By: LawFuel
May 31, 2018
Los Angeles, CA (May 29, 2018) – Venable LLP is pleased to announce that Sarah S. Brooks has joined the firm’s Intellectual Property Litigation Practice as a partner in the Los Angeles office. Ms. Brooks’ practice focuses on litigating intellectual property disputes, including patent, trademark, trade secrets, antitrust, and copyright litigation.
Ms. Brooks counsels a broad range of companies, including consumer product, wireless technology, mechanical device, computer science, biotech, medical device, and toy and sporting companies. She achieves positive outcomes for clients in court with dispositive motions, motions in limine, and Markman hearings. She has also successfully tried cases in federal court, including obtaining a willful infringement jury verdict for a client in the U.S. District Court for the Central District of California.
“We are excited to welcome Sarah to the LA office. Her expertise within the biotech, technology, and medical device industries will be a great asset to our existing and growing client base,” said Mitchell Evall, partner-in-charge of the firm’s Los Angeles office.
Justin E. Pierce, chair of Venable’s Intellectual Property Division, said, “Sarah’s arrival will help to bolster our growing, nationally ranked Intellectual Property Litigation Practice and enhance the litigation solutions we provide our clients across a wide variety of technologies, especially in patent, trademark, and trade secret disputes.”
Commenting on her move to Venable, Ms. Brooks said, “I know two IP attorneys in Venable’s New York office very well and they have always spoken so highly of the firms’ collaboration and entrepreneurial spirit, which attracted me. I felt the move would mesh well with my own practice and that the current team would add great value to my clients.”
Read More >> http://www.lawfuel.com/blog/venables-west-coast-intellectual-property-litigation-practice-continues-to-grow-with-the-addition-of-sarah-brooks/
Thursday, May 31, 2018
Wednesday, May 30, 2018
What Does A Patent Lawsuit Cost ?
By: Michael J Foycik Jr.
August 23, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Patent infringement is a highly charged subject, and I have seen how it affects the patent owner. A lawsuit would seem like a wonderful solution. But, what should it cost?
Though I have heard many numbers, it is all just hearsay. Even so, it may be helpful to say it.
A contingency attorney might take the case, but may require an ownership interest in your company of 50 percent or higher. Is it worth it? Maybe so, if that's the only way to go forward. And why the high ownership interest? Easy – to have control to ensure payment in event of a victory.
A very small law firm or individual attorney will often charge less than a large firm. I have heard stories wherein a plaintiff might pay somewhere between 20k and 60k, depending on if/when it settles. Higher numbers are possible when it goes to trial and there are many issues. Is this a good value? That depends – if you can only afford that much, then there's simply no choice.
A big company practically must use a large law firm for its reputation and size. There is great variation, but one should expect to pay for that large size and reputation. I have heard a number of experienced litigators say to simply add a zero to the numbers used for a small law firm. Is it worth it? That depends, but I have seen examples where it was well worth having a large firm do the litigation.
Where's that money go, anyway? Well, a portion goes to filing or answering the Complaint; attending to discovery and motions related to discovery; depositions and court reporter costs; various court hearings where attendance is required; and finally for the trial itself (if it goes that far).
Read More >> http://internationalpatentservice.com/What-Does-A-Patent-Lawsuit-Cost.html
August 23, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Patent infringement is a highly charged subject, and I have seen how it affects the patent owner. A lawsuit would seem like a wonderful solution. But, what should it cost?
Though I have heard many numbers, it is all just hearsay. Even so, it may be helpful to say it.
A contingency attorney might take the case, but may require an ownership interest in your company of 50 percent or higher. Is it worth it? Maybe so, if that's the only way to go forward. And why the high ownership interest? Easy – to have control to ensure payment in event of a victory.
A very small law firm or individual attorney will often charge less than a large firm. I have heard stories wherein a plaintiff might pay somewhere between 20k and 60k, depending on if/when it settles. Higher numbers are possible when it goes to trial and there are many issues. Is this a good value? That depends – if you can only afford that much, then there's simply no choice.
A big company practically must use a large law firm for its reputation and size. There is great variation, but one should expect to pay for that large size and reputation. I have heard a number of experienced litigators say to simply add a zero to the numbers used for a small law firm. Is it worth it? That depends, but I have seen examples where it was well worth having a large firm do the litigation.
Where's that money go, anyway? Well, a portion goes to filing or answering the Complaint; attending to discovery and motions related to discovery; depositions and court reporter costs; various court hearings where attendance is required; and finally for the trial itself (if it goes that far).
Read More >> http://internationalpatentservice.com/What-Does-A-Patent-Lawsuit-Cost.html
Tuesday, May 29, 2018
Lets Respect the Intellectual property Rights
By: MelangeMag
Every year on April 26, World Intellectual Property Day has been observed around the world to learn about the role that intellectual property rights (patents, trademarks, industrial designs, copyright) play in encouraging innovation and creativity.
2018’s World Intellectual Property Day campaign celebrated the brilliance, ingenuity, curiosity and courage of the women who are driving change in our world and shaping our common future.
Intellectual property is a system that protects human creativity and makes sure it flourishes. It provides a legal framework to stop people from stealing the work and ideas of those who create and innovate. It covers a broad area of human activity, from literature, music, arts and entertainment, to technological innovations and patents that help to shape our world. Intellectual property also relates to symbols, names, images and commercial designs. Anyone who creates anything original is protected by intellectual property laws. The aim of World Intellectual Property Day is to get people to respect the work of others and make sure the originators do not lose money or experience a loss of reputation because of illegal copying. Intellectual Property Rights are set of rights associated with creations of the human mind. An output of the human mind may be attributed with intellectual property rights. These are like any other property, and the law allows the owner to use the same to economically profit from the intellectual work. Broadly IPR covers laws related to copyrights, patents and trademarks. While laws for these are different in different countries, they follow the international legal instruments.
The importance of protecting Intellectual Property was first recognized in the Paris Convention for the Protection of Industrial Property in 1883 and the Berne Convention for the Protection of Literary and Artistic Works in 1886. World Intellectual Property Organization (WIPO) was established under Article 1 the WIPO Convention of 1967 to protect the IP rights. The Intellectual Property Rights are also outlined in Article 27 of the Universal Declaration of Human Rights, which provides for the right to benefit from the protection of moral and material interests resulting from authorship of scientific, literary or artistic productions. The Convention on Biological Diversity in 1992 represents a commitment by nations to conserve biological diversity, to use biological resources sustainably, and to share the benefits arising from the use of genetic resources as Intellectual Property fairly and equitably with the local communities.
Read More >> http://www.melangemagazine.biz/lets-respect-the-intellectual-property-rights/
Every year on April 26, World Intellectual Property Day has been observed around the world to learn about the role that intellectual property rights (patents, trademarks, industrial designs, copyright) play in encouraging innovation and creativity.
2018’s World Intellectual Property Day campaign celebrated the brilliance, ingenuity, curiosity and courage of the women who are driving change in our world and shaping our common future.
Intellectual property is a system that protects human creativity and makes sure it flourishes. It provides a legal framework to stop people from stealing the work and ideas of those who create and innovate. It covers a broad area of human activity, from literature, music, arts and entertainment, to technological innovations and patents that help to shape our world. Intellectual property also relates to symbols, names, images and commercial designs. Anyone who creates anything original is protected by intellectual property laws. The aim of World Intellectual Property Day is to get people to respect the work of others and make sure the originators do not lose money or experience a loss of reputation because of illegal copying. Intellectual Property Rights are set of rights associated with creations of the human mind. An output of the human mind may be attributed with intellectual property rights. These are like any other property, and the law allows the owner to use the same to economically profit from the intellectual work. Broadly IPR covers laws related to copyrights, patents and trademarks. While laws for these are different in different countries, they follow the international legal instruments.
The importance of protecting Intellectual Property was first recognized in the Paris Convention for the Protection of Industrial Property in 1883 and the Berne Convention for the Protection of Literary and Artistic Works in 1886. World Intellectual Property Organization (WIPO) was established under Article 1 the WIPO Convention of 1967 to protect the IP rights. The Intellectual Property Rights are also outlined in Article 27 of the Universal Declaration of Human Rights, which provides for the right to benefit from the protection of moral and material interests resulting from authorship of scientific, literary or artistic productions. The Convention on Biological Diversity in 1992 represents a commitment by nations to conserve biological diversity, to use biological resources sustainably, and to share the benefits arising from the use of genetic resources as Intellectual Property fairly and equitably with the local communities.
Read More >> http://www.melangemagazine.biz/lets-respect-the-intellectual-property-rights/
Patent Application – What to Expect After You File One
By: Michael J Foycik Jr.
June 21, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
So you're an inventor with a patent application! What happens now that it has been filed with the US Patent Office? Here's what to expect.
First, you'll get your Official Filing Receipt – it is actually pretty important. Sure, you'll get an electronic filing receipt if you filed it online. But, that's not what matters. The Official Filing Receipt is the easiest and fastest way to get your foreign filing license. And you'll want that, if you ever intend to file in other countries and need your US priority date.
If the US Patent Office has any objections to the drawings, specification, or abstract, they'll (usually) notify you at the same time they send the Official Filing Receipt. Formal drawings are the main type of objection – you'll need those.
After a period of time, typically anywhere from six months to two years, you'll get your first Office Action. That's typically where the patent examiner reads the case, searches for the claimed invention, and applies the prior art to the claims. This is also where the examiner can make objects, for example objections to claim language, to errors in the specification or drawings, or other things.
The first Office Action could, of course, be an allowance. Those are not that common. If your application is allowed, there is an Issue Fee due that varies depending on your inventorship status (micro entity, small entity, or non-small entity). There is also a publication fee due, too (if the application was published).
Assuming you didn't get an allowance, then you'll have the option to respond to the First Office Action. Typically, your Response would meet any objections by amending the offending parts. And, your Response typically would provide remarks in support of patentability, such as explaining how the invention as claimed differs from the applied references. Your Response likely will also include an amendment to the claims to recite a feature not found in the applied reference, and this is one way to overcome an applied reference.
Read More >> http://internationalpatentservice.com/What-to-Expect-After-You-File-One.html
June 21, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
So you're an inventor with a patent application! What happens now that it has been filed with the US Patent Office? Here's what to expect.
First, you'll get your Official Filing Receipt – it is actually pretty important. Sure, you'll get an electronic filing receipt if you filed it online. But, that's not what matters. The Official Filing Receipt is the easiest and fastest way to get your foreign filing license. And you'll want that, if you ever intend to file in other countries and need your US priority date.
If the US Patent Office has any objections to the drawings, specification, or abstract, they'll (usually) notify you at the same time they send the Official Filing Receipt. Formal drawings are the main type of objection – you'll need those.
After a period of time, typically anywhere from six months to two years, you'll get your first Office Action. That's typically where the patent examiner reads the case, searches for the claimed invention, and applies the prior art to the claims. This is also where the examiner can make objects, for example objections to claim language, to errors in the specification or drawings, or other things.
