Archive for March, 2012

My Invention Has All The Elements Of A Patent…And Then Some

Friday, 30 March, 2012 13:12 Written by Mark Malek 1 Comment
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By: Mark R. Malek

This is yet another article in the series of “questions that Mark Malek gets all the time when playing attorney at Zies Widerman & Malek.”  Every now and again, I get the phone call from a very creative person who has really gone above and beyond what most inventors do initially.  This person has laid out their invention in great detail, then has taken the time to do a little bit of prior art searching and, the following is the best part in the world – has actually taken advantage of a quick, free consultation that most patent attorneys offer (at least the ones at our firm do) to determine if they can move forward.

The details of the call are quite interesting, generally.  Normally, the client has identified a piece of prior art, and has figured out that their invention has every element identified in the patent that they have located, but that their invention adds a little bit more to it.  Now what?  Recall my article a couple of weeks ago where I indicated that it is perfectly acceptable to design around a patent.  There is a discussion about the steps you need to take to design around a patent during our conversation.  The thing is, however, that you can’t design around a patent by simply adding to it.

For example, let’s say that there is a patent out there for a chair that has four legs, a seating surface, and a back.  Let’s now say that the invention in question is a chair that has five legs, a seating surface and a back.  Let’s also assume that there is no other prior art out there that is at all related to this technology.  As my movie-quoting partners would now say “and then the space ship lands.”  Yes – that is a quote from one of the best comedies of all time, “City Slickers.”  Back to the story, however, the question to be answered now shifts around where does the inventor on the phone stand?  Has this inventor come up with something patentable?  Does this new invention read on the patent for the chair with four legs that the inventor uncovered?  The answer to both is YES!

Big help I am, right.  Here is the thing about it.  The invention for the chair with five legs still incorporates all the limitations of the patent on the chair with four legs.  Therefore, one cannot make the chair with the five legs without infringing on the patent on the chair with four legs.  Here’s the real rub – the invention on the chair with five legs may still be patentable.  Put your self in the Examiner’s shoes for a second.  The Examiner may have on his/her desk a patent application for a chair that has five legs.  During the Examiner’s prior art search, the only thing that shows up is a patent for a chair that has four legs.  The Examiner cannot seem to find any related prior art that is related to any five-legged device.  Therefore, the Examiner may decide to allow the case.

The next two articles that I will put up are related to this situation.  The first will be an analysis of the situation where you have a patent, but you may still be infringing on another patent – does having a patent gives you the right to manufacture the device that is covered by the patent?  The next article that I will post is directed to options when your patentable invention infringes a patent.

 

TRAYVON MARTIN’S MOTHER FILES TRADEMARK APPLICATIONS

Tuesday, 27 March, 2012 16:41 Written by danieldavidson 0 Comments
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By Daniel Davidson

Last week, in the midst of an ugly tragedy of lost life (no matter which way it is sliced or the amount of publicity it receives) Trayvon Martin’s mother, Sabrina Fulton, filed trademarks for “I Am Trayvon” and “Justice for Trayvon.”  With the help of Orlando attorney, Kimra Major-Morris, both trademark applications were filed with the U.S. Patent and Trademark Office on an intent to use basis for:

Digital materials, namely, DVDs featuring Trayvon Martin; Digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring and promoting Trayvon Martin; Digital media, namely, pre-recorded video cassettes, digital video discs, digital versatile discs, downloadable audio and video recordings, DVDs, and high definition digital discs featuring Trayvon Martin; Digital media, namely, CDs and DVDs featuring Trayvon Martin; DVD cases; DVD sleeves; DVDs featuring Trayvon Martin; Pre-recorded CDs, video tapes, laser disks and DVDs featuring Trayvon Martin.

Trayvon Martin, a student and son from Sanford, Orlando, abruptly lost his life on the night of February 26, 2012.  Since then, marches of protest have taken place due to the non-arrest of the man accused of pulling the trigger that night.  The death of the teenager has captured national attention due to racial implications and the Florida “Stand Your ground” law which allows for citizens to use deadly force in “self-defense.”  It has even brought the likes of Reverend Al Sharpton and Jesse Jackson to the Florida area.

The trademark applications are fueling more debate in the already oversaturated debate in Trayvon’s death.  Many supporters of George Zimmerman (the shooter) are saying that the mother is simply trying to cash in on the highly publicized name.  As was the case during the “Occupy Wall Street” outcry, many people attempted to gain monetarily from the movement.  Filing trademark applications for “Occupy Wall Street,” selling shirts on the internet bearing the moniker, and even rapper Jay-Z started to sell a derivative of the catchphrase, “Occupy All Streets,” on t-shirts.

With that, it is hard to jump to conclusions on any motive other than the family is attempting to preserve their rights in a name.  I mean, heck, the family of Bob Marley is constantly battling in court to keep others from exploiting Marley’s name and likeness.  From the looks of the identifications they filed the applications in (DVDs, CDs, Digital Media, etc.) they are preserving rights in possible documentaries released concerning the Trayvon Martin matter.

Nonetheless, there is also a question of whether an individual’s name can be trademarked?  In some cases it can be.  The name Michael Jordan is trademarked.  It is even trademarked by someone other than the basketball icon.  How is it that his name is trademarked?  Well, an individual’s name can be trademarked with 1) the consent of the individual, and 2) the name has become distinctive of a good or service.  In this case, I think the mother and her attorney will have a hard time overcoming a rejection by the trademark examiner that the mark is merely a surname or that it has not acquired distinctiveness.

