Matthew Hintz recaps the trademark expo

                       

Matthew Hintz, Esq., an attorney focusing on trademark and intellectual property issues and friend of Gearhart Law, recently attended the USPTO's 2014 National Trademark Expo. I talked to him about his experience there. He provided me with the following information:

The event lasted two days in October and drew about 15,000 people. The first day, Friday, October 17th, drew a lot of school fieldtrips. The second day, Saturday, October 18th, drew both the adults and children.

The event had two facets:

1)     presentations for small business owners to learn about trademarks, registration and overviews of the USPTO's online tools and resources

2)     booths with examples of different ways trademarks can be done

Most people think of a trademark as a word or symbol, but shapes, configurations, and sounds can act and be registered as trademark as well. Below is an example of a soundmark that recently issued:

https://tmog.uspto.gov/#/issueDate=2014-11-18&serialNumber=86048417

Matthew volunteered at the American Bar Association Intellectual Property Law section booth. 

The booth featured two games for the event. One was a brand memory game with cards showing the color and font of a brand’s trademark, but without the trademark. The participants were then challenged to guess what the trademark was and who owned it.

The second game, for younger kids, Matthew helped developed. The game featured showed registered trademark shapes or product configurations and asked the kids to guess the product. For instance, the shape of a  PEEP chick, a registered trademark, was shown and the kids had to guess the shape was a PEEP chick. Other shapes in the game were the Sun Chips' ruffled chip and Pepperidge Farm's goldfish cracker shape.

This is an annual event, so if you missed it this year, you can attend it in October 2015.

 

Insuring Your Start-Up Against Litigation

 

written by James Kobucar, Esq., Patent Attorney at Gearhart Law
www.GearhartLaw.com

            About a year ago, a crowdfunding campaign was run by Ditto.com to raise money for its business. However, this wasn’t your typical crowdfunding campaign. Ditto was attempting to raise money to fight an allegation of patent infringement made by a “non-practicing entity (NPE)” or patent troll.

            Many in the start-up community are aware of the existence of these entities and the high level of damage such an allegation can cause to a start-up. According to John Amster, CEO of RPX, Corporation, “if a start-up gets hit [by an infringement suit], it’s a catastrophic outcome.” Indeed, statistics show that the average cost of a “small” case (with projected liabilities under $10 million) is about $1.25 million to litigate, with the alternative being a settlement which may or may not be warranted. 

Thus, RPX has found a niche in the business of providing patent risk management services. The company identifies and purchases patent assets they deem of high value and then charges a fee to companies to have access to these patents for defensive purposes. Currently, the company owns about 4,900 U.S. and International patent assets. The model has thus far proved successful for the six-year old company with membership fees for companies ranging from about $65,000 to $6.9 million and expected revenues this year of around $256 million.

            Obviously, such fees are not practical for most all start-ups and entrepreneurs who rely on every cent to make their dreams a success, but recently RPX rolled out a line of lower cost insurance options. This includes patent litigation insurance premiums starting at $7,500 for $1 million in coverage. Unlike the company’s previous offerings, there's no limit as to the size of the company seeking coverage and RPX will even insure pre-revenue companies. This should prove advantageous for the entrepreneurial community as larger companies are much more willing to take on these NPEs leaving the smaller companies as vulnerable as ever.

            Thus, if you are a start-up (especially in the tech community) some form of litigation insurance may be another avenue to explore to secure your company’s position. It should go without saying, but there are many, many more terms, exceptions, and limitations involved with such insurance than those mentioned in this blog and other forms of protection may be available as well.

Overall, it seems the business community as a whole is taking a harder stance against the NPEs. Hopefully, this is another step in the right direction to help protect the innumerable start-ups and entrepreneurs working to establish themselves in the business community.

