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Abandonment-Based Trademark Cancellation Proceedings At the U.S. Trademark Office – Florida Patent Lawyer Blog

Written by Mark Terry    Can you cancel an active U.S. Trademark Registration that has been abandoned? As a Trademark Attorney practicing in Miami, Florida, I’ve been asked this question more than once by a client wanting to clear the path for their own registration. The Trademark Act provides for the cancellation of a registration if the registered mark has been abandoned. See Section 14 of the Trademark Act, 15 U.S.C. §1064. Under Section 45 of the Trademark Act, 15 U.S.C. §1127, a mark is considered abandoned when “its use has been discontinued with intent not to resume such use.” The definition of

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Board of Patent Appeals Rejects Key SONY Invention under 35 U.S.C. 112, 1st Para. – Florida Patent Lawyer Blog

Written by Mark Terry    In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. sec. 112, first paragraph, rejection of a key Sony Corp. invention. As a Patent Attorney practicing in Miami, Florida, this case was interesting because it illustrated how a 35 U.S.C. sec. 112, first paragraph, rejection can be upheld on appeal. Sony’s invention was a heat-sink apparatus for computer or camera microprocessors. At issue was the disclosure in the specification of a single glass with a substrate bonded to it. The specification also disclosed “a main body with a plurality of

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Datacard Corporation Patent Survives Reexamination – Florida Patent Lawyer Blog

Written by Mark Terry    Last week, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner’s 35 U.S.C. 103(a) obviousness rejection of Datacard Corporation’s key industry patent. As a practicing Miami Patent Lawyer who encounters 35 U.S.C. 103(a) obviousness rejections frequently, this case is interesting as it illustrates a significant practice pointer. The decision of the BPAI involved a vital Datacard Corp. patent that had been asserted defensively in multiple patent infringement lawsuits against rival Card Tech. Corp. In order to call the patent into question, Card Tech. Corp. instituted

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“Attorney Arguments” Not Accepted as Evidence When Evaluating a §102(e) Anticipation Patent Rejection – Florida Patent Lawyer Blog

Written by Mark Terry    Using strong words, today the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. §102(e) anticipation rejection of a Tokyo Electron invention, claiming that the Appellant’s attorney’s arguments alone held no weight. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the subtle drama of this decision and also learned something.  At issue in Ex parte Willis , was a claim to a laboratory measuring device that measured spectral data. In response to the Patent Examiner’s 35 U.S.C. §102(e) anticipation rejection, the Appellant’s attorney, from the firm of Oblon Spivak, provided one particular

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Amending Patent Claims After Allowance Under 37 CFR §1.312 – Florida Patent Lawyer Blog

Written by Mark Terry    As a Miami Patent Attorney with an active patent prosecution docket, I feel as if I’ve encountered every possible patent prosecution situation out there. But I was recently faced with a situation I had not previously encountered. At issue was my client’s patent application for project management software. The Examiner at the U.S. Patent and Trademark Office called me to ask if I would agree to an Examiner’s Amendment, to which I agreed. Subsequently, the Examiner issues an Examiner’s Amendment and a Notice of Allowance all at once. But after reviewing the Examiner’s Amendment, I noticed there were a

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Patent Office Rejects Key HP Invention on Appeal – Florida Patent Lawyer Blog

Written by Mark Terry    In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner’s 35 U.S.C. sec. 103(a) obviousness rejection of a key Hewlett-Packard software invention, but came up with a new rejection of its own – a 35 U.S.C. sec. 101 non-statutory subject matter rejection. As a Miami Patent Attorney that deals with Patent Office rejections related to software patents and software inventions almost daily, this case is instructive because it illustrates the case law on non-statutory subject matter and the process of dealing with the BPAI. The HP invention involved a software

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Photographer Sued Over Photo of Statue: Copyright Infringement? – Florida Patent Lawyer Blog

Written by Mark Terry    In 2008, photographer Mike Hipple took a photo of a famous sculpture by Jack Mackie in Seattle. The photo at issue was sold to a stock photo company subsequently used in its for-pay catalog. As a Miami Copyright Attorney, this case interests me because it brings up subtle copyright issues. This not an issue of direct copyright infringement. The copyright in the sculpture is directed to a 3D work of art. The photographer did not make a 3D copy of the sculpture. Instead, the photographer made a 2D derivative work of the sculpture. Thus, if there

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U.S. Copyright Protection for Architectural Works and Constructed Buildings – Florida Patent Lawyer Blog

Written by Mark Terry    Can you protect architectural drawings and constructed buildings using copyrights? As a Miami Copyright Attorney with an active copyright docket, this is a question I’ve been asked more than once. Generally the answer is yes. An original design of a building created in any tangible medium of expression, including a constructed building or architectural plans, models, or drawings, is subject to copyright protection as an “architectural work” under 17 U.S.C. §102 of the Copyright Act. Protection extends to the overall form as well as the arrangement and composition of spaces and elements in the design but does not include

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Board of Patent Appeals Reverses Rejection of Key Verizon Invention – Florida Patent Lawyer Blog

Written by Mark Terry    In one of its first decisions of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner’s 35 U.S.C. §103(a) rejection of a key Verizon invention. As a Miami Patent Attorney, this case was interesting because it illustrates how a 35 U.S.C. §103(a) obviousness rejection can be reversed on appeal to the BPAI. At issue was a Verizon claim that disclosed software for an LDAP server that receives a request in first protocol format and then converts retrieved information from a second protocol format to the first protocol format. The Examiner rejected the Verizon claim

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