“Insolubly Ambiguous” falls to “Reasonable Certainty”

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What you need. What we know.™ – Patents: Indefiniteness

The United States Supreme Court ruled earlier this summer that “insolubly ambiguous” is not the correct standard when evaluating patent claims for indefiniteness.  “Insolubly ambiguous” is certainly a bit of a mouthful – “insolubly ambiguous” – and requires a bit of thought. Now, however, the new standard for determining whether patent claims are indefinite and, therefore, ineligible to receive patent protection, is “reasonable certainty.”

Does the patent claim “inform, with reasonable certainty, those skilled ...

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Be the Mark You Wish to See in the World

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What you need. What we know.™ – Trademarks: Selection Matters​

When an existing or prospective client tells me they have a business/product/mobile app name that they want to trademark, I am happy to hear that they are thinking about their trademark rights and building their trademark portfolios. 

Too often, however, when I hear the name, I repress a groan. It’s descriptive. Yes, it clearly communicates what they do/provide/have built, but it is bland, uninteresting, and safe.  In particular, if the business is a start-up ...

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The Trademark Test You Don’t Want Your Mark To Fail

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What you need. What we know.™ – Trademarks: Likelihood of Confusion

At the end of 2013, the USPTO employed 409 trademark examining attorneys. Any one of these 409 trademark examining attorneys could be assigned to examine your application and could issue an initial “likelihood of confusion” refusal for your trademark application. Clients, of course, never see the “likelihood of confusion” issue in the same way as the trademark examining attorney does.

In order to attempt to “win” the argument, however, and defeat the refusal ...

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“Anything Under the Sun that is Made by Man”

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​What you need. What we know.™ – Patents: Non-Patentable Subject Matter

“Anything under the sun that is made by man” is patentable. Or so the US Supreme Court once quoted in a 1980 case involving an “invention of a human-made, genetically engineered bacterium capable of breaking down crude oil[.]” Emphasis on the word “made”; abstract ideas are non-patentable subject matter.

Most recently in the spotlight in the area of non-patentable subject matter, 35 U.S.C. § 101, is the ...

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Can’t I Just Do It Myself?

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What you need. What we know.™ – Trademarks: The Application

 You need to know why you shouldn’t save the attorney fees by preparing and filing a trademark application​ yourself, or why you shouldn’t just click on that “Register My Mark”  for $69 + government fees button for the website you found. With each of these options, once your application is filed, you go it alone through the next 12-18 months that it can take for the USPTO to prosecute your application ...

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