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Study Shows that Recent Guidance Documents Published by USPTO Regarding Subject Matter Eligibility are Proving Effective in Reducing Uncertainty

June 18, 2020

The United States Patent and Trademark Office (USPTO) recently published a study titled “Adjusting to Alice” that provides the results of an examination of patent examination outcomes after the Supreme Court’s decision in Alice. This study found that recent efforts by the USPTO to provide greater clarity to issues regarding subject matter eligibility have been effective in decreasing uncertainty. To access a link to the study and read the full article, visit: IndyBar

IP Gotchas: The Patent System

June 11, 2020

Many times Businesses form and thrive because of a revolutionary product like the smart phone, or because of a new service model like ride sharing. These products and services often include novel processes for solving old problems, or new and useful combinations of existing products. Sometimes no one thought to try it, or perhaps for many years everyone believed it couldn’t be done. Common misconceptions about the patent system can result in missed opportunities to jump-start growth, secure market share, and give a superior business model the chance to dominate the marketplace in the face of strong competition. Following are some “gotchas” related to the patent process that result in missed opportunities.

If I Patent It, I Can Build It: Not necessarily. It is possible to make the product you claim in your patent, and still infringe someone else’s patent. That’s because patents do not grant you the right to make and sell your product or service. Patents only grant you the right to stop others from making or selling your product. For example, Kerri has a patent on a cup, and Joe patents an improvement on the cup by adding a handle. Now Kerri has a patent on cups and Joe has a patent on cups with handles. Before Joe can make and sell cups with handles, he must obtain Kerri’s permission because he cannot make a cup with a handle without first making a cup. Kerri’s patent gives her the right to stop anyone from making cups of any kind, with or without handles.

I’ll Sell It First, Then Patent It Later: The first impulse for many entrepreneurs is to see if the product has market acceptance before proceeding with a patent process that may cost precious startup capital. The U.S. patent system still provides a year to file for patent protection after the first disclosure or offer for sale, but the U.S. system is unique in this regard. Rights can be lost when details are mentioned in public and then left out of the patent application by mistake. Also, any public disclosure means you will not be able to pursue patent protection on the concept anywhere else in the world. While this may be less of a concern to some businesses, it can become a serious obstacle to growth as the business takes off in other countries. With a little careful planning before that first disclosure, entrepreneurs and inventors should establish a road map through the patent system that fits their budget and gives them the best chance of retaining patent rights now that may soon become very valuable.

I’ll Keep My Patent a Secret: The patent system gives inventors the exclusive right to stop others from making, using, or selling their patented invention. In return, inventors are required to teach the world how to make the invention. This way others can study the drawings and description in the issued patent to quickly learn from the inventor and make improvements on the concept sooner, rather than later and thereby advance the overall state of the art more efficiently. Conversely, inventors that try to obtain a patent without disclosing the most important aspects of the invention may cripple their opportunities for obtaining viable patent protection in the U.S. and abroad. Furthermore, this approach may also destroy options for securing IP rights that might otherwise be available such as trade secret protection. Here again, there are several ways to address this issue, all of which are ideally considered early on as part of a cohesive IP strategy – preferably long before valuable IP rights are potentially lost.


Webinar: Copyright basics and considerations for entrepreneurs and small businesses

June 9, 2020

Entrepreneurs and small businesses owners – Register to attend a free webinar about the basics of copyright and receive insights into copyright registration and enforcement.

The 90-minute program is on Tuesday, June 16, from 1-2:30 p.m. ET.

Specifically designed for the needs of entrepreneurs and small businesses, the webinar will feature presentations by copyright experts from the USPTO’s Office of Policy and International Affairs. For more information and to register, visit: USPTO


Woodard Emhardt Celebrates World IP Day

April 22, 2020

Sunday, April 26 is World Intellectual Property Day, a day to celebrate and learn about the role that intellectual property rights play to encourage and facilitate innovation and creativity.  Originally created by the World Intellectual Property Organization (WIPO) in 2000, World IP Day is celebrated on April 26 to mark the anniversary of the WIPO Convention becoming law in 1970.

The theme for this year’s World IP Day is Innovate for a Green Future, highlighting innovation that supports eco-friendly technologies and the IP rights that support that innovation.  Intellectual property is used in many different aspects of the effort to create a cleaner, more environmentally friendly future.   Patents, trademarks, and copyrights support the development and growth of businesses and individuals that are committed to environmental sustainability.

If you are interested in learning more about how intellectual property can protect your innovations, please contact one of our attorneys.


