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Congress Address How Patents Impact Drug Prices
Congress holds hearings on the impact of drug patents on pharmaceutical prices.
Can I Patent My Software Application? Maybe, Soon.
Software application developers will likely be able to protect their inventions very soon. A bipartisan Congressional group is soliciting feedback on a bill that would make software apps eligible for patent protection.
Software application developers, your day might be coming! A bipartisan proposal has just released that REMOVES the judicially-created non-sensical exception to Section 101 patent eligibility (the one that prevents nearly all software applications from being patented because they are “abstract ideas”).
The bill:
prevents “abstract ideas,” “laws of nature,” or “natural phenomena,” from being used to determine patent eligibility under section 101
add a subsection (k) to Section 100 defining “useful” as “any invention or discovery that provides specific and practical utility in any field of technology through human intervention.”
Every patent attorney I know thinks the near-ban on software patents was wrong. I thank our congresspersons for finally getting around to addressing the issue and applaud the inclusive process. Senate hearings on the topic are on June 4, 5 and 11.
Let’s reexamine the eligibility of your software application in light of this proposed bill.
More Than Your Average IP Boutique
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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Ahaji Amos, PLLC
IP FOR THE BUSINSS LAWYER PRESENTATION
IP Law Overview | Patent Law | Trademark Law | Trade Secret Law | Copyright Law
I recently presented a continuing legal education course that explained patents, trademarks, copyrights and trade secret law to business attorneys. This is a great overview of intellectual property law for all.
Ahaji Amos, PLLC
More Than Your Average IP Boutique
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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Ahaji Amos, PLLC
5 Things to Know About Design Patents
Can I patent my design | What is a design patent?
5 Things to Know About Design Patents
Are you a designer? If so, did you know that you can patent your designs? Even if you are not a designer, if your utility patent has a unique design, did you know that you can patent that design? Design patents can be just as valuable as utility patents. For example, if you ask a woman if she has any red bottom shoes, she will most likely know who designs red bottoms, especially if the woman is a shoe fanatic! Now, she may not have any, but . . . Did you know that Louis Vuitton has several patents for shoes, boots, purchases, jewelry, and watches? There is a reason why LV made investments to protect his designs – it’s called brand recognition. If you have a design that you would like to protect, here are 5 tips you need to know about design patents.
1. What is a design with respect to patents?
A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. The subject matter of a design patent application may relate:
· to the configuration or shape of an article;
· to the surface ornamentation applied to an article; or
· to the combination of configuration and surface ornamentation.
A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.
The United States Patent and Trademark Office (USPTO) examines applications and grants patents on inventions when applicants are entitled to them. The patent law provides for the granting of design patents to any person who has invented any new, original and ornamental design for an article of manufacture. A design patent protects only the appearance of the article and not structural or utilitarian features. --- 35 USC 171
2. What are the types of designs and modified forms of design patents?
An ornamental design may be embodied in an entire article or only a portion of an article or may be ornamentation applied to an article. If a design is directed to just surface ornamentation, it must be shown applied to an article in the drawings, and the article must be shown in broken lines, as it forms no part of the claimed design.
A design patent application may only have a single claim (37 CFR § 1.153). Designs that are independent and distinct must be filed in separate applications since they cannot be supported by a single claim. Designs are independent if there is no apparent relationship between two or more articles. Designs are considered distinct if they have different shapes and appearances even though they are related articles. However, modified forms, or embodiments of a single design concept may be filed in one application. --- 35 USC 171
3. What is the difference between a design and utility patents.
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). Additionally, a utility patent has a 20 year patent term while a design patent has a 14 year patent term. As an example, one could obtain a utility patent on the air suspension system in the sole of a shoe, and could then patent the design of the shoe itself. The suspension system has utility while the design is just a design.
4. What is the subject matter for design patents?
A design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter under 35 U.S.C. 171. Specifically, if at the time the design was created, there was no unique or distinctive shape or appearance to the article not dictated by the function that it performs, the design lacks ornamentality and is not proper subject matter. In addition, 35 U.S.C. 171 requires that a design to be patentable must be "original." Clearly a design that simulates a well-known or naturally occurring object or person is not original as required by the statute. Furthermore, subject matter that could be considered offensive to any race, religion, sex, ethnic group, or nationality is not proper subject matter for a design patent application (35 U.S.C. 171 and 37 CFR § 1.3).
5. What are the elements of a design patent application?
The elements of a design patent application should include the following:
· Preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied;
· Cross-reference to related applications (unless included in the application data sheet).
· Statement regarding federally sponsored research or development.
· Description of the figure(s) of the drawing;
· Feature description;
· A single claim;
· Drawings or photographs;
· Executed oath or declaration.
In addition, the filing fee, search fee, and examination fee are also required. If applicant is a small entity, (an independent inventor, a small business concern, or a non-profit organization), these fees are reduced by half. --- 35 USC 171
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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Ahaji Amos, PLLC
WHAT TO LOOK FOR WHEN BUYING A FRANCHISE
If you are considering franchising your business, or purchasing a franchise, there are red flags to look out for.
Here are my ten red flags for franchises:
1. Long Term: Franchise terms should not exceed ten years. I've seen them be as long as 25 years. Who wants to be tied to anything for that long. Franchise agreements are nearly impossible for a franchisee to get out of, so you want to make sure you're not stuck for life.
2. Large Closings: If a large number of franchises have gone out of business within the first three years that's an indication that the franchisor's business model may not be sound.
3. Franchisor is a Chameleon: If the franchisor has been in the same location, with the same leadership team, and has changed names three times in the last decade, that's a red flag. That franchise may be in trouble.
4. Salesman Says LISTEN, DON'T READ: If a salesperson tells you to listen to what he tells you and to ignore the language in the franchise agreement, RUN. The franchise agreement will be enforced, and no one will care what the salesperson told you.
5. Crazy "Cause" Clause: A franchisor can shut down a franchisee's business for "cause." This is one of the most important provisions in the franchise agreement that franchisee's gloss over thinking it never happens. It happens, ALOT! So make sure the franchisor has a good reason if they are going to step in and take your franchise away. And, make sure there is a reasonable cure period, which allows any deficiencies to be fixed before termination occurs.
6. Non-Exclusive Territory: Franchisees assume that any territory granted to them is exclusive. It may not be.
7. Franchisor is Competition: Franchisor's don't compete with franchisees in a perfect world. But, the world is not perfect. Search for any provision in the franchise agreement that allows the franchisor to compete with its franchisees.
8. FDD & Franchise Agreement Don't Match: The law requires the FDD to explain the franchise agreement to potential franchisees in a language they understand. However, this does not always happen. Sometimes, the FDD and the franchise agreement and the FDD do not match, fooling some that rely too heavily on the FDD.
