Intellectual Property Amid COVID-19

Kevin J. Soucek and James J. Pingor
March 17, 2020

March 17, 2020

In the world of intellectual property, it is essentially business as usual as many examiners at the United States Patent & Trademark Office (USPTO) have been tele-working for years. Although, their tele-working set-up has not been without some changes.

As of March 16, 2020, the USPTO will remain open for business and continue without interruption, unless otherwise noted or mandated by the government. As a result, currently no patent or trademark deadlines will be extended. Although, the USPTO is waiving petition fees in certain situations for customers impacted by COVID-19 (coronavirus).

However, out of an abundance of caution for the health and safety of the public and their employees, the USPTO has restricted local visitation access to its facilities for the foreseeable future. Consequently, until further notice, all in-person meetings, including patent and trademark prosecution interviews, Patent Trial and Appeal Board (PTAB) oral hearings, and Trademark Trial and Appeal Board (TTAB) oral hearings scheduled to take place at the USPTO offices after Friday, March 13, 2020 will be conducted remotely by telephone or video conference.

On a separate note, the European Union Intellectual Property Office has reported that it has extended its deadlines until May 1, 2020 for deadlines that are due between March 9, 2020 and April 30, 2020. Also, the European Patent Office has granted an extension of all deadlines until April 17, 2020.

Please know that during this time we are closely monitoring the USPTO as well as patent and trademark offices worldwide and will attend to any specific matters in the timeliest and most effective manner. We will keep you updated as events occur. However, if you have any questions, or should certain legal-related issues arise, please do not hesitate to contact us.

Kevin Soucek is an associate at Walter | Haverfield who focuses his practice on intellectual property. He can be reached at ksoucek@walterhav.com or at 216-619-7885.

Jamie Pingor is a partner at Walter | Haverfield and chair of the Intellectual Property team. He can be reached at jpingor@walterhav.com or at 216-928-2984.

A Tough Lesson in Global Intellectual Property Law

James J. Pingor
February 4, 2020

A Los Angeles-based attorney has taken it upon himself to attempt to teach Prince Harry and Meghan Markle of England’s royal family a lesson in global intellectual property law. It’s likely that the intricacies of trademark law may come into play to establish who actually has the senior status in the U.S.

Earlier this month, the Duke and Duchess of Sussex made their plans public to step back from their formal roles as senior members of the royal family in favor of living independently – a bold move that they plan to finance by launching their own brand, Sussex Royal.

When this news broke, intellectual property attorney Joel Fogelson, as well as others, discovered the Sussex Royal brand was not yet registered as a trademark in the U.S. in certain classes for specific goods. While the royal couple had already filed an application to register their brand and an extensive list of merchandise in the UK, the duo and the massive machine behind their brand launch seemed to have inexplicably overlooked the need to do so stateside. Or, did they?

Fogelson wasted no time in filing an application in an attempt to own the brand on digital platforms for the purpose of “Communications by computer terminals, transmission and delivery of video, and data via the internet and wireless networks.”

Fogelson does not aim to profit from the move, according to statements he has made to the media. Instead, the attorney claims he filed the application in an attempt to teach the royal couple—and anyone else considering starting their own company―a powerful lesson in new business planning, and the pitfalls that inevitably accompany a lack of due diligence and forethought.

As the Duke and Duchess embark on their ambitious plan to build an empire out of selling their wares in the UK and across the globe, they, like every entrepreneur, face the challenge of doing the same in the U.S. without ownership of the Sussex Royal brand.

While Fogelson claims his intentions are altruistic―and has even gone so far as to say he would give the brand rights to Harry and Meghan for free—recent media reports suggest the field is getting rather crowded. As Fogelson planted his flag on the Sussex Royal name in the U.S., a company across the pond has laid claim to Sussex Royal in the European Union, and a motorcycle company has managed to grab the Australian trademark. It seems unlikely that all three are committed to serving the greater good.

Despite the slick media campaign to announce the launch of Sussex Royal, it would appear the duo and their team failed to think of the most basic aspects of unveiling a new brand. All of this points to one conclusion: if the other trademark applications survive any likelihood of confusion challenge, the soon-to-be former royals may find it more difficult to make money in the U.S., the EU and in Australia than they had anticipated.

