Once you file your trademark application, an Examiner will review the application to look for compliance with trademark laws. The mark cannot be generic, descriptive, or a surname, and it cannot have a likelihood of confusion with another trademark that is in the Principal Register or Supplemental Register, either as an application or registration.
Once the mark overcomes these hurdles, the Examiner may require a restatement of the goods and services for clarity, and these are generally in line with the USPTO Goods and Services ID Manual.
The trademark application is then published for competitors to see, and potentially oppose (a mini-trial). If No opposition is filed, the trademark application proceeds to allowance, and will register once use is shown through a Statement of Use.
Monday, June 18, 2018
Thursday, August 21, 2014
Nomad Trademark Lawyer - now providing low-price trademark applications!
Nomad Trademark Lawyer provides inexpensive, professional trademark filing in the US and worldwide, using the Madrid Protocol for foreign filings. Nyall Engfield, the lead trademark attorney, has over 10 years experience in filing and prosecuting trademarks in the US, Canada and abroad.
Nomad Trademark Lawyer performs trademark monitoring for a single low price per month. If you don't watch your trademark, and others start to use it, then you may have problems stopping them later on. Read more in "What is trademark monitoring and why do you need it". Nomad Trademark Lawyer can also provide you with a comprehensive clearance search for the US, so that you know the mark is not taken, or you can determine what hurdles you may face getting the mark to registration.
Nomad Trademark Lawyer is also providing general trademark education, including how to protect your brand with an unregistered trademark - in "How to create an unregistered trademark". This type of trademark usage, also known as common-law trademarks, costs nothing and is created through use of your brand in the marketplace.
Nomad Trademark Lawyer performs trademark monitoring for a single low price per month. If you don't watch your trademark, and others start to use it, then you may have problems stopping them later on. Read more in "What is trademark monitoring and why do you need it". Nomad Trademark Lawyer can also provide you with a comprehensive clearance search for the US, so that you know the mark is not taken, or you can determine what hurdles you may face getting the mark to registration.
Nomad Trademark Lawyer is also providing general trademark education, including how to protect your brand with an unregistered trademark - in "How to create an unregistered trademark". This type of trademark usage, also known as common-law trademarks, costs nothing and is created through use of your brand in the marketplace.
Wednesday, September 21, 2011
Thursday, September 15, 2011
America Invents Act - How do these recent US patent law amendments affect my business?
Recently, Congress and the Senate passed the America Invents Act, the first major revision of the patent laws since 1952. The amendments can be confusing, and there is of course uncertainty, even after the amendments are put into practice, as with any new law. After a brief run-down of the changes that are taking place, see how the amendments will affect your business and patenting strategy.
Moving to a "First-to-File" system: The US has, for a long time, been a "First-to-Invent" which means that the first person to invent is the rightful owner. Where two inventors claimed to be the rightful inventor, this would lead to expensive and convoluted interference proceedings, like a mini-trial requiring evidence and a hearing to determine who the rightful inventor was. The rest of the world has been operating on a First-to-File system, which reduces uncertainty but results in a race to the patent office, as the first person to file is the rightful owner. This change brings the US in line with the other patent systems around the world.
Post-Grant Review Proceedings: In the past, US Patents have been difficult to challenge on grant, short of litigation. When the law takes effect in approximately 1 year opponents of a patent will have new means to challenge the issue through post-grant review proceedings. Petitions for post-grant review must be filed within 9 months of the grant of a patent application, and can claim almost any ground of invalidity including prior disclosure or sale, indefiniteness of claims, and insufficiency of the specification. Review will be granted where the petition discloses unrebutted grounds where it is more likely than not that one or more claims is unpatentable.
Expanded Time Limits for Third-Party Submissions during Prosecution: Previously, submissions by third parties regarding the patentability of an application would have to be made within the earlier of two months of the publication of an application or prior to mailing a notice of allowance. Now the submissions may be made before the earlier of the date the Notice of Allowance is sent, or six months after publication.
Supplemental Examination: The patent owner can request reexamination of his or her application after issue of the application, to consider relevant information and correct the patent if appropriate.
Suffice to say, the amendments bring the US patent regime more in line with the rest of the world, which simplifies an international patent filing strategy. The America Invents Act makes challenging unissued and issued patents easier, through expanding the time for filing prior art during prosecution, and challenging the patent after issue with Post-Grant Review. Supplemental Examination will allow patent owners to voluntarily narrow the scope of their patent after having encountered documents that can impeach the patent. Overall, there are no changes that affect the patentability of business methods.
If you have any questions or comments, please let me know. You can reach me at engfield.ca.
