Benefits and consequences of provisional patent applications

Many times when clients come to me for assistance, they've either seen or actually used an online invention help company. From my perspective, all these guys ever seem to do is file provisional patent applications. I rarely see the quality of work I'd expect from a  practicing patent lawyer from these online outfits. This is why the USPTO has a "Scam Prevention" page targeted towards invention promotion firms.

Given the bad rap for provisional applications, some patent attorneys flatly refuse to file them. In my experience, however, a provisional application can be a useful tool. This is especially so when the inventor hasn't developed a full plan for how the product will be made on a production scale. Here are the things I explain to my clients about the provisional process:

Provisional Patent Application Option: If your inventive concept is not yet complete, or information turned up in the patent search requires you to design around prior art, you may elect to file a provisional patent application. This application is not examined on the merits by the PTO. Rather, it establishes an early filing date for your inventive concept. The provisional patent application is good for one year, after which you must either file a regular utility patent application or abandon the invention.

Benefits of a Provisional Patent Application: The provisional application gives you a year in which to develop your inventive concept into a marketable or near marketable form. If your invention is already marketable, a provisional application gives you the option to explore market viability for a year before filing a regular utility application. Some of the requirements of a utility application are not present for provisional applications, so provisional applications are somewhat less expensive than utility applications. 

Consequences of a Provisional Patent Application: New inventive concepts developed in the one-year interim period after filing a provisional application many not receive the benefit of the provisional application’s filing date. For this reason, the provisional application needs to be as detailed as possible when filed. A utility application will require significant additional work beyond that performed for a provisional application. The provisional application may also delay the examination of a utility patent application.

In my view, the inventor must weigh the pros and cons of a provisional patent before electing to pursue one. A client must always give informed consent for attorney decisions, and filing a provisional application for every client takes that choice away from the client. This is why invention promotion firms are wrong to use a cookie cutter approach. Likewise, attorneys that refuse to provisionals for any client may also be doing their clients a disservice.

What do you think are the correct circumstances for using a provisional application? 

The wrong way to pick a brand name

In looking back at the firm blog, it looks like I took a full summer vacation from writing here. Truth be told, I've got an interesting new project that's been keeping me busy. Stay tuned for exciting news next month...

Here in south Arkansas, we certainly appreciate a good fish fry or crawfish boil. We've all seen various Louisiana-based products on the shelves, from hot sauce to crawfish boil to fish fry. Here are a few examples:

The hot sauces shown above are all Louisiana-style hot sauces (primarily vinegar and red peppers). You can see from the labels that these producers draw attention to the association with Louisiana and New Orleans. 

Products that use a geographic location in their name (like Louisiana) are considered descriptive. Descriptive is a term of art in the trademark world. A descriptive term can't serve as a trademark unless consumers associate the term with a particular source for the product.

Enter the company that makes Louisiana Fish Fry Products. This company filed a trademark application for their name and logo that appears on their products. The U.S. Patent & Trademark Office rejected the application, finding that the words LOUISIANA FISH FRY PRODUCTS was either highly descriptive or outright generic for the types of products being sold by the company. The company appealed to the Trademark Trials & Appeal Board and lost, and then appealed to the federal appeals court responsible for handling (relatively rare) trademark application appeals. Both the TTAB and the federal court agreed with the examiner's finding that the term LOUISIANA FISH FRY PRODUCTS wasn't capable of signifying source.

The problem for the company is that it will be very difficult to stop imitators from using the company's brand name because it is so descriptive of Louisiana-style food products. A brand name you can't protect isn't much of a brand name.

So, what's the lesson to take away from the Louisiana fish fry case? You need to be careful in selecting the brand name for your products. You want to select a name that's capable of distinguishing your products or services in the marketplace. These types of names can either be arbitrary, like APPLE for computers, or suggestive, like NOBURST for winterization antifreeze. In my opinion, suggestive marks are the best of both worlds, because through imagination, thought, or perception, the consumer reaches a conclusion as to the nature of the goods or services being offered.

How do you come up with your product names?

Chaney Law Firm donates life jackets during Summer Safety program at Perritt Primary School

Perritt Primary School invites members of the community to speak to students about safety during the last week of school. As part of this year's safety week, the Chaney Law Firm spoke to two groups of pre-K, kindergarten, and first graders about water safety. Together with Wal-Mart, the firm gave away 20 life jackets to kids in the school.

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First-grader River Chaney led off the program by introducing the members of the firm. Nathan asked the kids who was excited about summer vacation, and we still don't know who waved their hands harder — the students of the teachers. Nathan asked the kids to tell their summer plans, and there were a wide range of responses: visit the lake, beach, river, or water park; travel to Costa Rica, Sea World, and Magic Springs; and stay in a hotel. All these things involve water, so Nathan spent a few minutes telling the students about his own experiences with water safety. Nathan told of getting fishhooks in his head not once, but twice, as a youngster. The kids suggested he wear a hat and sunglasses while fishing. He also told of getting a bad case of poison ivy on the banks of the river, and how to identify poison ivy.

Hilary went next, and had River tell the kids about a few pictures:

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L to R: The Chaney family; River and Sue E. in the family boat; and River and Nathan blowing bubbles across the water.

Hilary discussed the importance of wearing sunscreen, and told the kids to look for SPF 30 or higher. She asked the kids if they knew about the buddy system, and why it was important to have a friend around when you swim. The kids responded that a friend can tell an adult or lifeguard if you get in trouble in the water. Hilary let the kids know swimming lessons are available this summer at the Arkadelphia Aquatic Park and Henderson State University. Finally, Hilary explained that kids should never swim after dark, since you can't see how deep the water is.

