Business and Tax Lawyer Blog

Recently, there was a three page lawsuit filed against the Jacksonville Jaguars for copyright and patent infringement. The plaintiff in the lawsuit is claiming that the Jaguars violated his rights in a “Three Point Stands” device. The plaintiff claims that the Jaguars asked him to design a device that can be used to practice kickoffs and field goals and that he was never paid for it. He is claiming $5 million in damages.

Generally, to obtain a patent or copyright, you must file paperwork with the U.S. government to register your idea or expression. A copyright is a grant by the U.S. government of certain exclusive rights with respect to original works of authorship in:

1. Literary works;
2. Musical works;
3. Musical Lyrics;
4. Dramatic works;
5. Choreographic works;
6. Pictorial, and graphic works;
7. Sculptures;
8. Motion pictures;
9. Sound recordings; and
10. Architectural works.

A copyright lasts for the life of the author plus 50 years. If the author is unknown, then the copyright lasts for the lesser of 75 years from publication or 100 years from creation. You do not have to register your copyright with the U.S. government but registration greatly helps in the enforcement of the copyright.

A patent is a grant by the U.S. government allowing the owner to exclude others from making, using and selling an invention within the U.S. It does not give the owner the absolute right to use the invention since use of the invention could cause the owner infringe on another patent. This is usually not the case however.

In reading the complaint, I’m not sure if the copyright claim is a valid claim since the plaintiff is claiming violations in his rights in an invention, not something covered by a copyright. As far as the plaintiff’s patent claim, the plaintiff never claimed ownership in a valid patent that is registered with the USPTO. We shall see what happens with the lawsuit once it is hear by a judge in federal court.

Continue reading "Man Sues Jacksonville Jaguars for Patent and Copyright Infringment" »

Part one of this series on international intellectual property registration focussed on Trademarks. Today, we will address Patent protection on a global level.

The World Intellectual Property Organization ("WIPO"), is an agency created by the United Nations in 1967. Its mission is to guarantee the protection of intellectual property rights worldwide. To facilitate this goal, one of the many programs the WIPO currently manages is known as the Patent Cooperation Treaty ("PCT"). The PCT is a mechanism for filing patents in multiple countries using only one set of documents. By filing one “international” patent application with the U.S. Patent and Trademark Office ("USPTO"), U.S. applicants can concurrently seek protection in over 125 countries.

To read more on international patent protection, visit the United States Patent and Trademark Office's website.

Continue reading "How do I Register a U.S. Patent Internationally?" »

Energy Secretary Steven Chu has stated that his department will be making it easier and cheaper for entrepreneurs to license technologies developed at the agency’s 17 national laboratories. The incentive program is an effort to promote innovation and job growth, and patents will be available for a $1,000 fee from May to mid-December. Companies can apply for the patent using a simplified, standard agreement available online. The department is hoping to help businesses turn ideas into innovative products by removing the burdensome paperwork and offering patent licenses at a lower cost. Small businesses create two out of three jobs in the Unites States, and federal agencies are focusing more programs that will cater to small businesses and entrepreneurs.

To read more on this article, visit US will offer $1,000 patents to spur job growth.

Continue reading "U.S. to Offer Patent Licenses for $1,000 to Help Small Businesses" »

Today, in the United States, it can be difficult to obtain a patent. Patents grant the holder the exclusive right to prevent others from making, using, or selling the patented idea without the patent holder’s permission. So, it is important for the patent holder to be vigilant in order to stay aware of potential infringers.

The tests to determine infringement vary from country to country, and differ based on whether it’s a claim of direct or indirect infringement. Currently, the Untied States recognizes that someone is guilty of directly infringing a patent by making, using, selling, or importing in the US an patented invention without authority, during the term of that patent. A party may still be guilty of infringement without any actual knowledge of a preexisting patent. This in known as indirect infringement and a claim can arise when the violator has an idea that a patent may exist, but neglects to perform adequate due-diligence.

Remedies for infringement may not only include actual damages, but also punitive damages, as well as equitable relief.

Continue reading "Are You the Victim of Patent Infringement?" »

The United States Patent and Trademark Office has agreed to partner with the European Patent Office and come up with a common patent classification system.

The U.S. patent system predates the International Patent Classification (IPC) system, but will now be working with the EPO in designing a finer, more detailed joint system. The new system is expected to help patent searchers conduct more detailed, efficient searches. It is also expected to cut down on duplicative work performed by both offices.

This is a giant step towards coming up with a uniform standard for patent classification and will better protect patent right holders. The World Intellectual Property Organization (WIPO) administers these types of movements and sets intellectual property system standards. WIPO is an agency of the United Nations.

To learn more about the partnership, visit USPTO and EPO Work Toward Joint Patent Classification System.

Continue reading "USPTO and EPO Joining forces in Patent Classification " »

Latisse, an eye-lash enhancing drug, is made by the company Allergan who produces a range of cosmetic medical products and eye drugs. Latisse was invented by a drug maker expanding and isolating the side effect of a particular drug, in this case Lumigan. Lumigan is another Allergan drug with the same underlying drug as Latisse, bimatoprost, and has side effects such as change in eye color and thicker eye lashes.

Latisse was approved in 2008 and has market exclusivity until late 2011. Recently, however, an unnamed drug maker has applied for the U.S. regulatory approval to sell a generic version of the eye-lash enhancing drug before its patent protection expires. In 2012, the patent covering the composition of bimatoprost expires. However, according to an FDA listing, there are other patents in place that cover the method of the drug's use that stretch into 2024.

The application asserted that the applicant believes the current patent is invalid or will not be infringed by the generic. However, even if the challenge is successful, there may not be a generic product on the market for years. Since, under general patent laws, a generic product is automatically stayed for 30-months if a patent owner sues the generic-drug applicant within 45 days of receiving notice of the application. If the suit is not resolved by the end of the 30-month stay, the generic company can launch its product "at risk" and face triple damages if it is not ultimately the prevailing party.

Continue reading "Patent Challenges by Generic Product Manufacturer" »

XPRT Ventures LLC, a Connecticut-based company, sued eBay, Inc. for at least $3.8 billion when it accused the online auctioneer and retailer of infringing six patents to develop lucrative payment systems. According to the complaint, eBay allegedly stole information that was shared in confidence by the inventors of XPRT's own patents and incorporated certain confidential information into its own payment systems, PayPal Pay Later and PayPal Buyer Credit. Steven Moore, XPRT's attorney stated in an interview that this case involves issues of trade secret theft and sheer patent infringement. In addition to $3.8 billion in monetary damages the Connecticut company is also seeking treble damages, resulting from the "willful and malicious conduct" of eBay and punitive damages and other remedies. eBay affiliates PayPal, Bill Me Later, Shopping.com and StubHub were also names as defendants in the suit. You can read more details of this suit at eBay sued for $3.8 billion in patent infringement case.

Continue reading "Connecticut-based Company, XPRT Ventures LLC, sues eBay and its Affiliates over PayPal Patent" »

America is a nation of inventors. If you have a great idea and are considering obtaining a patent for it, there are several things you need to take into consideration before applying:

Does it already exist? Be sure you conduct a thorough patent search to ensure that your invention is something new.

Does your invention qualify? You cannot patent an idea. You must also be able to demonstrate that your invention is new and how it works. Plus, your invention cannot have been for sale or known about for more than a year before the patent application is filed.

Have you kept good records? You should have kept careful written records of each step in your invention process, with descriptions and diagrams that demonstrate how you came up with the idea. You may also need to have built and tested a prototype.

Does your invention have commercial potential? Applying for a patent takes time and money, so you should be sure your invention has commercial potential before you apply. Doing research on the market and assessing demand will help you determine if it is worth it to file for a patent.

If you have an invention that meets all these qualifications and are interested in learning more about the patent process, contact our Jacksonville, Florida business and tax law firm.

Most business owners already know that protecting their trade names, products and ideas with patents and trademarks provides protection from unfair competition. A recent study shows that they can also lead to higher profits for the trademark and patent holders.

Patents and trademarks allow companies to confidently outsource production for cost savings, without fear of losing their intellectual property to an unscrupulous production partner. They also allow businesses to sell their products in wider domestic or international markets for a higher price, compared to other products without the same distinction. Having a trademark or patent can also help differentiate a product from others on the market to attract more buyers.

Licensing allows business owners to expand their operations by selling permission to use the company's trademarked or patented property to other companies; patents and trademarks provide the foundation for successful licensing agreements. Trademark and patent registration is a complex process that requires the assistance of an experienced attorney. If you have a trademark or patent idea you would like to register, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about how patents and trademarks can help you earn more money at Better profits tied to getting patents and trademarks.

