Trademarks and the Lanham Act

I have attempted to provide a brief overview of the impact of the Lanham act and common law trademark.

The Lanham act was an attempt to codify the common law of trademark in such a manner as to provide protection to trademark owners (Senior users) against the unscrupulous use or imitation of others (Junior users) in such a manner as to deceive purchasers into believing that a product was manufactured by the Senior user and thus generate sales for the Junior user. The Lanham act does not create any trademark right; it only recognizes a right acquired through use. The Lanham act encompasses both trademark infringement and unfair competition.

Certain marks are not valid and have no protection under the Lanham act. One such mark revolves around geographical, locational or place names. In general, where the right to the use of a geographical, locational, or place name as a mark is not subject to exclusive appropriation, the original user may not ordinarily complain of its use by competitors, in the absence of fraud or unfairness. For example the user of the mark Dallas Cowboys could not complain of the use of Dallas Limousines based on the use of the mark Dallas. The use of the term Lone Star as a geographical name is uncertain. The one case on point, Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc. did not fully address this issue and was decided on other grounds. That case was later remanded for a determination as to the possibility of confusion based on the marks. It is important to remember that courts do not look at just a portion of the mark, but the mark as a whole. Additionally the right to protection in the use of a place name may be lost by such adverse or general use of it as to render it generic.

Ownership of a mark is established under common law by showing that use of the mark was deliberate and continuous. Sporadic, casual or transitory use will not suffice. Use is also determined by establishing that the mark has become associated with the Senior user in the public mind. Sales of products bearing the trademark will suffice, and in many jurisdictions mere advertising of the mark will be sufficient. A mark may not be merely adopted and not used in an attempt to reserve it. Ownership can also be established through registration. Registering a mark is conclusive evidence of ownership and severely limits the defenses available. If the Senior owner is unable to show that any right to the mark had accrued before the proffered violation occurred, the Lanham act does not provide a remedy.

Infringement of trademark is the use or imitation by another of goods in such a manner that the purchasers of the goods are deceived or are liable to be deceived, and induced to believe that the goods were manufactured or sold by the owner of the trademark. Marks need not be registered to support a claim of infringement. A mark is considered to be owned, under common law, as soon as it is put into use. Unregistered marks are entitled to protection under the Lanham if they could have been registered. To succeed on a claim of infringement the plaintiff must show:

1. Ownership of a valid mark

2. Infringer's actions are likely to cause confusion with the owner's mark

As has been stated above ownership of a valid mark may be shown through use of the mark. When determining the likelihood of confusion courts look to:

1. The degree of similarity between the marks

2. The intent of the alleged infringer in adopting its mark

3. Evidence of actual confusion

4. The relation in the use and the manner of marketing between the goods marketed by the competing parties

5. The degree of care likely to be exercised by purchasers

6. The strength or weakness of the marks

7. The quality of the defendant's product

8. Actual confusion of consumers

9. Likelihood of expansion of the product lines by the initial users

A finding of probability of confusion is required. Possibility of confusion is not sufficient. Probability exists were a large number of purchasers likely will be confused as to the source of the goods in question.

Intent to confuse the public is not an element of infringement. As shown above intent is a factor in determining whether confusion exists. Adopting a mark with knowledge of its trademark status permits a presumption of an intent to deceive, and an intent to deceive is strong evidence of a likelihood of confusion.

Unfair competition requires only a showing of a likelihood of confusion. Actual confusion is not required. It is not necessary to find intent to cause confusion when seeking an injunction for unfair competition. This is a recent change. In the past fraudulent or wrongful intent was required, and more likely than not still is required for any other recovery under unfair competition.

Under the Lanham Trademark Act, a person who, without the consent of the registrant, (1) uses in commerce a reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (2) reproduces, counterfeits, copies, or colorably imitates a registered mark and applies such a reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, is liable in a civil action by the registrant.

A number of defenses are available. They are limited only by whether the right to use the mark is contested. If the mark is registered or ownership is uncontested the only available defenses are:

1. Fraudulent registration

2. Abandonment

3. Permissive use

4. Use of the Defendant's own name

5. Innocent adoption prior to the date of constructive use

6. Registration

7. Prior registration

8. Violation of antitrust law

9. Functionality

10. Equitable principles such as laches, estoppel and acquiescence.

If the ownership of the mark is contested Prior Use is a possible defense if it can be shown that the junior user adopted its mark before the senior user's registration and without knowledge of the senior user's prior use, that the trade area in which the junior user used the mark prior to the senior user's registration was limited in extent, and that the junior user has continuously used the mark in the preregistration trade area.

The equitable principle of unclean hands applies to one seeking an injunction for infringement of trademark. This applies regardless of the ownership status of the mark.

