Basics of a Patent Claim

A patent application contains many parts. These include components such as a specification, claims, an abstract and drawings. While drawings are not required, all of the other components are.

Perhaps the most important required part of the patent application is the claims. When they are new to patent prosecution, most people don’t know what a patent claim is. That’s why working with a skilled intellectual property attorney is so vital. They can walk you through the process and craft a claims set that protects your invention from every angle.

Continue reading “Basics of a Patent Claim”

How to Register a Trademark in Texas

If your business operates on a national level, then the choice to pursue a federal trademark registration makes sense. Such a registration protects your mark from use by someone else on a nationwide basis.

However, what if you only plan to operate in the State of Texas? A federal trademark registration may not make sense in this situation, especially when there is the option of obtaining a state trademark registration.

In general, obtaining a state trademark registration in Texas is far less complicated, time-consuming and expensive than pursuing a federal registration. When seen in this light, it becomes clear that a Texas trademark registration just makes sense.

What Is a Trademark?

Many entrepreneurs initially don’t understand why they would need a trademark registration. Once they understand the benefits that an official registration grants, they quickly begin to see the advantages.

According to Texas trademark law, a trademark may be a word, phrase, logo, device or symbol. A trademark also may include any combination of these components. The primary purpose of this trademark is to identify the source of the goods or services that are associated with use of the mark. This makes it easier for consumers to always come back to a brand name that they know and trust.

Why Should You Register Your Trademark?

Numerous advantages come with registering a trademark in Texas. Essentially, it formalizes your use and ownership of your particular mark. This means that you are empowered to prevent other individuals or businesses from using your trademark to their benefit.

As an example, suppose that you have invented a new widget that everyone needs to have. You’ve registered a trademark for the unique name of your widget in order to protect your rights.

Then, a competitor comes along, selling a knock-off widget of questionable quality. To make matters worse, that competitor is using a trademark that is confusingly similar to yours. Unless consumers are paying really close attention, they may accidentally buy the competitor’s inferior product, believing it to be yours.

When that knock-off product proves unreliable, the public may form a poor opinion of your company even though the product was made by your competitor.

When your trademark is registered, you have the ability to prevent your competitor from using your trademark. This helps to ensure that any goodwill that your company has earned remains where it belongs.

Texas State Requirements

If you want to register a trademark in Texas, then you’ll have to meet certain requirements.

For instance, you must be able to demonstrate to the secretary of state that your mark was in use in commerce in Texas on goods or services prior to the date on which you applied to register your mark.

Additionally, it’s necessary that your mark be different from other trademarks that are already registered in Texas. The more original and unique your mark is, the easier it will be to register. This also makes it easier for consumers to remember.

The office of the Texas Secretary of State also looks in the registered trademarks at the U.S. Patent and Trademark Office to ensure that the new mark is not identical to an existing trademark.

How to Register for a Trademark in Texas

Applying for a Texas trademark registration is easy.

Just fill out the Trademark or Service Mark Application Form, which can be obtained online. Note that the form must be notarized before it is submitted.

Include three original specimens showing use of the mark in Texas, and be ready to pay the official fees for each class of goods or services for which you are applying.

Next, the state reviews the application and specimens. They follow up if any issues are raised.

The trademark registration will issue if there are no issues. It remains valid for a five-year term, at which time it can be renewed.

Getting a Texas trademark registration is relatively easy when compared with a federal registration. Nonetheless, there can be bumps in the road. If the application is not correctly completed, it can result in significant delays and unexpected costs.

Contact Williams IP Law if you need assistance in registering a trademark in Texas or are looking for general intellectual property advice.

The Pharmaceutical Patent Cliff

The Basic Premise

Like all other business ventures, pharmaceutical companies exist to make a profit. Typically, they achieve this goal by creating a useful new drug that cures or alleviates the symptoms of certain diseases and conditions.

Companies ensure that they have the exclusive right to manufacture and sell these drugs by obtaining patent protection. However, that protection doesn’t last forever. The expiration of a patent means that makers of generic drugs are able to enter the market, and that can mean a huge loss of revenue for the innovating company.

This means that it is critical for these organizations to plan for long-term growth and stability while also continuing to innovate for the future.

Patents for Pharmaceuticals

When a company creates a formula that brings about a beneficial effect in the treatment of an illness or disorder, they file for patent protection with the U.S. Patent and Trademark Office. When such a patent is granted, it provides the owner with the exclusive right to make, use and sell that drug for a period not exceeding 20 years from the date on which the patent application was filed.

