Why Should I File a Trademark Application?

The benefits of federal trademark registration are:

1. Constructive notice nationwide of the trademark owner's claim;

2. Evidence of ownership of the trademark;

3. Jurisdiction of federal courts may be invoked;

4. Registration can be used as a basis for obtaining registration in foreign countries; and

5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

Visit http://www.sayfiepatents.com/ or call Robert J. Sayfie at 1-888-468-0444 with your patent and trademark questions.

At what point in time do damages begin for patent infringement?

Typically, a non-provisional patent application is published eighteen (18) months after it is filed.  If someone is infringing a patentee's invention, damages based on a reasonable royalty rate begin on the publication date. 

However a patentee can not file a lawsuit in court until the patent issues.

The statute that governs the damages starting at the publication date, is 35 U.S.C. 154 - Contents and terms of patent; provisional rights.


(d) PROVISIONAL RIGHTS.-
(1) IN GENERAL.- In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b), or in the case of an international application filed under the treaty defined in section 351(a) designating the United States under Article 21(2)(a) of such treaty, the date of publication of the application, and ending on the date the patent is issued-

(A) (i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or


(ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application; and

(B) had actual notice of the published patent application and, in a case in which the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, had a translation of the international application into the English language.


(2) RIGHT BASED ON SUBSTANTIALLY IDENTICAL INVENTIONS.- The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.


(3) TIME LIMITATION ON OBTAINING A REASONABLE ROYALTY.- The right under paragraph (1) to obtain a reasonable royalty shall be available only in an action brought not later than 6 years after the patent is issued. The right under paragraph (1) to obtain a reasonable royalty shall not be affected by the duration of the period described in paragraph (1).


(4) REQUIREMENTS FOR INTERNATIONAL APPLICATIONS-


(A) EFFECTIVE DATE.- The right under paragraph (1) to obtain a reasonable royalty based upon the publication under the treaty defined in section 351(a) of an international application designating the United States shall commence on the date of publication under the treaty of the international application, or, if the publication under the treaty of the international application is in a language other than English, on the date on which the Patent and Trademark Office receives a translation of the publication in the English language.


(B) COPIES.- The Director may require the applicant to provide a copy of the international application and a translation thereof

Call Robert J. Sayfie with your patent or trademark questions, or visit http://www.sayfiepatents.com/.

What is prior art that can make my invention not-patentable?

Prior art is described at 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.  The statute recites:

A person shall be entitled to a patent unless -

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or

(e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

(f) he did not himself invent the subject matter sought to be patented, or

(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

Call Robert at 1-888-468-0444 with your questions regarding patent or trademark law.  Or visit www.sayfiepatents.com.

How can I stop someone from importing my U.S. patented invention into the U.S.?

Answer: (1) sue them in Federal Court; or (2) File a complaint with the United States International Trade Commission (USITC).

A patent provides the patentee the right to prevent others from (1) making, (2) using, (3) selling, (4) offering for sale, or (5) importing the claimed invention.

Depending on circumstances, it may be more beneficial for a U.S. patentee to file a "337 Complaint" with the USITC.

A patentee should evaluate the different options available.

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Is a Method of Doing Business Patentable?

The recent United States Supreme Court decision in Bilski v. Kappos answers this question.  From that decision, the United States Patent and Trademark Office issued a guide for patent examiners.  The guide provides a list of factors that a patent examiner are to evaluate.   

Factors that weigh toward patentability are:

1.  Recitation of a machine or transformation, either express or inherent;
2.  The claim is directed toward applying a law of nature; and
3.  The claim is more than a mere statement of a concept.

Factors weighing against patentability are:

1.  No recitation or an insufficient recitation of a machine or transformation, either express or inherent;
2.  The claim is not directed to an application of a law of nature;
3.  The claim is a mere statement of a general concept.

Contact The Patent Law Office of Robert J. Sayfie if you have any questions, at 1-888-468-0444, or visit http://www.sayfiepatents.com/.

