Protecting your brand on Amazon

Protecting your brand on Amazon could be one of the most important things you do as a brand owner. As many Amazon seller know, it can be difficult to protect your brand from counterfeiters on Amazon and other E-commerce sites. Amazon, however, has established the Brand Registry to help reputable business owners protect their brands on Amazon. According to Amazon, enrollment in Amazon’s Brand Registry comes with greater abilities to control content related to your brand and allows you to “proactively remove suspected infringing or inaccurate content.”

Amazon further claims that:

Over 95% of notices of infringement submitted by rights owners are investigated and actioned within 24 hours.

Enrolled brands report an average of 99% fewer suspected infringements than before the launch of Brand Registry.

https://brandservices.amazon.com/

Based on testimonials from major brands, Amazon’s Brand Registry is an absolute must. So, what is required to enroll? To enroll, you will need the following:

  1. An active registered trademark for your brand;
  2. Verification that you are the trademark owner or the authorized agent for the trademark; and
  3. An Amazon account.

Creating an Amazon account is easy and fast. That’s a non-issue. But, do you have a trademark registration? If you don’t, you need one. Unfortunately, securing a trademark registration is not fast and can be difficult for a layman. That is why you should get started as soon as possible and contact an experienced trademark attorney to ensure that the process is hassle free and as quick as possible.

Smith & Hopen Intellectual Property Firm Front Entry Door

Contact us today or book an appointment online.

China Trade Deal Impact on IP

On Wednesday, January 15, 2020, the U.S. and China signed a partial trade deal deemed “Phase One.” Phase One includes a significant focus on Intellectual Property, which is addressed in Chapter 1. Specifically, Chapter 1 includes, among other things, Trade Secret misappropriation, pharmaceutical-related intellectual property, patents, piracy and counterfeiting on E-commerce platforms, manufacture and export of pirated and counterfeit goods, and bad faith trademarks.

Some key takeaways to which China has agreed include:

  • Criminal penalties for trade secret misappropriation in China
  • “Expeditious” resolution of pharmaceutical patent disputes in China
  • “Effective and expeditious” action in China against online counterfeiting and patent infringement
  • “Sustained and effective action [in China] to stop the manufacture and to block the distribution of pirated and counterfeit products”
  • “adequate and effective protection and enforcement of trademark rights [in China], particularly against bad faith trademark registrations.”

This China trade deal will have a positive impact to protect IP and is certainly a step in the right direction. Admittedly, it does have teeth to a degree. However, it doesn’t have the authority most Americans would prefer. Ultimately, the implementation of the agreement is going to dictate whether substantial change will occur. Unfortunately, “each party shall determine” what is an appropriate method of implementation. The entirety of the implementation section under the Chapter 1 is below:

Each Party shall determine the appropriate method of implementing the provisions of this Agreement within its own system and practice. If necessary, each Party shall provide suggestions for the amendment of laws to its legislative body according to its domestic legislation procedure. Consistent with the Bilateral Evaluation and Dispute Resolution Chapter, each Party shall ensure that its obligations under this Agreement are fully implemented.

Within 30 working days after the date of entry into force of this Agreement, China will promulgate an Action Plan to strengthen intellectual property protection aimed at promoting its high-quality growth. This Action Plan shall include, but not be limited to, measures that China will take to implement its obligations under this Chapter and the date by which each measure will go into effect.

https://fm.cnbc.com/applications/cnbc.com/resources/editorialfiles/2020/01/15/US-China-Trade-Agreement_1-14-20.pdf

In other words, China, under its own volition, shall determine what constitutes appropriate action to meet its obligation. Here’s to hoping that China decides to make some substantial improvements to its IP policy under this agreement.

Trademark Specimens and Branding

Improper branding can lead to invalid trademark specimens and a loss of registration rights. Trademark applications, renewals and declarations of continued use require the trademark applicant or owner to submit evidence that the trademark is used in commerce. For services we almost universally use the trademark owner’s website. For tangible products, the trademark must be “affixed” to the item and thus a digital photo of the trademark on the product or its packaging generally works. A common problem we run into is that of “mutilation” of what was applied for or registration. For example, if a client came to us and wanted to register CHING’S CHIPS™ for potato chips we would respond as follows:

A well-informed trademark examining attorney at the U.S. Patent & Trademark Office would require us to disclaim the term CHIPS from the mark as a whole. Therefore, it would make more sense only to register CHING’S as a standard character claim (any presentation of the word) because that is the dominant feature of the trademark.

Specimens for the trademark CHING’S

However, when it is time for the marketing department to product the packing we might see something like the following:

Specimen #1 is a mutilation of the original mark. We never registered SUPER nor CHIPS. The brand is CHING’S (which can be upper case, lower case, title case or in any font).

Example branding on page of chips - SUPER CHIPS

Specimen #2 is still a problem because the terms CHING’S and CHIPS are on the same line, with the same font forming a new trademark….CHING’S CHIPS.

Example branding on page of chips - SUPER CHIPS with different fonts

Finally, Specimen #3 is acceptable because CHING’S is denoted in a larger font, on a separate line and even in a separate color than the term “Chips.” This will give the company the ability to use CHING’S as a “house mark” for other items such as CHING’S pretzels, CHING’s cereal or the like.

In conclusion, it is important that there be good agreement between what is registered and the trademark branding of the specimens on products and services to the consumer. If you ever have any questions on this, do not hesitate to contact our office.

