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RAPKIN GITLIN & BEAUMONT has been recognized for over twenty years as a firm with the utmost expertise in intellectual property law and has been providing high quality affordable legal services to clients throughout the entire Southern California region.

We provide the highest quality representation for the following services:

  • Preparation, filing and prosecution of U.S. patent applications (utility, design and plant)
  • Preparation, filing and prosecution of foreign patent applications
  • Patent searches
  • Interferences and other proceedings before the U.S. Patent & Trademark Office
  • Preparation, filing and prosecution of U.S. trademark applications
  • Preparation, filing and prosecution of foreign trademark applications
  • Trademark availability searches
  • Proceedings before the Trademark Trial and Appeal Board of the U.S. Patent & Trademark Office (e.g., trademark oppositions and cancellations)
  • Preparation and filing of U.S. copyright applications
  • Contract negotiation and preparation (e.g., licenses, assignments, etc.)
  • Patent, trademark, copyright and unfair competition litigation

Patents

Basic Facts

A patent for an invention is a grant of a property right by the Government to the inventor (or his or her heirs or assigns), acting through the U.S. Patent and Trademark Office. The term of the patent shall be 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), from the date the earliest such application was filed, subject to the payment of maintenance fees. The right conferred by the patent grant extends only throughout the United States and its territories and possessions.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

Patent Laws

The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, Section 8, which reads "Congress shall have power … to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Under this power, Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The law now in effect is a general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code.

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

In the language of the statute, any person who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent," subject to the conditions and requirements of the law. The word "process" is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term "machine" used in the statute needs no explanation. The term "manufacture" refers to articles which are made, and includes all manufactured articles. The term "composition of matter" relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything which is made by man and the processes for making the products.

The patent law specifies that the subject matter must be "useful." The term "useful" in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness.

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Conditions for Obtaining a Patent

In order for an invention to be patentable, it must be new as defined in the patent law, which provides that an invention cannot be patented if:

  1. "the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent," or
  2. "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States …"

If the invention has been described in a printed publication anywhere in the world, or if it has been in public use or on sale in this country before the date that the applicant made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection, it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost.

Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be nonobvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material for another, or changes in size, are ordinarily not patentable.

Who May Apply for a Patent

According to law, only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. If the inventor is dead, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is insane, the application for patent may be made by a guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or a person having a proprietary interest in the invention may apply on behalf of the non-signing inventor.

If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes a financial contribution is not a joint inventor and cannot be joined in the application as an inventor.

Application Examinations and PTO Proceedings

Applications, other than provisional applications, filed in the U.S. Patent and Trademark Office and accepted as complete applications are assigned for examination to the respective examining groups having charge of the areas of technology related to the invention. In the examining group, applications are taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed or in accordance with examining procedures established by the Commissioner.

The examination of the application consists of a study of the application for compliance with the legal requirements and a search through United States patents, foreign patent documents, and available literature, to see if the claimed invention is new and non-obvious. A decision is reached by the examiner in light of the study and the result of the search.

The applicant is notified in writing of the examiner=s decision by an "action" which is normally mailed to the attorney or agent of record. The reasons for any adverse action or any objection or requirement are stated in the action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application.

If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first office action by the examiner, and relatively few applications are allowed as filed.

The applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner=s actions. The applicant must respond to every ground of objection and rejection in the prior office action.

In amending an application in response to a rejection, the applicant must clearly point out why he/she thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made. He/she must also show how the claims as amended avoid such references or objections.

After response by the applicant, the application will be reconsidered, and the applicant will be notified as to the status of the claims, that is, whether the claims are rejected, or objected to, or whether the claims are allowed, in the same manner as afer the first examination. The second Office action usually will be made final.

On the second or later consideration, the rejection or other action may be made final. The applicant=s response is then limited to appeal in the case of rejection of any claim and further amendment is restricted. Petition may be taken to the Commissioner in the case of objections or requirements not involved in the rejection of any claim. Response to a final rejection or action must include cancellation of, or appeal from the rejection of, each claim so rejected and, if any claim stands allowed, compliance with any requirement or objection as to form.

Time for Response and Abandonment

The response of an applicant to an action by the Office must be made within a prescribed time limit. The maximum period for response is set at 6 months by statute, which also provides that the Commissioner may shorten the time for reply to not less than 30 days. The usual period for response to an Office action is 3 months. An extension of time fee is normally required to be paid if the response period is extended. The amount of the fee is dependent upon the length of the extension. If no reply is received within the time period, the application is considered as abandoned and no longer pending.