Apple's New Patent is Another Step in the Journey of Smartphone/Automobile Integration

 

Apple’s New Patent Is Another Step in the Journey of Smartphone/Automobile Integration

By: Matthew Miller, Patent Agent

www.GearhartLaw.com 

                Most citizens of the more-developed countries on the planet accept the fact that the smartphone is becoming a larger and larger part of everyone’s lives. To that end, famed internet statistician Mary Meeker has recently shown just how much people love their devices. As one might expect, with people using their smartphones more and more, companies are looking for all sorts of ways to implement smartphones into their business plans.

                One area that has received particular attention has been the integration of smartphones and automobiles. We’re not talking mere Bluetooth integration here (which has been around for years), but full-blown, app-specific, integration and optimization. Surprisingly, the first major player to enter into this space was Microsoft via their partnership with Ford. Together, they developed the Sync and Sync with MyFord Touch technologies incorporated in some of Ford’s recent models. This collaborative effort was widely heralded as a positive thing for consumers, and since then, other entities have been attempting to enter this marketspace.

                The next major player to enter this space was Apple with the announcement of their CarPlay technologies. While these devices are just starting to come to market, the announcement has generated a large amount of media attention. Not to be outdone, Google, the developer of the Android smartphone operating system, subsequently announced the development of their own service, Android Auto. Both of these services attempt to integrate the features that user’s desire the most from their phone (maps, music, phone, etc.) with their car in an easy to use fashion.

                While the above services appeared to be the trend in the smartphone/automobile integration market, a new patent from Apple suggests that the smartphone/automobile integration is going to run even deeper than what has been advertised to the public. Apple’s new patent, United States Patent Number 8,868,254, is directed towards “accessory control with geo-fencing.”

             

 

   This patent describes a device that will, depending on the location of the user, enable a user to activate different features of the car with their smartphone. For example, if a user is behind the car, they will be presented with the ability to unlock the trunk, if a user is a predetermined distance away from the car, the phone will automatically warm the car to a desired temperature, or a variety of other functions described in the ‘254 patent.

                When taken alone, this patent in and of itself is nothing special, it can be viewed as an indicator of what types of functionality will be assimilated into the smartphone/automobile integration movement. Do you think that Apple’s new patent is a sign of what’s to come, or that it is merely a stand-alone patent in Apple’s massive patent portfolio? Let us know in the comments.

               

It's less expensive to file patents in China due to a new service launched by the USPTO and SIPO

reposted from the USPTO website by Elizabeth Gearhart, Ph.D., patent agent at Gearhart Law
www.GearhartLaw.com

 

 

USPTO and the State Intellectual Property Office of China Launch Direct Electronic Priority Document Exchange

Free secure service simplifies patent application procedures

Washington - The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) and the State Intellectual Property Office of China (SIPO) today launched a new free service that will allow the two offices to electronically exchange patent application priority documents directly. This new service will help streamline the patent application process and reduce costs for businesses which are increasingly pursuing patent rights globally.

The new service will allow the USPTO and the SIPO, with appropriate permissions, to obtain electronic copies of priority documents filed with the other office from its electronic records management system at no cost to the applicant. With this new service, applicants will no longer need to obtain and file paper copies of the priority documents; however, they are still responsible for ensuring that priority documents are provided in a timely manner.

“The USPTO is committed to building a better patent system both at home and abroad,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. “By expediting the processing of patent applications between the USPTO and SIPO, we can provide greater cost savings to applicants and advance our goals toward stronger global intellectual property promotion and protection.”

Under the Paris Convention for the Protection of Industrial Property, a treaty that provides a number of important rights for innovators, a patent applicant may file an application in one Paris Convention member country (the priority document), and within 12 months, file corresponding applications in other member countries, while obtaining priority to the first application's filing date. This 12-month period allows applicants to make important decisions about where to file subsequent applications to seek protection for their inventions. In order to perfect the claim of priority to an earlier foreign filing, however, applicants are generally required to file paper copies of the priority document in each of the later-filing offices at their own expense.

