If you have a question (particularly a tough-one) not addressed in our frequently asked questions, do not hesitate to contact us.
Make sure you ask these 10 questions before hiring a patent attorney to protect your intellectual property. Selecting a firm to handle your intellectual property may be the make-or-break decision in your business endeavor. Don’t go about it causally. Ask serious, pertinent questions about the qualifications, experience and reputation of the firm you are going to use.
- Exclusively patent and trademark? Is your practice exclusively focused on Intellectual Property? YES. We limit our practice exclusively to Intellectual Property…nothing else. Every single practitioner is registered with the U.S. Patent & Trademark Office.
- AV-rating? Is the Firm AV-Rated with Martindale-Hubble? YES. This is the highest possible rating. According to Marindale-Hubble, “AV Preeminent is a significant rating accomplishment- a testament to the fact that a lawyer’s peers rank him or her at the highest level of professional excellence.”
- Extranet access? Do you provide extranet access? YES. Clients have 256 bit encrypted access to all matters. 24/7 access to billing, deadlines and case progress. We maintain full transparency to clients. To our knowledge, we are the only intellectual property firm that offers this level of convenience to clients.
- Representative clients? Do you represent both small and large business entities? YES – Some of our clients include USF, UCF, University of Colorado, FAMU, Florida Poly, UNF, Moffitt Cancer Center. Our firm is subject to an extensive vetting process when large clients evaluate our credentials. We also represent a large number small businesses making innovations in their own area of expertise.
- Patents and trademarks found valid in litigation? Do your patents and trademarks survive litigation challenges? Our goal is to draft patent and trademark applications in an effort to avoid subsequent challenges and litigation. While no attorney can ethically guarantee an outcome, our attorneys strive to anticipate challenges to validity and develop strategies to prevent invalidation.
- Technical expertise for patents? Do you have technical depth to understand the technology? YES – All Disciplines. Mechanical; Electrical; Software; Chemical; Life Science. Our group of patent practitioners constitutes one of the largest pure-IP practices in the South East United States. See our practice summary publication for specific technology backgrounds.
- Considered experts in intellectual property? Are you considered experts in Intellectual Property? YES – most partners are Board Certified in Intellectual Property by the Florida Bar (2 of only 140 nationally). This is the highest level of acknowledged proficiency in patent, trademark and copyright practice.
- Teaching experience in intellectual property? Do you have teaching experience? YES – University of Florida College of Law; University of South Florida; Florida Bar; U.S. Dept. of Defense; Moffitt Cancer Center; Florida A&M; Florida State U.; Tampa Bay Technology Forum; U. of Central Florida.
- International Patent Filings? Do you practice internationally? YES – foreign law firms select our practice for U.S. entry for patent applications originating in Europe, Japan, China and other countries. Our economy is truly a global one and knowledge of foreign rights, importation and competition is essential.
- Value in our patent and trademark practice. Do you provide the highest value? We are a national firm, but because our principal office is located in southwest Florida, we enjoy reasonable fixed and variable overhead business expenses.
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. They tell 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.
Contingency in Patent Applications
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. This is even though our overhead bills never stop coming in. We have no control over whether or not an invention meets with commercial success. 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.
Contingency in Patent Lawsuits
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 focused, 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.
No attorney should ever send a bill they would not pay themselves. One benefit of hiring an experienced, specialized firm is that we’ve already seen almost every intellectual property scenario. Clients do not get billed for us to learn even moderately complicated issues of patent, trademark or copyright law.
With thousands of patent and trademark prosecutions under our belt, we handle matters efficiently knowing the path to take to achieve the best possible result. The same applies to more complicated proceedings such as Inter Partes Review and Trademark Trial and Appeal Board proceedings. Where we can estimate a flat fee, we provide a written estimate ahead of doing the work. Where the matter is contested, such as a litigation, we bill down to the second with detailed logs of the work we perform to advance the client’s objective. There is no “rounding” up to the next thirty minutes or hour.
