Technology Law Blog

Showing 11 posts by Zachary W. Behler.

Will the Government Force the Redskins to Change their Name?

On June 18, the United States Patent and Trademark Office ("USPTO") cancelled the Washington Redskins' trademark in its team name, concluding that the term "Redskin" was racially offensive and derogatory towards Native Americans. 

Under the Lanham Act, Federal Trademark Law prohibits the registration of trademarks that "may disparage" individuals or groups or "bring them into contempt or disrepute."  In a controversial 2-1 decision, the USPTO agreed with a group of petitioners who claimed the team name was disparaging to Native Americans, and thus was not permitted to receive the protections afforded by trademark law. The Washington Redskins plan to appeal the decision and have responded by saying that the term is meant to honor Native Americans and is not considered offensive by many. Read More ›

Categories: News & Events, Trademarks

Design Patents

It is time that we talk about design patents. Generally, when I mention design patents to potential clients, they invariably protest that they have an “invention” and not a “design.” However, most “inventions” at least contain ornamental elements that have the potential for design infringement in the marketplace. In those cases, pursuing a design patent, by itself or in combination with a utility application, can be an effective and affordable way to secure valuable intellectual property protection.

To help you decide if a design patent might be right for you, I have devoted this post to answering the most common questions I get regarding design patents. Read More ›

Categories: Intellectual Property, Patents

Beware of the Statutory Bars

So you had one of those “Eureka!” moments a while ago and your epiphany is going to make millions as soon as it hits the shelves. This blog is about making sure you don’t lose your right to patent that million dollar idea by waiting too long to file a patent application.

Generally, an invention can only be patented if a patent application is filed within one year of the invention's first disclosure. A public disclosure can take the form of: 1) a publication, 2) a public use, or 3) an offer for sale. In the patent world, these events are called the statutory bars because they bar you from filing a patent on the idea if one year has elapsed since the event. Read More ›

Categories: Intellectual Property, Patents

Provisional Patent Applications

I get a lot of questions from clients about “provisional patents." Let me just start this blog by clarifying once and for all that there is no such thing as a “provisional patent” anywhere in the Patent Act. However, since 1995 the USPTO has offered inventors the option of filing a provisional patent application under §11(b) of the Patent Act. Provisional applications have some interesting advantages of which you should be aware. Read More ›

Categories: Patents

Why do I have to mark my product with the patent number?

We have all seen patent numbers marked on all kinds of products. In fact as I sit and write this article I can report that there are several items in my office with patent markings including my hole punch, stapler, Dictaphone and the insoles in my shoes.

So why is that? There has got to be a reason, right?

The reason is that if products are not appropriately marked before they enter the stream of commerce, the damages that the manufacturer can receive in a patent infringement action against someone that has copied that product are reduced. 35 USC §287(a) provides: Read More ›

Categories: Intellectual Property, Patents

Supreme Court Holds that a Patent of the Process of Administering a Drug is Invalid

Recently in the case of Mayo Collaborative Services v Prometheus Laboratories, Inc., the Supreme Court of the United States found two patents invalid because they claimed subject matter that was not patentable.  The patents in this case covered processes that help doctors who use thiopurine drugs to treat patients with autoimmune diseases determine whether a given dosage was too high or too low. Read More ›

Categories: Patents

Part 3 - U.S. Patent Reform: False Marking Claims

This is the third and final post in a series (Part 1: First-to-File; Part 2: Post Grant Review Proceedings) summarizing the most significant changes created by the Leahy-Smith America Invents Act (the "Act").  As you know, the Act was signed into law on September 16th.  Although hyped as a major change in the U.S. Patents system, the Act does not affect many of the fundamental tenants of U.S. Patent law.

This blog post focuses on: (1) new limitations on false marking claims, and (2) USPTO funding and fees. Read More ›

Categories: Intellectual Property, Patents

Part 2 - U.S. Patent Reform: Post Grant Review Proceedings

As noted in my previous post (Part 1: U.S. Patent Reform: First-to-File), the Leahy-Smith America Invents Act has been signed into law.  The America Invents Act has been sold as "the biggest change in the U.S. Patents System since the 1950s."  The hype, however, is far from reality – as the Act does not affect many of the fundamental tenants of U.S. Patent law. 

This is the second of multiple blog posts that will summarize the most significant changes created by the America Invents Act.  My previous blog post addressed the adoption of a "First-to-File" system.  Today, I will discuss "Post Grant Review Proceedings." Read More ›

Categories: Intellectual Property, Patents

Part 1 - U.S. Patent Reform: First-to-File

On September 16th, President Barack Obama signed the Leahy-Smith America Invents Act into law.  The America Invents Act has been sold as "the biggest change in the U.S. Patents System since the 1950s."  However, the Act does not affect many of the fundamental tenants of U.S. Patent law and in fact is significantly modified from the bill that originally was proposed. 

This is the first of several blog posts that will summarize the most significant changes created by the America Invents Act. Read More ›

Categories: Intellectual Property, Patents

Patent Reform Bill Passes House

The America Invents Act recently passed the US House of Representatives by a vote of 304-117.  A similar bill was approved 95-5 in the Senate in March.  President Obama has pledged that he would sign a patent reform bill once it reaches his desk.  Therefore, it appears that it is only a matter of time before it is sent to the President to be signed into law. Read More ›

Categories: Intellectual Property, Patents, Trademarks