Part 2: Strengthening Alliances in China
By Jack Branowski
We are back! The trip to China, taken by Baker and Rannells, P.A., President and Senior Partner, Stephen L. Baker and Associate Attorney, Pei-Lun Chang, yielded all intended results.
In September 2016 Baker and Rannells, PA, the notable and highly regarded law firm specializing in intellectual property law, initiated the first step of its planned expansion into China. During the ten day trip we strengthened alliances and cooperative efforts with our strategic partners. We also reaffirmed our law firm’s dedication to our already strong list of clients based in China.
There was a renewed sense of need for the removal of roadblocks faced by Chinese companies looking to move into U.S. markets, adding to the list of Chinese needs beginning with licensing, trade mark registration and patent filings. There are also new and renewed concerns in the areas of client vetting, enforcement of client intellectual property rights and immigration law representation for businesses and individuals.
Baker & Rannells / Huake Joint Exhibition (See Blog Pt. 1)
The most exciting benefit of the trip to China is the newly expanded relationship Baker and Rannells, P.A. will enjoy with its strategic partner, Huake Law Firm. Through this enhanced relationship with Huake (practice limited to China), both Baker and Rannells and the Huake Law Firm will each maintain offices within the other’s headquarters location. This gives each firm access to local talent, knowledge, expertise and services which are vital to accommodate the needs of their respective clients in both China and in the United States.
Baker & Rannells New Office within Huake
Baker & Rannells is excited and appreciative for every one of its clients in all the countries we service. Now through our continued and expanded endeavors in China, we are excited about our expanded client service the firm now offers and about the cultural expansion our relationship with Huake provides.
Huake Law Firm – Yuexiu No. 198 North Road, 19th Floor, Guangzho, China
Check back in October 2016 for information and an update as Huake Law Firm visits the United States and on the Baker and Rannells, P.A. trip to the APAA2016 in Bali.
For more information please contact Baker and Rannells, PA at www.tmlawworldwide.com .
This is a very exciting time for Baker and Rannells, PA, the notable and highly regarded law firm specializing in intellectual property law, as we eagerly initiate the first step of our planned expansion into China.
Stephen L. Baker, President and named partner of Baker and Rannells, and Attorney Pei-Lun Chang, have scheduled an exciting ten day trip to China from August 9 through August 19, 2016. While visiting Guangzhou, Shen Zhen and other parts of China, Attorneys Baker and Chang will attend and exhibit at the annual meeting of the International Overseas Trade Fair (OCTF). The OCTF promotes overseas import and export expansion efforts in China and is sponsored by the Overseas Chinese Think Tank (OCTT).
Attorney John M. Rannells, the other named partner of our prestigious firm, spoke enthusiastically regarding the trip to China. Referencing an even stronger alliance and cooperative effort with its current strategic partners, Attorney Rannells looks forward to a highly anticipated attorney exchange program with his firm and that of its strategic partners. He also believes his firm’s dedication to the Chinese market will be demonstrated through the increase of attention, talent and resources being allocated. He is confident these efforts will lead to an increase of his firm’s current Chinese client base as well.
Local markets and manufacturing zones will also be of interest. Here Attorneys Baker and Chang will be working with various domestic and overseas social organizations, business associations and current local strategic alliance partners of Baker and Rannells.
It is the goal of all involved in the Baker and Rannells expansion effort, to reinforce and strengthen the already solid relationships Baker and Rannells enjoys with its current China based clients and strategic partners. Baker and Rannells, PA plans to increase its recognition as a leading source for the Chinese markets intellectual property legal needs.
Check back in September for Part 2, an update and learnings from the trip.
For more information please contact Baker and Rannells, PA at www.tmlawworldwide.com.
Although the Trademark Insider® Annual Report is no longer published, the performance of the firm Baker and Rannells, PA and the firm’s President/Chief Attorney Stephen L. Baker to the present time has remained at least as significantly strong as is illustrated by the figures presented below.
Corporation Service Company® (CSC®), a leading provider of trademark research and watching, brand monitoring, and domain name management services, published the Trademark Insider® Annual Report until 2010.
A quarterly publication on the trademark industry, the report provided a ranking of leading trademark practitioners, insight into overall trademark filing activity, and analysis of overall industry trends.
Trademark Insider® Award was determined by calculating the number of times an individual law firm and/or attorney is listed in the Correspondent field of all USPTO applications submitted during a particular calendar year.
“It is a great achievement to be recognized as one of the top trademark practitioners,” said Rod Ward, President and CEO of CSC ” in 2010. We congratulate all those who received ranking on this year’s (2010) list, especially those that won an esteemed CSC® Trademark Insider® Award.”
We often get questions from business owners whether they should register their logo or trade name. According to USPTO, who manages incoming applications and issues trademarks, there are several advantages to officially register your trademark.
