INTELLECTUAL PROPERTY LAW &

LITIGATION OVERVIEW

Jason S. Miller407-418-6263Jason S.miller@lowndes-law.com

February 16, 2012

©Jason S. Miller 2012, All rights reserved

What is Intellectual Property (IP)?

Intangible Property Rights including, for example, ideas, inventions and other innovations, expression, indications of origin and confidential information Patent Copyright Trademark Trade Secret (protected by State law)

Almost all aspects of technology, innovation, and/or works of authorship (including software) or art are addressable as IP

IP rights arises from Operation of Law In U.S., Constitutional Basis – Article I, Section 8, Clause 8:

“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”

Trademark rights arise from the Commerce Clause

Patents, Trademarks & Copyrights

InventionsMachines, methods, composition of matter, improvements

Any name, symbol, device or combination that-identifies source-distinguishes goods and services from another

“Original expression” “Fixed in tangible medium”

Not novel, obvious, not useful (no utility)

FunctionalDoes not exclusively identify

Ideas, Facts, Methods and systems (patents)Idea – expression is protected, not idea

When patent issues From use; Protection can last forever and can also disappear since protection is tied to use

From time fixed in a tangible medium

Fall within scope of the patent claims

Likelihood of confusion Copying with Access and Substantial Similarity

Patents Trademarks Copyrights

Type

Not Protected

When Protected

Infringement

What is a patent?

Legal document that defines an invention and confers a right upon the owner Similar to a property deed

Basic Philosophy Limited Monopoly

Bargained for exchange with government to promote innovation Gov’t granting the right to exclude others from making, using, offering

for sale, selling and/or importing what is claimed A negative right of exclusion only

New! Leahy-Smith America Invents Act (AIA) Enacted September 16, 2011 First major change to U.S. Patent laws in over 60 years

What is a Patent (cont.)?

In the U.S., Granted by the U.S. Patent & Trademark Office (USPTO) Part of the Commerce Department

Protects: Manufactured items, Equipment, Processes, Compositions and Improvements to the above

Term: 20 Years From Filing or priority date – extensions available based on PTO delay

Territory: United States and its territories

Rights Arise: Upon issuance of a patent, arising from a patent application filed prior to public use, disclosure or sale

AIA changes to existing law

Switch to a “first-to-file” System

Prior User Rights

New definitions of prior art

Post-grant opposition proceedings

Pre-grant submission of prior art

Derivation

Supplemental examination

Tax strategy patents no longer allowed

Patent marking and false marking claims

Best mode requirements

PTO fees

Joinder

Patentable Subjects

Systems, Devices & Other Manufactured Items

Such as manufactured equipment, e.g., electronic devices or circuits, semiconductors, systems configured to perform a function Processes or Methods

Such as manufacturing processes or methods of doing something—may be implemented as software or as a business method

Materials/Composition of Matter

Chemical, Genetics, drugs, compounds, etc.

Patentability Requirements

Novelty Does not exist in the prior art; Not previously disclosed OK if Modification of an existing product/process, or use of something

“old” in new/different way

Usefulness Utility - Performs a useful function, does it work? An easy requirement to meet in mechanical and electrical arts.

Sometimes difficult in chemical and life sciences – “I have a new compound, I just don’t know what it does yet” – therefore, no utility

z

Non-obviousness A knowledgeable but relatively unimaginative person working in your

field would not have been led directly to the invention in light of the available information at the time of invention.

This is difficult to describe in general, as lawyers the focus on non-obviousness is generally based on prior case law for guidance.