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No Longer the Underdog

For many businesses, especially start-up and SMEs, taking legal action against those who copy creative work, brand names or logo, is too expensive, protracted and risky. The underdog is often advised to walk away or accept the copyright breach, without proper action being taken against the offender.

However, a change in the law that came into affect on 1st October, will help smaller intellectual property (IP) claimants to ensure that their creativity is not used or abused by businesses with more financial clout. On Monday, the small claims track became available, a simplified procedure for mounting IP claims, which would include all cases involving claims of £5,000 or less. There are also plans to increase the value of claims heard to £10,000, though it is not clear when this will be available. The small claims track will allow more SMEs to bring about IP abuse claims, without the need to go down a very expensive legal route.

The big IP stories at the moment tend to revolve around file sharing and smart phone patents, but the main IP rights - copyright, patents, trade marks and designs - protect creativity across all sectors.

The introduction of the small claims track will be of particular benefit to photographers and designers whose works are regularly infringed, but for whom the costs of bringing legal action are often too great compared to the potential benefit of, for example, a licence fee for the photograph.

The small claims track will only cover claims for straightforward copyright, registered trade mark and/or unregistered design infringement. All other IP claims made under the small claims track will be heard at The Patents County Court (PCC).

There is only one PCC, based in London, which covers the whole of England and Wales. For those who are based outside of the capital, they will not necessarily be forced to travel to London to get a judge's decision, as telephone hearings are available. The new procedure is intended to be as user-friendly as possible and to be a fast and inexpensive option; hearings, for example, will mainly be in a judge's chambers rather than a more formal court room.

The small claims track should be enormously helpful for those who derive much of their income from exploiting their own creative intellectual property. It will stop them from feeling that they need to walk away from what is rightly theirs, due to the costs involved.

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Brand Protection: Investing in the Future of Your Business

Your business name is extremely important; it identifies who you are and what the business represents. The business identity, which is represented by the brand, quickly and efficiently informs current and potential clients of the business, the products and services offered to market. It is meant to inspire confidence and trust within the market, while communicating the company's philosophies. The building of a brand, as well as the production of marketing and business collateral to communicate the brand, requires much investment. Like all investments, it must be insured that the risk of losing the value of that investment is minimised. With the pressures being placed on business through increased competition, shrinking budgets and the globalisation of the marketplace, it is even more important to ensure that your brand is protected.

Brand protection involves applying for and being awarded with a trademark for items that represent your brand, such as the logo, fonts of text, colours used to represent the business as well as the product and services categories the business fits within. There are numerous ways in which to apply for trademarks and brand protection, with many businesses specially born to assist you in the process. However, care is needed in choosing which particular service that you utilise in protecting your brand. While some offer cheap and cheerful services, others offer a consultancy format where the total cost is unknown until the bill is presented to you at the end of the process; a charge that some may be very surprised to pay.

Furthermore, with the increasing pressures being placed on the time requirements for business operations, it can be hard to find the time to dedicate to out of office activities that do not directly relate to sales, profit and business growth. For this reason, the internet has become a major tool for nearly all consumers and business to search for, evaluate and decide what business services are to be utilised. Brand protection is no exception, where many businesses that specialise in trademarking and brand protection having a web presence.

Leading brand protection companies have not simply stopped at creating an easy portal for contact; they have gone the next step and invested substantial funds into an online environment that allows you to apply for trademarks and other brand protection services. This not only saves time and money. For those who may be hesitant about using an online service for such an important aspect of the business, these brand protection specialists also offer expert advice and consultation, assisting you in each step of the process.

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Author's Financial Rights Under Egyptian Law

Author's Financial Rights and Possibilities of Assigning Such Rights

According to Egyptian law, the author has the exclusive right to use and exploit his work and any disposal of his work by third party should be done out by virtue of an explicit authorization to be issued by the author during his life or by his successors after his death.

The author has the following rights on his work: - Financial rights; and - Moral rights.

In this article, we will concentrate on the author's financial rights and the author's entitlement to assign or transfer such rights.

The Intellectual Property Law No. 82/2002 regulates the terms and conditions that govern the assignment or transfer of the said rights to third parties. Article 149 of the above mentioned Law stipulates that "The author shall have the right to, wholly or partially, transfer to a third party his financial rights". Based on the above mentioned article, the author shall be entitled to, wholly or partially, assign or transfer such rights to third parties.

Terms and conditions of such assignment or transfer:

According to Article 149/2 of the said law, "Such a transfer should be in writing and contain an explicit and detailed indication of each right to be transferred with the extent and purpose of transfer and the duration and place of exploitation".

