Posts Tagged ‘uspto’

DR. DRE TO DIAMONDDRE, CEASE AND DESIST

Tuesday, 20 March, 2012 06:00 Written by danieldavidson 0 Comments
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By Daniel Davidson

Dr. Dre is not a new comer to fighting in courts for his intellectual property.  Around this time last year, a judge awarded Dre 100 percent of the online sales of his iconic compilation, The Chronic.  In a recent letter sent to up-and-coming music producer, DIAMONDDre, the Dr. tells him to lose the name.

DIAMONDDre was granted a Certificate of Registration from the U.S. Patent and Trademark Office on December 6, 2011 for his moniker.  Also a holder of a U.S. Trademark Registration, you guessed it, Andre Young, p/k/a Dr. Dre.  In fact, the two service marks are registered in International Class 41 for entertainment services (tisk, tisk Examining Attorney).

In the letter issued to DIAMONDre, Dr. Dre demands that DIAMONDDre cease and desist any further use of the name, or he will pursue his rights in a court of law.  Would Dr. Dre have a case?  I would think so.  I am even surprised that a likelihood of confusion refusal wasn’t issued by the Examining Attorney of DIAMONDDre’s trademark application.

Nonetheless, I am sure that Dr. Dre has given DIAMONDDre a deadline in which to agree to comply with the cease and desist letter.  Should DIAMONDDre not comply with Dr, Dre’s demands, within the allotted time frame, it will be interesting to see if Dr. Dre will fight to remain the only Dre in the music production business.  The value that Dr. Dre’s name has obtained is worth millions, and I would have to assume that it would be worth it to Dr. Dre to uphold his exclusive right to use the name Dr. Dre in connection with entertainment services.  Is “DIAMONDRE” exactly the same as “Dr. Dre?”  Of course not, but it us confusingly similar, the standard for confusion in trademark law.

Cheers.

Pharmaceutically Speaking: USPTO vs FDA?

Wednesday, 07 March, 2012 06:00 Written by Danie Roy 0 Comments
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Danie Roy

Those of you familiar with the Pharmaceutically Speaking series know I’ve written a bit on generics, biologics, and biosimilars before. I’ve also touched a bit on how Patent does not equal FDA approval (and vice versa). Crash course version:

Generics are versions of drugs that have gone off-patent. That is, the patent protection has run out on them, and the active ingredients in the drugs are now free to use. Different inactive ingredients must be used, and your generic must be approved by the FDA to be within a comparable effectiveness range of the original. Biologics are pretty close to what they sound like: medicine produced biologically rather than chemically. Biosimilars are the generics of biologics.

Of course, biosimilars are a little more complex than that, for the same reason organisms are more complex than chemicals. For some more in-depth reading, the links above have a good bit of information buried in them. Right now, I’m going to explain why the US biosimilar approval process seems to be putting standards from the USPTO and FDA at odds.

See, with what we think of as generics, the chemically-based drugs, they’re pretty much interchangeable. Some people may react differently to inactive ingredients, but such cases are few and far between. Very little research is required to prove that Drug X will do the same thing as Drug Y because they both have Chemical Z. Drug X might just have Filler A while Drug Y might have Filler B. With biologics, the process is a little harder to prove.

As I’ve said before, biologics, by nature, are more complex than traditional drugs. They come from individual cell or protein lines, and the tiniest difference, even an imperceptible one, could be the difference between life and death. In order for a biologic to have an interchangeable biosimilar, significantly more testing has to be done to prove that switching back and forth between the drugs will have no effect. Add to this that biologics need time to build up in your system to truly work as intended, and the research gets expensive fast. Plus, the interchangeable guidelines as set by the FDA require sharing how all the biosimilars were made to the makers of the original biologics… which is bound to cause IP disputes. And, without the interchangeable label, you still need a separate prescription for the biosimilar.

Assuming that the kinks all get worked out and we do get interchangeable biosimilars, it could be a very long time before we see those drugs. And even then, we won’t be getting as a big a discount as hoped for… somewhere in the 10-20% range. Remember, keep your fingers crossed, but don’t hold your breath.

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.

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.

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 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.

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