Apple's latest patent - no more pausing the movie

written by Matthew G. Miller, Patent Attorney at Gearhart Law

Apple Wants You Snack Freely While Watching Netflix

            A few short weeks ago Apple, Inc. was granted a patent on a piece of technology that, if implemented, will change the living room forever. Ever since January of 2007, when Apple released the first generation of the Apple TV, the Cupertino company has been attempting to integrate themselves into the living room. With the issuance of United States Patent No.: 8,918,822 (“the ‘822 patent”), Apple has continued this trend.

            The ‘822 patent aptly describes a problem that we have all experienced: “…a group of people may sit in a room with the fixed display system and begin watching a movie or other content. Then, during the viewing when someone decides to leave the room (e.g. to prepare a snack), the other viewers must either pause the viewing while they all wait for the departed viewer to return, or let the presentation continue and the returning viewer may miss some of the presentation.

            This system works by first viewing content on a screen via a fixed display system via any device that is capable of receiving and transmitting streaming content to a separate device. Such devices include a set-top box, a network-enabled DVD player, an Apple TV, a Google TV, a Roku Streaming Player, a digital video recorder (DVR), and video game consoles (such as an Xbox 360).


            When a user wishes to view the streaming content on their portable electronic device (mobile phone/tablet), they have a number of options. First, if the content is coming from a specific provider that has a proprietary application on the portable electronic device (e.g. Netflix, Hulu), the system can interface directly with that application. Alternatively, the system may allow a user to choose from a number of active data streams. If the previous two methods are not available, the system also provides for the ability to mirror the content on the portable mobile device.

            As is clear, Apple is making strides to provide its customers with a seamless viewing experience. Interestingly, this is directly in line with the late Steve Jobs’ proclamation that he would like Apple to “create an integrated television set that is completely easy to use ... It would be seamlessly synced with all of your devices and with iCloud ... It will have the simplest user interface you could imagine. I finally cracked it."

            Whether the contents of the ‘822 patent will ever make it to market remains to be seen, however, this type of innovation is indicative of future advances being brought to a living room near you.


EAT MORE KALE trademark


EAT MORE KALE: One Man’s Showdown With A Corporate Giant


By: James Klobucar, Patent Attorney at Gearhart Law

Back in 2001, Bo Muller-Moore, a Vermont resident, started using the phrase “Eat More Kale,” a seemingly innocuous phrase, to promote the green leafy vegetable. Mr. Moore generated some attention amongst his local Vermonters once he began making t-shirts and other items bearing the phrase. Fast forward about a decade, and Mr. Moore decided to capitalize on what was beginning to become a burgeoning business by filing a federal trademark application with the United States Patent and Trademark Office (USPTO) on the phrase “Eat More Kale.” However, receiving the federal trademark protection he so desired was going to be no easy task.

Enter Chick-fil-A, a fast food chain with over 1800 locations nationally. Chick-fil-A first sent a cease and desist letter to Moore in 2006, a full five years before his federal trademark application filing. The letter did not have its intended effect and by and large the corporate giant left Moore alone. Once the federal trademark application was filed, however, Chick-fil-A increased the legal vices on him considerably. The company in a subsequent cease and desist letter claimed that Moore’s phrase “Eat More Kale” was too similar to Chick-fil-A’s trademarked “Eat Mor Chikin” slogan. 

About four months after that initial trademark filing, Mr. Moore received the first rejection of his application on minor technical defects in the application that were easily curable. However, a mere four days after this rejection was issued, “someone” anonymously submitted information to the trademark examiner encouraging them to examine Moore’s application in light of Chick-fil-A’s trademark registrations, which by the way is a perfectly legal procedural maneuver. 

A few months later, a new rejection was issued for Mr. Moore’s application under Section 2(d) of the Trademark Act as his trademark presented a “likelihood of confusion” with the Chick-fil-A trademarks so kindly brought to the trademark examiner’s attention. Under this section, registration of a trademark is barred if the applied for trademark “so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.” The legal wrangling between Moore and Chick-fil-A had thus begun and subsequently took on a life of its own through the media.