Smith & Hopen Intellectual Property Firm Front Entry Door

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PCT Patent Deadlines

Figuring out PCT patent filing deadlines isn’t always straightforward. There are two issues at play when you reference “deadlines.” One deadline can be a priority deadline. That is the deadline you need to meet so that your next filing is legally granted the filing date of a previously file application (i.e., the priority date). The Paris Convention (which guides portions of the PCT) has a 12-month priority deadline. That goes for U.S., Paris Convention Members and 153 PCT Member States.

Priority Claim Deadline

For the purposes of foreign filing, a provisional application and non-provisional are treated the same. In other words, that 12-month clock to file a PCT application starts ticking from the earliest filing date. If you:

  1. Filed a provisional on January 1, 2000, (OK)
  2. Filed a non-provisional on June 1, 2000 claiming priority to the provisional, (OK)
  3. Filed a PCT application on March 1, 2001 (PCT cannot claim priority to either the provisional or the non-provisional)

Article 4.C(4) of the Paris Convention dictates that the 12-month window for filing a PCT application commences on the filing date of the earliest application in the family. Accordingly, in the above scenario, if the PCT is filed on or before January 1, 2001, it will be entitled to the priority date of the provisional filing. However, if the PCT is filed after January 1, 2001, the PCT cannot claim priority to either the provisional or the non-provisional application. Without the priority claim, the novelty of the subject matter disclosed in the PCT would be negated by the non-provisional application (unless the non-provisional is abandoned prior to publication).

Statutory Bar Deadline

The second issue of PCT patent deadlines is that of statutory bars resulting from publication. In the university environment, there is a strong tendency to disclose invention – particularly right after a provisional is filed. So, let’s add to the scenario above:

  1. Filed a provisional on January 1, 2000, (OK)
  2. Disclosed invention February 1, 2000, (OK)
  3. Filed a non-provisional on June 1, 2000, (OK)
  4. Filed a PCT application on March 1, 2001 (PCT Fails)

In the above-mentioned scenario you lost your provisional priority date for the PCT. Foreign countries have an absolute novelty requirement meaning there can be no disclosure before an application is filed. Consequently, since the PCT couldn’t use the provisional filing date (outside 12-months) it had to use the non-provisional filing date which was AFTER the disclosure.

Need patent protection in foreign countries?

Smith & Hopen Intellectual Property Firm Front Entry Door

Contact us today or book an appointment online.

Patent

Patent cases on contingency introduce some complexities not found in other areas of the law. We are occasionally asked to write a letter, file a patent application, or handle a lawsuit on a contingent fee basis. Our policy is to decline such requests because contingency fee arrangements are usually unfair to the client.

Suppose a client asks us to write a demand letter for $100,000 on a contingency fee basis, telling us to keep a third of the proceeds if the letter results in payment. We could receive a legal fee of $33,333.33 for a letter that would normally cost about $600.00. It makes much more sense for the client to pay the small letter-drafting fee and keep the proceeds.

Signing a document

The same logic applies to the filing of a patent application. To avoid a $10,000.00 legal fee for preparation of a mechanical patent application, for example, a client may propose that we waive the fee and participate in the profits derived from the invention. If the invention meets with commercial success, the client could pay a fee far in excess of $10,000.00.

If the invention is not commercially successful, we have worked for two to three weeks with no revenue, even though our overhead bills never stop coming in. We have no control over whether or not an invention meets with commercial success, because that depends upon the marketing efforts made by the inventor, not upon the quality of the patent application. Consumers don’t purchase products because the patent application for the product is well-written. Being full-time patent attorneys, we can do no more than advise our clients to avoid marketing scams.

A different reasoning applies to lawsuits. Contingency fee arrangements are common in personal injury (PI) cases because the only issue in such cases is damages. The liability is usually clear and most PI law firms will not accept a case on a contingent fee basis if liability is not clear. Thus, the only issue in most PI cases is how large the payment will be, not whether or not there will be a payment. In intellectual property cases, liability is always disputed. An accused infringer will attack the validity of the patent by citing prior art that was not cited by the examiner, and will argue noninfringement as a backup defense. A typical patent infringement suit lasts two or three years and requires the full-time attention of at least one lawyer. No lawyer with an office can stay in business without revenue for such a long period of time. Personal injury cases, on the other hand, are over much quicker and, again, the only issue is the size of the recovery.

In most cases, we are able to quote a flat fee for our services. This removes the uncertainty caused by hourly rates. When a lawyer quotes a fee of $300 to $500 per hour to write a letter or to prepare a patent application, the inventor’s reply is always “Write fast.” Well, that leads to a letter or patent application prepared in a bum’s rush. A well-crafted letter, patent application, or an amendment to a patent application, is best prepared in a relaxed, well thought out manner. A flat fee protects the client from surprises, ensures a thorough preparation of the application, and is, we believe, the only fair alternative to hourly rates and contingency fees.

Tag: fees

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Related U.S. Application Data block in a published continuation application

The United States Patent and Trademark Office (USPTO) has allowed your patent application and it is about to become an issued United States patent. Congratulations on your accomplishment! You are about to become a United States patent holder–a distinction reserved only for true visionaries and innovators. Prior to the issuance of your patent, you have an opportunity to continue building your patent portfolio and expanding your patent rights by filing a continuation patent application. Interested in finding out more about the advantages of filing a continuation patent application? Read on.

