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99 Cards in this Set

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Most Patent applications are assigned
-- shortly after application is approved
Generally, a patent has the same attributes of
personal property.
Rights to a patent or ____________
patent pending application
... may be assigned to another by ___ in an _________
law
instrument in writing.
Process in which you transfer a patent is the only difference between transferring patent and transferring _________________
______________
personal property
Patent assignment is considered void unless recorded with the [_entity__] within [__amount of time__]
1. USPTO
2. within 3 months from its date or prior to the date of a subsequent purchase or mortgage.
For purposes of timeliness, it is important when assigning a patent to include a stamped request to
“sign / send back immediately."
Joint ownership of a patent is possible - usually with inventors ...
forming a corporation which will be the means for selling (assigning) the patent
In the absence of any agreement to the _____, the contrary, each of the joint owners to a patent may___________ the ______ ______ without the _____ of and without ________ to the other _________. 15 USC ___.
contrary
make, use, offer to sell or sell
patented invention within the United States or import the patented invention into the United States,
invention
within the United States, or import the patented invention into the United States,
consent of
accounting to
owners
m/u/os/s
pi [w/t/us or import the pi into/t/us]
approval
explanation
261
Large companies want to acquire _____% undivided interest in the patent ...
100
... against the calculated percentage ownership rights of ________________________
each participating inventor.
All assignment documents related to patents and registrations are open to public [why?]
to figure out who owns what
Patents are searchable by ____________________.
inventor name(s)
PTO requirements for recordation of assignment: [1], [2], and [3].
(1)information of the transaction on a coversheet with _____ and ___________ and other details ...
[2] legible and of such quality as to _________ __________[2 words]; submitted with fee.
PTO rules permit submission of true ____ of assignment-related documents. Original documents are neither ___________ or ________.
copies
required / desired
rhyme
All assignments at PTO are processed through an image-based
workflow management system called Patent and Trademark Assignment System (PTAS).
flow-chart
PTAS
How are paper documents recorded in the PTAS?
Paper documents are manually scanned into the PTAS.
How are electronically-received documents recorded into PTAS?
Documents received electronically through EFS, ETAS or EPAS are also scanned into the PTAS system.
Bibliographic data concerning the ______ and the ______ involved in the transaction are ...
property(ies)
party(ies)
transcribed from the manually scanned image by the PTO or entered by the requesting party at the time of submission through EFS, ETAS or EPAS.
This bibliographic data is entered into the _____________________.
USPTO Assignment Historical Database
The data is reviewed and the documents are determined to be _______________ _____________.
recordable or non-recordable
Describe the rest of the assignment processing for qualifying documents ...
images of the coversheet and documents determined to be recordable are automatically assigned reel and frame numbers
After reel and frame numbers are in place, documents are ______________________
put on searchable media
([what kinds?]______________ or _________)
...and PTAS software (1)_______________, and adds the (2)_________________, and (3)______________ on the images.
(1) superimposes reel and frame number onto the documents;
(2) official recordation date stamp
(3) payment information
Finally, the PTAS generates a
_______ __ __________ which is returned to the ___________ _______ on the
________________
Notice of Recordation
correspondence address
coversheet
Why is a document non-recordable.
Isually returned as "non-recordable' for one of three reasons:
(1) critical piece of bibliographical information omitted from the cover sheet; (2) the document illegible or of such poor quality that it cannot be scanned electronically; and/or the correct fee was not paid.
When can you file a patent assignment?
At any time following the filing of application for patent.
How can you file a patent assignment?
(1) online
(2) by hard copy; or
(3) by fax (sometimes - be sure to check the phone number in advance)
What can't you file by fax.
You can't file the original application [or "assignment of final application"] for patent by fax.
What happens to non-recordable documents?
Non-recordable documents are returned to the customer with a "Notice of Non-recordation" citing reason for same.
Are documents submitted for recordation examined?
No. Everything required for the public record is transcribed from the coversheet.
Are title searches conducted by the PTO prior to recordation?
No. Everything required for the public record is transcribed from the coversheet.
Is a cover sheet required?
Yes, when submitting documents through EFS, ETAS or EPAS the cover sheet data is part of the required forms for processing the documents.
Must the USPTO cover sheet forms be used when submitting recordation requests in paper?
No, these forms are not mandatory however the USPTO strongly encourages their use.
Why?
Because completing the cover sheet forms in their entirety ensures that all the required information for recordation has been sent to the office.
Where can these forms located, and in what format?
They are located in form-fillable format on the USPTO Forms page.
When these forms are received in the USPTO, they are scanned, along with what?
Supporting documentation
Then, ___________________ from the cover sheet is entered into the _______ system
Bibliographic data
PTAS
Recordation of Assignment documents must be accompanied by an ____ and ___________ signed by ____ of the inventors.
Oath, Declaration, each
If you make a mistake (either omit or submit too many or incorrect inventors), you can [1]... or [2]....
File a petition to add or remove inventor(s), file a continuation application, or
file a reissue application.
The document referred to above should state that
[1]___________;
it should also enclose
[2]_________________; enclose [3]_________________; and
[4]__________________
[1] an error in inventorship occurred without deceptive intent; [2] a statement of each person being added or deleted as an inventor; [3] NEW Oath and Declaration of current and new (corrected) inventors list, with written consent of assignee; and [4] correct filing fee.
IF THE PATENT ASSIGNMENT IS HEADED FOR LITIGATION:
Ask PTO to do a
REISSUE APPLICATION, which will re-verify all the parties.
You can also use a _____________ application after patent has been granted, for what purpose?
REISSUE -
to add information to the patent [after it has been granted]; and/or in an attempt to secure broader rights
One drawback to this tactic is that it is ___________.
The best way to correct inventorship is ______________.
RISKY;
file a petition.
RELUCTANT INVENTOR - In submitting application for recordation of assignment, you must -
file a petition and statement of facts to sign on behalf of any reluctant inventor.
Who else can sign on the reluctant inventor's behalf?
the patent assistant can sign on his/or her behalf; or any person with a material interest in the patent (usually executive of company) can sign it;
or another inventor can sign on behalf of the non-cooperating inventor.
For application of patent, inventor can file:
pro se (on his or her own behalf)
Or he/she may:
grant POA to patent attorney or patent agent to represent him/her.
Such power of attorney must always -
NAME a patent attorney or combination of patent attorney(s)/patent agent(s)
When a patent attorney or agent signs or _____________ an ____________ for ______________ on behalf of a person, his/her ____ ______ or _________ shall constitute __________________ to PTO that
acknowledges
application
patent
personal appearance
signature
representation
he or she is authorized to represent that particular person.
This can ________ ______ the application.
materially affect
All papers submitted to the PTO must be _________ and __________.
signed
true
Failure to be truthful can cause you to lose your
__________
prior art references
DON'T HIDE ANYTHING. Truthfulness = ______________
DON'T HIDE ANYTHING
Duty to Disclose
Prior Art References
IDS
Power of Attorney dies when __________. What happens then?
the attorney or person holding it dies. Usually another practitioner from the firm to whom the rights are assigned can pick up that function.
If an inventor dies during prosecution, the patent will be issued to ..., who can ...
his/her legal representative [EXECUTOR OF ESTATE]
[who can]
revoke power of attorney and ask anyone they want.
Inventor needs a system in place designating ...
who will take over in the event of his/her death.
However, something that goes abandoned can be revived using ...
Request for Continued Examination (RCE)
RCE is only good for
utility patent or any patent filed before 1995
Applicant can use RCE to ...
obtain continued examination after a final Notice of Office Action is received ...
NOA may state that ...
you have no further rights to substantive examination.
You can apply for Re-Issue Application to ...



