Archive for February, 2012

Responding to a Cease and Desist Letter: The Gentle Way

Monday, 27 February, 2012 06:00 Written by Aaron B. Thalwitzer 0 Comments
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A friend of mine owns a relatively small start-up company in Brevard County, Florida which manufactures a product used to improve energy efficiency in homes and other buildings. Not coincidentally, given the subject matter of TacticalIP.com, this friend, who we’ll call Jim, was sent a cease-and-desist letter from the company who is the 800-pound gorilla (hereinafter, “Gorilla”) in the industry in which his product and company competes. Gorilla demanded that Jim stop using his company’s name, which he has been using for over 10 years in interstate commerce, on his website, on all of his marketing materials, and on the product itself. Gorilla, however, had registered a very similar name with the USPTO. If Jim had to stop using his company’s name, it would hurt his business — something Gorilla wouldn’t mind one bit!

Jim came to me with the letter, quite concerned that he might be forced into litigation with a deep pocketed adversary, against whom any victory would be Phyrric. Jim was not hysterical, but he was getting ahead of himself. As they say, it’s better to be lucky than good, but Jim was both. He’d been using his product under the name, in interstate commerce for a good while before Gorilla registered the trademark. Better still, he could prove it, in writing! (Sidenote: always document, always, always always document, your lawyer will thank you). With information in hand, we could respond with confidence, and try to put Gorilla in its place.

But just as might isn’t always right, being right isn’t always enough. Escalating the dispute would get us nowhere fast, and while my friend was not a pauper, he didn’t have a million dollar litigation budget either. Clearly, Gorilla had assigned value to the trademark in question. They had registered it, and retained a high-profile law firm to try to enforce its rights, such as they were, to the mark. So, instead of simply denying the allegations of infringement and dilution, and having confidence that we’d established our mark, we decided to make a proposal to Gorilla.

We responded, denying their allegations. But, as delicately as we could manage while still making our point, we offered to license the mark to Gorilla, in exchange for reasonable compensation. Rather than a threat, we we chose to view the cease-and-desist as a potential opportunity.

A week or two later, I got a call from Gorilla’s attorney. He got the message, loud and clear, and he was calling to feel us out. I couldn’t provide those sorts of details, and we ended our conversation. That was well over a year ago. We haven’t heard from Gorilla, and they haven’t sued us. Jim’s still growing his business, which would be that much tougher if he had to spend money on litigation.

This tactic won’t work every time, and we had the fortune of having a good case and a good faith interest in being acquired. But the takeaway is clear: responding to force with force wasn’t going to work in this case. This wasn’t Apple v. Samsung, or even Frito Lay v. Pretzel Crisps. Taking the gloves off would only serve weaken both parties and leave the weaker side exposed in a war of attrition. We had to make this a judo match rather than a brawl. Parry and thrust won’t always carry the day, but the righteous little guy needs every advantage he can get.

Advancing Examination of a Patent Application Out of Turn

Sunday, 26 February, 2012 15:36 Written by Mark Malek 0 Comments
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By: Mark R. Malek

As many of our readers know, there is a somewhat significant backlog in patent examination right now. For example, the average time to get a patent allowed now is about 33 months.  You can reference the patent dashboard for more information.  I know that this sounds terrible, but it is a huge improvement, and things are going the right way.  For example, the patent backlog is down to 657,000 now – which is significantly lower than the 900,000 that I remember.

There are ways to try to shortcut the long wait associated with with the patent examination process, provided that the Applicant meets certain criteria.  I will be writing about many of these options over the next several posts, but the one that I wanted to discuss first is based on the age of the inventor.  Inventors over the age of 65 can advance examination of their patent application out of turn.  This is outlined in the Manual of Patent Examination Procedures (MPEP) Section 708.02.  Maybe it is because I am getting older, but I just don’t think that 65 is that old, but if the Patent Office sees fit to provide a benefit to inventors over the age of 65 – take it!