Changes in USPTO Rules Due to the Coronavirus Outbreak

April 6, 2020

The United States Patent and Trademark Office has made several temporary rules changes in response to the coronavirus outbreak. These rule changes include:

Extension of patent and trademark related deadlines. On March 31, the USPTO announced extensions to the time allowed to file certain patent and trademark related documents and to pay certain required fees. This extension adds an additional 30 days for the due date for most responses to USPTO notices that are due between March 27, 2020 and April 30, 2020 as long as the filing is accompanied by a statement that the delay in filing or payment was due to the coronavirus outbreak. An acceptable reason for delay could be office closure, cash flow interruption, inaccessibility of files, travel delays, illness, or any other similar circumstance. A full list of the types of actions for which an extension is available can be found at the USPTO website at https://www.uspto.gov/sites/default/files/documents/Patents%20CARES%20Act.pdf for patents and https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act.pdf for trademarks.

USPTO offices closed to the public. Until further notice, all USPTO offices have been closed to the public. However, all USPTO operations continue to function without interruption. All examiner interviews, oral hearings in front of the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB), and other in-person meetings are being conducted solely by video or by telephone.

Waiver of petition fees. The USPTO considers the coronavirus outbreak to be an “extraordinary situation” for patent and trademark applicants, patentees, and trademark owners under the Code of Federal Regulations. Therefore the USPTO has waived petition fees in certain situations for customers that have been impacted by the coronavirus. These petition fees that have been affected include petitions to revive for patent applicants or patent owners who were unable to timely reply to a USPTO communication which resulted in the application being abandoned. Additionally, the USPTO is waiving the petition fee to revive for trademark applications and registrations that were abandoned, canceled or expired due to an inability to timely responds to an Office communication as a result of the effects of the coronavirus outbreak.

Waiver of original handwritten signature requirement. The USPTO has waived the requirement of an original handwritten signature for correspondence relating to: registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations or disciplinary proceedings, and payments by credit cards where the payment is not being made via the USPTO’s electronic filing system.


IP Gotchas: Failing to Recognize Your Company’s Intellectual Property Assets

March 26, 2020

Companies routinely focus on development and marketing of new ideas, particularly in the early days as a startup. Protecting intellectual property is often set aside for later after the idea takes off and the marketplace has indicated “there is something of value to protect”. However, this mindset can be a costly, or even crippling approach to take. The truth is your business is already generating intellectual property whether you realize it or not. Recognizing and protecting this property in the right way can have a big impact on your future success.

What are my company’s intellectual property assets?

Name recognition and customer loyalty. Whatever words, shapes, colors, sounds, or packaging you use to distinguish your products and services from those offered by others may be protectable as a trademark. Taking the right steps to identify your brand and protect it from competitors in the marketplace adds value to your overall bottom line.

Proprietary information. Any business endeavor is likely to possess proprietary information. Examples include customer data, steps in a manufacturing process, marketing analysis, chemical formulas, internal training manuals, and just about anything else that gives your business an edge in the marketplace. These types of proprietary information are likely trade secrets and failure to recognize their value and protect them can be catastrophic.

New products or services. In many cases, businesses form around new products or services that no one has considered before. These include new methods of making or delivering products, or new combinations of existing devices. If your business involves products, recipes, processes, or other new concepts you have not seen in the marketplace, patent protection is worth considering. An issued patent in hand can be a powerful way to scare off competitors and effectively build market share.

Creative works. Documents, plans, designs, computer code, marketing brochures, web sites, videos, musical compositions, and other such creative endeavors are the types of property you are likely already creating that might benefit from copyright protection. This is particularly true for public or customer facing materials that are important to your success as a business. Identifying these and protecting them is important, particularly in the digital age where copies are easily created and transmitted.

It is important for your success to investigate, recognize and inventory your intellectual property assets. Failure to take this important early step can result in hampered growth, or worse yet, losing control of the business venture altogether.


Debunking the “Poor Man’s Patent Myth”

March 19, 2020

Myth: If I write down my invention and mail it to myself through the USPS, I will receive some level of patent protection on my invention. (In some versions of the myth, I will receive protection only if I do not open the envelope).

