Shout It From the Rooftops: The Ins and Outs of Patent Marking
Why Patent Marking? A patent owner may recover monetary damages for up to six years of retroactive patent infringement. However, subject to certain exceptions described below, damages do not begin to accrue until the alleged infringer has been given notice that it is infringing a particular patent. When a patented “article” (i.e., a product) is properly marked, alleged infringers are deemed to have “constructive notice” of the patent owner’s rights and can be held liable for damages from the date the infringement begins even if they do not have “actual notice” of the patent owner’s rights. On the other hand, if the patent owner fails to mark its patented articles, monetary damages begin to accrue only after the alleged infringer has received actual notice (e.g., via a cease and desist letter) of the patent owner’s rights, which could be years after the infringement began. For this reason, in many cases, without proper patent marking, the costs of litigation can outweigh the recoverable monetary damages. However, if the asserted patent only covers methods or if the patent owner never made, sold, or offered to sell a patented article, there is no marking obligation since there was nothing to mark. Thus, to maximize the potential monetary recovery for infringement, patented articles should always include an appropriate marking to show that those articles are patent protected. Articles may be marked “patent pending” once a patent application (i.e., a provisional or non-provisional patent application) covering that article has been filed. “Patent pending” does not provide any legal protection for the invention or impact potential monetary damage awards. However, it can deter competitors from copying a design that could potentially expose them to patent infringement liability. Many inventors file provisional patent applications and mark their articles “patent pending” with no intention of filing or prosecuting a corresponding non-provisional patent application. They might employ this strategy to attract customers and investment and deter competition without the (often) significantly higher costs associated with the preparation and examination of a non-provisional patent application. How to Mark Your Articles There are two options for properly marking patented articles: traditional and virtual. In either case, it is essential that “substantially all” patented articles (i.e., at least 65%, in some cases) be marked with the patent number, consistently and continuously. 1. Traditional Patent Marking Traditional patent marking requires that a marking be applied to the article itself or applied to the packaging if the article itself cannot be marked. The marking must include either the word “Patent” or the abbreviation “Pat.” followed by the relevant patent number(s). Below is an example tag that might be placed onto a patented article: The patent owner has an obligation to mark (and not to mismark) the patented article with only the patent number(s) that cover the article and to update all patent markings when the patent status changes (or to require its manufacturers, licensees, etc. to do so). For example, the marking must be updated to replace “patent pending” with the newly-issued patent number(s) or to remove “patent pending” if the application is abandoned. Failure to correctly mark patented articles or failure to update those markings could make the patent owner liable for “false marking.” 2. Virtual Patent Marking Alternatively, patented articles may include “virtual” markings that consist of the word “Patent” or “Pat.” followed by the URL of a website that lists the relevant patent(s) for those articles. Advantages of a virtual marking are that the same marking may be applied to all articles. That marking never changes, and, therefore, the manufacturing and assembly processes never change. Additionally, updating the patent notice on the corresponding website is fast and...
Read MoreTop Cybersecurity FAQs: Startups and Emerging Businesses
Q: Does my business need cybersecurity insurance? Due to the high level of cyber risk in today’s business environment and exclusions for cyber events in other types of insurance policies, most businesses need cyber liability insurance coverage. However, the terms and exclusions contained within cyber insurance policies vary widely, so businesses should select and review cyber policies carefully. Obtaining legal assistance in assessing policy terms is recommended to ensure the policy adequately addresses risks unique to the business. Furthermore, startups and emerging businesses should pay attention to exclusions, such as coverage exclusions for failure to obtain minimum security standards, to ensure that they do not fail to adopt necessary cybersecurity measures and thereby undermine the coverage they have purchased. Q: How do I put a cybersecurity policy in place? A cybersecurity policy should be specific to your business and may vary depending on your industry and the information your business collects. It is important to first assess your overall compliance and conduct a security audit of your IT assets and practices, as well as develop a thorough understanding of the data your business collects and stores. A cybersecurity policy should inform company employees and contractors of their requirements in protecting the IT assets of the company and identifying the primary threats to those assets. A policy will outline acceptable use of the company’s IT assets, including protocols related to password management, secure file transfers, software updates, malware scans, use of social media and privacy settings, and other security guidelines designed to protect your business from cyberattacks. Q: What are the best methods for protecting my business against ransomware attacks? Ransomware attacks are often delivered through phishing emails that appear as if they were sent from legitimate sources. Such phishing schemes are growing more sophisticated, and it is more important than ever to routinely train your employees and independent contractors on how to spot these and other cybersecurity threats. Businesses should implement mandatory trainings throughout the year (or on an annual basis at minimum) and follow such trainings with phishing simulations to test real-world response. Businesses can protect against the impact of interruption from a ransomware attack by regularly performing backups of their systems and important files. Backups should be stored separately so they cannot be accessed on the main system network. Q: What are some best practices to share with our team? There are several best practices that can be used as preventative measures when it comes to cybersecurity and attacks. The tactics below could make a huge difference. Install internal and external firewalls to protect your network systems, invest in antivirus and malware software, and regularly backup all data. Educate your employees on security protocols and how to recognize phishing emails and suspicious or unknown links. Require strong passwords for network access and mandate that employees change their passwords on a regular basis. Use multi-factor authentication for accessing sensitive networks or systems. Q: What is an incident response plan and tabletop exercise? An incident response plan is a game plan created to guide your organization in detecting, responding to, and recovering from cyber incidents. An incident response plan is necessary to help businesses quickly identify the individuals who need to be involved in incident evaluation and response, the issues they need to consider, and the steps that they need to take. The goal, of course, is to avoid lost time and critical missteps while making an organization’s recovery as smooth as possible. A tabletop exercise is an attempt to test the incident response plan and readiness by walking through a cyber event hypothetical. An organization’s team will consider...