Appeal

If the examiner persists in the rejection of any of the claims in an application, or if the rejection has been made final, the applicant may appeal to the Board of Patent Appeals and Interferences in the Patent and Trademark Office.

If the decisions of the Board of Patent Appeals and Interference is still adverse to the applicant, an appeal may be taken to the Court of Appeals for the Federal Circuit or a civil action may be filed against the Commissioner in the United States District Court for the District of Columbia.

Allowance and Patent Issue

If, on examination of the application, or at a later stage during the reconsideration of the application, the patent application is found to be allowable, a notice of allowance will be to applicant=s attorney or agent of record, if any, and a fee for issuing the patent is due within three months from the date of the notice.

All utility patents which issue from applications filed on and after December 12, 1980 are subject to the payment of maintenance fees which must be paid to maintain the patent in force. These fees are due 3½, 7½, and 11½ years from the date the patent is granted and can be paid without a surcharge during the "window period" which is the six month period preceding each due date, e.g., 3 years to 3 years and six months. Failure to pay the current maintenance fee on time may result in the expiration of the patent.

A patentee who makes or sells patented articles, or a person who does so for or under the patentee is required to mark the articles with the word "Patent" and the number of the patent. The penalty for failure to mark is that the patentee may not recover damages from an infringer unless the infringer was duly notified of the infringement and continued to infringe after the notice.

The marking of an article as patented when it is not in fact patented is against the law and subjects the offender to a penalty. Some persons mark articles sold with the terms "Patent Applied For" or "Patent Pending." These phrases have no legal effect, but only give information that an application for patent has been filed in the U.S. Patent and Trademark Office. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.

Design Patents

The patent laws provide for the granting of design patents to any person who has invented any new, original and ornamental design for an article of manufacture. The design patent protects only the appearance of an article, and not its structure or utilitarian features. The proceedings relating to granting of design patents are the same as those relating to other patents with a few differences.

A design patent has a term of 14 years from grant, and no fees are necessary to maintain a design patent in force. If on examination it is determined that an applicant is entitled to a design patent under the law, a notice of allowance will be sent to the applicant=s attorney calling for the payment of an issue fee.

The law also provides for the granting of a patent to anyone who has invented or discovered and asexually reproduced any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.

Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.

We look forward to serving your patent needs.

Trademarks

Basic Facts

A trademark (or service mark) is a word, name, symbol, device or slogan, or any combination of these, used by a manufacturer or merchant to identify its goods or services and distinguish them from the goods or services of others. A trademark is not a patent, which protects an invention, and it is not a copyright, which protects the expression of a literary, musical or artistic work. Some better known registered trademarks include "Kodak" for cameras; "Vaseline" for petroleum jelly; and "Levi;s" or "Calvin's" for jeans. Service marks identify services, for example, "Hard Rock Café" for restaurant services. Certification marks identify goods and services that meet certain qualifications, for example, "UL" for electric appliances that meet the safety standards of Underwriters Laboratories, Inc. Collective marks identify goods, services, or members of a collective organization, for example "Teamsters" for local unions.

A trademark, as explained, identifies the source of a product. It also stands for the value, uniform quality, and the integrity of the owner. It serves as a guarantee of consistency of quality and helps to advertise and sell the product. Trademarks are, in fact, items of personal property, which may be very valuable to your business, no matter the size.

Establishing Trademark Rights

Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. 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. A federal registration can provide significant advantages to a party involved in a court proceeding.

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.

If at all possible, never select a trademark which describes a product or constitutes a product's generic name. In choosing an appropriate mark, it is important to choose one which identifies and distinguishes a product in the marketplace. A coined word with no dictionary meaning, such as "KODAK" for cameras, or an arbitrary word with a dictionary meaning unrelated to the product, such as "RISE" for an instant lather shaving cream, are two good examples.

Trademarks must be protected and cared for, or they will be lost. Many famous trademarks have been lost because they were misused. Some of the more famous trademarks are ESCALATOR, KEROSENE, CELLOPHANE, MIMEOGRAPH, and ASPIRIN. These marks have become generic as they now mean the product rather than a particular brand of product.

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.

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.

