What Does A Patent Lawsuit Cost ?

By: Michael J Foycik Jr. 
August 23, 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.

Patent infringement is a highly charged subject, and I have seen how it affects the patent owner.  A lawsuit would seem like a wonderful solution.  But, what should it cost?

Though I have heard many numbers, it is all just hearsay.  Even so, it may be helpful to say it.

A contingency attorney might take the case, but may require an ownership interest in your company of 50 percent or higher.  Is it worth it?  Maybe so, if that's the only way to go forward.  And why the high ownership interest?  Easy – to have control to ensure payment in event of a victory.

A very small law firm or individual attorney will often charge less than a large firm.  I have heard stories wherein a plaintiff might pay somewhere between 20k and 60k, depending on if/when it settles.  Higher numbers are possible when it goes to trial and there are many issues.   Is this a good value?  That depends – if you can only afford that much, then there's simply no choice.

A big company practically must use a large law firm for its reputation and size.  There is great variation, but one should expect to pay for that large size and reputation.  I have heard a number of experienced litigators say to simply add a zero to the numbers used for a small law firm.  Is it worth it?   That depends, but I have seen examples where it was well worth having a large firm do the litigation.

Where's that money go, anyway?  Well, a portion goes to filing or answering the Complaint; attending to discovery and motions related to discovery; depositions and court reporter costs; various court hearings where attendance is required; and finally for the trial itself (if it goes that far).

Read More >> http://internationalpatentservice.com/What-Does-A-Patent-Lawsuit-Cost.html

Pick the Right Intellectual Property Law Program

By: Ilana Kowarski

Intellectual property plays a critical role in American life. According to a U.S. Patent and Trademark Office report, IP industries account for more than 38 percent of the gross domestic product.

It's no surprise then that intellectual property law – which protects people's ownership claims to their ideas, inventions and works of art – is a growing field.

Intellectual property attorneys say their skills are in demand, and experts note there are opportunities to practice IP law within any industry that involves human creativity. This means a wide array of commercial legal jobs, particularly in the rapidly expanding high-tech sector, and jobs that involve international litigation to resolve the significant number of disputes between U.S. and international companies.

[Discover what a typical day is like for an intellectual property attorney.]

This legal field is likewise becoming more central to important U.S. policy disputes, IP attorneys say. Jon Kappes, a patent lawyer and lecturer at Arizona State University's Sandra Day O'Connor College of Law, says "IP law, particularly patent law but also copyright and trademark, has in recent years become one of the most dynamic areas of the law."

Kappes says congressional members regularly propose revisions to the nation's IP laws, and there are a growing number of Supreme Court cases on this topic.

For law school hopefuls who enjoy science, art or entertainment, experts say this discipline may be an attractive option. IP law is also essential for future business attorneys to fully understand, since patents, copyrights, trade secrets and trademarks are invaluable to businesses.

[Consider a legal career focusing on either health care or intellectual property.]

"If students are interested in sort of a rapidly changing, cutting-edge area of practice, I can’t think of one that is evolving at the rate of intellectual property," he says.

Experts say that law schools vary in how well they prepare students to practice IP law. Here are three signs of a strong intellectual property law program.

1. Key courses: When exploring potential law schools, experts suggest reviewing the available IP courses. Students should make sure they can take courses on how to apply for a patent, challenge a patent and file a lawsuit alleging the violation of a patent, experts say.

Experts also advise students to look for a comparative IP law course that discusses how U.S. law on this topic differs from that of other countries. This is marketable knowledge, they say, because prospective lawyers can use this information as attorneys for multinational firms that require patents, copyrights and trademarks in multiple countries.

Benjamin Katzenellenbogen, partner and chair of the recruiting committee at the Knobbe Martens IP law firm, says future business lawyers also need to take IP courses so they can understand and flag potential problems for the companies they represent.

2. Specific training: Experts say another sign of an exceptional IP law program is whether it allows students to gain field experience through clinics, practicums, externships, clerkships or internships.

Applicants should target schools with experiential learning opportunities in the specific area of IP law that they are most interested in, whether that's trademarks, patents, trade secrets or copyrights. It's also valuable, experts say, to write for an IP law journal and publish articles on a particular specialty within intellectual property, so applicants should target schools with these types of legal writing opportunities.

Kappes also recommends prospective law students look for IP law programs that participate in the United States Patent and Trademark Office's Law School Clinic Certification Program. This allows students to help with federal patent or trademark applications if they are supervised by a licensed patent or trademark attorney.

[Learn why law schools prefer science, technology, engineering and math majors.]

3. Networking opportunities: Finally, be sure not to overlook a law school's networking avenues. Waukeshia Jackson, managing partner of the Jackson & Lowe Law Group, says it's ideal to attend a law school that has solid recruiting relationships with various, local IP law firms.

“That’s going to give you an opportunity to gain experience whether it’s working over the summer or having an externship or internship with the company or with the firm," she says.

Jackson says it's also good if the law school has an active community of local IP alumni who attend networking events.

“You can start developing those relationships early on, so if there’s a community of IP professionals in and around the law school, that is definitely going to allow you to make connections early on and to be able to maybe get a mentor," she says.

Searching for a law school? Get our complete rankings of Best Law Schools.

Tags: law school, education, careers, intellectual property, students

Source>> https://www.usnews.com/education/best-graduate-schools/top-law-schools/articles/2017-09-28/identify-the-right-law-school-for-an-intellectual-property-law-career

Patent Application – What to Expect After You File One

By: Michael J Foycik Jr. 
June 21, 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.

So you're an inventor with a patent application!  What happens now that it has been filed with the US Patent Office?  Here's what to expect.
First, you'll get your Official Filing Receipt – it is actually pretty important.  Sure, you'll get an electronic filing receipt if you filed it online.  But, that's not what matters.  The Official Filing Receipt is the easiest and fastest way to get your foreign filing license.  And you'll want that, if you ever intend to file in other countries and need your US priority date.

If the US Patent Office has any objections to the drawings, specification, or abstract, they'll (usually) notify you at the same time they send the Official Filing Receipt.  Formal drawings are the main type of objection – you'll need those.

After a period of time, typically anywhere from six months to two years, you'll get your first Office Action.  That's typically where the patent examiner reads the case, searches for the claimed invention, and applies the prior art to the claims.  This is also where the examiner can make objects, for example objections to claim language, to errors in the specification or drawings, or other things.

The first Office Action could, of course, be an allowance.  Those are not that common.  If your application is allowed, there is an Issue Fee due that varies depending on your inventorship status (micro entity, small entity, or non-small entity).  There is also a publication fee due, too (if the application was published).

Assuming you didn't get an allowance, then you'll have the option to respond to the First Office Action.  Typically, your Response would meet any objections by amending the offending parts.  And, your Response typically would provide remarks in support of patentability, such as explaining how the invention as claimed differs from the applied references.  Your Response likely will also include an amendment to the claims to recite a feature not found in the applied reference, and this is one way to overcome an applied reference. 

Read More >> http://internationalpatentservice.com/What-to-Expect-After-You-File-One.html

Why Do Indian Startups Fail?

By: Khushi Poddar

“Bangalore based fintech start up Finomena shuts its shop after it fails to raise series-A funding.”

This is the recital of just one of the 11 major startup shutdowns that happened in 2017. Despite India’s entrepreneurial strength, 90% of Indian start-ups fail within five years of its inception. Reasons, one may ask?

The start-up India campaign initiated by the Indian Government is still trying hard to get its nuts and bolts in place. The big chest worth of INR 10,000 crores stole the headlines and highlights of the previous year. According to it, SIDBI was to invest in the venture capitalists, which were to in turn invest in start-ups. Not a single rupee got disbursed. The blemish caught later on was that the bank puts in only 15% of the total corpus, while the VCs have to fetch in the remaining 85%.

By tweaking the definition of start-ups to a venture of 5-7 years, with an annual turnover not exceeding INR 25 crores in any preceding financial year, the government has linked employment generation and wealth creation plans to it. Instead of this acting as a boon, it has become a hindrance for start-ups as most entrepreneurs limit cost of resources by reducing manpower. The strict definition of Start-ups by the Indian government recognised only 502 out of 1368 applications as start-ups. An even smaller number- 111, was considered for tax benefits.

Moreover, tax benefits are really illogical because they specifically assume that the start-ups make profit in their first three years. Statistics, however, point out that only a small percentage of start-ups succeed at all, let alone make profits so early.

Also as a result of the government of India introducing policies to support FDI, several huge MNCs having large amounts of capital come and operate in India, snatching the opportunity from small Indian entrepreneurs.

All these operational issues only provide a hostile business environment, instead of an enabling one.

Let’s relate now to the well-known cash-crunch. Finance, to young start-ups comes mainly through VCs and angel investors. Many companies who have what it takes to make it work fail to get funding through VCs because the investment process is a complicated one and potential companies are vetted out thoroughly.

Another angle of discouragement is that the average VC stake is around 35%. When in the initial tender period of business, start-ups struggle to simply survive, providing such a high stake is irrational and completely out of question. Crowdfunding (providing finance to start-ups through audience engagement), is a blooming concept in the foreign countries but has not set sail yet in India.

