The process of obtaining a patent is typically referred to as patent prosecution.
In the United States Patent and Trademark Office, examiners with technical backgrounds do the substantive review of the applications, including searching for relevant prior art. Unlike trademark practice, only registered patent attorneys or agents, or the inventors themselves, can normally file and prosecute patent applications in the Patent and Trademark Office.
After an application has been filed, it usually takes the U.S. Patent and Trademark Office between approximately one and two years to consider the application. In some instances, however, accelerated examination may be requested.
Sometimes, if more than one “invention” is being claimed in a single application, the U.S. Patent and Trademark Office will require that one invention be elected and the others pursued, if at all, in divisional applications. After this restriction requirement, the application is examined substantively.
Although the examiner’s review sometimes results in an immediate notice of allowance, in the vast majority of cases the examiner’s review results in an initial rejection. The rejection is typically based on the lack of novelty in the invention (35 U.S.C. sec. 102), the obviousness of the invention (sec. 103), the failure to provide clear enough claims (sec. 112, 2nd para.), the failure to provide an enabling disclosure (sec. 112, 1st para.), or the subject matter not being subject to patent protection, e.g., the claimed invention is merely a mathematical algorithm (sec. 101).
These rejections can be overcome in most applications. Therefore, an inventor should not despair too much when the application is initially rejected. One responds to a rejection by amending the application (including usually the claims) and/or by arguing that the examiner’s rejection is ill-founded. This response may result in a notice of allowance or another rejection. There may be several iterations of this process, and one may appeal from a final rejection by the examiner. It is important that a patent attorney handle the prosecution of a patent application, as well as its drafting, since it is all too easy to lose valuable patent coverage by amending the claims, or even by arguing that the rejection is ill-founded.
Most industrialized foreign countries publish patents applications at eighteen months after the priority date. As of November 29, 2000, the United States also began to publish applications at the eighteen month date, but there are exceptions available where foreign filing has not occurred. International applications filed pursuant to the Patent Cooperation Treaty are also published at eighteen months after the priority date. Thus, pursuing foreign coverage can result in the application being published before a patent is issued in the United States. In situations where the invention is not yet being commercialized, it may be possible to delay the filing of foreign or international applications, at the cost of losing an earlier priority date, and thereby delay the publication of the patent application.
It is important that all relevant prior art that is known to the inventors and others involved in the prosecution of the patent be disclosed to the U.S. Patent and Trademark Office during the prosecution. 37 C.F.R. sec. 1.56(a) states:
“A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section…”
Where there has been an intentional failure to disclose all known material prior art during the prosecution of an application, a patent that issues from that application could be declared unenforceable in later patent litigation. (More)
Monday, January 27, 2014
Monday, January 6, 2014
Trademark Usage Guidelines
How can trademarks be used most effectively? In order to allow consumers to quickly and easily recognize a trademark, the rendition of the trademark should be consistent every time it is displayed. Further, a trademark should be used in a manner that distinguishes it from surrounding text. The mark should be clearly and visibly seen by consumers and should not simply be an indistinguishable part of a larger context. Whether this has been done successfully depends upon the “overall commercial impression” of the trademark in its particular setting. A trademark can be distinguished in a variety of ways, such as by physically placing the trademark apart from surrounding text or by distinguishing the trademark’s appearance by using a different size, typeface, capitalization, or color from the surrounding text.
When used properly, a trademark is a “brand name” for the type of goods or services that it identifies. If a trademark comes to be known as a common name for those goods or services, it is at risk of becoming generic. For example, the words ASPIRIN, THERMOS and ESCALATOR started out as trademarks but became so commonly used that they became generic words and lost their trademark protection. Therefore, it is important for trademark owners to refrain from referring (or allowing others to refer) to their trademarks as generic terms used to describe the products generally. A company should use a trademark as an adjective to modify the generic name of the product (e.g., “Xerox® brand copy machine”), either with or without the word “brand,” and should avoid using or allowing others to use the trademark as a noun (e.g., “make a xerox”) or a verb (e.g., “please xerox this for me”), and should also follow the general trademark usage guidelines set forth herein.
