Terms : LoTempio Law Blog

Posted on July 12, 2010 by Vincent LoTempio

World Cup Trademarks

Congratulations to Spain for winning the World Cup in soccer. But the big money winner is the Fédération Internationale de Football Association (FIFA) for the marketing of the event. The Hollywood Reporter said that 700 million people worldwide watched the World Cup 2010 yesterday.

About 24 million Americans watched Spain win the World Cup over the Netherlands, while 106.5 million viewers in the US watched the New Orleans Saints' 31-17 upset of the Indianapolis Colts on Superbowl Sunday on CBS.

So I got to wondering about how the trademark for the World Cup was being used, registered and protected around the world. I found a blog called the Worldcupblog.org which reported that FIFA owned a slew of trademark registrations/applications for many different trademarks all over the world. I searched the USPTO webpage and found that there were 150 trademark registrations/applications owned by the organization known as FIFA.

I also found that back in 2006 the World Cup Blog had their wrist slapped by the attorneys of FIFA for what they considered inappropriate use of the trademarks. Although the blog didn't agree with FIFA that their use was inappropriate, in fact the blog considered the use to be a promotion of the event. See how they comically recite why they took down the trademark as requested,

"We have complied with FIFA’s request but not because we agree in the least with their draconian rules. We are just nice people and the only lawyer we could afford to hire to represent us in this dispute was our brother-in-law whose entire legal education comes from watching Perry Mason, LA Law and Law and Order."

Google posted an innocuous drawing on their famous search engine search page. You can see they clearly tried not to infringe on any FIFA trademark. But do you think that the FIFA organization profited by the exposure on Google yesterday?

There have been many examples of overzealous attorneys sending cease and desist letters, the funniest one was the "other white meat" April fools ad for unicorn meat by Thinkgeek.com. In the Unicorn case there was a 12 page letter telling Think Geek Inc. how the National Pork Board was injured by the sale of unicorn meat.

So what does trademark registration protect? Non-commercial use of another's trademark is not actionable as dilution. What is fair use? A trademark can be used when the use does not suggest sponsorship or association with the trademark owner's product or services and therefore is not being used in a manner to confuse the reader.

Use of another's trademark is not considered to be infringement if it falls under one of the following categories of permissible use:

Fair Use - this is most commonly seen in comparative advertising; i.e. "In a blind taste test, our cola ranked higher among consumers than Coca-Cola or Pepsi."
First Sale Doctrine - Protects resellers/repackagers - this is illustrated by auction websites like Ebay. Resellers frequently list items using another's trademark without authorization, i.e. selling genuine Windows software without being an authorized distributor/retailer.
Use in parody or speech - does anybody remember Weird Al Yankovic?

Tags: FIFA, I, Trademarks, fair use, infringement, world cup 2010

Posted on December 8, 2009 by LexBlog

Uncontrolled Licensing

A trademark owner has the duty to control the nature and quality of goods sold under his mark. When a trademark is licensed to another party, the licensor must exercise quality control of the goods produced. If the licensor fails to control quality, the mark may lose significance as an indication of origin and be found to have been abandoned.

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Posted on December 8, 2009 by LexBlog

United States

The United States includes all territory which is under its jurisdiction and control.

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Posted on December 8, 2009 by LexBlog

Use-Based Application

There are 4 filing bases on which an application may be based. One filing basis is use of the mark in commerce (the other three are filing based on an intent-to-use the mark in commerce, filing based on a pending foreign application, and filing based on a foreign registration). Applicants who file based on use in commerce must be using the mark they wish to register with the goods or services in the application prior to or at the time of filing the application.

To base the application on the applicant’s use of the mark in commerce, the applicant must submit the following four items: (1) A statement that the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date; (2) The date of the applicant’s first use of the mark anywhere on or in connection with the goods or services; (3) The date of the applicant’s first use of the mark in commerce as a trademark or service mark; and (4) One specimen for each class showing how the applicant actually uses the mark in commerce. If the specimen is not filed with the initial application, applicant must submit a statement that the specimen was in use in commerce at least as early as the application filing date. These items must be verified by the applicant, i.e., supported either by an affidavit or by a declaration under 37 C.F.R. §§2.20 and 2.33. Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

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Posted on December 8, 2009 by LexBlog

Use in Commerce

For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. If you have already started using the mark in commerce, you may file based on that use.

A sworn statement signed by the owner or a person authorized to sign on behalf of the owner, stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce. A filing fee per class of goods/services must accompany the Extension Request. The Extension Request, if granted, gives the owner an additional six (6) months to either: (1) use the mark in commerce and file a Statement of Use; or (2) file another Extension Request.

You may continue to file Extension Requests every six (6) months. However, you must use the mark and file a Statement of Use within three (3) years of the issue date of the Notice of Allowance. The USPTO will not register a mark if, after thirty-six (36) months of the issue date of the Notice of Allowance, a Statement of Use has not been filed.

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Posted on December 8, 2009 by LexBlog

Request To Reinstate An Application

If an application is abandoned due to a USPTO Office error, an applicant may file a request to reinstate the application, instead of a petition to revive. There is no fee for a request for reinstatement. You must file a request for reinstatement within two months of the issue date of the notice of abandonment. You must include a true copy of the document that was timely submitted, and a copy of an acceptable form of proof of receipt in the USPTO. For a list of evidence that may be considered in support of a request for reinstatement.

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Posted on December 8, 2009 by LexBlog

Quality Control

If the goods or services are provided directly by the trademark owner, quality control is inherent, because the owner purchases the raw materials, manufactures the products, and does the design work, advertising, and marketing. If a wholly-owned subsidiary is involved, control by the parent is assumed. If a trademark is used by an affiliate or licensee, there should be a formal license agreement. The affiliate or licensee produces and markets the goods, and the owner exercises quality control by setting standards and performing inspections. The owner should have control over the mark on paper and also exercise actual onsite control.

Tags: Q

Posted on December 8, 2009 by LexBlog

Passing Off

When a trade or service mark is not registrable it may still be entitled to certain protection, i.e. a passing-off action. Passing off is available where there is a prospect of confusion of identity through the unauthorized use of similar marks or get up, and such use damages, or is likely to damage the goodwill and reputation of a business. Unregistered marks and passing off can apply to virtually any name, mark, logo up which distinguishes a company, business, product or service.

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Posted on December 8, 2009 by LexBlog

Petition To Revive An Application

A formal request for the USPTO to return an abandoned application to active status. These petitions are handled by the Office of the Commissioner for Trademarks, and must be received in the USPTO within two (2) months from the issue date of the notice of abandonment. The standard used for deciding a petition to revive is unintentional delay, that is, whether the applicant’s delay in responding to an Office action or Notice of Allowance was unintentional. There is currently no form for filing a petition to revive.

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Posted on December 8, 2009 by LexBlog

Principal Register

Primary trademark register of the USPTO. When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Trademark Act. The advantages of owning a registration on the Principal Register include the following:

Constructive notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C. Section 1072);
A legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration (15 U.S.C. Sections 1057(b) and 1115(a);
A date of constructive use of the mark as of the filing date of the application (15 U.S.C. Section 1057(c); TMEP Section 201.02);
The ability to bring an action concerning the mark in federal court (15 U.S.C. Section 1121);
The ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods (15 U.S.C. Section 1124);
The registrant’s exclusive right to use a mark in commerce on or in connection with the goods or services covered by the registration can become “incontestable,” subject to certain statutory defenses (15 U.S.C. Sections 1065 and 1115(b)); and
The use of the U.S. registration as a basis to obtain registration in foreign countries.

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Posted on December 8, 2009 by LexBlog

Likelihood of Confusion

Statutory basis (Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), TMEP §1207 et seq.) for refusing registration of a trademark or service mark because it is likely to conflict with a mark or marks already registered or pending before the USPTO. After an application is filed, the assigned examining attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO. The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered. The principal factors considered by the examining attorney in determining whether there is a likelihood of confusion are: (1) the similarity of the marks; and (2) the commercial relationship between the goods and/or services listed in the application. To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict and possibly suspend action on your application. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.

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Posted on December 8, 2009 by LexBlog

Identification Of Goods And/Or Services

A written statement of the goods and/or services included in an application. Every application must include an identification of goods and/or services. If you fail to list any recognizable goods or services, the USPTO will return the application and refund the fee. When specifying the goods and/or services, applicants should use clear, concise terms, i.e., common commercial names and language that the general public easily understands.

Please note that the terms in the class headings or short titles of the classes in the "International Classification of Classes of Goods and Services" are generally too broad and should not be used alone as an identification. Also, an international class number alone is never an acceptable listing. For a listing of acceptable wording for goods and services.

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Posted on December 8, 2009 by LexBlog

Informal Application

An application that has been filed without one or more of the elements required to receive a filing date. The USPTO will return informal applications to applicants. Please see the entry for “application” above for a list of the required elements.

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Posted on December 8, 2009 by LexBlog

Intent to Use

Prior to November 16, 1989, trademark applications which were filed with the U.S. Patent and Trademark Office had to be based on actual use in commerce. This meant that proof of use had to be submitted when the application was filed. With the passage of the Trademark Act of 1988, filings can now be made by stating an intention to use the mark and filing on the Principal Register. This allows a party to establish a priority date and have the mark examined and published for opposition before providing proof of use.

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Posted on December 8, 2009 by LexBlog

Intent for Use Application

If actual use of the mark in commerce that the U.S. Congress can regulate (i.e., interstate commerce, territorial commerce, or commerce between the United States and a foreign country) has not yet occurred, but instead there is simply a bona fide (good faith) intention to use the mark in commerce at a later time after filing of an application. The intention to use may be by the applicant, the applicant's related company, or the licensee of the applicant. If filing under this basis, you will be required to submit a demonstration of use (i.e., submission of a form with an additional fee and a specimen (sample) of said use) later in the prosecution process of the application. This was enacted in 1989 in the United States.

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Posted on December 8, 2009 by LexBlog

International Application

Allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application.

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Posted on December 8, 2009 by LexBlog

Generic Name

Terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. These terms are incapable of functioning as trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register. Examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.

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Posted on December 8, 2009 by LexBlog

Genericness

A trademark can become generic when it loses its ability to indicate a source of origin. When a substantial segment of the public thinks of a term as representing the object instead of being a trademark, it is generic and anyone can use it. To prevent trademarks from becoming generic, they should always be used as adjectives instead of nouns, and written or typed in a special form, e.g., with an initial or all capital letters helps, and with a trademark indicator, e.g. the "Circle R" (®) symbol.

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Posted on December 8, 2009 by LexBlog

Goodwill

By marketing goods, or providing services under a trademark, the trademark owner acquires certain protectable intangible property rights, referred to as "goodwill." It takes time and effort to build goodwill, and it can sometimes be destroyed overnight. Goodwill becomes associated with the trademark and must be included when the trademark is sold or the transfer is void. However, there is more to transferring goodwill than making a recital, and the business or tangible assets associated with the trademark should be transferred as well. If the purchaser is already in business, then less is required from the assignor. The key is for the public to receive the same quality goods before and after the sale. The responsibility is the buyer's to get whatever assets are required to achieve this goal.

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Posted on December 8, 2009 by LexBlog

Fair Use

A court ruling regarding copyright or trademark infringement. In this defense a court may rule that use of a trademark or copyrighted material was within legal boundaries in consideration of four factors. These factors are as follows: the purpose and character of the disputed use; the nature of the copyrighted work; the importance of the portion used in relation to the work as a whole; and the effect of the use on the market for or value of the copyrighted work.

