IP Law For All

Correcting Patent Applications

2007-03-04T09:50:00.000-08:00

Once filed, new matter cannot be added to a patent application.

Permitted correctiv amendments are obvious typographical errors, correcting drawing problems such as overly faint lines and correcting mis-numbering between the specification and the drawings, provided no new matter is added.

In other words, the content of a application cannot be corrected by amendment. A content correction requires the filing of a continuation-in-part application, which is known as a C-I-P or CIP application.

A provisional patent application cannot be corrected in a manner.

More about patent applications at the USPTO website at www.uspto.gov and my website at www.noreklaw.com

USPTO 2006 Statistics

2007-02-17T14:45:00.000-08:00

In 2006, the patent application allowance rate continued its downward creep, down to 54%.

In 2006, patent examiners completed 332,000 patent applications in the year, which means about 180,000 applications were approved, and about 152,000 were not.

By not-approved is meant the application remained rejected after completion of the prosecution stage. A rejection on the first Office Action merely kicks off the prosecution stage.

Trade Secrets and Their Risks

2007-02-10T14:11:00.000-08:00

Trade secrets have a potential of unlimited protection time-wise. But they have their own unique risks.

If the trade secret can be discovered by examination of the product or service, trade secret protection is worthless. Even full-force reverse engineering is a legitimate business technique against which you have no complaint recognized in the law.

If the trade secret is discovered by a failure to maintain sufficient secrecy controls, trade secret protection is lost.

If the trade secret is independently re-invented by a third party, trade secret protection is lost. They might even be able to obtain patent rights thereon.

These are risks that can, and sometimes should, be taken. An independent professional opinion, however, may be prudent before the risks are taken.

More about trade secrets, patents and other intellectual property areas on my website at www.noreklaw.com

IP vs Patent Attorney?

2007-02-03T13:46:00.000-08:00

Not an infrequent question, namely what is the difference between an intellectual property (IP) attorney and a patent attorney?

Answer is simply that patents are intellectual property (in fact the king of intellectual property) and so a patent attorney is an intellectual property attorney, but not all intellectual property attorneys are patent attorneys.

More - the phrase intellectual property only came into use sometime in the 1980s. The various professional associations then were titled patent associations, although some members practiced only trademark or copyright or trade secret law. I think they started up for patent attorneys and later admitted attorneys in the other areas, but I could be wrong here.

Any attorney licensed to practice law in any state can practice in these other IP areas. Not so with patents.

Practicing before the USPTO in patent matters requires a registration, and eligibility to even attempt being registered requires at least a significant undergrad background in the physical sciences. Yes, us patent attorneys are also engineers, or chemists, or physicists etc.

So many attorneys say they are IP attorneys who will never get close to a patent application because they are not eligible for registration as a patent attorney.

Have I straightened out this issue? (I am a chemist with math/physics minors.)

Trademark Oppositions - Overview and Timing

2007-01-20T14:58:00.000-08:00

All applications for registration of a mark on the Principal Register that have passed the examination stage are published for opposition.

The publication opens a thirty-day window period for filing a Notice of Opposition, or a request to extend the time period for so doing.

A time extension granted to one party cannot be used by another party.

Upon the filing of a timely and sufficient Notice of Opposition, an inter partes Opposition proceeding will be declared by the TTAB (Trademark Trial and Appeal Board).

Publication: The publication of an application for registration is actually printed in the Official Gazette. The date of publication, however, and all relevant information, is available on the USPTO's website at www.uspto.gov. The publication date is critical information. The publication opens a 30 day window for filing a Notice of Opposition or a time-extension request. The date of publication is posted on the website upon its assignment, ahead of actual publication.

Requests for Extensions of Time to Oppose:
Must be made in writing.
Must identify the potential opposer with reasonable certainty.
Must be made prior to termination of the thirty day window period, or prior to termination of extended period.
Must in combination come to no more than 90 days unless upon consent or stipulation of applicant (see below).

Extensions Restricted to Requester: A grant of a time extension runs only to the potential opposer who filed the request. Each potential opposer must seek their own time extension.

Practical Extension Practice: A potential opposer can (a) first request a 30 day extension, and then request an additional 60 days, or (b) first request 90 days. Good cause must be shown except on a first request for just 30 days.

Timeliness Critical: Time and timing are critical here. No one can use another's time extension. No one can rely on another's opposition. Further, a cancellation proceeding against an issued registration is not an equivalent because the burden of proof is shifted.

More on trademark oppositions at the official USPTO website www.uspto.gov and my website, particularly at www.noreklaw.com/tmoppositionsentry.htm

Patent Requirements - Nonobviousness

2006-11-12T09:30:00.000-08:00

To be patentable, the subject matter must be useful, new and nonobvious.

The nonobvious condition on a patent grant is set out in 35 U.S.C 103. This condition is outlined below.

Under the statutory provision, a patent may not be obtained if:
- the differences
- between the subject matter sought to be patented and
- the prior art
- are such that
- the subject matter as a whole would have been obvious
- at the time the invention was made
- to a person having ordinary skill in the art to which said subject matter pertains.

A rejection on obviousness either
- nodifies a prior art reference or
- combine two or more prior art references.

The term "obvious" applies to this modification/combination. If the modification/combination is obvious, then the rejection is proper.

To determine if a modification/combination is obvious, it must meet three basic criteria.

First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings.

Second, there must be a reasonable expectation of success.

Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations.

More information in the MPEP section 2142. This is the Manual of Patent Examination Procedures, and a copy can be downloaded at the USPTO's website at www.uspto.gov

Hyperlinking

2006-11-04T16:58:00.000-08:00

Hyperlink only with permission granted.

Most website pages have content protected by copyright. Facts embodied in content are not subject to copyright protection, while the authorship is. Via copyright protection, the copyright holder has the exclusive right to make copies of the work and to distribute copies of the work, among other exclusive rights.

Hyperlinking to another's website, particularly to an internal page within the website, is probably a distribution of a copy of a protected work without permission.

On the practical level, some website owners have a strong preference for site-entry through the pages it selects.
Even websites operated by departments and agencies of the federal government want hyperlinkers to clearly advise users that the link leads to a government page, and not one of their own.

Hyperlinking to a website's entry page is still an issue in flux. Most website owners want the publicity, or we wouldn't be out on the Internet. Delighted with some of such hyperlinks, but not comfortable with others. The jury is still out.

More info on copyrights at the U.S. Copyright Office's official website www.copyright.gov and on my website www.noreklaw.com

Who Protects Patents?

2006-10-29T15:19:00.000-08:00

U.S. patents are granted (issued) by the U.S. Patent and Trademark Office (USPTO).

The USPTO is located in Alexandria, Virginia, and conducts business regarding patent applications almost exclusively in writing.

The responsibility for enforcement of an issued patent is the patent owner's burden. If someone is infringing an issued patent, and refuses the owner's demand to cease (or take a license), the owner's recourse is to file a federal District Court action for patent infringement.

The USPTO's involvement with issued patents is primarily limited to (a) collecting periodic maintenance fees (required to keep a patent from premature expiration), (b) examine reissue applications and (c) conduct reexamination requests.

More information on patents at www.uspto.gov and www.noreklaw.com (my website).

USPTO Examination of Patent Applications

2006-10-08T09:33:00.000-07:00

The USPTO goes through a significant examination of patent applications.

Examination overview: To be patentable, the subject matter must be both new and nonobvious in comparison to what is known. All patent applications (except provisional applications) undergo a serious examination by a USPTO patent examiner.