What Does Obviousness Mean With Respect To Patents?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter. - Patent Laws

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made.

(b)

     (1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-
          (A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and
          (B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.

     (2) A patent issued on a process under paragraph (1)-

          (A) shall also contain the claims to the composition of matter used in or made by that process, or

          (B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.

     (3) For purposes of paragraph (1), the term "biotechnological process" means-

          (A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to-

               (i) express an exogenous nucleotide sequence,
               (ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
              (iii) express a specific physiological characteristic not naturally associated with said organism;

          (B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and

          (C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

(c)
     (1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.

     (2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if -

          (A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;

          (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

          (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

      (3) For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

the Supreme Court's decision on BILSKI

On Monday, 28 June 2010, the United States Supreme Court decided a case regarding the patentability of business method patents.  The case can be found at Bilski et al. v Kappos, 08-964.

The Court affirmed the Court of Appeals for the Federal Circuits rejection of a patent application regarding business method patents.

Claim 1 of the patent application recites,

"(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumers;
(b) identifying market participants for said commodity having a counter-risk position to said consumers; and
(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions."

The Court reasoned:

     In light of these precedents, it is clear that petitioners’ application is not a patentable “process.” Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk: “Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.”
     The patent application here can be rejected under our precedents on the unpatentability of abstract ideas.The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.

Therefore, a business method that is known to the public, is probably not patentable, even if it is integrated with a computer program, or software.

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THE UNITED STATES' MOST UNAPPRECIATED ASSET - INNOVATION

Where would the United States be today without the innovations of:

1. Thomas Edison
          Thomas Edison patented over 1000 inventions include the phonograph, the incandescent light bulb, and the motion picture;

2. Samuel F. B. Morse
          His inventions include the telegraph and morse code;

3. Alexander Graham Bell
          His inventions include the telephone in 1876;

4. Henry Ford
          The automotive industry drove the American economy since it inception;

5. George Eastman
          He invented the Kodak camera;

6. Bill Gates and Steve Jobs
          Computers.

Many important inventions were invented or best produced in the United States.  The reason is that the U.S. constitution created the structure of our government.  The limits of the government provide free enterprise to grow by the incentive and fun involved in creating and inventing, and reaping the benefits of one's creation, generally through the U.S. patent system and international patent laws.

Where would the U.S. be had the above inventions been invented or primarily developed in another country?

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WHETHER A TRANSFEROR OF TRADEMARK RIGHTS CAN STILL USE THE MARK FOR OTHER COMMERCIAL PURPOSES?

Answer:  It depends what is specifically recited in the agreement.  If the transferee (receiver of the rights) wants all commercial rights, the agreement should specify that the transferor is transferring or selling or assigning "all commercial rights" not only "trademark rights."  The case of JA Apparel v Abboud, 2010 WL 103399 (S.D.N.Y., Jan. 12, 2010), the plaintiff, JA Apparel sued Defendant Abboud because in 2007 Abboud was intending to, or did use his name for commercial purposes of selling clothing, and in 2000, the parties entered into an agreement.  In the agreement, Abboud conveyed, "all of [his] right, title and interest in ant to...[t]he names, trademarks, trade names, service marks, logos, insignias...trademark registrations and applications therefor, and goodwill related thereto."

Abboud contended that this did not include all commercial purposes of his name.  The Second Circuit Court agreed.

Lesson: If you are receiving trademark rights, it may be a good idea to include in any agreement, that the transferor is also transferring "all commercial uses of the name" or something similar.

Call Robert at 1-888-468-0444 with your patent or trademark questions.
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WHAT IS A CONTINUATION IN PART (CIP) PATENT APPLICATION?

