Control Protect & Leverage

Originally Posted 1/15/08 

For those like me who before today were unaware of this principle derived from the teachings of a 14th-century Fraciscan friar, Occam’s Razor goes something like this:

All things being equal, the simplest solution is the best

As recently outlined in the Patently-O blog, this solution was recently applied by U.S. District Court Judge William C. Griesbach in ASP v. IQ Hong Kong. In that case, the defendants alleged that the inventor backdated a drawing to overcome prior art. To prove their case, the former FBI chief of questioned documents testified on their behalf that it was a “near certainty” that the sketch had been falsely backdated. The plaintiff’s countered with a series of reasons about how the defendant’s evidence could have occured without backdating The then applied Occam’s Razor to rule for the defendant.

If the plaintiff’s lose on appeal, they could be civilly liable for defendant’s attorney’s fees, court costs, and may potentially be criminally liable if they are found guilty of fraud.

Moral? Don’t cheat. This isn’t the first, nor will it be the last time that someone is likely caught doing what they shouldn’t in an attempt to enforce their patent rights. You won’t be in this position if you keep thorough records during development and listen to your patent attorney.

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Originally Posted 11/7/07 

In the past, we have seen owners of federally registered trademarks receiving notices purporting to be from the United States Patent and Trademark Office (USPTO) or another entity with an officially sounding name. These notices typically offer a service which the notice states is urgent and/or required for the mark to continue to be registered with the USPTO.

Trademark owners should be aware that these notices are bogus. The USPTO will almost always direct correspondence to your IP counsel and will not contact the trademark owner directly. If you do receive one of these bogus notices, you should notify your attorney and send it to him or her for review.

If you have questions on this or any other trademark or patent issue, contact the atttorneys at Leyendecker & Lemire, LLC - www.coloradoiplaw.com.

Tags: TRADEMARKS // Add Comment »

Originally Posted  10/11/07

The U.S. Court of Appeals for the Federal Circuit (CAFC) recently ruled an inventor’s patents were uneforceable: Nilssen v. Osram Sylvania. Why? Because the inventor wrote, applied, and dealt with the Patent Trademark Office (PTO) on an individual, pro se, basis. Now, not everyone who prosecutes their own patent applications with the PTO will ultimately obtain a ruling of inequitable conduct against them and have their patents invalidated, but why take the risk? If your idea is truly a great idea, you shoudl take the time to obtain the necessary funds in order to properly protect your investment - by using a registered patent attorney to write your applciation for you. And obviously, we recommend using Leyendecker & Lemire, LLC to do so: www.coloradoiplaw.com.

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Originally Posted 9/18/07

As recently stated in the online blog Lexology, American Airlines recently sued Google for trademark misappropriation. See American Airlines, Inc. v. Google, Inc., No. 4-070V-487-A (N.D. Texas, Aug. 16, 2007). In its complaint, Amercian alleges that Google’s policy of allowing other companies to display paid links to their sites when Google users enter American’s trademarks as search terms, such as searching for “AA.com” or “American Airlines”, is illegal.

Under the law, there must be a liklihood that a consumer will be confused between two marks for trademark infringment to occur. Some recent court descisions have held that no confusion is likely to occur as consumers are aware when they are choosing a company with a different name. Additinally, some decisions have recognized that the purchase of a trademarked key word may not constitute legal “use” of the trademark in commerce.

American counters these arguments in its recent complaint by allegeng that “Google and its advertisers… benefit financially from and trade off American Airlines’ goodwill and reputation without incurring the expense that American Airlines has incurred…”

Google’s response to these types of allegations in the past has included an analogy to retail stores. Retail stores, Google states, are allowed to place competing items next to each other in order to attract customers. Why shouldn’t this policy also apply online?

As a trademark attorney, I understand the value of a trademark and believe that companies should not be capable of trading off on the goodwill associated with marks without compensation to those companies. However, as a consumer, I enjoy having the freedom to enter a company’s name in a search engine and receive easy links to that company’s competitors. There are multiple layers to this argument, including freedom of speech issues and my personal belief that companies such as American should feel confident that their products are better than their competitors’ products, and therefore should welcome the competition. If their competitors are providing different services, then American shouldn’t have a problem with it or it should begin to provide those services.

However, I’m curious - what do you think? I’d love to hear if any of you have any comments on this as this is one issue that is not going away.

Tags: TRADEMARKS // Add Comment »

Originally Posted 8/14/07

Way back on April 19th of this year, I wrote about the potential for patent reform occuring this year, and stating my case for why I was against it (http://www.lld-law.com/2007/04/will-patent-reform-occur-this-year.html#links). Recently, the Wall Street Journal ran a commentary article on the Patent Reform Act of 2007. Although I missed this article, I was lucky enough to see the responses the article generated in the letters to the editor section that was published in today’s (8/14/07) Journal.