The USPTO exchanges priority documents through secure, electronic connections using the Trilateral Document Access (TDA) Web Services at no cost to the applicant. This secure electronic exchange of copies of priority documents promotes sharing of information between the USPTO and the SIPO, and reduces the administrative costs associated with handling paper copies of priority documents and scanning them into the offices' electronic image record management systems. All users will benefit from the simplified process and cost reduction that the new service provides.

Forms and instructions for using this free service are available on the USPTO's website:www.uspto.gov/patents/process/file/pdx/pdx_index.jsp. For further information, see Official Gazette Notice:www.uspto.gov/patents/law/notices/2014.jsp.

USPTO Launches Redesigned KIDS! Web Pages

USPTO Launches Redesigned KIDS! Web Pages

Pages provide intellectual property education resources for parents, teachers, and students of all ages

Reposted from the USPTO website by Elizabeth Gearhart, Ph.D., Patent Agent at Gearhart Law

www.GearhartLaw.com


WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the launch of its newly redesigned KIDS! Web pages aimed to encourage students of all ages to learn about the importance of intellectual property (IP) creation and protection. In addition to featuring young inventor profiles, activities, and videos, the pages also offer curricula that link Science, Technology, Engineering, and Math (STEM) education to IP and innovation through downloadable lesson plans, hands-on instructions for building inventions, USPTO career information and other useful resources. 

“The USPTO looks to our children—the doers, makers, and tinkerers of the future—to reimagine the world and, as the Constitution calls for, ‘to promote the progress of Science and the useful Arts’ like never before,” said Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. “As schools across the country ramp up their STEM programming, we look forward to putting even more tools in teachers’ hands that will ensure our next generation is well-versed in concepts of making, inventing, and creating the high-value intellectual property that drives our economy.” USPTO’s updated KIDS! Web pages also feature coloring pages designed to introduce younger students to patents and trademarks, an audio library of trademarked sounds, upcoming event listings, and other challenging activities to help encourage and inspire future generations of inventors. For more information, please visit www.uspto.gov/kids.

The KIDS! Web pages serve as an extension of the Office of Education and Outreach (OEO), which provides educational and outreach programming for students, educators, and young inventors and innovators of all ages. OEO is managed through the Office of the Under Secretary and Director of the USPTO and supports the mission of the agency by providing relevant intellectual property, innovation and invention resources to school administrators, teachers, students and parents. OEO also has a robust outreach program that supports many community-based invention and innovation programs. For more information please visit www.uspto.gov/about/offices/ous/education.

Family-friendly Trademark Expo Oct 17-19 at the USPTO

By Elizabeth Gearhart, Ph.D., patent agent at Gearhart Law
www.GearhartLaw.com

                                       Trademark Expo 

Learn about trademarks, bring the kids for fun activities, and spend a day.  The USPTO announced the 2014 trademark expo Oct. 17-18 with workshops and activities for kids, costumed characters, and seminars for adults.  It's in Alexandria, VA at the USPTO headquarters.  If you're looking for something out of the ordinary to do in October, this may be it!  No registration is required for either the expo or the seminars.

 

USPTO Announces 2014 National Trademark Expo Exhibitors

Expo designed to educate public on importance of intellectual property

WASHINGTON – The U.S. Commerce Department’s United States Patent and Trademark Office (USPTO)  announced the exhibitors for the 2014 National Trademark Expo which, will be held on Friday, October 17 and Saturday, October 18, 2014 at the USPTO headquarters in Alexandria, Virginia. The free, two-day event helps support the mission of the agency by educating the public about the value of trademarks and their importance in the global marketplace through informational seminars, children’s workshops, displays of authentic and counterfeit goods, and other exhibits featuring registered trademarks. 

“In the midst of a dynamic intellectual property landscape, we recognize not only the value of keeping experienced practitioners well-apprised, but also our fundamental obligation to inform and encourage participation across the wider swath of IP creators and users,” said Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. “The National Trademark Expo is one of many USPTO domestic outreach and knowledge enhancement programs that serve this compelling purpose.” 