IBM's mainframe computers were introduced in the 1960's and are now used to process sensitive financial, government and health care data. IBM's rivals – mostly smaller companies trying to run IBM software on cheaper hardware – have accused Big Blue of illegally freezing them out of the mainframe market by making their mainframe operating software inoperable with non-IBM mainframes. The rivals, represented by the The Computer and Communications Industry Association, allege that IBM is deliberately locking out competition in violation of US antitrust laws. IBM has stated that they believe they are "fully entitled to enforce our intellectual property rights and protect the investments that we have made in our technologies."

United States antitrust law prohibits unfair business practices, including anti-competitive behavior. Antitrust laws make certain practices illegal that are deemed to harm either other businesses and / or consumers. If you believe that your business has been a victim of a monopoly illegally protecting its dominant market position, contact Wood, Atter & Wolf, P.A. for legal counsel.

You can read more about the case by visiting Justice Dept probing IBM's computer market conduct.

A rule has been issued that rescinds regulations that limited the number of continuing patent applications and number of claims that could be included within a patent application.

Previously, USPTO rules had allowed applicants to file unlimited continuing applications, requests for continued examination, and claims. New regulations, enacted under the Bush administration in August of 2007 were considered by the biotech industry to unfairly limit their ability to protect their intellectual property. Biotech firms rely on continuing patent applications more than other industries.

The regulations in question never actually came into effect, as an inventor named Triantafyllos Tafas sued the USPTO for overstepping its authority almost immediately after the regulations were proposed. GlaxoSmithKline also filed a complaint against the USPTO. Many other organizations, including BIO, the Pharmaceutical and Research Manufacturers of America, and the American Intellectual Property Law Association filed amicus briefs in support of the complaint filed by GlaxoSmithKline. The case was still being litigated when the newly-appointed Director David Kappos decided to withdraw the regulations.

In deciding to rescind the rules, the USPTO has taken a step toward allowing biotech firms the patent protection they need to promote research and innovation.

Find out more about this story at USPTO Rescinds Controversial Patent Rule Changes Proposed by Prior Administration.

Continue reading "US Patent and Trademark Office Rescinds Controversial Biotech Intellectual Property Regulations" »

The American Civil Liberties Union (ACLU) has filed suit against three parties to a patent that covers genetic testing for breast cancer. The patent is held by the University of Utah, which licenses it to Myriad Genetics. They are both named in the suit. The third party named in the suit is the US Patent and Trademark Office (USPTO) itself, for issuing the patent in the first place. All three defendants filed motions to have the case thrown out. New York District Court Judge, Robert Sweet, has ruled that the case may proceed to trial.

The background of the case surrounds the discovery of mutations of the BRCA1 and BRCA2 genes, which were identified by researchers at the University of Utah as markers of high risk for breast and ovarian cancer. The University patented this information and licensed it to Myriad Genetics, which has attempted to stop academic researchers from sharing research results gained through use of this information.

Patent suits usually challenge on the grounds that a patent was awarded despite the fact that the discovery did not meet patent requirements of being new and non-obvious. The suit by the ACLU is unusual, in that it challenges the whole notion of awarding patents for genes as unconstitutional. The ACLU asserts that patents should not be allowed to grant ownership rights over "products of nature, laws of nature, natural phenomenon, basic human knowledge and thought." They also claim that the potential of the patents to stifle further research is unconstitutional as well; section 8, clause 8 of the constitution directs congress to "promote the Progress of Science and the useful Arts."

Now that the motions for dismissal have been denied, the defendants will have to submit arguments against a summary judgment in the plaintiff's favor. The outcome of this dispute will have long-lasting implications for gene-based health care and for the future course of biomedical research. Find out more about this case and its implications for biomedical research, by visiting Judge refuses to block lawsuit over patenting genetic tests.

If you have a business legal issue, please contact Wood, Atter & Wolf, P.A. for legal counsel.

The US Department of Justice has announced the formation of a task force that will focus on fighting US and international crimes committed in relation to US intellectual property. The task force will work closely with state, local and international law enforcement agencies. It will also closely scrutinize current intellectual property enforcement activities as well as look at the the links between international intellectual property crime and organized crime.

The recently created Office of the Intellectual Property Enforcement Coordinator, which reports to the President of the United States, will look to the task force to offer recommendations on fulfilling its mission of creating a strategic plan for handling the evolving landscape of intellectual property protection.

Intellectual property crimes include the creation and selling of pirated and counterfeited digital media, luxury apparel, auto and airplane parts and even medication and infant formula; the market for these good is said to exceed $200 billion in the US alone and poses a significant public safety risk.

In the past, the large number of agencies involved in monitoring and enforcing intellectual property laws have made decisive action difficult. It is hoped that this new task force will help streamline and concentrate these efforts. View the full article about the new task force and its responsibilities by visiting Can US get tough on intellectual property crime?

If you have a dispute with respect to intellectual property, please contact Wood, Atter & Wolf, P.A. for patent, trademark and copyright legal counsel.

A new patent awarded to Google has sparked a media debate over Google's intended use for the software method in question. The patented method allows Google to selectively restrict content based on a variety of parameters, including geographic location. This has led some to believe that Google may be trying to censor certain content in specific countries, which is something Google has taken a stand against in their ongoing war of words with China. But a closer look at the wording of the patent would seem to imply that the new software method is more about protecting Google from copyright infringement in relation to its new book scanning initiative. In fact, the major use case presented in the patent describes a system where the accessibility of scanned reading materials is either restricted or limited to certain passages based on user access privileges that are based on local copyright laws. This step is necessary for Google because of a lack of consistency in copyright law and Fair Use Doctrine from one country to another. What is considered public domain or fair use in one country may spark a copyright infringement lawsuit in another. The new patent appears to have been designed to help Google remain compliant with copyright laws around the world. You can read more details by visiting Google content-filter patent about copyright, not censorship. If you live in the Jacksonville, Florida or Orlando, Florida area and require assistance with a patent application or copyright protection, please contact Wood, Atter & Wolf, P.A. for legal counsel.

United States Patent and Trademark Office (USPTO) director, David Kappos, has announced that his organization will be rolling out a program designed specifically to aid small and medium businesses in obtaining patents more quickly. He attributed the decision to his belief that the USPTO needs to maintain a strong relationship with small innovators. Specifically, the USPTO has designed a program that will fast-track the patent process for independent inventors.

The program will only be offered to small and medium sized businesses, and will have the added effect of easing the backlog of patent applications at the USPTO. Under the program, companies can take advantage of the new, accelerated status only by abandoning currently unexamined applications that they have already filed. The USPTO believes this will help small and medium businesses self-select which patent application are the most important to them.

Kappos stated that the USPTO would work simultaneously to streamline their approval processes to further relieve the backlog. Kappos also said that he is eager to hear opinions from independent investors on how to make the patent system work better for them. He will be working in tandem with the US Congress to institute patent reform.

A level playing field for small and medium businesses when it comes to patents will provide an incentive that promotes innovation. You can read more about the patent reforms and how they will impact small and medium businesses at USPTO in small business patent pledge.

If you have an idea for a patent, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Small companies that are trying to attract investors have historically relied on their recorded patents to protect their inventions while disclosing information. But according to the US Patent and trademark Office, it takes an average of thirty four months – almost three years – to get a patent approved. There were more than 1.2 million patents pending at the end of the 2009 fiscal year.

The patent delay causes a big dilemma for inventors with highly marketable ideas. A patent gives extensive rights to manufacture, use or sell an invention for a certain number of years. If an entrepreneur waits for a patent, they may run out of money or risk a bigger company stealing their thunder. But if they release their product without patent protection, they risk someone else stealing their ideas and competing with them in the market.

A patent not only provides inventors with protection, it also gives them more credibility with potential investors. The significant delay in getting a patent could be slowing economic recovery, as small businesses and inventors wait for patent approval before launching products.

Read more about how patents affect innovation and the economy at Patent delays slow company.

If you have a business legal matter, please contact Wood, Atter & Wolf, P.A. for legal counsel.

When a company wants to introduce a new product, they need to be careful that they are not infringing on someone else's existing patent or trademark. The following are four examples of out of the ordinary patents and trademarks that may trip up a new product introduction.

Apple Computers vs. McIntosh

When Apple started developing the Macintosh, they deliberately spelled the name wrong in order to sidestep any trademark infringement issues with McIntosh, a high-end audio equipment manufacturer. McIntosh objected, and Apple ended up paying McIntosh an undisclosed licensing fee to be able to use the name in perpetuity.

