Eric Waltmire's Blog

May 23, 2014May 23, 2014

Risks of Waiting: Independent Invention & Google PageRank

Questions often arise about the risks of waiting. Waiting to get started, waiting to file a patent application, waiting to launch a product or service, etc. The risk is that someone else is independently working on the same problem or the same idea and beat you to the market or the patent office or both. What’s the chance of someone independently inventing in your space?Â It is impossible to know for a particular circumstance, but we do know that independent invention around the same time happens.Â According to In The Plex: How Google Thinks, Works, and Shapes Our Lives, Larry Page of Google was not the only person in 1996 to recognized that the link structure of the internet was the basis for a powerful way to find information on the web. The resulting algorithm based on link information allowed Google’s search results to be much better than other search engines at the time it was introduced. Two others were working on this idea, but Google was the first to make it to market.

Adjacent Possible and Independent Invention
As Steve Johnson noted in his book Where Good Ideas Come From sometimes when a scientist or inventor comes up with a new idea or invention, they learn that one or more others have independently come up with the same invention at about the same time period, such as within a year. Johnson notes that this is because the invention becomes “an adjacent possible” once founding or necessary elements or parts are created, discovered, or otherwise available.

To demonstrate the idea of the adjacent possible, Johnson notes that if Youtube was created 10 years earlier in 1995 it would have failed. This is because in 1995 most web users were on slow dial-up connections and it could take an hour to download a standard Youtube clip. In 1995, Youtube’s innovation was not within the adjacent possible, but ten years later, with broadband internet and Adobe’s Flash technology, it was.

PageRank
As In the Plex explains, Larry Page realized you can estimate the importance of a web page by considering the web pages that link to it. Page called his resulting algorithm based on linking “PageRank.” Page said, “In a way, how good you are is determined by who links to you and who you link to you determine how good you are…”Both the number of links and the quality of the links mattered. If a respected web page linked to a page, that link would be worth more than a link from a less well-known or respected website.

In addition to considering the number and nature of links, the anchor text used for the link is considered. Early search engines would provide results based on the content of a particular page. Therefore the results to a search for “newspaper” might not include the most relevant results, such as the New York Times website, if the New York Times did not say “I’m a newspaper” or otherwise use the word “newspaper” on its website. This caused search engine results to be poor and allowed the best result to be buried under relevant results. If a web page used the word “newspaper” to link to the the New York Times web site, then newspaper is the anchor text. And if enough and/or important websites link using that anchor text, then search results for “newspaper” would include the New York Times website. Page’s algorithm ranked each web page based on the incoming links, anchor text, and other factors. The resulting ranking of each page was used to determine which search results were returned for a particular web query, which vastly improved the relevance of search results as compared with other search engines at the time.

Others Independently Discovered Linked Based Ranking
Jon Kleinberg, a postdoctroal fellow at IBM’s research center, discovered that the link text, e.g. what a linking page said when linking to anther site and how many pages linked to a particular site, was useful in determining the relevance of a particular page. While having the same core idea, Kleinberg and Page each approached it differently. Kleinberg wanted to understand network behavior, Page wanted to build something that helped people in searching the web. Kleinberg said “all sorts of IBM vice presidents were trooping through Almaden to look at demos of this thing and trying to think about what they could do with it.” But they couldn’t figure out what to do with it.

Another person,Yanhong (Robin) Li, in 1996 saw the link between the ranking of scientific papers based on the number of other papers that cited them and ranking web pages in the same way. He came up with a search method that calculated relevance from both the frequency of links and the content of anchor text, which he called RankDex. Li described this to his bosses at Dow Jones, but they didn’t do anything with it. Li said, “I tried to convinceÂ them [Dow Jones] it was important, but their business had nothing to do with Internet search, so they didn’t care.”

Li first filed a patent application himself in June 1996 after reading a self-help patent book. But then Dow Jones hired a patent attorney and filed another application on the same invention in February 1997, which resulted in US Patent No. 5,920,859. A patent application for Page’s Page Rank system was filed January 1997, which resulted in U.S. Patent 6,285,999. As you can see, the patent application were filed within about a month of each other. Li left Down Jones and eventually started Baidu in 2000, which is now the largest Chinese search engine.

Conclusion
These three individuals, Page, Kleinberg, and Li, were each independently working, without knowledge of the others, on one of the most important developments in improving internet search results, and in turn, improving the utility of the web. While it may be possible that you can sit on your ideas for years without consequence, waiting carries the risk that someone else is independently working on the same problem or invention as you. The patent office, and sometimes the market, rewards first movers.

May 19, 2014May 19, 2014

When does my patent expire?

Generally for newly issued patents, the patent will expire 20 years from the earliest filing date. However, the patent will expire earlier if maintenance fees are not paid. Maintenance fees must be paid to the United States Patent and Trademark Office (USPTO) at 3.5, 7.5, and 11.5 years after the date the utility patent issues. Maintenance fees are not required for U.S. design patents; they are required for utility patents. The USPTO provides a six month grace period after the 3.5, 7.5, and 11.5 year due dates, within which the maintenance fee can be paid with an additional surcharge.

Some patents receive a patent term extension from the USPTO, if under certain circumstances the USTPO takes too long to examine the patent application and grant the patent. Patent term extension periods are generally shown on the first page of a patent. You should seek advice of a patent attorney when trying to determine whether a particular patent is expired.

The maintenance fees are set by the USPTO and change periodically. The maintenance fees increase progressively so that the 7.5 and 11.5 year fees are greater than the 3.5 year fee and the 11.5 year fee is greater than the 7.5 year fee. This progressive fee structure incentivizes patent owners to let their patent expire unless they are generating a certain financial benefit to the patent owner at the time each respective maintenance fee becomes due.

Photo credit to flickr user kermitfrosch under this creative commons license.

May 16, 2014May 16, 2014

Patentability v. Non-Infringement: If I Have A Patent How Can My Product Infringe?