The story of Harry and Meghan’s Sussex Royal brand launch may turn out to be a cautionary tale for business owners and intellectual property attorneys alike. Or it may turn out that it is the Duke and Duchess, not Joel Fogelson, who teach IP strategy. Publicly available records indicate the Sussex’s team filed an application for the Sussex Royal name with the World Intellectual Property Organization with a U.S. designation a week before Fogelson came on the scene. This possibly leaves the door open for the royals to capture senior filing status worldwide. The application encompasses all aspects of their business, from clothing and stationery to fundraising and social services in the U.S., the EU, Australia and Canada.

As this situation continues to play out over time, one lesson will stand: every new business plan must include a comprehensive IP strategy, regardless of the celebrity status of those involved or the geography covered.

*This article also appears in Crain’s Cleveland Business.

Jamie Pingor is a partner at Walter | Haverfield and chair of the Intellectual Property team. He can be reached at jpingor@walterhav.com or at 216-928-2984.

Don’t Leave Yourself Exposed with a Naked Trademark License

Kevin J. Soucek and James J. Pingor
September 24, 2019

Clothing your trademark license with certain contractual provisions can possibly cover an otherwise uncomfortably bare exposure.

An owner of a trademark has a duty to ensure the consistency of its trademarks, as well as the good(s) and/or service(s) under which its trademarks are used. If a trademark owner enters into a license agreement and fails to include adequate quality controls over a licensee’s use of its licensed trademark, this trademark owner could lose its trademark rights due to a legal doctrine referred to as the “Naked Licensing Doctrine.”

Naked licensing can lead to situations where the public is deceived or misled, due to a separation between the trademark and the expected quality of good(s) and/or service(s). In other words, once a trademark no longer functions as a source identifier (i.e., functioning as a symbol of a known quality of the good(s) and/or service(s)), the trademark effectively loses its significance as a source identifier. Even if the goods and/or services are of similar quality, the lack of provisions controlling such quality can lead to problems. Oftentimes in these situations, once this significance is lost, the trademark can be deemed to have been abandoned under trademark law.

One example of naked licensing involves Freecycle, an Arizona non-profit dedicated to facilitating the re-use of unwanted items of others. The Ninth Circuit Court, in this instance, considered whether the trademark owner (i.e., Freecycle) had adequately controlled its licensees’ use of marks so as to prevent naked licensing. In this case, Freecycle allowed its licensees to use its trademarks without written licenses. Freecycle argued, in part, that it exercised control over its licensees through guidelines and policies published online. The Court rejected Freecycle’s argument and not only found that Freecycle failed to retain contractual control over the quality control provisions, but that Freecycle did not have actual control over the quality control provisions. In turn, the Court concluded that Freecycle engaged in naked licensing.

To comply with the current state of trademark laws, there are a number of legal provisions for addressing and/or monitoring the quality of goods produced and/or services provided under a trademark that must be incorporated in a trademark license agreement to prevent naked licensing. An example of such a provision generally includes an agreement where the licensee will agree to use the licensed trademark in accordance with such quality standards as may be reasonably established by the licensor. Nevertheless, including these provisions in a trademark license does not by itself protect the trademark. Even if these provisions are encompassed in a trademark license agreement, the trademark owner should make sure to also monitor, and if necessary, enforce the quality control provisions throughout the term of the license in order to preserve the inherent value of the licensed trademark. Any failure to enforce could also be considered an abandonment of the trademark.

Naked licensing is also a risk that should be assessed prior to any potential merger or acquisition. Prospective buyers and sellers should be aware of the potential detriments that a naked trademark license arrangement can pose relative to the strength and viability of a licensed trademark.

Therefore, it is prudent to seek out meaningful counsel and contact an experienced trademark attorney to discuss such potential licensing issues. Walter | Haverfield’s trademark attorneys regularly counsel clients in such licensing matters.

Kevin Soucek is an attorney at Walter | Haverfield who focuses his practice on intellectual property. He can be reached at ksoucek@walterhav.com or at 216-619-7885.

Jamie Pingor is a partner at Walter | Haverfield and chair of the Intellectual Property team. He can be reached at jpingor@walterhav.com or at 216-928-2984.

*This article also appears in Crain’s Cleveland Business.