When a drug is incredibly successful, it can easily earn billions of dollars for the innovating company. Unfortunately, it can take years to develop a new drug, and it may take even more years of trials before the drug is approved for use by the general public. This means that pharmaceutical companies have only a limited amount of time to financially benefit from sales of the drug. Of course, all of that research and development also is incredibly expensive.

What Is a Patent Cliff?

In recent years, the patents on many blockbuster drugs have expired. These include Pfizer’s Lipitor for lowering cholesterol, the blood thinner Plavix from Bristol-Myers and the antipsychotic drug called Zyprexa from Eli Lilly.

Each of these drugs has earned billions of dollars for their respective creators. However, as the patents come to the end of their terms, each of these companies approaches a patent cliff.

That cliff is represented by a precipitous drop in revenue as generic drug makers begin producing their own, far cheaper, versions of these drugs.

What Does the Pharmaceuticals Patent Cliff Mean Now?

The patent cliff may be good news for consumers and for the employers that provide them with health insurance. This is because the generic versions of drugs typically cost between 20 and 80 percent less than the brand-name versions did. A prescription that once cost nearly $100 per month may cost around $10 once it is available as a generic.

What is good news for consumers and employers is potentially disastrous news for innovating drug makers. Not only will they see their massive profits dissolve but also they will have less money available for researching and developing new blockbuster drugs.

With less money for research, the introduction of new drugs will dramatically slow. This means that people who could benefit from a new prescription drug will have to wait for it, perhaps for years. That can translate to the serious deterioration of the individual’s health or even their death, situations which could be avoided through the swifter availability of effective new medications.

Pharmaceutical Companies Seek to Make Generics Work for Them

Drug manufacturing companies are looking for ways to enter the generic drug market. Sometimes this means manufacturing their own generic version of the medicine. At other times, this means entering a new market somewhere else with the generic drug.

Some companies, such as Pfizer, long ago recognized the upcoming patent cliff and took steps to prepare themselves. Accordingly, Pfizer will manufacture both brand-name Lipitor and the generic atorvastatin in order to maintain as much market share as possible.

Whether your industry is pharmaceuticals or something entirely different, your valuable inventions and innovations may need to be protected with a patent. Work with qualified intellectual property counsel from Williams IP Law to plan a common-sense strategy for tomorrow and beyond.

Patent Exhaustion Explained

Patent Exhaustion explained

Intellectual property law is rife with terms that appear ambiguous. “Patent exhaustion” is one of these.

In fact, most entrepreneurs have never heard of this term until their intellectual property attorney mentions it. Understanding what exhaustion is can help inventors and entrepreneurs protect the long-term profits that are associated with their invention.

What is Patent Exhaustion?

This term refers to the point at which the patent holder no longer has the right to dictate how their invention is used. Typically, this happens at the sale of the product. The patentee has the right to determine who, where and how their product is manufactured. They can even decide the materials that are used. However, once a consumer purchases that product from a store, it’s theirs to do with as they please.

This means that the consumer can modify, add to or subtract from the product. Consider a passenger car. The manufacturer holds numerous patents concerning the components in the vehicle. As the patentee, they may control manufacturing and distribution.

However, once the consumer buys the car, they have the right to modify the vehicle. They can add a sunroof or a remote start system, and the patentee has no power to prevent them. This is because the reach of the patent has been exhausted.

Exhaustion also may occur when a patentee gives away or sells the rights granted by the patent. They now have no legal recourse to control the invention as those rights have passed to the new owner of the patent.

When Patent Exhaustion Applies and When It Doesn’t

This facet of IP law applies when you maintain your patents rights and have control over manufacturing and distribution. It similarly applies when you rely on a robust licensing agreement that allows someone else to handle these processes for you.

Exhaustion does not apply if you sell your products internationally, and then someone else imports them back into the U.S. where you hold a patent. If this importation is done without your permission, as the patent holder you have the right to sue.

Frequently, it’s wise for the inventor of a product to obtain multiple patents for the various components of their invention. This may include not only innovative parts within the larger device but also patents related to how the product is used. Inventors also may want patent protection on replacement parts or accessories.

Well-Known Legal Cases

Many inventors rely upon license agreements to protect their interests. These agreements must be detailed so that the inventor retains his rights with regard to how the product is manufactured, which materials are used and how the product is ultimately used. The more detailed and precise these agreements are, the better the protections are for the inventor if the other party violates the contract.

An example of this occurred in Helferich vs. The New York Times. Helferich owned numerous patents related to the manufacture of mobile devices and how content could be provided to these devices. With a license agreement, they made it possible for various companies to make these devices while precluding the ability to make software or apps for the devices.

Helferich sued when content providers violated this agreement. The courts decided for Helferich because the agreement applied only to the manufacture of the devices and not to providing content to them.