This examination includes a search and initial determination on whether the subject matter, as defined in the claims, meets the new and nonobvious patentability standards.

Examiner's initial rejections of claims are embodied in an Office Action ("Action"). A professional response to claim rejections is typically a combination of claim amendments and arguments on the law as applied to the case's specific facts. A professional application preparation incorporates the support and fall-back positions for such claim amendments and arguments.

Actions also include any other objections - typically routine and/or minor if application was professionally prepared.

No one can guarantee that a meaningful patent will ever issue. The odds of obtaining meaning patent protection increase with the skill and experience of the attorney you select.

Reprinted from my website at www.noreklaw.com

Who Protects Copyrights?

2006-09-17T09:05:00.000-07:00

Who protects copyrights? The U.S. Copyright Office, and no one else.

Copyrights are created when an author creates a copyrightable work in a fixed medium, and are protected by registration with the U.S. Copyright Office.

The U.S. Copyright Office has no subsidiary registration facilities.

The U.S. Copyright Office has only a single website - www.copyright.gov

If it is not a U.S. Copyright Office registration, it is not a copyright registration.

Only copyright registrations with the U.S. Copyright Office provide statutory protections.

Copyright rights and protections are governed solely by federal law.

The U.S. Copyright Office's only website is www.copyright.gov and its .gov (not .com).

Reprinted from my website at www.noreklaw.com

Can You Trademark Someone Else's Name

2006-09-10T09:44:00.000-07:00

Can you trademark someone else’s name?

A name “identifying a particular living individual” cannot be registered as a trademark without written consent. 15 U.S.C. §1052(c).

The name in question does not have to be a full, or legal, name.

This impediment to trademark and/or use protects privacy rights and publicity rights that living persons have in the designations that identify them.

Publicity rights of celebrities routinely survive their deaths, so the impediment to trademark registration and/or use extends to deceased celebrities.

Whether intended or not, if the public would recognize and understand the trademark as identifying a particular person, consent is required.

Such public identification means the person is sufficiently known in the field of the product or service that an association between the person and the trademark will be made by the relevant public, or

The person is so well known that the name will invariably be associated with the person (such a Prince Charles).

Reprinted from my website at www.noreklaw.com

Can Someone Else Trademark Your Name?

2006-09-10T09:41:00.000-07:00

Can someone else trademark your name?

A name “identifying a particular living individual” cannot be registered as a trademark without written consent. 15 U.S.C. §1052(c).

The name in question does not have to be a full, or legal, name.

The “your name” factor alone is insufficient.

You must be sufficiently known in the field of the product or service that an association between you and the trademark will be made by the relevant public, or

You must be so well known that the name will invariably be associated with you (such a Prince Charles).

The same principles apply to trademark use.

Your remedies are opposing a registration application if it successful passes the registration stage or a Section 43(a) trademark action.

Reprinted from my website at www.noreklaw.com

Can You Trademark Your Name?

2006-09-10T09:35:00.000-07:00

Can you trademark your name?

A name “identifying a particular living individual” cannot be registered as a trademark without written consent. 15 U.S.C. §1052(c).

The name in question does not have to be a full, or legal, name.

If it’s your name and your registration application, your consent will either be presumed or easily provided.

You must, of course, use your name as a trademark or service mark in commerce.

Reprinted from my website at www.noreklaw.com

Why Patent your Innovation?

2006-09-04T10:10:00.000-07:00

Let me count the whys:
- to secure an exclusive market
- to license the innovation
- to find capital and/or partners
- details below

Ask yourself:
- why did you bother innovating?
- do you want to profit from it?
- does the innovation have value?
- does it have a potential spot in the market?

An innovation with value and a potential spot on the mark is a profit candidate, but candidate only, not a certain contender.

Established businesses - can upgrade their current lines with exclusive products and/or services, and facilitate finding the working capital, if the innovation has patent protection.

Other than established businesses - it ain't easy, particularly without product development experience, without available trade lines and often without a good handle on value and market-potential realities.

Patent thresholds - must be new and nonobvious given what is known (what is known includes far more than what you see out there) and then must be aptly patented.

Finding capital and/or partners is near impossible without the means to protect your market, and that the means is decent patent protection.

Find more information about patents on my www.noreklaw.com website.

Why Protect you Trademark?

2006-09-04T10:01:00.000-07:00

Let me count the whys:
- to keep your clientele
- to keep your trademark
- to keep your business good will
- details below

Ask yourself:
- why did you select the trademark?
- do you like the trademark?
- does the trademark add value?
- does the trademark impact the bottom line?

A trademark is a product or service source identifier. It’s a brand name or logo. It’s what those folks who are or might become your customers/clients remember, hopefully.

A trademark is the handle steering folks to your products, your services, your business.

If your trademark was well selected, it has that something special – it attracts, it sets the right tone, it is remembered, it is repeated. It is one of your primary marketing and selling tools.

And if the trademark works, it is adding value and impacting your bottom line. Toss the trademark and toss the value and bottom-line impact.

To keep your clientele:
- to keep them finding you when they search for the trademark
- to keep them from following the trademark elsewhere
- to keep them recognizing something unique in the trademark

To keep your trademark
- protect it or lose it
- if others use it, you lose it

To keep your business good will
- trademark loss leads to perception of business discontinuity
- trashed trademarks foul your business
- good will advantages convert to bad will disadvantages

If the trademark means nothing to your business, why protect is a good question. If the business is succeeding, go back to the top and reread.

The retail giants of the world very seriously protect their trademarks from infringers, counterfeiters, trademark abusers. They recognize the value of their marks, and how much they contribute to the bottom line.

More comments and information on trademarks on my www.noreklaw.com website.

Patent Ownership - Inventors and Assignees

2006-08-19T13:59:00.000-07:00

Inventors must be identified:
U.S. patent laws require the identification of all individual inventors.
Failure to name an inventor, or naming a non-inventor as an inventor, can invalidate any patent that might issue from an application.
There is no legal significance in the order in which inventors are named.

What makes someone an inventor:
Only persons who contributed to the conception and/or the conversion of a conception to a practicality are inventors.
Persons who contribute financing or marketing or other auxiliary assistance only are not inventors.

Assignment and ownership:
Persons or businesses can acquire an ownership interest in a patent application by assignment from the inventor.
The inventor granting the assignment is an assignor.
The person or business receiving the assignment is the assignee.
An inventor can assign a co-ownership interest by assignment to himself/herself and a non-inventor jointly.
The granting of such ownership or co-ownership rights should never be attempted by misjoinder of persons as inventors when they are not.
A patent application is owned by the inventors if there is no assignment.
Joint inventors/owners of a patent application hold their rights as tenants in common, not joint tenants.

Reprinted from www.noreklaw.com

Budweiser Neither a Beer nor Trademark in Germany?

2006-08-12T13:58:00.000-07:00

Yes, Budweiser is neither a beer nor a trademark in Germany, sort of.

Use of our well known Budweiser brand name (trademark) is verboten in Germany. Why? The Budweiser trademark in Germany belongs to Czech brewer Budjovick Budvar n.p.

So Budweiser is a trademark in Germany, but not the one known so well here.

Lesson here? Not an overwhelming message. If you go global, you might find yourself looking for brand alternatives. Hey, even Nike has run into prior users in European countries.

Our well known Budweiser beer is made from rice, which does not meet the German legal definition of beer. I would never argue beer issues with a country that puts out so many great ones.