The first Office Action could, of course, be an allowance. Those are not that common. If your application is allowed, there is an Issue Fee due that varies depending on your inventorship status (micro entity, small entity, or non-small entity). There is also a publication fee due, too (if the application was published).
Assuming you didn't get an allowance, then you'll have the option to respond to the First Office Action. Typically, your Response would meet any objections by amending the offending parts. And, your Response typically would provide remarks in support of patentability, such as explaining how the invention as claimed differs from the applied references. Your Response likely will also include an amendment to the claims to recite a feature not found in the applied reference, and this is one way to overcome an applied reference.
Read More >> http://internationalpatentservice.com/What-to-Expect-After-You-File-One.html
Saturday, May 26, 2018
10 intellectual property tips for startup companies - Pittsburgh Business Times
By John Thomas and Jeremy Harrison
Obtaining and securing intellectual property (IP) rights is often not a high priority with startup companies. Rather, startups commonly focus most efforts on obtaining financing, building a brand, and effective marketing strategies.
Securing company IP, however, such as patents, trade secrets, trademarks, and copyrights, is vital since doing so creates a legal barrier to competition. Company IP can be a revenue generator through strategic licensing or IP transfer, and is often crucial in valuation for venture funding purposes.
The following are some tips and strategies for startups to manage company IP.
Patents
Pursuing and maintaining patent protection requires a considerable capital investment. The cost to obtain a U.S. utility patent is roughly $20,000, and sizeable maintenance fees are periodically required to keep an issued patent enforceable. Thus, pursuing a patent should be approached proactively and with caution.
In addition to U.S. utility patents, design patents should also be considered. Design patents protect the ornamental appearance of an article of manufacture. The subject matter of a design patent application often relates to:
>> The configuration or shape of an article.
>> The surface ornamentation applied to an article.
>> The combination of configuration and surface ornamentation.
Any person who has invented a new, original and ornamental design for an article of manufacture is entitled to apply for a design patent. A design patent differs from a utility patent in that the design patent only protects the appearance of the article and not structural or utilitarian features. Design patents in the U.S. do not have maintenance fees and typically cost considerably less that utility patents.
1. Undertake a patent prior to art search
For key technologies, it is a good idea to conduct a prior art search before investing in the patenting process. A properly conducted search will identify patents, patent publications, and non-patent literature closely associated with the technology. The search can also identify potential competitors and infringement risks. Decision makers can then intelligently focus continued related research and development and draft patent application claims that avoid identified prior art.
2. Do not prematurely disclose
Unless a patent application is on file, foreign patent rights are immediately lost once an invention is publicly disclosed. In the U.S., a one year “grace period” following a public disclosure is generally available, but a patent application must be filed within 12 months to retain patent rights. If an invention must be disclosed, make sure to have proper confidentiality and/or non-disclosure agreements in place, which transform the disclosure into a non-public disclosure.
Read More >> https://www.blogger.com/blogger.g?blogID=8693112333602644425#editor/target=post;postID=3903870027548856709
Obtaining and securing intellectual property (IP) rights is often not a high priority with startup companies. Rather, startups commonly focus most efforts on obtaining financing, building a brand, and effective marketing strategies.
Securing company IP, however, such as patents, trade secrets, trademarks, and copyrights, is vital since doing so creates a legal barrier to competition. Company IP can be a revenue generator through strategic licensing or IP transfer, and is often crucial in valuation for venture funding purposes.
The following are some tips and strategies for startups to manage company IP.
Patents
Pursuing and maintaining patent protection requires a considerable capital investment. The cost to obtain a U.S. utility patent is roughly $20,000, and sizeable maintenance fees are periodically required to keep an issued patent enforceable. Thus, pursuing a patent should be approached proactively and with caution.
In addition to U.S. utility patents, design patents should also be considered. Design patents protect the ornamental appearance of an article of manufacture. The subject matter of a design patent application often relates to:
>> The configuration or shape of an article.
>> The surface ornamentation applied to an article.
>> The combination of configuration and surface ornamentation.
Any person who has invented a new, original and ornamental design for an article of manufacture is entitled to apply for a design patent. A design patent differs from a utility patent in that the design patent only protects the appearance of the article and not structural or utilitarian features. Design patents in the U.S. do not have maintenance fees and typically cost considerably less that utility patents.
1. Undertake a patent prior to art search
For key technologies, it is a good idea to conduct a prior art search before investing in the patenting process. A properly conducted search will identify patents, patent publications, and non-patent literature closely associated with the technology. The search can also identify potential competitors and infringement risks. Decision makers can then intelligently focus continued related research and development and draft patent application claims that avoid identified prior art.
2. Do not prematurely disclose
Unless a patent application is on file, foreign patent rights are immediately lost once an invention is publicly disclosed. In the U.S., a one year “grace period” following a public disclosure is generally available, but a patent application must be filed within 12 months to retain patent rights. If an invention must be disclosed, make sure to have proper confidentiality and/or non-disclosure agreements in place, which transform the disclosure into a non-public disclosure.
Read More >> https://www.blogger.com/blogger.g?blogID=8693112333602644425#editor/target=post;postID=3903870027548856709
Thursday, May 24, 2018
Why Worry About Infringement – Things To Do First
By: Michael J Foycik Jr.
June 3, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
You've seen the topic of patent infringement in the news. Should you be worried? If you are, here's some things to do that should minimize your risk.
If your product needs a component that is patented, you have two options. One is to buy that component from the patent owner or from an official licensee. Why? It carries an implied license. The other option is to contact the patent owner and negotiate a license, in which case fees may be small.
What if there's nothing out there like your product, how will you know if you should worry? You can do a right-to-use patent search. This is different from a normal patentability search, because you're not worried about patentability – you're worried about infringement. In a right-to-use patent search, you will search for patents that are expired, meaning more than 17 years old. If you can find the component or feature that is of interest, then you can rely on it and have a right-to-use. For a quick and easy patent search, try going to any patent site that allows searching, such as the official uspto site or Google® patents.
Read More >> http://internationalpatentservice.com/Why-Worry-About-Infringement.html
June 3, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
You've seen the topic of patent infringement in the news. Should you be worried? If you are, here's some things to do that should minimize your risk.
If your product needs a component that is patented, you have two options. One is to buy that component from the patent owner or from an official licensee. Why? It carries an implied license. The other option is to contact the patent owner and negotiate a license, in which case fees may be small.
What if there's nothing out there like your product, how will you know if you should worry? You can do a right-to-use patent search. This is different from a normal patentability search, because you're not worried about patentability – you're worried about infringement. In a right-to-use patent search, you will search for patents that are expired, meaning more than 17 years old. If you can find the component or feature that is of interest, then you can rely on it and have a right-to-use. For a quick and easy patent search, try going to any patent site that allows searching, such as the official uspto site or Google® patents.
Read More >> http://internationalpatentservice.com/Why-Worry-About-Infringement.html
5 reasons why investors love intellectual property
By: Sponsor
Intellectual property represents an important financial and legal asset for companies, including startups. It is often estimated that intellectual property counts for more than 80% of company’s value. For investors, companies with solid intellectual property portfolio are attractive investment targets. Here are 5 simple reasons why that is.
1. Intellectual property has no limit on its value
Unlike most asset classes, the value of intellectual property can increase indefinitely. If a company owns a factory, its value is fixed and, if anything, likely to depreciate in the future. A factory requires repairs, maintenance and renewal of machines, etc. Intellectual property protects whatever value there is in the company (brands, innovations, design), and also contributes to its increase.
The value of trademarks (which protects the brand) is largely determined on how well the company does. For example, according to Forbes, the brand value of Apple is nearly 150 Billion euro and has been increasing significantly in the last 10 years. There is no external limit on how high that can get regardless of the size of the company. Even better, according ISO standard 10668:2010, registered trademarks not only protect the existing value in the brand but also contribute to its increase as well.
Many aspects of brand’s value can also be protected and captured through design registrations. For example, for many consumers, product design is one of the most crucial and recognisable aspects. Making sure it is legally protected increases the value of the business.
Patents can have significant intrinsic value that is not even dependent on the performance and perception of the company or its product on the market. Good inventions that are protected by strong patents will be useful (and therefore valuable) at least to somebody, which brings us to the next point.
2. Intellectual property can be leveraged in many different ways
Rovio, the creator of Angry Birds makes over 20% of the company’s revenue with licensing and many smaller companies do the same. We represent many startup companies whose business model is essentially about licensing their brand, technology or both of them. Licensing is not only for big companies, it can be a very profitable business model for startups as well since there are very little costs involved. Patent licensing does not even require a famous brand behind it, only that the technology (invention) is good and well protected. Intellectual property portfolio can also be used as collateral for obtaining different types of financing.
When money is invested in creating and protecting intellectual property, there is a good chance that those investments can be recouped in many different ways. Intellectual property can also be sold like other property.
3. Intellectual property portfolio reduces operational risks
Apple had to pay $60 million for the iPad trademark in China because another entity had registered it first. Intellectual property works on “first to file” basis (whoever protects it first gets the rights). By protecting the brand name in important countries you can ensure that nobody else gets better rights to the name in those countries. Changing a brand name even in one country is a costly operation, not to mention losing the investments already made in promoting the brand. This kind of risk hanging over a company’s head makes it less attractive as an investment target. Although there are trademark trolls particularly in China, in most cases conflicts are a result of unfortunate coincidence. There are over 20 thousand trademarks registered every day, so the chance that somebody will think of a similar name is quite high. It is important to protect your intellectual property at least in the most important countries as early as possible.
Read More >> http://www.eu-startups.com/2018/01/5-reasons-why-investors-love-intellectual-property/
Intellectual property represents an important financial and legal asset for companies, including startups. It is often estimated that intellectual property counts for more than 80% of company’s value. For investors, companies with solid intellectual property portfolio are attractive investment targets. Here are 5 simple reasons why that is.
1. Intellectual property has no limit on its value
Unlike most asset classes, the value of intellectual property can increase indefinitely. If a company owns a factory, its value is fixed and, if anything, likely to depreciate in the future. A factory requires repairs, maintenance and renewal of machines, etc. Intellectual property protects whatever value there is in the company (brands, innovations, design), and also contributes to its increase.
The value of trademarks (which protects the brand) is largely determined on how well the company does. For example, according to Forbes, the brand value of Apple is nearly 150 Billion euro and has been increasing significantly in the last 10 years. There is no external limit on how high that can get regardless of the size of the company. Even better, according ISO standard 10668:2010, registered trademarks not only protect the existing value in the brand but also contribute to its increase as well.
Many aspects of brand’s value can also be protected and captured through design registrations. For example, for many consumers, product design is one of the most crucial and recognisable aspects. Making sure it is legally protected increases the value of the business.
Patents can have significant intrinsic value that is not even dependent on the performance and perception of the company or its product on the market. Good inventions that are protected by strong patents will be useful (and therefore valuable) at least to somebody, which brings us to the next point.