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.
When you book a consultation, you might think you will have a long agreement to sign before we get started. We are often asked by clients for a “letter of engagement” prior to discussing an invention, a new branding campaign or other activity. We don’t provide such letters. Why? Simple: we find them a clear conflict of interest.
As attorneys, we can inject terms and conditions into such agreements that dramatically favor the law firm over the client. However, what about our duty to represent our clients’ best interests? These letters of engagements proffered by bar associations and legal practice advisors immediately set the attorney and client in an adversarial relationship. A well-informed client would not sign such agreement without legal review. So, would the client have to hire Firm B to review an engagement letter for Firm A? Would Firm B also have a letter of engagement to sign prior to the review? The result is nonsensical.
There are generally three requirements for a work to be eligible for copyright protection. One requirement is that the work must be original. In addition, the work must be a work of authorship. Finally, the work must be fixed in a tangible medium.
What is the originality requirement for copyright eligibility?
To be original, the author can not copy the work from another source. In addition, the work must possess a minimal amount of creativity (i.e., a “spark of creativity”).
What is a work of authorship for copyright eligibility?
A work of authorship is a work that falls within one of eight (8) categories of eligible works. These categories include:
- Literary works;
- Musical works;
- Dramatic works;
- Pantomimes and choreographic works;
- Pictorial, graphic, and sculptural works;
- Motion pictures and other audiovisual works;
- Sound recordings; and
- Architectural works.
What is the fixation requirement for copyright eligibility?
An author achieves fixation by meeting the two requirements below. First, the author must “fix” the work in a “tangible medium of expression.” Second, the fixation must be “more than a transitory period of time.”
Some examples of fixation include a novel written on paper, a painting created on canvas, a recording of a play saved on a recording device, or an article written and saved on a computer. In each of these examples, the captured works are all fixed in tangible form for more than a transitory period of time. Thus, each example meets the fixation requirement under copyright law.
In conclusion, for a work to be eligible for copyright protection, it must be original, a work of authorship, and fixed in tangible form. If these requirements are met, your work can be registered with the U.S. Copyright Office.
Unlike restrictions on the federal trademark registration symbol ®, as soon as creative expression is reduced to tangible form copyright exists. Typically, you can mark you book, software, etc… with the copyright symbol, the year of publication, the claimant and “all rights reserved.” For example:
© 2020, Smith & Hopen, All Rights Reserved.
However, if you want to recover: (1) statutory damages; (2) court costs; and (3) attorney fees, you need to register your work with the Copyright Office within three (3) months of publication or before actual infringement. Otherwise, you will likely be arguing for “lost profits” which are difficult and costly to quantify in court.
What works are eligible for copyright protection and usage of the copyright symbol?
There are certain requirements for a work to be eligible for copyright protection and thus usage of the copyright symbol. Specifically, there are three requirements for a work to be eligible for copyright protection. One requirement is that the work must be original. In addition, the work must be a work of authorship. Finally, you must fix the work in tangible medium. In conclusion, for a work to be eligible for copyright protection, it must be original, a work of authorship, and fixed in tangible form.
Recipes fall within patent-eligible statutory categories, since a final food product is “a composition of matter,” and the steps to create the food product represent a process. For patentability, the recipe passes the first hurdle. However, to be patentable, the recipe must also be new—as in, no one has ever performed the steps and/or formed the product before—as well a nonobvious. The nonobvious threshold is often the death of a recipe patent.
Contingency in Patent Applications
Contingency in Patent Lawsuits
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.
Advantages of a continuation patent application
A continuation patent application must have the same specification and drawings as the parent application. However, 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.
Generally speaking, a utility patent will expire 20 years from its filing date. The filing date extends back to the earliest related patent application. The earliest related patent application will include foreign applications. However, provisional applications are excluded from the calculation.
There are also several factors that can affect the term of a patent. These factors include, whether the patent claims priority to other applications, whether the patent is subject to a terminal disclaimer, whether the U.S. Patent and Trademark Office added any patent term, and whether the patent owner has paid the necessary maintenance or annuity fees.