A patent is a barrier to competition. Well-informed patent attorneys seek to anticipate how competitors will attempt to design around the patent claims. While broad claims are sought, they must also be drawn with precision to avoid invalidity in view of prior art. Sometimes, neither inventor nor patent attorney can anticipate how a technology may evolve. After a patent is granted, a patent holder has very limited avenues for changing the scope of patent coverage. The two most commonly-used methods for accomplishing this objective are as follows:

  • Reexamination: Either the patent owner or a third party challenger may cite new (or unapplied) prior art arguments against an issued patent. This procedure is frequently initiated in response to litigation seeking to cancel patent claims.
  •  Reissue: A patent reissue is often filed when prior art was inadvertently withheld during patent prosecution or the patent claimed too much (or too little). A patent’s scope can only be broadened within 24 months after it issues. After that, reissue amendments can only maintain or narrow the scope of coverage.

Both reexamination and reissue proceedings can be expensive and create new liabilities in the protection of an invention. However, there is another cost-effective method: filing a continuation application prior to the issuance of the “parent” application.

A continuation patent application must have the same specification and drawings as the parent application, but the continuation application can have a different claim scope. Therefore, a continuation application provides an opportunity to broaden or modify patent coverage for your invention. Because the continuation (the “child” application”) claims priority to a co-pending “parent” application, their patent terms are “coterminous.” Accordingly, continuation applications do not “extend” the patent term. However, by keeping at least one “child” application alive, the patent holder may update, modify, and even include additional subject matter in a later filed “continuation in part” (CIP) application.

In some cases, your patent attorney may recommend filing your continuation application with a request for deferred examination. You can find more details about deferred examination here.

Category: Patent

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Generally speaking, a utility patent will last 20 years from its filing date. In contrast, a design patent lasts 15 years from the day it is granted. There are also several factors that can affect the term of a patent, i.e., when a patent will expire. These factors include, but are not limited to, whether the patent is a continuation application, whether a terminal disclaimer was filed, whether any patent term extension was granted by the U.S. Patent and Trademark Office, and whether the patent owner has paid the necessary maintenance or annuity fees.

You should consult an experienced patent attorney to determine when a patent will expire. Feel free to contact Smith & Hopen for additional information.

Category: Patent

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Booking a consultation does not automatically create an attorney-client relationship. However, no successful patent attorney will “steal” your invention. In fact, the reality is that inventing is hard work. It takes not just the spark of imagination, but project planning, marketing, capital investment and competition with the status quo. The attorney-client privilege in our profession is exceptionally strong: we are bound by confidentiality by both the state bar and the U.S. Patent & Trademark Office Rules of Professional Conduct. The attorney-client privilege is the client’s right and is fiercely protected by ethical attorneys.

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A non-provisional patent application is a legal document filed with the U.S. Patent and Trademark Office. It contains all of the formal requirements to be examined. If properly prosecuted and assuming your invention is novel and not obvious, your non-provisional patent application will issue into a patent.

The content and formal requirements of a non-provisional patent application are extensive and complex. You should consult an experienced patent attorney to ensure that your non-provisional patent application is properly prepared and prosecuted.

Category: Patent

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A provisional patent application is legal document filed with the U.S. Patent and Trademark Office that identifies your invention and establishes your priority date as the inventor. A provisional application will not be examined or published, and will not mature into an issued patent. Rather, it provides a 1-year window during which a non-provisional application should be filed to maintain your priority date. If you fail to file a non-provisional application within the 1-year window, you will lose your original priority date.

Establishing your earliest possible priority date can be critical. You should consult with an experienced patent attorney to ensure that your provisional patent application contains all of the necessary information to establish that you invented your invention as of the provisional filing date. Information not disclosed in the provisional patent application will not receive the same priority date as the information disclosed in the provisional application.

Upon filing the provisional patent application, you will be patent pending. However, you will not receive any patent rights while you are patent pending. In order to receive patent rights, you will need to file a non-provisional application and said application must issue into a patent.

Category: Patent

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No, you cannot renew a patent for an additional 20-year term. Utility patents have a 20-year term and design patents have a 15-year term. Patents rights are discharged discharged into the public domain when they expire.

Under some circumstances, the patent term may be extended. Our experienced patent attorneys can advise you on whether you have received or are entitled to an extension of your patent term.

A patent will also expire if the patent owner fails to pay the scheduled maintenance fees. Smith & Hopen employs a state of the art docket management system designed and built in-house to ensure that our clients never miss a maintenance fee.

Category: Patent

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Utility patents are granted for inventions that are new, useful and non-obvious.

Category: Patent

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Name Components to Express Function

One great tip I received as a younger patent attorney was to name components to express function. Our co-founding partner, Ron Smith was a master of drafting claims. His sister, an English professor used to “grade his papers” by reading his patent applications and bleeding (using a red pen) all over them. For example, the phrase “in order to” should not be used. Just say “to” because “in order” is redundant.

On a more substantive issue, it is good practice in mechanical or electrical cases to name components with a name that expresses their function. Thus, calling something a “member” or “an elongate member” or “a cylindrical member” should be avoided. For example, here’s a phrase that could be improved:

“a member extending between the two arm rests and behind the back, wherein the member stabilizes the back;”

If the member stabilizes the back, name it a stabilizer instead of a member. That makes the phrase more straightforward:

“a stabilizer extending between the two arm rests and behind the back for stabilizing the back;”

Or perhaps better yet:

“a back stabilizer extending between the two arm rests and behind the back;”

Notice how a function-descriptive name like “stabilizer” shortens the phrase and an even more function-descriptive name like “back stabilizer” shortens it even more. Using function-descriptive names also makes it easier to remember the various parts as the application is being written.

Patent

Patent cases on contingency introduce some complexities not found in other areas of the law. We are occasionally asked to write a letter, file a patent application, or handle a lawsuit on a contingent fee basis. Our policy is to decline such requests because contingency fee arrangements are usually unfair to the client.

