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.

Interview with Patent Examiner by Video Conference

Your Patent: Office Actions and Examiner Interviews

Office Actions

The Patent Offices of the various jurisdictions around the world issue Office Actions. These actions indicate many things, including the status of the Patent Application. An Office Action reflects the current opinion of one or more Patent Examiners regarding a Patent Application.

Types of Office Actions for Pending Applications

  • Filing Receipt
  • Notices of Abandonment
  • Notices of Allowance
  • Notices of Publication
  • Notice to Correct Application Papers
  • Patent Cooperation Treaty Information
  • Payment of Additional Governmental Fees
  • Substantive Examination by Examiners

What is a Substantive Examination by the USPTO?

A USPTO Substantive Examination Office Action generated by an Examiner’s can include:

  • Under 35 U.S.C. 101, the Examiner concludes if the Application is directed to patentable subject matter
  • Under 35 U.S.C. 102, the Examiner opines if one or more of the claims of the Application are novel
  • Under 35 U.S.C. 103, the Examiner can argue if one or more of the claims of the Application are obvious in view of the prior art
  • Among other things, under 35 U.S.C. 112, the Examiner determines if the Specification enables one in the art to practice the invention and whether the claims particularly point out and distinctly claim the subject matter the Applicant regards as the invention

Applicant Interviews with the Examiner

The USPTO allows Applicants (or their representatives) to conference with Examiners. These conferences can simplify 35 U.S.C. 101-103 and 35 U.S.C. 112 matters propounded by the Examiner and streamline the Applicant’s prosecution and the Examiner’s examination of the Patent Application. Over the years, it is Business Patent Law’s experience that verbal communication between the Examiner and Applicant’s attorney can assist both sides in better understanding the opposing side’s arguments.

Types of Applicant Interviews

There are three primary types of applicant interviews with the examiner for these pending office actions:

  • In-person
  • Telephone conference
  • Video conference

Some USPTO Examiners require the Applicant to use the USPTO Automated Interview Request system to schedule an interview.

Have Questions About Office Actions?

If you need legal assistance in responding to the USPTO Office Action for your Patent Application, please contact Business Patent Law, PLLC. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

In the meantime, 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.

Intent to Use Applications - Service Marks and Trademarks

Intent to Use Applications

Intent to Use Applications for Registration

There are two kinds of federal Trademark/Service Mark Applications:

  1. Intent to Use Applications
  2. In Use Applications

In the United States, the Mark must have interstate or international use before a federal Registration is granted.

Clients may opt to use the Intent to Use route to establish a “constructive” date of first use (the filing date) with the grant of the Registration. This constructive date of first use can benefit the Applicant/Owner of the Mark in situations where there are conflicts between competing Applications for Registration.

The Statutory Law for Intent to Use Applications

The United States code allows an applicant to file an Application for Registration before the Mark has interstate or international usage. That section of the code (15 United States Code 1051) reads:

(b)Application for bona fide intention to use trademark

(1)  A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.

When filing of the Application, the Applicant must verify the following:

  • The Applicant believes that he/she/it is entitled to use the Mark in commerce
  • The Applicant has a bona fide intention of using the Mark in commerce
  • That the facts recited in the Application are accurate
  • That no other person is using an identical form in connection with goods (services) or in a near enough resemblance that it is likely to cause confusion, mistake, or to deceive

There is a USPTO filing fee for filing the Intent to Use Application and the filing of an Application for Registration does not guarantee that Registration will be granted.

The USPTO email Notice of Allowance

After filing of the Intent to Use Application, there may be one or more Office Actions between the Examiner and the Applicant before the Examiner issues or declines a Notice of Allowance.

If the Examiner approves the Intent to Use Application, the Applicant will receive an email from the USPTO that indicates the following (among other things):

  • Notice of Allowance (NOA)
  • Issue Date
  • U.S. Serial Number
  • Mark
  • Docket/Reference Number

If no opposition was filed for this published Application, the issue date of this NOA establishes the due date for the filing of a Statement of Use (SOU) or a Request for Extension of Time to file a Statement of Use (Extension Request).  WARNING: A SOU that meets all legal requirements must be filed before a Registration Certificate can issue.  Please read below for important information regarding the Applicant’s pending six (6) month deadline.

