Trademark Litigation in a federal district court typically involves seeking a declaratory judgment that a defendant’s use of a trademark or service mark infringes a registered trademark, and an injunction enjoining the alleged infringer form further use of the allegedly infringing mark in commerce. This is sometimes related to but different than an action under the Lanham Act for unfair competition.
Trademark litigation, in one sense, may also be conducted before the Trademark Trial and Appeal Board (TTAB), in an opposition or cancellation proceeding, to determine who has better rights to a trademark. An opposition is initiated after a mark is approved for publication, where a cancellation is initiated after a registration issues, where in both cases the Opposer believes it can evidence that it will be damaged by the registration.
Patent Litigation, broadly, is a suit to enforce patent rights against an alleged patent infringer, or a suit for a declaratory judgment that a patent referred to in a cease and desist letter, or that the product referred to in the cease and desist letter, are respectively unenforceable or not infringed.
If you are the Plaintiff in a patent infringement action, you are typically seeking monetary damages and a royalty on the patent against the other side’s allegedly infringing goods, but at times plaintiff wishes to enjoin the allegedly infringing defendant from selling at all in the US.
Patent litigation is akin to commercial litigation on steroids-not for the faint hearted. If you are sued for patent infringement call a patent attorney right away to see what your options are. The first thing he or she will do is take a good look at the patent claims and compare the allegedly infringing product(s) to same, and see if there actually is a competent claim for literal infringement. Then, or contemporaneously, the patent attorney will find the file history(s) of the patent(s) at issue, and see if there is something therein that might operate to estop the accuser from asserting the scope of the claims capture the allegedly infringing product. The next action is to do a very thorough prior art search to see if there is prior art out there, preferably not yet considered by the USPTO during prosecution of the patent at play, that might invalidate the patent. If this is the case, the accused infringer has some ammunition to negotiate, and if actually sued, can Answer with the affirmative defense that the patent is invalid, or spin off an inter partes review (IPR) to invalidate the patent, and attempt to stay the litigation until that time the Patent Trial and Appeal Board (PTAB) renders a decision on validity via the IPR.
If you have a patent that you believe is infringed, your patent attorney should go through the same process that an accused infringer should go though, to make sure there is a valid claim for infringement before a cease and desist letter is prepared and sent. The only hard advice we can provide, without first investigation, is NOT to ever send out a cease and desist letter alleging infringement unless you have the express approval to do so from your patent attorney, after his or her careful investigation.
can as a shield or pat
Inter partes review is a trial proceeding conducted at the Patent Trial & Appeal Board (Board) at the United States Patent & Trademark Office (USPTO) to re-investigate the patentability of one or more claims in an “already-issued” patent only on a ground that could be raised under 35 U.S.C. §§ 102 or 103, and only on a basis of prior art consisting of patents or printed publications. Typically, a Defendant who is sued for patent infringement in a US District Court has an option to file a petition for inter partes review (IPR) before the PTAB, and then moves stay the district court case until the PTAB renders a decision on the validity of the claim in the patent in suit. Challenging the patent asserted against it in the district court litigation is a great play for the defendant therein, as the IPR is amazingly cheap when compared to a patent litigation due to the the limited discovery available in the IPR, because the IPR levels the playing field between Plaintiff (Patent Owner/Respondent in the IPR) and Defendant (Petitioner in the IPR), i.e., the presumption of validity and the enhanced burden of proof required to invalidate a patent in the Article III Court does not apply to the IPR before the PTAB. But even if you are Plaintiff (Patent Owner), there is value in getting through validity issues in a financially expedient way, up front (i.e., in the IPR). If Plaintiff’s (Patent Owner/Respondent in the IPR) patent makes it through the IPR, Defendant/Petitioner can’t challenge validity in the district court case once the stay is lifted, post IPR. But whether an IPR should be brought (from a Defendant’s perspective) really depends on whether their is some prior art out there that could affect the validity of the patent in play. Call your patent attorney!!!!
