual-property/intellectual-property-rights-emojis/

Claims In A Patent Application - What You Should Know

By: Michael J Foycik Jr. 
January 3, 2014
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

What is a broad claim?  How can you protect your invention when competitors make slight changes?  Should you even worry about these things?  Here is a simple guide that may help.

There is a law of claim infringement that is worth knowing.  A claim is infringed if the accuses product has each and every limitation of the claim.  What's that mean?  Well, suppose a claim for a pencil reads:  “An implement for marking having a hollow tubular portion having a spreadable substance inside.”  Then, a pencil having an eraser would still infringe – the added feature of the eraser does not matter.  Even more importantly, that claim even reads on a lipstick case.  What a wonderful claim!

You too can have good – even wonderful – claims, if your invention can support them.  The one problem is that the patent examiner rejects any claims that would read on the prior art patents.  So, no one else can ever get a claim for a pencil as broad as the above example, now that pencils are part of the prior art.

Let's say your invention has all kinds of wonderful and exciting features.  Many do!  How should be approach the claims for such a product?

One approach is to have several “independent” claims, which do not depend from any other claim.  Many of the features can then be added as depended claims, like this:  Dependent claim 2 for the above pencil invention could read:  “Claim 2:  An implement as claimed in claim 1, further comprising an eraser disposed at one end of the tubular portion.”

By this approach, you would make your independent claims as broad – and as different – as possible.  Then, you would add more limitations by way of dependent claims.  That way, if the patent examiner allows the application, your protection is broad and strong.  If the patent examiner rejects the broader claims, there is still a range of features for the patent examiner to choose from, which he/she might deem allowable.

Read More >> http://internationalpatentservice.com/Claims-In-A-Patent-Application-What-You-Should-Know.html

Patent Assistance Is Available for Low-Income New Mexico Inventors

By: Finance New Mexico

Inventors know that patents and trademarks offer protection against the theft of their ideas but hiring an attorney or agent to help prepare and submit the patent application can cost more than low-income applicants can afford.

To help inventors clear that hurdle, the U.S. Patent and Trademark Office (USPTO) Pro Se Assistance Program pairs qualified low-income inventors with patent attorneys willing to work for free. Patent applications submitted through the program are evaluated by a USPTO examination unit dedicated specifically to examining pro se patent applications.

Acceptance into the program, however, doesn’t guarantee a patent award. And the free legal assistance comes with challenges, including lengthy delays due to a backlog of applicants. On average, patents submitted by attorneys registered with the USPTO are awarded 14 months after the initial application; pro se applications take longer.

Another challenge for New Mexicans who qualify for assistance is that the ProBoPat program to which they are referred is administered by a nonprofit organization that serves five states from its base in Denver — some 10 hours by car from Southern New Mexico.

Fortunately, the pro se program isn’t the only option for low-income inventors.

The USPTO Law School Clinic Certification program allows law students pursuing a practice in patent and trademark law to represent patent seekers before the federal agency. Many give preference to innovators who live in their region, which means the closest accredited programs to New Mexico are at Arizona State University, the University of California Los Angeles School of Law and Lincoln Law School of San Jose, California.

No matter what route they take, innovators can save money and time doing part of the legwork themselves. A first step in getting a patent is to determine if someone else has protected the process or design — information that is available to everyone on the USPTO database. Independent research also helps innovators understand what’s involved in getting a patent.

New Mexico inventors can access the Patent and Trademark Resource Center (PTRC) at New Mexico State University Library in Las Cruces. PTRCs are dedicated computer terminals in academic or public libraries, and trained librarians will help researchers navigate the USPTO databases.

Read More >> https://financenewmexico.org/articles/starting-or-growing-a-business/patent-assistance-is-available-for-low-income-new-mexico-inventors/

Responding to Restriction and Election Requirements in Patent Applications

By: Michael J Foycik Jr. 
December 19, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

It is not at all uncommon to receive an Office Action in a pending U.S. Patent application which is a Restriction requirement or an Electrion requirement. These are two different things, though they may seem similar. Here are a few things to know.

A restriction requirement is normally for completely separate inventions, based strictly on what is claimed. For example, let's say an application is directed to a new mirror and a new hammer. Restriction? Maybe, but it depends on the claims. If there are separate independent claims which recited the mirror and the hammer separately, then a restriction requirement may be made.