Accordingly, the following conditions should be met that in order for the author to assign his financial right to third party, the:

1. The assignment contract should be in writing; meaning that writing is a formal condition and any disposal of the author's financial rights should be in writing otherwise, the disposal shall be null and void; 2. The rights assigned to third party should be expressly and accurately detailed in the contract. This is due to the fact that the author shall remain the owner of financial rights which are not explicitly assigned; meaning that authorization by the author to exploit any of the said rights shall not mean authorization to exploit other financial rights relating to the same work; 3. The extent and purpose of the assignment should be indicated; 4. The duration and place of exploitation should be indicated.

Differences between the author's financial and moral rights:

- As discussed above, the author has financial and moral rights on his work. The Author may, wholly or partially, assign or transfer his financial rights, to third party however; he may not assign his moral rights. - The Author's financial rights may subject to seizure however, the moral rights may not subject to seizure. It is worth mentioning that the author's work that is not published during his life may not be subject to seizure after his death unless it is undoubtedly proven that his intention was to publish this work prior to his death.

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IP 101: Maintenance of Your Intellectual Property

In general, it is advisable to review your IP portfolio to make sure certain items are in order and to assess any holes in your protection. Such a review is valuable in maintaining the strength, security and enforceability of your IP. This article includes some pointers in maintaining your IP portfolio, but is not meant to be an exhaustive list.

IP licensing portfolio

If you have a licensing portfolio, that is, licenses with other parties which allow you to use their IP or vice versa, it's a good idea to periodically review the licenses to make sure everything is in order. First, we recommend identifying all of your licenses and making sure you have a copy of each, and that the licenses and related paperwork are organized in a safe place. Then we recommend reviewing all of the licenses to make sure your copies are complete and executed. If there are any missing copies, appendices, etc., make sure to obtain those copies.

Next, review the licenses and confer with the necessary people to make sure the licenses are being followed. For example, if applicable to your situation, some of the provisions you should check include: milestones, royalty payments, completion and recordation of necessary paperwork (such as patent assignments), and the like. You should also take the opportunity to check the expiration date of the license, determine whether you need to physically renew the license or whether it is evergreen.

Finally, review all outstanding draft licenses. Figure out what needs to be done and by whom. If an agreement is ready for execution, make sure to get that done right away. If you are awaiting a draft from another party, follow up. If you are responsible for getting a draft done, do it now!

Trademark portfolio

Portfolios of pending and registered trademarks should be reviewed on a regular basis to ensure pendency and/or registration is maintained. First, we recommend you review your docket and identify upcoming deadlines with respect to outstanding office actions in both the U.S. and foreign countries. We also recommend reviewing your docket to identify renewals and foreign filing deadlines that are coming due within the next year. Renewals should be discussed with the appropriate people within your organization to determine whether the registrations will be maintained. Determining renewal dates and foreign filing deadlines will also give you a sense of what kind of budget will be needed to tend to such matters.

Next, we recommend reviewing the portfolio to determine whether assignment data is correct. If assignment data has changed, it should be reflected in the file and with the relevant trademark offices in which the mark is pending or registered.

Lastly, we recommend you review your organization's portfolio to determine whether all marks are correctly labeled as a registered mark (®) or a common law mark (™). Any revisions should be made and the appropriate people should be notified of any changes.

Patent Portfolio

With respect to patent portfolios, we recommend similar action items as discussed with respect to trademark portfolios. First, we recommend reviewing your docket for any outstanding office actions and identify any upcoming foreign filing deadlines. Decisions with respect to responding to office actions and filing in foreign countries should be discussed with the necessary people within your organization. Decisions regarding responding to office actions and foreign filing will help plan the patent budget of your organization. Similarly, we recommend a review of upcoming maintenance fees to make decisions on whether patents should be maintained.

Decisions regarding abandonment of applications or non-payment of maintenance fees should be cross-checked against any licenses related to such applications and/or patents to confirm there is no obligation to prosecute or maintain such assets.

We also recommend reviewing assignment information recorded with the respective patent offices and updating such information as necessary.

Conclusion

The above-mentioned suggestions are meant as a starting point in a regular review of an IP portfolio. There are additional factors that should be considered and reviewed, including citation of prior art in pending patent applications, follow-up with decision makers regarding filing trademark and patent applications, and reviewing employment contracts to make sure confidentiality and IP assignment clauses are included therein. Additionally, we recommend that review of your IP portfolio be conducted throughout the year at regular intervals to make sure all assets are in order and proper protection is being obtained.

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SOPA, PIPA or Just Plain 'SOPPY?'

On Wednesday 18 January, 2012, a number of online sites staged a 24-hour internet blackout in protest against two pieces of US legislation passing through Congress. This action followed a community decision, after which the Wikipedia Foundation announced its support in taking a stance against the proposed legislation. Alongside Wikipedia (English), other sites involved in the blackout included Reddit, Moxilla, Wordpress, TwitPic, MoveOn.org and the ICanHasCheezBurger network. Facebook, Twitter and Google, although not in favour of the bills, did not stage a blackout. However, Google (US visitors only) showed its support by partially redacting its logo which linked to an information source about the bills, with a petition and a message to Congress "Please don't censor the web."