There is only one hard and fast rule for using the TM, SM or ® symbols-DO NOT USE THE SUPERSCRIPTED ENCIRCLED R (®) UNLESS YOU HAVE A VALID REGISTRATION FROM THE US TRADEMARK OFFICE. The superscripted TM and SM may be used to indicate that the user is using the mark in a trademark sense, regardless of whether or not an application to register the mark with the USPTO has been made. Actually, there is another hard and fast rule for using your trademark: always use it as an adjective to qualify the product (noun), never as a noun. Back to how to use the TM, SM or ® symbols, as applicable, please note that there is some flexibility in placement. That is, while each of the respective symbols are typically placed in the upper right-hand corner of the word mark, word mark & design or logo (i.e., superscripted), the symbols alternatively may be placed level with the mark or logo itself—each is an acceptable way of displaying the appropriate symbol. Example: COCA-COLA®. The TM, SM or ® symbol need only appear with the first or most prominent mention of a mark in all documentation, such as press releases, articles, and company reports.
Reference: International Trademark Association
The symbol ® is a notice of registered ownership used in many countries or regions to advise the public that a trademark or service mark is registered and to provide constructive notice of the legal ownership status of the mark with which it is used. The ® symbol should be used only in connection with registered trademarks or service marks. In the United States, use of ® may be instituted only after registration of the mark is granted. Use of ® with an unregistered mark may result in claims of fraud where the owner demonstrates intent, knowing and willful misuse, and attempts to deceive or mislead consumers, or in other difficulties for the owner in trying to obtain and/or enforce its trademark rights.
Reference: International Trademark Association
The symbol SM functions similarly to the symbol TM, in that it is used to provide notice of a claim of common-law rights in a mark; however, it is used in connection with a service mark, covering services, such as banking or legal services, rather than tangible goods. Use of the SM symbol does not guarantee that the owner’s mark will be protected under trademark laws.
Reference: International Trademark Association
The symbol TM is used to provide notice of a claim of common-law rights in a trademark. A TM usually is used in connection with an unregistered mark, to inform potential infringers that a term, slogan, logo or other indicator is being claimed as a trademark. Use of the TM symbol does not guarantee that the owner’s mark will be protected under trademark laws. The owner may continue to use TM should registration of the mark be refused.
Reference: International Trademark Association
US Code: Title 35 Patents
•PART I – UNITED STATES PATENT AND TRADEMARK OFFICE (§§ 1 to 42)
•PART II – PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS (§§ 100 to 212)
•PART III – PATENTS AND PROTECTION OF PATENT RIGHTS (§§ 251 to 329)
•PART IV – PATENT COOPERATION TREATY (§§ 351 to 376)
•PART V – THE HAGUE AGREEMENT CONCERNING INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS (§§ 381 to 390)
We work with you collaboratively and concurrently, preferably using an online collaboration tool, to work together to “flush out” your invention and set it to paper in a text document (for example, a Microsoft Word document), with accompanying drawings (informal or formal, typically in pdf format) sufficient to together show that you as the inventor had possession of the invention at the time the provisional application is filed. Provisional applications are a financially expedient means for getting to the patent office first.
The text document and any drawings realized through our collaboration become the actual provisional patent application for electronic filing. That is, after the online working session is completed, we (for example, John Vodopia) will additionally prepare a very broad set of patent claims, characterizing the scope of the protection sought, prepare what is called an application data sheet (ADS), which is required for filing, and then file the provisional patent application and ADS electronically.
The cost fluctuates with the agreed upon amount of time you wish the firm to put in to your provisional application, tempered by the fact that for a provisional application to have value, it must be sufficiently detailed and supported such that a hypothetical person having ordinary skill in the art (PHOSITA) would understand, when considering the provisional patent application as filed as a whole, that you as the inventor “had possession of the invention” at the time of filing, as required by 35 USC 112(a) and the qualifying related case law.
While this time that we would spend online together is, of course, dependent on the complexity of the invention (computer software such as cellphone apps may take a while longer than electrical, mechanical or chemical or formulation inventions, as software-related inventions preferably include flowcharts and/or drawings highlighting the exchange of signals or data, whether internal to a host computer or network, or external relying on analog telephony or the internet. As an example, if you have done some homework before we engage, a total of 4 hours on our time can be sufficient to get the invention sufficient set to paper and filed. Please call for a quote.
Please note that after filing a provisional patent application, the inventors have one year to evolve the provisional application into a full non-provisional patent application, an international patent application filed under the Patent Cooperation Treaty (PCT), or directly in a few countries such that going through the trouble to file under the PCT is not financially pragmatic. Call to discuss in further detail.
Microsoft Word is a registered trademark of Microsoft Corporation.
Microsoft Word is a registered trademark of Microsoft Corporation.
