Posts Tagged ‘uspto’

Duty of Disclosure During Patent Prosecution and Supplementing the Disclosure

Friday, 03 February, 2012 14:01 Written by Mark Malek 0 Comments

By: Mark R. Malek

You may recall that I wrote an article recently which noted that there is a duty of disclosure when filing a patent application in the United States.  For the sake of a quick summary, in return for the exclusive right to exploit an invention, the government requires the Applicant to disclose all prior art known to them in order to ensure a more detailed examination of the patent application.  In other words – no hiding the ball on the Patent Office.

The process in which information is disclosed to the Patent Office is by filing an Information Disclosure Statement (IDS).  The IDS includes a list of all the prior art references that the Applicant believes are relevant to the invention, as defined by the claims in the patent application.  There is a lot of prior art out there, and the best that every Applicant can do is to disclose the prior art that they know about.

The big question is about the prior art that the Applicant discovers after filing the IDS.  Is all lost?  Has the Applicant now committed fraud on the Patent Office?  That depends on how this is handled.  If the Applicant does nothing about the prior art that is discovered, then the likelihood that the patent stands up to a challenge of validity is very, very slim.  In fact, if it can be shown that the Applicant later became aware of relevant prior art, and chose not to inform the Patent Office, it is almost a foregone conclusion that the patent will be found invalid.  Worse yet, the Applicant may be found to have engaged in inequitable conduct, which can lead to liability for attorneys’ fees.

So how does the Applicant avoid this?  By filing a supplemental IDS.  It is exactly what it sounds like.  It is another IDS that supplements the original.  This is simple enough, and a good way to ensure that the Applicant has fulfilled the duty of disclosure to the Patent Office.

THE NATIONAL MEDAL OF TECHNOLOGY AND INNOVATION

Tuesday, 17 January, 2012 17:31 Written by danieldavidson 0 Comments

By Daniel Davidson

I remember the day i won an award from the President.  Yes, it included a shuttle run and various other physical activities, and was presented to me by my PE teacher, but I still won an award from him!  Albeit, the Presidential Physical Fitness Award is not quite the award that is presented annually to the leading innovator of our country, however, it is an award from the POTUS.

All kidding aside, it has come time for nominations to be submitted for the National Medal of Technology and Innovation.  This medal is given to the individual, company, or group that has made the biggest contributions to America’s economic, environmental and social well-being through their inventions and/or innovations.

Currently, the U.S. Patent and Trademark Office is accepting nominations for the award, and information on the nomination process and a nomination form can be found here.  Some of the guidelines include:

  • No self nominations.  They will be rejected.
  • You can nominate an individual, a group (up to 4 people), a company, or a division of a company.
  • Governmental agencies and laboratories are eligible.
  • Finalists are subject to FBI background checks (I would only be worried if the Florida Bar was conducting the background check).

Now that you are up to speed on how to go about nominating someone, or “something,” here are some notable winners:

  • 1985 – AT&T Bell Laboratories – For contribution over decades to modern communication systems.
  • 1985 – Apple Computer, Inc. – For their development and introduction of the personal computer which has sparked the birth of a new industry extending the power of the computer to individual users.

Here is to the next recipient of the National Medal of Technology and Innovation.  Cheers!

Should I Trademark My Business?

Monday, 09 January, 2012 05:22 Written by Aaron Thalwitzer 0 Comments

Probably, yes! But before elaborating, some fundamentals are in order.

What’s a trademark?

Most anything that identifies and distinguishes the source of goods of one party from those of others. Service provides get “service” marks, but I’m going to call them both trademarks.

Do I have to register my trademark?

No. Using the mark in commerce can establish rights, but registering your mark provides many important benefits, including:

Owning a federal trademark registration on the Principal Register provides several advantages, including:

  • Public notice of your claim of ownership of the mark;
  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ® and
  • Listing in the United States Patent and Trademark Office’s online databases.

I think I have a trademark, but I haven’t registered it. Can I use the federal registration symbol “®”? 

