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How to Find a Great Patent Attorney in Atlanta

How to Find a Great Patent Attorney in Atlanta

Small law firms focusing exclusively on intellectual property often
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.

Work experience creates subject matter expertise.  Look for a patent lawyer who has relevant work experience to your idea invention.

Call Mat Grell for a Free patent consultation 678-202-5990.

US Patent and Trademark logo

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

find patent attorney, find a patent attorney, trademark attorney, trademark lawyer

Filing Design and Provisional Patent Applications

Timing of Filing Design and Provisional Patent Applications

Grell & Watson tracks the U.S. Patent and Trademark Office  procedure and the Copyright Office .  Please find their most recent update below.

Filing Design and Provisional Patent ApplicationsInventors 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

IP Lawyers:

Ext. 104 – Atlanta I-75 & Downtown – (404) 596-7333

Abandoned Patent Applications

Abandoned Patent Applications

Grell & Watson tracks the U.S. Patent and Trademark Office  and the Copyright Office for news.  Please find their most recent update below.

Patent Abandonment

Abandoned Patent ApplicationsPatent 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

IP Lawyers:

Ext. 104 – Atlanta I-75 & Downtown – (404) 596-7333

When is my Provisional Deadline?

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.

provisional deadline
Provisional Deadline

Leap Year

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

Richard Piercy
(404) 596-7333
Email

We would be happy to discuss your potential US Provisional Patent application and answer any patent questions.

Trademark Specimen for Clothing

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.”


Trademark Specimen for Clothing

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 placing the mark on the outside of the garment, it should go where would expect to see other brand’s marks, like the pocket, breast area, or sleeve and keep it small and neat. Most athletic polo and golf shirts offer great examples.
  • Many places inside the garment will be adequate. Silk tags and “tagless” under-collar screen-printing are usually acceptable locations.
  • Anything detachable from the garment, like plastic or cellophane wrapping, boxes, or hang-tags usually qualify.
  • Though not ideal, sometimes featuring the mark along with the goods in an online store can function as a source indicator.

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.

(404) 596-7333
Email

Call for a Free Consultation.  Experienced & Affordable.

Grell & Watson, Patent Attorney, Trademark Copyright IP Lawyer

Can You Trademark a Hashtag?

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.

Is a Hashtag something you can Trademark?

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.

Hashtag

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/

 Please contact a US trademark attorney at Grell & Watson 678-383-4886

CLE – Functional Claiming for Software Patents: Leveraging Recent Court Treatment

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.

Description

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.

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CLE Trade Secrets and Patents

Trade Secrets and Patents: A Comprehensive Approach to Protecting Intellectual Property

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

CLE Demonstrating Patent Eligibility Post-Alice

Demonstrating Patent Eligibility Post-Alice

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

CLE Demonstrating Patent Eligibility Post-Alice

Navigating the Nuances and Leveraging Guidance From Federal Circuit and PTAB Opinion

This CLE webinar will examine recent decisions applying the Supreme Court’s decision in Alice Corp. v. CLS Bank on patent eligibility. The panel will discuss the guidance from these opinions and offer best practices for addressing patent eligibility issues.

Description

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.

Patent counsel should take note of these and other instructive opinions that provide insight into how §101 is being applied to determine patent eligibility.

Listen as our authoritative panel of patent attorneys discusses the cases handed down by the Federal Circuit, PTAB and various district courts since the Supreme Court’s decision in Alice Corp. and examines the guidance these cases provide for patent counsel regarding patent eligibility. The panel will offer best practices going forward for demonstrating patent eligibility.

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CLE Leveraging USPTO Examiner Count System: Efficiently Prosecuting Patents, Lowering Prosecution Costs.

I am pleased to announce that I recently participated in a Strafford webinar, “Leveraging USPTO Examiner Count System: Efficiently Prosecuting Patents, Lowering Prosecution Costs.” Due to overwhelming popularity, we scheduled an encore presentation with live Q&A for Tuesday, November 15, 1:00pm-3:00pm EST.

The United States Patent & Trademark Office (USPTO) uses a production-based system made up of “counts” to manage the workload of patent examiners. Examiners accrue counts by completing different tasks in the examination process.

For example, the type of action and the timing of those actions are factors in determining an examiner’s “counts.” Since examiners are expected to meet their quotas for production, certain times of the year practitioners often see an increase in examiner activity, i.e., at the end of each quarter. Understanding the USPTO’s inner workings allow patent practitioners to efficiently prosecute patents.

Our panel will provide guidance on leveraging the USPTO Examiner Count System to prosecute patents more effectively. The panel will provide insight into the count system and offer strategies for interacting with patent examiners.

We will review these and other key issues:

  • What impact will the number of claims in the application have on the quality of examination in the first office action?
  • How can patent counsel use the incentives of the count system to the client’s advantage?
  • How and when should patent counsel interact with examiners for effective and efficient prosecution?
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