In responding to a restriction requirement, it is necessary to elect one of the inventions for further examination. It is possible to contest such a requirement, but there is little likelihood of success. The non-elected invention(s) will likely not be examined, but can be claimed in a future patent application called a “divisional”. A new government filing fee will be due. Advantageously, this means that the applicant's rights have additional life, and sometimes this is useful. For example when competitors try to invent around the claims, the claims in the pending application can be changed.

An election requirement can be similar to the above-noted restriction requirement in some ways. Here, let's say an invention is directed to a new mirror having five different forms. The examiner will often require election of a single such form (or species) for examintion. However, if that species is deemed allowable, then often the non-elected species can be included among the allowed claims. In that case, there is no need for a divisional patent application, since in the end everything was allowed. When there are more than six species, however, it may be necessary to file a divisional patent application directed to the surplus species beyond the first six elected.

Read More >> http://internationalpatentservice.com/Responding-to-Restriction-and-Election-Requirements-in-Patent-Applications.html

Protecting My Intellectual Property

By: Brett Bunnell

Palo Alto business owners are faced with heavy competition in the Silicon Valley, all of which are looking for the best practices, methods, and trade secrets. Some of a company’s most valuable assets can be found in your intellectual property. Each year intellectual property theft costs businesses billions of dollars. If you think your intellectual property might be at risk of being stolen or you can confirm it has been stolen, you need to act fast.

Different Types of Intellectual Property

In order to protect yourself from Intellectual Property theft, a business owner must first define what they need to protect. For example, if the business owners want to secure a method of a certain process, a formula specific to their company, or even lock down a logo and name to fight off competition, there will be different applicable forms of legal protection to consider and utilize. There are several forms of protection, some of them being:

Copyrights: Copyrights are rights that attach to an original work of authorship that is fixed in some sort of tangible medium. Examples include software, music, photographs, books, a newspaper article, and poems. Copyright protection attaches the minute something is created. Copyrights can also be federally registered.

Patents: All patents are issued by the government. It provides the patent holder with exclusive rights to the “patented” design, process, or invention for a period of time.  Obtaining a valid patent can take years.

Trademarks: Trademarks can be applicable to either goods or services. A trademark is a word, symbol, or phrase that a person can use to identify the source of a specific good or service. Often trademarks are identified by using the ™ symbol or the ®️. Each of these symbols provides different legal protection.  An example of a strong trademark is the signature yellow “M” for McDonald’s.

Trade Secrets: A trade secret is information that is held closely by a company and is not generally known or easily discoverable. Trade secrets are confidential and highly proprietary.  For instance, Coca-Cola’s Coke recipe is a trade secret.

Identifying Key Facts About Intellectual Property Theft

If your intellectual property is stolen, you will need to identify the source of the theft. Depending on the nature of the theft, this source may be obvious, or it may be hard to identify the perpetrator. Here are some things you may want consider when trying to identify the scope and source of the theft:

>> Was the theft internal or external to the company’s personnel?
>> Can you hire third parties to conduct an investigation or try to find the source?
>> Do you need to immediately change business processes to contain the damage?
>> Do you have any reporting obligations based on the theft?
>> Consider contacting the local authorities or the FBI.
>> Consider hiring legal counsel to file necessary actions (e.g., trademark infringement).

Asserting Your Company’s IP Rights

The different types of intellectual property each come with a bundle of rights. For example, if you have a federally registered trademark and someone infringes your mark, you have a right to a presumption that you own the trademark. Further, it is the infringer’s burden to prove that their use of the mark is not infringement.

Each intellectual property theft is fact specific. Each company has specific intellectual property. How your company should assert its rights against theft will depend on your company’s specific situation. An experienced intellectual property attorney can be beneficial in sorting out your rights and what actions might be necessary to protect your stolen intellectual property. Some actions might include a cease and desist letter, filing an action in court, handling employment-related matters if the theft was internal, or contacting the local authorities.

Read More >> https://www.sanjosebusinesslawyersblog.com/2018/06/protecting-my-intellectual-property.html

What Is Patentable?

By: Michael J Foycik Jr. 
November 15, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

Wonder what is patentable? When a good idea could becomes a valuable right? If so, read on!