1. You are declaring to the general public that you have claim of ownership of the mark
2. You have legal coverage and right to exclusively to use the registered mark nationwide
3. You have the ability to bring any action regarding violations of the mark by others in federal court
4. You can use of the U.S registration as a starting point to obtain registration in other countries
5. You have the ability to file the U.S. trademark registration with the U.S. Customs Service in order to prevent importation of infringing foreign goods
Note that you can use the TM (trademark) or SM (service mark) designation to alert the public to your claim. You can use the R (registered mark) only after USPTO officially registers the mark. This asserts that you have legal protection and exclusive right to use the mark. Click here to read more about trademarks.
A trademark includes any name, word, symbol, or device used, in business to distinguish the goods of one company from another. A trademark is a brand name and a valuable asset that should be protected.
1. Pick Wisely
There are four main kinds of trademarks:
Descriptive (Ex: Honey Bunches of Oats)
Suggestive (Ex: Jaguar)
Arbitrary; (Ex: Apple)
Fanciful (Ex: Kodak)
Note that descriptive trademarks are less likely to get approved when you compare them with the other three.
2. Be Unique
The trademark must be sufficiently unique in order to be approved, to be protectable and to keep away infringement complaints. USPTO will analyze your trademark application and compare with other approved trademarks to gauge the uniqueness.
3. Clear Drawing and Specimen
USPTO would expect a clear drawing of the mark to be submitted with the paperwork. Make sure the drawing matches the mark on the specimen. For products submit the actual label or tags used on the product packaging. For services use brochure or magazine advertisement that clearly shows the mark.
You can keep track of your trademark application by entering your registration number here: http://tarr.uspto.gov
You can find more resources and help here: http://TMLawWorldWide.com/
Patent examiners at the United States Patent and Trademark Office (USPTO) prosecute applications for patents. Examiners make determinations based on federal codes, rules, and judicial precedents. These determinations are appealable through the U.S. Courts. An appeal of these determinations is three steps away from the U.S. Supreme Court. Responsibilities for a patent examiner at the USPTO include:
- Reviewing patent applications to determine if they comply with basic format, rules and legal requirements;
- Determining the scope of the invention claimed by the inventor;
- Searching for relevant technologies to compare similar prior inventions with the invention claimed in the patent application; and
- Communication of findings as to the patentability of an applicant’s invention via a written action to inventors/patent practitioners.
In the United States, a practitioner may either be a patent attorney or patent agent. Both patent attorneys and patent agents have the same license to practice and represent clients before the United States Patent and Trademark Office (USPTO). Both patent agents and patent attorneys may prepare, file, and prosecute patent applications. Patent agents and patent attorneys may also provide patentability opinions, as noted by the U.S. Supreme Court in Sperry v. Florida. However, the USPTO Rules of Ethics and Professionalism, effective as of September 15, 2008, specifically clarifies that patent agents may not provide an “opinion of validity of another party’s patent when the client is contemplating litigation and not seeking reexamination” because such activity “could not be reasonably necessary and incident to the preparation and prosecution” of a client’s patent.
Patent attorneys must also be admitted to the practice of law in at least one state or territory of the U.S. or in the District of Columbia. In the time since the USPTO issued the first patent in 1790, approximately 68,000 citizens have passed the USPTO registration examination, allowing them to register to prosecute patent applications. (This total does not include current patent examiners, who are not allowed to serve as patent attorneys or agents and thus do not appear on the list of enrolled practitioners.) Today, roughly 40,000 people are on the list of registered patent attorneys and agents, with about 30,000 of them also licensed to practice law. Of the states, California has the most patent attorneys (and agents), followed by New York and Texas. Per capita, Delaware has more patent attorneys (and agents) than any state (not including DC). Both Patent Attorneys and Patent Agents are generally required to have a technical degree (such as engineering, chemistry or physics) and must take and pass the USPTO registration examination (officially titled Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office). Since patent attorneys are admitted to practice law in a state or territory, they can additionally provide legal services outside the Patent Office if practicing within the jurisdiction they are admitted to practice or if the law of the jurisdiction otherwise permits them to practice although not admitted in that jurisdiction. These legal services include advising a client on matters relating to the licensing of the invention; whether to appeal a decision by the Patent Office to a court; whether to sue for infringement; whether someone is infringing upon the claims of a client’s issued patent; and conversely, whether a client is infringing the claims of someone else’s issued patent. Patent agents cannot provide legal services of this nature, nor can they represent clients before the Trademark Office part of the USPTO.
