Monthly Archives: December 2013

Trademark Registration in China Brings Challenges and Rewards

Trademark registration in China is becoming increasingly important for U.S. companies. Even if you are not quite ready to enter the market, it is imperative to begin the registration process as soon as possible. If not, you may find that someone else has already beaten you to it.

Several high-profile U.S. companies, including Starbuck, Apple and Dell, have sought trademark protection in China only to discover that their marks have already been “hijacked” by an unrelated entity. In these cases, the third party can actually allege that U.S. company is infringing.

To avoid the costly process of regaining trademark ownership, companies need to be proactive. Since China has a first to file system, filing a trademark application will help prevent third parties from using your mark. Companies are also not required to use the mark in China for three years, which allows trademark registration to take place before official product launches are planned or distribution agreements are executed.

To achieve maximum protection, companies should not only register their U.S. brand name but also a Chinese equivalent. The Chinese version can take several forms, a transliteration, a translation, or even a distinctive Chinese mark.

As this post highlights, it can be more difficult to protect trademarks and other IP rights overseas. In China, the first to register owns the mark even against the legitimate U.S. trademark owner who was first to use the mark in that country. Therefore, it is imperative to consult with an attorney experienced in foreign intellectual property concerns.

Google Expands Patent Search Tool

Google’s Patent Search engine is a valuable and underutilized tool for inventors and businesses. It allows users to search several patent offices at once for granted patents, published patent applications, and even prior art.

While the search engine previously only covered the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO), Google recently announced a significant expansion. Patents are now available from the World Intellectual Property Organization (WIPO), China, Germany, and Canada.

As detailed by Google, users can search by several criteria such as patent number, inventor, classification, and filing date. The documents originate directly from the applicable patent office. They are available in their native language and can also be converted to English using Google Translate.

Google’s Patent Search tool also offers free bulk downloads of patent and trademark data from the USPTO. Documents were previously only attainable on a file-by-file basis from the USPTO website, or in bulk via CDs, DVDs, or digital tape for a sizable fee.

Finally, Google’s Prior Art Finder is another useful tool. It identifies key phrases from its database of patent documents creates a search query, and provides results from Google Patents, Google Scholar, Google Books, and the rest of the Internet.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Will Copyright Ruling Help News Industry Stay Relevant in Digital Age?

The Associated Press scored an important copyright victory when a federal judge found that use of its content by an online news clipping service did not constitute “fair use.” The decision is significant given how many people now look to the Internet to get their news.

Meltwater News Service is a subscription-based website that allows customers to request clippings of news stories containing designated keywords be sent directly to their inboxes. According to the Associated Press’s complaint, the clips include 4.5 percent to 60 percent of the original text, verbatim. However, Meltwater refused to obtain a license to use the content, citing its use was “transformative” under the fair use doctrine.

However, in a recent decision, U.S. District Judge Denise Cote sided with the AP. “AP has show through undisputed evidence that Meltwater’s copying is not protected by the fair use doctrine,” she wrote. Cote specifically noted that merely repackaging or republishing copyrighted material will generally not be deemed a fair use. In this case, she also found that there was nothing “transformative” about clipping news stories.

“Through its use of AP content and refusal to pay a licensing fee, Meltwater has obtained an unfair commercial advantage in the marketplace and directly harmed the creator of expressive content protected by the Copyright Act,” Cote added.

While the judge acknowledged that commercial Internet news clipping services like Meltwater perform an important service for the public, she also noted that this fact “does not outweigh the strong public interest in the enforcement of the copyright laws or justify allowing Meltwater to free ride on the costly news gathering and coverage work performed by other organizations. Moreover, permitting Meltwater to avoid paying licensing fees gives it an unwarranted advantage over its competitors who do pay licensing fees.”

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Will Other Tech Companies Follow Google’s Patent Pledge?

Google Inc. recently pledged that it would not pursue legal action against open source developers that use its patented technology. It also expressed hope that other high-tech companies would follow suit.

