Author Archive | Eric Waltmire

Forgot to Pay the Patent Maintenance Fee: Options to Revive a Patent

After a US utility patent is granted, maintenance fees must be paid at certain intervals. This post will discuss some of the rule that currently apply to maintenance fees.

Patent maintenance fees must be paid at 3 1/2, 7 1/2, and 11 1/2 years after the patent issues. The fees can be paid in the 6 month window before the deadline, that is between 3 years and 3 1/2 years, between 7 years and 7 1/2 years, and between 11 years and 11 1/2 years, respectively. See MPEP 2506.

If you don’t pay the maintenance fee by the deadline, you can pay it in the 6 month period (“the surcharge period”) after the deadline by paying an additional surcharge fee. Therefore, the surcharge periods are between 3 1/2 years and …

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Components of a Trademark Cease and Desist Letter

At its most basic, a trademark cease and desist letter explains the what and why of the wrongful conduct and requests that it stop. Below provides a more detailed explanation of some components that may go into a cease and desist letter, depending on the circumstances.

1.  Who is this?

Simply explain who you are. For example, “I’m the president of Acme, Inc.”

2. Tell them what you want

Provide a brief one or two sentence summary of the issue and what you want. For example, “I am writing regarding Beta Inc.’s use of the word “BOSSES” in connection with the sale of widgets. As this use infringes Acme’s trademark rights, Acme demands that you immediately stop all use of BOSSES in connection with the sale of widgets.”

3. Explain

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What is a Divisional Patent Application?

A U.S. divisional patent application application can be thought of as a “child” application of an earlier filed “parent” application. The filing of a divisional application often occurs when the parent application contains more than one invention.

If the parent application claims more than one invention, the USPTO may issue a restriction requirement. The restriction requirement requires the applicant to elect among the designated inventions in the application. The election of one of the designated inventions may mean the others will not be considered. Therefore the applicant has the option to file one or more divisional patent applications directed at those other un-elected inventions. The patent office wants to make sure that patent applicants are not trying to claim multiple inventions in one application because they generate fees, at least …

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Fostering Innovation: Lessons from the Golden Age

Have you ever wondered about the profile of innovation and inventors between 1880 and 1940 in the US? A new working paper from the Harvard Business School attempts to draw conclusions about such inventors and innovation in that “Golden Age.” The paper is titled “The of American Ingenuity: Innovation and Inventors of the Golden Age.”

The authors propose in their article introducing the paper that “recent data suggests that innovation is getting harder and the pace of growth is slowing down.” They argue that a review of history might shed light on environments that are most conducive to innovation. Below are some of the conclusions drawn in the paper, many of which are intuitive:

1. More inventive states and sectors grew faster on average.
2. Densely-populated states were

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Should I use Inc or LLC in my Trademark?

Look at the way well-known brands use their company name as a trademark or services mark. They usually do not include an entity descriptor–e.g. Inc., Corp., Ltd., or LLC–in those brand usages. For example, the company behind the Starbucks brand is “Starbucks Corporation.” However, you rarely see the word “corporation” used in connection with Starbucks when Starbucks is used as a trademark. Instead, “Starbucks Corporation” is mostly used in the fine print when referring to the corporation rather than the brand, such as in their copyright notice.

One reason for that is marketers probably do not want unnecessary legal language cluttering up their beautifully crafted names/brands. Another reason is that trademark law somewhat discourages the inclusion of entity descriptors in trademarks.

The Lanham Act provides for the federal registration of …

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The US Patent Application Process Flow Chart



Seeking a patent is not a file it and forget it endeavor. Instead, it involves a process where work is likely required in multiple phases. The process of obtaining a utility patent in the US generally involves novelty searching, application drafting, waiting for the patent office to review the application, and negotiating with the patent office about the scope of patent protection. Each of those phases is shown in the U.S. Patent Application Process flow chart above, which I will describe in more detail below.

Patent Novelty Search

The first question is whether or not to have a patent novelty search performed. A patent novelty search is designed to tell you the likelihood of obtaining a patent on your invention. You are not required to have a search performed …

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Invention is the Mother of Necessity

Inventions arise when there is an unmet market need. Inventors who perceive a unmet need are motivated to fulfill it due to economic rewards of inventing, such as money or fame. Some inventions fit this path, like the cotton gin and the steam engine. Necessity is the mother of invention–as they say–or is it?

What if the opposite is also true?

When Nikolaus Ott built his first gas engine, in 1866, horses had been supplying peoples land transportation needs for nearly 6,000 years, supplemented increasingly by steam-powered railroads for several decades. There was no crisis in the availability of horses, no dissatisfaction with railroads.

What if “many or most inventions were developed by people driven by curiosity or by a love of tinkering, in the absence of any initial demand …

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Burnt Dough and the Difficulties in Patent Drafting

“[E]ven if, as plaintiff argues, construing the patent to require the dough be heated to 400 degrees to 850 degrees Farenheit [sic] produces a nonsensical result, the court cannot rewrite the claims. Plaintiff’s patent could have easily been written to reflect the construction plaintiff attempts to give it today. It is the job of the patentee, and not the court, to write patents carefully and consistently.” – Colorado United States District Court

Patent claim drafting requires careful attention. The difference between the use of “to” and “at” in a claim directed to a method of producing dough, resulted in the difference between a worthless patent claim and a patent claim that might have had value. This is why going the DIY route with a non provisional utility patent application is

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Transferring Ownership of a Trademark

“Use of the mark by the [trademark] assignee in connection with a different goodwill and different product would result in a fraud on the purchasing public who reasonably assume that the mark signifies the same thing… Therefore, if consumers are not to be misled from established associations with the mark, [the mark must] continue to be associated with the same or similar products after the assignment.” – Fifth Circuit Court of Appeals

sugarbustersregCo-author and publisher, Sugar Busters LLC, purchased the registered service mark SUGARBUSTERS (Reg. No. U.S. 1,684,769). Then Sugar Busters LLC tried to sue on Ellen Brennan for trademark infringement based on the registration, but lost when it sought a preliminary injunction. Sugar Busters lost because the registered mark was for retail services, which were not related …

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How to Control Inventions and Patents Resulting from Joint Development

“…each coowner [of a patent] is ‘at the mercy’ of its other co-owners.” – Federal Circuit Court of Appeals.

STC.UNM (the licensing arm of University of New Mexico) was at the mercy of Sandia Corp. regarding STC’s patent.

STC sued Intel Corporation for infringement of U.S. Patent No. 6,042,998 (the ‘998 patent) in the case of STC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. 2014). STC and Sandia co-owned the ‘998 patent.

But, Sandia refused to join the lawsuit against Intel, “prefer[ring] to take a neutral position with respect to this matter.” This led the court to dismiss the infringement suit against Intel.

STC was at the mercy of Sandia’s refusal to join the lawsuit. Maybe this lawsuit against Intel could have resulted a large money judgement for STC. But, …

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