How can a patent be granted over an invention and yet the commercialization (manufacture or sale) of the invention infringe a prior patent? A common misconception about a patent is the belief that a patent is a permission slip that allows you to make or sell your invention. But this is not the case. A patent is not a grant of permission for you to make your invention. Instead a patent provides a negative right. This means the patent allows you to stop others from making, using, selling, offering for sale, and importing your invention in the United States. Therefore in certain situations the commercialization of a patent invention can infringe a prior patent as explained below.

Basic Example: The Wheel
Here’s an example with a very basic invention to illustrate the concept. John invents the wheel. John files a patent application on the wheel and the patent claims “a circular surface 10 that orbits a hub 12.” The patent office grants John a patent because no one else had previously disclosed such a wheel in the prior art.

The Improvement: Spokes
Bob sees John’s wheel and decides to improve on it. Bob decides rather than having a solid wheel, which is how John’s wheel is made, Bob is going to take all the weight and material out of the wheel and connect the outer surface 20 to the hub 22 by a number of spokes 24. Bob applies for a patent on his spoked wheel. The Patent Office grants Bob a patent on his spoked wheel having a claim of: a circular surface that orbits a hub, where the circular surface is connected to the hub by a plurality of spokes. The patent office grants this patent because the prior art did not disclose a circular surface that is connected to the hub by a plurality of spokes. This is the new component. Since there is something sufficiently new in Bob’s invention, the Patent Office grants him a patent on it.

Infringement Analysis
Can Bob make his spoked wheel without infringing on John’s wheel patent? As explained above, a patent is not a grant of permission to create the corresponding product of the invention. So if John claims infringement, Bob can not win in defense by pointing to Bob’s patent. To determine whether Bob’s spoked wheel would infringe John’s wheel patent, we have to compare Bob’s spoked wheel to the claims of John’s wheel patent. As explained above John’s wheel patent claims “a circular surface 10 that orbits a hub 12.”

Does the spoked wheel have a circular surface that orbits a hub? Yes. The spoked wheel has a circular surface 20 that orbits a hub 22. A product infringes a patent if the product has each and every element of at least one claim of the patent (or an equivalent element, under the doctrine of equivalents, but that is outside the scope of our discussion here). It doesn’t matter that Bob’s spoked wheel has more elements than John’s patent claim, e.g. the spokes. Infringement is avoided in most cases by removing elements that are claimed, and not by adding elements that are not in the claims. The patent claim(s) set out the minimum that is necessary for a product/process to be covered by that claim. So John’s wheel patent may be avoided by removing the circular surface and making it square, for example, but that won’t function very well as a wheel. Further John’s wheel patent might be avoided by eliminating the hub, but then it would be difficult to connect the wheel to other things, e.g. wagons.

You can see that a patent having broad claims can cover variations of the invention that might not have been known at the time of the invention. The claim of John’s wheel patent does not say a circular surface that orbits a hub, where the area between the circular surface and the hub is solid or filled. Such a “solid” limitation would narrow John’s patent. The solid limitation would not cover Bob’s spoked wheel because the area between the circular surface and the hub is not solid, but instead is open with intervening spokes. However, John’s Patent claims were well drafted to not include too many unnecessary limitations. This also demonstrates how critically important claim drafting is in writing a patent application. Sometimes one word in the claim can make the difference between your patent covering another parties product or not.

In this example case, no one can make a spoked wheel since the commercialization of Bob spoked wheel would infringe John’s patent. Also, Bob has a patent on the spoked wheel so that John and others can’t make a spoked wheel. If a third party, Adam, started making a spoked wheel, Adam’s spoked wheel would infringe both Bob’s spoked wheel patent and John’s wheel patent. The only way that spoked wheels can be made and sold during the life of John’s patent, is if Bob and John come to a licensing agreement. Such a licensing agreement could provide that Bob will pay John a royalty on each spoked wheel sold until John’s patent expires. When John’s patent expires, then Bob can sell his spoked wheel without John interfering.

While this example provides that Bob invented an improvement to John’s wheel after seeing it, the results would be the same for the case where Bob invented the spoked wheel without seeing or knowing of John’s wheel.

Conclusion
As the above example shows, the Patent Office does not care if your invention would infringe a prior patent. They only ask whether the invention provides something that is sufficiently new. Therefore, your patent will not protect you from claims of infringement from others. A patent is an offensive weapon not generally defensive (except in certain strategies not relevant to this example). The only way to know whether your product will infringe a prior patent is to have a clearance or non-infringement search completed.

April 30, 2014July 6, 2023

Filing an International PCT Patent Application

Generally, you cannot obtain a single patent that is effective in every country in the world. Patent protection must generally be secured in each foreign country or jurisdiction through a local patent in that country or jurisdiction. However, regional patents exist that span across multiple countries. One example of a regional patent is a European patent, where European member countries of the European Patent Office (EPO) recognize EPO patents.

Apart form regional patents, there exists an international patent application called a PCT patent application that provides a process for reserving your right to file patent applications in foreign countries and participating regions, such as the EPO.

Paris Convention v. PCT
For member countries of the Paris Convention, generally foreign patent applications must be filed within 12 months of the earliest national application filed in a member country. Therefore if the applicant first filed a patent application in the United States, the applicant would have 12 months from the U.S. filing to file foreign applications in Paris Convention member countries claiming priority and receiving the benefit of the filing date of the U.S. patent application.

The PCT (Patent Cooperation Treaty) application process generally gives the applicant an additional 18 months to consider whether and in which countries to pursue patent protection. If the applicant first filed a patent application in the United States, then filed a PCT application within 12 months of the U.S. filing, the applicant would generally have an additional 18 months to nationalize the PCT application in the foreign countries in which the applicant desired patent protection.

However some PCT member countries do not provide the full 18 months for nationalization, but instead require nationalization at a much sooner time. It is important to consult early in the process with an attorney regarding the deadlines that would be applicable to your case.