Moving to a "First-to-File" system: The US has, for a long time, been a "First-to-Invent" which means that the first person to invent is the rightful owner. Where two inventors claimed to be the rightful inventor, this would lead to expensive and convoluted interference proceedings, like a mini-trial requiring evidence and a hearing to determine who the rightful inventor was. The rest of the world has been operating on a First-to-File system, which reduces uncertainty but results in a race to the patent office, as the first person to file is the rightful owner. This change brings the US in line with the other patent systems around the world.
Post-Grant Review Proceedings: In the past, US Patents have been difficult to challenge on grant, short of litigation. When the law takes effect in approximately 1 year opponents of a patent will have new means to challenge the issue through post-grant review proceedings. Petitions for post-grant review must be filed within 9 months of the grant of a patent application, and can claim almost any ground of invalidity including prior disclosure or sale, indefiniteness of claims, and insufficiency of the specification. Review will be granted where the petition discloses unrebutted grounds where it is more likely than not that one or more claims is unpatentable.
Expanded Time Limits for Third-Party Submissions during Prosecution: Previously, submissions by third parties regarding the patentability of an application would have to be made within the earlier of two months of the publication of an application or prior to mailing a notice of allowance. Now the submissions may be made before the earlier of the date the Notice of Allowance is sent, or six months after publication.
Supplemental Examination: The patent owner can request reexamination of his or her application after issue of the application, to consider relevant information and correct the patent if appropriate.
Suffice to say, the amendments bring the US patent regime more in line with the rest of the world, which simplifies an international patent filing strategy. The America Invents Act makes challenging unissued and issued patents easier, through expanding the time for filing prior art during prosecution, and challenging the patent after issue with Post-Grant Review. Supplemental Examination will allow patent owners to voluntarily narrow the scope of their patent after having encountered documents that can impeach the patent. Overall, there are no changes that affect the patentability of business methods.
If you have any questions or comments, please let me know. You can reach me at engfield.ca.
Monday, August 29, 2011
Start-up company value enhanced by patents - How patents add value and how to delay patenting costs
Often in creating a start-up company., particularly in technology, the owners are looking for an eventual buy-out by a larger company (Google, Facebook), and even if they are not, the company must have value in order to receive investment. Value is gained by a competitive advantage, and one of the most power competitive advantages is to exclude others from being able to reproduce your idea (at least not without royalties to you).
A family of patents covering the idea is the best approach to protecting your competitive space and adding value to the company. The patents can later be sold as part of the company, and often the lion's share of the value of a company is the intellectual property. Patents can also stand as collateral and guarantee for any investor, such as a VC or angel, who is providing funds. When a technology is no longer being pursued by the company, the patents can be licensed to provide a stream of revenue, or sold off to provide capital back to the company.
While a patent filing strategy can be expensive, with the right patent attorney the patenting costs can be delayed until the company is profitable or pending sale. The start-up will benefit from the value of the patents, without having to dispense limited funding at the outset.
Feel free to contact me for more information.
A family of patents covering the idea is the best approach to protecting your competitive space and adding value to the company. The patents can later be sold as part of the company, and often the lion's share of the value of a company is the intellectual property. Patents can also stand as collateral and guarantee for any investor, such as a VC or angel, who is providing funds. When a technology is no longer being pursued by the company, the patents can be licensed to provide a stream of revenue, or sold off to provide capital back to the company.
While a patent filing strategy can be expensive, with the right patent attorney the patenting costs can be delayed until the company is profitable or pending sale. The start-up will benefit from the value of the patents, without having to dispense limited funding at the outset.
Feel free to contact me for more information.
Friday, August 26, 2011
How to write patent claims. How to draft claims for a patent application
Claims drafting is as much art as science. There is a body of law that has built up over the past 300 or so years in which patents have been granted in North America, which dictates to some degree how claims must be drafted. Within that framework, however, there are many interpretations of how best to encapsulate an invention in words, and the ultimate arbiter of any patent claim is the Court.
As an overview, a claim is made up of three parts: the preamble, the transitional phase and the body. In discussing claims construction, let's use an example, perhaps the original velocipede patented by Pierre Lallement:
The velocipede consists of a frame having a pivoting fork, two wheels, of which the front wheel pivots within the fork and has pedals, a seat and a handlebar also attached to the pivoting fork. So an example claim might read:
A two-wheeled velocipede for transportation (preamble), comprising (transition):
a frame for receiving a rear wheel, the frame having a seat mounted thereon;
a fork pivotally mounted within said frame, having a handlebar extending from its top, the fork for receiving a front wheel;
a rear wheel rotatably mounted within said frame;
a front wheel rotatably mounted within said fork, the front wheel having two pedals mounted opposite to one another
wherein the pedals are pushed to provide motive force to the front wheel, and the handlebars may be turned so that the front wheel pivots (body).
