What Does A Trademark 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.

Trademark infringement is a highly charged subject, and I have seen how it affects the trademark 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 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 10k and 30k, 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).

If you're the plaintiff, you'll have some control over the costs.  If you raise more issues, then the cost will be higher.  Or, if you challenge everything using Motions, then your costs will skyrocket.

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

How to Protect Your Business With Patents, Trademarks & Copyrights

By: Melissa Kossler Dutton

Companies that develop new products or intangible creations need to evaluate whether they should legally protect their intellectual property.

When the owners of Modlich Monument Company hired a company to develop software to help them manage orders and operations, they never imagined that the intellectual property created would eventually lead to another revenue stream for the 82-year-old family business.

The software, once perfected and implemented, became so successful — cutting the processing time of orders by nearly 50% — that other companies in their field asked to buy it.

“It was developed to keep us organized and efficient,” said Jonathon Modlich, vice president of Modlich Monument Company. “We realized it could benefit others in our industry so we created a little side company.”

Suddenly, the company that performs the centuries-old function of making monuments found itself operating in the cutting-edge technology world and looking for ways to protect the software it created.

Companies that develop intellectual property — defined as work or an invention that is the result of creativity — have several avenues to protect it, including a patent, copyright or trademark.

The monument company’s legal team and business advisors were instrumental in launching MB ProBuild, the trademarked name for the software and the company that sells it, Modlich said.

Because their contract with the software developer — which the family had a personal connection to — was “work for hire,” they are able to sell the computer program, he said. On the advice of their legal team, they patented the name and require customers to buy licensing agreements to use it.

Natalie Monaco’s path to protecting her idea and launching a business around it was quite different. Monaco, who invented a comforter that stays in place to avoid cover stealing and simplify bed-making, secured a patent for the Covermade design and trademarked the name.

She sought a patent before pitching her idea to would-be retailers — something she believes helped get their attention.

“Having a patent — even earlier on while in patent-pending status — was very helpful,” she said. “When I first approached manufacturers and the buyers we work with today, such as Brookstone and Bed Bath and Beyond, I believe having an issued patent gave the Covermade a lot of credibility.”

Companies that are developing products, software or other intangible creations of human intellect need to carefully evaluate whether they should take actions to legally protect them.

ROI should be one of the key determinants, said Vincent G. LoTempio, a patent attorney with Kloss, Stenger & LoTempio in Buffalo, New York. “If you make a million dollars and spend $10,000 protecting your idea — that’s not much money,” he said. “However, if you spend $10,000 and make no money, it may as well have been $1 million” that you spent.

Read More >> https://www.manta.com/resources/small-business-advice/how-to-protect-your-business-with-patents-trademarks-copyrights/

Electronics Inventions Facing Patent Legal Adversity – Surprisingly Good News For Your Inventive Electronics!

By: Michael J Foycik Jr. 
August 4, 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 may already know the patent hurdles facing inventions related to electonics.  Over the last few years, the federal appellate courts have sharply limited what is and is not a patentable electronic invention.

At one major example, the case In re Bilski limited electronics and software claims to those that require hardware.  Here's a very short listing of objections that have recently been seen: mere data-gathering is not a sufficient role for the device; the device is not truly needed to execute the invention and merely carries out the steps; and the device employs transformative steps that require no particular machine.  Those are major hurdles to overcome.  Yet, there are more such hurdles.

But, that's actually very good news for inventors in electronics!   With fewer patents, it is easier for a new one to dominate a valuable technical area.  Or, if you have a late inventive entry into a field and worry that you may be too late, an absence of patents could allow you in.  And, of course, your invention may be the one to prevail, if your attorney knows what to do. 

Any why is any of the above good news?  Simple – most of the problems are in how the invention is being claimed, not in the invention itself.  Many times, the invention itself could well be patentable, if claimed correctly.  If your patent attorney knows the case law, you could do well!

Here's an example of what the knowledgeable patent attorney can put into a good claim.  For a method claim using a computer or electronic hardware, the claim should recite a step of providing the computer or electronic hardware.  But that's not usually enough: it also helps to add something worthwhile about the computer or electronic hardware into the preaamble of the claim.

Read More >> http://internationalpatentservice.com/Electronics-Inventions-Facing-Patent-Legal-Adversity.html

Intellectual Property: Lessons from Shark Tank & Seinfeld

By: Dave Levin, M.D. and David Hyams
May 23, 2018

Intellectual property can provide powerful legal rights that can build a business and drive valuation

It seems like everyone is becoming a healthcare entrepreneur: from Amazon and Apple to health systems with dedicated innovation teams to two women in a garage inventing the next great thing. Investors are fueling this trend with record levels of healthcare investments, particularly in health IT. One thing these entrepreneurs and investors have in common is that their businesses may be generating assets that are more valuable than they realize. In addition to their system, product or solution, they may also be creating valuable intangible assets known as intellectual property (IP).

This leads to some obvious questions for both entrepreneurs and investors: What are the different kinds of intangible assets? Why are they important? How can they determine what IP they have? What, if anything, should they do about it?

