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Archived updates for Thursday, June 29, 2006

Revised Procedure for Accelerated Examination of Certain U.S. Patent Applications


Petitions to Make Special filed with the U.S. Patent and Trademark Office on or after August 25, 2006, and based on manufacture, infringement, environmental quality, energy, recombinant DNA, superconductivity materials, HIV/AIDS and cancer, countering terrorism, or small entity biotechnology applications will be processed and examined using a revised procedure for accelerated examination announced on June 20, 2006. The new procedure excludes Petitions based on the applicant's health or age, and those based upon the Patent Prosecution Highway Program for US-JP patent examination reciprocity.

According to the USPTO's press release on June 26, 2006, the accelerated examination procedure is designed to give applicants quality patents in twelve mmonths or less. "In exchange for quick examination, patent examiners will receive more focused and detailed information about the invention and the closest prior art from the applicants. This increased disclosure upfront by applicants will help examiners more quickly make the correct decision about whether a claimed invention deserves a patent."

Under the new program, an application may be granted accelerated examination only when numerous conditions are met, including,
  1. The application must be a non-reissue utility or design application filed under 35 U.S.C. 111(a).
  2. The application, petition, and required fees must be filed electronically using the USPTO's electronic filing system (EFS), or EFS-Web. See future form PTO/SB/28.
  3. At the time of filing, the application must be complete under 37 CFR 1.51 and in condition for examination. .
  4. The application must contain three or fewer independent claims and twenty or fewer total claims and no multiple dependent claims.
  5. By filing a petition to make special under the accelerated examination program the applicant is agreeing not to separately argue the patentability of any dependent claim during any appeal in the application.
  6. At the time of filing, applicant must provide a statement that a prescribed preexamination search was conducted, .An amendment to the claims (including any new claim) that is not encompassed by the preexamination search or an updated accelerated examination support document (see item 9) will be treated as not fully responsive and will not be entered. A search report from a foreign patent office will not satisfy this preexamination search requirement unless the search report satisfies the requirements set forth in this notice for a preexamination search.
  7. At the time of filing, applicant must also provide an "accelerated examination support document with an information disclosure statement (IDS) with an identification of all the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference. The accelerated examination support document must also include a showing of where each limitation of the claims finds support under the first paragraph of 35 U.S.C. 112 in the written description of the specification. For each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112, ] 6, it must also identify the structure, material, or acts in the specification that correspond to each means- (or step-) plus-function claim element that invokes consideration under 35 U.S.C. 112, ] 6. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of the claims finds support under the first paragraph of 35 U.S.C. 112 in each such application in which such support exists.
In those instances in which the petition or accelerated examination support document is defective in one or more requirements, applicant will be given a single opportunity to perfect the petition or accelerated examination support document within a time period of one month (no extensions under 37 CFR 1.136(a)). If the application and/or petition does not meet all the prerequisites set forth in this notice for the application to be granted special status (including a determination that the search is deemed to be insufficient), the applicant will be notified of the defects and the application will remain in the status of a new application awaiting action in its regular turn.

Once a petition has been granted, prosecution will be docketed and taken up for action expeditiously (e.g., within two weeks of the granting of special status). If an Office action other than a notice of allowance or a final Office action is mailed, the Office action will set a shortened statutory period of one-month or thirty-days, whichever is longer. No extensions of this shortened statutory period under 37 CFR 1.136(a) will be permitted. Any reply or other papers must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the papers are not filed electronically via EFS-Web, or the reply is not fully responsive. Failure to timely file a reply will result in abandonment of the application.

For any amendment to the claims (including any new claim) that is not encompassed by the accelerated examination support document, applicant is required to provide an updated accelerated examination support document that encompasses the amended or new claims at the time of filing the amendment. Failure to provide such updated accelerated examination support document at the time of filing the amendment will cause the amendment to be treated as not fully responsive and not to be entered.

If an application becomes involved in proceedings outside the normal examination process (e.g., a secrecy order, national security review, interference, or petitions under 37 CFR 1.181-1.183), the application will not be accelerated.during those proceedings For example, during an interference proceeding, the application will be treated in accordance with the normal interference procedures and will not be treated under the accelerated examination program.

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Archived updates for Wednesday, June 28, 2006

Infringing Component Not Enough to Enjoin Sales of Microsoft XP in E.D. Tex.

