Patent Law

Notice of Allowance – Patents

The Question

Our Company received a Notice of Allowance on our Nonprovisional Patent Application. What are our next steps?

Consider: If the invention claimed by the Nonprovisional Patent Application is a “core” technology or a money maker for your company, it is wise to keep an Application pending.

More information you need: 35 United States Code 151 gives the Applicant a maximum of three months from the date of mailing of the Notice of Allowance for the Applicant to pay the Issue Fee. (Note: If the Issue Fee is not paid, the Patent Application will be abandoned.)

Tech Sufficiently Different

If the newer technology is sufficiently different from the structures of the pending Nonprovisional Patent Application, a Provisional Patent Application can be filed. (Inventions can consist of biological, chemical, electrical or mechanical structures or combinations thereof.)

Tech Sufficiently Similar

If your newer technology is sufficiently similar (or incorporates many of the structures of the pending Nonprovisional Patent Application) and certain conditions are met, a Continuation-Type Application (claiming priority to your pending Nonprovisional Patent Application) can be filed with the United States Patent and Trademark Office.

The Law

35 U.S.C. 151, in part, reads:

(a)     In General.—

If it appears that an applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee and any required publication fee, which shall be paid within 3 months thereafter.

There are Two Continuation-Type Applications (in USA)

  • A Continuation Application – this claims priority to the pending Nonprovisional Application, utilizes the Specification of the Nonprovisional Patent Application, and includes new claims.
  • A Continuation-in-Part Application – claims priority to the pending Nonprovisional Application, adds “new matter” (structures) to the Specification of the Nonprovisional Patent Application, and includes new claims.

Child Patents Used to Broaden a Parent Patent

Seasoned Applicants frequently file a Child Patent Application claiming priority to the Parent Application. If you opt to use this procedure, make sure you file the Child Patent Application before the Patent flowing from the Parent Application is granted. If the Patent is granted before the Child Patent Application is filed, Patent Examiners may be able to use the Parent Patent to prevent the Child Patent Application from succeeding.

The Law

35 U.S.C. 102, in part, reads:

“(a)Novelty; Prior Art.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…”

Terminal Disclaimers and Your Patent Application

Use of Continuation-Type Patent Applications may require that any future Patent granted be limited by a Terminal Disclaimer. As a general rule, a Terminal Disclaimer causes the term of the Children Patents to expire on the same day as the Parent Patent.

The Law

35 U.S.C. 120 reads:

“An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385, which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.”

Don’t Delay Your Response to a Notice of Allowance!

You should not delay initiating your company’s strategy, since a Notice of Allowance requires your action, as an applicant.

  • Issue Fee must be paid within three month of the Notice of Allowance – There are no time extensions
  • Grant of Patent can be delayed as much as 4 months from date of Notice of Allowance
  • It can be quite time-consuming for your Attorney to prepare the Continuation-Type Application or the Provisional Patent Application, so don’t delay
  • Assembling the required inventor’s declarations and assignments can also be time-consuming (even more so when when inventors in different time zones and multiple jurisdictions are involved
  • Preparing the required USPTO documents that accompany the Continuation-Type Application can be tedious
  • A Continuation-Type strategy can often be used for several years before it is no longer cost-effective for the Company

Questions? We Can Help!

If your company is developing a post Notice of Allowance strategy, we can help. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact us.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

The Law and Contracts in Lexington Kentucky

Questions About Contracts

Contracts Can Seem Contradictory

It’s pretty easy to understand why contracts are often confusing. After all, contracts can include clauses that allow opposing sides to make contrary assertions about the meaning of one or more of the clauses in the contract.

When a contract comes under fire, and the amount in controversy increases, so do opposing counsels’ arguments about such things as the meanings of “a,” “the” and the placement of colons, commas, semicolons and other punctuation.

Politicians and lawmakers (most of whom are lawyers) have argued over the meaning of the word “is.” In a civil trial, both sides have plausible arguments, and the jury decides who is more believable.

With this real-world reality in mind, most companies strive to provide their sales force with the best “boiler plate” contracts. However, those can pose their own challenges.

