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Posts Tagged ‘Los Angeles’

Patent Litigation in Good Faith

On July 29, 2001, the Court of Appeals for the Federal Circuit issued an important decision regarding patent litigation: Eon-Net LP v. Flagstar Bancorp (Fed. Cir. 2011).  Eon-Net is a patent holding company that primarily earnings as revenue through litigation and licensing fees, rather than developing manufacturing or marketing (also known as a patent troll).   The court awarded Flagstar $489,150.48 in attorney fees and costs and $141,984.70 in sanctions against Eon-Net.  Slip  Op. at 3.  In view of this opinion, patent owners may be wondering how to enforce and license their valid patent rights without incurring liability like Eon-Net.

The court imposed sanctions under 35 U.S.C. 285, which allows sanctions to punish exceptional cases of misconduct.  Specifically, the court found that Eon-Net violated Rule 11 of the Federal Rules of Civil Procedure because “(1) the patentee brought the litigation in bad faith; and (2) the litigation is objectively baseless.”  Slip Op. at 17.

The district court noted that Eon-Net’s behavior had an “indicia of extortion”.  Slip Op. at 22.  After evaluating Eon-Net’s behavior, the court noted that Eon-Net filed over 100 lawsuits, immediately followed by offers to settle at a price far lower than the cost to defend the litigation. Slip Op. at 22.  Settlements were offered at between $25,000-$75,000 based on the annual sales of the defendant.  Slip  Op. at 22-23.  Because these settlement offers were far lower than the cost of defending a patent litigation, the great majority of defendants chose to settle.

Furthermore, the court noted that EonNet failed to engage the claim construction process in good faith because Eon-Net destroyed relevant and important documents, attempted to evade a careful analysis of the claim terms in litigation, failed to offer a construction for any disputed claim terms, lodged incomplete and  misleading extrinsic evidence with the court, and submitted declarations that contradicted earlier deposition testimony by the declarants. Slip Op. at 18-19.

The court acknowledged that patentees should be able to fit be able to defend and profit from their intellectual property.  However, the court noted that this was not a case where the claims present a close call; rather, the specification unequivocally compels the claim constructions adopted by the district court.  Slip Op. at 15-16.

Before engaging in litigation, a patentee should have a valid argument that the opposing party is infringing its patent.  The infringement argument should be based on a good-faith interpretation of the claims.  If you believe your intellectual property rights are being violated, contact us if you need a patent attorney in Los Angeles to evaluate your case. Your patent attorney has the expertise to help you determine the scope of your intellectual property rights.

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Does a Notice of Abandonment mean I need to re-file my trademark application?

Short answer, not always.  A Notice of Abandonment is issued when a Trademark Applicant fails to take action by not filing a timely response to an Office Action or a Notice of Allowance.  The Notice of Abandonment triggers a two-month period wherein the Applicant can file a Petition to Revive Abandoned Application.  However, if the applicant failed to file a Statement of Use in response to the Notice of Allowance after expiration of the fifth extension (or 36 months from the date of the Notice of Allowance), the Applicant cannot revive the application and must re-file.  The Trademark Electronic System (TEAS) will alert the Applicant upon entry of the U.S. Serial Number at the time of filing the petition.

There are two types of Petitions to Revive:

  1. A Petition to Revive Abandoned Application – Failure to Respond Timely to Office Action.  This Petition must have an accompanying Office Action Response addressing all issues raised in the Office Action.
  2. A Petition to Revive Abandoned Application – Failure to File Timely Statement of Use Or Extension Request.  This Petition is necessary when an Applicant has failed to respond to a Notice of Allowance received in connection with an Intent To Use application. The Applicant will have the option of filing a Statement of Use or, if the Applicant has any of the 5 allotted extension remaining and the Petition not is being filed beyond 30 months from issuance of the Notice of Allowance, an Extension Request.

If you have received a Notice of Abandonment, we recommend you seek counsel from a Trademark Attorney immediately as the passage of time can reduce your chances of getting the Petition to revive granted.  Cotman IP is located in Pasadena, California just outside of Downtown Los Angeles.

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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.

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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.

