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Intellectual Property

Hurdles To Obtaining Patent Protection

Hurdles To Obtaining Patent Protection

Laura Marmulstein

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A patent is an intellectual property right that grants the owner the right to exclude others from making, using, importing, offering for sale, or selling the patented invention in the United States for a limited period of years. A patent does not grant the owner the right to make, use, import, offer for sale, or sell the patented invention.

Let’s use skis and a snowboard as an illustrative example of this right to exclude but not the right to use (this first comes to mind, as I’m an avid skier). You invented skis and obtained patent protection on a board that straps onto one foot and another board that straps onto the other foot. You can prevent others from making, using, and selling skis. However, another inventor has a patent on a snowboard that broadly covers a board that straps onto at least one foot. The snowboard patent owner has the right to exclude others from making, using, and selling a snowboard – or broadly, a board that straps onto at least one foot. Accordingly, you cannot make, use, or sell skis, your patented invention, because you would be infringing on the snowboard patent since you would be making, using, or selling a board that straps onto one foot. Thus, a patent gives an owner the right to exclude others from using or selling, but not a right to use or sell, the patented invention.

There are several hurdles to obtaining patent protection. An initial consideration is whether the invention contains subject matter that is eligible for patent protection. Patentable subject matter includes “any new and useful process [(e.g., a manufacturing process or software)], machine [(e.g., a car engine)], manufacture [(e.g., a camera lens or bicycle)], or composition of matter [(e.g., pharmaceutical drugs)], or any new and useful improvement thereof.” 35 U.S.C. § 101.

These categories of patentable subject matter exclude laws of nature, natural phenomena, and abstract ideas (known as “judicial exceptions”). See MPEP § 2106. Laws of nature include naturally occurring principles or equations such as E=mc2 or the law of gravity. A natural phenomena or product of nature is something that is naturally occurring. For example, a cloned sheep that was found to be identical to a sheep found in nature was not eligible for patent protection. See In re Roslin Institute (Edinburgh), 750 F.3d 1333, 1337 (Fed. Cir. 2014).

Abstract ideas include mathematical concepts (e.g., mathematical relationships, formulas, or equations), methods of organizing human activity (e.g., fundamental economic principles or practices such as hedging or mitigating risk, commercial or legal interactions, or managing behavior or relationships), and mental processes (e.g., concepts performed in the human mind such as observations, evaluations, or judgments). See MPEP § 2106.04(a). As an example, software patent applications are often rejected as abstract ideas where the software is simply expressed as code or a set of instructions detached from any medium. Typically, the software needs to be tied to some technology and to provide some technical solution to a technical problem to avoid being rejected as an abstract idea.

The rationale for denying patent protection for these judicial exceptions is to prevent others from monopolizing “the basic tools of scientific and technological work,” which could impede innovation rather than promote it. See MPEP § 2106.

The utility requirement under § 101 requires that the invention have a specific, substantial, and credible utility. See MPEP § 2107. A consideration under the utility inquiry is whether a person of ordinary skill in the art (e.g., in the field of the invention) would accept that the invention, as disclosed, is currently capable of the claimed use. “[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research.” In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005).

Additional requirements for patentability include (1) novelty and (2) nonobviousness. Novelty (or whether the invention is new) requires that the invention was not known, used, or sold by others or patented or described in a printed publication, or otherwise available to the public, prior to filing the patent application. See 35 U.S.C. § 102. These pre-existing disclosures, uses, or sales of the invention by others are known as “prior art.” If all of the features of your invention cannot be found in a single prior art reference (i.e., at least one feature is different), your invention is considered to be novel and passes this requirement.

Non-obviousness requires that the differences between the invention and prior art would not have been obvious to a person having ordinary skill in the art at the time the invention was made. See 35 U.S.C. § 103. This hurdle can be a bit more difficult to overcome than the novelty requirement, as it requires your invention be sufficiently different from the prior art. In other words, if the one feature of your invention that is different from the prior art is a minor tweak that anyone would have thought to do, it might be considered obvious and not protectable.

Finally, an inventor can lose the right to a patent if the inventor delays too long in seeking patent protection. If an inventor publicly discloses or uses the invention, or sells the invention or offers the invention for sale for over a year prior to filing a patent application, then the inventor loses the right to obtain patent protection in the U.S. Most foreign jurisdictions do not allow this year grace period and a public disclosure, use, or sale may act as an absolute bar to patentability regardless of when it occurred relative to filing the patent application. The rationale for this requirement is to prevent inventors from exploiting their invention for a period of time prior to obtaining patent protection. Accordingly, it is best practice is to file a patent application before any public disclosure, use, offer for sale, or sale of the invention.