“Shark Tank” Is Wrong About Intellectual Property

We love the television show “Shark Tank,” in which aspiring entrepreneurs pitch their business plan to a panel of experienced investors (the “Sharks”) who then choose whether to invest as a business partner.

One of the first questions the Sharks ask is: “Do you have any patents?” It’s a good question, but it’s too narrow: intellectual property is much more than just patents.

There are four general areas of IP: patents, trade secrets, copyrights and trademarks. It’s important to understand the four types and how they differ.

Patents protect inventions. An inventor files an application with the U.S. Patent and Trademark Office (USPTO) that explains the invention in enough detail to enable a person with the typical skill level in the relevant field (e.g., a competent engineer) to make or use the invention. Once the USPTO publishes the explanation, the U.S. government grants the applicant a monopoly over the invention for twenty years from the date of filing the application.

Trade secrets are in some ways the flip side of patents.  Trade secrets are information that provides value to a business so long as it remains secret. Trade secrets can include just about anything, whether technical or non-technical—even a soup recipe that has customers lining up around the block.

Read More >> https://www.healthcare-informatics.com/blogs/rajiv-leventhal/intellectual-property-lessons-shark-tank-seinfeld

NDAs: Trick or Treat - Do They Help, and Should You Want 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.

If you're an inventor, you've probably seen an NDA (Non-Disclosure Agreement).  Do NDAs really help?  And, can NDAs be enforced?  Is there anything tricky there?  Good questions, and you might be surprised by the answers!

It would help to know that an NDA covers trade secrets.  Yes, you want to show your invention to someone, and that invention is covered by a patent application.  But, that means your invention is a trade secret (assuming you haven't already published it already).  So, your invention can also be your trade secret.

If your invention is stolen (misappropriated), you would probably prefer tort damages, instead of contract damages or patent damages.  Here's why: tort damages can be punitive in nature and can therefore be big even when the infraction is small.  Contract damages tend to be limited to the provable amount of money lost (there are exceptions).  Patent damages cover actual infringement situations, provide a percentage of the lost profits (as one example, and there are exceptions), and require an issued patent.  Every case is different, and the above is just a rough guide – you'll need to talk with a lawyer for specific advice.  Note that an NDA is a contract and often specifies the damages and the law to be applied.

Here's the tricky surprise for the unwary:  An NDA on its face seems to be a way to switch from trade secret damages to contract damages.  The inventor, i.e. the trade secret owner, may very well not be too happy about that.  Companies that want to look at inventors' trade secrets probably should like NDAs, and that's just what we often see.

Does an NDA really take away trade secret rights?  That's hard to tell exactly, as it may well depend on the specifics of the situation.  One may well expect an uphill fight to get trade secret damages if an NDA is involved.

Read More >> http://internationalpatentservice.com/Trick-or-Treat.html

How To Protect Your Intellectual Property In Ireland?

BY: Corporate and Commercial Law

Protecting your IP is not necessarily the first thing on your mind when you’re launching your business idea. Raising finance is often a more pressing priority, and understandably so, but decisions, or the lack of them, relating to your IP in the early stage of your startup can have serious long-term consequences.

The four IP categories

IP falls into four categories:

>> Trademarks
>> Patents
>> Copyright
>> Designs

All of these IP rights can be registered both in Ireland and overseas.

Trademarks are defined as any sign or identifying mark of a company’s goods and services. A company’s name and the different names of their product lines can all be considered to be trademarks. It’s a sign for customers of a brand’s origins and is an indicator of quality. The brand awareness generated by a trade mark is one of the reasons why founders should ensure they register their trademarks.

Patents provide protection for new inventions that can be used industrially. The Patents Office issues ownership over the invention to the person registering the patent. We advise inventors to be discreet about their invention until they speak to a legal professional specialising in IP about protecting their work. Patents can be registered for different terms.

Copyright protects mainly art, music, literature and software. Patent protection however should also be considered for software.

Designs protect branding marks, such as logos and graphics.

How do I register my IP rights?

When you register your trademarks, you need to remember that they will only be registered in the territory where the registration takes place. It’s important to think about all the markets you wish to register your IP in at the early stage of your startup so that you can implement a holistic IP protection strategy. Registering your IP across various territories can be done through systems like European Patents and Community Trade Marks in Europe.

Registering your IP is a tax efficient thing to do

Few business owners realise that there is a tax deduction available for registering a patent or trademark. Business owners involved in scientific research and development are able to avail of additional tax incentives.

Setting up your startup and creating a shareholders agreement are the first priorities to focus on at the beginning of your business journey. However, protecting your IP needs to be considered early on too as, especially for tech startups, funding will be raised mainly on the strength of your IP. Some investors will insist that you have sufficient IP protection in place.

Contractors and their work

With the freelance or gig economy heavily present in the world of startups, it’s important to work out with an IP legal professional who owns the work created by contractors for your startup. Often, the work created by an employee is the property of the business, but this isn’t always the case. There may be a requirement for you to insert a clause dealing with this issue in the employment contract.

Read More >> http://www.aclsolicitors.ie/blog/how-to-protect-your-intellectual-property-in-ireland

Great Ways to Invent – Get Incredible Features In Your Invention

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.

You want your invention to become a really successful product. You want it to be patentable. But you're not sure how. No problem! Here is one of the best ways to do it.