More intellectual property topics at www.noreklaw.com

Hyperlinking

2006-07-15T14:49:00.000-07:00

Hyperlink only with permission granted.

1. Most website pages have content protected by copyright.

2. Facts embodied in content are not subject to copyright protection, while the authorship is.

3. Via copyright protection, the copyright holder has the exclusive right to make copies of the work and to distribute copies of the work, among other exclusive rights.

4. Hyperlinking to another's website, particularly to an internal page within the website, is probably a distribution of a copy of a protected work without permission.

5. On the practical level, some website owners have a strong preference for site-entry through the pages it selects.

6. Even websites operated by departments and agencies of the federal government want hyperlinkers to clearly advise users that the link leads to a government page, and not one of their own.

7. Hyperlinking to a website's entry page is still an issue in flux. Most website owners want the publicity, or we wouldn't be out on the Internet. Delighted with some of such hyperlinks, but not comfortable with others. The jury is still out.

Republished from my www.noreklaw.com website.

A patent is not a trademark is not a copyright

2006-07-08T12:50:00.000-07:00

A utility patent protects new and useful inventions, such as devices, processes, chemical compositions and more. Patents are issued by the USPTO, and then only if the application qualifies after a rigorous examination.

A design patent protects only the appearance of useful objects, and then only if the appearance is new and nonobvious.

A provisional patent -- does not exist. There are only provisional patent applications. More . . .
A trade secret protects business-confidential information, such as product ingredients, processes, customer lists, and more. Legal recognition stems from the nature of material and manner of maintaining its confidential status.

A trademark is a brand name or logo used on or for products (or services) sold in commerce. Trademark rights are created by commercial use and enhanced by registration. Trademark registrations are issued by the USPTO, and then only if the application qualifies after examination and after the public has an opportunity to oppose the registration.

A service mark is a trademark (a brand name or logo) used on services sold in commerce. See "trademark" above. (The term "trademark" is routinely used generically for both trademarks used on products and service marks used on services. The better generic term of "mark" is not always used.)

A trade name is a business name. It is the name used commercially by a business entity. Trade name rights are created by commercial use, and are not eligible for registration (unless also used as a trademark). Legal recognition stems from commercial use, and legal protection is typically under unfair competition statutes.

An action under unfair competition and/or Section 43(a) are protections afforded commercial enterprises against unfair business practices, including (but not limited to) unregistered trademark and trade name infringements.

A copyright protects original works of artistic and literary authorship, such as paintings, jewelry designs, sculptures, software, photographs, books, cartoons, music scores, scripts, movies, sound recordings and more. Copyrights are created when an author creates such a work in a fixed medium, and enhanced by registration. Registrations are issued by the U.S. Copyright Office.

Privacy and publicity rights protect against the unauthorized use of one's image and/or name for commercial purposes, the the scope of protection depends on one's status as a private figure, public figure or celebrity.

More information on patents and trademarks available on the USPTO official website (and there is only one) at www.uspto.gov and on my www.noreklaw.com website.

Robert Langer inducted into Inventors' Hall of Fame

2006-05-28T14:13:00.000-07:00

One of the 2006 inductees into the Inventors' Hall of Fame is Robert Langer, one of the most significant innovators in the field of controlled drug delivery systems.

Langer earned his doctorate at MIT in 1974, and is an Institute Professor at MIT.

His work began with the use of both nondegradable and biodegradable polymers to producee timed chemical release systems targeting cancerous tumors. His innovations include a system for delivering post-op chemo chemical at the site from which a brain tumor was removed.

Although the article I saw regarding his induction did not mention his academic field, I am presuming it is chemistry or chemical engineering, and that his doctorate is a Ph.D. On the list of inductees, the name of Langer stood out. Organic Chemistry by Langer and Langer was a well known textbook. I still have mine. This was before Robert Langer began his work.

Reality Check for Unpublished Authors

2006-01-31T10:48:00.001-08:00

"Why aren't book publishers more interested in new authors?" A question I have heard quite a number of times. A question that I cannot authoritatively answer because I am an intellectual property attorney and not a book publisher.

So my answers are generalities, namely the financial risks. Conventional publishers bear the financial risks. They pay the costs involved in producing the product, namely the book. If the book does not sell well enough to cover those costs, and any promotion costs, the publisher loses money. Losing money can put a business out-of-business.

Published authors have a track record, and possibly also an established following among consumers. That helps a publisher size up the financial risk. Without a track record, the risk issues become huge.

According to a quotation from a conventional, and well established, publisher in a Wall Street Journal article today, more than 4,000 copies of a hardcover book must be sold before the break-even point is reached. My understanding from persons who have done self-publishing is that getting even to the 1,000 copies sold mark can be extremely difficult.

Do the math. There is no money made until break-even is reached and passed.

Past Decade Sees Tripling of Patent Filings

2006-01-23T17:01:00.000-08:00

According to published USPTO statistics, the number of patent applications filed annually jumped from 126,000 in 1985 to more than 409,000 in 2005. That's a tripling, or better.

Worse for the strain on USPTO resources is vast number of claims being sought in many applications. Despite the additional not-insignificant USPTO charges for claims totaling more than 20, and independent claims in excess of 3, patent applications with 100, or 200, or more claims are not uncommon in some fields.

There are now about 4,000 patent examiners at the USPTO, which number is a recent increase from about 3,000 examiners. The USPTO currently disposes of 400,000 each year, but that disposition rate is insufficient to cut down the lag time between filing and examination.

The average lag time before examination after filing is now 30 months, up from about 18 months not so long ago.

The new rules being considered, which will limit initial examination to about 8 claims, will most likely be enacted. Will that, plus the scheduled additional 1,000 examiners per year, be sufficient?

More information about patents and the patent application process on the USPTO website at www.uspto.gov and my website at www.noreklaw.com

Public Vetting of Patent Applications

2006-01-12T17:17:00.000-08:00

Tuesday's WSJ included an article about IBM leading a consortium to facilitate the public's "weighing in" with prior art during the USPTO's patent examination procedure.

The article included some misleading statements (a common problem in media reporting on intellectual property matters) and possibly obscured a couple of significant IP issues.

That patent applications are "public documents" is not correct, if public means accessible to the public. Unlike the trademark side of the USPTO, all patent applications are kept absolutely non-public and confidential, until the application is published 18 months after filing.

Next, if there are no foreign counterpart filings, and if a nonpublication request is filed with the U.S. application, the non-public and confidential status is retained until a patent issues, if ever.

Even if the application is published there is no public access to the application file. The public will have an application number etc. with which a prior art citation can be filed. Note however that the person filing the prior art citation will not become privy to its disposition or anything else.

If an application is not published, the public does not know of its existence, unless the inventor or assignee opts to tell them. Reports of application filings, or that a patent will be issues, are private reports that come from the application owner, and are not verifiable with the USPTO.

On the other hand, the volume of patent applications being filed is a serious problem for the USPTO, and the lack of historical prior art databases in the computer and business method fields is another serious USPTO problem.

So if IBM or anyone else wishes to help solve these problems, good for them. (IBM is one of the highest volume application filers, if not the highest - with 3,000 some patents issuing each year, so it should avoid any ...... .... .... type attitude, however.)

The USPTO has been examining patent applications and issuing patents long, long before patent applications were being churned out on IBM Selectrics (contact me if you want to know what a Selectric is, or was), and long long before computers were invented (I think sometime between WWI and WWII). Technology and innovations have been around long long before IBM was established.