Amazon one-click

Amazon patented its one-click web checkout system in 1999. Since then it has licensed use of the technology to other companies – but not to rival Barnes and Noble, which they sued for using a similar feature on their website. Long held up as an example of a patent that should never have been awarded, much of the patent was turned over in 2007, but Amazon still protects what is left of it.

Color trademarks

If you want to make pink insulation, you may get a cease and desist letter from Owens Corning. The same holds true if you want to start a wireless phone company; it would be best to stay away from the T-mobile signature magenta. Yes, it is possible to trademark a color as it relates to a specific product or service.

Verizon Droid

When Verizon wanted to name its new phone Droid, they had to ask permission from Lucasfilm, which patented the term in 1977 – the year Star Wars came out. Verizon currently uses the name under license.

You can read about several more surprising patents at They Own WHAT? Nine Tech Patent and Trademark Oddities.

If you have an original product that you would like to patent, or if you need to make sure you are not infringing on someone else's patent or trademark, please contact Wood, Atter & Wolf, P.A. for legal counsel.

You may have heard it is possible to circumvent the legal process and obtain a patent or a copyright with a postage stamp. Myth. The "poor man's patent" allegedly involves mailing a description of an invention to yourself or someone else. According to the myth, the postmarked date provides the date of the invention thereby granting superior rights to the "patent holder." However, this only proves a letter was sent on a certain date, not the contents of the letter. More importantly though, patent protection only comes from filing a federal patent application with the USPTO and is based on whether an invention is novel, useful, and non obvious and whether the inventor was, in fact, first to reduce it to use.

Along the same lines, the "poor man's copyright" is equally useless. It is based on the same principle, that sending your work to yourself through the mail somehow grants protection. Similarly, this only proves a letter was sent on a certain date and fails prove the contents of the letter. There is nothing to prevent an unscrupulous practitioner from mailing a self-addressed unsealed letter and inserting the potential work at a later time. Also, the fact that material is sent through the mail does not show the work is original, which is an important requirement for copyright protection.

For more information about protecting your works, contact an intellectual property attorney to arrange a consultation.

Recently, the popular internet search engine, Google, was awarded a design patent. Soon afterward critics emerged, touting that Google had abused the patent system. Such critics may not be familiar with the fine distinctions between design and utility patents. Whereas a utility patent protects an invention's function, a design patent protects the "ornamental design." A design patent's protection is narrower than that of a utility patent. For example, Google's ornamental design consists of the arrangement of search buttons and the text input bar. This patent prohibits others from creating websites that appear "substantially similar" to the Google layout, but does not prevent anyone from merely creating websites with a similar function or with a clean appearance.

The only requirements for a design patent is that the design is new, original, and is not functional. Google's layout certainly seems new and original when compared to the layouts of other search engines like Yahoo, Excite, or Webcrawler. Finally, the layout does not serve a function; it is merely aesthetic.

Design patents can be particularly valuable in protecting ornamental expression. For more information about design or utility patents, contact a competent patent attorney.

Most inventors are probably aware of patent application and maintenance fees. In order to keep a patent legally active, maintenance fees are required 3, 7, and 11 years after issuance of the patent and vary in amount depending on the entity filing classification. Although the maintenance payments seem steep, reviving an expired patent is even more costly. For example, in addition to paying the most recent maintenance fee, a petition and a revival surcharge is required to have the patent reinstated. The surcharge is either $ 700.00 for an unavoidable failure to pay the maintenance fee or $1,640.00 for an unintentional failure. Furthermore, if more than two years lapse after the patent's expiration, it can only be reinstated in the case of an unavoidable failure.

Additionally, before the Patent Office will accept the delinquent maintenance fees and surcharges amounts, a petition must adequately explain the reasons for the delay. The petition must allege specific facts as to why the delay in payment was either unintentional or unavoidable. For example, an unavoidable delay requires the petitioner to list the steps he or she took to ensure timely payment. Furthermore, it must demonstrate there was no additional delay after discovery of the expired payment. Though unavoidable failure to pay cost less to revive, the standard of proof is more difficult to meet and is thus rarely granted.

If you currently own a patent or are thinking of obtaining one, contact a skilled patent attorney to learn more about the various fee and requirements in order not to miss any important deadlines.

Earlier this month, Walter Frederick Morrison, the inventor of the modern-day Frisbee passed away at the age of 90. The Frisbee has had an interesting history and did not always consist of the same sleek, plastic, far flying device as it does today. Morrison's earliest versions of the Frisbee consisted of a popcorn lid and later a cake pan tossed back and forth between friends in 1937.

After learning about aeronautics as a fighter pilot in World War II and then becoming a carpenter, Morrison took a more aerodynamic route and designed the plastic molded Pluto Platter. The Pluto Platter flew further and more accurately than previous models due to its lighter construction and aerodynamic design. Wham-O purchased the production and manufacturing rights to Morrison's Pluto Platter in 1957, thereafter renaming it Frisbee.

The company's owner barrowed that name from college students who had been tossing empty Frisbie Pie Co. pie tins in the same manner as a Pluto Platter. The name Frisbee was trademarked with the alternate spelling to avoid trademark infringement lawsuits , and the device was also patented. Finally, Wham-O began manufacturing and marketing Frisbees, which were extremely popular due to the national fascination with flying saucers and UFOs. Morrison's story is a great example of how one person's idea can emerge into one of the world's most popular toys. Today, people all across the world enjoy the flying disc, no matter whether it is through a tossing it back and forth or through a game of Ultimate Frisbee or Frisbee Golf.

Bernie Karl, the proprietor of the Chena Hot Springs Resort outside Fairbanks, Alaska, has built a portable geothermal generator that he says can provide enough power for 250 houses. The self-proclaimed "imagineer's" machine uses 165°F water to produce large quantities of electricity.

Mr. Karl collects water from underground hot springs lying beneath his resort and pipes it into his device. The hot water then boils refrigerant contained inside casing surrounding the pipes. Next, the boiling refrigerant causes a connected turbine to spin, thereby generating electricity.

According to a 2007 Massachusetts Institute of Technology report, tapping into 2% of the energy contained inside the Earth as heat could yield 2,000 times more energy than is used globally! I'm all for new, unorthodox technology that can give us energy with minimal damage to the environment. How can one not be a fan of green innovation?

In a move to "incentivize innovation," the Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) rescinded former patent regulations that some said imposed undue restrictions on patent applicants. The old rules were enacted in August 2007 by the previous administration and were "highly unpopular from the outset."

The rules limited patent applicants in two ways. One set of regulations impeded the process of getting extra continuation applications. Continuation applications allow an inventor to disclose additional claims while maintaining the priority date of the original patent. Applicants were allowed two continuations as a matter of right. The USPTO granted additional requests for continued examination however only upon a showing of good cause.

Another regulation limited patent applications in substance. The so-called "Claims Rule" permitted only five independent claims per application. The rule further limited the total amount of claims per application to twenty-five. Anyone exceeding the guidelines was required to submit extra information to help patent examiners process the applications. These rules were put in place to expedite the patent process, however critics said they merely weakened it.

If you are considering patenting your invention, contact a competent patent attorney to arrange a consultation.

A new invention is often followed by imitating competitors unless, of course, that new invention is protected by a patent. That various blanket with sleeves products serve as a perfect example.

You're probably familiar with the infomercial-promoted Snuggie, the blanket with sleeves. With the Snuggie, a user can stay "totally warm" and still have the "the freedom to use [their] hands." The product seems fresh and has been referred to as a trailblazer. However, the Snuggie is not the first of its kind. It is predated by the Slanket, the original blanket with sleeves. In turn, the Slanket is predated by the Freedom Blanket, also called the original blanket with sleeves. Although the inventors of the Freedom Blanket have made online claims that their sleeved blanket idea was stolen, they have not sought legal action. Similarly, the Slanket inventor, Gary Clegg, has not sued because he never patented his product. He claimed that he attempted to patent the Slanket, but was told by patent lawyers it would not be feasible. Clegg considers the Snuggie's marketing campaign to be advantageous to Slanket sales because the Snuggie's popularity has raised consumer awareness about the product in general.

These products exemplify the importance of patent protection. Because the inventors of the Freedom Blanket and the Slanket did not seek patent protection, competitors were free to borrow their idea and create similar products. To determine whether or not you should seek a patent for your invention, get in touch with a patent attorney to explore your options.

In 2008, the United States Congress established a new Office of Management and Budget administrative post: U.S. Intellectual Property Enforcement Coordinator. On September 23, President Obama delegated that position to Victoria Espinel, former Assistant USTR for Intellectual Property and Innovation.

