Approaching the 2017 holiday shopping season, the e-commerce giant Amazon’s stock price is heading to $1,200. Amazon.com, often quoted as “The Everything Store”, reportedly accounts for 46% of the entire online retail sales.
An interesting thing about shopping at Amazon.com is that you do not particularly notice the items sold directly by Amazon. All items sold at Amazon receive the same treatment, and the same format applies to all product pages. The product order is determined by objective statistics like sales, rating, and price. Quite often, items sold by third-party sellers are bestsellers or Amazon’s Choice.
Lately, the automotive industry is under a fierce competition for developing autonomous (self-driving) vehicles. Automotive companies around the world, including GM and Ford of North America; Daimler, BMW, VW Group of Europe; Toyota of Japan; and Hyundai Automotive Group of South Korea, are just a few examples, and technological innovations to enable autonomous vehicles are brought about in Silicon Valley as well.
A trademark is a mark you use in order to identify your good or service.
For instance, IPfever is a trademark as it’s associated with services and contents offered at IPfever.com. If a law professor wants to start a blog about IP, she shouldn’t name it IPfever. Such naming would mislead people to think that the blog was associated with IPfever.
But, on the other hand, if a medical researcher encounters a feverish symptom related to Information Profession, she’s free to call it “IP fever,” to publish a paper titled “IP fever,” and so on. There’s no problem with such designation because the trademark IPfever, at the moment, has nothing to do with medical diagnosis.
So, you can freely catch an IPfever, and you may sell an IPfever brand roasted coffees. But you may not provide an IPfever service if that’s related to what is offered on ipfever.com.
That’s a brief overview of what trademark does and doesn’t. Let’s find out more.
Patent is an exclusive right to appropriate an invention.
Patent is often considered a luxury to a small and midsize business. More often than not, you find out about the importance of patents after someone accuses you of a patent infringement. It could be a cease and desist letter or a service of process.
Without an understanding of how patent works, you will never know if you are safe from patent lawsuits.
The problem with a patent lawsuit is that it’s so expensive that most small businesses can’t afford it. What happens then? You enter into a settlement agreement to avoid going to the courthouse. In fact, this can be cheaper than winning the lawsuit after costly legal proceedings.
Even worse, it could happen that:
you actually came up with the idea yourself, but didn’t apply for a patent;
you have no idea what are the infringing activities that the patent owner claims, or
the patent is just bogus (e.g. it’s a standard technique in your industry).
Read more and avoid expensive mistakes for your business!
Virtually everything that gives your business a competitive edge is protected by the law.
Your supplier list is a trade secret. Your company/brand names are trademarks. You can (and you should) patentyour new and unique business/product ideas to prevent copycats. For many start-up companies, intellectual properties are all they have.
Trademark and Patent
It wouldn’t be fair if others can misappropriate the fruits of your hard work. For instance, when you keep your business know-hows confidential and they give you a competitive edge, they are protected by the trade secret law.
Of course, there are steps you can take to protect your valuable IPs more securely. You often see “®” mark next to many trade and brand names. The “R”stands for “registered trademark“. Although registration is purely optional, it has become a standard practice for good reasons.
What about “patent pending”? It means there’s a current patent application. By filing a patent application, you disclose your invention to the public in exchange for a legally sanctioned monopoly for a limited time. In other words, people will learn everything about your invention, but for about twenty years or so, nobody other than you can use that invention.
The worst thing you can do is to do nothing.
For example, unless you register your business name, your right to the name is limited to your current market. (That doesn’t sound good for start-ups, right?) Also, there’s nothing legally wrong about your competitors reverse-engineering what you’re selling in the market. Once they figure it out, you can’t stop them from copying it.
Then, is there a backlog created by the increase of Chinese trademarks?
I had a chance to look at the dates of applications filed on behalf of my clients from 3Q to 4Q of ’17 and to figure out what’s going on.
Legal examination of a trademark application starts after about three months from the filing date, and depending on the assigned examiner and the result of the examination, it can take a month to many months. I felt in 3Q and 4Q of ’17, the examination process moved slower than before, comparing 1Q and 2Q of ’17, but it might’ve be just coincidental.