The first, post-eBay patent injunction decision in z4 Technologies, Inc. v. Microsoft Corp., __ F.Supp.2d __ (E.D.Texas 2006)(Davis, J.)(citing eBay, Inc. v MercExchange, LLC, 126 S.Ct. 1837, 1839 (2006)) is perhaps most-notable for its discussion of 1) the lack of irreparable harm suffered by z4 and 2) the adequecy of remedies at law to compesate z4 for use of its product activation technology by Microsoft's Windows XP and Office software:

Lack of Irreparable Harm Suffered by z4

z4 argues that it will suffer irreparable harm if Microsoft is not enjoined from infringing the patents-in-suit. z4 contends that it made tremendous efforts to commercialize its invention prior to the suit and that its failure to succeed was partly due to Microsoft’s infringement. z4 implies that it was, and will continue to be, irreparably harmed by Microsoft’s infringement because there is no way to calculate the economic success z4 might have enjoyed but for Microsoft’s infringement.

There is no logical reason that a potential consumer or licensee of z4's technology would have been dissuaded from purchasing or licensing z4's product activation technology for use in its own software due to Microsoft’s infringement. Similarly, Microsoft’s continued infringement does not inhibit z4's ability to market, sell, or license its patented technology to other entities in the market. Microsoft does not
produce product activation software that it then individually sells, distributes, or licenses to other software manufacturers or consumers. If it did, then z4 might suffer irreparable harm in that Microsoft would be excluding z4 from selling or licensing its technology to those software manufacturers or consumers. However, Microsoft only uses the infringing technology as a small component of its own software, and it is not
likely that any consumer of Microsoft’s Windows or Office software purchases
these products for their product activation functionality.

In the absence of a permanent injunction against Microsoft, z4 will not suffer lost profits, the loss of brand name recognition or the loss of market share because of
Microsoft’s continued sale of the infringing products. These are the type of injuries that are often incalculable and irreparable. The only entity z4 is possibly prevented from marketing, selling or licensing its technology to absent an injunction is Microsoft. As discussed in the next section, z4 can be compensated for any harm
it suffers in the way of future infringement at the hands of Microsoft by calculating a reasonable royalty for Microsoft’s continued use of the product activation technology. Accordingly, z4 has not demonstrated that it will suffer irreparable harm absent a permanent injunction.

Adequacy of Remedies Available at Law

The violation of a patent owner’s right to exclude can present a situation where monetary damages cannot adequately compensate the patent holder for that injury. For example, when an infringer saturates the market for a patented invention with an infringing product or damages the patent holder’s good will or brand name recognition by selling infringing products that infringer violates the patent holder’s exclusionary right in a manner that cannot be compensated through monetary damages. This is because it is impossible to determine the portions of the market the
patent owner would have secured but for the infringer or how much damage was done to the patent owner’s brand recognition or good will due to the infringement. However, this is not the scenario in the present case.

Microsoft’s use of z4's intellectual property does not exclude z4 from selling or licensing its product to any sector of the market or threaten z4's brand name recognition or good will in any way. z4 is only excluded from selling or licensing its technology to Microsoft. Accordingly, z4 is not excluded from the use of its intellectual property in a way that cannot be calculated with reasonable certainty in the form of monetary damages, just as the past damages for infringement were calculated at trial.

In his concurrence, Justice Kennedy instructed courts to be cognizant of the nature of the patent being enforced and the economic function of the patent holder when applying the equitable factors. Id. at 1842 (Kennedy, J., concurring). Justice Kennedy specifically mentioned the situation where a “patented invention is but a small component of the product the companies seek to produce” and states that in such a situation, “legal damages may well be sufficient to compensate for the infringement and an injunction may not serve the public interest.” Id. (Kennedy, J., concurring).

Here, product activation is a very small component of the Microsoft Windows and Office software products that the jury found to infringe z4's patents. The infringing product activation component of the software is in no way related to the core functionality for which the software is purchased by consumers. Accordingly, Justice Kennedy’s comments support the conclusion that monetary damages would be sufficient to compensate z4 for any future infringement by Microsoft.

