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Responding To Rejections Of Trademark Applications

The U.S. Patent and Trademark Office (USPTO) can reject trademark applications on several grounds. The trademark applicant must know the best way to respond to the rejection – and it’s definitely not writing a scathing letter disparaging the USPTO examiner’s qualifications – to get a favorable outcome in the end. Here are things that you need to know about it.

 

Action Letters

The USPTO examiners write three types of action letters, the term used for trademark application rejections.

  • Technical rejections typically involve procedural oversights or minor matters that can easily be resolved by the appropriate amendments.
  • Substantive rejections usually involve more complicated matters, such as the likelihood of confusion, generic claim, and descriptive mark, which are more challenging to resolve. In most cases, the professional assistance of an experienced patent lawyer is recommended, if not a must, to get approval.
  • Final rejections are written and issued only after you have failed to respond to either of the two abovementioned rejections at least once.

 

If you receive either a technical or a substantive rejection in the mail or by telephone, you shouldn’t lose hope as the examining attorney will give you at least one chance to answer. You will find that these action letters are common so you’re not being singled out, discriminated against, or targeted for exclusion by the USPTO.

 

Prescription Period

The action letter always specifies the number of months that you should respond to the issues being raised as the reasons for rejection. In general, the USPTO gives applicants six months to make the appropriate response to an action letter.

 

If you don’t respond within the prescribed period, you run the risk of having your application considered as abandoned by the USPTO. In case of abandonment, you have to return to square one of the application process if you still want the trademark registration.

 

The bottom line: Always send your response to an action letter as soon as possible. But avoid rushing your response since you don’t want to run the risk of yet another rejection call or letter for a minor matter. You have to double check that, indeed, your response corresponds to the grounds for rejection.

 

Choices to Make

You can choose from these three choices when responding to the action letter:

  • Make a response on your own
  • Hire a trademark attorney to handle the response
  • Abandon your application

 

If you respond to the action letter yourself, you have to make sure that you can actually handle it well – and it’s usually the case for technical rejections. But if you can’t handle the complexity of the grounds for rejection, you shouldn’t try to do so unless you’re willing to risk final rejection.  Your trademark lawyer’s services may seem expensive at first but when you consider the benefits, you will likely be willing to pay for these services in the future.

 

 

For details of the trademark application and its related services, please contact us for free consulation.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

PPA Basics: The Concept Of Reduction To Practice

The provisional patent application (PPA) is an interim document designed to preserve the patent owner’s rights to the invention while in the process of determining whether to file a regular patent or not. Many inventors file it since it’s a relatively straightforward, simple and affordable way of protecting their rights over and interests in their inventions.

 

Reduction to Practice Defined

It’s the equivalent of the concept of “reduction to practice” typically manifested in two ways:

 

  • By the production of a physical embodiment of the invention, also known as actual reduction to practice. Examples include a prototype of a device, a composition of the matter, and the performance of a method to confirm its results.

 

  • By filing a patent application with the United States Patent and Trademark Office (USPTO), known as constructive reduction to practice.

 

The actual physical construction for a product or the performance of the steps for a process is meant to show others that, indeed, the subject matter being patented can do what it’s supposed to do. The concept of reduction to practice then encompasses actual demonstration, operation and testing for the invention’s actual use.

 

Importance of Reduction to Practice

Every savvy inventor knows that reduction to practice is a crucial element in establishing novelty and non-obviousness in a patent application. You, the inventor, has to provide proof that indeed you are the original inventor of the subject matter and the PPA is a strong proof.

 

The PPA is also important in establishing patent priority and, thus, rightful and legal ownership over the invention. Under U.S. patent laws, the inventor owns the patent registration rights at the time he/she reduced the invention to practice, thus, it’s important for inventors to be the first to apply the reduction to practice doctrine.

 

In contrast, most countries grant patent registration rights to the first person who files for the applicable patent.

