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Showing posts from July, 2018

Protect Your Brand Against Competitors

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Continuing on the topic of “IP Prep Before a Big Event,” another consideration before moving forward with a public presentation is protecting the look and feel of your company and products. For example, design patents and trademarks may be helpful for protecting visual intellectual property.
            People often think of utility patents when it comes to patent protection, which may protect a method, device, or system that achieves a technical improvement. However, design patents protect the visual aspects of an article. For example, visual aspects such as a configuration, shape, and/or a surface ornamentation of an article may be protected via a design patent.
            As to trademark protection, trademark protection of company logos is another option to protect the look and feel of a company. For example, trademark protection of a company logo may help to prevent competitors from selling products with confusingly similar marks.
            Together, both trademark protection …

Third Party Submissions During Patent Prosecution

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During patent prosecution, patent offices have specific windows for accepting third party submissions.  If properly used, a third party submission may be a cost effective way for limiting or blocking a competitor’s potential claims to prevent future costly and prolonged invalidation proceedings or infringement litigation.  Third party submissions work differently in different countries. Herein, we compare the third party submission practices and strategies of using them in the U.S. and China.
The following table summarizes the procedural differences among the various third party submission practices in both the U.S. and China.

The most noticeable difference between the U.S. and China practices is that the window for filing the third party submission in China is much broader than in the U.S.  In the U.S., there are two types of third party submissions that may be filed after the publication and before the issuance of a patent: the third party pre-issuance submission and the third party…

Tips and Tricks: Filing a PPH Request in the United States

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The Patent Prosecution Highway (PPH) program can be an excellent way to more quickly move a patent to issue. Via PPH, participating patent offices may expedite examination of applications which have at least one claim allowed in another PPH patent office. A listing of participating PPH offices may be found here.
U.S. patent applications eligible for PPH must meet the following requirements:
At least one claim in a corresponding application must be allowed at an eligible* Office of Earlier Examination (OEE)The U.S. application must have the same earliest priority date as the OEE applicationSubstantive examination of the U.S. application must not have started Should your U.S. patent application meets the PPH requirements, a PPH request form may be submitted. There are several pieces of information that are required by the U.S. Patent Office to complete a PPH request. Below are a few tips and tricks to help make the process of filing a U.S. PPH request go smoothly:
1. Notify your legal co…

Timelines in a Patent that Claims a Method

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A picture is worth a thousand words.  Various figures may be included in a patent application for aiding the  description of the invention.  In a patent application claiming a control system method or process, a flow chart showing the steps of the method is usually necessary.  In addition to the flow chart, it may be beneficial to include a timeline figure illustrating the operation of the actuators and/or sensors, and the change in parameters when implementing the method.
Though there may be some overlap of coverage between the flow chart and the timeline, the two figures are complimentary to each other, and may be utilized during prosecution to aid the application from different perspectives.  For example, the flow chart may emphasize the actions, such as the action of opening a valve, turning on a component, or reading a sensor, while the timeline may emphasize the other aspects of the action, such as increased air flow responsive to the opened valve.  The flow chart may emphasize…

ICE, ICE GENIE OR WIZARD OR…?

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A previous post described the strategic importance of pursuing patent protection. Therein, the Scrub Daddy served as an excellent example, where Aaron Krause pursued a design patent application during the infancy of his business likely due to money being diverted to the marketing and manufacture of his sponge.  This decision allowed him to secure a $200,000 offer on Shark Tank and grow his business into a multi-million dollar company.
            Herein, we provide an example of an ice maker which goes by a variety of names, including Ice Genie and Ice Wizard.  While both names are magical, the landscape in which they are selling these ice makers is not.  Searching Ice Genie in Amazon reveals many similar looking products providing the same features.  Not to mention, Ice Genie and Ice Wizard do not appear to be owned by the same company, while the product offered is the same.
            The Ice Genie is a clever design that provides a double barreled ice maker forming ice between wa…

What is Public Disclosure? Impacts of Public Disclosure On IP Protection

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As mentioned in our post “IP Prep Before a Big Event”, public disclosure may impact your intellectual property rights.
            The U.S. patent system encourages sharing of intellectual property to help facilitate technological advances and in turn provides limited protection of this intellectual property.
            In the spirit of encouraging people to share information via the patent system, there is a limited window of time that you are eligible to apply for patent protection of an idea. For the U.S., this window of time is a one year countdown that starts from when an invention is publicly disclosed, though the rules vary from country to country.
            What counts as public disclosure? Well, public disclosure broadly refers to some form of communication that makes your intellectual property accessible to the public. Public disclosure comes in many forms—from printed publications to the Internet to offers of sale. Basically, unless invention information is communicated…