Patents

Front 1

Most Patent applications are assigned

Back 1

-- shortly after application is approved

Front 2

Generally, a patent has the same attributes of

Back 2

personal property.

Front 3

Rights to a patent or ____________

Back 3

patent pending application

Front 4

... may be assigned to another by ___ in an _________

Back 4

law
instrument in writing.

Front 5

Process in which you transfer a patent is the only difference between transferring patent and transferring _________________
______________

Back 5

personal property

Front 6

Patent assignment is considered void unless recorded with the [_entity__] within [__amount of time__]

Back 6

1. USPTO
2. within 3 months from its date or prior to the date of a subsequent purchase or mortgage.

Front 7

For purposes of timeliness, it is important when assigning a patent to include a stamped request to

Back 7

“sign / send back immediately."

Front 8

Joint ownership of a patent is possible - usually with inventors ...

Back 8

forming a corporation which will be the means for selling (assigning) the patent

Front 9

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 ___.

Back 9

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

Hint 9

m/u/os/s
pi [w/t/us or import the pi into/t/us]
approval
explanation
261

Front 10

Large companies want to acquire _____% undivided interest in the patent ...

Back 10

100

Front 11

... against the calculated percentage ownership rights of ________________________

Back 11

each participating inventor.

Front 12

All assignment documents related to patents and registrations are open to public [why?]

Back 12

to figure out who owns what

Front 13

Patents are searchable by ____________________.

Back 13

inventor name(s)

Front 14

PTO requirements for recordation of assignment: [1], [2], and [3].

Back 14

(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.

Front 15

PTO rules permit submission of true ____ of assignment-related documents. Original documents are neither ___________ or ________.

Back 15

copies
required / desired

Hint 15

rhyme

Front 16

All assignments at PTO are processed through an image-based

Back 16

workflow management system called Patent and Trademark Assignment System (PTAS).

Hint 16

flow-chart
PTAS

Front 17

How are paper documents recorded in the PTAS?

Back 17

Paper documents are manually scanned into the PTAS.

Front 18

How are electronically-received documents recorded into PTAS?

Back 18

Documents received electronically through EFS, ETAS or EPAS are also scanned into the PTAS system.

Front 19

Bibliographic data concerning the ______ and the ______ involved in the transaction are ...

Back 19

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.

Front 20

This bibliographic data is entered into the _____________________.

Back 20

USPTO Assignment Historical Database

Front 21

The data is reviewed and the documents are determined to be _______________ _____________.

Back 21

recordable or non-recordable

Front 22

Describe the rest of the assignment processing for qualifying documents ...

Back 22

images of the coversheet and documents determined to be recordable are automatically assigned reel and frame numbers

Front 23

After reel and frame numbers are in place, documents are ______________________

Back 23

put on searchable media
([what kinds?]______________ or _________)

Front 24

...and PTAS software (1)_______________, and adds the (2)_________________, and (3)______________ on the images.

Back 24

(1) superimposes reel and frame number onto the documents;
(2) official recordation date stamp
(3) payment information

Front 25

Finally, the PTAS generates a
_______ __ __________ which is returned to the ___________ _______ on the
________________

Back 25

Notice of Recordation
correspondence address
coversheet

Front 26

Why is a document non-recordable.

Back 26

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.

Front 27

When can you file a patent assignment?

Back 27

At any time following the filing of application for patent.

Front 28

How can you file a patent assignment?

Back 28

(1) online
(2) by hard copy; or
(3) by fax (sometimes - be sure to check the phone number in advance)

Front 29

What can't you file by fax.

Back 29

You can't file the original application [or "assignment of final application"] for patent by fax.

Front 30

What happens to non-recordable documents?

Back 30

Non-recordable documents are returned to the customer with a "Notice of Non-recordation" citing reason for same.

Front 31

Are documents submitted for recordation examined?

Back 31

No. Everything required for the public record is transcribed from the coversheet.

Front 32

Are title searches conducted by the PTO prior to recordation?

Back 32

No. Everything required for the public record is transcribed from the coversheet.

Front 33

Is a cover sheet required?

Back 33

Yes, when submitting documents through EFS, ETAS or EPAS the cover sheet data is part of the required forms for processing the documents.

Front 34

Must the USPTO cover sheet forms be used when submitting recordation requests in paper?

