With extensive trademark and patent management experience across a broad range of industries, Michael provides value not only by reviewing the uniqueness of an invention or a trademark, but also by weighing its potential benefit to the client's business plan.
Taking a pragmatic approach to protecting intellectual property, Michael looks at what items can be protected as well as whether the potential benefits of obtaining such protection outweigh the associated costs. While such analysis might reduce short-term revenue from clients, it enhances something that is much more valuable to him: his clients’ trust.
Michael focuses his practice on the preparation and prosecution of U.S. and foreign patent and trademark applications. He has advised clients on issues relating to developing and protecting products that are sourced overseas for sale through big-box retailers.
Michael enjoys the variety of working with large companies that have complex multinational trademark and patent portfolios as well as smaller companies and individuals that are selecting their first trademark or filing their first patent application.
In the field of patents, Michael has substantial experience with medical devices, plastic formulation and processing, food processing and packaging, agricultural fertilizers and feed, laser processing devices, and sporting equipment.
Michael has advised both U.S.-based and international clients on internet-related issues, including the registration and transfer of domain names and resolution of domain name ownership disputes. Michael continues to leverage his international experience through strong relationships with law firms in countries such as China, Hong Kong, Israel, Malaysia, Singapore, South Korea, Taiwan, and the United Kingdom, enhanced by visits to many of these markets.
John Marshall Law School, J.D.; editor, Software Law Journal
University of Illinois at Champaign-Urbana, B.S., Chemical Engineering
- U.S. Patent and Trademark Office
Honors & Recognitions
Trademark Insider Award, recognizing the top 25 trademark attorneys in the nation (2005)
News & Insights
- Spring 2017 Firm Newsletter, 04.06.2017
- Summer 2016 Firm Newsletter, 07.18.2016
- LinkedIn Pulse, 01.29.2015
- LinkedIn Pulse, 01.26.2015
- International Trademark Association – Impact Studies Committee
What is a patent?
A patent is a legal right that allows an inventor to stop others from copying an invention for a limited period of time. The government grants the inventor this right in exchange for the inventor’s public disclosure of how to make and use the invention.
What types of patents are there?
There are three types of patents: utility, design and plant patents.
Utility patents are granted on articles of manufacture, machines, compositions of matter and processes. The invention must be new, useful, and not obvious to a person having an ordinary level of skill in the related technology.
Design patents are granted on ornamental designs of manufactured articles. The invention must be original and not obvious to a designer having an ordinary level of skill in the related field of design.
Plant patents are granted on plant varieties that are asexually reproducible. The invention must be new and not obvious to a plant breeder having an ordinary level of skill in that field.
How do I get a patent?
Patent rights are granted only after an inventor has filed a patent application and has convinced each country’s patent office that an invention meets all the criteria for patentability.
A utility patent application must contain: (1) a written description of the invention, detailed enough for an ordinary person in the relevant art or technology to reconstruct the invention; and (2) a description of the best version of the invention known to the inventors as of the filing date.
After the application is filed, a patent examiner reviews the application, comparing the invention with prior known technology. Examiners will often initially reject an application because they believe the invention is not patentable.
The applicant and attorney then respond with reasons why the examiner’s initial determination should be reconsidered. Often this process involves amending the application to narrow the scope of protection sought for the invention. If the patent examiner maintains the rejection, the inventor may appeal the decision to an administrative review board and later, if necessary, to the courts.
What is a provisional patent application?
A provisional patent application is an informal patent application filed to establish a priority date. To retain the filing date, a formal patent application must be filed within one year of the filing date of the provisional patent application.
Are there limitations on the right to obtain a patent?
A patent application must be filed within one year from when the invention was first sold, offered for sale, publicly used or publicly disclosed. Otherwise, no patent can be gained no matter how worthy of protection the invention may be. This is called a “grace period” and is not available in other countries.
Who owns a patent?
A patent is a piece of personal property that can be owned, licensed, sold, mortgaged, willed, or inherited.