 

The reduction to practice concept prevents other persons from stealing, borrowing, and selling prior inventions created by the original inventor even if the latter haven’t filed for a regular patent. The PPA can establish both actual and constructive reduction to practice since it must contain a description and drawings of the invention. The inventor can also include other documents to establish ownership over the invention, such as formal drawings and methods of operation.

 

If the invention’s practical utility isn’t evident, the USPTO examiner may request for a testing and demonstration. You should take it into account when filing for a PPA to establish reduction to practice on your part.

 

A good rule of thumb to remember: The less theoretical, the less abstract and the simpler the invention, the less need for showing practical utility. Brand-new technologies, for example, usually require more proof of utility while there’s little to no demonstration of utility required for improvements on existing technology.

 

 

For details of the patent application, please contact us for free consulation.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

The Tug-of-war Over Patent Rights Ownership Between Inventor And Employer

Who is the rightful and legal owner of an invention: The employee who invented it or his employer? The answer depends on the agreement between these parties although other factors are also considered.

 

For the inventors, the answer can mean the difference between being recognized – and possibly getting rich – for their inventions and being consigned as a mere cog in the machine. For the employers, it can also mean being recognized as a pioneer and leader in the field on one hand and being left behind by the competition on the other hand.

 

With such high stakes, which side does the law favor?  Take note that patents are articulated under the U.S. Constitution (Article I, Section 8, Clause 8) and governed by the Patent Act.

 

Inventors Typically Have Patent Ownership

The general rule in the tug-of-war between inventors and employers: You, if you’re the inventor, own the patent rights to your invention created during the course of your employment. You can apply for a patent with the U.S. Patent and Trademark Office (USPTO); only a natural person, by the way, can apply for it and, thus, organizations cannot.

 

But there are exceptions to the general rule. You don’t own the patent rights under either of the following circumstances:

 

  • You signed an employment agreement with your employment wherein you assigned invention rights (the doctrine of pre-invention assignment); or
  • You were specifically hired either to create the specific invention or for your invention skills (the work-for-hire doctrine); said employment may or may not come with a written agreement.

 

In practice, either of these two exceptions to the rule nearly always applies. This means that the employers hold patent ownership to their employees’ inventions, a fact reinforced by the signed and notarized pre-invention assignment agreements at the time of the hiring. The assignment agreement typically comes as a bundle, so to speak, with other employment documents like confidentiality agreements.

 

Employers Can Have Shop Rights

Let’s assume that you retained patent ownership over your invention. Keep in mind that it isn’t an ironclad ownership either because your employer can still have shop rights. The term refers to the limited right of the employer to use your patent without paying you, either in cash or in kind.

 

Shop rights occur when you, the employee and inventor, uses your employer’s resources including the machinery, facility and network in creating your invention. The doctrine itself is flexible in its application in the real world but it typically allows your employee the use of your invention internally. Your employer can neither assign nor sell your invention to third parties; otherwise, it can be considered as infringement of patent.

 

If you’re an inventor seeking employment or already in employment, you are well-advised to consult with a patent lawyer about your employment contracts including the assignment agreement. You have to protect your inventions from infringement, even by your employers, if that’s what you want.

 

 

For details of the patent application, please contact us for free consulation.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

Are You The Rightful Owner Of Your Invention For Patent Application?

What would you do if your original idea was stolen by another person or group? But before you answer the question, you have to answer another question, “Do you legally own the patent rights over the product, device or item?”

 

Granted by the USPTO

Everybody has the right to create things. But keep in mind that merely creating a thing doesn’t confer legal rights including ownership over it, even when others have profited from it. You must actually have a valid patent over the subject matter, whether it’s a process or a product.

 

Patents are rights of ownership granted by the United States government, specifically the U.S. Patent and Trademark Office (USPTO) to inventors. The patents are intended to exclude others from making, using, and selling, even importing, the particular inventions without the inventors’ express permission. In case of infringement, the aggrieved inventor can file an infringement lawsuit.