You'll first want to find unusual new things – products or novelties in search of a use. You want really great things, the kind that will inspire your creativity: new electronics, new compounds, new physics, and novel compositions with unusual features.

Those things are easy to find in the patent category for toys and novelties, because that is the haven for inventions in search of utility. Why? Because of the US Patent requirement for utility: no utility, no patent. So, if your utility is unknown, yet the invention seems interesting in some way, the easiest utility is as a toy or amusement device.

But how can you see those things conveniently? That's so easy – use an online search by class/subclass using the patent office web site. At the US Patent Office site, do a search by Class/Subclass. For toys, the Class is 446. Subclasses are by topic, for example 446/15 is for toys with soap bubbles.

You can find a topic by an index search, or by a manual of classification search. The steps are as follows. Go to the US Patent Office official site (www.uspto.gov). Click patents, which brings up a listing. Click the third item down, Classification. The topic you'll want for an index (word) search is “search USPC index schedule and definitions”, and the topic for a classification search is on the right hand side about a fourth of the way down called “browse listing of USPC Class numbers and titles.”

Read More >> http://internationalpatentservice.com/Great-Ways-to-Invent-Get-Incredible-Features-In-Your-Invention.html

Costly Misconceptions About NDA's (Non-Disclosure Agreements)

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.

You (the owner) has  an invention, a business idea, or a trade secret.  To develop your invention, start a business, or talk with investors, you'll need to share information with these recipients, and you'll want protection before showing them anything.  Many think an NDA (Non-Disclosure Agreement) will solve this problem, but there are major pitfalls to avoid.  And, an NDA might not be the best solution anyway.

The biggest misconception, in my view: an NDA is intended to protect and help the owner of the invention, business idea, or trade secret.  An NDA is much more likely to protect the recipient of the information, and not the owner.  Let's see why that may be true.

Many NDA's provide for arbitration as a remedy rather than litigation, but that only benefits the richer party.  Why?  A court action can be filed for free or at very low cost, but an arbitration usually requires the payment of substantial fees up front, and more fees at later stages.  When the recipient is a relatively substantial corporation or business, such fees may seem small, but to an individual or small businessperson such fees may be too great and they cannot enforce the NDA.

Normally, large companies fear litigation, and that is incentive for them to keep honest.

Another misconception: all NDA's are alike.  Not at all.  Each has to be studied in detail, because
many NDA's have fine print that lets the recipient off the hook.  I have reviewed many NDA's over the years, and have found serious flaws in most of them: the legalese unbinds the recipient one way or another.  Some unbind the recipient after a period of time, while others grant rights to the recipient.  Some are written to be so confusing that they defy interpretation.

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

Patent Assignments - What Inventors Should Know

By: Michael J Foycik Jr.
May 29, 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.

If you're an inventor who is considering signing an Assignment of a patent or patent application, there are a few things you may want to know.  Most questions concern the language of the Assignment itself, namely the promise to assign future improvements and to sign new patent applications related to the invention.

The typical Assignment includes language assigning the invention to the new owner (called the Assignee).  That new owner is usually either an employer or someone who wishes to purchase the rights to the invention.  For that new owner, some of the value of the invention may reside in the ability to file more patent applications, to make a family of products.

For example, let's say the invention is a big success; the new owner will surely want to file more patent applications for any likely variations that a competitor might try.  And, let's say the original inventor has moved on to a new company or a new business.  How much of a burden will be on that inventor, under the terms of the typical Assignment?  And, what about new inventions the inventor later makes – will those need to be assigned to the new owner under the terms of the original Assignment?

The key to answering the above and other questions is in understanding the legal meaning of the term “invention” in the original Assignment.  The term “invention” must necessarily refer to the invention as shown and described in the patent application, and to any “obvious” variations.  Because the courts generally define the word “invention” in this manner, it would appear that the inventor's future obligations should not be overly burdensome.

For minor variations, the inventor will very likely have to sign future patent applications under the terms of the original Assignment.  What are minor variations?  Court decisions have enumerated those that most often occur, such as size, shape, color, obvious extra features, and the like.

Read More >> http://internationalpatentservice.com/Patent-Assignments-What-Inventors-Should-Know.html

Tech giants offer startups free patents in bid to foil lawsuits

By: Susan Decker

Red Hat Inc. and Lenovo Group Ltd. are giving away free patents to any startup that joins a group of more than 200 companies devoted to keeping its members and their patents out of court.

It’s a carrot to entice startup companies to join the LOT Network, a non-profit created by Google and Canon four years ago to combat litigation by patent assertion companies, known derisively as “trolls,” that don’t make any products but seek royalties by challenging patents. By joining LOT, a company agrees that if they sell patents to such firms, all group members will have a free license to them.

“You’re binding yourself to the mast and saying ‘I’m not going to give in to the siren song of trolls,"‘ said Ira Blumberg, vice president of intellectual property and litigation for Lenovo.

The goal is to avoid or at least limit a repeat of what happened when the dot.com bubble burst nearly two decades ago. That left firms in bankruptcy court with little of value other than their patents, which were sucked up by speculators in hopes they would be tickets to big bucks. It contributed to a 47 percent increase in the number of patent complaints filed in the U.S. from 2000 to 2010.