If anyone does not know what WWI and/or WWII are, were, that is an easy Google.

Its unfortunate that some "techies" think they invented the patent system and/or can conform it to their models. Read the rules. They apply to all patent applications. Always have. Always will. More on the rules at www.uspto.gov (official and only website of the United States Patent and Trademark) and www.noreklaw.com (that's mine).

Honest Trademarks in, for 2006?

2005-12-30T10:40:00.000-08:00

Among a series of new-business articles on AOL today is one advocating choosing business names and trademarks that reflect honesty and directness.

The geographic and founder's surname type of selections recommended in the article have some protectibility issues.

Two, not one, legal questions arise when a mark or business name are being selected. First is availability. Second is protectibility. At least the article mentioned availability.

The article panned "fanciful" marks and names. A fanciful mark and/or name has the greatest protectibility, if it is available.

Also to its credit, the article strongly suggested to avoid the obvious. The "obvious" mark and/or name is the Paint Shoppe or Sandwich Depot or Blaster Cap marks of this world. Very low on the protectibility scale, and routinely off the availability scale.

Incredible how some folks just fall in love with their obvious, obvious marks and names. Do you really need to tell the world what it is or what you do in the trademark or business name? Insecurity. The tale should be told after the mark and/or name, not in it. Just a few words is all it takes.

The bottom-line of this posting is the question whether or not honesty, directness and credibility can be shown in a mark and/or name that is neither geographic nor a surname, nor an obvious.

Honesty, directness and credibility can, and hopefully are, shown in your conduct of business. Need you tell folks about it in your mark and/or name? What if these qualities are not the norm for some business? Would they be doubly dishonest if they chose an honest-type mark and/or name?

A play on words, a play on concepts. And no obvious. That is where a great mark/name starts.

See more about naming and branding at www.noreklaw.com
Select the Naming & Branding page listed in the "About" pages selections.

Coke Without Coke, a Trademark Issue

2005-12-08T17:35:00.000-08:00

A news story today on AOL about the 1891 purchase of the Coca Cola recipe triggered thoughts about an early 1900s U.S. Supreme Court decision on the 'Coke' trademark.

The fun part of the decision is the trademark challenge itself. The challenger contended that the Coca Cola Company had no legitimate trademark rights in the mark 'Coke' because Coca Cola no longer contained any cocaine. The use of 'Coke" for Coca Cola, according to the challenger, was false advertising.

You think I am making this up. I am not.

As discussed in the Supreme Court decision, the deletion of cocaine from Coca Cola was not the company's idea. The FDA (or its then forerunner) adopted a policy outlawing cocaine from general consumer food and beverage products.

The Coca Cola Company complied with the new rules but continued to use and police its 'Coke' trademark. That policing eventually led to the trademark dispute and challenge.

The Supreme Court rejected the challenge, finding that consumers recognized the term 'Coke' as a trademark for the soft drink, and not as a suggestion that the drink contained cocaine. Therefore there was no misleading advertising in the use of the 'Coke' mark.

Tread softly, or not at all, when thinking of treading on someone else's trademark rights.

More on trademark rights and prohibitions at the USPTO official website at www.uspto.gov
And on my website at www.noreklaw.com

Copyrights on Replicas

2005-12-04T09:42:00.000-08:00

It may surprise many but a person who makes a replica of a public-domain work of art might possess their own copyright protection. Not on the public-domain art work, but on the replica.

Whether or not copyright protection attaches to the replica depends on the changes made by the replicator.

Changes that might provide copyright protection must be reflected in the appearance. A change of medium with no discernible appearance changes will not provide copyright protection. If the original is done in precious gems, and yours is done in fakes, no protection if they look alike.

The change in the appearance must be more than trivial. Where is the line between trivial or non-trivial? There are a wide range of opinions on this from different federal courts. Lets say here instead that it does not take much to move a change into the non-trivial bracket.

Beware. If the original work is still under copyright protection, a replica even with lots of visible changes could be considered an infringing derivative work.

See more on copyright facts on the U.S. Copyright Office's website at www.copyright.gov and on my website at www.noreklaw.com

USPTO Statistics

2005-11-30T08:52:00.000-08:00

The United States Patent and Trademark Office (USPTO) has posted its issuance statistics for the past year. In brief, 85,238 utility patents were issued to U.S. residents (business entities and individuals), and 65,841 were issued to non-U.S. residents.

The patents issued to residents of the state of California was 23 percent of the total issued to U.S. residents. That is an awesome percentage.

On the trademark side of the USPTO, 143,396 new registrations issued and 32,279 registrations were renewed. Renewals are required every ten years after the registration date, so one-tenth of the registrations come up for renewal each year.

Over seven million patents have been issued since 1790, and over three million federal trademark registrations have issued since 1870.

Further details are posted on the USPTO's website at www.uspto.gov
Information on patents, trademarks and copyrights also at my website www.noreklaw.com

Independent Inventors' National Contest

2005-11-22T17:17:00.000-08:00

The National Inventors Hall of Fame is conducting a "Modern Marvels Invent Now Challenge" contest for independent inventors. The top award is $25,000 towards development of the winner's invention. Runner-ups are provided opportunities to showcase their inventions, and some receive lesser awards.

The National Inventors Hall of Fame is sponsored by the USPTO (United States Patent and Trademark Office). Information is posted on the USPTO's website www.uspto.gov

Or go direct to the NI Hall of Fame website www.invent.org for details. Its home page alone is worth the bother. One of the best I have ever seen.

IP Symbols - Where to Put Them

2005-11-21T10:04:00.000-08:00

The prior posting outlining the use of intellectual property symbols omits one important issue, namely, where to put them.

This post covers the three trademark symbols - the TM, SM and encircled-R trademark symbols.

The trademark symbol (whichever of the three that is appropriate) should be placed adjacent the mark, without any intervening material. Further, the symbol is conventionally superscripted or subscripted.

Before the appropriate placement is made, however, you must identify what is part of the mark, and what is not part of the mark. Folks can (and frequently do) stumble on these mark/not-mark identifications.

Example:

If your mark is "Charlie" being used as the brand name for chocolate bars, a correct symbol placement is:

Charlie TM Chocolate Bars

A wrong placement in this example would be putting the TM after Chocolate Bars. Such a misplacement would flag the entire phrase "Charlie Chocolate Bars" as your trademark.

(If your mark is "Charlie Chocolate Bars" being used as the brand name for chocolate bars, you have a different problem. You have a problem that started with the trademark selection. The generic term for the product should follow the trademark, and not be put into the trademark. If you put the generic term into the mark, you diminish the protection the mark can provide. You have created a negative without any off-setting positive. Why do that?)

IP Symbols, Patent Pending, etc.

2005-11-20T10:43:00.000-08:00

Quick list of intellectual property symbols, short-forms, etc.

Patent Pending:

means a patent application has been filed
the application can be a regular, non-provisional application, or a provisional application
does not mean a patent will ever issue
is a warning that a patent might issue

A TM sign:

flags an unregistered trademark
usually superscripted or subscripted
expresses owner's belief and/or intention
(trademarks are brand names for products)

A SM sign:

flags an unregistered service mark
usually superscripted or subscripted
expresses owner's belief and/or intention
(service marks are brand names for services)

An encircled R symbol:

flags a federally registered trademark or service mark
cannot be used unless the mark is federally registered
indicates USPTO validation of mark
usually superscripted or subscripted
replaces either the TM or SM sign when the mark is registered

An encircled C symbol:

first element of copyright notice
word Copyright can be used instead
followed by year date of publication and owner's name
used whether or not work has a copyright registration
copyright notice not required, but highly recommended.