An applicant is not required to conduct a search for conflicting marks, i.e. a trademark availability search, prior to applying with the PTO. However, some people find it useful. In evaluating an application, an examining attorney conducts a search and notifies the applicant if a conflicting mark is found 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 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.

The PTO does not conduct searches for the public to determine if a conflicting mark is registered, or is the subject of a pending application, except as noted above when acting on an application. An attorney normally provides this service.

Notice to the Public

There are a number of notices that you may use along with your trademark, depending upon whether or not the mark is registered and whether the registration is on file with the state or federal government. The symbol "™" is often used with unregistered trademarks ("SM" for service marks) to indicate to the world that the owner claims common law trademark rights. Once the mark has been registered with the federal government, however, the following notices or symbols may be used: (1) "Registered U.S. Patent & Trademark Office"; (2) "Reg. U.S. Pat. & TM Off."; (3) ®. These notices should be placed next to the trademark or indicated somewhere nearby. If the mark is only registered with the state, one may only apply the "™" symbol next to the trademark to indicate the user's exclusive claim to the mark.

The selection of a trademark or service mark is one of the most important areas for consideration by a prospective trademark owner. The legal as well as the commercial impact upon the final selection necessitates a thorough consideration of the factors before the final choice and a considerable monetary investment are made.

Copyrights

Basic Facts

Copyright is a form of protection provided by the laws of the United States (title 17, U.S. Code) to the authors of Aoriginal works of [email protected] including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works.

The following persons are legally entitled to submit an application form:

  • The author. This is either the person who actually created the work, or, if the work was made for hire, the employer or other person for whom the work was prepared.
  • The copyright claimant. The copyright claimant is defined in Copyright Office regulations as either the author of the work or a person or organization that has obtained ownership of all the rights under the copyright initially belonging to the author. This category includes a person or organization who has obtained by contract the right to claim legal title to the copyright in an application for copyright registration.
  • The owner of exclusive right(s). Under the law, any of the exclusive rights that go to make up a copyright and any subdivision of them can be transferred and owned separately, even though the transfer may be limited in time or place of effect. The term "copyright owner" with respect to any one of the exclusive rights contained in a copyright refers to the owner of that particular right. Any owner of an exclusive right may apply for registration of a claim in the work.
  • The duly authorized agent of such author, other copyright claimant, or owner of exclusive right(s). Any person authorized to act on behalf of the author, other copyright claimant, or owner of exclusive rights may apply for registration.
Who can Claim Copyright?

Copyright protection subsists from the time the work is created in fixed form. The copyright in the work of authorship immediately becomes the property of the author who created the work. Only the author or those deriving their rights through the author can rightfully claim copyright.

In the case of works made for hire, the employer and not the employee is considered to be the author. The authors of a joint work are co-owners of the copyright in the work, unless there is an agreement to the contrary.

Works Protected

Copyright protects "original works of authorship" that are fixed in a tangible form of expression. The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or device. Copyrightable works include the following categories:

  1. literary works;
  2. musical works, including any accompanying words;
  3. dramatic works, including any accompanying music;
  4. pantomimes and choreographic works;
  5. pictorial, graphic and sculptural works;
  6. motion pictures and other audiovisuals;
  7. sound recordings; and
  8. architectural works.

Several categories of material are generally not eligible for Federal copyright protection. These include, among others:

  • works that have not been fixed in a tangible form of expression. For example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded.
  • titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listings of ingredients or contents.
  • ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration.
  • works consisting entirely of information that is common property and containing no original authorship. For example, standard calendars, height and weight charts, tape measures and rulers, and lists or tables taken from public documents or other common sources.
How to Secure a Copyright

No publication or registration or other action in the Copyright Office is required to secure copyright. There are, however, certain definite advantages to registration.

Copyright is secured automatically when the work is created, and a work is [email protected] when it is fixed in a copy or phonorecord for the first time. "Copies" are material objects from which a work can be read or visually perceived, either directly or with the aid of a machine or device, such as books, manuscripts, sheet music, film, videotape, or microfilm. "Phonorecords" are material objects embodying fixation of sounds (excluding, by statutory definition, motion picture soundtracks), such as cassette tapes, CDs, or LPs. Thus, for example, a song (the "work") can be fixed in sheet music ("copies") or in phonograph disks ("phonorecords"), or both.