The first stage in any patent application process is preparing and filing a patent application. If the patent application is a design patent application, there are no real shortcuts, but the costs associated with the preparation and filing of design patent applications are much less than those associated with filing full, non-provisional utility patent applications, whether US or International. When it comes to utility patents (as distinguished from design patents), applicants may prepare and file a provisional patent application instead of a full, non-provisional utility patent applications, initially, and then follow through within one year by evolving the provisional patent application into the full, non-provisional utility patent application.
Initially filing a provisional utility application, rather than a full non-provisional utility application can save the applicant a significant amount of money up front, but please note that a provisional filing only saves paying the costs for a full utility application for one year. Put another way, filing a provisional patent application “gets” the applicant to the patent office first, but must be modified into a full non-provisional utility application and filed within one year of the provisional application filing date if the provisional patent application is to be relied upon for priority, i.e., as a first to file date for the non-provisional utility patent application. In that sense, the provisional patent application essentially is a short-cut that can effectively buy the applicant one year before investing in the cost of the full patent application. Since March 16, 2013, we in the US are a “first to file” country, in harmony since then with the rest of the world. This means that merely inventing is not enough, that the inventor(s) must file at the US Patent Office first because even if he/she invents before another, who invents essentially the same thing, and that other gets to the Patent Office Before the first inventor, the first inventor is just plain “out of luck,” i.e., can never realize patents rights.
Please note, however, that a provisional application is not a “shortcut” or a “down & dirty” application that can hold the place for a later-filed non-provisional utility patent application, unless it “sufficiently” discloses the invention under 35 USC 112(a). That is, the provisional application must be competent (it must evidence to one of ordinary skill in the art pertaining to the invention) that the inventor(s), at the time of filing the provisional application, had possession of the invention as claimed in the issued patent that evolved from the non-provisional utility patent application, which itself evolved from the provisional. If the claims that issue include something added during preparation of the non-provisional utility patent application, or otherwise end up in the claims during prosecution, and the same claim feature must be relied upon to distinguish prior art (for example, if the patent is challenged in a litigation) found to be available within one year prior to filing the provisional, the validity of the patent may be on shaky ground (please call to discuss in further detail).
Start-ups should have a plan to protect any Intellectual Property (IP) that they develop before and during the start-up operation and of course as the business entity grows. Doing so, however, is not always easy because putting IP protection in place takes money, and money is scarce in the beginning stages of any business entity. That being said, not all IP must be secured by preparing and filing applications, such as trademark applications (the US and/or International), non-provisional utility or design patent applications (the US and/or International), applications to register copyrights, all of which require some monetary outlay. Only patent rights must be secured by a formal application process, which should be started as soon as possible. You have common law rights to your works of authorship and common law rights to trademarks or service marks that you use in commerce in association with respective goods of services inherently under the common law. That being said, there are substantial benefits to registering your trademarks and copyrights. Feel free to call and discuss by phone.
Our definition of Intellectual Property (IP) may be a bit informal than more formal or institutional definitions. We see IP as patents, trademarks, copyrights and trade secrets (e.g., proprietary “know-how”).
The World Intellectual Property Organization (WIPO) published a handy e-book explaining what Intellectual Property (IP) is. The e-book in the PDF format can be found here: “What Is Intellectual Property?”
Filing a provisional makes sense when you have limited funds and you want to take advantage of the relatively new “first to file” rules implemented under the America Invents Act, perhaps as importantly, when you have a “bar date” approaching (i.e., if you don’t file before or on the bar data your lose your rights). When you publicly disclose, publicly use, publish, sell, or offer your invention for sale, it creates a bar date that affects your ability to get a patent for your invention (see 35 USC §102). The US offers a 1-year grace period, but you must file within that year.
Please note, however, that a provisional application is not a “shortcut” or a “down & dirty” application that can hold the place for a later-filed non-provisional utility patent application, unless it “sufficiently” discloses the invention under 35 USC 112(a). That is, the provisional application must be competent (it must evidence to one of ordinary skill in the art pertaining to the invention) that the inventor(s), at the time of filing the provisional application, had possession of the invention as claimed in the issued patent that evolved from the non-provisional utility patent application, which itself evolved from the provisional. If the claims that issue include something added during preparation of the non-provisional utility patent application, or otherwise end up in the claims during prosecution, and the same claim feature must be relied upon to distinguish prior art (for example, if the patent is challenged in a litigation) found to be available within one year prior to filing the provisional, the validity of the patent may be on shaky ground (please call to discuss in further detail).