Posts Tagged ‘pto’

Board of Patent Appeals and Interferences Becomes Patent Trial and Appeal Board

Friday, 10 August, 2012 09:27 Written by Mark Malek 0 Comments
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By: Mark R. Malek

I was reading through my daily update this morning from Patently-O and noticed a bulletin that the Board of Patent Appeals and Interferences has changed it’s name to the Patent Trial and Appeal Board (PTAB).  Dennis Crouch indicated that this information was obtained from this alert.

This is just one of the many change that is coming from the America Invents Act (AIA).  The change is not due to a desire to have a different name.  Not by a long shot.  This is a product of the First to File system that is coming into place.  Interferences were a tool that currently can be used by inventors when two different entities invented the same thing at around the same time.  In short, when two applications were pending that were directed to the same invention, one party can request that an “interference” be declared.  After an interference is declared, the Board of Patent Appeals and Interferences (BPAI) would determine who was the “first to invent.”

Well, the AIA does away with “first to invent” and moves the United States to a “first to file” system.  In that case, we don’t need interferences any more.  The protection goes to the inventor that filed their application first.  Yes, yes, I am very much so simplifying this, but I just wanted to let you know that this is more than just a desire to change names.  The PTAB will still be carrying out many of the other functions that the BPAI carried out, i.e., appeals of Examiner’s decisions, appeals of reexaminations, inter partes review, post grant review, etc.

Many of these changes are set to take effect on September 16, 2012.  Here at the firm, the patent department is gearing up for the changes. I will be posting more on what inventors need to be on the lookout for as many of the provisions of AIA are implemented.

The Trademark Office Is Sending Out Warnings About Trademark Monitoring Scams

Friday, 15 June, 2012 16:35 Written by Mark Malek 0 Comments
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By: Mark R. Malek

This is an issue that has driven me nuts for years. One of my clients will call and ask me if they need to pay an invoice that they received from the Trademark Office. Confused, as to why the Trademark Office would have sent them an invoice, I ask the client to forward it to me. I usually receive an e-mail shortly after the phone call attaching the alleged invoice.

Surprisingly, the invoice includes a seal that resembles that of the Trademark Office, and indicates that the trademark owner owes $400 (or some similar amount) for a trademark monitoring service. It does not purport to be a company that is providing an optional service. Instead, it appears to be a fee from a governmental agency. My general advice to my clients upon reviewing these types of documents is that “if you don’t receive for me, it is a scam.”

I wondered how long it would take for the Trademark Office to do something about this. Just last week, I received a trademark registration for my clients, and enclosed was the warning that is pictured on the right.  Please click on it to enlarge it so that you can read it.  Clicking once will take you to another page that displays a bit of a larger image, and please click on that image to get to an even more readable version. The warning tells the trademark owner to be aware that private companies not associated with the United States Patent and Trademark Office use trademark application and registration information that is publicly available to solicit various services. It also puts the trademark owner on notice that these private companies use names similar to the USPTO, or other governmental agencies, when soliciting these services.

I am glad that the Trademark Office is taking this proactive step to warn trademark owners. My only question is whether or not something can be done to stop these scam artists. Has anyone ever checked to see if they actually provide the services that they collect money for? I highly doubt they do. Please comment below if you have run into similar situations.  I am curious to know if anyone has any knowledge on whether or not these companies actually provide the services that they purport to provide.

Does My Patent Infringe On Another Patent?

Friday, 06 April, 2012 05:45 Written by Mark Malek 2 Comments
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By: Mark R. Malek

My last article discussed the possibility of obtaining a patent, but that the patent may still infringe on the claims of an existing patent.  Yes, this is a rare situation, but one that is possible nonetheless.

The scenario that was laid out in the last article indicated that you have invented a chair with five legs.  The clear advantage is that this chair is much more stable than the typical chair that you normally sit on with four legs.  You have now filed a patent application on your chair with five legs.  During the examination, the Examiner has cited a chair with four legs as prior art.  Although the Examiner allows your patent, the Examiner indicates in the “reasons for allowance” that none of the cited prior art discloses the advantageous fifth leg and, therefore, the claims in your patent application define over the cited prior art.