I’m not sure if it was my blog article which paved the way for these reponses or not (I’d like to think it was), but thier sentiments echoed much of what I wrote about in my original article 4 months ago. For instance, David P. Vandagriff, the VP of IP for Helius, Inc. (www.helius.com), an IP broadcasting company, noted how interesting it was that the medical industry, universities, and most venture capitalists are all opposed to the act, which was somthing I mentioned four months ago. Mr. Vadagriff goes on to echo what I stated in April - saying “this reform bill is the brainchild of a small group of very large computer technology companies including Microsoft, Intel, and Oracle. It is not coincidental that each of these companies has been a defendant in an antitrust suit. They rely upon market power to maintain their dominant positions and are serial patent infingers.”

I don’t mention this article simply to show my view is commonly held. I’m writing this blog article becuase this Act is not going away unless you, the individual inventor, the small company with great IP, or just a member of the the general public who doens’t want big business to win dirty yet again, contact your representative or senator and tell him or her why you DON’T want this bill to be passed. If we don’t get this bill killed, the US patent system will essentially be “run” by the biggest technology companies on the planet.

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Originally Posted 8/9/07

Another day, another post. I’m obvously trying to quickly break us out of the blogging slump we were in…

So, in today’s Wall Street Journal, an article states that Johnson & Johnson (J&J) is suing the Red Cross for trademark infringement (WSJ Article Link). Apparently, J&J owns the trademark of a greek red cross in conncection with health care services. J&J had licensed the cross mark to the Red Cross & the Red Cross apparently licensed the mark to other companies, making a profit on their own licenses.

Although I’m tempted to jump on the side of J&J, I won’t. J&J’s argument is that trademark holders have a right to enforce their marks, and the Red Cross knew the cross mark was not their mark, yet they licnesed the mark out to others. However, the Red Cross may counter with an argument that a trademark holder who fails to enforce their mark may allow dilution of the mark or the mark may become “generic”, and and the traademark holder may lose the right to enforce the mark. I think something like that is what’s happened to J&J here. I don’t know about you, but I’ve always associated the red cross mark with the Red Cross or healthcare services in general and not J&J. It will be interesting to see what the courts decide, but my guess is J&J loses.

The point? Enforce your marks early and often. That is all.

Tags: TRADEMARKS // Add Comment »

Originally Posted 8/8/07

The post is wholly one attorney’s opinion and in no way states the opinion of the firm, or attempts to establish any facts.

Today I learned that an Invention Promotion Company, InventSAI, may not be fulfilling their required duty, by law, of disclosing the profitability of companies using their services. In fact, there appears to be a question as to whether The InventSAI Network, LLC is violating not only the the letter but also the spirit of the Amercian Inventors Protection Act of 1999 (the “Act”).

Under the Act, whose full text can be seen at http://www.uspto.gov/web/offices/com/speeches/s1948gb1.pdf, an invention promoter or an invention promotion firm must disclose specific information regarding their past business practices. These mandatory disclosures are required by law. Specifically, invention promotion companies are required to provide “the total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by such invention promoter.”

InventSAI states “An exact number of inventors commercializing their inventions can only be estimated because InventSAI clients are not obligated to disclose financial data. Nevertheless, based upon client feedback, of the 815 total InventSAI clients contracting for commercialization services, at least 152 have reported commercial success with hundreds of cases still active.” Thier online post can be seen here: http://www.inventsai.com/AIPA.html

The law requires InventSAI to disclose “the total number of customers known… to have received a net financial profit.”. It appears InventSAI is playing the ostrich game - what I don’t “know”, I don’t have to disclose. However, I read the law differently. The law requires InventSAI to disclose “known” profitably customers. InventSAI by its own admission does not know of any net profitable customer since its customers “financial data” is not disclosed. Therefore, under my estimation, InventSAI is required, by law, to state it knows of zero profitable companies that have used its services.

Moreoever, stating that “at least 152 [customers] have reported commecial success” is misleading and potentially dishonest. If InventSAI does not know their customer’s financial data, how can they know if they’re commercially successful? I’d like to know what InventSAI’s definition of commercial success is. Moreover, by simply providing “commercial succes” data as opposed to “net financial profit” data, InventSAI seems to simply be providing data they want to provide, instead of the data they are REQUIRED to provide, by law.

WHAT ARE THEY HIDING? I welcome a phone call from InventSAI to explain thier position and why they feel they can get around this law in this manner.

Tags: INVENTION PROMOTERS, PATENTS // Add Comment »

Originally Posted 8/6/07

OK, for thos of you who don’t know me by now should realize that I’m sarcastic. Hence, the title of this blog article.