Boiler Plate Contracts

Although, our company’s “Boiler Plate” contracts have served us well – we now have a new situation…

The New Situation

Our Company’s Region 1 representative executed a contract with a new Lexington, Kentucky company for 1 MM Gizmos. We ordered 1 MM Gizmos from our supplier F.O.B. origin. The new company is refusing to pay an upfront deposit as required by our “boiler plate” contract. In addition, this new company indicated it considered all “boiler plate” contracts “null and void.”

We have an agreement signed by the new company and our Region 1 representative. We gave the Region 1 representative the authority to execute the “boiler plate” contracts for our company. Our attorneys inform us the agreement is “solid.” Our Region 1 representative tells us that he and the other signatory were in the signatory’s office on the premises of the new customer when they both signed the contract.

Is the Contract Enforceable?

For there to be a valid contract, each signatory must have the authority to bind their respective companies to the agreement. Whether the agent of a company has the authority to bind the company is factually dependent.

Corporations

  • As a general rule, the President, CEO or COO has the designated explicit authority to bind the corporation to a contract. If the customer’s signatory was a President, CEO or COO, then the contract is likely valid.
  • Agents such as the CFO and Vice Presidents can be granted actual authority to bind the corporation to a contract. If the customer’s signatory was one of these agents, the contract is likely valid.
  • Agents such as the chief of marketing or chief of engineering may have either actual authority or implicit authority to bind the corporation to a contract. If the customer’s signatory did not have actual authority, but a pattern of behaviors can prove that the customer’s agent had a history of executing contracts for the customer, the contract would likely be held valid at trial.
  • A midlevel marking manager would not likely have explicit or implicit authority to bind the corporation to a contract and the contract with the customer would be invalid.

Limited Liability Companies, Professional Limited Liability Companies, Limited Liability Partnerships

  • As a general rule, the designated Manager or Managing Member has the explicit authority to bind the limited liability company to a contract. If the customer’s signatory was the Manager or Managing Member, then the contract is likely valid.
  • Agents can be granted actual authority to bind the limited liability company to a contract. If the customer’s signatory was one of these designated agents, the contract is likely valid.
  • It is possible to prove an agent’s implicit pattern of behaviors that the customer’s signatory had a history of executing contracts for the customer. With such proof, the contract would likely be held valid at trial.

General Partnerships

  • General partners are jointly and severally liable. Each general partner can bind the partnership to a contract.
  • Agents can be granted actual authority to bind the general partnership to a contract. If the customer’s signatory was one of these designated agents, the contract is likely valid.

Do you have questions about contracts? We can help. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Options when your design patent application is rejected

Design Patent Application Rejection: Now What?

Design Patent Applications have a single claim. Design Patents are for ornamentation. Utility Patent Applications generally have more than a single claim that concern the invention’s structure, function or both.

The Situation

Our company received an Office Action for our Lexington branch’s Design Patent Application A from the USPTO. The Examiner argued that the claim of our Lexington Design Patent Application was obvious in view of a Louisville competitor’s Design Patent B. The Examiner rejected our claim.

We think the Examiner is in error. How can we argue against the Examiner’s rejection of our claim?

The Statutory Law

35 United States Code (U.S.C.) Section 103 reads:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

Challenging Design Patent Rejections

Possible avenues of argument to rebut a rejection for a Design Patent Application include:

1.) Design Patent B is not analogous art

With respect to non-analogous art, In re Glavas, 230 F.2d 447, 450 109 USPQ 50, 52 (CCPA 1956) provides guidance.  The Glavas court indicated:

The question in design cases is not whether the references sought to be combined are in analogous arts in the mechanical sense, but whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.

Thus, if the problem is merely one of giving an attractive appearance to a surface, it is immaterial whether the surface in question is that of wall paper, an oven door, or a piece of crockery. . . .

On the other hand, when the proposed combination of references involves material modifications of the basic form of one article in view of another, the nature of the article involved is a definite factor in determining whether the proposed change involves [patentable] invention.

Therefore, where the differences between the claimed design and the prior art are limited to the application of ornamentation to the surface of an article, any prior art reference which discloses substantially the same surface ornamentation would be considered analogous art. Where the differences are in the shape or form of the article, the nature of the articles involved must also be considered.