2. Intellectual property can be leveraged in many different ways
Rovio, the creator of Angry Birds makes over 20% of the company’s revenue with licensing and many smaller companies do the same. We represent many startup companies whose business model is essentially about licensing their brand, technology or both of them. Licensing is not only for big companies, it can be a very profitable business model for startups as well since there are very little costs involved. Patent licensing does not even require a famous brand behind it, only that the technology (invention) is good and well protected. Intellectual property portfolio can also be used as collateral for obtaining different types of financing.
When money is invested in creating and protecting intellectual property, there is a good chance that those investments can be recouped in many different ways. Intellectual property can also be sold like other property.
3. Intellectual property portfolio reduces operational risks
Apple had to pay $60 million for the iPad trademark in China because another entity had registered it first. Intellectual property works on “first to file” basis (whoever protects it first gets the rights). By protecting the brand name in important countries you can ensure that nobody else gets better rights to the name in those countries. Changing a brand name even in one country is a costly operation, not to mention losing the investments already made in promoting the brand. This kind of risk hanging over a company’s head makes it less attractive as an investment target. Although there are trademark trolls particularly in China, in most cases conflicts are a result of unfortunate coincidence. There are over 20 thousand trademarks registered every day, so the chance that somebody will think of a similar name is quite high. It is important to protect your intellectual property at least in the most important countries as early as possible.
Read More >> http://www.eu-startups.com/2018/01/5-reasons-why-investors-love-intellectual-property/
Wednesday, May 23, 2018
Costly Misconceptions About Trademarks
By: Michael J Foycik Jr.
June 8, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Getting a trademark is a great idea, but things may not be that simple. There are some misconceptions that can cost time, money, or even loss of rights.
One common misconception is that a registered trademark is necessary to have enforceable trademark rights. We are all familiar with registered trademarks – the kind with the ® registration symbol. But, trademark rights normally arise from actual use, even for unregistered trademarks. State courts can enforce such rights arising from actual use, even in the absence of a federally registered trademark. No registration, no problem – sometimes.
Getting a registered trademark requires filing a trademark application. Choices need to be made right at the start: actual use or intent-to-use; type of goods/services; logo or word mark. These choices can have profound consequences. Even the U.S. Trademark Office recommends having an experienced trademark attorney help with those choices – you'll see the warning for that in the online trademark application filing forms and elsewhere.
Actual use sounds better than intent-to-use. Maybe so - unless there is a conflict with another trademark filed on an intent-to-use basis. Then, surprisingly, the owner of the intent-to-use to application is permitted to introduce evidence of events that show an intent-to-use that has occurred before the application's filing date. The actual-use applicant does not have the same rights. Such evidence of intent-to-use can be scant: a mere mention at a business meeting, or an order for design of the mark, for example. This is peculiar to federal trademarks; state courts can apply their own standards and might well decide specific cases differently.
Choice of goods/services is important: more is better, right? Not so fast. Listing multiple catergories is all good and well, until you have to prove actual sales. Sure, a Statement of Use might work with the U.S. Trademark Office, but at a cost: forfeiture of rights if untrue. When it comes time to enforce your trademark rights against an infringer, it may become necessary to have proof of use in specific categories of goods. Listing a few categories of goods is fine, and once you get your trademark registered your future use in other categories will allow you to file further trademark applications for those additional uses.
Read More >> http://internationalpatentservice.com/Costly-Misconceptions-About-Trademarks.html
June 8, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Getting a trademark is a great idea, but things may not be that simple. There are some misconceptions that can cost time, money, or even loss of rights.
One common misconception is that a registered trademark is necessary to have enforceable trademark rights. We are all familiar with registered trademarks – the kind with the ® registration symbol. But, trademark rights normally arise from actual use, even for unregistered trademarks. State courts can enforce such rights arising from actual use, even in the absence of a federally registered trademark. No registration, no problem – sometimes.
Getting a registered trademark requires filing a trademark application. Choices need to be made right at the start: actual use or intent-to-use; type of goods/services; logo or word mark. These choices can have profound consequences. Even the U.S. Trademark Office recommends having an experienced trademark attorney help with those choices – you'll see the warning for that in the online trademark application filing forms and elsewhere.
Actual use sounds better than intent-to-use. Maybe so - unless there is a conflict with another trademark filed on an intent-to-use basis. Then, surprisingly, the owner of the intent-to-use to application is permitted to introduce evidence of events that show an intent-to-use that has occurred before the application's filing date. The actual-use applicant does not have the same rights. Such evidence of intent-to-use can be scant: a mere mention at a business meeting, or an order for design of the mark, for example. This is peculiar to federal trademarks; state courts can apply their own standards and might well decide specific cases differently.
Choice of goods/services is important: more is better, right? Not so fast. Listing multiple catergories is all good and well, until you have to prove actual sales. Sure, a Statement of Use might work with the U.S. Trademark Office, but at a cost: forfeiture of rights if untrue. When it comes time to enforce your trademark rights against an infringer, it may become necessary to have proof of use in specific categories of goods. Listing a few categories of goods is fine, and once you get your trademark registered your future use in other categories will allow you to file further trademark applications for those additional uses.
Read More >> http://internationalpatentservice.com/Costly-Misconceptions-About-Trademarks.html
Monday, May 21, 2018
Three Things You Should Look For In A Patent Attorney, With Handy How-To Guide
By: Michael J Foycik Jr.
June 3, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Getting a patent attorney or patent firm? Get the name of the individual attorney who will personally do the work on your case. You'll wish to know whether the patent attorney is registered; is qualified in the relevant technical arts; and has a successful track record. The following explains how.
Why do we care about this? Because once a patent application is filed, it will be examined by a patent examiner. Most applications receive an official action with some kind of rejection or objection. Many such rejections and objections can be overcome, some more easily than others. Not every patent application is allowed, and therefore the skill of the individual patent attorney comes into play. The patent attorney must be capable of making convincing legal and technical arguments in support of patentability. And, the patent attorney must be skilled at claim drafting: amending a claim skillfully may overcome a rejection or objection. Failure to skillfully respond can result in greater expense and may fail to result in obtaining an issued patent.
Is your attorney/firm experienced, with many good results? Since the attorney or law firm name is printed on the front of issued U.S. Patents, you can easily find out what type of patents they handle, and how many have issued. You can find out by using the patent search feature on the site www.google.com/advanced_patent_search; type in the name of the attorney in the top blank. It should find all issued patents with that name in it. You can do this more precisely at the official U.S. Patent Office site www.uspto.gov, by going to that site and in the upper right corner click the button “search for patents” where you'll get several databases to choose from. Select the first one, and a search box comes up allowing clicking on the “all fields” button and changing it to “attorney or agent.”
Read More >> http://internationalpatentservice.com/Three-Things-You-Should-Look-For-In-A-Patent-Attorney.html
June 3, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Getting a patent attorney or patent firm? Get the name of the individual attorney who will personally do the work on your case. You'll wish to know whether the patent attorney is registered; is qualified in the relevant technical arts; and has a successful track record. The following explains how.
Why do we care about this? Because once a patent application is filed, it will be examined by a patent examiner. Most applications receive an official action with some kind of rejection or objection. Many such rejections and objections can be overcome, some more easily than others. Not every patent application is allowed, and therefore the skill of the individual patent attorney comes into play. The patent attorney must be capable of making convincing legal and technical arguments in support of patentability. And, the patent attorney must be skilled at claim drafting: amending a claim skillfully may overcome a rejection or objection. Failure to skillfully respond can result in greater expense and may fail to result in obtaining an issued patent.
Is your attorney/firm experienced, with many good results? Since the attorney or law firm name is printed on the front of issued U.S. Patents, you can easily find out what type of patents they handle, and how many have issued. You can find out by using the patent search feature on the site www.google.com/advanced_patent_search; type in the name of the attorney in the top blank. It should find all issued patents with that name in it. You can do this more precisely at the official U.S. Patent Office site www.uspto.gov, by going to that site and in the upper right corner click the button “search for patents” where you'll get several databases to choose from. Select the first one, and a search box comes up allowing clicking on the “all fields” button and changing it to “attorney or agent.”
Read More >> http://internationalpatentservice.com/Three-Things-You-Should-Look-For-In-A-Patent-Attorney.html
Sunday, May 20, 2018
Einfolge Technologies makes patenting research easy for startups and corporates
By: Vishal Krishna
20th May 2018
Naveen Kanan is a researcher at Bangalore University studying electrolyte composition in modern-day lithium ion panels and figuring out how to make batteries more efficient. He wished to know if he could patent his research but was confused as to whether he had to approach a lawyer or an industry expert. He was desperately in search of a platform that has all the data of global patent research, and which could help him discover whether his research could be patented or not. This is where a startup like Einfolge Technologies comes in handy. Founded by Ruhan Rajput and Binod Singh in 2014, the firm runs an active platform that allows researchers to use patent analytics and market research fields to help them discover their research patent worthiness.
“We work with various organisations such as startups, pharma companies, SMEs, scientists, the agricultural sector and PSUs through customised solutions in patent and intellectual property rights (IPR). Starting from the initial research to the filing of the patent is done by an expert team that understands the hurdles faced by the startups in the initial stage and accordingly tailors solutions to meet their requirements,” says Binod Singh, Co-founder of Einfolge Technologies.
If you are an astute technology person, you would know the importance of filing a patent and getting it granted. But any technocrat can tell you that filing a patent can be cumbersome, time consuming and requires patience, which means you have to spend money for the best IP lawyers. If you are a new startup or a researcher then chances are you may not have too much funds. So what if a platform can do this for you and take all the pressure off filing?
Einfolge’s platform helps clients to streamline operations, reduce cost and enhance business efficiencies through its expert solutions. Say, a startup wants to patent a communication protocol. Einfolge crunches data and is able to let the startup know whether the protocol has already been patented or has similar technologies that require some technical answers. That’s when Ruhan and Binod also offer personalised and customised services in the form of consulting with strict adherence to deadlines.
Read More >> https://yourstory.com/2018/05/einfolge-technologies-makes-patenting-research-easy-startups-corporates/
20th May 2018
Naveen Kanan is a researcher at Bangalore University studying electrolyte composition in modern-day lithium ion panels and figuring out how to make batteries more efficient. He wished to know if he could patent his research but was confused as to whether he had to approach a lawyer or an industry expert. He was desperately in search of a platform that has all the data of global patent research, and which could help him discover whether his research could be patented or not. This is where a startup like Einfolge Technologies comes in handy. Founded by Ruhan Rajput and Binod Singh in 2014, the firm runs an active platform that allows researchers to use patent analytics and market research fields to help them discover their research patent worthiness.
“We work with various organisations such as startups, pharma companies, SMEs, scientists, the agricultural sector and PSUs through customised solutions in patent and intellectual property rights (IPR). Starting from the initial research to the filing of the patent is done by an expert team that understands the hurdles faced by the startups in the initial stage and accordingly tailors solutions to meet their requirements,” says Binod Singh, Co-founder of Einfolge Technologies.
