Tag Archives: patent attorney

Strategic Considerations for the Bankruptcy Practitioner when Intellectual Property is Involved

20130904_093101-1Assouline & Berlowe Registered Patent Attorney Greg Popowitz will be speaking as part of a panel discussing the interplay between bankruptcy and intellectual property.  The Bankruptcy Section of the Broward Bar Association is hosting the discussion on Wednesday, January 13, 2016 from 12:00-1:30pm.  The lunch is being sponsored by the Bankruptcy Bar Association of the Southern District of Florida (BBA).

To register for the event, click here.  It will be an excellent discussion between bankruptcy attorney John Hutton, patent attorney Allen Bennett, and patent attorney Greg Popowitz.

1 CLE credit is pending.

Date: Tuesday, January 13, 2016

Time: 12:00 – 1:30pm

Location: BCBA Conference Center

Cost:   FREE BCBA Bankruptcy Section Members;

$15 BCBA Member(non-section member)

$25 Non-Member of BCBA

No Charge BCBA Judiciary; Includes Hot Lunch

For questions about Intellectual Property matters, contact  Greg Popowitz below.

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

 

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Intellectual Property Infringement Insurance – Is your Business Protected?

Assouline & BerloweAdvertising Injury coverage? Yes, it exists.  It is fairly standard in most commercial general liability policies with personal injury coverage, which insures a company from its advertising of its goods or services, such as libel, slander, copyright infringement, trademark infringement.   As a trademark attorney, I routinely inform my clients about the benefits of this type of coverage, and if they already have it, to make sure it covers trademark infringement.

If your company already has advertising injury coverage, does it include, or possibly exclude, trademark infringement coverage? In a recent case in a Minnesota federal district court, a defendant’s insurance carrier disclaimed trademark infringement coverage, which caused the infringing company to pay damages out of pocket.

Excell Consumer Products sued Smart Candle for their use of the protected trade name and trademark “Smart Candle” relating to LED lights. Smart Candle requested that its insurance carrier, Selective Insurance Company, defend the lawsuit. However, Selective Insurance disclaimed coverage under Smart Candle’s policy. Selective Insurance focused on the personal and advertising injury coverage, which the policy defined as injury resulting from “Infringing upon another’s copyright, trade dress or slogan in your ‘advertisement.’” The policy excluded from coverage injury “arising out of the infringement of copyright, patent, trademark, trade secret or other intellectual property rights.” Notably, this exclusion did not apply to the infringement resulting from the companies advertising of copyright, trade dress, or slogan.

Smart Candle claimed that “slogan” in the policy required Selective Insurance to defend or indemnify Smart Candle in the Excell Consumer Products lawsuit. The federal district court granted Selective Insurance’s motion for summary judgment. Notably, the policy failed to define the term “slogan” so the court used the “popular and ordinary meaning”. Since the Excell Consumer Products lawsuit centered upon the use of “Smart Candle” as a mark, trademark, trade name, and name, a reasonable jury would not determine that Excell Consumer Products’ lawsuit was based on slogan infringement. The appellate court agreed with the district court’s interpretation of the policy.

If you currently have advertising injury coverage, it is critical that you check to find out what the policy covers and what it does not cover. With any business decision, fully understanding the liabilities and risk to your business will aid in the decision making process. Instead of fighting a significant infringement lawsuit expecting insurance coverage, it may be worthwhile to settle the lawsuit early on and limit your exposure. If you do not have advertising injury coverage, investigate obtaining coverage that will adequately protect your business.

The intellectual property attorneys at Assouline & Berlowe, P.A. are fully equipped to review your policies and provide feedback as to whether advertising injury coverage protects your business for trademark infringement and other intellectual property causes of action.

For any questions about advertising injury coverage relating to intellectual property, or general questions about patents, trademarks, and copyrights, please contact Greg Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

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Want to File a Patent? Here are your options.

Patent Trademark Copyright IP InventionSo you want to file a patent.  There are few things you should consider in developing your strategy for protecting your Intellectual Property.

