A Blog on How to Avoid Intellectual Property (IP) Pitfalls

Cotman IP 2012 – Holiday Event

admin — Fri, 18 Jan 2013 17:42:32 +0000

Our 2012 Holiday Event … a day in the old west. But for our TXTing and answering emails on horseback it was a throwback to a bygone era. Conclusion? Cars are way better than horses but it sure was a beautiful day and a great way to end the year!

New Standards for “Willful Patent Infringement”

admin — Mon, 25 Jun 2012 22:42:00 +0000

35 U.S.C. provides for enhanced damages (up to three times actual damages) in certain cases of patent infringement. Willful Patent Infringement must be determined to grant the court the option to award enhanced damages.

“Objective Recklessness” is one of the factors in the test for Willful Patent Infringement. To prove Objective Recklessness, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. Objective Recklessness is thought of as between gross negligence and intentional harm.

Willfulness Patent Infringement has been traditionally decided by a jury. The court in Bard Peripheral Vascular, Inc. et. al. v. W.L. Gore & Assocs. Inc. recently ruled that “Objective Recklessness” test is a question of law, to be decided no longer by the jury, but by the judge.

What are acceptable specimens for marks used on publications?

admin — Mon, 18 Jun 2012 17:19:47 +0000

Pursuant to TMEP 904.02(c)(iii), “An application for registration of a mark for publications is treated the same as any other application with respect to specimen requirements. The USPTO does not require a complete copy of the publication or a title page in every case. However, the examining attorney may require a copy of the publication under 37 C.F.R. §2.61(b) if he or she believes it is necessary for proper examination. For example, a copy of the publication might be necessary to determine whether a mark is merely descriptive of the goods.”

When is a description of the mark required on a trademark application?

admin — Thu, 31 May 2012 23:06:55 +0000

Whenever the applied for mark is not standard characters, a description of the mark must accompany the application to avoid an unnecessary Office Action. For example, a description is always necessary when:

(1) The mark is three-dimensional, or a configuration of the goods or packaging (TMEP §§807.10 and 1202.02(c)(ii));
(2) The drawing includes broken lines to show position or placement or to indicate a portion of the product or packaging that is not part of the mark (TMEP §§807.08 and 1202.02(c)(ii));
(3) The mark includes color (TMEP §§807.07(a) and 1202.05(e));
(4) The mark includes motion (TMEP §807.11); or
(5) The mark is a sound, scent, or other non-visual mark (37 C.F.R. §§2.37, 2.52(e); TMEP §§807.09 and 808.01).

USPTO’s Proposed Rules for Micro Entities

admin — Thu, 24 May 2012 00:31:01 +0000

The USPTO recently published proposed rules for implementing the micro entity reduced fees of the America Invents Act (AIA). For qualifying applicants, there will be a 75% fee reduction for certain filing fees. Some key points to note are:

Establishing Micro Entity Status
Must be established by filing a Certificate before or simultaneously with a Micro Entity fee payment.
Must be established in each patent application (even divisional and continuation applications).
Must be verified each time a Micro Entity fee payment is made.

Notifying the USPTO With the Loss of Micro Entity Status
Notification must be filed before or simultaneously with paying any fee after Micro Entity status is lost. You may not just pay the additional fees without also a notification.

When Will the new Micro Entity Discounts be Available?
Micro Entity fees will be available once the USPTO exercises its new fee-setting authority, and will apply to fees for filing, searching, examining, issuing, appealing, and maintaining a patent/application.

More details may be found here: https://www.federalregister.gov/articles/2012/05/30/2012-12971/changes-to-implement-micro-entity-status-for-paying-patent-fees#p-3

U.S. Customs can help you enforce your patent, copyright and trademark rights

admin — Sat, 19 May 2012 04:43:32 +0000

The U.S. Customs and Border Patrol can help you protect your intellectual property rights. When infringing goods are imported, Customs has the authority to seize goods that infringe a trademark, copyright or patent.

Because injunctions are issued less frequently in federal courts, IP owners must often wait until the end of trial to determine if a potential infringer must cease its actions.