Also, a study suggests that if a VC invests Rs. 100 in start-ups, then in a couple of years, the investor gets Rs. 700 in Israel, Rs. 500 in the U.S., but only Rs. 110 in India. Taking into account service companies and rates of inflation, there results a net loss to the investor in India. Why, then, would he want to invest in Indian start-ups.

Read More >>  http://edtimes.in/2018/02/why-do-indian-startups-fail/

Why Worry About Infringement – Things To Do First

By: Michael J Foycik Jr. 
June 3, 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.

You've seen the topic of patent infringement in the news.  Should you be worried?  If you are, here's some things to do that should minimize your risk.

If your product needs a component that is patented, you have two options.  One is to buy that component from the patent owner or from an official licensee.  Why?  It carries an implied license.  The other option is to contact the patent owner and negotiate a license, in which case fees may be small.

What if there's nothing out there like your product, how will you know if you should worry?  You can do a right-to-use patent search.  This is different from a normal patentability search, because you're not worried about patentability – you're worried about infringement.  In a right-to-use patent search, you will search for patents that are expired, meaning more than 17 years old.  If you can find the component or feature that is of interest, then you can rely on it and have a right-to-use.  For a quick and easy patent search, try going to any patent site that allows searching, such as the official uspto site or Google® patents.

Read More >>  http://internationalpatentservice.com/Why-Worry-About-Infringement.html

INTELLECTUAL PROPERTY TAILWINDS CONTINUE TO FAVOR SECTION 337 ENFORCEMENT ACTIONS BEFORE THE INTERNATIONAL TRADE COMMISSION

By: Jon Redway 

Section 337 intellectual property enforcement actions before the International Trade Commission (“ITC”) continue to gain in popularity.

The ITC has long been a popular forum for private parties seeking to enforce their intellectual property rights and stop the importation of infringing goods into the United States.  It is easy to see why.  The ITC is particularly well-known for fast proceedings. Most investigations are concluded within a year while a good many are completed in even less time.  The ITC is also utilized because of its powerful exclusion order relief.  Products found to infringe intellectual property rights are excluded from entry into the United States.  The ITC also permits broad discovery of accused infringers and is quick to level sanctions on any party that refuses to cooperate.

Recent legal developments are raising the popularity of ITC actions further.

In a case of first impression, the United States District Court for the Eastern District of Wisconsin recently ruled that findings by the ITC in trade secret misappropriation claims enjoy preclusive effect in parallel District Court litigation.  See generally Manitowoc Cranes LLC v. Sany America Inc., 2017 WL 6327551 (E.D. Wisc. 2017). While this has long been known for other types of enforcement actions, such as trademark infringement, clear legal authority now exists for the first time in the area of trade secret misappropriation.  The broad scope of discovery available to Complainants through ITC proceedings, coupled with the enhanced sophistication of the Administrative Law Judges, cannot help but increase the chances of success, and, if desired, such success can now be carried forward efficiently in a subsequent District Court action.

In addition, the United States Supreme Court in combination with recent Federal Circuit authority have severely limited the geographic locations where a patent holder may file to enforce its patent rights.  See generally TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S.Ct. 1514 (2017); see also In re Cray Inc., 871 F.3d 1355 (Fed. Cir.  2017).  Today, a patent holder may bring an enforcement action in the geographic locations where the defendant is either (1) incorporated or (2) infringes the patent and maintains a brick and mortar business.  Unfortunately, this means a good number of patent holders can no longer enforce their patents in a home or “patent friendly” forum.  The ITC remains available as a “patent friendly” and home forum to any party who has a domestic industry within the United States, regardless of whether such party is a U.S. or foreign entity.

Third, many District Court actions are stalling in the early stages as the Patent Trial and Appeal Board, under the America Invents Act, reviews petitions for patent review and, in the majority of cases, conducts a separate trial.  See generally Lex Machina, 1/23/18.  Unlike District Courts, the ITC thus far has been unwilling to put its investigations on hold when an accused infringer challenges an asserted patent at the Patent Trial and Appeal Board.  See generally In re Certain Network Devices, Related Software and Components Thereof (337-TA-945) (August 16, 2017).

Finally, a successful patent holder before the ITC can be confident that accused product will be banned from importation into the United States.  In contrast, a successful patent holder in District Court may or may not obtain an injunction depending on whether or not the equities — as evaluated by the District Court – demonstrate that money damages are not adequate to compensate the patent holder.  See generally EBay Inc. v. MercExchange, 547 U.S. 388 (2006).

Now, more than ever, intellectual property holders harmed by the importation of infringing goods should look to the ITC to protect their rights and businesses against the harm of infringement.

Source >> http://iplitigationblog.dickinson-wright.com/2018/02/13/intellectual-property-tailwinds-continue-favor-section-337-enforcement-actions-international-trade-commission/

Costly Misconceptions About Trademarks

By: Michael J Foycik Jr. 
June 8, 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.

Getting a trademark is a great idea, but things may not be that simple.  There are some misconceptions that can cost time, money, or even loss of rights.

One common misconception is that a registered trademark is necessary to have enforceable trademark rights.  We are all familiar with registered trademarks – the kind with the ® registration symbol.  But, trademark rights normally arise from actual use, even for unregistered trademarks.  State courts can enforce such rights arising from actual use, even in the absence of a federally registered trademark.  No registration, no problem – sometimes.

Getting a registered trademark requires filing a trademark application.  Choices need to be made right at the start: actual use or intent-to-use; type of goods/services; logo or word mark.  These choices can have profound consequences.  Even the U.S. Trademark Office recommends having an experienced trademark attorney help with those choices – you'll see the warning for that in the online trademark  application filing forms and elsewhere.

Actual use sounds better than intent-to-use.  Maybe so - unless there is a conflict with another trademark filed on an intent-to-use basis.  Then, surprisingly, the owner of the intent-to-use to application is permitted to introduce evidence of events that show an intent-to-use that has occurred before the application's filing date.  The actual-use applicant does not have the same rights.  Such evidence of intent-to-use can be scant: a mere mention at a business meeting, or an order for design of the mark, for example.  This is peculiar to federal trademarks; state courts can apply their own standards and might well decide specific cases differently.

Choice of goods/services is important: more is better, right?  Not so fast.  Listing multiple catergories is all good and well, until you have to prove actual sales.  Sure, a Statement of Use might work with the U.S. Trademark Office, but at a cost: forfeiture of rights if untrue.  When it comes time to enforce your trademark rights against an infringer, it may become necessary to have proof of use in specific categories of goods.  Listing a few categories of goods is fine, and once you get your trademark registered your future use in other categories will allow you to file further trademark applications for those additional uses.

Read More >> http://internationalpatentservice.com/Costly-Misconceptions-About-Trademarks.html

Pick the Right Intellectual Property Law Program

By: Ilana Kowarski

Intellectual property plays a critical role in American life. According to a U.S. Patent and Trademark Office report, IP industries account for more than 38 percent of the gross domestic product.

It's no surprise then that intellectual property law – which protects people's ownership claims to their ideas, inventions and works of art – is a growing field.

Intellectual property attorneys say their skills are in demand, and experts note there are opportunities to practice IP law within any industry that involves human creativity. This means a wide array of commercial legal jobs, particularly in the rapidly expanding high-tech sector, and jobs that involve international litigation to resolve the significant number of disputes between U.S. and international companies.

[Discover what a typical day is like for an intellectual property attorney.]

This legal field is likewise becoming more central to important U.S. policy disputes, IP attorneys say. Jon Kappes, a patent lawyer and lecturer at Arizona State University's Sandra Day O'Connor College of Law, says "IP law, particularly patent law but also copyright and trademark, has in recent years become one of the most dynamic areas of the law."

Kappes says congressional members regularly propose revisions to the nation's IP laws, and there are a growing number of Supreme Court cases on this topic.

For law school hopefuls who enjoy science, art or entertainment, experts say this discipline may be an attractive option. IP law is also essential for future business attorneys to fully understand, since patents, copyrights, trade secrets and trademarks are invaluable to businesses.

[Consider a legal career focusing on either health care or intellectual property.]

"If students are interested in sort of a rapidly changing, cutting-edge area of practice, I can’t think of one that is evolving at the rate of intellectual property," he says.

Experts say that law schools vary in how well they prepare students to practice IP law. Here are three signs of a strong intellectual property law program.

1. Key courses: When exploring potential law schools, experts suggest reviewing the available IP courses. Students should make sure they can take courses on how to apply for a patent, challenge a patent and file a lawsuit alleging the violation of a patent, experts say.

Experts also advise students to look for a comparative IP law course that discusses how U.S. law on this topic differs from that of other countries. This is marketable knowledge, they say, because prospective lawyers can use this information as attorneys for multinational firms that require patents, copyrights and trademarks in multiple countries.

Benjamin Katzenellenbogen, partner and chair of the recruiting committee at the Knobbe Martens IP law firm, says future business lawyers also need to take IP courses so they can understand and flag potential problems for the companies they represent.