PCT Member Countries
Over 140 countries are PCT member countries. Therefore by filing a PCT application, you can reserve your option to pursue patents in over 140 countries. Not all countries are PCT member countries. The PCT application process has two steps, the international stage and the national stage. Residents or nationals of any PCT member country are eligible to file a PCT application.

International Stage
A PCT patent application must be filed within 12 months of the first filing of a national patent application (such as a U.S. provisional or non-provisional patent application). An example application process flow is provided in figure 1 below.

The example of in figure 1 shows that at point A a U.S. Patent Application was filed. Then 12 months later at point B a PCT application was filed claiming priority to the U.S. Patent Application. It is also possible to file the PCT application first before any national application.

The PCT application can be filed through a receiving office in PCT member countries, such as the U.S. Patent and Trademark Office or through the international bureau at WIPO.

After the PCT application is filed, an International Searching Authority (ISA) will perform a patentability search and issue an international search report. The ISA will also issue a written opinion on patentability. The applicant has the option to withdraw the application in light of the search report or written opinion, if this is not done the application and the international search report will be published. The PCT application will generally be published 18 months after the earliest priority filing date (such as the first national application filing date).

The PCT applicant can request a second or supplementary international search which may be carried out by one or more of the ISAs (other than the one that carried out the main international search) resulting in a supplementary international search report. The PCT applicant has the opportunity to amend the claims in the patent application in response to the search report.

Optionally, the PCT applicant can request a Chapter II Examination international preliminary examination resulting in an international preliminary report on patentability.

National Stage
The PCT application must be nationalized (entered into the national phase) into the particular foreign countries or jurisdictions that you would like to have patent protection in. Once the application is nationalized in a particular country, the application will be examined under the local laws of that country to determine whether a patent should be granted.

Therefore if you wanted to have foreign patent protection in China, Australia, and in Europe, you would need to nationalize the PCT application in each of those jurisdictions by the nationalization deadline (see below) in order to seek patent protection there.

The deadline for nationalizing the PCT application depends on the country. Most countries or jurisdictions require the application to be nationalized within 30 months of the earliest filing date (the earliest claimed priority application filing date) other countries or jurisdictions require nationalization within 31 months. However, as explained above, some PCT member countries do not provide the full 18 months for nationalization, but instead require nationalization at a much sooner time. It is important to consult early in the process with an attorney regarding the deadlines that would be applicable to your case.

The earliest claimed priority date in the example of Figure 1 is the date that the US application was filed, not the date that the PCT application was filed.

At point C in figure 1, nationalization occurs regarding Countries 1 and 2 at the 30 month deadline. At point D in figure 1, nationalization occurs regarding Countries 3 and 4 at the 31 month deadline. Nationalization might occur into a regional patent organization, such as the European Patent Office, rather than a country.

Individual countries or regional patent organizations many provide a grace period or revival period allowing the nationalization even after the deadline. Therefore if you have missed the nationalization deadline, you should inquire with an attorney whether there are still options for nationalizing your application in the countries you choose.

Nationalization usually involves the payment of nationalization fee, filing of certain documents, and in some cases, filing of a translation of the application. Then the nationalized application will be considered under the local laws of the jurisdiction to determine whether a patent should be granted. Local attorney representation will likely be needed in the nationalized jurisdictions to prosecute the application under their local laws. Generally your U.S. lawyer can work with foreign attorneys during the local prosecution of the application in the national stage.

Cost
Pursuing patent protection by nationalizing a PCT application in every PCT country is generally not economically feasible. The need to hire local attorneys and prosecute the applications in each of 140 countries would be an very expensive endeavor.

Instead, clients often, at or before the nationalization deadline, choose to nationalize the PCT application in countries where they have (1) actual or anticipate sales or (2) actual or anticipated licensing or business opportunities sufficient to justify the foreign patenting expense.

The PCT international patent application filing fee is around $3000-$6000. The nationalization fees can range from $2000-$7000 per country to file. After that there are prosecution costs in each country until the application hopefully issues within a few years as a patent. There are also often yearly patent application fees and patent annuity fees to be paid in each country.

Conclusion
Seeking foreign patent protection involves considerable costs. However, foreign patenting can be valuable when undertaken with a targeted approach that is aligned with the appropriate business case.

April 28, 2014January 21, 2015

Two Ideas for Economic Development: Lifestyle and Exits

Almost every locale is interested in economic development. Intellectual property often results from economic development through new new inventions and creative works. Below are two ideas forÂ economic development from venture capitalists.

Fed Wilson recently explained what the civil leaders looking to revitalize and attract new business need to do. Instead of focusing on tax incentives, connecting with local research universities, and providing startup capital, Fred says you need to first build a community that people, especially young people, want to live in:

Iâ€™ve been asked by civic leaders from places like Newark, Cleveland, Buffalo, and a number of other upstate NY cities that have suffered a similar fate how they can do the same thing. They all talk about tax incentives, connecting with local research universities, and providing startup capital. And I tell them that they are focusing on the wrong thing.

You have to lead with lifestyle. If you canâ€™t make your city a place where the young mobile talent leaving college or grad school wants to go to start their career, meet someone, and build a life, all that other stuff doesnâ€™t matter.

Read the rest of Fred’s post here.

Mark Cuban says that there’s “plenty of sources of capital everywhere.” But what Silicon Valley does best is create company exits:

Silicon Valley as a source of capital is no better or worse than any other big city. There are plenty of sources of capital everywhere. Yes, they may be better at writing 40mm dollar checks to startups (Color anyone ? ). But start up capital is not their secret sauce.

What Silicon Valley does better than anyone is create exits. They know how to get people who they have made money for to turn over a lot of that money to buy the companies they have invested in. They know how to put on a show to get a company to an IPO. They know how to go out and get hundreds of millions of dollars to bridge companies with 10s of millions in revenues to their IPO and more importantly to make sure the IPO happens.