No. You may use “TM” (trademark) or “SM” (service mark), but you only get the ® after the USPTO actually registers a mark.

Back to the real question: should I trademark my business name?

Let’s use a hypothetical. Fred’s company, FredCo, sells designer fire extinguishers. FredCo, which is currently selling only in the USA, but is considering international expansion, has been selling its product for about a year, has a website, a logo, and its motto is “Extinguish With Style”. So, why bother? After all, things are going fine, and what’s the harm in waiting?

I’ll try keep this simple.

First, FredCo may not be as unique as Fred thinks it is. Fred may be infringing on someone else, thereby wasting his time and money on a brand that could be taken away by the original FredCo! Fred may even be liable for damages for failing to conduct a trademark search before adopting his mark. There goes FredCo.

Second, FredCo may be unique, and hugely successful! What’s the easiest way to make money? Copy someone else! FredCo’s success could be it’s downfall if other, lower-quality companies dilute or tarnish FredCo’s trademark.

Third, since FredCo has international ambitions, registering FredCo’s trademarks gives it an opportunity to receive advantageous trademark treatment with other members of the Paris Convention. Trademark piracy can be avoided by early, strategic registration. Why pirate a registered trademark when others are unregistered? They’re like carjackers — they’ll keep trying doors until they find the one that’s unlocked. Easy pickins!

Fourth, if FredCo’s domain name isn’t precisely registered with the USPTO, they’re risking that someone else may have (rightly or wrongly) registered it. If so, the trademark holder may ask Internic (the entity that oversees most domain name registration in the US) to stop FredCo from using it’s domain name pending judicial determination of the FredCo’s rights.

There are numerous other reasons to trademark your business. Remember, trademarking is like voting: its best done early and often.

A Refresher on “Patent Pending”

Thursday, 29 December, 2011 09:11 Written by Scott Nyman 0 Comments

Scott Nyman

 

Not quite a year ago, I posted an article about the term, “patent pending” and its sufficiency towards protecting your invention. Since that time, I’ve had a good number of people ask me just what the term means. I’ve also had people ask me, “so now that my patent is pending, I can sue people?” It seems the demand for these answers is high, so a refresher on “patent pending” seems appropriate.

Let’s start with the basics. What exactly does “patent pending” mean? The term “patent pending,” or something similar such as “patent applied for,” is used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the United States Patent and Trademark Office. Use of these terms should not be abused, for example by printing “patent pending” on a product for which no patent application has been filed. The law imposes a fine on those who use these terms falsely to deceive the public.

However, just because a searching party cannot locate a patent application on the invention through popular searches, such as Google Patents or the USPTO website, does not mean that no patent application is pending. Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published.

Once a patent application has been filed with the US Patent and Trademark Office, the disclosed invention may be considered “patent pending.” This holds true for both provisional and non-provisional patent applications. Provisional patent applications are not examined by the USPTO for patentability, but provide a disclosure of the invention with enough sufficiency to receive a filing date.

Non-provisional applications are examined by the USPTO, and may result in the issuance of a patent. In order to have any patent protection, an inventor is required to file a non-provisional application. To keep the filing date of a provisional patent application, an applicant is required to convert the provisional patent application into a non-provisional patent application within one year of filing the provisional.

So, can you sue if you believe someone is infringing on your patent pending invention? Not just yet. In short, the USPTO states, “These phrases have no legal effect, but only give information that an application for patent has been filed in the Patent and Trademark Office. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.”

The term “patent pending” describes the period between the filing of a patent application with the USPTO and the final disposition on the application, which may include abandonment, rejection, or allowance of the application. Having a “patent pending” status does not afford an applicant any patent protection, it simply puts would-be infringers on notice that they may be subject to a lawsuit if the application issues into a U.S. patent.