A trademark should be followed by a notice that it is being used as a trademark whenever possible. Although not required by law, such a notice serves a useful function by placing the world on notice of the trademark owner’s claim of exclusive right to use the mark. Such a notice is also necessary before the trademark owner can collect any monetary damages for infringement of the mark (although even without such notice the trademark owner can still seek injunctive relief, that is, a court order prohibiting another party from using the mark).
At a minimum, a notice should be used the first time the mark is used as a trademark on advertising, product packaging or other documents. Before registration in the United States Patent and Trademark Office, the notice should be TM for a trademark or (SM) for a service mark (e.g., JeepTM), or the mark can be followed by an asterisk that refers to a footnote that indicates the owner’s claim of rights in the mark, e.g., “JeepTM is a trademark of Chrysler LLC.” Once the trademark is registered, but not before then, the products, labels or advertising materials bearing the mark may carry the legend “Registered in the U.S. Patent and Trademark Office,” “Reg. U.S. Pat. & Tm Off.” (both of which commonly appear as footnotes), or the registration symbol ®.
Improper use of the registration symbol ® can result in loss of rights, and in some other countries, fines or imprisonment. Care should be taken to comply with the laws of the jurisdiction where the goods or services bearing the mark are being sold, especially where the mark is registered in some jurisdictions but not others.
It is also helpful to indicate in some way who owns the mark. Although this is not required by law, doing so may be helpful in the event of a dispute concerning trademark ownership. If ownership of the mark is not obvious, use an asterisk to indicate ownership in a footnote(e.g., “JeepTMis a trademark of Chrysler LLC” or, after registration, “Jeep® is a registered trademark of Chrysler LLC”).
Please contact a member of our Trademark Practice Group if you have any questions about these guidelines or would like further information.
When used properly, a trademark is a “brand name” for the type of goods or services that it identifies. If a trademark comes to be known as a common name for those goods or services, it is at risk of becoming generic. For example, the words ASPIRIN, THERMOS and ESCALATOR started out as trademarks but became so commonly used that they became generic words and lost their trademark protection. Therefore, it is important for trademark owners to refrain from referring (or allowing others to refer) to their trademarks as generic terms used to describe the products generally. A company should use a trademark as an adjective to modify the generic name of the product (e.g., “Xerox® brand copy machine”), either with or without the word “brand,” and should avoid using or allowing others to use the trademark as a noun (e.g., “make a xerox”) or a verb (e.g., “please xerox this for me”), and should also follow the general trademark usage guidelines set forth herein.
A trademark should be followed by a notice that it is being used as a trademark whenever possible. Although not required by law, such a notice serves a useful function by placing the world on notice of the trademark owner’s claim of exclusive right to use the mark. Such a notice is also necessary before the trademark owner can collect any monetary damages for infringement of the mark (although even without such notice the trademark owner can still seek injunctive relief, that is, a court order prohibiting another party from using the mark).
At a minimum, a notice should be used the first time the mark is used as a trademark on advertising, product packaging or other documents. Before registration in the United States Patent and Trademark Office, the notice should be TM for a trademark or (SM) for a service mark (e.g., JeepTM), or the mark can be followed by an asterisk that refers to a footnote that indicates the owner’s claim of rights in the mark, e.g., “JeepTM is a trademark of Chrysler LLC.” Once the trademark is registered, but not before then, the products, labels or advertising materials bearing the mark may carry the legend “Registered in the U.S. Patent and Trademark Office,” “Reg. U.S. Pat. & Tm Off.” (both of which commonly appear as footnotes), or the registration symbol ®.
Improper use of the registration symbol ® can result in loss of rights, and in some other countries, fines or imprisonment. Care should be taken to comply with the laws of the jurisdiction where the goods or services bearing the mark are being sold, especially where the mark is registered in some jurisdictions but not others.
It is also helpful to indicate in some way who owns the mark. Although this is not required by law, doing so may be helpful in the event of a dispute concerning trademark ownership. If ownership of the mark is not obvious, use an asterisk to indicate ownership in a footnote(e.g., “JeepTMis a trademark of Chrysler LLC” or, after registration, “Jeep® is a registered trademark of Chrysler LLC”).
Please contact a member of our Trademark Practice Group if you have any questions about these guidelines or would like further information.
Subscribe to:
Posts (Atom)