The Six Month Deadline

An applicant has six (6) MONTHS from the NOA issue date to file either:

  • An SOU, if the Applicant is using the mark in commerce. OR
  • An Extension Request. (Required if the applicant is not yet using the mark in commerce.)

NOTE: If an Extension Request is filed, a new request must be filed every six (6) months until the SOU is filed.  The applicant may file a total of five (5) extension requests.  Warning: An SOU may not be filed more than thirty-six (36) months from when the NOA issued.  The deadline for filing is always calculated from the issue date of the NOA.

Post Notice of Allowance Procedures 

Until the Mark has interstate or international usage and the Registration is granted, Applicant must file either:

  • A Statement of Use; or
  • A Request for an Extension of Time in which to file a Statement of Use

Support of a Request for an Extension of Time to file a Statement of Use

You do not have to show “good cause” for the first request, but in order to support your request for an extension after that, you must include a showing of good cause. The showing of good cause must include a statement of the Applicant’s ongoing efforts to use of the Mark in commerce.

Efforts to use the Mark in commerce may include:

  • product or service research or development
  • market research
  • manufacturing activities
  • promotional activities
  • steps to acquire distributors
  • steps to obtain required governmental approval, or
  • other similar activities

An Applicant can file a maximum of five Requests for an Extension of Time to file a Statement of Use.

Need assistance with your Intent To Use Application?

If you need legal assistance in preparing Trademark Applications, 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.

Racing to the Patent Line - Priority Date Filing USTPO

What is a Priority Date for Patents?

The priority date, under US law, is the filing date of the first Patent Application (Provisional or Nonprovisional) to which a Nonprovisional Patent Application claims benefit. Depending on the facts of each case, the claim of priority must be established prior to the expiration of the Provisional Application, abandonment of the Nonprovisional Application, or the grant of the Patent.

Why is a Patent’s Priority Date a Big Deal?

Among other things, the USPTO can only use references that were available prior to the priority date to reject the claims of the Nonprovisional Patent Application.  In other words, the USPTO cannot use inventions filed after this priority date to reject the claims of a Nonprovisional Patent Application. So if a competitor invents something while you are waiting for the Patent Office’s review, the earlier the filing date or priority date, the less prior art the Examiner can use to reject your Patent Application.

This matters because it may be two, four, or more years after you file your Nonprovisional Application before the USPTO starts detailed examination of your application.

What If I Made Earlier Filings?

A Nonprovisional Patent Application can claim the benefit of an earlier Provisional Application or a previously filed Nonprovisional Application. If a Nonprovisional Patent Application doesn’t claim the benefit of a Provisional Application or priority based on a previously filed Nonprovisional Application, the priority date is the filing date on the original Nonprovisional Patent Application.

What the US Code Says

35 United States Code (U.S.C.) 120

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…”

35 U.S.C. 119(e)

35 U.S.C. 120(e), in part reads, “(1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application…”

Examples: How Priority Date for Patent Applications Works

  • Our Provisional Application was filed July 4, 2020 and on January 15, 2021 our company files a Nonprovisional claiming the benefit of our Provisional Application. The priority date is July 4, 2020.
  • Our company filed a Nonprovisional Application on March 15, 2020. We opt to file a PCT Application. The priority date is March 15, 2020.
  • The Provisional Application was filed on September 15, 2019. Our company filed a Nonprovisional Application on September 12, 2020 claiming the benefit of the Provisional Application. Our engineers invented an improvement to the invention that was disclosed in the Nonprovisional Application but not in the Provisional Application. We opted to file a Continuation Nonprovisional Application. The priority dates are September 12, 2020 for the improvement and September 15, 2019 for the remainder of the invention disclosed in the Provisional Application.
  • Our company filed a Provisional Application directed to a mousetrap on January 12, 2017. On January 9, 2018, we filed a PCT Application directed to the mousetrap. In March 21, 2019, our engineers invented a device for use with the mousetrap. The device is used for sampling the DNA of the mouse restrained in the mousetrap. On May 15, 2019, the company files a US Continuation-in-Part Application claiming both the mousetrap and the device for sampling DNA. The priority dates are January 12, 2017 for the mousetrap and May 15, 2019 for the device for sampling DNA.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need legal assistance in preparing Patent Applications, please contact Business Patent Law, PLLC.