2.) The Examiner failed to consider the design as a whole

Among other things, the USPTO Manual of Patent of Examining Procedure indicates that before Design Patent A can be obvious, it must be compared with something in existence. Thus it can be argued that the Examiner failed to make a prima facie case of obviousness if he/she failed to consider the design as a whole.

As a whole, a design must be compared with something in existence, and not something brought into existence by selecting and combining features from prior art references. See In re Jennings, 182 F.2d 207, 86 USPQ 68 (CCPA 1950). The “something in existence” referred to in Jennings has been defined as “…a reference… the design characteristics of which are basically the same as the claimed design….” See In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982) (the primary reference did “…not give the same visual impression…” as the design claimed but had a “…different overall appearance and aesthetic appeal…”.) Hence, it is clear that “design characteristics” means overall visual appearance. This definition of “design characteristics” is reinforced in the decision of In re Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993), and is supported by the earlier decisions of In re Yardley, 493 F.2d 1389, 181 USPQ 331, 334 (CCPA 1974) and In re Leslie, 547 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

When a claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.”

3.) Design Patent B taught in a divergent direction from Design Patent Application A

What does it mean to be “taught away” or “taught in a divergent direction” in relation to a patent application?

A prima facie case of obviousness can be rebutted if the applicant…can show that the art in any material respect ‘taught away’ from the claimed invention…A reference may be said to teach away when a person of ordinary skill, upon reading the reference…would be led in a direction divergent from the path that was taken by the applicant.

— In re Haruna, 249 F.3d 1327, 58USPQ2d 1517 (Fed. Cir. 2001)

As you can see, patent law can be confusing. If you need help to secure yours, call us. Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios.

If you or your enterprise need legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC. We provide intellectual property and business counsel for individuals and businesses.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Lexington Kentucky Trademark Bananas

Lexington Trademarks/Service Marks

Will the United States Patent and Trademark Office (USPTO) grant a federal Trademark/Service Mark Registration for the term “Lexington?” It depends on the goods or services with which the Trademark or Service Mark are associated.

The Statutory Law

15 United States Code (U.S.C.) Section 1052, in part, reads:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.

When certain facts are in evidence, under 15 U.S.C. Section 1052(e), the Trademark Examiner can reject the Applicant’s Application as “primarily geographically descriptive.”

The USPTO Examiner’s Geographically Descriptive Marks – Test

The Examiner is to consider:

  • (1) the primary significance of the mark is a generally known geographic location
  • (2) the goods or services originate in the place identified in the mark; and
  • (3) purchasers would be likely to believe that the goods or services originate in the geographic place identified in the mark. Note: If the mark is remote or obscure, the public is unlikely to make a goods/place or services/place association.

Illustration 1 – Refusal

The Owner of a Lexington, Kentucky restaurant filed an Application for Registration in the USPTO for “The Lexington” for restaurant services

Pursuant to the USPTO test, the Examiner would argue that “The Lexington” for restaurant services is “primarily geographically descriptive” and refuse registration of the Service Mark.

Illustration 2 – Approval

The Owner of a Lexington, Kentucky banana store filed an Application for Registration in the USPTO for “Lexington” for bananas

Pursuant to the USPTO test and the case law, the name of a geographic location that has no significant relation to commercial activities or the production of the relevant goods or services, such as Lexington for bananas, is treated as an arbitrary mark because it is unlikely that consumers would believe that the mark identifies the place from which the goods originate.  The Examiner would likely conclude that the Trademark “Lexington” for bananas sold by the Lexington banana store should be granted.

Illustration 3 – Refusal

The Owner of a Lexington, Kentucky saddlery shop filed an Application for Registration in the USPTO for “Lexington” for saddles, bridles, and other equipment for horses

Pursuant to the USPTO test, the Examiner would argue that “Lexington” for saddles, bridles, and other equipment for horses is “primarily geographically descriptive” and refuse registration of the Trademark because Lexington, Kentucky is world renown for thoroughbred horses.

Conclusion

For Applicants, the federal registration process can be somewhat confusing.  By way of illustration, when a potentially “geographically descriptive” mark overcomes the 15 U.S.C. Section 1052(e) bar to registration, the applicant must still overcome the 15 U.S.C. § 1052 Sec. 2 (d) “likelihood of confusion” bar and other 15 U.S.C. § 1052 bars to registration.

Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios.

If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Likelihood of Confusion trademarks service marks

Likelihood of Confusion – Trademarks

“Likelihood of confusion” is a legal test. It is applied by the courts and administrative agencies to contested Trademark/Service Mark proceedings and by United States Patent and Trademark Office (USPTO) Examiners during the registration process for Trademark/Service Mark Applications.

Likelihood of Confusion – What Law Applies?

Before a federal Trademark is granted, an Applicant must prove to the USPTO that the Trademark was used on goods and/or services in commerce that the U.S. Congress may lawfully regulate. The geographical limit for a federal Trademark registration is the geographical boundary of the United States and its territories.

Federal Jurisdiction

Federal jurisdiction of Trademarks/Service Marks (hereinafter Trademarks) can be controlled by the precedent of the US Supreme Court or one of the thirteen federal circuit courts sitting beneath the US Supreme Court.

Each of the thirteen federal circuits has its own case law precedent for adjudicating “likelihood of confusion” for contested Trademarks.  Although the case law precedent of the federal circuits is similar, it is not identical.

State Jurisdiction

When a Trademark is granted at the State level, the law of that State controls court and agency proceedings. The laws of the several States are variable on the standards for “likelihood of confusion.” The geographical limit for a State Trademark is the border of the State.

Likelihood of Confusion – USPTO Trademark Applications

For the USPTO, the “likelihood of confusion” precedent for Trademark Examiners is set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). Today, the Court of Appeals for the Federal Circuit has jurisdiction over appeals from USPTO agencies and adopted the du Pont case as precedent.

On page 567 of the du Pont case, the court stated:

“In testing for the likelihood of confusion under 15 U.S.C. § 1052 Sec. 2 (d), the following, when of record, must be considered:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  2. The similarity of dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. care, sophisticated purchasing.
  5. The fame of the prior mark (sales, advertising, length of use.)
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
  8. The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
  9. The market interface between applicant and the owner of a prior mark… (e.g., have the interested parties executed a contract to proclaim there is no confusion?).
  10. The extent to which the applicant has a right to exclude others from use of its mark on its goods.
  11. The extent of potential confusion, i.e., whether de minimis or substantial.
  12. Any other established fact probative of the effect of use.”

If the Examiner or the USPTO determines there is a “likelihood of confusion” between Applicant’s Trademark and a prior Registration or pending Application, the USPTO will refuse to register the junior Applicant’s Trademark.

Observations

With regard to the “likelihood of confusion” test, each of the federal circuit courts have adopted precedent similar to the test set forth in the case of In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). When possible, parties to an infringement will attempt to try the case in a venue most favorable a party’s evidence and arguments.

Have Questions on Your Trademark?

Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios.

If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses of all sizes.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

patent application possibilities

Patent Application Possibilities

Depending on your company’s intellectual property strategy, there are many Patent Application possibilities.

The Question

Our R&D engineers recently invented improvements for our Company’s Product One.  We have sold Product One for more than a year. The US Patent for Product One was granted six months ago. Can the Company file a US Patent Application for Product Two that includes two structures not part of Product One?

The Answer

It depends on the situation and 35 United States Code 120.

Examples and Possibilities

Patent Application Possibilities  – First Example

  • Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
  • Our Company filed a US Nonprovisional Patent Application disclosing and claiming Product One on June 15, 2020.
  • The USPTO granted our US Patent for Product One on February 9, 2021.

In August 2021, your Company can file a Patent Application for Product Two in the USPTO. However, the USPTO will be able to use the US Patent for Product One to argue against the patentability of Product Two. Unless there are novel and nonobvious structural differences between Product Two and Product One, the USPTO will not grant a Patent for Product Two.

Patent Application Possibilities – Second Example

  • Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
  • Our Company filed a US Nonprovisional Patent Application disclosing and claiming Product One on June 15, 2020.
  • In August 2021, the US Nonprovisional Patent Application for Product One is still pending in the USPTO.