To register as a patent agent or patent attorney, one must pass the USPTO registration examination. This examination, commonly referred to as the “patent bar,” tests a candidate’s knowledge of patent law and USPTO policies and procedures as set forth in the Manual of Patent Examining Procedure (MPEP). Upon successful completion of the examination, one will be labeled as a “patent attorney” if he/she has already been admitted to a state or territorial bar. However, engineers, scientists and any other science based majors, as well as law students and law graduates who are not admitted to a bar, will be labeled as “patent agents” since they cannot give legal advice nor represent clients in court. The latest exam result statistics are from June 9, 2005 through October 17, 2006: during that time, 58.2% of the 4,165 candidates passed the exam, which was based upon MPEP, 8th Edition, Revision 2. The current exam is based on MPEP, 8th Edition, Revision 4, as of October 19, 2006. (No tests were given based upon MPEP, 8th Edition, Revision 3.) Applicants who are not United States citizens and do not reside in the U.S. are not eligible for registration except as permitted by 37 CFR § 11.6(c). None of the world’s countries, except Canada reciprocates, giving U.S. citizens the right that the U.S. grants to their citizens.
A candidate must also have an adequate scientific and technical background or education to understand a client’s invention. The educational requirement can be met by a bachelor’s degree in a specifically enumerated major, such as biology, computer science, chemistry, biochemistry, microbiology, physics, and biomedical, chemical, civil, electrical or mechanical engineering. This is known as Category A qualification. One can also meet the scientific and technical training requirement by qualifying under Category B or Category C. Category B provides four distinct qualification options, where each option sets a requisite number of semester hours in physics, biology, chemistry, computer science, and/or engineering. An applicant can qualify under Category C by showing that he or she has taken and passed the Fundamentals of Engineering (FE) examination. Specific details of the ways one can qualify for the USPTO registration examination are outlined in the USPTO Registration Statement. Degrees in the social sciences, mathematics, or philosophy by themselves do not meet this requirement.
A candidate must also possess “good moral character and reputation” (37 CFR 11.7). If practicing outside the United States, a patent agent or patent attorney must be a U.S. citizen.
The process of obtaining the grant of a patent begins with the preparation of a specification describing the invention. That specification is filed at a patent office for examination and ultimately a patent for the invention described in the application is either granted or refused.
A patent specification is a document describing the invention for which a patent is sought and setting out the scope of the protection of the patent. As such, a specification generally contains a section detailing the background and overview of the invention, a description of the invention and embodiments of the invention and claims, which set out the scope of the protection. A specification may include figures to aid the description of the invention, gene sequences and references to biological deposits, or computer code, depending upon the subject matter of the application. Most patent offices also require that the application includes an abstract which provides a summary of the invention to aid searching. A title must also generally be provided for the application.
Each patent office has rules relating to the form of the specification, defining such things as paper size, font, layout, section ordering and headings. Such requirements vary between offices.
Since a description cannot generally be modified once it is filed (with narrow exceptions), it is important to have it done correctly the first time.
The claims of a patent specification define the scope of protection of a patent granted by the patent. The claims describe the invention in a specific legal style, setting out the essential features of the invention in a manner to clearly define what will infringe the patent. Claims are often amended during prosecution to narrow or expand their scope.
The claims may contain one or more hierarchical sets of claims, each having one or more main, independent claim setting out the broadest protection, and a number of dependent claims which narrow that protection by defining more specific features of the invention.
In the U.S., claims can be amended after a patent is granted, but their scope cannot be broadened beyond what was originally disclosed in the specification. No claim broadening is allowed more than two years after the patent issues.
The filing date of an application is important as it sets a cutoff date after which any public disclosures will not form prior art (but the priority date must also be considered), and also because, in most jurisdictions, the right to a patent for an invention lies with the first person to file an application for protection of that invention. It is therefore generally beneficial to file an application as soon as possible.
To obtain a filing date, the documents filed must comply with the regulations of the patent office in which it was filed. A full specification complying with all rules may not be required to obtain a filing date. For example, in the U.K., claims and an abstract are not required to obtain a filing date, but can be added later. However, since no subject matter can be added to an application after the filing date, it is important that an application disclose all material relevant to the application at the time of filing. If the requirements for the award of a filing date are not met, the patent office will notify the applicant of the deficiencies. Depending upon the law of the patent office in question, correction may be possible without moving the filing date, or the application may be awarded a filing date adjusted to the date on which the requirements are completed. A filed application generally receives an application number.
A patent application may claim priority from another previously filed application in order to take advantage of the filing date of information disclosed in that earlier application. Claiming priority is desirable because the earlier effective filing date reduces the number of prior art disclosures, increasing the likelihood of obtaining a patent.
The priority system is useful in filing patent applications in many countries, as the cost of the filings can be delayed by up to a year, without any of the applications made earlier for the same invention counting against later applications.
The rules relating to priority claims are in accordance with the Paris Convention for the Protection of Industrial Property, and countries which provide a priority system in conformity with the Paris Convention are said to be convention countries. These rules should not be confused with the rules under the Patent Cooperation Treaty (PCT), outlined above.