Sorry but the symbols themselves are not available on the program for blog posting here. More information on patents, trademarks and copyrights available on my website www.noreklaw.com and the USPTO www.uspto.gov and U.S. Copyright Office www.copyright.gov

A warning - if you have a restaurant, you are selling a service, not a product (except carry-outs), so use the SM sign until your brand name (ususally the restaurant name) is federally registered.

A Provisional Will Increase your Patent Office Delay

2005-11-16T15:42:00.000-08:00

Yes, a provisional will increase the delay you will suffer because of the Patent Office backlog, rather than speeding anything up.

This post addresses the "patent pending in two weeks" or "... for $350" ads, and the misunderstandings they spread.

Simple facts. There is no such thing as a provisional patent. A provisional is a patent application, not a patent. Both provisional and non-provisional patent application get you a "patent pending" instantly, the moment they are filed. The practical differences between the two? A provisional adds costs and a year extra time-wise to the process.

Why does a provisional increase costs and time? Because it is not in line to be examined. You have no patent protection until a patent issues, and that cannot happen until the application is examined.

If you file a provisional first, you then must file a non-provisional. Your application does not get in line to be examined until it is a non-provisional. Your provisional has been wasting time, rather than moving up along the line as a nonprovisional would have been doing.

In addition, when you finally file a non-provisional, you won't receive any credit against the filing fee for the fee you paid when you filed the provisional. You are merely a year and money behind.

Why oh why don't those folks with the ads warn you? Guess. Another way of saying it is -- if it sounds too good to be true, it isn't. (Starting with a professional patent search is even better, because you are wasting both your time and money if your idea is already known. But the folks with the ads won't warn you about that either.)

More information about provisionals -- see the United States Patent and Trademark Office's website at www.uspto.gov
or at my website at www.noreklaw.com

U.S. Patent Office Backlog is Increasing

2005-11-15T15:35:00.000-08:00

The U.S. patent office (patent side of the USPTO) announced a case disposal/intake imbalance at the recent AIPLA Annual Meeting.

Approximately 275,000 applications were disposed of, and 375,000 new applications came in last year. In other words, the backlog is increasing at a rate of 100,000 cases per year. That is almost twenty-five percent of the USPTO's annual disposition capacity.

Among proposals being considered are limiting the number of claims examined per application and limiting the number of references that can be cited in an IDS without a statement of relevance. There were pros and cons voiced on these and all other proposals mentioned.

The bottom-line bad news for current and prospective applicants is the long delay to be expected before examination. The current delay in the business method field for financial and insurance related applications is approaching nine years. I am seeing delays in excess of two years in traditional fields. Some clients are impatient after one year. The more-than-eight years statistic is astounding.

The Exclusivity of Trademarks

2005-11-06T16:14:00.000-08:00

Trademark rights provide exclusivity to the use of the trademark. This is not an overly profound statement, or at least I formerly thought that.

Earlier today, while surveying website navigation formats on other patent, copyright, trademark websites, I came across the statement that

"You can also use the mark to maintain yourself as the exclusive source of a product or service."

Wrong, wrong, wrong, or at minimum misleading. And this statement was prominently placed on a website that is very popular, very successful.

It would be correct if it said:

"You can also use the mark to maintain yourself as the exclusive source of a product brand or service brand."

Exclusivity runs to product brand, not product. After all, McDonald's has acquired huge degree of exclusivity in their McDonald's trademark, but none whatsoever in hamburgers. You can make and sell hamburgers as similar in appearance and taste as you choose, but you cannot call them McDonald's.

The only IP area that provides product/service exclusivity is patents, and that exclusivity is gained only if your invention (it must be yours, not something you have seen) meets the severe novelty and nonobvious requirements. (Trademark requirements do not approach patent requirements, either as to type nor severity.) And patent exclusivity lasts only for a set period of years, and cannot be renewed. (Trademarks can be renewed and renewed, as long as the mark is kept in use, and therefore can approach being perpetual.)

So the folks behind this website now appear to be offering a "cure" to the limitations of the otherwise-awesome power of patents -- and unfortunately many, many unsophisticated (and even some rather sophisticated) individuals and small business owners will believe them. And they will be duped. And many will also reject the actually when explained by a legitimate IP attorney.

Yes, I used the word "legitimate" above -- and the implication was intended. It appears that what once was a patent law firm for the 'small guy' (although the 'small guy' has been known to get rather limited patents through that firm, and very little good-patent/poor-patent counseling) has now turned into some type of Super Invention Promotion outfit, with a scam them here, scam them there, and dupe whenever possible approach. Unfortunately their reputation as 'out there for the small guy' will live on despite the duping.

Last comment -- their website navigation format is rather good, and so I recommend the site to anyone looking at website navigation issues, and not to anyone else.

When Someone Else is Registering Your Trademark

2005-11-05T13:27:00.000-08:00

This happens. Someone else is not only using your trademark or business name, but they are also registering it. Now this is a problem. It was also a problem before they started registering it.

And so you just go and file a registration application of your own, and wait for the USPTO (United States Patent and Trademark Office) to figure out you had it first? Nooooooooo. The USPTO helps those you help themselves. So here are some starters.

First, this someone else should be notified, in writing, that they are infringing. That letter (no email here) should not say or suggest you are going to sue them now, unless your IP attorney has a formal Complaint on its way to a Federal District Court. If you threaten to sue, they can sue you in a Declaratory action.

Second, you file your own registration application, realizing that its examination will be suspended if the prior application is still being examined. But you cannot stop there. The progress of the prior application must be constantly watched, because you must file an opposition to the registration when that period comes up. You should never wait until after a registration issues, because the burdens of proof switch, to your disfavor.

Do not, however, forget the initial presumption, namely that someone else is infringing your trademark or business name. That must be the first issue considered by your trademark attorney. Your conclusion might be incorrect in the first instance. What if, instead, you are infringing theirs, or there is no likelihood of confusion for one or more factors you have not considered.

Bottom-line is not to wait for the USPTO to find and correct your problem. That is not their mission. That is not their authority. It is up to you to act.

Before You Invest, Search

2005-10-21T14:07:00.000-07:00

Heard another sad story a few days ago. A friend of an initial inquiry built a thriving business over a three year period and only then found out someone else was using the same business name. Worse, that other outfit started using it before he did. He now has a grace period, which ends at year's end, during which he must change his business name.

Before you invest, search. This is said repeatedly on my noreklaw.com website. That sad story could be anyone's story, that is, anyone who failed to have a professional search conducted before they before they started their business. I wish there was someway this could be screamed to the entire world -- before you invest, seach.

Whomever this friend is, he is a victim only of his own oversight. Cannot blame the first outfit to use the name. Their business name was being infringed. No options here. They must insist on a capitulation, or lose their own rights.

The loss to this second-user will be much more than the cost of new stationary. There will inevitably be a loss of business-recognition, a loss of customers, and a loss of face. Why rely on a business that has failed to manage its own? These are serious losses. When starting-up, of course finances are tight, but remember that your business name, your trademark, and whatever intellectual property you own, or believe you own, can well be your most valuable assets.

Another After the Patent Post

2005-09-11T14:14:00.000-07:00

The Wall Street Journal published a story on July 14, 2005 about the invention, and inventor, of the TurboTap. The story is in line with the "target little, not big" theme of my prior post.