Suppose a client asks us to write a demand letter for $100,000 on a contingency fee basis, telling us to keep a third of the proceeds if the letter results in payment. We could receive a legal fee of $33,333.33 for a letter that would normally cost about $600.00. It makes much more sense for the client to pay the small letter-drafting fee and keep the proceeds.

Signing a document

The same logic applies to the filing of a patent application. To avoid a $10,000.00 legal fee for preparation of a mechanical patent application, for example, a client may propose that we waive the fee and participate in the profits derived from the invention. If the invention meets with commercial success, the client could pay a fee far in excess of $10,000.00.

If the invention is not commercially successful, we have worked for two to three weeks with no revenue, even though our overhead bills never stop coming in. We have no control over whether or not an invention meets with commercial success, because that depends upon the marketing efforts made by the inventor, not upon the quality of the patent application. Consumers don’t purchase products because the patent application for the product is well-written. Being full-time patent attorneys, we can do no more than advise our clients to avoid marketing scams.

A different reasoning applies to lawsuits. Contingency fee arrangements are common in personal injury (PI) cases because the only issue in such cases is damages. The liability is usually clear and most PI law firms will not accept a case on a contingent fee basis if liability is not clear. Thus, the only issue in most PI cases is how large the payment will be, not whether or not there will be a payment. In intellectual property cases, liability is always disputed. An accused infringer will attack the validity of the patent by citing prior art that was not cited by the examiner, and will argue noninfringement as a backup defense. A typical patent infringement suit lasts two or three years and requires the full-time attention of at least one lawyer. No lawyer with an office can stay in business without revenue for such a long period of time. Personal injury cases, on the other hand, are over much quicker and, again, the only issue is the size of the recovery.

In most cases, we are able to quote a flat fee for our services. This removes the uncertainty caused by hourly rates. When a lawyer quotes a fee of $300 to $500 per hour to write a letter or to prepare a patent application, the inventor’s reply is always “Write fast.” Well, that leads to a letter or patent application prepared in a bum’s rush. A well-crafted letter, patent application, or an amendment to a patent application, is best prepared in a relaxed, well thought out manner. A flat fee protects the client from surprises, ensures a thorough preparation of the application, and is, we believe, the only fair alternative to hourly rates and contingency fees.

Tag: fees

Comment on this FAQ

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Related U.S. Application Data block in a published continuation application

The United States Patent and Trademark Office (USPTO) has allowed your patent application and it is about to become an issued United States patent. Congratulations on your accomplishment! You are about to become a United States patent holder–a distinction reserved only for true visionaries and innovators. Prior to the issuance of your patent, you have an opportunity to continue building your patent portfolio and expanding your patent rights by filing a continuation patent application. Interested in finding out more about the advantages of filing a continuation patent application? Read on.

A patent is a barrier to competition. Well-informed patent attorneys seek to anticipate how competitors will attempt to design around the patent claims. While broad claims are sought, they must also be drawn with precision to avoid invalidity in view of prior art. Sometimes, neither inventor nor patent attorney can anticipate how a technology may evolve. After a patent is granted, a patent holder has very limited avenues for changing the scope of patent coverage. The two most commonly-used methods for accomplishing this objective are as follows:

  • Reexamination: Either the patent owner or a third party challenger may cite new (or unapplied) prior art arguments against an issued patent. This procedure is frequently initiated in response to litigation seeking to cancel patent claims.
  •  Reissue: A patent reissue is often filed when prior art was inadvertently withheld during patent prosecution or the patent claimed too much (or too little). A patent’s scope can only be broadened within 24 months after it issues. After that, reissue amendments can only maintain or narrow the scope of coverage.

Both reexamination and reissue proceedings can be expensive and create new liabilities in the protection of an invention. However, there is another cost-effective method: filing a continuation application prior to the issuance of the “parent” application.

A continuation patent application must have the same specification and drawings as the parent application, but the continuation application can have a different claim scope. Therefore, a continuation application provides an opportunity to broaden or modify patent coverage for your invention. Because the continuation (the “child” application”) claims priority to a co-pending “parent” application, their patent terms are “coterminous.” Accordingly, continuation applications do not “extend” the patent term. However, by keeping at least one “child” application alive, the patent holder may update, modify, and even include additional subject matter in a later filed “continuation in part” (CIP) application.

In some cases, your patent attorney may recommend filing your continuation application with a request for deferred examination. You can find more details about deferred examination here.

Category: Patent

Comment on this FAQ

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Generally speaking, a utility patent will last 20 years from its filing date. In contrast, a design patent lasts 15 years from the day it is granted. There are also several factors that can affect the term of a patent, i.e., when a patent will expire. These factors include, but are not limited to, whether the patent is a continuation application, whether a terminal disclaimer was filed, whether any patent term extension was granted by the U.S. Patent and Trademark Office, and whether the patent owner has paid the necessary maintenance or annuity fees.

You should consult an experienced patent attorney to determine when a patent will expire. Feel free to contact Smith & Hopen for additional information.

Category: Patent

Comment on this FAQ

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Booking a consultation does not automatically create an attorney-client relationship. However, no successful patent attorney will “steal” your invention. In fact, the reality is that inventing is hard work. It takes not just the spark of imagination, but project planning, marketing, capital investment and competition with the status quo. The attorney-client privilege in our profession is exceptionally strong: we are bound by confidentiality by both the state bar and the U.S. Patent & Trademark Office Rules of Professional Conduct. The attorney-client privilege is the client’s right and is fiercely protected by ethical attorneys.

