Criterion Dynamics - F.A.Q.

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  • PATENT SEARCH
  • PATENT LAW
  • TRADEMARK LAW



    Do your patent searches include a legal patentability analysis or opinion?

    Our patent searches do not include any patentability analysis nor opinion. If requested, we would be happy to answer questions and give our gut feelings via e-mail, or to refer an attorney for the purpose. But we will not usually provide formal patentability analysis and we will never provide a legal opinion (as we are not a law firm).

    The main advantage to foregoing a patentability opinion is the cost savings which result (without sacrificing the quality of research conducted).


    How is the final search report delivered?

    Typically, a password protected, indexed PDF file will be sent via e-mail. This PDF file will include a summary and overview of all search results, in addition to full copies copies of the most relevant patent publications located (pending availability). Where circumstances require or the client requests, any document may be securely downloaded within an account-specific section of our website instead of being sent via e-mail.

    Alternately, we are willing to mail a full print & bound copy of any research report for a fee.


    What patent databases do you search?

    For standard patent searches, we search basically all available English-language patent databases as well as miscellaneous sources of non-patent prior art. However, we prioritize our efforts for the sake of providing value for our client.

    We are capable of contracting or referring searches of foreign language repositories.


    What industries do you specialize in?

    We specialize in research fundamentals which can be applied across all industries and technical fields. We are almost always capable of understanding your invention well enough to conduct a great search. If we ever do feel overwhelmed, we will let you know up front and will decline any payment.

    Why should I conduct a patent search?

    In one word: foreknowledge. A good patent search will hedge against liability while providing general foresight that can assist you in various ways. The value provided by a good search extends beyond predicting patentability and guarding against possible infringement. For example, you may come across out of force patents that spell out what can be done without any fear of infringement, and you may come across related inventions that spark new ideas. Also, a more thorough understanding of relevant prior art will enable you or your attorney to write a patent that is more likely to be granted without interference from the USPTO (and which is more likely to remain enforceable post-grant).

    What, exactly, is a Patent Search?

    A patent search, is a search of patents and other documents of related interest. Our standard patent searches are conducted with the object of "identifying the most pertinent prior art relative to the analysis and/or contextualization of your invention and its patentability, with reasonable efficiency."

    What is Prior Art?

    Essentially, "prior art" refers to patent publications filed before a pertinent date, as well as any information that has been made known to the public in any form before a pertinent date. In part because patent applications are not published immediately, not all prior art is searchable. Because the potential sources for prior art are practically unlimited, a "fully complete" search of searchable prior art is generally not cost or time effective if not outright impossible. Because patent repositories exist largely for the purpose of documenting and disclosing innovations that are (or were) perceived to be commercially relevant, they are typically considered to be a vital resource when searching prior art.

    Do you offer Freedom to Operate and Validity searches?

    We are willing to undertake just about any English-language patent search project (and trademark searches, too). For many projects however, we still recommend that you start with a standard patent search. After, we can talk and re-evaluate remaining research requirements.


    Is "it" patentable?

    Truth be told, almost anything is patentable with the right minor "improvements." That does not mean that a resulting patent will necessarily be worth anything, nor does it mean that you can avoid infringing another's patent so easily.

    In order to be subject to patent protection, an innovation generally must be considered both "novel" and "non-obvious." Novelty tends to be interpreted quite literally. What constitutes non-obviousness? Your guess is probably better than you may assume; if it sounds like there is a grey area, it is because there is a grey area.


    What is a patent?

    In the US, there are actually three different types of patents. Plant patents, for example, disclose the discovery of new plants.

    Usually, the word "patent" is used to refer to a utility patent. Utility patents protect the rights to innovation that serves a function beyond superficial appearance. As long as fees are paid, utility patents usually remain in force for twenty years from the effective filing date of the patent. These patents usually include multiple "claims"; these claims define the actual scope of protection theoretically offered by each patent.

    Design patents protect the superficial, non-functional aspects of a functional product's appearance (Copyright law, by comparison, covers the appearance of non-functional items). In the US, design patents provide a narrow scope of protection that expires 14-15 years from the grant date. However, design patents can be used to establish perpetual trade dress protection (which is a form of trademark protection) in the US. Different dynamics may be found overseas where such protection may overlap with Copyright protection.


    What is a Provisional Patent Application?

    A "provisional application for patent" is sort of a placeholder; by filing such an application, an inventor is given full year to file an actual patent application relative to the same invention without sacrificing the earlier filing date. Filing fees are relatively inexpensive ($130 for a small entity), and the application does not have to include claims, which means it can be filed with less legal expertise than an actual patent application.