While the number of suits is declining, it remains an issue for companies of all sizes, said Patrick McBride, senior director of patents for the Raleigh, North Carolina-based software company Red Hat.

“It is difficult to get a sufficient number of companies to coalesce around a single solution that will address the problem,” McBride said. “There is a mesh of overlapping efforts and LOT is a significant player.”

It’s easy to attract larger companies, said Ken Seddon, chief executive officer of LOT, which stands for license on transfer. The group’s members collectively own some 1.1 million patents and patent applications worldwide. That provides immunity from a fraction of the patents in force worldwide -- more than 347,000 were issued last year in the U.S. alone.

It’s still a big enough number that “I’m basically a patent litigation flu shot,” Seddon said.

Automakers including Ford and General Motors that are using more electronics in their vehicles joined as part of an overall strategy to eliminate the type of patent wars that engulfed the smartphone industry. Retailers like Bed Bath & Beyond and J.C. Penney get sued a lot over products they sell so it’s cost-effective to eliminate at least some potential threats.

Of the 224 members, about 75 count as startups and Seddon said he’s trying to increase that number. Investors in smaller companies may be wary of locking up patents in the future, fearing it will reduce their value, and may question the benefit of a group founded by large patent owners like Google and Canon.

Seddon’s pitch includes the free patents, no cost membership for companies with less than $25 million in annual revenue or financing, and an opportunity to network.

Limiting litigation is a concern of small companies focused on building their brand, said Alexandra Sepulveda, vice president of legal at Udemy Inc., a seven-year-old company that sells education videos taught by people with work-life experience.

“For any startup that gets to the success we have -- everybody comes out of the woodwork,” she said of the company’s decision to join LOT a year ago. “The last place you want to be is in front of your board answering questions about why you didn’t put preventative measures in place.”

Read More >> http://www.standard.net/Business/2018/05/13/Tech-giants-offer-startups-free-patents-in-bid-to-foil-lawsuits

Trade Secrets - Better Protection Than a Patent for New Products and Inventions?

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

You can establish a trade secret overnight, but not a patent.  A patent takes longer.  And, even if you could, would it really provide much protection against copying by distributors, retailers, developers, or investors?  Here's a surprisingly useful answer.

 A trade secret has some big advantages.  It is effective against anyone you have direct dealings with.  The damages for a trade secret violation are not limited to direct damages – they can be large enough to justify legal action against even a small or token violation.  This is very unlike a patent, where it is necessary to show actual, direct damages; those damages tend to be somewhat small; and where it can be quite difficult to obtain punitive damages. 

 So, why isn't there a “trade secret” office?  And, why doesn't everyone go after a trade secret first, instead of a patent?  Excellent questions.  A patent protects your invention after it is no longer secret, and it affects strangers who may innocently infringe patent rights.  So, a patent is very worthwhile, once you've gotten a good start.  But until then, all you really have going for you are your trade secret rights.

 Let's see why there's no “trade secret” office.  First, you can easily establish your trade secret rights yourself.  How?  Start by documenting the materials you regard as your trade secret, and mark the pages “confidential.”   You can just mark the cover page as confidential, but more is better.  Whenever you show the materials to anyone, document that: write a note to yourself stating who saw the materials and when they saw them; and put a copy of the exact materials shown in an envelope.  If you have witnesses, write down their names.  If there were telephone calls or emails, note those; and so on.

Read More >> http://internationalpatentservice.com/Trade-Secrets-Better-Protection-Than-a-Patent-for-New-Products-and-Inventions.html

Panitch Schwarze Welcomes Elizabeth Morgan as Trademark Counsel

MAY 14, 2018

Intellectual property law firm Panitch Schwarze Belisario & Nadel LLP is pleased to announce that Elizabeth Ann “Betty” Morgan has joined the firm. Morgan focuses her practice in Trademark Law and mediation and arbitration of intellectual property matters. Recently relocated to Philadelphia, she was named among Best Lawyers in 2014, 2015 and 2016 in Atlanta, Georgia, for Trademark Law.

Morgan has significant jury trial experience in federal court, including patent, trademark, copyright and trade secret matters, and has handled more than 100 matters before the Trademark Trial and Appeal Board (TTAB). Morgan has litigated in Arkansas, California, Colorado, Delaware, Florida, Georgia, Illinois, Mississippi, Minnesota, Michigan, New Jersey, North Carolina, Nebraska, Oregon, Pennsylvania, Texas and the Virgin Islands. Morgan also has managed trademark portfolios consisting of hundreds of marks and has handled world-wide rollouts of new brands. Morgan is active in the International Trademark Association (INTA), the American Intellectual Property Law Association (AIPLA) and Intellectual Property Owners (IPO) where she has frequently lectured at their annual events.