2. Specific training: Experts say another sign of an exceptional IP law program is whether it allows students to gain field experience through clinics, practicums, externships, clerkships or internships.

Applicants should target schools with experiential learning opportunities in the specific area of IP law that they are most interested in, whether that's trademarks, patents, trade secrets or copyrights. It's also valuable, experts say, to write for an IP law journal and publish articles on a particular specialty within intellectual property, so applicants should target schools with these types of legal writing opportunities.

Kappes also recommends prospective law students look for IP law programs that participate in the United States Patent and Trademark Office's Law School Clinic Certification Program. This allows students to help with federal patent or trademark applications if they are supervised by a licensed patent or trademark attorney.

[Learn why law schools prefer science, technology, engineering and math majors.]

Read More >> https://www.usnews.com/education/best-graduate-schools/top-law-schools/articles/2017-09-28/identify-the-right-law-school-for-an-intellectual-property-law-career

Three Things You Should Look For In A Patent Attorney, With Handy How-To Guide

By: Michael J Foycik Jr. 
June 3, 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.

Getting a patent attorney or patent firm?  Get the name of the individual attorney who will personally do the work on your case.  You'll wish to know whether the patent attorney is registered; is qualified in the relevant technical arts; and has a successful track record.  The following explains how.

Why do we care about this?  Because once a patent application is filed, it will be examined by a patent examiner.  Most applications receive an official action with some kind of rejection or objection.  Many such rejections and objections can be overcome, some more easily than others.  Not every patent application is allowed, and therefore the skill of the individual patent attorney comes into play.  The patent attorney must be capable of making convincing legal and technical arguments in support of patentability.  And, the patent attorney must be skilled at claim drafting: amending a claim skillfully may overcome a rejection or objection.  Failure to skillfully respond can result in greater expense and may fail to result in obtaining an issued patent. 

Is your attorney/firm experienced, with many good results?  Since the attorney or law firm name is printed on the front of issued U.S. Patents, you can easily find out what type of patents they handle, and how many have issued.  You can find out by using the patent search feature on the site www.google.com/advanced_patent_search; type in the name of the attorney in the top blank.  It should find all issued patents with that name in it.  You can do this more precisely at the official U.S. Patent Office site www.uspto.gov, by going to that site and in the upper right corner click the button “search for patents” where you'll get several databases to choose from.  Select the first one, and a search box comes up allowing clicking on the “all fields” button and changing it to “attorney or agent.”

Read More >> http://internationalpatentservice.com/Three-Things-You-Should-Look-For-In-A-Patent-Attorney.html

How Intellectual Property Works

By: THOMAS L. PETERSON

The phrase intellectual property (IP) refers to the bundle of legal rights that arise from the creative genius of the human mind. IP rights play an important role in the economic prosperity of a country and serve as a motivating force for creative individuals to share their genius with society. Like real and personal property rights protect one's ownership interest in tangible objects, such as land and automobiles, IP rights protect one's ownership interest in intangible objects, such as the idea behind an invention, the music score for a Broadway play and the name or logo used to brand a product. Without enforcement of these rights in the law, it would be difficult for society to prosper and grow. In this article, you will learn what intellectual property rights are and the differences between its various forms.

When most people think of intellectual property rights, patents, trademarks and copyrights come to mind. This core set of IP rights reward and protect the creative works of inventors, authors, owners and sellers of goods and services in the marketplace. While the legal principles that underlie each of these rights are distinct, they each share a common set of principles.

An award of patent, trademark or copyright protection requires a delicate balance between the interests of the inventor or author and the interest of society as a whole. This balance is very much like the tradeoff required by zoning laws, which attempt to protect the ownership interest and exclusive right to use that a land owner has with society's interest in the limited use of the owner's land for society's greater good. Public utility easements and right of ways are examples of this balance.

The grant of a patent on an important invention of a lifesaving drug represents a similar set of tradeoffs. Is it fair to the inventor to allow society free access to the patented drug? Is it fair to society to be denied access for its greater good? It is the role of intellectual property law to harmonize these seemingly conflicting interests.

Intellectual property rights also foster a competitive marketplace. They do so by encouraging disclosure of innovation through protecting the fruits of that innovation for a period of time. Disclosure allows others to build and improve upon prior innovation so that the state of the art continues to evolve and develop. Without the benefits provided by intellectual property protection, the market place would not operate as effectively. Imagine what the world would be like if every competitor had to continuously "reinvent the wheel" rather than being able to refine and improve upon the works of others.

Finally, intellectual property rights are regional in nature and the conditions of their grant and enforceability are governed by the laws of each jurisdiction. A U.S. patent can be only granted and enforced in accordance with the laws of the United States. A trademark can only be registered and enforced in Canada in accordance with the laws of Canada, and a copyright can only be registered and enforced in Mexico in accordance with its laws. While there is a desire to be somewhat uniform and consistent, countries have different approaches to intellectual property rights protection. Variations in the procedure for obtaining IP rights account for a large percentage of these differences, rather than the differences in the substantive rights granted in each country.

The words "patent" and "trademark" are often used interchangeably. Many times, we hear that a patent is used to protect a logo and that a trademark is used to protect an invention, and vice versa. While patents and trademarks may be associated with the same product, the two words have very different meanings and refer to very different forms of intellectual property rights. They can seldom be used interchangeably, as the underlying rights that each protects is quite different in nature.

Read More >> https://money.howstuffworks.com/intellectual-property.htm

Get a Patent, Sue Competitors – Can it Really be that Easy?

By: Michael J Foycik Jr. 
May 27, 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.

True, a patent confers a sort of monopoly.  Also true, one of the intentions of patent law is to reward an inventor with a competitive advantage.  But, exactly what does that mean, and is it that easy?

Patent rights are defined by their claims.  A competitor infringes a patent if their competing product has each and every recited element of at least one claim of the patent.  That competing product will still infringe if it has more elements, but not if it has fewer than recited in that claim.  Sometimes, an element in a patent claim can be stretched a bit by a court of law, to cover equivalent structures.  So far, so good.

But, there are defenses to allegations of patent infringement.  For example, the competitor might be able to show their product is the same as that shown by an expired patent.  So, expired patents can provide protection to your competitor, since once a patent expires it becomes part of the public domain.  Other defenses may also arise from a competitor's own prior patent.  Or, the competitor may be able to invalidate your patent, for example based on other prior art or issues of fraud.  Just owning a patent might not be enough in these cases.

Let's say your competitor does infringe, has no valid defenses, and cannot invalidate your patent.  Great, right?  Not so fast – patent litigation costs real money, sometimes big money, so if you sue it has to be worth it.  Small time infringement would likely result in very small damages, and your litigation costs could easily exceed the damages you recover.  It may pay to wait until damages have mounted, or it may be necessary to simply overlook small or token infringements.

Read More >> http://internationalpatentservice.com/Get-a-Patent-Sue-Competitors.html

A Practical Guide to Startup Funding

By: Irwin Stein & Gene Quinn 
February 5, 2018

You have done everything right. You’ve invented a new, exciting and potentially revolutionary technology. You’ve responsibly filed patent applications on your innovations along the way, securing early priority dates with solid, thorough, comprehensive filings. Now you are at the edge of success – if only you can acquire the funding you need.

This is where venture capital comes into play, at least in theory. But technology VCs can be fickle (to put it politely). What is hot one minute is not the next. Today some are predicting that many tech companies will soon choose to relocate to China, which in 2016 saw as much venture capital investment as in the United States (approximately $50 billion according to Silicon Valley Bank), and where VCs are far more willing to fund an array of projects largely due to the massive commercial marketplace.

What if your startup is a university startup based on university developed and patented technology? The goal is not only to create a domestic corporation, but also to create a local corporation that leverages university technology. While there will be many trials and tribulations, if successful that university startup will benefit the entire region, bring high paying jobs to the community, return capital to the university to further research efforts, and continue to allow professors to teach and students to learn on the cutting edge of technological innovation.

Moving to China isn’t an option for a university startup, regardless of the technology and likelihood of attracting funding from venture capitalists. Similarly, many other technology companies simply can’t, or won’t, make the choice to chase money to China. Still with investment for Internet of Things (Iot) softening and hardware companies finding themselves largely out of options, many tech startups must become more creative.

Equity Crowdfunding

Fortunately it is not as difficult to find investors as you may think. Equity crowdfunding is on the path to surpass venture capital as the preferred way for startups and small businesses to raise capital.

In a nutshell, equity crowdfunding is the sale of equity (or debt) in your business directly to investors using an online platform instead of a stock brokerage firm.  It is also less expensive than hiring a brokerage firm. Although direct to investor funding over the Internet has been around almost a generation, it became much more feasible (and popular) with the JOBS Act of 2012.

The JOBS Act provides for three regulations that govern distinct types of offerings. The offerings differ by how much money you can raise and from what type of investor you can raise it from. First, Regulation A (Reg. A) permits offerings of up to $50 million dollars from any investor. Second, Regulation Crowdfunding (Reg. CF) allows companies to raise up to $1,070,000 per year directly from the general public. Finally, Regulation D. (Reg. D) allows companies to advertise and solicit investments from accredited investors (i.e., those whose income is over $200,000 a year or possess over $1 million in assets outside of their primary residence). Reg. D has become the primary vehicle for companies seeking to use crowdfunding.