Re-Issue Application

You may file Re-issue Application (to open file and request continued examination) to broaden the scope of the invention – it must be filed within 2 years of grant of patent. Can be tricky. You might lose what you already have. Better to open a new papent.
open file and request continued examination, to broaden the scope of the invention
This request must be filed ...
within 2 years of grant of patent
Drawback?
Can be tricky. You might lose what you already have. Better to open a new papent.
How do you open a new patent
• Pay fee (small entity costs $375); open new patent
What is Typosquatting?
Typosquatting, also called URL hijacking, is a form of cybersquatting which relies on mistakes such as _____________ made by Internet users when inputting a website address into a web browser. Should a user accidentally enter an incorrect website address, they may be led to an alternative website owned by a cybersquatter.
___________, also called URL hyjacking, is a form of cybersquatting which relies on ....
Describe the typical victim of typosquatting.
Generally, the victim site of typosquatting will be a frequently visited website.
The typosquatter's URL will usually be one of ____ kinds, all similar to the _______________
four
victim site address
Perhaps the intended website is "example.com". Describe ways in which the typosquatter site can vary from the victim site.
*A common misspelling of the intended site: exemple.com

*Misspelling based on typing errors: xample.com or exxample.com

*A differently phrased domain name: examples.com

*A different top-level domain: example.org
Once in the typosquatter's site, the user may also be tricked into thinking that____________________, through ________________,
he/she is actually at the real site
copied or similar logos website layouts or content.
Sometimes ______________ of the victim site will do this.

Alternatively, the user will be forwarded to a site of a completely different nature to what they intended. This tactic was infamously used by ____________ who redirected domains targeting children ______________
competitors
John Zuccarini
to pornographic websites
Combatted by __________
Cease-and-desist order
Sometimes victim website will offer _____________
to buy offending web address.
Occasionally,__________ will be taken against the offending site or individual.