This is the Poor Man’s Patent Myth and is truly a myth. US patent protection is granted only to those who receive an issued US patent from the US Patent and Trademark Office (USPTO). Moreover, the US switched to a “first-to-file” system in 2013 under which-in the event two applicants file for patent protection on the same invention-the applicant who files first is given priority. This is why some refer to obtaining patent protection as being, in part, a “race to the patent office”. There are, of course, some narrow exceptions to the “first-to-file” rule (e.g., the earlier-filer derived the invention from the later-filer); however, in any event an application must be filed with the USPTO as a prerequisite to receive patent protection.

Prior to the switch to “first-to-file”, the US was under a “first-to-invent” system. Under the “first-to-invent” system, a later-filing inventor could obtain priority over an earlier-filing inventor who filed for protection on the same invention if the later-filing inventor could show he/she was the first to conceive the invention and meet certain requirements (e.g., diligence to reduction to practice). Today, however, most inventors are working under the “first-to-file” system (i.e., the law under the Leahy-Smith America Invents Act). Therefore, best practice is likely filing a patent application early.

If you have an invention you wish to protect, contact one of the attorneys at Woodard Emhardt. Writing down your invention is a good exercise, but don’t believe the myth that mailing it to yourself gives you patent protection.

This is not legal advice, nor should it be construed as forming an attorney-client relationship. If you wish to have either with our firm, please contact one of our attorneys to begin that process.


Using a Webpage as a Specimen for Products Associated with a Trademark

April 18, 2019

When registering a trademark, the Patent and Trademark Office requires the submission of a specimen to show that a trademark is being used in interstate commerce.  It is often tempting to simply submit a screenshot of a webpage showing the trademark and the products associated with that trademark as a specimen.  However, as shown in a recent Federal Circuit decision made precedential, care must be taken when using a webpage as a specimen for goods associated with a trademark to ensure that the webpage is likely to be acceptable.

In the case, In re Siny Corp., 2019 U.S. App. LEXIS 10499 (Fed. Cir. Apr. 10, 2019), the Applicant filed an application for the mark CASALANA for a knit fabric used to make outerwear, gloves, and apparel.  The specimen submitted for this trademark was a screenshot of a webpage that included the trademark along with a picture and a description of the fabric, as well as a phone number and an email address to contact for sales information.  The Federal Circuit affirmed the Examining Attorney and the TTAB’s decision to refuse registration, stating that the webpage was just advertising material and failed to show use of the mark in commerce for the listed products.  It is important to note that this decision specifically pertains to a specimen for goods and that webpages are more readily accepted as specimens for services.

A trademark is used in commerce when it is placed directly on goods or placed on the containers, displays, tags or labels associated with the goods.  A trademark included on a webpage may qualify as a “display” associated with goods shown on the webpage.  However, a webpage simply advertising the goods used in connection with the trademark is not sufficient to qualify as a display, and is therefore not an acceptable specimen.  In order to be an acceptable specimen, the webpage must act as a point of sale location for the products.

As shown by the decision in Siny, showing only a phone number or an email address as contact information for ordering products associated with the trademark may not be enough to make the webpage a point of sale location.  Instead, a webpage submitted as a specimen should either make the goods available for purchase directly through the webpage or display additional information other than just contact information that would be considered essential to a purchasing decision.  Examples of this additional information include prices or a range of prices for the goods, sizing information, the quantity of the goods that may be ordered, how to pay for the product, and how the product will be shipped.

This decision by the Federal Circuit doesn’t mean that webpages cannot be used as a specimen for a trademark application covering goods.  Instead, an Applicant should make sure that when using a webpage as a specimen for a trademark application, the webpage includes as much information as possible about the nature of the goods and includes specific information on how to purchase the goods associated with the trademark.  Following these guidelines should lead to an acceptable specimen.


Amazon Debuts New Pilot Program to Combat Utility Patent Infringement

February 12, 2019

It has become more and more routine in the past few years for a client to call Woodard, Emhardt, Henry, Reeves & Wagner, LLP regarding an infringing item being sold on Amazon.  Often the seller is new and/or located overseas.  Sending a letter to Amazon would typically trigger a standard response in which the seller’s identifying information is provided and you were asked to work it out with them.  Filing a lawsuit is extremely expensive, particularly when the seller doesn’t reside in the United States.  Moreover, filing a new lawsuit with each new Amazon listing could be cost prohibitive.  As such, there really wasn’t any quick and efficient way for deal with this type of infringement.

In the past, the most effective solution was to seek and obtain an exclusion order from the International Trade Commission, which Amazon and other online marketplaces would recognize and promptly remove infringing listings.  However, Amazon has recently launched a pilot program which is intended to resolve this situation, while giving both patent owners and sellers a fair opportunity to be heard.

