ContactImprovements: New Application or CIP
Posted Tuesday, June 17, 2008 by Jim Ruttler.
Once a non-provisional patent application is filed and docketed for examination, what is the proper course of action to protect an improvement that is not contained in the application? There are two options: file a new unrelated application that contains the improvement or file a continuation-in-part (CIP) related application.
A CIP application is the traditional route because it is specifically designed for accommodating improvements to an invention already contained in a previous non-provisional application. The downside to a CIP application is that the patent term runs from the filing date of the previous non-provisional application. Historically, this was not an issue because the patent term was measured from the issuance date. However, the patent term now runs from the filing date thereby resulting in a truncated patent term for any improvements contained in a CIP application.
Differently, filing a new and unrelated provisional or non-provisional application restarts the patent term. While it would seem like this would be an obvious choice over a CIP application, it has a number of hidden risks. First, the previously filed application can be cited against the newly filed application during examination because of the previous filing date and similar disclosure. There is a way around this rejection by filing a terminal disclaimer, but it requires truncating the patent term of the newly filed patent application to end at the expiration of the previously filed application. This is the same result as filing the CIP application. Second, public uses, offers for sale, and publications of the subject matter contained in the previously filed application can be cited against the newly filed application or be used to invalidate any patent issued on the newly filed application. This type of rejection cannot be overcome by filing a terminal disclaimer and could result in complete loss of patent rights to the improvements. Third, other patent applications filed before the newly filed application and containing subject matter similar to that in the previous patent application can be cited as a basis for rejection during examination. Because the newly filed application is unrelated to the previously filed application, it would not benefit from the earlier filing date of the previously filed application and could not use that as a basis for circumventing the rejection.
In short, the issues surrounding improvements are complicated. Despite the truncated patent term of a CIP application, the benefit of the earlier filing date should be carefully considered against the risks of filing a new and unrelated patent application.
Basic IP Checklist
Posted Wednesday, June 11, 2008 by Jim Ruttler.
The following is a non-exhaustive basic checklist for protecting your intellectual property.
Logo & Brand Names
– File Federal Trademark Application
– Provide Proper Public Notice
Useful Inventions
– Implement Non-Disclosure Agreements
– Avoid Disclosures & Commercialization of Invention
– Obtain Co-Inventor or Employee Assignment Agreements
– File Provisional Patent Application
– Provide Proper Public Notice
Artistic Creations
– Implement Work-For-Hire and Assignment Agreements
– File Copyright Application
– File Design Patent Applications
Trademark Priority
Posted Tuesday, June 10, 2008 by Jim Ruttler.
A registered trademark may still be cancelled based upon a demonstration that the trademark was previously used by another. For example, assume party A began using the trademark Xenon to sell household furnishings beginning in 1990, but party A failed to register Xenon. Next, assume that party B, without knowledge of party A’s use, began using the same trademark Xenon to also sell household furnishings beginning in 2000 and secured a trademark registration in 2002. Despite party B’s registration, party A can petition to cancel party B’s registration based upon the fact that party A was previously using Xenon.
The question then becomes, what is the purpose of securing a federal registration if all that matters is use. While federal registration isn’t absolute title to the mark, it does confer a presumption of ownership and trademark validity and nationwide priority. Note that party B above is the presumed owner and party A is required to take affirmative steps to eliminate party B. However, nationwide priority is perhaps the most important aspect of federal registration because a federal trademark is treated as having been used across the entire country as of its filing date. Thus, if party C begins using Xenon to sell household furnishings in a different geographic area, party B still has superior rights. This would not be the case without a federal registration because party B would only have trademark rights in the geographic area for which Xenon was used.
Proper Trademark Care
Posted Friday, May 30, 2008 by Jim Ruttler.
Federal registration of a trademark is only the first step to protecting trademark rights. Once a registration is obtained, it is necessary to properly care for the trademark to prevent erosion, cancellation, or unenforceability. The primary steps for proper care are as follows.
First, you must continuously use your trademark with the ® symbol on the goods or services listed in your registration. And, you must document the use of your trademark so that you can prove its continuous use if necessary. Documentation should include sales and advertising figures and locations, dated samples of advertisements, dated samples of labels, and dated pictures showing the trademark being used on the goods.
Second, you must police the market for potentially confusingly similar trademarks and monitor trademark applications. The existence of similar trademarks erodes the strength of your trademark. And, trademark applications that mature into registrations are extremely difficult and expensive to eliminate. One way to police the market is to use a trademark watching service to automatically monitor new federal trademark applications. Such a service will automatically notify you whether a federal application for a similar mark has been filed so that you can consider whether to file a letter of protest or opposition to impede the application before it matures into a registration and acquires its presumption of validity.
Third, you must file Section 8 and 15 affidavits with the U.S. Trademark Office between the 5th and 6th years after registration and Section 9 and 15 affidavits between the 9th and 10th years after registration. After the first ten years, you must only do the latter every subsequent 9th and 10th year. Failure to do so will result in cancellation of your trademark registration and will severely compromise your trademark rights.
Fourth, you should record your registration with U.S. Customs & Border Protection. Doing so offers you significant and inexpensive protection against imported counterfeit goods bearing your trademark. U.S. Customs maintains a trademark recordation system for trademarks registered with the U.S. Trademark Office. U.S. Customs agents use this recordation system to monitor imports at all 317 ports of entry to seize counterfeit goods before they even enter the U.S. market. You will receive detailed notices of any such seizure, including country of origin and addresses of the exporter and importer, so that you can take appropriate action. Without recordation, U.S. Customs will not deny entry to counterfeit goods and your only remedy is expensive civil litigation for trademark infringement.
Trademark Abandonment
Posted Wednesday, May 14, 2008 by Jim Ruttler.
Trademark rights exist only when a given trademark is used on or in association with products and services in bona fide sales to consumers. This is true for common law unregistered marks as well as federally registered marks. This is intuitive with regards to unregistered marks, given that if a mark isn’t being used in commerce and there isn’t a registration for the mark, there really isn’t anything else that would support trademark rights. However, with registered marks, there is often the assumption that registration alone grants trademark rights without use of the trademark being required. Unfortunately, this assumption is not true as registration merely provides a presumption that a trademark is valid. This presumption can be rebutted and a trademark registration can be cancelled if the underlying trademark is not continuously used to sell the products or services listed in the registration. As a side note, it is critical to file the requisite affidavits for federally registered trademarks every 5 years with the trademark office. Failure to do so will result in cancellation of a federally registered mark and complete loss of the presumptions that flow therefrom.
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