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Posted on December 8, 2009 by LexBlog

Fanciful Name

Trademarks, service marks, and trade dresses are classified along a range or gamut where the "central tones" in the range are, from weak to strong: generic, descriptive, suggestive, "arbitrary, fanciful or unique". The "distinctiveness" of a mark or trade dress increases as it moves toward the "suggestive or arbitrary" end of the spectrum. A distinctive mark requires a lesser or no showing of "secondary meaning" for protection. Comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).

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Posted on December 8, 2009 by LexBlog

Federal Trademarks

Federal trademark result from filing trademark applications under the Lanham Act. There are two registers — the Principal Register and the Supplemental Register. The types of marks available include trademarks, service marks, certification marks, and collective marks.Filing is constructive use and notice of the applicant's claim to the mark. Before a trademark can be obtained, the applicant must provide proof of use in interstate or foreign commerce. However, by filing on an intent-to-use basis, proof of use can be delayed until after examination and publication. This allows the applicant to see what rights he or she will be granted and to find out whether any third parties will oppose before bringing out the trademarked product or service. A registration preempts the entire U.S. and is retroactive to the filing date for priority purposes. Registrations have ten-year terms and are renewable.

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Posted on December 8, 2009 by LexBlog

Filing Receipt

When an application is submitted via e-TEAS, the Office immediately issues a confirmation of filing via e-mail that includes the serial number and filing date, and a summary of all the data provided by applicant in the application. This serves as evidence of filing. Applicants who file paper applications receive printed filing receipts that list the application serial number and filing date, the mark, the applicant's name, the goods and/or services, the filing bases, if available; the international class(es), and the address to be used for correspondence.

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Posted on December 8, 2009 by LexBlog

Filing Refusal

Also known as a final Office action, which makes "final" any outstanding refusals or requirements. A proper response to a final Office action is a) compliance with the requirements or b) appeal to the Trademark Trial and Appeal Board.

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Posted on December 8, 2009 by LexBlog

eTEAS

Electronic Trademark Examination Application System - electronic trademark filing system. It allows the public to complete various trademark filings and transactions on-line. For example, eTEAS allows you to complete trademark applications, preliminary amendments, amendments to allege use/statements of use, responses to Office actions, and post registration filings online, and then submit them directly over the Internet, paying by credit card, electronic funds transfer or an existing USPTO deposit account.

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Posted on December 8, 2009 by LexBlog

Examiner's Amendment

A written confirmation of an amendment made to a trademark application. The trademark examining attorney assigned to the application will make the amendment after consultation with an applicant or the applicant’s attorney. The examiner’s amendment is merely a written confirmation of the agreement between the examining attorney and the applicant as to the amendment, and it is also a notice that the amendment will be made. The applicant need not respond to the examiner’s amendment unless the applicant wishes to make further changes to the application.

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Posted on December 8, 2009 by LexBlog

Descriptive Mark

A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. If a mark is merely descriptive or deceptively misdescriptive of the goods or services to which it relates, the mark will be refused registration on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). Examples of descriptive marks include: MEDICAL GUIDE for website services featuring medical guides, DENIM for jeans, and SPICY SAUCE for salsa.

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Posted on December 8, 2009 by LexBlog

Design Code Search Manual

Lists the numerical codes for searching designs in the USPTO’s trademark database.

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Posted on December 8, 2009 by LexBlog

Distinctive Mark

If the product design is not functional, the mark may be registered on the Supplemental Register, or, if the applicant shows that the product design has acquired distinctiveness, on the Principal Register under §2(f).

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Posted on December 8, 2009 by LexBlog

Dilution

For years state anti-dilution statutes have provided causes of action to protect distinctive marks from encroachment, notwithstanding an absence of competition or the absence of confusion as to the source of goods or service. Now there is a federal dilution stature as well. Dilution is limited to famous marks and provides a basis for obtaining injunctive relief. Dilution protects against a proliferation of similar marks on unrelated goods or services. One can bring a dilution action regardless of lack of competition or likelihood of confusion.

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Posted on December 8, 2009 by LexBlog

Domain Name

The names and words that companies designate for their registered Internet Web site addresses. Trademark disputes arise when more than one company tries to use the same domain name, or one company appropriates another company's brand or product name for its URL. As a general rule, the courts seem willing to force a domain name owner to pick another name if it conflicts with an existing trademark.

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Posted on December 8, 2009 by LexBlog

Drawings

A drawing is the representation of a trademark as used on or in connection with the goods and comprises part of the trademark application. Drawings must be made with pen and ink or by a process that will produce high definition on reproduction. There are two types of drawings commonly used in trademark applications: typed drawings and computer-generated drawings. Typed drawings are always in all-capital letters. Computer drawings show the mark as it appears on a specimen, or show the mark in some stylized form or design. Typed drawings are generally preferable since they are easier to prepare and cover all forms of the mark. Generic names or descriptive terms are usually deleted. Color is optional and is shown by the use of coded line drawings.

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Posted on December 8, 2009 by LexBlog

Cancellations

Cancellations are similar to oppositions, except that they are instituted post-registration. Frequently, an applicant brings a cancellation to remove a registration cited against a pending application based on alleged abandonment, prior use by the applicant, or the mark being descriptive or generic. Actions based on descriptiveness or prior use cannot be brought after a registration becomes incontestable, i.e., after a Section 15 Declaration has been filed. However, even after a registration becomes incontestable, a cancellation based on the mark being generic or abandoned can be filed. Use by the petitioner before the filing date of the registrant, even only local use, will defeat the registration. Standing is required to bring a cancellation, and a filing fee is required.

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Posted on December 8, 2009 by LexBlog

Cancellation Proceeding

A proceeding before the Trademark Trial and Appeal Board in which the plaintiff seeks to cancel an existing registration of a mark. The proceeding may only be filed after issuance of a registration. A petition for cancellation may be filed by any person who believes that he or she is or will be damaged by the registration of the mark.

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Posted on December 8, 2009 by LexBlog

Certificate of Registration

Official document from the USPTO evidencing that a mark has been registered.

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Posted on December 8, 2009 by LexBlog

Certification Mark

Any word, name, symbol, device, or any combination, used, or intended to be used, in commerce by someone other than its owner, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person's goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.

Tags: C

Posted on December 8, 2009 by LexBlog

Collective Mark

A trademark or service mark used, or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark that indicates membership in a union, an association, or other organization.

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Posted on December 8, 2009 by LexBlog

Colorable Imitation

The term "colorable imitation" includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive.

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Posted on December 8, 2009 by LexBlog

Commerce

The word "commerce" means all commerce which may lawfully be regulated by Congress. No limitations can be read into this.

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Posted on December 8, 2009 by LexBlog

Common Law Rights

Common law trademark and trade names are non-statutory, use-related rights, which result from selling a product under a trademark or providing a service under a service mark. These rights exist even though state and federal trademark laws are now in force. When a trademarked product is sold, when services are performed under a service mark, or when a business is operated under a trade name, the owner or seller acquires rights to prevent others from using the same, or confusingly similar marks or names, for similar goods and services or businesses in the same market territory. Property or other legal rights that do not absolutely require formal registration in order to enforce them. Proving such rights for a trademark in court can be very difficult, requires meticulous documentation, and places a heavy burden on the individual. Active Federal registration of trademark can provide a higher degree of legal protection and readily-demonstrated evidence of ownership of a mark.

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Posted on December 8, 2009 by LexBlog

Community Trademark

("CTM") a trademark registration system that was established April 1, 1996, by the European Union to provide a unified trademark for the entire European Community. Once acquired, the mark covers all 15 countries of the European Union. A CTM registration covers the following countries: Austria , Belgium , Denmark , Finland , France , Germany , Greece , Ireland , Italy , Luxemburg, The Netherlands, Portugal , Spain , Sweden and the United Kingdom.

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Posted on December 8, 2009 by LexBlog

Concurrent Use

Concurrent use is an inter partes proceeding where several parties are granted registrations for the same mark covering different parts of the country. The proceeding is instituted following publication of a mark for opposition and is conducted before the Board of Appeals. The first user or registrant is entitled to nationwide registration, subject to the second party's use area. These proceedings are much less common than oppositions.

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Posted on December 8, 2009 by LexBlog

Counterfeit

A counterfeit is a spurious mark that is identical with, or substantially indistinguishable from, a registered mark. Counterfeits are infringements, but counterfeits are also subject to criminal penalties and seizure. The Trademark Counterfeiting Act of 1984 provides criminal penalties up to $250,000 and/or five years imprisonment for intentional trafficking or attempted trafficking and knowing use of the counterfeit mark. Corporations can be fined up to $1,000,000. Civil remedies mandate treble damages or profits and attorney fees.

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Posted on December 8, 2009 by LexBlog

Blackout Period

The period between the date that the examining attorney approves the mark for publication and the date of issuance of the Notice of Allowance. The applicant may not file an Allegation of Use during this period.

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Posted on December 8, 2009 by LexBlog

Brand Name

A name or symbol that identifies a seller's goods or services, and differentiates them from competitors. A trademark may be issued for a product or company brand name.

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Posted on December 8, 2009 by LexBlog

Abandonment

A trademark is deemed to be "abandoned" when either of the following occurs: (1) when its use has been discontinued with intent not to resume such use; or (2) when any course of conduct of the owner, including acts of omission as well as commission, causes a mark to become the generic name for the goods or services on or in connection with which it is used, or otherwise to lose its significance as a mark. Non-use for three consecutive years is deemed prima facie evidence of abandonment. Use means ordinary use in the course of commerce and not use merely to reserve a right in the mark. Conduct by a trademark owner which causes a mark to lose its significance includes: not policing the mark; assigning a trademark without goodwill; uncontrolled licensing; failure to object to use by others; production of various types and quality of products; and substantial and repeated changes in the mark. When a mark is abandoned, it enters the public domain and becomes available to the first user.

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Posted on December 8, 2009 by LexBlog

Allegation Of Use

A sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. The allegation of use must include one specimen showing use of the mark in commerce for each class of goods/services included in the application, and the required fee. If filed before the examining attorney approves the mark for publication, the allegation of use is also called an "Amendment to Allege Use". If filed after issuance of the Notice of Allowance, the allegation of use is also called a Statement of Use. The Amendment to Allege Use and the Statement of Use include the same information, and differ only as to the time when filed. The applicant may not file either an Amendment to Allege Use or a Statement of Use between the date the examining attorney approves the mark for publication and the date of issuance of the notice of allowance.

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Posted on December 8, 2009 by LexBlog

Amendment To Allege Use (AAU)

A sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. With the AAU, the owner must submit one specimen showing use of the mark in commerce for each class of goods/services included in the application, and the required fee. AAUs must be filed before the date the examining attorney approves the mark for publication in the Official Gazette. You should check the status of the application before filing the AAU to make sure that is timely. An AAU filed after the mark is approved for publication but before a notice of allowance has been issued (during the "blackout period") is untimely and cannot be accepted.

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Posted on December 8, 2009 by LexBlog

Appeal

An applicant who wants to contest a final refusal from an examining attorney may file an appeal to the Trademark Trial and Appeal Board. An appeal is taken by filing a Notice of Appeal and paying the appeal fee within six months of the mailing date of the action from which the appeal is taken. 15 U.S.C. Section 1070; 37 C.F.R. Section 2.142(a).