Under the Manual of Patent Examining Procedure (MPEP) 201.08; A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application. (In re Klein, 1930 C.D. 2, 393 O.G. 519 (Comm'r Pat. 1930)). The continuation-in-part application may only be filed under 37 CFR 1.53(b). The continuation-in-part application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120 or 365(c). For more information on claiming the benefit of a prior nonprovisional application, see MPEP § 201.11.
A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation-in-part" of the provisional application since an application that claims benefit of a provisional application is a nonprovisional application of a provisional application, not a continuation, division, or continuation-in-part of the provisional application.

The mere filing of a continuation-in-part does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.

A continuation-in-part filed by a sole applicant may also derive from an earlier joint application showing a portion only of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a joint continuation-in-part application may derive from an earlier sole application.

Unless the filing date of the earlier nonprovisional application is actually needed, for example, in the case of an interference or to overcome a reference, there is no need for the Office to make a determination as to whether the requirement of 35 U.S.C. 120, that the earlier nonprovisional application discloses the invention of the second application in the manner provided by the first paragraph of 35 U.S.C. 112, is met and whether a substantial portion of all of the earlier nonprovisional application is repeated in the second application in a continuation-in-part situation. Accordingly, an alleged continuation-in-part application should be permitted to claim the benefit of the filing date of an earlier nonprovisional application if the alleged continuation-in-part application complies with the **>other< requirements of 35 U.S.C. 120 >and 37 CFR 1.78, such as:

     (A) The first application and the alleged continuation-in-part application were filed with at least one common inventor;
     (B) The alleged continuation-in-part application was "filed before the patenting or abandonment of or termination of proceedings on the first application or an application similarly entitled to the benefit of the filing date of the first application"; and
     (C) The alleged continuation-in-part application "contains or is amended to contain a specific reference to the earlier filed application." (The specific reference **>must be submitted either in the first sentence(s) of the specification or in an application data sheet (see 37 CFR 1.76(b)(5)).) See MPEP § 201.11 for more information on claiming the benefit of a prior nonprovisional application.< For notation to be put in the file history by the examiner in the case of a continuation-in-part application see MPEP § 202.02. See MPEP § 708 for order of examination. Use form paragraph 2.06 to remind applicant of possible continuation-in-part status.

¶ 2.06 Possible Status as Continuation-in-Part

This application repeats a substantial portion of prior Application No. [1], filed [2], and adds and claims additional disclosure not presented in the prior application. Since this application names an inventor or inventors named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to obtain the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120 and 37 CFR 1.78.

Call Robert at 1-888-468-0444 or visit http://www.sayfiepatents.com/ if you have any questions.

CAN AN INVENTOR FILE A PATENT APPLICATION IN CANADA AFTER FILING IN THE UNITED STATES?

Yes.  However, the filing of the patent application in Canada must be within one year of first public disclosure.  To claim priority based on a previously filed United States patent application, the Canadian patent application must be filed within one year of the U.S. filing.  Also, a Canadian agent must be designated at the time of filing.  The Canadian agent is designated to receive correspondence from the Canadian Intellectual Property Office.  The format of the Canadian application is similar to the United States format, so there is usually no changes that have to be made prior to filing.

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CAN AN INVENTOR OBTAIN BOTH A DESIGN PATENT AND A UTILITY PATENT FOR THE SAME INVENTION?

Yes.  In general terms, a "utility patent" protects the way an article is used and works (35 U.S.C. 101), while a "design patent" protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

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A PARTY MUST SHOW ITS ROYALTY RATE WITH SUFFICIENT EVIDENCE

On 5 February 2010, the Court of Appeals for the Federal Circuit decided ResQNet.com, Inc. v. Lansa, Inc.  The Court held that a plaintiff must present 'sufficient evidence' of its royalty rate.  Defendant has no burden to present or rebut evidence if Plaintiff has not presented at least 'sufficient evidence.'

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Dissecting a trademark into components is a proper way to show that there is no likelihood of confusion.

