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provide the best attention and service for filing patent and trademark applications.
Look for a patent attorney trademark attorney who has his/her own inventions, issued patents, trademarks or who has participated in starting a new business.
Patent Lawyers are subject matter specific based on their technical degree(s) earned in college. Look for an Attorney with a technical degree that matches your idea invention, such as electrical engineering, computer science, software, physics, biology, biochemistry, chemistry, or mechanical engineering, etc.
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Call Mat Grell for a Free patent consultation 678-202-5990.
To search the US Patent & Trademark Office for a Patent Attorney near you click the link below or visit US Patent Office and search for “OED Patent Attorney/Agent Search.” Next enter your city/state or zip code into the USPTO search engine and the engine will generate a list of Attorney/Agents near you. Use the criteria above to find a Patent Lawyer right for you. Search to find a US Patent Lawyer Search
Often, companies seeking a pre-determination as to whether a new brand is registerable as a US Trademark will apply for a trademark before they begin using it in commerce. These applications, commonly referred to as Intent to Use (ITU) or Section 1(b) applications, are reviewed for conflicts and other requirements before evidence of use is submitted by the applicant. If an applicant filing an ITU trademark application expects to use the brand across a variety of goods and services, they may choose to file in multiple trademark classes. However, after being allowed by the USPTO, the applicant must submit their evidence of use across ALL classes before the deadline to allege use. If the applicant has only established use in some, but not all classes, they must divide their application. By doing so, the applicant must be diligent to make sure part of their application avoids abandonment.
A Request to Divide is usually accompanied with an Allegation of Use in at least one of the applied for classes. The Allegation of Use must include a specimen – usually one or more photos of the goods and/or services bearing the applied for mark. For classes which the applicant is not yet prepared to submit specimen, the applicant must pay the Allegation of Use fee, Request to Divide fee, AND application fees related to those classes the applicant wishes to divide from the original application. Failing to pay the new application fees in each class will result in abandonment of the divided classes which can only be revived by paying these fees and filing a petition to revive with the corresponding petition fee. There are timing requirements for petitions which are strictly enforced and may result in the permanent abandonment and require an entirely new application with a new priority date.
If you’re considering protecting a new brand with a trademark, but want to make sure it will be allowed first, ITU applications are a great way to begin. If you’re planning on using and protecting your brand in a variety of classes, it may be helpful to strategize with a Trademark Attorney beforehand. Knowing critical dates in advance can help you prepare to avoid having to divide your application in the first place. If you do have to divide your application, it may be a good time to hire an attorney to help you avoid abandonment or unnecessary revival fees. Since you’ll need to prepare important documents and critical dates are crucial to protecting your brand with a trademark, you should consider hiring a trademark attorney. If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.
In May 2019, the USPTO announced that as of August 3, 2019, all international applicants for US trademarks must be represented by US counsel. The final rule has been published in the Federal Register. This means that to submit a new trademark application, to respond or enter documents into a pending trademark application, or to renew existing registrations, international individuals and businesses must hire a US attorney to represent them and submit these materials on their behalf.
The new rule is intended to satisfy 3 goals: (1) increase USPTO customer compliance with US trademark law and USPTO regulations, (2) improve the accuracy of trademark submissions, and (3) safeguard the integrity of the US trademark register. Since domestic and international businesses rely on the US trademark register to make important business and legal decisions about their brands, the USPTO determined that requiring international applicants be represented by counsel would help them maintain compliance with their stringent trademark rules. It found that an increasing number of international applicants had filed inaccurate and potentially fraudulent submissions with the USPTO. Some cases have even involved governments and business entities offering cash bounties in the form of subsidies for successful registrations of trademarks in the US. The USPTO found that these applicants often were represented by non-lawyer consultants, in violation of unlicensed practice of law policies.
To protect international applicants from unwittingly participating in fraud facilitated by these international non-lawyer consultants, and to otherwise harmonize the USPTO rules with its international trademark office peers, this policy now requires electronic submissions by international applicants to be submitted by US attorneys having verified credentials with the USPTO. In fact, as of October 26, 2019 all applicants, domestic and international, are now required to obtain USPTO credentials in order to submit trademark documents in order to prevent misuse of the online system. Through 2020, you can expect the USPTO to take further steps to increase security and reduce fraud. These will include verification of each my.uspto.gov account and adding the ability to delegate and control access to filings.
Due to these changes, it’s now more important than ever to have experienced trademark counsel represent you before the USPTO. If you are an international or domestic applicant who wants to be represented by a firm with decades of experience protecting brands with US trademarks, please call Grell & Watson Patent Attorneys for a free consultation.