So if you want your new tech corridor to play in the big leagues with Silicon Valley and its VCs , donâ€™t stress about capital for entrepreneurs to create companies. Stress about capital that will buy provide exits for companies or that can get them to a liquidity creating IPO.

Read the rest of Mark’s post here.

Not everyone thinks exiting is a good thing, but knowing the option exists creates an incentive in the locale.

April 23, 2014July 12, 2014

What is a Trademark: Usual and Exotic

A trademark includes almost anything that is used by a person or entity to identify a product or service. This includes product names, company names, logos, slogans, service names, slogans, taglines, colors, product packaging, product shapes, symbols, sounds,Â fragrances, flavors, and domain names. A trademark functions to identify and distinguish goods and services from those manufactured, sold, or provided by others and to indicate the source of the goods or services, even if the source is unknown. Trademark registrations can be renewed forever as long as they are being used with the corresponding goods or services in commerce.

Below are several types of trademarks. First are the standards word and logo marks and the more exotic marks like sounds, product shape, and fragrance, among others, follow. Click here to skip straight to the exotic stuff.

Standard Character
A standard character mark is one where the mark has word(s), letter(s), and/or number(s) with no design element and no claim to any particular font, style, size, or color. The character(s) of the mark must appear in the Trademark Office’s standard character set. The character(s) or word(s) of the mark are provided in standard text without any style, font, or graphics. For example, U.S. Trademark Reg. No. 1,452,359, is for the mark “STARBUCKS” as a standard character mark. A standard character mark is sometimes known as a word mark.

Special Form
Special form marks cover marks presented in a variety of ways and make a claim to the stylistic elements included with the mark. Below are a few examples.

Mark with a Particular Font or Stylized Text
This type of mark does not have a logo outside of the styling/font of the text of the mark. IBM’s U.S. Trademark Registration No. 1205090 is an example where the mark “IBM” is represented in the now widely recognized horizontally striped style.

Logo Mark Alone
This type of mark has no standard characters in it. Nike’s U.S. Trademark Reg. No. 1,232,243 is an example of the Nike “swoosh” logo mark that has been registered alone without any standard characters.

Logo with Adjacent Text
This type of mark has standard characters adjacent to the logo. Nike’s U.S. Trademark Reg. No. 1,325,938 is an example where the word “NIKE” is combined in the registration and adjacent to the swoosh logo. However, the combined adjacent elements must present a unitary commercial impression, which this mark does.

Logo Mark with Embedded Text
This type of mark has standard characters embedded in the logo. Starbucks’ U.S. Trademark Reg. No. 1,815,937 is an example of a registration where the text “STARBUCKS COFFEE” is embedded in the Starbucks logo.

For factors to consider when determining whether to seek a trademark registration on a word mark or a logo mark, see this post.

Color as an element of the Mark
This type of mark claims color as an element of the mark. Exxon Mobil’s U.S. Trademark Reg. No. 3,787,476 is an example of a registration where color is claimed as a feature of the “MOBIL” mark. In that registration, the letters M B I L are claimed in blue and O is claimed in red.

Sounds
A sound or sounds can function as a trademark. Sound marks function as trademarks when they are arbitrary, unique, or distinctive and create in the hearerâ€™s mind an association of the sound with a good or service. One example of a registered sound mark are the NBC chimes.Â U.S. Trademark Reg.Â No.Â 916,522 on the NBC chimes describes the mark as:

a sequence of chime-like musical notes which are in the key of C and sound the notes G, E, C, the “G” being the one just below middle C, the “E” the one just above middle C, and the “C” being middle C, thereby to identify applicant’s broadcasting service.

Below is a Youtube clip of the NBC Chimes.

Motorcycle Exhaust Sounds
HarleyDavidson Harley Davidson attempted to obtain a trademark registration over the exhaust sound of its motorcycles in Trademark Application No. 74/485,223, but the application was ultimately denied by the Trademark Trial and Appeals Board.

Italian motorcycle manufacturer, Ducati, also attempted to obtain a trademark registration over the exhaust sound of its motorcycles in Trademark Application No. 76/330,675, but gave up on the application after an initial refusal by the Trademark Examining Attorney.Â These cases do not mean that motorcycle exhaust sound could never be a registered trademark, but only that the exhaust sounds in these particular cases did not qualify or that the applicant did not pursue further appeals to contest the these rulings.

Owens Corning Corporation’s Pink Insulation

Color Marks
Color marks are mark that consist solely of one or more colors used on particular objects. Therefore a color mark is different from the “MOBILE” example above were color is claimed as an element of a special form mark. With a color mark for goods, the color can be used on the entire surface of the goods, on a portion of the goods, or be used on all or part of the product packaging. Similarly, service marks may consist of color used on all or part of materials used in the advertising and rendering of the services.

It is more difficult to show that color functions as a trademark as compared to other types of trademarks. This is because color cannot be inherently distinctive. Which means that an applicant must prove that the color has acquired distinctiveness such that customers associate the color with a single source of the goods or services.

The Owens Corning corporation owns U.S. Trademark Reg. No. 2,380,742 over the color pink as applied to building insulation.

Trade Dress: Product Shapes and Product Packaging
The shape of a product and the packaging of a product or service can act as a trademark. When a product shape or product packaging functions as a trademark it is known as trade dress. One example of product packaging trade dress is the classic Coca Cola bottle shape. Coca Cola has a registered trademark (Trademark Reg. No. 1,057,884) over the shape of the classic Coca Cola bottle.

iPhoneTradeDressReg — Tm. Reg. No. 3,457,218

An example of product design trade dress is the configuration of the iPhone being rectangular with rounded corners as shown in Trademark Reg. No. 3,457,218.

For a more detailed discussion of trade dress see this article.