Download the z4 decision from Dennis Crouch's Patently-O Blog.
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Archived updates for Tuesday, June 27, 2006

General Information About Trademarks

Basic Facts About Trademarks" is available from the U.S. Patent and Trademark Office at http://www.uspto.gov/web/offices/tac/doc/basic/ with answers to "Trademark Frequently Asked Questions" at http://www.uspto.gov/web/offices/tac/tmfaq.htm. The following is a general discussion of Trademark Law and the Federal trademark registration process. This discussion is not exhaustive. For example, there are special circumstances and exceptions to general rules that are not discussed below. It is also subject to change in the laws, fees, and estimated costs.

What is a Trademark?

A TRADEMARK is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are used to refer to both trademarks and service marks, whether they are word marks or other types of marks. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.

A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent protects an invention.

Establishing Trademark Rights

Trademark rights arise from either (1) actual use of the mark in connection with the offering or sale of goods or services in commerce, or (2) the filing of a proper application to register a mark in the U.S. Patent and Trademark Office (U.S. PTO, or PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. (See below, under "Types of Applications," for a discussion of what is meant by the terms commerce and use in commerce.) Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.

There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding. The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.

Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

Use of the "TM," "SM" and "®" Symbols

Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, ®, may only be used when the mark is formally registered in the U.S. PTO as discussed in more detail below. It is improper to use this latter symbol at any point before the registration issues.

Searches for Conflicting Marks

An applicant is not required to conduct a search for conflicting marks prior to applying with the U.S. PTO. It is generally advisable, however, to conduct a clearance search for conflicting marks not only prior to applying for registration with the U.S. PTO, but before adopting a mark in commerce. Such a search can not only provide a basis for predicting the potential for successfully obtaining a registration, but also predicting the potential for infringement of the trademark rights of another.

Typically two different levels of searching may be conducted. On one level, a search of registrations issued by the U.S. PTO and applications pending before the U.S. PTO along with state registrations (since each state provides a parallel registration procedure for obtaining a registration for that particular state) may be conducted at a cost of approximately $500.00. Such a search has drawbacks in that it does not include a search of common law trademark uses where the party using the mark has not sought registration. The U.S. Trademark Laws provide superior rights to the first party to adopt and use a mark and not the first party to seek or obtain registration. Thus, common law rights are also important.

A second level of searching includes not only the databases of the U.S. Patent and Trademark Office and each state trademark office, but also an attempt to search various directories which might reveal common law uses of marks by third parties. Ordinarily such a search is conducted through a third party service provider that maintains a proprietary common law trademark database. This level of searching typically costs about $1,000.00 to $1,200.00. We can discuss with you which level of searching may be more appropriate for your situation.

Benefits of Federal Trademark Registration

Although trademark registration is not required in the U.S. it does provide several advantages, including
  • constructive notice to the public of the registrant's claim of ownership of the mark;
  • a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • the ability to bring an action concerning the mark in federal court;
  • the use of the U.S registration as a basis to obtain registration in foreign countries; and
  • the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Types and Basis of Applications for Federal Registration

An applicant may apply for federal registration in three principal ways. (1) An applicant who has already commenced using a mark in commerce may file based on that use (a "use" application). (2) An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application). For the purpose of obtaining federal registration, commerce means all commerce which may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country. The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of a mark in promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce. Use of a mark in purely local commerce within a state does not qualify as "use in commerce." If an applicant files based on a bona fide intention to use in commerce, the applicant will have to use the mark in commerce and submit an allegation of use to the PTO before the PTO will register the mark. (3) Additionally, under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.

A United States registration provides protection only in the United States and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws.

Purely local use within a state may qualify for registration of the mark with the trademark office of the state in which use is made. Each state has its own trademark office that operates separately from the U.S. PTO.

Who May File an Application?

The application must be filed in the name of the owner of the mark; usually an individual, corporation or partnership. The owner of a mark controls the nature and quality of the goods or services identified by the mark.

Laws & Rules Governing Federal Registration

The federal registration of trademarks is governed by the Trademark Act of 1946, as amended, 15 U.S.C. §1051 et seq.

Other Types of Applications

In addition to trademarks and service marks, the Trademark Act provides for federal registration of other types of marks, such as certification marks, collective trademarks and service marks, and collective membership marks. These types of marks are relatively rare.