The Sweet Smell of Differentiation: Protecting Brand Intangibles as Trademarks

James J. Pingor
July 30, 2019

In the never-ending quest to prove to consumers that a product is truly unique, manufacturers in recent years have begun to seek trademark protection on intangible brand qualities, such as scent. In 2014, Verizon registered a “flowery musk scent” as a trademark to pump into their larger retail stores in order to distinguish itself from other communications and consumer electronics retailers. In 2007, dental care product manufacturer Lactona produced toothbrushes infused with a trademark-registered strawberry scent.

What seems like a promising source of competitive advantage can prove quite difficult to achieve―and not yet a viable alternative to conventional trademarks―as evidenced by the fact that only around a dozen scents are currently registered as trademarks in the U.S. This figure, which stands in sharp contrast to the millions of conventional logos, phrases and designs currently registered with the United States Patent and Trademark Office (USPTO), is largely attributable to the fact that non-conventional trademarks are extraordinarily difficult to both secure and protect as registrations.

That Indefinable Something Can Be Difficult to Define

In a 2015 article published in The Wall Street Journal, it was noted, “In the U.S., you have to show that a fragrance serves no important practical function other than to help identify and distinguish a brand.” This means that products whose primary function is scent, such as perfumes and air fresheners, are not eligible for protection.

In 2018, a case involving Hasbro’s efforts to register the scent of its iconic children’s PLAY-DOH® brand modeling compound as a trademark reignited the conversation around non-traditional trademarks. Described in the USPTO trademarks register as a ‘sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough,’ the scent received trademark protection from the USPTO. This was a win for Hasbro, but does this open the door for others seeking similar protection of the intangible properties of their products?

The bar remains high. The U.S. Supreme Court holds that the features of any product are not inherently distinctive. What this means for manufacturers who wish to secure a non-traditional trademark is that they must unequivocally demonstrate that a scent, taste or sound is distinctly unique and clearly serves as a source-identifier through secondary meaning. This is not an impossible task, but applicants should be aware that the time and costs associated with meeting the Supreme Court’s high and exacting standards can be onerous.

Sniffing Out a Solution

As the law continues to evolve in response to changing consumer perceptions, intellectual property offices are simultaneously creating new technologies to allow manufacturers to protect non-conventional trademarks associated with their products. Despite this progress, there is still a long way to go before scent, taste and sound are afforded the same protections as tangible product designs and attributes. In the near term, it is recommended that potential applicants continue to secure protection of their intellectual property via traditional routes such as word, logo and design trademarks.

Given the complexity of these and all matters concerning intellectual property, companies would be well advised to seek the counsel of a trademark attorney familiar with the nuances of protecting non-traditional trademarks before submitting applications for trademark registration with the USPTO.

Jamie Pingor is a partner at Walter | Haverfield and chair of the Intellectual Property team. He can be reached at jpingor@walterhav.com or at 216-928-2984.

*This article also appears in Crain’s Cleveland Business.

USPTO Now Requiring U.S. Representation for All Foreign Trademark Applicants, Registrants, or Parties

Kevin J. Soucek and James J. Pingor
July 22, 2019

Effective August 3, 2019, the United States Patent and Trademark Office (USPTO) will require all applicants, registrants, or parties (including Canadian attorneys) not domiciled in the United States to be represented by a U.S. attorney before the USPTO. This new requirement is in response to a recent surge in filings from foreign applicants, in an effort to combat the growing problem of foreign individuals, entities, and applicants from failing to comply with U.S. law.

In the past, Canadian attorneys could represent clients before the USPTO without having to be represented by a U.S. attorney. In addition to other foreign applicants and entities, this new rule now also applies to Canadian applicants, registrants, or parties. Nevertheless, Canadian trademark attorneys and agents will continue, if eligible, to be recognized as additionally appointed practitioners who can represent their Canadian clients, although the USPTO will correspond only with the appointed U.S.-licensed attorney.

Once implemented, any foreign applicants who file a trademark application with a filing basis under section 1, section 44 or section 66(a) will be informed in an Office Action that an appointment of a qualified U.S. attorney is required. The applicant will have the usual period of six months to respond to an Office Action, and failure to comply will result in abandonment of the application.

The USPTO anticipates that the requirement will have the benefit of generally reducing costs to applicants, registrants, or other parties. It will also provide greater value to consumers who rely on registered marks. Further, the USPTO expects that the requirement will not only aid the USPTO in its efforts to improve and preserve the integrity of the U.S. trademark register, but will also ensure that foreign applicants, registrants, or other parties are assisted only by authorized practitioners who are subject to the USPTO’s disciplinary rules.

