◊ VRP Law-The Intellectual Property and Employment Law Blog.
Provided by Vihar R. Patel and Sponsored by Enterprise Law Group, LLPArchive for October, 2008
Inequitable Conduct and Misleading Statements to USPTO
A recent opinion by Judge Posner held that a patent applicant’s failure to disclose that experts referenced in the application were paid and retained by the applicant was not a basis for finding inequitable conduct. New Medium v. Barco N.V. (N.D. Ill. 2008). Judge Posner went on to state that the USPTO should expect the applicant to hire and retain experts in support of their patent application, thus the failure to disclose payments to the experts was not misleading. Id.
However, Judge Posner, did find that the applicant’s statement that “he had never met or talked with any of the experts they used” was false based on the applicant’s prior meetings with the experts. Id. Judge Posner also found the intent to deceive the USPTO based on the applicant’s prior dealings with the experts and the potential approval of a bid by the expert for work from the applicant. Id. If the applicant accepted the expert’s bid for work, the expert would have received about $200,000 from the project. Id.
Judge Posner went on to hold that the patent at issue was unenforceable. This case raises some interesting issues to the inequitable conduct doctrine.
When can I use TM, SM, or ® with my trademark, servicemark or business name?
Actually, you can use (TM) to designate trademark or (SM) to designate servicemark any time you want to alert the public to your rights in a particular mark or business name. You do not need to have an application filed with the USPTO to use TM or SM after your mark or business name.
However, to use ® with your mark or business name you have to register your mark on the Federal Trademark register. Thus, using ® with your mark or business name without first registering your mark or business name can be false and/or misleading.
Therefore, if you have used a mark or business name with common law rights, then you should use SM or TM with it, to let others know of your rights. This can help provide some notice of your rights to a mark or business name without having to file an application with the USPTO.
Fair Copyrights in Research Works Act-What is it?
This is a House of Representatives bill (H.R. 6845) that is designed to protect private citizens’ copyrights from mandatory licenses that federal agencies may require in exchange for federal funds that are used for research. This is an important piece of legislation in todays economy, where private parties may request funds from the government to invest in research efforts to provide technology that may benefit the public.
The “Fair Copyrights in Research Works Act” prevents federal agencies from requiring that private parties assign, license or transfer copyrights in extrinsic works. Extrinsic works essentially means something that is not created by the US Government, jointly funded by a private party, and represents something that is a meaningful value added by the private party.
This is an important piece of legislation in todays economy where both federal agencies and private parties are routinely engaging in joint research efforts. It will be an important tool for private parties to protect interests in works that they create and enable them to enforce their copyrights against private and government infringers. Below is a version of the bill as it is currently proposed in the House of Representatives.
Business Names, Trademarks and Keywords
As the use of keywords in websites and search engine optimization strategies increases, there is a concern about the use of another’s Business Name or Trademark to increase traffic to a potential competitor’s website. This issue is a relatively novel issue and court rulings on the matter have not been clear on how this issue will be resolved.
The concern from Trademark owners or Business Name owners is that their customers or potential customers will be taken away by the use of their Trademark or Business names as keywords on another’s websites. However, many of these Trademark or Business Names are legitimately used to describe, compare or define another’s service on their own website. As such, there are valid policy concerns on both sides of the issue.
For a recent case finding in favor of advertisers and permitting the use of Trademark or Business Names in advertising on the internet. See. J.G. Wentworth v. Settlement Funding LLC, No. 06-5097 (E.D. Pa. 2007).