A rejection under obviousness generally involves “combining” one or more references to meet all of the limitations and elements of the claimed invention

Anatomy of a Patent

Front Page basics US No. 7,299,887 Title Filing date v. Issue

Date Assignee = Owner Related App. Data Technology Class

Codes Prior art References Abstract Front Page Illustration

Anatomy of a Patent Specification

Must set forth the precise invention for which a patent is solicited

Must “teach” one skilled in the art how to practice, make and recreate the invention

Must describe completely a specific embodiment of the invention

Must explain a mode of operation whenever applicable

Detailed description typically refers to drawings

Must set forth the best mode contemplated by the inventor for carrying out the invention

Must conclude with at least one claim

Anatomy of a Patent

Claims Must particularly point

out and distinctly claim subject matter which applicant regards as the invention

The portion of the patent which defines the scope of legal protection and around which questions of infringement will be judged by the courts

Anatomy of a Patent

Claim 1 reads:

A single cone bit with offset axis and composite cones, the single cone bit comprising: a head body and a cone; a head journal at lower end of the head body for rotatablely connection with the cone; said cone section having a shape of composite cones, wherein the outer circumference of the cone is composed of from a back face of the cone to a top of the cone an extended gage surface, an outer cone surface and a main cone surface, forming the cone section in a shape of composite cones, a plurality of cutting elements mounted onto each cone surface, the said main cone surface having a negative cone surface, and an angle .epsilon. formed by generatrix of the main cone surface and centerline of the cone rotation being equal to or less than 90.degree. (i.e..epsilon..ltoreq.90.degree.), the axis of the bit being offset from the axis of the cone and head journal, wherein; a gage pad arranged on a side of head body opposite to the offset direction of the head journal, the opposite side of the gage pad provided with the junk slots, and jet ports arranged at a lower bevel of the head body.

What is a Copyright (©)?

An original work of authorship, fixed in a tangible medium of expression.

See, 17 USC 101 et seq.

What is an “Original Work”?

Any work that was independently created (not copied) and that contains a “modicum of creativity”. Feist Publications, INC. v. Rural Telephone Service Co., 499 U.S. 340 (1991)

The exact meaning of this phrase is open to debate however the threshold is extremely low.

What is “Fixed in a Tangible Medium”? This phrase means that the work in question

must be set in a form in which it can be perceived either directly or with the aid of a device. For a literary work this could be when it is first created on a computer or paper. For a musical work it could be either the phonographic recording or the sheet music.

Things that are not fixed in a tangible medium are not subject to copyright protection, i.e. ideas, procedures, processes, systems, methods of operation, concepts, principles or discoveries.

Types of works subject to protection

Generally include: literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures and other audiovisual works; sound recordings; architectural works.

What cannot be protected?

Facts or any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work;

Words and short phrases such as names, titles, and slogans; Typeface designs;

Lists of ingredients;

Blank forms that do not themselves convey information;

Works consisting entirely of information that is common property containing no original authorship such as standard calendars, height and weight charts, tape measures and rulers, schedules, and tables.

What does a copyright give you? Exclusive right to do and authorize:

Reproduction of the work

Derivative works

Distribution of work by sale or transfer or license

Public performance of work

Display of work in public

Limitations on a Copyright?

Fair use: allows for limited copying of a work for purposes Very fact dependent Examples:

Criticism Comment News reporting Teaching Scholarship Research

How do you determine if something is Fair Use Consider:

Purpose and character of the use whether the use is of a commercial nature or is for nonprofit

educational purposes

Nature of the copyrighted work

Amount and substantiality of use

Effect upon the value of the copyrighted work

Other Limitations on a Copyright Libraries and archives First sale doctrine Record rental Software rental Performances and displays Secondary transmissions Ephemeral recordings Pictorial, graphic, sculptural

works Sound recordings Musical recordings -

compulsory licenses Jukeboxes - negotiated

licenses

Computer programs - Essential step in utilization of program or Archival (backup) copy allowed

Public broadcasting Satellite retransmissions –

superstations Architectural works Reproduction for blind and

disabled Satellite retransmission –

local Reproduction for blind/

people with disabilities Satellite retransmissions

within local markets  

How to Obtain Copyright Protection Copyright Protection attached upon

creation. There is no need to register a work, but may do so.

Registration is required, however, to enforce rights and provides additional benefits such as statutory damages for infringement.

How do you register a copyright? Application must be submitted to the Copyright Office

of the Library of Congress. Note: Patents and federal trademark registrations are

with the United States Patent and Trademark Office (USPTO)

Contents of Application: Completed application form

TX – Non-dramatic literary work VA – Visual arts work PA – Performing arts work SE – Sound Recording work SR - Serials

Deposit materials Fee

Information needed to complete Application Name and address of applicant If the work is “made for hire”, a statement of

such or if the applicant is not the author then a statement of how the applicant obtained ownership

Title of work Year of creation Date of first publication, if any Identification of the work as a derivative or

compilation Other relevant information

Deposit Materials

Unpublished work One complete copy

Published work Two complete copies of best edition

Work first published outside US One complete copy as published

Contribution or collective work One complete copy of best edition

Some exceptions apply For example, for computer programs a print out of

the first and last 25 pages is ok

Who owns a Copyright?

Author Authors, if joint work What about employees?

“Work made for hire” doctrine   work prepared by an employee within the scope of

his or her employment; or work specially ordered or commissioned for use as a

contribution to a collective work, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire

Take away – get an assignment up front!

What is the Term of a Copyright? In the U.S.: the life of the author plus 50

years, unless the work is anonymous, pseudonymous or a work-made-for-hire

then, the lesser of 75 years from its publication or one hundred years from its creation.

Copyright Notice

Prior to 1978 failure to use a copyright notice on your copyrightable materials was fatal to your copyright and placed the material into the public domain.

Omissions between January 1, 1978 and March 1, 1989 could be cured under certain circumstances.

Since March 1, 1989, use of a copyright notice has been optional, but failure to mark your materials can provide infringers with an "innocent infringer" defense, preventing you from collecting actual or statutory damages for any infringing act committed before the infringer received actual notice.

Example of Proper Notice: “© Your Name 20XX” “© Your Name 20XX, All rights reserved.”

Copyright Infringement

What is it? 17 USC 501 et seq. – Anyone who violates the

exclusive rights of the owner by making an unauthorized copying, distribution or derivation of a work Rights of owner set forth in 17 USC 106

Kinds of Infringement Direct Contributory Vicarious Liability of states

Pre-filing considerations

Where to file? Federal District Court: Exclusive, original

jurisdiction for Patent and Copyright cases. 28 USC 1338(a) Note: could have an exception for

counterclaims Venue: Where the defendant resides or in

any district where the defendant does business.

Pre-filing considerations (cont.) Jury or non-jury Nature and type of work involved Extent of copying Parties involved Registration certificate in hand?

Certificate of registration is now a procedural prerequisite

If registration is sought but refused serve complaint on Copyright office

Proving your case

Exclusive rights Ownership Access by defendant Substantial similarity of work Damages, if any

Should you use an expert? Depends

Should you use surveys?

Defenses Fair Use

See above Must be pled as an affirmative defense For computer programs

Right to make archival copy Right to dissect programs to determine functional interface

Implied License Can be orally granted for non-exclusive grant Elements

Author creates for another Author delivers the work Author intends that party distribute and/or copy

SOL (3 yrs.) and/or laches Lack of Notice Fraud on the Copyright Office Misuse Parody

Satire not necessarily a defense

Remedies

Damages- at option of copyright owner:

Actual damages and profits made by infringer that are not taken into account in calculating actual damages. To establish an infringer’s profits, the copyright owner is

required to present proof only of the infringer's gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work

OR

Statutory damages of $750 to $30,000 for each infringement (court’s discretion as to actual amount). Can be increased to $150,000 per infringement if the infringement was committed willfully.

Other Remedies

Injunction

Seizure, impoundment and destruction of infringing goods

Criminal offenses

Attorney’s fees and costs

What is a Trademark (TM, SM, ®)?A WordA LogoA DeviceA SloganA Package DesignA Personal Name

that identifies a specific product and distinguishes it from others in the marketplace.

A SoundA ScentA ColorA ShapeA BuildingA Numeral

JUST DO IT

Functions of a Trademark

- Indicates the source or origin of goods or services

- Assures consumers of the quality of goods bearing the mark

- Creates business goodwill and brand awareness

Trademark v. Tradename

Trade name: identifies a company or business; for example,

The Coca-Cola Company

Trademark: identifies the goods or services of that company; for example,

Diet Coke

Note: Just because the secretary of state's office advises that a corporate name is available, that does NOT mean that the same name is available as a trademark or service mark.

How are Trademark rights obtained?

Rights are obtained either:

- By use; or

- By registration

Common Law Rights v. Registration

Common Law Bound by the geographic

area in which the product or service is marketed.

Protection generally begins only after the product or service is actually available for sale on the market.

Rights can be lost after deciding on a mark and before bringing a product to market if someone begins commercial sales first.

Federal Registration• Valid in the whole country Priority based on date of

application

“Intent to Use” application allows applying for a mark before using it

Gives trademark owners the ability to expand at their own pace

Selecting a Mark

Distinctiveness Spectrum

Auto Mechanic

Blu-Ray

Selecting a Mark

Two Common Errors:

Selecting descriptive marks

Failing to “clear” the mark

Selecting the Right Trademark The Strongest Type

An invented word: GEICO

The Weakest Type

Immediately descriptive: Quality Cars

Clearance of the Mark – WHY? To reduce the likelihood of infringement

To gauge the strength of the mark Weak? Dilute?

Trademark Availability

A trademark is not available if:   The mark or a confusingly similar mark is

already federally registered or is the subject of a pending federal registration (assuming that the application is ultimately accepted); or

The mark or a confusingly similar mark is already being used in the same market in connection with similar goods or services.

How are Trademark rights obtained?

Rights are obtained either:- By use; or - By registration:

Majority – first to file vs. first to use Some of the major commercial countries – first

to file France Germany Japan Taiwan Spain

United States – based on use Does allow for intent to use applications though

Select Territories for Registration Trademark rights are territorial. Some regional systems exist:

Community Trade Mark (Europe 27 member states) OAPI (Africa) Madrid Protocol – International filing system, but still

depends on approval at the national level by the 57 member countries

Select registration in countries in which the company will manufacture, distribute and/or license its mark

United States – Trademark rights extend only to the areas in which a market presence has been established.

United States – Presumption of exclusive rights through federal registration

Application Process In United States Apply Respond to Issues (if any) Notice of Publication

30 day window for third parties to oppose registration

Registration Maintenance

Most US states have similar procedures but can vary

Maintaining a Registration

Continued Use

Renewals Declaration of Use between year 5 and 6 Declaration of Use and Application for Renewal

between year 9 and 10 and each 10 years thereafter

Policing - Third parties’ unauthorized use- Improper use by your own company- Improper use by licensees

Policing: Enforcement against Infringers

Finding the bad guys

Subscribe to Watch Services

Internet Searches

Trademark Marking Requirements

Proper trademark notice will aid in collecting damages from infringers and prevent the loss of a trademark due to misuse.

Examples of Proper Marking Include: "Registered in the U.S. Patent and Trademark Office“ "Reg. U.S. Pat. & Tm. Off." ® for registered marks ™ for unregistered marks

Improper marking for registered marks will prevent you from collecting profits or damages from an infringer unless they had actual notice or infringement.

Presentation of Trademarks

All capitals: NIKE shoes

Initial capitals:Target® stores

In quotation marks:“Snickers”® candy bar

Italics: Goodyear® tires

Boldface:Cisco® phones

Different color:McDonalds® restaurant

Trademarks Should Not Be Altered

Trademarks should always be presented in the same manner; be consistent

No plurals (no: “two cokes”, “yes two coke soft drinks”)

Do not use as verbs (please Xerox this)

No possessive tense unless trademark itself is possessive (no Febreze’s fresh scent; yes the Febreze® spray’s fresh scent)

Types of Relief Available for Registered Marks

Opposition proceedings Cancellation proceedings Injunctive relief, corrective advertising,

an account of profits, actual damages, statutory damages and/or attorneys’ fees

UDRP claims Criminal penalties for trademark

counterfeiting

Relief for Unregistered Trademarks Based on common law rights: Federal and State

Lanham Act 15 USC 1125

“Unfair Competition,” “Passing Off,” “Palming Off,” “False Designation of Origin,” “Dilution”

Test: If consumers would be misled or Confused

Use of Copyright Law

Loss of Trademark Rights

Genericide • Improper licensing

Improper assignment • Failure to police

Failure to comply with registered user requirements where required (statements of use, renewals, etc.)

Non-use • Cancellation

What is Trade Dress

Trade dress is the design and appearance of a product together with the elements making up the overall image that serves to identify the product presented to a consumer.

Trade dress may include features such as size, shape, color or color combinations, texture, graphics.

Restaurant Decor. Two Pesos, Inc. v. Taco Cabana, Inc., 112 S.Ct. 2753 (1992)

Trade dress is a broad concept and may encompass product packaging and product design/configurations. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205)

Bottle Shapes such as the shape of a Coke bottle (RN 1057884)

“Look and Feel” of a website?

What is Not Trade Dress

Items that do not have “secondary meaning”

Methods of Doing Business (potentially protectable under patent law)

Trade Secrets (proprietary information kept confidential by a company)

Copyrightable Materials

Trademarks

Protectable Elements of Trade Dress

Only “distinctive” aspects can be protected and can only develop “distinctiveness” through gaining secondary meaning through use in the market.

“Secondary Meaning” is a term of art and refers to distinctiveness that has been acquired over time through use, marketing, advertising, etc.

Protecting Against Trade Dress Infringement

Trade dress may be registered with the USPTO if it satisfies the federal standards of trademark or service mark protection.

Trade dress infringement is grounds for a civil action regardless of whether trade dress is registered. If the trade dress is unregistered the burden to show that the trade dress is protectable is on the owner.

Types of relief available are similar to those available for trademark infringement

Trademark or Trade dress litigation Pre-filing considerations and issues

Subject matter jurisdiction Concurrent with states

Venue Usual rules

Who can sue? Manufacturer or provider of goods and services Exclusive licensee

Non-exclusive licensee cannot sue What COA’s will be asserted? Is the mark now incontestable? How long has the defendant used the accused mark? Contributory infringement claim at issue?

Tiffany v. eBay – for service provider to be liable, must have more than general knowledge that service is being used to sell counterfeit goods.

Defenses

No likelihood of confusion Fraud on the Trademark office Mark has been abandoned Misrepresenting source of goods/services Descriptiveness Mark is functional Antitrust violations exists by use of mark Parody Equitable principles

Recurring issues

Descriptiveness as a defense Need to prove “secondary meaning”

Evidence that the mark has some meaning to the public beyond the obvious meaning of the terms or images of the mark itself. In other words, the primary significance of the mark has become a source identifier.

Proving likelihood of confusion Surveys Third party uses

Proving Likelihood of confusion Factors

G/S competing with each other Same distribution channels Intent to mislead by accused infringer Similar sound, appearance or connotation Consumer sophistication Strength of each mark Instances of actual confusion

Oppositions and cancellations proceedings Before the Trademark Trial and Appeal

Board (TTAB)

Does not affect common law rights, if any

TTAB decision is reviewable by the Federal Circuit if timely filed (60 days) Taking such an appeal waives certain rights

Internet topics

Domain names and Cybersquatting

Uniform Dispute Resolution Policy (UDRP)

Federal Anti-cybersquatting Act

Digital Millennium Copyright Act (DMCA)

New legislation coming?

Domain Names and Disputes - ICANN

Internet Corporation for Assigned Name and Numbers

Non-Profit company created in 1998 and tasked with managing the assignment of top level domain names (TLDs) and IP addresses

Until 2000, ICANN only allowed 7 TLDs Now companies can buy there own TLD for a hefty

fee!

Registration of a Domain Name

Domain Name Registrars GoDaddy.com, NetworkSolutions.com

Cost Depends on whether Name is already owned Not Owned: Approximately $10.00 for one year Already Owned: Bidding Process

Examples of Applicable Law

UDRP – Uniform Domain Name Dispute Resolution Policy Policy Administrative Rules

Anticybersquatting Consumer Protection Act 15 U.S.C. § 1125(d)

Pending Legislation SOPA, etc.

UDRP

The UDRP is a dispute resolution policy implemented by ICANN that applies to all .biz, .com, .info, .name, .net, and .org top-level domains as well as some country codes. Some countries will require that you go through WIPO for a

resolution

Governs disputes over domain names and is meant to be a streamlined process for resolving dispute more quickly and less expensively than would be possible with a standard legal challenge

UDRP Process

1. Filing of ComplaintMust prove:

1. Domain is identical or confusingly similar to a trademark or service mark which is owned by complainant

2. Respondent has no rights or legitimate interest in the domain3. Domain registered in bad faith

2. Filing of Response• 20 days to respond

3. Potential Outcomes• Cancellation, Transfer, Nothing

• No money damages!

UDRP Additional Considerations

Costs – One person v. three person panels

Effect of Court Proceedings During pendency of hearing After decision rendered

UDRP Real Life Example – madonna.com

Facts: In 1998 a company purchased the domain name madonna.com from a third party owner for $20,000.00. The purchaser began operating a pornographic website using the domain name.

Complaint: Madonna, the entertainer, objected to this use and filed a complaint with WIPO

Decision: The domain name is confusingly similar to a trademark “Madonna” in which the complainant has rights and registrant lacked a legitimate interest in the domain name because it was registered and used in bad faith

Result: Domain Name was transferred to Madonna

UDRP Conclusion

In general the UDRP is a relatively quick and inexpensive process that can be used to resolve domain name disputes

Transfer or cancellation only possible favorable outcomes

Monetary damages unavailable

Court proceedings can trump outcome

Anticybersquatting Act

Passed in 1999 and prohibits the “bad faith” registration of trademark infringing domain names and also applies to “bad faith” use of personal names.

“Bad Faith” under Anticybersquatting Act defined more broadly than under UDRP

Possible Outcomes include transfer of domain name, cancellation and monetary damages

If trademark infringement found all remedies for trademark infringement are also available

Unauthorized registration of a domain that is the same or confusingly similar to the personal name of a living person is prohibited if done for profit

Downside is cost and expense to litigate

Digital Millennium Copyright Act (DMCA)

Digital Millennium Copyright Act Passed by the US Congress in 1998. Focuses on protection of

electronic content.

Covers many topics including anti-circumvention provisions to prevent circumvention of DRM software and safe harbor provisions to protect ISP’s from liability for copyright infringement

Takedown procedure for ISPs Google

Trade Secrets

Becoming more popular form of protecting IP

What is a trade secret? A trade secret is information that provides a

business with a competitive advantage. Courts have provided trade secret protection to

formulas, patterns, plans, designs, physical devices, processes, software, and “know-how.”

Please keep in mind that different courts may reach contrary conclusions concerning trade secret status with respect to what may appear to be identical matters.

