Category Archives for "Patent and Trademark Law"

What to Know About Provisional Patents

Provisional patents can be extremely beneficial as part of the process of filing a non-provisional application. Provisional patents grant the filer a 12 month period before the requirement to submit a formal patent takes effect, thereby establishing a patent priority date through a low cost, relatively simple process. In addition, the 12 month window allows inventors to evaluate the viability of the invention in the public sector. But it is essential to properly prepare and file a provisional application in order to attain the benefits that accompany a provisional filing.

The most important component of a provisional patent application is a full and comprehensive description of the invention. A quick, cursory explanation on a provisional application will not be deemed sufficient to protect an inventor’s patent rights. The court in Novozymes A/s v. DuPont Nutrition Biosciences APS nullified a patent because its application (along with its provisional filing) demonstrated a lack of knowledge as to the nature of the invention.

The ruling in Novozymes is instructive for prospective patent applicants who want to use research proposals for the substance of their applications. Inventors should instead focus on describing what the invention accomplishes and the functional application of that result. In a worst case scenario, an inadequate provisional application can be used by others to assert that either there was no invention, or it had not progressed past the point of expressing an idea at the time the provisional patent was filed.

In addition to providing adequate disclosure about the invention, the provisional application should include relevant claims. Although claims are not legally required, claims in the final application must have been disclosed in the provisional application filing; an omission may result in the loss of priority date for the final application. If improvements or features are added to the invention, a new provisional application must be filed to reflect these modifications.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. John Connors and his team of associates have the expertise to counsel clients through the entire patent process and the subsequent protection of rights in the patent. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about our services or to schedule a consultation.

How Trademark Rights Can Be Lost By Its Owner

An owner of a trademark must be diligent in protecting that trademark in order to claim ownership of the mark and pursue future infringement suits. There are several instances in which rights to the mark can be lost through action or inaction. The most common reasons for an owner’s trademark loss include: abandonment, improper use, failure to police and loss of distinctiveness.

Abandonment. A trademark is considered abandoned when the owner of the mark ceases to use the mark to identify its goods and services and demonstrates no intention of resuming use of the mark. According to U.S. trademark law, when an entity stops using the mark for three consecutive years, a rebuttable presumption of abandonment is implied. The cessation of use is generally interpreted as an “intent not to resume use.” In the U.S., a company may stop using the mark in connection with particular goods and services (in which case it is deemed to be abandoned), but continue to apply it to other goods and services offered by the company.

Improper use. In addition to failure to use the mark, a company’s improper use of that mark could hinder the right to trademark ownership. Essentially, the trademark must be employed in such a way as to fulfill its objective: to identify the source of the goods and services its manufacturer produces. If a mark is utilized in a manner that precludes it from serving as a signifier for a certain good or service, then it is at risk of being deemed invalid. Thus, the appearance of the trademark should follow certain specifications including isolating it from the surrounding text and using it as an adjective to describe the goods.

Failure to police. A company that fails to properly monitor third party uses may jeopardize the uniqueness of its mark by allowing other entities to introduce a substantially similar mark into the public arena. In order to prevent loss of a trademark through the presence of comparable marks, a trademark owner should avail itself of the legal means available (such as demand letters and litigation) for proper monitoring practices.

Loss of distinctiveness in the public. Otherwise known as genericide, this occurs when a court has determined that a mark has sufficiently lost its distinctive nature and is thereby generally known in the public as relating to a specific category rather than identifying a particular source or brand. Well known instances of trademarks that have been nullified based on genericide include aspirin and escalator.

The experienced team of attorneys at Connors & Associates provides its clients with knowledgeable and up-to-date legal advice in all areas of intellectual property law. Contact John Connors and his associates at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

The Importance of Bringing Infringement Cases Early

Several important decisions in trademark infringement actions have highlighted a significant lesson for any entity seeking to protect its trademarks: timing matters, and the failure to assert your mark or address unauthorized uses could lead to the relinquishment of all rights in that mark. The importance of confronting potential infringers on a timely basis is rooted in the consumer protection goals of trademark law. The general purpose of the law is to ensure that consumers are made aware of the source of particular goods and services. When a company fails to ensure the integrity of its brand, it may lose the rights associated with owning the trademark.

This legal justification is aptly demonstrated in the case of Thomas Kenneth Abraham d/b/a Paddle Tramps Manufacturing Co. v. Alphi Chi Omega (2013), where Greek organizations accused a paddle manufacturer of trademark infringement for using Greek letters and crests in its advertising materials. One of the doctrines employed by the court was laches, which is an equitable defense that provides that a plaintiff “unreasonably and inexcusably delayed” asserting a cause of action and that delay caused prejudice to the defendant. When this defense is applied, the court does not evaluate the merits of the action, as the plaintiff is barred from bringing the claim. In this case, the Greek organizations contacted the manufacturer in 1990 about a licensing agreement, and might have been aware of such use as far back as 1961 when the company began making paddles displaying the letters and crests of many fraternities. According to the court, the delay in pursuing an action for trademark infringement was excessive and unjustified.

Similarly, in the more recent case of Fitbug v. Fitbit, the plaintiff’s assertion of trademark infringement was barred by the application of the laches doctrine. Both plaintiff and defendant are manufacturers of electronic tracking devices, with Fitbit being the second company to launch its products in September, 2008. The court determined that September, 2008 was the date upon which Fitbug became aware of Fitbit’s activities, and thus the filing of a trademark lawsuit in 2013 was unreasonably delayed. While the court did not provide a decisive time limitation, it determined that 4.5 years was “presumptively untimely.”

