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The Iraq Trademark Office posted in its official website, the list of trademarks which files have been lost during the war. The first group of the missing trademark files includes the files of trademarks (1 -16090).  Trademark Owners are required to submit evidence of ownership- namely registration certificate- within 6 months starting from June 7, 2010, otherwise, the registration will be cancelled.

How often have you noticed that a product bears a label of “patent pending” or “U.S. Patent No.”?  But, what if that patent does not cover the product?  Or maybe there is no “patent pending”?  Well, anyone could have a “false marking claim” against that manufacturer and could recover up to $500 per article manufactured with such label.  As one could imagine, the recoverable amount or damages could be very large.  Therefore, it is recommended that businesses implement procedures to avoid potentially false marking their products and minimize potential risk for liability. 

Many products or packaging are marked with the label “patent” or a variant such as “pat.” and a full patent number or “patent pending”.  This “marking” provides notice to the public that the product is patented or has a patent pending.  Notice to the public is required to ensure a patentee’s right to damages for a time period prior to notice to the offending party if the patent is ever litigated.  In other words, failure to properly mark a patented product limits the time period by which one can recover damages. 

There are three types of “marking” prohibitions. The first type includes “counterfeit marking” which is the use of a patent mark without the owner’s permission.  The second type includes “false marking” which is the use of a patent mark on an unpatented article.  The third type includes “false patent pending marking” which is the use of “patent applied for” or “patent pending” when no patent application covering the product is pending with the United States Patent and Trademark Office.

If an unpatented product is marked with a patent number and it can be proven that the party marking the product had the intent to deceive the public, then a penalty of up to $500 per article can be recovered.  Any person can sue for this penalty, in which event one-half of the recovery goes to the person suing and the other half to the U.S. government.  By permitting members of the public to sue on behalf of the government, Congress has allowed individuals to help control false marking.

 However, for patents directed to process or method claims the notice provision or “marking” does not apply.  The reason that the marking statute does not apply to method claims is that, ordinarily, where the patent claims are directed to only a method or process there is nothing to mark. Where the patent contains both apparatus, i.e., product, and method claims, however, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to recover damages under the method claims prior to notice to the offending party.

Some recommendations that businesses may implement to avoid potentially false marking their products and minimize potential risk or liability include the following.  One recommendation is to review all current patent marking to verify that a product is marked with at least one claim in a patent that covers the product.  Also it is important to check for any expired patents and if there are any expiration dates approaching.  If any expired patents are found, then it is recommended to stop marking with that number upon expiration.  Similarly, if the maintenance fees have not been paid for a patent and the patent is no longer enforceable, then stop marking with that number.

 Additionally it is suggested to avoid conditional marking, i.e., “product may be covered by one or more of the following patents”, unless the product is covered by at least one claim of every listed patent.  Also avoid marking “patent pending” unless there is a reasonable belief that such marked products are covered by one or more claims in a pending patent application.  If a patent application is no longer pending, i.e., abandoned, then businesses should stop marking products with “patent pending”.

In addition to reviewing products, it is recommended to review product literature, brochures, presentations, advertising, and other materials that may be marked.  Businesses may also want to review any licensing programs for third party marking activities.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about patent marking or any other aspect of intellectual property law.

Clients often want to know if they can file a patent application after they started selling, offering for sale, or telling the public about their invention. In most circumstances, the answer is ‘yes’; however, it is not without some caveats.

One drawback is the loss of patent protection in some foreign countries. Therefore, a patent application should be filed in the U.S. before any public disclosure of the invention if the right to file foreign patent applications is to be preserved.

A U.S. patent application can be filed any time within one year of publicly disclosing, publicly using, selling or first offering to sell the invention to another. This “in public use or on sale” in the U.S. results in an inventor losing their right to a patent on their invention and is termed a “statutory bar”.

The “on-sale bar” applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. Second, the invention must be ready for patenting.

It seems very little use and very little publicity are required to constitute a “public use.” Typically public use is defined by its natural and intended way. However, private use of one’s own invention is permissible.

There is an exception to the “on-sale” or “public use” bars – an experimental use. The experimental use exception provides that an activity that would place an invention “in public use or on sale” would not trigger the statutory bar if the use or sale was incidental to experimentation.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about statutory bar dates or any other aspect of intellectual property law.

At long last, the Supreme Court has issued its opinion in Bilski v. Kappos. As widely expected, the Court affirmed the unpatentability of Bilski’s risk-management method. With a majority opinion authored by Justice Kennedy and concurring opinions offered by Justices Breyer and Stevens, the Court, instead of relying on the Federal Circuit’s “machine-or-transformation” test, relied on prior precedent to conclude that the claimed method was an “abstract idea” and thus not patentable. Interestingly, the opinion does not interpret §101 to exclude business method patents, and although the Court expressly refused to rule on the patentability of software, early consensus is that software will remain largely patentable.

Click here to read the full opinion, and please stay tuned for our further in-depth analysis of the Bilski v. Kappos decision.

For all those who have been confused and/or down right frustrated by a restriction requirement or two … (Haven’t we all?) … the United States Patent and Trademark Office will be accepting written public comments on restriction practice until August 13, 2010. Click  here to access the Federal Register Notice announcing the request.

Interestingly, the Notice is titled “Request for Comments on Proposed Changes to Restriction Practice in Patent Applications.” However, upon further review, it is clear that that the PTO is not proposing any actual rule changes at this time — just floating some ideas.

Here is a summary of the 6 areas the Office outlined for discussion:

1. What should be included in an Office action that sets forth a restriction requirement?

• Examiners may be required to set forth actual reasons why the inventions are independent or distinct and why there would be a serious burden in the absence of a restriction.

• Support for a “serious burden” might also come from an examination burden (and thus could be supported by non-prior art issues, e.g., under §101 and/or §112, first paragraph).

2. How might the process for traversing or requesting reconsideration of a restriction requirement be improved?

3. What exactly is necessary in order to restrict between related product inventions or related process inventions?

• For such restrictions not otherwise addressed in MPEP §§ 806 through 806.05(j), a restriction would require two-way distinctness (see MPEP § 802.01) and a serious burden on the examiner.

• Where claims define the same essential characteristics of a single invention, e.g., the claims vary only in breadth (ranging from broad to narrow), the examiner could not require restriction between such claims.

4. How could the Office modify Markush practice?

• If an elected species is found allowable, the examination of the Markush-type claim would be extended to the extent necessary to determine the patentability of the claim, i.e., to determine whether any nonelected species is unpatentable for any reason (35 U.S.C. 101, 102, 103, or 112, or nonstatutory double patenting). If a nonelected species is determined to be unpatentable, the Markush-type claim would be rejected, and the search and examination would not be extended to cover all nonelected species.

• For amended Markush-type claims, whether an Office action may be made final would be determined by whether the conditions in MPEP § 706.07 for making a second or subsequent Office action final are met and would not be dependent upon whether the examiner previously required a provisional election of species.

• The Office is exploring situations where restriction would be proper between a subcombination and a combination when a subcombination sets forth a Markush grouping of alternatives.

5. How might the process for determining which claimed inventions are eligible for rejoinder be simplified?

6. What other areas of restriction practice are in need of improvement?

So if you’ve ever wanted to give your 2 cents on how restriction practice can be improved, please remember to submit your written comments to the Patent Office by August 13, 2010. All indications are that rule changes are on the way. We will keep you posted on any developments in this area.

The preceding discussion is intended for informational purposes only and should not be construed as legal advice. Please contact one of our attorneys to learn more about restriction practice or any other aspect of intellectual property law.