A company may try and preempt typosquatting by obtaining a number of websites with common misspellings and redirect them to the main, correctly spelled website. For example www.gooogle.com, www.goolge.com, www.gogle.com www.gewgle.com, and others, all redirect to www.google.com.
lawsuits
A company may try and preempt typosquatting by obtaining a number of websites with _________ __________ and ______________ ___________ ___ ______ ________, ______-________ name. For example www.gooogle.com, www.goolge.com, www.gogle.com www.gewgle.com, and others, all redirect to www.google.com.
common mispellings
redirect them to the main, correctly spelled website

For example www.gooogle.com, www.goolge.com, www.gogle.com www.gewgle.com, and others, all redirect to www.google.com.
Typosquatting" is a meaningless term where the law is concerned. Why?
Laws generally are not concerned about registrations of domain names that are similar to other domain names or similar to existing trademarks, unless some other important factor is involved.
Criminal laws are mostly silent about the registration of domain names that are typographically similar to other names. Except that:
The first (perhaps only?) example of such a criminal law is a US law making it illegal to use a "misleading" domain name for the purpose of deceiving a person to access obscenity.
Non-criminal law is primarily concerned with _____________
unfair competition between people who register domain names that are typographically similar to known trademarks.
What is the "hook" for trademark infringement:
not simply using the same or a similar name, but using the same or a similar name for the purpose of competition with the trademark owner.
it may be perfectly acceptable to use a domain name that is confusingly similar to an existing trademark IF ...
the web page standing behind the new domain name is _________________, OR (2)_____________
_________ standing behind the new ________ name (1) not used to compete with the trademark owner,

if the web page standing behind the new domain name is used to help consumers to locate the product identified in the trademark.

The high court let stand a 2005 Fourth Circuit finding that "the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute
cybersquatting,
non-commercial use of a gripe site preempts a claim of
unfair business practices
gripe site which does not attempt to confuse visitors
mitigates in favor of the gripe site's creator
and the Supreme Court has upheld ruling that a gripe site can be a communicative forum for comment and criticism, and can
constitute a "bona fide non-commercial or fair use" of a trademark interest, under the Anticybersquatting Consumer Protection Act (ACPA)
and, "even when done for ____________," does not alone show ___________.
profit
bad faith intent to profit
When the alleged infringer establishes a gripe site that criticizes the markholder, the markholder must show ___________________________
a “bad-faith attempt” on the part of the infringer to profit from the misuse.
Gripe sites point out the importance of ________________________________ with the interests of __________ ________ who seek to make _____________________.
balancing property interests of trademark owners
internet users
lawful use of others' marks
lawful uses of others' marks
including:
for purposes of comparative advertising, comment, criticism, parody, news reporting, fair use, etc.
Anticybersquatting Consumer Protection Act (also known as ________________), a United States federal law enacted in 1999, is part of A bill to amend the provisions of title 17, United States Code, and the Communications Act of 1934, relating to copyright licensing and carriage of broadcast signals by satellite (S. 1948). It makes people who register domain names that are either trademarks or individual's names with the sole intent of selling the rights of the domain name to the trademark holder or individual for a profit liable to civil action. It was sponsored by Senator Trent Lott on November 17, 1999, and enacted on November 29 of the same year.
Truth in Domain Names Act
a ________________law
United States Federal Law
enacted in _____, is part of A bill to amend the provisions of title __, ____________, and the
____________ relating to ____________ (S. ____).
1999
17
United States Code
Communications Act of 1934
copyright licensing and carriage of broadcast signals by satellite
1948
It makes people who ______ ________ _______ that are either ______________ or _________________ ,
register domain names trademarks
an individual's name
with the sole intent of selling the rights of the domain name to the trademark holder or individual for a profit

It was sponsored by Senator Trent Lott on November 17, 1999, and enacted on November 29 of the same year.
____________________ of selling the _____________ of the _____________________ name to the __________ or __________, [why?]
with the sole intent of selling the rights of the domain name to the trademark holder or individual
for a profit

It was sponsored by Senator Trent Lott on November 17, 1999, and enacted on November 29 of the same year.
to be
It was sponsored by Senator __________, on _________, 19__, and enacted on November __ of the same year.
liable to civil action

Senator Trent Lott
November 17, 1999
enacted on November 29
In order for a trademark owner to bring a claim under the ACPA, the owner must establish
(1) the trademark owner’s mark is distinctive or famous;

(2) the domain name owner acted in bad faith to profit from the mark; and

(3) the domain name and the trademarks are either identical or confusingly similar (or dilutive for famous trademarks).
301-Ownership/Assignment

A certificate of ________________ under the hand and official seal of a person authorized to administer oaths within the United States, or, such foreign counterparts appropriately authorized
shall be _______ ______ prima facie evidence of the execution of an assignment, _______ or __________ for _______.
acknowledgment
Application means
_____________ application or
_____________ patent application designating __________, or an __________ to register a _________ under _______ _ or __ of the _________ _____ (___________).
national
international
United States of America
application
Trademark Act, 15 USC 1051 or 15 USC 1126
Assignment means: a _________ by a ________ of all or part of its ________, ________ and ________ in a _______, _________ ___________, __________ _____ or _____ for which an application to ________ has been filed.
transfer
party
rights, title
interest
patent, patent application, registered mark or mark
file