If you are an astute technology person, you would know the importance of filing a patent and getting it granted. But any technocrat can tell you that filing a patent can be cumbersome, time consuming and requires patience, which means you have to spend money for the best IP lawyers. If you are a new startup or a researcher then chances are you may not have too much funds. So what if a platform can do this for you and take all the pressure off filing?
Einfolge’s platform helps clients to streamline operations, reduce cost and enhance business efficiencies through its expert solutions. Say, a startup wants to patent a communication protocol. Einfolge crunches data and is able to let the startup know whether the protocol has already been patented or has similar technologies that require some technical answers. That’s when Ruhan and Binod also offer personalised and customised services in the form of consulting with strict adherence to deadlines.
Read More >> https://yourstory.com/2018/05/einfolge-technologies-makes-patenting-research-easy-startups-corporates/
Thursday, May 17, 2018
Get a Patent, Sue Competitors – Can it Really be that Easy?
By: Michael J Foycik Jr.
May 27, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
True, a patent confers a sort of monopoly. Also true, one of the intentions of patent law is to reward an inventor with a competitive advantage. But, exactly what does that mean, and is it that easy?
Patent rights are defined by their claims. A competitor infringes a patent if their competing product has each and every recited element of at least one claim of the patent. That competing product will still infringe if it has more elements, but not if it has fewer than recited in that claim. Sometimes, an element in a patent claim can be stretched a bit by a court of law, to cover equivalent structures. So far, so good.
But, there are defenses to allegations of patent infringement. For example, the competitor might be able to show their product is the same as that shown by an expired patent. So, expired patents can provide protection to your competitor, since once a patent expires it becomes part of the public domain. Other defenses may also arise from a competitor's own prior patent. Or, the competitor may be able to invalidate your patent, for example based on other prior art or issues of fraud. Just owning a patent might not be enough in these cases.
Let's say your competitor does infringe, has no valid defenses, and cannot invalidate your patent. Great, right? Not so fast – patent litigation costs real money, sometimes big money, so if you sue it has to be worth it. Small time infringement would likely result in very small damages, and your litigation costs could easily exceed the damages you recover. It may pay to wait until damages have mounted, or it may be necessary to simply overlook small or token infringements.
Read More >> http://internationalpatentservice.com/Get-a-Patent-Sue-Competitors.html
May 27, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
True, a patent confers a sort of monopoly. Also true, one of the intentions of patent law is to reward an inventor with a competitive advantage. But, exactly what does that mean, and is it that easy?
Patent rights are defined by their claims. A competitor infringes a patent if their competing product has each and every recited element of at least one claim of the patent. That competing product will still infringe if it has more elements, but not if it has fewer than recited in that claim. Sometimes, an element in a patent claim can be stretched a bit by a court of law, to cover equivalent structures. So far, so good.
But, there are defenses to allegations of patent infringement. For example, the competitor might be able to show their product is the same as that shown by an expired patent. So, expired patents can provide protection to your competitor, since once a patent expires it becomes part of the public domain. Other defenses may also arise from a competitor's own prior patent. Or, the competitor may be able to invalidate your patent, for example based on other prior art or issues of fraud. Just owning a patent might not be enough in these cases.
Let's say your competitor does infringe, has no valid defenses, and cannot invalidate your patent. Great, right? Not so fast – patent litigation costs real money, sometimes big money, so if you sue it has to be worth it. Small time infringement would likely result in very small damages, and your litigation costs could easily exceed the damages you recover. It may pay to wait until damages have mounted, or it may be necessary to simply overlook small or token infringements.
Read More >> http://internationalpatentservice.com/Get-a-Patent-Sue-Competitors.html
Wednesday, May 16, 2018
Growth of Start Ups under IPR
By: Pratistha Sinha
While developing a new idea as a product, pioneers naturally put a considerable measure of time into the innovative work of the product. They concentrate on building a business model, getting an increasing number of investors to put resources into the business believing that the product will pick up an early footing in the market. What they overlook is to have a sound Intellectual Property Protection set up before they introduce their product in the market. In spite of the fact that individuals are currently winding up progressively mindful about their IP rights, it is constantly fitting to have a sound IPR administration set up before propelling items into the market.
As ‘Make in India’ approach is changing this work culture in India, it has also been pushing start up culture in the India to another level. For this purpose, the Government of India initiated the Scheme for Facilitating Start-Ups Intellectual Property Protection (SIPP) in January 2016, with the motive to contact new businesses, ensure and advance their Intellectual Property Rights (IPR) and promote IPR awareness among the start-ups. Thereby, making IPR as one of the most basic and important aspect for the start-ups, which is also being recognized by the Government. Even the IPR Policy have illustrated in its objective to encourage the utilization of the IPRs and to inculcate a devise mechanism in order to make IPR regime beneficial to all the investors, MSMEs, start-ups and grass root innovators.
It is very essential for the new age entrepreneurs’ to understand the IP cycle i.e. the process to create, manage and protect their IP, which can be one of the wealthy drivers in future. Every start up has a brand name, logos, designs as well as product or inventions that must be protected through IP rights. As per IP lifecycle, prior to bringing any product in the market, the start-ups must ensure that is not infringing any third party’s IPR that can lead to any litigation thwarting its business. In addition, the entrepreneurs should be proactive in creating and securing their intellectual property for increasing valuation, attaining competitive advantage, goodwill, and utilizing the resources for generating revenue streams through licensing and cross-licensing.
According to Scheme for Facilitating Start-Ups Intellectual Property Protection (SIPP), a start-up has been defined as an entity, incorporated or registered in India not prior to five years, with an annual turnover not more than INR 25 Crores in any preceding financial year, working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or IP. The start up must also be certified by the Start up certification Board as having an innovative business.
There has been many amendments in IPR Laws in order to support these start ups and to give more incentives to the future pioneers to come up with their ideas as well as build their start ups.
Read More >> https://ipandlegalfilings.com/growth-of-start-ups-under-ipr/
While developing a new idea as a product, pioneers naturally put a considerable measure of time into the innovative work of the product. They concentrate on building a business model, getting an increasing number of investors to put resources into the business believing that the product will pick up an early footing in the market. What they overlook is to have a sound Intellectual Property Protection set up before they introduce their product in the market. In spite of the fact that individuals are currently winding up progressively mindful about their IP rights, it is constantly fitting to have a sound IPR administration set up before propelling items into the market.
As ‘Make in India’ approach is changing this work culture in India, it has also been pushing start up culture in the India to another level. For this purpose, the Government of India initiated the Scheme for Facilitating Start-Ups Intellectual Property Protection (SIPP) in January 2016, with the motive to contact new businesses, ensure and advance their Intellectual Property Rights (IPR) and promote IPR awareness among the start-ups. Thereby, making IPR as one of the most basic and important aspect for the start-ups, which is also being recognized by the Government. Even the IPR Policy have illustrated in its objective to encourage the utilization of the IPRs and to inculcate a devise mechanism in order to make IPR regime beneficial to all the investors, MSMEs, start-ups and grass root innovators.
It is very essential for the new age entrepreneurs’ to understand the IP cycle i.e. the process to create, manage and protect their IP, which can be one of the wealthy drivers in future. Every start up has a brand name, logos, designs as well as product or inventions that must be protected through IP rights. As per IP lifecycle, prior to bringing any product in the market, the start-ups must ensure that is not infringing any third party’s IPR that can lead to any litigation thwarting its business. In addition, the entrepreneurs should be proactive in creating and securing their intellectual property for increasing valuation, attaining competitive advantage, goodwill, and utilizing the resources for generating revenue streams through licensing and cross-licensing.
According to Scheme for Facilitating Start-Ups Intellectual Property Protection (SIPP), a start-up has been defined as an entity, incorporated or registered in India not prior to five years, with an annual turnover not more than INR 25 Crores in any preceding financial year, working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or IP. The start up must also be certified by the Start up certification Board as having an innovative business.
There has been many amendments in IPR Laws in order to support these start ups and to give more incentives to the future pioneers to come up with their ideas as well as build their start ups.
Read More >> https://ipandlegalfilings.com/growth-of-start-ups-under-ipr/
Tuesday, May 15, 2018
What Happens After Filing a Utility Patent Application
By: Michael J Foycik Jr.
May 19, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
One of the important but little-discussed subjects for inventors is what happens after filing of a Utility Patent Application. Here's a brief guide.
Initially, the US Patent Office studies the application papers for formalities. These formalities include such things as the signed forms, whether the drawings are sufficiently formal, whether specification required information is provided, and so on. If any problems are found, a Notice is sent to the applicant, and a period for response may be set for those problems that can be corrected.
The next stage is the patent examination itself. This is where the patent examiner takes up the application for study. Usually the patent examiner is an expert in the subject matter of the application. The examiner will search the prior patent art, including patent publications, to locate the most relevant references to the invention as described in the claims. The result of this will be a first Office Action, which is usually a statement of objections and rejections, but can sometimes be a first action allowance.
The applicant can respond to the first Office Action, and is normally given a set period of time to do this. The response can include changes to the specification, drawings, and/or claims. Such changes are usually to overcome objections and/or rejections, and to further emphasize the novel features of the invention. Additionally, the applicant can provide remarks in support of patentability.
Of course, many other things might occur beyond those described above. Those are less common, and though important, are not discussed in detail herein for the sake of brevity. A short and incomplete listing is: restriction requirements, election requirements, statutory double patenting rejections, and/or non-statutory subject matter rejections.
Read More >> http://internationalpatentservice.com/What-Happens-After-Filing-a-Utility-Patent-Application.html
May 19, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
One of the important but little-discussed subjects for inventors is what happens after filing of a Utility Patent Application. Here's a brief guide.
Initially, the US Patent Office studies the application papers for formalities. These formalities include such things as the signed forms, whether the drawings are sufficiently formal, whether specification required information is provided, and so on. If any problems are found, a Notice is sent to the applicant, and a period for response may be set for those problems that can be corrected.
The next stage is the patent examination itself. This is where the patent examiner takes up the application for study. Usually the patent examiner is an expert in the subject matter of the application. The examiner will search the prior patent art, including patent publications, to locate the most relevant references to the invention as described in the claims. The result of this will be a first Office Action, which is usually a statement of objections and rejections, but can sometimes be a first action allowance.
The applicant can respond to the first Office Action, and is normally given a set period of time to do this. The response can include changes to the specification, drawings, and/or claims. Such changes are usually to overcome objections and/or rejections, and to further emphasize the novel features of the invention. Additionally, the applicant can provide remarks in support of patentability.
Of course, many other things might occur beyond those described above. Those are less common, and though important, are not discussed in detail herein for the sake of brevity. A short and incomplete listing is: restriction requirements, election requirements, statutory double patenting rejections, and/or non-statutory subject matter rejections.