Why the Fuss?

The bills in question are the Protection Against Online Piracy Act (PIPA), and the Stop Online Piracy Act (SOPA). Although there are already laws in place that govern online piracy, these are more concerned with targeting acts of infringement. SOPA and PIPA on the contrary, are aimed at targeting the source. In other words, the sites actually hosting the unauthorised content. As most of these sites are outside the US, it is not easy to track and hold perpetrators accountable. These bills would give the US government the power to force US based companies, such as ISPs, payment services solutions, and online advertisers, to closely monitor their own services and cut off ties with any sites providing access to and/or profiting from unauthorised content. Any search engines, websites, blogs, forums etc. with links to such sites could be sued and removed.

Arguments in Favour of the Bills

Those in favour of the bills such as the US Chamber of Commerce and the MPAA argue that these overseas websites that profit from US IP content whilst operating in safe havens, are a major threat to the industry putting jobs and innovation of content at risk.

In a BBC News interview on 18 January, Wikipedia founder, Jimmy Wales did not disregard the importance of combatting online piracy stating there were already Acts in place to deal with this like, for example, the Digital Millennium Copyright Act 1988 which was working quite well. He did not feel it was necessary to go down the road these bills intend and he described the bills as "sloppy". Mr Wales suggested the focus should be going after the money rather than burdening everyone else, (ISP providers, websites, etc.) to take on board the responsibility of enforcement. In response, MPAA spokesman, Michael O'Leary described Mr Wales' approach as "a half measure" stating everyone who plays a role in the internet has a responsibility in "making it safe and legitimate", he suggested there was no willingness on the part of search engines to share in that responsibility.

Criticism Against the Bills

Those concerned about the consequences of the bills argue that they are ill thought out, stressing economic through to technical reasons why the bills should not become law. Arguments draw attention to the ambiguity of the wording contained in the bills which could make many social media sites look like infringers or innovative/pioneering websites be perceived as piracy havens because the nature of what they are about is simply misunderstood. Another concern is the impact such laws would have on the growing internet business. The bills potentially threaten new start-ups as the task of filter and monitoring their websites to comply with enforcement measures would raise entry costs and any sites deemed not to be performing these functions adequately enough could simply be shut down. This would make it more difficult for new search engines and social media sites to emerge. On the technical side, tampering with the web registry of domain names could threaten internet security and make the net much less stable.

A statement issued by the White House seemed to share some of above concerns. Although making it clear they agreed that "online piracy by foreign websites is a serious problem that requires a serious legislative response", the White House also stressed it would "not support legislation that reduces freedom of expression, increases cybersecurity risk, or undermines the dynamic, innovative global internet."

Conclusion

It is difficult not to view those determined on seeing SOPA and PIPA passed through as a case of luddism, or a misguided fear of what's new.

The US is an influential nation and if these bills became law, and other countries followed suit, what might be the likely impact to the growing global internet economy? According to research by the McKinsey Global Institute, over the last five years, the internet accounted for 21 per cent of GDP amongst the G-8 nations, Brazil, China, India, South Korea, and Sweden. Does it really make sense to rush these bills through, just to pander to the obstinance of the US arts and entertainments industry without due consideration to the wider implications of such laws?

Under no circumstances is this article intended to undermine the problem of online piracy, but has the pros and cons for all stakeholders both industry and consumers/internet users alike really been considered? It seems yet again, we are witnessing the heavy hand of commerce in alliance with the law exuding its power, as the catalyst driving these bills is the perceived lost revenue to commercial interests in copyright. It should be remembered that they are not the only or most important stakeholders here.

A question worthy of far greater exploration is whether the prospective value to be gained by the arts and entertainments industry really outweighs the value of freedom of expression, creativity, economic and technological innovation, as well as the political and social empowerment, that the internet continues to bring about. This is a question of paramount importance.

It is also important to revisit economic models and explore options that would facilitate ways to limit acts of piracy. Work with content creators, consumers and the public at large, those who have engaged in acts of piracy, ISP providers, search engines etc.; essentially all stakeholders to figure out more efficient ways to address this issue. Are market models actually correct? Do pricing models reflect fair and reasonable access to content? If not, then how could we better serve this objective? The enforcement measures proposed by the bills means these costs will need to be recouped, and no doubt will be levied on the unit cost of content, ultimately to be borne out by the consumer. If pricing models are a contributory factor to acts copyright infringement, this is counter-productive.