Connors & Associates provides expert legal advice in the areas of patent, trademark and copyright law, and can provide thorough, experienced guidance through all stages of your intellectual property matter. Contact John Connors and his team of associates at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

What is the Scope of Patentable Subject Matter?

The scope of eligible subject matter for patent protection has become the subject of increasing debate and confusion in the past few years. According to section 101 of U.S. patent law, the classes of patentable subject matter include “any new and useful process, machine, manufacture, or composition of matter.” This provision contains deliberately broad and extensive language with the goal of encouraging research and development. Yet the flexible scope of the statutory subject matter provision is limited by certain qualifications that are intended to maintain competition and encourage innovation.

The limitations of the statute expressly restrict patent eligibility to something that is a machine, manufacture or composition of a process. Moreover, the subject matter of the patent must be a “new and useful” invention. Any invention or design that does not conform to these categories is barred from patent protection, thereby setting parameters for what the public can use, create or copy in an unrestricted manner.

Certain general categories of subject matter are not entitled to patent protection according to the courts. These include abstract concepts, mathematical formulas, printed matter, business processes and natural occurrences. For example, courts have held that Einstein could not have patented his mathematical law of and that no inventor can patent the power source of electromagnetism or steam. In broader terms, the statute provides where the subject matter is not a concrete application of an idea, a natural phenomenon or a law of nature, then it is not suitable for patent protection.

In the past few decades, delineating the parameters of these provisions has been challenging, particularly in the area of software patents. In Alice Corp. v. CLS Bank International, the court held that the services of the plaintiff, which entailed computer operated escrow services, simply involved using a computer to perform an established practice, and that procedure was an abstract idea. Thus, using a computer for implementation did not render the subject matter patentable. While the case garnered significant attention, it left many unanswered questions about the future of software patents.

Connors & Associates provides expert legal advice in the areas of patent, trademark and copyright law. When you need experienced counsel to help navigate the complex terrain of intellectual property rights, contact John Connors and his team of associates at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

Overview of Executive and Legislative Action Aimed at Non-Practicing Entities

The series of bills now under deliberation in Congress are intended combat the abusive practices of Non-Practicing Entities (NPEs), which some reform advocates regard as the most extensive and debilitating issue with the U.S. patent system. The legislature has tackled this issue with key provisions in 2011 and currently in 2015, while the courts have also weighed in on these matters. Some of the more significant legislative and judicial developments are described below.

The America Invents Act (AIA). The 2011 legislation was intended to reduce patent litigation by limiting abusive claims. AIA created a new forum for disputing patents through the Patent Trials and Appeals Board (PTAB), under the direction of the Patent and Trademark Office. This method bypasses the court system by allowing patent claims to be challenged through inter partes review, where evidence is presented concerning the invalidity of the patent and a decision is rendered within 12 months. The success of these methodologies is uncertain, as petitioners can challenge a patent multiple times even after the PTAB has ruled.

2015 Reform Initiatives. A series of bills in 2015 aimed at ameliorating the effects of NPEs include the following key provisions: fee shifting, enhanced pleading requirements, customer stay specifications and demand letter amendments. Fee shifting is intended to stem the quantity of patent infringement suits by providing that the defeated party cover the attorney’s fees of the prevailing party. The defeated party can avoid paying these fees only if the court determines that it asserted reasonably objective claims in the suit. Second, current pleading standards would be modified to be more in line with pleading requirements in other parts of the law. Third, customer stay protections would be implemented to protect end customers by allowing the manufacturer of the product in question to defend its case while temporarily postponing actions against end users, which tend to be smaller businesses that are selling the allegedly infringing product. Lastly, the bill would give the Federal Trade Commission the authority to limit and reform the distribution of abusive demand letters.

Case law developments. Court opinions in Octane Fitness, LLC v. Icon Health &Fitness, Inc. and Highmark Inc. v. Allcare Health Management System, Inc. altered the analysis by which courts determine whether to allocate attorney’s fees for patent litigation by increasing the discretion of district courts in awarding such fees.

John Connors is an intellectual property attorney with decades of experience in registering patents and enforcing patent rights. Connors & Associates provides expert legal and business advice through an international network of attorneys specializing in all types of intellectual property law. Contact us at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

Why You Should Hire an Attorney to File a Trademark Application

Individuals or businesses intending to file a trademark application should carefully consider whether to file an application on their own or hire an attorney to oversee the process. Potential filers must understand how to identify relevant goods or services, differentiate between an intent-to-use and use-based applications and determine the date of first use of the trademark. While the United States Patent and Trademark Office (USPTO) provides advice and resources for filers, there are several potential pitfalls that inexperienced filers can encounter which can be avoided through attorney oversight.

The USPTO maintains a list of goods and services in the Acceptable Identification of Goods and Services Manual, which contains the various categories of goods and services approved by the USPTO for trademark registration. However, in the event a particular good or service you are seeking to register does not explicitly appear in the listing, you will need to identify which category your product most closely conforms to within the choices available. If you do not properly identify the category, you could face a denial of your registration application.

A second consideration is whether you have conducted, or have the ability and/or resources, to perform an exhaustive trademark search for substantially similar marks that are likely to cause confusion about the source of the goods. Typically, the examination should be more thorough than simply searching the USPTO database. An experienced intellectual property attorney has vast experience in conducting such searches and identifying potentially troublesome marks.

Last, a filer may be unaware of how to handle more intricate questions that arise in the course of trademark registration. These may include whether you can apply for a mark that is already in use for a different type of product or service, or how narrowly you should draft the description of goods and services you intend to cover to ensure adequate protection for your marks.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about our services or to schedule a consultation.

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