 

If you haven’t submitted your patent application or you haven’t been granted a full patent for the subject matter, then you will likely not be considered as its legal and rightful owner. You can, however, apply for a provisional patent but even it has its limitations so we suggest getting a full patent over your invention.

 

Inventorship and Ownership Are Different

There are also instances that the inventor and original holder of the patent isn’t considered as the owner of the patent. This is because the concepts of inventorship and ownership are different under patent law.

 

You, the inventor, may be listed on the patent application filed with the USPTO but you may not be considered as its current valid owner. You may have relinquished your rights over it, a case that can happen when you work for a company and you created the invention while you were its employee at the time. In this case, you cannot sue for patent infringement since the patent is usually owned by the company.

 

If you were directly paid by another person or group to create an original invention, you may or may not own the resulting patent. You have to double check the agreement before signing it, especially if you want to own the patent while the other party has certain legal rights over the resulting product.

 

And then there’s the matter of being a solo inventor or a joint inventor of a patented idea or thing. If you came up with the idea or created the product completely on your own, then you are considered as a solo inventor. You shouldn’t be anybody’s employee, too.

 

If the idea or thing was created by two or more people, then they are joint owners of the patent. The names of all the inventors can be listed on the patent application and, in the absence of an agreement to the contrary, every inventor own a pro-rated and undivided interest in the invention.

 

 

For details of the patent application, please contact us for free consulation.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

中國皇冠丹麥曲奇控告丹麥藍罐曲奇索償 3 千萬!

 

嘩!好混亂呀!中國的版權風波、山寨出現可謂無奇不有,繼 New Balance、 Jordan Brand 及「無印良品」在內地被告侵權,遇上版權問題外,最近大家熟悉的過年大熱產品「丹麥藍罐曲奇」也遇到商業指控。丹麥藍罐曲奇亦被皇冠丹麥曲奇狀告進行虛假宣傳,在產品包裝及網頁多處宣揚「丹麥藍罐曲奇」、「源自 1933 年」、「百年歷史」等元素,讓消費者誤認為該產品有逾百年歷史。同時皇冠丹麥曲奇對於丹麥藍罐曲奇是否獲得皇室御用稱號存有疑問,讓人誤認為皇冠丹麥曲奇、丹麥藍罐曲奇是存在特定關係,故此要將丹麥藍罐曲奇產品的 6 個相關公司上告法院,要求索償 3 千萬人民幣(約 HK$3,489 萬)。 誰是誰非,有待下回分解!

來源 : http://std.stheadline.com/instant/articles/detail/1000067

Meeting the Non-obviousness Requirement In Patent Applications

Every inventor worth his salt should familiarize himself with the non-obviousness requirement in patent applications. Otherwise, even a novel and original invention will not be granted a patent by the United States Patent and Trademark Office (USPTO). But what exactly does the USPTO mean by non-obviousness and how can you meet it?

 

But first, we have to emphasize that while novelty and non-obviousness are different in many ways, the two terms often overlap in a practical sense. The reason for it is that both can be measured in terms of the absence of prior art.

 

What Makes an Invention Non-obvious?

Unfortunately, the standards for determining the obviousness and non-obviousness of inventions are as clear as mud. The USPTO patent examiners – and the judges in patent litigations, for that matter – have plenty of leeway in making related decisions, a current reality that inventors should be aware of.

 

If you’re an inventor, keep in mind that it doesn’t necessarily demand genius-like craftsmanship, originality, and vision to create a non-obvious design. In many cases, it only requires the extraordinary ability to visualize ordinary things in a new or different manner.

 

There are times when combining things is easily apparent and there are times when it isn’t. The requirement of obviousness then becomes trickier than it sounds, especially as obviousness itself is both a subjective and objective (i.e., fact-based) inquiry.

 

But there’s a way to determine if your invention meets the non-obviousness requirement. Basically, an invention can be considered as obvious when other persons knowledgeable about the field where it belongs will look at it and consider it to be generally known. The known aspect isn’t exactly known per se but will be known if several references are combined.