When goods are imported across the U.S. border, the International Trade Commission offers a quicker alternative. When an exclusion order is obtained from the International Trade Commission, Customs is authorized to seize infringing goods. This procedure provides IP owners an effective method for preventing infringing goods from entering the country.

If you believe your intellectual property rights are being infringed by the importation of goods into the United States, an intellectual property attorney can help you evaluate your options. Cotman IP provides intellectual property law services in the Los Angeles area.

How is a Service Mark used in commerce?

admin — Tue, 08 May 2012 19:42:38 +0000

The following are three examples of how a service may be rendered in commerce: (1) the applicant’s services are rendered across state lines; (2) customers come across state lines in response to advertising for the services; and (3) the applicant’s licensees or franchisees are located in more than one state, and they use the mark. See TMEP 1301.03(b)

Building an Effective NDA – Part 1

admin — Wed, 04 Apr 2012 01:32:41 +0000

INTRODUCTION
A Non-disclosure Agreement (NDA) is legal contract between you and at least one other party to not disclose specific shared information. NDAs are used to share confidential information with another party while legally forbidding that party from disclosing the information.

TYPES
NDAs are either two-way or one way. A one-way NDA is used when only one party is sharing information and the other party agrees to keep it confidential. A two-way NDA is used when both parties are sharing confidential information with each other and both agree to keep information shared by the other confidential.

COMMON SECTIONS TO BE INCLUDED

1. A listing of the parties in the agreement
SAMPLE EXCERPT
This NON-DISCLOSURE AGREEMENT (this “Agreement”) is made and entered into as of the __ day of _________, 2012, by and between _______________, a _______ ___________ (including its affiliates), and ________, INC., a _____ corporation (including its affiliates). _______ and _____ may each be referred to herein as a “Party,” and collectively, as the “Parties.”
The Parties have expressed interest in a possible business transaction which may involve the development of products or services through the use of proprietary information (a “Transaction”).

2. Define confidential information. List all information to be held confidential.
SAMPLE EXCERPT
For purposes of this Agreement, “Confidential Information” means all information provided or made available by or on behalf of ____ in connection with the evaluation or negotiation of the Transaction, whether furnished before or after the date of this Agreement, whether or not labeled or otherwise identified as confidential and regardless of the form or format of the information (written, verbal, tangible or intangible, electronic or otherwise) or the manner or media in or through which it is furnished to or otherwise obtained by the ___ or any officer, director, employee, agent, partner, member, manager, lender, adviser or other representative (including any accountant, attorney or financial advisor) (each, a “Representative,” and collectively the “Representatives”) of the ____, including, without limitation, all nonpublic personal information regarding customers, consumers or employees of _____ that may be disclosed under this Agreement (“Consumer Information”), the terms of this Agreement or any subsequent agreement concerning the possible or actual formation of a Transaction. The term “Confidential Information” also includes all reports, analysis, notes, studies, forecasts, compilations, interpretations or other information based on, containing or reflecting any Confidential Information. Notwithstanding anything contained herein to the contrary, Confidential Information shall not include information that: (a) is or has become generally known to the public through no direct or indirect act or omission of the _____ or any of its Representatives; (b) was already known by, or is or becomes lawfully available to, the ____ or its Representatives from a source other than ____ or its Representatives and who is not prohibited from disclosing the Confidential Information to the _____ by any contractual, legal or fiduciary obligation; or (c) the _____ demonstrates by written evidence was independently developed by the ____ or its Representatives without any reliance on the Confidential Information. Confidential Information will not be deemed to be generally know to the public solely by reason of having been included in a patent or copyright application filed in a country in which such applications are not kept confidential or are published as part of the patenting or copyright process. “Generally known to the public” means only information that is generally known to the public in the country in which the Confidential Information is sought to be used, and does not include information that can be derived only through significant expenditure of time or effort to assemble, compile or reconstruct, even though individual portions of the information may be publicly available.

