A trademark is a mark you use in order to identify your good or service.
For instance, IPfever is a trademark as it’s associated with services and contents offered at IPfever.com. If a law professor wants to start a blog about IP, she shouldn’t name it IPfever. Such naming would mislead people to think that the blog was associated with IPfever.
But, on the other hand, if a medical researcher encounters a feverish symptom related to Information Profession, she’s free to call it “IP fever,” to publish a paper titled “IP fever,” and so on. There’s no problem with such designation because the trademark IPfever, at the moment, has nothing to do with medical diagnosis.
So, you can freely catch an IPfever, and you may sell an IPfever brand roasted coffees. But you may not provide an IPfever service if that’s related to what is offered on ipfever.com.
That’s a brief overview of what trademark does and doesn’t. Let’s find out more.
Patent is an exclusive right to appropriate an invention.
Patent is often considered a luxury to a small and midsize business. More often than not, you find out about the importance of patents after someone accuses you of a patent infringement. It could be a cease and desist letter or a service of process.
Without an understanding of how patent works, you will never know if you are safe from patent lawsuits.
The problem with a patent lawsuit is that it’s so expensive that most small businesses can’t afford it. What happens then? You enter into a settlement agreement to avoid going to the courthouse. In fact, this can be cheaper than winning the lawsuit after costly legal proceedings.
Even worse, it could happen that:
you actually came up with the idea yourself, but didn’t apply for a patent;
you have no idea what are the infringing activities that the patent owner claims, or
the patent is just bogus (e.g. it’s a standard technique in your industry).
Read more and avoid expensive mistakes for your business!
Virtually everything that gives your business a competitive edge is protected by the law.
Your supplier list is a trade secret. Your company/brand names are trademarks. You can (and you should) patent your new and unique business/product ideas to prevent copycats. For many start-up companies, intellectual properties are all they have.
Trademark and Patent
It wouldn’t be fair if others can misappropriate the fruits of your hard work. For instance, when you keep your business know-hows confidential and they give you a competitive edge, they are protected by the trade secret law.
Of course, there are steps you can take to protect your valuable IPs more securely. You often see “®” mark next to many trade and brand names. The “R”stands for “registered trademark“. Although registration is purely optional, it has become a standard practice for good reasons.
What about “patent pending”? It means there’s a current patent application. By filing a patent application, you disclose your invention to the public in exchange for a legally sanctioned monopoly for a limited time. In other words, people will learn everything about your invention, but for about twenty years or so, nobody other than you can use that invention.
The worst thing you can do is to do nothing.
For example, unless you register your business name, your right to the name is limited to your current market. (That doesn’t sound good for start-ups, right?) Also, there’s nothing legally wrong about your competitors reverse-engineering what you’re selling in the market. Once they figure it out, you can’t stop them from copying it.
Then, is there a backlog created by the increase of Chinese trademarks?
I had a chance to look at the dates of applications filed on behalf of my clients from 3Q to 4Q of ’17 and to figure out what’s going on.
Legal examination of a trademark application starts after about three months from the filing date, and depending on the assigned examiner and the result of the examination, it can take a month to many months. I felt in 3Q and 4Q of ’17, the examination process moved slower than before, comparing 1Q and 2Q of ’17, but it might’ve be just coincidental.
When an examination is completed, there’s a notification that sets forth the publication date in about 20 days. That waiting period for publication has been more or less consistent from 4Q of ’17 to 1Q of ’18.
After the application is published in the Official Gazette, If there’s no opposition during next 30 days, the application moves on to the process of being registered. This registration process usually took about 6 weeks in 4Q of 2017 and about the same time in 1Q of 2018.
So, what’s the conclusion? If there’s a backlog, it must be on the legal examination part of the process as you probably guessed. And unfortunately, the examination process is one of the trickiest part to tell how long it usually takes, rendering our survey inconclusive.
*For those of you who are not familiar with Avvo, it’s a website where lawyers give out free answers and, in return, get ranked higher in its proprietary lawyer directory.
Isn’t a lawyer just like a mechanic?
Observation: You walk into their places, and you aren’t quite sure what’s going on. And you pretty much pay what’s on the bill. Also, unfortunately you can’t quite live without them.
Why, then, there’s no Avvo for mechanics? Wait a minute, there’s a whole bunch! Youtube is full of DIY videos on how-to-fix this and that, and there are numerous websites like ask-your-mechanic.com (not a real website).
They are not the same.
Car-fix videos and websites may be in part trying to promote business, but if you think about it, a very small number of the viewers will be located in the author’s geographical area. Further, the videos more often than not wholeheartedly say “don’t waste your money, you can do it yourself.”
Many lawyers reluctantly participate in Avvo just to gain publicity.
Here’s why we should ditch Avvo.