Morgan serves as a panelist for the American Arbitration Association (AAA) and National Arbitration and Mediation (NAM). She was invited to join the peer-reviewed International Institute for Conflict Prevention and Resolution (CPR) as a mediator where she is a member of the Trademark Panel, Entertainment Panel, Employment Panel and Philadelphia ADR Panel. She is on INTA’s Panel of Mediators and is a neutral with the World Intellectual Property Organization (WIPO). As a FINRA public arbitrator, Morgan is injunction-qualified and has served as a panel chair. Morgan has experience with franchise disputes, contract disputes, banking disputes, construction litigation, employment and wage and hour litigation as well as securities industry practices. She has been a party representative or mediator in more than 100 matters.

After receiving a bachelor’s degree with High Honors (Phi Beta Kappa) from the University of Florida in Interdisciplinary Studies, Morgan went on to earn a law degree With Distinction (Order of the Coif) from Emory University School of Law. She is admitted to the Pennsylvania Bar and all federal district courts in Florida and in Georgia, to the Eleventh Circuit Court of Appeals, and to the bar of the United States Supreme Court.

About Panitch Schwarze Belisario & Nadel LLP – Panitch Schwarze Belisario & Nadel LLP is a boutique intellectual property law firm with offices in Philadelphia and Wilmington, Delaware. The firm’s IP law practitioners provide strategic litigation, licensing and counseling service relating to patents, trademarks, copyrights and trade secrets, domain names and internet issues domestically and internationally. The firm’s long-standing relationships with a network of associates worldwide enable its attorneys and advisors to provide clients with global intellectual property advice and protection.

Source >> http://www.prweb.com/releases/2018/05/prweb15483706.htm

Trademark Application Tips, and Some Ways to Avoid Pitfalls

By: Michael J Foycik Jr. 
May 12, 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.

Filing a trademark application?  That may seem easy, but mistakes can be costly later, during the examination phase.  Here are a few helpful tips, and a few pitfalls to avoid.

 After a trademark application is filed, the U.S. Trademark Office conducts an examination of the application.  For example, if there is both an objection and a refusal to register the mark, then a response will be necessary to meet the objection and to overcome the refusal to register.  This happens frequently, and an experienced trademark attorney will likely know just what to do when writing the response.

 In my experience, it pays to respond to every office action.  Many issues are within the range of discretion of the trademark examining attorney, and good legal arguments in support of the trademark may well be persuasive.  Some firms charge substantial sums of money to prepare responses, and other firms might charge much less - therefore it may pay to shop around.

 A helpful tip: before filing a trademark application, find a cost effective trademark attorney.  It is wise to assume things may not always go smoothly or quickly.

 Another tip: select the best type of trademark application. There are two types: intent-to-use applications, and actual use applications.  Both cost the same to file.  The intent-to-use application can be filed long before actual use occurs, but there is a later government fee when completing the intent-to-use application.  The trade off is that completing the intent-to-use application requires a statement of use or allegation of use, together with a specimen of use and an additional government fee.  If an actual use application can be filed based on actual use in interstate commerce, then it will save money to do so.

 It pays to know what types of problems come up during the examination phase.  Some problems that may come up: the trademark examiner may raise objections due to a similar prior mark, may object to the mark based on descriptiveness or misdecriptiveness of the mark, may object to the mark as having an improper geographical reference, and may object to the listing of the goods/services.  There are other possible grounds of objection too. 

In light of the above, another cost saving tip is this: have an experienced trademark attorney look at the mark prior to filing, just to see if there is something that jumps out.  You probably wouldn't want to spend money to file an application if it was certain to fail.  Here, too, it often pays to shop around.  Some attorneys would charge quite a bit just to look at the mark, whereas others might take an interest and provide helpful comments at little or no additional charge.  Trademark owners have reported a wide range of fees, some fees being reasonably low and some fees being unexpectedly high.

Read More >> http://internationalpatentservice.com/Trademark-Application-Tips-and-Some-Ways-to-Avoid-Pitfalls.html

Tesla sued for $2 billion by hydrogen truck startup over alleged patent infringement

By: Sean O'Kane

Nikola Motor Company has filed a lawsuit in Arizona alleging that Tesla’s all-electric Semi infringes on the hydrogen truck startup’s patents. The lawsuit claims Tesla willfully copied these patents in creating its electric truck, and Nikola is seeking $2 billion in damages in return.

“It’s patently obvious there is no merit to this lawsuit,” a spokesperson for Tesla told The Verge. A representative for Nikola Motors said in a statement to The Verge that “[w]e are not commenting because it is in the courts. The lawsuit speaks for itself.”

Nikola was founded in 2014, and the company showed off its first two products — an electric four-wheel offroad vehicle and a hydrogen-electric semi truck — in May 2016. It has since added a second semi truck to its eventual lineup, teased some all-electric personal watercraft, and announced plans for a $1 billion factory in Arizona.

The complaint filed by Nikola lays out a number of claims that, viewed together, the company says prove Tesla cribbed from the startup’s patents. Nikola points to supposed similarities in the trucks’ front fenders, wraparound windshields, mid-entry doors, aerodynamic fuselage (with similar drag coefficients), and more as evidence that Tesla copied its design. It also claims that a recruiter for Tesla, Aaron Hoyos, tried to poach Nikola’s chief engineer just a few months after the startup unveiled its hydrogen semi truck, and that this is evidence that Tesla was aware of Nikola’s unique design features.