As an inventor, you should consider the benefits of a patent search and the preparation of a patentability opinion to determine what inventions and publications are publicly available.  This helps to prepare your patent application and also lets the inventor know about other patents they could be infringing with their own invention.  This is critical information to determine during the infancy of a new business.  Although a patent search and opinion is not required under patent law, it is often helpful pre-filing.  It is important to emphasize that any patent references, publications, or materials relating to the applicant’s invention must be disclosed to the United States Patent and Trademark Office (USPTO), or any patent rights could be forfeited during prosecution, or later invalidated through the courts.

Utility Patents:  Provisional & Non-Provisional

As it relates to a utility patent, which is any invention of a new and useful process, machine, manufacture, or composition of matter, there a few options when filing for patent protection in the United States.  There are two primary mechanisms to apply for a patent, either a provisional patent application or a non-provisional patent application.  A provisional application does not have as stringent filing requirements, but it must include and properly describe the invention and what it covers.  Once submitted to the USPTO, the provisional patent application will establish your filing date (which is key for the new “First to File” system, now in place since the passage of the America Invents Act) but cannot on it’s own mature into a patent.

A provisional patent application is used as a placeholder to establish your filing date but literally sits in the Patent office and will not be examined by the USPTO for patentability.  However, a provisional patent application stays pending at the USPTO for only one year.  The applicant must file a non-provisional patent application (with a separate filing fee) claiming priority to the provisional patent application in order to establish the earlier priority date within that one year.   This is a hard deadline (referred to as a statutory bar deadline) with the USPTO that cannot be extended, for any reason.

If you decide not to file a non-provisional patent within a year of the date you filed you provisional patent application, you can still file a non-provisional patent application.  You may still be able to obtain a patent, but you will not be entitled to the benefit of the earlier date that of the previously filed provisional patent application.  As a result, if someone else invents something similar to your invention, or someone discloses the invention publicly, you may be forever precluded from securing patent rights in the United States, and possibly internationally.  Therefore, establishing the earliest filing date is key and should be highly guarded!

Alternatively, you can always bypass the provisional patent application all together and file a non-provisional patent application.  It really depends on the business needs and the development of the invention.

There is also the cost issue.  The government filing fees vary depending on the size of the applicant but assuming the applicant has a business with 500 or fewer employees and has not assigned the rights to a company with over 500 employees (small entity), a provisional filing fee is only $130, whereas the non-provisional filing fee is $730.

In addition to the cost that is paid to the USPTO, there is also a legal fee for preparing the patent, whether a provisional or non-provisional application.  Without knowing the specifics about the invention and its complexity, it is often difficult to estimate the legal fees for preparing a patent application.  Typically, a provisional patent application will run $3,500-$4,500 and a non-provisional will be $5,500 and up.  It really depends on the complexity of the invention and the amount of disclosure required in the application.  Also, formal drawings, if required, are usually $100 per figure.  The legal fees are for the preparation and filing of the patent application.  Any assignments, responses to Office actions, and other post filing work would be a separate legal fee and may require a corresponding government filing fee.

Design Patents

Design patents protect the visual ornamental aspects in or applied to an article of manufacture.  Unlike a utility application, a design patent protects the appearance of the invention.  The design may focus on the shape, pattern or the article, or the combination of both.  However, a design patent does not focus on the function of the invention like a utility patent, only the ornamental design.  The government filing fee for a small entity is $380 for a design patent application; the legal fee to prepare and file the design patent application is, on average, $1500.  Given the visual importance of the ornamental features of the invention, design applications typically include at least six drawings.

Myth:  The Poor Man’s Patent

It is important to dispel a common belief of inventors referred to as the Poor Man’s Patent.  Some inventors think they can sit down, write about what their invention is and how it works, put it in a self-addressed stamped envelope, and mail it to themselves through the U.S. Postal Service.  The hope is that in the future, the inventor can show when they first conceived of the invention by using the unopened envelope date stamped by the Postal Service.  The Poor Man’s Patent, as it’s commonly called, is a farce.  This in no way will help you establish an invention conception date.  Moreover, given the current First to File system, the first inventor to file their application with the USPTO gets the earliest filing date.  If you have an innovative and novel invention, contact a patent attorney to properly protect your rights.