Walter | Haverfield’s Intellectual Property group regularly counsels foreign associates worldwide in extensively handling various trademark matters before the USPTO. Please contact us should you need assistance.

Kevin Soucek is an attorney at Walter | Haverfield who focuses his practice on intellectual property. He can be reached at ksoucek@walterhav.com or at 216-619-7885.

Jamie Pingor is a partner at Walter | Haverfield and chair of the Intellectual Property team. He can be reached at jpingor@walterhav.com or at 216-928-2984.

Upcoming Changes in Canadian Trademark Laws and Practice

Sean F. Mellino
May 15, 2019

Beginning June 17, 2019, sweeping changes to Canadian trademark laws will finally be in effect. The transition comes after longtime lingering rumors. United States entities that conduct business in and are trademark owners in Canada should be aware of some of these key changes. The ultimate goal is to align Canadian practice with other jurisdictions worldwide.

Requirements of Filing Applications and Prosecution Process
First, new Canadian applications will have to comply with the classification system of goods and services that is already used in the U.S. Historically, Canadian applications had all goods and services included together. These changes mean that attention will have to be paid to the various classes of goods and services, with which U.S. trademark registration owners should already be familiar.

Second, new trademark applications filed in Canada will no longer have to include dates of first use. Furthermore, asserting actual use will not be required for a trademark application to proceed to registration. The result of this change means that an intervening party could potentially secure a Canadian registration without proving use in Canada. In other words, there could be an increase in squatters or trolls obtaining Canadian trademark registrations, to the detriment of valid Canadian trademark owners. In turn, a valid trademark owner in Canada might have to address this intervening registrant which could complicate its ability to secure its own registration in Canada. This emphasizes the importance of filing applications in Canada sooner rather than later when there is trademark use in Canada, or when it is anticipated in the near future. There will clearly be an increased value in “first to file” under the new Canadian system.

Third, the expansion of Canadian laws to help protect non-traditional trademarks (such as colors, scents, tastes and moving images) is an interesting development. Other jurisdictions, including the U.S., have already been affording protection to non-traditional trademarks, so this will be a welcome change that helps increase the range of Canadian trademark protection. However, non-traditional trademarks will still be subject to examination for distinctiveness (much like in the United States). So it could be difficult to obtain registrations of non-traditional marks unless the trademark owner can provide substantial evidence of extensive use and promotion in the Canadian market.

Registration Term and Renewals
The term of a Canadian trademark registration will be 10 years for registrations issued after June 17, 2019, instead of 15 years under the current system. The term for registrations that are already in existence before June 17, 2019 will remain at 15 years. Importantly, they will not be converted to a 10-year term until the next renewal deadline arises. Furthermore, any Canadian registration renewed after June 17, 2019 will need to be amended to place the goods and/or services into appropriate separate classes. This means that there could be a cost savings in renewing a Canadian registration prior to June 17, 2019.

Fees
The adoption of the classification system mentioned above results in a new filing fee system. As is done in the United States, the trademark application filing fee will be based on the number of different classes of goods and services. In the new Canadian system, this fee will be $330 (CDN) for the first class, plus $100 (CDN) for each additional class of goods and/or services. This is a significant change. Instead of having a single filing fee, regardless of the number of classes of goods and services, new applications could have drastically higher filing fees if many different classes are included. A small consolation is that the $200 registration fee will be eliminated.

It may be worthwhile for U.S. trademark owners to review and audit their own portfolio to determine if any cost-savings steps should be taken before June 17, 2019. If you have trademark questions or concerns, either in the United States or in Canada, please reach out to our Intellectual Property team. We’d be happy to help.

Trademark Oppositions: A Play for Your Playbook

Kevin J. Soucek

The National Collegiate Athletic Association (NCAA) is playing defense once again to protect its valuable trademarks for MARCH MADNESS® via a trademark opposition.

In short, if a party determines that it could be harmed by the registration of another party’s mark, they can file a trademark opposition against the potential registration of that other party’s trademark.