9. Up-Front Fees: Up-front fees are paid regardless of the success of the franchisee. Royalties are only paid when the franchisee's make money. You want the franchisee invested in your business.
10. Pending Litigation: If there is a lot of litigation (or quasi-litigation) between the franchisor and franchisees, or the franchisors and vendors, or franchisors and their employees, have a lawyer pull up those cases to see what is alleged.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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Ahaji Amos, PLLC
Applying for a Trademark: Alpha to Omega
Learn the 8 steps for obtaining a federal trademark registration.
Step 1: Search
It’s a bad idea to invest resources into a trademark that may later need to be scrapped. Before you order those business cards, purchase a url, or order those goods, make sure you are free to use the trademark by obtaining a trademark search. A trademark search should uncover potential conflicts that will curtain your ability to use a trademark. It’s important to use a trademark attorney to conduct the search because trademark law is not widely understood. Did you know that trademark infringement does not require intent, copying, or identical use? Likelihood of confusion can be established between two trademarks that simply rhyme, or for colors that are similar. It’s important to seek out an expert opinion. In fact, searching the Trademark Electronic Search System, or TESS, provides little information because trademark rights are established by use, not registration. Know that your mark is registerable before you use it!
Step 2: Use
Trademark rights are established based on use, not registration. So, you should use the trademark prior to applying for a trademark. Using the trademark means providing a product or service to another across state lines (generally speaking). If you haven’t yet used the trademark, then you may still begin the process of applying for a federal trademark using an intent-to-use trademark application. These types of applications are examined as if the trademark has been used, but will not result in an issued trademark until an affidavit of use is filed (and an appropriate fee is paid).
Step 3: Apply
Applying for a trademark is the next step in the process. Most trademark applications are filed online using the United States Patent and Trademark Office’s online filing system, called the Trademark Electronic Application System, or TEAS. TEAS allows trademark applications to be filed pretty easily by uploading a specimen, image of the trademark, and inputting all other required information. Most applicants pay $225 per class, per mark. The ease of use of TEAS has resulted in more than 480,000 online trademark applications being filed in the USPTO just this year alone! In my experience, most of the applications are not filed correctly. The online interface fools users into thinking that the trademark application process is easy. It is not. An attorney is needed to choose the proper specimen, identify the proper classification of goods or services, and to determine the strength of the mark. Filing a descriptive or generic mark is often a waste of time and money. Submitting a specimen that is not reflective of the goods will also increase costs (e.g. submitting a picture of a t-shirt with a logo on the front, will get your specimen rejected). Using a trademark attorney almost always saves the trademark owner money.
Step 4: Prosecution
It’s surprising how many of my clients hire me thinking that trademarks are simply registered without an examination process. Many believe that if no one has registered their trademark, then they’ll be awarded rights to it. This couldn’t be farther from the truth. Only about 30% of applications are allowed without a refusal. refusals are both substantive and technical. They can be made to the specimen, the alleged use, the goods or services, or to the mark itself. A trademark must be used as a trademark in commerce. A trademark must also not be confusingly similar to an average consumer. These are legal determinations that require the skill of a trademark attorney. Many unrepresented applicants give up when faced with a likelihood of confusion refusal that most trademark attorneys could easily overcome. During the prosecution stage, a USPTO trademark attorney will issue communications called Office Actions, which state the refusals to the application. The applicant is required to respond to each and every allegation. On average about two office actions before dismissal (allowance or final refusal) of the application. Prosecution takes on average about 9-12 months and begins about 2-3 months after filing.
Step 5: Opposition
If a trademark is allowed, it is then published for opposition. Allowed applications are published in the Official Gazette, which is a USPTO publication that contains trademarks for public review. The opposition period lasts 30 days from the date of publication (which usually begins weeks after allowance). During those 30 days, anyone who believes that the registration of the trademark is harmful to them or improper may seek withdrawal of the allowance by filing a notice of opposition. The notice is akin to a civil litigation complaint and sets forth the opposers reasons for believing that a trademark registration should be denied. The opposition process is long, taking on average about 18 months to complete, and includes motions, like summary judgment motions, discovery and the submission of a trial brief. Depositions are not unusual in opposition proceedings.
Step 6: Issuance/Statement of Use
If an opposition is not filed or is unsuccessful, the mark will issue for applications based on use. For applications filed based on an intent to use the trademark, the applicant has up to six months to file a statement of use, demonstrating the use of the trademark. If the applicant fails to file the statement within six months, or request a six-month extension, the application will be abandoned and no trademark registration will issue.
Step 7: Maintenance
After a trademark application issues, the trademark owner must file maintenance documents to avoid abandonment of the trademark. If the registration is abandoned, the registrant must start the entire process again.
Step 8: Monitoring
Trademark owners are required to police their trademarks, which means that they can’s sit idly and allow their trademark rights to be infringed. Professional monitoring is relatively inexpensive (we charge $39/month) and effective at discovering unauthorized uses. All trademark owners should have some sort of active protocol for dealing with potential infringers identified, which includes informing and warning of infringement, as well as judicial enforcement.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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YOU CAN PATENT NATURAL HAIR CARE PRODUCTS, HERE ARE 5 WAYS TO PROTECT YOUR NEW PRODUCT
natural hair care products | patent my hair care product | patent my natural hair care product | can I patent my natural hair care products
Many black women have decided to transition from relaxed to natural hair texture. Although this is a beautiful and empowering experience, it can often be a real struggle. When transitioning from relaxed to natural (and even after transition), retaining moisture and proper detangling is key. Therefore, products designed to make natural hair more manageable are essential to the ladies who rock natural hair! Hence, the natural hair care industry can be very lucrative if you have developed a must have product for natural hair. For example, Gwen Jimmere, founder and CEO of Naturalicious, recently made history for being the first black woman to receive a patent for a natural hair care product developed for and targeted to women with curly, coily and kinky hair textures. Obtaining intellectual property is essential for your brand recognition and to facilitate strengthening consumer loyalty. Do you have a natural hair care product that you would like to protect? If so, here are 5 ways you can protect your product.
1. Patent you natural hair care products.
Considering Jimmere’s success story, it should be obvious that you should consider applying for a patent to protection your brand. The benefits to applying for a patent for your products include, but are not limited to,
· ability to stop others from selling a competitive product; and
· increased profits.
Please see my article, “5 Reasons to Apply for a Patent” for an overview of why patent protection is important for your brand.
