Genericide: Are You Using Your Registered Trademark Correctly?

Did you know you could risk losing your trademark registration based on how you use your mark?  Trademarks help consumers and potential consumers determine the source of goods or services, not the goods or services themselves.  If the mark becomes the generic name for the actual goods or services, it becomes subject to “genericide” and may eventually be deemed abandoned.

Let’s take the words escalator, Aspirin and Zipper, for example.  Today, we associate these words with a type of product.  But did you know these words were once trademarks that lost their registration because they became generic?  Xerox was once susceptible to genericide, but it had an antidote–it initiated a campaign to educate the public on how to use the mark, using taglines such as “When you use ‘Xerox’ the way you use ‘aspirin,’ we get a headache.”  A proper way to use Xerox may be “Xerox Copy Machine,” where “Xerox” designates the source of the good, which is the copy machine.  Click here to see how Xerox uses its mark today: https://www.office.xerox.com/en-in/multifunction-printers.

Here’s the takeaway: If you don’t use your trademark properly or educate the consuming public on how to use it, you might be leaving your trademark susceptible to genericide and be subject to losing your registration.  Contact us today to discuss how to use your trademark properly and prevent genericide.

Helsinn: The Only Patent Case to be Decided by the Supreme Court this Term

Inventors can preclude themselves from getting a patent for an otherwise patentable invention if they sell, offer for sell, or make the invention otherwise available to the public more than one year before the effective filling date of the patent application.

When rights to a patent are sold, the terms of the sale may include detailed information about the invention, triggering public disclosure of the invention and starting the one-year clock to file a patent application.  But what happens if the sale does not contain detailed information or the parties sign a confidentiality agreement?  Is there still public disclosure?

These questions will be answered by the Supreme Court in the case of Helsinn Healthcare S.A. v. Teva Pharmaceuticals.  Before the passing of the America Invents Act (AIA), the one-year clock began when an invention was on sale in the United States, whereas after the AIA passed (becoming effective March 16, 2013), the clock began when the invention was on sale, or otherwise available to the public.  This change in language created a dispute of whether sales unavailable to the public should trigger application of the on-sale bar.

The moral of the story is this: be careful when offering your product for sale prior to filing a provisional patent application because you might trigger the one-year clock.  We will follow developments of this case.  Contact us to see how the outcome may affect your patent rights.

The USPTO Issued Its 10 Millionth Patent

On June 19, 2018, the Patent Office issued Patent No. 10,000,000 assigned to Raytheon for “Coherent LADAR Using Intra-Pixel Quadrature Detection.”  The company obtained the patent through the invention of one of its optical engineer, Joseph Marron, who discovered a new way for large laser radars to identify and track objects using reflected light to measure speed and distance.  Simply put, and in the words of Marron, the invention is “similar to a digital camera except it measures speed and distance, and applications include driverless cars or video games. . . . It’s very timely for robotics and 20measurement . . . .”

To commemorate this milestone, Marron and Raytheon executives visited the White House where the president signed the patent certificate.  “This patent represents one of 10 million steps on a continuum of human accomplishment launched when our Founding Fathers provided for intellectual property protection in our Constitution,” said Andei Iancu, director of the USPTO.

Click here to learn more about the history of patents.

Inter Partes Review Held Constitutional

Inter Partes Review (IPR) is a trial proceeding conducted by the Patent Trial and Appeal Board (PTAB) where a third-party can challenge a patent’s validity based on prior art patents or printed publications.  Created in 2011 by Congress to combat “weak” patents previously issued by the U.S. Patent and Trademark Office (USPTO), IPRs often resulted in cancellation of all or part of a patent 80% of the time.  While many patents are rightfully cancelled for lack of novelty or obviousness concerns, IPRs gave third-parties the ability to burden new patent owners with defending the proceeding, taking away resources from creating innovative products.  This especially hurt the pharmaceutical and tech industries.  Many questioned whether this procedure was constitutional because it takes place in outside of federal court without the right to a jury trial.

Noting Article I gives Congress the power to grant patents or authorize others (such as the USPTO) to do so, the Supreme Court held IPR constitutional because patents are a matter of private right and Congress has significant latitude to assign adjudication of this right to non-Article III courts.  Writing for the majority, Justice Thomas said “when Congress properly assigns a matter to adjudication in a non-Article III tribunal, ‘the Seventh amendment poses no independent bar to the adjudication of that action by a non-jury factfinder.”

To help avoid an IPR, practitioners can adopt best patent-drafting practices and use post-grant procedures to his or her advantage.  By thorough prior art searches and including narrow patent claims, practitioner may decrease the likelihood of an entire patent becoming invalidated through the IPR process.  Practitioners should also remember that reexamination proceedings are available as a proactive approach to avoiding an IPR.  Through the reexam proceeding, a patent owner may submit additional prior art that raises a substantial question of patentability to the Patent Office and request patentability be reassessed.  A favorable outcome could avoid an IPR down the road.