Ms. Epinel's primary job will be to combat counterfeiting and bootlegging of software, music, films, and drugs. She'll have her work cut out for her in trying to encourage countries like China to crack down on piracy abroad and prevent such illicit materials from entering the U.S.

I applaud the decision to create a dedicated executive IP position in order to fight the rampant problem of copyright violations. Not enough is being done to make certain that artists rightfully receive proper recognition and compensation for their works.

 Microsoft has prevailed in its appeal from a $388 million dollar penalty levied against it in a patent infringement case. Uniloc, a California security software company, filed a lawsuit in 2003 against the software giant, claiming that Microsoft infringed on its patent for an antipiracy software-registration system.

Judge William Smith, of the U.S. District Court for the District of Rhode Island, overturned the initial decision and held that Microsoft does not have to pay any damages to Uniloc. The award would have been among the biggest ever granted in an American civil patent action.

Usually computer software is protected by copyright law, so this is a unique case in which a patent was issued. We don't have all the facts, so it's hard to draw any conclusions, but I find myself pulling for the little guy!

A thoughtful patent attorney can ensure that your rights aren't bulldozed by big business.

A recent post of mine discussed the financial woes of the United States Patent and Trademark Office (PTO), which are connected with the decrease in applications being filed. A solution may be on the horizon. However, it does not appear to be favorable to future inventors. A letter from the Secretary of Commerce, Gary Locke, urges the Obama Administration to grant the PTO the ability to temporarily raise fees.

The reasoning behind such a "limited interim fee adjustment" is that it is the option with the least adverse effect. Other alternatives include cutting the budget by eliminating PTO services or using Federal tax dollars to subsidize operations. The proposal considers increasing standard application fees, maintenance fees, and time extension fees by roughly fifteen percent.

In contemplation of a possible fee increase, now is the time to patent your invention. Contact a competent patent attorney to arrange a consultation and determine the best course of action.

Aside from being known for its innovative search algorithm, bird's eye view maps, and expansive email in box storage capacity, Google has also gained renown for uniquely celebrating historical dates and holidays. The site's homepage usually features an altered Google logo to remind people of the special event. Most recently, the search engine paid homage to the 57th anniversary of the first barcode, which was invented around October 1949 and received a patent on October 7, 1952. Unlike the vertical lined specimen featured on Google, the first barcode was circular and resembled a bull's-eye.

When Google unveiled its encoded logo, some internet bloggers initially suspected a brainwashing conspiracy. However, others have confirmed the image is merely an innocent bar code translation of the website's name.

The emergence of this technology has streamlined many areas of our lives. The bar code established a standard medium for transferring information quickly and efficiently. For example, a retail store can keep track of merchandise inventory and prices through the use of bar codes and scanners. When you inquire about the price and stock quantity of a particular item, the clerk can provide you a fast and accurate answer by simply scanning the barcode.

The time it takes to get a patent approved by the United States Patent and Trademark Office is getting longer and longer. The average wait for a first response from the USPTO to a patent application is now more than 2 years. From start to issue, the current average time lag is nearly 3 years!

The USPTO has over 1.2 million patent applications pending and received about 497,000 new applications in 2008. As I discussed in a previous entry, there is something of a budgetary crisis going on at the USPTO right now and unfortunately the agency simply does not have enough resources to dedicate to the examination and review of patent applications at this point. Unfortunately, the current economic situation has forced many governmental agencies to tighten their belts, meaning processing gets delayed, and the public has to wait longer and longer. Inventors are no exception.

What does this mean for your invention? It has become difficult to predict the time frame in which a patent may be issued, and this uncertainty may adversely affect your ability to secure investors and bring in new capital to your firm based on near-future intellectual property rights. Furthermore, infringers may come out of the woodworks while your patent is being processed. The best course of action is to apply early and get the ball rolling ASAP! Issued patents give cease and desist letters a lot more teeth when asking an infringer to stop.

Contact a patent attorney to get started right away with the patent process!

In a surprising new trend, investment firms and new businesses are gobbling up a new kind of capital. They are seeking to buy, sell, and license patents via auctions. Under such a system, inventors make their patents available for sale and transfer all or part of their rights to the highest bidder.

The potential benefits of this emerging market that are being touted by analysts include increased innovation, reallocation of costs, and a reduction in patent litigation. In our capitalist society, we are told that market forces will naturally determine the value of a specific product and thereby encourage entry into that field. We can expect patent auctioning to grow rapidly but we are a long way off from seeing patents up on eBay.

While I believe in the alienability of patent rights and freedom of contract, I think both inventors and investors alike should be wary of jumping in headfirst without carrying out proper due diligence. We've seen unbridled trading of nontraditional assets before in the mortgage industry and it played a big role in the recent economic crisis here in the U.S.!

Contact a comprehensive patent attorney and consult with a business development expert to gauge the worth of your invention!

Shelden Kaplan, longtime engineer and innovator, passed away September 21, 2009 from complications resulting from liver cancer. At the fore of Mr. Kaplan's many accomplishments are the creations of the ComboPen, and EpiPen, respectively.

The ComboPen is used by the military to treat soldiers poisoned by nerve agents. The EpiPen is a later derivative that contains epinephrine and serves to save people with lethal allergies. Millions upon millions of people have acquired prescriptions for EpiPens, and innumerable deaths have undoubtedly been prevented by the device.

What's amazing about Mr. Kaplan is that he never received any profits, amassed any royalties, or garnered any fame from his invention. I think it's remarkable that someone would toil away on such a salubrious technology in complete anonymity!

An inventor named Paul Pantone has discovered a way to use Mountain Dew to help power cars. Mr. Pantone has developed the Global Environmental Energy Technology Fuel Processor which is a system that can be retrofitted onto existing internal combustion engines and enables them to run on a mixture that's up to 80% water. Check out the details of his apparatus in this YouTube video.

Interestingly, Mr. Pantone alleges that he worked on GEET for 25 years until he was framed for securities fraud and committed to a mental ward by seedy businessmen. Supposedly this was retaliation for Mr. Pantone's refusal to sell his patent. Mr. Pantone goes on to contend that by using GEET, greenhouse gases and emissions from a single car can be reduced by up to 90%!

The jury's still out regarding the efficacy of GEET as no independent verifications of Mr. Pantone's claims have been done. Still, the fact that he was issued a patent gives him some measure of credibility. Even if the technology and Mr. Pantone's history seem somewhat far-fetched, you have to admire his creative spirit!

This is my first blog entry that incorporates video. How did you enjoy it? Is it user-friendly enough? Does it keep your interest better? I need feedback! Please chime in.

Judge Sotomayor's career in the judicial system has spanned 30 years and she has ruled on both ends of the spectrum, issuing favorable judgements to both plaintiffs and defendants in IP matters.

In 1997, in Castle Rock Entertainment, Inc. v. Carol Publishing Group, 150 F.3d 132 (2d Cir. 1998), Judge Sotomayor held that a trivia book based on Seinfeld, called The Seinfeld Aptitude Test, violated various copyrights. She also found in favor of licensees of the rights to The Three Stooges in an action to protect their property.

However, in another major case, Tasini v. New York Times et al., 533 U.S. 483 (2001), Judge Sotomayor ruled against a number of freelance journalists claiming that major news outlets had improperly duplicated their work and displayed it on databases like LexisNexis without permission and in violation of copyright laws. Judge Sotomayor opined that these news organizations were in compliance with the Copyright Act of 1976. Ironically, the U.S. Supreme Court ultimately struck down her ruling!

Despite the variation in her decisions, I am glad that there will be a judge on the U.S. Supreme Court with some IP savvy to tackle what is sure to be a huge slate of cases involving new technology.

How do you feel about Judge Sotomayor's qualifications? How do you think her background will affect the Supreme Court's decisions? Please post your comments or contact me to discuss!

The United States Patent and Trademark Office is shifting toward full electronic patent application processing with a program called e-Office Action. After successfully testing it with a pilot project, the USPTO is moving forward with plans to implement the e-Office Action program.

Once the new program is in place, applicants will receive notices from the USPTO in e-mail form, alerting them to view new correspondence through the Private PAIR retrieval system on the USPTO website. This system obviates the need for paper mailings and is intended to streamline patent prosecution by getting information to applicants much faster.

Any registered patent attorney or agent is eligible to participate in the e-Office Action program and may submit provisional and non-provisional applications including utility, plant, design, reissue applications, and national stage applications.

I have been filing my clients' trademark applications with the USPTO for some time now, using an electronic system, similar to this procedure. Work is submitted instantaneously--truly an attorney's dream!