 

How Can Non-obviousness Be Demonstrated?

Keep in mind that the inventor has the burden of proof, so to speak, in proving the non-obviousness of his invention. This can be done in several ways including the following:

 

  • Using a familiar shape in an unfamiliar manner
  • Making slight to significant changes to an existing design thereby creating a striking visual effect that others haven’t done before
  • Omitting certain elements generally associated with similar designs
  • Juxtaposing specific elements thereby creating an unexpected statement, whether visual or auditory

 

There are other ways to meet the non-obviousness test, too. If your design has been or continues to be a commercial success; it has unexpected visual appearance; it has been copied by others; it has been praised for its originality by others in the field where its utility is evident; it was copied by others but they were unsuccessful at generating the same results as the invention; or it was created when others said it couldn’t be done.

 

Do these concepts make for more confusion? If you answered yes, then you should consider hiring a patent agent or lawyer or agent with a comprehensive experience in meeting the five requirements of patent approval.

 

For details of the patent applications, please contact us for free consulation.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

Microsoft 申請視障人士遊手掣專利

很多科技公司都提倡傷健共融,例如電腦、手機和遊戲機都會有專為肢體傷殘人士的設定頁面,讓他們都可以使用裝置。最近荷蘭科技網站 LetsGoDigital 發現,Microsoft 早前申請一項遊戲機手掣的設計專利,讓視障人士都以享受打機的樂趣。
根據 Microsoft 提供的設計圖片,該遊戲手掣的正面跟現時 Xbox One 的手掣相當類似,不過背部則大相逕庭,加裝了支持盲人點字輸出的觸覺組件,讓視障人士可以透過這組件得知遊戲的界面和內容。Microsoft 在去年 10 月向 WIPO 世界知識產權局遞交這項名叫「觸感點字輸出的遊戲手掣」專利,而專利在上週四(5 月 2 日)公佈。
在專利申請文件中,Microsoft 還提及到可識別語音指令,並將之轉換成點字輸出,視障人士不但能夠透過聲音、點字,還可以藉著語音操控遊戲。網上有不少視障人士打機的片段,部份單靠遊戲的聲效就可以勝過電腦系統,如果 Microsoft 將專利設計正式推出,視障人士將可以享受更多不同種類的遊戲。

來源:LetsGoDigital

Talk But Protect Your Non-patented Invention

The idea is the heart of the invention. You, the inventor, then must be extremely careful about sharing your novel idea with other people, even with people who can provide assistance to take it from an abstract idea to a real product (i.e., prototype). You should be particularly careful when you haven’t submit your patent application for it yet.

 

Fortunately, there are ways to talk about your non-patented invention and protect it from being stolen by others.

 

Learn the Law

You have to learn the law that applies to patents even before you think about discussing your ideas with every Tom, Dick and Harry who cares to listen. You don’t have to go to law school to understand the patent laws but you should strive to learn the basics, such as the types of disclosures that you can and cannot make while still protecting your idea.

 

You may want to present your idea to a group of angel investors. You may also put it to beta testing so as to test it marketability and profitability. You may want to write a white paper about it. Regardless of what you want to do about your idea, you have to learn the law.

 

Have a Confidentiality Agreement

Also known as a non-disclosure agreement (NDA), a confidentiality makes it clear – and in writing, too, for good measure – between both parties that your invention should be treated as confidential information. As such, the third parties with the privilege to know about it must not disclose or release any information about it to others without your express permission. This is a good idea if you’re talking about it to potential investors, partners, and/or vendors.

 

But remember that an NDA isn’t acceptable to everybody, especially where large investment firms and corporations are concerned. Indeed, you may even be asked to sign an agreement wherein you agree that your idea isn’t a secret at all so the organization has legal protection from liability!

 

Avoid Online Sharing

If you’re the type who likes to share nearly everything about your life online, then you should start cutting back if you have a brilliant idea that can qualify for a patent. When you post your ideas online, whether it’s on your website or on a social media site, you’re exposing yourself to two threats.

