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I have a patent since 2000 - i made a mistake when filing and did an ad 13 months prior to filling my non provisiona - the: patent was issued but a person knew about the add back then but just now came out and sued me --can a person with knowledge wait 10-15 years and bring it out

Asked about 2 years ago in Patent Infringement

Stuart’s answer: I agree with my colleague that this sounds like an action seeking declaratory relief of either non-infringement or invalidity--i.e. the suit is asking the court to preemptively make the determination that your patent is invalid because the application was filed more than 12 months after the initial public disclosure. Such actions are proper under certain circumstances.

I STRONGLY RECOMMEND that you seek experienced intellectual property counsel with experience in this area and refrain from posting any other questions such as this on public discussion boards, as it may be used as evidence against you in the civil action.

Answered about 2 years ago.


Which of these words are used in Specifications and Claims drafting, anyway?: Adjust, adapt, alter, change, modify. So far all I know is that the first word I asked about, variation, isn't used, but does "refer to minor changes which are intended to fall within the scope of the patent claims." If none of them are used in drafting, I am still curious about their legal uses, as knowing how to legally use them correctly with patents and IP is very important to me.

Asked about 2 years ago in Intellectual Property

Stuart’s answer: There aren't any terms (such as these) that are really prohibited from being included in claims and/or the specification of the application. However, there are terms that are more favored/disfavored. Whether a term is favored is largely determined by courts' interpretation(s) of the terms during claim construction/interpretation. Thus, terms should be selected based on whether they accurately describe the feature that you are trying to describe.

If you're looking for a claim construction dictionary, the following may be helpful. However, it should not be relied upon as your sole source.

http://www.pubpat.org/garrod-glossaries.htm

Answered about 2 years ago.


I need to know if I should abandon or continue my trademark application.: I recently applied for a trademark for our product in the UK as my US based company plans to sell our goods in the UK this year. But I just got a letter from the UK trademark office saying another company (a very big and well known one) has a trademark on the same name and they are required to notify the company....which could result in legal fees if they choose to legally oppose my registration. However even though our products are both in class 09 we couldn't be more different. Theirs is a computer product. Ours is a type of anti-glare glasses and our description clearly states that. Should I abandon my application or can I assume that since our products are vastly different, it should not be a problem.

Will that also apply to our trademark application in the U

Asked about 2 years ago in Intellectual Property

Stuart’s answer: In addition to my US based qualifications, I am also an English and Welsh Solicitor. Without more detail, it is difficult to tell what the reaction may be. However, the TM process is vastly different in the UK than it is in the US, so advice based on US law is not going to be helpful to you.

First, I would recommend that you consult with a UK IP practitioner ASAP and keep the information off of discussion boards, as British evidentiary rules are also vastly different from US evidentiary rules and you do not want to write something that may come back to bite you.

Second, the letter you received it accurate--if the examiner determines, in his/her opinion, that the owner of a similar registration may be damaged/offended by a new application by a 3rd party, the UK IPO is required to notify the holder of the TM. The owner of the registered mark then has a fixed period of time to object to your application for registration (similar to the US publication period). If there is an objection, the owner of the mark may (typically) reaches out to the applicant in an attempt to resolve the matter, prior to resorting to litigation. If the matter is settled via letters, there is not typically a request for compensation (unless the mark has been used and the registrant has already been damaged).

Finally, you should be aware that unlike the US rule that each side bears its own attorney's fees, in the UK typically, the loser in a litigation pays the winner's attorney's fees.

Answered about 2 years ago.