Because the Product One US Nonprovisional Patent Application is still pending, your Company can file a US Continuation-in-Part Nonprovisional Application for Product Two, claiming priority to pending US Nonprovisional Patent Application for Product One. The USPTO cannot effectively use the structures of the Product One Patent Application to reject identical structures in the Product Two Patent Application.

Patent Application Possibilities – Third Example

  • Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
  • Our Company filed a Patent Cooperation Treaty Patent (PCT) Application disclosing and claiming Product One on June 15, 2020.
  • Our Company filed a US National Stage Nonprovisional Application claiming priority to PCT Application for Product One on August 15, 2020.
  • The USPTO granted our US National Stage Patent for Product One on April 13, 2021.

Pursuant to Title 35 of United States Code and Patent Cooperation Treaty, your Company has until December 2021, to file a US Continuation-in-Part Nonprovisional Application for Product Two claiming priority to PCT Application for Product One.

The USPTO cannot effectively use the structures of the PCT Application for Product One or the April 13, 2021 US Patent for Product One to reject identical structures in the Product Two Patent Application.

35 United States Code 120 Benefit of earlier filing date in the United States

 35 U.S.C. 120, in part, reads:

An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.

For those companies that have a profitable (or potentially profitable) product that is patentable, it is wise to keep a Patent Application pending.  The marketplace decides whether the first generation, the second generation or a subsequent generation product is the most profitable.

Need Help With Securing Your Product Patent?

Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios. If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Pet Product Patents

Pet Care Patents In The United States

Pet Care Patents

Pet lovers are often the inventors of pet care products and many seek pet care patents for their inventions. In addition to improving the lives of pets, these inventors hope to make a profit from their inventions. How popular are these inventions? According to the United States Patent and Trademark Office database, there are more than 2000 Patents having the word “dog” in the title of the Patent.

Potential Market for Pet Care Patents

People love their pets, whether they are dogs, cats or another type of animal. As a result, the pet care industry is big business! In the United States in 2020, it is estimated that over $100 billion US dollars were spent in the pet industry.

Three Fun Pet Care Patents

Below are three examples of pet care product patents for your review. One is for automated petting, one is for automated watering and the last is a tool to help with the dog-walking chore. These products were selected at random from the thousands of patents that have been issued for pet care products in the United States.

1.) A scratching and petting device for pets

2) A pet watering device

3) A device to assist pet walking

USPTO Utility Patent Basics

Like any other type of utility Patents, the pet care inventor must comply with the following sections of the Title 35 of the United States Code (U.S.C.):

35 U.S.C. 101 – Patentable Subject Matter

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.

35 U.S.C. 102 – Novelty

In part, 35 U.S.C. 102 reads: A person shall be entitled to a patent unless— (1) The claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or  (2) The claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

35 U.S.C. 103 – Non Obvious Subject Matter

A patent for a claimed may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

35 U.S.C. 112 – Specification

In part, 35 U.S.C. 112 reads:

a) In General

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

(b) Conclusion

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

We hope you enjoyed reading about the pet product patents! If your enterprise needs legal assistance procuring/managing/enforcing your pet product Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that affects your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Copyright Infringement - Statutory Damages

Statutory Damages – Copyright Infringement

When Are Potential Statutory Damages available?

  • Situation #1 – Our company filed the Copyright Application within seven days after the work was finished. The Copyright Registration was granted eleven months after filing the Copyright Application. One year after filing of the Application, we notified a potential infringer of alleged infringement and our intention to seek statutory damages (among other things) unless the infringement ceased immediately. If infringement is proved, statutory damages available to Copyright owner.
  • Situation #2 – The family business published the finished work in September. We filed the Copyright Application in November. In June of the next year, the Copyright Office granted our registration. In July, our sales people reported that our competitor had copied our published work. If infringement is proved, statutory damages available to Copyright owner.
  • Situation #3 – Jimmy the artist published his finished work in January. In April, Jimmy filed the Copyright Application with the Copyright Office. In August, Jimmy learned that his brother, Billy, was using Jimmy’s finished work without permission and that Billy had been paid thousands of dollars by Harry’s Place to use the finished work. Harry believed the work to be Billy’s work.  The Copyright Office granted Jimmy’s Copyright Registration in December. Harry Place’s commenced publishing Jimmy’s finished work one year after the work was completed. Statutory damages are not available against Billy. If infringement is proved, statutory damages are available to Jimmy for Harry’s Place’s infringement.