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.

suspended trademark next steps

Trademark Suspension Notice: How to Handle

The Trademark Suspension Situation

Our Company has been using our Trademark for Years. Our General Counsel filed an In-Use Federal Trademark Application. We just received a Suspension Notice from the Trademark Examiner.

  • During the Application phase, regardless of your Company’s alleged prior use, the Examiner can suspend your Company’s Trademark Application
  • With regard to Trademark Applications filed in the USPTO, until the subsequent Applicant proves otherwise, the first Applicant to file has superior procedural rights, and potentially, superior substantive rights
  • When a Trademark Application is suspended, the Examiner takes no further action on the suspended Application until proof of certain evidentiary conditions cause the Examiner to resume examination of the suspended Application
  • In some situations, multiple Applicants’ Applications can be suspended for a period of years

Receiving a Trademark Suspension Notice

A United States Patent and Trademark Office (USPTO) Suspension Notice of a pending Trademark Application looks something like the following:

SUSPENSION NOTICE

No Response Required

Issue date:  December 15, 2020

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq.

USPTO database searched; prior-filed potentially conflicting pending application(s) found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark(s) in a prior-filed pending application(s) may bar registration of applicant’s mark.

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s).  15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §1208.02(c).  Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below is provided in this letter.

– U.S. Application Serial No(s). ????????

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05.

What can our Company do to Advance our Application?

  • Accumulate evidence about the Applications involved with the suspension
  • Seek competent intellectual property counsel
  • Determine best options for success in advancing the Company’s Application toward a Federal Registration
  • In the United States, before the USPTO grants a Registration, the Applicant must provide evidence of either interstate or international use of the Mark
  • Trademark Suspension Notices can create a convoluted path to federal Registration

Need More Help?

Business Patent Law, PLLC represents and has represented clients owning suspended Trademark Applications before the USPTO. If you need legal assistance in preparing and prosecuting and Patent and Trademark Applications, please contact Business Patent Law, PLLC.

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

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.

Questions about Provisional Patent Application

Provisional Patent Application

The following is a case study example to help companies with questions about Provisional Patent Applications.

The Situation

Five Months Ago our Company’s Engineer filed a Provisional Patent Application – What can we do?

First, the facts: A Provisional Patent Application does not generate a Patent.  Patents are always granted from Nonprovisional Applications.

Your company has several options  – provided the Provisional Application is directed to:

  1. The patentable subject matter required by 35 United States Code (U.S.C.) 101 in view of the judicial exceptions thereto; and
  2. Is enabled and the best mode is disclosed as required by 35 U.S.C. 112.

Options for the Company’s Pending Provisional Patent Application

If the Provisional Application meets the requirements of 35 U.S.C. 112:

  • Allow the Provisional Application to expire at one year from the filing date of the Application
  • File a US Nonprovisional Application claiming the benefit of the Provisional Application
  • File an International Application claiming the benefit of the Provisional Application

If your Provisional Application does not meet the requirements of 35 U.S.C. 112:

Provisional Patent Application: Next Steps

Actions that can be implemented subsequent to the filing of Provisional Patent Applications

