Foursquare Encounters Problems with Trademark Prosecution

Written by: Mark Terry As a Florida Patent Lawyer, I keep up with recent happenings at the U.S. Patent and Trademark Office (USPTO) to stay abreast on the latest in trademark law. Recently, the difficulties encountered at the USPTO by NYC-based Foursquare, which offers a location-based social networking website, has come to light. First off, the trademark application for the company’s main mark – FOURSQUARE – has been rejected because an improper specimen was submitted (see trademark application number 77956808). Apparently the attorney for Foursquare submitted an advertisement for the web site and not an actual web page where the applied-for services are

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Where Can You Sue a Patent Infringement Defendant?

Written by: Mark Terry Short Answer: where the defendant has minimum contacts 28 U.S.C. § 1400(b) makes it very clear that “Any civil action for patent infringement may be brought in the judicial district where the defendant resides, OR where the defendant has committed acts of infringement and has a regular and established place of business.” Furthermore, “for purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction.” 28 U.S.C. § 1391(c). Thus, for practical purposes, under the federal statutes, you can

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Board of Patent Appeals Reverses 103(a) Obviousness Rejection – Florida

Written by: Mark Terry The Board of Patent Appeals and Interferences (BPAI) recently handed down an influential decision when it reversed an obviousness-type rejection (Ex Parte McManamy, Appeal 2009-008781) entered by a patent examiner under 35 U.S.C. § 103(a). The 103(a)-obviousness rejection statute indicates that a patent may not be obtained if it would have been obvious to someone practicing ordinary skill in the “art” at the time of the invention. The wording of the statute clearly leaves room for subjective interpretation, and as a Miami-based Patent Attorney I constantly stay abreast of new holdings that can strengthen my clients’ positions in pursuing a

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The 35 USC 112, First Paragraph, Rejection – Florida Patent Lawyer Blog

Written by: Mark Terry The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Yufa affirmed a Patent Examiner’s 35 U.S.C. 112, 1st paragraph, rejection. This was an interesting case for me, a Miami Patent Attorney, because it illustrated a type of rejection I don’t deal with much. The case of Ex parte Yufa involved an apparatus for detecting particles using beams of light. At issue was a claim element that did not appear to be present in the original specification. The Board found the disputed claim element did not have support in the initial disclosure and therefore the 35 U.S.C. 112, 1st

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Tools for Fighting a 102 Anticipation Rejection

Written by: Mark Terry Today I came across a nice little Board of Patent Appeals case that outlines an additional tool that can be used to fight 102 anticipation rejections, especially when procuring software patents. Specifically, this case addresses a common situation: you receive a 102 rejection where the Examiner appears to have done a simple text search for each of your claim elements and found them all in disparate parts of one reference. The case of Ex parte Putnam (Appeal No. 2010-001668) involved a software process for migrating databases. The Patent Examiner found all of the elements of claim 1 in

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New USPTO Forms – After Sept. 16, 2012

Written by: Mark Terry A lot has been written about the new Patent Office forms that must be filed with new patent applications after Sept. 16, 2012. You could spend a few hours reading about it on Karen Hazzah’s site, on Oblon’s web site, or on the PharmaPatents web site. But if you only have a few minutes to figure out what you absolutely need to file with the your patent application after Sept. 16, 2012 in order to comply with the new American Invents Act (AIA) rules and look competent to your client, then read this blog posting. If there is no Assignee

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Software Patents: How to Lose an Obviousness Argument

Written by: Mark Terry In a straightforward decision today, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s obviousness rejection of a software invention based on a common prosecution mistake – the Appellant arguing limitations that are not in the claim. This post highlights a basic requirement of responding to Examiner rejections, especially when procuring software patents. The case of Ex parte Kreiner (Appeal No. 2010-004976) involved a software invention used to design circuits. The disputed claim included the following limitation: “a software-based development environment for designing circuits or systems.” In responding to a 103 obviousness rejection, the Appellant argued that

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How to Successfully Defend a Merely Descriptive Rejection of a Trademark

Written by: Mark Terry In an informative decision today, the Trademark Trial and Appeal Board (TTAB) reversed a Trademark Examining Attorney’s merely descriptive rejection. The In re Fujarek case, which I prosecuted, illustrates how to successfully defend a mere descriptiveness rejection of a trademark at the Trademark Office. As background, the Applicant’s mark was VOICE and the description of goods and services were “broadcasting services, namely, radio and television broadcasting by satellite and mobile phones, via a global computer network”. The Examining Attorney had issued a mere descriptiveness refusal, which we appealed to the TTAB. In reversing the mere descriptiveness

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Board of Patent Appeals: The Problem with Using Functional Language in Claims – Florida Patent Lawyer Blog

Written by: Mark Terry Yesterday’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Zurcher highlighted the problems associated with using functional language in claims, especially when claiming an apparatus. I, a Patent Lawyer in Miami, have written about this before in my article about intended use claim language. The Ex Parte Zurcher case involved an electrical-type socket invention. The claim element at issue included functional language. The Examiner asserted a prior art reference that included structure that performed the same function as described in Appellant’s functional language. I.e., the Examiner found the claimed functional language inherent in the prior art reference. The ensuing arguments can be separated

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