Read MoreYou May Need Some Legal Advice—7 Reasons Why Seeking Legal Advice Now Will Benefit Your Startup in the Future
So, you’ve decided to start a business. You may be wondering, is it really necessary to consult with an attorney right now? The answer—it all depends on the nature of your business and how much risk you are willing to take. Small legal mistakes when establishing your startup have the potential to affect your business’ success and cost you and your startup financially in the future. We understand that hiring an attorney is daunting for a new business operating on a limited budget. However, there are a few business areas for which you should consider seeking legal advice early on in the life of your startup. 7 Reasons Startups Should Seek Legal Advice Now for Future Benefit: Entity Formation: There are many different legal entity forms a startup may take—a sole proprietorship, general partnership, joint venture, limited partnership, corporation, or limited liability company. Each has pros and cons and different tax implications. Picking the right form for your startup has liability, legal, tax, and financial implications. While information on entity formation is available through the U.S. Small Business Administration and other resources, an attorney can advise you on which business structure is best based on your business plan and goals, as well as your personal liability and tax expectations. Structuring Ownership, Control, and Responsibilities: If your startup has more than one owner, it is recommended that your startup have certain agreements prepared that outline the relationship between the owners—such as who has what responsibilities, who has the power to make certain decisions, each owners’ financial interest in the startup, and how to handle ownership termination. These agreements often take the form of operating agreements and buy-sell agreements for LLCs, or bylaws, restricted stock purchase agreements, and shareholder agreements for corporations. Ultimately, formal owner agreements help prevent future disputes and the need to hire a lawyer to resolve such disputes. Although such agreements may not seem like a priority in the early stages of your startup, they can be key to the future stability and security of your business. Additionally, these agreements are often easier to negotiate and prepare during the honeymoon phase of your startup, rather than down the road when money and emotions are involved. Conducting Business Through a Website: If your startup conducts any business online, it is going to need a Privacy Policy and a Terms of Use Agreement. A Privacy Policy is a legal statement on a website that describes how personal data collected from users and customers of the website will be used. A Terms of Use Agreement is a policy on a website that describes the terms and conditions of users’ use of the website. Beware of blindly copying policies from other websites that offer similar services to your startup—often, policies are tailored to a specific business and will not provide you with adequate protection. An attorney can produce a custom Privacy Policy and Terms of Use Agreement for your website that provides you with the specific liability protection your startup needs. Regulatory Compliance: Depending on the character of your startup’s business, you may be subject to state and federal regulations. An attorney can advise you on which regulations your startup is subject to and the steps your startup must take for compliance. Protecting Your Startup’s Brand: Whether you plan to grow your company on a local, national, or international scale, you will want to ensure that your startup’s brand is protected. By acquiring a trademark in your startup’s name and logo, you can prevent other companies from using your name or branding (or a confusingly similar name or branding) for similar products and services within a...
Read MoreFIELDS & FENCES: A Metaphor For Understanding Patents
One day, you are walking outside and come across a field. It is wide open and beautiful with rolling hills, trees, and ponds (and maybe even oil and diamonds). You look around, and there is no one in sight. For some reason, either no one has ever discovered this place before, or if they had, they never claimed it for themselves. So, like any entrepreneur, you want to claim it as your own. You ask yourself… How do I protect this? At this point, it is just an empty field. There is nothing to identify exactly what you are claiming or how much of it is yours. Worse yet, there is nothing to keep that pesky guy on the other side of the hill from claiming ownership. The fix? A fence. You bring a fence-building friend out to the property, and he is impressed. He agrees to build a fence for your property on two conditions. First, you have to show him and the rest of the world your discovery to prove that it is new and that no one else has claimed it before. Second, you can only keep the property fenced and others off it for a limited amount of time. Afterwards, you have to let others enjoy and use the field too. You think the tradeoff is fair and agree to his conditions. Your friend builds a fence that defines exactly what is and is not yours. Once the fence is built, your friend leaves and you are left alone to enjoy your new property. You are an expert marketer and salesman, and you make a small fortune by charging others to come and enjoy your land. Addressing the intruders… Unfortunately, the guy next door and his friends are persistent. They start trespassing on your property without paying or permission, even though you have it fenced! So, what do you do now? Your fence-building friend is gone and can’t help. And, besides, he is in the fence building business and not the trespasser removal business. It’s your property, which means that it is all up to you to (1) find the trespassers and (2) kick them out. So, you do just that, and once they’re gone, you go on making money and enjoying life in peace. After some time, your fence-building friend reminds you that you have to maintain the fence or it will come down. If you want to maintain the fence, you have to go to your friend and ask for him to do what is necessary to keep it in good shape (for a fee, of course). Otherwise, if you have lost interest in the fence, if you’re tired of extracting trespassing neighbors, or if your limited amount of time is up, no maintenance is needed and your friend will take the fence down so that others can freely enjoy the field (as was promised). Then, you are off to discover the next field… Is it time for you to build a fence? Like the field, inventions can be discovered by more than one inventor. However, only the first inventor to claim (or fence in) the invention in a patent application gets to own the rights to it. In the U.S., those fences (patents) are granted by our fence-building friend, the U.S. Patent Office (USPTO). Patents are awarded only for new discoveries by inventors. They give the inventor the exclusive right to exploit those discoveries for a limited amount of time. Like the fence, a patent defines the scope of an invention, including what it does and does not cover. A patent gives...
Read MoreFILE PATENTS NOW, Sell Later – The On-Sale Bar is Alive and Kicking!
As you have probably heard us say more than once, you need to file a patent application BEFORE you sell or offer to sell your invention. Under the America Invents Act (“AIA”), if you sell or offer to sell your invention before filing a patent application, you are not entitled to patent rights in the United States. This rule of law is commonly referred to as the “on-sale bar.” A 2017 Federal Circuit Court decision affirmed the broad scope and drastic consequences of the “on-sale bar.” In Helsinn v. Teva, the Court considered four patents relating to a drug that helps reduce the side effects of chemotherapy. Two years prior to filing any patent applications, Helsinn agreed to supply a company with the subject matter of the patents. This sale was announced in a joint press release and in SEC filings, but the exact details of the invention were not disclosed to the public. After Helsinn sued Teva for infringement of various claims of those patents, Teva argued that the patents were invalid because of the prior sale. The Supreme Court agreed and found that the press release barred patentability, despite the fact that it did not disclose the details of the invention. The Helsinn decision stands as a not-so-gentle reminder that any sale or any offer to sell an invention prior to filing a patent application is a disqualifier, even if the sale or offer to sell does not disclose the details of the invention. Bottom-line – Do not sell or offer to sell your invention before you file a patent...
Read MoreUSPTO No Longer Refuses “Disparaging” Trademarks
You’ve probably heard about the trademark dispute between a group of Native Americans and the Washington Redskins. For years the validity of certain Redskins’ trademark registrations has been challenged under a federal law that prevents the registration of disparaging trademarks. In 2014, six of the Washington Redskin’s trademark registrations were cancelled by the U.S. Patent and Trademark Office (USPTO). Then came The Slants, a band of Asian musicians. The band applied to register its name as a trademark. The trademark application was refused by the USPTO for being disparaging to Asians, and the band sued to appeal the decision of the USPTO. According to the band, they chose their name to “reclaim the term and drain its denigrating force as a derogatory term for Asian persons.” They also argued that the federal law preventing the registration of disparaging trademarks violated its First Amendment freedom of speech. The U.S. Supreme Court agreed and held that the law was unconstitutional. Since the decision in favor of The Slants, the Redskins’ six previously-cancelled registrations have been revived. Bottom-line – The USPTO will no longer solely refuse a trademark registration on the basis that it is...
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