The Volt can run on electricity alone, but requires lots of charging so who knows if such mileage results are remotely attainable for the average driver. The Volt's range on electric-only propulsion is 40 miles when it is completely charged. Theoretically, you could get infinite mileage for as long as the battery pack has enough power.

I think that potential licensees and car buyers should be wary of such lofty projections and also consider the fact that the development time of the Volt was considerably shortened, while the Prius is tried and true and has been around for nearly a decade!

I am skeptical that the quality and reliability of the Volt will be adequate as its creation appears to be a knee-jerk reaction to the giant spike in gas prices. Unless the Volt ends up being bulletproof and achieves insane fuel economy, Toyota will likely be the victor in this fight.

Do you think the Volt will pan out? Please post your comments or contact me to discuss!

Two auto industry titans are duking it out to sell their respective hybrid powertrain technology to other manufacturers and suppliers. Toyota and General Motors, the #1 and #2 carmakers in the world, are approaching competitors to license their slew of patents and other intellectual property to them.

Toyota has long been the preeminent leader in hybrid vehicles, introduced the first-generation of the ubiquitous Prius model with Hybrid Synergy Drive in 2001 and has sold millions upon millions of them. True to form, GM was late to the game and is rushing its plug-in hybrid model to market, the 2010 Chevrolet Volt powered by the Voltec propulsion system.

GM is touting the virtues of the Volt which has garnered preliminary mileage estimates of 230 mpg! At this stage, the 230 mpg claim seems ludicrous, but the Environmental Protection Agency appears to be backing it up.

Do you think 230 mpg is possible? Please post your comments! Up next, I'll discuss why I think we should reserve judgment as to the efficacy of the Volt.

Computer giant International Business Machines, Corp. has been taken to court by MOSAID Technologies, Inc., a Canadian intellectual property development firm, for suspected unlicensed use of MOSAID's technology. It is claimed that IBM manufactured and sold microprocessor and circuit products that use Dynamic Random Access Memory patents belonging to MOSAID. The suit was filed in U.S. District Court in Delaware and alleges six different counts of infringement.

MOSAID has been a trailblazer with respect to DRAM and has enjoyed a virtual monopoly over the DRAM licensing market. MOSAID has agreements in place with Fujitsu, NEC, Toshiba, Hitachi, Mitsubishi Electric, and Oki Semiconductor. Interestingly, MOSAID says that its hand was forced regarding IBM due to stalled talks between the parties regarding possible licensing for the patents in question.

This is not the first time that MOSAID has cried foul; it has filed suits against Samsung, Infineon, and several other companies in the past for similar conduct. Samsung ultimately settled with MOSAID and came away with a five-year license agreement to use MOSAID's inventions.

I think MOSAID is doing the smart thing by actively pursuing companies it feels are infringing upon its patents and ensuring that it is justly compensated for its innovation. Despite the difficult process of initiating litigation against every potential copycat, it is imperative that intellectual property be guarded as fiercely as possible so that your business can reap the hard-earned benefits of its R&D. Patent prosecution can and does pay dividends for decades.

Contact a patent attorney to protect the fruits of your labor for years to come!

Several gene research groups have taken legal action against Myriad Genetics & Laboratories, the University of Utah, and the United States Patent and Trademark Office in an ostensible attempt to end human gene patenting in the United States. The suit centers around two human genes with ties to breast and ovarian cancer for which the University was granted seven patents and licensed them to Myriad.

The objective of the plaintiffs appears to be to reverse over 20 years of precedent providing for the allowance of patents on human genes. Thousands of patents have been issued on human genes and a victory for the gene research groups would result in a seismic shift in the legal landscape.

I think that we should carefully scrutinize what we consider to be patentable human gene processes. However, I strongly believe that innovation should be rewarded, and that access to technology should have minimal limits. Researchers should be fairly compensated for their efforts and the public should also enjoy the benefits of progress.

Eliminating the potential for patents altogether would remove a considerable incentive for entities to invest R&D money into exploratory projects, and ironically may prevent breakthroughs from occurring in the first place. On the other hand, it is important to ensure that people aren't excluded from the use of new gene technology to the point that public health suffers. For that reason, it is critical that both advancement and access are maximized!

Do you think human genes should be patentable? Please post your comments or contact me to discuss!

Ever since he suffered an accident as a baby, Sam Genensky was classified as legally blind, having about 20/1000 vision in the only one of his eyes that worked. Despite this difficulty, Dr. Genensky became a pioneer of low vision improvement and designed a system called Randsight that magnifies text 31 times its original size and displays it on a video screen.

Dr. Genensky broke the chains of his poor eyesight and went on to graduate with honors from Brown University, earn a PhD in mathematics, and work as a mathematician for RAND Corp. for many years. It was during his time at RAND that he was able to make his stunning breakthrough.

Dr. Genensky's penchant for innovation started at an early age; in high school he altered a pair of his father's binoculars from World War I to help him read the blackboard in class. It's no wonder that he was able to create technology to help similarly-situated people. Dr. Genensky said that Randsight enabled him to read 130 words per minute!

I think it's simply amazing that a man with such a disadvantage was able to have more success than the average person with full capabilities. Dr. Genensky passed away on June 26th, 2009, but clearly has left a lasting legacy. Not only was he a brilliant inventor, he was a great inspiration!

What do you think of Dr. Genensky's accomplishments? Please post your comments!

The word patent may naturally evoke ideas of innovative inventions and gadgets. But you should also be aware that patentable subject matter encompasses more than just tangible inventions or machines. It is also possible to patent a process or method.

You can obtain a utility patent for any new and useful process, machine, article of manufacture, or composition of matter. A process is defined as a series of steps or acts to be performed. To determine if a process is patentable, the examiners at the USPTO apply a number of tests, such as whether the process includes laws of nature, natural phenomena, or abstract ideas, which are all non-patentable, or whether the process transforms an article into a different state or thing, which is consistent with patentable subject matter. Previously, the main test was whether a process produces useful, concrete, or tangible results. This standard has been overruled by court rulings.

A process is not sufficiently transformative if it merely involves gathering data into an algorithm, such as conducting clinical tests and determining if any abnormalities exist. On the other hand, a process is patentable if it transforms the raw data into a particular visual depiction for display. In such case, the data is representative of a physical object or article.

For more information about obtaining a patent for your novel and useful process, contact a competent patent attorney.

We all know Apple, the trendy electronics and software brainchild responsible for mesmerizing us with iPhones and iPods. The technology giant hypnotizes us, and we truly believe that without their fresh, avant-garde products, we are not sexy or cool. (*Ahem* Despite their marketing prowess, I still believe I can be sexy and cool as a PC girl.)

What most don't know is how unequivocally silent Apple has been when it comes to disclosing information about its research and development. Despite online advances such as Facebook, Twitter, and other sources for disclosure, the company remains tightlipped with respect to its engineering.

Strict controls are imposed in the name of security to prevent employees from releasing any valuable information and harsh sanctions are in place for those who do. Apple is virtually impervious to leaks and even goes so far as to keep its own employees in the dark; many themselves are shocked when new products, such as the latest iPhone 3GS, are unveiled. The company is also famous for its product plan ruses designed to mislead both outsiders and also its own employees as to the state of certain Apple technology.

Even seemly innocuous information, such as the health of CEO Steve Jobs following a secret liver transplant, is kept under lock and key. Such unwavering devotion to discretion is a calculated business model and is indicative of executives that fully appreciate the high value of intellectual property. However, this secrecy can breed suspicion and give birth to consipiracy theories among consumers. Trade secrets are critical for any business and comprise the essence of brand image and identification, but today's sophisticated public demand the truth and trust in the products they support.

What measures should your business take to protect its trade secrets? An intellectual property attorney can show you how to preserve your sensitive information, and balance a positive brand name image.

 Congress has received a request from the United States Patent and Trademark Office for rule changes to offset ongoing heavy financial losses the agency has sustained. Revenue from patent filing and maintenance fees has been shrinking rapidly and the USPTO has been forced to make budget cuts across the board.

A steady influx of patent portfolios from companies, a substantial backlog, and internal red tape all have contributed to diminishing returns. Annually, the USPTO receives approximately 450,000 applications which must be analyzed and then either granted or rejected by one of 6,285 patent examiners.

The USPTO has approached various congressional committees for appropriations and suggestions on how to address its shortfalls. Ominously, USPTO surveys have revealed that patent attorneys and companies believe that the USPTO's economic condition may deteriorate further.