2. Is your natural hair care product a trade secret?
Contrary to patents, trade secrets are protected without registration, that is, trade secrets are protected without any procedural formalities. Consequently, a trade secret can be protected for an unlimited period of time. However, there are certain some conditions for the information to be considered a trade secret.
· The information must be secret (i.e. it is not generally known among, or readily accessible to, circles that normally deal with the kind of information in question).
· It must have commercial value because it is a secret.
· It must have been subject to reasonable steps by the rightful holder of the information to keep it secret (e.g., through confidentiality agreements).
It is important to note that compliance the conditions above may turn out to be more difficult and costlier
3. You can use trade/service marks to protect your natural hair care products.
Since a trademark is used to identify the source of goods or services and is used to distinguish the goods and services of one seller or provider from another, you could effectively market your brand by selecting a mark that you distinguish your products from your competitors. For example, when you see “LV” on a purse, you can identify the designer of the purse—even if the purse is a knock off.
4. Using copyrights to protect your natural hair care products.
Copyright law covers almost all forms of creative output, including
· commercial items (e.g., advertising copy),
· product photos,
· packaging illustrations
· websites
· Images used on your beauty product
· Video and music used in product advertising
· text on the beauty product itself or on product flyers,
· advertisements or inserts is also copyright-protected.
If you created the text or graphics yourself, then you are the copyright holder. If you hired someone else to create the material, then the contract between you and the artist should specify who holds the copyright to the materials to avoid any legal ambiguity about ownership.
5. Protecting your natural hair care products with a trade dress registration.
Trade dress generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. Trade dress is a type of trademark that refers to the image and overall appearance of a product. Trademarks protect brands and the goodwill associated with the brand.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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Ahaji Amos, PLLC
How to File Your Own Provisional Patent Application
Drafting Your Own Provisional Patent Application | How to Draft Your Own Provisional Patent Application | Draft Your Own Patent Application | Provisional Patent Application Templates
Don’t file your own provisional patent application.
You might be able to say you have “patent pending status” for 12 months, but it’s unlikely you’ll be able to rely on that provisional patent application for a filng date after that time, especially if you are using an online or automated template for drafting a provisional patent application.
There are several advantages to filing a provisional patent application. For example, filing a provisonal patent application is a cost-efficient means of protecting an invention during the early stages of the development process. Additionally, multiple provisonal patent applications can be referenced when a nonprovisional utility patent application is filed that combines all the ideas of each provisonal patent application into one application. Do you have an invention that you would like to commercially promote by fear that your invention could be stolen and commercially exploited by others? Are you considering filing a provisional patent application for your invention without using a registered patent attorney and using an online patent application template to guide you through the process? If so, here are 5 reasons why you should avoid online provisional patent application templates.
1. You May Not Disclose Enough
In order for a non-provisional patent application to claim the filing date of an earlier filed provisional patent application the invention claimed in the non-provisional patent application must be fully described and disclosed such that one skilled in the art of the invention can make and use the claimed invention without too much trouble. The earlier filed non-provisional patent application need not be orderly, pretty or neat. It doesn’t even need all of the sections and disclosures required for non-provisional utility applications. However, the provisional patent application must adequate disclose the claimed invention. Any claims that are not sufficiently disclosed will not receive the benefit of the earlier filed provisional.
2. You Don’t Have a Docketing System
If you are not knowledgeable about patent law, you will face many challenges when attempting to use a PPA template to prepare your application. Yes, provisional patent applications are a simplified means to apply for patent protection. However, provisionals do not result in an issued patent because they expire in one year. If you want to obtain a patent on your invention, you will need to file a nonprovisional patent application before your provisional patent application expires.
3. Experience Matters.
Do you know when you should or should not file a provisional patent application? If you plan on filing international patents on your invention, some countries have strict requirements regarding first filings. Hence, filing a PPA could be problematic if you desire international protection.
Do you know if you should submit drawings with your provisional patent application? Some have included information on their websites that suggest that drawings are not required with a provisional patent application filing. However, you should submit drawings if they are necessary for the understanding of the subject matter that you are trying to patent. If you need to submit drawings, do you know how to draft the drawings or many to include? Again, you could submit a provisional patent application without the help of an attorney, but should you? These probably all questions that you do not know and will have to research. You will need to do a lot of research if you use a PPA template.
4. Patent Law is Considered One of the Most Complex.
A professional patent attorney is the best source for filing the provisional patent application correctly. Patent attorneys make up less than 5% of attorneys and require an additional examination to practice. An attorney can’t call themselves a patent attorney unless they have sat for and passed the Patent Bar Registration Exam. Only 47% of attorneys who took the exam in 2018 passed! So, it’s really not a great idea to pretend to be one.
Patent applications are complicated, a patent attorney will help you avoid the pitfalls in the patent process.
5. Writing the application will be time consuming for you.
There are many types of provisional application templates available online, so you will first need to conduct research on which template to use. Templates only give you a place to start – so, you will still need to research all the necessary USPTO patent submission standards. Most PPA templates do not provide guidance on how to write your application – so, you will need to research that too. For example, your application should include a specification as prescribed by section 112(a). Do you know what a specification is? Do you know what section 112(a) is? If your template does not explain how to comply with these requirements, you will need to research the information.
Ahaji Amos, PLLC
More Than Your Average IP Boutique
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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Ahaji Amos, PLLC
HOW TO GET PATENT PENDING STATUS ON YOUR INVENTION
Patent Pending on My Invention | Patent Pending Status | Patent My Invention | How to Get Patent Pending Status
How to Get Patent Pending Status
Do you have an invention and you are stuck on what to do next? Are you trying to decide if you want to make and sell your invention? And, if so, do you have the cash to do so? Are you considering selling your invention to an individual or company who would make and sell your invention? Or, do you want to try to license your invention to others. Are you afraid that if you start to disclose you invention to others that someone may steal your invention? If so, it should be comforting to know that you can get “patent pending” status so that you have protection from and have recourse against those who might try to steal your ideas.
There are a few ways to get patent pending status including:
Apply for a design patent on the look of your product
Apply for a utility patent application
What is a provisional application?
A provisional patent application (PPA) is a simplified means to apply for patent protection that expires in one year of the filing date. PPAs have a lower initial investment as opposed to the costs associated with the filing and prosecution of a nonprovisional application. Filing a PPA would permit authorized use of "Patent Pending" notice for the 12-month term.
How is a PPA a simplified means to apply for patent protection?
Because a PPA is not examined; therefore, there a several benefits in filing a PPA – such as an applicant is free to
· perfect his or her invention (e.g., the applicant has an additional year to experiment);
· find investors for financial backing, since filing a non-provisional application can be quite costly; or
· find interested parties for licensing.
What is the difference between a PPA and a nonprovisional patent application?