It is not right that the interests of one stakeholder through undue influence take precedence over the interests of others, particularly when such partiality is likely to thwart freedom of expression, creativity, innovation, whilst failing to give due regard to the greater issue of public interest.

In the UK, concerns have already been vocalised over the impact of the Digital Economy Act, 2010. If SOPA and PIPA are successful in the US, will we also be heading this way?

The basic principle of a democratic nation awards all adult citizens in that society the right to have an equal say in the decisions that affect their lives. This fundamental right should underlie any discourse engaged upon and should serve as the guiding principle in determining the best way forward. Let this right be exercised.

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Copyright and Trademark Perils of Websites

One of the first questions someone might have when they are building a website is: Am I violating someone else's copyrights or trademarks when I publish the website content? If it isn't one of the first things you are thinking about, it should be. You can infringe someone else's intellectual property rights without doing so knowingly.

Copyright infringement is the act of violating someone else's rights covered by the United States Copyright Act. There are six major categories of rights that a copyright owner has. These rights are the rights to

(1) reproduce the copyrighted work; (2) adapt the work (also known as making a derivative); (3) distribute the work to the public; (4) perform the work (such as a literary, musical, dramatic, motion picture or similar work); (5) display the work (such as literary, pictorial, graphic, sculptural or similar works); and (6) broadcast the work (such as radio or load-speaker transmissions of music).

Each of these rights could be violated if you use the copyrighted work or an adaptation of that work on your website or if you post in on a third party website.

The easiest way to infringe someone else's rights is to simply cut-and-paste content (such as text or images) or codes from another website without permission. This could spell disaster. If you are not sure whether you have the rights to post someone else's content or whether that content is copyright protected, you need to consult an attorney before posting it.

Trademark infringement is the act of using a word, phrase, logo or sound that is confusingly similar to an existing trademark and for similar goods or services. To infringe a trademark, there doesn't have to be actual evidence that customers were confused.

If you are going to refer to a trademark you do not own, you must be very careful and only do so in an appropriate manner. You must make sure that there is no way anyone would confuse your business as the same or related to another business. This goes to the heart of trademark infringement.

If you are using the trademark to refer to products you are selling through a store (online or brick-and-mortar), you can also use that trademark to identify or describe the items you are selling. This is called nominative fair use. You can only use the trademark if it is reasonably required to identify or describe the goods or services you are selling. If you can reasonably identify the goods or services without using the trademark, you need to avoid using the trademark.

This is especially the case with logos. If you can identify the goods and services without using the logo (i.e., spelling out the word rather than including the stylized logo - think of Dell's logo with the offset "E"), you must only use the word mark and not the logo. This is almost always the case.

The best way to protect yourself from an infringement lawsuit is to obtain the written permission from the owner of the copyright or trademark before publishing that content on the website. If you are concerned about infringing a copyright or trademark, you should obtain the advice of a competent intellectual property lawyer.

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The Basic Steps For Conducting an IP Audit

Nearly all companies have some sort of intellectual property that is essential to their success, whether these are patents, trademarks or copyrights. There are also instances where a company acquires the IP assets of another company and in such cases, an IP audit is necessary. This assures that your company keeps its eye on these valuable assets, maintains the necessary paperwork, and can make some profit off them if possible. But if you've never done this before, where do you start? How does one begin with an IP audit? Here are the basic steps you need to undertake.

First and foremost, you'll need a checklist, identifying all the IP your company has. Make an initial list, just to make sure you have a list of all assets. Do this is as soon as you can, as intellectual property rights usually have some sort of time limit. If it's just too much work, consider getting outside help, who know what to look for and what to do. Create this initial list, going through all the paperwork you have on hand. You can also check with the necessary government offices and associations. Later on, you can expand this list to include other details, such as the dates they were registered, the dates their corresponding fees need to be paid and when they expire. This will help you determine your time line for whatever next steps and actions need to be taken.

Next, you'll have to identify which ones of your IP you aren't using, and you can let go or make money through licensing. This ensures that you won't be wasting valuable time and money with upkeep, and that you can make the best use of your IP. For example, if you own the rights to a song, you can make it available for use in TV and movies. Or if you own the patent to a process, you can shop it around and see if any other company can use it for their purposes.

Lastly, it's time to take action. Once you've identified your assets, and determined which you can keep and which should go, you'll have to plan carefully to take the best course of action for your company. You'll have to set up some sort of management procedures, or assign someone to manage your intellectual property for you and your company, since your time is probably better spent on working on your business.

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Important Patent Legislation Changes in Australia Effective 15 April 2013

The Australian Parliament recently passed the Intellectual Property Laws Amendment ("Raising the Bar") Act 2012 ("the Act"), which received Royal Assent on 15 April 2012. The Patent legislation changes will come into effect on 15 April 2013. The changes will implement stricter patentability and specification requirements for patent applications.