Filing Date

The U.S. PTO is responsible for the federal registration of trademarks. When an application is received, the PTO reviews it to determine whether it meets the minimum requirements for receiving a filing date. If the application meets the filing requirements, the U.S. PTO assigns it a serial number and sends the applicant a receipt about two months after filing. If the minimum requirements are not met, the entire mailing, including the filing fee, is returned to the applicant.

Application Filing Requirements

To receive a filing date, the applicant must provide all of the following:

  1. A written application form;
  2. A drawing of the mark on a separate piece of paper;
  3. The required filing fee;
  4. If the application is filed based upon prior use of the mark in commerce, three specimens for each class of goods or services. The specimens must show actual use of the mark with the goods or services. The specimens may be identical or they may be examples of three different uses showing the same mark; and
  5. An identification of the goods and/or services to be marketed in connection with the mark.
    Identification of the Goods and/or Services

A mark can only be registered for specific goods and services. The goods and services listed will establish the scope of the applicant's rights in the relevant mark. The goods and services specified in the application must be the applicant's actual "goods in trade" or the actual services the applicant renders for the benefit of others. Use language that would be readily understandable to the general public. For example, if the applicant uses or intends to use the mark to identify "candy," "word processors," "baseballs and baseball bats," "travel magazines," "dry cleaning services" or "restaurant services" the identification should clearly and concisely list each such item. If the applicant uses indefinite terms, such as "accessories," "components," "devices," "equipment," "food," "materials," "parts," "systems," "products," or the like, then those words must be followed by the word "namely" and the goods or services listed by their common commercial name(s).

The applicant must be very careful when identifying the goods and services. Because the filing of an application establishes certain presumptions of rights as of the filing date, the application may not be amended later to add any products or services not within the scope of the identification. For example, the identification of "clothing" could be amended to "shirts and jackets," which narrows the scope, but could not be amended to "retail clothing store services," which would change the scope. Similarly, "physical therapy services" could not be changed to "medical services" because this would broaden the scope of the identification. Also, if the identification includes a trade channel limitation, deleting that limitation would broaden the scope of the identification.

The identification of goods and services must not describe the mode of use of the mark, such as on labels, stationery, menus, signs, containers or in advertising. This information is, instead, discussed in the "method-of-use clause," of the trademark application. For example, in the identification of goods and services, the term "advertising" usually is intended to identify a service rendered by advertising agencies. Moreover, "labels," "menus," "signs" and "containers" are specific goods. If the applicant identifies these goods or services by mistake, the applicant may not amend the identification to the actual goods or services of the applicant. Thus, if the identification indicates "menus," it could not be amended to "restaurant services." Similarly, if the goods are identified as "containers or labels for jam," the identification could not be amended to "jam."

NOTE: If the identification does not identify any recognizable goods or services, the application will be denied a filing date and returned to the applicant. For example, if the applicant specifies the mark itself or wording such as "company name," "corporate name," or "company logo," and nothing else, the application will be denied a filing date and returned to the applicant. If the applicant identifies the goods and services too broadly as, for example, "advertising and business," "miscellaneous," "miscellaneous goods and services," or just "products," or "services," the application will also be denied a filing date and returned to the applicant.

Examination

About six months after filing, an examining attorney at the PTO reviews the application and determines whether the mark may be registered. In reviewing the application, the examining attorney (at the PTO) conducts a search of issued U.S. trademark registrations and pending applications for a conflicting mark. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the mark cannot be registered.

To determine whether there is a conflict between two marks, the PTO determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the goods or services of one party with those of the other party as a result of the use of the marks at issue by both parties. The principal factors to be considered in reaching this decision are the similarity of the marks (comparing their sound, meaning and appearance) and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks need not be identical, and the goods and services do not have to be the same.
If the examining attorney initially refuses to allow the mark to be registered, the examining attorney will issue a letter listing any grounds for refusal and any corrections required in the application. The examining attorney may also contact the applicant by telephone if only minor corrections are required. The applicant must respond to any objections within six months of the mailing date of the letter, or the application will be abandoned. If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. The applicant may then appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the PTO.

