Cotman facebook pageCotman IP twitter pageCotman linkedin

Archive for April, 2011

Fast-track patent processing on hold

Due to cost-cutting in the federal budget, the United States Patent and Trademark Office is putting a program to expedite patent processing on hold.

Earlier this year, the Patent Office announced a plan to expedite patent applications for an additional fee of $4000.  In 2009, the Patent Office reported that the average time to process a patent application was 34.6 months.   In contrast, expedited applications would be processed in 12 months.  The extra fees would support the hiring of additional Examiners, which would reduce the overall backlog at the Patent
Office.

The program was originally scheduled to be implemented in May 2011.    However, with the cuts in funding, the Patent Office no longer has the means to process the expedited applications without affecting
non-expedited applications.  However, the Patent Office has indicated that the program may still be implemented in the future.

Posted in Announcements | No Comments »

Why do I have to disclaim a portion of my trademark?

The Examiner may require the applicant to disclaim a portion of the applied for mark when the mark has an unregistrable element, i.e. a portion of the mark is descriptive or contains a common industry term.  The disclaimer allows registration of the mark, without creating a false impression as to the registrant’s rights in those certain elements of the mark that are not registrable.    Thus the required language: “No claim is made to the exclusive right to use ‘________’ apart from the mark as shown.”  The disclaimer will appear in the trademark records of the United States Patent and Trademark Office as well as on the Certificate of Registration.

The significance of the disclaimer as conveyed in Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats. 1954): “As used in trade mark registrations, a disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark.”   However, the disclaimed portion of your mark is not likely to be considered when comparing two marks that may not otherwise be confusingly similar marks, as the claimed portion of your mark becomes the dominant portion of your mark.  See, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) (even though applicant’s mark PACKARD TECHNOLOGIES (with “TECHNOLOGIES” disclaimed) does not incorporate every feature of opposer’s HEWLETT PACKARD marks, similar overall commercial impression is created);  In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO COMBOS (with “COMBOS” disclaimed) held likely to be confused with MACHO (stylized), both for food items as a part of restaurant services).

That said, failure to comply with a requirement to disclaim was held to be a basis for refusal to register.  (TMEP 1213.01)  If you have been asked to disclaim a portion of your mark, you contact your trademark attorney.   We are located in Pasadena, California, just outside of Downtown Los Angeles.

Posted in Uncategorized | No Comments »

Why do I have to disclaim a portion of my trademark?

When you get an Office Action for your pending trademark application the Examiner may require you as the Applicant to disclaim a portion of the applied for mark. This generally means the mark has an unregistrable element, i.e. a portion of the mark is descriptive or contains a common industry term.  The disclaimer allows registration of the mark, without creating a false impression as to the registrant’s rights in those certain elements of the mark that are not registrable. Thus the required language: “No claim is made to the exclusive right to use ‘________’ apart from the mark as shown.”  The disclaimer will appear in the trademark records of the United States Patent and Trademark Office as well as on the Certificate of Registration.

The significance of the disclaimer as conveyed in Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ 486, 486-87 (Comm’r Pats. 1954): “As used in trade mark registrations, a disclaimer of a component of a composite mark amounts merely to a statement that, in so far as that particular registration is concerned, no rights are being asserted in the disclaimed component standing alone, but rights are asserted in the composite; and the particular registration represents only such rights as flow from the use of the composite mark.”   However, the disclaimed portion of your mark is not likely to be considered when comparing two marks that may not otherwise be confusingly similar marks, as the claimed portion of your mark becomes the dominant portion of your mark.  See, e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) (even though applicant’s mark PACKARD TECHNOLOGIES (with “TECHNOLOGIES” disclaimed) does not incorporate every feature of opposer’s HEWLETT PACKARD marks, similar overall commercial impression is created);  In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO COMBOS (with “COMBOS” disclaimed) held likely to be confused with MACHO (stylized), both for food items as a part of restaurant services).

That said, failure to comply with a requirement to disclaim was held to be a basis for refusal to register.  (TMEP 1213.01)  If you have been asked to disclaim a portion of your mark, you contact your trademark attorney.   We are located in Pasadena, California, just outside of Downtown Los Angeles.

Posted in IP Pitfalls, Trademark Pitfalls, Trademark Registration Errors | No Comments »

Do I qualify for Small Entity Status?

A patent may be filed at the United States Patent and Trademark Office under small entity status.  Small entities only pay 50% percent of most Patent Office fees, including application filing fees, application size fee, excess claims fees, extension of time fees, revival fees, appeal fees, patent issue fees, statutory disclaimer fees and maintenance fees.

The following entities qualify for small entity status:

  • a small business concern as defined under section 3 of the Small Business Act (i.e. the number of employees, including affiliates, does not exceed 500 persons)
  • an independent inventor
  • a university or other institution of higher education located in any country
  • a non-profit organization as described in § 501(c)(3) of the Internal Revenue Code and exempt from taxation under § 501(a)
  • any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country
  • any nonprofit organization located in a foreign country which would qualify as a nonprofit organization if it were located in this country

Additionally, to qualify for small entity status, no large entity can have rights in the invention.  Specifically, a small entity may not have “assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization.”

Because of the provisions regarding licensing to large entities, it is possible to qualify as a small entity for one invention but not another.  Failing to properly determine and/or notify the Patent Office of a change in status can result in the invalidity of your patent, leading to the loss of any patent rights.   Make sure you notify your patent lawyer of any relevant changes in your business and/or licensing agreements that may affect your entity status.   If you have any questions, feel free to contact a qualified patent attorney at Cotman IP in the Los Angeles area.

Tags: , , , , , ,
Posted in IP Pitfalls, Patent Pitfalls, Patent Preparation Errors | No Comments »

How can I patent my idea in the U.S. in a hurry?

By filing a Request for Prioritized Examination, pursuant to new 37 CFR 1.102(e), which will be available May 4, 2011. The United States Patent and Trademark Office (USPTO) is revising the rules of practice in patent cases to implement a procedure under which applicants may request prioritized examination at the time of filing of an application, upon payment of appropriate fees and compliance with certain requirements.  The aggregate goal for processing applications under prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.  The fee for filing a request for prioritized examination is $4,000, in addition to filing fees for the application.

A request for prioritized examination may be submitted with any original utility or plant application filed on or after May 4, 2011.  Under a new 37 C.F.R. 1.102(e), the request for prioritized examination will not be granted unless:

  • the application is an original utility or plant nonprovisional application filed under 35 U.S.C. 111(a) that is complete as defined by § 1.51(b), with any fees due under § 1.16 (the filing fee, search fee, examination fee, any applicable excess claims fee, and any applicable application size fee) paid on filing;
  • the application is filed via the Office’s electronic filing system (EFS–Web) if it is a utility application;
  • the request for prioritized examination, including the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and the publication fee set forth in § 1.18(d) are present upon filing; and
  • the application contains or is amended to contain no more than four independent claims, no more than thirty total claims, and no multiple dependent claims.

Because plant applications may not be filed via EFS-Web, the USPTO will accept a request for prioritized examination in paper when it accompanies the filing of a plant application.

The USPTO is limiting requests for prioritized examination under § 1.102(e) to a maximum of 10,000 applications during the remainder of fiscal year 2011. The USPTO will revisit this limit at the end of fiscal year 2011.

Time is of the essence.  So, make prioritized examination a priority and contact your patent attorney at your earliest opportunity.  We are located just outside of Downtown Los Angeles in the City of Pasadena.

Tags: , , , , ,
Posted in Announcements, IP Pitfalls, Patent Preparation Errors | No Comments »