Provisional patent application and non-provisional patent applications differ in many ways. A nonprovisional patent application is examined and does not expire after a year. In fact, a nonprovisional application must be filed before the PPA expires in order to benefit from the earlier filing date. Additionally, the initial investment of filing fees for filing a PPA in the United States Patent and Tademark Office (USPTO) is currently in the range of $280 to $70, while the initial investment of filing a nonprovisional application can cost thousand of dollars.
Are there any risks if I wait to file for patent protection?
For many years, the United States awarded the patent to the applicant who could prove that he or she created the invention first. However, the U.S. currently awards the patent to the applicant who files the patent application first. It is also important that you file your patent application as soon as possible before you disclose anything, demonstrate your invention publicly or offer it for sale. So, if you are at the point where you want to market your invention, it is imperative that you consider patent protection in addition to whatever marketing strategies that you are considering using to facilitate turning your invention into a profitable endeavor so that you have reasonable protection and recourse against those who might be willing to steal your ideas and run straight to the patent office without passing “Go” to apply for a patent (If you read my article about Lizzie Magie and Monopoly (“5 Reasons to apply for a Patent, you “get” my joke.)). Contact me today to learn more about PPA filings.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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Ahaji Amos, PLLC
5 REASONS TO APPLY FOR A PATENT ON YOUR INVENTION
Obtaining patent pending status is invaluable for companies who want to be successful. This article explores the reasons to patent your invention and what could happen if you fail to patent your invention.
5 Reasons to Apply for a Patent
Most of us know how to play the board game Monopoly. However, what most of us do know is the history of Monopoly. Monopoly was designed by a Quaker named Lizzie Magie in 1903 and was originally entitled “The Landlord’s Game”. In the 1930s, an unemployed heater salesman named Charles Darrow played The Landlord’s Game at a friend’s house one night after dinner where he obtained a copy of the rules. Darrow filed a patent application for “Monopoly” using the stolen concept and rules of The Landlord’s Game and received a patent in 1935, which was acquired by Parker Brothers. Darrow became the first millionaire game designer in history by using a stolen idea. Do you have an invention that you would like to market but are afraid someone might steal your idea? If so, here are five reasons why you should apply for a patent.
1. Patents are among the most valuable types of intellectual property.
Intellectual Property (“IP”) is a work or invention that is the result of creativity. More specifically, IP includes intangible creations where human intellect is used a category of property, namely inventions; literary and artistic works; designs; and symbols, names and images used in commerce. Article 27 of the Universal Declaration of Human Rights provides for the right to benefit from the protection of moral and material interests resulting from authorship of scientific, literary or artistic productions (i.e., patents, copyrights, industrial design rights, plant varieties, trademarks trade dress and trade secrets). Essentially, IP rights allow creators and owners to benefit from their own work (or investment) in a creation. While a patent is only one form of IP, it is arguably among the most valuable, especially when considering the exclusionary right that is afforded by patent protection.
2. If you patent your invention, you can exclude others from making, using, offering for sale, or selling your invention.
A patent for an invention is the grant of a property right by a national patent office (or by a regional office that exams patent work for a group of countries) for a limited term, generally 20 years from the date on which the patent application was filed. The right conferred by the patent grant is the right to exclude others from
· making;
· using;
· offering for sale; or
· selling your invention.
Patent rights can be enforced in courts that have the authority to stop patent infringement. So, if you have an issued patent for an invention and someone makes, uses, offers for sale, or sells your invention, without your consent, you can sue the person (a/k/a an infringer) in court to seek an injunction and for damages (and in some cases of willfulness infringement, triple damages).
In other words, the exclusionary right that is conferred by the grant of a patent serves to protect the patent owner against patent infringement since a patented invention cannot be commercially made, used, offered for sale, distributed or sold during the term of the patent without the patent owner’s consent.
3. Patents can be used to identify and develop new brands, maintain present markets or create new ones.
The exclusionary right of patent protection reduces competition, which would help you establish a preeminent position in the market. So, you could realize a strong market position with your patent since patent owners are able to prevent others from commercially using a patented invention during its term. Accordingly, during the term of your patent, you would be able to
· identify and develop new brands
· maintain present markets; or
· create new markets
because you have greatly reduced or eliminated the competition.
You will also enrich the marketplace as all patent owners are obliged to publicly disclose information on their inventions in exchange for their exclusionary right. Moreover, the total body of technical knowledge that is available to the public is increased through public disclosure and our lives are subsequently enriched because the disclosure promotes further creativity and innovation by others. So, you are essentially giving back to society (which has to be a great feeling) once your patent term ends as others will no longer be excluded from making, using, offering for sale, or selling your invention.
4. Patents can be used to generate new income streams.
Did you know that you can create several streams of income from issued patents? In fact, if you own patents you can tap into their value in several different ways, such as:
· through your own business processes by providing goods and services to customers;
· licensing your technology to others (When a patent owner grants a license to others, the patent owner receives patent royalties, which can be very lucrative if negotiated properly.); or
· selling the patents (Remember, patents are property, so they can be sold too!).
Additionally, patents can greatly increase the value of your business if you ever decide to sell your business because an issued patent tends to create a positive image for your organization as potential business partners, investors and shareholders typically perceive patent portfolios as demonstrative of a high level of expertise, specialization and technological capacity within an organization, which could prove useful if you want to
· raise funds;
· find business partners;
· raise your organization's market value; or
· attract investors to help your business grow.
5. Patents can be used to create a business presence in several countries.
Is there a market for your invention in other countries? If so, you should be mindful that a patent only protects an invention in one country or region.
For example, if you receive patent protection in the United States, your invention will not be protected in other countries. Hence, others will be able to make, use, offer for sale, or sell your invention outside of the United States.
If your organization has potential competitors, customers or collaborators abroad, filing international patents can be used to create a business presence in several countries without incurring a large expenditure on brick and mortar entities by using the Patent Cooperation Treaty (the “PCT”). You can protect your invention around the world using the PCT. Filing PCT applications is cost efficient because you can apply for protection in over 140 countries through one centralized application process, which has the same effect as filing multiple patent applications at the same time. This strategy for your patent portfolio also has other advantages, namely:
· creates an exclusive market share for your technology in other countries;
· prevents competitors from copying or stealing your technology in other countries; and
· you have the ability to market and license your invention to a wider market.
DON’T’ BE A LIZZIE MAGIE
For many years, the United States awarded the patent to the applicant who could prove that he or she created the invention first. However, the U.S. currently awards the patent to the applicant who files the patent application first.