Read More >> http://internationalpatentservice.com/What-Happens-After-Filing-a-Utility-Patent-Application.html
Monday, May 14, 2018
Texas Supreme Court Finds Attorney-Client Privilege Protects Patent Agent Communications
By: Peggy Keene
Patent Agent Communications May Qualify as Attorney-Client Privileged
Earlier this year, Texas made the news by becoming the first state court to find that communication between a patent agent and a client may qualify for attorney-client privilege protection. The Texas Supreme Court made this decision earlier this year on February 23rd after appeals had passed through the lower Texas courts rejecting that premise.
The case before the Texas high court began after an inventor, Andrew Silver, successfully filed for a patent that covered a tablet device (“Ziosk”) that could be used for ordering food and service in restaurants. Silver later sold the patent rights to a company called Tabletop Media LLC (“Tabletop”). The legal dispute and case arose from a later contract dispute regarding the amount of licensing fees that were to be paid for the agreement.
Before the court, Silver made the argument that communications between the patent agent and himself should not have to be disclosed because they were protected under attorney-client privilege. The first court to hear the case disagreed with Silver’s argument and ruled that Silver’s emails with his patent agent were not protected. As such, the lower court ordered Silver to produce the emails to Tabletop, rejecting the argument that the communications were confidential and protected by attorney-client privilege. After Silver appealed the holding, the Texas appellate court affirmed the ruling, saying it had no authority to create a new privilege for patent agents.
Attorney-Client Privilege Extends to Independent Patent Agents, Not Just Ones Working for an Attorney
In the final appeal, however, the Texas Supreme Court reversed the holding, finding that the emails could be covered by the attorney-client privilege. In its holding, the Texas Supreme Court noted that it did not disagree with the lower court’s holding that no authority could be used to create a new privilege for patent agents. Instead, the Texas Supreme Court stated the existing privilege already covered the communications. The court also declined to agree that communications with Silver’s patent agent were only privileged if that agent was acting under an attorney’s direction. The Texas Supreme Court instead opted to find that the Texas Legislature had intended for the privilege to apply to those who are authorized to practice law, not just those who hold a law license. The court did note, however, that only some of the communications would be protected by attorney-client privilege, and as such, other communications would have to be turned over to Tabletop.
Patent Agent Protection Found in “Authorized” versus “Licensed” to Practice Law Statutory Language
Specifically, the Texas Supreme Court noted that the text of the statute discusses those who are “authorized” to practice law. In its reading, the Court noted that the term “authorized” is broader than “licensed,” and as such, its protection may extend to patent agents, who practice some forms of law despite not being licensed attorneys. This decision brings Texas in line with some federal courts, specifically the U.S. Court of Appeals for the Federal Circuit, which ruled on the same issue in March 2016. Notably, however, the Federal Circuit ruling does not affect state cases, but the Patent Trademark Office does recognizes the patent agent’s privilege in its proceedings because it follows federal precedent.
Source >> http://www.klemchuk.com/texas-supreme-court-finds-attorney-client-privilege-protects-patent-agent-communications/
Patent Agent Communications May Qualify as Attorney-Client Privileged
Earlier this year, Texas made the news by becoming the first state court to find that communication between a patent agent and a client may qualify for attorney-client privilege protection. The Texas Supreme Court made this decision earlier this year on February 23rd after appeals had passed through the lower Texas courts rejecting that premise.
The case before the Texas high court began after an inventor, Andrew Silver, successfully filed for a patent that covered a tablet device (“Ziosk”) that could be used for ordering food and service in restaurants. Silver later sold the patent rights to a company called Tabletop Media LLC (“Tabletop”). The legal dispute and case arose from a later contract dispute regarding the amount of licensing fees that were to be paid for the agreement.
Before the court, Silver made the argument that communications between the patent agent and himself should not have to be disclosed because they were protected under attorney-client privilege. The first court to hear the case disagreed with Silver’s argument and ruled that Silver’s emails with his patent agent were not protected. As such, the lower court ordered Silver to produce the emails to Tabletop, rejecting the argument that the communications were confidential and protected by attorney-client privilege. After Silver appealed the holding, the Texas appellate court affirmed the ruling, saying it had no authority to create a new privilege for patent agents.
Attorney-Client Privilege Extends to Independent Patent Agents, Not Just Ones Working for an Attorney
In the final appeal, however, the Texas Supreme Court reversed the holding, finding that the emails could be covered by the attorney-client privilege. In its holding, the Texas Supreme Court noted that it did not disagree with the lower court’s holding that no authority could be used to create a new privilege for patent agents. Instead, the Texas Supreme Court stated the existing privilege already covered the communications. The court also declined to agree that communications with Silver’s patent agent were only privileged if that agent was acting under an attorney’s direction. The Texas Supreme Court instead opted to find that the Texas Legislature had intended for the privilege to apply to those who are authorized to practice law, not just those who hold a law license. The court did note, however, that only some of the communications would be protected by attorney-client privilege, and as such, other communications would have to be turned over to Tabletop.
Patent Agent Protection Found in “Authorized” versus “Licensed” to Practice Law Statutory Language
Specifically, the Texas Supreme Court noted that the text of the statute discusses those who are “authorized” to practice law. In its reading, the Court noted that the term “authorized” is broader than “licensed,” and as such, its protection may extend to patent agents, who practice some forms of law despite not being licensed attorneys. This decision brings Texas in line with some federal courts, specifically the U.S. Court of Appeals for the Federal Circuit, which ruled on the same issue in March 2016. Notably, however, the Federal Circuit ruling does not affect state cases, but the Patent Trademark Office does recognizes the patent agent’s privilege in its proceedings because it follows federal precedent.
Source >> http://www.klemchuk.com/texas-supreme-court-finds-attorney-client-privilege-protects-patent-agent-communications/
Sunday, May 13, 2018
Myths and Misconceptions About International Patent Applications
By: Michael J Foycik Jr.
May 9, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Wondering about filing an international patent application? There are some myths and misconceptions about international patent applications, including what that phrase even means. Let's talk about that.
Myth: an international patent application can be filed that, when granted, turns into a patent giving patent rights in all countries. Fact: there is no such thing. This is probably the biggest patent myth.
Misconception: a PCT application is like a US patent application, and can turn into an issued patent. Fact: a PCT application is more like a bookmark in time, holding the date for other, later applications called “national stage” applications. A short explanation about PCT applications is in the following paragraph.
Most would think “PCT application” (Patent Cooperation Treaty application) when talking about international patent applications. Yet it is not a traditional application in the usual sense of that word, and so is a little tricky to understand. A PCT application is like a US patent application in some ways: it grants “patent pending” status; it confers rights to its filing date as a priority date for filing other patent applications; and, it grants a period of time in which to file other patent applications. However, it is unlike a US patent application in that it does not directly mature into a patent, and the time period conferred is different.
Misconception: a foreign patent is equivalent to a US patent. Fact: the protection afforded by a granted patent differs widely among countries. For example, a US patent confers protection that is considered very broad, and legal rights are as strong as other property rights. In some countries, a granted patent may have little practical value, or may be costly to enforce, or may only cover what is specifically shown and not variations. It is important to know the legal rights conferred in a specific country, before filing a patent application there.
Read More >> http://internationalpatentservice.com/Myths-and-Misconceptions-About-International-Patent-Applications.html
May 9, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Wondering about filing an international patent application? There are some myths and misconceptions about international patent applications, including what that phrase even means. Let's talk about that.
Myth: an international patent application can be filed that, when granted, turns into a patent giving patent rights in all countries. Fact: there is no such thing. This is probably the biggest patent myth.
Misconception: a PCT application is like a US patent application, and can turn into an issued patent. Fact: a PCT application is more like a bookmark in time, holding the date for other, later applications called “national stage” applications. A short explanation about PCT applications is in the following paragraph.
Most would think “PCT application” (Patent Cooperation Treaty application) when talking about international patent applications. Yet it is not a traditional application in the usual sense of that word, and so is a little tricky to understand. A PCT application is like a US patent application in some ways: it grants “patent pending” status; it confers rights to its filing date as a priority date for filing other patent applications; and, it grants a period of time in which to file other patent applications. However, it is unlike a US patent application in that it does not directly mature into a patent, and the time period conferred is different.
Misconception: a foreign patent is equivalent to a US patent. Fact: the protection afforded by a granted patent differs widely among countries. For example, a US patent confers protection that is considered very broad, and legal rights are as strong as other property rights. In some countries, a granted patent may have little practical value, or may be costly to enforce, or may only cover what is specifically shown and not variations. It is important to know the legal rights conferred in a specific country, before filing a patent application there.
Read More >> http://internationalpatentservice.com/Myths-and-Misconceptions-About-International-Patent-Applications.html
Trademark Registration When Importing From China
By: Fredrik Gronkvist
Trademark registration is in most cases the only way Importers can protect their intellectual property. Without a registered trademark, your brand name and logo can be used by other businesses, both in China and in your own country.
Learn the following in this guide to trademark registration when importing from China:
>> How a trademark can protect your brand on Amazon.com
>> How a trademark can protect your products in China
>> Trademark registration fees and processing time
>> How to register trademarks online in the EU, US and globally (all by yourself)
>> Why you should not use an NDA as a substitute for a trademark registration
What is a trademark?
In the context of ecommerce, a trademark is a recognizable brand name or logo. Registering a trademark is not mandatory as an importer, but it’s one of the most cost effective ways to properly protect your IP.
If you’re importing general consumer goods or private label products, the trademark is also the only IP you have.
Notice that the trademark does not protect your product design or inventions. That requires a patent, that can only be obtained for a new and unique product.
In other words, you can’t patent a watch or t-shirt, but you can get the brand name and logo registered.
3 Reasons why Importers should register trademarks
Registering a trademark is, as I mentioned, the only way for most ecommerce businesses to protect their IP. But there are a few other benefits you should be aware of.
1. It protects your brand name in your target markets
This means that no other business can use that brand and logo. At least not in your country.
As such, you can prevent other importers, or foreign companies, from selling replicas of your product, in the country where your trademark is registered.
2. It’s not that expensive to register a trademark
Trademark registration is relatively cheap. If you do it yourself, you only need to pay the filing fees:
Read More >> https://www.chinaimportal.com/blog/trademark-registration-when-importing-from-china/
Trademark registration is in most cases the only way Importers can protect their intellectual property. Without a registered trademark, your brand name and logo can be used by other businesses, both in China and in your own country.
Learn the following in this guide to trademark registration when importing from China:
>> How a trademark can protect your brand on Amazon.com
>> How a trademark can protect your products in China
>> Trademark registration fees and processing time
>> How to register trademarks online in the EU, US and globally (all by yourself)
>> Why you should not use an NDA as a substitute for a trademark registration
What is a trademark?
In the context of ecommerce, a trademark is a recognizable brand name or logo. Registering a trademark is not mandatory as an importer, but it’s one of the most cost effective ways to properly protect your IP.
If you’re importing general consumer goods or private label products, the trademark is also the only IP you have.