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Patent Law Reform Update

Previously, we presented the Patent Reform Act of 2011. On March 8, 2011, the Senate passed S.23, or the “America Invents Act.”  The bill garnered bipartisan support, passing with a vote of 95-5.  The House of Representatives will be acting on patent law reform in the coming weeks.  If the America Invents Act becomes law, it will be the first major change to patent law in 3 decades.  Check back to stay informed of further developments.  As your patent attorney in the Los Angeles area, we will keep you updated on how to best protect your intellectual property in light of the America Invents Act.

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Can I trademark the title of my book?

The title of a single book or creative work* is not registrable on the Principal or Supplemental Register.  The name of a series of books or creative works may be registrable if it identifies or distinguishes the source of the goods.   However, a term used in the title of a series of books is not registrable if it merely identifies a character in the books.   Here are some examples given in Section 1202.08 of the Trademark Manual of Examination Procedure:

  • In re Scholastic Inc., 23 USPQ2d 1774, 1778 (TTAB 1992) (THE MAGIC SCHOOL BUS, prominently displayed on the cover of a series of books, has come to represent a source to purchasers and would be recognized as a trademark).
  • In re Scholastic Inc., 223 USPQ 431 (TTAB 1984) (THE LITTLES, used in the title of each in a series of children’s books, does not function as a mark where it merely identifies the main characters in the books).
  • In re Caserta, 46 USPQ2d 1088 (TTAB 1998) (FURR-BALL FURCANIA, used as the principal character in a single children’s book, was found not to function as a mark even though the character’s name appeared on the cover and every page of the story).
  • In re Frederick Warne & Co. Inc., 218 USPQ 345 (TTAB 1983) (an illustration of a frog used on the cover of a single book served only to depict the main character in the book and did not function as a trademark).

If you are the author of a book and wish to have a registered trademark for the title of the book some thought needs to be given about how to make that title part of a book series. More detail about trademark registration can be found on our website >> here. Our trademark attorneys can answer any questions if you need help.

* Examples of “single creative works” include books, videotapes, films and theatrical performances. (TMEP §1202.08)

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How can I get my copyright registration quickly?

Special handling is available to copyright applicant’s who require their application to be processed in an expeditious manner.  When selected, the registration can be received in as early as five (5) business days. The service is expensive (currently $760.00 per claim) and there must be a legitimate need for the expedited service.  There are only three circumstances under which the U.S. Copyright will grant special handling of an application:

1) Pending or prospective litigation

2) Customs matters

3) Contract or publishing deadlines that necessitate the expedited issuance of a certificate

In some jurisdictions a Copyright Registration is required before you can initiate suit in Federal Court. California only requires that the Copyright application be pending to initiate suit but this is not the case in all jurisdictions.

For further information on special handling go to the website for the U.S. Copyright Office www.copyright.gov or contact your Copyright Lawyer.  We are located just outside of Downtown Los Angeles in the City of Pasadena.

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Restriction Requirement compared to Election of Species

An Examiner may issue a restriction requirement and/or require an election of species. The Examiner typically does so at the beginning of prosecution before evaluating patentability.  One reason is that both restriction and election of species reduce the initial search performed by the Examiner. It is important to understand the difference between a restriction and an election of species.

If the Examiner believes that more than one patently distinct invention is claimed, the Examiner can issue a restriction requirement. To respond to a restriction requirement, one invention must be elected. The election of the invention may be done with traverse (arguing that the restriction is improper). The other claims will be withdrawn from consideration.

The Examiner may also require an election of species when multiple variations of an invention are claimed. The claims may include one or more generic claims. The generic claim encompasses all variations. For example, a generic claim may be recite an incandescent lightbulb with a filament, while the species may include incandescent lightbulbs with a bamboo filament, a carbon filament, and a tungsten filament. To respond, the Applicant must elect one species.  The Examiner will begin by searching for the elected species. If the elected species is allowable, the generic claims will be prosecuted. If a generic claim is allowed, the Applicant is entitled to consideration of claims to additional species that are dependent on the generic claim.

The Applicant may pursue withdrawn claims in a divisional application. Other inventions disclosed in the application may also be pursued in a continuing application as long as the original application is pending.

Restriction practice and continuation practice involve complex issues. Your patent attorney can help you understand and address these issues to help you maximize patent coverage. Cotman IP has experienced patent attorneys located in the Los Angeles area.

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