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Applicant

A person who files an application for a federal trademark. The term embraces the legal representatives, predecessors, successors and assigns of such applicant.

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Posted on December 8, 2009 by LexBlog

Application (Trademark)

A document by which a person requests a federal trademark registration. To receive a filing date, an application must include (1) the applicant's name, (2) a name and address for correspondence, (3) a clear drawing of the mark sought to be registered, (4) a list of the goods or services, and (5) the application filing fee.

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Posted on December 8, 2009 by LexBlog

Arbitrary Marks

Comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).

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Assignment

A transfer of ownership of a patent application or patent from one entity to another. Record assignments with the USPTO Assignment Services Division to maintain clear title to pending patent applications and patents.

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WIPO

The WIPO Copyright Treaty concluded in Geneva, Switzerland on December 2, 1996.

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WIPO Performances and Phonograms Treaty

The WIPO Performances and Phonograms Treaty concluded at Geneva Switzerland , on December 20, 1996.

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Work of the United States Government

A work prepared by an officer or employee of the United States Government as part of that person's official duties.

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Work Made for Hire

(1) A work prepared by an employee within the scope of his or her employment; or

(2) A work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a "supplementary work" is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an "instructional text" is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

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Posted on December 8, 2009 by LexBlog

Visual Art Works

A painting, drawing, print or sculpture, existing in a single copy, and the Limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, and multiple casts, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or a limited edition 200 copies or fewer are signed and consecutively numbered by the author. Copyright registration is available for pictorial, graphic, or sculptural work, including 2-dimensional and 3-dimensional work of fine, graphic, and applied art. A work of visual art does not include any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audiovisual work, book, magazine, newspaper, periodical, data base, electronic information service, electronic publication, or similar publication; any merchandising item or advertising, promotional, descriptive, covering, or packaging material or container; any work made for hire; or any work not subject to copyright protection under the copyright statute.

Tags: V

Posted on December 8, 2009 by LexBlog

United States

When used in a geographical sense comprises the several states, the District of Columbia and the Commonwealth of Puerto Rico , and the organized territories under the jurisdiction of the United States government.

Tags: U

Posted on December 8, 2009 by LexBlog

United States Work

1) In the case of published work, the work is first published --

A) In the United States ;

B) Simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer then the term provided in United States;

C) Simultaneously in United States and a foreign nation that is not a treaty party, or

D) In a foreign nation that is not a treaty party, and all the authors of the work are nationals, domiciliaries, or habitual residents of or in the case of an audiovisual work legal entities which headquarters in United States ;

2) In the case of an unpublished work, all the authors of the work are nationals, domiciliaries, or habitual residents of United States, or, in the case of an unpublished audiovisual work, all the authors are legal entities with headquarters in the United States; or

3) In the case of a pictorial, graphic, or sculptural work incorporated in a building or structure, the building or structure is located in United States.

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Posted on December 8, 2009 by LexBlog

United States Copyright Office (USCO)

An organization "to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries" (U.S. Constitution, Article I, Section 8).

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Posted on December 8, 2009 by LexBlog

Useful Article

An article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally part of a useful article is considered a useful article.

Tags: U

Posted on December 8, 2009 by LexBlog

Transfer of Copyright Ownership

An assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or any other of the exclusive rights comprised in the copyright, whether or not it is limited in time or place of affect, but not including nonexclusive license.

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Posted on December 8, 2009 by LexBlog

Transmission Program

A body of material that, as an aggregate, has been produced for the sole purpose of transmission to the public in sequence as a unit.

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Transmit

To communicate a performance or display by any device or process whereby images or sounds are received beyond the place from which they are sent.

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Treaty Party

A country or intergovernmental organization other than United States that is a party to an international agreement.

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Sound Recording

Copyright registration is available for recording of music, drama, or a lecture.

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Posted on December 8, 2009 by LexBlog

Serials and Periodicals

Works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work, regardless of the nature of the material objects, such as disks, tapes, or other phonorecords, in which they are embodied. Copyright registration is available for a periodical, newspaper, magazine, or other similar work.

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Posted on December 8, 2009 by LexBlog

State

Includes the District of Columbia and the Commonwealth of Puerto Rico and any territories to which the copyright statute is made applicable by an act of Congress.

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Posted on December 8, 2009 by LexBlog

Registration

In general, copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright. However, registration is not a condition of copyright protection. Even though registration is not a requirement for protection, the copyright law provides several inducements or advantages to encourage copyright owners to make registration.

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Posted on December 8, 2009 by LexBlog

Peer-to-Peer (P2P) Networking

A type of network where computers communicate directly with each other, rather than through a central server. Often referred to simply as peer-to-peer, or abbreviated P2P, a type of network in which each workstation has equivalent capabilities and responsibilities in contrast to client/server architectures, in which some computers are dedicated to serving the other computers. A "network" is a group of two or more computer systems linked together by various methods. In recent usage, peer-to-peer has come to describe applications in which users can use the Internet to exchange files with each other directly or through a mediating server.

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Posted on December 8, 2009 by LexBlog

Perform

To recite, render, play, dance, or act it directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.

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Posted on December 8, 2009 by LexBlog

Performance

The law holds open the right to recite, render, play, dance, or act a copyrighted work. This is open to all types of copyrighted works except for pictorial and sculptural works and sound recordings.

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Posted on December 8, 2009 by LexBlog

Performing Art Works

Copyright registration is available for musical work, dramatic work, script, pantomime, choreography, motion picture, or other audiovisual work.

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Performing Rights Society

An association, Corporation, or other entity that licenses the public performance of non-dramatic musical works on behalf of copyright owners of such works, such as the American Society of Composers (ASCAP), Broadcast Music, Inc. (BMI), and SESAC, Inc.

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Posted on December 8, 2009 by LexBlog

Phonorecords

Material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “phonorecords” includes the material object in which the sounds are first fixed.

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Posted on December 8, 2009 by LexBlog

Pictorial, Graphic and Sculptural Works

Two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints, reproductions, maps, globes, charts, diagrams, models and technical drawings, including architectural plans. Such work shall include works of artistic craftsmanship in so far as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable existing independently of, utilitarian aspects of the article.

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Posted on December 8, 2009 by LexBlog

Proprietor

An individual, corporation, partnership, or other entity, as the case may be, that owns an establishment or a foodservice or drinking establishment, except that no owner or operator of a radio or television station licensed by the Federal Communications Commission, cable system or satellite carrier, cable or satellite carrier service or programmer, provider of online services or network access or the operator of facilities therefore, telecommunications company, or any other such audio or audiovisual service or programmer now known or as may be developed in the future, commercial subscription music service, or owner or operator of any other transmission service, shall be under any circumstance be deemed to be a proprietor.

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Posted on December 8, 2009 by LexBlog

Pseudonymous Work

A work on the copies or phonorecords of which the author is identified under a fictitious name.

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Posted on December 8, 2009 by LexBlog

Publication

According to the statute, “Publication is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a work does not of itself constitute publication.” Generally, publication occurs on the date on which copies of the work are first made available to the public.

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Posted on December 8, 2009 by LexBlog

Public Domain

The public domain is not a place. A work of authorship is in the “public domain” if it is no longer under copyright protection or if it failed to meet the requirements for copyright protection. Works in the public domain may be used freely without the permission of the former copyright owner.

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Posted on December 8, 2009 by LexBlog

Published Works

Works published with the consent of their authors, whatever may be the means of manufacture of the copies, provided that the availability of such copies has been such as to satisfy the reasonable requirements of the public, having regard to the nature of the work. The performance of a dramatic, dramatico-musical, cinematographic or musical work, the public recitation of a literary work, the communication by wire or the broadcasting of literary or artistic works, the exhibition of a work of art and the construction of a work of architecture shall not constitute publication.

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Posted on December 8, 2009 by LexBlog

PUBNET

The Electronic Commerce division of AAP provides electronic data interchange service (EDI) to over 90 publishers representing hundreds of subsidiaries and imprints. Over 3,700 bookstores, libraries, wholesalers, and schools are now buying books electronically through PUBNET®, making it the largest EDI trading community of booksellers and publishers in the world. PUBNET® also maintains a high-quality title database of over 340,000 titles from PUBNET® publishers. This database, specifically designed for the higher education market, is linked to the ordering system to facilitate the fulfillment process and can also be accessed separately as a product information source.

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Posted on December 8, 2009 by LexBlog

Owner Of Exclusive Rights

Under the law, any of the exclusive rights that make up a copyright and any subdivision of them can be transferred and owned separately, even though the transfer may be limited in time or place of effect. The term "copyright owner" with respect to any one of the exclusive rights contained in a copyright refers to the owner of that particular right. Any owner of an exclusive right may apply for registration of a claim in the work.

Tags: O

Posted on December 8, 2009 by LexBlog

Mask Work

Copyright registration is available for a mask work. This protection relates to integrated circuits on a semiconductor chip.

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Posted on December 8, 2009 by LexBlog

Motion Pictures

Audiovisual works consisting of a series of related images which, when shown in succession, in part an impression of motion, together with accompanying sounds, if any.

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Posted on December 8, 2009 by LexBlog

Library of Congress

The nation's oldest federal cultural institution and serves as the research arm of Congress. It is also the largest library in the world, with nearly 128 million items on approximately 530 miles of bookshelves. The collections include more than 29 million books and other printed materials, 2.7 million recordings, 12 million photographs, 4.8 million maps, and 57 million manuscripts. The Library's mission is to make its resources available and useful to the Congress and the American people and to sustain and preserve a universal collection of knowledge and creativity for future generations. The Office of the Librarian is tasked to set policy and to direct and support programs and activities to accomplish the Library's mission.

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Posted on December 8, 2009 by LexBlog

Literary And Artistic Works

Works that include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.

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Posted on December 8, 2009 by LexBlog

Joint Author

More than one author creates a copyrightable work. Each author becomes a co-owner and is treated under the law as "tenant in common” each having an independent and equal right and ownership and legal rights in the entire property or work. Thus each possesses the right to license, sell and use of a work.

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Posted on December 8, 2009 by LexBlog

Joint Work

A work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.

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Posted on December 8, 2009 by LexBlog

Idea Expression Dichotomy

A principle of copyright law that "ideas" that are the fruit of an author's labors go into the public domain, while only the author's particular expression remains the author's to control.

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Posted on December 8, 2009 by LexBlog

International Agreement

Includes the following: The Universal Copyright Convention; Geneva Phonograms Convention; Berne Convention; WTO Agreement; WIPO Copyright Treaty; WIPO Performance and Phonograms Treaty; and any other copyright Treaty to which the United States is a party.

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Posted on December 8, 2009 by LexBlog

Geneva Phonograms Convention

The convention for the protection of producers of phonograms against unauthorized duplication of their phonograms, concluded at Geneva, Switzerland, on October 29, 1971.

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Geographic Scope of Protection of a Copyright

Treaties provide for substantially worldwide protection.

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Posted on December 8, 2009 by LexBlog

Gross Square Feet of Space

The gross square feet of space of an establishment means the entire interior space at that establishment, and any adjoining space used to serve patrons, whether on a seasonal basis or otherwise.

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Posted on December 8, 2009 by LexBlog

Financial Gain

Any receipt, or expectation of receipt, or anything of value, including the receipt of other copyrighted works.