3. Definite confidentiality obligations.
SAMPLE EXCERPT
(a) The _____ shall maintain in strict confidence the Confidential Information and will use the Confidential Information solely for the purpose of evaluating and consummating a Transaction and for no other purpose. The ____ shall not, without the prior written consent of ____, disclose or permit to be disclosed any Confidential Information to any person other than the _____ Representatives who are assisting in the evaluation and performance of a Transaction and who reasonably need to know the Confidential Information. Such persons shall be advised by the Company of the confidential nature of the Confidential Information and shall be bound to keep the same confidential to the same extent as the Company. The ____ shall be liable for any violations of this Agreement by any of its Representatives.
(b) The ____ shall take all reasonable measures to protect the secrecy of, and avoid disclosure or use of, the Confidential Information in order to prevent it from falling into the public domain or the possession of persons other than those persons authorized under this Agreement to have access to the Confidential Information. Such measures shall include, but not be limited to, the same standard of care that the ____ uses to protect its own Confidential Information, which shall be no less than a reasonable standard of care.
(c) Without the prior written consent of _____, the _____ will neither itself, nor permit any of its Representatives to, disclose to any person any information with respect to (i) the fact of its receipt of, or access to, any Confidential Information, (ii) the fact, nature or status of any discussions between ______ and the _____, or (iii) any other facts or information with respect to the nature, terms or status of a Transaction.
(d) The _____ agrees to notify _____ in writing of any actual or suspected breach of this Agreement, including, without limitation, any misuse, misappropriation or unauthorized disclosure of the Confidential Information that comes to the attention of the _____ or any of its Representatives.

4. Define the disclosure period and the length of confidentiality.
SAMPLE EXCERPT
This Agreement shall be effective on the date last below written and shall continue in full force and effect until ____ supplies Company with the last item of Confidential Information and at all times thereafter. The obligations of ____ hereunder shall survive any termination of discussions regarding the Transaction between ____ and Recipient. Unless otherwise agreed in writing, this Agreement shall govern Confidential Information disclosed by ____ to ____ prior to (as well as after) the effective date hereof.

To be continued…

NOTE: The SAMPLE EXCERPT provided here are not tailored to your particular needs and situation and should be not used as such. Please consult a qualified attorney to create a NDA according your needs.

Can I use my catalog as a specimen for my goods?

admin — Tue, 27 Mar 2012 16:53:49 +0000

In certain cases it is appropriate to use a catalog as a specimen for goods. The standard is that the specimen must show the mark as used on or in connection with the goods in commerce. More specifically, a trademark specimen should be a label, tag, or container for the goods, or a display associated with the goods. 37 C.F.R. §2.56(b)(1). In the case of Lands’ End Inc. v. Manbeck, 797 F. Supp. 511, 24 USPQ2d 1314 (E.D. Va. 1992), the applicant had applied to register “KETCH” for purses. The Court determined that the catalog was not mere advertising and that it met the relevant criteria for displays associated with the goods.

A catalog will meet the criteria for display associated with the goods provided that it: “(1) includes a picture or a sufficient textual description of the relevant goods; (2) shows the mark sufficiently near the picture or textual description of the goods to associate the mark with the goods; and (3) includes the information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders).” TMEP §904.03(h)

For more information on trademark specimens, contact your intellectual property attorney. We are located near Downtown Los Angeles, in the City of Pasadena, California.

Non-Disclosure Agreements – Intro

admin — Fri, 16 Mar 2012 07:21:12 +0000

Your right to protect your invention may be affected when you tell your invention to others. Disclosure of your invention can cause you to lose your ability to obtain a patent. After a printed publication of your invention, you have one year to file for a patent. After the year elapses, you are barred from patenting the invention. The term “printed publication” has a much broader meaning than a layperson might think. Distributing even a single copy of a document can trigger the one-year period – even a poster presentation, marketing materials, or a college thesis.

By treating your disclosures and documents as confidential, you can avoid triggering this statutory bar to patenting your invention. Whenever, disclosing your invention, the best practice is to have a Non-Disclosure Agreement (NDA) or Confidentiality Agreement with the party you are disclosing to. An exception is when you are discussing your invention with your attorney, because strict confidentiality rules already apply to attorney-client communications.