Read More >> http://www.ipwatchdog.com/2018/02/05/practical-guide-startup-funding/id=93257/

What Happens After Filing a Utility Patent Application

By: Michael J Foycik Jr. 
May 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.

One of the important but little-discussed subjects for inventors is what happens after filing of a Utility Patent Application.  Here's a brief guide.

Initially, the US Patent Office studies the application papers for formalities.  These formalities include such things as the signed forms, whether the drawings are sufficiently formal, whether specification required information is provided, and so on.  If any problems are found, a Notice is sent to the applicant, and a period for response may be set for those problems that can be corrected. 

The next stage is the patent examination itself.  This is where the patent examiner takes up the application for study.  Usually the patent examiner is an expert in the subject matter of the application.  The examiner will search the prior patent art, including patent publications, to locate the most relevant references to the invention as described in the claims.  The result of this will be a first Office Action, which is usually a statement of objections and rejections, but can sometimes be a first action allowance.

The applicant can respond to the first Office Action, and is normally given a set period of time to do this.  The response can include changes to the specification, drawings, and/or claims.  Such changes are usually to overcome objections and/or rejections, and to further emphasize the novel features of the invention.  Additionally, the applicant can provide remarks in support of patentability.

Of course, many other things might occur beyond those described above.  Those are less common, and though important, are not discussed in detail herein for the sake of brevity.  A short and incomplete listing is: restriction requirements, election requirements, statutory double patenting rejections, and/or non-statutory subject matter rejections.

Read More >> http://internationalpatentservice.com/What-Happens-After-Filing-a-Utility-Patent-Application.html

The ABCs of China Design Patents

By: Matthew Dresden

Design patents are increasingly becoming an essential component of our clients’ China IP portfolios. They’re reasonably priced, don’t take that long to acquire, and provide pretty good protection.

That said, it’s important to understand the limitations of a design patent. A design patent does not provide protection for a product’s functionality or inner workings. It does not protect a product’s manufacturing process. It does not even protect the materials or components used in a product. The only thing a design patent protects is the external appearance of a product. For this reason, the application for a design patent is short and sweet, with the substantive parts limited to orthographic drawings of the design and a brief description.

The main reason design patents can be acquired with relative ease in China is that they are not substantively examined. China’s State Intellectual Property Office (SIPO) only examines design patent applications to confirm that the drawings and description meet formal requirements, i.e., adequately describe the design. SIPO does not search to see if the design is the same as or similar to prior art. That sort of examination only takes place if the design patent is challenged.

Like other patents, design patents in China have a requirement of absolute novelty. If you have already disclosed or commercialized a product anywhere in the world, it is not eligible for design patent protection in China. This is a marked difference from trademarks, which can be registered at any time regardless of when use actually began. To be sure, it’s almost always a good idea to file a trademark as soon as possible, even before use. – it’s just not legally required. Design patents are also different from copyrights, which are protected at the time of creation even if they’re never registered. This disjunction can be confusing, especially when aspects of a design could (theoretically) be covered by multiple forms of IP. For certain products, the appearance of the product itself may be protectable under trademark, copyright, and patent regimes. That is rare, but it can happen and it lulls some of our clients into forgetting that though they are legally allowed to wait on filing a trademark or copyright (no matter how often we tell them not to wait) if they wait too long to file a patent they may be legally barred.

Read More >> https://www.chinalawblog.com/2017/11/the-abcs-of-china-design-patents.html

Myths and Misconceptions About International Patent Applications

By: Michael J Foycik Jr. 
May 9, 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.

Wondering about filing an international patent application?  There are some myths and misconceptions about international patent applications, including what that phrase even means.  Let's talk about that.

Myth: an international patent application can be filed that, when granted, turns into a patent giving patent rights in all countries.  Fact: there is no such thing.  This is probably the biggest patent myth.

Misconception: a PCT application is like a US patent application, and can turn into an issued patent.  Fact: a PCT application is more like a bookmark in time, holding the date for other, later applications called “national stage” applications.   A short explanation about PCT applications is in the following paragraph.

Most would think “PCT application” (Patent Cooperation Treaty application) when talking about international patent applications.  Yet it is not a traditional application in the usual sense of that word, and so is a little tricky to understand.  A PCT application is like a US patent application in some ways: it grants “patent pending” status; it confers rights to its filing date as a priority date for filing other patent applications; and, it grants a period of time in which to file other patent applications.  However, it is unlike a US patent application in that it does not directly mature into a patent, and the time period conferred is different.

Misconception: a foreign patent is equivalent to a US patent.  Fact: the protection afforded by a granted patent differs widely among countries.  For example, a US patent confers protection that is considered very broad, and legal rights are as strong as other property rights.  In some countries, a granted patent may have little practical value, or may be costly to enforce, or may only cover what is specifically shown and not variations.  It is important to know the legal rights conferred in a specific country, before filing a patent application there.

Read More >> http://internationalpatentservice.com/Myths-and-Misconceptions-About-International-Patent-Applications.html

This outfit wants startups to trade equity for patents from big tech players

By: Connie Loizos 

Aqua Licensing is a four-year-old patent advisory and transaction firm that typically works behind the scenes, helping companies sell their patents for a variety of reasons. But it has a new proposal for venture-backed startups that are in fundraising mode: it wants them to give big tech companies like AT&T and Lenovo some of their equity in exchange for patents that the companies no longer use but could prove useful for the startups.

Put another way, it wants to create a two-sided marketplace that helps big corporations find stakes in more startups, while also pushing startups to think from an early age about their patent strategy.

The initiative makes some degree of sense. As companies mature, they often need to think more about patents as a way to protect their business. (If a company has a patent on a product or service or idea, that’s one less patent an outsider can acquire to assert against it.)

Of course, it’s also easy to imagine the many obstacles to it working, starting with startups’ priorities. “This relies on startups thinking proactively in the early stages about a need for patents,” notes Greg Gretsch, a longtime venture capitalist and a co-founder of Jackson Square Ventures in San Francisco. “In my experience, that’s generally not top of mind for founders, and if you told them it would cost them equity, they’d probably be even less interested in engaging.”

Late last week, we talked with Aqua founder Mark McMillan to learn more about how he sees this working, and why he thinks Aqua can overcome some of these challenges. Our chat has been edited for length.

TC: You’re trying to match startups with patents or defensive patents, saying it will help them protect their innovations, as well as help them scale. What was the impetus for the idea?

MM: We were working with a major client last year and a discussion came up around the challenges of selling IP assets into startups. The startups don’t have a lot of cash to buy them, and VCs don’t necessarily want them doing strategic transactions that are ancillary. Meanwhile, the patent market is growing and people — companies — find themselves with assets that may be depreciating in value and costing them maintenance fees.

TC: What are some of the big companies that you’ve signed up to this exchange program?

MM: We’re announcing Lenovo, Rambus and AT&T today, but we have a large collection of participants that are prepared to sell to the right startup at the right price.

TC: How does this process work?

MM: Startups will submit their investment plan to us, just like they would to VCs. We have analytics capabilities that will help them find appropriate assets.

TC: Given these are young companies, how can you really know what patents make the most sense for them?

MM: We start by assuming a company has started working on its own unique patents, and get a read on the competitors it’ll be disrupting. If we can find patents that likely read on these competitors, the startup’s business plan then goes to the participating member (with the relevant patents). If that member is interested in the startup and would like to sell its patent in exchange for equity, the member then values its patents and lists a price that the startup can accept or reject.

A final closing condition has to be the closure of a qualified venture funding round and [the big tech company’s] commitment to invest the proceeds of [that patent sale] into that round. It also has to give the startup at least 90 days to complete the funding round. After that, the [big tech company] gets the same terms as the VCs in the round and becomes a minor syndicate player, and the startup gets full ownership rights to the IP assets.

TC: Some startups may scoff at the idea of giving a big tech company so much information about their business, when they don’t know at the outset that they’ll want its patents.

MM: Some have asked for NDAs already. We can tell them who we’ve matched to them before we send off their business plan.

TC: And if the startup doesn’t want to do a deal anyway, because maybe the price isn’t right? Do they then need to worry about those patents being used against them in some way?

MM: The patents in the pool are for sale. The companies aren’t looking to assert these assets. If they don’t accept the offer, nothing happens.

TC: How do the companies establish how much their patents are worth?

MM: They have internal methodologies. They also look at what other assets have been [fetching] in the market.

TC: How are you paid?

MM: We receive a transaction fee from the seller of the asset based on the value of the asset.

TC: How many patents are available to you right now?

MM: 60,000 as of today; we have two other big companies coming online that we haven’t announced that will [bolster that amount].

TC: Other than through press stories like this one, how do you plan to get startups into this marketplace? Who’s going to help you convince them they should do this?