A common ground for refusal is likelihood of confusion between the applicant's mark and a registered mark. Marks which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused. Marks consisting of geographic terms or surnames may also be refused. Merely descriptive marks and primarily merely geographic terms may be registerable upon a showing that they have acquired distinctiveness in connection with the applicant's goods and/or services. Marks may be refused for other reasons as well. And often the examining attorney will request that the applicant revise the identification of the goods and/or services listed in the application on which the applicant claims to be using his mark or intends to use his mark in the future.

Publication for Opposition

If there are no objections, or if the applicant overcomes all grounds for refusal, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO. The PTO will send a NOTICE OF PUBLICATION to the applicant indicating the date of publication. In the case of two or more applications for similar marks, the PTO will publish the application with the earliest effective filing date first. Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process.

Issuance of Certificate of Registration or Notice of Allowance

If the application was based upon the actual use of the mark in commerce prior to approval for publication, the PTO will register the mark and issue a registration certificate about 12 weeks after the date the mark was published, if no opposition is timely filed.

If, instead, the mark was published based upon the applicant's statement of having a bona fide intention to use the mark in commerce, the PTO will issue a NOTICE OF ALLOWANCE about 12 weeks after the date the mark was published, again provided no opposition was filed. The applicant then has six months from the date of the NOTICE OF ALLOWANCE to either (1) use the mark in commerce and submit a STATEMENT OF USE, or (2) request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE (see forms and instructions in this booklet). The applicant may request additional extensions of time only as noted in the instructions on the back of the extension form. If the STATEMENT OF USE is filed and approved, the PTO will then issue the registration certificate.

Fees

The costs for preparing and filing an application to register a trademark with the U.S. Patent and Trademark Office (U.S. PTO) typically run no more than $1,000.00, including our fees, docketing fees, the U.S. PTO application filing fee of $335.00 for one class of goods or services listed in the application, and incidental expenses such as photocopying, postage, and the like. If more than one class of goods or services are included in the application an additional filing fee of $335.00 per additional class will be required. In addition to the application filing fee, applicants filing based on a bona fide intention to use a mark in commerce must submit a governmental fee of $100.00 for each class of goods or services in the application when filing any of the following:

  • an AMENDMENT TO ALLEGE USE
  • a STATEMENT OF USE
  • a REQUEST FOR AN EXTENSION OF TIME TO FILE A STATEMENT OF USE

Additional fees and costs are incurred during the trademark registration process. For example, after the application has been filed there ordinarily will be fees and expenses incurred in reporting actions taken by the U.S. Patent and Trademark Office on the application, as well as responding to any action taken by the U.S. PTO (such as the issuance of a letter presenting grounds for refusal which allows a six month period for a response). Additionally, there will be fees and expenses incurred in preparing and filing an Amendment to Allege Use, a Statement of Use, or a Request for Extension of Time to file a Statement of Use in addition to the government filing fees mentioned above.

Specimens

If the applicant has already used the mark in commerce and files based on this use in commerce, then the applicant must submit three specimens per class showing use of the mark in commerce with the application. If, instead, the application is based on a bona fide intention to use mark in commerce, the applicant must submit three specimens per class at the time the applicant files either an AMENDMENT TO ALLEGE USE or a STATEMENT OF USE.

The specimens must be actual samples of how the mark is being used in commerce. The specimens may be identical or they may be examples of three different uses showing the same mark.

If the mark is used on goods, examples of acceptable specimens are tags or labels which are attached to the goods, containers for the goods, displays associated with the goods, or photographs of the goods showing use of the mark on the goods themselves. If it is impractical to send an actual specimen because of its size, photographs or other acceptable reproductions that show the mark on the goods, or packaging for the goods, must be furnished. Invoices, announcements, order forms, bills of lading, leaflets, brochures, catalogs, publicity releases, letterhead, and business cards generally are not acceptable specimens for goods.
If the mark is used for services, examples of acceptable specimens are signs, brochures about the services, advertisements for the services, business cards or stationery showing the mark in connection with the services, or photographs which show the mark either as it is used in the rendering or advertising of the services. In the case of a service mark, the specimens must either show the mark and include some clear reference to the type of services rendered under the mark in some form of advertising, or show the mark as it is used in the rendering of the service, for example on a store front or the side of a delivery or service truck.