    However provisional applications are not examined, and in key respects, they must still meet the same exact standards as any patent application in order to maintain any legal benefit. So, they end up giving a false sense of security to some inventors who are misled into believing that patent protection is initially as simple as paying $130 to the USPTO. In fact, the provisional application was actually introduced as a strategic means for corporations to attain even footing with international counterparts who could file for a patent internationally, and delay the publication of their patent application in the US as a result.


    I just filed a patent application. At what point may I sue for infringement.

    You may sue for infringement only after the patent has been issued. However, if a cease and desist is sent early enough, and if the claims issued remain substantially similar to the claims which were initially drafted (meaning they did not require modification as a result of USPTO office actions), you may sue for damages retroactive to the date that your patent application was published. In lieu of accelerated examination, this typically occurs 18 months after filing.

    What about software patents?

    We are not touching this one. Ask your attorney! Or Google.


    What, exactly, constitutes a trademark?

    Patents protect innovation. Trademarks protect branding. Simply, a trademark is any word, phrase, or design, or less commonly an alternate "device" such as a sound or scent, used to describe a commercially sold product for the purpose of distinctively identifying it. Sometimes you may hear people refer to "service marks." A service mark is the same thing as a trademark except that it is used to describe a commercially available service instead of a tangible product.

    How much does it cost to achieve trademark protection?

    Technically, nothing. If you are using an identifiable word, phrase, design, or "device" in commerce as a trademark, you already have trademark protection in the regions where you are using the trademark in commerce.

    Practically speaking, registering your trademark with the USPTO is usually recommended. Federally registering your trademarks gives you several main advantages: your trademarks become easier to enforce in the event of litigation; competitors may be less likely to infringe on your trademark and may also be less likely to accuse you of infringement; it becomes easier to expand the geographic scope of your trademark protection; and you may be able to establish priority dates, both in the U.S. and abroad, before a product is ready to be sold commercially. A trademark registration does not expire unless maintenance fees go unpaid or a trademark is abandoned (i.e. no longer in use for a certain amount of time).

    Most inherently distinctive brand names and logos can be principally registered right away. Names which are generically descriptive of the product they identify (i.e. Motel 6) as well as many alternate "devices" must acquire distinctiveness over the course of several years before they can be subject to the full benefits of trademark registration. Usually, this means that you must be able to show evidence that relevant consumers have come to associate the trademark with your brand only.

    While registering a trademark is not very expensive, it is important for mark owners to enforce their rights whenever there is an opportunity to do so. Failure to take action against infringers, over time, can lead to a complete loss of trademark rights.
    How is trademark infringement determined?

    Trademark infringement is determined on a "likelihood of confusion" basis. The issue at hand is whether relevant consumers would be likely to associate the goods, services or otherwise content of one party with those of another party as a result of mark usage. A variety of factors may be examined when analyzing a trademark infringement issue, the most notable of which are: the similarity - visual and phonetical - of any marks at issue; and the commercial relationship between the goods or services described by any marks at issue.

    Generally, it is common practice for a mark owner to send a cease & desist notice before filing a lawsuit. If such a warning is ignored, infringement may be considered willful infringement and damages may be awarded in court as a result.


    I have successfully registered my trademark with the USPTO, and yet I just received a legitimate cease & desist warning?

    This might not be likely to happen, but it can happen. It is worth noting that just because you have successfully registered your trademark with the USPTO, it does not necessarily mean that you have any trademark rights. Trademark rights are established by use (or sometimes based on planned use, which must be followed by actual use). Registration can enhance those rights, but it cannot create them.

    When deciding whether to grant your trademark registration, an examiner will search other registered trademarks. They will not however complete a full trademark search, not to mention they are also human and prone to occasional fault.


    Should I consider relying on copyright law to protect my logo as opposed to trademark protection?

    Copyright law protects against copying literature, works of art, and the equivalent. Therefore, copyright law can protect your brand indirectly in the event others directly copy your logo or distinctive parts of it. However, a copyright will not usually prevent competitors from using a similar logo to describe their products or services, and damages to your brand will not be accounted for. Also note that Copyright protection can co-exist alongside trademark protection.

    Likewise, in the software arena, copyright law will protect you in the event someone copies your source code (in whole or sometimes in part), but it will not be likely to prevent someone from duplicating your software using their own, independently created code.

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