For example, the NCAA recently filed a trademark opposition against T2MA, Inc.’s trademark application to

register the mark, “MARCH MULLIGANS.” T2MA said the mark would be used for entertainment purposes such as online sweepstakes and other contests – which could possibly include basketball tournaments. This potential use of “MARCH MULLIGANS” in connection with basketball raises a concern for the NCAA. That’s because allowing “MARCH MULLIGANS” to be associated with basketball could confuse consumers in the U.S. marketplace and thus, weaken NCAA’s own March Madness brand.

The NCAA’s trademark opposition against T2MA’s “MARCH MULLIGANS” is on-going; but this is not the first time that the NCAA has made a play in defending its trademarks.

In a pending case filed in 2018, the NCAA opposed a trademark opposition filed by Xooker, LLC for “BASKETBALL MADNESS” in connection with downloadable games. Prior to that in 2017, the NCAA filed a trademark opposition against La Preferida, Inc. for “MUNCH MADNESS” in connection with food goods, which resulted in this trademark application being refused registration.

The NCAA has also successfully filed trademark oppositions against the following trademark applications: MARCH IS ON!; MARCH MATNESS; PLAYERMADNESS; and APRIL MADNESS, among others.

Most may be aware of playing offense by obtaining a trademark registration for one’s own goods and/or services. However, it is advantageous to have a full playbook; and it may be a clutch play to include defensive plays, such as engaging in trademark oppositions of marks desired by others, which may be concerning to one’s own trademark(s).

In summary, defense can be the best offense if there are any concerns about potentially brand-diluting trademarks. Therefore, it is vital to contact an experienced trademark attorney to discuss the strategic options available to protect one’s brand, and intellectual property at-large, because there is more to the game when it comes to enforcing and protecting one’s intellectual property.

Kevin Soucek is an attorney at Walter | Haverfield who focuses his practice on intellectual property. He can be reached at ksoucek@walterhav.com or at 216-619-7885.

Jamie Pingor in a partner at Walter | Haverfield and chair of the Intellectual Property team. He can be reached at jpingor@walterhav.com or at 216-928-2984.

Inking the Deal on Body Art: Determining Who Owns the Rights to Your Tattoo

James J. Pingor
April 4, 2019

Once reserved for sailors, ex-cons and members of biker gangs, tattoos today adorn the arms, legs, necks, torsos and faces of more than 45 million Americans, roughly 13 percent of our nation’s population. The extraordinary proliferation of tattoos―and their elevation to art―has created a thought-provoking challenge for intellectual property attorneys.

A series of high-profile lawsuits has begun to measure the extent to which U.S. copyright law applies to tattoo art. One such lawsuit involves LeBron James’s tattoo artist. The Cleveland Heights-based artist is suing the makers of the “NBA 2K” video game series for copyright infringement. The artist claims that he holds the rights to James’s tattoos, and those of other basketball players he has inked. Those tattoos appear on computer-generated versions of the players in the games. The game makers apparently did not obtain permission to include the tattoos, and recently, a federal judge ruled that the artist can seek statutory damages related to the copyright violations.

The artist who designed and placed several tattoos on WWE wrestler Randy Orton is also suing 2K games, as well as WWE, in federal court. She alleges the companies used her copyrighted designs for commercial purposes and without her consent in a number of video games featuring Orton.

Both cases are ongoing.

But Are They Copyright Worthy?

A review of similar high-profile lawsuits, including one filed in 2011 by the tattooist responsible for Mike Tyson’s iconic face tattoo, does little to answer the question of whether tattoo art deserves copyright protection. S. Victor Whitmill sued Warner Bros. for copyright infringement after a character in the movie, The Hangover: Part II, woke up following a night of heavy drinking wearing a replica of Tyson’s unique tattoo. In court documents, Whitmill contended he “has never been asked for permission for, and has never consented to, the use, reproduction or creation of a derivative work based on his original tattoo.” Settled out of court under undisclosed terms, the case leaves many to ponder if U.S. copyright law can be successfully applied to tattoos, and if it does, who owns the rights to reproduce them.

According to 17 U.S.C. § 102, copyright protection extends to “original works of authorship fixed in any tangible medium of expression…from which they can be perceived, reproduced, or otherwise communicated.” Based on this definition, tattoos appear to meet copyright standards since they are in fact fixed in a tangible medium (the human body) and can easily be reproduced and communicated in photographs and digital media.