Comment on this FAQ

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A non-provisional patent application is a legal document filed with the U.S. Patent and Trademark Office. It contains all of the formal requirements to be examined. If properly prosecuted and assuming your invention is novel and not obvious, your non-provisional patent application will issue into a patent.

The content and formal requirements of a non-provisional patent application are extensive and complex. You should consult an experienced patent attorney to ensure that your non-provisional patent application is properly prepared and prosecuted.

Category: Patent

Comment on this FAQ

This site uses Akismet to reduce spam. Learn how your comment data is processed.

A provisional patent application is legal document filed with the U.S. Patent and Trademark Office that identifies your invention and establishes your priority date as the inventor. A provisional application will not be examined or published, and will not mature into an issued patent. Rather, it provides a 1-year window during which a non-provisional application should be filed to maintain your priority date. If you fail to file a non-provisional application within the 1-year window, you will lose your original priority date.

Establishing your earliest possible priority date can be critical. You should consult with an experienced patent attorney to ensure that your provisional patent application contains all of the necessary information to establish that you invented your invention as of the provisional filing date. Information not disclosed in the provisional patent application will not receive the same priority date as the information disclosed in the provisional application.

Upon filing the provisional patent application, you will be patent pending. However, you will not receive any patent rights while you are patent pending. In order to receive patent rights, you will need to file a non-provisional application and said application must issue into a patent.

Category: Patent

Comment on this FAQ

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No, you cannot renew a patent for an additional 20-year term. Utility patents have a 20-year term and design patents have a 15-year term. Patents rights are discharged discharged into the public domain when they expire.

Under some circumstances, the patent term may be extended. Our experienced patent attorneys can advise you on whether you have received or are entitled to an extension of your patent term.

A patent will also expire if the patent owner fails to pay the scheduled maintenance fees. Smith & Hopen employs a state of the art docket management system designed and built in-house to ensure that our clients never miss a maintenance fee.

Category: Patent

Comment on this FAQ

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Utility patents are granted for inventions that are new, useful and non-obvious.

Category: Patent

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Patent What is Necessary

Experienced and successful inventors know to patent what is necessary. Often we hear about protecting a “system” or “complete apparatus.” That is not the way the patent system works. Rather, it rewards incremental improvements in technology. These improvements advance the state of the art. While the patent restrains trade for 20-years on that improvement, it publishes the innovation so that others can build and further enhance it.

One of our valued clients is Hyalta Aeronautics which develops advanced drone technologies. Just one of their aircraft designs is branded Hydrone™. This drone operates underwater, in multiple flight modes and on the ground.

Credit: Hyalta Aeronautics LLC. Used with permission.

Hydrone can perform missions and tasks that no other aircraft can currently achieve. However, drones are generally well-known in the art. Furthermore, drones flying in hover and Newtonian flight are known. Patents protect the technology itself, not the capabilities or objectives of the technology.

Hydrone unmanned aircraft in submersible mode exiting submerged U.S. submarine. Credit: Hyalta Aeronautics LLC. Used with permission.

Just one (of many technologies) needed to make the Hydrone operate in multiple environments and modes involves a mechanical couplings. For example, these couplings relate to a shrouded, convertible ducted fan engine that rotates in multiple configurations. The U.S. Patent & Trademark Office granted U.S. Patent 10180083 on January 15, 2019 to Hyalta for this technology. Look at a representative patent drawing below. You don’t see underwater embodiments or even image of a 4-engine drone. Rather, it is the indispensable advance in the mechanical configuration of drive shaft, shroud and linear drive motor that enables all the advantages of the actual commercial product.

Figure 2A of U.S. Patent 10180083 for a convertible ducted fan engine.
U.S. Patent No. 10180083

Hyalta’s Patent Strategy

Hyalta Aeronautics knew exactly what was necessary to patent to achieve the commercial advantages of the Hydrone product and obtained exclusive rights to that innovation. Consequently, without the ‘083 patent technology, a competitor simply cannot create a parity product and thus the patent serves its intended purposes:

  1. a barrier to competition;
  2. exclusivity for 20+ years; and
  3. adding an identifiable asset to the valuation of the company.

In conclusion, we represent some of the most innovative companies nationally like Hyalta Aeronautics and appreciate the trust they put in our firm.

Smith & Hopen Intellectual Property Firm Front Entry Door

Contact us today or book an appointment online.

Supreme Court Denies Patent Eligibility Petitions

supreme Court won't address patent eligibility this term

In its order list released on January 13, 2020, the Supreme Court denied several petitions to address patent eligibility. Many hoped that the Supreme Court would weigh in on patent eligibility this term to better establish what constitutes patentable subject matter. This subject has been one of the most hotly debated topics in patent law and has been in flux for far too long. Unfortunately, the Supreme Court is unlikely to weigh in on patent eligibility this term.

The Supreme Court’s decision to pass on addressing patent eligibility may be a blessing in disguise. Between 2010 and 2014, the Supreme Court addressed patent eligibility in four monumental cases: Bilski v. Kappos, Mayo v. Prometheus AMP v. Myriad, and Alice v. CLS Bank. These cases turned the patent world on its head. What constituted patentable subject had forever changed.

Since then, the U.S. Patent and Trademark Office has struggled to secure a handle on what constitutes patent eligible subject matter. As of recent, the U.S. Patent and Trademark Office has taken significant strides to clarify what constitutes patent eligible subject matter and provide some consistency during examination. Unfortunately, there is still a lot of work to be done to ensure that applicants are receiving a fair examination.

