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Archive for December, 2011

Early IP Management

To protect your intellectual property, best practices are necessary through all stages of research and development.  Within any organization, it is important to make sure basic guidelines are followed.  Scientists and inventors within an organization should be aware of these best practices to ensure that intellectual property rights are preserved.  Below, a few key issues are explored.  These issues may affect your organization’s intellectual property rights even before an invention is identified for patenting.
Employment Contracts - Your agreements with employees and independent contractors should clearly identify ownership of any intellectual property generated as a result of the agreement.  By clearly spelling out the rights and obligations of each party, you can avoid inventorship and ownership disputes down the road.  If information contributed by a third party is used to produce an invention, it may be possible that the third party has rights in the invention, depending on the terms of use for that information.
Invention Disclosure - Members within the organization should understand what constitutes a patentable invention.  There should be a process in place for the submission of potential inventions early on.  This way, steps can be made to ensure that your intellectual property rights are not compromised by events such as sales, marketing efforts or disclosures to third parties.
Confidentiality - Members of the organization should be aware of how to handle confidential information.  Furthermore, members should understand what constitutes a public disclosure of an invention, as well as the implications that public disclosure may have on intellectual property rights.  When appropriate, non-disclosure agreements should be used to maintain confidentiality.  When public disclosures are made, it is important to keep track of the dates of such disclosures so that any patent filings can be made in a timely manner.

Outside IP counsel can evaluate your organization’s practices to determine if your practices can be improved to preserve your intellectual property rights.  If you are looking for outside patent counsel in the Los Angeles area, please feel free to contact us.
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When can I use the registered trademark ® symbol after my trademark?

 You can use the ® once your trademark has been federally registered in the United States.  Filing an application for federal registration is not sufficient.  Until then, it is advisable to accompany uses of the mark with a “TM” symbol. Thus you should use the trademark as follows: MARKTM.  Improper use of the federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. See Trademark Examination Procedure (TEMP) §906.04.  Misuse of the federal registration symbol is usually due to misunderstanding as to its purpose, rather than actual fraudulent intent. Common reasons for improper use of the federal registration symbol that do not indicate fraud are:

  • Mistake as to the requirements for giving notice, which is given after registration for a trademark and upon first publication for Copyright [©];
  • Inadvertence, misunderstanding, or voluntary action by the printer;
  • The mistaken belief that registration in a state or foreign country gives a right to use the registration symbol;
  • Registration of a portion of the mark, i.e. a registered word mark, but not the composite mark;
  • Registration of the mark for other goods;
  • Continued use of the symbol on an expired or cancelled registration of the subject mark;
  • Another mark to which the symbol relates on the same label.

See TMEP 906.02.

 For more information on trademarks, please contact your trademark attorney or intellectual property lawyer.  We are located just outside Downtown Los Angeles in the City of Pasadena.  For more information on trademarks, please explore the rest of our trademark page.

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More Complications in Patenting Software

The Board of Patent Appeals and Interferences (BPAI) has affirmed an unpatentable subject matter rejection of an IBM application that claims a “computer-implemented method for partitioning a domain dataset.”

The BPAI held that the method claim did not contain patentable subject matter because it “could be performed by a human writing on a piece of paper.”  The Board stated that “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.”

In addition to the method claim, the application also included claims for a “system for partitioning” that included physical hardware such as “a memory” and “a processor”.  However, the BPAI found that the true invention was the process and that the system claims were simply reformulated versions of the method claim.  The court considered the “underlying invention for patent-eligibility purposes” to make the determination.

“In analyzing the underlying invention of independent “system” claims 26, 27, and 28 as a process, we again conclude that the scope of the recited functions (steps) covers functions that can be performed in the human mind, or by a human using a pen and paper (e.g., claim 26: “establish an evaluation function” and “partition said domain subset”). Therefore, we conclude that unpatentable mental processes fall within the subject matter of independent claims 26-28.”

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