The 2014 National Trademark Expo exhibitors will include government entities, non-profits, small businesses, and corporations, each providing valuable information about trademarks. New exhibitors, including Canon U.S.A., Inc., The Lego Group, and U.S. Chamber of Commerce, will join returning exhibitors such as The Hershey Company, Girl Scouts of the USA, and the United States Air Force. Anson Williams of Happy Days, an entrepreneur, director, and past exhibitor, will discuss the importance of federally registered trademarks during the opening ceremonies on Friday, October 17.

http://www.uspto.gov/trademarks/notices/tmexpo.jsp

Photo and press release were copied from the USPTO website.  www.uspto.gov

Biobanks Conference - Patent Rights Workshop

By Elizabeth Gearhart, Ph.D., Patent Agent at Gearhart Law
www.GearhartLaw.com 

 

When a person donates their body to science after death, where does it go? It goes into a bank, called a ‘biobank’, where researchers can make withdrawals and use the appropriate biological samples and data for their research. While this may sound a bit morbid, biobanks serve an important function in helping researchers find cures for diseases. If you’re taking any medication at all, chances are the medication was researched and developed using withdrawals from a biobank. So what are the rules and challenges for biobanks?

European researchers and service providers who work in this industry are gathering for a conference in Helsinki Finland to discuss the industry and rules.  The conference is hosted by the National Public Health Institute of Finland. Starting on September 24th, the conference is titled:

HandsOn: Biobanks 2014
From Biobanks to Medical Innovations

http://www.handsonbiobanks.org/2014/

The agenda includes plenary sessions and interactive platforms, including a workshop on September 26th where Patent Attorney Susanne Somersalo, Ph.D., Esq., of Gearhart Law will participate as an expert bringing a US view into the discussion, because after all European researchers want to protect their inventions in the United States too.  The workshop is titled:

“The future and reality of biomedical patents – de minimis that biobanks should be prepared for?”

 

Susanne will be discussing the challenges in obtaining patents in this area, such as:

1) What is patentable? The answer to that question depends, as the U.S. courts continue to issue rulings on what constitutes nature (not patentable) and what constitutes human-made, in their opinion (patentable).

and

2) What patent rights do biobanks have? For instance, if a Finnish biobank supplies samples to a researcher who is using an NIH grant to conduct his/her research, who owns the patent rights?

If you’re an entrepreneur in the life sciences field, this is of importance to you. For more information, you can email Susanne directly at Susanne@gearhartlaw.com

 

A Way to Defeat a Troll - Inter Partes Review

 written by James Klobucar, Esq., Patent Attorney at Gearhart Law
www.gearhartlaw.com

Review This….

 

            Inter partes review may be a term many are not familiar with but it can be used as an instrumental tool in protecting one’s self and business. 

            Inter partes review was given life by the America Invents Act (AIA) signed into law back in 2012. This procedural maneuver enables a third party to challenge the validity of an issued patent. It was designed to be a quick and efficient mechanism for challenging an issued patent as opposed to the overtly costly litigation route. Inter partesreview proceedings are administrated by the Patent Trial and Appeal Board (PTAB). The proceedings are presided over by a panel of administrative law judges who ultimately issue a decision on patentability of the contested patent at the conclusion of the inter partesreview. Any party dissatisfied with the final decision may appeal directly to the Federal Circuit Court.

            One such proceeding instituted recently (August 25, 2014) involves Space Exploration Technologies Corporation (SpaceX) headed up by former PayPal founder Elon Musk, and Blue Origin, LLC led by Amazon founder Jeff Bezos. The focus of the proceeding is patent 8,678,321 granted to Blue Origin, which interestingly enough is entitled “Sea Landing of Space Launch Vehicles and Associated Systems and Methods.” The patent focuses on reusable rocket technology, which many, including Musk, believe is the key to affordable space travel for the mass populous. Generally speaking, the focus of the patent is a rocket booster that once jettisoned can return in a controlled landing and subsequently be reused thus saving a vast amount of resources and money.