Additionally, Nikola says it was able to identify that Tesla’s truck might be infringing on its designs from spy shots that littered the internet in the weeks leading up to Tesla’s mid-November 2017 reveal. The startup says it sent a cease and desist letter (which is included as an exhibit in the lawsuit) to Tesla on November 7th asking the company to delay its announcement until the issue was resolved, but that Tesla never responded.

Read More >> https://www.theverge.com/2018/5/1/17309430/tesla-lawsuit-nikola-motor-company-patent-trucks

Startup Companies and Trademarks, an Attorney's View

By: Michael J Foycik Jr. 
April 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.

An important decision facing new startup companies is what to do about trademarks.  The question is, should they apply for a federal trademark registration.  The answer to that depends very much on the goals for the startup.

If the goal of the owner of the startup company is to succed and then sell at a profit, then a federal trademark is essential.  Think about it from the perspective of a buyer: without a trademark, that buyer cannot get the goodwill of the startup company.  That goodwill includes such things as name recognition by customers, and loyalty all those dealing with the existing company.  But, without official trademark rights, the buyer may not have exclusive rights to the use of the trademark, and imitators could flourish.

Some startups need investors, and investors are more comfortable when they see rights owned by the startup.  After all, what are they investing in, if not intellectual property rights of some kind?  Those rights commonly are from a good trade name or trademark.  Other such IP rights can include trade secrets, patents, or copyrights.

Read More >> http://internationalpatentservice.com/Startup-Companies-and-Trademarks-an-Attorney-View.html

More Patent Trolls Are Targeting Startups. Here's What You Can Do.

By: Nathaniel Borenstein

Startups aren't typically founded by lawyers, so patent law isn't usually a front line issue for them. But I've come to realize that patent protection is at best No. 11 on the top 10 list of things for startups to focus on -- something they generally understand is important, but not quite important enough. Part of that is because the headlines focus on big lawsuits lobbed at big companies, which creates a false sense of security. As an inventor and a computer scientist with 25-plus years of practical experience, I'd like to think I've navigated the murky, complicated world of patents and come out on the other side wiser and more informed. And, as such, there is something I want entrepreneurs, inventors and early-stage businesses to know. Yes, you are a potential target for patent trolls, and yes, there is something you can do about it. Today.

Related: If Your Startup Really Is Disruptive, Expect to be Sued By a Patent Troll.

Here's what everyone thinks they know.
It is generally understood patent trolls are typically "shell" companies that do no real business but simply pursue a business strategy of suing businesses over their patents. They typically sue for a large amount of money but settle for an amount they estimate will cost the victims less than a court fight. They do no good for anyone in the world but themselves, and they can be extremely costly (in time and money) to their victims. Too many people believe patent trolls are only after big names -- big companies with big wallets. The smaller suits, the ones aimed at startups and mid-sized businesses, might not make headlines, but they do untold damage.

Startups are targets for trolls, and grow more so over time.

Startups are often targets for trolls, but many entrepreneurs are unaware of this reality. With so many things to think about -- building a product, hiring a staff, fundraising, marketing, sales -- protecting against patent trolls is not likely to be high on a founder's list of priorities, but it should still be a consideration. A company gets hit with a suit and has to respond, but by then, it's too late. The mere presence of the suit is itself a drain on limited resources, to the tune of several million dollars that startups can't afford. This is why being proactive is essential.

Related: How to Conduct a Patent Search to Make Sure Your Brilliant Invention Doesn't Already Exist (Infographic)

A disproportionate number of patent trolls target smaller companies: More than 50 percent of businesses targeted by patent trolls make less than $10 million in revenue per year and 75 percent of the companies sued by trolls are privately held. And for good reason: To trolls, the whole point is to impose a costly and scary lawsuit, so that startups with limited resources to protect and defend themselves are more likely to settle than fight.

Read More >> https://www.entrepreneur.com/article/310648

Forget the Scams, Make Money from Your Invention

By: Michael J Foycik Jr. 
April 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.

You've seen the scams.  Forget those, and move on: real people can and do make money from their inventions.  Let's see who and how.

Who succeeds with their inventions?  Just about anyone, and at just about any age.  Here are a few ways.

If samples of the inventive product are available, then the quickest route can often involve first rate department stores and consignment sales.  It's easy if you know how, and it's easy to try even if you don't know how.  One successful person just went to their favorite department store, bringing their product, and talked to a manager about it.

For some inventions, it may be better to go through distributors.  That is not hard, but it is not always easy either.  Some distributors will help with the manufacturing costs, and some won't.  Your best deals come when you can provide the goods.

Sometimes, it helps to get investors to provide funding and expertise, so you can make and sell the invention.  The best ways to get investors involve one important first step: finding the manufacturing cost of a prototype.  That part isn't difficult if you know how, and can often be done in just a few days.  Most inventors are surpised by the low costs, and of course investors like seeing low costs since it means higher profits.

There are ways to find and meet investors.  I recommend e-press releases as a very low cost way to attract investors.  I can also recommend viral marketing, which is also a relatively low cost way.  There are even investor clubs in many areas, if you look for them.