MM: We definitely have to educate startups that this is available to them. We’ve spoken to many VCs and CEOs and investment banks and private equity funds, and there’s a general sense that a strong patent portfolio adds value to a startup. We see these patents as immediately accretive, too. It gives them defensive insurance and probably increases the value of their business as they are raising venture funding.

TC: How much ownership of the startups are these big companies expecting to get in exchange for their patents?

MM: It will be a fairly small level of participation. It depends in part on the company’s age. We’re looking to participate in venture-structured rounds — so we’re not talking about seed-stage companies but rather companies that are assembling A and B and C and D rounds. Most of the [big tech companies] want to cap their participation at 5 to 10 percent of any round, and it could be less, depending on the asset.

TC: You mentioned that some patents are depreciating in value. Is there a larger trend at play here?

MM: Patent [values] are down. There are a lot of assets out there. There’s some decent value out there for acquiring IP, but patent reform [is having an impact on] non-practicing entities [also known as patent trolls], who are less active right now.

Large companies are looking for operating companies to place their patents versus [selling them] to non-practicing entities. It’s a much safer place to divest their assets.

TC: I’m guessing this isn’t the first attempt to create this kind of marketplace.

MM: There have been other attempts at creating defensive patent pools, but they’ve involved giving up rights to check a book out of a library instead of own it, whereas this is a patent sale for equity.

This is new, this takes scale. We’re going to try to break down barriers to make this ecosystem work.

Source >> https://techcrunch.com/2017/08/02/this-outfit-wants-startups-to-trade-their-equity-for-patents-from-big-tech-players/

Why Your Startup Company Might Need an International Patent Application; an Attorney's View

By: Michael J Foycik Jr. 
May 05, 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.

Your startup company has a valuable invention, and you're considering filing a US Patent Application.  But, you're wondering whether or not to file an International Patent Application.  The answer to that depends on various factors, as follows.

Worried about foreign competitors sending infringing products into US market?  Your US patent application can stop them at the border if your file a complaint with the US Customs Service and meet the requirements.  So, if your market is strictly the US market, then you might not need an international patent application.  That might include a PCT application or an EU application.

Expecting a big success, or have investors expecting a big success?  Then you might just need an international patent application.  That's because you may be exporting goods into other countries, and would want patent protection in those countries.

When going after international patent protection, there are several ways to go.  There is a PCT (Patent Cooperation Treaty) filing, which gives a kind of patent pending status in any designated foreign countries for roughly 30 to 32 months.  This will require a national stage patent filing in the designated countries during that pendency.

Read More >> http://internationalpatentservice.com/Why-Your-Startup-Company-Might-Need.html

NAME THAT PLANT – THE MISUSE OF TRADEMARKS IN HORTICULTURE

By: Tony Avent

When is a plant name not a plant name? The sad answer is more often than not in our current world, where marketing comes first and accuracy second. The current plant naming trend often violates the International Code of Nomenclature for Cultivated Plants (ICNCP), US Trademark Law, and occasionally the US Federal Trade Commission (FTC) rules relating deceptive business practices.

To understand the problem, let's go back in time to 1952, when the first International Code of Nomenclature for Cultivated Plants (since reported to as the Code) was published to standardize the confusing way in which plant cultivars were named. The Code sets forth the way people around the world communicate about plants, and as long as everyone abides by the Code, problems in horticultural communication are minimal. Unfortunately we have moved into a time where more and more people are under the Code due in part to both ignorance and greed, creating a taxonomic nightmare.

The current trend of improper and confusing use of cultivar names and trademarks, both by growers and marketers of plants, has done an irreparable long-term disservice to the industry and the public by hopelessly confusing the naming of plants and the communication about these plants. Even in the latest edition of Dr. Michael Dirr's wonderful Manual of Woody Landscape Plants (5th ed.), It is clearly evident, even someone as knowledgeable as Dr. Dirr does not always know which is a cultivar name and which is simply a company's marketing name.

The Nomenclature Code

To understand where the confusion lies, let's start with a few basics about plant taxonomy. The naming of cultured plants is governed by a small book, the International Code of Nomenclature for Cultivated Plants 2004. In the Preamble to the Code, the purpose is stated: "The Code aims at the provision of a stable method of naming identifiable groups of cultivating plants, avoiding and rejecting the use of names that may cause error or ambiguity or throw the above discriminates into confusion. " While the Code is not a legal document, such International Codes are usually recognized as legally valid in most court disputes.

In Principle 3, the Code states, "Each cultivar or group with a particular circuscription can bear only one accepted name, the earliest that is in accordance with the Rules." Principle 4 of the Code brings up another important point, "Names of plants must be universally and freely available for use by any person to denote a distinguishable group of plants. In some countries, plants are marketed using trademarks. of a person or some corporate body and are not there before freely available for any person to use; consequentially, they can not be considered as names. "

Article 19 of the Code further deals with cultivar names. The most pertinent section is Article 19.13, which states, "For a cultivar name to be established on or after 1 January 1959, its epithet is to be a word or words in a modern language other than Latin, except as permitted under Article 19.6, 19.7, and Article 19.24. " There are many other requirements, but these are not pertinent for discussion of the trademark issue. Now that we understand the basis for naming plants, let's look at how the improper use of trademarks has made a mockery of the spirit of the Code.

Trademarks

Trademark names are intended to be used only to design product origin or brands. Trademarking can be as simple as writing ™ after a name, but for a more sound legal footing, the trademark is registered with the United States Patent and Trademark Office (USPTO). The trademark then becomes a Registered Trademark® for a cost of about $ 250 (unless you have it done by a lawyer). Trademarks are owned by an individual or company and can not be affixed to an individual item. They are valid for 10 years if used correctly in commerce, and can be renewed indefinitely for 10-year periods.

A classic example of a properly used trademark is Tylenol®. If you look through a drug store, you will find the company had registered Tylenol as a trademark. The product that you purchase, however is not TYLENOL, but instead one of many products, such as TYLENOL Cold and Sinus Medicine or TYLENOL Pain Relievers. In most of these products, the generic name is acetaminophen. If a company's trademark name becomes recognized by the public as the product itself (ie generic), the trademark becomes invalid. Several commonly known examples of trademarks being invalidated because they have become generic in the minds of the consumer include: aspirin, cellophane, thermos, and escalator. Many other incorrectly used trademarks are still in effect, simply because they have not been challenged.

The current improper use of trademarks in the horticultural industry had its origin more than a half century ago. The worst culprits, in the early years, were the rose and bedding plant industry. The rose industry seems to have been the first to use nonsensical, non-conforming names for plant cultivars, while the bedding plant industry completely thumbed its nose at the Code by not even bothering to come up with any cultivar names for most of their introductions. One of the most famous roses in horticulture is one that everyone knows as Peace. Surprisingly, there is no such plant as Rosa 'Peace'. The plant we grow under this name is actually Rosa 'Madame A. Meilland'. The trade name Peace was coined by Conard Pyle Nursery, and used to market Rosa 'Madame A. Meilland' after World War II to capitalize on the post-war sentiment. The plant became known in the public's mind as the Peace rose.

Some of the larger nurseries soon realized that regardless of the cultivar name of the plant, they could come up with their own proprietary (trademarked) marketing name and use these names to promote plants which already had valid cultivar names. The idea was to convince the public that the company's marketing name was actually the name of the plant. The next step in the downward spiral was when nurserymen began intentionally giving their new plants stupid nonsensical cultivar names. Subsequent plant promotions would often only tout the marketing name, causing the consumer to often not realize the plant had a real cultivar name. The cultivar name, if included at all in ads and tags, would be printed in very small print in comparison to the "marketing name". The entire idea is for the company's marketing (trademark) name to become the generic name of the product in the consumer's mind. The practice of using nonsensical names violates the entire purpose for having an International Code of Nomenclature for Cultivated Plants while the use of trademarks as generic names violates the legal use of trademarks.

Some breeders blindly follow such trends in choosing nonsensical cultivar names, not realizing that these names are the only official name of their new introduction. A UK primrose breeder, Geoff Nicolle, wanted to name and patent his new primrose after his granddaughter Katy McSparron. Instead he patented it under the cultivar name Primula 'Prinic' PP 12,892 and marketed it under his granddaughters name. I have corresponded with his granddaughter who is furious and stubbornly insistent that the plant is named after her. Unfortunately, it's becoming quite common where people who are to be honored or commemorated with a plant being named after them are left with nothing but an invalid trademark with no plant attached. A great new plant is then stuck with a nonsensical name.

As I mentioned earlier, Article 19.13 of the Code does not allow for the use of these nonsensical names. In contrasting itself, however, the current version of the Code now allows nonsensical code name exceptions (Article 19.27). This is where political pressures have crept into what should have remained a scientific document. Privately, one of the authors of the Code told me the breeders of certain worldwide crops such as alstroemeria, carnations, and roses would raise too much of a fuss if the nomenclature committee made the words in the Code any stronger. In other words, the authors of the current edition of the Code caved to those who were already violating the Code, similar to the concept of changing laws so that the number of criminals diminish.