            SpaceX contends that Blue Origin’s patent should be invalid given the prior art, or patents and patent applications, available at the time of issuance and that it gives nothing new to the world of rocketry. The patent, itself, is broad and contains very little detail on how Blue Origin hopes to achieve a reusable rocket. SpaceX contends the patent is essentially, “it goes up, and then it comes down.” Thus, sparking this proceeding.

            Now, in order to institute an inter partes review, one must put forth a reasonable likelihood that the petitioner (challenger to the validity of the patent) would prevail with respect to at least one of the arguments put forth. The standard necessary to invalidate a patent is by a “preponderance of the evidence.” Legally, this is a relatively low threshold and essentially means “more likely than not” or a 51% chance of success. SpaceX’s argument is that this patent teaches nothing new and therefore should have never been issued. They cite numerous patents and patent applications which they claim show and describe all of Blue Origin’s claims in the issued patent. There are many in the community who feel the same way and an oft expressed opinion is that the patent should have never issued in the first place.   

With this seemingly low threshold, there is a moderately good chance of success in invalidating this patent. Thus, if you are concerned about a competitor enforcing a “flimsy” patent against you, one can move to have it invalidated via inter partes review rather than ending up in a costly court proceeding. However, it is important to note that inter partes review is only available during the first year after one has been served with an infringement complaint.

            Further, inter partes review should be a useful mechanism for those battling so called “patent trolls” as this avenue can help prevent litigation and the overall lower threshold for invalidation noted above should make for a quick decision or settlement. Even yet, the claims, or the metes and bounds, of the patent are construed with a broader interpretation standard in an inter partes review than what one may find in a litigious courtroom. This again further bolsters the challenger’s position as opposed to a monetary driven litigation proceeding. A charge of infringement for a patent troll can now potentially quickly become a case of an invalid and unenforceable patent.

            Thus, one may use an inter partes review to seek an invalidation of an issued patent. The rules set forth by this review process are generally favorable to the challenger and can result in substantially less money spent than in litigation. This may be the right choice for the small business or sole proprietor looking to preserve their business and technology while limiting costs.

Further Reading:

http://www.uspto.gov/aia_implementation/bpai.jsp#heading-1

http://www.uspto.gov/aia_implementation/faqs_inter_partes_review.jsp

Alice vs. CLS Bank - An Abstract Decision About Abstract Ideas

written by David Postolski, Esq., Patent Attorney at Gearhart Law
www.GearhartLaw.com

On June 25 the United States Patent Office issued instructions for examiners to follow when examining claims to determine if the subject matter is eligible for patent protection in response to the Supreme Court decision of June 19, 2014 of Alice Corp. PTY ltd v CLS Bank International. Patent subject matter includes processes, machines, manufactures and compositions of matter as outlined in 37 CFR Section 101. Ineligible patentable subject matter includes abstract ideas, laws of nature or natural phenomenon. 

Reported as the decision to be the death of software patents, such conjecture is an exaggeration to say the least. The main question in Alice was whether claims to a computer implemented invention are abstract ideas and thus not patentable. Interestingly enough, the decision that was supposed to be the death of software patents never went into an analysis of what software is, nor what a business method is. The Alice decision instead, ruled that Alice's claims were deemed to be patent ineligible abstract ideas because the claims "generically recite computers in the claims and add nothing of substance to the underlying abstract idea” and a patent should ultimately not preempt “fundamental concepts i.e. ideas that are the building blocks of human ingenuity and modern commerce”. 

These instructions are supplements to the recently issued Mayo v Prometheus examiner guidelines except the Alice instructions focus squarely on a 2 part Analysis. 

The 2 part analysis requires examiners (and the federal courts) to 1st determine whether the claim recites or is directed to a patent ineligible concept such as an abstract idea. For example, in Alice, the abstract ideas were:

·        fundamental economic practices,

·        certain methods of organizing human activities,

·        an idea of itself,

·        mathematical relationships and formulas.