Read More >> http://internationalpatentservice.com/Forget-the-Scams-Make-Money-from-Your-Invention.html

A recent patent shows how Samsung's long-awaited Galaxy X foldable smartphone might work -- and there's even a design that folds into thirds

MAY 5, 2018

There’s long been talk about a foldable smartphone from Samsung, but now there’s something tangible that brings a foldable smartphone closer to reality.

On May 2, Samsung was granted multiple patents for its foldable smartphone design and the way it will work.

Samsung’s latest patents show that the company is experimenting with a smartphone that can fold into thirds – not just a smartphone that can fold in half, as was originally rumoured.

Being granted the patents isn’t a guarantee that Samsung is making these devices. Many patented devices never see the light of day. Plus, there would surely be several difficulties for Samsung to overcome with a foldable smartphone.

But Samsung has clearly been thinking about and researching the concept, and there’s always the chance the design ends up in a real product.

Read More >> https://www.businessinsider.com.au/samsung-galaxy-x-foldable-smartphone-patents-show-how-itll-work-2018-5

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.

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

Guidelines for Intellectual Property

By: Shannon McElfresh-Hall

Filing for Intellectual Property (IP) will protect a business’s specific product idea including product development. The strategic benefits of establishing ownership over an asset is vast: to deter competitors, raise capital, build a business, etc. The intellectual property you file should support the overall business strategy. There are three ways to protect intellectual property in the United States: patents, trademarks, and copyrights. A patent applies to a specific product design; a trademark to a name, phrase or symbol; and a copyright to a written document. There are key steps, which will help you obtain and protect IP. Andrea Davis, Managing Partner at Bodkin IP, shared a few points to focus on:

Know Your IP Rights

IP rights provide a defensive right to pursue legal action if a third party infringes. Patent infringement occurs when another party makes, uses, or sells a patented item without the permission of the patent holder. The function of a product can be protected with a patent; whereas the appearance can be protected by registering the design. Trademarks protect brands, such as trade names and logos. Lastly, copyright protects the expression of ideas- the words you choose to use to describe your idea, but not an idea itself. If you obtain any of these IP’s, you will own rights to that idea, design, or description and can peruse legal action against infringes.

Most businesses do not need the combination of patents, trademarks, and design registrations; in fact, trademarks are typically the only IP most companies have or need, however for a few companies the full IP protection is required. For example, Apple® and iPad® are two registered trademarks, registered designs, and patents for the way it interacts with the user. Apple also filed copyright for the code and the packaging. Apple then fought in a court battle with Samsung over IP, which effected changes in the law. “Apple denied Samsung permanent injunction against nearly two dozen Samsung products. The Apple/Samsung case was the patent trial of the century” said The Wall Street Journal.

Get Professional Help

To avoid infringement conflicts and extensive research and resources, finding an IP expert, like Bodkin IP, will help guide IP owners and relieve the hassle. Although the process of obtaining IP appears simple, it is a highly detailed procedure. Doing your own research is helpful, but IP professionals have additional resources, which are powerful and effective. “Inventors and start-ups should always do their own research early on to see if somebody else already has thought of the same invention. That includes the internet, also the free patent databases available, such as Google Patents, The Lens or Free Patents Online. If you don’t find anything, it is still wise to enlist a professional patent search firm to get it done professionally. The US alone has close to 10 million patents. When it comes to patentability, any publication counts anywhere in the world, so the number of patents is significantly larger! Without a database that has functionality the free resources don’t have and specialized knowledge on how to use that functionality, e.g. using patent classifications, citations and semantic searching, it’s almost impossible to do a thorough search.” Explained Ms. Davis, of Bodkin IP.

“I’ve heard many times in my career inventors say, “I’ve done my own search and haven’t found anything”, only to perform it in the professional databases and find something very similar within an hour. Out of the hundreds of patents searches I have performed in my two decades as a professional patent information professional, there have been less than five cases where I couldn’t find something close to the invention. That doesn’t mean that those other ideas weren’t pursued! In 99% of the cases they probably were, but in a strategic and informed way, that ended up saving those clients money. By identifying the prior art early on with very little investment, they were able to focus on the features that were not already patented by others both in the development of their product, as well as in the direction their patent applications were drafted. The patent prosecution is likely to take less time with less rejections from the patent office, saving the inventors’ not only that time, but also attorney fees, patent office fees and development resources.” Ms. Davis continues.

Strategize What You Will Do with the IP

Think carefully about why you are investing in protecting your IP. “Any money spent on IP is capital that cannot be spent on production, marketing, etc. There are many good reasons: to stop people from copying you; to add value to your company if you want to sell it; to sell or license to a third party; to hold it in your armory if you suspect you are going to be sued and want to counter-sue. For example, Google has spent a substantial amount of money buying patents recently; even to reduce your tax bill in certain countries profits attributed to patents can be taxed at a lower rate. However, in general, IP is a right to prevent other people from doing something; owning IP does not necessarily give you the right to do anything yourself.” Reports PLOS Computational Biology.

Keep Your Idea Secret until You Have Filed a Patent Application

Once your idea is published by a journal it is too late to file a patent application. It has been released to the public. A provisional patent application is a faster step to temporarily protect the IP until it is fully developed and can be submitted for the patent protection. It is important to understand this form is nothing more than the first step toward receiving a patent. Ultimately you will need to file a nonprovisional patent application in order to obtain a patent in the United States.