The agency looks to improve efficiency and bolster operations as President Barack Obama recently nominated David Kappos to be the new Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Kappos currently serves as IBM vice-president and assistant general counsel for intellectual property.

Kappos has been a patent-reform advocate, lobbying for higher-quality patents and a reduction in excessive patent litigation. Hopefully this new director will implement new, cost-effective strategies and steer clear of such knee-jerk reactions as increasing patent fees.

Will the USPTO's monetary woes affect the progress of your patent? File early with the help a thorough patent attorney to avoid potential delays and higher expenses!

In 2008, a California appeals court decided that even if a patient is harmed by a manufacturer of a generic drug for failing to warn consumers of possible side effects, the manufacturer of the brand name equivalent could still be liable for negligent misrepresentation.

In Conte v. Wyeth, Inc., the plaintiff, Elizabeth Conte, was prescribed Reglan for acid reflux. The generic equivalent is metoclopramide. After using the generic version of the drug for four years, she developed tardive dyskinesia, a neurological disorder. The condition is associated with tremors and involuntary twitches. Judge Peter Siggins reasoned that name-brand drug manufacturers know or should know that doctors would prescribe the generic equivalents, and the brand name manufacturers thus must educate doctors and consumers about possible side effects of the drugs, regardless of which version is ultimately prescribed.

It is important to note that the manufacturers of the generic drugs are not absolved. They simply now share liability with their brand-name competitors.

Are you a college or graduate student with a good idea for a new invention? Check out the Collegiate Inventors Competition. The competition has recognized, rewarded, and encouraged hundreds of inventors worldwide since 1990. To be eligible, you must either be a graduate or a college student, or have been enrolled as such in the past 12 months.

An entry shall include a model of your invention that is complete and workable. The invention must be the original work of the applicant and cannot have been made available for public use or patented more than one year prior to submission. Entering the competition does not constitute a public disclosure. Two winners will receive cash prizes of $15,000.00. Additionally, 12 finalists will each win a $2,000.00 cash prize and an all expenses paid trip to present their work to a panel of judges.

Even if you miss this year's competition, you still need to protect your invention! Do a patent search to see what other inventions are similar to yours. It might be in your best interest to file a patent application, to prevent others from using your methods to build your invention. Schedule a consultation with a patent attorney to discuss your legal rights.

It's one thing to have a patentable invention, but it's quite another to have a valuable invention. Before seeking a patent, or if you already own a patent, before selling or licensing the rights, it is important to ascertain its monetary value. That way, you will be able to make better decisions regarding whether or not to invest in a patent. Additionally, knowing how much your invention is worth enables you to negotiate more effectively with potential buyers. Practitioners use the following factors to assess the value of a patent.

Is there a market? First determine if anyone would be willing to purchase your invention. To do this, identify whether or not consumers actually need the product. You might accomplish this through personal experience, if the idea for your invention was born out of necessity, for example. This is usually only effective if the situation giving rise to such necessity is common to other people. If a market exists, determine its size. For example, try to figure out if the invention would serve a specialized niche of consumers or a broad base.

Are there comparable products? Another factor is to identify any comparable products already on the market. What are the other products' price points, and does your invention offer something new? For example, your invention may solve a problem in a specific area in which other similar products already exist. Highly valued products are those offering significantly more benefits than the competition.

Has this ever happened to you? You come up with a great idea for an invention. But before giving any thought to getting a patent, you contact a company and offer to sell your lucrative and profitable idea. Have you forfeited your rights to patent the invention? How do you disclose a proposal without forfeiting ownership?

You may still be able to patent your invention. The patent application will require proof that you came up with the idea first. One way to establish you are the inventor is to provide evidence of correspondence between you and the company discussing the idea.

However, a more effective method to avoid forfeiting a claim to an invention is to plan ahead by filing a provisional application for patent. A provisional application grants an earlier filing date as well as "Patent Pending" status to be used when disclosing your idea. Protection lasts up to 12 months from the filing date and is a relatively inexpensive investment. Thus, you are able to disclose your invention to potential buyers without fear of it being stolen and without the higher application costs associated with non-provisional patent applications. Before the 12-month period lapses, you can either allow the pendency status to expire or convert the provisional application to a non-provisional application, which will provide the benefit, if the application is granted, of being able to sue for patent infringement.

Perhaps the most important question in the patent process is "Do I really need a patent?" In the excitement of innovation, it is easy to prematurely opt for a patent. On the other hand, you may have a marketable invention and not even realize it. To answer the question above, consult the factors below.

Does your idea have value? Before applying for a patent, it may be wise to determine if the proposed invention or system will be of any value to consumers. A patent prohibits others from copying your invention but does not guarantee that you will make any money from it.

Do you thoroughly understand the market implications of the invention? Patent applications are sometimes created so narrowly that they fail to protect future market applications. Before seeking a patent, consider all the possible uses for your product or system as well as the possible ways to market it. This will assist your attorney in drafting a patent that protects your interests both in the present and in the future.

How much are you willing to invest? In exploiting an invention, the patent application fees are but a single step in process. Consider the available resources needed for the entire project. In addition to obtaining a patent, you may also need to develop and execute a marketing plan and a manufacturing plan if the invention involves physical products.

If you have considered obtaining a patent, contact an experienced intellectual property attorney for advice regarding how to proceed or whether another form of protection is more applicable.

As the economy undulates up and down, many people seek ways to cut costs. Inventors are no exception. If you are thinking about registering a patent, consider the following tips to help reduce the application fees, which I also share with my patent clients.

Be up-front. Provide your patent attorney with a complete and detailed description of the invention early in the application process. This reduces the need for later revisions, which increases costs. Attorneys often charge based on the amount of work performed. Therefore the total application price may increase if there are numerous updates and revisions. For instance, I usually charge a flat rate for preparing the application, but any work that needs to be done after that is completed on an hourly billing rate.

Be knowledgeable. Patent attorneys are experts at intellectual property law, but they may not be as well versed in the subject matter of your invention. It is therefore crucial that you provide them with enough of this information to complete the patent application. Giving your attorney sufficient information about the particular field of science or engineering relevant to your invention eliminates the need to engage in extensive research, which may also drive up costs.

Be complete. Before applying for a patent registration, have a complete idea, with sketches or drawings of your invention. Adding new features and alternate embodiments after the attorney has already drafted the application can further impact costs. While you do not need a prototype to file an application, I usually advise that my clients build a prototype. Seeing the invention in action and testing it often reveals features that need tweaking and improvement. It can be costly to add these updated features once I have filed the patent application.

What do these tips have in common? Communication. As with many attorney-client relationships, it is important to be open with your attorney. In any event, your patent attorney will likely let you know if you have provided sufficient information or if more information is needed.

Congress is in the process of enacting new patent legislation that would introduce a first-to-file system, a significant change to current United States patent law.

If the amendment passes, the effective date of an invention will be the date the application is filed instead of the date of actual invention. Currently, the United States is one of the few counties to follow the first-to-invent system. Under this system, inventors apply for patents after first conceiving an idea then diligently reducing it to practice, which can be achieved by building a prototype. The effective date is determined by the date the inventor conceived the idea.

The first-to-file system is not without its critics. The main critique is that the system is unfair to the small independent inventor because it lends an advantage to well-funded corporations, which have sufficient capital to win the race to the Patent Office. This argument is based on the notion that independent inventors often create their inventions before investing in a patent application. On the other hand, large companies are able to file multiple applications first, and then proceed with the most workable ideas.

Many of my clients are independent inventors, who tinker with inventions as a hobby. For this reason, I affectionately refer to them as "garage inventors." I oppose a first-to-file system for patent applications procedures, because I do believe that it would unfairly prejudice garage inventors. This certainly would discourage them from continuing to contribute their innovations and ideas to this country's economy.

There is a new way to stay informed of the news and notices from the United States Patent and Trademark Office by using an RSS feed. Now, instead of constantly checking the Official Gazette and Federal Register Announcements, you can receive real time updates on your email homepage.

RSS, or Rich Site Summary, is an information format that allows you to receive updates as they are published. You can use a favorite web mail homepage or an RSS feed reader to receive multiple lists of information by "subscribing" to each source. For example, with your Yahoo or Google homepage, you can get the latest headlines from the New York Times as well as recent blog entries from your favorite blog.

You can also subscribe to the Trademark Lawyer Blog by clicking the Subscribe icon on this page.

Small businesses rely on their proprietary assets, and many of these business depend on global transactions. However, less than one fifth of these businesses realize that their federal trademark and patent protections are limited to the United States. Are your IP assets protected abroad?

Without a doubt, profits fall prey to overseas counterfeiting and piracy. Counterfeiting is the creation of imitation products while piracy involves the unauthorized use or reproduction of software.

