April 2008

Filing Requirements for Patents

To obtain a patent, an inventor must file an application in the United States Patent and Trademark Office (USPTO). Inventors may apply for one of two types of patent applications: (1) a non-provisional application, which begins the examination process and may lead to a patent and (2) a provisional application, which establishes a filing date but does not begin the examination process. Both types of patent applications can be filed either electronically or in writing to the Commissioner for Patents. If the examiner rejects the claims, the applicant may seek review within the USPTO and in the courts. For applications filed after June 8, 1995, utility and plant patents are granted for a term of 20 years. Design patents last 14 years from the date an applicant is granted the patent.
The first step in the process of securing a patent is filing in the USPTO a complete application consisting of a petition, specification, drawings where necessary, an inventor oath or declaration, and a filing fee. The USPTO holds applications, both pending and abandoned, in confidence.
Required Fees
The Patent Act and USPTO rules impose many fees, including fees for filing a patent application (filing fees), fees for taking certain steps in the course of prosecuting an application (processing fees), fees for obtaining issuance of the patent (issue fees), and fees for maintaining a patent in force (maintenance fees).
The Applicant
The application for a patent is to be made, or authorized to be made, by the actual inventor or inventors. The patent statutes provide for application by someone other than the actual inventor in the following three instances:
1. Fewer than all the joint inventors of a joint invention may apply if a joint inventor refuses to apply or cannot be found or reached after diligent effort.
2. The legal representative of deceased inventors and inventors under legal incapacity may apply.
3. A person to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary interest in the matter may apply when the inventor refuses to apply, or cannot be found or reached after diligent effort, on a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage.
Filing Date
A patent application’s exact filing date is often of critical importance. Under USPTO rules, an application is accepted and given a filing date only when it is complete, but certain minor exceptions can be made to this rule. For example, an applicant may obtain a filing date by submitting only the patent specification and the required drawing. The fee and oath may be submitted later, but the payment of an additional charge on the filing fee would be required.
Within the USPTO, an Application Division assigns applications to the respective examining groups to which the applications relate. An individual patent examiner conducts the actual examination of the application. The examiner studies the application for compliance with statutes and rules and conducts a search of the prior art to determine the novelty and nonobviousness of the invention as claimed. After examination, the examiner notifies the applicant of his or her action.
Amendments to Applications
An applicant may amend an application’s specification or drawings after the application is filed, but a long-standing rule prohibits insertion of ”new matter” into an application.
Late Claiming
Generally, an applicant may amend the claims originally presented by canceling particular claims, by presenting new claims or by rewriting particular claims. The new claim must be ”supported” by the original disclosure in the sense that it complies with the enablement and description requirements. If such a claim is not so supported, then it is rejected for noncompliance with those requirements.
An applicant can appeal an examiner’s claim rejection by going to the USPTO’s Board of Patent Appeals and Interferences. The Board may affirm or reverse the examiner’s action and may enter a new ground of rejection. The applicant may then either appeal on the record to the Court of Appeals for the Federal Circuit or file a civil suit to obtain a patent against the Commissioner in the District Court for the District of Columbia.
An applicant may not appeal an examiner’s objection or requirement but may petition the Commissioner to review these actions. The applicant may seek judicial review under a writ of mandamus and the Administrative Procedure Act. After a second or final rejection, an applicant may appeal within the USPTO to the Board of Patent Appeals and Interferences.
Post-Allowance Procedures
After the USPTO determines an applicant is entitled to a patent under the law as to the claimed subject matter, it sends the applicant a notice of allowance of the application. If the applicant pays the prescribed issue fee, the USPTO issues a patent.

Business Methods As Patents

It was the growing use of computers in business that forced the courts to decide once and for all in 1998 whether business methods could be patented, and indeed, many patented business methods involve the use of computers to do business on the Internet, sometimes referred to as “e-commerce.” The aftermath of the 1998 court decision was a flood of business-method and e-commerce patent applications, which quickly created problems for the United States Patent and Trademark Office (USPTO). If an invention has been used in commerce or described in literature for more than a year before a patent application for that invention is filed, it cannot be patented because under the rules of the USPTO, the invention is no longer new. Because of the vast amount of literature that might reveal that an invention is not new (called the “prior art”), it was very difficult for patent examiners, particularly those not well versed in computer technologies, to review all of the prior art to determine whether an invention was in fact new, particularly in a field that is experiencing such rapid change and progress. Accordingly, the USPTO has been widely criticized for issuing business-method and e-commerce patents for business methods that have already been in extensive use or that are obvious extensions of existing business methods, forcing the USPTO to adjust to a rapidly evolving patent landscape.
In 2000, the USPTO responded to the concerns of the business community by announcing an action plan for business-method and e-commerce patents. In the plan, the USPTO sought to establish formal customer partnerships with the software, Internet, and e-commerce industries; provide a forum to discuss concerns and issues presented by e-commerce patents and their possible solutions; and solicit industry input in identifying sources of prior art. The USPTO also sought to enhance the quality of its review of prior art by providing additional technical training for patent examiners, revising the examination guidelines for computer-related inventions, and expanding the scope of prior art search into additional databases. In addition, the USPTO has instituted a second level of review for business-method and e-commerce patent applications.
Presently, the USPTO maintains a separate Web site for business methods that reflects its efforts to improve its approach to the review of business-method and e-commerce patent applications. The Web site contains links for industry partnership meeting newsletters, questions and answers from a business partnership meeting, guidance for preparing a business-method patent application, examples of business-method patent rejections, training materials for computer-implemented inventions, business-method white papers, and other resources that specifically address business-method patents.