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Posted on December 8, 2009 by LexBlog

First Sale Doctrine

The Constitution empowers Congress to enact copyright legislation for the specific purpose of “promot(ing) the Progress of Science and the useful Arts, by securing for limited Times, to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries.” U.S. Const., art. I,§8,cl.8. Pursuant to that public purpose, the Copyright Act grants to authors the exclusive right to distribute copies of their work, 17 U.S.C. §106(3), but limits that right by distinguishing between ownership of a copyright (the bundle of exclusive rights granted an author) and ownership of a copy (the tangible material in which a work is fixed), 17 U.S.C. §202, and by extinguishing the copyright owner’s distribution right upon the first sale of each copy, see 17 U.S.C. §109. Of course, no copyright exists in government works, nor in facts or data.

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Posted on December 8, 2009 by LexBlog

Foodservice or Drinking Establishment

A restaurant, inn, bar, tavern, or any other similar place of business in which the public or patrons assemble for the primary purpose of being served food or drink, in which the majority of the gross square feet of space that is nonresidential is used for that purpose, and in which non-dramatic musical works are performed publicly.

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Posted on December 8, 2009 by LexBlog

Fixed in a Tangible Medium

An embodiment of a work in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is “fixed” if a fixation of the work is being made simultaneously with its transmission.

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Posted on December 8, 2009 by LexBlog

EDItEUR

An organization established and sponsored by the Federation of European Publishers, the European Booksellers Federation and the European Bureau of Library, Information & Documentation Associations, to co-ordinate the development, promotion and implementation of electronic commerce in the international books and serials sector.

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Posted on December 8, 2009 by LexBlog

Establishment

A store, shop, or any similar place of business open to the general public for the primary purpose of selling goods or services in which the majority of the gross square feet of space that is nonresidential is used for that purpose and in which non-dramatic musical works are performed publicly.

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Posted on December 8, 2009 by LexBlog

Derivative Work

A work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications that, as a whole, represent an original work of authorship, is a ''derivative work''. The copyright in a derivative work covers only the additions, changes, or other new material appearing for the first time in the work. It does not extend to any preexisting material and does not imply a copyright in that material. One cannot extend the length of protection for a copyrighted work by creating a derivative work. A work that has fallen in the public domain, that is, which is no longer protected by copyright, may be used for a derivative work, but the copyright in the derivative work will not restore the copyright of the public domain material. Neither will it prevent anyone else from using the same public domain work for another derivative work. In any case where a protected work is used unlawfully, that is, without the permission of the owner of copyright, copyright will not be extended to the illegally used part.

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Posted on December 8, 2009 by LexBlog

Deposit

A deposit is usually one copy (if unpublished) or two copies (if published) of the work to be registered for copyright. In certain cases such as works of the visual arts, identifying material such as a photograph may be used instead. The deposit is sent with the application and fee and becomes the property of the Library of Congress.

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Posted on December 8, 2009 by LexBlog

Device

A “device”, “machine”, or “process” is one now known or later developed.

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Posted on December 8, 2009 by LexBlog

Display

To show a copy of a work, either directly or by means of a film, slide, television image, or any other device or process or, in the case of the motion picture or other audiovisual work, to show individual images non-sequentially.

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Posted on December 8, 2009 by LexBlog

Distribution Rights

An author, other copyright claimant, or owner of exclusive right(s) can transfer collateral rights to distribute copies or audio recordings to the public by sale, lease, or rental with out giving up the entire right in the intellectual copyright property.

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Posted on December 8, 2009 by LexBlog

Duly Authorized Agent

Any person authorized to act on behalf of the author, other copyright claimant, or owner of exclusive rights.

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Posted on December 8, 2009 by LexBlog

Cataloging in Publication (CIP)

The purpose of the Cataloging in Publication (CIP) program is to prepare prepublication cataloging records for those books most likely to be widely acquired by the nation's libraries.

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Posted on December 8, 2009 by LexBlog

Collective Work

A work, such as a periodical issue, anthology, or Encyclopedia, in which a number of contributions, constituting separate independent works in themselves are assembled into a collective.

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Posted on December 8, 2009 by LexBlog

Compilations and Abridgments

Compilations and abridgments may be copyrightable if they contain new work of authorship. When the collecting of the preexisting material that makes up the compilation is a purely mechanical task with no element of editorial selection, or when only a few minor deletions constitute an abridgment, copyright protection for the compilation or abridgment as a new version is not available.

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Posted on December 8, 2009 by LexBlog

Copies

Material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecords, in which the work is first fixed.

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Posted on December 8, 2009 by LexBlog

Copy

The physical form in which copyrightable work is reproduced.

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Posted on December 8, 2009 by LexBlog

Copyright

In general - § 102 of Title 17 of the United States Code.

(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:

(1) literary works;

(2) musical works, including any accompanying words;

(3) dramatic works, including any accompanying music;

(4) pantomimes and choreographic works;

also "TD": a statement filed by an owner under 35 USC § 253 (paragraph 2) and 37 CFR § 1.321(b) or (c) to disclaim or dedicate to the public the entire term or any portion of the term of a patent or patent to be granted. A TD may be filed for the purpose of overcoming a judicially created double patenting rejection.

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Posted on December 7, 2009 by LexBlog

Termination Proceedings

In each of the following situations, proceedings are terminated:

(A) When the issue fee is not paid and the application is abandoned for failure to pay the issue fee, proceedings are terminated as of the date the issue fee was due and the application is the same as if it were abandoned after midnight on that date (but if the issue fee is later accepted, on petition, the application is revived).

(B) If an application is in interference wherein all the claims present in the application correspond to the counts and the application loses the interference as to all the claims, then proceedings on that application are terminated as of the date appeal or review by civil action was due if no appeal or civil action was filed.

(C) Proceedings are terminated in an application after decision by the Board of Patent Appeals and Interferences.

(D) Proceedings are terminated after a decision by the court.

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Trade Secret

Information that companies keep secret to give them an advantage over their competitors.

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Trade Show

A convention at which related companies show, promote and compare products, services and ideas to the industry or public.

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Scope

What is included in the claim; as in the scope of a claim.

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Search

To reach a decision regarding the patentability of a new invention, it is initially necessary to compare the invention to other inventions. One way to make this comparison is to search “prior art” patents.

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Posted on December 7, 2009 by LexBlog

Search Copy

A copy of an international application filed under the Patent Cooperation Treaty maintained by the International Searching Authority.

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Posted on December 7, 2009 by LexBlog

Serial Number

A number assigned to a patent application when it is filed. A serial number is usually used together with a two digit series code to distinguish between applications filed at different times.

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Posted on December 7, 2009 by LexBlog

Skill In The Art

Where no single prior art patent discloses the functional subject matter or appearance of an invention, a government patent examiner will frequently argue that someone with ordinary skill in the art is already in possession of the cumulative information and knowledge shown in two or more patents, and that person will then know how to combine the knowledge of these several prior art patents so as to make the subject invention “obvious” and therefore unpatentable. In resolving the obviousness issue, the law requires that the invention was non-obvious to an individual with ordinary “skill in the art” at the time the invention was made. Thus, the law creates a hypothetical "skilled mechanic" with the knowledge of the entire pertinent prior art in the world. The question, then, is whether the prior art references, considered individually or collectively, contain sufficient teaching, suggestion or motivation, such that the inventive subject matter would have been obvious to a person “skilled in the art” at the time the invention was made.

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Posted on December 7, 2009 by LexBlog

Small Entity

For purposes of small entity determination per MPEP 509.02 - means an independent inventor, a small business concern, or a nonprofit organization eligible for reduced patent fees.

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Posted on December 7, 2009 by LexBlog

Specification

A written description of the invention or discovery and of the manner and process of making and using the same. The specification is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.

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Posted on December 7, 2009 by LexBlog

Status

The official condition of a patent or application. The status of an application is defined by action and time. The status of a patent is often referred to as new, rejected, amended, Allowed or in Issue, Abandoned, Incomplete, Abandonment for Failure to Pay Issue Fee, lapsed, pending, protected, expired, re-issued and the like. "Status Letters" or inquiries as to the status of applications by persons entitled to the information, can be directed to the USPTO.

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Posted on December 7, 2009 by LexBlog

Statutory Bar

Any public disclosure, publication or offer for sale of an invention more than one year before a patent application is filed will serve as a Statutory Bar to obtaining a patent. Any sale of the invention or publication or disclosure of the invention before a United States patent application is filed will destroy the possibility of obtaining foreign patent protection in most foreign countries.

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Posted on December 7, 2009 by LexBlog

Statutory Disclaimer

Under 35 USC § 253 (paragraph 1) and 37 CFR 1.321(a), the owner (in part or in entirety) of a patent may relinquish all rights to a complete claim or claims of the owner's patent.

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Posted on December 7, 2009 by LexBlog

Statutory Invention Registration

A (SIR) statutory invention registration is not a patent. It has the defensive attributes of a patent but does not have the enforceable attributes of a patent. It is meant for the situation where a person occasionally invents something solely for personal use (not for production or sale) and does not want to go through the effort and expense of obtaining a patent on the invention. At the same time, the inventor wants to prevent someone else from later obtaining a patent on a like invention. In that situation, the inventor can register a statutory invention and have it published. Once published, it cannot be claimed by another person. A published statutory invention registration contains the specification and drawings of a regularly filed nonprovisional application for a patent without examination if the applicant - (1) meets the requirements of 35 USC 112; (2) has complied with the requirements for printing, as set forth in regulations of the Commissioner; (3) waives the right to receive a patent on the invention within such period as may be prescribed by the Commissioner; and (4) pays application, publication, and other processing fees established by the Commissioner. A request for a statutory invention registration (SIR) may be filed at the time of filing a nonprovisional application for patent, or may be filed later during pendency of the nonprovisional application.

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Posted on December 7, 2009 by LexBlog

Statutory Period

If an applicant of a patent application fails to reply within the time period provided, the application will become abandoned unless an Office action indicates otherwise. The maximum statutory period for reply to an Office action is 6 months (35 USC 133). Shortened periods are currently used in practically all cases usually 3 months.

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Posted on December 7, 2009 by LexBlog

Statutory Subject Matter

The law (35 USC 101) provides that only an invention comprised of statutorily defined subject can be patented. A utility patent can be issued to any person who invents a new, useful, and non-obvious (1) process, (2) machine, (3) manufactured article, (4) composition of matter, or (5) any new and useful improvement to any of these types of inventions.

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Posted on December 7, 2009 by LexBlog

Submarine Patent

The term submarine patent is used to describe a patent that is issued after a long delay in the USPTO. At the time it issues or surfaces is a submarine it takes the industry by surprise. This was possible prior to the 18 month publication rule. If an unpublished patent application matures into a patent after a long delay under the old rules it would have extended the term of the patent. But today a patent term is dictated by the filing date in the term extension rules have been implemented to help avoid the issuance of a submarine patent.

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Posted on December 7, 2009 by LexBlog

Substitute Patent Application

An application which is in essence a duplicate of a prior (earlier filed) application by the same applicant abandoned before the filing of the substitute (later filed) application; a substitute application does not obtain the benefit of the filing date of the prior application.

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Posted on December 7, 2009 by LexBlog

RCE Request for Continued Examination

A request filed in an application in which prosecution is closed (e.g., the application is under final rejection or a notice of allowance) that is filed to reopen prosecution and continue examination of the application; requires the filing of a submission and payment of a fee.