Back 34

No, these forms are not mandatory however the USPTO strongly encourages their use.

Front 35

Why?

Back 35

Because completing the cover sheet forms in their entirety ensures that all the required information for recordation has been sent to the office.

Front 36

Where can these forms located, and in what format?

Back 36

They are located in form-fillable format on the USPTO Forms page.

Front 37

When these forms are received in the USPTO, they are scanned, along with what?

Back 37

Supporting documentation

Front 38

Then, ___________________ from the cover sheet is entered into the _______ system

Back 38

Bibliographic data
PTAS

Front 39

Recordation of Assignment documents must be accompanied by an ____ and ___________ signed by ____ of the inventors.

Back 39

Oath, Declaration, each

Front 40

If you make a mistake (either omit or submit too many or incorrect inventors), you can [1]... or [2]....

Back 40

File a petition to add or remove inventor(s), file a continuation application, or
file a reissue application.

Front 41

The document referred to above should state that
[1]___________;
it should also enclose
[2]_________________; enclose [3]_________________; and
[4]__________________

Back 41

[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.

Front 42

IF THE PATENT ASSIGNMENT IS HEADED FOR LITIGATION:

Back 42

Ask PTO to do a
REISSUE APPLICATION, which will re-verify all the parties.

Front 43

You can also use a _____________ application after patent has been granted, for what purpose?

Back 43

REISSUE -
to add information to the patent [after it has been granted]; and/or in an attempt to secure broader rights

Front 44

One drawback to this tactic is that it is ___________.
The best way to correct inventorship is ______________.

Back 44

RISKY;
file a petition.

Front 45

RELUCTANT INVENTOR - In submitting application for recordation of assignment, you must -

Back 45

file a petition and statement of facts to sign on behalf of any reluctant inventor.

Front 46

Who else can sign on the reluctant inventor's behalf?

Back 46

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.

Front 47

For application of patent, inventor can file:

Back 47

pro se (on his or her own behalf)

Front 48

Or he/she may:

Back 48

grant POA to patent attorney or patent agent to represent him/her.

Front 49

Such power of attorney must always -

Back 49

NAME a patent attorney or combination of patent attorney(s)/patent agent(s)

Front 50

When a patent attorney or agent signs or _____________ an ____________ for ______________ on behalf of a person, his/her ____ ______ or _________ shall constitute __________________ to PTO that

Back 50

acknowledges
application
patent
personal appearance
signature
representation
he or she is authorized to represent that particular person.

Front 51

This can ________ ______ the application.

Back 51

materially affect

Front 52

All papers submitted to the PTO must be _________ and __________.

Back 52

signed
true

Front 53

Failure to be truthful can cause you to lose your
__________

Back 53

prior art references

Front 54

DON'T HIDE ANYTHING. Truthfulness = ______________

Back 54

DON'T HIDE ANYTHING
Duty to Disclose

Front 55

Prior Art References

Back 55

IDS

Front 56

Power of Attorney dies when __________. What happens then?

Back 56

the attorney or person holding it dies. Usually another practitioner from the firm to whom the rights are assigned can pick up that function.

Front 57

If an inventor dies during prosecution, the patent will be issued to ..., who can ...

Back 57

his/her legal representative [EXECUTOR OF ESTATE]
[who can]
revoke power of attorney and ask anyone they want.

Front 58

Inventor needs a system in place designating ...

Back 58

who will take over in the event of his/her death.

Front 59

However, something that goes abandoned can be revived using ...

Back 59

Request for Continued Examination (RCE)

Front 60

RCE is only good for

Back 60

utility patent or any patent filed before 1995

Front 61

Applicant can use RCE to ...

Back 61

obtain continued examination after a final Notice of Office Action is received ...

Front 62

NOA may state that ...

Back 62

you have no further rights to substantive examination.

Front 63

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.

Back 63

open file and request continued examination, to broaden the scope of the invention

Front 64

This request must be filed ...

Back 64

within 2 years of grant of patent

Front 65

Drawback?

Back 65

Can be tricky. You might lose what you already have. Better to open a new papent.

Front 66

How do you open a new patent

Back 66

• Pay fee (small entity costs $375); open new patent

Front 67

What is Typosquatting?

Back 67

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.