Fantastic – you now have a patent.  You now also start manufacturing and selling your chair with five legs.  All of a sudden, you one day receive a letter from the owner of the patent on the chair with four legs.  The patent owner is accusing you of infringing on the claims of the patent, and instructs you to cease & desist from further infringement.  The letter explains that your chair, although it has five legs, still infringes on the claims of the patent.  It goes on to specifically indicate that your chair has four legs, and other stuff, i.e., a fifth leg.

Now you must engage in an investigation to make sure that the claims of the letter are founded.  You probably go to your favorite website on intellectual property, Tactical IP, or even your other favorite website on intellectual property, LegalTeamUSA, you will read one of my articles about what it takes to infringe a patent.  In the above article, it was noted that in order to infringe a patent, you must meet the claim limitations of at least one of the claims.  In other words, your invention has to include all of the elements of at least one of the claims in the patent.  You quickly figure out that your chair with five legs does meet the claim limitations.  Now what?

Now you engage in some sort of settlement negotiation that will hopefully end in a mutually beneficial license for you to continue manufacturing and selling your very lucrative chair with five legs.  You also do some investigation into the success of the patent on the chair with four legs.  Perhaps there is a cross licensing opportunity here.  I will discuss cross licensing in another post.  In short, cross licensing is where you grant a license to the owner of the patent on the chair with four legs a license to your patent so that the four leg chair patent owner can make chairs with five legs, and the four leg chair patent owner grants you a license so that you can continue to manufacture and sell your five leg chair patent.  Much of this is also laid out in my article about the various ways to make money from your invention.

Now you are asking how this could have been avoided.  The answer is a clearance search – also known as a freedom to operate search.  These searches are quite thorough and quite expensive.  This is a really good article on patent searches on IPWatchdog.  I will go into more detail about clearance searches in another post.  Until then, happy inventing!

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.

 

Patent Maintenance Fees – The Patent Prosecution Process Continues

Friday, 02 March, 2012 23:21 Written by Mark Malek 0 Comments
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By: Mark R. Malek

Great news – you have just received your Notice of Allowance for your patent application.  In the Notice of Allowance, there is a requirement for you to pay an issue fee (unless it has already been paid pursuant to a request for early publication – see Section 1129 of the Manual of Patent Examining Procedures (MPEP)  for more information) as well as an issue fee.  As it currently stands, the combination of the issue fee and the publication fee is about $1100.

The good new is that after you pay the publication fee and the issue fee, you will receive an issued patent.  As you can tell from the picture to the right, this is one of the prettiest looking documents the government has ever produced. Way better than anything I have ever received from the IRS. After you receive your issued patent in the mail, you will notice that the patent process has not exactly ended.  In order to keep your patent valid, you will need to pay maintenance fees.

Information on patent maintenance fees can be found in Chapter 2500 of the MPEP.  In short, in order to keep it alive, you need to pay maintenance fees on your issued patent.  These are due at the 3.5 year mark, the 7.5 year mark, and the 11.5 year mark.  To be specific, the window to pay the first maintenance fee opens at the three year mark and closes at the four year mark.  If the maintenance fee is paid within the first six months of the window being opened, then no surcharge applies which, of course, means that there is a surcharge that applies if the maintenance fee is paid in the last six months of the window.  The same goes for the next two maintenance fees.

If a patent maintenance fee is not paid, the patent will go abandoned, and the invention, as recited in the claims of the patent, will be dedicated to the public.  The current maintenance fees are outlined on the PTO Fee Chart.  As you can imagine, these fees change from time to time, so it is advisable to check the amount of the fee prior to attempting to pay it.    You can pay your maintenance fees on your patent by accessing the maintenance fee page on the PTO website.

Mark R. Malek is a Trademark and Patent Attorney with Zies, Widerman, & Malek in Melbourne Florida

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