When an examination is completed, there’s a notification that sets forth the publication date in about 20 days. That waiting period for publication has been more or less consistent from 4Q of ’17 to 1Q of ’18.
After the application is published in the Official Gazette, If there’s no opposition during next 30 days, the application moves on to the process of being registered. This registration process usually took about 6 weeks in 4Q of 2017 and about the same time in 1Q of 2018.
So, what’s the conclusion? If there’s a backlog, it must be on the legal examination part of the process as you probably guessed. And unfortunately, the examination process is one of the trickiest part to tell how long it usually takes, rendering our survey inconclusive.
We’re pleased to have Eric J. Rogers, JD, PhD as our member attorney.
Eric Rogers, Esq. studied molecular biology at the University of Texas Southwestern Medical Center earning his PhD in 2005. His scientific career highlights include post-doc at Harvard Medical School and research at Easton Laboratory.
He studied law at Chicago-Kent to embark his legal career in 2013, and since then he served as an IP director at Molecular Templates, Inc.
With his pharmaceutical background, he focuses on drug patent issues along with other regulatory issues related to the pharmaceutical industry.
If you have questions directed to Mr. Rogers, please contact email@example.com for assistance.
Obviousness is a very common reason for rejection.
A grant of patent without a single rejection is quite uncommon. One of the reason is that most applicants want to claim broadest possible for the greatest protection of law.
Broadening the scope of claims.
To maximize the scope of your claim, you don't want to include unnecessary details in your claim. Let's take a look at an example (from a real patent). You don't have to read it through, just scheme.
[an excerpt from US8143982B1, bold added]
1. An accessory unit, comprising:
a hinge span, the hinge span including a first magnetic element suitable for magnetic attachment to a host unit having a display; and
a flap portion pivotally connected to the hinge span, the flap portion comprising:
a plurality of segments all but one of which are substantially the same size and wherein one segment is wider than the other segments, wherein each segment includes a pocket that is about the same size as the corresponding segment,
a rigid insert incorporated into each pocket, the rigid insert providing support for the associated segment, and
a folding region between each of the segments arranged to allow the plurality of segments to fold with respect to each other, wherein a first segment is located at a first end of the flap at the hinge span and includes a magnetically attractable element and wherein a second segment is located at a second end of the flap opposite the first end and includes a plurality of magnets, wherein in a first folded configuration the flap portion forms a triangular structure when the first and second segments are folded one atop the other such that at least one of the magnets in the second segment magnetically attract the magnetically attractable element in the first segment, wherein the first and second segments that are folded one atop the other and magnetically attached to each other form one side of the triangular structure that is about equal in width to a second side of the triangular structure each of which is narrower than a third side of the triangular structure.
[end of claim 1]
By looking only at highlighted words, you can figure out that it has two main components, a hinge span and a flap portion, and the flap portion has three sub-components, a plurality of segments,a rigid insert for each segment, and a folding region between each of the segments.
What do you make out of it? Well, it's iPad Smart Cover by Apple.
Let's look into the details.
A hinge span is described as follows: including a first magnetic element suitable for magnetic attachment to a host unit having a display.
It doesn't say a magnet or a tablet PC. Instead, it says a magnetic element suitable for magnetic attachment and a unit having a display, respectively. If it said a magnet, someone can make a cover with a lodestone instead of a magnet and avoid infringement. The same thing goes to the tablet PC.
But, why not just an element suitable for attachment? I think that would be the track which leads to the obviousness trap. Granted it would expand the scope, it also eliminates an outstanding element from the invention. Every cover has some element for attachment.
On a side note,
what about a unit having a display? Why not a unit having a flat surface? Well, Apple is an electronics company, and it probably wouldn't make a cover for your photo frame. In that sense, a display pretty much is everything that needs to be covered in Apple's patent.
Infusing non-obvious elements into claims.
Skipping forward to the bulky section, a folding region, can you guess why in the world it is so long? Well, you guess it's important, right?
This is the section that makes this cover distinct from any other cover design within people's mind (at the time of invention, of course). It describes how the segments of a cover fold and magnetically bind together to form a rigid stand that can support a host unit. So, you have to describe it fully.
By the way, a cover that folds into a stand is not an invention by Apple. Search Google Patents "US8960421B1" and you will see a prior patent filed by Incase Designs Corp. that has almost identical folding functionality.
