The Invent Blog

Another day at work is over…another handful of client questions about solicitations they received via e-mail or postal mail regarding trademark related services offered for sale.

I tell them the same thing I always do…send me a copy and I’ll glance at it for you, but the chances are that it is either an outright scam, or an offer for services they probably don’t need (e.g., the client I talked with last week that received a solicitation that included an offer to register their Service Mark with U.S. Customs).

It makes you wonder…how many trademark owners fall victim to these scams every year?

At least the old “Chinese domain name” scam looks fishy. But, the trademark service solicitations are a different thing. They’re very carefully drafted, clearly intending to either (1) trick the trademark owner into thinking the communication came from the Trademark Office itself, or (2) scare the trademark owner into thinking they need to take immediate action (and send the solicitation firm immediate payment).

When the problem was invention promotion companies, the Federal Trade Commission and USPTO stepped in and addressed it, issuing a number of different publications (such as THIS ONE, and THIS ONE, THIS ONE, and THIS ONE), and promulgating regulations/prosecuting the crooks accordingly. Of course, that wasn’t until hundreds of millions of dollars had been conned out of small inventors that action was taken. But at least they did something.

Where’s the USPTO on this issue (other than creating a short warning published on the USPTO website)? Where’s the FTC?

Other trademark attorneys are sick and tired of the inaction. They’ve decided to take matters into their own hands. Erik M. Pelton has started a petition. Another law firm (Leason Ellis LLP in New York) has actually filed a civil lawsuit against one solicitor.

At least one state, California, has a state statute meant to address issues like this: California Civil Code Section 1716. Sadly, my state (Idaho) doesn’t have such a statute. Does yours?

It’s time for trademark attorneys to start asking their clients to ALWAYS send copies of such solicitations to them. Then, we need to start forwarding them (with the client’s permission, of course) to our state representatives, Governors, and state Attorney Generals (along with a copy of the California statute), asking for similar “payment solicitation” legislation to be added to our respective states’ codes.

It’s time…

The following quote from Senator Kyl from Arizona, speaking before Congress, explains quite a bit about what Congress understood about the new Patent Act they were voting on. Trust me…you’ve got to read it.

Among many of our most innovative companies, 70 percent of their licensing revenues come from overseas. Obviously, they are already going to be complying with the first-to-file rules. This bill does not, therefore, so much switch the system with which Americans are complying today as it simply allows American companies to only have to comply with one system rather than two. As I said before, the first-to-file concept is clearer, faster, more transparent, and provides more certainty to inventors and manufacturers.

On the other hand, the first-to-invent concept would make it impossible, in many instances, to know who has priority and which of the competing patents is the valid one. To determine who has priority under first to invent, extensive discovery must be conducted and the Patent Office and courts must examine notebooks and other evidence to determine who conceived of the invention first and whether the inventor then diligently reduced it to practice.

Under first-to-file, on the other hand, an inventor can get priority by filing a provisional application. This is an important point. It is easy. It is not as if the first-to-file is hard to do. This provisional application, which only costs $110 for the small inventor, only requires you to write a description of what your invention is and how it works. That is all. That is the same thing that an inventor’s notebook would have to contain under the first-to-invent concept if you are ever going to prevail in court by proving your invention date.

Because a provisional application is a government document, the date is clear. There is no opportunity for fraudulently backdating the invention date. There is no need for expensive discovery: What did the inventor know and when did he know it? You are essentially not requiring anything in addition. You file a provisional application. You have an entire year to get all of your work together and file your completed application, but your date is as of the time you file the provisional application.

As I said, for a small entity, the fee is only $110. That grace period makes it clear that the patent will not be invalid because of disclosures made by the inventor or someone who got information from an inventor during 1 year before filing. That is important.

A lot of academics and folks go to trade shows and begin talking about their concepts and what they have done. If you disclose this, you have a year to file after you disclose the information. And under the bill’s second, enhanced grace period, no other disclosure, regardless of whether it was obtained from the inventor, can then invalidate the invention.

The bill has been very carefully written to protect the small inventor or the academic. That is what it is designed to do. This is not a case of big versus small, although people both big and small support the legislation. If anybody suggests the Feinstein amendment will protect the small inventor, it does not protect the small inventor. In fact, as I said, the legislation is very carefully crafted to give the small inventor a variety of ways to ensure that he or she is protected.

Source: http://www.uspto.gov/aia_implementation/crec-2011-03-03-pt1-pgs1174.pdf, hat tip to Tim Van Tuinen.