So what exactly does it mean to file a petition to make special?  In short, the Patent Office is offering to grant “special status” to an application that has a named inventor that is over the age of 65. Imagine that a patent Examiner’s desk might have a stack of papers on it that is about 3 feet high.  That stack of papers represents patent applications that still need to be examined.  Now imagine that the application you just submitted is on the bottom of that stack.  After the Patent Examiner receives the approved petition to make special based on the age of the inventor, your application is taken from the bottom of the stack and put right on top.  This is a very simplistic explanation, but this type of petition will likely provide an examination that lasts only about a year.

The biggest advantage to this type of petition is that it is completely free.  Once you receive a filing receipt, simply fill in the form and file it.  Another huge advantage is that this type of petition is automatically processed.  In other words, there is no need to wait for the petitions branch at the Patent Office to make a decision on the petition (sometimes taking upwards of three weeks or so).  A really good write-up on the procedure is available from the Patent Office here.

This petition can be submitted even if just one of the inventors on a patent application is over the age of 65.  It is imperative, however, not to try to trick the system.  Please do not just name someone who is over the age of 65 as an inventor for the sake of filing the petition.  This will likely lead to all sorts of headaches down the road when trying to enforce the patent.  For example, you do not want to run into an accusation that you have committed fraud on the patent office by naming someone over the age of 65 as an inventor when they truly are not an inventor. This could lead to invalidation of your patent.  In order to be named an inventor, one has to have had something to do with at least one of the claims that are allowed in a patent application (more on this in a future post).

As I will discuss in later posts, there are several other ways to accelerate examination of a patent application, but none as convenient, fast, and hassle free as a petition to make special based on age.

Patented Meat-Growing Methods

Friday, 24 February, 2012 10:00 Written by Danie Roy 1 Comment
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Danie Roy

Yes, you read the title right.

Scientists have been trying to grow meat for some time, and they’re pretty close to making it work commercially. Right now it’s worth WAY more than its weight in gold. It’s not solid gold life-sized elephant expensive,  but maybe solid gold toilet seat expensive.  At roughly $200k for a quarter-pound burger, it’s certainly nothing to sneeze at.

Here’s the odd part, though: nobody has eaten the patented patty yet. The Netherlands-based scientists are trying to find a lab rat before they eat the expensive meat themselves.

I would even wear this shirt, made possible by Randall Monroe of XKCD. Because I am a nerd.

There are some ethical questionsarising over the “test tube burger,” from “it’s unnatural therefore wrong” to PETA’s offering of a $1 million prize to whomever can create a commercially viable meat that doesn’t harm animals.  And, regardless of how people feel about PETA and those appealing to nature, just about everyone is asking themselves, “would I eat lab-grown meat?”

My answer? I’d eat it…if it were cheaper. I can’t afford a $200k burger, but I’d try one if it were offered to me. It’s gotta be better than what’s in hot dogs and the average fast food burger anyway, and it’s produced in a clean environment. Plus, the “green” effects are a bonus. Who knows, someday we may have meat makers or we might be able to print meat. Science happens. So, scientists, if you’re reading this, I’d like to be the burger hipster now. I will eat that sciencey meat…if I don’t have to pay out the wazu, of course.

What are appropriate specimens for a Federal trademark registration? What is a specimen for trademark registration?

Monday, 20 February, 2012 05:33 Written by Aaron B. Thalwitzer 0 Comments
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According to the USPTO: A specimen is a sample of how you actually use the mark in commerce on your goods or with your services. A specimen shows the mark as your purchasers encounter it in the marketplace (e.g., on your labels or on your website).

Under 37 C.F.R. §2.56, a trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods, but a copy of a specimen of the mark as actually used on or in connection with the goods is also acceptable.

Under 15 U.S.C. §1127, the USPTO has discretion to accept another document related to the goods or the sale of the goods when it would otherwise be impossible to place the mark on the goods, packaging, or displays associated with the goods.  This is an exception and should only be used when the nature of the goods makes use on these items impracticable.  Saying it would be impracticable isn’t enough, you have to establish on the record that the goods are in fact of such a nature. Anything that would be dangerous, unduly expensive, or outright impossible to send to the USPTO (e.g. radioactive materials, natural gas, hydrochloric acid).