Have you ever heard the phrase great minds think alike? You should consider the fact someone may have the same idea for an invention as yours. So, you may ask, “If two inventors have the same idea for an invention, who gets the patent?” Answer: the person who files first. It is also important that you file your patent application as soon as possible before you disclose anything, demonstrate your invention publicly or offer it for sale.
So, if you have an invention don’t be a Lizzie Magie and let a Charles Darrow come along and steal your invention by applying for a patent before you do AND get rich from doing so.
Keep in mind that U.S. patent law grants an exclusive monopoly to owners of valid patents. Don’t you think that YOU deserve to have that “Monopoly” on your ideas and inventions. If you wait to file, you may forever lose the ability to obtain a patent. Are you willing to take that risk?
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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Ahaji Amos, PLLC
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Supplemental Trademark Registery
Registering a trademark on the United States Patent & Trademark Office Supplemental Registry does not provide the same benefits as registering on the USPTO Primary Registry, but may be the only option for descriptive trademarks.
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Trademarks have value; some more than others. Generally speaking, those trademarks that are unique are more valuable than those trademarks that describe the product or service that is associated with the mark.
When clients approach me with suggestive or descriptive marks, they are often disappointed when I don't share their enthusiasm. The internet is full of marketing experts recommending that service providers or manufacturers brand their products with names that tell the consumer exactly what they will be getting. Marketing experts argue that these types of names are more likely to be remembered by the public. That may be true. What is also true is that names that describe the product are weak trademarks or are not trademarks at all.
Trademarks that merely describe the service or product associated with the mark are placed on the USPTO Supplemental Register. When a trademark is placed on the supplemental register, the owner does not derive the same benefits and protections for the trademark as if it were registered on the USPTO Primary Register. Trademarks listed on the Primary Register are "real" trademarks that receive all of the benefits of federal trademark registration.
The USPTO Supplemental Register includes marks that do not qualify for federal trademark protection because they are not distinctive enough to indicate the source of the product. The common types of marks that end up on the supplement register include those that are geographically descriptive, descriptive in general, and surnames. These marks may at some point, generally, at least after five years of use, become a source indicator, but at the point of filing, they are merely descriptive of the product or service. These marks do not receive the same protections as those listed in the Primary Register. In fact, placement on the Supplemental Register does not indicate ownership of the mark, start the timer for incontestability of the mark, or imply exclusivity of the mark.
So, what's the point of registering a mark on the Supplemental Register?
1. The Federal Registration Symbol may be used when the mark is used with the goods or services identified in the application;
2. Registration on the Supplemental Register allows the trademark owner to seek reciprocal rights in foreign countries; and
3. Providing proper notice of some trademarks rights makes injunctive relief and other remedies available to a trademark owner who successfully sues an infringer (very unlikely).
For all of these reasons, applicants should always fight for registration on the Principal Register. There are legal arguments supporting aquired distinctiveness of even the most descriptive marks, which would make the marks eligible for the Primary Register. Also, what might appear to be descriptive, might actually be suggestive, which is protectable on the Primary Register without a showing of acquired distinctiveness. Try for the Principal Register, if you fail, amend the application to the Supplemental Register.
Ahaji Amos is a patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution. This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
CAN I GET A PATENT ON MY INVENTION?
Can I Get a Patent On My Invention | Is My Invention Patentable | What are the Types of Patents | What Can Be Patented
Can You Get a Patent on Your Invention? Here’s How to Know If Your Invention Can Be Patented
Patents are provided for in Article 1, Section 8, Clause 8 of the U.S. Constitution, which states:
The Congress shall have the power… [t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.
Do you have an invention that you would like to patent? Do you know if your product even qualifies for a patent?
CATEGORY OF PATENTS
Utility Patent
Patent-Eligible Subject Matter: The subject matter for a utility patent can be a process, machine, composition of matter, manufacture, or any improvement thereof. To secure a utility patent, you must show that your invention is new, useful, and unobvious over the prior art (the previously known subject matter). The term of a utility patent is 20 years.
• Process is a method of treating material to produce a particular result or product. A process can also relate to a new use of a known composition, apparatus or the like.
• Machine is a device in which energy can be utilized to perform a useful operation (e.g., an apparatus with the required mechanical or electrical elements.)
• Composition of matter is a combination of two or more substances (e.g., chemical elements, chemical compounds, or other components).
• Manufacture is a category for the remaining statutory subject matter that is not a process, machine, or composition.
• Computer program.
• Business method.
Ineligible Subject Matter: Certain subject matter is not patentable such as:
• Laws of nature;
• Physical phenomena;
• Abstract ideas;
• Perpetual motion machine (deemed impossible); and
• No patent may issue on a claim directed to or encompassing a human organism.
Before 1998, mathematical algorithms were ineligible subject matter as well. Hence, a patent could not be obtained for a computer program encompassing an algorithm. However, you can get a patent for a machine that includes a programmed computer or for a process that performs a function utilizing a programmed computer. Thus, an algorithm is patentable if it is applied in a useful way. Specifically, if the algorithm is directed to a machine programmed to provide a useful, concrete and tangible result, it is important to note that an algorithm as merely an abstract idea is still unpatentable.
Design Patent
The design of an article of manufacture that is new, original and ornamental also qualifies for a design patent. Some courts have also required some degree of patentable distinction or inventive faculty (comparable to the non-obviousness requirement for utility patents). No description other than a reference to the drawing(s) is required for a design and the term of the patent is 14 years.
Plant Patent
If you invent or discover and asexually reproduce any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings (other than a tuber propagated plant or plant found in an uncultivated state), you can secure a patent on the plant. The description of your invention should be as complete as possible. The term of a plant patent is 20 years.
Patentability
You should investigate the patentability of your invention before you file a patent application to determine whether the subject matter of your device, process, or thing has been previously known to others. The test for patentability is whether your invention is new, useful, and unobvious over the prior art. If you are wondering if your invention qualifies for a patent, contact me today.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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CAN I GET A PATENT ON MY INVENTION?
Can I get a patent on my invention? Your questions about whether your invention can be protected with a patent are answered.
Do you have an invention that you would like to patent, but you do not know how to determine if you can get a patent for your invention? Below are some guidelines that will help you determine if you can get a patent for your invention.
To qualify for a patent, an inventor or applicant must have invented a useful invention that qualifies as patentable subject matter, which is both new and non-obvious.
Who can obtain a patent?
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.
How can I determine if my invention is patentable?
A claimed invention must be eligible for patenting. There are two criteria for determining subject matter eligibility:
· first, a claimed invention must fall within one of the four categories of invention recited in 35 U.S.C. 101, i.e., process, machine, manufacture, or composition of matter; and
· second, a claimed invention must be directed to patent-eligible subject matter and not to a judicial exception (unless the claim as a whole includes additional limitations amounting to significantly more than the exception).