Scent, Fragrance, or Flavor
It is possible to gain trademark protection over a scent, a fragrance, or a flavor as long as it is not functional. Scents that serve a functional purpose, such as perfume or air freshener, are not registrable. A showing that the scent, fragrance, or flavor has acquired distinctiveness must be made such that customers associate the scent, fragrance, or flavor with a single source of the goods or services. The showing is necessary because generallyÂ scent, fragrance, or flavor is seen as a functional characteristic of the goods/services by the public and not as a trademark. In other words, more evidence is needed ofÂ acquired distinctiveness with these types of marks than with distinctive word marks.

One example of a trademark registration over a scent is U.S. Trademark Reg. 2,463,044. In the ‘044 registration, an individual operating as Manhatten Oil has a registration on a cherry scent used with “synthetic lubricants for high performance racing and recreational vehicles.” This registrant has another registration on the supplemental register over a strawberry scent for “lubricants and motor fuels,” and this appears to be the commercial product.

A Placement Mark
When you see a logo on the right shoulder of the back exterior of a garment, even if you can’t make out the details of the logo, do you recognize that logo placement to be associated with North Face? If so, North Face may have developed trademark rights in the placement of any logo in that location. Yet, in 2008 the USPTO was not satisfied that North Face met the requirements for registered trademark protection over such logo placement.

North Face Apparel Corp. attempted to obtain a registration on the “placement of a stitched logo affixed to the right shoulder of the back exterior of [any] garment” in Trademark Application No. 78/622,759. North Face was seeking a trademark registration that would allow it to prevent others from placing of any stitched logo on theÂ right shoulder of the back exterior of any garment.

In refusing the application, the Examining Attorney asserted that the placement mark did not function as a trademark and was merely ornamental. North face responded by noting that the USPTO has granted other placement marks. For example, Registration No. 2,058,448 consists of â€œthe placement of a single stone in a center setting positioned at the bottom of the ringâ€ and Registration No. 3,106,789 consists of â€œthe placement of two iterations of a paw design on the bottom of a pet shoe.” (Both of these registrations are now expired because the applicants failed to renew them). Further, North Face argued that it was the only company that provided the placement of a logo on a right shoulder of the back exterior of apparel and that it had been doing so for 17 years. Therefore, North Face argued such placement is widely recognized as associated with North Face and deserved registered trademark protection.Â The Trademark Examining Attorney maintained the refusal of the application and North Face later dropped its appeal to the Trademark Trial and Appeals Board.

Conclusion
Almost anything that indicates a source of goods or services can act as a trademark. Above are some examples of the various types of items that can achieve trademark protection.

March 21, 2014March 21, 2014

Invention, Design, & Branding Lessons from Apple’s Lead Designer Jony Ive

“In a company that was born to innovate, the risk is in not innovating. . .The real risk is to think it is safe to play it safe,” said Jony Ive, the lead industrial designer for Apple.

Jony Ive is the subject of Leander Kehney’s bookÂ Jony Ive: The Genius Behind Apple’s Greatest Products . Steve Jobs, deservedly, Â gets a lot of attention and credit for the success of Apple products. However, Jony Ive is the man behind many of the decisions about and features of Apple’s products. Â The book is not an authorized biography. Yet, it provides insights into the product innovation process and product development process at Apple. It also demonstrates how product design alone can indicate a brand to customers.

Design Alone Can Carry Branding without a Logo or a Name
The face of the iPhone and IPad has an infinity pool look devoid of any product or company name or logo. The brand is carried by the design itself:

iPhoneInfinityPool — iPhone 4 with the black “infinity pool” face common to all iPhones

The front face bore neither the company logo nor the name of the product. â€œWe also knew from our experience with iPod,â€ [Chris] Stringer [of Apple] explained, â€œif you make a startlingly beautiful and original design, you donâ€™t need to. It stands for itself. It becomes a cultural icon.”

Apple sought design patents to protect the look of the iPhone which proved effective when Apple sued Samsung alleging Samsung’s phones were copied from Apple designs and infringed Apple’s design patents, among others.

Apart from patents, the idea that the shape of a product can indicate a source of the product is recognized in trademark law as trade dress protection. Apple was also successful proving that some of Samsung’s phones infringed Apple’s trade dress rights in the design of the iPhone. The iPhone and iPad are products that demonstrate the look of a product through its design can do the work of conveying the brand to the customers.

Innovation is a Series of Steps, Not one Giant Leap
Richard Powell of the design firm Seymourpowell is quoted on the process of invention in the book:

“Innovation…is rarely about a big idea; more usually itâ€™s about a series of small ideas brought together in a new and better way. Jonyâ€™s fanatical drive for excellence is, I think, most evident in the stuff beyond the obvious; the stuff you perhaps donâ€™t notice that much, but which makes a difference to how you interact with the product, how you feel about it.â€

Design Should Make Technology Approachable
Apple is famous for making products that are easy to use. The handle and the transparency of the iMac caseÂ (click here for a photo of the IMac case) is discussed as an example:

The transparency added a sense of accessibility, but in order to give the iMac an even more approachable feel, the designers added a handle on top. For Jony, the handle on the iMac was not really for carrying it around, but to build a bond with the consumer by encouraging them to touch it. It was an important but almost intangible innovation that would change the way people interact with computers.

â€œBack then, people werenâ€™t comfortable with technology,â€ Jony explained. â€œIf youâ€™re scared of something, then you wonâ€™t touch it. I could see my mum being scared to touch it. So I thought, if thereâ€™s this handle on it, it makes a relationship possible. Itâ€™s approachable. Itâ€™s intuitive. It gives you permission to touch. It gives a sense of its deference to you.â€

Design Interest from Early Age Cultivated by his Father
Jony had an interest in design from a young age.

As a young boy, Jony exhibited a curiosity about the workings of things. He became fascinated by how objects were put together, carefully dismantling radios and cassette recorders, intrigued with how they were assembled, how the pieces fit. Though he tried to put the equipment back together again, he didnâ€™t always succeed.