Many breeders and growers of new plants properly choose to try and recoup their investment in producing a new plant by securing a royalty payment from those producing the plant. Plant patents are the only legal means of protecting a proprietary plant. Patents are good for 20 years (formerly 17 years) after the date of patent filing. After this time, anyone can legally propagate and sell a previously patented cultivar. Patents require quite a bit of paperwork and a fee that many smaller growers may find a bit expensive. Many growers have the false impression that trademarks give them an easier and cheaper alternative to patents, but this is not the case.

To further complicate matters, some plants are both patented and subquently marketed under a company's trademark name. Some nurserymen think they can get the 20-year protection the plant patent provides, plus a further measure of protection by trademarking a second (marketing) name for each plant. Once the patent expires, others could propagate a previously patented plant, but in theory could not sell it under the company's trademark name. A classic example is Monrovia's Limemound spirea. At the end of its patent protection in 2003, everyone could propage Spirea 'Monhub' PP5834, but Monrovia assumed no one else could then legally sell the plant as Limemound spirea. Unfortunately both nurseries and many trademark lawyers who advise nurseries seem not to understand basic trademark law.

Trademark law states that a trademark name can be used with (not for) any product produced by the owner of the trademark. For example, if the owner of the trademark was growing four different gold spireas or 100 different trees, they could all be marketed under the same trademark name, despite being distinct cultivars. Trademark names belong only to a company, and not to a particular plant or product. In other words, a single cultivar named Limemound spirea does not exist.

Article 12.1 of the Code cites Rosa 'Korlanum', which is marketed under three different trademark names, each owned by a different company, Surrey, Sommerwind, and Vente D'ete. This causes the public to assume that there are three different roses, when they are all the same plant. In the case of Loropetalum chinensis 'Hines Purple Leaf', it is marketed under at least two different trademark names, Plum Delight, and Pizzaz. This practice is becoming more common as the lack of understanding about proper trademark use deteriorates. Are you confused yet?

The issue becomes more confusing the more you investigate. Do you remember the Cornus florida x kousa hybrid dogwoods from Elwin Orton's breeding program at Rutgers? They were patented with the cultivar names of C. 'Stellar Pink' PP7207, C. 'Galaxy' PP7204, C. 'Aurora' PP7205, C. 'Constellation' PP7210, C. 'Rutfan' PP7206, and C. 'Rutlan' PP7732. As you can see, all of the dogwoods except two were given sensual (word or words in a modern language) cultivar names. Interestingly enough, once the dogwoods hit the market, the original sensory cultivar names were changed by the breeder to nonsensical names and the original sensory cultivar names were then trademarked. For example, Cornus 'Stellar Pink' became 'Rutgan' (Stellar Pink), 'Galaxy' became 'Rutban' (Galaxy), 'Aurora' became 'Rutdan' (Aurora), 'Constellation' 'Rutlan' was marketed as (Ruth Ellen) and 'Rutfan' was marketed as (Stardust). This violates the International Nomenclature Code; section 19.13 as cited above and # 9 of the Preamble, which states "The only proper reason for changing the name of a distinguishable group of plants are either a more profound knowledge of the facts resulting from adequate taxonomic study or the necessity of giving up a name that is contrary to the Rules of a Code. " Therefore the correct names for each of these hybrids were the original cultivar names under which they were patented. The reason for the name switching is so that once the patent expires, anyone can sell the dogwoods under the nonsensical names, but in theory they can not use the breeders trademark name. By trying to make sure everyone knows the plants generically by his trade name, the breeder has, however, intentionally rendered his trademark invalid.

If you visit the United States Patent and Trademark Office website, http://www.USPTO.gov , you will see the Patent Office itself has no understanding of either US Trademark Law or the ICNCP. A classic example of this confusion occurs in the patent plant, Itea virginica 'Sprich' PP 10,988. After the fact the fact the cultivar name of 'Sprich' is not a "word or words in a modern language" (Article 19.13) and therefore violates the spirit of the Nomenclature Code, it has become the legal cultivar name once it was indicated as such in the patent application. If you read the patent application for I. virginica 'Sprich', it states, "The new Itea virginica cultivar is being marketed under the trade name Little Henry." Because a trademark can not be permanently affixed to a particular item, it shows the USPTO does not even understand their own regulations.

This use of trademarks as secondary "pseudo-cultivar" names for a particular plants violates both the spirit of the Nomenclature Code, as well as US trademark law. Trademark law clearly states if a trademark name becomes the common use (generic) name of a particular item, then the trademark becomes invalidated. Trademark lawyers have long advised nurseries to write the cultivar name in single quotes and smaller type and then the trademark name without single quotes in larger type. In their minds, this keeps their trademark valid. Nurseries are also told by their trademark lawyers as long as they enforce their trademarks, by making sure the cultivar name is always included with the trademark name, their trademarks would remain valid. This bizarre thinking, however, defeats the entire reason for improperly using trademarks, which is to trick the public into thinking the trademark name is the generic name of the product. It is this intentional deceit that will one day bring the Federal Trade Commission onto the horticultural scene.

A properly used trademark would be one such as Star® Roses, which is used to market a large group of roses under a single umbrella trademark. This trademark would have remained valid if they had not then began using their trademark to also market individual cultivars such as Rosa 'Wezaprt' as Bronze Star ™ Rose and Rosa 'Wezlavn' as Silver Star Rose.

Court Cases

Until 2006, one of the few cases that might have gone to trial was when Iverson Perennials tried to enforce a legal trademark they owned for the name Scabiosa 'Butterfly Blue'. The unpatented plant had been previously published with 'Butterfly Blue' as the cultivar name, so they were wrong in both trying to trademark a cultivar name and also by using their trademark improperly on a single product. Fortunately, a number of nurseries banded against Iverson's and the trademark infringement case was abandoned before it reached court.

Finally, in 2006, a case of improperly used trademarks actually reached the courts in Van Well Nursery Inc. et al. v. Mony Life Insurance Company et al. (decided March 16, 2006). In this complicated case, Mony Life Insurance Co. acquired property from A / B Hop Farms due to a defaulted loan. The property contained apple trees known as Smoothee and Scarlet Spur. When Mony Life Insurance Co. tried to sell the land by mentioning that it contained Smoothee and Scarlet Spur apple trees, Van Well Nursery and Hilltop Nurses sued for trademark infringement. Their contention was that the apples trees were actually the cultivars 'Snipes' and 'Gibson', although they had marketed them under the trademark names Smoothee® and Scarlet Spur. The Lanham Trademark Act, section 15, says is not the actual misuse of the trademark for a single product that makes it invalid, but instead the perception of the public that the trademark name is the product itself that renders the mark invalid.

The judge in the Van Well case correctly ruled that in the public domain, the apples were known as Smoothee and Scarlet Spur, and therefore the legally registered trademarks were now invalid, because they had become know as the product instead of the source of the product . (The Smoothee trademark was actually not immediately canceled, only because the owner was not a party in this particular lawsuit.) The Scarlet Spur trademark was canceled despite the fact the trademark owners had followed their legal advice and always included the registered trademark symbol along with the correct cultivar names when advertising the apples. The case hinged on the age-old adage in determining the validity of a trademark. A trademark must tell "who you are" and not "what you are."

This case has huge implications for those in the nursery industry who have improperly used trademarks to market individual plants for the last several decades. The case illustrates that despite best faith efforts on the part of the trademark owners to keep their trademark names valid, it is impossible once the public views the trademark name as generic. Not only will the industry be left with shameful nonsensical cultivar names that will exist as long as the plants are grown, but nurseryman who has spent large sums of money on trademarks and trademark attorney fees and then used the trademarks in violation of US Trademark Law, will be left feeling the financial sting with no way to recoup their losses. Once the Federal Trade Commission (FTC) wakes up and is urged to act as they were recently with the discrepancy of advertised and delivered pot sizes, those who market individual plants under trade names will have another fight on their hands.

It would be nice if nurseries, who are indeed ethical, but Misinformed would take the lead in reversing this terrible trend. It would also be a nice change if groups such as the Perennial Plant Association (PPA) and the American Nursery and Landscape Association (ANLA) would take a strong position on the long-term detrimental effects of dual plant naming through trademarks, both to the industry and the consuming public. The best way to end this trend is for reputable nurseries to take a public stand against this confusing practice for the long-term good of horticulture. Short of this, it is going to be up to the Garden Writers Association (GWA) and the American Public Gardens Association (APGA) to identify plants by their one and only cultivar name, and hopefully at the same time embarrass those who persist in making up stupid nonsensical names for good plants and illegally using trademarks to deceive the public.

Source >> https://articlesly.com/name-that-plant-the-misuse-of-trademarks-in-horticulture/

The AIA And Its Impact On The Independent Inventor

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.

The AIA And Its Impact On The Independent Inventor
By Michael Foycik ©2011
Used with permission.

The Leahy-Smith America Invents Act, AIA for short, proposes sweeping changes to the U.S. Patent legal system and to the U.S. Patent Office itself. The “first to file” provision is of the greatest importance to independent inventors. Most of the other changes are, more or less, administrative in nature, and will be covered in future articles. This article takes a brief look at the issues affecting the independent inventor, and especially the “first to file“ provision of the AIA.