What is a judicial exception?
The judicial exceptions are subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention, and are limited to abstract ideas, laws of nature and natural phenomena (including products of nature).
Are there any other restrictions on subject matter that I should consider?
Yes, you should also consider double patenting—which is two patents issuing on the same invention to the same applicant. More specifically,
· the “same invention” means that identical subject matter is being claimed. If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention.
How can I tell if my invention is new?
NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
the claimed invention was described in a patent issued, or in an application for patent published or deemed published, in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
The prior art reference must teach and every aspect of your invention either explicitly or impliedly. Any feature not directly taught must be inherently present.
What is considered prior art pursuant to 35 U.S.C. 102?
Remember that your invention must be a new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. So, 102 prior art includes anything that can be used to establish the state of technology before you filed your patent application. Below are some examples of prior art.
· any publication such as a brochure
· a magazine article
· a published patent or patent application
· advertising
· a web page
· a public showing of a product
· an offer for sale
· a sale of a product
· prior invention by another
· public or commercial use of a product
· public knowledge of the invention
This requirement excludes “throw-away,” “insubstantial,” or “nonspecific” utilities, such as the use of a complex invention as landfill, as a way of satisfying the utility requirement of 35 U.S.C. 101.Credibility is assessed from the perspective of one of ordinary skill in the art in view of the disclosure and any other evidence of record (e.g., test data, affidavits or declarations from experts in the art, patents or printed publications) that is probative of the applicant’s assertions. (MPEP §2107)
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 , if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
How can I determine if my invention contains non-obvious subject matter?
The reference teachings must somehow be modified in order to meet the claims. Moreover, the modification must be one which would have been obvious to one of ordinary skill in the art.
Yes, the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
· Determining the scope and contents of the prior art.
· Ascertaining the differences between the prior art and the claims at issue.
· Resolving the level of ordinary skill in the pertinent art.
· Considering objective evidence present in the application indicating obviousness or nonobviousness.
How can I tell if my invention is useful?
Your invention must have a well-established utility. An invention has a well-established utility if:
· a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (e.g., properties or applications of a product or process), and
· the utility is specific, substantial, and credible.
The patent prosecution process is complex – there are a myriad of rules, statues and case law that are part of patent law. You should partner with an experienced patent attorney to prepare and prosecute your patent application to ensure that your invention rights are properly protected.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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REQUIREMENTS FOR GETTING A PATENT, WHAT SHOULD BE DISCLOSED IN YOUR PATENT APPLICATION
Parts of a patent application | Patent application requirements | What to disclose in a patent application
The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that issues patents to inventors and businesses for their inventions. The role of the USPTO is to grant patents for the protection of inventions and to register trademarks. Applications for patent must be filed in the USPTO. The USPTO subsequently exams the patent applications and grants patents on inventions when applicants are entitled to them. A patent application for an invention has several different parts – some parts are required, and some are optional.
Required Parts of a Patent Application
An application for patent of an invention has several different parts. Some are required in order to submit a complete application to the USPTO and some are optional. Every application for patent must include:
· a specification;
· at least one claim;
· drawings (when necessary for understanding the invention);
· an oath or declaration executed by each inventor; and
· appropriate fees.
Specification
The specification provides details about the invention and demonstrates how it differs from earlier inventions. The specification includes a title, which indicates the invention’s general field. A specification also includes a summary that briefly outlines the invention’s scope or claims. The specification has three major elements:
· background;
· description; and
· claims.
The specification is a required part of a patent application that provides a complete description of the operable invention and forms the basis for the claims. The specification must describe how to make and use your invention. Specifically, a written description of your invention must be in such full, clear, concise, and exact terms as to enable any persons skilled in the art to which it pertains to make and use your invention. Your invention must also set forth the best mode contemplated by you of carrying out your invention. There are several factors used to ascertain whether the description, also known as the disclosure, satisfies this requirement (also known as the enablement requirement). Factors may include, but are not limited to, the following:
· the breadth of the claims;
· the nature of the invention;
· the state of the prior art;
· the level of ordinary skill;
· the level of predictability in the art;
· the amount of direction provided by the inventor;
· the existence of working examples, and
· the quality of experimentation.
Claims
A patent application must have at least one claim. The claims recite your invention. If your patent issues, the claims recited in your invention will define your legal rights as the patent owner to exclude others from making, using and selling the invention in the United States for the term of your patent.
Drawings
Drawings are required whenever the nature of the subject matter requires a drawing to understand the invention. The drawing must show every feature of the invention specified in the claims and is required to be in a particular form (i.e., size of the sheet on which the drawing is made, the type of paper, the margins, and other details relating to drafting the drawing).
Oath or Declaration
An oath or declaration is a formal statement that must be made by the inventor in a non-provisional application. Each inventor must sign an oath or declaration that includes certain statements required by law and the USPTO rules, including the statement that he or she believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application and the statement that the application was made or authorized to be made by him or her. An oath must be sworn to by the inventor before a notary public. A declaration may be submitted in lieu of an oath. A declaration does not need to be notarized. Oaths or declarations are required for design, plant, utility, and reissue applications.
In addition to the required statements, the oath or declaration must set forth the legal name of the inventor, and, if not provided in the application data sheet, the inventor’s mailing address and residence. In lieu of an oath or declaration, a substitute statement may be signed by the applicant with respect to an inventor who is deceased, legally incapacitated, cannot be found or reached after diligent effort, or has refused to execute the oath or declaration.
Appropriate Fees
Below are the types of USPTO fees association with patent application filings.
Ø Patent Filing Fees
Ø Patent Prosecution Fees
Ø Patent Maintenance Fees
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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The Trademark Is Not Registered, Can I Use it? No.
This blog post answers the question, “No one has a trademark registration…so can I use it?”
Can I Use an Unregistered Trademark Since NoOne Owns It? NO.
Trademarks are not established by registration. They are created by use. Clients often conduct a quick United States Patent and Trademark Office ("USPTO") trademark database search to rightly determine that the word, phrase or logo of interest has not been registered as a federal trademark. After thousands of dollars are spent, the dreaded cease and desist letter arrives informing the new trademark owner that the unregistered mark has been in use by another in the same field. The prior user has superior rights in the trademark, despite the lack of registration. Why? Common law trademark rights are established by use, not registration.
