Inventor Series: Pros and Cons of Expediting Examination with the Track One Program

Introduction

One of the dynamics of being involved in IP law is the first-hand experience of the time involved in waiting for a patent to issue.  With the current backlog at the U.S. Patent and Trademark Office (USPTO), it can take anywhere from 2-4 years to receive an initial examination.  Even after that first examination it can still take another year or so to get a patent application in a condition for allowance, and ultimately issued.  Given the fast-paced world of today, it’s no wonder inventors and patent owners alike find this snail's pace a grim experience, and often inquiring about any expediting options.

And, just like driving around stalled traffic in an HOV lane or the TSA PreCheck option over long lines at airport screening, indeed there are situations when one can do just that.  But just because one ‘can’, does this mean one ‘should’?  Especially when it comes to paying a premium, one really should consider patiently sticking with the status quo.

Changes in Amazon’s Brandy Registry Terms

Introduction

Regardless of whether Jeff Bezos is the richest man in the world or a close second place, it is indisputable that the web-based products and services offered by Amazon are integrated into just about every part of our daily lives.  Although self-driving cars and drone-delivered goods are a bit off, Amazon’s buying and selling platform is here to stay.  Recently, however, Amazon changed its ‘Brand Registry’ requirements, which has caused a great amount of confusion to a number of our new and existing Clients.

Trade Show Pitfalls

Introduction

In many industries, trade shows are a way of life, largely because of the value and benefits that come along with attending.  Among other things, a trade show is a great way for a company to raise awareness of itself, its products, and brand.  Trade shows also allow for face-to-face interaction with respective and prospective clients, partners, and customers.  But attending a trade show can also be a trouble spot.  Careful reflection should be directed to anything that might result in a disclosure of anything proprietary.

Effective Patenting (Part 2 of 2)

Introduction

In a previous post I discussed a number of relevant points related to a business perspective on patent protection, or what I like to refer to as Effective Patenting.  As a point of significance I noted that before filing a patent application, it is first important for a business to determine what its objectives are for doing so.  Seeking a patent just for the sake of a patent is hardly ever fruitful.  I identified three primary objectives for consideration as: Excluding Competition, Marketing Tool, and Revenue Stream. Once objectives are identified, it is time to consider strategy.

Effective Patenting - A Business Perspective (Part 1 of 2)

Introduction

The first step in considering patent protection has nothing to do with patents, or the law.  Instead, it involves a thorough analysis of your business and a determination of what your goals are.  There are probably very few decisions that are made in business that don’t involve a cost-benefit analysis; obtaining a patent is no different.  Patents are assets for your business that could pay huge dividends if properly orchestrated.

There are many reasons why businesses want patents, ranging from protection of core technologies to ownership for use as a marketing tool.  Odds are that your goals are a hybrid of those two aims.  Analyzing your business and determining your direction will often result in an intelligent and effective approach to building a patent portfolio resulting in a true and viable long-term asset.

Trademarks: Should I get a Registration?

Introduction

In a previous post I discussed the ‘in use’ aspect related to a federal trademark registration, and how this ‘use’ has a relationship to actual ‘use in commerce’.  But what if you don’t have (or don’t want to get) a federal registration - can a you still obtain rights?

Luckily the answer is ‘yes’!  The acquisition of federal trademark rights under the Lanham Act (at least here in Texas, and more aptly the 5th Circuit) is established by use, not by registration.[1]  The State of Texas has a similar provision (“Trademark" means a word, name, symbol, or device, or any combination of those terms, used by a person to…”).

So just what are the benefits of going through the rigor of obtaining a Registration?