What the Law Says About Statutory Infringement & Damages

The Basic Parameters for Copyright Infringement Statutory Damages are set forth in 17 United States Code (U.S.C.) 504

17 U.S.C. 504, in part, reads:

(a) In General.—Except as otherwise provided by this title, an infringer of copyright is liable for either—

(1) the copyright owner’s actual damages and any additional profits of the infringer, as provided by subsection (b); or

(2) statutory damages, as provided by subsection (c).

(c) Statutory Damages.—

(1) Except as provided by clause (2) of this subsection, the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual damages and profits, an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just. For the purposes of this subsection, all the parts of a compilation or derivative work constitute one work.

(2) In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000. In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200. The court shall remit statutory damages in any case where an infringer believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use under section 107…

US Supreme Court Ruling: When is Copyright Registration Made?

In the Supreme Court case of Fourth Estate Public Benefit Corp. v Wall-Street.Com, LLC, (2019) the Supreme Court held “…registration . . . has been made” within the meaning of 17 U. S. C. §411(a) not when an application for registration is filed, but when the Registrar has registered a copyright after examining a properly filed application.”

As a practical matter, it may take nine or more months subsequent to the filing of an Application for Copyright Registration before the Registration is granted by the Copyright Office.

Limitations for Statutory Damages

As a general rule, 15 U.S.C. 412 limits the Copyright owner’s statutory damages remedies to an owner having an effective date of registration not later than three months subsequent to first publication or one month after the owner learned of the infringement.

Still Have Questions About Statutory Infringement and/or Damages?

If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents, Copyrights or Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

USPTO Notice to Correct Application Papers -Patent Law

Notice to Correct Application Papers

What is a Notice to Correct Application Papers?

The notice means United States Patent and Trademark Office (USPTO) has found an issue with the  filing (the way the paperwork looks, or what’s included in, or a clarification is needed your application) and is asking you to correct them and resubmit. Your time in which to do so is limited, if you want to retain the original filing date (and we know you want to keep that earliest date!)

A Notice to Correct Application Papers can be issued anytime during the pendency of a Nonprovisional Patent Application, but it will usually be sent shortly after your Patent Application is filed.

Your Filing May Be Considered “Informal”

Section 506 of the USPTO Manual of Patent Examining Procedure reads:

“III. INFORMAL APPLICATIONS

An application is informal if it is typed on both sides of the paper, or is not permanent, legible, or reproducible. If such informalities are timely corrected, the application is given the filing date on which the original informal papers were filed.

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 C.F.R. 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 C.F.R. 1.53(b), but are informal because they do not comply with the rules or notices. In such applications, OPAP will send a Notice (e.g., Notice to File Corrected Application Papers) requiring correction of the informality. Failure to correct the informality within the specified time results in abandonment of the application.”

Case Study: The Situation

  • Our company’s Dallas R&D department filed a US Provisional Patent Application for one the company’s electromechanical gadgets. Before the expiration of the Provisional Patent Application, our company filed a US Nonprovisional Patent Application claiming the benefit of the US Provisional Application. Our in-house patent attorney located at our principal office in Houston had previously used this strategy to procure several US Patents.
  • Among other things, the Nonprovisional Patent Application included: an Abstract, Claims, a Specification and black and white line Drawings.
  • After filing the Nonprovisional Application, the USPTO generated a Notice to File Missing Parts because one of the inventor’s Declarations was missing from the as-filed Application. After receiving the Notice to File Missing Parts, our in-house counsel timely supplied the missing inventor’s Declaration to the USPTO.
  • Over the subsequent three and one-half years, our in-house counsel argued back and forth with the Patent Examiner, and eventually, the Examiner issued a Notice of Allowance for our electromechanical gadget Nonprovisional Patent Application.
  • More than a month after receiving the Notice of Allowance, the Examiner issued a Notice to File Corrected Application Papers.

Our Company’s Notice to Correct Application Papers

The Notice, in part, read:

“Notice of Allowance Mailed

This application has been accorded an Allowance Date and is being prepared for issuance. The application, however, is incomplete for the reasons below.