  • Contact a seasoned patent attorney in a timely fashion. (Do not wait until three weeks before the Provisional Applications will expire to contact a  patent attorney.)
    • If an international-type of Patent Application claiming the benefit of the Provisional Application is to be filed, engage the patent attorney at approximately six months subsequent to the filing date of the Provisional Application
    • If only a US Nonprovisional Application is to be filed claiming the benefit of the Provisional Application is to be filed, engage the patent attorney at approximately nine months subsequent to the filing date of the Provisional Application
  • If formal Drawings were not filed with the Provisional Applications, drawings in accordance with USPTO requirements should be prepared
  • If time permits, conduct a Patentably Search and utilize a patent attorney to prepare a Patentability Report

Save Yourself Some Money

Although not required to file Nonprovisional Applications in the USPTO, it appears that clients utilizing the combination of a Patentability Search and Patentability Report incur less total expenses in procurement of a Patent than clients who opt to not utilize a Patentability Search and Report prior to filing the Nonprovisional Application.

Need Additional Help?

If you need legal assistance in preparing Patent Applications, 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.

Patent Infringement Cease and Desist Letter

Patent Infringement: The Cease and Desist Letter

What is Patent Infringement?

Patent infringement is similar to trespassing on private real estate. A deed for real property determines the real property’s boundary and what constitutes a trespass. In a similar vein, Patent claims define the intellectual property boundary of the Patent and what establishes an infringement.

Patent infringement is defined in United States Code Section (U.S.C.) 271. In part, Section 271 reads:

“Infringement of Patent (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

Patent Infringement Damages

Patent infringement damages are defined in U.S.C. 284 which, in part, reads:

“Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d).”

What Happened to Our Business was Surprising

We received a letter from the legal department of Company ABC demanding payment of damages for our alleged sales of Company ABC’s patented gadget. Prior to receiving the letter, our business was not aware that Company ABC’s gadget was patented. What can we do?

How To Defend Against Allegations of Patent Infringement

  • Contact an experienced patent attorney.
  • Determine if the patent is in full force and effect and is owned either directly or indirectly by Company ABC. The USPTO Assignment Database gives notice to the world of ownership rights in assigned Patents.
  • Determine if the gadget was identified by the patent number as set forth in 35 U.S.C. 287(a). In part, 35 U.S.C. 287(a) reads, “In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”
  • Calculate the expiration date of the Patent. The USPTO website includes a Patent Term Calculator to assist in determining if a Patent remains in full force and effect. Practicing the claimed subject matter of an expired Patent is not an infringement.
  • If there is no settlement agreement with company ABC, make no payments to Company ABC.
  • In this scenario, receiving a letter from the legal department of Company ABC instead of a law firm is unusual.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need legal assistance procuring and managing your intellectual property assets, 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.

How to Revive Your Expired Trademark

Reviving Abandoned Trademark Applications

Reviving Abandoned Trademark Applications

Our company is has abandoned trademark applications and the United States Patent and Trademark Office (USPTO) has issued Notices of Abandonment for some of our trademark applications. What is the procedure to revive these abandoned trademark applications?

Abandoned Trademark Applications: How it Happened

Over a year ago, in anticipation of future sales some of our company’s research and development pipeline products, the marketing department filed several Intent-to-Use Trademark Applications in the USPTO. Our vice president of sales recently authorized his department to take advance orders for two new products and he was informed that the Intent-to-Use Trademark Applications for the two new products were considered abandoned by the USPTO.

Why it Matters

We just learned that one of our competitors filed two Intent-to-Use Trademark Applications in the USPTO and that those two Trademark Applications were identical to our company’s now abandoned Trademark Applications.

The Question

Can we do anything to keep our competitor from obtaining federal registrations for our Trademarks?

The Answer

Depending on the timelines of each company’s Trademark Applications, maybe.

Petition to Revive Requirements

Under most factual circumstances, 37 Code of Federal Regulations 2.66 requires that the Petition to Revive abandoned Trademark Applications must be filed within two months of the USPTO’s Notice of Abandonment of the Trademark Application.

