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International Patent Applications

The Fourth of Four Articles on the Patent Process

Fritz Klantschi

If you have applied to register a patent in the United States, you also may be interested in filing applications outside the U.S. There are two methods to file a patent application in a foreign country based on an U.S. patent application, (1) Direct filing, and (2) Patent Cooperation Treaty (PCT) filing.  Either method must be initiated within 12 months of the earliest U.S. filing date to ensure the foreign patent application(s) is afforded the priority date of the originally-filed application.

Direct Filing

With direct filing, the patent application is filed directly with the patent office of the selected foreign country(ies) or region(s).  The examination process is generally very similar to that of the U.S.  However, there may be differences in what is patentable and the standard for patentability.  Formal matters, such as translations of the patent application, may be required for certain countries.  Several countries allow for deferred examination.  For example, examination of a Canadian patent application will not start until the applicant requests it.  The request must be made within 5 years of the International Filing Date.  Deferred examination can serve to reduce and defer cost of examination in Canada by awaiting the outcome of examinations in other jurisdictions.  Unlike the U.S., many countries require periodic fees called annuities to be paid to maintain pendency of the patent application.

Europe has for decades examined patent applications at the regional level by the European Patent Office (EPO) and when allowed, the patentee validates the patent in particular European countries chosen by the applicant by paying grant fees and submitting translations.  The European Union (EU) negotiated the creation of a European patent with unitary effect (“unitary patent”) and a unified European patent court.  The European unitary patent will provide protection for inventions in 25 countries across Europe. Read More

The U.S. Patent and Trademark Office Review of a New Patent Application

The Third of Four Articles on the Patent Process

Fritz Klantschi

This is the third of four articles discussing the basics of filing a U.S. patent. The interaction between the patent applicant and the USPTO regarding the patentability of the application’s claims is referred to as patent prosecution and continues until either the applicant abandons the application or the USPTO declares the claims as patentable and issues a Notice of Allowance.

Upon receipt, the USPTO checks to ensure the filed non-provisional patent application is complete (appropriate fees paid, formalities review – determine if a specification, drawings, claims and oath/declaration are filed and conform to USPTO standards).  If complete, an Official Filing Receipt is issued which identifies the application number, filing date, and other relevant information.  The patent application is assigned to the appropriate technology group and is examined in the order it is received.  Because of the backlog at the USPTO, it may be one or two years before there is any substantive examination of the patent application.  At 18 months from the earliest filing date, the patent application is generally published.  If an applicant decides not to seek patent protection in foreign countries, the applicant can elect that the patent application not be published until the patent is granted.  A benefit of not having a patent application published is that others cannot review the patent application or the prosecution history until and only if the application matures into a patent.  A drawback to not publishing a patent application is that a patent holder may not seek damages for infringement prior to a patent being issued.  In certain situations, a patent holder may be awarded damages for infringement occurring prior to an application maturing as a patent when the published claims remain substantially unchanged and mature into a patent.

Review of the Application

Once an Examiner is assigned and has reviewed the contents of the application for all U.S. legal requirements, the Examiner will determine if the application is claiming more than one invention.  If more than one invention is claimed, the Examiner will issue a restriction requirement requiring the applicant to elect the invention to be examined.  If only one invention is claimed, or the applicant has elected one invention to examine (prosecute), the Examiner conducts a prior art search and generally issues a first Office Action.  Read More

Preparing and Filing a New U.S. Patent Application

The Second of Four Articles on the Patent Process

Fritz Klantschi

This is the second of four articles discussing the basics of filing a U.S. patent. Once all searching has been completed with no major conflicts, the patent application must be prepared.  The Drafting Stage is the formal process of preparing a patent application for filing with a country’s patent office.  This discussion is directed towards the preparation and filing of utility patents which are the most common patents.  There are two other types of patents in the U.S., design patents and plant patents.  Design patents provide protection for the ornamental design of a functional item.  Plant patents provide protection for any novel, non-obvious, asexually reproducible plant.  Design patents and plant patents will be discussed in future articles.

Drafting the Application

Innovation within a company is generally defined by inventors through Invention Disclosure Forms.  These disclosures are generally reviewed by a committee comprised of engineering staff, business decision makers, and an intellectual property attorney.  The committee may be assisted by the results of one or more of the above-described searches.  Once the committee greenlights an innovation and determines there is value in obtaining patent protection, the drafting stage begins.

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What to Do Before You File a Patent Application

The First of Four Articles on the Patent Process

Fritz Klantschi

This is the first of four articles covering in general terms the process to secure patent rights both domestically and in foreign countries.  This first article discusses the preliminary phase of the process, before the patent application is filed. Each of the areas discussed is a brief overview of an aspect of the patent process.  If you and your management team wish clarification or elaboration on any of the topics, please contact our office at your convenience.  We welcome an opportunity to discuss the patent process and answer any questions you may have.

A company’s intellectual property (IP) program should parallel the company’s product development cycle.  At various stages of the product development process, various IP activities are suggested.  Early in the process, the IP activities are designed for information gathering and decision-making.