 

First, your idea may be stolen by your connections – or by the friends of your friends up to the sixth degree – and then run with it. You may have come up with the novel idea and somebody else profited from or was recognized for it.

 

Second, you’re essentially giving the social media sites where your ideas were posted the right to use it anyway they want. Read Facebook’s Statement of Rights and Responsibilities, particularly on the topic of intellectual property, and you will understand.

 

The best thing to do: File a provisional patent for your invention!

 

 

For details of the patent application, please contact us for free consulation.

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

5項設計專利被抄襲 積架告內地車企勝訴:


英國汽車商「積架•越野路華」(Jaguar Land Rover)3年前控告內地車企「江鈴陸風」,指對方旗下的陸風E32型越野車(陸風X7),涉在外觀上直接抄襲該公司產品Evoque的5項專利設計。
北京朝陽區法院上周五(22日)裁定積架勝訴,江鈴陸風須立即停產、銷售與推廣相關產品,並須賠償積架。
據了解,積架早於2016年入稟內地法院,控告江鈴陸風抄襲;在2016年與2017年的申訴中,積架未能勝訴,甚至與陸風的外觀專利均被裁定無效。其後積架不服,繼續提出上訴。
朝陽區法院上周五判決,裁定陸風X7直接抄襲積架Evoque的專利設計,包括車體、車頂線條、車頭燈與側面造型等,侵害了積架利益,惟相關賠償金額則未有披露。

資料來源: 東網

Why Hire An Attorney For Your Initial U.S. Trademark Application?

Filing a trademark application isn’t for the faint-hearted, so to speak, because of the time, energy and effort involved in understanding the trademark law, meeting the requirements of the United States Patent and Trademark Office (USPTO), and dealing with the subsequent actions (e.g., issuance of Office Action). For this reason, you should seriously consider hiring an attorney to take care of these matters in your behalf.

 

What can an experienced lawyer, particularly one with extensive experience in trademark laws, do for you?

 

Provide Appropriate Legal Advice

Of course, you can file the application on your own and request the USPTO examining attorney to provide tips that will expedite your application. But the USPTO attorney cannot provide legal advice even if he wants to because otherwise it will be a conflict of interest.

 

The trademark attorney, in contrast, will provide legal advice regarding your application and its related issues. You can get answers to questions like, “Is the mark protectable by the trademark laws? Are the class of products and/or services that the marks apply to identifiable? Are you able to take appropriate action when the USPTO refuses to register the mark?”

 

Think of your attorney as your main man in ensuring that your mark becomes registered and protected from infringement by others.

 

Conduct Searches on the Database

Again, you can search the state and federal databases for similar trademarks as the mark you’re seeking registration for. But it’s such a time-consuming process that you likely won’t have the time and energy for, perhaps not even the patience. Besides, you will likely have other business matters to attend to.

 

With an attorney on board, you can delegate the task to the professional. Your attorney will search the USPTO database of registered trademarks at the federal level, as well as other databases including the state registration database and the common law unregistered trademarks database. The comprehensive search is a must because even non-registered trademarks similar to your mark and used for selling products and/or services related to yours may well prevent you from registering, using and profiting from your mark, no matter if you think it was your original idea.

 

Protect Your Trademark Rights

Your attorney can also provide information that will deepen your understanding of your rights and responsibilities as a trademark owner. You will also be provided with relevant advice about the best ways to monitor and enforce your rights and responsibilities, especially in terms of others infringing on your mark. You should also remember that you may also be charged of infringing on other people’s trademarks and your attorney can provide legal assistance on this matter.

 

The crucial role of your attorney doesn’t stop with the initial application. You can also rely on him or her for meeting the registration maintenance documents, which should be filed on a regular basis. You can then maintain ownership over your mark, a must if you want to continue profiting from it.

 

 

For details of the trademark registration application, please contact us for free consulation.

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

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