Intellectual Property

Update!—New TN Law Concerning Patent Infringement Allegations

Posted by on Jun 23, 2014 in Intellectual Property, Update!

In recent years, state legislatures have attempted to pass legislation regarding patent law – an area that the U.S. Constitution states is exclusively governed by federal law. The stated goal behind many of these laws is to protect businesses from costs associated with defending “bad faith” patent infringement allegations (i.e. to protect from alleged “patent trolls”). Some argue that these laws are constitutional because they are more akin to consumer protection act legislation and do not necessarily overlap or interfere with federal law. In Tennessee, the legislature recently passed such a bill to protect small businesses from costs associated with defending “bad faith” assertions of patent infringement. Public Chapter 879 went into effect May 1 of this year, and states that a person or company cannot send a written or electronic demand letter stating that another person or company is infringing upon their patent when: (i) the threat is made in conjunction with continual past threats where no litigation was filed; (ii) the letter falsely claims that litigation was filed; or (iii) the claims in the letter “lack a reasonable basis in fact or law.” Certain organizations and claims are exempted from the statute; but ultimately, if you are seeking to enforce a patent or are receiving letters claiming that you are infringing upon a patent, you may want to consult with an attorney about this new law (codified at T.C.A. § 29-40-101 through 104). The consequences of ignoring the new law – which include the possibility of attorneys’ fee and punitive damage awards – could be...

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Update! — Fee Changes at Patent and Trademark Office

Posted by on Feb 5, 2014 in Intellectual Property, Update!

The U.S. Patent and Trademark Office recently implemented a number of fee changes that will affect patent applicants and patent owners. Filing fees for patent applications have significantly increased, as have certain other patent prosecution fees. Issue fees, on the other hand, have been slightly decreased. Another change was eliminating the separate fee paid for publication of certain patent applications. U.S. patent applications for which a corresponding application is filed in another country are always published, but applications for which there is no corresponding foreign application are published at the option of the applicant. Publication does provide a limited benefit to applicants whose patents are subsequently issued with claims substantially the same as those published; however, until recently, there was a significant fee charged for publication. Patent owners whose applications have been published with issued claims substantially the same as those published, are entitled to recover a reasonable royalty from infringers who begin infringing prior to the issue of the patent, for the period from commencement of the infringement after publication until the patent issues. Such patent owners are also entitled to recover at least a reasonable royalty from infringers for infringement occurring after the patent issues. Some courts have held, however, that in order to recover a reasonable royalty from an infringer whose infringement began after publication but before issue of the patent, the patent owner had to prove that the infringer possessed a copy of the published application. Because this requirement, along with the requirement that the issued claims substantially mirror the published claims, limits the availability of the remedy for pre-issue infringement, some patent owners have elected to avoid publication of their U.S. application when no foreign application was filed, in order to avoid paying the publication fee. Now, with the publication fee having been eliminated, the only reason to choose not to publish your U.S. patent application is if you believe that the invention can be maintained as a trade secret if the patent application is not allowed. Because inventions directed to machines and other devices cannot be kept secret once the invention is placed on the market, there is no longer any downside to publishing U.S. patent applications directed to such inventions. Please contact any attorney should you have any further questions or if you are wondering how or whether to patent your...

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App Development: Privacy Issues to Consider

Posted by on Dec 13, 2013 in Intellectual Property, Limiting Liability

If your company is developing an app, or having an app developed for it, there are key issues concerning privacy that your company should keep in mind. Apps can often require or facilitate access to personal information about end users which is typically regarded as private and subject to protective laws or regulations. Some apps gradually collect personal information about the end user as the end user navigates the app. Such information can include: financial account information health information location data personally identifiable information (e.g. name and address) There has been greater focus of the Federal Trade Commission (FTC) on privacy issues in mobile devices and apps. Therefore, to help avoid liability or harm to your company’s reputation as a result of privacy breaches, at the initial stages of the app development process and throughout your operations, your company should understand the types of personal information would be shared or accessed as a result of an end user navigating your company’s app. It’s never too early to consider privacy issues–especially if your app facilitates or requires access to information which is highly regulated, (e.g. financial, health or children information). If your company is developing and app or having an app developed, please contact an attorney who can help you minimize risk with respect to privacy...