The legal standards are simple to state: anything new an unobvious. But, what is new? And, what is unobvious? This is discussed as follows.

Anything “new” would include a new arrangement of old parts, an arrangement which achieves a new result, and any improvement to an existing device. These all may be deemed to be new and can therefore support a patent application. A very small improvement is still new under this standard.

Make something useful out of standard hardware items? That's ok, as long as it is new. How do you know it is new? Well, if you didn't copy it, and haven't seen one anywhere, then it could be new. A patent search might – or might not – turn up relevant prior art, so that's another way to try to guesstimate whether something is really new or not.

The next item, though, is whether the invention is unobvious. That is a legal determination which is typically made by a patent examiner in the course of his/her duties. This standard may vary greatly from one person to the next, but in the end the examiner's decision is the one that counts.

So, how does a patent examiner decide what is unobvious? Easy – from a study of the relevant prior art. The examiner is normally a subject matter expert, and therefore can locate the most relevant prior art patents and publications. Even a small change may rise to the level of patentability, if there is no teaching or suggestion in the prior art to suggest that modification.

Read More >> http://internationalpatentservice.com/What-Is-Patentable.html

Trademark Infringement Elements Applied at the TTAB

By: BRAD WALZ

The trademark infringement elements are referred to as the “likelihood of confusion factors” and apply differently depending upon the jurisdiction you are in. The United States Patent and Trademark Office applies the trademark infringement elements established by the In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) case, which established 13 factors to consider when deciding whether confusion is likely.

Despite the test containing 13 factors, the United States Patent and Trademark Office has repeatedly said that the two key considerations are the similarities between the marks and the similarities between the goods or services. In fact, the Trademark Trial and Appeal Board has held that these two factors can be dispositive of the likelihood of confusion question.

Not only are the similarity of the marks and similarities between the goods or services the most important factors when before the United States Patent and Trademark Office, but the interplay between these two factors is equally important. Where the goods of the applicant and cited registrant are identical or closely related, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods.

The Trademark Trial and Appeal Board recently decided a case where this interplay was shown. In In re DPC Pet Specialties LLC, DPC Pet Specialties sought to register the mark SAVORY ROASTERS for “pet food; pet treats.” The USPTO refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark HEARTY ROASTERS for “pet food.”

The TTAB held that while the terms SAVORY and HEARTY convey different meanings, both terms are descriptive of pet food. Accordingly the dominant term in both marks was ROASTER. And even thought the TTAB is required to evaluate the marks in their entireties, because the goods at issue were identical the small differences in meaning between SAVORY and HEARTY were insufficient to avoid a likelihood of confusion.

Source >> https://www.trademarkbob.com/blog/trademark-infringement-elements-applied-at-the-ttab/

Patent Mistakes Commonly Made By DIY Inventors

By: Michael J Foycik Jr. 
October 24, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

There are some very common mistakes made by do-it-yourself (DIY) inventors when it comes to patenting. There are two main patent types, Provisional Patent Applications (PPAs) and Utility Patent Applications.

The worst mistake: trying to hide the invention. This happens when inventors recite all the advantages and benefits, but do not show enough structure to support those functions. The rejection that occurs in those situations is an “insufficient disclosure” rejection, and it is a serious matter in the patent world.

Drawings: color drawings are a mistake. Only black-and-white line drawings are accepted, except under relatively rare conditions such as a biological micrograph.

Also a mistake: drawings without proper margins of one inch at the top and left, 5/8 inch on the right, and 3/8 at the bottom.

Another mistake is failing to show enough features in the drawings. Many inventors seem to think one or two good drawings are enough. Many times it is necessary to have cross sections shown, enlarged detail views, and diagrams showing a change in position or condition. Also, front views of mechanical systems are often not enough. Other views may well be necessary: side, rear, bottom, perspective, and assembly drawings all find good use in patent drawings.

For Utility Patent Applications, mistakes are very often made in the claims. Anything claimed must also be present in the drawings. It is normally not possible to change the drawings. Therefore, make sure anything that should be claimed is clearly shown in the drawings.