Under the Open Patent Non-Assertion (OPN) Pledge, Google agrees not to sue any user, distributor, or developer of open-source software on specified patents, unless first attacked.  According to post on its blog, the OPN pledge will initially cover 10 patents relating to MapReduce, a computing model for processing large data sets first developed at Google. Over time, it plans to expand the set of Google’s patents covered by the pledge to other technologies.

As outlined by Google, the pledge may be terminated, but only if a party brings a patent suit against Google products or services, or is directly profiting from such litigation. The agreement also remains in force for the life of the patents, even if Google transfers its rights.

Google’s pledge follows a similar initiative announced by Twitter last year. Twitter Innovator’s Patent Agreement (IPA) promises that it will not use the patents from employees’ inventions in offensive litigation without their permission.

Like Twitter’s IPA, it will be interesting to see how Google’s patent pledge plays out in the real world. While it may help curb the negative criticism surrounding the so-called “patent wars” among competitors in the tech industry, there are still circumstances where it is necessary for companies to use patents offensively to protect themselves from litigation.

Are Old Trade Secrets Now Patentable?

The America Invents Act’s first-inventor-to-file system has created a lot of questions in the patent community. One of the most intriguing is how the new prior art rules impact the protection of long-standing trade secrets.

As amended, 35 U.S.C. 102 (a)(1) now states: “A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention…”

Questions have centered on the interpretation of the phrase “or otherwise available to the public” and whether it limits the application of secret prior art. Under existing precedent, offers-for-sale and sales in the U.S. did not need to be public in order to invalidate a patent claim.

According to the U.S. Patent and Trademark Office’s (USPTO) interpretation of the new language, “Residual clauses such as ‘or otherwise’ or ‘or other’’ are generally viewed as modifying the preceding phrase or phrases. Therefore, the Office views the ‘or otherwise available to the public’ residual clause of the AIA’s 35 U.S.C. 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art.”

The IP community appears to agree with the USPTO’s interpretation. The American Bar Association’s IP Law Section considered the issue and concluded:

The passage “otherwise available to the public” reflects the touchstone of what constitutes prior art under the AIA under section 102(a)(1). This section requires availability to the public or public accessibility is an overarching requirement. Such accessibility is critical to provide a simpler, more predictable and fully transparent patent system. As such, for a “public use,” for a determination that an invention is “on sale,” as well as to assess whether an offer for sale has been made, the statutory requirements under the AIA require a public disclosure. Thus, non-public offers for sale (and non-public uses) would not qualify as prior art under the AIA.

The American Intellectual Property Law Association and the Intellectual Property Owners Association adopted a similar position in comments submitted to the USPTO. While these interpretations seems to suggest that old trade secrets would no longer be considered prior art when filing a patent application, this issue will likely need to be resolved by the courts or clarified by Congress in a technical amendment.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Is “Ungoogleable” a Word? To Protect Trademark, Google Says No

As Google seems to be acutely aware, a trademark owner can lose its federal registration if the mark loses its distinctiveness and becomes synonymous with a generic product or service. For instance, the Otis Elevator Company lost its trademark registration for “elevator” after the term become generic. Zipper, originally a trademark of B.F. Goodrich, suffered a similar fate.

To maintain the distinctiveness of its mark, Google also discourages the use of the term “googling” in reference to web searches. In a 2006 blog post, the company wrote: “While we’re pleased that so many people think of us when they think of searching the web, let’s face it, we do have a brand to protect, so we’d like to make clear that you should please only use ‘Google’ when you’re actually referring to Google Inc. and our services.”

Google’s response to the Swedish Language Council is a similar attempt to protect its brand. In its letter, Google specifically requested changes to the definition of “ogooglebar” and a disclaimer highlighting that Google is a registered trademark. The Swedish Language Council ultimately decided to remove the word altogether.

As Google highlights, simply registering a trademark is not enough to protect a brand. During the life of the mark, companies must often take further actions to enforce and protect their rights. For additional information, we encourage you to contact our experienced trademark attorneys for a free 30-minute consultation.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.