If you have any questions about the patent process, contact Mr. Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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Intellectual Property, Labor & Employment, Creditors’ Rights & Bankruptcy, Business Litigation, Corporate & Finance, Real Estate, International Law

Miami • Ft. Lauderdale • Boca Raton

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Patent Law: Blame-the-Bean Defense – Carries Little Weight with Supreme Court

On May 13, 2013, the Supreme Court confirmed that a purchaser or subsequent owner of a patented article is not allowed to make new copies of the patented invention.  The theory of patent exhaustion is not a defense.  In Bowman vs Monsanto, Monsanto invented a genetically modified soybean resistant to the application  of common herbicides, such as Monsanto’s own Roundup product.  The patented soybean seed was marketed as a “Roundup Ready” seed.

Monsanto sells the patented soybean seeds using special licensing agreements.  Purchasers/farmers are allowed to plant the purchased seeds in only one season.  The resulting crop is either consumed or sold as a commodity.  The agreement specifically forbids a farmer from saving harvested soybeans for replanting, or supplying them to anyone else for that purpose.  Monsanto sought to prevent a farmer from purchasing their genetically modified soybeans, planting them in year one of the agreement, and then using the harvested soybeans for the next crop.

Mr. Vernon Bowman, a farmer in Indiana, tried to creatively circumvent Monsanto’s agreements with farmers.  For his first harvest, Mr. Bowman purchased seeds from Monsanto under the special licensing agreement.  He sold or consumed the harvest, as required by Monsanto’s agreement.  For the second harvest, however, Mr. Bowman chose not to pay the premium price charged by Monsanto.  Instead, he purchased “commodity soybeans” from a grain elevator intended for human/animal consumption.  The soybeans came from local farmers, most of which used the Monsanto “Roundup Ready” seed.  Since the soybeans were harvested from Monsanto seeds, they carried the same genetic resistance to herbicides.  Mr. Bowman saved a portion of the resulting crop for subsequent harvests, essentially becoming self-sufficient.  Not surprisingly, Monsanto sued Mr. Bowman for patent infringement.

Mr. Bowman raised patent exhaustion as a defense to infringement.  Under the doctrine of patent exhaustion, the first authorized sale of a patented item terminates all subsequent patent rights for that item.  Since the patent holder received a reward by selling their protected article, the purchaser has the right to use or sell the item as he pleases.  But the doctrine does not allow a buyer from making new copies of the patented article.  If the contrary were true, a patent monopoly would last for one sale, not 20 years (14 for a design patent).  Accordingly, Mr. Bowman could have sold or consumed the beans he bought from the grain elevator but he could not make additional copies of the patented soybeans without Monsanto’s permission.

Finding humor in a Supreme Court decision is not particularly common.  Mr. Bowman argued, likely as a last resort, that beans naturally “self-replicate” or sprout if they are not stored in a controlled manner.  He stated that the planted soybeans, not Mr. Bowman himself, were the real culprit that replicated Monsanto’s patent invention.  The blame-the-bean defense.  The Supreme Court articulately described how Mr. Bowman, not the seeds, purchased the beans, planted the “Roundup Ready” beans, treated them, and harvested them.  Mr. Bowman controlled the seeds’ reproduction throughout the process.  Accordingly, the Supreme Court affirmed the Federal Circuit’s decision that Mr. Bowman infringed Monsanto’s patented soybeans.

For more information about this case, Intellectual Property Litigation, or the prosecution of patents and trademarks with the United States Patent and Trademark Office (USPTO), please feel free to contact me.

Greg M. Popowitz

Registered Patent Attorney

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

Main: 954.929.1899

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

Intellectual Property, Labor & Employment Law, Bankruptcy, Commercial Litigation, and Corporate Law

Miami • Ft.Lauderdale • Boca Raton

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