Trademarks and Secondary Meaning

To be treated as a trademark a mark must have a certain quantity of distinctiveness. A mark that is not inherently distinctive is entitled to legal protection only if the mark acquires a secondary meaning that distinguishes the goods/services it represents from the goods/services of another. A descriptive mark that is initially unregistrable may achieve trademark status and be subject to registration after sufficient use has been made to prove secondary meaning.
Secondary meaning arises when consumers have come to identify a trademark with its source over time. Acquired distinctiveness and secondary meaning are different terms for the same thing. This distinctiveness can be inherent (inherent distinctiveness) in the mark or it can be developed in the minds of the consumers (acquired distinctiveness). Acquired distinctiveness may be thought of as consumer recognition of the trademark as an identifier of source, sponsorship, affiliation, or other business relationship.
Establishing Secondary Meaning
Evidence may need to be gathered in order to meet the threshold required to establish secondary meaning. The evidence may consist of advertising and sales volume or consumer surveys. Secondary meaning attaches to a trademark when a majority of the public considers a term or logo to be an indicator of source and quality of a product, rather than merely descriptive of that product. Secondary meaning develops after long, continuous and exclusive use. It takes significant amounts of advertising and promotion to develop and maintain public awareness of brand or trademark identity in a descriptive mark.

Protection Against Other Users of Confusingly Similar Marks

Proof that a descriptive mark has acquired secondary meaning will not automatically confer protection against other users of confusingly similar marks. Instead, the plaintiff must also demonstrate that its mark acquired secondary meaning prior to the other’s first use. The rationale for this is that a descriptive mark without secondary meaning does not designate source. If the senior user cannot demonstrate that its mark had acquired secondary meaning prior to the junior user’s first use, then the senior user cannot prove any infringement because there was no likelihood of confusion when the junior user began using a similar mark. However, a plaintiff may not have to prove that its mark acquired secondary meaning prior to an infringer’s first use in each and every geographical pocket if the plaintiff can demonstrate that its mark acquired secondary meaning nationally among a substantial portion of consumers and that the junior user was aware of the senior user’s mark.
If matter is inherently distinctive as a trademark, it is registrable on the Principal Register without evidence that it is recognized as a mark. If not inherently distinctive, a mark may be registered on the Principal Register only upon proof of acquired distinctiveness or secondary meaning. If the applicant establishes, to the satisfaction of the examining attorney, that the matter in question has acquired distinctiveness as a mark in relation to the named goods or services in commerce, then the matter in question is registrable on the Principal Register pursuant to the Lanham Act.

Expert Testimony in Trademark Infringement Actions

There are standards that must be met for admissibility of expert testimony in trademark infringement actions. Experts may have their methods challenged before they take the stand. Expert testimony may be excluded as speculative and unreliable if an expert’s methods are not based on sufficient facts or data, are not reliable, or are not applied reliably to the facts of the case.
The trial court judge acts as a “gatekeeper” to ensure that any and all scientific testimony or evidence admitted is not only relevant, but reliable. Every expert is subject to a reliability test. Courts analyze expert testimony using the following five, non-exclusive factors in order to determine whether an expert’s reasoning and methodology are reliable:
1. whether the theory or technique on which the expert relies has been tested;
2. whether the theory or technique has been subject to peer review and publication;
3. the known or potential rate of error of the technique or theory when applied;
4. the existence and maintenance of standards controlling the technique’s operation; and
5. whether the theory or method has been generally accepted by the expert community.

Appellate courts review how the trial court judge tests an expert’s reliability under the abuse of discretion standard, which is the same standard used to review the admission or exclusion of expert testimony. When seeking expert testimony, it is critical that the expert’s credentials and methodology be sufficient to withstand court scrutiny.

Federal Unfair Competition Law

The law of unfair competition is primarily composed of torts that cause an economic injury to a business through a deceptive or wrongful business practice. Unfair competition consists of two broad categories. First, the term “unfair competition” is sometimes used to refer only to those torts that are meant to confuse consumers as to the source of the product. The other category, “unfair trade practices,” comprises all other forms of unfair competition.

What constitutes an “unfair” act varies with the context of the business, the action being examined, and the facts of the individual case. Trademark infringement is the most familiar example of unfair competition. Another common form of unfair competition is misappropriation. This involves the unauthorized use of an intangible assets not protected by trademark or copyright laws. False advertising, “bait and switch” selling tactics, unauthorized substitution of one brand of goods for another, use of confidential information by former employees to solicit customers, theft of trade secrets, breach of a restrictive covenant, trade libel, and false representation of products or services are also considered unfair competition.

State vs. federal law
The law of unfair competition is mainly governed by state common law, but a few states have enacted legislation dealing specifically with certain types of unfair competition. In the areas of trademarks, copyrights, and false advertising, federal law may apply. The Federal Trade Commission (FTC) was established by Congress in part to protect consumers from deceptive trade practices. If there is a conflict between federal and state law, the state law may be preempted.

Section 43(a) of the Lanham Act created a federal law of unfair competition addressed to a wide variety of wrongful acts. Congress amended the section in the Trademark Law Revision Act of 1988 to codify two decades of court decisions interpreting the original section and to broaden its scope with respect to liability for false advertising. The amendment was designed not to freeze the scope of the section but to allow and encourage the courts to deal effectively with new kinds of unfair competition that fall within its broad applicability.