Simply put, the “first to file” law would mean whoever is first to file a patent application will be deemed the true inventor. Sounds simple, but the law also provides for a possible “derivation proceeding” which would have a very limited scope.

What does this mean for the independent inventor? For one thing, it means even the best confidentiality agreements and NDAs (non-disclosure agreements) will have questionable value. It will be difficult, and very costly, to contest inventorship under the AIA. How costly? It depends, but even now the costs of contesting inventorship may be out of reach of most independent inventors; under the AIA, far greater hurdles will exist, and the cost will be higher.

Under the AIA, independent inventors would be well advised to first file a patent application (provisional or utility, either will suffice) before showing the invention to anyone.

This is already my recommendation to inventors: file a patent application first! Do this before you show it. Do not trust in agreements or contracts to protect your rights. Too costly, you say? Not true! A provisional patent application is very cost effective, gives substantial rights, and the government filing fee is relatively low. And, if you can’t afford the government filing fee, there are even some work-around solutions for that, which I may write about in a future article.

Raed More >> http://internationalpatentservice.com/The-Aia-And-Its-Impact-On-The-Independent-Inventor.html

Trademark Disparagement? The Slants, The Redskins and the Supreme Court

By: Meghan Nugent

Acceptable Trademark Disparagement… or Disparagement at all?

People try to trademark all types of names, brands and slogans. The U.S. government, however, acts as the gatekeeper applying trademark law to decide whether or not those names or brands are worthy of protection or if they constitute trademark disparagement. One of the most newsworthy parts of trademark law is the “disparagement clause.” This clause allows the government to determine whether or not a proposed trademark is offensive.

Under U.S. trademark law, aka the Lanham Act, trademarks that disparage “… or bring … into contempt, or disrepute” any “persons, living or dead” are not allowed. In other words, any trademark seen as offensive by the U.S. Patent and Trademark Office (USPTO) will be rejected. The provision has halted the registration of many offensive trademarks over the years. (If you want to see some examples, run a simple search of the USPTO trademark database and you will see some of the ideas people have come up with!)

However, this June, the U.S. Supreme Court ruled that the disparagement clause within the Lanham Act violates the First Amendment. Read more here about how Three Early Supreme Court Decisions Shaped the U.S. Economy.

The case, Matal vs Tam, involved the Asian-American rock band The Slants, who filed an application for a trademark to register their band name with the USPTO. The office rejected the band’s application. Relying on the disparagement clause, the USPTO found the name “The Slants” was offensive toward Asian-Americans.

The Slants Fight the Disparagement Clause
The Slants said they wanted to “reclaim” a slur used against those of Asian descent. The band decided to appeal the decision. The first stop was the Trademark Trial and Appeals Board, the body within the USPTO responsible for hearing and deciding certain cases involving trademark applications and registered trademarks.

The board agreed with the trademark office. Undeterred, The Slants appealed the decision to federal court, where the band argued the disparagement clause violated the First Amendment’s guarantee of freedom of speech. The court agreed with the band upon those grounds. Standing by their original assessment and hoping to avoid being compelled to register the band’s name as a trademark, the USPTO then requested the Supreme Court hear the case. For more information about protecting your own unique name or brand, check out the Financial Poise Webinar: Choosing, Building and Protecting Your Brand.

Read More >> https://www.financialpoise.com/trademark-disparagement-and-the-us-supreme-court/

WHAT IS THE MEANING OF "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.

Attorney Advice on:  What is the Meaning of “Patent”
by Michael Foycik, registered US patent attorney
April 18, 2013     

An important legal question is, what is the meaning of “patent” and, how is it relevant to inventors and businesspersons.  The simplest answer is that a patent is a monopoly for a limited time, which is granted by a governmental entity.

In the US, there are several main types of patent: design; utility; provisional.  But, what is the meaning of “patent” when there are several types?  Again, a short answer will be helpful, explained as follows.

A design patent covers the ornamental features of an invention which are non-functional - imagine an unusual perfume bottle shape as an example.  A utility patent covers only features which are functional, rather than ornamental – think of a car engine as an example.  A provisional patent is somewhat like a utility patent application but exists for only one year.   So, the answer to the question what is the meaning of “patent” is that it depends on the type of invention and the type of protection needed.

Raed More >> http://internationalpatentservice.com/What-is-the-Meaning-of-Patent.html

Do You Know the 5 Types of Intellectual Property?

By: Elizabeth Potts Weinstein

“Intellectual Property” (IP) are those assets of a business that are intellectual–in other words, not physical–such as copyrights, patents, and trademarks. But many business owners mix up the different types of IP, which makes it difficult for them to ask the right questions & learn how to make decisions to protect their creations.

Here’s an explanation of five different types of intellectual property, so you understand where they come from, how they are protected, and the differences between each.

1. Copyrights are creative works that have been fixed in a tangible form.

For example, these may include writings, songs, photos, video, paintings, sculptures, or audio recordings. “Fixed in a tangible form” means that it isn’t just in your head or something you speak or perform—it has been saved in some physical way (which may include in an electronic form). When multiple people create a work together, they may hold copyrights over their part of the creation (such as the lyricist and the composer of a song), or they may jointly hold the copyrights, such as two authors who collaborate on the writing of a novel. The copyright is usually held by the person who created it—even if it was paid for by someone else—unless it was a “work for hire” (which carries specific requirements according to the laws of each country).

In the United States, you need to register your copyrighted work with the U.S. Copyright Office if you want to sue someone in court, or if you want to have access to statutory damages at a later time. The cost is minimal ($35-100) and many people can handle the paperwork online themselves. It’s a great idea to reserve this for works that are important to your business and over which you’ll likely to want to actually enforce rights, such as an ebook or series of videos that you’re selling online. Filing a copyright registration on every blog post and photograph is not cost-effective or reasonable, but you may gather them in a collection and register the copyright on the entire project.

There are other rights related to copyright that are honored in certain jurisdictions. The European Union recognizes “performers’ rights,” where performers have the right to prevent recording, broadcast, or recording reproduction of their performance, for fifty years after the performance. The United States does not recognize performance rights under current federal law. Most countries besides the United States also recognize the “moral rights” of the author, where even if the author has licensed or sold rights to their work, they still have a right to attribution and to take their name off the work if it would hurt the author’s reputation.

2. Patents are grants from the government that give you exclusive rights over your invention for a specific amount of time, in exchange for full disclosure.

The moment the patent expires (twenty years from filing in the United States), anyone else can make generic versions of your work. Patents typically cover inventions like machines, electronics, methods of production, software, methods of doing business, chemicals, and pharmaceuticals. An idea isn’t patentable by itself. It must be novel, not obvious, useful, and “reduced to practice” (someone skilled in your industry must be able to read your information and make the product). That’s why you can’t patent the idea of a Star Trek transporter—no one can use your transporter blueprint to build an actual transporter (yet.)

If you have a patentable invention, you need to file a patent application as soon as possible. This is because in most places, the person who wins a dispute when one arises is the person who was first to file a patent application. In the United States, you apply for the patent with the U.S. Patent and Trademark Office (USPTO), and the process takes quite some time—sometimes years before you even receive a response (an Office Action) from them. A patent can cost thousands of dollars in fees and you almost always need a patent attorney or patent agent to handle it for you, both because of the cost and because of the complexity of the language involved in the creation of claims and the other documents filed in the patent prosecution procedure.

3. Trademarks are words, symbols, colors, sounds, or smells that someone is using in conjunction with a product or service.

Examples include the name Pepsi, the Just Do It tag line, the Apple logo, or the shape of a Coca Cola bottle. In some ways, trademarks are not property, exactly, because trademark law is designed to protect consumers from confusion and counterfeits—not to reward businesses for their tag lines and logos. Unlike copyrights and patents, trademark protection can theoretically last forever, as long as the business is still using the trademark in conjunction with their product or service. Trademark rights are limited to the particular use, such as for marketing consulting or in the sale of folding chairs.

In the United States, you obtain trademark protections under state law as soon as you are using the mark in conjunction with a product or service. However, that trademark protection is only applicable where you are using it (which may be only that city or state). Some U.S. states have a registration system, but that is in place more to put the public on notice than to grant you any additional rights.

To obtain rights over greater locations, you must register your trademark. In the United States you register your trademark with the Patent and Trademark Office. While this system is simpler than a patent application, it does require the art of figuring out exactly what to trademark and which class (category) to select. In addition, you may need the assistance of an attorney to make that decision. A trademark registration application for one trademark in one class costs a few hundred dollars and typically takes six to eighteen months to complete.

4. Trade secrets are secret information used by a business that derives its value from being secret, and where the business is invested in protecting that secrecy.

Two commonly cited examples include the recipes for Coca Cola and for the KFC “original recipe”. Other types of common trade secrets include manufacturing processes, client lists, ingredients, systems, sales methods, launch strategies, and business plans. While it is difficult to protect the secrecy of a trade secret, the benefit is that the protection can theoretically last forever.