Notice that the trademark does not protect your product design or inventions. That requires a patent, that can only be obtained for a new and unique product.
In other words, you can’t patent a watch or t-shirt, but you can get the brand name and logo registered.
3 Reasons why Importers should register trademarks
Registering a trademark is, as I mentioned, the only way for most ecommerce businesses to protect their IP. But there are a few other benefits you should be aware of.
1. It protects your brand name in your target markets
This means that no other business can use that brand and logo. At least not in your country.
As such, you can prevent other importers, or foreign companies, from selling replicas of your product, in the country where your trademark is registered.
2. It’s not that expensive to register a trademark
Trademark registration is relatively cheap. If you do it yourself, you only need to pay the filing fees:
Read More >> https://www.chinaimportal.com/blog/trademark-registration-when-importing-from-china/
Wednesday, May 9, 2018
WHY YOUR STARTUP COMPANY MIGHT NEED AN INTERNATIONAL PATENT APPLICATION; AN ATTORNEY'S VIEW
By: Michael J Foycik Jr.
May 05, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336
Your startup company has a valuable invention, and you're considering filing a US Patent Application. But, you're wondering whether or not to file an International Patent Application. The answer to that depends on various factors, as follows.
Worried about foreign competitors sending infringing products into US market? Your US patent application can stop them at the border if your file a complaint with the US Customs Service and meet the requirements. So, if your market is strictly the US market, then you might not need an international patent application. That might include a PCT application or an EU application.
Expecting a big success, or have investors expecting a big success? Then you might just need an international patent application. That's because you may be exporting goods into other countries, and would want patent protection in those countries.
When going after international patent protection, there are several ways to go. There is a PCT (Patent Cooperation Treaty) filing, which gives a kind of patent pending status in any designated foreign countries for roughly 30 to 32 months. This will require a national stage patent filing in the designated countries during that pendency.
Read More >> http://internationalpatentservice.com/Why-Your-Startup-Company-Might-Need.html
May 05, 2013
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336
Your startup company has a valuable invention, and you're considering filing a US Patent Application. But, you're wondering whether or not to file an International Patent Application. The answer to that depends on various factors, as follows.
Worried about foreign competitors sending infringing products into US market? Your US patent application can stop them at the border if your file a complaint with the US Customs Service and meet the requirements. So, if your market is strictly the US market, then you might not need an international patent application. That might include a PCT application or an EU application.
Expecting a big success, or have investors expecting a big success? Then you might just need an international patent application. That's because you may be exporting goods into other countries, and would want patent protection in those countries.
When going after international patent protection, there are several ways to go. There is a PCT (Patent Cooperation Treaty) filing, which gives a kind of patent pending status in any designated foreign countries for roughly 30 to 32 months. This will require a national stage patent filing in the designated countries during that pendency.
Read More >> http://internationalpatentservice.com/Why-Your-Startup-Company-Might-Need.html
Tuesday, May 8, 2018
A new patent shows how Samsung’s long-awaited Galaxy X foldable smartphone might work
By: Business Insider
There’s long been talk about a foldable smartphone from Samsung, but now there’s something tangible that brings a foldable smartphone closer to reality.
On May 2, Samsung was granted multiple patents for its foldable smartphone design and the way it will work.
Samsung’s latest patents show that the company is experimenting with a smartphone that can fold into thirds – not just a smartphone that can fold in half, as was originally rumoured.
Being granted the patents isn’t a guarantee that Samsung is making these devices. Many patented devices never see the light of day. Plus, there would surely be several difficulties for Samsung to overcome with a foldable smartphone.
But Samsung has clearly been thinking about and researching the concept, and there’s always the chance the design ends up in a real product.
Check out Samsung’s ideas for making foldable smartphones:
At first glance, Samsung’s foldable smartphone will supposedly look like any other smartphone.
(US Patent and Trademark Office)
It will fold right down the middle of the display.
(US Patent and Trademark Office)
You could either have the phone in a split-screen setting, with one app taking up half the display and something else on the other half…
Read More >> http://weirdfactsaboutlife.com/tech/a-new-patent-shows-how-samsungs-long-awaited-galaxy-x-foldable-smartphone-might-work/
There’s long been talk about a foldable smartphone from Samsung, but now there’s something tangible that brings a foldable smartphone closer to reality.
On May 2, Samsung was granted multiple patents for its foldable smartphone design and the way it will work.
Samsung’s latest patents show that the company is experimenting with a smartphone that can fold into thirds – not just a smartphone that can fold in half, as was originally rumoured.
Being granted the patents isn’t a guarantee that Samsung is making these devices. Many patented devices never see the light of day. Plus, there would surely be several difficulties for Samsung to overcome with a foldable smartphone.
But Samsung has clearly been thinking about and researching the concept, and there’s always the chance the design ends up in a real product.
Check out Samsung’s ideas for making foldable smartphones:
At first glance, Samsung’s foldable smartphone will supposedly look like any other smartphone.
(US Patent and Trademark Office)
It will fold right down the middle of the display.
(US Patent and Trademark Office)
You could either have the phone in a split-screen setting, with one app taking up half the display and something else on the other half…
Read More >> http://weirdfactsaboutlife.com/tech/a-new-patent-shows-how-samsungs-long-awaited-galaxy-x-foldable-smartphone-might-work/
Monday, May 7, 2018
How to Make Money from a Patent
By: Michael J Foycik Jr.
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Attorney Advice on: How to Make Money from a Patent
by Michael Foycik, registered US patent attorney
April 18, 2013
I am often asked how to make money from a patent, and that is an excellent question. There is the commonly known answer, and a lesser known but more important answer. The common answer is, a patent can be licensed or assigned. A license is similar to renting the patent, whereas an assignment is a sale of the patent. A license can be sold to more than one company, for example.
The less commonly known answer, though, is far more important to inventors and businesses. This answer concerns the patent application, which is not issued as a patent but instead is still pending. Thus, it is known to provide “patent pending” status. The question of how to make money from a patent then becomes one of how to make money from a patent pending. This too is done by license or assignment.
Read More >> http://internationalpatentservice.com/How-to-Make-Money-from-a-Patent.html
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
Attorney Advice on: How to Make Money from a Patent
by Michael Foycik, registered US patent attorney
April 18, 2013
I am often asked how to make money from a patent, and that is an excellent question. There is the commonly known answer, and a lesser known but more important answer. The common answer is, a patent can be licensed or assigned. A license is similar to renting the patent, whereas an assignment is a sale of the patent. A license can be sold to more than one company, for example.
The less commonly known answer, though, is far more important to inventors and businesses. This answer concerns the patent application, which is not issued as a patent but instead is still pending. Thus, it is known to provide “patent pending” status. The question of how to make money from a patent then becomes one of how to make money from a patent pending. This too is done by license or assignment.
Read More >> http://internationalpatentservice.com/How-to-Make-Money-from-a-Patent.html
Sunday, May 6, 2018
Flood of Trademark Applications From China Alarms U.S. Officials
By: Admin
Huge numbers of Chinese citizens are seeking trademarks in the U.S., flooding the U.S. Patent and Trademark Office with applications that officials say appear to be rife with false information.
The surge of filings from China has surprised the patent office. Officials say it could be fueled by cash subsidies that Chinese municipal governments are offering to citizens who register a trademark in a foreign country.
Trademark applications from China have grown more than 12-fold since 2013 and for fiscal 2017 totaled thousands more than the combined filings from Canada, Germany and the U.K. About one in every nine trademark applications reviewed by the U.S. agency is China-based, according to government data.
Patent and trademark officials say cash incentives could be a factor. As part of a national effort to ramp up intellectual-property ownership, China’s provincial governments are paying citizens hundreds of dollars in Chinese currency for each trademark registered in the U.S.
Many Chinese applicants list addresses in the southeastern city of Shenzhen, often referred to as the Silicon Valley of China. Shenzhen pays companies and individuals up to roughly $800 for a U.S. registered trademark, according to the city’s intellectual-property bureau.
The U.S. officials say many China filings show a pattern of suspicious claims about the goods in question and the qualifications of the attorneys handling them.
“There’s been a dramatic increase in Chinese filings. A lot of seem to be not legitimate,” the patent office’s Trademarks Commissioner Mary Boney Denison said at a Trademark Public Advisory Committee meeting last fall, according to a transcript.
Josh Gerben, a Washington, D.C., trademark lawyer, said fraudulent trademarks could cause costly delays for other filers if their names are too similar, a grounds for a refusal. “The significant number of fraudulent trademark filings being made from China is disrupting our trademark system,” he said.
Most of the Chinese filers are tiny merchants hawking online goods, such as pocketbooks, binoculars, phone chargers and knit hats, under an array of odd-sounding and sometimes vowel-less brand names.
To qualify for a federal trademark registration, a product or service must be “used in commerce,” among other requirements. But unless another company is challenging the trademark, little evidence is required to back up the “in use” claim. There have been instances when a screenshot of a listing on Amazon or another e-commerce site is all an applicant needed to demonstrate market activity.
The Patent and Trademark Office has found numerous instances of Chinese applicants asserting that a proposed trademark is used in commerce, while submitting multiple nearly-identical images of the same consumer product with a different word on the brand tag. FORLISEA, CINYIFAAN, ENJOYSWEETY and GOOKET are some of the two dozen Chinese brands shown on an identically designed pair of zebra-print pants, for example.
The trademark subsidies are part of China’s “planned approach to intellectual property,” said Mark Cohen, a China-focused intellectual-property expert at Berkeley Law School and former senior counsel at the patent office. As with patents, China has a “highly metric, numbers-oriented approach” to intellectual property, he said.
Having a trademark registered in the U.S. is crucial for sellers on Amazon, whose brand-registry program rewards officially trademarked products with more site visibility and a higher listing in search results.
A number of Chinese merchants appear to be represented by foreign attorneys who aren’t licensed to practice law in the U.S., violating application rules. In one recent application, a Shenzhen address was listed for an attorney representing a Hong Kong client who had photoshopped the word “Instamarket” over a Walmart storefront.
And more than a dozen Chinese applicants entered the name “Wendy” into the entry box for the attorney name on the trademark application.
Hundreds of Chinese applicants are represented by an Atlanta trademark attorney, Amber Saunders. She says she developed her client pool after accidentally emailing a marketing message to a China-based intellectual-property company, which then started steering Chinese merchants her way.
Some of the merchants had already submitted problematic paperwork that needed fixing. Ms. Saunders said she took on only clients whose commercial activity seemed legitimate. The ones submitted by a lawyer named “Wendy” were among the red flags, Ms. Saunders said. “I wanted to know if they were making stuff up.”
Source >> http://www.latestcommentary.com/flood-of-trademark-applications-from-china-alarms-u-s-officials/
Huge numbers of Chinese citizens are seeking trademarks in the U.S., flooding the U.S. Patent and Trademark Office with applications that officials say appear to be rife with false information.