In the U.S., patent rights are granted only to the first true inventor(s). If there is more than one inventor, they are each joint owners in an undivided interest in the entire patent. Each joint owner, without the consent of the others, may transfer or license her or his right in the patent, without sharing any proceeds she or he may receive. However, a joint owner may not transfer the entire patent without consent of the other joint owners.
When inventions are made by an employee, the patent rights often belong to the employer, depending on the employment agreement between the employer and employee.
Inventions made under government contracts or grants may give the government limited rights under the patent.
What is patent infringement?
A patent is infringed when anyone, without the patent owner’s permission, makes, uses, sells, offers for sale, or imports a patented invention.
Anyone who contributes to infringement (such as a supplier to an infringing manufacturer) or induces infringement of a patent, may also be liable.
Patent infringement can be settled in private negotiations by licensing the rights to an infringer in exchange for royalty payments or other value, such as an exchange of each other’s patent rights.
Patent rights are enforced at law by winning a lawsuit in a trial court. A patent owner might also be able to win a suit with the United States International Trade Commission, if the infringing article is manufactured abroad and imported into the United States.
What are the legal remedies for patent infringement?
Legal remedies for patent infringement include:
- Preliminary and permanent court orders prohibiting continued infringement;
- Punitive damages for willful infringement, up to a total of three times the money damages;
- Attorney’s fees in exceptional cases; and
- Other remedies depending on circumstances.
How is foreign patent protection obtained?
Foreign patent protection is obtained by following the same basic procedures in each country as in the United States. Under international treaties, this can be done by:
- Filing a separate application in each country where patent protection is desired;
- A single application with the European Patent Office, which serves most European countries; or
- An international application under the Patent Cooperation Treaty, to which most industrial countries belong.
Most countries allow an applicant to treat her or his application as if it were filed on the same date as the home country filing date, if the foreign application is filed within one year after the home country application was filed. The benefit of the home country filing date is important because rights in most foreign countries are granted to whoever is the first to file an application on the same invention.
Most foreign countries do not have a grace period for filing an application after an inventor discloses an invention to the public. If foreign patent protection is desired, a patent application must be on file in the applicant’s home country before making any public disclosure of the invention.
Selecting a unique name for your product or service frequently plays an important role in the ultimate commercial success of the product or service. While selecting a mark that describes characteristics of that product or service, such as SPARKLE for glass cleaner, may assist in obtaining initial recognition, it is not possible to prevent other companies from using the descriptive terms to describe features of their products. On the other hand, selecting an arbitrary mark, such as XEROX for copying equipment, requires more effort to develop consumer recognition, but can result in the creation of more valuable rights.
As part of the selection process, we usually recommend that a search be conducted to determine whether there are any other marks that may potentially cause a conflict. Trademark searches thereby enable you to avoid investing time and money in a mark that infringes another party’s rights. On the other hand, if the mark is already in use, a search is usually not recommended. There are two different types of searches.
- The first type is an on-line database search that we conduct from our offices. In this type of search, we review federal registrations, pending federal applications, and state registrations. It is also possible to review company name databases, domain name registrations, and electronic yellow pages. The costs associated with conducting this type of search and reviewing the search results are typically between $600 and $800.
- The second type is a full trademark search, which is conducted by a professional search firm. This firm reviews federal and state trademark databases, company name databases, product databases, domain name registrations and other electronic sources. The search firm then compiles the results into a detailed report. The costs associated with conducting a full trademark search and preparing a detailed opinion reviewing the search results is typically between $900 and $1,200.
Costs Associated with Obtaining a Federal Trademark Registration
While obtaining a federal trademark registration has numerous benefits that are detailed below, there are costs associated with not only preparing and filing the application, but also examining the application. Total costs that are incurred in securing a federal trademark registration are typically between $1,000 and $2,000.
Because of these costs, obtaining a federal trademark registration may not be warranted for all products or services. Please contact us if you want to discuss the appropriateness of securing federal trademark protection in more detail.