Regardless of the type of patent, all patents will eventually expire. Once expired, the disclosed information disclosed becomes part of the public domain. This means that the information contained in the patent is public property and can be used freely by anyone. To confirm, you cannot refile or renew your patent after it runs its full 20-year term (15-year if a design patent).
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.
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.
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.
A trademark registration can last indefinitely. However, there are a few requirements to maintain the registration. One requirement is that you continue to use the mark in commerce. The other main requirement is that you continue to renew the registration. If you do those things, and assuming your mark does not become genericized, your trademark registration can last indefinitely.
In fact, the oldest trademark registration in the United States dates back to 1884 and is owned by Samson Rope Technologies, Inc. Samson’s trademark is a combination of a design element and the word SAMSON. The registration covers the company’s “cords, lines, and ropes” products. You can see the trademark below.
Because Samson Rope Technologies has continued using its mark in commerce and continued renewing its registration, its registration is over 135 years old. It will be interesting to see how long this registration will last.
More information on renewals
You must renew your trademark registration between the 5th and 6th years after registration, another 5-6 years after that, and then every 10 years after that for as long as you use the mark. For each renewal, you must show the United States Patent and Trademark Office (USPTO) that you are continuing to use your mark in commerce. If you fail to file your renewal documents, your registration will go abandoned.
Requirements for use of the registration symbol
You may only use the trademark registration symbol if you have an official trademark registration certificate. You can obtain an official trademark registration certificate from the U.S. Patent and Trademark Office (USPTO). The (R) symbol serves to inform others of your registration. However, you cannot use the (R) symbol if you do not have a registered trademark.
Benefit of using the registration symbol
Under the current state of the law, use of the registration symbol establishes that the defendant in a trademark infringement case had constructive knowledge of the trademark registration. In a trademark infringement case, a trademark owner will forfeit the right to recover lost profits and damages unless the trademark owner can establish that the infringer had knowledge of the trademark registration prior to the infringement. Proving actual knowledge can be extremely difficult. However, the trademark owner can establish constructive knowledge if the registration symbol was displayed in connection with the trademark. Even if the infringer did not have actual knowledge of the registration, it is reasonable to conclude that the infriger had constructive knowledge. In other words, the infrigner cannot feign ignorance to avoid a finding of trademark infringement.
Use the registration symbol as soon as possible! But remember, you cannot use the registration symbol until you secure a trademark registration. Prior to securing a registration, you can use other symbols to notify others that you believe you have rights in your brand. However, those rights are likely far more limited than the rights obtained through a trademark registration. so, register your trademark and use the proper symbols to maximize your rights!
The differences among (R), TM, and SM are related to the registration status of the trademark.
You may only use the trademark registration symbol “(R)” if you have an Official Trademark Registration Certificate. You can obtain an Official Trademark Registration Certificate from the USPTO. The (R) symbol serves to inform others of your trademark registration. However, you cannot use the (R) symbol if you do not have a registered trademark.
You can use the TM symbol for both unregistered and registered trademarks. The TM symbol conveys that you believe that you own rights in the trademark. Additionally, the TM symbol commonly symbolizes a trademark owners’ common law trademark rights in the mark.
The SM symbol stands for “service mark.” This symbol is nearly identical to that of the TM symbol, with one exception. This symbol is used in association with services, rather than products or goods.
It is important to understand the differences among (R), TM, and SM. If you are using the wrong symbol, you may be forfeiting certain rights or violating the law.
For example, in a trademark infringement case, a trademark owner can recover lost profits and damages if the trademark owner can establish that the infringer had knowledge of the trademark registration prior to the infringement. Proving actual knowledge can be extremely difficult. However, the trademark owner can establish constructive knowledge if the registration symbol was displayed in connection with the trademark. In other words, the infrigner cannot feign ignorance to avoid a finding of trademark infringement. Thus, you may unintentionally forfeit your ability to recover lost profits and damages if you do not use the registration symbol and can’t prove that the infringer knew of your trademark rights.
