Should You Disclose or Receive Information with Examiners?

Is it possible to disclose too much with Examiners at the United States Patent and Trademark office?

The United States Patent and Trademark office is having a “Tech Week” the first week of December (Dec.1-5, 2014). This program is designed to permit scientists, engineers, and technology experts the ability to instruct patent examiners on their field of science and technology. The idea is that this instruction will aid patent examiners in being more informed about the state of technology in the various industries and further help to improve the patent process.

Is there risk to inventors from this disclosure?

Yes, but admittedly it may be minimal. Assuming each presenter has taken the necessary steps to protect their technology inventions prior to disclosure at this event, what harm is there? Any information examiners learn and receive can be used against any relevant application. This applies to the presenter in any new or future application and to other inventors navigating the process. Some will counter this small risk by saying that it serves to help strengthen the patents being issued. I do not disagree. But just keep in mind that any disclosure and education we give the examiners can have some risk with it. Additionally, it is my experience that our examiners are pretty knowledgeable in their particular fields and are exposed daily to new and novel inventions. Do they really need more understanding?

Potential harms of disclosing too much:

  • Unnecessarily narrowing your claims: You might reveal alternative embodiments or functionalities of your invention that could form separate claim limitations, potentially restricting the scope of your patent protection.
  • Enabling competitors: You could inadvertently provide valuable insights about your invention that competitors could use to design around your patent or develop their own products.
  • Raising objections by the examiner: Disclosing irrelevant or unnecessary details could distract the examiner from the core aspects of your invention and lead to unnecessary objections or rejections.

On a flip side, the USPTO is organizing opportunities to interact with the USPTO here in Texas where they provide the public information. We are currently in communication with the USPTO about workshops and informative sessions that may arise in your local area. These workshops/sessions would be used to provide general guidance and overviews of the patent procedures (as opposed to hearing your secrets).

However, there are also situations where more disclosure can be beneficial:

  • Addressing prior art: If the examiner cites prior art that seems relevant, disclosing additional details might help demonstrate how your invention is distinct and non-obvious.
  • Explaining complex concepts: Providing comprehensive explanations and examples can be helpful for the examiner to fully understand your invention, increasing the chances of obtaining a patent.
  • Responding to office actions: When addressing the examiner’s objections, additional information might be required to clarify your claims or overcome rejections.

What danger is there in this?

The USPTO can not give legal advice for your particular situation. At times they seek to build confidence in inventors who wish to go at it alone. There is a fine line with providing the public information and in providing to much specific information. Additionally, on average the strength of patents done by an attorney are stronger than those done by an inventor alone. So these workshops/sessions, if not done well may actually work to harm the strength of patents issued. Other nuances exist of course.

In the end, the USPTO is making efforts to be engaged with inventors. Most of it appears harmless but there are always risks or two sides to the situation. It is good to see them getting involved in the public but we counsel you to be cautious when disclosing information to the patent office and be realistic when it comes to filing your own applications.

Finding the right balance:

Ultimately, the key is to strike a balance between providing enough information for the examiner to understand your invention and avoid disclosing unnecessary details that could harm your patent protection. Here are some tips:

  • Focus on the claims: Always ensure your disclosure supports and clearly defines the scope of your claims, which are the legal boundaries of your patent protection.
  • Avoid irrelevant details: Don’t go off on tangents or disclose alternative embodiments that are not part of your claimed invention.
  • Seek legal advice: Consult with a patent attorney to determine the appropriate level of disclosure for your specific invention and situation.

Remember, the USPTO has a duty of disclosure obligation, meaning you are legally required to disclose all material information relevant to patentability, including prior art known to you that might make your invention seem less novel or non-obvious. Failure to do so could result in your patent being invalidated later.

In summary, while there’s no absolute rule against disclosing too much, it’s crucial to be mindful of the potential risks and find the right balance between informing the examiner and protecting your invention. Consulting with a patent attorney is highly recommended to ensure you navigate the patent prosecution process effectively.

How to Register a Trademark in Texas

If your business operates on a national level, then the choice to pursue a federal trademark registration makes sense. Such a registration protects your mark from use by someone else on a nationwide basis.

However, what if you only plan to operate in the State of Texas? A federal trademark registration may not make sense in this situation, especially when there is the option of obtaining a state trademark registration.

In general, obtaining a state trademark registration in Texas is far less complicated, time-consuming and expensive than pursuing a federal registration. When seen in this light, it becomes clear that a Texas trademark registration just makes sense.

What Is a Trademark?