Additional Requirements For Intent-To-Use Applications

An applicant who files its application based on having a bona fide intention to use a mark in commerce must make use of the mark in commerce before the mark can register. After use in commerce begins, the applicant must submit:

  1. three specimens evidencing use as discussed above;
  2. a fee of $100.00 per class of goods or services in the application; and
  3. either (1) an AMENDMENT TO ALLEGE USE if the application has not yet been approved for publication, or (2) a STATEMENT OF USE if the mark has been published and the PTO has issued a NOTICE OF ALLOWANCE.

Information Needed

One additional point is of note that relates to the ability to claim priority based on a prior filed U.S. application. The U.S. has entered into treaties with most foreign countries (including the Community Trademark Office) that provide that an application filed outside of the U.S. within six (6) months of a corresponding U.S. Patent and Trademark Office, can be considered as if it had been filed on the same date as the U.S. application. This ability to claim priority on a U.S. application allows for the possibility that a U.S. application may be filed first and subsequently consideration may be given to the filing of any foreign applications. Where there is an interest in filing foreign applications, we recommend that the foreign applications be filed within six months of the date of the U.S. application filing date in order to make a claim of priority on the U.S. application filing date.

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General Information About Copyright

Basic information about copyright protection is available from the U.S. Copyright Office in its "Copyright Basics circular" at http://www.copyright.gov/circs/circ1.html. Other circulars from the U.S. Copyright Office are listed at http://www.copyright.gov/circs/.

As noted in these brochures, copyright is secured automatically when the work is "created," or fixed in a copy for the first time. However, there are some additional advantages associated with using the proper notice copyright discussed at http://www.copyright.gov/circs/circ1.html#noc. For example, proper copyright notice informs the public that the work is protected by copyright and identifies the copyright owner. Furthermore, in the event that a work is infringed, if the work carries a proper notice, the court will not give any weight to a defendant's interposition of an innocent infringement defense-that is, that he or she did not realize that the work was protected. An innocent infringement defense may result in a reduction in damages that the copyright owner would otherwise receive.

Several additional advantages are also available for copyright owners who take the further step of registering their works as discussed at http://www.copyright.gov/circs/circ1.html#cr, including
  • If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney's fees will be available to the copyright owner in court actions. Otherwise, only an award of actual damages and profits is available to the copyright owner. These latter type damages can be difficult to prove.
  • Registration allows the owner of the copyright to record the registration with the U. S. Customs Service for protection against the importation of infringing copies. For additional information, go to the U.S. Customs and Border Protection website at www.cbp.gov/xp/cgov/import.

Although there is no such thing as an "international copyright" that will automatically protect an author's writings throughout the world, most countries offer protection to foreign works under certain conditions that have been greatly simplified by certain international copyright treaties and conventions. Further general information about copyright notice is available at http://www.copyright.gov/circs/circ03.html while general information copyright registration is available at http://www.copyright.gov/circs/circ03.html. With regard to copyright notice, the Copyright Office has issued regulations concerning the form and position of the copyright notice in the Volume 37 of the Code of Federal Regulations at Section 201.20. Here are some of the highlights that may be of interest to many emploees and employes.

Form of Copyright Notice for Visually Perceptible Copies

The form of the copyright notice used for "visually perceptible" copies - that is, those that can be seen or read, either directly (such as books) or with the aid of a machine (such as films)-is different from the form used for phonorecords of sound recordings (such as compact disks or cassettes). The notice for visually perceptible copies such as engineering drawings, marketing literature, packaging, inserts, etc., should contain all the following three elements:
The symbol © (the letter C in a circle), or the word "Copyright," or the abbreviation "Copr.";
The year of first publication of the work. In the case of compilations or derivative works incorporating previously published material, the year date of first publication of the compilation or derivative work is sufficient. The year date may be omitted where a pictorial, graphic, or sculptural work, with accompanying textual matter, if any, is reproduced in or on greeting cards, postcards, stationery, jewelry, dolls, toys, or any useful article; and The name of the owner of copyright in the work, or an abbreviation by which the name can be recognized, or a generally known alternative designation of the owner:

Example: © 2006 Owner Name

Unpublished Works

The copyright notice has never been required on unpublished works. However, because the dividing line between a preliminary distribution and actual publication is sometimes difficult to determine, the copyright owner may wish to place a copyright notice on copies or phonorecords that leave his or her control to indicate that rights are claimed. An appropriate notice for an unpublished work might be:

Example: Unpublished Work © 2006 Owner Name

For confidential or proprietary materials, a confidentiality notice may also be provided, such as

Example: Confidential Unpublished Work © 2006 Owner Name

Position of Notice

The copyright notice should be affixed to copies in such a way as to "give reasonable notice of the claim of copyright." The three elements of the notice should ordinarily appear together on the copies. For works published in book form, such as marketing brochures, the notice should appear on either

  • Title page,
  • Page immediately following the title page,
  • Either side of the front or back cover, or
  • First or last page of the main body of the work

For single-leaf works, such as many engineering drawings, the notice may appear on the front or back. In fact, most large organizations include the copyright notice with a confidentiality warning in the title block of their internal drawings.

Registration Procedures

Registration of an original work is a fairly simple and inexpensive procedure which we can handle for our clients. To register a work, the owner or their representative must send the following three elements in the same envelope or package to the Library of Congress, Copyright Office in Washington DC:

  1. A properly completed application form from www.copyright.gov/forms,
  2. A nonrefundable filing fee of $30 for each application, and
  3. At least one nonreturnable deposit of the work being registered.

Useful Articles Not Protectable by Copyright

As discussed at http://www.copyright.gov/fls/fl103.html designs for useful articles, such as vehicular bodies, wearing apparel, household appliances, and the like are not protected by copyright. However, the design of a useful article is subject to copyright protection to the degree that its pictorial, graphic, or sculptural features can be identified as existing independently of the utilitarian object in which they are embodied.

Keep in mind the line between uncopyrightable works of industrial design and copyrightable works of applied art is not always clear. A two-dimensional painting, drawing, or other graphic work is still identifiable when it is printed on or applied to useful articles such as textile fabrics, wallpaper, containers, and the like. On the other hand, although the shape of an industrial product may be aesthetically satisfying and valuable, the copyright law does not afford it protection. The designs of some useful objects may be entitled to protection under design patent law if the design is new and unobvious.

Fair Use

One of the rights accorded to the owner of copyright is the right to reproduce or to authorize others to reproduce the work in copies or phonorecords. However, this right is subject to certain limitations found in sections 107 through 118 of the copyright act (title 17, U.S. Code). One of the more important limitations is the doctrine of "fair use." This doctrine has been codified in section 107 of the copyright law which contains a list of the various purposes for which the reproduction of a particular work may be considered "fair," such as criticism, comment, news reporting, teaching, scholarship, and research.

Section 107 also sets out four factors to be considered in determining whether or not a particular use is fair:

  1. the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.

The distinction between "fair use" and infringement may be unclear and not easily defined. There is no specific number of words, lines, or notes that may safely be taken without permission. Acknowledging the source of the copyrighted material does not substitute for obtaining permission.

Works Made for Hire

Although the general rule is that the person who creates a work is the author and owner of that work, there is an exception to that principle: the copyright law defines a category of works called “works made for hire.” If a work is “made for hire,” the employer, and not the employee, is considered the author. The employer may be a firm, an organization, or an individual.

If a work is created by an employee, generally the work would be considered a work made for hire. However, if a work is created by an independent contractor (that is, someone who is not an employee under the general common law of agency), then the work is a specially ordered or commissioned work. Such a work can be a work made for hire only if both of the following conditions are met: (1) it comes within one of the nine categories of works listed in part 2 of the definition and (2) there is a written agreement between the parties specifying that the work is a work made for hire.

It is therefore important to have written work for hire agreements from all contractors performing creative work for your organization.

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New U.S. Copyright Office Fees Starting July 1, 2006

The U.S. Copyright Office has raised its fees for copyright registration, recordation, and related services on any request that is received in the Office on or after July1, 2006. The fees that have increased include those for registration ($45), document recordation ($95 for a single title), supplementary registration ($115), search services, certifications ($150per hour), and additional certificates ($40). See theCopyright Office website for a complete list of the new fees at www.copyright.gov/docs/fees.html.
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Accused Dome Equivalent to Recited "Plate" After Amendment Which Was Tangential to Contested Element

In a rare decision involving Doctrine of Equivalence for an amended claim term, the Federal Circuit in Primos, Inc. v. Hunter's Specialties, Inc., et al. (June 14, 2006; 05-1001,-1376) agreed with the district court that prosecution history estoppel did not preclude the application of the doctrine of equivalents to the term "plate" in claim 2 of U.S. Patent No. 5,415,578 for a "Game Call Apparatus" shown below:

Claim 2 of the ’578 patent reads as follows:

A game call apparatus to be completely inserted inside a person’s mouth for calling game, comprising:

a frame;

a membrane (22) of material stretched over the frame;

a flexible and moldable peripheral edge extending outwardly from the frame; and

a plate (15) having a length, the plate extending generally upward from the frame and over a portion of the membrane, the plate being differentially spaced above the portion of the membrane at various locations along the length of the plate.