Which applications are affected?

The legislation changes will apply to (1) new applications filed on or after 15 April 2013, including divisional applications; and (2) applications pending on 15 April 2013 for which a request for examination has not been filed.

What are the legislation changes?

The changes are substantial and include the following:

Removal of territorial limitation for considering what is "common general knowledge" - The amended legislation will allow consideration of common general knowledge of the person skilled in the art outside Australia.

Removal of the words "ascertained, understood and regarded as relevant" from prior art references for inventive step - The prior art base for considering inventive step has been broadened to effectively include any prior art information, not just those that a person skilled in the art may consider relevant.

Introduction of new requirement for specifications to disclose a "specific, substantial, and credible" use for the invention - A new requirement based on USA Patent law, with the aim to stopping 'speculative' claims.

Introduction of new sufficiency requirement - A new requirement based on EP/UK provisions for the specification to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.

Replacement of "fair basis" requirement with new "support" requirement - An amendment to align with EP/UK provisions.

Removal of benefit of the doubt standard, and introduction of balance of probability standard for all grounds considered during examination, re-examination and opposition - The present standard which favours the applicant when considering patentability will be replaced with a "more probable than not" or "over 51% probability" standard.

Commissioner will have discretion to refuse to allow deferment of acceptance - This may lead to immediate acceptance of applications after examination, which may prevent opportunities to amend the claims prior to acceptance.

Modified examination will no longer be available.

No longer possible to add matter to specifications after filing, except when correcting a clerical error or obvious mistake

The deadline for filing all divisional applications will be restricted to three months from the date of advertisement of acceptance of the parent application - This deadline will also apply to conversion of a previously filed application into a divisional application.

Possible additional changes include the reduction of the acceptance period from a first examination report, from the current 21 month to 12 months.

Next Step For Applicants and Future Applicants

In light of these changes, we highly recommend present Applicants file a request for examination of their applications prior to 15 April 2013 to ensure those applications are subjected to the current, more lenient, patentability and specification requirements.

Future Applicants should consider filing an Australian application with an examination request prior to 15 April 2013. This may mean entering the national phase of a PCT application, filing a Convention application in Australia, or filing a divisional application before this date.

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Can My Invention Be Patented?

Whether your new product or other invention came about from a sudden flash of inspiration, or was the culmination of many years of sweat and tears, you may be anxious to protect this intellectual property you have created, and discourage others from stealing it. Apart from new products, patents may also protect intellectual property rights in relation to new manufacturing processes, testing processes, and chemical compounds, as well as alternative uses for some existing products such as pharmaceuticals and chemical compounds. The actual scope of inventions which can be patented varies from country to country, but generally an invention that is able to be used in some kind of industry will be patentable.

However, the invention must also be new or novel, and contain a "non-obvious" inventive step.

Most importantly, the person or organisation applying for the patent must be first to do so in relation to the particular invention that is the subject of the patent application.

If an invention has already been released to the market, advertised, used, or even just disclosed, its inventor may lose the right to obtain a patent for it. Although there is a grace period in Australia, and in exceptional circumstances (such as cases of inadvertent disclosure) applicants in New Zealand may still be able to apply for a patent within prescribed time limits, this is not the case in all countries. It is therefore important not to disclose your invention until you have filed your patent application. Having done that, even if there is then some delay before the application is considered and approved, you will be able to go ahead and publicise your invention, and even start selling it.

Special care is required in formulating a patent application, so as to ensure that the invention is described fully, including your "claims" defining the inventive step(s). Then, subject to the application being approved, you will gain a monopoly right giving you exclusive use of the invention for up to 20 years. However, to maintain that period of protection, you may need to periodically renew the patent.

In Australia, under the Patents Act 1990 (Cth), it is also possible to obtain an "innovation patent", which does not require an inventive step, merely an innovative step. Although the maximum term for an innovative patent is only eight years, in many cases innovative patents are an appropriate alternative, as there can be considerable costs savings. Ultimately, the decision about whether to apply for a standard patent, or an innovative patent, may rest on the value of the patent, and the period over which the monopoly right will be useful in practice. Because disclosure or publication of your invention may affect your ability to obtain a patent for it, it is important to obtain professional advice at an early stage.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

Patenting Advice - Think Ahead

Like having a baby, the patenting process starts with great difficulties and expenses, and like children, the difficulties and expenses of patents continue to grow over a long period of time.

Unlike children poorly planned patent applications are seldom worth the effort. To earn money from a patent you must know your resources and plan accordingly.

Know your field:

The vast majority of valuable patents come from experts in the field (experts include scientists, engineers, or experienced entrepreneurs). If you have a great idea in a field that you don't know, find a friend or partner with experience in the field and discuss the idea with him. Often an idea that seems brilliant to the uninitiated already exists or is impractical for reasons that are not obvious.