Read More >> http://internationalpatentservice.com/Patent-Mistakes-Commonly-Made.html

Original idea? Patent and Trademark Resource Center at NMSU assists innovators

By: Tiffany Acosta

Alex Moon has a new idea, and the biology doctorate student at New Mexico State University is trying to patent his idea. Through the process, the Patent and Trademark Resource Center at NMSU’s Zuhl Library has been a valuable resource.

Established at NMSU in October 2016, the PTRC is the only office in New Mexico and the surrounding region and is officially affiliated with the United States Patent and Trademark Office in Alexandria, Virginia.

“This program is set up through the USPTO to help inventors who don’t have the support or money up front to get going on the patent process,” said David Irvin, NMSU business and government documents librarian and PTRC representative.

The PTRC can help individuals conduct prior-art searches for patents and trademarks so they can determine if a patent or trademark already exist before proceeding with the process. The PTRC is a free service and open to the public.

Moon, who is trying to patent his method for building 3D printed casts, filled LLC paperwork in January 2018 for his business and then visited the PTRC and talked with Irvin to research the viability of his idea.

“I’m currently now in the later stages of prototype development. Hopefully it comes out soon. It’s been a long challenge to get to that spot,” Moon said. “If my patent is granted, it’s because of the PTRC and the people in it.”

The PTRC provides access to not only the research software and USPTO training materials but also referrals to the ProBoPat program, which connects individuals to pro bono intellectual property attorneys.

“It saves inventors money to be able to have access to an office like this,” Irvin said. “It also is part of the extension and outreach mission of the university ... to reach out and provide resources for inventors, innovators and entrepreneurs who are applying for patents or trademarks.

“The library is a good place for this because we have been trained as professional researchers. You can do keyword searches using Google Patent search, but the more effective way is to use the software that the patent examiners use themselves,” he added. “We have that capability.”

Moon encourages local inventors to visit the PTRC.

“Don’t be afraid to use it. It’s a very awesome resource that is there and not many people utilize, which is really sad,” he said.

Since the PTRC office opened, Irvin estimates 130 people have been helped. Starting this summer, the PTRC will be open all year, previously the office closed in the summer.

Read More >> http://newscenter.nmsu.edu/Articles/view/13157/original-idea-patent-and-trademark-resource-center-at-nmsu-assists-innovators

A Patent Attorney Talks About Investing

By: Michael J Foycik Jr. 
October 2, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

It happens often enough – patent attorneys talk with investors for many purposes.  Sometimes it is to consider the value of a patent, other times it is simply because the investor is backing a particular client or has a question about litigation.

So what happens when the investor wants to talk with the patent attorney about investing?  Well, interesting stuff.  Here are a few samples that may help you evaluate an investment opportunity like a professional.

Let's say there is a technical field of special interest.  For example, let's say you're familiar with greeting cards, or jewelry, or party planning.  Suppose there are companies capable of leading those fields, still virtually unknown to the mainstream business investor.  You can locate companies leading those fields using patents as your guide.

Why so?  That's easy!  So many reasons!  Let's start with one: patents cost real money.  Any company that believes in its new product enough to spend money, may well be worth a look. 

A second reason: patents reveal what's hot in an industry long before the business world catches on.  This was true of every type of technology you see today, and it pays to be ahead of the curve.

A third reason: when there are many recent patents in a given field it is a reliable indicator that the field is very profitable.  Yet, the products that will be sold under those patents may be months or years away.  Again, it pays to be ahead of the curve.

A fourth reason: if there is a company you plan to invest in, wouldn't you like to be sure its technology will not suddenly be overtaken by otheres or even become obsolete?  Sure you would!  Again, looking at the recent patents in that field will tell you who the leaders are, where they're going, and if your selected company is still in the running.

Read More >> http://internationalpatentservice.com/A-Patent-Attorney-Talks-About-Investing.html

Patent and Trademark Resource Center at NMSU assists innovators

By: Tiffany Acosta

LAS CRUCES - Alex Moon has a new idea, and the biology doctorate student at New Mexico State University is trying to patent it. Through the process, the Patent and Trademark Resource Center at NMSU’s Zuhl Library has been a valuable resource.

Established at NMSU in October 2016, the PTRC is the only office in New Mexico and the surrounding region and is officially affiliated with the United States Patent and Trademark Office in Alexandria, Virginia. 

