Archive | Feature

Mercedes Successful Invalidating Driver Sleepiness Detection Patent

USPat6313749_Fig1The case of Ibormeith IP LLC v. Mercedes-Benz USA, LLC, Dkt. No. 2013-1007 (Fed. Cir. Oct. 22, 2013) is another case where means-plus-function claims were found invalid for lack of an adequate algorithm/structure disclosed in the description of the patent.

Ibormeith sued Mercedes alleging that Mercedes vehicles having an Attention Assist feature infringed U.S. Patent No. 6,313,749. The ‘749 patent is titled, “Sleepiness Detection for Vehicle Driver or Machine Operator.” The ‘749 patent is directed to monitoring conditions affecting or behavior reflecting a vehicle driver’s sleepiness. Then issuing a warning to the driver before driving is unduly impaired.

Sleepiness Warning
The patent discloses monitoring that takes into account sleepiness factors including, as summarized by the court, “natural body-clock (circadian rhythm), the magnitude and number of corrective steering action the …

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Trademark Application Problems: Wrong Owner Named

While the United States Patent and Trademark Office (USPTO) provides online forms that appear to make it easy to file a trademark application, there are several portions of the application that can trip up an inexperienced applicant. One of those areas is the owner portion. The USPTO requires that the correct owner of the trademark be specified in the application to register the trademark. This sounds easy but in many cases it is not, as will be shown below.

Individual and Partnership Owner Problems
Take the case of American Forests v. Barbara Sanders, 1999 TTAB LEXIS 529 (TTAB 1999). In this case, Barbara Sanders filed a trademark application to register LEAF RELEAF to be used with the goods of leaf bag equipment. The application named herself individually as the …

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Protecting Unpatentable Inventions

Not every invention is patentable. Yet, inventors and companies may decide to proceed to market with an unpatentable products or services. This article will explore other intellectual property protection options that exist beyond patents.

Build a Brand
In many cases customers purchase a product or service because it is provided under a recognized brand name. This may be true regardless of whether the product or services is patented. Therefore you may decide to choose a strong trademark for the product or service. Then you can market that trademark so that customers associate that trademark with the type of product or service you are selling. The goal is to build a brand so that consumers will seek out that brand when purchasing your goods or services. In this way customers will …

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Problems with Requiring an NDA Before Pitching Your Invention

At the outset of product / service development there is often a tension between the desire to keep the invention confidential and the desire to know whether there will be sufficient interest in the invention from customers or those who might make and sell it to customers. Therefore the issue arises as to how to protect an invention early in the product development, partnering, or sale process.

There are three ways of proceeding: (1) first file a patent application before any disclosures to third parties, (2) disclose to a third party only after obtaining a signed nondisclosure agreement (NDA), (3) disclose without an NDA or application filed and hope for the best. The first is the most preferred and the last approach is not recommended.

Difficulties with NDAs Before

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Can I Add New Invention Developments to My Previously Filed Patent Application?

Many times a company or individual will further develop a product / service / invention after a patent application is filed on the original invention. In that scenario the question arises whether the further development (new developments) can be added to the original patent application or otherwise be protected by the original patent application. Generally, new matter, not supported by the original application, cannot be added to a patent application after the application is filed. However, there are a number of ways to protect new developments after a patent applications filed on the original invention.

Covered by the Original Patent Application
The first step is to determine whether the new developments are covered by language in the originally filed patent application. Your patent attorney will generally attempt to draft a …

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Do I Qualify for Small Entity Fees at the USPTO?

The USPTO has three fee categories: large entity, small entity, and micro entity. Previously I wrote about micro entities that usually get a 75 percent reduction from the large entity fees. If you don’t qualify as a micro entity, you might qualify as an entity, which usually gets you a 50 percent fee reduction.

USPTO rule 37 C.F.R. 1.27 defines which persons, small businesses, and nonprofit organizations qualify as a small entity. An owner of a patent application or a patent is entitled to small entity status only if, the owner is:

  • A person … meaning any inventor or other individual ( e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under
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File Patent Applications Early and Do Not Rely On AIA Grace Period

Before the America Invents Act (AIA), an inventor had a one year grace period between the time of first public disclosure by the inventor of the invention and the time a patent application was required to be filed.  A grace period is provided under the AIA, but for the reasons explained above, the best practice is to avoid relying on the grace period and to file an application early before public disclosures or uses.

Explaining The Grace Period
The grace period provided in 35 USC 102(b)(1)(A) provides that the inventors own disclosure made less than one year before the filing of a patent application will not be prior art against the inventors patent application. Sections (b)(1)(B) and (b)(2)(B) provide that if the inventor (or a third party who obtained the …

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Invention Evaluation Factor: Dancing on the Edge of Failure

SONY DSCHow do you know whether your project / invention is worth continuing to pursue or whether to start in the first place? There are many factors that you might consider when determining whether to pursue a project / invention. One question you might want to include in the mix is whether your invention / project makes or has ever made you feel like you are dancing on the edge of failure.

I consume a lot of content on the topic of innovation and entrepreneurship. Recently I was listening to a podcast series called Seth Godin’s Startup School. There Seth provided that great characterization “dancing on the edge of failure,” which is applicable to the important engaging work carried on by innovators.

Dancing on The Edge of Failure. In episode 10 of the

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Micro Entity Status at USPTO

The American Invents Act (AIA) authorized a new fee category, micro entity, directed to reduce fees for individual inventors and small companies. Previously, there were only two fee categories: Large entities that pay full fees, and small entities that usually pay half the fees of the large entity. Micro entities are provided a 75 percent reduction from the large entity fee rate.

To qualify as a micro entity, the applicant must meet all the items under one of the two sets rules.

Rule Set 1 (Income Limit):

  1. Each applicant qualifies as a USPTO-defined small entity under 37 C.F.R. 1.27.
  1. Each applicant is not named on more than four previously filed applications. However, the following application do not count: (a) applications that the applicant has assigned, or is obligated to assign,
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Zynga Sues “Bang With Friends” Hookup App Maker for Trademark Infringement

Filed in the “good luck with a trademark fight based that name” department comes Bang With Friends, Inc. (BWF) and their casual sex app of the same name. The app is designed to discreetly connect a user with the user’s facebook friends who also have the Bang With Friends app and are interested in hooking up with them. The BWF website says “Your friends will never know you’re interested unless they are too.” Classy.

Not surprisingly, on July 30, 2013, Zynga filed a trademark infringement complaint against BWF alleging infringement of Zynga’s “with friends” trademarks. Zynga Inc. v. Bang With Friends, Inc., No. 13-cv-3517 (N.D.Cal., July 30, 2013). Below we’ll look at what can be learned about brand protection from this case, but first a background on the case.…

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