Furthermore, 35 U.S.C. 287 provides the notice requirements for issued patents, stating, “In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”

By providing notice to the public that your invention is in the process of potentially receiving patent protection, you are providing notice that continued potentially infringing conduct related to the applied-for invention may result in patent infringement. Although patent protection may not begin until the date a patent is issued, including a notice that such date is pending may help allow an inventor claim satisfaction of the notice requirement being met close to the actual date issue date of the patent, so long as the inventor promptly complies with the patent marking requirements of 35 U.S.C. 287.

However, the courts have routinely decided that “patent pending” alone is insufficient to support a finding of willful infringement. The Federal Circuit has stated, “A patent pending notice gives one no knowledge whatsoever. It is not even a guarantee that an application has been filed.  Filing an application is no guarantee any patent will issue and a very substantial percentage of applications never result in patents. What the scope of claims in patents that do issue will be is something totally unforeseeable.” Conopco, Inc. v. May Dep’t Stores Co., 46 F.3d 1556, 1562.

The Patent Office Is Not Ready For The Java Update – Don’t Do It!

Friday, 11 November, 2011 09:58 Written by Mark Malek 4 Comments

By: Mark R. Malek

Consider the title of this article a very mild way of stating my frustration with the Patent Office.  Yesterday, as I was trying to file a simple document using the Patent Office’s Electronic System, I kept getting an authentication error when I was trying to log on.  I could not figure it out.  I know that my digital certificate is up to date and I know that I had the right password.  What in the world could possibly be wrong?

Maybe it was because I was using Google Chrome.  My paralegal that does most of the filing uses Internet Explorer.  That had to be the problem, right?  Mind you that I am no 20 minutes into this frustrating process, all to file a document that took me 4 minutes to draft!  So, I open up IE and try to log on.  Guess what?  Authentication error again.  Now the mild cursing begins (if you know me, you know that this is when spectators start giggling).  I know what to do, I’ll delete the digital certificate from my computer and ask my paralegal to email me another one.  You guessed it – that didn’t work either.  How frustrating do you think it is that someone is able to log onto the PTO Electronic Filing System using my digital certificate just 10 feet from me???

No problem – I’ll just call the PTO.  After navigating through about four operators and explaining the problem, I finally get a very helpful technician on the phone.  I explain the problem to her and her first reaction was the following: “Did you update Java?”  Well, not intentionally.  I do remember that when I got into the office on Wednesday, my computer was restarted and I received the indication that Windows had performed some updates.  That’s when it must have happened.  To my surprise, the technician explained to me that the PTO system was not compatible with the Java update and that I would have to uninstall the update, and reinstall an old version of Java.  Really?  The United States Patent Office?  The forefront of technology was not ready for the?

Here’s my single biggest gripe.  I receive an update from the PTO every couple of days via email.  It is some sort of breaking news, or some story about happenings within the PTO.  Would it have killed you to let me know about this problem that way?  How hard would it have been to send a quick email blast to every patent practioner out there about this issue?  I was humored when the technician told me that about 80% of the calls she received lately were for this very issue.  By the way, I had about 1 hour of my day into this disaster by that point.

As promised by the technician, uninstalling the update and reinstalling the old version of Java did the trick.  I can’t say that the Oracle site is the easiest thing that I have ever navigated, but, with a little help, I was able to find the old Java update 27 and install it.  I haven’t even told you the good part yet.  Once I got everything working, and once I was able to log onto the PTO Electronic Filing System, I was presented with a notice in big bold letters – something along the lines of “the Java update 29 is not compatible with the PTO Electronic Filing System.”  What the heck kind of government operation was this?  When I saw that notice, a string of profanity flowed from my mouth that was unmatched, even by the standards of Ralphie’s Dad from A Christmas Story. I sometimes refer to these types of meltdowns as an “Egyptian Conniption.”  Present me with a government issue like this again, and you are sure to witness it.

To my friends at Patently-O that posted a story about this issue today, I am here to confirm that it is an issue.  A little note to Director Kappos – I have been very pleased with all that has been accomplished by you as the PTO Director, but I can’t believe this one got by the IT folks at the PTO.

 

 

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