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Posted on December 7, 2009 by LexBlog

Record

An original copy of an international application filed under the Patent Cooperation Treaty maintained by the International Bureau of the World Intellectual Property Organization.

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Posted on December 7, 2009 by LexBlog

Reexamination Proceeding

At any time during the enforceability of the patent, any person may request reexamination by the Office of any claim of a patent on the basis of prior patents or printed publications cited under 37 CFR 1.501. In order for the request for reexamination to be granted, a substantial new question of patentability must be present with regard to at least one patent claim. The request must be in writing and must be accompanied by payment of a reexamination request filing fee as set forth in 37 CFR 1.20(c).

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Posted on December 7, 2009 by LexBlog

Reconsideration

When advised of the abandonment of his or her application, applicant may either ask for reconsideration of such holding, if he or she disagrees with it on the basis that there is no abandonment in fact; or petition for revival under 37 CFR 1.137.

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Posted on December 7, 2009 by LexBlog

Reduction To Practice

Reduction to practice may be an actual reduction or a constructive reduction to practice that occurs when a patent application on the claimed invention is filed. The actual reduction of practice occurs prior to filing the application when the inventor is in a position to build a physical embodiment of an invention. The filing of a patent application serves as conception and constructive reduction to practice of the subject matter described in the application. Thus the inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of the patent application.

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Posted on December 7, 2009 by LexBlog

Reexamination

Any person may, at any time during the period of enforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on the basis of prior art patents or printed publications cited under § 1.501. The request must be accompanied by the fee for requesting reexamination set in § 1.20(c)(1).

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Posted on December 7, 2009 by LexBlog

Registered Patent Agent

One who is not an attorney but is authorized to act for or in place of the applicant (s) before the Office, that is, an individual who is registered to practice before the Office.

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Reference

Prior art.

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Reissue

An application for a patent to take the place of an unexpired patent that is defective in one or more particulars.

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Posted on December 7, 2009 by LexBlog

Rejoinder

The rejoining (returning to active consideration) of claims previously withdrawn from consideration to due to an election requirement.

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Posted on December 7, 2009 by LexBlog

Rejection

The examiner reads the application to make a determination if the claims should be accepted or rejected. I n order to make this decision the examiner should understand the claimed invention and then make a prior art search for the claimed invention. With the results of the prior art search, including any references provided by the applicant, the patent application should be reviewed and analyzed in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity. The examiner then reviews all the evidence, including arguments and evidence responsive to any rejection, before issuing the next Office action. Where the examiner determines that information reasonably necessary for the examination should be required from the applicant, such a requirement should generally be made either prior to or with the first Office action on the merits.

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Posted on December 7, 2009 by LexBlog

Request (PCT)

Form PCT/RO/101, filed with an international application in a receiving Office, which includes an indication of applicant(s) and a designation of one or more Contracting States.

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Posted on December 7, 2009 by LexBlog

Restriction

If two or more independent and distinct inventions are claimed in one application, the examiner may require the applicant to elect (designate) a single invention to which the claims will be restricted (limited to). This requirement is known as a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action (final rejection). (See 37 CFR § 1.141 and § 1.142) If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.

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Posted on December 7, 2009 by LexBlog

Reverse Engineering

The art of extracting know-how or knowledge from an article of manufacture or a composition of matter to determine of how to make or use it.

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Posted on December 7, 2009 by LexBlog

Parent Application

The term "parent" is applied to an earlier application of an inventor disclosing a given invention. Such invention may or may not be claimed in the first application. Benefit of the filing date of copending parent application may be claimed under 35 U.S.C. 120. The term parent will not be used to describe a provisional application.

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Posted on December 7, 2009 by LexBlog

Paris Convention

The Paris Convention, established as a result of the efforts of inventors and industrialists, is an example of an attempt at uniform treatment of trademark owners and international trademark law. The initial objective of the convention was "the creation of a union which, without encroaching on the municipal law of the contracting countries, would lay down a number of general principles securing the interests of industrial property in the interior of a country as well as abroad." Ladas, Stephen P., Patents, Trademarks, and Related Rights, National and International Protection, Harvard University Press, 1975, p. 63.The two key principles set by the Paris Convention are the right of national treatment (Article 2) and the right of priority (Article 4). The right of national treatment obligates each country to which the Convention applies ("countries of the Union") to accord to the nationals of all other countries of the Union treatment no less favorable than the treatment it accords to its own nationals. The right of priority permits applicants to claim the benefit of a filing date (called the priority filing date) in one Paris country with regard to applications filed in another country of the Union within the applicable period. This permits the applicant to avoid the effects of actions that may have occurred subsequent to the priority filing date.

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Posted on December 7, 2009 by LexBlog

Partial Views

When filing a patent application a drawing with a partial view may be necessary, a view of a large machine or device in its entirety may be broken into partial views on a single sheet, or extended over several sheets if there is no loss in facility of understanding the view. Partial views drawn on separate sheets must always be capable of being linked edge to edge so that no partial view contains parts of another partial view. A smaller scale view should be included showing the whole formed by the partial views and indicating the positions of the parts shown. When a portion of a view is enlarged for magnification purposes, the view and the enlarged view must each be labeled as separate views.

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Posted on December 7, 2009 by LexBlog

Patent

A property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

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Posted on December 7, 2009 by LexBlog

Patent And Trademark Depository Library

The Patent and Trademark Depository Library Program is comprised of a network of Patent and Trademark Depository Libraries (PTDLs) located in the 50 states, the District of Columbia, and Puerto Rico which provide access to many of the same products and services offered at the USPTO search facilities in Arlington, VA. Such as receive copies of patents, CD-ROMs containing registered and pending marks, and patent and trademark materials that are made available to the public for free. The libraries also actively disseminate patent and trademark information and offer internet access to USPTO's online collections. The scope of PTDL collections, hours of operation, services, and fees (where applicable) vary depending on PTDL location. Users are advised to call ahead to determine products and services available at a particular PTDL. PTDLs also offer automated access to patent and trademark information. All PTDLs offer free access to the Cassis CD-ROM series search tools to assist patrons in the use of patent and trademark collections. Please refer to the USPTO’s Web site for a complete list of PTDLs.

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Posted on December 7, 2009 by LexBlog

Patent And Trademark Office (USPTO)

The PTO promotes industrial and technological progress in the United States and strengthens the national economy by: Administering the laws relating to patents and trademarks; Advising the Secretary of Commerce, the President of the United States, and the administration on patent, trademark, and copyright protection; Advising the Secretary of Commerce, the President of the United States, and the Administration on the trade-related aspects of intellectual property. The United States Patent and Trademark Office (USPTO or Office) is the government agency responsible for examining patent applications and issuing patents. A patent is a type of property right. It gives the patent holder the right, for a limited time, to exclude others from making, using, offering to sell, selling, or importing into the United States the subject matter that is within the scope of protection granted by the patent. The USPTO determines whether a patent should be granted in a particular case. However, it is up to the patent holder to enforce his or her own rights if the USPTO does grant a patent.

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Patent Application

A non-provisional utility patent application must include a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing fee.

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Patent Application Publication

Pre-Grant Publication of patent application at 18 months from priority date.

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Patent Classification

There are over 400 classes in the U.S. Patent Classification System, each having a title descriptive of its subject matter and each being identified by a class number. Each class is subdivided into a number of subclasses. Each subclass bears a descriptive title and is identified by a subclass number. The subclass number may be an integral number or may contain a decimal portion and/or alpha characters. A complete identification of a subclass requires both the class and subclass number and any alpha or decimal designations; e.g., 418/161.2A identifies Class 418, Subclass 161.2A.

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Posted on December 7, 2009 by LexBlog

Patent Cooperation

Provides a mechanism by which an applicant can file a single application that, when certain requirements have been fulfilled, is equivalent to a regular national filing in each designated Contracting State. There are currently over 112 PCT Contracting States.

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Posted on December 7, 2009 by LexBlog

Patent Disclosure

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 of carrying out his invention.

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Posted on December 7, 2009 by LexBlog

Patent Drawing

The applicant shall furnish a drawing where necessary for the understanding of the subject matter to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the Commissioner may require its submission within a time period of not less than two months from the sending of a notice thereof. Drawings submitted after the filing date of the application may not be used (i) to overcome any insufficiency of the specification due to lack of an enabling disclosure or otherwise inadequate disclosure therein, or (ii) to supplement the original disclosure thereof for the purpose of interpretation of the scope of any claim.

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Posted on December 7, 2009 by LexBlog

Patent Infringement

Unauthorized making, using, offering to sell, selling or importing into the United States any patented invention.

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Patent Law

Title 35 of the United States Code (USC).

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Patent Number

Unique number assigned to a patent application when it issues as a patent.

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Posted on December 7, 2009 by LexBlog

Patent Pending

A phrase that often appears on manufactured items. It means that someone has applied for a patent on an invention that is contained in the manufactured item. It serves as a warning that a patent may issue that would cover the item and that copiers should be careful because they might infringe if the patent issues. Once the patent issues, the patent owner will stop using the phrase "patent pending" and start using a phrase such as "covered by U.S. Patent Number XXXXXXX." Applying the patent pending phrase to an item when no patent application has been made can result in a fine.

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Posted on December 7, 2009 by LexBlog

Patent Prior Art

All patents subject matter bearing on the novelty and non-obviousness of a claimed invention pursuant to 35 U.S.C. Sections 102 and 103.

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Patent Rules

Section 37 of the Code of Federal Regulations (CFR).

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Patentable

Suitable to be patented; entitled by law to be protected by the issuance of a patent.

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Patentability

An invention has patentability it is new, useful and non-obvious.

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Posted on December 7, 2009 by LexBlog

Patentability Search

The objective of any preliminary patentability search is to discover issued “prior art” United States patents which is similar to the invention being investigated so that a judgment can be made as to the potential for obtaining patent protection. Basically, there are two (2) main types of patents, (i.e., utility patents and design patents). When possible, a patentability search is directed to both utility and design features of an invention so that a determination can be made as to which type of patent protect made be available.

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Posted on December 7, 2009 by LexBlog

Patentee

The person to whom a patent issues; in the U.S., the inventor(s) is named, even though the patent may be assigned to another. The patent must issue before the person can be considered a patentee.

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Posted on December 7, 2009 by LexBlog

Pending Application

The state an application is in during the time that a patent application is examined or is in the process of an appeal. An application is no longer pending after it is abandoned or a patent has issued.

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Posted on December 7, 2009 by LexBlog

Person

7 CFR 1.27(a)(1) defines a person as any inventor or other individual (e.g., an individual to whom an inventor has transferred some rights in the invention), who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization.

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Posted on December 7, 2009 by LexBlog

Plant Patent

May be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

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Posted on December 7, 2009 by LexBlog

Power Of Attorney

A written document signed by a person giving another person the power to act in conducting the signer's business, including signing papers, checks, title documents, contracts, handling bank accounts and other activities in the name of the person granting the power. The person receiving the power of attorney (the agent) is "attorney in fact" for the person giving the power. There are two types of power of attorney: a) general power of attorney, which covers all activities, and b) special power of attorney, which grants powers limited to specific matters, such as selling a particular piece of real estate, handling some bank accounts or executing a limited partnership agreement. A power of attorney may expire on a date stated in the document or upon written cancellation. Usually the signer acknowledges before a notary public that he/she executed the power, so that it is recordable if necessary, as in a real estate transaction.