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Trademarks 101 PART 5 — Avoiding Mistakes in the Trademark Process by Assessing the Likelihood of Confusion

Posted by on Nov 7, 2013 in Intellectual Property

So, startups and entrepreneurs, you think your trademark situation is totally cool because you conducted a full trademark search, right? Wrong. Well, at least not necessarily… Sometimes even a full trademark search isn’t enough because it often doesn’t reveal important details about the actual use of a trademark in the marketplace. In order to assess the likelihood of confusion and the level of risk associated with a third party’s trademark that may potentially conflict with yours, you should determine the nature and extent of any potentially conflicting trademark’s use. “Likelihood of confusion” is the crucial test in trademark infringement and unfair competition claims. Although there is some variation among our circuit courts of appeal, there are similar factors that are generally considered when assessing the likelihood of confusion with a potentially conflicting third-party trademark. Some important factors to assess with regard to a potentially conflicting mark’s use are: The length of time the third party mark has been in use The goods or services for which the mark is used The representative consumer of the good or service The price point of the good or service Finally, one other important factor to assess is the third party’s history of trademark enforcement—If the third party has a history of active litigation regarding trademark infringement or unfair competition, you may really want to think twice before pursuing a mark that could potentially conflict or be confused with that mark. Because basic internet searches may not be sufficient to determine the information needed to fully assess the use of a third party’s mark, it may be advisable to engage a trademark investigator to do the job—those do exist. And, as always, please consult a trademark attorney if you’re interested in protecting your image or brand or you find this discussion murky and...

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Trademarks 101 PART 4: Avoiding Mistakes–Don’t Ignore Abandoned Applications or Cancelled Registrations

Posted by on Nov 1, 2013 in Intellectual Property

Here’s another mistake startups and entrepreneurs make when it comes to protecting their brand or image: Even if they’re trying to go through the trademark process and conduct searches, many startups and entrepreneurs mistakenly assume that they shouldn’t worry about applications that have been abandoned or trademarks that are the subject of cancelled registrations. The thing to remember is: Although a trademark registration is cancelled or an application is abandoned, there is still the possibility that the underlying trademark may be in use and/or that the owner of the underlying trademark may have common law rights in the mark. Ignoring those applications and registrations can be a huge mistake if the mark is in use or if the trademark has not been officially and legally abandoned (e.g. the use has stopped temporarily). There are many reasons why a trademark registration may be cancelled or an application abandoned which have nothing to do with whether the trademark is in use. For example, docket failures and failures to overcome USPTO office actions are reasons a trademark registration may be cancelled or an application abandoned. Therefore, if you’ve conducted a trademark search and you come across an abandoned application or cancelled registration for a mark that is similar to the mark you want to use and the mark is for a related good or service, you will probably want to conduct further investigations to determine whether the mark is still in use and, if the mark is no longer in use, to determine when the use stopped and whether the owner has plans to pick the use back up again. If you have questions concerning your brand, image or trademark search, please contact a trademark...

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Trademarks 101 PART 3: Avoiding Common Mistakes– Preliminary Searches

Posted by on Oct 21, 2013 in Intellectual Property

We’ve been discussing common mistakes small businesses and entrepreneurs make when dealing with their brand, mark or image. Last week we discussed that one common mistake is that people fail to properly conduct a trademark search. Trademark searches can either be preliminary trademark searches or they can be full trademark searches. Today we’ll discuss preliminary trademark searches. PRELIMINARY TRADEMARK SEARCHES Preliminary trademark searches generally involve searches conducted for free on the internet and the U.S. Patent and Trademark Office (USPTO) database (using the Trademark Electronic Search System (TESS)) to see if there are any direct conflicts. If one of these searches identifies a direct conflict, it either means that the potential mark is either unavailable or will only become available if additional acts are taken to obtain clearance (e.g. purchasing conflicting rights). Depending on time and budget constraints, taking such clearance actions may not be a realistic option–especially for a small company or entrepreneur. A USPTO search will typically pull up existing federal applications or registrations for marks that are identical to or applicable to products or services which are closely related or identical. While USPTO searches are useful as a preliminary search, they are not good enough to completely clear a proposed mark for full registration. Limitations on USPTO searches are: The USPTO database only includes federal trademark applications and registrations. The USPTO database does not include common law marks. A USPTO search may not reveal applications or registrations for marks that may be similar enough to cause consumer confusion although they are not identical, nor do they appear to have a direct conflict. Thus, if you have a brand, mark or image you would like to protect by obtaining a trademark, it is probably not a good idea to rely solely on a USPTO or general internet search unless: You intend to use your mark in a limited manner for a short period of time or Your mark is so descriptive and distinct that it would be extremely unlikely for a third-party to have conflicting rights that would be enforceable. If you are interested in learning more about how you can protect your brand, please consult a trademark...

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