“This program is set up through the USPTO to help inventors who don’t have the support or money up front to get going on the patent process,” said David Irvin, NMSU business and government documents librarian and PTRC representative.

The PTRC can help individuals conduct prior-art searches for patents and trademarks so they can determine if a patent or trademark already exist before proceeding with the process. The PTRC is a free service and open to the public.


Moon, who is trying to patent his method for building 3D printed casts, filled LLC paperwork in January 2018 for his business and then visited the PTRC and talked with Irvin to research the viability of his idea.

“I’m currently now in the later stages of prototype development. Hopefully it comes out soon. It’s been a long challenge to get to that spot,” Moon said. “If my patent is granted, it’s because of the PTRC and the people in it.”

The PTRC provides access to not only the research software and USPTO training materials but also referrals to the ProBoPat program, which connects individuals to pro bono intellectual property attorneys.

“It saves inventors money to be able to have access to an office like this,” Irvin said. “It also is part of the extension and outreach mission of the university ... to reach out and provide resources for inventors, innovators and entrepreneurs who are applying for patents or trademarks.

“The library is a good place for this because we have been trained as professional researchers. You can do keyword searches using Google Patent search, but the more effective way is to use the software that the patent examiners use themselves,” he added. “We have that capability.”

Moon encourages local inventors to visit the PTRC.

“Don’t be afraid to use it. It’s a very awesome resource that is there and not many people utilize, which is really sad,” he said.

Since the PTRC office opened, Irvin estimates 130 people have been helped. Starting this summer, the PTRC will be open all year, previously the office closed in the summer.

“People need to be realistic about how difficult this process is and how long it takes and often times how expensive it is,” Irvin said. “If people want to go through a search for art, this is a great place to do it. If they want advice about the application process or drafting claims, you really have to do that on your own or have an attorney do it.”

Additionally, Irvin mentioned the NMSU Library collects and binds plant patents from the USPTO. Since 1994, NMSU has received plant patent volumes that are housed in the Branson Library.

Source >> https://www.lcsun-news.com/story/news/education/nmsu/2018/06/09/patent-and-trademark-resource-center-nmsu-assists-innovators/686896002/

Selling Your Patent – How Much You Can Expect

By: Michael J Foycik Jr. 
Septemper 25, 2013

The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

Many inventors have profited from selling their patents.  So how much do they get?  The answers are surprising, or at least they surprised me.

Having talked with many inventors, and also having talked with many corporate patent departments, I've heard many examples.  Let me give you a few general examples, based on published accounts and interviews with public speakers.

Assuming the inventor has an issued patent for an article and has sold that article through at least one retail store, there will almost certainly be corporate interest.  Vendors often report new products they see when visiting retail stores, which accounts for the corporate interest.  If the corporation makes an offer, it will typically be anywhere from $50 thousand to $8 million, and can be higher.

On the other hand, an inventor trying to simply market an issued patent to corporations, is likely to get anywhere from $5,000 to $35,000.  This does not take into account the likelihood of a corporation making an offer.  Some inventors hire a marketing service to try to interest companies; such marketing companies usually keep statistics on their success rate, which varies.  I recommend that anyone considering such companies first check out their success rates.

Or, if going through a television marketing company, the numbers are different.  If that company is of the type that develops and makes the products based on your patent, they may prefer to license the patent rather than buy it.  The royalty rate in such a case might be $2 million per year guaranteed plus a bonus based on sales.   Such agreements may be for two years, and can be longer.  This all varies, of course, depending on the specific company and the nature of the product.

Here's a very typical experience based on a successful inventor who was giving a public talk at the U.S. Patent Office.  He saw many inventors going to trade shows, winning prizes and drawing much interest, but typically receiving little or no actual offers.  Unless, that is, the inventors could take orders and actually had products they could deliver.  Such inventors typically spend a great deal attending such trade shows, so a cost-benefit calculation should be made before considering this option.  In an example of a successful result, which may not be typical, a distributor may take an interest in the product and offer a royalty.  Typically, such royalties are fairly small, typically between 2 and 9 per cent (though this varies), and there are no guarantees of actual sales.

Read More >> http://internationalpatentservice.com/Selling-Your-Patent-How-Much-You-Can-Expect.html