Pharmaceutically Speaking: Supreme Court Remands Myriad

Tuesday, 27 March, 2012 16:32 Written by Danie Roy 0 Comments
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Danie Roy

The Supreme Court vacated the previous decision in Myriad and remanded the case back to the Federal Circuit to be retried in light of the recent Prometheus decision.  I’d be lying if I said I was surprised. If you over simplify, and I mean REALLY over simplify, Myriad and Prometheus are cases about diagnostic tests. However, Prometheus was a simple observation patent, while Myriad is significantly more complex.

I can’t claim to know much about the patents other than they involve isolating DNA to determine ovarian and breast cancer risk. Reading through what I could understand, however, the patents are directed to something significantly more complex and involved than the Prometheus patents.

What this case will really come down to is likely whether or not the patents are mere observation. If they are, they will likely be struck down. In either scenario, we will likely see this case back in the Supreme Court in a few more years, and Myriad will still be profiting from their patents in the meantime.

How Do I Protect My Trademark?

Monday, 26 March, 2012 06:00 Written by Aaron B. Thalwitzer 0 Comments
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After you register your trademark (you do have it registered, right?), you must also maintain your mark. It’s not tough. A little dusting, some lemon oil, and you’re good to go. The key is to make sure your mark, though distinct and hopefully popular, does not become generic. A mark is generic when it no longer identifies the source or origin of a product or service. If Cheerios became a true stand-in for circle-shaped oat-based breakfast cereal (I hope there’s such a thing as dinner cereal!), it would be generic, and other manufacturers could use the term to describe their products.

Usually, “source identification” is lost through abandonment. The holder intentionally stops using the mark for some period without intent to resume use. There’s a trickier type of abandonment: unintentional abandonment, which occurs when an owner fails to properly use the mark or monitor its use by others. A mark which is “improperly used” is in danger of becoming generic. Therefore, always use your mark consistently and distinctively to avoid improper use and possible unintentional abandonment. You also have to police the use of your mark by taking action when a non-owner uses the mark, since that diminishes the mark’s ability to indicate its source. Don’t let others use your mark without a licensing agreement, and if someone else uses it, send them a cease and desist.

Infringers diminish your mark’s source identification powers by increasing the likelihood that consumers will be confused about the origin of goods or services. Again, cease and desist, and if that doesn’t work, prosecute the infringer or risk abandonment of your mark’s rights.

You can even hire a service that will, for a small fee, “watch” your trademark to help maintain your mark’s source identification.

 

If an unauthorized user will not or cannot afford to change marks after receiving your cease and desist letter, you basically have three options: (1) do nothing, (2) sue them, (3) offer to help them with the cost of a new mark. Given the potential cost of trademark litigation, if may be worth throwing a little money at a problem, to avoid paying for a drawn-out fight. If that is not a viable option, litigation may be your last, best hope for justice. You can sue for money damages and injunctive relief to prevent the unauthorized user from further using your mark, and to impound and destroy the infringing goods. If the user was intentional (e.g. fake Gucci purses) treble damages may be awarded. It’s no accident that litigation is the last option I’ve listed. Litigation should be avoided if possible, but is nothing to be afraid of. A good lawyer will give you an approximation of your costs and the likelihood of success. In the end, you will simply make an informed business decision on whether to enforce your mark.

What It Takes To Infringe a Patent

Friday, 23 March, 2012 05:00 Written by Mark Malek 0 Comments
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By: Mark R. Malek

My last article discussed the permissibility of designing around a patent. To summarize, in order to design around a patent, also known as reverse engineering a patent, the product/device/method, etc., in question must not include all of the elements of just one of the claims of the patent in question.  If your product includes three of the four elements that can be found in the claims, then you should be in the clear.

Naturally, the next question comes from the perspective of the patent holder.  At this point, the patent holder may have discovered your invention that has purportedly designed around the patent.  The only issue is that the patent holder does not necessarily believe that your invention does design around the patent.  More particularly, the patent holder thinks that your invention reads on at least one of the claims in the patent.  Time to conduct an investigation.

The investigation for the patent holder is very similar to the investigation that I discussed in my previous article about designing around a patent.  In other words, the patent holder’s first step should be to create a claims chart and analyze every element of each claim to make sure that the allegedly infringing device meets all the claim limitations.   Please don’t begin to think that I am insisting that the patent holder much go through the chore of doing a claims chart – it is just that I cannot think of a better way to ensure that the patent holder is sure that the device in question actually infringes.  When analyzing the limitations of the claim, the patent holder may try to broadly interpret certain portions of the claims, i.e., the patent holder may try to give some elements of the claims a broader interpretation than would be normally provided just by looking at the English language.  This could be possible depending on the way that these terms are defined in the specification.  For example, suppose that one of the elements of the claim is that a portion of the device must have a rounded shape, but in the specification, there is a specific note that although the device is depicted as having a rounded shape, the term “rounded shape” is intended to include shapes that have rounded corners.

Prosecution history estoppel, however, is something that could prevent broader interpretations of claims, but that is a topic for another article – actually, it is a topic that can fill up several articles.  For more information on prosecution history estoppel, check out this article by Gene Quinn on IPWatchdog, which includes a discussion on the doctrine of equivalents.  A more updated article on the doctrine of equivalents can be found here.

As you can see, the analysis for the patent holder is similar.  In short, if the allegedly infringing device does not include all of the elements of at least one of the claims, then the patent holder should not go running down the path of patent infringement yet.  In another article, I will start to discuss the various options available for the patent holder once it is determined that the device in question does infringe.  In that article, I will also discuss some strategies (all opinion) for patent holders that find a device that is pretty darn close to the claims of the patent.

 

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