Timing of Filing Design and Provisional Patent Applications
Inventors wishing to file utility patents often secure a priority date by first filing Provisional Patent Applications. These applications focus squarely on what the inventor has documented, and don’t require some of the formalities of a Non-Provisional Patent Application. Since Provisional Patent applications aren’t examined, this means an inventor can file an application and receive a priority date for their patent without the need for a patent claim, an oath or declaration, an Information Disclosure Statement (IDS), and other formal application requirements. As long as the inventor files a Non-Provisional Patent Application within 1 year of their Provisional filing, swearing priority to the Provisional Patent Application, intervening publications cannot be cited as prior art against the inventor’s application.
Under 35 U.S.C. § 172, however, only Non-Provisional utility patent applications may swear priority to an earlier filed Provisional Patent application. Therefore, if ornamental design is a prominent feature of an invention, the provisional filing date may not be used as a placeholder for priority. So, if both useful features and ornamental design aspects of an invention are important to the overall marketing and proprietary features of it, inventors should consider filing a design patent application in addition to filing a Provisional Patent Application. This can be done either simultaneously or by filing a design application soon after the filing of a Provisional Patent Application. That way, the ornamental features can receive a level of patent protection and share its priority date with respect to products sold or publications by others when it comes time for the USPTO to examine each application. Otherwise, products released or publications by others, and even the inventor’s own publications or sales, may become novelty defeating prior art against the inventor’s design application and the inventor may risk not being able to protect their ornamental features.
If you have a useful invention that also features a unique ornamental design, it’s important to keep these special design patent rules in mind. Since you’ll need to prepare important documents and critical dates are crucial to turning your application into a patent, you should consider hiring a patent attorney.
One other consideration must be taken into account in regard to foreign applicants wishing to protect their ornamental designs within the US. Under the same section of patent law, 35 U.S.C. § 172, foreign applicants claiming priority in a US Design Patent Application to a foreign application, must file their application within six-months of filing their foreign application for the same design in order to use their foreign priority date in their US application. This shortened time period for international applicants means they should take special care regarding these deadlines if ornamental features are being protected.
If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.
Filing Design and Provisional Patent Applications
Call for a Free Consultation with a Patent Attorney or Trademark Attorney.
By Richard Piercy
Ext. 104 – Atlanta I-75 & Downtown – (404) 596-7333
Abandoned Patent Applications
Patent application abandonment or patent abandonment means that a patent application is no longer pending or a patent is no longer valid, respectively. In the case of issued U.S. patents, this can occur due to failure to pay patent maintenance fees or when a patent owner expressly abandons his or her patent with a written declaration of abandonment. For U.S. patent applications, this generally occurs when, during the pendency of an application, an applicant fails to reply within six (6) months of the mail date of an Office Action from the USPTO patent examiner. Other circumstances of application abandonment include, but are not limited to, failure to pay issue fees after allowance and incomplete replies by applicants who then fail to cure the deficiencies within specified timeframes. Express or written abandonment is also possible, though it is generally reserved for cases where an applicant wishes to prevent the application’s publication.
Sometimes inventors become too busy, life gets in the way, or prosecuting their patent becomes overwhelmingly complicated. If they delay too long in responding to USPTO correspondence, they may unintentionally abandon their application and their invention can enter the public domain. In this article, we cover how abandonment might happen and steps you can take to get your application back on track.
Petitioning to Revive an Abandoned Patent Application – After Two Months
If the holding of abandonment is not being disputed, an abandoned U.S. patent application may be revived only on the basis of unintentional delay. If the delay in reply by applicant was unintentional or unavoidable, a petition to the Director may be filed to revive the application. Under 37 C.F.R. 1.137, the petition requires (i) the reply required to the outstanding Office Action; (ii) the petition fee of $850 for a small entity; (iii) a terminal disclaimer and corresponding fee of $160; and (iv) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. In the case of failing to reply to a Non-Final Office Action, the applicant may file a continuation application which swears priority to the abandoned application instead of its reply to the outstanding Office Action with a continuation application swearing priority to the initial application, in place of (i) the reply required.
While these are the only requirements for filing the petition, the Director of the USPTO may require additional information when there is a question as to whether the entire delay was unintentional. This determination is at the sole discretion of the Director. Should the Director require this additional information, the applicant must then carry the burden of proof to establish that the delay from the due date for the reply until the filing of a grantable petition was unintentional.