It is an opinion that the federal copyright office seems to share. In 2011, Tyson’s tattoo artist successfully received a registration for the design as artwork on a 3D object. In addition, Tyson signed a release indicating “all artwork, sketches and drawings related to his tattoo as well as any photographs of the tattoo are property of Paradox-Studio of Demographics,” the business entity under which Whitmill operated.

Sorting Out Ownership Before the Ink Dries

All of this leads to the question, who truly owns the tattoo on a client’s bicep? The artist or the person wearing it the rest of their lives?

Unlike the artist in Tyson’s case, most tattooists don’t utilize releases, primarily because their clients are not famous, and there is little to no chance the art will be replicated. However, for those who work with celebrities and professional athletes like LeBron James and Randy Orton, a release may be the best way for them to establish ownership and set clear limits on the commercial use of their work from the outset.

For the recipient of a tattoo, there are several factors to consider when determining if and how copyright protection may apply to their newly inked body art. For starters, if the art is an original design, a tattooist may choose to license the design for reproduction, or agree that the tattoo is the product of a work-for-hire engagement. That will mitigate the possibility of copyright infringement. Finally, tattoo wearers whose art is reproduced may seek protection from potential lawsuits under the fair use defense. That said, fair use is quite broadly defined, and therefore highly subject to interpretation by the courts―hardly a failsafe strategy.

Until case law catches up with the explosive popularity of tattoos, ink lovers with celebrity status would be well served to follow the lead of the NFL Players Association, which has recommended that all players protect themselves by requesting releases from artists every time they get a new tattoo. For the average Jane or Joe, a candid discussion with their tattooist on ownership before getting inked should suffice.

Jamie Pingor in an attorney at Walter | Haverfield and chair of the Intellectual Property team. He can be reached at jpingor@walterhav.com or at 216-928-2984.

*This article also appears in Crain’s Cleveland Business.

Supreme Court: Copyright Applications Don’t Give Ability to Sue

Sean F. Mellino
March 5, 2019

On March 4, 2019, the U.S. Supreme Court unanimously ruled that a copyright owner must have a federal copyright registration in order to sue a potential infringer in federal court. Simply filing a federal copyright application is not enough to file a federal suit.

The decision comes after the court agreed to review a copyright litigation case in 2018 with the intent to clarify the longstanding question of whether a copyright application or registration was needed to file a lawsuit (Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, et al.).

Until today, federal courts have historically been divided on the copyright lawsuit issue. That, in turn, caused continued confusion for the public as to how most effectively (and when) to protect a copyright (which is the exclusive legal right given to an originator or an assignee to print, perform, film or record literary, artistic or musical material).

The Supreme Court’s ruling underscores the importance of securing a U.S. copyright registration as soon as possible. Any delay in filing an application, and then securing an official copyright registration from the U.S. Copyright Office, may further expose a body of work to infringement or misappropriation to the point that it’s too late to recover adequate monetary damages. Such a delay may also prevent a copyright owner from timely asserting his or her rights against a potential infringer.

It can take more than a year from the time of filing an application to the point of securing a copyright. Therefore, it is prudent for copyright owners to consider filing early and often, especially since the process is relatively inexpensive and offers significant benefits and advantages. Most importantly, a copyright owner should be ready to take immediate action if and when an infringement or misappropriation issue arises.

If you have copyright questions or concerns, please reach out to our Intellectual Property team. We’d be happy to help.

Sean Mellino is an attorney with Walter | Haverfield who focuses his practice on intellectual property law. He can be reached at smellino@walterhav.com or at 216-928-2925.

The Business of Patents

Ed Caja
February 28, 2019

Why would someone, or some business, want to file for or ultimately obtain a patent? The short answer is that there are many different answers and reasonings, and inventors, entrepreneurs and businesses should make a balanced assessment on an ongoing basis.

What a patent provides is not a right to do something or have something. Rather, a patent is an exclusionary right that prohibits others from doing something. In other words, instead of giving someone a right to do something, a patent provides the patent owner the right to enforce (often through the threat of a lawsuit) the ability to keep (or prohibit) others from making, using, selling, importing or exporting something.

The processes behind how a patent is granted often appears mysterious and sometimes overwhelming to those outside of the patent world. In reality, it’s often more of an assessment of give and take between two parties, the inventor and the United States, represented by a federal employee, the patent examiner. Once an application for a patent is filed, it is assigned to a patent examiner to assess if a patent should, or should not, be granted. Essentially, the job of the examiner is to weigh the legal requirements of the patent system against the inventive (and claimed) material from the inventor. That’s to determine whether the person (or business behind the person) pursuing a patent has provided enough (and enough of the right stuff) inventive detail to be granted an exclusive right to the claimed technology.

