The Need for a Reliable Test of Software Patentability

The U.S. Patent and Trademark Office and the courts have long struggled with whether or not software should be patentable. While patent laws exist to encourage invention, monopolization of ideas—the building blocks of further invention—would be bad. Continue reading

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Determining the Value of a Patent or Patent Application

Most lawyers know that the value of a business is made up of the value of its assets. Tangible assets like stocks, bonds and real estate have relatively straightforward methods of valuation. By contrast, intangible assets such as patents are much harder to value. Continue reading

Internet Speed and Convenience, When It Comes To Trademarks, Is Not Always A Blessing

tmsearchThe internet provides fast access to many things, such as books, concert tickets and movie revues.  You can now even file trademark applications using the U.S. Patent & Trademark Office’s (PTO’s) web site www.uspto.gov/main/trademarks.htm.  It’s easy and the site takes credit cards.  You can also search trademarks for free at the same site.  However, think before you click.

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Procedures for Invalidating, Clarifying, or Narrowing a Patent in the Patent Office Under the America Invents Act

Prior to AIA, there were two ways for a third party to invalidate a patent in the patent office:

  • Interference under 35 U.S.C. § 135 & 37 C.F.R. § 41.202, which was extremely limited, as it required:
    1. Must have a patent application on file with claims drawn to the same invention as the patent;
    2. Patent office must agree that the claims are the same; and
    3. Must prove earlier invention and first to file won 90 percent or so of the time.

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Stretching Your Practice: Electronic Searching and Filing of Trademarks

Most business or general attorneys regard intellectual property (IP) as an enigma. This is especially true when it comes to patent practice. After all, there is a separate “patent bar” required for representing patent applicants in the U.S. Patent & Trademark Office (“PTO”). By contrast, a trademark applicant can be represented by any lawyer. Accordingly, all lawyers can potentially file trademark applications. For those who want to venture into trademark law, and in particular for those who want to perform trademark searches and/or file trademark applications, I am writing this article to help you spot important issues before it is too late. Due to the Internet, filing trademark applications can be a fairly simple matter, especially once you have done one or two. This is especially true for trademark applications because the PTO recently created a system called TEAS (Trademark Electronic Application System), which enables preparing and filing applications via the Internet. In fact, to encourage electronic filing, effective June 24, 2003, if you file a trademark application by express mail (the current typical manner), you will no longer get the benefit of the date of deposit in express mail as the filing date. The PTO will only give you the date of actual receipt.

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