This may mean providing reasons, circumstances or excuses for failing to respond along with sufficient written or testamentary evidence corroborating them. Examples might include failure to receive an Office Action and/or a Notice of Abandonment due to change in address or lost mail, failure of an applicant’s representative to communicate the same, the applicant’s physical or mental incapacitation during the period of delay, death of the applicant or a close family relation, or confusion as to the sufficiency of the applicant’s response or the status of its application. Examples do not include the applicant deciding that responding would be too complicated or expensive or otherwise not worthwhile but later changing their mind.
Petitioning to Withdraw the Holding of Abandonment – Within Two Months
In cases where the applicant disputes the USPTO’s determination that the application was abandoned, he or she may petition to withdraw the holding of abandonment. The reasons for petitioning to withdraw the holding of abandonment include (i) non-receipt of USPTO correspondence by an applicant or its representative; (ii) argument that an incomplete response was substantially complete; or (iii) evidence that a reply was timely mailed or filed. In any of these scenarios, 37 C.F.R. 1.181(f) provides that any petition not filed within two (2) months of the Notice of Abandonment may be dismissed as untimely. Therefore, applicants that have been recently notified that their applications have been abandoned, must move quickly to petition the USPTO to withdraw the holding of abandonment.
If you have received a notice of abandonment but still wish to receive a patent for your invention, it may not be too late to fix your mistake. Since you’ll need to prepare important documents and critical dates and evidence are crucial to continuing your application, it may be time to hire a patent attorney. If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.
Abandoned Patent Applications
Call for a Free Consultation with a Patent Attorney or Trademark Attorney.
By Richard Piercy
Ext. 104 – Atlanta I-75 & Downtown – (404) 596-7333
When is my Provisional Deadline? US patent law allows inventors to file informal, or Provisional, patent applications. These applications consist largely of the inventor’s invention disclosure, without the requirement to conform to the complex and elaborate requirements of the standard, or Non-Provisional, patent application. This allows inventors a low-cost way to receive a priority date for their application and begin marketing their invention as “patent pending” upon filing. However, this application is never examined by the USPTO and may never become a patent unless the corresponding formal Non-Provisional patent application is filed within 1-year of the Provisional patent application filing. This date is sometimes referred to as the “Provisional Deadline.” While this date generally falls 365 days after the Provisional patent application’s filing date, some instances afford inventors one or more extra days to file.
Since there is an extra day in February every 4 years, inventors are incidentally afforded an extra day. This is because the Provisional Deadline falls on the same calendar day, not 365 days, from the date the Provisional patent application was filed. Though most may not even notice this extra day, applicants who filed in early March the year before a leap year may enjoy that extra day to review, finalize and file their Non-Provisional patent application.
If you’re considering filing a Provisional patent application, or are quickly approaching your Provisional Deadline, it’s never too late to hire a patent attorney to help draft and file your application. Patent attorneys can docket your application, keeping in mind all relevant deadlines, to remind you with plenty of time to make sure you don’t inadvertently abandon your invention. Please contact Grell & Watson Patent Attorneys for a free consultation.
Weekends and Federal Holidays
Nowadays, nearly all US patent applications are filed electronically online, and not filed on physical paper or fax. Absent outages and maintenance, the USPTO’s online filing system is generally open 24 hours a day and 365 days a year. Nonetheless, the USPTO affords extra time to inventors when their filing deadline falls on a weekend or federal holiday, when their office is not open. So, if the filing deadline falls on a Saturday or Sunday, the Non-Provisional patent application may be filed on the following Monday, while maintaining its priority to the Provisional patent application. If the following Monday or the filing deadline is a federal holiday, the inventor may file the Non-Provisional patent application the next business day. For example, if an inventor had filed her Provisional patent application on February 15, 2019, her Provisional Deadline would actually fall on February 18, 2020 because the 15th is a Saturday and the 17th is President’s Day. This would afford an inventor an extra 3 days to finalize and file her Non-Provisional patent application.
Please contact a US Patent Attorney at Grell & Watson
We would be happy to discuss your potential US Provisional Patent application and answer any patent questions.
Commonly, unrepresented applicants registering marks for apparel in International Class 25 will submit pictures of their mark across the front of a shirt as a Trademark Specimen for Clothing. This could be a word, phrase, slogan, or design they wish to popularize and market for apparel. However, even though these could be eligible for trademark protection in this class, the specimen submitted to the USPTO must feature the mark in a manner that is source indicative. Large screen printed or embroidered text or designs on the front of garments rarely meet this exacting standard. The USPTO may refuse a specimen for being “merely ornamental” or a “decorative feature.”