One key to remember is that this examination step is only a first stage in a comprehensive patent strategy. Obtaining a granted patent may be all that one desires. Sometimes, inventors are only interested in having a patent, for example, to frame as wall art. In that case, the first stage will be sufficient. Alternatively, enforcing the rights that are granted with a patent may invoke additional stages. Enforcement, by way of Cease and Desist letters or litigation, can lead others to challenge the validity of the patent either in the Federal Court system or at the U.S. Patent Office (USPTO). These additional stages will undoubtedly bring about additional costs, and the patent strategy of a business plan should anticipate these costs. While costs associated with the first step of obtaining a patent is necessary, additional steps may also be necessary based on the answer to the question of why, and what one wants to do with a patent once obtained.

Focusing in on that first step of obtaining a patent should include a consideration of how much to pay for a patent. Unfortunately, there is often no easy answer to this question as every invention and strategy is different.

Having or even pursuing a patent can serve as a signal of perceived exclusivity. Oftentimes, doing enough to establish ‘patent pending’ is sufficient to alert the market that a business is serious about protecting their intellectual property. An issued patent provides tremendous value to its owner and serve as a symbol of exclusivity, accomplishment or capability. Patents may also be a signal to investors that the concept has value, and investors should consider investing with the patent holder (or sometimes the applicant). For businesses already engaged in a market sector, patents may serve as a symbolic shield in a market area, making it difficult for competitors to enforce other patents or technology in a particular area. Further, depending on strategy, patents may also serve as an offensive tool or symbolic weapon to stake out new market areas.

It is important to note that, while a patent strategy can be somewhat tailored to an applicant’s business intentions and goals, it nevertheless requires a significant monetary investment. However, in exchange for the exclusive monopoly granted to the patent holder by the U.S. government, obtaining a patent is oftentimes one of the best strategic decisions businesses or inventors make to obtain market share.

We’re here to help tailor a patent strategy that fits with your business, market and most of all, long-term intentions.

Ed Caja is an attorney at Walter | Haverfield who focuses his practice on intellectual property law. He can be reached at ecaja@walterhav.com or at 216-619-7871.

European Patent Office Says No to Artificial Intelligence

Ed Caja
December 31, 2018

The European Patent Office (EPO) implemented two guidance changes in November that state that no patents may be given on artificial intelligence. The move on artificial intelligence patents mirrors the EPO’s stance on software, which is also prohibited, on a per se basis.

The office’s latest changes directly offer long-awaited clarity for U.S. entrepreneurs and businesses seeking intellectual property protection in Europe. However, uncertainty still remains in the U.S., where courts of all levels have issued unclear and arguably conflicting decisions on patent eligibility related to computing, which has even caught the attention of Congress. Lawmakers may look at possible changes to the law, but it’s unclear when (or to what extent) those changes may occur.

Business seeking clarity may also indirectly benefit from the changes in Europe, since even local computing may be caught in a web that is often worldwide (with considerations ranging from cloud computing to data privacy). Understanding that clarity may provide business advantages even to businesses here in the U.S.

Additionally, while the EPO guidance at first glance appears negative, that guidance does provide a path for protecting explicit technical uses of artificial intelligence. For example, the original EPO guidance related to software was also initially thought to be negative as to the protection of software, but in reality, software patenting is alive and well in the EPO.

So, knowing how to protect software innovation even when software per se may not be protected could be key to leveraging the certainty provided by the EPO guidance changes.

Call us to see how we can help you protect your innovation.

Ed Caja is an attorney at Walter | Haverfield who focuses his practice on intellectual property law. He can be reached at ecaja@walterhav.com or at 216-619-7871.

Adviser: Beware of the blurred lines between professional and private social media

James J. Pingor
October 20, 2018

Walter | Haverfield attorney Jamie Pingor advises companies to adopt social media policies that protect their brands and limit what employees may post on their personal pages. His article appears in Crain’s Cleveland Business.

Category: Intellectual Property

Intellectual Property Amid COVID-19

Kevin J. Soucek and James J. Pingor
March 17, 2020