In conclusion, if you believe you have patentable subject matter that is novel or has some new feature that is substantially different from the prior art, you should consult with a patent attorney to determine how to best protect your invention prior to any public disclosure, use, or sale.

Disclaimer: The images used in this article were provided courtesy of Unsplash

ABOUT THE AUTHOR

ASSOCIATE

Laura counsels clients on legal issues related to intellectual property, including patents, trademarks, and copyrights. Laura helps clients build strong intellectual property portfolios, taking into account various types of protection options, such as utility and design patents, including both U.S. and foreign, trademark and trade dress registrations, and copyright registrations.

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Intellectual Property

What to Expect When You Register a Trademark

What to Expect When You Register a Trademark

Sophi Robbins

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The process of protecting your intellectual property can be daunting, especially for first-time business owners. However, a legal expert can navigate the nuance of trademark law and get you an application without too much headache or strain on your pocketbook. Any successful company has trademark registrations. If you go through this process at the onset, it is much less expensive than spending a lot of time and money branding your company only to realize that you are infringing upon someone else’s mark and must rebrand. The following steps are laid out to explain the process of registering a trademark.

Ensuring Success

The first step when filing a trademark application is to research potential competition and threats to the success of your marks. This is referred to as a Knock-Out Search. Your attorney will do a comprehensive search of the current and pending trademarks within your industry, as well as anything else that could pose a threat to your ability to register your mark. The search will look for similar words, shapes, and spellings. It might be the case that your intended applications aren’t strong contenders, and though disappointing, it’s best to make rebranding choices at this early stage of the process before time and resources have been spent on a name that you will eventually have to change.

Filing for Registration

Once you’ve worked with your attorney to determine what marks you will file, it’s time to file your application for registration with the United States Patent and Trademark Office (USPTO). You can file the mark after having used it in commerce as a 1(a) application, or you can file a mark that you intend to use as a 1(b) application. The process is largely the same, with a few small differences that your attorney can walk you through. For a use-in-commerce application, you must show proof that you are currently using the mark on the goods specified in your application. For an intent-to-use application, you can provide that evidence later.

Waiting It Out

Once your attorney has filed your application, an examining attorney from the USPTO will review your application. If they do not identify any problems, the mark will be published for opposition. If the examining attorney does identify an area of concern, an Office Action will be issued. Often, the reason for this is a likelihood for confusion with a prior registration, a mark being merely descriptive, or the need to disclaim part of the mark like the words “bar & grill” from a restaurant’s name. There are numerous reasons why an application would be initially rejected, and office actions are not uncommon. In the case of an office action, there is typically 6 months from the date of issuance to respond.

If the PTO examiner determines there are no reasons to object to your mark, they will approve it for publication, and it will be published in a public-facing gazette. Third parties will have 30 days from the date of publication to file an opposition or extension of time to oppose the registration of your mark. This is relatively rare, but it does come up in 3-4% of cases. If it should occur, your mark will take a detour from the typical registration process and your attorney will walk you through those steps.  

If a mark passes opposition, you should have very few obstacles between you and the finish line! A 1(a) mark which has passed will be placed in a queue to be officially registered, without you or an attorney needing to take any additional action. Again, with the current back-ups, this could take several months. A 1(b) mark which passes opposition will eventually be issued a Notice of Allowance (NOA), which indicates that as soon as you can prove your use in commerce, the mark can be registered. From the date of NOA, you have 6 months to file a Statement of Use, which includes specimens of your mark. If you are still not using the mark at that time, extensions can be filed every 6 months up to 5 times (or 3 years from the date of NOA.) If you don’t use the mark in that time frame, you’ll lose the application and be required to start over again if you later change your mind.

Registration at Last

When your mark finally reaches registration, you will have exclusive rights to the use of the mark. This is when you will begin using the ® symbol. Your responsibilities now are to maintain documentation and file periodic renewals. The first deadline is in between the fifth and sixth anniversary of the date of registration, followed by renewals every 10th year. It is also a good idea to keep a “watch” on your mark so that if other marks are published, which you might want to oppose, you are alerted. There are automatic services that will notify you of such activity, and your attorney’s likely use something of the sort.

So, Are You Ready for the First Step?

Knowing what you’re up against will prepare you but having the right team to work with is essential. Whether you’re a first-time small business owner or part of a growing company that’s ramping up its product lines, relying on a strong legal team is going to make the trademark process much more approachable. If you are interested in starting this process with your own marks, reach out to us and we’ll be happy to answer any questions.

