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New Rules Proposed on Gene Patenting

November 5, 2010 by · Comments Off
Filed under: law, Patent Articles 

The US Justice Department filed an Amicus Brief with the US Court of Appeals for the Federal Circuit that surprised many of the people that have been closely following the case (link to full brief here).  What surprised people was not that the brief was filed, but that it supported the party challenging the patents and goes against the policies of the US Patent and Trademark Office (USPTO) as well as decades of case law on the subject.

The Justice Department made the claim that human genes in their natural isolated state are unacceptable for patent protection because the genes are not human-made and thus are more akin to a discovery than an invention.  This brief has received its fair share of criticism.  While this will certainly have far-reaching effects on the bio-medical industry, it is not as far reaching as it may at first seem.  While the brief states that the Justice Department feels that patents shouldn’t be granted for isolated genes, many of the valuable patents dealing with genes actually refer to scientific processes or altered genes, which the Justice Department states should be able to receive patent protection.

Many of those who oppose the patenting of genes say that it will stifle the ability of new medical techniques, such as the ability of a person to have their personal genome read and reviewed for various diseases.  Proponents of gene patents claim that the ability to patent genes fosters innovation in the field by ensuring that those who do research will be compensated for their work.

Currently the USPTO is not following the opinion of the Justice Department as stated in their Amicus Brief, but with such a respected authority coming down on this side of the argument the industry is on very uncertain ground in their ability to receive patent protection in the coming years.

What is Intellectual Property? It is Imagination Made Real

It is imagination made real. It is the ownership of dream, an idea, an improvement, an emotion that we can touch, see, hear, and feel. It is an asset just like your home, your car, or your bank account.  Just like other kinds of property, intellectual property needs to be protected from unauthorized use. There are four ways to protect different types of intellectual property:

  • PATENTS provide rights for up to 20 years for inventions in three broad categories:
    • Utility patents protect useful processes, machines, articles of manufacture, and compositions of matter. Some examples: fiber optics, computer hardware, medications.
    • Design patents guard the unauthorized use of new, original, and ornamental designs for articles of manufacture. The look of an athletic shoe, a bicycle helmet, the Star Wars characters are all protected by design patents.
    • Plant patents are the way we protect invented or discovered, asexually reproduced plant varieties. Hybrid tea roses, Silver Queen corn, Better Boy tomatoes are all types of plant patents.
  • TRADEMARKS protect words, names, symbols, sounds, or colors that distinguish goods and services. Trademarks, unlike patents, can be renewed forever as long as they are being used in business. The roar of the MGM lion, the pink of the Owens-Corning insulation, and the shape of a Coca-Cola bottle are familiar trademarks.
  • COPYRIGHTS protect works of authorship, such as writings, music, and works of art that have been tangibly expressed. The Library of Congress registers copyrights which last the life of the author plus 70 years. Gone With The Wind (the book and the film), Beatles recordings, and video games are all works that are copyrighted.
  • TRADE SECRETS are information that companies keep secret to give them an advantage over their competitors. The formula for Coca-Cola is the most famous trade secret.
  • If you are an intellectual property owner, you should protect your rights. If you are a user, you should respect them. It is just as wrong to steal intellectual property as it is to break into a home, steal a car, or rob a bank.

Your Name as a Trademark–What You Need to Know

March 22, 2010 by · Comments Off
Filed under: Business, law, trademark, Trademark Articles 

As a general rule, the U.S. Patent and Trademark Office will refuse trademark registration under 15 U.S.C. 1052(e)(4) for a mark that is “primarily merely a surname”.  While this is the general rule, there is still some wiggle room for getting a surname registered through the USPTO.

Just to be clear, this rule applies to all surnames, regardless of whether the surname is yours, someone you know, or is completely arbitrary.  Keep in mind, however, that 15 U.S.C. 1052(c) requires the written consent of another to use their name or likeness as a trademark.

The general refusal of surnames does not apply to all surnames, however.  Rather, the rule is that a mark will be refused under 15 U.S.C. 1052(e)(4) if the general consuming public would recognize the mark as a surname.  The Trademark Manual of Examining Procedure (TMEP) section 1211.01 sets out the five factors that will be considered in determining if a mark is a “surname”:

  1. Whether the surname is rare.
  2. Whether the surname is of anyone connected to the applicant.
  3. Whether the term has a recognized meaning other than a surname.
  4. Whether the term has the “look and feel” of a surname.
  5. Whether the mark uses stylized lettering or drawing that would indicate it is being used as a mark.

The rarity of a surname is arguably the most important factor in a “surname” evaluation by the USPTO.  In cases such as In re Joint-Stock Company “Baik”, 84 USPQ2d 1921 (TTAB 2007) the Trademark Trial and Appeal Board (TTAB) has held that a surname was so rare that 15 U.S.C. 1052(e)(4) does not apply.  The rationale behind this rule is that if a surname is rare enough the consuming public will not recognize it as a surname.  There is no firm rule, however, as to how rare the name must be to qualify.  While this test is based in numbers (the number of people with a particular name), the “look and feel” test works on similar grounds.  Essentially the USPTO is looking to see if the consuming public would recognize the mark as a surname.

A surname may also be acceptable as a mark if it also has another meaning.  A mark must be primarily a surname for registration to be refused.  For example, the name “Bird” in Fisher Radio Corp. v. Bird Electronic Corp., 162 USPQ 265 (TTAB 1969) was accepted despite “Bird” being a surname.

Even if your surname would fail under the factors described above, it still may be suitable for registration if you can show the mark has “acquired distinctiveness” under 15 U.S.C. 1052(f).  This works because surnames are considered descriptive, and descriptive marks are generally not able to be registered.  The factors in TMEP § 1211.01 (discussed above) are used to determine if the surname is descriptive.  It is for this reason that a name combined with other descriptive words cannot be registered.  For example ‘Mason’s Painting Service’ would generally be unacceptable as a mark, since all three words are considered descriptive.

Descriptive marks can still be registered if they have acquired distinctiveness – i.e. the consuming public recognizes the term as a mark, not a descriptive phrase.  In some cases, showing that you have used the mark as a name for five or more years will be sufficient to show acquired distinctiveness.  Other factors that are used to show acquired distinctiveness are listed in TMEP § 1212.06 and include:

  1. Amount of time you have used the surname as a mark.
  2. How much you have spent on advertising the mark and the extent to which it has been advertised.
  3. Survey evidence showing consumers recognize your surname as a mark.
  4. Other direct evidence that users view your surname as a mark.

So while it is possible to use your surname as a mark you must do one of the following to achieve registration:

  1. Prove that your surname is not descriptive based on the factors in TMEP § 1211.01.
  2. Prove that your surname has acquired distinctiveness based on the factors in TMEP § 1212.06.

The important thing to keep in mind from this article is that while it is possible to register your surname as a mark with the USPTO, it is a more complicated process and care should be taken to ensure you have a good chance of registering your surname before shelling out the money for the application.

Once your mark has gained federal registration through the USPTO you have a right to exclude others from using your mark throughout the entire United States.  Please go here to learn more about registering a trademark.

Patent & Intelletual Property Auction and Advance Sales Help Inventors Gauge the Price of Technology

Do you ever wonder what your patent is worth?  Or, if it is worthless?  If so, then you might want to check out some of the online patent auction sites to help you compare your invention with others.   One of the more respected online intellectual property auction provider is Ocean Tomo.  And, Ocean Tomo is now hosting its Spring 2010 auction of patents and other intellectual property assets with a live auction March 24 & 25, 2010 as well as private advanced sale options.

Some listings, have buy-it-now options, such as http://icapoceantomo.com/item-for-sale/smart-card-magnetic-recording listing 7,591,426 and 7,591,427 are listed for $200,000 USD.

And other listings do not have buy-it-now pricing, rather these patents will be sold during the auction or through private advanced bidding.  For example, NASA lists several different patent portfolios that include:

http://icapoceantomo.com/item-for-sale/digital-memory-storage-hub listing US Patent No. US11/935,572

http://icapoceantomo.com/item-for-sale/docking-system listing US Patent Nos. 6,778,180, 7,006,203, 7,174,077, 7,375,801, 6,227,495, 6,254,035, 6,658,329, and 6,888,476

http://icapoceantomo.com/item-for-sale/fiber-optic-grating-apparatus listing US Patent No. 6,873,762

http://icapoceantomo.com/item-for-sale/microresonator listing US Patent Nos. 6,028,693 and 6,885,779

Do you want to see other patents and intellectual property are for sale?  If so, then goto http://icapoceantomo.com/forsale/.

The Innovation Agenda and Green Jobs of the Future

December 6, 2009 by · Comments Off
Filed under: Business, Inventor & Entrepreneur Updates 

For a fabulous article by Mark Esper on human innovation and American creativity for green technology, see his article on The Innovative Agenda and Green Jobs of the Future on the U.S. Chamber of Commerce site.

According to the article, intellectual property (IP) in the United States is worth over $5 trillion, surpassing more than the nominal gross domestic product of any other country.  Driving 40 percent of our economic growth, IP accounts for more than one-half of all U.S. economic exports, contributing $37 billion to our trade balance.  Over 18 million Americans go to work every day in IP-intensive industries, often in fields that far surpass earning levels of non-IP related jobs.  For these reasons and others, the potential for green technology growth promises substantial windfalls for those who take chances.  As stated by Mr. Esper, “innovation is opportunity”.