According to Circuit Judge Lourie, the term "plate" in was amended in two ways: (1) by requiring that it have a "length" and (2) by adding the limitation that the plate be "differentially spaced" above the membrane.

The district court correctly recognized that the addition of the term "length" did not narrow the scope of the claim because every physical object has a length. The district court also determined that adding the limitation that the plate be "differentially spaced" above the membrane did narrow the scope of the claim, and the court assumed that the reason for the amendment was a substantial one relating to patentability. We agree with the district court, however, that the territory surrendered by the "differentially spaced" amendment comprises plates that are not differentially spaced above the membrane. That conclusion is consistent with the prosecution history. The patentee added the "differentially spaced" limitation to distinguish the diaphragm mouth call from a prior art device that consisted of a shelf-like structure positioned on top of the membrane without any spacing. The accused device, however, includes a dome that is spaced above the membrane. Because the accused device’s dome includes the spacing, the amendment was merely tangential to the contested element in the accused device, and thus prosecution history estoppel does not apply to prevent the application of the doctrine of equivalents.

Hunter’s Specialties also argues that the court should not have allowed the application of the doctrine of equivalents because, by doing so, the claim limitation "plate" in claim 2 of the ’578 patent was vitiated. According to Hunter’s Specialties, the court’s construction of the term "plate" requires a specific structure "of relatively uniform thickness and flatness which may also have some moderate curvature to it. Hunter’s Specialties asserts that allowing a "dome" to be
considered an equivalent to a "plate" would eliminate that limitation from the
claim. Primos responds that the "all limitations rule" is not applicable to the
circumstances in this case. According to Primos, the term "plate" does not
convey a definitive, geometric shape or structure, and thus that claim
limitation was not vitiated. Primos asserts that the district court properly
allowed the jury to consider whether a "dome" was equivalent to a "plate" and
that in doing so, no claim limitation was eliminated.

We agree with Primos that the application of the doctrine of equivalents was not improper in this case. Under the doctrine of equivalents, "a product or process that does not literally infringe upon [sic] the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements [sic] of the patented invention." Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997) (citation omitted). The "all limitations rule" restricts the doctrine of equivalents by preventing its application when doing so would vitiate a claim limitation. Warner-Jenkinson, 520 U.S. at 29 (stating that the doctrine of equivalents cannot be applied broadly so as to "effectively eliminate that [claim] element in its entirety"); Lockheed Martin Corp., 324 F.3d at 1321 ("[I]f a court determines that a finding of infringement under the doctrine of equivalents ‘would entirely vitiate a particular claim element,’ then the court should rule that there is no infringement under the doctrine of equivalents." (citation omitted)).

On appeal, Hunter's Specialties argues that we should reverse the jury’s finding of equivalence because the substitution of the accused dome for the claimed "plate" would vitiate the "plate" limitation and thereby violate the all limitations rule. As the district court recognized, Hunter’s Specialties is essentially contending that there can be no equivalent to the claimed "plate." Our precedent has recognized that "[t]here is no set formula for determining whether a finding of equivalence would vitiate a claim limitation, and thereby violate the all limitations rule. Rather, courts must consider the totality of the circumstances of each case and determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless." Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1359 (Fed. Cir. 2005) (citations omitted). Thus, because Primos’s theory of equivalence (i.e., that a dome is equivalent to the claimed "plate") does not "effectively eliminate . . . [the ‘plate’ limitation] in its entirety," it does not violate the all limitations rule. Noting that Hunter’s Specialties has not challenged whether the jury’s finding is supported by substantial evidence, we affirm the jury’s finding that the accused dome is equivalent to the claimed "plate."

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