ABOUT THE AUTHOR

OFFICE ASSISTANT

Sophi has a background in office management and small business management and has had the pleasure of seeing multiple small companies grow with her. Since graduating with a BA in Environmental Studies and Business Marketing, she has worked in both office jobs and the service industry, finding ways to learn new skills and gain responsibilities. She puts those skills to good use with her own small business, an etsy craft store. She is also a skilled barista and mixologist, and enjoys trivia games and baking (she usually doesn’t even use a recipe, thanks to her time managing a bakery).

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Intellectual Property

The Patent Process: Getting Started

The Patent Process: Getting Started

Laura Marmulstein

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When should you seek patent protection? When you have an idea? A prototype? A product? It is often a misconception that you need a prototype or product to seek patent protection. While you cannot obtain patent protection for a mere idea, you can, in fact, file a patent application with an idea (and no prototype or product), so long as the idea is sufficiently concrete.

To be sufficiently concrete, the idea must be well thought out such that you could describe the invention with enough specificity to enable another to make and use it. Your invention should provide a solution to a problem, and you should be able to explain how to achieve that solution. You want to file a patent application when you know your invention can and will work – otherwise, there may not be much value in obtaining a patent on something that doesn’t work. If you are not sure the invention will work as anticipated, you may want to make a prototype and test it out before you file. Finally, you want to consider all the different variations and possible improvements to avoid others designing around your invention.

A key consideration when determining whether to file is whether you plan to publicly disclose the invention. A public disclosure can be a non-confidential disclosure, a public use, a sale, or an offer for sale of your invention. Some common examples of a public disclosure include trade shows, press releases, publications, websites, product launches, advertising and marketing materials, and discussions with people outside your company (particularly without a confidentiality or non-disclosure agreement in place). A public disclosure of your invention can ruin your chances of obtaining a patent, especially if you are interested in foreign protection. In the U.S., there is a one-year grace period to file a patent application after a public disclosure. If over a year has passed since a public disclosure of the invention, you cannot obtain a patent. Most foreign jurisdictions do not have this grace period, and you will lose your patent rights in those countries if you disclose before you file. So best practice is to file before a public disclosure.

If you plan to publicly disclose your technology before it is fully developed, you can file a provisional patent application. A provisional patent application is not examined and remains confidential, but it provides you with a place in line at the U.S. Patent and Trademark Office to preserve your patent rights in the U.S. and foreign countries. The U.S. patent system is a first-to-file system, meaning whoever files first can obtain patent protection for an invention (so long as it meets the other requirements for a patent – e.g., is new and non-obvious). For this reason, it is best practice to file as early as possible.

For a provisional patent application, you want to include sufficient detail to teach others how to make and use your technology. You also want to provide a broad description of your technology to support a later-filed application – either a non-provisional application or an international or PCT application – which is substantively examined. The later-filed application receives the benefit of the filing date of the provisional patent application. However, this priority date only applies to the material disclosed in the provisional application. Any new material added to the later-filed application will receive the filing date of the later-filed application. For this reason, it is best to have sufficient breadth in the provisional patent application to cover any changes or additional details that you might add to the non-provisional patent application in order to obtain the benefit of the earlier filing date.

A provisional patent application may be beneficial if you are still developing your technology, you want to push costs to a later date, or you want to be able to say “patent pending” for a longer period. A provisional patent application gives you a year to develop your technology and add any additional improvements or variations before filing a non-provisional or PCT application. As a general rule for foreign filing, once you file the non-provisional or PCT application, you cannot add any new material to the disclosure. Further, the cost of filing a non-provisional or PCT application is much more expensive, so filing a provisional patent application gives you an additional year to obtain the finances and budget for the non-provisional or PCT application. See USPTO Fee Schedule for more on fees. Finally, once you file a provisional patent application, you can label your technology covered by the application as “patent pending.” Patent pending can be attractive to investors. For example, it shows investors that you are serious about your technology and think it is new, unique, and valuable. Patent pending can also be intimidating to competitors in your field, as they cannot predict the future scope of your protection. A competitor might think twice before developing technology that resembles your technology for fear of infringing on your rights. 

In conclusion, you should file a patent application before a public disclosure, when you have an invention that works, and when you can describe how to make and use the technology in sufficient detail. If you think you are ready to file a patent application, you should consult with a patent attorney.