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Posted on December 7, 2009 by LexBlog

Prior Art

Prior art references include any source from anywhere such as patents, publications and the like. If there is prior that teaches, motivates or suggests an invention the invention is not patentable.

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Posted on December 7, 2009 by LexBlog

Priority Date

a) In accordance with the conditions and requirements of subsections (a) through (d) of section 119 of this title, a national application shall be entitled to the right of priority based on a prior filed international application which designated at least one country other than the United States.

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Posted on December 7, 2009 by LexBlog

Priority Claim

Claims under 35 USC 119(a)-(e) and 35 USC 120 for the benefit of the filing date of earlier filed applications.

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Product By Process Claim

A product claim that defines the claimed product in terms of the process by which it is made.

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Pro Se

A term used to designate an independent inventor who has elected to file an application by themselves without the services of a licensed representative.

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Prosecution

The process of making amendments, statements, arguments, and representations to the USPTO for the purpose of obtaining a patent is usually referred to as patent prosecution.

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Posted on December 7, 2009 by LexBlog

Prosecution History

Comprises all documents produced by both the examiner and applicant in course of obtaining a patent.

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Posted on December 7, 2009 by LexBlog

Prosecution History Estoppel

This doctrine relates to the amendments, statements, arguments, and representations made by the patent applicant during the course of obtaining a patent. Any statement that limits the scope of the patent made for "a reason related to patentability" is binding and the applicant will be forbidden (estopped) from later attempting to argue that the limitation does not exist.

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Posted on December 7, 2009 by LexBlog

Provisional Patent Application

A provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. §111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application filed under 35 U.S.C. §111(a) and automatically becomes abandoned after one year. It also allows the term "Patent Pending" to be applied.

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Posted on December 7, 2009 by LexBlog

Provisional Patent Application Term

Provisional application for patent (provisional application) has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (non-provisional application) during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.

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Posted on December 7, 2009 by LexBlog

Public Domain

Intellectual property that is not owned by anyone and is commonly used by the pubic is said to be in the Public Domain.

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Posted on December 7, 2009 by LexBlog

Publication Number

A number assigned to the publication of patent applications filed on or after November 29, 2000. It includes the year, followed by a seven-digit number, followed by a kind code.

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Posted on December 7, 2009 by LexBlog

Public Knowledge

The statute (35 U.S.C. § 102(a)), states that “a person shall be entitled to a patent unless: (a) the invention was known or used by others in this country,” means knowledge or use that is accessible to the public.

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Posted on December 7, 2009 by LexBlog

Publication

The distribution or disclosure in a form, which is readily accessible or distributed to the public of copies, audio recordings or any creative work.

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Posted on December 7, 2009 by LexBlog

Publication Of A Patent

The "American Inventors Protection Act of 1999" provides for the publication of a U.S. patent application after the expiration of eighteen months from the earliest filing date to which a claim of priority is made. The eighteen-month publication rules apply to U.S. patent applications filed on or after November 29, 2000, and to U.S. applications resulting from international applications filed on or after November 29, 2000.

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Posted on December 7, 2009 by LexBlog

Oath

A swearing to tell the truth, the whole truth and nothing but the truth, which would subject the oath-taker to a prosecution for the crime of perjury if he/she knowingly lies in a statement either orally in a trial or deposition or in writing. The Director may by rule prescribe that any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration in such form as the Director may prescribe, such declaration to be in lieu of the oath otherwise required. Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both.

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Posted on December 7, 2009 by LexBlog

Objections

If the form of the claim (as distinguished from its substance) is improper, an "objection" is made by the examiner. If the substance of the claim is in question it is rejected.

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Obviousness

An invention is patentable if it would not have been obvious to one of ordinary skill in the art at the time the invention was made.

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Office Action

An official communication from a patent office.

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Omnibus Claim

Some applications are filed with an omnibus claim which reads as follows: A device substantially as shown and described. This claim should be rejected under 35 U.S.C. 112, second paragraph because it is indefinite in that it fails to point out what is included or excluded by the claim language.

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Posted on December 7, 2009 by LexBlog

On Sale

35 U.S.C. 102(b) "contains several distinct bars to patentability, each of which relates to activity or disclosure more than one year prior to the date of the application. One of these is the 'on sale' one year prior to filing a patent application.

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Posted on December 7, 2009 by LexBlog

Open For Public Inspection (OPI)

The date upon which a patent application is first made available to the public.

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Opposition

Any member of the public, including private persons, corporate entities, and government agencies, may file a protest against pending applications under 37 CFR 1.291. An attorney or other representative on behalf of an unnamed principal may file a protest since the rule does not require that the principal be identified.

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Posted on December 7, 2009 by LexBlog

Ordinary Skill in the Art

The "hypothetical 'person having ordinary skill in the art' to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art." Ex parte Hiyamizu, 10 USPQ2d 1393, 1394.

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Posted on December 7, 2009 by LexBlog

National Stage Application

An application which has entered the national phase of the Patent Cooperation Treaty by the fulfillment of certain requirements in a national Office, which is an authority entrusted with the granting of national or regional patents. Such an application is filed under 35 U.S.C. §371 in the United States and is referred to as a "371 application."

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Posted on December 7, 2009 by LexBlog

Negative Limitation

A Claim that defines the invention in terms of what it was not, rather than pointing out the invention. A claim which recited the limitation "said homopolymer being free from the proteins, soaps, resins, and sugars present in natural Hevea rubber" in order to exclude the characteristics of the prior art product, was considered definite because each recited limitation was definite. In re Wakefield, 422 F.2d 897, 899, 904, 164 USPQ 636, 638, 641 (CCPA 1970). In addition, the court found that the negative limitation "incapable of forming a dye with said oxidized developing agent" was definite because the boundaries of the patent protection sought were clear. In re Barr, 444 F.2d 588, 170 USPQ 330 (CCPA 1971).

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Posted on December 7, 2009 by LexBlog

New Matter

No amendment may introduce new matter into the disclosure of a patent application.

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Non-Confidential Agreement

A one-sided contract between a company and an inventor for the purpose of review of intellectual property. The company requires the inventor to relinquish the confidentiality and thus his/her rights in preserving the invention.

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Posted on December 7, 2009 by LexBlog

Non-Disclosure Agreement

A contract in which the parties promise to protect the confidentiality of secret information that is disclosed during employment or another type of business transaction.

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Non-Analogous Art

The examiner must determine what is "analogous prior art" for the purpose of analyzing the obviousness of the subject matter at issue. "In order to rely on a reference as a basis for rejection of an applicant's invention, the reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned." In re Oetiker, 977 F.2d 1443.

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Posted on December 7, 2009 by LexBlog

Non-Elected Invention

When the examiner makes a restriction requirement (the examiner has determined that the inventor has claimed more than on invention and requires that an applicant choose which of the inventions disclosed in a patent application that he/she wishes to be examined) the inventor must choose which invention he/she want examined and the invention not chosen is the non-elected invention.

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Posted on December 7, 2009 by LexBlog

Non-Exclusive License

A grant of the right to use some intellectual property such as a patent, trademark or copyright that does not restrict the licensor from granting the same license rights to others.

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Non-Obvious

A patent may not be obtained even though it is a new invention, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Therefore a non-obvious invention would be patentable.

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Posted on December 7, 2009 by LexBlog

Non-Provisional Patent Application

An application for patent filed under 35 U.S.C. 111(a); wherein patent application includes all patent applications (i.e., utility, design, plant, and reissue) except provisional applications. The non-provisional application establishes the filing date and initiates the examination process.

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Posted on December 7, 2009 by LexBlog

Notice

Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent.

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Posted on December 7, 2009 by LexBlog

Notice Of Allowance

If, on examination, it appears that the applicant is entitled to a patent under the law, a notice of allowance will be sent to the applicant at the correspondence address. The notice of allowance shall specify a sum constituting the issue fee that must be paid within three months from the date of mailing of the notice of allowance to avoid abandonment of the application.

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Novelty

35 USC 102 establishes requirements for patentability. An invention must be new, useful and non- obvious. If it is not new it lacks novelty.

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Nullity

Something that may be treated as nothing, as if it did not exist or never happened. This can occur by court ruling or enactment of a statute.

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Maintenance

35 U.S.C. 41 governs payment of patent fees necessary to keep patent in force for the entitled term. Maintenance fees are not required for any plant patents or for any design patents. Maintenance fees are not required for a reissue patent if the patent being reissued did not require maintenance fees.

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Posted on December 7, 2009 by LexBlog

Maintenance Fees

Fees for maintaining a patent in force based on an application filed on or after December 12, 1980.

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Make Special

New applications ordinarily are taken up for examination in the order of their effective United States filing dates. Certain exceptions are made by way of petitions to make special, which may be granted under certain conditions such as: special manufacture needs, infringement, applicant's health, applicant's age, environmental quality, development of energy resources, inventions relating to recombinant dna, applications relating to superconductivity, inventions relating to HIV/aids and cancer, inventions for countering terrorism, for applications relating to biotechnology filed by applicants who are small entities.

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Mask Work

Images that are used to create the layers of a semiconductor chip product.

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Means For Claim

A patent claim that recites an element as a means for carrying out a function.

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Misappropriation

The intentional, illegal use of the property or funds of another person for one's own use or other unauthorized purpose, particularly by a public official, a trustee of a trust, an executor or administrator of a dead person's estate or by any person with a responsibility to care for and protect another's assets (a fiduciary duty). It is a felony (a crime punishable by a prison sentence).

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Multiple Dependent Claim

A dependent claim, which further limits and refers back in the alternative to more than one preceding independent or dependent claim. Acceptable multiple dependent claims shall refer to preceding claims using the terms "or, any one of, one of, any of, either." A multiple dependent claim may not depend on another multiple dependent claim, either directly or indirectly.

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Large Entity

U.S Patent and Trademark Office (USPTO), defines a small entity. Any entity that is not a small entity would be a large entity. A small entity for purposes of paying reduced fees is defined in 37 CFR 1.27(a) as a person, a small business concern (a for-profit company with less than 500 or more employees), or a nonprofit organization. The term "person" rather than "independent inventor" is used since individuals who are not inventors but who have received some rights in the invention are intended to be covered by 37 CFR 1.27.

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Posted on December 7, 2009 by LexBlog

License

A grant of the right to use some intellectual property such as a patent, trademark or copyright. The contractual terms of the agreement usually allow for a payment in the form of a royalty from the grantor/ licensor to the grantee/licensee of the license in exchange for the right to use the intellectual property.

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Licensee

The entity that is granted a right to use some intellectual property such as a patent, trademark or copyright.

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Licensing Agent

A promoter of the sale of the use of intellectual property to potential purchasers. A licensing agent may represent either the licensee or licensor in an effort to secure a licensing agreement.

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Licensor

The entity that grants a license (right to use) some intellectual property such as a patent, trademark or copyright.

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Joint Application

An application in which the invention is presented as that of two or more persons.

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Joint Inventor

An inventor who is named with at least one other inventor in a patent application, wherein each inventor contributes to the conception of the invention set forth in at least one claim in a patent application.

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Incorporation By Reference

To supplement the disclosure of a patent application by making a specific statement in the application that other material is to be considered to be incorporated in the application.

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Independent Claim

A claim that does not refer back to or depend on another claim.

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Industrial Property

Intellectual property is divided into two categories: Industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs.

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Posted on December 7, 2009 by LexBlog

Information Disclosure Statement (IDS)

For patent applications filed under 35 U.S.C. § 111(a), applicants and other individuals who are substantively involved in preparing or prosecuting a patent application must submit to the Office information which is material to patentability (could render a claim unpatentable) as defined in 37 CFR § 1.56. The provisions of 37 CFR § 1.97 and 37 CFR § 1.98 provide a mechanism for compliance with the duty of disclosure provided in 37 CFR § 1.56. The IDS must include a list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office. The USPTO provides forms for use in the submission of an IDS, the PTO/SB/08a and PTO/SB/08b.

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Infringement

Unauthorized making, using, offering to sell, selling or importing into the United States any patented invention.

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Injunction

A writ (order) issued by a court ordering someone to do something or prohibiting some act after a court hearing. The procedure is for someone who has been or is in danger of being harmed, or needs some help (relief) or his/her attorney, to a) petition for the injunction to protect his/her rights.

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Intellectual Property

Creations of the mind - creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them: inventions, literary and artistic works, symbols, names, images and designs used in commerce. There are four ways to protect intellectual property - patents, trademarks, copyrights or trade secrets.

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Interference

A proceeding, conducted before the Board of Patent Appeals and Interferences (Board), to determine priority of invention between a pending application and one or more pending applications and/or one or more unexpired patents.

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International Application

An application filed under the Patent Cooperation Treaty.

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International Patent Cooperation Union (IPCU)

The Contracting States party to this Treaty constitute a Union for cooperation in the filing, searching, and examination, of applications for the protection of inventions, and for rendering special technical services.

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Inter Partes Reexamination

At any time during the enforceability of a patent, any person may file a request for the USPTO to conduct a second examination of any of its claims on the basis of prior art patents or printed publications believed pertinent and believed to have a bearing on the claim's patentability. Inter partes reexamination practice primarily differs from ex parte practice in that the third party requestor may file written comments addressing issues raised by the patent owner in a response to Office action. The third party has to do so within 30 days of the date of service of the patent owner's response.

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Posted on December 7, 2009 by LexBlog

Invention

Any art or process (way of doing or making things), machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States.

Tags: I

Posted on December 7, 2009 by LexBlog

Invention Assessment

The opinionated determination of value of an idea for a new, useful and non-obvious invention.

Tags: I

Posted on December 7, 2009 by LexBlog

Inventive Entity

The inventors.

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Posted on December 7, 2009 by LexBlog

Inventor

One who contributes to the conception of an invention. The patent law of the United States of America requires that the applicant in a patent application must be the inventor. See also applicant.

Tags: I

Posted on December 7, 2009 by LexBlog

Issuance Fee

Fee required before a patent is granted.

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Posted on December 7, 2009 by LexBlog

Issue Date

Date on which the patent is granted.

Tags: I

Posted on December 7, 2009 by LexBlog

Harmonization

Harmonization is the name given to the effort by industry to replace the variety of product standards and other regulatory policies adopted by nations in favor of uniform global standards.

Tags: H

Posted on December 7, 2009 by LexBlog

Having

A transitional phrase that is synonymous with "including," "containing" or "characterized by;" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.

Tags: H

Posted on December 7, 2009 by LexBlog

Hidden Public Use

A public use where the invention is not directly in the public view, and where there is no obligation or intention to purposely keep the use hidden.

Tags: H

Posted on December 7, 2009 by LexBlog

Generic Claim

A claim that encompasses an entire group or class. It is not possible to define a generic claim with that precision existing in the case of a geometrical term. In general, a generic claim should include no material element additional to those recited in the species claims, and must comprehend within its confines the organization covered in each of the species.

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Posted on December 7, 2009 by LexBlog

Goodwill

An intangible value of that company gains over time in the financial community.

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Posted on December 7, 2009 by LexBlog

Group

A unit of several in the mechanical, electrical, chemical or design area, managed by one or more Group Directors. Groups are more properly referred to as Technology Centers, or TCs.

Tags: G

Posted on December 7, 2009 by LexBlog

Group Art Units

May be abbreviated "AU," "GAU" or "Grp Art Unit" on Office correspondence) - a working unit responsible for a cluster of related patent art. Staffed by one supervisory patent examiner (SPE) and a number of patent examiners who determine patentability on applications for a patent. Group Art Units are identified by a four digit number, i.e., 1642.

Tags: G

Posted on December 7, 2009 by LexBlog

Field of Invention

The area of technology that an inventor invents within. Also called technical field or field of endeavor.

Tags: F

Posted on December 7, 2009 by LexBlog

File Wrapper

The folder in which the U.S. Patent and Trademark Office maintains the application papers is referred to as a file wrapper.

Tags: F

Posted on December 7, 2009 by LexBlog

File Wrapper Continuing Application

A continuation, continuation-in-part, or divisional application filed under 37 CFR 1.62, which uses the specification, drawings and oath or declaration from a prior nonprovisional application, which is complete as defined by 37 CFR 1.51(a)(1).

Tags: F

Posted on December 7, 2009 by LexBlog

Filing Date

The date of receipt in the Office of an application which includes (1) a specification containing a description and, if the application is a nonprovisional application, at least one claim, and (2) any required drawings.

Tags: F

Posted on December 7, 2009 by LexBlog

Filing Fee

The latest fee schedule is available by contacting the USPTO at 1-800-PTO(786)-9199 or (703) 308-HELP(4357), or on the USPTO web page at http://www.uspto.gov.

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Posted on December 7, 2009 by LexBlog

Final Rejection

On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final.

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Posted on December 7, 2009 by LexBlog

First To Invent

In the Us the patent is based on who is the first to invent. Dates of conception, reduction to practice, and who was first to come up with an invention are the most important. Other countries around the world make use of a "first-to-file" standard.

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Posted on December 7, 2009 by LexBlog

Foreign Filing License

A foreign patent license allows the inventor to file a foreign application based on the application pending before the Patent Office, and must be accomplished within the first six months after filing a U.S. patent application. Under the statute ( 35 U.S.C. 119(b)), an applicant who wishes to secure the right of priority must comply with certain formal requirements within a time specified. If these requirements are not complied with the right of priority is lost and cannot thereafter be asserted. For non-provisional applications filed prior to November 29, 2000, the requirements of the statute are (a) that the applicant must file a claim for the right and (b) he or she must also file a certified copy of the original foreign application; these papers must be filed within a certain time limit. A U.S. patent is barred if the applicant filed a patent application in a foreign country more than one year before the U.S. filing date, and the foreign application issued prior to the U.S. filing date.

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Posted on December 7, 2009 by LexBlog

Frivolous Invention

An invention that has no use. Patents are not granted for all new inventions and discoveries. The subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits patents to be granted only for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

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Posted on December 7, 2009 by LexBlog

Effective Date

The date the patent is available as a reference is generally the date that the patent becomes enforceable.

Tags: E

Posted on December 7, 2009 by LexBlog

Election (PCT)

An indication made by applicant, in the Demand for an International Application filed under the patent cooperation treaty, as to the Contracting States in which applicant intends to use the results of the international preliminary examination.

Tags: E

Posted on December 7, 2009 by LexBlog

Element

A discretely claimed component of a patent claim.

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Posted on December 7, 2009 by LexBlog

Embodiment

A manner in which an invention can be made, used, practiced or expressed.

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Posted on December 7, 2009 by LexBlog

Enablement

The specification in a patent application must describe the invention in a manner that would enable one with ordinary skill in the art to make and use the invention without an undue amount of experimentation.

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Posted on December 7, 2009 by LexBlog

Enforceability Of Patent

The right of the patent owner to bring an infringement suit against a party, who, without permission, makes, uses or sells the claimed invention. The period of enforceability of a patent is the length of the term of the patent plus the six years under the statute of limitations for bringing an infringement action.

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Posted on December 7, 2009 by LexBlog

Examination

The study of a patent application in the governing patent and trademark office, by an examiner, to determine whether or the invention described therein can be patented. The major consideration the examiner addresses is the novelty and utility of the invention, among other things.

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Posted on December 7, 2009 by LexBlog

Examiner

Employees of the U.S. Patent & Trademark Office who conduct prior art searches and determine whether the patent application complies with the substantive and procedure requirements for the grant of the patent.

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Posted on December 7, 2009 by LexBlog

Examiner's Amendment

An informal examiner's amendment may be used for the correction of obvious errors and omissions only in the body of the written portions of the specification and may only be made with pen by the examiner of the application who will then initial in the margin and assume full responsibility for the change.

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Posted on December 7, 2009 by LexBlog

Exclusive License

An agreement granted by a patent owner to one party, exclusive right of usage. The licensee is said to "own" the rights granted in the license as long as the licensee holds up to the agreement as stated within the licensing contract.

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Posted on December 7, 2009 by LexBlog

Execute

The signing of an oath or declaration, and swearing to that oath as required by law.

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Posted on December 7, 2009 by LexBlog

Ex Partes Reexamination

At any time during the enforceability of a patent any person may file a request for the USPTO to conduct a second examination of any claim of the patent on the basis of prior art patents or printed publications which that person states to be pertinent and applicable to the patent and believes to have a bearing on the patentability. If the request for ex parte reexamination is filed by a third party and not the patent owner, the third party may not participate in the ex parte proceedings beyond the filing of a reply to the patent owner's statement under §1.530, if the patent owner files a statement. No other reply or submission by a third party will be considered in ex parte reexamination.

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Posted on December 7, 2009 by LexBlog

Expiry

The date when the invention is no longer protected and or when an invention's patent protection lapses. This may correspond with the end of the "term" of the patent.

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Posted on December 7, 2009 by LexBlog

Express Abandonment

A patent application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office. Express abandonment becomes effective when an appropriate official of the Office takes action thereon. Express abandonment of the application may not be recognized by the USPTO before the date of issue or publication unless it is actually received by appropriate officials in time to act. Abandonment may be either of the invention or of an application. An abandoned application, in accordance with 37 CFR 1.135 and 1.138, is one which is removed from the USPTO docket of pending applications.

Tags: E

Posted on December 7, 2009 by LexBlog

Express Mail Mailing Label

Patent correspondence delivered to the USPTO via the "Express Mail Post Office to Addressee" service of the United States Postal Service (USPS) which is considered filed in the Office on the date of deposit with the USPS, shown by the "date-in" on the "Express Mail" mailing label

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Posted on December 7, 2009 by LexBlog

Deceased Inventor

A named inventor who has died prior to the filing of a patent application or during the prosecution of a patent application.

Tags: D

Posted on December 7, 2009 by LexBlog

Declaration

Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration. Such declaration may be used in lieu of the oath otherwise required, if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant's own knowledge are true and that all statements made on information and belief are believed to be true.

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Posted on December 7, 2009 by LexBlog

Defensive Publication

The Defensive Publication Program, which provided for the publication of the abstract of the technical disclosure of a pending application if the applicant waived his or her rights to an enforceable patent, was available between April 1968 and May 8, 1985. The program was ended in view of the applicant's ability to obtain a Statutory Invention Registration.

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Posted on December 7, 2009 by LexBlog

Demand

Form PCT/IPEA/401, filed with an International Preliminary Examining Authority, demanding that an international application shall be the subject of an international preliminary examination.

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Posted on December 7, 2009 by LexBlog

Dependent Claim

A claim that refers back ("depends on") to and further limits a preceding dependent or independent claim. A dependent claim shall include every limitation of the claim from which it depends.

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Posted on December 7, 2009 by LexBlog

Design Patent

May be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.

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Posted on December 7, 2009 by LexBlog

Disclaimer

A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer (give up all or part of the owner's rights to enforce claims) of any complete claim , stating therein the extent of their interest in such patent. Such disclaimers are required to be in writing and recorded in the USPTO, and are considered as part of the original patent to the extent of the interest actually possessed by the disclaimant and by those claiming under him. Any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term (from a certain point in time through the projected end of the entire term), of the patent granted or to be granted. There are two types of disclaimers: (1) statutory disclaimer and (2) terminal disclaimer.

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Posted on December 7, 2009 by LexBlog

Disclosure

In return for a patent, the inventor gives as consideration a complete revelation or disclosure of the invention which protection is sought.

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Posted on December 7, 2009 by LexBlog

Disclosure Document

A paper disclosing an invention (called a Disclosure Document) and signed by the inventor or inventors that has been forwarded to the USPTO by the inventor (or by any one of the inventors when there are joint inventors), by the owner of the invention, or by the attorney or agent of the inventor(s) or owner. The Disclosure Document will be retained for two years, and then be destroyed unless it is referred to in a separate letter in a related patent application filed within those two years.

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Posted on December 7, 2009 by LexBlog

Divisional Application

A later application for an independent or distinct invention disclosing and claiming (only a portion of and) only subject matter disclosed in the earlier or parent application.

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Posted on December 7, 2009 by LexBlog

Doctrine of Equivalents

In patent infringement cases, the "doctrine of equivalents" allows a patent owner to prove infringement even when the claims are not literally infringed

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Posted on December 7, 2009 by LexBlog

Double Patenting Rejection

A rejection of a patent claim on the grounds that it is an improper attempt to obtain more than one patent on the same invention or on an obvious variant of the same invention.

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Posted on December 7, 2009 by LexBlog

Drawing

Patent drawings must show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete but are only required if drawings are necessary for the understanding of the subject matter sought to be patented.

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Posted on December 2, 2009 by LexBlog

CAFTA

Central American Free Trade Agreement is a proposed agreement between the United States and five Central American nations (Guatemala, El Salvador, Honduras, Costa Rica and Nicaragua).

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Posted on December 2, 2009 by LexBlog

Canceled Claim

A claim that is canceled or deleted. "Canceled" is the status identifier that should be used when a claim is canceled in an application.

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Posted on December 2, 2009 by LexBlog

CIP (Continuation-in-Part)

An application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the earlier nonprovisional application.

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Posted on December 2, 2009 by LexBlog

Certificate of Mailing

A certificate for each piece of correspondence mailed, prior to the expiration of the set period of time for response, stating the date of deposit with the U.S. Postal Service and including a signature.

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Posted on December 2, 2009 by LexBlog

Claims

Claims define the invention and are what are legally enforceable. The specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery. The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description. (See § 1.58(a)).

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Posted on December 2, 2009 by LexBlog

Claim, Closed

The preamble of a claim using a phrase such as "consisting of" and of this form of claim is considered to positively and clearly include all the elements or steps recited therein as a part of the claimed combination.

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Posted on December 2, 2009 by LexBlog

Claim, Dependent

A claim that refers back to and further limits or restricts the breadth of another claim. The other claim may be an independent claim or another dependent claim.

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Posted on December 2, 2009 by LexBlog

Claim, Generic

A claim that describes ("reads on") a generic form of an invention. A generic claim generally reads on all the claimed species of an invention.

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Posted on December 2, 2009 by LexBlog

Claim, Independent

A claim that does not reference (depend from) another claim.

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Posted on December 2, 2009 by LexBlog

Claim, Jepson

A form of a claim with a preamble that describes what is known in the art followed by a transitional phrase such as "the improvement comprising" and then a description of the claimed improvement.

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Posted on December 2, 2009 by LexBlog

Claim, Markush

A form of a claim that allows claiming of members of a finite group by a claim that recites members as being "selected from the group consisting of A, B and C." The members of a Markush group must have at least one property that is akin to the group.

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Posted on December 2, 2009 by LexBlog

Claim, Multiple Dependent

A claim that refers back to and further limits another claim or claims and depends from more than one other claim. The other claims may be referred to in the alternative only.

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Posted on December 2, 2009 by LexBlog

Claim, Process

A claim that recites the steps of a process. The process may be a method of making something, a process of operating something or a process of using something. 35 U.S.C. 101.

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Posted on December 2, 2009 by LexBlog

Claim, Product

Claim that recites the elements or features of a product (i.e., a machine, an article of manufacture or a composition of matter). A claim recites the physical form of an invention. 35 U.S.C. 101.

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Posted on December 2, 2009 by LexBlog

Claim, Species

A claim that describes ("reads on") a species of an invention. A generic claim generally reads on all the claimed species of an invention.

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Posted on December 2, 2009 by LexBlog

Claim, Picture

A claim that describes every aspect of an invention.

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Posted on December 2, 2009 by LexBlog

Classification

Patents are classified (organized) in the U.S. by a system using a 3 digit class and a subclass to describe every similar grouping of patent art. A single invention may be described by multiple classification codes.

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Posted on December 2, 2009 by LexBlog

Co-Inventor

An inventor who is named with at least one other inventor in a patent application, wherein each inventor contributes to the conception of the invention set forth in at least one claim in a patent application.

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Posted on December 2, 2009 by LexBlog

Commercialization

A process of creating an invention and then getting in position to manufacture, market and distribute or sell.

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Posted on December 2, 2009 by LexBlog

Common Law Rights

Property or other legal rights that do not absolutely require formal registration in order to enforce them.

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Posted on December 2, 2009 by LexBlog

Community Patent Convention (CPC)

The CPC was to further the EPC by providing a single patent that covered the entire territory of the European Community.

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Posted on December 2, 2009 by LexBlog

Composed Of

Used when defining the scope of a claim. A transitional phrase that is interpreted in the same manner as either "consisting of" or "consisting essentially of," depending on the facts of the particular case.

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Posted on December 2, 2009 by LexBlog

Comprising

A transitional phrase that is synonymous with (means the same thing as) "including," "containing" or "characterized by;" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Comprising is a term of art used in claim language which means that the named elements are essential.

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Posted on December 2, 2009 by LexBlog

Conception

"The complete performance of the mental part of the inventive act" and it is "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice." Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930). "[C]onception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill." Hiatt v. Ziegler, 179 USPQ 757, 763 (Bd. Pat. Inter. 1973). Conception has also been defined as a disclosure of an invention which enables one skilled in the art to reduce the invention to a practical form without "exercise of the inventive faculty." Gunter v. Stream, 573 F.2d 77, 197 USPQ 482 (CCPA 1978).

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Posted on December 2, 2009 by LexBlog

Consisting Essentially Of

A transitional phrase that limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent (without) a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed (understood) as equivalent to "comprising."

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Posted on December 2, 2009 by LexBlog

Consisting Of

A transitional phrase that is closed (only includes exactly what is stated) and excludes any element, step, or ingredient not specified in the claim.

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Posted on December 2, 2009 by LexBlog

Continuation

A second application for the same invention claimed in a prior nonprovisional application and filed before the first application becomes abandoned or patented.

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Posted on December 2, 2009 by LexBlog

Contributory Infringement

Making or facilitating the production of any portion of a patented product or a material or a patented.

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Posted on December 2, 2009 by LexBlog

Convention (PCT)

Convention, PCT Similar to the EPC, The PCT convention operates as a "holding pattern" to preserve rights in designated countries for a specified time. Comprised of different countries than the EPC except in such instances where a country belongs to both conventions.

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Posted on December 2, 2009 by LexBlog

Cross Reference

A reference (issued patent) in another class or subclass, or a reference made in a later-filed patent application to a related, earlier-filed application.

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Posted on December 2, 2009 by LexBlog

Customer Number

Number assigned by the Office that is used to simplify the submission of an address change, to appoint a practitioner, or to designate the fee address for a patent. Customer numbers are primarily used by attorneys and law firms, and must be requested using the "Request for Customer Number" form (PTO/SB/125).

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Posted on December 2, 2009 by LexBlog

Cyberlaw

legal matter related to intellectual property on the Internet and its regulation and governing.

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Posted on December 2, 2009 by LexBlog

Background Of The Invention

A section of a patent application pointing to the pertinent prior art and how the instant invention relates to the prior art.

Tags: B

Posted on December 2, 2009 by LexBlog

Bar

A destruction of an action or a claim in law.

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Posted on December 2, 2009 by LexBlog

Best Mode

A third requirement of the first paragraph of 35 U.S.C. 112 is that: The specification . . . shall set forth the best mode contemplated by the inventor of carrying out his invention.

Tags: B

Posted on December 2, 2009 by LexBlog

Biological Material

Material that is capable of self-replication either directly or indirectly. Representative examples include bacteria, fungi including yeast, algae, protozoa, eukaryotic cells, cell lines, hybridomas, plasmids, viruses, plant tissue cells, lichens and seeds. Viruses, vectors, cell organelles and other non-living material existing in and reproducible from a living cell may be deposited by deposit of the host cell capable of reproducing the non-living material.

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Posted on December 2, 2009 by LexBlog

Board Of Appeals

An adverse decision of a patent examiner is subject to review by the Board of Appeals which is formed from a panel of members that includes the Commissioner of Patents, the deputy commissioner, the assistant commissioners, and examiners-in-chief. At least three members of such panel must hear each appeal. As a general rule, the Board upholds the decision of the examiner in about seventy per cent (70%) of all cases. This is roughly the same rate as all appeals in all areas of law.

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Posted on December 2, 2009 by LexBlog

Broad Claim

The failure to meet the written description requirement of 35 U.S.C. 112, first paragraph, commonly arises when the claims are changed after filing to either broaden or narrow the breadth of the claim limitations, or to alter a numerical range limitation or to use claim language which is not synonymous with the terminology used in the original disclosure. To comply with the written description requirement of 35 U.S.C. 112, para. 1, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, or 365(c), each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.

Tags: B

Posted on December 2, 2009 by LexBlog

Business Method Patent

State Street Bank & Trust Co. v. Signal Financial Group, Inc. 149 F.3d 1368 (Fed. Cir. 1998) cert denied 119 S. Ct. 851 (1999). The court ruled that patent laws were intended to protect any method, whether or not it required the aid of a computer, so long as it produced a "useful, concrete and tangible result."

Tags: B

Posted on December 1, 2009 by LexBlog

Abandoned Application

An application that has been declared abandoned is "dead" and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response to an Office action letter from an applicant within 6 months from the date the Office action letter was mailed. Another instance is when the USPTO does not receive a statement of use (or request for an extension of time to file a statement of use) from an applicant within 6 months from the issuance of a Notice of Allowance). Applications abandoned for failure to respond to an Office Action or a Notice of Allowance can be revived or reinstated in certain circumstances.

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Posted on November 30, 2009 by LexBlog

Abandonment

To relinquish, either by express abandonment or by inaction, a patent application. A patent application becomes abandoned for failure to file a complete and proper reply as the condition of the application may require within the time period.

The person or corporate entity who assigns or transfers a patent right to another person or corporate entity.

Tags: A

Posted on November 6, 2009 by LexBlog

Attorney

(May be referred to as a practitioner or representative) - an individual who is a member in good standing of the bar of any United States court or the highest court of any State and who is registered to practice before the Office.

Tags: A