Stopfakes.gov is a great resource to help determine whether you should seek international protection. The website features different tool-kits to educate business owners about intellectual property (IP) protection in various foreign countries. Also included are instructions for filing a compliant against international infringers.

Strategy Targeting Organized Piracy (STOP) is part of a government effort with a two part objective. The first part is to strengthen IP enforcement throughout the world. The second part is to prevent IP crime throughout the world. STOP, along with other government organizations, provide protection to domestic businesses by regulating U.S. boarders and preventing the importation of counterfeited products, for example.

For more information on international trademarks or patents, contact a trademark attorney who understand the need to work closely with IP counsel abroad.

Eolas is suing Apple and 22 other companies, including Adobe, Amazon, Apple, Blockbuster, Citigroup, Ebay, Frito-Lay, Google, J.C. Penney, JP Morgan Chase & Co., Office Depot, Playboy, Staples, Sun Microsystems, Texas Instruments, Yahoo and YouTube.

The suit alleges that these companies are in violation of Eoals' US Patent Numbers 5,838,906 and 7,599,985, which involve fully-interactive browser embedded applications. The company has stated that they developed their technology over 15 years ago, long before the marketplace had heard of them or thought of using them.

Intellectual property rights are the foundation of most business models, especially those based on technology. The US patent system has been very effective in protecting innovators from competitors who would unfairly profit from the innovator's hard work.

If you have a business legal matter, please contact our firm for legal counsel.

Find out more about this lawsuit at Patent holder that won against Microsoft now targets Apple.

During the week of June 22-27, 2009, inventors and innovators gathered in Alexandria, VA for Innovation Week. The United States Patent and Trademark Office hosted this event at their headquarters in order to celebrate the important role patents and the USPTO play in the economy and the advancement of science and technology.

The event was open to the public and included dexhibits on display, technology specific presentations to patent examiners, and a multi-day conference for independent inventors.  Interested parties were able to attend Innovation Week as a spectator or were able to take a more active role in the event by participating as a keynote speaker, technology specific presenter, and patent exhibitor.

Invention submission companies and product development companies help patent and trademark owners license and sell their inventions, products, and services. A cursory internet search of these terms will turn up a plethora of hits. Beware! Like any industry, there are legitimate businesses, and there are scams. When choosing one of these companies, keep these tips in mind:

Tip 1: Be familiar with what you own. If you have an invention, be sure you are familiar with the disclosures and descriptions in your patent. If you have a trademark, be sure that it is registered, and be aware of which specific goods and services your trademark will be identifying. If what ends up on the market is not what your patent or trademark claims to be yours, you might lose out on rights to the marketed products or services.

Tip 2: Research the company. Don't be shy about asking the firm for references and credentials. Once you get this information, follow up with them. Check with organizations like the Better Business Bureau. Find out if there is any pending litigation against them, and what issues are in dispute.

Tip 3: Be careful with your money. Almost every patent and trademark owner is enthusiastic and eager to start mass production and distribution. This excited ambition is easily exploited by dishonest enterprises. Be weary of large fees due in advance. When you do forward your money, know exactly how this money is being used. Have an attorney review any agreements before signing the dotted line. Once the deal is signed, be sure to ask for regular accounting statements, so you know how much in royalties you are earning, and you know which parties have licensed your patents and trademarks.

Licensing, marketing, and distributing your products involves an array of legal specialties, include contract analysis, negotiating licensing terms, and enforcement of ownership rights. Be sure to have an attorney familiar with all these facets to assist you.

In my previous post, I shared strategies the USPTO recommends for doing your patent search. Here are some practical tips I have to offer when doing your own search:

Tip 1: When doing your search, keep in mind that even if you don't find your exact invention, look at inventions that are similar to yours. You will need to cite these similar inventions in your patent application.

Tip 2: Remember that it's the CLAIMS that control what is patented, so verify that your invention has not been described in a prior claim. Use the rest of the patent document to interpret terms used in the claims.

Tip 3: Look at the figures and drawings. Pictures speak a thousand words. Save yourself the grief of reading through a patent document--your invention may be nothing like the patented invention, and you can determine this with one glimpse of the figure. Many people have trouble viewing the figures. You need to download the appropriate software; the links are available here at the USPTO site. I find that an easier way to look at full patents and images is to go to www.google.com/patents, type in the patent number I found from the USPTO database, and download the .pdf file.

Tip 4: When you find a patent that is similar to your invention, take a look at the column labelled "References Cited." These are patents that are similar to the patent you just found. Take a look at the patents under "References Cited" to see if they are similar to your invention too.

Tip 5: Take notes. Once you get into the research, you'll see what I mean! All the patents will begin to look the same, and you'll mix them up. List the name, patent/application number, and the title of the patent at the top of a 3-hole punched sheet of paper. Use the entire page to take notes and make your sketches. Highlight key terms on the patent document itself. Keep everything together in a binder, so you can re-arrange and insert/remove notes as needed.

Tip 6: Learn from prior patents. If the patent examiner finds prior art that makes your invention OBVIOUS or NOT NOVEL, you'll be out of luck. Find a way to distinguish yourself from the inventions disclosed in the claims of the prior patents.

Tip 7: Don't be afraid to ask for help. Find Patent and Trademark Depository Library (PTDL) staff in your state. They are available to provide training on U.S. patent search processes and research tools including the Cassis DVD-ROM system, the PubWEST database, and the USPTO website. You can also contact a patent attorney for advice and assistance.

I've often said that doing a patent search is a lot like making pizza from scratch: they are tasks that require some skill, but the skills can be self-taught or hired. Both tasks can also be excrutiatingly tedious, but they can also be educational and fun.

Before your invention can qualify for patent registration, there are two basic requirements that must be satisfied: your invention must be NOVEL and UNOBVIOUS. This means that it can not have already been invented, and that it can not be an obvious variation of something that has already been invented. The way to find out whether your invention is novel or unobvious is to do a patent search.

You can hire a patent attorney, patent agent, or a patent research firm to do the search for you. This will likely cost you several hundred dollars. In the alternative, you can undertake this task on your own. Here are seven tips offered by the U.S. Patent Office for doing your own search:

Step 1. Brainstorm keywords related to the purpose, use and composition of the invention.

Step 2. Look up the words in the Index to the U.S. Patent Classification to find potential class/subclasses.

Step 3. Verify the relevancy of the class/subclasses by using the Classification Schedule in the Manual of Classification.

Step 4. Read the Classification Definitions to verify the scope of the subclasses and note "see also" references.

Step 5. Search the Issued Patents and the Published Applications databases by "Current US Classification" and access full-text patents and published applications.

Step 6. Review the claims, specifications and drawings of documents retrieved for relevancy.

Step 7. Check all references and note the "U.S. Cl." and "Field of Search" areas for additional class/subclasses to search.

Stay tuned to my next blog post, where I offer my 7 tips to help you along your patent search.

A divorced, single mother of four is taking on the mogul of sexy lingerie. She can do it because she spent $12,000 to build a prototype and apply for a patent, which was issued in 2004.

Katerina Plew invented a bra featuring numerous loops and hooks, so the straps can be positioned in a combination that would keep them hidden under most styles of clothing. Plew sent a copy of her patent and various promotional materials to Victoria's Secret, in hopes that she could license the rights to them. About a year after Victoria's Secret cancelled their appointment with her, Plew saw her invention offered for sale at a Victoria's Secret store. Watch the AP video featuring Plew's story.

Plew took the proper steps to protect her invention. Take a look at the patent for this bra. Without this patent, she would not be able to prove how others are infringing upon how her invention is made. If you have an invention, I recommend that you build a working prototype, and seek the advice of a patent attorney before attempting to market or promote your invention.

One of the biggest misconceptions is that an idea can be patented. Even a Yahoo or Google search about patenting an idea will lead people to believe that this is the case. Often, I will have a creative mind book a consultation with me to discuss patenting an idea for an invention. Truth be told, their ideas usually are very good ones. However, they have no idea how to make or build this invention. For example, if someone told me that a great invention would be a machine that would stop world hunger. Although it's a fantastic idea, unless this inventor knows how to build one, there is no patentable subject matter.

Assuming that this idea for an invention is novel and unobvious, there is a requirement that the inventor can describe how this invention is built or put together. This is because a patent is like a recipe: anyone with skill and knowledge in the field of that invention should be able to pick up a patent, and understand how a workable version of this invention is built.

Just because you know how to build the invention doesn't mean you need a prototype to get a patent.

Questions about whether your invention is patentable? Contact me for a consultation.