Federal trademark registration provides many advantages for those who secure them. Benefits of federal trademark registration include the following:
1) Being listed on the USPTO website for all to see
2) Being known to USPTO trademark examiners
3) Establishes nationwide use
4) Serves as evidence of the validity and exclusive ownership of the mark for the goods and services listed in the registration
5) Incontestable trademark status after five years
6) Grants the right to use the ® symbol
7) Grants the right to sue in federal court and, possibly triple damages and attorney fees
8) No need to prove actual damages
9) Provides a basis for foreign registrations
10) Empowers US Customs and Border Protection can block infringing imports
However, registration is not what gives the trademark ownership rights. Common law trademark rights are established upon use. So long as the trademark is being used as a trademark (to designate the source of goods, and not to describe the thing itself), a trademark owner does have common law trademark rights, including the power to prevent others from using the trademark in the same geographic area where the mark is used.
These rights are not as strong as those granted with a federal trademark registration. However, common law trademark rights are significant enough to warrant attention. You don't want to invest in a mark that can't be used in specific geographic regions. And, in the age of the internet, the "geographic region" may be the entire viewing public's region.
For all of these reasons, it's essential for anyone who is working on branding a product or service using a trademark to have a trademark clearance search conducted before the product or service hits the market. If you are interested in a flat fee trademark search, please contact us.
Ahaji Amos, PLLC
More Than Your Average IP Boutique
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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WHAT DOES PATENT PENDING MEAN?
What does patent pending mean | patent pending patent application | patent pending status
What Does Patent Pending Mean?
Have you ever watched the reality show Shark Tank where budding entrepreneurs get the chance to pitch their ideas to the sharks in the tank by trying to get any one of them to invest in their ideas? Okay, I guess you know that the contestants are not literally pitching ideas to real sharks, right? The sharks are potential investors who have made their dreams a reality by turning their ideas into lucrative empires. If you have watched the shows, you probably know that the sharks often ask the contestants if they have a patent, and that some of the contestants’ replies are that they have a patent pending. Do you know what it means to have a pending patent? If not, read on—even if you know, read on because you may find some valuable information that you may not know.
What does patent pending mean?
Patent pending means a patent application has been filed with the United States Patent and Trademark Office (“USPTO”) but the patent has not yet been granted, and the application has not been abandoned. Accordingly, patent pending status can be claimed if a patent application has been filed with the USPTO, but the patent has not yet been granted, and the application must not be abandoned.
Patent pending status begins on the day that a patent application is filed and ends on the day that a patent is granted. Patent pending status will also end on the day that an application for patent is abandoned. Typically, patent pending status lasts from one to three years. However, it is not uncommon for certain patent applications to have pending status beyond three years.
Okay, thanks! But what is an abandoned application?
Abandoned simply means that the application is no longer pending and, therefore, cannot mature into a patent.
How can I search for applications that have patent pending status?
Once an application has been published, which is typically 18 months following the filing date of a non-provisional application (earlier if a provisional application was filed), the application is available on the USPTO’s website using Public PAIR. PAIR (Patent Application Information Retrieval) is the USPTO’s web-based means of electronically viewing the status of patent applications and the related documents.
Are there any legal benefits to obtaining patent pending status?
Only an issued patent can provide an owner of an invention with legally enforceable patent rights. Hence, patent pending status does not provide any legally enforceable rights.
Nonetheless, patent pending status can be influential on the decision makers when presenting an invention with patent pending to potential investors, or licensees (as you probably know if you have ever watched Shark Tank).
Moreover, using a patent pending designation serves to notify the public, businesses, or potential infringers who would otherwise copy the invention that they may be liable for damages (including back-dated royalties), seizure, and injunction once a patent is issued on the claimed technology.
Someone Is Using Your TradeMark...What You Need to Know
Being a trademark owner has benefits, but as with everything, there are limits and trademark owners should be aware of these limits. Junior trademark users may obtain trademark rights using cancelations, oppositions, and concurrent use proceedings.
#trademarklitigation attorney, #trademarklitigationlawfirm
So, you have a federal trademark registration, and you want to stop someone else from using it. That's why you sought out the registration, right? Not so fast. Here are a few things to know.
1. Subsequent Users Still Have Rights
If you successfully obtain a trademark from the U.S. Patent and Trademark Office, you do have the right to stop some others from uses that are confusingly similar. However, those that start using the trademark after you began using, but before you obtained your trademark registration, still have rights that may prevent you from stopping their use. If a party starts using the mark in good faith, and without knowledge of the trademark owner's use, the subsequent user can retain common law trademark rights. The subsequent user rights will be limited to the territory in which they were using the trademark before the trademark owner filed their trademark application, in most cases.
2. Prior Users Still Have Nationwide Rights - Within 5 Years
Your trademark rights are established by use, not registration. So, those that were using the trademark in a particular territory can't be forced to stop using the trademark just because you obtained a federal registration. The prior user will not be restricted to a specific geographic region, as the prior user has national priority over the trademark owner.
Even more, the unregistered prior user can oppose a trademark owner's application and can and should consider opposing or seeking cancelation of the trademark registration. There is no need for the prior user to secure a trademark before requesting cancelation or opposition of the trademark registration. The ability to oppose is limited to the 30-day opposition period after the mark is allowed. A prior user may seek cancelation within five years of the date of registration based on prior use.
3. Prior Users Still Have Limited Rights - After 5 Years
After the fifth year of registration, a trademark owner can seek "incontestable" status by filing an affidavit, which increases the evidentiary value of the registration and limits the grounds available to those who seek to cancel the trademark registration. While an incontestable mark does have superior rights, it can't be used to prevent a prior user from continuing to use the trademark in the geographic location in which they have continued to use the trademark, without interruption. That prior user could block the use of that trademark by the trademark owner in those territories.
Your Takeaway...
A subsequent user cannot challenge a prior user's trademark use via an opposition or cancelation proceeding. So, don't file an opposition or cancelation if you know that the trademark was already in use (one that is confusingly similar to an ordinary consumer in the "marketplace") before you began using the mark. A subsequent user can sue the trademark owner for trademark rights (not recommended). The subsequent user may also file a trademark application requesting limited territorial rights. This is called a concurrent registration.
A concurrent use proceeding requires the applicant to say where and for how long they have used the mark, as well as how the geographic and temporal scope of other's use of the trademark. If the mark is otherwise registerable, it will issue. As with all other trademarks, it will be published for opposition in the Official Gazette for 30 days. If unopposed, notices are sent to the parties concurrently using the mark, who have 40 days to respond.
If there is no objection, a federal registration will issue to the applicant that is limited to a particular type of good or services, in a specific territory. The prior users will be entitled to protection in all areas in which the junior user is unable to establish priority unless the parties agree otherwise (concurrent use agreement).
Being a trademark owner has benefits, but as with everything, there are limits and trademark owners should be aware of these limits.