Be practical:

Once you've found a good, novel and practical idea, know how you will make money from the idea. Developing and marketing a new product defending your monopoly through patent litigation are extremely expensive and risky. If you are an independent inventor or a small entrepreneur you should definitely consider selling or licensing your invention.

While working for a large international law firm, I had a client who brought a patent portfolio (accepted patents in the US, EPO, China and Japan) to a large car maker. Quickly looking over the details of the patent, the company representative told him, "This is exactly the technology we need. But we aren't going to pay you royalties. We have hundreds of top notch lawyers on staff and if you take us to court you'll go bankrupt long before you can win a settlement."

Of course, they're right. Nevertheless, we advised our client that bankrupting even a little company through litigation can be very expensive. Furthermore, if the car maker wants exclusive rights to the technology, they need to make a deal with the patent holder, not break him. With this more realistic basis, they started negotiations.

Be prepared:

Many inventors spend a few thousand dollars and a lot of time filing a patent, but are unprepared for the cost of patent prosecution. One result of this mistake is losing your investment in the patent. Even worse this can lead to permanently losing rights to your invention because without prosecution the patent application will be published but not granted making idea into public domain. For more details on patent planning see my previous blog "Patent Costs Timetable for the Independent Inventor - Be Prepared Before You Draft."

Know your limits:

If you are thorough and organized you can probably write and file your own provisional application (although it is recommended that you show it to a patent agent/attorney to check if it is enabling). A non-provisional patent application should only be written by an experienced professional. Self written patents are often invalid and result in loss of money and may result in loss of control of the invention. Even if a self written patent is valid, a well written patent will save time in prosecution thereby saving money in the long run.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

How to Invent Something Great

If you are an aspiring Inventor, you may well have wondered how to invent something.

Well it's not as difficult as at first it might appear. Most Inventions come about because an Inventor sees a problem that needs fixing, or an opportunity that can be exploited. In the end for an Invention to be commercially successful, it needs to offer a solution to a problem or failing of existing technology.

From that start point, the process continues with a brainstorming phase, during which the inventor brainstorms and repeats the process relentlessly until they find the solution they are looking for. Now it's easy to say that we are relentless and will keep trying, but actually doing it can be a demoralising path to follow. So to successfully invent something you must be a believer, you must be absolutely certain that you will get there. A reporter once asked Thomas Edison, "How many times are you going to fail at creating the light bulb?" Mr. Edison replied, "Son, I haven't failed! I've simply discovered another way not to invent the light bulb!"

Once you have the basis of an idea, you need to draw how it works, and complete a technical design. From there you should look to create a working prototype. This is critical, because it is a big mistake to ask non commercial people to visualise how something may work once finished. It is a fact that the closer your invention gets to being as 'real' as possible, the more likely you are to sell it. So you can't do too much to bring it to life, because by doing that you give yourself the best chance of creating a real product from your idea.

The next part of the process is to seek qualified, expert legal advice to advise you on how to legally protect your invention, this may involve patents, trademarks, copyright and some other measures you might be advised to take.

Once you have protected your invention, you need to work out your route to market. This might be working with an invention agent who can help you to open doors you wouldn't otherwise get through, or it may even involve your going it alone and trying to sell a finished product yourself. Either way, just remember, finishing your invention is often the easy part - selling it can be another story...

Steve Reece http://www.RichInventor.com The Rich Inventor website provides information to help Inventors.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

Getting Your IP Audit Off the Ground

An IP Audit is necessary for any type of company that has any intellectual property assets. Intellectual property refers to those intangible assets which are creations of the mind, such as trademarks, copyrights, and musical or artistic works. When a company acquires these assets, or a set of assets from another company, it is important that they create an audit to assess all their IP Assets and be able to account for them. More importantly, you need an IP audit in order to manage all your IP assets - so you can find out which of your IP assets aren't being used properly, which affects your business and also how you can use these assets to improve your company. So, to begin and get your IP audit off the ground, let's look at the basic steps needed for your own IP Audit.

Identification

First, you must identify all the IP assets to be audited. Make a list of what you have. Companies like pharmaceuticals, health companies, music companies, food companies (as recipes can be a type of IP) and tech companies have a lot of IP assets, so be very thorough. Search the records for any missing assets you haven't accounted for. Identifying them will help you determine who exactly owns them, what is their status (lapsed or not) and what steps you need to take to ensure they remain in your company's name.

Aside from actual, listed IP assets, there are other types of IP that you own that you may not realize or think of as IP. The company brand, logo, relationships, certifications, regulatory approvals, mailing lists, and your PR, advertising and marketing strategies are such types of IP.