The surge of filings from China has surprised the patent office. Officials say it could be fueled by cash subsidies that Chinese municipal governments are offering to citizens who register a trademark in a foreign country.
Trademark applications from China have grown more than 12-fold since 2013 and for fiscal 2017 totaled thousands more than the combined filings from Canada, Germany and the U.K. About one in every nine trademark applications reviewed by the U.S. agency is China-based, according to government data.
Patent and trademark officials say cash incentives could be a factor. As part of a national effort to ramp up intellectual-property ownership, China’s provincial governments are paying citizens hundreds of dollars in Chinese currency for each trademark registered in the U.S.
Many Chinese applicants list addresses in the southeastern city of Shenzhen, often referred to as the Silicon Valley of China. Shenzhen pays companies and individuals up to roughly $800 for a U.S. registered trademark, according to the city’s intellectual-property bureau.
The U.S. officials say many China filings show a pattern of suspicious claims about the goods in question and the qualifications of the attorneys handling them.
“There’s been a dramatic increase in Chinese filings. A lot of seem to be not legitimate,” the patent office’s Trademarks Commissioner Mary Boney Denison said at a Trademark Public Advisory Committee meeting last fall, according to a transcript.
Josh Gerben, a Washington, D.C., trademark lawyer, said fraudulent trademarks could cause costly delays for other filers if their names are too similar, a grounds for a refusal. “The significant number of fraudulent trademark filings being made from China is disrupting our trademark system,” he said.
Most of the Chinese filers are tiny merchants hawking online goods, such as pocketbooks, binoculars, phone chargers and knit hats, under an array of odd-sounding and sometimes vowel-less brand names.
To qualify for a federal trademark registration, a product or service must be “used in commerce,” among other requirements. But unless another company is challenging the trademark, little evidence is required to back up the “in use” claim. There have been instances when a screenshot of a listing on Amazon or another e-commerce site is all an applicant needed to demonstrate market activity.
The Patent and Trademark Office has found numerous instances of Chinese applicants asserting that a proposed trademark is used in commerce, while submitting multiple nearly-identical images of the same consumer product with a different word on the brand tag. FORLISEA, CINYIFAAN, ENJOYSWEETY and GOOKET are some of the two dozen Chinese brands shown on an identically designed pair of zebra-print pants, for example.
The trademark subsidies are part of China’s “planned approach to intellectual property,” said Mark Cohen, a China-focused intellectual-property expert at Berkeley Law School and former senior counsel at the patent office. As with patents, China has a “highly metric, numbers-oriented approach” to intellectual property, he said.
Having a trademark registered in the U.S. is crucial for sellers on Amazon, whose brand-registry program rewards officially trademarked products with more site visibility and a higher listing in search results.
A number of Chinese merchants appear to be represented by foreign attorneys who aren’t licensed to practice law in the U.S., violating application rules. In one recent application, a Shenzhen address was listed for an attorney representing a Hong Kong client who had photoshopped the word “Instamarket” over a Walmart storefront.
And more than a dozen Chinese applicants entered the name “Wendy” into the entry box for the attorney name on the trademark application.
Hundreds of Chinese applicants are represented by an Atlanta trademark attorney, Amber Saunders. She says she developed her client pool after accidentally emailing a marketing message to a China-based intellectual-property company, which then started steering Chinese merchants her way.
Some of the merchants had already submitted problematic paperwork that needed fixing. Ms. Saunders said she took on only clients whose commercial activity seemed legitimate. The ones submitted by a lawyer named “Wendy” were among the red flags, Ms. Saunders said. “I wanted to know if they were making stuff up.”
Source >> http://www.latestcommentary.com/flood-of-trademark-applications-from-china-alarms-u-s-officials/
Saturday, May 5, 2018
How to Trademark
By: Michael J Foycik Jr.
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
HOW TO TRADEMARK . . .
- a word
- a phrase
- a logo
A US Trademark Application can protect a word, a phrase, a log, and even a color. This article explains how to trademark these elements.
A US Trademark Application requires at least the following information: the name and address of the owner; the mark itself; the type of goods or services to be used with the mark; and the type of use, i.e. actual use or intent-to-use.
If the trademark application is based on actual use, then the date of first use in interstate or international commerce is required. If the owner is a corporation, the state of incorporation is also needed along with the name of the person who has authority to sign the trademark application.
A trademark search is strongly recommended. Skill is required in interpreting the results, since even identical trademarks can be registered if they are in sufficiently different classes of goods/services.
Read More >> http://internationalpatentservice.com/How-to-Trademark.html
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
HOW TO TRADEMARK . . .
- a word
- a phrase
- a logo
A US Trademark Application can protect a word, a phrase, a log, and even a color. This article explains how to trademark these elements.
A US Trademark Application requires at least the following information: the name and address of the owner; the mark itself; the type of goods or services to be used with the mark; and the type of use, i.e. actual use or intent-to-use.
If the trademark application is based on actual use, then the date of first use in interstate or international commerce is required. If the owner is a corporation, the state of incorporation is also needed along with the name of the person who has authority to sign the trademark application.
A trademark search is strongly recommended. Skill is required in interpreting the results, since even identical trademarks can be registered if they are in sufficiently different classes of goods/services.
Read More >> http://internationalpatentservice.com/How-to-Trademark.html
Thursday, May 3, 2018
Start-ups Need to Start with IP
By: Tony Orsi
Start-ups have many items to focus on when they are first starting their business including incorporation and working on a business plan. Intellectual Property (IP) may not be considered to be a priority by start-ups but IP really should be considered right from the start. This is because IP affects many business areas including choosing a business name, doing negotiations and working with third party entities, creating timelines for commercialization of services and/or products as well as competing in the marketplace.
IP is important since innovation is seen as an increasing necessity in many industries today. For example, IP can be used to create a corporate identity/brand, increase goodwill and promote a reputation of innovation. IP may also help a business protect domestic and foreign opportunities, differentiate their products and services as well as contend with competitors as IP rights are territorial and are pursued in each country where protection is desired. Obtaining IP rights may also help with raising funds whether it is from attracting VC or angel investors, generating licensing revenue to IP securitization and IP sales.
A business needs to have a clear IP strategy that is aligned with and supports its business strategy. So the first step in developing the IP strategy is to look at various aspects of the start-up including, but not limited to, the competitive advantages, the services and products that will be offered, and how the start-up will operate (e.g. manufacture in-house or work with a manufacturer), to name a few.
Step 2 is to determine what IP rights can be used to support the business characteristics identified in step 1. IP rights include copyrights, trademarks, patents, and trade secrets. Each IP right provides a certain type of protection, has an associated cost and has advantages and disadvantages. So one should educate themselves on how different IP rights work, what are the timelines and costs are for obtaining IP rights, and how IP rights can be applied to their start-up. For example, a patent application must be filed before an invention is publically disclosed (although a small number of countries provide a grace period under certain conditions) but a trade name, product name or service name may be publically disclosed before applying for a trademark.
Step 3 involves digging deeper into the IP rights that apply to your start-up to determine what is available for your start-up to pursue and what may already be covered by another business. This also provides competitive intelligence for determining your competitors and their IP rights as well as figuring out what IP rights you can obtain to beat your competitors. For example, you may want to use a certain name for your start-up but the name may already be used and/or registered by another business. Alternatively, you may have a product that you think is inventive and wish to protect with a patent, but you need to consider what knowledge is in the public domain (as this will affect the ability to obtain a patent as well as the scope of protection) and whether your product may be subject to the existing patent rights of a third party.
Step 4 involves determining how IP rights will affect your dealings with third parties and whether any action should be taken. For instance, you may have a technology that you are developing and need to work with a third party to develop it but do not want the third party to disclose any information on the technology to the public. In this case, a Non-Disclosure Agreement (NDA) (also called a Confidentiality Agreement) should be created and signed by both parties. Another example, is that your start-up may hire a third party to build a product in which case a contract with an IP clause should be put in place setting out who owns the existing IP and the IP that is generated during the contract.
Step 5 involves estimating how much IP rights will cost on an annual basis and then budgeting for these costs. For a start-up, funds are limited so lowering IP costs is important. This may include working with a company that provides services for free or at a low cost (for example some commercialization centres may conduct prior art searches for free). A start-up can also do some IP work themselves such as searching the public domain including some of the major patent and trademark databases for technology that has been described or trademarks that have been registered that are pertinent to the start-up’s products or services. In addition, a start-up can try to negotiate with legal service providers to perform certain legal services for a capped fee rather than charging by the hour – in this regard the start-up should look at what it can do to work more efficiently with the legal service provider to help reduce costs.
Step 6 involves internally tracking the IP rights that have been or are being obtained (e.g. your IP portfolio), monitoring your start-up’s activity to see if new IP rights can be obtained and policing the market place to see if anyone is infringing on your IP rights. Internally tracking the IP rights generally includes keeping track of the start-up’s IP rights in terms of any registered rights that have been obtained, any applications that are currently being examined, any upcoming due dates related to certain procedures or maintenance fees and the generation of new IP (e.g. through new product development and marketing). Policing the market place may involve looking for products that have technology which is similar to the claims of the start-up’s patented technology or looking for products, services and companies having names that are similar to any trademarks or trade names for which the start-up may have registered or common law rights.
To conclude, IP is important for any company and a start-up must consider how to use IP rights to support its business strategy right from the start. This includes having a business strategy in place, being knowledgeable about IP rights, determining which IP rights can be used to support the business strategy, determining the IP rights of others and how it may affect the start-up’s ability to obtain IP rights, and managing the IP portfolio and policing the marketplace to look for infringers.
Source >> http://www.bereskinparr.com/doc/start-ups-need-to-start-with-ip
Start-ups have many items to focus on when they are first starting their business including incorporation and working on a business plan. Intellectual Property (IP) may not be considered to be a priority by start-ups but IP really should be considered right from the start. This is because IP affects many business areas including choosing a business name, doing negotiations and working with third party entities, creating timelines for commercialization of services and/or products as well as competing in the marketplace.
IP is important since innovation is seen as an increasing necessity in many industries today. For example, IP can be used to create a corporate identity/brand, increase goodwill and promote a reputation of innovation. IP may also help a business protect domestic and foreign opportunities, differentiate their products and services as well as contend with competitors as IP rights are territorial and are pursued in each country where protection is desired. Obtaining IP rights may also help with raising funds whether it is from attracting VC or angel investors, generating licensing revenue to IP securitization and IP sales.
A business needs to have a clear IP strategy that is aligned with and supports its business strategy. So the first step in developing the IP strategy is to look at various aspects of the start-up including, but not limited to, the competitive advantages, the services and products that will be offered, and how the start-up will operate (e.g. manufacture in-house or work with a manufacturer), to name a few.
Step 2 is to determine what IP rights can be used to support the business characteristics identified in step 1. IP rights include copyrights, trademarks, patents, and trade secrets. Each IP right provides a certain type of protection, has an associated cost and has advantages and disadvantages. So one should educate themselves on how different IP rights work, what are the timelines and costs are for obtaining IP rights, and how IP rights can be applied to their start-up. For example, a patent application must be filed before an invention is publically disclosed (although a small number of countries provide a grace period under certain conditions) but a trade name, product name or service name may be publically disclosed before applying for a trademark.