GOALSETTER SHARK TANK EPISODE!
My client, Goalsetter, pitched on Shark Tank over the weekend. Check out CEO, Tanya, after the second commercial break!
I wanted to update everyone! My client, GoalSetter, was on Shark Tank recently. Check out the episode on ABC.com (just after second commercial break). #goalsetter #womeninbusiness #SavvyBusinessOwner #MakersGonnaMake #Ladypreneur #womenwithambition #goalgetter #femaleceo
MY CLIENT IS ON SHARK TANK!
My client, Goalsetter is on Sharktank. #proudlawyermomma #sharktank
I'm excited to spread the word that one of my clients will be on Shark Tank. Tanya Van Court, the founder of Goalsetter, will be pitching her kids' savings, gifting and allowance platform to the sharks on 3/10 at 10pm ET, 9pm CT, 9pm MT, and 10pm PT. Go to Goalsetter.co to open a savings account for your own kid, or give the gift of savings to a kid you love...and tell your friends that you knew about Goalsetter BEFORE it was on Shark Tank. #SharkTankSavers
I'm excited to spread the word that one of my clients will be on Shark Tank. Tanya Van Court, the founder of Goalsetter, will be pitching her kids' savings, gifting and allowance platform to the sharks on 3/10 at 10pm ET, 9pm CT, 9pm MT, and 10pm PT.
Go to Goalsetter.co to open a savings account for your own kid, or give the gift of savings to a kid you love...and tell your friends that you knew about Goalsetter BEFORE it was on Shark Tank. #SharkTankSavers
Applying for a Trademark on a Business Name
Applying for a trademark on a business name seems straighforward. However, there are common errors made which can be avoided. This article covers how to trademark a business name and how to avoid pitfalls commonly encountered during the trademark registration process. #law, #lawyer, #legal, #attorney, #lawfirm, #lawyerlife, #lawyers, #trademark, #patent, #motivation, #trademarks, #womeninip, #iplaw, #iplawyers, #womeninbusiness, #mochapreneurs, #business, #work, #office, #entrepreneur #attorneys, #inventor, #ahaji #ahajiamos, #ahajiamospllc, #trademarkattorney, #trademarkattorneynearme, #blacktrademarkattorney, #femaletrademarkattorney, #blacktrademarkattorney, #womentrademarkattorney, #affordabletrademarkattorney, #trademarkattorneyflatfee, #onlinetrademarkattorney, #trademarklawyer, #trademarksearch, #trademark, #trademarkaname, #trademarkalogo, #tess, #howtotrademarkalogo, #trademarkattorneysearch, #trademarkregistration, #costoftrademarkattorney, #napervilletrademarklawyer, #napervilletrademark lawyer, #tmlogo, #trademarktm, #tmtrademark, #why registeratrademark, #rsymbol, #trademarksymbol, #trademarksofletters, #whatisacertificationmark, #whatdoestrademarkregistrationdo, #canIstopsomeonefromusingmyname, #canIstopsomeonefromusingmylogo, #howlongdoesittaketoregister atrademark, #trademarksymbols, #amazonbrandingtrademark, #doamazonrulesallowtrademarkonlogo, #besttrademarklawyer, #trademarklitigation attorney, #trademarklitigationlawfirm, #trademarklitigationlawyer, #toptrademarklitigationfirm, #tmattorney, #trademarkapplicationlawyer, #trademarkapplicationattorney, #trademarkcost, #registeredtrademarkattorney, #registredservicemark, #trademarkbusinessname, #federaltrademarksearch, #wipotrademarksearch, #freetrademarksearch
If you are considering applying for federal trademark registration on your business name, there a few things you want to keep in mind, before you start advertising.
Note: Advertising agencies tell everyone to use descriptive business names. If the intent is to use the business name as a trademark and apply for trademark registration in the USPTO, then do not use any words that describe your product or service as your trademark. Descriptive marks are by definition, not trademarks that are capable of federal trademark protection. Trademarks indicate the source of goods or services and do not merely describe the product or service itself, or the attribute of the products or services. Unique marks are the best and easiest trademarks to protect.
1. Check Your State's Business Name Registry
If another entity has registered your business entity name in your state, it doesn't make sense to use that name. Could you successfully apply for a trademark registration? Yes. Will, the trademark application process, cost you a lot more than if you chose an original name? Absolutely. The USPTO Trademark Examining Attorney will conduct a trademark search on your trademark, and that search is not limited to the USPTO TESS system. Since federal trademark registration is based upon use and not registration, a property trademark search will include all state business name registries, as well as domain names, product names and descriptions for online stores, google search results, and even dictionaries. Any conflicting or similar uses will be used to reject your trademark application, and it will be up to the person applying for the trademark registration to explain why the cited uses are not a bar to registration of the logo or name or word that is the subject of the trademark application.
2. Check the USPTO Trademark Electronic Search System (TESS)
Even though trademark registration is not required for a trademark owner to have trademark rights, it's still important to make sure your business name is not already registered in the USPTO. If someone has already registered the mark, why fight for it? It'll be expensive and generally a waste of resources. Just make sure you know how to conduct a proper USPTO TESS search. It's not intuitive to those unfamiliar with trademark law.
3. Search Similar Trademarks
The standard for infringement of a trademark is the likelihood of confusion. That means that merely changing the spelling or pronunciation of a word won't work to shield an applicant from potential trademark infringement. In other words, the USPTO's Examining Trademark Attorney will see and consider "momma" and "mamma" to be identical. "Goodnight" and "good night" are also identical, as are "black" and "blaque." So, any search you conduct should include similar sounding marks as well as marks that are written similarly.
4. Make Sure You Own the Copyright
If you purchased your trademark from a third party on a website like Fiver.com, Etsy.com, or 99Design, you might want to doublecheck to ensure that you own the mark. If that designer has sold the same mark to others in similar industries or that are selling related services or products, you will only be able to rightfully own the trademark if you were the first one to use it. Even then, the subsequent users will have some rights that reduce any rights that you may have should you be allowed to receive a trademark registration. (Don't buy pre-made trademarks or branding packages. It's easy, but you can never own them.)
5. Is Your Business Name a Trademark or a Service Mark?
A business name is considered a trade name and not a trademark, or service mark. Trademark law does not protect business names. Trademarks are words, logos, phrases and the like that indicate source to the public. Trademarks are generally associated with services and products, not business names. To qualify for federal trademark registration, the business name must be used to identify the business' goods are services from those of others, and not merely as the name of the company. Providing a proper trademark specimen will be key.
Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.
This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.
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Ahaji Amos, PLLC
#trademarks #womeninip #womeninbusiness #mochapreneurs