Rating

Next, after' you've made a comprehensive list of what you own, you'll need to give each an importance rating and a value. The importance rating would depend on what you're company's priorities are. However, a good set of criteria would be: a) whether they are part of your company's core activities, the IP asset's life expectancy, and how exclusive this IP is to your company.

Values in actual dollar amounts may be more difficult to determine. However, a good way would be to determine a set time (2, 5 or 10 years, depending on your business plan) and try to determine how much money that IP will generate for your company and how much would it cost to replace such IP asset.

When you make such determinations and assessments, you'll be able to make better decisions for your company. For example, if someone was infringing on your IP, what steps should you take to stop it (and if it's worth it at all.) You'll be able to put your resources to better use, and generate maximum profit for your company.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

Why You Need Intellectual Property Management

Most companies have some sort of intangible asset they own - whether it is a trademark, patent, copyright or rights of some sort to creations of the mind that they need for their business. Much like any other asset, they need to be managed and cared for. Intellectual property management is a vital part of your business, to ensure all your IP is properly administered and guarded. There are several reasons why you need IP management. Let's discuss just some of the more important reasons:

Protection

For many companies, protection is the number one reason why they need intellectual property management. IP is something that is created by the mind, and there's no one physical object you can protect and lock up from thieves. Anyone can copy a song, a picture or logo, for example, and call it their own. A dedicated IP manager can check if your IP is being properly used, and what to do if it was used without your authorization.

Profit

Did you know you can directly make money off your IP assets? Many other companies can use the IP you own. For example, in manufacturing, rather than spending millions trying to reproduce a certain process, it may be cheaper to just license the patent, allowing for a quicker turnaround time. If you have a process you're not using, you may want to make it generate some profit for you.

Upkeep

Most, if not all IP has some sort of time limit. That means you can only have exclusive rights to it for a certain period of time. Or you can only have exclusive rights if you pay all the necessary fees and file the right papers. A patent, for example, needs to be initially filed, and then re-filed every few years. A good IP manager will keep a time line of what needs to be done to ensure that your company will retain its rights to that IP for as long as possible.

Acquisition

Since we've talked about patents or IP expiring, let's look at acquisition of other IP. If you need or want to acquire IP for your company, your IP manager can look up the necessary information for you. If a certain trademark or patent is expiring, you can work to ensure that you can get it for yourself as soon as it becomes available.

Intellectual property management is not merely about listing down your IP and paying fees. There are many reasons to use IP management to your advantage, to ensure that your company stays successful or will become even more successful in the future.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

Basics of Trademarks for Small Business

If you are in business, you probably already have a trademark even if you don't know it. Knowing the difference between the categories of intellectual property is essentially to protecting your ideas. And since trademark is generally the most common, it is a good place to start.

Generally, a trademark distinguishes products or services as unique and associated with a particular creator, business or person. It can be a company name or a product name that distinguishes it from those made by others, or any other distinguishing characteristic of a product or service.

Often a trademark arises without the owner realizing it because it does not have to be registered or filed with any government agency to be protected. Simply conducting business or selling products under an exclusive 'mark' or name, or with a unique and exclusive characteristic will give rise to a trademark. Importantly, that exclusive use of a unique mark can entitle to the owner to prevent or preclude others from using it also. This can be true even if the oft-seen ™ notation is not used in association with the mark.

Registered trademarks on the other hand, designated by the ® notation, are only applicable to those trademarks registered and recognized by the USPTO. These trademarks are given greater protection than unregistered trademarks and can even allow the owner to protect them internationally. In contrast the unregistered trademark is only enforceable in the geographical area or market where it is used in association with unique and distinguishable goods. In other words, a common law trademark could be used numerous times by multiple people without any infringement as long as the operate in different cities, states or geographical areas. Infringement is typically tested by whether or not the two trademarks are colorfully similar or will cause confusion by consumers as to the source of the goods or services. No likelihood of consumer confusion exists when two goods with the same or similar trademarks don't compete in the same area.

Similar trademark protection is allowed for services and service providers who offer unique and distinctive services. This is referred to as a service mark and can be designated with the â„ notation. Service marks are generally more difficult to come by as often competitive services are more likely to be similar enough to be common.

So, if you already offer unique products or services under a name distinguishing you from the competition, you likely already have an enforceable trademark. The least you could do is slap that ™ all over your products, websites and marketing materials. A great place to start is to search available resources for competitors' business names in the yellow pages, business directories and the local internet search providers. Likewise, search for product names on the internet to find if your products' names are unique either nationally or within a region to merit trademark protection. Once you find that you have a trademark, protect it on all your business materials, keep it consistent across all of your marketing materials and websites and be prepared to notify potential infringers of your trademark rights.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue