Suppose that you want to obtain a patent for an invention and, in your claims of the patent application, you recite terms as a structure with functional language or means-plus-function language. What if this language requires an algorithm to carry out the function and you fail to disclose the algorithm in your patent application? Can … Continue Reading
Suppose that you have expressed your work into a tangible form such as a short expression of words and artistic designs. Although your copyright exists upon the moment of creation, does the work contain a sufficient amount of authorship on which to base a claim for a copyright registration? Should you register the copyright on … Continue Reading
For the Patent and Trail Appeal Board (“PTAB”), the PTAB allows a petition for inter parties review (“IPR”) to request cancellation of claims in a U.S. patent. For an inter parties review of a patent, the PTAB institutes review and determines if claims of a patent are unpatentable. Can the PTAB cancel claims based on … Continue Reading
Suppose that you have an assignment of a copyright or a security agreement for a copyright. Are you required to record this assignment or security agreement against the copyright registration? Should you record this assignment or security agreement with the U.S. Copyright Office? The answer is YES! In the United States, 37 C.F.R. § 205 … Continue Reading
For the Patent and Trial Appeal Board (“PTAB”), the Administrative Patent Judges (“APJs”) are appointed by the Secretary of Commerce in consultation with the Director of the United States Patent and Trademark Office. For an inter parties review of a patent, three APJs conduct the instituted review and determine if claims of a patent are … Continue Reading
Suppose that you have an invention disclosure for a design of an article that you want to protect? When you review the invention disclosure, you notice that the design is ornamental, for example a pattern, on an article such as a chair. You draft and file a design patent application on the pattern described as … Continue Reading
Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if the trademark is immoral or scandalous? Should you register your scandalous trademark with the U.S. Patent and Trademark Office? The answer may be YES! In Matal v. Tam, 582 U.S. ___ (2017), the U.S. … Continue Reading
Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if the trademark describes a geographical area such as eastern? Should you register your trademark with the U.S. Patent and Trademark Office? Can you obtain a registration from the U.S. Patent and Trademark Office? The … Continue Reading
Suppose that you have an invention disclosure for a design of an article that you want to protect. When you review the invention disclosure, you notice that the inventor has only supplied photographs of the design and not any line drawings of the design. Can you file the design patent application with the photographs? The … Continue Reading
Suppose that you want to obtain a patent for an invention related to your cannabis business. What if the invention is a device for extracting oils, an ornamental design for a new vaporizer, or a new breed of cannabis plant? Should you attempt to patent your invention with the U.S. Patent and Trademark Office? Can … Continue Reading
Suppose that you want to register a trademark that identifies a source of goods or services for your business. You file a federal trademark application with the U.S. Patent and Trademark Office. Subsequently, you receive an Office Action from the U.S. Patent and Trademark Office that initially refuses registration of your mark based on a … Continue Reading
Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if the trademark may be scandalous or disparage a particular group of people? Should you register your trademark with the U.S. Patent and Trademark Office? Can you obtain a registration from the U.S. Patent and … Continue Reading
Suppose that you have expressed your idea into a tangible form such as two-dimensional artistic elements incorporated into an industrial design. Although your copyright exists upon the moment of creation, do you have a valid copyright? Should you register your copyright on the two-dimensional artistic elements with the U.S. Copyright Office? Can you stop a … Continue Reading
Suppose that you have an invention disclosure that uses computers and the Internet to carry out transactions that could include financial transactions? When you draft your patent application, is there anything that you can do to avoid having your patent application and resulting issued patent from being interpreted as a covered business method patent? The … Continue Reading
How do you plead patent infringement in the United States? Can you survive a motion to dismiss if the defendant challenges the sufficiency of your complaint? What should you do? Let’s say your client has a United States patent that is believed to be infringed by another party. You do not rely on the client … Continue Reading
In the United States, a trademark can be refused registration on the Principal Register because the trademark is deemed merely descriptive. If the trademark is not allowed for registration on the Principal Register, it may be eligible for registration on the Supplemental Register. So, how do you determine if your mark is descriptive and which … Continue Reading
Suppose that you have expressed your idea into a tangible form such as producing a video. Although your copyright exists upon the moment of creation, should you register your copyright on the video with the U.S. Copyright Office? Suppose you don’t and later you find out that a competitor has posted a copy of your … Continue Reading
Suppose that you create a unique three-dimensional display. You find out that your competitor has copied your three-dimensional display. Can you claim that the design of the display is a three-dimensional work of artistic craftsmanship to apply for a copyright registration to enforce against your competitor? The answer may be YES! Under 17 U.S.C. § … Continue Reading
Suppose that you have a unique design for your product but no patent protection in the United States? Can you protect your product design to prevent a competitor from producing the same or similar design? Is there anything you can do? Let’s say you created a unique design for a product such as a smart … Continue Reading
During the life of a franchise system, franchisees are often the source of new product and service offering ideas. Franchisors often find that some of the best-selling products are created by franchisees. For example, some of the most popular sandwiches (including the Big Mac, Filet-o-Fish, and Egg McMuffin) at McDonald’s were created by franchisees. Indeed, … Continue Reading
California recently made new amendments to its franchise law, California Franchise Relations Act (“CFRA”) (Cal. Bus. & Prof. Code §20000 et seq.), which regulates franchisee-franchisor relationships. These amendments, which will affect franchise agreements entered into or renewed after January 1, 2016, substantially change the laws in that state dealing with franchise terminations and renewals. The … Continue Reading
Suppose that you have a unique configuration for your physical object. You find out that your competitor has scanned the configuration of your object and is printing the object with a three-dimensional (3-D) printer. Is there anything you can do? The answer is YES! Let’s suppose you have created a physical object such as a … Continue Reading
A group of luxury brand makers including Gucci, Balenciaga, Yves St. Laurent, and other brands owned by Paris-based Kering SA, recently sued on-line retail giant Alibaba, claiming that the company had knowingly made it possible for counterfeiters to sell their wares throughout the world. Why should we care about counterfeit goods? Those luxury brand companies … Continue Reading
A franchisee who sued his franchisor for fraud learned the hard way why it’s important to read the Franchise Disclosure Document, cover to cover, before buying a franchise. A California franchisee of Big O Tires sued the company in California court, alleging that Big O defrauded him when it sold him a franchise. The California … Continue Reading