Many entrepreneurs initially don’t understand why they would need a trademark registration. Once they understand the benefits that an official registration grants, they quickly begin to see the advantages.

According to Texas trademark law, a trademark may be a word, phrase, logo, device or symbol. A trademark also may include any combination of these components. The primary purpose of this trademark is to identify the source of the goods or services that are associated with use of the mark. This makes it easier for consumers to always come back to a brand name that they know and trust.

Why Should You Register Your Trademark?

Numerous advantages come with registering a trademark in Texas. Essentially, it formalizes your use and ownership of your particular mark. This means that you are empowered to prevent other individuals or businesses from using your trademark to their benefit.

As an example, suppose that you have invented a new widget that everyone needs to have. You’ve registered a trademark for the unique name of your widget in order to protect your rights.

Then, a competitor comes along, selling a knock-off widget of questionable quality. To make matters worse, that competitor is using a trademark that is confusingly similar to yours. Unless consumers are paying really close attention, they may accidentally buy the competitor’s inferior product, believing it to be yours.

When that knock-off product proves unreliable, the public may form a poor opinion of your company even though the product was made by your competitor.

When your trademark is registered, you have the ability to prevent your competitor from using your trademark. This helps to ensure that any goodwill that your company has earned remains where it belongs.

Texas State Requirements

If you want to register a trademark in Texas, then you’ll have to meet certain requirements.

For instance, you must be able to demonstrate to the secretary of state that your mark was in use in commerce in Texas on goods or services prior to the date on which you applied to register your mark.

Additionally, it’s necessary that your mark be different from other trademarks that are already registered in Texas. The more original and unique your mark is, the easier it will be to register. This also makes it easier for consumers to remember.

The office of the Texas Secretary of State also looks in the registered trademarks at the U.S. Patent and Trademark Office to ensure that the new mark is not identical to an existing trademark.

How to Register for a Trademark in Texas

Applying for a Texas trademark registration is easy.

Just fill out the Trademark or Service Mark Application Form, which can be obtained online. Note that the form must be notarized before it is submitted.

Include three original specimens showing use of the mark in Texas, and be ready to pay the official fees for each class of goods or services for which you are applying.

Next, the state reviews the application and specimens. They follow up if any issues are raised.

The trademark registration will issue if there are no issues. It remains valid for a five-year term, at which time it can be renewed.

Getting a Texas trademark registration is relatively easy when compared with a federal registration. Nonetheless, there can be bumps in the road. If the application is not correctly completed, it can result in significant delays and unexpected costs.

What If Your Texas Trademark Application Is Rejected?

Each trademark application that is received by the Secretary of State is examined. Occasionally, in the viewpoint of the official who reviews the application, some trademarks are not entitled to registration.

The rejection may say that the proposed trademark is merely descriptive. This is a legal term that means that the trademark isn’t considered distinctive enough for registration. According to state law, trademarks are required to meet certain standards. When a mark is deemed to be merely descriptive, it means that the mark:

  • Describes the use, purpose or function of the goods and services
  • Describes who uses the goods or services
  • Describes a desirable characteristic
  • Is a laudatory mark that claims superior quality
  • Merely a person’s name
  • Describes a geographic feature of the products

Receiving a rejection that your trademark is merely descriptive may seem final, but it doesn’t always have to be. If you application is rejected for being merely descriptive, then it makes sense to consult with a qualified intellectual property attorney.

This is because it may be possible for the attorney to argue that the trademark has acquired distinctiveness through prolonged use in Texas. Other arguments may be possible, which is why it is always wise to meet with a trademark attorney before giving up on your application.

Alternatively, applicants for trademarks in Texas may be asked to “disclaim” a portion of their mark. Although some applicants may be alarmed to receive such a notice, this is actually a positive development. It means that although the mark is considered distinctive and eligible for registration, a portion of the mark is not distinctive when viewed separately.

Accordingly, it is not permissible for the applicant to have the exclusive right to use this portion of the trademark by itself. By disclaiming this portion of the mark, the applicant is acknowledging that they do not have the right to prevent others from using that portion of the mark by itself.

If you have received a notification that you are required to disclaim a portion of your trademark, contact a Texas intellectual property attorney to learn whether or not agreeing to the disclaimer is appropriate.

Once you have responded to a notice that your trademark is merely descriptive or agreed to disclaim the exclusive right to use a portion of your trademark, the application is likely to proceed to registration.

Contact Williams IP Law if you need assistance in registering a trademark in Texas or are looking for general intellectual property advice.