The preamble describes the invention using normal words (as velocipede was back in the day), and the transition set up the components. The word "comprising" means minimally including, so that more elements may be present than are listed here. If a list of components is exhaustive, in that any more components would prevent the invention from working, for example, As you can see, the bulk of the claim is the body which describes components, describes how they fit together, and then usually a "wherein" clause describes how the invention operates. In choosing the components to describe, what you are looking for is the minimal elements that are required to make the invention perform. Anything bonus or not strictly necessary should be left out
The entire claim language must correspond with the language used for the same components in the description. Also, elements must be introduced by an indefinite article ("a"), and thereafter referred to by a definite article ("the"). Punctuation is important - the claim is one big sentence separated by semicolons or commas; a period only appears at the end.
As an overview, a claim is made up of three parts: the preamble, the transitional phase and the body. In discussing claims construction, let's use an example, perhaps the original velocipede patented by Pierre Lallement:
The velocipede consists of a frame having a pivoting fork, two wheels, of which the front wheel pivots within the fork and has pedals, a seat and a handlebar also attached to the pivoting fork. So an example claim might read:
A two-wheeled velocipede for transportation (preamble), comprising (transition):
a frame for receiving a rear wheel, the frame having a seat mounted thereon;
a fork pivotally mounted within said frame, having a handlebar extending from its top, the fork for receiving a front wheel;
a rear wheel rotatably mounted within said frame;
a front wheel rotatably mounted within said fork, the front wheel having two pedals mounted opposite to one another
wherein the pedals are pushed to provide motive force to the front wheel, and the handlebars may be turned so that the front wheel pivots (body).
The preamble describes the invention using normal words (as velocipede was back in the day), and the transition set up the components. The word "comprising" means minimally including, so that more elements may be present than are listed here. If a list of components is exhaustive, in that any more components would prevent the invention from working, for example, As you can see, the bulk of the claim is the body which describes components, describes how they fit together, and then usually a "wherein" clause describes how the invention operates. In choosing the components to describe, what you are looking for is the minimal elements that are required to make the invention perform. Anything bonus or not strictly necessary should be left out
The entire claim language must correspond with the language used for the same components in the description. Also, elements must be introduced by an indefinite article ("a"), and thereafter referred to by a definite article ("the"). Punctuation is important - the claim is one big sentence separated by semicolons or commas; a period only appears at the end.
Wednesday, August 24, 2011
Why Patent? Benefits of Patents
Why Patent?
A patent gives an inventor a 20 year monopoly over exploiting an invention; after that, the invention is in the public domain, for all to use. Preparing and filing a patent application takes time and money, however - wouldn't it be great if you could automatically receive protection on creation of the invention, like copyright? And copyright lasts for 50 years (70 in the US)!
The only protection that lasts forever, or at least an indefinite period, is a trade secret. If you can keep the invention secret, and it can't be reverse-engineered, then this would be the way to go ,especially as it's free.
Benefits of Patents
A granted patent (and ungranted in certain circumstances) gives enforcement rights to the owner against infringers, which an owner (or licensee) can use to stop the infringing behavior and claim damages. Patents can therefore be valuable property, which can be bought and sold like any other property. We recently saw the patent portfolio of Nortel sold to a conglomerate including Apple and Microsoft for $4.5 billion. As a property, patents can also support investment in businesses - after all a patent gives a competitive advantage. Producing this kind of value, a patent encourages innovation and rewards invention.
A patent gives an inventor a 20 year monopoly over exploiting an invention; after that, the invention is in the public domain, for all to use. Preparing and filing a patent application takes time and money, however - wouldn't it be great if you could automatically receive protection on creation of the invention, like copyright? And copyright lasts for 50 years (70 in the US)!
The only protection that lasts forever, or at least an indefinite period, is a trade secret. If you can keep the invention secret, and it can't be reverse-engineered, then this would be the way to go ,especially as it's free.
Benefits of Patents
A granted patent (and ungranted in certain circumstances) gives enforcement rights to the owner against infringers, which an owner (or licensee) can use to stop the infringing behavior and claim damages. Patents can therefore be valuable property, which can be bought and sold like any other property. We recently saw the patent portfolio of Nortel sold to a conglomerate including Apple and Microsoft for $4.5 billion. As a property, patents can also support investment in businesses - after all a patent gives a competitive advantage. Producing this kind of value, a patent encourages innovation and rewards invention.
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