Open/Close Menu San Diego based patent and trademark law firm founded in 1984 with over 1,700 patents issued and more than 1,200 trademarks registered worldwide.

I expect most people who will read this have become tired of the “B”-word in relation to the vote by citizens of the UK on 23 June 2016 to leave the EU, so it will not be used here. It is likely that people who have EU or UK patents and trademarks will, at minimum,…

WE’VE MOVED As of March 1, 2016, our new address is: The Maxham Firm A Professional Corporation 11682 El Camino Real, Suite 100 San Diego, CA 92130 Phone and Fax numbers remain the same.

A. Major Change Resulting from the America Invents Act (AIA) The subject of “first inventor to file, replacing the current “first to invent” system, has gotten a large amount of the publicity. All patent applications with an effective filing date on or after 16 March 2013 are subject to the new law. However, any application…

The America Invents Act (AIA) One of the (potentially) most useful aspects of the AIA is already effective. It is Prioritized Examination (Track 1). For $4,000 ($2,000 for small entities), and without any prior art search or analysis, a request can be filed in the USPTO together with filing a new patent application. The early…

TRADEMARKS A. THE INTERNATIONAL WORLD OF TRADEMARKS 1. The European Union In the European Union the Community Trademark (CTM) registration system covers all EU countries with a single procedure and results in a single registration. The coverage of the CTM registration will expand along with the EU and any new countries will automatically be included…

Third Party Submission In Pending Patent Applications The America Invents Act has significantly expanded the possibilities for third parties to file submissions of documents in pending patent applications. As of 16 September 2012, such submissions can be made with respect to any patent application then pending or that is subsequently filed, subject to the timing…

BEWARE OF FILING PROVISIONAL APPLICATIONS ON INVENTIONS The popular press has made it appear that provisional applications are the way to go and that it saves money. Nothing could be farther from the truth. The actual filing fee in the United States Patent and Trademark Office (USPTO) is low for a provisional application, but that…

CONFLICTS BETWEEN TRADEMARKS AND DOMAIN NAMES The Internet domain name register will effectively register any domain name for a web page address on the Internet that is not identical to a previously registered domain name. Unfortunately the domain name registration takes no account of the class of goods or services associated with the domain name….

THE SUPREME COURT SPEAKS At the end of November 2000, the Court of Appeals for the Federal Circuit decided the now infamous Festo Case. This case stated that a narrowing amendment to any claim limitation created an absolute bar to any equivalents for that claim limitation under the doctrine of equivalents. Thus, at least in…

A DEFENDANT’S OWN PATENT MAY NOW BE USED AS EVIDENCE OF NON-INFRINGEMENT Contrary to popular belief, the fact that company Y patented its own product does not mean that the same product does not infringe the patent of company X. This is because of the nature of the patent grant itself. A patent affords the…

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