If the abstract idea is present in the claim the 2nd step follows. The 2nd Step involves the analysis of whether the elements of the claims or the combination of elements of the claim are sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. For example, as outlined in the Alice decision, “significantly more” could include:

·        improvements to another technology or technical fields,

·        improvements to the functioning of the computer itself,

·        meaningful limitations beyond general linking the use of an abstract idea to a particular technological environment. 

Example of limitations that do not satisfy the “significantly more” standard include:

·        adding the words "apply it" with an abstract idea,

·        adding mere instructions to implement the abstract idea,

·        requiring no more than a generic computer to perform generic computer functions that are well understood, routine and conventional activities known in the industry.

The Alice instructions have already been applied by the Federal Courts. Case in point -Digitech Image vs. Electronic for Imaging (Fed. Circuit 2014). The Digitech invention involved the tagging of digital images with information about the camera and the cameras color/spatial image qualities. The claims were directed to the device’s data set profiles as well as a method for generating a device’s data set profile. The data set profiles were simply information about the cameras qualities.

The court applied the 2 step analysis and determined that the patent in question involved the following abstract idea: "creation of two data sets by taking existing information such as measured chromatic stimuli and spatial stimuli and organizing this information into a new form. “ The court held that the claim involved an "ineligible abstract process of gathering and combining data that did not require input from a physical device."    The court then looked to see if the patent claim provided that "something more" that would transform the result into something patentable and there wasn't. The court further held that the claim simply recites a "process that employs mathematical algorithms to manipulate existing information to generate additional information" and that in of itself is not patentable.

We write this column today as the fallout from the Alice instructions is also being felt outside of the Courts as well. The Patent Office has been canceling Notice of Allowances and pulling granted claims while citing the Alice vs. CLS bank decision. However, on August 4, 2014, USPTO Commissioner for Patents Peggy Focarino , stated that “this limited action was closely-tailored and taken specifically in reaction to the Alice Corp. decision. We do not anticipate further review of any applications indicated as allowable under this process, as examiners are currently following the Alice Corp. preliminary instructions during examination (i.e., prior to allowance).” We have yet to experience this first hand but rest assured, we believe that through the public comment period (which ended on July 31, 2014) and due to the difficulty involved in defining what is an abstract idea, any fall out will be met by all of us with swift resolution and detailed analysis. 

Apple Protects Its Intellectual Property In Multiple Ways

written by Susanne Somersalo, Ph.D., Esq., Patent Attorney at Gearhart Law
www.GearhartLaw.com

           A few days ago the headlines hit the news that Apple can now apply to trademark its retail store design in Europe. The European Union court said that Apple can register an image of its store layout as a trademark with the German Patent and Trademark Office, which originally denied Apple’s application. Because the court decision is valid in 28 EU member states Apple may get trademarks for the store design not only in Germany but in all the EU countries.

            Wait a minute, isn’t a trademark for a word or phrase or logo?  Like the word mark Apple® or the logo with the apple – a design that everyone knows? How can a retail store design be trademarked?

            Actually, a trademark may be any recognizable sign, design or expression which identifies products or services of a particular source from those of others. Thus it actually may be anything that makes the consumer draw the connection between the goods or services provided and the provider. Of course every country has its own standards to define when a sign, design or expression draws this connection.  The point is that when an entrepreneur is considering applying for a trademark for their business, they should consider every aspect of that business and what parts can be trademarked.

            In the United States there are several trademarks for store designs, colors, sounds, and even scents. In addition to the word and logo marks, Apple has successfully trademarked various designs and sounds in connection with its services and products. The store design was already trademarked in the United States in 2011. The US Patent and Trademark Office has deemed that the store design distinguishes Apple stores from any other stores. When a consumer sees the glass building, she knows it is an Apple®-store, not a Microsoft®-store or Starbucks® coffee shop.

            In order to protect every aspect of its store designs, Apple also has design patents for the building glass panels, and for the staircase design. 

            One may think that this is a little bit of an excessive approach to protect one’s Intellectual Property. However, this IP is worth of a fortune.