Hint 67

___________, also called URL hyjacking, is a form of cybersquatting which relies on ....

Front 68

Describe the typical victim of typosquatting.

Back 68

Generally, the victim site of typosquatting will be a frequently visited website.

Front 69

The typosquatter's URL will usually be one of ____ kinds, all similar to the _______________

Back 69

four
victim site address

Front 70

Perhaps the intended website is "example.com". Describe ways in which the typosquatter site can vary from the victim site.

Back 70

*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

Front 71

Once in the typosquatter's site, the user may also be tricked into thinking that____________________, through ________________,

Back 71

he/she is actually at the real site
copied or similar logos website layouts or content.

Front 72

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 ______________

Back 72

competitors
John Zuccarini
to pornographic websites

Front 73

Combatted by __________

Back 73

Cease-and-desist order

Front 74

Sometimes victim website will offer _____________

Back 74

to buy offending web address.

Front 75

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.

Back 75

lawsuits

Front 76

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.

Back 76

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.

Front 77

Typosquatting" is a meaningless term where the law is concerned. Why?

Back 77

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.

Front 78

Criminal laws are mostly silent about the registration of domain names that are typographically similar to other names. Except that:

Back 78

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.

Front 79

Non-criminal law is primarily concerned with _____________

Back 79

unfair competition between people who register domain names that are typographically similar to known trademarks.

Front 80

What is the "hook" for trademark infringement:

Back 80

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.

Front 81

it may be perfectly acceptable to use a domain name that is confusingly similar to an existing trademark IF ...

Back 81

the web page standing behind the new domain name is _________________, OR (2)_____________

Hint 81

_________ 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.

Front 82

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

Back 82

cybersquatting,

Front 83

non-commercial use of a gripe site preempts a claim of

Back 83

unfair business practices

Front 84

gripe site which does not attempt to confuse visitors

Back 84

mitigates in favor of the gripe site's creator

Front 85

and the Supreme Court has upheld ruling that a gripe site can be a communicative forum for comment and criticism, and can

Back 85

constitute a "bona fide non-commercial or fair use" of a trademark interest, under the Anticybersquatting Consumer Protection Act (ACPA)

Front 86

and, "even when done for ____________," does not alone show ___________.

Back 86

profit
bad faith intent to profit

Front 87

When the alleged infringer establishes a gripe site that criticizes the markholder, the markholder must show ___________________________

Back 87

a “bad-faith attempt” on the part of the infringer to profit from the misuse.

Front 88

Gripe sites point out the importance of ________________________________ with the interests of __________ ________ who seek to make _____________________.

Back 88

balancing property interests of trademark owners
internet users
lawful use of others' marks
lawful uses of others' marks

Front 89

including:

Back 89

for purposes of comparative advertising, comment, criticism, parody, news reporting, fair use, etc.

Front 90

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.

Back 90

Truth in Domain Names Act

Front 91

a ________________law

Back 91

United States Federal Law

Front 92

enacted in _____, is part of A bill to amend the provisions of title __, ____________, and the
____________ relating to ____________ (S. ____).

Back 92

1999
17
United States Code
Communications Act of 1934
copyright licensing and carriage of broadcast signals by satellite
1948

Front 93

It makes people who ______ ________ _______ that are either ______________ or _________________ ,

Back 93

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.

Front 94

____________________ of selling the _____________ of the _____________________ name to the __________ or __________, [why?]

Back 94

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.

Front 95

to be
It was sponsored by Senator __________, on _________, 19__, and enacted on November __ of the same year.

Back 95

liable to civil action

Senator Trent Lott
November 17, 1999
enacted on November 29

Front 96

In order for a trademark owner to bring a claim under the ACPA, the owner must establish

Back 96

(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).

Front 97

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 _______.

Back 97

acknowledgment

Front 98

Application means
_____________ application or
_____________ patent application designating __________, or an __________ to register a _________ under _______ _ or __ of the _________ _____ (___________).

Back 98

national
international
United States of America
application
Trademark Act, 15 USC 1051 or 15 USC 1126

Front 99

Assignment means: a _________ by a ________ of all or part of its ________, ________ and ________ in a _______, _________ ___________, __________ _____ or _____ for which an application to ________ has been filed.

Back 99

transfer
party
rights, title
interest
patent, patent application, registered mark or mark
file