Mechanics sell their labor, meaning what they charge for is not the solution but the work performed to implement the solution.
Simply put, DIY videos may provide a solution, but they never fix your problem. If you do it yourself, you can probably save a trip to a local mechanic. But it’s not really free because you’ll be spending your own time and resources to get the job done.
Lawyers are different.
What lawyers sell is often the solution and nothing more. To elaborate, let’s say an attorney researched an issue and found that the law and facts strongly favor the client. Now, what the attorney needs to do is filing a complaint with the court.
Scenario 1: The attorney goes to the client and say “I’ve come up with a great plan to solve the problem, so you should pay $900 for it,” and add that “If you want, I will draft a complaint according to the plan for $100.”
Scenario 2: The attorney says to the client “To solve your problem, you need to file a complaint with the court; it will cost you $1,000 in total.”
These two scenarios are essentially the same as to the effect. However, the latter sounds much more reasonable and convincing to the client.
Scenario 2 works perfectly unless there’s an alternative that involves no lawsuit.
Let’s say there is a no-lawsuit plan that will cost the client $100 less because there’s no need to file a complaint but does the exactly same job. Now, would the client be happy with the $900 plan because it’s cheaper than the the original $1000 plan requiring a lawsuit? Or be appalled at the $900 fee for the all talk and no action plan? In many cases, it’s the latter.
The attorney will be inclined to keep the client happy and earn extra money by promising justice in the name of a lawsuit. It sounds rather reasonable, but the attorney just tossed out a cheaper but equally effective option. I think lawyers shouldn’t rationalize something like this by saying that’s how it works.
Telling clients what they want to hear is never good in law practice.
I think what Avvo is doing is effectively eliminating the first $900.
Let’s say an Avvo user acquired a great advice that includes filing a complaint. The advice was given free, but can the client walk into another attorney’s office and pay $100 for filing a lawsuit? Probably not.
The lawyer who was later retained to file a lawsuit might charge less than $1,000 for it, but it all depends on how much the advice can reduce the time and cost to draft the complaint. In all fairness, no plan is like an instruction you can mindlessly follow; the fee could be less than $1,000 but never $100.
Let’s say you stick to the first attorney who masterminded the plan. Here, the lawyer just performed a $900 worth work for free, and … wait a minute. $900 out of $1,000? Is this a rate of discount a seller can afford?
The pitfall of Avvo.
A service provider can’t give out free answers when those answers are actually the essence of their service. Avvo might argue that it’s making legal service more accessible, but I say it’s going into the wrong direction.
A smart way to work with attorneys.
It starts with educating clients. When clients understand what’s going on, billing is just a formality facilitating the exchange of resources. Also, when clients are in control of what’s on the bill, they won’t complain much. Easier said than done, right?
I’m developing a platform where anyone can access a crash course on how to deal with a legal issue and work with attorneys as if they are experienced managers of their attorneys. You can check out IPfever.com where I’m working on trademark and patent related services.
For a starter, I’m writing step-by-step instructions for trademark and patent prosecution and on the side listed each step as a stand-alone product. One can follow the steps and meanwhile get help for certain steps that turn out to be troubling.
If you’re interested in IPfever, please keep reading.
IPfever is not another marketplace for legal services. For one, there’s no transaction fees for attorneys or clients. Also, any verified professional can sell their services, and there is no subscription required to access web contents or purchase legal services online.
In the future, IPfever may also include paid services like online tools and resources for law practitioners and office administrators, from which revenue can be generated. However, those services won’t unfairly compete against third-party equivalents. Otherwise, it would follow the footsteps of Avvo, leading legal industry into destructive competition.
How can IPfever reduce the cost of patent? We set up simple rules: (1) you do your own homework; (2) attorneys work online; and (3) we make sure the attorneys fees are proportional to what you get.
First, you do your own homework.
If you just ignore an issue because it’s too much to deal with yourself, nothing ever changes. Most small businesses don’t have a legal counsel of their own, meaning you probably need to spend extra money to work on IP issues. This is a mishap that can be avoided by educating yourself. In fact, basics of patent law can be understood within a reasonable time as long as you know where to look.
Second, attorneys work online.
This is an overly simple statement of what actually needs to be done. We’re talking about reducing unnecessary cost on lawyer’s part. Why do you need a fancy office space in downtown when the government agency you’re dealing with is not even in town?
When a patent research is virtually all about online databases, you don’t want to pay law firm’s researchers, administrative clerks and paralegals for an initial review of your company’s patent portfolio. It is an instant impression of your attorney that you want the most when you ask a lawyer if your business needs a patent. Unfortunately, a lawyer’s typical hourly charge include every help listed above.
Lastly, IPfever makes sure you get what you paid for.