There is no registration system for trade secrets. You obtain and protect them through your efforts in keeping them secret, such as via non-disclosure agreements, security, and procedures. Each company must enforce rights over their trade secrets via cease and desist letters and lawsuits, or they will lose rights because the information will become public. In the United States, protection is provided mostly under state laws, usually modeled off of the Uniform Trade Secrets Act.

5. Right of publicity is defined as your right to control how your name, likeness, and persona are used by others.

An example is that I have the right to prevent my name and photo from being used to promote someone else’s service, unless they obtain my permission. This right is not recognized everywhere, and in some places is pieced together from other laws, such as in right to privacy laws, trademark law, and truth-in-advertising regulations.

Source >> http://www.elizabethpottsweinstein.com/5-types-of-intellectual-property/

What is Trademark

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

WHAT IS TRADEMARK. . .

>> protection
>> application
>> infringement

A trademark is any mark, logo, or phrase that serves to distinguish one source of goods from another.

When a trademark is in actual use in commerce, common law trademark rights can often exist even without a registered trademark. These can be enforced in state courts.

A federally registered trademark can be enforced in federal courts. To get a registered trademark, it is necessary to first file a US Trademark Application.

Such an application needs the information noted in the query form shown on this page.

A trademark search is strongly recommended. Skill is required in interpreting the results, since even identical trademarks can be registered if they are in sufficiently different classes of goods/services.

To get started now:
No money is needed to get started. Once we receive the above-noted information for a trademark application, we perform a free, informal search of the trademark records and advise if a serious obstacle exists in the form of a prior similar trademark application. There is no cost or obligation for this. An experienced trademark attorney interprets the results of the informal search.

Assuming there is no prior obstacle, we prepare the draft trademark application for signature by the owner, and send it along with instructions for completion and fees. The applicant then signs, dates, and returns the draft trademark application, together with the official government filing fee and our service charge.

Read More >> http://internationalpatentservice.com/What-is-Trademark.html

Intellectual Property Punch List for Startups

By: BRENT C.J. BRITTON

When you create, design, or invent things, the rules of intellectual property (IP) determine who owns your creations, whether or not you can prevent other people from copying them, and whether or not you yourself can use them freely. If you are starting a company, you should know enough about IP to make intelligent decisions about your business to add value and reduce risk.

IP law is esoteric, arcane, and often counterintuitive. Normal business assumptions do not always apply, and can prove to be dangerous. Aggressive, thoughtful management of your IP portfolio is a sound business practice, and you should start as early as possible.

You don’t have to know a ton about the theoretical philosophy or legal underpinnings of IP in order to use it effectively. As you begin your entrepreneurial saga, be sure to pay attention to the following IP issues:

Clear trademark rights before naming things
You cannot use a brand in commerce if your use would be confusingly similar to someone else’s brand. So, do not name your company or your product or service without clearing trademark rights first. Once you choose your name, scour the internet using the search engine of your choice to ensure no one else is using it as the brand name of similar goods or services. Also check the TESS trademark database at uspto.gov to see if your name turns up. Remember that trademarks are compared on the basis of their overall visual and phonetic impression, so clever spelling inconsistencies–substituting a Z for an S, for example–should be ignored in this process.

If you cannot find your name in use anywhere else as the brand of similar products, go ahead just in case and have a formal trademark search conducted by a competent trademark lawyer. They can tell you whether you will be able to get a trademark on your brand and, perhaps more importantly, whether someone else is going to sue you if you start using it.

Then, and only then, is it safe to start naming your company and branding your products with the name that passes through the above clearance process. Remember, trademark rights are obtained neither by forming your corporation or LLC at the secretary of state’s office, nor by registering a domain name. Those ministerial items, while important, do not matter to the trademark process and should happen only after trademark rights are clear.

Everyone signs the agreement
Have your lawyer prepare a short noncompetition, nondisclosure, and IP ownership agreement to be signed by every co-founder, employee, independent contractor, and anyone else in the company who is contributing to the conception or development of creative and innovative assets. The agreement should ensure that: (i) everything they create is owned by the company; (ii) they are bound to keep all company information confidential; and (iii) they will not compete with the company while they are working for it (and, depending on your state, for some time thereafter).

Pre-audit your IP portfolio
Investors and acquiring companies really like IP, because of the exclusionary path to market it can afford. When you are being examined by a potential investor or acquirer (in a process known as “due diligence”), they will want to know the following:

Do you own your IP?
Is your IP portfolio complete? Are you protecting everything that is capable of being protected?
Is your IP strong and enforceable? If you sue someone for infringing it, will you win?
Why not be prepared for the due diligence examination ahead of time? Identify the creative and innovative assets in your company for which the answer to any of the above questions is “no,” and take remedial steps for changing the “no” to a “yes.” Then put appropriate processes and procedures in place for ensuring that the answers will henceforth always be “yes.”

Correcting IP title defects requires getting the proper ownership agreements signed between the company and the people who created the IP assets. If any creative contributor did not sign the IP agreement described above, make that happen as soon as possible.

Correcting completeness defects is simply a matter of filing for whatever patents, copyrights, and trademarks are missing in the portfolio, and instituting internal disclosure and management procedures for identifying and assessing new innovations on a constant basis so that new IP doesn’t slip through the corporate cracks in the future. Basically, every novel and nonobvious invention should be patented, every brand should be trademarked, every important piece of content should be copyrighted, and every vital secret should be protected.

Finally, correcting strength & enforceability defects requires a measure of strategic attention to ensure the company’s innovations are being protected in the strongest possible ways in light of the competitive landscape in which they exist. For some innovations, a slew of patents will be the answer; other innovations will best be kept confidential in reliance on trade secret law; for yet others, a mix of patents and trade secrets, as well as copyrights and trademarks, will provide the most bang for your buck.

Make sure NDAs don’t expire or terminate
If you own valuable information that your competitors don’t know and that gives you an advantage over them in some way – perhaps your secret formula or manufacturing technique or algorithm -- congratulations, you probably have a protectable trade secret. If you have occasion to divulge your trade secrets to an outsider, you must have that person sign a nondisclosure agreement (NDA) to maintain the secrecy of your secret. If you reveal the secret to someone who is not bound by an NDA, it is no longer protectable as a trade secret. Here’s the thing: trade secrets can last forever as long as you keep them secret. So read your NDA carefully to ensure that the obligations of secrecy do not terminate after some period of years. The person signing your NDA should be bound to keep your secrets secret for as long as they are protectable as trade secrets!

To make this process more painless, all Gust Launch founders get access to workflows to easily create one-way and two-way NDA agreements.

Patents are your friend
Patent trolls have given patents a bad name. If you create, own, or deal in technological or scientific inventions, software, certain designs, and certain other inventive creations that advance the state of the art, you need to consider filing lots of patents. Patents protect inventions, some designs, gene sequences, business methods, some plants, and software. Patents are obtained by inventing the invention and by applying for and being awarded a patent. Registration is mandatory. Patents in useful inventions last for 20 years, and 14 years for designs, from the date the application is filed, in the U.S.

In the U.S., inventors can file a document known as a provisional patent, sometimes referred to as a provisional patent application. In truth, both names are misleading because a provisional patent is neither a patent nor an application for a patent. Strictly speaking, a provisional patent is merely a document that is filed with the USPTO in which the inventor describes an invention. That’s it. This document is never examined or reviewed by the USPTO; it is merely placed on file for a year in anticipation of the filing of a follow-on nonprovisional patent application that is based on it. If, during the year after a provisional patent is filed, the inventor files a nonprovisional patent application on the invention disclosed in the earlier provisional patent that enables the same invention, the nonprovisional patent application will obtain the original filing date – called the priority date – of the provisional patent.

Nonprovisional patent applications generally cost around $10,000 for patent counsel to prepare and file. Provisional patents, however, can be much less expensive. If prepared by counsel, a thorough provisional patent can run from $3000 to $4000. But because provisional patents are never examined, they can be much less rigorously prepared than nonprovisional applications; as the inventor, you are often in a great position to draft your own provisional application asking counsel only to review before filing. This can reduce your fees to perhaps $500 or less.

Because a provisional patent can be prepared quickly and inexpensively, filing a provisional patent is useful when a company wishes to begin to obtain a measure of patent protection without committing to the expense of time and money required to prepare and file a nonprovisional patent application. After a provisional patent is filed, for example, the inventor can use the phrase “patent pending” when publicly referring to the invention disclosed in the provisional patent. This notice that a patent application is in the works can sometimes forestall others from copying the invention.

As a general rule, anyone doing a lot of inventing should be filing a lot of provisional patents. You can even include more than one invention in the same provisional while paying a single filing fee at the USPTO.

While these applications and processes may sound somewhat onerous and a little expensive, having to protect your inventions (and being allowed to protect them) is really a good sign—it means that you are developing the technologies that will give you an advantage over your competitors, and being recognized as their inventor. If you are starting a technology company, or any company really, IP must become a part of the things to which you pay attention to maximize your company’s value and reduce its risks.

Source >> https://gust.com/launch/blog/intellectual-ip-property-punch-list