For now, patent practitioners will have to rely on the U.S. Patent and Trademark Office’s 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”). Unfortunately, the 2019 PEG does not constitute written law and may be subject to future scrutiny by the U.S. Court of Appeals for the Federal Circuit. Only time will tell how patent eligibility will be addressed in the future, but we will remain optimistic until then.

What constitutes patent subject matter can be a difficult question. At Smith & Hopen, we have an experienced team of attorneys that can properly advise you on all matters related to patent eligibility.

Smith & Hopen Intellectual Property Firm Front Entry Door

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How to Trademark Clothing

For makers of apparel, trademarking a new brand may be the single most important investment in the value of the business. Brands like CALVIN KLEIN, CHRISTIAN DIOR, LACOSTE and RALPH LAUREN are international fixtures and worth billions of dollars.

Avoiding Ornamental Refusals

Unfortunately, for new designers, one of the most common mistakes is applying their brand improperly to their clothing line as ornamentation. Silkscreening your brand or logo onto the center of a clothing item will likely draw a rejection as mere ornamentation.

Smith Hopen logo used as decoration on a shirt (non-trademark use)
A well-informed trademark examining attorney would find this is not a proper specimen of trademark use. Rather, it using the Smith Hopen logo as “decoration.”

Shirt with Smith Hopen logo on left breast
A well-informed trademark examining attorney would find this is a proper specimen of trademark use.

Trademark examining attorneys at the U.S. Patent & Trademark Office (USPTO) will frequently note that consumers have been conditioned to recognize small designs or discrete wording as trademarks if placed, for example, on the pocket or breast area of a shirt. However, consumers typically do not perceive larger designs or slogans as trademarks, especially when such matter is displayed in a different location on the clothing.

Smith Hopen brand tag on an article of clothing
The best place to affix a brand for apparel is on a tag at the collar or a string-connected labels to the clothing.

Branding Apparel on a Budget

Another way to quickly satisfy the USPTO requirements is to print your trademark on a sheet of clear adhesive labels. These can be purchased at any local office supply store. Stick these labels onto the shirts, pants, accessories, etc… This is what the trademark examining attorney is looking for….a direct connection to associate your trademark with the goods you are selling under the brand name.

Customer Impressions of Brand

Now that you know how to trademark clothing, remember to take every opportunity to expose your brand to the potential consumer. This helps solidify your trademark position and can increase the recognition of your brand. Remember that the quality of your tags, branding and promotion should be in alignment with the price-point of your apparel. Extremely high-end apparel requires high-end labeling.

Ready to Protect your Brand?

Smith & Hopen Intellectual Property Firm Front Entry Door

Contact us today or book an appointment online.

Respond Quickly to Office Actions

Well-informed, experienced patent attorneys strive to respond to office actions as quickly as possible. Office actions on a patent application are issued from patent examiners at the USPTO. Getting a patent is a balancing act between two objectives:

  1. having a patent that is narrow enough to be valid over the prior art; and
  2. having a patent that is broad enough to capture infringing products and activities.

In most cases, the patent examiner concedes the invention is new and useful but wants to make sure the patent claims are balanced. After all, the patent grant is a powerful legal right….a 20-year monopoly and restraint of trade.

It is human nature to forget

Short and long term memory are distinct features of the human brain and patent examiners still have hundreds of thousands of backlogged cases. For any individual patent examiner, your application may be one of hundreds he or she is assigned to. Quickly responding to office actions improves the chance the case will keep moving along.

If we wait until the 3-month statutory deadline to respond (or longer with
extensions) we lose the opportunity to return the case to the examiner while the application is still fresh in their mind. If an examiner picks up our response many months later it is like starting over from the beginning.

Don’t Lose Patent Term

Prior to June 8, 1995 patents enjoyed a 17-year term from the date of issue. Therefore, we were not in such a hurry to respond to office actions. However, patent terms are currently 20-years from the date of filing. Therefore, the length of usable patent term is diminished by delay. Consequently, if you do not respond quickly to patent office actions you are giving up potentially valuable patent term.

Contact us Now and Keep the Momentum

Do not delay…work with your patent counsel to promptly respond to your pending office action.

Smith & Hopen Intellectual Property Firm Front Entry Door

Contact us today or book an appointment online.

Patent

Patent cases on contingency introduce some complexities not found in other areas of the law. We are occasionally asked to write a letter, file a patent application, or handle a lawsuit on a contingent fee basis. Our policy is to decline such requests because contingency fee arrangements are usually unfair to the client.

Suppose a client asks us to write a demand letter for $100,000 on a contingency fee basis, telling us to keep a third of the proceeds if the letter results in payment. We could receive a legal fee of $33,333.33 for a letter that would normally cost about $600.00. It makes much more sense for the client to pay the small letter-drafting fee and keep the proceeds.

Signing a document

The same logic applies to the filing of a patent application. To avoid a $10,000.00 legal fee for preparation of a mechanical patent application, for example, a client may propose that we waive the fee and participate in the profits derived from the invention. If the invention meets with commercial success, the client could pay a fee far in excess of $10,000.00.

If the invention is not commercially successful, we have worked for two to three weeks with no revenue, even though our overhead bills never stop coming in. We have no control over whether or not an invention meets with commercial success, because that depends upon the marketing efforts made by the inventor, not upon the quality of the patent application. Consumers don’t purchase products because the patent application for the product is well-written. Being full-time patent attorneys, we can do no more than advise our clients to avoid marketing scams.