ABOUT THE AUTHOR

ASSOCIATE

Laura counsels clients on legal issues related to intellectual property, including patents, trademarks, and copyrights. Laura helps clients build strong intellectual property portfolios, taking into account various types of protection options, such as utility and design patents, including both U.S. and foreign, trademark and trade dress registrations, and copyright registrations.

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Hurdles To Obtaining Patent Protection

A patent is an intellectual property right that grants the owner the right to exclude others from making, using, importing, offering for sale, or selling the patented invention in the United States for a limited period of years. A patent does not grant the owner the right to make, use, import, offer for sale, or sell the patented invention.

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Intellectual Property

What is the Trademark Modernization Act of 2020?

What is the Trademark Modernization Act of 2020?

Amanda Milgrom
Amanda Milgrom

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Trademark practitioners, it is time to get excited! Trademark applicants? Registrants? You can get excited, too! The United States Patent and Trademark Office (USPTO), the office that decides who can own the rights to a mark, word, or design logo, has proposed long-needed changes to the trademark rules of practice via the Trademarks Modernization Act (TMA).

If you practice trademark law, you are well aware that much of the process can be antiquated, slow, and inefficient. The proposed changes are intended to make the trademark process more efficient and to allow businesses new ways to remove unused marks from the register. The TMA amends the Lanham Act (which governs trademark law) in three key ways, all of which will be discussed in more detail below.

1. New Tools to Remove Inaccurate Claims of Use

The USPTO has proposed two new methods by which an entity can cancel an unused registration: expungement and reexamination. These tools would provide faster and less expensive alternatives to the current inter partes cancellation proceeding before the Trademark Trial and Appeal Board (TTAB).

Expungement – Third parties would be able to request the cancellation of some or all of the goods and services in a registration based on the fact that the registrant never used the mark in commerce in association with those particular goods and services. An expungement proceeding must be requested between three to ten years after the registration date.

Reexamination – Third parties would be able to request the cancellation of some or all of the goods and services in a registration based on the fact that trademark was not used in commerce with those goods and services on or before a particular date. A reexamination proceeding must be requested within the first five years after a registration.

Either of these tools offers a less expensive, less burdensome, and faster alternative to a cancellation proceeding.

2. Proposed Changes to Existing Procedures

New ground for TTAB cancellation proceeding – The proposed changes under the TMA would add a new ground for cancellation: the trademark has never been used in commerce.

Shorter three-month response period for office actions – Under the TMA, applicants and registrants will be required to respond to office actions within three months (instead of the current six-month period). Practitioners, you will likely be excited about this change, as it would promote efficiency in examination and would speed up the registration process significantly.

Third-party submissions during examination (letters of protest) – The TMA would provide statutory authorization for the USPTO letter of protest practice. This practice allows third parties to submit evidence to the USPTO, prior to a mark’s registration, regarding the registrability of the mark. The TMA would set a two-month deadline for the USPTO to act on these letters.

The TMA became law on December 27, 2020, and will take effect on December 27, 2021. It is currently open to the public for comment until July 19, 2021. You can submit comments at www.regulations.gov. Enter docket number PTO-T-2021-0008 on the homepage and click search. Please reach out to Milgrom & Daskam with further questions.

ABOUT THE AUTHOR

PARTNER & EXECUTIVE DIRECTOR

 

Amanda Milgrom represents individuals and businesses of all sizes in various litigation matters regarding employment, intellectual property, and business disputes. She practices employment law, representing employees in discrimination lawsuits and counseling employers on best practices, drafting employee handbooks, and putting together suites of employment contracts.

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Intellectual Property

How to Protect Your Designs with Patents and Trade Dress

How to Protect Your Designs with Patents and Trade Dress

Laura Marmulstein

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Designs are in everything—the computer you are currently looking at, the clothes you are wearing, the chair you are sitting on, the bottle you are drinking out of (and the list goes on).

There is value to having a product that looks different from anything else on the market. People often want things simply because they look cool or are unique. And wouldn’t it be cool if you could be the exclusive producer of that unique, cool-looking product? With the right protection, you can. There are several ways to protect a design, including design patents and trade dress.

Design Patents

Design patents protect new, original, and ornamental designs for articles of manufacture (35 U.S.C. § 171). In other words, they protect the way a product looks. Specifically, a design patent can protect the configuration or shape of a product and/or its surface ornamentation. An example of a product protected by a design patent is depicted below—which I’m sure you recognize as Apple’s iPhone.

