IPfever

Atlanta law firm for global business

Category: Intellectual Property

  • US Trademark Backlog in the 1Q 2018?

    US Trademark Backlog in the 1Q 2018?

    There’s been reports about a huge number of applications, originating from China. See e.g. this WJ article at https://www.wsj.com/articles/flood-of-trademark-applications-fromchinaalarms-u-s-officials-1525521600.

    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.

  • How to get a patent without costing a fortune?

    How to get a patent without costing a fortune?

    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.

  • How Does Patent Work for Small to Mid-size Business?

    How Does Patent Work for Small to Mid-size Business?

    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.

  • Value of a patent: the cost-benefit analysis

    Value of a patent: the cost-benefit analysis

    Will your patent justify your time and money?

    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.

    1. You will thwart competitors from copying your invention although they can be quick to design around your invention (like selling fuels instead of additives).
    2. You will also prevent others from patenting the same technology.
    3. As you do a preliminary work (like clearance search), you will better understand the technology and the market.
    4. 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.
    5. If others are interested in licensing your tech, you can also expect a royalty.
  • Why you need a patent?

    Why you need a patent?

    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.

     

  • How much does a trademark registration REALLY cost?

    How much does a trademark registration REALLY cost?

    Above is a cumulative showing of trademark fees (government fees only).

    Assuming you use your trademark for a single type (category) of product/service, an online application fee can cost as low as $225, plus a $125 one-time maintenance fee after 5 years of use and $425 every 10 years. Total $1,200 over 20+ years? Not much right?

    This calculation doesn’t include a one-time filing for incontestability in the 5th year for $200, which is technically optional.

    However, if you don’t do it correctly, there are penalties.

    When you fail to provide all necessary information at filing, you will be subject to fees varying from $50 to $150 per incident. There are also optional filings that might strengthen your trademark. And if you miss a date on maintenance fees, you may be penalized. Those penalties can accumulate well past the initial filing fee.

    Aside from that, there are legal fees.

    Many attorneys charge a flat legal fee of $1000-$2000 per mark plus government fees. If your mark experiences rejections from the USPTO, they might ask for more money on an hourly basis during subsequent actions.

    As a result, your cost can vary widely depending on your trademark and how you proceed with it.

    Please note that increases in UPSTO fees in 2021 are not reflected above.

    by YJ on 12/30/2020
  • Tax forms are complex and lengthy, but they can’t go south.

    Tax forms are complex and lengthy, but they can’t go south.

    Federal trademark registration has become a standard practice for many reasons including (1) it’s inexpensive (as low as $225 to apply online); (2) due to the internet, no one does business in a single state; and (3) branding becomes crucial to even small businesses. And if I add one more to the list, it’s fairly easy.

    The easiness comes with a risk.

    For example, federal tax forms are usually very complex and lengthy; they are designed to make you write down all taxable incomes imaginable, even those you would never know they were considered income. A trademark application, on the other hand, is very simple and straightforward. In other words, it’s easy to fill out the forms but hard to do it right.

    So there’s $99 (plus application fees) trademark registration services online.

    Unfortunately, not many people see this as a problem. These services simply let you search registered trademarks online, to apply trademark online, and remind you of important dates for maintaining registration. Well, it sounds like a lot, but the United States Patent and Trademark Office (“USPTO”) offers Trademark Electronic Search, Trademark Electronic Application, and even email reminders of important dates, for free of charge.

    There is a reason for such a low price.

    Online registration services do provide convenient tools and ease the pain of yours, but they come with a price (literally and also in the form of a false sense of security).