THE PLUS IP FIRM
We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.
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Written by Mark Terry On Friday, the Board of Patent Appeals and Interferences (BPAI) rejected the well-known “intended use” argument in favor of a Patent Examiner’s 35 U.S.C. 102 anticipation rejection. As a Miami Patent Lawyer, I found the Ex parte Crabtree decision interesting because it confirmed my own abandonment of the “intended use” argument in the course of patent prosecution. The Ex parte Crabtree decision involved a claim for a mattress spring that performed a specific task. Specifically, the mattress spring “deflects debris.” The Appellant found a prior art reference that had the same structure as Appellant’s claim, but did not disclose a
Written by Mark Terry Yes, it can. A product can most definitely infringe a method of manufacture patent. I recently sent a cease a desist letter to a retailer of a luggage product that was manufactured using my client’s patented method of manufacture. His attorney – a patent attorney who’d been practicing for many years – responded with a letter that tersely stated, “all of the claims of the ‘226 patent are method claims and this no product could infringe a claim, only the practicing of a method could infringe.” That’s it – that’s all he had to say about
Written by: Mark Terry It’s an issue that comes up often. A manufacturer makes a widget and sells it to a U.S. importer, who registers the mark associated with the widget. The manufacturer later claims it owns the mark and seeks to cancel the importer’s trademark registration. As a Florida Trademark Lawyer, this is a situation I’ve seen more than once and I’m constantly looking for the courts’ and the Trademark Trial and Appeal Board’s (TTAB’s) take on this issue. The TTAB’s recent decision on this issue in the ZYTNIA vodka case affirms the widely held stance that it’s usually the registrant that wins. As
Written by Mark Terry In short, the answer is “by a preponderance of the evidence.” The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Hochsmann did a good job of highlighting this axiom. As a Miami Patent Lawyer, I found the Ex parte Hochsmann decision interesting because it reminded me of the burden I must carry when I practice before the BPAI. The case of Ex parte Hochsmann involved a chemical process including salt crystals. The principal issue in this appeal was whether Appellant had established that the Examiner erred in finding that the prior art reference would have disclosed a salt crystal. But
Written by Mark Terry In an educational decision yesterday, the Board of Patent Appeals and Interferences decided in Ex Parte Nakamura that an already-existing, but unacknowledged, characteristic in a prior art composition is obvious under 35 U.S.C. 103(a) but rebuttable if there is evidence to the contrary. As a patent attorney in Florida with an active patent prosecution docket, I’m always on the lookout for decisions of the BPAI that divulge methods for fighting rejections. In this case, the Appellant claimed a composition of nickel and tin that has a characteristic of preventing copper from diffusing. The problem was that the Examiner found a
Written by: Mark Terry Yesterday’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Lin reveals a common patent prosecution error -especially before the BPAI – failing to properly address a rejection. The case of Ex Parte Lin involved a photolithography invention. The Examiner rejected the claims under the 1st paragraph of 35 U.S.C. § 112 for failing to comply with the enablement requirement. According to the Examiner, the Specification disclosure would not enable a person with ordinary skill in this art (POSITA) to make or use, without undue experimentation, a “photomask with wavelength-reducing material throughout the full scope of the claimed
Written by: Mark Terry How do you calculate damages in a Trademark Infringement case? Is the financial data of the Plaintiff relevant when calculating damages in a trademark infringement case? This is an issue that often comes up during the discovery phase of a trademark infringement case. As a Miami Trademark Attorney currently involved in multiple trademark infringement cases in the Southern District of Florida, the subject of calculating damages is always in the forefront of my mind. With regard to a federal trademark infringement claim under the Lanham Act, a Plaintiff can elect to recover actual or statutory damages pursuant to 15 U.S.C.
Written by: Mark Terry Alibaba Group Holding Ltd. is preparing its estimated $16 Billion IPO by fortressing itself with patents. Although Alibaba has more than 1,900 issued patents and pending applications in Asia, it has also been aggressively filing patent applications in the U.S. China’s largest e-commerce company has obtained 102 U.S. patents, including 20 purchased from IBM Corp. Alibaba has 300 pending patent applications for technologies like product recommendations, payment processing and picture searches. Why the patent buying spree? If you’re an innovator like IBM, you obtain patents to protect the hard work and millions of dollars that has
Written by: Mark Terry Last night I had the pleasure of attending a South Florida Intellectual Property Law dinner in Miami, Florida that featured a presentation by Commissioner Robert Stoll. Super nice guy, by the way. In a word, he killed. He knew exactly what to present to a group of patent practitioners and he has really changed my outlook regarding the Patent Office. Just some of the good news he presented: a program to decrease pendency to first action to 10 months a program to decrease TOTAL pendency to 20 months a First Action Interview program to encourage Examiner’s to initiate an
THE PLUS IP FIRM
We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.
Call Now: 786.443.7720