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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

日清騎呢杯麵耳機伏味濃?

日清官方周邊產品網店Nissinfanstore.com前日有款全新電競耳機「HYPERX CUP MIX-IN」上架,一見到那個幽默感十足的設計造型,還有煞有介事的簡介文字,就足以令人忍俊不禁:標榜「HyperX / Nissin Dual-Chamber Drivers」以兩個杯麵杯提供市面上最大體積的耳機​,帶來「更大的分析度、更少失真和慵懶的滿足感」。​ 此杯麵Headphone的發布日子如此接近4月1日愚人節,實在讓不少人大開防伏Mode不敢跟車。加上產品上架後隨即在網頁顯示「SOLD OUT」就更令人懷疑是愚人節惡搞.

資料來料: 日清官網

The Possible Grounds For Trademark Refusal

Keep in mind that not every initial application for a trademark will be granted approval. The United States Patent and Trademark Office (USPTO), specifically the examining attorney assigned to your trademark application, can issue an Office Action outlining the substantive reasons for trademark refusal of your application. This brings us to the question: What are the possible substantive reasons that your trademark application can be refused?

 

Likelihood of Confusion

Keep in mind that the USPTO will conduct a search of its database for conflicting marks only after an initial application has been filed. The examining attorney will determine whether your trademark being applied for has a similar one either still pending or already registered in the USPTO database. The process can take several months so patience is necessary.

 

The marks and the related products and/or services between your mark and the marks of other entities don’t have to be exactly the same for conflict or confusion to be considered. Instead, it’s considered sufficient if both the marks and their related products and/or services are similar in nature. The similarity should be such that consumers will likely mistakenly believe that both of them come from the same source.

 

The similarity can be on anything from sound and appearance to meaning. These can include phonetic equivalents, T.J. Chicken and Tee-Jay Chicken; similar appearance even when one uses another stylized; and meaning like “Lupo” and “Wolf” with both having similar images.

 

Merely Descriptive

The USPTO’s examining attorney will also refuse trademark registration if it merely describes a quality, ingredient, function, characteristic, purpose, or feature of the product and/or service. For example, the mark “Creamy Yogurt” or “World’s Best Bagels” are unacceptable because these merely describe the products instead of being a distinctive brand.

 

Deceptively Misdescriptive

The mark registration application will also be refused if the mark itself misdescribes a quality, ingredient, function, characteristic, purpose, or feature of the product and/or service; and the misrepresentation being conveyed is possible. Examples include “THC Tea” for tea-based beverages without THC.

 

Both the merely descriptive and deceptively misdescriptive grounds for refusal also applies to primarily geographical circumstances. There are several instances when it happens including:

 

  • The mark’s primary significance is a generally known geographic location; the consumers/buyers will likely think that the products and/or services come from the place stated on the mark; and the mark identifies the specific place of origin of said products and/or services. This applies to merely descriptive marks.

 

  • In case of a deceptively misdescriptive mark, its primary significance is a generally known geographic location; the consumers/buyers will likely think that the products and/or services come from the place stated on the mark; the products and/or services don’t actually come from the stated place; and the misrepresentation will be a significant factor in the decision-making of consumers.

 

With these strict requirements, you are well-advised to hire an experienced trademark attorney and consultant so that your initial application will have a higher chance of being approved.

 

 

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

 

CtR Intellectual Property Co.

Hong Kong Patent Application Grant Authorised Patent Agent

Offering Professional Patent Application & Related Services

最心痛是註得太遲,有些主意不知不覺已被抄.

中國SIPO知識產權局發布2019年第一季度IP總數據。在Trademark方面,2019年1-3月,China TM 申請數量為155.2M件,商标注冊量為181.4M件。截至2019年3月底,有效注册商標量2119.5M件。1-3月,中國商标異議申请3.9M件,完成異議案件审查1.8M件。 中國商標申請之多令人驚訝,大家要把握時間儘快申請。

Copyright, Trademark or Patent: How Do I Protect My App Idea?

Question is, can you protect this basic idea against copycats who seek to profit on it? If so, how? If not, what can you protect? In this post, we’ll explore how (and if) copyrights, patents, and trademarks can keep your hard work and intellectual property all your own when you enter the world of mobile app development and how to create an app that doesn’t get you into an unnecessary legal situation. What Should I Do First? There’s a lot of moving parts going on when you start the process of mobile app development. The first step is to secure your team, regardless of size or trust level. Make sure that anyone that has any contact with your app signs a non-disclosure agreement (NDA). Copyright: In addition to books, songs, and plays, copyright protection actually also covers original code that you wrote for your app. More about this later. Trademark: The icon on the app store and the user’s phone, and any other symbols or unique design that identifies your app. Patent: The process by which your particular app interacts with your code, servers, and the user qualifies. Again, having an experienced attorney and app development team on your side to point these things out is a wise choice.

Can You Patent Your Invention?

The short answer: It depends on whether your invention meets the requirements stated by the Patent and Trademark Office. Not all patent applications will be recognized or registered even if the inventors insist otherwise. Not even well-known inventors with dozens, perhaps hundreds, of registered patents are assured that their pending applications will pass the stringent process.

What then can be patented? Let’s take a look at the factors that affect the success of your patent application, among other matters.

 

Four Requirements

According to the U.S. patent law, any individual who discovers, makes or invents any novel and useful machine, process, composition of matter, manufacture, or any novel and useful improvement on them may file for a patent. From the definition, the USPTO will grant a patent right if and when these four requirements are met:

 

  • The subject matter, such as a method or a machinery, should be patentable.
  • It must be new or novel.
  • It must have some usefulness or utility.
  • It must not be obvious.

 

You have to carefully consider whether you, indeed, have a patentable subject matter before filing its patent application. You may or may not be granted the patent but you likely won’t be given a refund if it isn’t granted – and the patent process is costly, too.

 

In terms of novelty, the invention should be new in the sense that it must be different from the existing knowledge in the public domain, in published applications, and from prior patents, among others; these are known as prior art.

 

The utility requirement is met by showing proof that the invention can physically accomplish something. In other words, it should work as the inventor intended or it produces actual results. In reality, the USPTO isn’t likely to challenge the patent based on utility unless its underlying logic has serious flaws.  Exceptions, such as on design patents that don’t need to meet the utility requirement, apply.

 

Concrete Evidence Required

While your idea seems novel, useful and unobvious, it cannot be protected by a patent. Instead, your idea must be embodied in one or more of these concrete manifestations, among others:

 

  • A method or a process, such as a new process for making concrete
  • A machine or machinery, typically with circuitry and/or moving parts (e.g., gears)
  • A manufactured item that accomplished a result with little to no moving parts
  • An asexually reproduced new plan variety
  • A new composition of matter, such as a new drug

 

Does your idea fall into one of these categories? You can’t be too sure even then because there are subject matters that are simply beyond the scope of patent laws. These include naturally-occurring substances (i.e., these cannot be invented); mathematical formulas (i.e., these may be copyrighted instead); laws of nature (i.e., man’s laws doesn’t apply to them); and processes that can be entirely performed with the human body (e.g., fool-proof technique for shooting a ball from the 3-point line).

 

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