by Kathleen Lynch | Oct 28, 2014 | Patent, US Patent Office
Last week I was vindicated to some extent by Good Morning America. Lori Greiner from the show “Shark Tank” provided some advice to the morning’s “tank” contestants. First thing she said was: “get a good IP attorney.” At the risk of sounding self-promotional, this is so important. I’ve posted before on how to select a good IP attorney. The things I think are most important are experience, expertise and relationship.
Here are a few questions to ask a potential IP attorney:
Does s/he practice patent law?
If you are interested in protecting an article or method of manufacture, you should seek out the advice of a patent attorney. Only patent attorneys and patent agents practice before the US Patent Office. In order to practice before the US Patent and Trademark Office, an attorney or agent must pass the US Patent Bar. This requires the person to have a bachelor’s degree in a technical field such as science or engineering and pass the US Patent Bar examination. Those tasked with preparing and filing a patent application and communicating with the US Patent Office with regard to patents and patent applications, must take and pass the US Patent Bar.
How long has s/he been practicing patent law?
Like any profession, patent law requires a certain level of skill and expertise which comes from experience and work. Someone who has filed many patent applications and has helped to move numerous applications through to issued patents will have a greater level of experience than someone with few or no dealings with the Patent Office.
What is his/her area of expertise?
This is a critical area. You need to ask what is the patent attorney’s area of expertise. What did the attorney study in college and in what area of technology do they focus their patent practice? In the same way you wouldn’t want a dermatologist to conduct heart by-pass surgery on you or a loved one, you should not select an attorney with a biochemistry degree to file your patent application directed to electronics.
Finally, there is the relationship aspect of any interaction between attorney and client. Do you have confidence in this person? Do you trust this person to act in your best interest?
As Lori Greiner confirmed, selecting the right IP attorney is critical. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Oct 21, 2014 | Trademarks
This is the third in a series of posts focused on some of the basic tenets of intellectual property law. Articles one and two focused on some fundamental principles of patent law.
A trademark is a source indicator of goods or services. As such, you want your mark to stand out and be remembered. There are types or categories of marks that provide a greater level of protection than others. The types in order of strength (most to least) are: arbitrary, fanciful, suggestive, descriptive and generic.
Marks with the greatest scope of protection are arbitrary ones. These are marks that consist of made-up words created specifically for use as a trademark. These include Kodak and Exxon. These marks have wide protection because all association with the mark is in connection with the owner’s product and/or service. Fanciful marks are actual words that are used in connection with a completely unassociated product or service. A good example of a fanciful mark is “Apple” for computers. Suggestive marks are words that have been selected because they are suggestive of a particular attribute or feature of the product or service. Suggestive marks would include “Jaguar” automobile, or “Greyhound” bus service. Arbitrary, fanciful and suggestive marks are essentially acceptable for use as a trademark or service mark barring any third party uses.
Descriptive marks are more difficult to protect because they describe the product or service. The US Trademark Office will reject an application for a trademark that is “merely descriptive” of its goods or services. If your mark merely or only describes the goods or services, you may have a difficult time obtaining trademark registration for it. However, a mark is entitled to trademark registration as a descriptive mark if it is not merely or solely describing the goods or services. This requires proof of distinctiveness or “secondary meaning”. Distinctiveness is obtained when consumers associate the mark with the goods or services. “Best Buy” for retail stores selling electronics and appliances is an example of a descriptive mark. Finally, generic marks are marks that become what we use as a noun for a product or service. Examples of trademarks that have become generic include escalator and linoleum. Generic marks have no protection because they no longer are a source indicator. Trademark owners need to walk a fine line between obtaining the status of a well-known mark and having that mark become the generic term for the good or service sold.
If you are selecting a new mark, arbitrary, fanciful or suggestive marks are preferred (in decreasing order of preference) for providing a greater scope of protection. The type of mark does not mitigate the need to determine whether the mark is available for use based on all third party uses of the same or similar marks.
by Kathleen Lynch | Oct 7, 2014 | Infringement, Patent
This is the second in a series of posts on the basics of patents. The first post discussed the scope of a patent and how to obtain one. This post will focus on the benefits of a patent and how you can enforce one.
Now that you have a patent, what can it do for you? A patent is only as good as your ability to enforce it. A patent owner has the right to keep others from making, using, selling or offering for sale his/her patented invention. A patented invention is defined by its claims. The claims are the last part of the patent document and are numbered. The claims define the “metes and bounds” of the invention.
In a dispute, or when a patent is asserted against an alleged infringing party, the claims are interpreted to determine the scope of the invention. Once the scope of the invention is determined, then that scope is applied to the alleged infringing activity to see if it falls within the scope of the patented claims.
Patent infringement is a federal offense and may be brought in federal court. Patent infringement provides for the recovery of both actual and punitive damages. These may include up to three times the damages if the infringement is found to be willful or intentional. A patent owner may also seek an injunction to stop existing and future infringing activity. In some cases costs and attorneys fees are also recoverable.
Capitalizing on innovative developments is critical to any organization. Having the right person to help you make those decisions is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Sep 23, 2014 | Design Patent, Patent
This is the first in a series of basic info posts on the basics of intellectual property law. In particular, I’d like to focus on what is a patent and what kind of protection does it provide if you are able to obtain a granted patent.
To start, there are 3 types of patents: utility, design and plant. Design patents cover new and ornamental aspects of items of manufacture. An iPhone® smart phone or a Corvette® sports car are great examples of design patents. These have a life of 14 years from the date the patent is granted.
Plant patents are a particular type of patent that are directed to anyone who has invented or discovered and asexually reproduced a distinct and new variety of plant. Plant patent protection extends 20 years from the date of filing.
Utility patents are known to most people and cover articles of manufacture, methods of manufacture, compositions of matter, and business methods, typically used in the software and banking sectors. This last category of patents is presently in dispute but is not the subject of this article.
A utility patent must be useful, novel and nonobvious. A utility patent has a life of 20 years from the date of filing. However, once a patent is granted, maintenance fees must be paid to the US Patent and Trademark Office before 3.5, 7.5 and 11.5 years after issue, or the patent will expire.
Protecting your innovative developments is critical to any organization. Having the right person to help you make that decision is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
by Kathleen Lynch | Sep 10, 2014 | Invention
With the passage of the American Invents Act, the U.S. Patent System has moved from a first to invent system to a first inventor to file system. While the new law awards the patent to the first inventor, it also prevents others from obtaining an invention if you disclose your invention before someone else files an application on the same invention.
This disclosure can work to anyone’s benefit and may be used as an inexpensive offensive tool in cases where a patent is not needed, desired, or unaffordable. Disclosure of an invention prevents others from obtaining patent protection on the same invention.
If the invention is worth protecting with a patent, make sure your application is on file so that your own disclosure is not used as prior art against you.
This offensive move to disclose some developments can work in connection with a robust patent strategy. In this way, you can work to carve out an area of technology and keep others from encroaching where disclosure helps to prevent third party patents from issuing.
Protecting your innovative developments is critical to any organization. Having the right person to help you make those strategic decisions is important. The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game. The first telephone consultation is free. Email us at kl****@*****aw.com.