The TurboTap is a nozzle that attaches to a standard beer tap. It cuts the time to pour a beer from eight to under three seconds. It will also get six to eight extra beers out of a keg.

The inventor made his first prototype in college, and refined it over the next few years. He went to extreme tasting tests to assure it did not change a beer's taste. And then took it to the big brewers. No dice. No interest. Like so many stories.

But this story has a happy ending, at least so far. Who would gain most from using the TurboTap? Vendors at stadiums and other places who have large numbers of taps operating at the same time, and who must get those beers poured fast. The faster the pour, the more the sales. And he got the sales he was looking for.

And he also has gotten the attention of at least one big brewer. Remember, the folks with no interest. And this provides another lesson, namely, if you get out there without meaningful patent protection, and are successful, you have just provided the large companies with a free marketing survey. You will be wiped out.

Where to Go With It After the Patent

2005-09-11T13:45:00.000-07:00

The dreams of after-the-patent fortune seldom come true for small businesses and individuals. A patent does not a fortune make. But how about some payoff, some return on the investment?

Warning. Do not set your heart on the Wal-Marts of this world. The discounters will discount you out of business, and possibly into downright poverty.

So where to go? Three or four starter suggestions.

Retail it yourself on the Internet. Build your own website. (Yes, it can be done, and its fun.) Promote it on auction sites such as eBay. Get into "pay per click" advertising, but carefully. (Find the cheaper "possible but unlikely" keywords.)

Retail it yourself to niche groups at specialty shows, rallies and the like if it is a product that targets consumers with a particular interest.

Wholesale it to smaller specialty retailers, catalog outfits, etc., whether brick and mortar or Internet stores.

Last but not necessarily least, wholesale it to the promotion merchandise outfits who sell quantity lots to businesses with their logos on it.

A small bite of the pie is better than nothing at all, and that bite might grow.

No Such Thing As a Provisional Patent!

2005-09-10T10:36:00.000-07:00

While perusing key words and their use frequency in Internet searches I was surprised to find that more searches use the words "provisional patent" than "provisional application" or "provisional patent application".

The use of the "provisional patent" misnomer can for some be just its simplicity. It is easier to type in "provisional patent" than the long phrase "provisional patent application". Also using just "provisional application" will bring out hits unrelated to patents.

Nonetheless, use of the phrase "provisional patent" has brought provisional patents to life in some people's minds. The print media is probably using the term also, which will imprint it further in the minds of the public. What a shame, because provisional patents do not exist.

I repeat, provisional patents do not exist. There is no such thing as a provisional patent. If you think there is, and are going to act upon that thought in some way, please talk to an experienced patent attorney.

Now there are provisional patent applications. It will not be examined. It will never issue as a patent. There are some situations where they are use to secure a filing date ahead of the filing of a full-fledged patent application. The overall cost is more, but sometimes the extra cost is worthwhile.

If lack of money is your reason for filing a provisional, forewarned that a provisional patent application is a waste of money unless you find the money for a normal, nonprovisional, patent application well before the one year deadline.

It takes weeks, and often months, for the preparation of a true patent application. Therefore it would be foolish to wait for the eleventh hour, or the eleventh month, to start the application's preparation. And again the overall the cost of filing a provisional first, and then a normal application, is higher than just filing a normal application at the start.

Again, provisional patents do not exist. Do not let anyone tell you different.

More information about patent applications and provisional patent applications can be found on the USPTO website at www.uspto.gov and on my website at www.noreklaw.com

Cashing in on Invention after Fourteen Years?

2005-08-16T17:42:00.000-07:00

The Chicago Tribune reported a fourteen year effort in invention and marketing that might now succeed after all those years of effort. See the Chicago Tribune, 08/15/2005, Innovations column in the business section.

The invention is a carry-with tubular device that revitalizes worn grips on golf clubs.

The inventor, Westy Foss, is reported to have depleted significant financial resources in the development and marketing of the patented device without generating sufficient sales to maintain an independent business.

Now working with a partner, it is hoped that promotional sales (to outlets that will offer the product with purchaser's logo imprinted, in bulk sales) will reap the long-sought rewards.

Do the math. Do the homework. Learn from others. A patented and unique, plus useful, product. Sales, even with an up and running website, were found insufficient. Again learn from others - that it ain't easy.

Peculiar iPod Patent, Apple versus Microsoft, News

2005-08-16T07:36:00.000-07:00

The business news has been aflame with with reports about iPod and Apple versus Microsoft on iPod patent applications. All sorts of comments about how Microsoft filed a patent application in the May after the October iPod introduction, and how Apple did not file an application until the following October. Speculation all over the place about the implications of the rejection of Apple's application because Microsoft filed first.

As a practicing registered patent attorney with decades of experience, the news was not merely curious, it was unintelligible. Now I do not expect the general news business to ever get stories about IP happenings correct. Sometimes they are close enought that I can guess what the story really is, but not this time.

As reported by the print media, the iPod patent application story was particularly disturbing. Most people are at best confused about IP matters, and this story was certain to convince many of the implied fallacies it contained. In my practice I now expect at least half of the next group of new patent clients to be operating on false, totally percent incorrect information. Unfortunately some of these will never to straightened out. After all, they read it in the business news.

The truth of the matter is this. Before any issues arise between conflicting (interfering) U.S. patent applications, each application goes through a normal examination process. And the first action taken by a patent examiner after examination of the application is the issuance of an Office Action. The first Office Action must be, under the USPTO rules, a non-final Action. It is sometimes called merely NF. That NF is the start of the interactive prosecution stage of the patent application prosecution proceeding.

An age-old saying in patent law is that you made a mistake, did not ask for broad enough protection, if you receive a Notice of Allowance rather than an Office Action on the first round.

The true story, or non-story, is that both Microsoft and Apple apparently have patent applications filed, and the claims of both apparently can be read upon features of the iPod. Microso filed filed first, but that fact does not determine the outcome. The U.S. remains, although this might change in the near future, a first-to-invent country, not a first-to-file country. Where this story will go in the future cannot be predicted on the available information, but the story has just begun. Apple has not lost to Microsoft, and might well never lose to Microsoft on these matters.

Toy Inventors Down (Not Out)

2005-07-21T13:58:00.000-07:00

The toy field has historically been one of the most, or the most, receptive to independent inventors. The toy field could even been said to depend on outside inventors. Screening the latest group of ideas and prototypes from these outsiders was routine. Many if not most of the must-have toys in the last few decades were created by these independents.

An article in the Wall Street Journal today (July 21, 2005) reports that "Idled Toy Inventors" have turned to novelty candy creations. The word "idled" was cause for concern, but I do not believe after reading the article that "idled" would remain a permanent condition.

The cause of the "idled" as reported is a combination of the consolidation of toy companies, the inevitable reliance by these larger companies on inside product development staff, and the market size being grabbed by high-tech products, leading to less interest in traditional toys.

I once saw my Father "save" a dinner party by creating a toy from an oatmeal box and a few other objects he found in the kitchen, which provided diverting entertainment for hours. Will traditional toys ever be old-hat? Unlikely.

Traditional toys have been with us since the dawn of man, and probably before. They are part of the humanity, and a necessary part. And while "tech" might now also be a necessity, traditional toys will survive and thrive. The pendulum always swings back.

And the pendulum might well swing back to smaller companies that are looking backwards, not forwards, and succeeding by being traditional.