Moore, to his credit, was able to collect tens of thousands of Facebook followers and obtain equally large numbers of signatures to a petition supporting his cause. This was one man’s showdown against a corporate giant, and he wasn’t prepared to go quietly. By leveraging the powers of social media and attracting the support of Vermont state officials, Moore was able to receive the help of pro-bono lawyers including law students from a legal clinic at the University of New Hampshire School (UNH) of Law to assist him in fighting the legal technicalities involved with his case.

According to one of the lawyers involved with the case Attorney and UNH Professor Ashlynn Lembree, “we presented evidence and arguments [to the trademark attorney] that the marks are different, particularly in light of the connotation evoked by spelling differences and emphasis placed on the direct object of a command sentence, combined with the point that KALE and CHIKIN are different; that the abundance of third party uses of EAT MORE _____ on t-shirts means that consumers are attuned to placing emphasis on the third word to differentiate source; that comparable parallel marks in the same goods have been allowed to co-exist on the U.S. Trademark Register; and that consumers of the respective products from these two sources are sophisticated in their purchasing decisions in light of political and nutritional views that tend to be connected with the respective sources.”

Thanks to the thorough and well-versed arguments presented in the attorneys’ response to the rejection, the trademark “Eat More Kale” was allowed by the USPTO on December 9, 2014. In making the allowance, the trademark examiner provided no explicit reasons for allowing the application. This is not particularly surprising given that it is not required that any reason be explicitly enumerated. Thus, we may never know exactly why the trademark examiner allowed the application nor why Chick-fil-A seemingly gave up the fight they so wholeheartedly invested in and fought many times before. My guess is there’s at least one guy out there who really doesn’t care.

Overall, the victory is considered by many to give credence to small business owners, the local/farm food movement, and even the state of Vermont. Being a graduate of the University of New Hampshire myself, it’s great to see the type of assistance that exists in the legal community that enables it to play a pivotal role in assisting small start-ups and entrepreneurs and helps them prevail on the merits against any entity big or small. As Vermont’s governor Peter Shumlin said “The message is out: Don’t mess with Vermont. And don’t mess with Bo. In Vermont, we care about what’s in our food, who grows it, and where it comes from. That’s what Bo and Eat More Kale represent. And that’s something worth fighting for.”

Further reading:

Russia Modernizes its Patent Legislation


written by Susanne Somersalo, Ph.D., Esq., patent attorney at Gearhart Law

It is now safer for foreign companies to enter the Russian markets--- Russia modernizes its patent legislation

The IP laws in Russia have come a long way since the Soviet Union collapsed. The Soviet Union used to provide something that was called an Author’s Certificate to an inventor. However, inventions were state property and anyone could use the inventions without the author’s permission. The author, however, was entitled to a compensation for the exploitation of the invention. The maximum compensation was regulated by the laws.

The Russian Federation adopted a new patent law in 1991 which was based on the Soviet law. This law has since been amended twice and in October 2014 there was yet a new amendment which considerably improves the rights of inventors. From the perspective of foreign business owners, the amendments are especially important.

There are two basic ways to protect inventions in Russia: the invention may be protected by a patent or by a utility model. In addition to these two forms one can also protect a design.

The requirements for a patent have been similar to what we have in the United States, in that the invention has to be novel, it has to have an inventive step, and there has to be an industrial use for the invention. However, unlike the U.S. or European patent laws, the Russian law did not set any specifications as to what extent the claimed invention had to be described. The new law requires “sufficient description” which is similar to the US law requirement that the description be “enabling”.

A remarkable change in the law is the novelty requirement for the utility models. A utility model is very similar to utility models or petty patents in various other countries, such as Germany or China. A utility model is valid for a shorter period than a patent and it is usually examined and issued faster than a regular patent. What was the huge flaw in the Russian patent law, especially from the view point of a foreign company, was that only documents published in Russia were considered as prior art for utility models. This resulted in situations where foreign companies trying to enter Russian markets without patent rights in Russia got sued by Russian ‘trolls’ who had gotten rights in Russia by filing utility models for what the foreign companies had already patented or practiced outside Russia.   This is now made impossible by amending the definition of prior art to include publications from anywhere in the world.