Policing your trademark is an important task for maintaining the strength of your trademark rights. There are passive and active approaches:
- Waiting until instances of confusion arise between your brand and that of a third party.
- Periodically searching the Internet and industry for potentially infringing brands.
If your trademark has real value, you’ll want to proactively monitor the U.S. Patent & Trademark Office trademark application filings to determine if anyone is seeking rights to a confusingly similar brand. It is difficult for even the most experienced trademark attorneys to do this manually because one must look not just for “identical” trademarks, but those with:
- phonetic similarity;
- orthographic similarity and misspellings;
- prefix, infix and suffix variations;
- vowel and consonant similarity;
- plurals and stemming;
- abbreviations and acronyms; and
- other similarities
Well-informed brand owners and intellectual property practitioners set up sophisticated trademark watch services for an annual fee. Every 1-2 weeks, the monitor queries trademark databases in the U.S., Europe and in other countries for newly filed applications that could infringe the trademark owner’s rights.
For a litigation-grade trademark registration we often start with a knockout search. If the mark is a reasonable candidate for registration, budget approximately $955-$1,600. The process takes about a year and once granted, budget around $100 per year to keep a federal trademark in-force with renewals. No attorney can ethically guarantee a trademark will grant. The examination process at the U.S. Patent & Trademark Office (USPTO) is adversarial and even when approved by the trademark examining attorney, every mark must be published for opposition for one month wherein private parties can oppose the registration of a trademark.
While it is possible to trademark a last name/surname, you cannot secure a federal registration on the principle register for a trademark that is primarily merely a surname. You can secure a trademark registration for a surname that has acquired distinctiveness or a surname that is not primarily merely a surname. In addition, you can register a trademark that is primarily merely a surname on the supplemental register.
A trademark office action is a formal communication from the U.S. Patent and Trademark Office. The office action identifies the legal status of your trademark application. The office action will also identify any issues with your application and designate the period in which you must reply to office action to prevent your application from going abandoned.
You may require assistance from an experienced trademark attorney to overcome the issues identified in the office action. In the last 20 years, Smith & Hopen has helped trademark owners overcome every possible reason for refusal. Contact us today for a free consultation.
The difference between a service mark and a trademark is a matter of semantics. A service mark is a trademark. However, the term “service mark” is used to refer to trademarks for services. The term “trademark” is often used in a broader sense to describe marks used in connection with goods and/or services.
Regardless of whether you are offering goods or services in connection with your trademark, the experienced attorneys of Smith & Hopen can advise you on all things trademark. Contact us for additional information or a free consultation.
A trademark is any distinctive words, designs, logos, and slogans used to identify the origin of a good or service. In some cases, even a particular color, sound, and scent can be trademarked if a certain degree of consumer recognition has been achieved. A trademark is sometimes referred to as a “brand name.”
A trademark can be registered with the U.S. Patent and Trademark Office to secure nationwide trademark rights. These nationwide trademark rights prevent others from offering for sale similar goods or services under a similar trademark. Trademark rights, however, will not prevent others from offering for sale similar good or services under a clearly dissimilar trademark. You should consult an experienced trademark attorney to determine if your trademark is available for registration with the U.S. Patent and Trademark Office.
You can trademark your first name. The main purpose of a trademark is to identify a source of goods and/or services. Should you choose, you can use your first name to identify the source of your goods or services.
However, your trademark application could still be denied if it is confusingly similar to a preexisting trademark application or registration. You should consult with a trademark attorney to determine whether your name is available for trademark registration.
Yes, you can trademark a color, but it is challenging and you must prove it has acquired secondary meaning. It cannot be “functional” with respect to the product (e.g., bright orange traffic cones). Some examples include brown for UPS trucks, pink fiberglass for Owens Corning insulation and orange scissor handles.