An IP challenge is to provide some toe-hold at least on creations in the traditional toy field. And to do so in a practical manner. Many creations will go nowhere and some will be huge but short-lived. The areas of patent, copyright and trademark vary drastically as to what they protect and how much they cost. Do not rush in. A great understanding for the fields, and perhaps wisdom and/or a crystal ball, are helpful.

Many would be independent inventors focus on their own product needs, and overlook or forget their memories from childhood. They might want to give it a try.

Without Patent Protection?

2005-07-19T14:30:00.000-07:00

Meaningful patent protection can be critical to the success of a new product or even the survival of a new business, but not always.

I recall one flagrant instance of not merely failure but tragic failure. An individual with an idea for a new consumer product. Not unexpectedly that individual could not sell the idea to any large company. So the individual went forward, and got the product out there on the market. Without meaningful patent protection.

I saw the product as originally marketed, and it was a commercial grade product. A small fortune, or at least a sizable amount of cash, had been spent on the production and the packaging. And it had been sold at apparently more than one established retail outlets.

That individual's market success amounted however to nothing but providing his or her large well-established competitors with a free marketing survey. And one of them came out with a competing product. And that competing product is the only one the market today. The individual with the idea originally was left with nothing but an overwhelming bad investment.

Know the field before you decide whether to play the game. An age old truism. But . . .

The Wall Street Journal had an article today (July 19, 2005) on a hydration (water drinking) device that is a huge success with the military (here and over there) and in the sports field. The device is known as the CamelBak, which is presumably a trademark, registered or unregistered. According the the Wall Street Journal, that product was also the idea of an individual. The individual first developed the concept for people riding bikes. Serious bikers, who would pay for the advantages the product provided.

The product presumably was first out there in sufficient form to create a reasonable success. Now the product is immensely successful, with different models for different activities, and research continuing for further models. Lots of commercial competitors. The competitors are apparently not the leaders, and the corporate successor to originator remains in the lead.

Nothing in the article suggested any proprietary rights on the overall product. The article did mention a proprietary component, but that does not sound like the type of patent protection which would exclude serious competitors. The originator was doing something right from the beginning (or fantastic luck) that took the product to the first stage buy-out by an established company, which in turn took it to a greater level, and a larger buy-out, and then to greater levels.

So the need for meaningful patent protection has some exceptions. Please note that the originator stepped aside and let a larger entity run with the product. That also is reality. And businesses ultimately run on reality, or not at all.

Slogans

2005-07-05T14:12:00.000-07:00

Among the questions asked most frequently is how to secure intellectual property protection for a slogan. Let me repeat a well known quotation (or slogan?) and say "It ain't easy."

First, slogans, no matter how clever and how original, are not considered to embody sufficient original authorship for copyright protection. The U.S. Copyright Office will bounce your application.

Note that the U.S. Copyright Office does not judge the merit of someone's work. It can be a mediocre painting or a tedious article, or even a lousy poem, and it will be registered (provided of course that the required information is provided, on the correct lines).

In refusing to register slogans, the Copyright Office is not passing judgment on the merit of the slogan, but on the nature of the work as a mere slogan. The sufficient authorship requirement goes at least in part to policy as to what, and what not, can be held away from the public domain.

Second, a number of years ago it became trendy to place a trademark right up on the front of the product. My best guess is that the trend started with the little alligators. The little alligators were shown on the pockets of the shirts. Since the little alligators told everyone that you were wearing an upscale (expensive) brand, the alligators drove sales. The other manufacturers began adding their brand names to the front, and that drove sales too. Then even the off-brand brands came to the front, but that gets to a different story.

Well since putting the brand name on the front was now conventional, some folks successfully protected their slogans under trademark law, by selling t-shirts etc. with the slogan on the front and a prominent "TM" symbol.

This practice went on for quite a long time before the USPTO started clamping down on it. It still can be done, but not as easy as just slapping it on the front of a t-shirt or whatever. In fact, if a t-shirt front is your use specimen, registration will be undoubtedly be refused on the basis of merely ornamental use.

In addition, although trademark law does not require original authorship, common slogans and common symbols are excluded from trademark protection even if you establish appropriate trademark use.

If you have a "war story" in the slogan field, I would love to hear it.

About email, Privacy and Confidentiality

2005-06-26T09:42:00.000-07:00

We all know that email is not absolutely private. It can be read by someone else via the email's shuttle through the servers. Further, as far as I know, there is no law against someone else so reading it.

This lack of privacy assurance concerns some, and is of no concern to others. For my personal email, I am in the latter category. There is nothing in it of any interest to others, and I doubt if anyone is reading it anyway.

But professionally, particularly in IP law, there is a huge concern. And this concern does not depend on whether anyone reads the email or not. The fact that email could be read, without any legal infraction, is not so much a threat to actual privacy, but to the communication's status as privileged, and thus outside the reach of adversaries and courts in legal proceedings.

If by-telephone, in-person or faxed/mailed communications between an attorney and client are underhandedly and illegally intercepted by a third party, the privileged status of those communications remain intact. Privacy was reasonably anticipated when the communications were made, and therefore the illegal and unknown interception by another does not destroy the legal shield provided by the attorney/client privilege.

But when the attorney and client communicate by email, both know (or should know) that someone can legally read the email if they choose to do so. Therefore a reasonable anticipation of privacy in the communications is absent. And if privacy was not reasonably anticipated at that time, the shield of the attorney/client privilege is lost (or it never attaches to those communications), regardless of whether or not anyone else read the emails. The communications are within the reach of adversaries and the courts in legal proceedings -- in fact they are available for the asking.

That result, the loss of the privilege or, more precisely, the failure of the privilege to ever become attached to the communications, is not some pet theory. Every court confronted with the issue has so ruled.

In all IP legal matters, confidentiality is paramount. Confidentiality in all legal areas is at minimum very important. Yet I understand that email communications between attorneys and clients have become routine, and my refusal to do so is a minority position. Whatever, someone is going to be badly hurt someday, and whatever it takes, that person will not be one of my clients.

And no, it is not reasonable to avoid email only for communications you know will need the confidentiality provided by the privilege. You never can determine ahead of a communication that it won't contain something that you need to hold confidential now or someday.

If It Has Value, Think Twice Before You Provisional

2005-06-23T13:01:00.000-07:00

A provisional patent application is not the normal first step in the patent application process, and worse, it can destroy the opportunity of obtain meaningful patent protection while increasing costs.

A professional patent application is geared towards obtaining meaningful patent protection if possible. It is loaded with lawyering. Starting with what the client has, the subject matter is expanded out to the boundaries set by prior knowns. Then it is prodded and poked for every advantage that can be drawn out of it. Words are perused, discarded, selected, reordered and more, because the words ultimately used can make or break the case. The invention is not merely described but described in a manner to provide positions and hedges against all rejections that can be envisioned. The claims are drafted to capture all competing items as far as possible, and range from the broadest embodiments down to hedge positions. And the description is refined to support the claims.

If a nothing-but-what-the-inventor-has provisional application is filed and then later a professional application is filed, there will likely be a wide gulf between them. And the material in that gulf will not have the benefit of the provisional's filing date. Meaningful patent protection can be defeated at the USPTO stage, or later in an infringement dispute, if the provisional filing date is not available for critical material.

The concept of a single patent, or patent application, containing some material that has one priority date, and other material that has a later priority date, may seem rather peculiar. This concept, however, is "as old as the hills" in patent law. It applies to every CIP (continuation in part) application ever filed. New matter takes the later CIP filing date, while old matter keeps the parent's filing date.

