ContactTrademark Oppositions
Posted Monday, February 04, 2008 by Jim Ruttler.
After a trademark application is filed, it is examined by a trademark examining attorney at the United States Trademark Office. The examining attorney confirms that the application complies with formal requirements and makes a determination as to whether there is likely to be consumer confusion between the applied for trademark and any other registered trademark. The trademark process is not complete even if the examining attorney approves the application. Instead, the application is published for a thirty day public opposition period, during which time any member of the public may oppose the application. If an application is opposed, a proceeding commences with the Trademark Trial and Appeals Board which is analagous to a typical court proceeding with some notable differences.
Failing to respond to an opposition will result in a default judgment against the applicant; that is, the application will be cancelled. Further, an opposition can only be filed during the thirty day period. Failure to timely oppose a mark will result in registration of the mark and registered marks are much more difficult to cancel.
Foreign Patent Applications
Posted Tuesday, January 29, 2008 by Jim Ruttler.
Filing a U.S. patent application does not protect inventions abroad. Instead, if foreign patent protection is desired it is necessary to file a separate patent application in each foreign country of interest. Furthermore, it is necessary to these foreign patent applications within twelve months of the earliest filed patent application. For example, if a U.S. provisional patent application is filed on January 1, 2008 it is necessary to file all foreign patent applications before January 1, 2009. When there are a number of foreign countries of interest, a single international PCT patent application can be filed within the twelve month period. This PCT application only extends the time frame to enter foreign countries by around another eight to twenty months and does not actually mature into a patent application.
Inventors should also be aware that most foreign countries operate on a first to file basis and do not permit any disclosures of an invention prior to patent filing. This means that if there is a potential for later foreign filing, it is important to file U.S. applications early and prior to any disclosures. Provisional applications should also include at least one claim so that they can properly serve as the foundation for later foreign applications.
Pending Senate Patent Reform Bill
Posted Friday, January 18, 2008 by Jim Ruttler.
The United States Senate is currently considering patent reform bill S.1145, a companion to the patent reform bill already passed by the House. The main aspects of the bill are switching to a first-to-file system, simplifying filing and examination, providing less expensive administrative procedures for questioning patent validity, allowing for 3rd party prior art submissions during examination, and requiring prior art searches when filing a patent application. Other provisions include ending US Patent Office fee diversion, clarifying damage calculations, and limiting venue.
“The purpose of the Patent Reform Act of 2007, as reported by the Senate Judiciary Committee, is to ensure that the patent system in the 21st century reflects the 18th century Constitutional imperative. Congress must promote innovation through the enticement to inventors of temporally limited monopolies on their inventions, and it must do so for the ultimate benefit of the public. The legislation is designed to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs. If the United States is to maintain its competitive edge in the global economy, it needs a system that will support and reward all innovators with high quality patents. The time has come for Congress to reconsider the 50 year old patent statute and how it is currently being applied.”
Summary of Senate and House Patent Reform Bills by John R. Thomas
Registered vs. Unregistered Marks
Posted Wednesday, January 09, 2008 by Jim Ruttler.
Ownership in a mark begins upon use of the mark to sell goods or services to bona fide consumers. Thus, unlike patent law, trademark registration is optional and not required. However, trademark registration includes a number of benefits that make it highly desirable and advantageous. First, unregistered marks can result in multiple entities selling under the same mark in different geographic regions. This issue can make expansion and subsequent registration of a mark difficult. Next, there is no way to preserve rights in an unregistered mark prior to using the mark in sales like there is with federal registration. Thus, an unregistered mark is not protected between the time the mark is selected to when actual products and services are sold. Also, unregistered marks must be proven valid and enforceable whereas registered marks are presumed valid and enforceable. Lastly, owners of registered marks are able to enlist the aid of U.S. Customs to prevent the importation of infringing products. In short, careful consideration must be made early on as to whether to register a trademark as unregistered marks are weak and are associated with a number of other risks.
New Prior Art Disclosure Rules
Posted Friday, December 21, 2007 by Jim Ruttler.
The new prior art disclosure rules are expected to be published by the Patent Office in early 2008. One of the requirements for patentability is that an invention be new over the prior art, which includes patents, patent applications, foreign patents, foreign patent applications, and other publications. Although there is no affirmative duty to search for prior art before filing a patent application, applicants are required to submit a list of any known prior art references to assist the examiner with examination. Although there are some limits on when prior art can be submitted in the examination process, there are absolutely no limits on the number of prior art references that can be submitted. Because a patent is harder to invalidate using prior art that was submitted to the patent office during examination, some applicants submit thousands of prior art references to overwhelm an examiner and bury material prior art. Further, third parties are not able to independently submit prior art references to an examiner even when the prior art references indicate that an invention is not new.
In an attempt to address these issues, the new prior art disclosure rules are expected to make at least two significant changes. First, the number of prior art references that can be submitted will probably be limited to twenty. If more than twenty prior art references are submitted, they would need to be accompanied by an explanation as to the significance of the references. Second, third parties will be able to submit prior art references in published applications to assist examiners with examination.
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