Another example occurred in Lexmark vs. Impression Products. Lexmark owns patents for and makes toner cartridges. The company stipulates that these cartridges cannot be reused and must be returned to them when empty. Impression began buying empty cartridges, refilling and reselling them.

Lexmark sued over patent infringement, but Impression argued that patent holders cannot add restrictions to how a buyer uses a product and that because Lexmark sold their products overseas, the exhaustion doctrine applied.

The case will go before the Supreme Court as the lower courts can’t seem to agree on these issues. The impact on IP law of this case and others like it is to underline the need for stringent licensing agreements and for innovators to consider pursuing multiple patents for their invention. These methods are reliable when it comes to protecting profits and ensuring that the inventor takes full advantage of their hard work.

Recent Smart phone patents

Innovation in Technology

Recent SmartPhone PatentsSmartphone technology moves at the speed of light. This means that manufacturers are continually pursuing patent protection for their new tech in jurisdictions around the world. While many of these technological innovations won’t show up on smartphones for years, others may be available the next time you are ready for an upgrade.

Here’s a look at some of the latest tech patents that are being pursued around the world by smartphone manufacturers.

The Reverse Notch Display

Notched smartphone displays were introduced a couple of years ago, primarily being seen on the Apple iPhone X and the iPhone XS. A smartphone that has a notched display doesn’t have a regularly shaped rectangular screen. Instead, there is a cutout somewhere in the design.

That cutout may house any number of different components such a front-facing camera, speakers or sensors. Manufacturers may choose to include a notched display on a smartphone to achieve a more attractive screen-to-body ratio, to make the overall phone smaller or to provide more screen space.

Currently, Samsung is pursuing a design patent application in Korea for a smartphone display with a reverse notch. The disclosure says that Samsung is seeking to maximize the screen size, which means that the notch is placed above a full-size display. Accordingly, “a display panel [is] attached to the back of the cover window used in a smartphone. The cover window includes a protruding portion at the top center …”.

This doesn’t sound like a particularly practical solution, so we’ll see if it ever hits the marketplace.

Masking the Punch-Hole Camera

When Samsung innovated the punch-hole, front-facing camera on their Galaxy S10 series, it was ground-breaking technology. Today, it’s old news. Samsung plans to drop the feature on its new phones, and ZTE is seeking patent protection for a means of masking the black dot on the home screen so that users can have maximum screen space.

The new tech moves the camera to a high corner of the screen so that it aligns with notification icons. It looks like it’s just part of that row, placed next to the battery icon. The ultimate goal is to eliminate as much of the smartphone bezel as possible. This is just one more way to get the job done.

Dual In-Display Cameras

In an effort to do away with the need for a pop-up mechanism or a display cutout to be used with a front-facing camera, a new patent has been obtained in China by Xiaomi. In the patent’s disclosure, the invention would involve a pair of cameras placed under the display.

Once again, this helps to maximize the screen-to-body ratio. The camera operates through the transparent display, with the only real downside being that the display can interfere with image quality. In other words, this technology is definitely still under development. While it may appear on some of the latest mid- and low-range smartphone models, it’s unlikely to appear on the higher-end phones until some of the kinks have been worked out.

A Better Battery-Life Meter

Anxious to get back into the smartphone game, Microsoft is pursuing patent protection for an improved battery-life meter. According to the disclosure, the improvements are directed toward providing users with more comprehensive data concerning how much battery life is remaining. This means that the smartphone could not only measure the battery level but also provide usage times based on a variety of scenarios so that people can maximize the remaining battery life.

If you’re interested in pursuing patent protection for any type of technology, then contact Williams IP Law to schedule a free consultation.

Tom Brady Denied Trademark Registration of TOM TERRIFIC

Trademark registrations are among the most commonly pursued intellectual property rights in the U.S., yet it can be surprising just how little understood these protections are. It’s not unusual for the average person to believe that once a word or phrase is registered as a trademark, it is somehow illegal for anyone other than the rightful owner to use the mark.

Tom Terrific

However, this isn’t quite the case, as football legend Tom Brady recently learned. Brady and his legal team from TEB Capital Management filed two trademark applications with the U.S. Patent and Trademark Office earlier this year trying to protect the “TOM TERRIFIC” mark.

Both applications stated that Brady and his team had an intent to use the mark in interstate commerce for goods such as T-shirts, printed photographs, posters and trading cards. An unintended public furor erupted as longtime fans of Tom Seaver, a baseball pitcher in the Hall of Fame, protested that the “Tom Terrific” moniker really belonged to him.