Being a patent attorney, I feel the pressure of people's expectations that I be the first to hear about new inventions. While procrastinating on the Internet, I couldn't help but notice a recent article about the Top 10 Wacky Inventions for the Home. It includes a fruit bowl that emits UV light, allegedly to keep fruit fresher for longer, a device that tells you what mood your plant is in, and a waterproof PC.

We've all heard that necessity is the mother of invention, but in this case, the desire for trinkets is the cool big sister coming home from college, and wowing you with what she's learned in Science 101 classes.

While monogamy is the prevailing standard accepted in our society when it comes to spouses and boyfriends or girlfriends, this is not necessarily so when it comes to a license for your patent or trademark.

When you offer the rights to use your patent or trademark, in exchange for fees and royalties, you are licensing those opportunities to another. That other party is called the licensee.

A monogamous license, more appropriately termed, an exclusive license, is where you have only one licensee. Typically, licensees agree to paying higher fees and royalties for the benefit of being the only ones who are allowed to benefit from the intellectual property. NBC was hugely successful last month, because they were the exclusive network to provide Olympic coverage.

There are times, however, where it benefits the patent or trademark owner to enter into a licensing agreement with as many licensees as possible. This is a non-exclusive license. Although a licensee will probably pay less in fees and royalties, the patent or trademark owner benefits from collecting this revenue from multiple licensees. Franchises are an excellent example of non-exclusive licenses to numerous franchisees for the use of trademarks, patents, and other proprietary assets.

Recently, at the Florida Coastal School of Law campus in Jacksonville, Florida, law professor, Carolyn Herman and patent attorney, Clark Wilson, presented a seminar entitled, "Identifying Intellectual Property Issues for the General Practitioner." It was a succinct presentation covering patent, trademark, and copyright laws.

This is the second annual presentation of this seminar, which was given in conjunction with Florida Coastal's Alumni Weekend celebration. I recommend this seminar to attorneys, business executives, entrepreneurs, and inventors alike, and would encourage anyone interested in attending to sign up for the seminar again next year.

How did powdered urine, an artificial penis, and a jock strap have two California entrepreneurs likely to plead guilty to charges of conspiracy to defraud the government?

When those items are the "Whizzinator" and "Number 1," which have been put together to help government employees pass drug tests, that's how.

It has been reported that a truck driver for the Department of Transportation beat mandatory drug testing by using these proxy pee products. In another instance, a Whizzinator customer allegedly used this product to pass a probation officer's drug test.

I was not able to confirm that there was a patent filed for this invention. Assuming that this invention is novel and unobvious (the two most basic requirements for an invention to be patentable), I can't help but wonder: does the use of this invention threaten national security if government employees in certain positions are trying to beat a drug test? If so, it could mean that an application was filed, but the government issued a secrecy order, preventing the publication typical of most patent applications. Specifically, Sec. 115 of the Manual of Patent Examining Procedures states:

If the agency concludes that disclosure of the invention would be detrimental to the national security, a secrecy order is recommended to the Commissioner for Patents. The Commissioner then issues a Secrecy Order and withholds the publication of the application or the grant of a patent for such period as the national interest requires.

I did, however, see that the term "Whizzinator" is a federally registered trademark (Reg. #2782181).

In spite of the registered trademark, prosecutors are seeking to take control of the Internet domain names, http://www.whizzinator.com/ and http://www.gonumber1.com/. Check them out while you can!

In 2007, President George W. Bush awarded eight individuals and corporations with the 2007 National Medal of Technology and Innovation at a lavish White House ceremony.

This annual award is the highest honor the President can confer upon an American citizen for innovative contributions and achievements. The medal can be awarded to persons, organizations, or corporations. The first awards were granted in 1985 by President Regan.

The list of recipients includes: AT&T, David Packard (of Hewlett-Packard), The DuPont Company, Bill Gates, Merck & Co., Proctor & Gamble, 3M, Johnson & Johnson, IBM, Motorola, Xerox, and eBay.

I recently presented my seminar, "From Emblems to Empires: Using Trademarks to Promote, Protect, and Produce Business." The audience were the members of IMPACTJax, a young professionals' group that is part of the Jacksonville Regional Chamber of Commerce.

I discussed the importance of promoting a business name by building a brand name. The goodwill and reputation should then be protected through trademark or patent registration. Only then can defensive and offensive strategies have any teeth against potential infringers. Once a business achieves a level of success with those trademarked or patented assets, I explain why franchising the operation is among other options for expanding the business. In the alternative, for entrepreneurs interested in minimizing the risk of owning a business, I also discuss the advantages of buying a franchise.

Couldn't make it to the original presentation? Contact me to see when this seminar will be presented at a venue near you.

Finally, a movie that depicts the struggles of "garage inventors," the innovators who make up most of my patent clients. These are the ones who tinker with inventions in the evenings and on weekends, until one day, an invention is born.

"Flash of Genius," starring Greg Kinnear, is based on the true story of Robert Kearns, who, in the 1960's, invented the intermittent windshield wiper for automobiles. Among the hurdles he faces are the high cost of protecting his invention with a patent, and infringement by the automobile industry. The movie is about Kearns' resolve to take on corporate giants through litigation, and assert his rights as the inventor.

"Flash of Genius" was released on October 3, 2008.

Go ahead, call me conservative. So what if I waited for the reviews in "Flash of Genius" to come out before shelling out $15. And $12.50 for popcorn and a drink. Looks like my fence-riding might have saved me the cash I could use instead on buying 4 gallons of gas.

Viewers who enjoyed the movie included inventors who could relate to the trials and triumphs of their trade. If anything then, real-life inventors appreciated the accurate portrayal of the challenges they face.

Those who didn't sing praises, however, included movie critics who felt the film lacked the pizzazz that today's audience demands from big-screen Hollywood.

While I may have missed the movie this weekend, if it sticks around the theaters long enough, maybe I'll catch it next weekend. Or catch it when it comes out on TV. Without the trek to the theater, that ought to save me another gallon of gas.

"Can I get a patent on an invention that combines two or more old inventions?"

The answer depends on whether combining existing inventions creates new and unexpected results. This satisfies the U.S. Patent & Trademark Office's requirement that an invention be novel and unobvious. Novelty and unobviousness can be achieved if the components cooperate to achieve a benefit that the components could not achieve alone.

For example, combining a pencil with an eraser on the end offers the benefit of writing compositions faster than if the pencil and eraser were separate components. The advantages of the pencil cooperate with the advantages of the eraser to provide an additional benefit when they are combined.

However, the combination of your toothbrush, your comb, and your nail clippers do not cooperate to offer something more than if you used each item individually.

In effect, if your creation involves combining separate inventions, you could be eligible for patent registration if your invention as a whole offers more benefits than do the sum of its parts.

Generic drugs can cost significantly less than their brand name counterparts. But are they really identical? The US Food and Drug Administration (FDA) has regulatory oversight to ensure that both generic and brand name drugs are safe and effective. US patents grant an inventor a twenty year right to manufacture and sell their patented medicine. After the patent expires, anyone can sell the drug, as long as they can prove to the FDA that it is "bioequivalent" to the brand name drug. But bioequivalent is not always the same as identical. In addition to the active ingredient of a medication, there are also the additions of inert components and coatings of the pill to consider. Each of these steps being carried out appropriately may be critical for the safety and efficacy of the final product.

The problem is that patents are crafted to reveal the least amount of trade secret information as possible. This means that a generic drug producer may, in part, have to guess how to manufacture the drug. There is growing evidence that variations in the manufacturing process of generic drugs could make them significantly less safe and effective than is commonly believed.

The best tactic for Florida consumers to protect themselves is to use brand name drugs if possible, and to discuss any generic substitutions with their doctor and pharmacist. Find out more about generic drugs versus brand name drugs at Generic Drugs: Caveat Emptor!

If you have a patent or trademark law matter you would like to discuss, please contact our Jacksonville, Florida area firm.

Newly appointed Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office David Kappos has wasted no time in getting down to business in his new post. Mr. Kappos has moved to cancel a hotly contested regulations package under consideration.

The so-called Continuation Rule, Request for Continuing Examination Rule, and Claims Rule were all supported by the previous USPTO administration. These provisions placed caps on the number of continuing applications and RCEs per parent application, and the number of independent/total claims in an application.

I'm glad to see that these rules will not take effect because they limit an inventor's options during patent prosecution and reduce the protection he or she can secure. Why impede technological progress for minimal gains in USPTO efficiency? Mr. Kappos clearly made the right play here!

Consult a patent attorney to find out the exact boundaries of current patent law!