U.S. Design Patent No. D593,087

A design patent gives the owner the right to prevent others from making, using, or selling a product that appears “substantially the same” as the patented product, as determined by an “ordinary observer, giving such attention as a purchaser usually gives.” Gorham Co. v. White, 81 U.S. 511, 528 (1871). An product may appear substantially the same as a patented product if a buyer purchases the infringing product thinking it was the patented product. Id.

As an example, the products depicted in the right two columns of the table below were found to be nearly identical to and to infringe on the Crocs footwear design protected by U.S. Patent No. D517,789, as represented by the drawings in the left column. Crocs, Inc. v. Int’l Trade Com’n, 598 F.3d 1294, 1304 (Fed. Cir. 2010). In this case, the court found that “an ordinary observer…would be deceived into believing the accused products are the same as the patented design.” Id.

A design patent provides the owner with a limited monopoly lasting fifteen years from the date the patent is granted. Once the patent term expires, the patented article falls into the public domain, meaning that anyone can use or sell it. A patent term cannot be extended; however, it is possible to effectively extend the monopoly through other means of design protection, such as trade dress.

Trade Dress

Trade dress is the non-functional physical detail and design of a product or its packaging, which indicates or identifies the product’s source and distinguishes it from the products of others. Trade dress is usually defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 (1992).

When a company continuously uses a design, the public may come to recognize the design as exclusively coming from that company. For example, without seeing a company name for the images below, you likely recognize the product designs as Apple products. These products are protected by trade dress.

Apple has developed a strong reputation in the electronics industry, and consumers know they will get a certain quality product with Apple products. As such, consumers will continue to buy products simply because they come from Apple. A design protected by trade dress has associated value by serving as an indicator of a particular quality product coming from a particular source, influencing purchasers to buy it.

A trade dress owner can prevent others from producing products with designs that are likely to cause consumer confusion. Likelihood of confusion exists when another’s product design or packaging is so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. See TMEP § 1207.01.

For a design to be protected by trade dress, the public must associate the design with a source or producer of goods or services, rather than just the product itself. A product design is not capable of functioning as a trademark without a showing of secondary meaning, i.e., that the public associates the trade dress with a source or producer, rather than just the product itself. See, e.g., Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000). For this reason, it often takes time to acquire trade dress protection for a product design. Product packaging, on the other hand, may not require time to show it has acquired source-identifying function. See, e.g., Samara Bros. at 215 (“product packaging…normally is taken by the consumer to indicate origin.”).

During the time it takes to develop trade dress protection for a product design, the design can be protected by a design patent (so long as it is novel, non-obvious, and ornamental). Once the design has acquired source-identifying function, the design can also be protected by trade dress. In this manner, a design can be protected by both a design patent and trade dress. When the design patent expires fifteen years after its grant date, the design will still be protected by trade dress so long as the public continues to associate the design with its source or producer.

As an example, Coca-Cola has obtained numerous design patents on its unique bottle shape, including U.S. Design Patent Nos. D63,657 and D105,529, shown below. The Coca-Cola bottle is also protected by trade dress, as the public readily recognizes the bottle as Coca-Cola’s product. Coca-Cola registered the trade dress with the U.S. Patent and Trademark Office in 1977 under U.S. Registration No. 1057884, which is depicted in the far right image below. While the design patents provided Coca-Cola a fourteen-year monopoly (design patent term changed from fourteen years to fifteen years in 2015) on the bottle designs, Coca-Cola was able to effectively extend this monopoly through trade dress protection, which still exists today.

U.S. Pat. No. D63,657

U.S. Pat. No. D105,529

U.S. Reg. No. 1057884

In conclusion, design patents and trade dress provide valuable protection, and you should consider these forms of intellectual property protection when designing a product.

Disclaimer: This article is intended for scholarship and educational purposes only. The images used in this article were taken from publicly available documents on the U.S. Patent and Trademark website (tsdr.uspto.gov and portal.uspto.gov/pair/PublicPair) and Google Patents (patents.google.com). The image used from Crocs, Inc., is from a publicly available case accessed through Westlaw (next.westlaw.com). We believe incorporating images showing examples of design patents and trade dress is necessary to adequately convey the information to educate the general public. We believe our use of these images constitutes fair use. If you are the copyright owner of any of these images, please feel free to contact us at info@milgromlaw.com

ABOUT THE AUTHOR

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Laura counsels clients on legal issues related to intellectual property, including patents, trademarks, and copyrights. Laura helps clients build strong intellectual property portfolios, taking into account various types of protection options, such as utility and design patents, including both U.S. and foreign, trademark and trade dress registrations, and copyright registrations.

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