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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.

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.

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.

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.

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.

On April 24, the Supreme Court issued two important decisions on the availability and scope of post-grant Inter Partes Review (IPR) by the U.S. Patent and Trademark Office. The IPR process allows the PTO to review and potentially cancel claims of a previously-granted patent based on prior art.

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the Court determined that the IPR process is constitutional. In earlier proceedings, a patent’s claims had been revoked in an IPR proceeding. The patentee challenged the IPR process as violating Article III or the Seventh Amendment right to a jury trial by transferring an adjudication of private property rights to an administrative tribunal. The Court held that IPR violates neither provision, analogizing the grant of a patent to a government-granted right to build bridges or railways that can be revisited in an administrative proceeding.

In SAS Institute Inc. v. Iancu, the Court interpreted Section 318 of the Patent Act to determine that, if an IPR is to be instituted, it has to be instituted to decide the patentability of all of the claims challenged in the IPR petition. In the PTO proceedings, the IPR was only instituted on a subset of the claims that were originally challenged in the opening IPR petition. The Court held that a PTO regulation authorizing partial institution was inconsistent with the plain meaning of the statutory text.

The decision in SAS Institute is an important change in IPR practice. Previously, the PTO was frequently picking-and-choosing claims and theories from the initial petition on which to proceed to a full administrative trial. But the PTO still has substantial discretion in instituting or denying the proceedings on the whole, subject to review under the Administrative Procedures Act. Thus, while crafting the initial petition (as a petitioner) or attacking it (as a patent owner) was always important, this new requirement that the challenged claims are addressed in an all-or-nothing decision makes the preliminary, pre-institution stages of an IPR even more critical.

The USPTO has issued a final rule, “Setting and Adjusting Patent Fees during Fiscal Year 2017” to set or adjust certain patent fees. Notably, the rule increases a large number of fees including filing fees, search fees, examination fees, and issue fees as well as fees for RCEs, PGRs, IPRs, Appeals, and Petitions. These fee increases will take effect on January 16, 2018.
For the full list of the patent fees that are changing and more information on fee setting and adjusting at the USPTO, please visit https://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting.

The AIPLA has provided a new Legislative Proposal and Report on Patent Eligible Subject Matter under 35 U.S.C. § 101. This report urges congressional action to overhaul, and indeed expressly overrule the current judicially created framework under section 101 in light of recent jurisprudence from the Supreme Court and other lower Courts applying the new standard.

You can read the full Proposal here.

A magistrate judge in the Eastern District of Texas has recommended to the Court on May 11, 2017 that Microsoft be estopped from raising certain defenses at trial stemming from a total of six (6) IPRs filed by Microsoft against the patent owner Biscotti Inc.

Specifically, the magistrate judge states that:

Section 315(e) estops Microsoft from asserting at trial: (1) grounds for which the PTAB instituted IPR and determined those grounds to be insufficient to establish unpatentability after a trial on the merits; (2) grounds included in a petition but determined by the PTAB to not establish a reasonable likelihood of unpatentability (in other words, administrative review on the merits of a ground); and (3) grounds not included in a petition that a “skilled searcher conducting a diligent search reasonably could have been expected to discover.” See, e.g., 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Senator Jon Kyl); see also Clearlamp, LLC v. LKQ Corp., No. 12 C 2533, 2016 WL 4734389, at *9 (N.D. Ill. Mar. 18, 2016) (adopting the skilled searcher standard). As for the third category, the Court agrees with the Delaware court when it remarked, “extending [Shaw’s] logic to prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding . . . .” Intellectual Ventures I, Case No. 13-CV-00453-SLR, Dkt. No. 559 at 26-27. Finally, Microsoft is not estopped from asserting grounds included in a petition but which the PTAB found redundant or declined to institute review for another procedural reason. See Shaw, 817 F.3d at 1300; HP, 817 F.3d at 1347.

p. 13-14.

Read the full Report and Recommendation here.

On April 20, 2017, the USPTO Office of Innovation Development will be presenting an Inventor Info Chat on “How to File a Patent Application.” The chat will be held online from 11 a.m. – noon.

Topics included in this chat will be:
• Methods of filing an application
• Different types of applications that can be filed
• Resources available to aid in the filing process

To sign up, click on the link below:
Join the Live Online Web Chat