â€œI remember always being interested in made objects,â€ he [Jony] recalled in a 2003 interview conducted at Londonâ€™s Design Museum. â€œAs a kid, I remember taking apart whatever I could get my hands on. Later, this developed into more of an interest in how they were made, how they worked, their form and material.â€

Jony’s father, Mike Ive, worked as a silversmith and a teacher. Mike eventually was put in charge of monitoring the quality of teaching at schools in his district, focusing on design and technology. In doing so Mike moved design technology from a marginal subject to something that occupied seven to 10 percent of a student’s school time. Mike’s design emphasis was not limited to school but also was passed on to his son:

Mike Ive encouraged his sonâ€™s interest, constantly engaging the youngster in conversations about design. Although Jony didnâ€™t always see the larger context implied by his playthings (â€œThe fact they had been designed was not obvious or even interesting to me initially,â€ he told the London crowd in 2003), his father nurtured an engagement with design throughout Jonyâ€™s childhood.
…
He was constantly talking to Jonathan about design. If they were walking down the street together, Mike might point out different types of street lamps in various locations and ask Jonathan why he thought they were different: how the light would fall and what weather conditions might affect the choice of their designs. They were constantly keeping up a conversation about the built environment and what made-objects were all around them . . . and how they could be made better.

Jony Ive: The Genius Behind Apple’s Greatest Products is a worth while read with interesting insights into Apple’s product development and design processes and philosophy. Particularly interesting was Apple’s intentional reliance on trade dress rights in the look of the product–without any logo or name on the face of the iPhone and iPad–to convey its brand.

March 19, 2014June 12, 2014

Words or a Logo or Both in a Trademark Application?

If your trademark includes words, letters, or numbers, before filing a federal trademark application you need to determine whether you will include any logo or stylistic element(s) as a part of your claimed trademark in the application. This is true because the U.S. Patent & Trademark Office asks you to specify whether or not you are claiming with your mark any font, style, size, color, or graphics. Marks without a claim of any of those style elements are known as standard character marks. Marks with any of those claims are known as special form (styled and/or design) marks.

If your mark is a combination of words or characters with a logo or design elements, it can be, but it is not always the best approach to claim the logo and design elements in your trademark application. Below are issues to consider when deciding whether to pursue a trademark registration on a standard character mark or a special form mark.

Types of Trademarks
First a review of the types of trademarks is helpful to the discussion that follows about how to claim your trademark in a trademark application.

Standard Character
A standard character mark is one where the mark has word(s), letter(s), and/or number(s) with no design element and no claim to any particular font, style, size, or color. The character(s) of the mark must appear in the Trademark Office’s standard character set. The characters or word(s) of the mark are provided in standard text without any style, font, or graphics. For example, U.S. Trademark Reg. No. 1,452,359, is for the mark “STARBUCKS” as a standard character mark.

Special Form
Special form marks cover marks presented in a variety of ways and make a claim to the stylistic elements included with the mark. Below are a few examples.

Logo Mark with Embedded Text
This type of mark has standard characters embedded in the logo. Starbucks U.S. Trademark Reg. No. 1,815,937 is an example of a registration where the text “STARBUCKS COFFEE” is embedded in the Starbucks logo.

Strong Protection
Companies with a lot of resources to dedicate to trademark and brand protection often file several trademark applications on their marks for the same goods/services. For example, Nike owns (1) U.S. Trademark Reg. No. 0,978,952 on the standard characters “NIKE” for athletic shoes, (2) U.S. Trademark Reg. No. 1,232,243 on the “swoosh” logo alone for athletic shoes (shown above), and (3) U.S. Trademark Reg. No. 1,325,938 on combination of the word NIKE with the “swoosh” logo for athletic shoes (shown above). Similarly, Starbucks owns (1) U.S. Trademark Reg. No. 1,452,359 on the standard characters “Starbucks” for coffee, (2) U.S. Trademark Reg. No. 1,815,937 on the Starbucks logo having the words “Starbucks Coffee” for coffee (shown above).

Many times the broadest protection is achieved by filing multiple trademark applications covering the same goods/services. For example, broad protection may be achieved by (a) filing one application covering the standard characters, (b) filing an application on the logo combined with the words, and (c) sometimes filing on the logo alone without the word if the logo is used in that manner (e.g. Nike’s swoosh logo).

Why So Many Trademark Registrations?
Standard character marks protect just the standard characters of the mark and not any logo, graphical, or stylistic elements. Therefore Nike’s standard character trademark registration does not cover its swoosh logo. On the other hand, special form marks can be interpreted to be limited, to some extent, by their logo, graphical or stylistic elements. Therefore, while the words/characters of a special form mark will generally be given greater weight when comparing to other marks for infringement or conflict, it is possible that in some circumstances were a third party doesn’t use the exact same wording as your mark and does not have the same logo/style elements, then the third party may have a better chance of avoiding your claims of infringement based on a special form mark alone. So covering your mark in multiple registrations can give you broader protection against infringers.

Another, possibly more likely, problem with proceeding only with a special form trademark is that if you decide later to change your logo or the stylistic elements in the special form mark, then you might have to file a new trademark application on the changed version depending on the extent of the changes. Further, you might not be able to renew the trademark registration of the old version because it is no longer in use. Trademark law rewards longevity of use and registration. Therefore a mark that has been registered for a long time will have a better chance of being considered strong and will be harder for others to challenge its validity. So, if you have to drop registrations because of logo changes you will not receive the benefits of maintaining a trademark registration for long periods of time. Standard character marks don’t have this problem because they cover the words within the mark as presented with any logo or stylistic arrangement.

Economizing: Money for Only One Application
If you have a mark with a logo or design elements and you only have the funds to file one trademark application, below is some general information to consider. If you don’t have a logo or graphical representation of the mark, then it is easy, and a standard character mark should be selected in the application process. When choosing to economize by filing one application, there’s always a risk that a situation could arise with a third party where it would have been better to have filed multiple applications or a different type of application than they one that was filed. But that risk is a part of the balance being struck when choosing to reduce costs by pursuing one application.