Often, a product is identifiable by a label. In those cases, a label is an acceptable specimen. Sometimes, a stamp, stencil, or or template may be used to apply a trademark. There, you can send in the stamped product as your specimen.

The specimen should be applied the the “container” for the goods. The container is, simply enough, whatever is commonly used to package the goods in trade. If canned air is your product, the aluminum spray bottle would be the container.

If your “good” is actually a service, you are applying for a service mark. As an attorney, I market and sell legal services. There’s no physical object that people pay for. Nevertheless, Zies Widerman & Malek have a logo we use to market our services. We don’t do much traditional, mass media advertising, but we have a sign on our building, business cards, emails, letterhead, and a website, legalteamusa.com. Business documents such as letterhead and invoices may be acceptable service mark specimens if they show the mark and refer to the relevant services.  TMEP §1301.04(b), 37 C.F.R. §2.59 and TMEP §904.09 regarding substitute specimens. Letterhead stationery, business cards or invoices bearing the mark may be accepted if they create an association between the mark and the services.  To create an association between the mark and the services, the specimen does not have to spell out the specific nature or type of services.  A general reference to the industry may be acceptable. In my opinion, the words “law firm” or “attorneys at law” should suffice. Alternatively, if the letterhead does not include a reference to the services, a copy of an actual letter on letterhead stationery bearing the mark is an acceptable specimen of use if the content of the letter indicates the field or service area in which the mark is used.

Supplementing A Patent Application Disclosure With Prior Art Uncovered During Prosecution of A Related Patent Application

Sunday, 19 February, 2012 10:13 Written by Mark Malek 0 Comments
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By: Mark R. Malek

I recently posted a couple of articles directed to the duty to disclose prior art to the Patent Office during the prosecution process of your patent application.  The articles can be found here and here.  As we know from these past two articles, the duty of disclosure is vital in the patent application process, and the duty to supplement that disclosure is even more vital.  Simply because new prior art has come to light after the Applicant has already made an initial disclosure to the PTO does not relieve the Applicant from supplementing the disclosure with the newly discovered prior art.

There is a particular case that arises when an Applicant may have more than one patent application pending.  Sometimes, different Examiners may examine multiple related applications.  Of course, each Examiner may have a different search strategy and may uncover different prior art.  The examination of a patent application must be kept completely confidential.  Confidentiality of patent applications is generally outlined in 35 U.S.C. 122.  It is not as though an Examiner on one case will seek out the Examiner of a related case to go over the prior art that they have uncovered and compare notes.

The scenario that we are dealing with here can be laid out with an example.  Suppose Application #1 being examined by Examiner #1 has claims directed to elements A, B, C, D & E, and that Application #2 being examined by Examiner #2 has claims directed to elements A, B, C, F & G.  Now suppose that Examiner #1 issues a notice of allowance and indicates that no prior art reference was found that disclosed element C.  Now also suppose that around the same time, Examiner #2 issues a rejection of Application #2 and provides a prior art references that discloses element C.

Anyone see the issue yet?  The Applicant now knows of prior art that would cause Examiner #1 to issue a rejection of the invention set forth in Application #1.  If the Applicant does not disclose the prior art that Examiner #2 cited, then Application #1 will likely proceed to issue.  Is it valid?  Well – until someone else challenges it, then it probably is.  This scenario wouldn’t be tested, however, until the Applicant tried to enforce Application #1 against a potential infringer.  You can guarantee that the potential infringer, when faced with an accusation of patent infringement, will do every bit of investigation possible into the prosecution history of the application to ensure that the prosecution was proper.  Upon figuring out that the Applicant failed to disclose prior art from one application in the prosecution of another application, the door to invalidity has been opened.

To summarize, the duty of disclosure of relevant prior art cannot be overstated.  No matter how the prior art was discovered, and no matter when the prior art was discovered, the Applicant MUST fully disclose it to the PTO during prosecution of the application.

 

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