“This is often unknown, and I’ve seen entrepreneurs have their own website, start a kickstarter page or even sell items. According to current law, from the time the invention was first sold, offered for sale or used publicly, you have 12 months within which to file either a provisional patent application or a nonprovisional patent application. After that timeframe, it is regarded that the inventor has forfeited the right to obtain a US patent. The best approach is to file at least a nonprovisional patent application before doing any of the above.

Make Sure the IP Is Owned in a Way That Allows Development

Ownership of IP can be particularly difficult in an academic setting where numerous complicating features are involved. Universities, as employers, are likely to have a right to their employees’ inventions. Inventorship is not like authorship—the people whose names are on an academic paper are unlikely all to be inventors; and in cross-border collaborations, national laws on ownership may well be in competition with each other. One complicating factor, which is often encountered, is joint ownership: if you can, avoid joint ownership; instead, set up a company to own the IP and license it to partners if necessary. Otherwise you face differing national rules on what joint owners can do with and without each other’s permission. If it is necessary to share IP, define who owns what at the beginning, what rights each party has and who will have the right to future inventions.

You can never act too early, but it’s very easy to act too late. To avoid the time intensive and complicated process of IP, find the best professional advice you can. If you are working as an employee, speak to your company at the earliest stage.


Bringing all these important IP aspects together provides the full view on approaching and protecting IP. These rights are applicable to all industries, companies, and individuals. Whether filing for a patent, trademark, or copyright, the procedure is complex. Finding an IP expert to help guide the tedious process to owning IP, will ease the progress and help you get to market quickly and correctly. Speed to market is imperative today. No matter the size of the company, there’s no doubt that filing intellectual property quickly after the conception of an invention, innovation, or service is a must.

Source >> https://nectarpd.com/product-developoment-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.


>> 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.

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

10 intellectual property tips for startup companies

By: John Thomas and Jeremy Harrison  

Obtaining and securing intellectual property (IP) rights is often not a high priority with startup companies. Rather, startups commonly focus most efforts on obtaining financing, building a brand, and effective marketing strategies.

Securing company IP, however, such as patents, trade secrets, trademarks, and copyrights, is vital since doing so creates a legal barrier to competition. Company IP can be a revenue generator through strategic licensing or IP transfer, and is often crucial in valuation for venture funding purposes.

The following are some tips and strategies for startups to manage company IP.


Pursuing and maintaining patent protection requires a considerable capital investment. The cost to obtain a U.S. utility patent is roughly $20,000, and sizeable maintenance fees are periodically required to keep an issued patent enforceable. Thus, pursuing a patent should be approached proactively and with caution.

In addition to U.S. utility patents, design patents should also be considered. Design patents protect the ornamental appearance of an article of manufacture. The subject matter of a design patent application often relates to:

> The configuration or shape of an article.
> The surface ornamentation applied to an article.
> The combination of configuration and surface ornamentation.

Any person who has invented a new, original and ornamental design for an article of manufacture is entitled to apply for a design patent.  A design patent differs from a utility patent in that the design patent only protects the appearance of the article and not structural or utilitarian features. Design patents in the U.S. do not have maintenance fees and typically cost considerably less that utility patents. 

1. Undertake a patent prior to art search 

For key technologies, it is a good idea to conduct a prior art search before investing in the patenting process. A properly conducted search will identify patents, patent publications, and non-patent literature closely associated with the technology. The search can also identify potential competitors and infringement risks. Decision makers can then intelligently focus continued related research and development and draft patent application claims that avoid identified prior art.

2. Do not prematurely disclose

Unless a patent application is on file, foreign patent rights are immediately lost once an invention is publicly disclosed. In the U.S., a one year “grace period” following a public disclosure is generally available, but a patent application must be filed within 12 months to retain patent rights. If an invention must be disclosed, make sure to have proper confidentiality and/or non-disclosure agreements in place, which transform the disclosure into a non-public disclosure.

Read More >> https://www.bizjournals.com/pittsburgh/news/2018/04/30/10-intellectual-property-tips-for-startup.html

What is Infringement

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.

There are three main types:

>> trademark infringement
>> patent infringement
>> copyright infringement

Trademark Infringement 
This occurs when one party uses a trademark that is confusingly close to a trademark owned by another. It is simple to decide in cases where one party has a registered federal trademark and is the senior user.

A federal trademark confers nationwide rights, and can be enforced in federal courts. A non-registered trademark may nonetheless confer common law trademark rights. Common law trademark rights are enforced in state courts.

It can sometimes be that simple, and trials tend to be relatively short. Often, however, the situation is not clear, and sometimes – especially where both trademarks are common law trademarks and are not federally registered - it is hard to determine who is the senior user. In those cases, it can also be hard to tell whether or not the senior user's rights are substantial enough to stop a competitor.

Contact us if you are concerned about any trademark infringement matter, for a free initial consultation. There is no risk or obligation.

Some common questions are: what kind of damages can be awarded; how much does a trademark infringement lawsuit cost; what kinds of risks exist.

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