It is important to select a mark that can be registered as a Federal Trademark prior to introducing the business or product name into the marketplace. Businesses should be very careful in selecting a mark so that they retain the ability to obtain registration and prevent others from using their business, service, or product names.
“(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” or
“(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.”
There are a few patent law exceptions to prohibiting a patent application relating to (1) and (2) above. For example, one exception may apply to a “disclosure made 1 year or less before the effective filing date of the claimed invention”. However, this exception only applies if “the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed… from the inventor or a joint inventor.”
In patent prohibition (1), the term “otherwise available to the public” refers to other types of disclosures of the claimed invention such as, for example, an oral presentation at a scientific meeting, a demonstration at a trade show, a lecture or speech, a statement made on a radio talk show, a YouTube™ video, or a website or other on-line material.
Effective filing date of the claimed invention: This term appears in patent prohibitions (1) and (2). For a U.S. nonprovisional patent application that is the first application containing the claimed subject matter, the term “effective filing date of the claimed invention” means the actual filing date of the U.S. nonprovisional patent application. For a U.S. nonprovisional application that claims the benefit of a corresponding prior-filed U.S. provisional application, “effective filing date of the claimed invention” can be the filing date of the prior-filed provisional application provided the provisional application sufficiently describes the claimed invention. Similarly, for a U.S. nonprovisional application that is a continuation or division of a prior-filed U.S. nonprovisional application, “effective filing date of the claimed invention” can be the filing date of the prior filed nonprovisional application that sufficiently describes the claimed invention. Finally, “effective filing date of the claimed invention” may be the filing date of a prior-filed foreign patent application to which foreign priority is claimed provided the foreign patent application sufficiently describes the claimed invention.
“Hey, but I’ve done research and there is nothing out there EXACTLY like my idea” – Have you said this to yourself after having that magical “stroke of Genius?” The USPTO may agree with you in part based on your idea being “Novel”, but they still may reject your ideas as being “obvious.”
A patent application may be rejected based on any differences being “obvious” even if:
- the subject matter sought to be patented is not exactly shown by the prior art, and
- involves one or more differences over the most nearly similar thing already known.
The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, merely substiting one color for another, or changes in size, are ordinarily not patentable.