In Odom’s Tennessee Pride Sausage, Inc. v. FF Acquisition, L.L.C., 2009-1473, an opinion dated March 19, 2010, the Court of Appeals for the Federal Circuit reviewed a decision by the Trademark Trial and Appeal Board (“TTAB”), which discussed whether the defendant’s applied for mark, illustrated below,

                       Defendant’s U.S. Trademark Application Serial No. 77/148,503.

is likely to cause confusion with some of plaintiff’s marks, one of which is illustrated below.

Above is one of Plaintiff's registered marks.

The TTAB opined that,

“Sufficient distinctions exist between the registered marks considered by the board and the applied-for mark to create a different commercial impression. The marks differ in the size and shape of the boys’ hands and feet, the shape and style of their hats, and the fact that FF’s boy has a piece of straw in his mouth and shoes on his feet while Odom’s has neither.”

Plaintiff argued that the [TTAB] inappropriately dissected the marks into these components in performing its analysis.

However, the TTAB reasoned that,

“…it is these individual aspects that collectively create a difference in the overall impressions made by the marks. In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985) (“[I]n articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark . . . .”). As the board correctly concluded, the visual distinctions between the marks at issue here create unquestionably different commercial impressions, thereby precluding a finding of likelihood of confusion.”

Standard for proving fraud on a trademark applicant

In Enbridge Inc. v. Excelerate Energy Ltd., 92 U.S.P.Q. 2d 1537 (T.T.A.B. Oct. 6, 2009) the Trademark Trial and Appeal Board ("TTAB") , held that if a trademark application is filed with incorrect information, a registrant's claim of honest mistake and good faith correction, such as by filing an amendment, is sufficient to form a genuine issue of material fact on the issue of "intent to deceive."  And thus defeats a motion for summary judgment on fraud.

Microsoft hit with paying $240 million in damages

On 22 December 2009, the Court of Appeals for the Federal Circuit affirmed an award in favor of i4i Limited Partnership against Microsoft for $240 Million due to patent infringement.  The court stated that Microsoft never filed a pre-verdict JMOL, which prevented the damages award from being reviewed.

Lesson:  File a Rule 50 JMOL.

Contact The Patent Law Office of Robert J. Sayfie if you have any questions on patent or trademark law. 
Phone: 1-888-468-0444
URL: http://www.sayfiepatents.com/

Design Patent Infringement

In Richardson v. Stanley Works, Inc., Plaintiff and Defendant both obtained design patents for a device that can be used as a hammer, a crowbar, and a stud-climbing tool. The plaintiff’s invention is illustrated below:

Plaintiff, Richardson’s U.S. Patent D507,167.

The defendant’s patent is illustrated below:

Defendant, Stanley’s U.S. Patent D562,101.

In the opinion issued 9 March 2010 by the Court of Appeals for the Federal Circuit, the Court held that the defendant’s product did not infringe the claims of the plaintiff’s patent because:


(1) when the design has functional and ornamental aspects, it is entitled to a design patent whose scope is limited to the ornamental aspects alone and does not extend to any functional elements of the claimed article; and


(2) from the perspective of an ordinary observer familiar with the prior art, the overall visual effect of the defendant’s product is significantly different from the claims of the plaintiff’s patent.

Court imposes penalty against a party who indicated it's product was patented, when the party knew that it was not.

In a recent case, The Forest Group, Inc. v. Bon Tool Co., 2009-1044 (Fed. Cir. Dec 28, 2009), the Federal Circuit held that each article or product that is falsely marked, stating that it is patented when it is not, is subject to a fine of $500 per falsely marked article or product, under the statute 35 U.S.C. section 292.

Visit http://www.sayfiepatents.com/ to learn more about patent law, and how to contact Robert J. Sayfie, Registered Patent Attorney.

Did you know:

That you can not receive a U.S. patent if the invention was in public use or on sale in this country, for more than one year prior to the date of the application for patent in the United States. 35 United States Code 102(b).