Moreover, nowhere is this date-differential spelled out for the applicant. Unless there is a need to differentiate between new/old matter during the examination stage, it is not done. If it needs to be done at the examination stage, the applicant may well see his loss there, in the USPTO process. Or the loss might be seen later when an attempt to enforce the patent, and reap in the patent's value, is made.

The risks of filing a bare-bones provisional application are serious. The risks are heightened when applicants do not realize they exist. I suspect that most provisional application filers have no idea whatsoever that a cheap patent-pending can be very unwise if the invention has value.

And as to costs, obviously the one-step nonprovisional process is cheaper than the two-step provisional to nonprovisional process. So the applicant pays extra and risks losing his or her chance at meaningful patent protection. A good deal? Unfortunately it is the deal being heavily promoted on the Internet, without any warnings. Let the buyer beware?

Tell-Tale Signs of No Meaningful Patent Protection

2005-06-20T13:57:00.000-07:00

It is obvious that multiple posts are required to cover even a few of the meaningful patent protection basics. Stepping back from the basics to tell-tale signs of no meaningful patent protection below.

First the number of claims. Meaningless patents often have just two or three claims, and sometimes four or five claims.

Next is the length of claims. The independent claim of meaningless patents often is extremely lengthy.

Next is the detail in the claims. The independent claim of meaningless patents typically has a lot of detail.

Next is the inconsequential in the claims. The independent claim of meaningless patents has something of little to no consequence recited therein. If it does not matter whether or not the whatever has the "d" recited in the independent claim, the claims are meaningless.

Be forewarned. Be aware. Assessing patent claim value is not intuitive, but counter-intuitive. What looks good is probably bad, and what seems miserly is probably an quality work.

More information about patents and meaningful patent protection is available on my website at www.noreklaw.com

Meaningful Patent Protection: Read the Claim Elements

2005-06-20T13:09:00.000-07:00

Just because a patent issued does not mean its meaningful. Many patents issue each week that are essentially worthless. Almost invariably these worthless patents are issued to individuals and small companies. No, the USPTO is not discriminating against small entities. The problem lies elsewhere.

The scope of protection afforded by an issued patent is recited in the claims. The claims are the numbered recitations at the end of the patent, which read like this -- "Claim 1. An x comprising: a, b, c, d and e." Nothing infringes claim 1 unless it is an x that has each of a, b, c, d and e. If one of a, b, c, d or e is missing, that person's x does not infringe. Therefore if any of a, b, c, d or e are inconsequential, claim 1 does not provide meaningful protection.

Claim 1 is an independent claim. Independent claims are followed by dependent claims, which read like this -- "Claim 2. The x of claim 2 ...." To determine the scope of a dependent claim, you must add the elements it recites to the elements recited in the claim from which it depends. The more the elements, the less the protection.

Determining if a patent provides meaningful protection requires scouring at least the independent claims for any inconsequential elements before the patent issues.

Recipes Can be Patented If ...

2005-06-17T10:52:00.000-07:00

Yes, recipes can be patented if the patent application and claimed subject matter meet the statutory requirements, which can be difficult to impossible in some circumstances.

If the recipe is an old family recipe passed down through generations, the primary stumbling block is that the person who wants the patent is not the inventor. Worse, the person who is the inventor is probably no longer known or knowable. Odds are also high that this old family recipe belongs to many families and has been published someplace by someone.

Another stumbling block are the new and nonobvious requirements. Since recipes are typically combinations of ingredients that are known for some purpose. Even if the combination is new, establishing that the combination is nonobvious can be difficult. The patent application should be written with this challenge in mind, taking care to well describe every result that might be deemed new and surprising.

The issues arising under the statutory patent requirements lead many commercial establishments to protect their recipes under the trade secret laws. Trade secret protection is unfortunately of little to no value when the recipe can be determined from the finished product.

Still in Limbo, Drug Research versus Patents

2005-06-14T10:34:00.000-07:00

Among the rights a patent owner has is the right to exclude others from using the invention defined by the patent's claims. On June 13, 2005, the U.S. Supreme Court took a step towards a divestiture of this right when the "other" is conducting drug research.

The saga begins with a 1984 FDA exemption that permitted use of patented inventions for studies reasonably related to potential applications for FDA drug approvals. ( The FDA has an arduous approval system that has conflicted with patent laws in other respects.) This exemption has been used by generic drug makers for the late-phase human trials required for FDA approval.

One drug company sued another when a patented invention for early-stage animal trials. The U.S. Court of Appeals for the Federal Circuit disallowed an exemption defense for such preliminary, reasoning that the intent of Congress was to promote generic drugs.

Not so said the Supreme Court, remanding the case to the appellate court for further consideration. This preliminary victory for preliminary researchers leaves the ultimate questions still in limbo.

Self-Publishing Authors Beware?

2005-06-13T13:11:00.000-07:00

The Chicago Tribune recently reported ominous trends in the book industry. According to the Tribune article, one industry study reported a decline of 40 million books sold in 2004, and another survey reported a 12 percent increase in new releases in 2004 over 2003.

There was no indication in the Tribune article regarding whether these statistics included the so-called self-published books or not.

The self-publishing system has lately increased in popularity. In this system, the author funds the publishing and bears the responsibility for marketing the books. The author can purchase additional services, such as shipping product, from or through the numerous printers which service self-publishing efforts.

It apparently isn't easy. One rather savvy self-publisher, armed with a unique book, a class website and shelf-space at Borders, recently gave up the effort. No recouping the outlay, much less making a profit. So anyone considering self-publishing should be aware that, despite the Internet's access to the marketplace, there is room for failure. The statistics alone urge caution.

Have there been any notable self-publishing successes?

A Patent is not a Trademark is not a Copyright

2005-06-12T08:00:00.000-07:00

A patent is not a trademark, and neither are a copyright. All come under the IP heading, but each is quite different from the others.

This is the first post on the topic. The umbrella topic will be called simply "A Patent is not ..."

Patents, trademarks and copyrights -- each differs drastically as to what can be protected, as to how the proprietary rights are secured, and as to the how long the proprietary rights last.

I have seen countless people who want to "register" their invention or "copyright" their trademark or whatever. Some were from well established businesses, some from start-up, some were lawyers, and the worst has been seen in the media. If someone is muddled about the different IP areas, the media will muddle it further.

Before plunging into any of these areas, a little time spend sorting them out can reduce the risks of losing an investment or losing the proprietary rights that could have been.

When IP Firms Were Patent Firms

2005-06-11T14:25:00.000-07:00

The fast-paced world of intellectual property law was once the little-understood field known simply as "patent, copyright and trademark law." That tongue-twister was routinely shortened to just "patent" and the law firms were called "patent firms."

Back then, essentially all IP matters went to these patent firms. When IP issues arose, corporations relied on recommendations of their general law firm. Patent firms therefore had a flow of clients coming from the general firms. With a few prominent exceptions, the majority of their lawyers were registered patent attorneys because they could, and usually did, work in all of the areas.

When this order changed (the why's are left for a later post), and the term "IP" was crafted, one after another general firm created IP departments. And divided it further into Practice Groups. The traditional patent firms became "boutiques." IP became trendy, even with the courts. (Courts historically hated IP cases. The judges did not know, and did not want to know, anything about it.)

Just in time. A wide range of professionals in place when the Internet lowered the threshold for many businesses and created a wealth of new IP issues.