Examples of requirements associated with the filing of Petition to Revive an abandoned Trademark Application in the USPTO are:

Received Petition Type 1: Office Action

This petition type indicates no response was filed or it was filed untimely. To address the Office Action, you will need to include in your request:

  • Petition fee (one for each application)
  • A statement that the delay in filing a response was unintentional, signed by someone with firsthand knowledge of the facts.
  • A complete response to the outstanding office action signed by the applicant or, if the applicant is represented by an attorney, signed by their attorney.
  • NOTE: If the abandonment was entered after a final office action, the response must include either a notice of appeal or a statement that no appeal or petition is being filed from the final refusal(s) or requirement(s).

Received Petition Type 2: Notice of Allowance received

This petition type indicates that no statement of use or extension request was filed, or they were filed untimely. To address a Notice of Allowance, you must include in your request:

  • Petition fee (one for each application)
  • A statement that the delay in filing a Statement of Use or extension request was unintentional, signed by someone with firsthand knowledge of the facts.
  • The required fees for all extension requests that have become due since the Notice of Allowance was issued.
  • A Statement of Use, an extension request, or (in a multiple-basis application) an amendment deleting the section 1(b) basis or deleting all of the intent to use goods/services and seeking registration based on an already existing section 1(a) and/or section 44(e) basis.

What Happens Next?

If Your Request is Granted

If the USPTO grants the Petition to Revive, your abandoned Trademark Application is reinstated to “pending” status.

In your situation, if your company’s petition to revive two of its abandoned Intent-to-Use Applications is granted, your company’s pending Intent-to-Use Applications would pre-date your competitor’s filings. With regard to each company’s Intent-to-Use Applications, your company’s procedural rights associated with your Intent-to-Use Applications would be superior to your competitor’s procedural.

If Your Request is Not Granted

If the USPTO does not grant your Petition, your competitor would have superior procedural rights. Depending on the facts, even if your request is denied, your company may have other legal actions that can prevent your competitor from using trademarks created by your company.

If your enterprise needs legal assistance procuring/managing/enforcing your intellectual properties, 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.

Copyright Registrations and Copyright Protections

Copyright Registrations

What are Copyright Registrations?

Copyright Registrations are defined in Title 17 of the United States Code (U.S.C). In part, 17 U.S.C. 102 reads:

“(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device….

 

Works of authorship include the following categories:

      • literary works
      • musical works, including any accompanying words
      • dramatic works, including any accompanying music
      • pantomimes and choreographic works
      • pictorial, graphic, and sculptural works
      • motion pictures and other audiovisual works
      • sound recordings
      • architectural works”

A Competitor Published our Copyright – What can We do?

Our advertising manager had lunch with a competitor’s public relations manager. Unfortunately, over lunch, our advertising manager discussed the focus of our advertising campaign. He also discussed our new audiovisual commercial for our third most profitable product line. Before we could publish our new commercial, our competitor launched its own commercial. Their commercial included every focus point from our advertising campaign.

According to our accounting estimates, their use of our ideas reduced our sales by $500K. Can we sue our Competitor for Copyright Infringement?

The answer is… it depends.

What is Required to Prove Copyright Infringement?

Among other things, a Copyright Registration requires, a work “…of authorship fixed in any tangible medium of expression…”

  • If your company had filed an Application for Copyright Registration, prior to the advertising manager’s disclosure to the public relations manager, then Yes, you can probably prove copyright infringement. (The work of authorship was fixed in a tangible medium of expression.)
  • If your company can provide a written document, audio recording or audiovisual recording of what the advertising manager disclosed to the public relations manager then Yes. It may be worthwhile to pursue a claim of copyright infringement, since “the work of authorship was fixed in a tangible medium of expression.”
  • If your company relies only on oral testimony of the advertising manager to prove existence of a Copyright then No. The likelihood of a successful suit is very low since the focus concept was an idea and not “a work of authorship fixed in a tangible medium of expression.”

Advantages of Copyright Registrations

  • Evidence of ownership of the registered work of authorship
  • Public notice of ownership of the work
  • Federal District Court jurisdiction for an infringement suit
  • Possibility of statutory damages and attorneys’ fees

If your enterprise needs legal assistance procuring, managing and enforcing your Copyrights, 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.