Let's take a look at a claim by Incase Designs [excerpt from US8960421B1].
1. A cover for an electronic device comprising:
a rectangular front cover comprising first, second, and third panels between a first edge and second edge of the front cover, wherein the first panel is closer to the second edge than the second and third panels, the second panel is between the first and third panels, and the third panel is adjacent the second panel,
between the first and second panels is a first hinge, and
between the second and third panels is a second hinge;
a back cover, coupled to the front cover, which will retain the electronic device in the case; and
[It goes on, but let's stop here.]
So, a flap portion of Apple patent can't overcome an obviousness rejection by itself despite the elaborated manner of how segments fold and get attracted together to form a stand; that's where the magnetic element for attachment comes into play. This magnetic element obsolete a back cover, which is listed in the Incase Designs' patent claim.
Here's an important question: if Incase Designs knew a way to make a cover without a back cover, would its claim include the back cover element in the claims?
The fact that Incase Design included the back cover element in the claim supports the non-obviousness of replacing a back cover with a magnetic element.
You can read more about this in "Including an unnecessary element in the claims."
How to deal with an obviousness rejection.
After a careful thought and drafting an application, you can still get a rejection based on obviousness. In this case, you can try again, or get help from patent attorneys.
Get it Done: Office Action - overcoming an obviousness rejection
Patent Specification in your application is the body of your application.
Your patent claims will be read in the context of the specification. Therefore, the specification should include all the information necessary to figure out what you claimed in your patent claim(s). Roughly speaking, it should be an all-inclusive manual for your invention.
It's part of the deal you're making with the public.
You're disclosing your invention to the public, and in exchange you'll be granted a monopoly for a limited time. To ensure fairness in this deal, you're required to fully and comprehensibly disclose your invention without hiding anything.
You should focus on making the invention available to the public.
If you want to hide something from the public, you're free to do so by opting out from disclosing it, in which case you shouldn't claim it either. However, you shouldn't attempt to hide even a minute detail of your claimed invention because it can invalidate your patent retrospectively.
For example, let's say you know two ways to make your invention. You know one works better than the other, but you don't want people know about the better one. If you disclose the other one only, the patent will be held invalid.
If you don't claim it now, you may lose it forever.
You may be tempted to include everything you know in your patent application because it would make sure you disclose adequately. Be careful when you include something in your disclosure which are not claimed. Filing a patent application is considered a publication. If you publish something, you will have a year to file a patent application for it. After that, you can't patent it.
There's much more.
Although you can learn a lot from the patent applications you found during your clearance search, it's still not a perfect guide for your specification. To understand your claim, one must read the specification. For this reason, asking an attorney who reviewed your claim(s) to review your specification could be a lot less time-consuming than you think. You don't need to pay for the separate availability retainer in that case. Just talk to the lawyer who reviewed your claim(s).
Patent claim in your application defines your invention.
And it will determine the scope of your legal rights. In other words, it will tell the others what can be done and cannot be done without infringing your patent right.
Read the claims written by professionals.
By the time you start drafting your application, you probably read at least a number of patent applications. And if you did with care, you would've noticed the peculiar but consistent writing style. In fact, you must follow a specific set of rules created by the USPTO when writing claims.
Pay attention to details including punctuation and spacing.
You shouldn't worry about plagiarism. Use the wordings and grammar (including all formalities) that you see in the patent applications that are granted. Don't be creative and get rejected.
What about the substance?
Patent applications often have multiple claims, and a claim likely has a multiple components.
The wordier the better?
No. If you include a non-essential component in your patent claim, your competitor can avoid infringement by making a product without the component.
Then, as little as possible?
That's another no. If there is an alternative material or device which you left out, it could lead to an easy design-around for your competitor.
There's much more.
To be honest, it is not an easy task to write a good claim. For example, patent law distinguishes "comprising" and "consisting." If you say your fuel additive consists of chemical A and chemical B, you are telling that there's no other chemical than A and B. "Comprising" is, on the other hand, open-ended.
Should you know all these technicalities? Well, if you want to become a patent practitioner. Otherwise, it's more efficient to have a patent practitioner take a look at what you wrote. If your invention is not too complicated, the review shouldn't take too long.