Examples of trade secrets

Formula – Coca-Cola recipe Patterns, plans, or designs – schematics for

an analog circuit Physical Device – machinery and equipment

used to manufacture polyethylene Process – process to treat metal or to

manufacture fiber glass “know how” – methods for testing

procedures to assure the quality of a raw material

Usual Factors to determining trade secret Is the information deemed to be a trade

secret valuable to the business Is the information generally know or readily

ascertainable? What steps have been taken top keep the

information secret Restricting access to information Physical security Proprietary notices placed on all documents NDAs obtained from third parties

To what extent do employees and others involved in the business know about the information

Trade secret v. Patent

Protection = Broad Term = indefinite Information does not

become public and must be kept secret

Cannot be enforced against independent invention or use

No defensive protection Available to technical and

non-technical information

Protection = limited to claims

Term = 20 yrs. Information becomes

public Can be enforced against

independent invention Defensive protection

because of publication

Trade secret Patent

Misappropriation of trade secret Typically occurs when:

Acquired, disclosed or used TS without permission of the holder, where such activities were done through improper means

Must look to State statute for elements

Remedies Exemplary Damages Attorneys fees and costs Injunction

Ethical Considerations in IP

PatentsDealing with the USPTO

TrademarksDealing with USPTO

CopyrightsDealing with Library of Congress

LitigationDealing with Courts and opposing counsel

Patents

Power of Attorney filed with USPTO Power of attorney must be in writing and

signed by a principal of the entity that owns the invention (37 CFR §§ 1.31, 1.32)

Only inventors, or a registered patent attorney or patent agent may represent a party before the PTO in patent matters (37 CFR § 1.31)

Other patent considerations

Representation of a client Who is the client?

Who is the inventor?

Who is the applicant?

Representation of joint inventors

Ownership issues for patents Handling the assignment

Who owns the invention? Potential conflict of interest between

inventor and employer Absence of contract requiring inventor(s) to

assign invention

Dealing with the USPTO – patent applications

Both attorney and client owe a duty of Candor – to disclose known, material prior art (37 CFR § 1.56)

Declaration of Inventor (37 CFR § 1.63) Information Disclosure Statement (37

CFR §§ 1.97 – 1.99) MPEP – Professionalism (37 CFR § 1.3) Withdrawal from representation (37 CFR

§ 1.36)

Trademarks

Representation before USPTO in Trademark Matters ((37 CFR § 11.14) Power of Attorney (37 CFR § 2.17(b)(1)(i)) Must be in writing and comply with PTO requirements

(37 CFR § 2.17(c)) The owner of an application or registration may appoint

a practitioner through TEAS (Trademark Electronic Application System) for up to 20 applications or registrations that have identical owner name and attorney (37 CFR 2.17(d)(1))

If filed on paper, there is no limit to the number of applications or registrations for which a practitioner may be authorized to represent the applicant or registrant

A power of attorney filed while an application is pending is deemed to end when the mark registers, when ownership of the application changes, or when the application is abandoned.

A power of attorney filed after registration is deemed to terminate when the mark is cancelled or expired, or when ownership changes. If the power was filed in connection with an affidavit under Sec. 8, 12(c), 15 or 71 of the Trademark Act, renewal application under Sec. 9, or request for amendment or correction under Sec. 7, the power is deemed to end upon acceptance or final rejection of the filing.

Termination of Power of Attorney (cont.)

Filing of a new power of attorney revokes the existing power.

A written change of correspondence address does not revoke a power of attorney.

A revocation of power of attorney may be signed by the applicant, registrant, or party to a proceeding; or by someone with legal authority to bind the applicant, registrant, or party.

Withdrawal of attorney requires application to and approval by the Director or, upon motion, by the TTAB

Affidavit of Use or of Continuing Use

Required for Sec. 8 and 15 Declarations Required for Renewal Must not include goods or services that

trademark owner is not selling If misstatement was intentional, fraud may be found Intent to deceive is required to establish fraud Standard of proof is clear and convincing evidence Registration will be cancelled if fraud is shown

Mere negligence does not constitute fraud However, registration must be restricted to

reflect commercial reality  

Dealing with the Copyright Office

Accuracy of Copyright Registration Form

Fraud on Copyright Office

Litigation

Rule 11 Pre-filing due diligence

Discovery rules ESI Spoilation

Local rules Representation to court Vexatious litigation Ethical rules and professionalism

Thank You! Questions?