October 2005

Beware of Provisional Patents aka Incomplete Patents

An ordinary patent application that is filed with the United States Patent and Trademark Office (USPTO) is referred to as a “non-provisional” application to distinguish it from a “provisional” application. A “provisional” patent application is commonly referred to as an incomplete application. The provisional application was created to help eliminate a disadvantage to U.S. inventors is filing patent applications when compared to non U.S. inventors filing abroad. A provisional application is essentially a patent application whose purpose is to establish a filing date and which must be completed within a year of its filing. However, many inventors believe that they can file an incomplete application without many of the formalities of the complete application and still obtain the benifit of the earlier filing date when filing their complete applicaiton. The non-provisional application is a complete patent application, and must include a specification, a claim or claims, any necessary drawings, an oath or declaration, and the patent application filing fee. A complete patent application is only entitled to the benifit of an earlier filed incomplete patent if the earlier filed patent discloses what is later claimed. Therefore, when drafting a provisional patent application consideration must be must be given to the formalities of the complete or non-provisional application.


The specification is a written description of the invention and is required to be sufficiently “full, clear, concise, and exact” so as to enable a person skilled in the field to which the invention belongs to make and use the invention. The specification is required to describe the exact invention for which a patent is sought in a way that distinguishes it from existing inventions. It also must completely describe a specific embodiment of the invention, detailing the specific parts and how they go together, and the best mode of carrying out the invention. The USPTO requires the following sections in a specification:

  • the title of the invention;
  • a cross-reference to related applications, if any;
  • a statement of federally sponsored research and development, if any;
  • a reference to a DNA sequence listing, computer program, table, or other information submitted on a compact disc;
  • a description of the background of the invention;
  • a brief summary of the invention;
  • a brief description of the drawings, if any;
  • a detailed description of the invention;
  • the claim or claims;
  • an abstract of the disclosure; and
  • a DNA sequence listing, if applicable.


The patent claims are the specific aspects of the invention for which patent protection is sought and define the scope of protection provided by an issued patent. Multiple claims may be included within the same application, and may be independent or may be dependent upon other claims.


Drawings must be included in a patent application whenever they are necessary to understand the invention. Drawings are generally necessary in all applications except those for compositions of matter or processes and may be included in applications for other types of inventions if they are helpful. The drawings that are included in the application specification must show every feature of the invention as specified in the claims. The USPTO’s requirements and specifications for patent application drawings are lengthy and detailed.


The oath or declaration is a statement by the inventor that he or she is the original and first inventor of the invention for which patent protection is sought, along with other miscellaneous statements. An oath must be sworn to before a notary public; however, a declaration, which may be given in lieu of an oath, need not be notarized. The oath or declaration must be signed by the inventor or other person who is legally authorized to make an application on the inventor’s behalf.


Patent filing fees consist of a basic fee and additional fees. The basic fee covers up to 20 claims, not more than three of which may be independent claims. Additional fees are required for each independent claim in excess of three and for each claim in excess of 20 total claims. Small entities such as independent inventors, a small business, or non-profit organization are entitled to a 50 percent reduction in the filing fee if they successfully file for small-entity status.

First to Invent = US, First to File = Others


One of the basic requirements for obtaining a patent is that the invention must be new. If the same invention has been patented before, or even written about or used for a certain amount of time before a patent is applied for, it will not be eligible for a patent.

Sometimes, two or more inventors seek to patent the same invention at the same time, or an inventor will apply for a patent for an invention that is already patented. In such a case, because the invention may only be the subject of one patent, the United States Patent and Trademark Office (USPTO- will determine who was the first inventor, and thus who is entitled to the patent, by way of a proceeding called an “interference.” In the case of applicants, the need for an interference may be determined by the USPTO itself, or it may be requested by one of the applicants. In addition, if an applicant believes that he or she is entitled to a patent that has been granted to another inventor, the applicant may request an interference. In requesting an interference, such an applicant must submit evidence that provides an initial showing that the applicant is entitled to the patent notwithstanding its prior issue to another inventor. An interference is not available after one year has passed since the filing of the earliest of the conflicting applications or the issuance of the existing patent, whichever the case.


Interferences are decided by the U.S. Patent and Trademark Office’s Board of Patent Appeals and Interferences (BPAI). The USPTO has no jurisdiction over disputes between patentees; thus, at least one of the parties to an interference must be a patent applicant. The determination of who is entitled to the disputed patent will depend on the evidence submitted in support of each applicant or patentee’s claim. The BPAI will attempt to determine when each party conceived of the invention as it would actually take form and when each party actually created a physical embodiment of the invention, whether it be a machine, a process, a material or other patentable item. Actually creating the subject of the patent is called reducing the invention to practice. The law treats a proper patent application that fully describes the invention as the legal equivalent of reducing the invention to physical form, so in the absence of evidence of earlier reduction to practice, the application date will be considered the date of reduction to practice.

Generally, the inventor who conceived of the invention and reduced it to practice first will be found to be entitled to the patent. However, it is possible that an inventor could conceive of an invention first but be the second to reduce it to practice. Because the primary objective of patent law is the advancement of science and technology rather than rewarding inventors, and because patent law is designed to encourage disclosure of inventions for the benefit of public knowledge in a timely manner, whether such an inventor will be found to be entitled to the patent depends on whether that inventor was reasonably diligent in transforming the conceived invention to a working machine or process or finished material. If a lack of diligence is found–for example, if it is clear that the first inventor to conceive of the invention made an effort to conceal the invention–it is possible that the inventor who conceived of the invention later but diligently worked to create a finished product will be entitled to the patent.

Dilution of Trademarks = Trademark Infringement

A trademark is infringed when a mark or a similar mark is used in a way that is likely to confuse the public into believing that the trademark owner is the source or sponsor of products that it does not actually make or endorse. Trademark anti-dilution laws are intended to enable trademark owners to prevent the gradual weakening or whittling away of the strength of their marks even if the public is not likely to be confused. Until 1996, trademark dilution laws consisted of a patchwork of non-uniform state statutes and common law. In early 1996, Congress enacted the Federal Trademark Dilution Act (FTDA) to provide nationwide injunctive relief for diluting uses of nationally famous trademarks.

Federal Trademark Dilution Act

The Federal Trademark Dilution Act (FTDA) became law in 1995. The new statute amends the Lanham Act to provide a federal remedy for dilution. State law is not preempted. In fact, the laws of many states go farther in granting more protection than that provided in the federal statute. Although many states had enacted laws that prohibited trademark dilution, the FTDA was intended to provide uniform and nationwide protection for famous marks. “Dilution” is defined in the FTDA as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.” Prior to the enactment of the FTDA, courts found that dilution could occur as a result of either “blurring” or “tarnishment.” Both of these concepts are encompassed within the FTDA. The FTDA applies only to famous marks.

Famous Marks

In determining whether a mark is famous a court may consider the following non-exclusive factors:

  • the degree of inherent or acquired distinctiveness of the mark;
  • the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
  • the duration and extent of advertising and publicity of the mark;
  • the geographical extent of the trading area in which the mark is used;
  • the channels of trade for the goods or services with which the mark is used;
  • the degree of recognition of the mark in the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought;
  • the nature and extent of use of the same or similar marks by third parties; and
  • whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.


“Blurring” typically refers to the “whittling away” of distinctiveness caused by the unauthorized use of a mark on dissimilar products. Dilution by blurring can occur when a trademark is used by someone other than the trademark owner on products that are very different from those normally produced by the trademark owner


“Tarnishment” involves the unauthorized use of a mark which links it to products that are of poor quality or which are portrayed in an unwholesome or unsavory context that is likely to reflect adversely upon the owner’s product.

Remedy – Injunctive Relief

Generally, only injunctive relief is available under the FTDA. However, if the defendant willfully intended to trade on the owner’s reputation or to cause dilution of the famous mark, the owner of that mark may also be entitled to other remedies, including defendant’s profits, damages, attorneys’ fees and destruction of the infringing goods. The availability of monetary relief is a striking departure from state dilution laws, which have typically provided only for injunctive relief. Additionally, the FTDA provides that the ownership of a valid federal registration is a complete bar to the assertion of a dilution claim under state law.

The FTDA allows injunctive relief to owners of famous marks against another’s use of the mark if:

  • the use of the mark is commercial,
  • the use began after the senior mark became famous, and
  • the use dilutes the distinctive quality of the mark.

Defenses to Allegations of Dilution

The following are not actionable under the FTDA:

  • fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark
  • noncommercial use of a mark
  • all forms of news reporting and news commentary

State Dilution Laws

More than half of the states afford protection from trademark dilution through statutory or case law. The FTDA expressly states that the federal statute does not preempt state dilution laws. Where the federal statute provides protection for dilution of nationally famous marks, state statutes seek to protect interests of a more local nature. Courts have acknowledged that trademarks need not be nationally famous for a mark to be strong in a particular geographic region or industry segments. In addition, whereas the FTDA requires actual dilution, state laws sometimes require only a showing of likelihood of dilution to grant injunctive relief.

Dilution in the United States Patent and Trademark Office

Although the FTDA became effective in 1996, it was not until 1999 that dilution became a basis on which an application or registration of a mark could be challenged in a U.S. Patent and Trademark Office opposition or cancellation proceeding. It still is not a basis on which an examiner can reject an application during an ex parte examination.

Available Damages for Trademark Infringement

The monetary remedies available in trademark infringement actions vary depending on the specifics of the case, but in general, are based on the actual damages suffered by a trademark owner. One consideration in evaluating damages includes whether the Mark has been registered and whether proper notice has been provided. The damages may include profits lost to the infringing activity and may be trebled where the infringement was intentional.

Ways to Measure Monetary Recovery

There are at least five ways of measuring monetary recovery in trademark infringement cases. They include the following:

  • An award measured by the defendant’s profits, either as a way of measuring the plaintiff’s loss or under an unjust enrichment theory;
  • An award measured by actual business damages and losses caused by the wrong;
  • An award measured by the plaintiff’s own loss of profits caused by the wrong;
  • An award of punitive damages for the purpose of punishing the defendant; and
  • An award of reasonable attorney’s fees incurred in the prosecution of the action.

Balancing of Factors to Determine Recovery

In any given case, a court may award one or more, or none, of the five types of recovery to the plaintiff. In deciding what type, if any, of monetary damages to award, courts have balanced several factors, such as whether defendant was willful, negligent, or innocent; whether plaintiff suffered losses in any provable amount; whether there is proof of actual confusion of some customers; and whether defendant realized profits from its infringing actions.

Injunctive Relief

In general, injunctive relief is generally granted upon a showing of a likelihood of confusion. To obtain a preliminary injunction, the trademark owner must make the usual showing for such relief: a likelihood of success on the merits and the irreparable injury that the owner would incur absent an injunction. In addition, courts compare the hardships imposed on the parties by or without an injunction as well as any public interest involved.

Lost Profits

To obtain an accounting of profits, the courts usually require that the defendant’s infringement imply “intent” or a knowing act denoting an intent to infringe or reap the harvest of another’s mark and advertising. However, the advice of counsel may sometimes assist the defendant in showing that it acted in good faith. Conversely, the failure to follow the advice of counsel may weigh as evidence of bad faith.

While proof of actual confusion is not needed to obtain an injunction, some courts have said that proof of some actual confusion is required for an accounting of profits. Under the federal Lanham Act, as well as the common law, it is the infringer’s burden to prove any proportion of his or her total profits which may not have been due to use of the infringing mark.

Actual Damages

In some cases a plaintiff may be awarded damages in addition to the defendant’s profits. But damages and profits cannot be awarded simultaneously if it would result in overcompensation. Courts require that recovery of damages requires proof that some consumers were actually confused or deceived, which may be proven with testimony of buyers or customer surveys.

Monetary relief is denied where an injunction will satisfy the equities of the case and where there has been no showing of fraud or palming off.

Increased Damages

The Lanham Act gives a court the discretionary power to increase damages up to treble damages and increase or decrease an award of profits by any amount if the court finds the profit recovery is “either inadequate or excessive.”

Punitive Damages

While the Lanham Act does not authorize an additional award of punitive damages for willful infringement of a registered trademark, punitive damages are still available for accompanying state,causes of action for trademark infringement.

In most jurisdictions, punitive damages are awarded only where the defendant’s conduct has been egregious. Evidence of the financial status of the defendant is relevant evidence from which the amount of punitive damages may be set. In most jurisdictions, punitive damages cannot be awarded unless there are some actual damages awarded, no matter how small.

Attorney Fees

The Lanham Act allows for an award of reasonable attorney fees to the prevailing party in exceptional cases. Exceptional cases are infringement cases where acts of infringement can be characterized as malicious, fraudulent, deliberate, or willful. Where there is proof of intentional infringement, as in a counterfeiting case, it is an abuse of discretion not to award attorney fees.

Most state jurisdictions do not generally allow for the recovery of attorney fees. Attorney fees may be awarded to prevailing plaintiff under a state law even in the absence of a finding that the case is “exceptional” under the federal Lanham Act. A state law permitting the recovery of attorney fees is not preempted by the Lanham Act.


Costs are not attorney fees as is usual in countries outside of the United States. Rather, they are for necessary expenses such as filing fees and court reporter fees. Courts must exercise their discretion sparingly in taxing as costs any expenses not specifically allowed in the statute. “Taxable costs” recoverable as of right are only those listed in the Federal Rules of Civil Procedure. Other expenses are allowable only in the discretion of the court where there is “aggravated” conduct such as “fraud.”

Counterfeiting Remedies

The Lanham Act provides for special monetary remedies for counterfeiting cases. Unless the court finds extenuating circumstances, treble damages or profits and a reasonable attorney fee award must be awarded to an infringed trademark owner if the defendant counterfeiter knew that the goods were counterfeit and intended to offer them for sale.

Siezure of Imported Goods

Many products sold in the United States are imported. Imported goods pass into the stream of commerce in the United States via a port of entry where the goods are subject to inspection by the United States Customs Service (Customs). U.S. businesses constantly face the problem of counterfeit or piratical imports coming into the country being sold at lower prices, which erodes profits and may even damage the reputation of their products in the marketplace. U.S. law protects intellectual property owners from such imports.

Owners of trademarks, trade names, and copyrights are legally entitled to “record” their marks, trade names and copyrights with Customs, provided they first take certain steps. Upon the recordation of a trademark, copyright, or trade name with Customs, Customs will detain, seize, and forfeit counterfeit, piratical, and infringing merchandise as well as notify the owner of record of the detention or seizure. Civil fines may also be imposed on importers of seized and forfeited goods.

‘Reasonable Suspicion’

The test for a Customs detention of suspect violative trademarked goods is only a “reasonable suspicion” that the goods bear a mark that violates a federally registered trademark. These goods may even be detained for a few days to enable Customs to determine if a “reasonable suspicion” exists.

The recordation process is simple and relatively inexpensive. With respect to copyrights, there must be a registered copyright with the United States Copyright Office or a foreign copyright protected under the Berne Convention. With respect to trademarks, there must be a registered trademark on the Principal Register of the United States Patent and Trademark Office (USPTO). Trademarks registered on the USPTO’s Supplemental Register and state trade or service mark registrations may not be recorded with Customs.

To obtain a recordation of a federally registered trademark or service mark with Customs, the owner obtains a certified copy of the trademark registration, writes a letter to Customs setting forth the information required by regulations, including who, if any, are the authorized users of the mark, and encloses a recordation fee for each class of trademarked goods to be recorded. The recordation of a trademark registered on the Principal Register of the USPTO with Customs is effective for 10 years and may be timely renewed for a lower recordation fee.