The program is currently by invitation only, but we have successfully utilized it to remove dozens of infringing listings on behalf of a number of our clients.  The program allows the owner of a utility patent to submit a takedown notification against a product listed on Amazon.com.  The takedown notification is limited to a single claim of a utility patent.  Upon receiving the complaint, Amazon notifies the seller, who has twenty-one days to contest the infringement allegation.  In order to contest, the seller must agree to a quasi-arbitration which focuses solely on the question of infringement.  In addition, the seller must submit $4,000 to a patent practitioner selected by Amazon as the neutral evaluator.  If the seller does not contest the claim of infringement, the listing is promptly removed.

Assuming the seller does contest, the patent owner must also submit $4,000 with the neutral evaluator.  The neutral evaluator then receives compact briefing over a roughly two-month period and issues a decision soon thereafter.  Amazon will either maintain or remove the listing based on the neutral evaluator’s decision.  Moreover, in the event the neutral evaluator finds infringement, that decision will control all future complaints of physically identical products.  The “winner” of the evaluation receives their $4,000 back, with the losers’ $4,000 being retained by the neutral evaluator as his/her fee.

In essence, Amazon has created a path for utility patent holders to have infringing listings removed relatively quickly without Amazon itself being forced to make the often difficult judgment calls that patent infringement sometimes requires.  The program is well suited for many of the infringing issues we deal with.  However, its simplicity will likely cause some problems when patent owners, whose infringement claims involve more complex questions, seek to enter the program.

If you have infringing items listed on Amazon and would like to learn how Woodard Emhardt can assist you in promptly and efficiently removing those items, please feel free to contact Bill McKenna.


USPTO Gives New Guidance on Software Inventions

January 25, 2019

Earlier this month, the United State Patent and Trademark Office released new guidance for its Examiners to help them better determine when an invention is too abstract to be patentable. This latest effort by the Patent Office brings more clarity and predictability to the examination process for inventors seeking patent protection for software and business methods.

To be patentable, an invention must be new, useful, and unobvious. The courts have also recognized that abstract ideas and laws of nature are also not eligible for patent protection. Predicting which inventions are too abstract for patent protection has been a challenge in the past, and has become more difficult since the Supreme Court’s ruling in Alice Corp. v. CLS Bank (March, 2014). The Court of Appeals for the Federal Circuit has so far attempted to follow the Supreme Court’s guidelines on a case by case basis giving us clues as to the kinds of inventions that are too abstract to be patented. This effort has created some clarity in specific cases, but it has also created additional confusion where the Federal Circuit has given differing opinions for similar inventions. This raises the possibility that different Examiners in the same technology area may pick and choose how to handle similar inventions thus arriving at different conclusions for similar subject matter.

The Patent Office has responded with this latest guidance for the Examiner corps that attempts to synthesize the case law into a more practical legal framework that may be applied in a more predictable manner. Although they do not have the force of law, the guidelines offer valuable insights into how Examiners will determine whether the subject matter in a given application is unpatentably abstract.

Looking briefly at the substance of the latest guidance, the USPTO is revising its examination procedure by: (1) Providing groupings of subject matter that it considers to be an abstract idea; and (2) clarifying that a claim is not ‘‘directed to’’ a judicial exception if the judicial exception is integrated into a practical application of that exception.

On the first point, the Patent Office sees three separate categories of material that are unpatentably abstract:

  1. Mathematical Concepts: Mathematical relationships, mathematical formulas or equations, mathematical calculations
  2. Methods of Organizing Human Activity: Fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
  3. Mental Processes: Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).

According to the guidelines, concepts that do not fit one of these categories are probably not abstract ideas. The Patent Office does leave open the possibility that exceptional cases could arise where the concept is too abstract to be patented, but also does not fit into one of these categories.

On the second point, the Patent Office explains that even if the claims do fall within one of the three groupings above, they may still be eligible for patent protection if the abstract concept is integrated into a practical application of that concept. A “practical application” is one that applies, relies on, or uses the concept “in a manner that imposes a meaningful limit on the abstract concept.”

The new guidance represents a noteworthy change in the way applications will be handled by Examiners, and it marks the latest attempt by the Patent Office to bring clarity and predictability to the process. It is also important to note that this is not a change in the statute approved by Congress, nor is it a change to the legal framework that has been endorsed by the Federal Circuit or the Supreme Court. It remains to be seen then, what the long-term effect of this change will be on applications currently under examination, and what affect, if any, it will have on patent litigation going forward.

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