Step 3 involves digging deeper into the IP rights that apply to your start-up to determine what is available for your start-up to pursue and what may already be covered by another business. This also provides competitive intelligence for determining your competitors and their IP rights as well as figuring out what IP rights you can obtain to beat your competitors. For example, you may want to use a certain name for your start-up but the name may already be used and/or registered by another business. Alternatively, you may have a product that you think is inventive and wish to protect with a patent, but you need to consider what knowledge is in the public domain (as this will affect the ability to obtain a patent as well as the scope of protection) and whether your product may be subject to the existing patent rights of a third party.
Step 4 involves determining how IP rights will affect your dealings with third parties and whether any action should be taken. For instance, you may have a technology that you are developing and need to work with a third party to develop it but do not want the third party to disclose any information on the technology to the public. In this case, a Non-Disclosure Agreement (NDA) (also called a Confidentiality Agreement) should be created and signed by both parties. Another example, is that your start-up may hire a third party to build a product in which case a contract with an IP clause should be put in place setting out who owns the existing IP and the IP that is generated during the contract.
Step 5 involves estimating how much IP rights will cost on an annual basis and then budgeting for these costs. For a start-up, funds are limited so lowering IP costs is important. This may include working with a company that provides services for free or at a low cost (for example some commercialization centres may conduct prior art searches for free). A start-up can also do some IP work themselves such as searching the public domain including some of the major patent and trademark databases for technology that has been described or trademarks that have been registered that are pertinent to the start-up’s products or services. In addition, a start-up can try to negotiate with legal service providers to perform certain legal services for a capped fee rather than charging by the hour – in this regard the start-up should look at what it can do to work more efficiently with the legal service provider to help reduce costs.
Step 6 involves internally tracking the IP rights that have been or are being obtained (e.g. your IP portfolio), monitoring your start-up’s activity to see if new IP rights can be obtained and policing the market place to see if anyone is infringing on your IP rights. Internally tracking the IP rights generally includes keeping track of the start-up’s IP rights in terms of any registered rights that have been obtained, any applications that are currently being examined, any upcoming due dates related to certain procedures or maintenance fees and the generation of new IP (e.g. through new product development and marketing). Policing the market place may involve looking for products that have technology which is similar to the claims of the start-up’s patented technology or looking for products, services and companies having names that are similar to any trademarks or trade names for which the start-up may have registered or common law rights.
To conclude, IP is important for any company and a start-up must consider how to use IP rights to support its business strategy right from the start. This includes having a business strategy in place, being knowledgeable about IP rights, determining which IP rights can be used to support the business strategy, determining the IP rights of others and how it may affect the start-up’s ability to obtain IP rights, and managing the IP portfolio and policing the marketplace to look for infringers.
Source >> http://www.bereskinparr.com/doc/start-ups-need-to-start-with-ip
Wednesday, May 2, 2018
Why Trademark
By: Michael J Foycik Jr.
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
WHY TRADEMARK. . .
>> to sell a business
>> to attract investors
>> to stop competitors
>> to protect a web site domain name
What you can trademark:
>> a word, phrase, or slogan
>> a logo or design
Competitors can trade on your good name. Unless, that is, you have strong trademark rights. And what rights are those? The best trademark rights would be based on a federally registered trademark.
If you want to protect your company's web site domain name, you will need to be able to prove trademark rights in the name itself. There is no surer way than ownership of a federally registered trademark, which can usually confer nationwide rights.
There are other trademark rights too: state registrations, and common law trademark rights. Those may be very worthwhile too, but may not have national scope.
Common law rights sometimes require proof of instances of actual confusion, but even then there is a question of proving priority, i.e. who was first.
This brings us to federal trademark rights. In advertising, you may see a trademark followed by the symbol “R” in a circle. That indicates that the trademark is federally registered. A trademark followed by the symbol “TM” indicates that the owner wishes to claim common law trademark rights, or has other trademark rights.
A good trademark can help any business, and a successful one also attracts investors and can help when selling your business. Without a trademark, there is often nothing of value to sell.
Read More >> http://internationalpatentservice.com/Why-Trademark.html
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.
WHY TRADEMARK. . .
>> to sell a business
>> to attract investors
>> to stop competitors
>> to protect a web site domain name
What you can trademark:
>> a word, phrase, or slogan
>> a logo or design
Competitors can trade on your good name. Unless, that is, you have strong trademark rights. And what rights are those? The best trademark rights would be based on a federally registered trademark.
If you want to protect your company's web site domain name, you will need to be able to prove trademark rights in the name itself. There is no surer way than ownership of a federally registered trademark, which can usually confer nationwide rights.
There are other trademark rights too: state registrations, and common law trademark rights. Those may be very worthwhile too, but may not have national scope.
Common law rights sometimes require proof of instances of actual confusion, but even then there is a question of proving priority, i.e. who was first.
This brings us to federal trademark rights. In advertising, you may see a trademark followed by the symbol “R” in a circle. That indicates that the trademark is federally registered. A trademark followed by the symbol “TM” indicates that the owner wishes to claim common law trademark rights, or has other trademark rights.
A good trademark can help any business, and a successful one also attracts investors and can help when selling your business. Without a trademark, there is often nothing of value to sell.
Read More >> http://internationalpatentservice.com/Why-Trademark.html
Tuesday, May 1, 2018
Pursue Cannabis Intellectual Property Strategies Despite Limitations
By: Justin McNaughton
There is a lot of misinformation about intellectual property and Cannabis. Let’s see if we can clear some of it up. First of all, there are four types of intellectual property: patents, copyrights, trade secrets, and trademarks.
> Patent: A patent is a grant of a property right in a useful process, machine, article of manufacture, or composition of matter – granted by the government – to prevent others from making, using, or selling the invention claimed in the patent. The patent system is authorized by the U.S. Constitution. More information is at the U.S. Patent and Trademark Office’s Website. Any protection requires issuance of a patent.
> Copyright: A copyright is a grant of a property right in an original work of authorship that is fixed in a tangible medium of expression – granted by the government – to prevent others from copying the author’s work. The copyright system is authorized by the U.S. Constitution. More information is at the U.S. Copyright Office’s Website. Full protection requires registration.
> Trade Secrets: A trade secret is any information that has independent economic value because it is not known by other people and is kept secret using reasonable efforts by its owner. Trade secrets are established by state law and, although most states have adopted a Uniform Trade Secrets Act, there are variations between states. More information is at The Legal Information Institute’s Website. No registration required.
> Trademarks: A trademark/service mark is a word, name, symbol or device that is used to indicate the source of goods and services in the marketplace and to distinguish them from the goods and services provided by someone else. Trademarks are founded in consumer protection law, but they have also been protected by the Lanham Act. Congress has authority to protect trademarks because of its authority over U.S. Commerce granted by the Commerce Clause of the U.S. Constitution. Each state also has separate trademark statutes that coexist with the Lanham Act. More information is at the U.S. Patent and Trademark Office’s Website. No registration required, but full protection requires registration when available.
Upon reviewing, you will notice that only one of those intellectual property rights is founded on the commerce clause of the U.S. Constitution. This is important because, if you can remember that U.S. Federal Trademarks exist because of Congress’ ability to regulate interstate commerce, you will always remember which intellectual property right is unavailable for things that are illegal in interstate commerce – Only U.S. Trademark Registrations are unavailable for Cannabis, and only when the activity stated in the U.S. Trademark Registration is for an activity that is illegal in interstate commerce. State trademarks are permitted in any state that permits Cannabis-related trademarks, and U.S. Trademarks are permitted for any activity taken by a Cannabis-related company that is legal under U.S. law. To make a funny comparison, if a company that sold flower in Colorado also had a side business where it sold superhero comic books, it would be perfectly acceptable for the company to register a U.S. trademark application for comic books. Note that if the company happened to distribute Cannabis flower in sleeves inside the Cannabis comic books, they wouldn’t be able to register a U.S. trademark (and instead, would have lots of other problems).
Read More >> https://www.newcannabisventures.com/pursue-cannabis-intellectual-property-strategies-despite-limitations/
There is a lot of misinformation about intellectual property and Cannabis. Let’s see if we can clear some of it up. First of all, there are four types of intellectual property: patents, copyrights, trade secrets, and trademarks.
> Patent: A patent is a grant of a property right in a useful process, machine, article of manufacture, or composition of matter – granted by the government – to prevent others from making, using, or selling the invention claimed in the patent. The patent system is authorized by the U.S. Constitution. More information is at the U.S. Patent and Trademark Office’s Website. Any protection requires issuance of a patent.
> Copyright: A copyright is a grant of a property right in an original work of authorship that is fixed in a tangible medium of expression – granted by the government – to prevent others from copying the author’s work. The copyright system is authorized by the U.S. Constitution. More information is at the U.S. Copyright Office’s Website. Full protection requires registration.
> Trade Secrets: A trade secret is any information that has independent economic value because it is not known by other people and is kept secret using reasonable efforts by its owner. Trade secrets are established by state law and, although most states have adopted a Uniform Trade Secrets Act, there are variations between states. More information is at The Legal Information Institute’s Website. No registration required.
> Trademarks: A trademark/service mark is a word, name, symbol or device that is used to indicate the source of goods and services in the marketplace and to distinguish them from the goods and services provided by someone else. Trademarks are founded in consumer protection law, but they have also been protected by the Lanham Act. Congress has authority to protect trademarks because of its authority over U.S. Commerce granted by the Commerce Clause of the U.S. Constitution. Each state also has separate trademark statutes that coexist with the Lanham Act. More information is at the U.S. Patent and Trademark Office’s Website. No registration required, but full protection requires registration when available.
Upon reviewing, you will notice that only one of those intellectual property rights is founded on the commerce clause of the U.S. Constitution. This is important because, if you can remember that U.S. Federal Trademarks exist because of Congress’ ability to regulate interstate commerce, you will always remember which intellectual property right is unavailable for things that are illegal in interstate commerce – Only U.S. Trademark Registrations are unavailable for Cannabis, and only when the activity stated in the U.S. Trademark Registration is for an activity that is illegal in interstate commerce. State trademarks are permitted in any state that permits Cannabis-related trademarks, and U.S. Trademarks are permitted for any activity taken by a Cannabis-related company that is legal under U.S. law. To make a funny comparison, if a company that sold flower in Colorado also had a side business where it sold superhero comic books, it would be perfectly acceptable for the company to register a U.S. trademark application for comic books. Note that if the company happened to distribute Cannabis flower in sleeves inside the Cannabis comic books, they wouldn’t be able to register a U.S. trademark (and instead, would have lots of other problems).
Read More >> https://www.newcannabisventures.com/pursue-cannabis-intellectual-property-strategies-despite-limitations/
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