It seems that the USPTO was in agreement with the public on this one. They denied Brady’s applications based on the fact that the “TOM TERRIFIC” name was already closely associated with Seaver and had been for decades. Officials at the USPTO believed that if Brady were to introduce a line of goods associated with the TOM TERRIFIC mark that consumers would be confused as to whether the mark referred to Brady or Seaver.

Trademark Law

However, in view of Brady’s remarks in response to the furor, it appears that he didn’t understand U.S. trademark law in the first place. It seems that the reason that Brady filed the trademark applications was to prevent others from using the moniker in connection with him because he doesn’t like it.

In other words, Brady filed the trademark applications, stating under penalty of perjury that he and his company intended to use the marks in interstate commerce in connection with the identified goods, when he actually had no intention of doing so. Brady may have simply been annoyed when his team and people on social media referred to him as “Tom Terrific.” Seeking to stop such use, he had his legal and business team file trademark applications.

Unfortunately for Brady, that’s just not how trademark law works. The only way to obtain a federal trademark registration in the U.S. is by using the mark in interstate commerce and then demonstrating that use to the USPTO. If Brady never had a bona fide intent to use the mark in interstate commerce but instead wanted to prevent others from using a certain name, how could he ever expect to obtain a registration?

The answer may be that Brady did not consult with intellectual property attorneys before filing his applications. Intellectual property is a specific area of the law that not every lawyer is qualified to practice. Without focused education, training and experience, attorneys are not prepared to guide their clients through the process of obtaining a U.S. trademark.

Consulting with a trademark attorney would have saved Brady a great deal of time, money and embarrassment. Anyone interested in obtaining a federal registration of a trademark is encouraged to consult with an intellectual property attorney.

Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.

Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.

The Invention Process

When an inventor has a great idea that they believe is worthy of patent protection, they will naturally wonder when the appropriate time is to file a patent application. The process will vary a bit between different inventions, but the basics remain the same.

The sooner a patent search is conducted and a patent application is filed, the better the inventor’s chances are of obtaining a patent.

By examining the patent process in the U.S., it is possible for inventors to understand why this is so and gauge whether or not it is the right time to seek the advice of a qualified patent attorney.

The Idea

All issued patents begin with an idea. It progresses from a mere spark to something written on paper. The inventor may do some research, build an early prototype and learn a few things through trial and error.

It makes sense to make notes throughout this process. Although the U.S. ceased to be a “first to invent” country and became a “first to file” country in 2013, notes made and dated during the experimentation and development stage may prove valuable should the inventor ever need to substantiate the fact that they didn’t copy someone else’s idea.

Throughout this time, it is wise to treat the invention as confidential. Anyone to whom it is disclosed should be asked to sign a confidentiality agreement. This lessens the likelihood that they will be able to steal the idea to use it for themselves. Also, it is necessary to not make public the details of your invention because it may preclude you from obtaining any patent protection.

The Patent Search

How confident are you that your invention is new, novel and not obvious? You may know the industry well, but that doesn’t necessarily mean that you’re aware of all of the prior art that may exist.

A patent search performed by an intellectual property attorney may help to determine the patentability of your invention.

The Patent Application

Once the patent application is filed, you can tell people that your invention is “patent pending.” Of course, going from idea to application can be a long journey.

Typically, a patent application is filed after the results of the patent search indicate that the invention may be patentable. The inventor then fully describes the invention to the attorney or patent agent who will be drafting the patent application.

The attorney or agent begins writing a descriptive specification and claims that more specifically point out the subject matter that is intended to be protected by the patent. Frequently, these filings are accompanied by a set of drawings that provide another description of the parts and use of the invention.

Once submitted to the U.S. Patent and Trademark Office, the patent application eventually will be examined by another attorney who is known as an Examiner. The Examiner may reject the patent application if he believes that the invention isn’t patentable. Intellectual property attorneys who work for the inventor are able to argue against this rejection, and they may make amendments to the application.

Requiring two or more years, the application process can be time consuming.

Continuing Development and Finding Investors

While the patent application is being examined, the inventor may build better prototypes and seek partners or investors to help get their venture moving. This is also the right time to create a marketing plan and find distributors who may be willing to bring the new product to the market.

Because the invention is patent-pending, it is perfectly acceptable to start marketing and selling the product before the patent issues. That pending patent application protects the inventor’s idea. They may seek legal redress from any infringers upon the issuance of the patent.

Consider Licensing or Selling the Rights

While some inventors decide to produce and market their invention mainly on their own, others don’t want the responsibility of manufacturing, distribution and related functions. In this scenario, the inventor may be able to license or sell their rights to one or more parties who are willing to take on these tasks. This leaves the inventor free to enjoy the profits of their hard work while also developing their next big idea.

The Invention Process Infograph

Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.

Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.