Publication

Publication is no longer the key to obtaining Federal copyright as it was under the Copyright Act of 1909. However, publication remains important to copyright owners and in copyright law for several reasons:

  • works that are published in the United States are subject to mandatory deposit with the Library of Congress.
  • publication of a work can affect the limitations on the exclusive rights of the copyright owner that are set forth in Sections 107 through 120 of the law.
  • the year of publication may determine the duration of copyright protection for anonymous and pseudonymous works (when the author's identity is not revealed in the records of the Copyright Office) and for works made for hire.
  • deposit requirements for registration of published works differ from those for registration of unpublished works.
  • when a work is published, it may bear a notice of copyright to identify the year of publication and the name of the copyright owner, and to inform the public that the work is protected by copyright. Copies of works published before March 1, 1989 must bear the notice or risk loss of copyright protection.
Notice of Copyright

The use of copyright notice is no longer required under U.S. law, although it is often beneficial. Because prior law did contain such a requirement, however, the use of notice is still relevant to the copyright status of older works.

Use of the notice may be important because it informs the public that the work is protected by copyright, identifies the copyright owner, and shows the year of first publication. Furthermore, in the event that a work is infringed, if a proper notice of copyright appears on the published copy or copies to which a defendant in a copyright infringement suit had access, then no weight shall be given to such a defendant=s interposition of a defense based on innocent infringement in mitigation of actual or statutory damages, except as provided in Section 504(c)(2) of the copyright code. Innocent infringement occurs when the infringer did not realize that the work was protected.

The notice for visually perceptible copies (e.g. 81996 John Doe) should contain all of the following three elements:

  1. The symbol © (letter C in a circle), or the word "Copyright" or the abbreviation "Copr.";and
  2. The year of first publication of the work; and
  3. The name of the owner of copyright in the work, or an abbreviation by which the name can be recognized

The copyright notice should be affixed to copies or phonorecords 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 or phonorecords or on the phonorecord label or container.

Duration of Copyright Protection

A work that is created (fixed in tangible form for the first time) on or after January 1, 1978 is automatically protected from the moment of its creation and is ordinarily given a term enduring for the author=s life plus an additional 50 years after the author's death. In the case of a "joint work prepared by two or more authors who did not work for hire," the term lasts 50 years after the last surviving author's death. For works made for hire, and for anonymous and pseudonymous works (unless the author's identity is revealed in Copyright Office records), the duration of copyright will be 75 years from publication or 100 years from creation, whichever is shorter.

Works originally created before January 1, 978 but not published or registered by that date have been automatically brought under the statute and are now given Federal copyright protection.

Any or all of the copyright owner=s exclusive rights or any subdivision of those rights may be transferred, but the transfer of exclusive rights is not valid unless the transfer is in writing and signed by the owner of the rights conveyed or such owner=s duly authorized agent. Transfer of a right on a nonexclusive basis does not require a written agreement.

A copyright may also be conveyed by operation of law and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.

Copyright is a personal property right, and it is subject to the various state laws and regulations that govern the ownership, inheritance, or transfer of personal property as well as terms of contracts or conduct of business.

Transfer of Rights

Transfers of copyright are normally made by contract. The law does provide for the recor-dation in the Copyright Office of transfers of copyright ownership. Although recordation is not required to make a valid transfer between the parties, it does provide certain legal advantages and may be required to validate the transfer as against third parties.

There is no such thing as an "international copyright" that will automatically protect an author's writings throughout the entire world. Protection against unauthorized use in a particular country depends, basically, on the national laws of that country. However, most countries do offer protection to foreign works under certain conditions, and these conditions have been greatly simplified by international copyright treaties and conventions.

Registration

In general, copyright registration is a legal formality intended to make a public record of the basic facts of a particular copyright. However, registration is not a condition of copyright protection. Even though registration is not a requirement for protection, the copyright law provides several inducements or advantages to encourage copyright owners to make registration. Among these advantages are the following:

  • Registration establishes a public record of the copyright claim;
  • Before an infringement suit may be filed in court, registration is necessary for works of U.S. origin and for foreign works not originating in a Berne Union country;
  • If made before or within 5 years of publication, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate;
  • 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;
  • 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.

Registration may be made at any time within the life of the copyright. Unlike the law before 1978, when a work has been registered in unpublished form, it is not necessary to make another registration when the work becomes published, although the copyright owner may register the published edition, if desired.

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