Many national patent offices require that security clearance is given prior to the filing of a patent application in foreign countries. Such clearance is intended to protect national security by preventing the spread and publication of technologies related to (amongst others) warfare or nuclear arms.
The rules vary between patent offices, but in general all applications filed are reviewed and if they contain any relevant material, a secrecy order may be imposed. That order may prevent the publication of the application, and/or the foreign filing of patents relating to the invention.
Should it be desired to file an application in a country other than an inventor’s country of residence, it may be necessary to obtain a foreign filing license from the inventor’s national patent office to permit filing abroad. Some offices, such as the USPTO, may grant an automatic license after a specified time (e.g., 6 months), if a secrecy order is not issued in that time.
Anyone working on government contracts involving national security technologies would be well advised to carefully coordinate patent applications with the relevant agencies. Similarly, patent applicants should be aware of the arms export-control laws that may restrict the types of technical information that can be disclosed to any foreign nationals.
Patent applications are generally published 18 months after the earliest priority date of the application. Prior to that publication the application is confidential to the patent office. After publication, depending upon local rules, certain parts of the application file may remain confidential, but it is common for all communications between an Applicant (or his agent) and the patent office to be publicly available.
The publication of a patent application marks the date at which it is publicly available and therefore at which it forms full prior art for other patent applications worldwide.
The expression “patent pending” is a warning that an alleged invention is the subject of a patent application. The term may be used to mark products containing the invention to alert a third party to the fact that the third party may be infringing a patent if the product is copied after the patent is granted. The rules on the use of the term to mark products vary among patent offices, as do the benefits of such marking. In general, it is permissible to apply the term patent pending to a product if there is, in fact, a patent pending for any invention implemented in the product.
Patentable subject matter
Patents are granted for the protection of an invention, but while an invention may occur in any field, patent laws have restrictions on the areas in which patents can be granted. Such restrictions are known as exclusions from patentability.
The scope of patentable subject is significantly larger in the U.S. than in Europe. For example, in Europe, things such as computer software or methods of performing mental acts are not patentable. The subject of what should be patentable is highly contentious, particularly as to software and business methods.
Search and examination
After filing, either systematically or, in some jurisdictions, upon request, a search is carried out for the patent application. The purpose of the search is to reveal prior art which may be relevant to the patentability of the alleged invention (that is, relevant to what is claimed, the “claimed subject-matter”). The search report is published, generally with the application 18 months after the priority date of the application, and as such is a public document. The search report is useful to the applicant to determine whether the application should be pursued or if there is prior art which prevents the grant of a useful patent, in which case the application may be abandoned before the applicant incurs further expense. The search report is also useful for the public and the competitors, so that they may have an idea of the scope of protection which may be granted to the pending patent application.
In some jurisdictions including the U.S., a separate search is not conducted, but rather search and examination are combined. In such case, a separate search report is not issued, and it is not until the application is examined that the applicant is informed of prior art which the patent office examiner considers relevant.
Examination is the process of ensuring that an application complies with the requirements of the relevant patent laws. Examination is generally an iterative process, whereby the patent office notifies the applicant of its objection. The applicant may respond with an argument or an amendment to overcome the objection. The amendment and the argument may then be accepted or rejected, triggering further response, and so forth, until a patent is issued or the application is abandoned.
Issue or grant
Once the patent application complies with the requirements of the relevant patent office, a patent will be granted further official fees, and in some regional patent systems, such as the European patent system, translations of the application into the official languages of the states in which protection is desired must be filed to validate the patent.
The date of issue effectively terminates prosecution of a specific application, after which continuing applications cannot be filed, and establishes the date upon which infringement may be charged. Furthermore, an issue date for an application in the U.S. filed prior to 1995 also factors into the term of the patent, whereas the term of later filings is determined solely by the filing date.
Post-issue or grant
Many jurisdictions require periodic payment of maintenance fees in order to retain the validity of a patent after it is issued and during its term. Failure to timely pay the fees results in loss of the patent’s protection.
The validity of an issued patent may also be subject to post-issue challenges of various types, some of which may cause the patent office to re-examine the application.
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention (the patent specification), together with official forms and correspondence relating to the application. The term patent application is also used to refer to the process of applying for a patent, or to the patent specification itself (i.e. the content of the document filed with a view to initiating the process of applying for a patent).
In order to obtain the grant of a patent, a person, either legal or natural, must file an application at a patent office with jurisdiction to grant a patent in the geographic area over which coverage is required. This will often be a national patent office but could be a regional body, such as the European Patent Office. Once the patent specification complies with the laws of the office concerned, a patent may be granted for the invention described and claimed by the specification.
The process of “negotiating” or “arguing” with a patent office for the grant of a patent, and interaction with a patent office with regard to a patent after its grant, is known as patent prosecution. Patent prosecution is distinct from patent litigation which relates to legal proceedings for infringement of a patent after it is granted.
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