Distinctive Mark: Standard Character
If the words or characters of your mark are very distinctive (e.g. fanciful, arbitrary or even suggestive), then it’s generally best to pursue a standard character trademark first. This is true because protection of a standard character mark covers the characters and words of the mark presented in any font style, arrangement, or graphical representation with an additional logo or without. Therefore standard character marks have the broadest protection because they are not limited to any particular color, style or graphic. However, a standard character mark will not protect the design or logo elements used by others that do not include the same or similar words/characters.

Weak Marks: Combine with Logo or Stylistic Elements
If the words or characters of your mark are weak or descriptive then it is generally best to pursue a trademark application that claims the combination of the words and a logo, but only if the words and logo will be used together in your business. This is effective when the logo includes the words of the mark (e.g. Starbucks Logo). However it also can be effective if the logo and words are adjacent one another (e.g. “Nike”combined with the Swoosh). Either way, the distinctiveness of the logo should protect the trademark from being considered merely descriptive by the Trademark Office.

Important Logo
If the characters or words of your trademark are distinctive but your logo is very important to you, you might decide to pursue a special form mark including the logo and the words given the importance of your logo (e.g. “Nike” combined with the Swoosh mark and Starbuck’s logo mark). However, if the logo is changed in the future you may have trademark renewal problems as explained above.

Font Only
If the stylistic features of your mark only include a particular font style or color arrangement (e.g. IBM and Mobile), then as long as you’re mark is sufficiently distinctive you will probably get the most bang for your buck by pursuing a standard character mark.

Seek Multiple Application(s) Later
As your business develops, you may decide to dedicate more resources to trademark registration. If you do, you can add trademark registrations at that time to broaden the scope of protection.

Conclusion
The broadest protection may be obtained by filing separate federal trademark applications on the words lone, the logo, and the logo combined with the words. However, when starting out, you might decide to economize by filing only one trademark application. Whether that application should be a standard character mark or a special form mark is circumstance dependent. Many times an application on the standard character mark make sense as long as the mark is sufficiently distinctive. If it is not distinctive then an application on a special form mark having the logo and the words may be the best option. Above are some points to consider in the decision process.

March 13, 2014January 24, 2023

Viewing Patent Application Status and History at USPTO Online with PAIR

Update: The USPTO retired Public PAIR on August 1, 2022. The file history and status of a US patent or published patent application can be accessed via USPTO’s Patent Center at https://patentcenter.uspto.gov.

The USPTO provides online access to the file history and the current status of patents and published applications through a system called PAIR (Patent Application Information Retrieval). The file history, sometimes called the file wrapper, is a record of all the documents filed by the applicant and the USPTO regarding a patent or patent application. Review of the file history can be helpful in many circumstances to understand more about what the applicant said to the USPTO, during the prosecution of the application. You can also determine the status of a published application or patent using public PAIR.

Here’s a navigation table to make it easier to skip to the sections that are of interest.

Access and Logging in
Bibliographic Data (Application/Patent Status)
Transaction History
Image File Wrapper (Downloadable Files)
Continuity Data
Maintenance Fees
Published Documents
Address & Attorney/Agent
Display References
Conclusion

1. Access and Logging In
Currently you can access public PAIR by going to http://portal.uspto.gov/pair/PublicPair. Then you will be asked to enter text/characters at the CAPTHCHA stage. Next, you will see a page with a portion showing a tab “Select New Case”. There you have five options for the type of number you will enter in the search box: (1) the patent application number, (2) a control number, (3) the patent number, (4) a PCT number, (5) a publication number. Select the correct option for the number you will enter. Then enter the number in the search box and press the search button.

Patent Number. As an example, I selected the patent number option and entered 8,000,000 in the search box to retrieve the file history of U.S. Patent No. 8,000,000.

Patent Application Number. Alternatively, I could have selected application number and entered 11874690, which is the application number that corresponds to U.S. Patent No. 8,000,000. If you are looking up your own published patent application, you can select application number radio button and enter your application number. If your patent application has not yet published as an application, you will not be able to access it through public PAIR.

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2. Bibliographic Data (Status)
Next you are presented with the Bibliographic data under the application tab. Bibliographic data contains the application number, the filing date, the application type, the Examiner, the group art unit, the attorney docket number, the class and subclass of the application, the inventor’s name, the entity size, the status of the case, the date of the status update, the location, the application publication date, the application publication number, the patent number, the patent issue date, whether the application was/is subject to the America Invents Act, and at the bottom, the title of the invention.

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3. Transaction History
The transaction history tab shows all the transactions in the case, including items filed by the applicant, and process flows and happenings at the USPTO regarding the application. The transaction history does not provide any links to documents, those are found in the Image File Wrapper tab.

The Transaction history can show you internal happenings at the USPTO related to the case that do not show up as filed documents in the Image File Wrapper tab. For example, as shown below the applicant’s response, which is filed on 2-14-2011, was forward to the Examiner on 2-16-2011.Â However, this forwarding notation is not found in Image File Wrapper tab.

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4. Image File Wrapper
The USPTO started providing electronic file histories at the USPTO in 2003. If the patent application was filed before 2003, the file history might not be available online. In that case, you will need to goto the USPTO or hire a service, such as ReedTech, to goto the USPTO for you and copy the file history.

The image file wrapper tab shows all the documents filed by the applicant or issued by the USPTO in the case. The file wrapper tab also allows you to download the documents filed in the case in PDF format, by selecting the corresponding check-box and clicking the “PDF” icon at the top right.

Non-patent literature (NPL) is viable in the history but not downloadable via PAIR over copyright concerns, e.g. that easy access to these documents will facilitate copyright violations by the public and negatively impact the copyright holders ability to charge for these works. NPL are prior art documents filed by the applicant, such as journal articles, excerpts from books, or other publications. On theÂ image file wrapper tab you can see (not shown above) the NPL in the case of US Patent 8,000,000 was filed on 1-08-2009 and the check box for selecting and downloading at the right is grayed-out.