Our service fee for preparing and filing an application to register a mark with the U.S. Patent & Trademark Office is $650. There is also an official filing fee of $325 that is payable to the United States Patent & Trademark Office (USPTO) for each class in which registration is sought.
Additional costs are incurred after the federal trademark application is filed. While costs incurred during the examination stage are typically less than the costs associated with filing the application, these costs depend on the issues raised during examination.
If an objection to registration (known as an Office Action) is raised during the examination stage, we will need to prepare and file an appropriate response. When an Office Action is received, we will forward it to you along with our comments regarding responding to the Office Action. If you request, we can also provide you with an estimate of the costs associated with preparing the response.
Advantages of Federal Trademark Registration
Registration is not required in the United States to have enforceable trademark rights. Rather, trademark rights arise from actual use of a mark in connection with products or services. This type of rights is referred to as common law rights.
Even though it is possible to acquire common law trademark rights through use, there are several advantages to federal registration with the USPTO. These advantages include:
- Registration on the Principal Register of the USPTO is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and the exclusive right to use the mark.
- Nationwide constructive notice of registration provides rights against others who subsequently adopt the mark in good faith. Federal registration also precludes geographic expansion of nonregistered parties.
- Ability to stop importation of products bearing marks that would infringe the registered mark by recording the registration with Customs.
- Federal jurisdiction for trademark infringement actions without regard to diversity of citizenship or amount in controversy. Federal remedies for infringement including temporary and permanent injunctions, damages, recovery of profits, and destruction of infringing items.
- Counterfeiting a federally registered mark is a criminal offense.
- Once a mark has been used continuously for five years following registration on the Principal Register, it is possible to request the registration become incontestable. This status precludes others from challenging the registration on the basis of the mark being merely descriptive.
- The only remaining ways to challenge the registration are that the mark is later abandoned, becomes generic, or the registration was obtained by fraud.
Types of Applications
The two primary bases for filing federal trademark applications are based upon actual use and intent to use. To file an application based upon actual use requires that the mark be used in commerce. Token use is not sufficient to justify filing based upon actual use.
To enable companies to effectively reserve marks prior to introduction of a product or service, it is possible to file an application based upon an intent to use. This type of application thereby enables a company to ascertain whether the mark is registerable prior to launching the products or services. Intent to use applications cannot mature into registrations until the mark is actually used and evidence supporting such use is filed with the USPTO. Additional official fees and services fees are associated with preparing and filing the necessary documents to substantiate use of the mark.
Once a mark is registered by the USPTO, the designation “®” should be used to indicate to persons seeing the mark that the mark is registered. There are significant civil penalties for using the registered trademark designation before a registration is obtained. Prior to registration, the designations “TM” (for trademark) or “SM” (for service mark) should be used to indicate that rights are claimed in the mark.
Foreign Trademark Registration
In contrast to the United States where trademark rights derive from use, trademark rights in most foreign countries arise upon application for registration. Unlike patents, there are no strict time limits for filing trademark applications in foreign countries. However, it is advisable to file a foreign trademark application within six months of the United States application so that the foreign application can claim priority to the United States application.
Factors to be considered in deciding whether to seek trademark protection in a particular country are the filing cost, the value of the country as a market for your company’s products, and the likelihood that another party, or even a distributor, would adopt or register the same or a confusingly similar mark.
Foreign trademark application filing fees generally range from $800 to $2,500 per class. In addition to the charges from our foreign associates, there will also be charges with our work in preparing appropriate papers for filing. Our service fee for each application is typically about $600. Similar to United States trademark applications, any subsequent work on the prosecution of the foreign applications will be billed when the charges are incurred.
Domain Name Registrations
We would also like to remind you of the potential importance that domain names play in establishing strong protection for your trademark, as well as market acceptance for your product’s service. In particular, we recommend that your company evaluate whether it is desirable to register one or more domain names corresponding to this trademark as soon as possible after the trademark has been selected, as it is often considerably less expensive to register the domain names rather than having the domain names requested by a third-party company who profits from the business of registering and then reselling domain names. If your company does not currently work with someone for registering domain names, we would be glad to suggest available options.