Addtionally, it would be remiss of me if I failed to say sorry. I’m sorry that we’ve been absent from posting any recent blogs - I suppose the summer blog malaise started to seep as the temperature outisde started to push 100 degrees on a daily basis. So, although this new blog article is waaaaayyyyy overdue, in the hopes of kicking off a new blogging season with the type of article we wish we did not have to post, but feel it is our job to so do…

Once again, an invention promotion company has reared its ugly head to show us just how inept they actually are. As our blog articles on InventHelp and Advent Product Development disclosed their inability to create profit for their clients, Davison’s own website (http://www.davison54.com/disclosures/disclosure.php) states the same thing. Here’s what Davison tells us about themselves:

(1) 41,128 consumers signed licensing agreements and purchased research services from Davison in the last 5 years.
(2) 11,598 consumers purchsed product design services from Davison.
(3) Of these, “THE TOTAL OF CONSUMERS IN THE LAST 5 YEARS WHO MADE MORE MONEY IN ROYALTIES THAN THEY PAID, IN TOTAL, UNDER ANY AND ALL AGREEMENTS TO DAVISON, IS EIGHT(8).”

So, you have about a .0002% chance at making money with Davison if you purchase their research services. That means, that about 2 out of every 10,000 people who purchase these services with Davison make more money on their product than they spend with Davison. And if you spend the big bucks with Davison and purchase product design services your chances at makign money with them go up to a whopping .0007%. Or, about 7 out of every 10,000 people who contract Davison to help design their product make more money off of their product than they spent with Davison. So, if you’re thinking of using Davison, my suggestion would be for you to play the lottery instead. They appear to have better odds: http://www.coloradolottery.com/games/scratch/featured.cfm?FeaturedGameID=101 (please note sarcasm statement at beginning of post).

Oh, and one more thing. Davison also states “THE PERCENTAGE OF DAVISON’S INCOME THAT CAME FROM ROYALTIES PAID ON LICENSES OF CONSUMERS’ PRODUCTS IS .001%.” This means that for every $1 Davison makes from licensing a product submitted to it, Davison is making $1000 off of the people submitting the products.

Numbers don’t lie - and these are Davison’s own numbers! As we suggst to our clients, do not use these companies - you are more likely to succeed if you are willing to put in the effort yourself and use reputable marketing and manufacturing organizations, while protecting yourself legally along the way. Contact Leyendecker and Lemire (www.coloradoiplaw.com) and we can steer you in the right direction.

Numbers are current as of June 30, 2007.

Tags: INVENTION PROMOTERS, PATENTS // Add Comment »

Originally Posted 5/14/07

Between Oct 1, 1998 and Dec 6, 2004, they had a perfectly imperfect record! That is, of 2452 people that signed Phase II representation Agreements, NO ONE, ABSOLUTELY NO ONE made more money than they gave to Advent Product Development! The beauty is this is the number the company itself presented in a recent lawsuit as reported by our friend, Stephen Nipper, over at THE INVENT BLOG.

And those of us in Colorado are especially lucky because we have our very own Advent Product Development office here in the state. Let’s all give Advent Product Development a call and let them know how we feel about their good work.

So if you have an invention and a lot of money burning a hole in your pants, it seems you can’t go wrong with the boys at Advent.

(I have been told sarcasm does not transfer well in writing. So in case you were confused, I am not advocating anyone use Advent Product Development and in fact my opinion is you should avoid them and other similar invention promotion companies like the plague.)

Tags: INVENTION PROMOTERS // Add Comment »

Originally Posted 5/14/07

Good Question.

A recent article in the ABA Journal by Steve Seidenberg discusses the most recent group of business method patents to hit the PTO - tax patents. These patents cover useful, unique and nonobvious implementations of the tax law. Mr. Seidenberg’s article takes on an anti-tax patent strategy theme in discussing whether tax patents in particular and legal strategy patents in general should be valid, mentioning that Congress may be changing the law to limit tax patents.

This got me thinking about business method patents ine general and whether they were worth the cost, given recent decisions by the Supreme Court. At Leyendecker & Lemire, we charge at least 25% more for business method patents, and one reason for doing so is to ensure that we take into account recent changes in the law so that your patent is as broad as legally possible, and sill retaining the likelihood your patent will issue.

The question to ask yourself is whether it’s worth it for you (an individual or small company) to protect your unique way of doing business - be that providing tax services or otherwise? Well, maybe. Like other patentable areas, and likely more imprtant in the business method arena, you need to ask yourself how great your idea is as compared to what’s currently being done by your competitors? Does your idea give you a competitive advantage over other persons providing similar services and products such that you will can forsee obtaining a return on your patent investment which is higher than the cost of the patent? As discussed on our new website www.coloradoiplaw.com, the answer to these questions ultimately come to whether you have the perseverence to see your idea to patent issuance and to subsequently enforce any patent that may issue. Although this process may cost more with a business method patent, the reward can be just as great or greater - allowing you to provide your unique service that no one else can provide.

If you can answer these questions positively, then you have what it takes to see your business method idea through to the end and should contact our office.

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