Applicant is given two (2) months from the mail date of this Notice within which to respond. This time period for reply is extendable under 37 CFR 1.126(a) for only two additional MONTHS.

The informalities requiring correction are indicated in the attachment(s). If the informality pertains to the abstract, specification (including claims) or drawings, the informality must be corrected with an amendment in compliance with 37 CFR 1.121…

Figure numbers are missing or duplicated. FIGS 21-24.”

Notice to Correct Application Papers: Our Next Steps

Since our company had never received a Notice to Correct Application Papers, we looked to a law firm to manage this matter for us. Amended Drawings were filed and the Patent issued in due course.

Do You Need Help From a Lawyer Specializing in Patent Law?

If you have received a Notice to Correct Application Papers, or have other questions or concerns about filing and protecting your intellectual property, we are here for you. General or in-house counsel is great for many of the legal questions or tasks your company may need, but questions about working with the Patent and Trademark Office and responding to their notices, may require someone with more specialized experience.

Protect Your Valuable Intellectual Property

If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents of Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Securing Your Trademark Service Mark - Evidence of Use for Trademarks

Evidence of Use for Trademarks

Do I Have to Use My Product or Trademark in Commerce First?

Yes. Before the United States Patent & Trademark Office (USPTO) grants a Registration, you must provide evidence of use of the Mark in commerce.

The Statutory Law

15 United States Code 1051 (U.S.C.) (a) (2) reads, “The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark.”

15 U.S.C. 1127, in part, reads, “The word “commerce” means all commerce which may lawfully be regulated by Congress.”

Establishing Interstate or International Use

Only interstate or international commerce can be lawfully regulated by Congress. Thus, interstate or international use of your product is required to secure a federal Registration.

Example Scenarios

Your Louisville, Kentucky company, only sells gizmos (bearing your Trademark) to a Lexington Kentucky corporation. In this example, there is only intrastate commerce. Since Congress does not regulate intrastate commerce, your Trademark would not be a subject for a federal Registration.

On the other hand, if your Cincinnati Ohio company sells gizmos (bearing your Trademark) to corporations in Columbus, Ohio; Louisville, Kentucky; and Nashville, Tennessee, then you conduct interstate commerce. Since Congress regulates interstate commerce, your Trademark would eligible for a federal Registration.

Likewise, if your Lexington, Kentucky company sells your gizmos (bearing your Trademark) to retailers in Canada and Mexico, then you conduct international commerce. Congress regulates international commerce, so your Trademark would be eligible for federal Registration.

What is Acceptable Evidence of Use to Establish Interstate or International Use?

For either Trademarks or Service Marks, invoices and other business records showing sales across state lines or international borders are useful in establishing interstate and/or international commerce. Here are a few more examples of acceptable evidence of use for both Trademarks and Service marks:

 Examples of Evidence for Trademarks:

  • Photographs of the Trademark, when attached to the goods and/or the packaging containing the goods
  • Photographs of displays of the goods, where the displays and the goods bear the Trademark
  • Screen shots of websites for the sale of goods where the website and the goods bear the Trademark
  • Screen shots of websites for the streaming or downloading of software products, where the website and the software goods bear the Trademark
  • Copies of audio commercials advertising the goods bearing your Trademark
  • Photographs of promotional giveaways advertising the goods bearing your Trademark

Examples of Evidentiary Specimens for Service Marks:

  • Photographs associating the Service Mark with the services rendered
  • Video and/or audio commercials associating the Service Mark with the services rendered
  • Printed publications and brochures associating the Service Mark with the services rendered
  • Letterhead and business cards associating the Service Mark with the services rendered
  • Photographs of promotional giveaways associating the Service Mark with the services rendered

What Digital Formats Should I Use To Provide Evidence?

Do you plan to submit digital proof of use to the USPTO? Then you need to know that the office prefers PDF or .jpg samples. So, be sure to submit all digitally filed evidentiary specimens in one of these two formats.

What If I Need More Trademark Help or Legal Advice?

When you need help to secure, manage and/or enforce your Trademarks or Service Marks, contact Business Patent Law, PLLC. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies of all sizes.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.