In order to register any mark with the USPTO, you must submit a trademark specimen for clothing of how you actually use the mark in commerce. More often than not, this means a picture of the goods as they are sold or the services as they appear to the customer.
Ornamental Refusal – A common mistake when submitting specimen for apparel or clothing trademarks.
Here are some tips to ensure your trademark specimen for clothing will be accepted by the US Patent & Trademark Office:
If you’ve already received an ornamental refusal for your apparel trademark application, it’s not too late to fix your mistake. Since you’ll need to prepare important documents and critical dates and evidence are crucial to proving your case, it may be time to hire a trademark attorney. If you’d like our help or have any questions before filing, please call
By Richard Piercy Patent & Trademark Attorney.
Call for a Free Consultation. Experienced & Affordable.
Grell & Watson, Patent Attorney, Trademark Copyright IP Lawyer
Conclusion: Trademark rules apply. If a mark consists of the hash symbol or the term HASHTAG combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic. Also trademark must functions as an identifier of the source of the applicant’s goods or services, if not then not trademarkable.
Background: Originally developed on Twitter, a hashtag is a word or a phrase following the pound sign “#phrase” used to categorize messages on social media relating to a specific topic the phrase. Hashtags have become an important aspect of social media. Their presence can be seen on social media platforms such as Facebook, Instagram, YouTube, Pinterest and more.
Hashtags function like a search key word and when searched will produce all messages and photos tagged with the #hashtag. Hashtags are used by individuals, celebrities, politicians, companies, television shows, radio shows, podcasts, YouTube channels and more to gather messages together under a specific topic the phrase. Consumers can use them to rate products or services and even to promote a product, service, or business.
Law: According to the Trademark Manual of Examining Procedure, a “hashtag” is a form of metadata consisting of a word or phrase prefixed with the symbol “#” (e.g., #chicago, #sewing, and #supremecourtdecisions). Hashtags are often used on social-networking sites to identify or facilitate a search for a keyword or topic of interest. See Dictionary.com, search of “hashtag,” http://dictionary.reference.com/browse/hashtag (June 19, 2013) (citing Random House Dictionary). A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services. Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media (i.e., social-media participants are directed to search a particular subject.
A place to search other Hashtags to see if anyone is using your proposed Hashtag is http://twubs.com/
This CLE webinar will provide guidance to IP counsel on functional claiming in software patent applications and in USPTO patent application prosecution. The panel will examine recent court treatment and how to navigate the issue of functionality given the uncertainties in the prosecution and litigation contexts.
In Williamson v. Citrix Online, the Federal Circuit issued a decision relating to means-plus-function claims. This decision is having a dramatic impact on interpreting functional claim terms, regardless of whether claim language is being construed in prosecution, post-grant challenges in patent applications at the PTAB, or district court litigation.
Since Williamson, patentees must meet a heightened standard of review by sufficiently disclosing the functional basis for software. It is not enough to claim a general purpose computer as the structure performing the function. Rather, the patentee must disclose the technical algorithm that performs the stated function.
Listen as our authoritative panel of patent attorneys provides a quick review of the Williamson decision, discusses how the courts have applied the Williamson decision, and then examines functional claiming in the context of software patents. The panel will examine the benefits and risks involved with using functional claims and offer best practices for surviving §112(f) and leveraging functional claims to maximize patent protection.
Patents and trade secrets provide two ways of protecting inventions and technology other than a patent application. The AIA changed the playing field and disclosure requirements. Those who commercially use an invention one year before the patent was filed now have a defense to infringement claims.
Also, there is a federal cause of action for trade secret misappropriation under the Defend Trade Secrets Act (DTSA) that became effective on May 11, 2016.
Patent Attorney must understand the pros and cons of each mode of protection to guide their clients in choosing between protecting inventions as a trade secret, filing for a patent (patent application), or utilizing a strategy of both patent search, trade secret and patent application for an invention. Continue reading
The Federal Circuit and other federal courts, as well as the PTAB, are issuing rulings regarding patent eligibility based on and after the Supreme Court’s decision in Alice Corp. v. CLS Bank (2014). These opinions provide guidance on the application of Alice Corp., in which the Court concluded the claims were not patent eligible because they were drawn to a patent-ineligible abstract idea.
The Federal Circuit recently gave additional guidance on the first prong of the two-part test established in Alice Corp. In McRo Inc. v. Bandai Namco Games America Inc. (Fed. Cir. Sept. 2016), the Federal Circuit provides some clarity on the issue of preemption and its importance in the §101 analysis. Continue reading