The following paragraphs highlight various types of searches and analyses that may be conducted prior to starting the formal process of drafting a patent application.  The described searches/analyses are not the only types available.  Rather, they are some of the more frequent searches/analyses conducted.  Results from these searches/analyses give a company necessary information to make decisions on proceeding with development and/or seeking patent protection for their product.   Not all companies, however, conduct all of these searches/analyses.

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Court Finds BOOKING.COM Not Generic and Entitled to Trademark Registration

Suzanna M. M. Morales

A recent federal court decision that clears the way for federal trademark registration of the mark BOOKING.COM may signal a departure from current practice for the registration of marks made up of generic terms in domain names.

On August 9, 2017, the U.S. District Court for the Eastern District of Virginia reversed a decision of the U.S. Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board, holding that the company Booking.com B.V. was entitled to registration of its BOOKING.COM mark for various travel reservation and related services, even though the terms “booking” and “.com” by themselves are generic for the services. Further, the court found that the combination of a generic word and a top-level domain “generally has source identifying significance,” a departure from the conventional guidance of the USPTO.

The BOOKING.COM Applications

The USPTO had refused registration to four applications for BOOKING.COM in standard characters (word only) and various stylized forms on the basis that the marks were generic for the services.

Generic terms (i.e., the name of the goods or services) are not eligible for registration because such terms are not capable of identifying the source of the goods or services. Allowing registration of these marks could prevent others from using a common term for the goods. Terms that describe some characteristic of the goods or services are only capable of registration if they have “acquired distinctiveness,” which means that the term has taken on a meaning in the public view so that people see the term as a trademark or service mark identifying the goods or services rather than simply describing the goods or services.

After the applications were refused, Booking.com appealed the refusal of registration to the USPTO’s Trademark Trial and Appeal Board (TTAB), which hears challenges to the decisions of the USPTO’s examining attorneys on pending applications. The TTAB upheld the refusals to register, finding that the addition of “.com” to “booking” did not negate the generic character of “booking” for travel reservations.

Options for Challenging Refusal of an Application

The losing party in a TTAB challenge has two options: 1) appealing the refusal to the Federal Circuit Court of Appeals, a federal appeals court that hears intellectual property matters or 2) filing a new complaint in a federal district court. In this case, Booking.com filed a new action in the Eastern District of Virginia, which had important implications for the evidence it was able to present to the court.

When a trademark applicant appeals to the Federal Circuit, the court considers the application on the record that was presented to the TTAB, using the standard of whether the decision of the TTAB to refuse registration was supported by substantial evidence. On the other hand, parties to a new case filed in federal district court can submit new evidence, and the court makes its determination de novo, that is, without regard to the TTAB’s factual findings and decisions. Though the option of proceeding de novo before the district may seem attractive because of the ability to present new evidence, due to a recent change in law, the USPTO may be entitled to reimbursement of its expenses, which may include attorneys’ fees, from the party bringing the action, regardless of the outcome of the case. (The parties in the BOOKING.COM case currently are briefing the USPTO’s request for reimbursement.)

The Decision – BOOKING.COM Is Not Generic

The issue to be decided was whether the combination of “booking” with the top-level domain (TLD) “.com” was generic – and not entitled to registration – or descriptive – and entitled to registration with a showing of acquired distinctiveness.

The court first found that the term “booking” is generic for the services in Booking.com’s application. This could have been the end of the story if the case was before the Federal Circuit, where a number of cases have held that the addition of a top-level domain (TLD) like .com to a generic term creates a term that is still generic. But the Eastern District of Virginia, using the less deferential standard of de novo review, distinguished prior Federal Circuit cases that had considered similar facts.

The court, noting that the public perception of domain names has changed since the first Federal Circuit case on the issue in 2004, found that a domain name is by its nature unique. Rather than considering whether “booking” alone is the type of service Booking.com provides, the court focused on whether “booking.com” is the class of service.

Notably, the court found Booking.com‘s survey on consumer impressions of the mark, which indicated that consumers believed the mark to be a brand name, to be persuasive. The survey was among the new evidence the company submitted, which would not have been permitted in an appeal to the Federal Circuit.

Having found that booking.com is not generic for the company’s services, the court then went on to hold that the mark had acquired the source-identifying distinctiveness for hotel reservation services necessary for registration of a descriptive mark, but not for travel agency services. The court found acquired distinctiveness based on the extensive evidence of the company’s advertising and sales. (Two of the applications at issue, which contained design and color elements in addition to the wording, were sent back to the USPTO for review of whether these additional elements were eligible for protection.)

The Future for Domain Names?

Although the case marks a departure from the conventional wisdom about trademark registration, it is important to note that Booking.com may still have relatively limited protection for its mark. The court emphasized that it was not giving Booking.com a monopoly on the term “booking,” and even with a federal trademark registration Booking.com could not prevent others from using domain names that included “booking.com” along with other words. Still, the ability to federally register the mark provides important evidentiary presumptions for enforcement purposes.

The decision also highlights the potential implications to a trademark applicant of deciding whether to appeal a refusal of registration to the Federal Circuit or file a new case in a district court as Booking.com did here.

Whether this decision will change trademark practice remains to be seen. The USPTO apparently maintains its position that adding a TLD to a generic word generally is not sufficient to create a mark capable of registration, and the USPTO may appeal this decision. This will continue to be an issue to watch.