Another major change is the amendment regarding assignments and infringement. Firstly, the new legislation bans payment free assignments. In practice this means that there has to be some sort of consideration. Also the new law requires recordation of assignments and licenses.

Secondly, the new legislation improves the rights of the infringed party. From the beginning of 2015, the infringed party can ask not only for an injunction but also for compensation from the infringement act. The compensation has been limited to be between 10,000 and 5 million Rubles which equals to $300 -$150,000. This may not sound like much, but considering that before this there was no way to get compensation, this is a major change. Instead of an injunction the infringed party may also allow the infringer to continue using the technology with a license that has double the price that would usually be imposed in a similar case.

In conclusion, the amendments modernize the IP legislation of Russia and bring it into conformity with international norms. This modernization will help foreign companies to enter the Russian marketplace as well as help Russian companies and inventors to protect their intellectual property against infringers.

Steve Jobs - Still Getting Patents After Death

written by Elizabeth Gearhart, Ph.D., patent agent at Gearhart Law

Can you get a patent on your invention after you die? Yes! To cite a famous example, Steve Jobs, the recent CEO of Apple, has received 141 patents since he passed away. Not surprising that one of the most inventive, sharpest business men in America would value patents so highly. 


Now what happens? We thought we’d answer a few of the more obvious questions:


Q. Who gets the rights to those patents and what happens if an inventor has passed away before the patent has issued?

A. Since patents are ‘intellectual property’, they are treated like property. The rights of an inventor can be transferred or sold (assigned), or passed down as part of his/her estate. If, for instance, your parent had a patent and passed away while it was still valid, he/she could bequeath the rights to the patent to you in their will, and you would own the patent to either sell or to use yourself. If the patent application had been filed but the patent hadn’t yet been allowed or issued, the rights to the application pass down to you and you can assign the application or prosecute the patent application to issuance of the patent itself if you so choose.

This is true even if the inventor is still alive. He/she can assign their patent rights to another individual or to a company.  This is often done when someone sells their patent, or when they work for or own a company and assign their rights to the company. For instance, Apple’s latest patent, “Display screen or portion thereof with graphical user interface” issued on December 2, 2014, has four inventors, two in Cupertino and two in San Francisco, but the patent belongs to Apple as the assignee.


Q. What happens if you just leave the deceased inventor off of the patent application?

A. Bad things can happen, that’s what. If all of the inventors aren’t listed on a patent application, the patent that issues can be ruled invalid. Then everyone loses their patent rights, even the living inventors. 

This is true too if all inventors are living and one or more are left off of the application. In the case where one inventor has a dispute and refuses to sign the patent filing papers (the declaration, for instance), the patent application can still be filed with a statement saying that the inventor refused to sign. But his/her name must be on the application as an inventor or the patent can be invalidated.


Q. If I inherit a patent and want to sell my rights, but there are other inventors, can I sell just my rights?

A. Yes, absent any previous agreements that would prevent your doing otherwise. It would be wise to consult an attorney first in this case. Once you sell your rights, however, you have no say in how the patent is managed. The rights to that go to the assignee, and the other inventors retain their rights. They get to control how to use the patent to make money. If you’ve sold your patent for an on-going share of the income from sales of the product it protects, you should make sure you have an attorney review the contract to make sure there are clauses that help ensure that the assignee makes a good faith effort to sell the product.

If you sell a patent application instead of a patent, the assignee and other inventors get to decide how best to prosecute the application and you get no say in it.


If you have any questions about patents, trademarks, or copyrights, feel free to call us at Gearhart Law at 908-273-0700 or email us at


Back to Steve Jobs and his patents:

The Smithsonian Institute has put together an online exhibit of Steve Jobs’ patents and trademarks titled:

The Patents and Trademarks of Steve Jobs: Art and Technology that Changed the World

You can access it at:  

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:

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

            About a year ago, a crowdfunding campaign was run by 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 

                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



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 For further information, see Official Gazette

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

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

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

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

By Elizabeth Gearhart, Ph.D., patent agent at Gearhart Law

                                       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.

Photo and press release were copied from the USPTO website.