A different reasoning applies to lawsuits. Contingency fee arrangements are common in personal injury (PI) cases because the only issue in such cases is damages. The liability is usually clear and most PI law firms will not accept a case on a contingent fee basis if liability is not clear. Thus, the only issue in most PI cases is how large the payment will be, not whether or not there will be a payment. In intellectual property cases, liability is always disputed. An accused infringer will attack the validity of the patent by citing prior art that was not cited by the examiner, and will argue noninfringement as a backup defense. A typical patent infringement suit lasts two or three years and requires the full-time attention of at least one lawyer. No lawyer with an office can stay in business without revenue for such a long period of time. Personal injury cases, on the other hand, are over much quicker and, again, the only issue is the size of the recovery.

In most cases, we are able to quote a flat fee for our services. This removes the uncertainty caused by hourly rates. When a lawyer quotes a fee of $300 to $500 per hour to write a letter or to prepare a patent application, the inventor’s reply is always “Write fast.” Well, that leads to a letter or patent application prepared in a bum’s rush. A well-crafted letter, patent application, or an amendment to a patent application, is best prepared in a relaxed, well thought out manner. A flat fee protects the client from surprises, ensures a thorough preparation of the application, and is, we believe, the only fair alternative to hourly rates and contingency fees.

Tag: fees

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Related U.S. Application Data block in a published continuation application

The United States Patent and Trademark Office (USPTO) has allowed your patent application and it is about to become an issued United States patent. Congratulations on your accomplishment! You are about to become a United States patent holder–a distinction reserved only for true visionaries and innovators. Prior to the issuance of your patent, you have an opportunity to continue building your patent portfolio and expanding your patent rights by filing a continuation patent application. Interested in finding out more about the advantages of filing a continuation patent application? Read on.

A patent is a barrier to competition. Well-informed patent attorneys seek to anticipate how competitors will attempt to design around the patent claims. While broad claims are sought, they must also be drawn with precision to avoid invalidity in view of prior art. Sometimes, neither inventor nor patent attorney can anticipate how a technology may evolve. After a patent is granted, a patent holder has very limited avenues for changing the scope of patent coverage. The two most commonly-used methods for accomplishing this objective are as follows:

  • Reexamination: Either the patent owner or a third party challenger may cite new (or unapplied) prior art arguments against an issued patent. This procedure is frequently initiated in response to litigation seeking to cancel patent claims.
  •  Reissue: A patent reissue is often filed when prior art was inadvertently withheld during patent prosecution or the patent claimed too much (or too little). A patent’s scope can only be broadened within 24 months after it issues. After that, reissue amendments can only maintain or narrow the scope of coverage.

Both reexamination and reissue proceedings can be expensive and create new liabilities in the protection of an invention. However, there is another cost-effective method: filing a continuation application prior to the issuance of the “parent” application.

A continuation patent application must have the same specification and drawings as the parent application, but the continuation application can have a different claim scope. Therefore, a continuation application provides an opportunity to broaden or modify patent coverage for your invention. Because the continuation (the “child” application”) claims priority to a co-pending “parent” application, their patent terms are “coterminous.” Accordingly, continuation applications do not “extend” the patent term. However, by keeping at least one “child” application alive, the patent holder may update, modify, and even include additional subject matter in a later filed “continuation in part” (CIP) application.

In some cases, your patent attorney may recommend filing your continuation application with a request for deferred examination. You can find more details about deferred examination here.

Category: Patent

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Generally speaking, a utility patent will last 20 years from its filing date. In contrast, a design patent lasts 15 years from the day it is granted. There are also several factors that can affect the term of a patent, i.e., when a patent will expire. These factors include, but are not limited to, whether the patent is a continuation application, whether a terminal disclaimer was filed, whether any patent term extension was granted by the U.S. Patent and Trademark Office, and whether the patent owner has paid the necessary maintenance or annuity fees.

You should consult an experienced patent attorney to determine when a patent will expire. Feel free to contact Smith & Hopen for additional information.

Category: Patent

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Booking a consultation does not automatically create an attorney-client relationship. However, no successful patent attorney will “steal” your invention. In fact, the reality is that inventing is hard work. It takes not just the spark of imagination, but project planning, marketing, capital investment and competition with the status quo. The attorney-client privilege in our profession is exceptionally strong: we are bound by confidentiality by both the state bar and the U.S. Patent & Trademark Office Rules of Professional Conduct. The attorney-client privilege is the client’s right and is fiercely protected by ethical attorneys.

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A non-provisional patent application is a legal document filed with the U.S. Patent and Trademark Office. It contains all of the formal requirements to be examined. If properly prosecuted and assuming your invention is novel and not obvious, your non-provisional patent application will issue into a patent.

The content and formal requirements of a non-provisional patent application are extensive and complex. You should consult an experienced patent attorney to ensure that your non-provisional patent application is properly prepared and prosecuted.

Category: Patent

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A provisional patent application is legal document filed with the U.S. Patent and Trademark Office that identifies your invention and establishes your priority date as the inventor. A provisional application will not be examined or published, and will not mature into an issued patent. Rather, it provides a 1-year window during which a non-provisional application should be filed to maintain your priority date. If you fail to file a non-provisional application within the 1-year window, you will lose your original priority date.

Establishing your earliest possible priority date can be critical. You should consult with an experienced patent attorney to ensure that your provisional patent application contains all of the necessary information to establish that you invented your invention as of the provisional filing date. Information not disclosed in the provisional patent application will not receive the same priority date as the information disclosed in the provisional application.

Upon filing the provisional patent application, you will be patent pending. However, you will not receive any patent rights while you are patent pending. In order to receive patent rights, you will need to file a non-provisional application and said application must issue into a patent.

Category: Patent

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No, you cannot renew a patent for an additional 20-year term. Utility patents have a 20-year term and design patents have a 15-year term. Patents rights are discharged discharged into the public domain when they expire.