Looking at the image file wrapper for US Patent 8,000,000, we see that the USPTO issued a non-final rejection on 11-15-2010, which was the third rejection in the case (see the non-final rejection on 3-06-3009 and the final rejection on 7-17-2009). On 2-14-2011 the applicant filed a response presenting remarks having arguments for patentability, amendments to the specification, and amendments to the claims. The response on 2-14-2011 was successful in overcoming the Examiner’s refusal of 11-15-2010 because on 4-08-2011 the USPTO issued a Notice of Allowance (NOA), the applicant paid the patent issue fee on 6-27-2011 and the patent was issued on 7-27-2011.

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5. Continuity Data
The Continuity Data Tab provides information about related patents or patent applications.

The application that resulted in US Patent 8,000,000, claimed priority to an earlier provisional patent application no. 60/852,875. Also downstream from the US Patent 8,000,000, are three patent applications (11/926,044, 13/168,653, 13/707,984) that claim priority to the application (11/874,690) that resulted in US Patent 8,000,000.

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6. Maintenance Fees
For utility patents, patent maintenance fees must be paid at 3 1/2, 7 1/2, and 11 1/2 years after the patent issues. If a patent has issued you can click on the Fees tab, where you are taken to the USPTO maintenance fee page.

You must enter the patent number and the corresponding application number in order to retrieve maintenance fee information. Here the patent number is 8000000 and the corresponding application number is 11874690. By clicking the “view payment windows” a window similar to the following will be displayed.

As the USPTO currently provides a six month grace period after the 3 1/2, 7 1/2, and 11 1/2 year deadlines, the USPTO references 4th, 9th, and 12th years rather than 3 & 1/2, 7 & 1/2, and 11 & 1/2 years. The widow when the payment can be made opens six months before the 3 1/2, 7 1/2, and 11 1/2 year date. The USPTO charges a surcharge for payments made in the six month grace period. Therefore the surcharge date is the day after the 3 1/2, 7 1/2, and 11 1/2 year date. The close date is 6 months after the 3 1/2, 7 1/2, and 11 1/2 year date.

By clicking on the Get bibliographic Data button, you will receive information about whether any maintenance fees have already been paid. In the case of the Patent 8,000,000, no fees have yet been paid.

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7. Published Documents
The published documents tab provides a list of publications related to application 11/874,690. In this case, the application was published as an application as US Pat Pub. 2008/0097548 A1 on April 24, 2008 and was published as a patent as US Pat 8,000,000 on May 10, 2011.

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8. Address & Attorney/Agent
The Address & Attorney Agent tab provides the current correspondence address for the patent or application as well as information about the patent attorney or agent representing the patent applicant / owner.
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9. Display References
The display reference tab provides documents containing prior art references (such as patents, patent applications, publications, etc). This is a subset of the documents downloadable from the image file wrapper tab. The NPL is not downloadable as you can see that the box is grayed-out next to the NPL in the screen view below.

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10. Conclusion
Whether you want to check the status of your patent application or you want to learn more about an existing patent or published patent application, USPTO’s public PAIR system provides detailed information about such applications and patents.

March 10, 2014

How Can A Delay in Getting A Patent Help Me?

Many inventors are shocked to find out that once their patent application is filed, it may take one or two years before the US Patent Office acts on the application, and perhaps another one or two years after that for a patent to be granted (unless an accelerated request is made). This is due to the backlog of work at the US Patent Office.

Does a long delay between the filing date of the application and the patent issue date hurt the inventorâ€™s plans to exploit his invention? What if someone sees his product, copies it and sells it before the inventor has his patent?

Short Commercial Life
For inventions that have a short commercial duration, a long period of time between patent application filing date and patent issue date can be harmful. For example, if an invention was only useful for a particular model cell phone and not useful after the cell phone is replaced by a new model, the long delay could be detrimental to commercial exploitation of the invention, in that a copier of the invention could not be stopped before the commercial life of the product has already dried up.

Longer Commercial Life
However, for most inventions, the commercial viability of the invention lasts well beyond 3 or 4 years. In this case, the delay at the Patent Office to issue a patent is not necessarily detrimental and can work in the inventorâ€™s favor. For example, once an application is on file, the inventor can exploit his invention by advertising, offering the invention for sale over the Internet and undertaking other commercial activities to create a market for the product. This is expensive. On the other hand, the costs of obtaining the patent are spread out and delayed.

Copier Makes a Market
During this â€œpatent pendingâ€ period a copier is free to copy the invention since the inventor does not have an issued patent (except in certain usual circumstances). However, the copier will also spend money on creating a market for the product. The copier may be a company that is in a better position to advertise and create consumer demand for the product than the inventor. The copier could market the product for a few years before the inventorâ€™s patent issues.

Patent Owner Takes Over Market
However, if and when a patent issues a few years later, the inventor will be in a favorable negotiating position with respect to the copier. The inventor can sue to stop further sales by the copier and take over the market share for the product that the copier created. Alternatively, the inventor can offer the copier a patent license at a higher rate since the copier has already invested money in developing and marketing the product and is more likely to accept such a license. Still further, particularly in the case where the inventor is not selling a product but wishes to sell the patent, the inventor can offer to sell the patent to the copier at a higher price since the inventor can otherwise sue the copier to stop further sales. The copier would also have an incentive to purchase the patent since the copier can now enforce the patent against other copiers.

Additional Time Added on End of Term
It should also be noted that the term of a US Patent is 20 years from the application filing date. If the duration to obtain the patent was delayed by the Patent Office more than three years from the filing date, the Patent Office grants additional time onto the term of the patent to make up for the delay. In effect, time is added onto the back end of the patent term which is typically more valuable than time at the front end of the patent term.

Beneficial Delay
For some inventors and companies, a delay in obtaining a patent due to the backlog at the Patent Office may actually be beneficial.