Vic Lin

How to choose patent foreign countries

Choosing patent foreign countries A US patent provides a patent owner with rights only in the US. That might be enough for patent owners who do not care about sales or manufacturing of infringing products done in foreign countries. But, what if you do care about infringing activity happening abroad? You will need to file […]

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Can the same trademark be registered by others in a different country?

Same trademark, different country It is possible for others to register a US trademark in a foreign country. A US trademark registration does not block others from registering the same mark outside the US. Trademark rights are territorial. A US trademark registration does not extend beyond geographical limits of the United States. If you own […]

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From PCT to US National Stage: How to get the initial filing right

Before filing a US national stage patent application A PCT application provides several benefits beyond merely delaying the costs of filing individual national stage applications in desired countries. By taking advantage of these optional strategies while the PCT application is pending, an applicant can place their patent application in a more strategically effective position for […]

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What is the USPTO Consistency Initiative for trademark filings?

Has trademark examination become more inconsistent? Trademarks share a common feature with patents in that a trademark must be different in order to be registered. It might be fair to say that all IP assets must have a minimal degree of distinctiveness to be protectable. If an idea, name or artistic work is not innovative, […]

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How to patent government funded inventions

What is an invention funded by the federal government? Certain rules pertain to any private companies or persons seeking to patent a federally funded invention. We will dive into certain basic rules further below. At the outset, let’s clarify which government funded inventions are subject to these rules. Under the Bayh-Dole Act which is codified […]

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What is laches (delay) in a TTAB trademark case?

What is laches? Laches is a fancy legal term meaning delay. If there has been delay in filing a TTAB trademark cancellation, laches might be available as a defense against a plaintiff seeking to cancel a trademark registration. Keep in mind that laches in a trademark infringement lawsuit has a different standard than that in […]

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What is a TTAB summary judgment motion?

What is a TTAB summary judgment motion? A TTAB summary judgment motion is a pretrial filing made to request an earlier decision in a trademark opposition or cancellation proceeding before the USPTO. Such a motion is called dispositive since it can potentially dispose of the case. Due to its dispositive nature, summary judgment motions are […]

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What is a patent reexamination?

What is an ex parte (1-sided) patent reexamination request? If you have hundreds of thousands of dollars to fight a patent, you can pursue litigation-like options such as Post Grant Review (PGR) or Inter Partes Review (IPR). If not, an ex parte reexamination request may arguably be the most affordable way to challenge a patent. […]

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Should you file a design patent or utility patent?

Design patent or utility patent? One of the most common questions we get from startup entrepreneurs is whether they should file a design patent or utility patent. While every concept is different, certain general guidelines can help you choose the right patent application. Technical differences between utility and design patents have been discussed here. With […]

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