It is unfortunate that the most businesses and individuals can’t afford a lawyer. What about a free initial consultation? We all know free stuff can be poisonous. When an attorney greets a free client, what would be first in his or her mind? He or she wants your business! A need for legal service will be emphasized, and a quick and easy solution is disfavored over conservative and costly measures.
IPfever wants to solve this problem with fairness in mind. If you hard press lawyers to give out more free stuff, it might good in the beginning but won’t last long. Nonetheless, it’s plausible that you can set up a fair ground where you pay for actual value of lawyer’s service. This is awesome not only for clients but also for lawyers who has a good legal mind but lacks marketing skills.
A fair ground starts with a better understanding.
If you are retaining an attorney because you don’t know a thing about the law, then you’re like asking a mechanic to take care of your car with a promise to pay whatever is done.
Patent is an intellectual property right, which is not aimed to boost the economy but intended to advance science and technology. So, many business-minded people will struggle with the basic concept of patent and how it should be used for their business.
On the other hand, patent is recognized as the most reliable and strong intellectual property right in business. You probably heard about its importance even if you really don’t know much.
The hurdle for small businesses in developing a strong patent portfolio is the expense. Does it have to be prohibitively expensive? Well, it doesn’t have to be. The more you know about the patent, the more likely you will find a solution for your business yourself.
This is where you can benefit from a consultation to a patent attorney who understands your technology and has your best interest in mind.
The truth is virtually anything can be patented … if you don’t mind what is claimed in the patent.
In other words, you sufficiently narrow the scope of your claims to meet the requirements of the patent issuance, and the grant of patent is granted. Unfortunately, this is what you likely get from a cheap flat-fee patent prosecution services.
The quality of patent matters.
When the scope of patent claims is too narrow, you won’t get much from the patent. Let’s say you “discovered” a new chemical. When this chemical is added to a fuel, the efficiency of any internal combustion engine can be increased by more than 50 percent. Now, you’ve got to patent it.
You can patent a fuel additive containing the chemical.
Well, that is too narrow because it would not prevent others from selling fuels (not a fuel additive) containing the chemical. It seems you simply handed over the technology to the energy companies as no one would buy your patented fuel additive.
Then, should you claim the chemical itself?
Not really. When the chemical is not artificial, which is the case here because we assumed that it was “discovered” (not synthesized), it is not a patentable subject.
Let’s talk about the cost.
The government fees can start from a couple hundreds (as you might get discount for being a small business) to thousands of dollars. In fact, it depends on various factors like the number of claims and the length of the application.
Now the patent practitioner’s fees
I don’t recommend a flat fee arrangement unless you know what you’re doing. In other words, you should have sufficient knowledge to meaningfully get involved in the prosecution. Hourly charges vary widely (i.e. from hundreds to more than a thousand), and also the time. Therefore, you should find one you can trust and talk about the cost in advance.
What good comes with the patent application?
In the past, the customers were intrigued by the mere fact that it’s “patent pending,” but I don’t think that still works.
You will thwart competitors from copying your invention although they can be quick to design around your invention (like selling fuels instead of additives).
You will also prevent others from patenting the same technology.
As you do a preliminary work (like clearance search), you will better understand the technology and the market.
Don’t forget the value of intellectual property as an asset. When you’re selling your business, a mere know-how isn’t exactly same as the patent, which is a property right.
If others are interested in licensing your tech, you can also expect a royalty.
Getting a patent is not like having a trademark registered.
If you started using a name, logo, image, or even a sequence of musical notes as a symbol that stands for your product or service, you already have a trademark. Trademark registration is a way to give an affirmative notice to the public that you are using the mark. The registration offers some perks, which are very helpful for your business, but the intellectual property right is not created by it.
On the other hand, a patent right is created when the government issue you a patent because your creative work doesn’t itself create a property right. If you invented something, you have a choice. You can disclose the ins and outs of the invention in exchange for an intellectual property right or just keep it under your sleeve.
You should wisely decide whether you apply for a patent or not.
A patent application usually discloses something you want to hide from the public as the law requires that (usually after 18 months from the application date) your application be published. In other words, everyone in the world will be able to access the disclosed information in the patent application.
If you have a technology that is immune to reverse-engineering and you are confident that you can keep the secret, getting a patent is probably more of a public service than a business move. Of course, there are instances that you want to open your technology to make it an industry standard. In this case, you patent the technology so people can learn about it, and you promise that you won’t withhold this patented technology unfairly (like demanding unreasonable license fees to discriminate your competitors).
On the other hand, if your technology is not immune to reverse-engineering or you know others will soon catch up your progress, you likely need a patent protection. It will deter copycats and protect your business from an instance where someone else is issued a patent for the same technology and sues you. This situation can be also prevented by disclosing your work to the public in advance because the means for disclosure doesn’t have to be a patent application. Though, in this case you’re simply giving up your rights to the invention.