Under some circumstances, the patent term may be extended. Our experienced patent attorneys can advise you on whether you have received or are entitled to an extension of your patent term.

A patent will also expire if the patent owner fails to pay the scheduled maintenance fees. Smith & Hopen employs a state of the art docket management system designed and built in-house to ensure that our clients never miss a maintenance fee.

Category: Patent

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Utility patents are granted for inventions that are new, useful and non-obvious.

Category: Patent

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Six Milestones to Trademark Registration

The timeline for federal trademark registration typically takes one year but that often depends on the strategy for filing. There are generally two types of trademark registration filings: (1) in-use; and (2) intent to use. An in-use filing is self-explanatory, you are already using the trademark in commerce. An intent-to-use application typically takes longer because we submit evidence of use at a later stage. Irrespective of filing type, there are six milestones to watch for in the trademark registration process.

Trademark registration timeline of milestones in process

#1: Searching the Trademark Candidate

The eligibility of a candidate trademark for federal registration is determined by the federal trademark register which includes existing, live registrations and earlier-filed pending applications. Typically a client will present several trademark iterations for searching. It takes about 15-45 minutes for an experience trademark attorney to conduct a preliminary clearance of the mark for registration or determine it will have issues. If the investment in the brand is a multi-million advertising campaign and possible international protection, then a more extensive search makes good sense. However, for most trademark filings, the mark should be cleared within a day or so. Trademark filings are time-sensitive. Ownership of federally registered trademarks is typically determined by the earliest filing filing date.

#2: Filing the Application

Timing-wise, this is the most important milestone of the trademark registration process. Filing early is critical. We have direct experience in seeing a client lose trademark rights by filing their application later on the same day as a competitor.

The trademark application is filed electronically and a confirmation receipt is immediately received. For an intent to use application, only: (1) the trademark; (2) the recitation of products/services; (3) declaration; and (4) payment is required to secure a filing date. It should be noted that for a number of reasons, trademark should only be filed in the name of a corporation or company, not in the name of an individual or partnership.

#3: Examination

Trademarks are substantively examined by a trademark examining attorney at the USPTO approximately three (3) months after filing of the application. Common refusals include:

  • Likelihood of confusion with an existing registration or earlier filed trademark application;
  • The mark is merely descriptive and conveys a characteristic, ingredient or purpose of the underlying product or service sold under the mark;
  • The mark is generic and incapable of trademark significance; and
  • The recitation of goods or services is unclear and needs correction.

If the mark is initially refused registration, the attorney has six months to respond but unless there is a good reason to delay, the turn-around is much faster. For many issues, a simple call to the USPTO trademark examining attorney may address the issue.

When the USPTO trademark examining attorney finds the application has no issues barring registration, an important milestone has been reach. The trademark examining attorney will approve the trademark application for publication.

#4: Publication for Opposition

About three months after the trademark is approved for publication, it is published in the Official Trademark Gazette. This previously was a hard-copy publication that trademark attorneys would scour to make sure no pending application would conflict with their existing clients’ registrations. Now there are automated trademark watch services. If a party believes it would be damaged by registration of the trademark it may file an opposition with the Trademark Trial and Appeal Board (TTAB). If the party cannot initially decide whether to file an opposition, they can (without cost or disclosing why) file an Extension to Oppose the trademark application.

Trademark oppositions are rare but we have handled many of them. They are administrative proceedings governed by the federal rules of civil procedure and include discovery and trial phases. Most of the discovery is done with requests for admissions and interrogatories but depositions may be taken. When the matter comes before the TTAB judges’ panel, it is usually just attorneys that argue the record of evidence obtained through discovery. TTAB proceedings may take a couple years.

When the opposition window has closed, and not opposition or extension to oppose has been filed, the client can rest much easier. This is a positive milestone to reach in the trademark registration process.

#5: Registration

Assuming no opposition is filed, the trademark (if filed as an in-use application) will register about three months later. If the trademark was filed as an intent-to-use application, then instead of a registration grant, the trademark application is allowed. This means the trademark registration will be guaranteed provided the trademark applicant timely submits evidence of use of the trademark in commerce. There is a six month deadline to submit this evidence but it can be extended for up to three years with extension fees.

Once registered, the federal trademark symbol can be used. Therefore, prior to registration, we would display SMITH & HOPEN™ while post registration we have the right to display SMITH & HOPEN®. Examples of two federal trademark certificates of registrations are shown below:

Federal registration confers a number of benefits including:

  • National rights
  • Incontestability (after 5 years)
  • Enhanced Remedies
  • Presumption of Validity
  • Constructive Notice
  • Importation Protection
  • Federal Court Jurisdiction

Federal trademark registration is also a powerful asset in uniform domain name dispute resolution proceedings.

#6: Renewal

Federal trademark registrations must be renewed between the 5th and 6th year after registration although a 6-month grace period is available with a fee. The next renewal is between the 10th and 11th year from registration and then renewals occur every 10-years. Unlike a patent or copyright which has a finite lifetime, properly maintained trademark registrations may last indefinitely.

An important advantage of federal trademark registration is incontestability. Upon the first renewal, a Section 15 Affidavit of Incontestability can usually be filed which makes the trademark registration immune to all infringement defenses except:

  • The trademark has become generic
  • The mark has been abandoned
  • The trademark was fraudulently acquired

In conclusion, these six milestones to trademark registration take approximately one year. It is critical to clear and file a trademark candidate as soon as possible to secure the best possible ownership rights. If you have any questions on the trademark process, do not hesitate to contact us or even book a call online.