Proposed Lower Fees for Trademark Registrations May Save You Money

 

trademark lawFind Out How Potential Changes to Trademark Registrations    May Affect Your Business

The US Patent and Trademark Office (USPTO) is proposing a reduction of certain trademark fees.

The proposal includes a $50.00 reduction in filing fees for trademark, certification mark, collective membership mark, and collective trademark applications filed using the Trademark Electronic Application System (TEAS) if applicants authorize email communication and file electronically throughout the process. This will be known as a TEAS Reduced Fee (RF) application.

Currently the per-class filing fees for the registration of a trademark is $375 for a paper application, $325 for electronic filing using TEAS, $275 for using TEAS Plus, and $400 per-class for renewals.

The proposal includes reducing fees for filing TEAS Plus registration applications and TEAS renewal applications of trademark registrations.  The reduction in fees for a TEAS Plus application would be $50 and a TEAS renewal by $100 and the filing fees for paper filings would not be changed.

According to the USPTO, filing through TEAS and communicating via email expedite processing of trademark applications, shorten the pendency of applications, minimize manual processing and the potential for data entry errors, and increases efficiency for both applicants and the USPTO resulting in an operating reserve.

Trademark Attorney, Laura Lloyd advises

While the proposal to reduce fees will be a benefit, I would advise clients not to wait to file a trademark in the hopes of getting a reduced filing rate because the date of filing can be crucial in future disputes.”

If approved, the new rates would take effect in 2015.

Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.


 

Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “The south side of the James Madison Building in Alexandria, Virginia” by Coolcaesar under CC-SA by 3.0.

 

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Federal Circuit Kills Patent Based on Inequitable Conduct

Blood Pressure Patent

The Federal Circuit Court of Appeals upheld a ruling that a patent for a method for making blood pressure drugs was unenforceable due to inequitable conduct by the founder and chairman of the company that owned the patent.

The patent at issue was granted in 2004. Dr. Bernard Charles Sherman, the founder and chairman of Apotex, wrote the application and is the sole inventor on the patent.

Dr. Sherman has written about 100 other patent applications for Apotex and directs all of its patent litigation activities.

The patent covers a process for making tablets used to treat hypertension (high blood pressure). Specifically, the process includes a method for stabilizing ACE inhibitors.

The court noted that several other methods for stabilizing ACE inhibitors were known in the prior art before Dr. Sherman filed his patent application. The application was rejected three times at the US Patent and Trademark Office for reasons of obviousness.

Dr. Sherman then submitted an expert declaration from a Dr. Michael Lipp that a person “skilled in the art” would not find the method claimed in the patent to be obvious. The challenged claim in the patent was modified and the patent was finally granted.

Apotex sued UCB for patent infringement.

The district court ruled that the patent was unenforceable due to Dr. Sherman’s inequitable conduct. The court found that he misrepresented the nature of the defendant’s drugs, that he withheld prior art references, and that he submitted “results” of experiments he never actually conducted.

Dr. Sherman admitted at trial that the experiments “were made up in his head.”

The court noted that Dr. Sherman failed to inform Dr. Lipp of the true facts and thus knowingly perpetuated his mischaracterizations of the prior art.

Apotex appealed the court’s holding that the patent was unenforceable.

The Federal Circuit upheld the lower court’s decision, finding that Dr. Sherman had “breached his duty of candor, good faith, and honesty before the PTO.”

According to Patent Attorney, Laura Lloyd:

This case illustrates how important it is to keep the Patent Office (USPTO) informed of any prior references that an inventor knows of.

Inequitable Conduct after Therasense

Invalidating a patent based on inequitable conduct before the USPTO has been relatively rare since 2011, when the Federal Circuit’s ruling in the Therasense case made such conduct more difficult to prove.

The Federal Circuit had become concerned that defendants in patent cases had overused the defense.

Under Therasense, a defendant must show that a patent holder deliberately withheld prior art from the USPTO and that the disclosure of the prior art would have led the USPTO to disallow the patent claim.

The Risks of Withholding Prior Art

Intentionally withholding information from the Patent Office is unethical, usually self-defeating, and often fruitless.

Undisclosed prior art can be uncovered by various parties and at various stages.  It may be uncovered during the patent examination process or during litigation after a patent has been issued.

Some companies have even turned to crowdsourcing to detect prior art, as in contests run by Patexia.

If you are ready to prepare a patent application for your invention, contact our office to arrange a free initial consultation.

Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.


Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Digital Blood Pressure Monitor” by Solaris2006 is used under the GNU Free Documentation License.

 

Trademark Registration: USPTO Looks Into “Proof of Use”

USPTO Seal According to intellectual property law, a trademark owner is required to regularly provide evidence of the “use of the mark” in connection with a bona fide offering for sale of goods or services.

Too often, however, registered marks are no longer used or have never been used in connection with the goods or services they identified on their registration.

As a result, companies looking to name new goods and services may find that their options are limited by the presence of these dusty “shelf” marks. The unused marks provide no real value to the original registrants, yet prevent other companies from using a form of intellectual property that could benefit their products or services.

To deal with this issue – or at least investigate its extent – the US Patent and Trademark Office (USPTO) is conducting a pilot study on “Post Registration Proof of Use.”

Under US trademark practice, registrants must submit a “declaration of continued use” between the fifth and sixth years after a federal trademark is registered.  This is a simple filing involving an affidavit and a single specimen of the mark being used on goods or services.

In the pilot study, the USPTO selected 500 trademark registrations at random, “to assess the accuracy and integrity of the trademark register as to the actual use of the mark with the goods and/or services identified in the registration.”

The USPTO asked each registrant to submit proof of actual use of the mark for two additional goods or services per class.  If registrants were unable to do so, the USPTO subjected the registration to additional proof-of-use requirements.

The study revealed that, with 94% of the test group responding, about half the registrations failed to meet the initial proof-of-use requirements.

The result was that the USPTO deleted certain goods or services from the failed registrations, or cancelled the entire registrations.

Attorney Laura Lloyd, Ph.D. says,

It is important to list the description of goods and services correctly on a trademark application to prevent the possibility of cancellation of the trademark in the future.

The eye-opening results of this pilot study led the USPTO to note with approval four suggestions for reform discussed at a recent roundtable discussion at George Washington University Law School on “The Future of the Use-Based [Trademark] Register.”

These suggestions included:

  • A streamlined non-use expungement process;
  • Requiring specimens for all listed goods and/or services;
  • Increasing the “solemnity” of the declaration regarding use; and
  • Conducting random audits of declarations.

The USPTO is inviting comments on this issue and potential solutions. Comments may be sent to TMPolicy@uspto.gov.

Even before the USPTO makes changes, if a foreign-based trademark application with a broad description of goods is blocking a US trademark registration, the US applicant can challenge the prior mark via the cancellation process.

If you have questions about “use” requirements for trademarks, or challenging prior marks, contact our office for a free initial consultation.

Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.


Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.

Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Seal of the United States Patent and Trademark Office” by US Government is in the public domain.