Terri "Manners" Chaney spoke next about keeping safe in the sun. She put on three hats, and asked the kids to tell her which one was best to wear outside. First came an elf hat, which the kids knew wasn't good because it didn't have a bill. Next came a baseball cap, which was a little better. Finally, she donned a wide-brimmed hat, and the kids all could see that was the best choice for the sun. Terri also talked about the importance of drinking plenty of water, and how to identify heat sickness. She also talked about not diving headfirst into water except from a diving board.

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Uncle Taylor served as the surprise guest, and came out in dressed for the part. He went through several steps of getting ready to go out on the water. The kids told him he shouldn't wear long clothes on the water because they might get heavy if he fell in. They also told him to wear his life jacket and to make sure it was cinched tight. They told him to apply sunscreen, which Terri did (because in primary school, your mom needs to rub the sunscreen in). With his hat and glasses, the kids helped Taylor get fully ready for a day on the water. I think he might've left the office early today...

Don "Granddaddy" Chaney went next, and he explained the legal reason why kids need to wear life jackets: because water safety is important, parents can be ticketed if kids aren't wearing life jackets around the water:

The next segment of the program was a joint effort between the Chaney Law Firm and the local Wal-Mart. Together, we donated 20 life jackets and held a drawing to see which children won. River passed out all the life jackets to the winners.

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We had a great time presenting to the kids at Perritt Primary, and wish everyone a safe and fun summer vacation!  

How to read .ptx transcript files on your Mac - Yosemite update

Last year I wrote up a how-to guide installing a .ptx viewer on a Mac for Mavericks and previous versions of OS X. Some steps in that process changed in Yosemite, so here are the steps.

Remember, this is a fairly involved process that takes tinkering under the hood of your Mac. Make sure you're comfortable using the command line. Some of the commands will take a while to run, so it's best to try and multitask while this is going on.

First, install XCode from the App Store. Then, open the Terminal applications (found at /Applications/Utilities/) and run the following command, which installs some command line tools you'll need:

xcode-select --install

Run the following command to agree to the XCode license:

sudo xcodebuild -license

Scroll to the end using the spacebar and type 'agree' to accept the license.

Next, you'll need the Macports package installation manager, available here. Choose the version that corresponds to your operating system, and install the package. When it's finished, run the following command to update Macports to the latest release (warning: this step can take a while, because it has to compile a bunch of code):

sudo port -v selfupdate

You'll also want to upgrade the installed ports (which can also take a while), as follows:

sudo port upgrade outdated

After this, you'll want to make sure MacPorts knows where to look for its files, which are in the /opt directory. Run this line of code to do so (H/T David Baumgold, whose great Wine on Mac tutorial I just discovered):

echo export PATH=/opt/local/bin:/opt/local/sbin:\$PATH$'\n'export MANPATH=/opt/local/man:\$MANPATH | sudo tee -a /etc/profile

Next, we'll use Macports to install Wine:

sudo port install wine

This will take a few minutes for the files to download, compile, and install. After that, we'll have to install a couple of extensions for wine: (1) Mono, an open source version of the .NET framework; (2) a helper application, winetricks; and (3) Windows Media Player. (1) and (3) are required by E-Transcript Viewer 6.2, and (2) installs (3).

sudo port install mono
sudo port install winetricks
winetricks wmp10

During this process, you're going to have some Windows windows pop up, as you would when installing software on a Windows machine. Make the appropriate selections (the default, preferably) to install the software. 

Then, download and install the e-Transcript Viewer app, available here. Download the file, then type the following commands into your Terminal: as follows:

cd ~/Downloads
wine E-Transcript_Bundle_Viewer-6.2.exe

(Pro tip: when you're typing a file name into the Terminal, you can hit the tab key to auto-complete the name). Once you run this program, you'll get a popup telling you to install a couple of prerequisites. Click 'Install'. Check the default values for installation of the E-Transcript Viewer, and complete the installation.

Finally, we'll need to create a shortcut to the installed E-Transcript Viewer application, which is hidden. Open the TextEdit application, and click New Document. Copy and paste the following lines into the document:

#!/bin/sh
wine ~/.wine/drive_c/Program\ Files/RealLegal/E-Bundle\ Viewer/EBundleViewer.exe

Click Format > Make Plain Text. Save the file in the Applications Folder as "E-Transcript Viewer.command". Finally, go back to the Terminal window and enter the following commands so that the script we just created can be executed:

chmod +x /Applications/E-Transcript\ Viewer.command

Now, you should be able to double-click the 'E-Transcript Viewer.command' file in the Applications folder any time you need to open a .ptx file. Here's the result:

If you get stuck at any point in the process, please let me know in the comments and I'll try to help. You can also holler at me @chaneylawfirm on Twitter. We'd also appreciate a follow on our blog at http://www.chaneylaw.com/blog if you found the tutorial helpful, as I put these out from time to time. Thanks for reading.

UPDATED 6-25-2015: Genericized the home directory in the bash script per the comments.

How-to: Hyperlinks in federal court documents on a Mac

I follow Hercules and the Empire, a blog written by a federal trial judge in Nebraska. I was poking around the archives today and found a couple of gems on legal writing, including a list of "Top ten legal writing hints when the audience is a cranky federal trial judge". Judge Kopf suggests we make life easier on law clerks by inserting hyperlinks to caselaw and the electronic record.

I appreciate good legal writing, so I immediately started exploring the process. The Nebraska USDC ECF page has several links and tutorials on how to create hyperlinks in e-filed documents. The tutorials are a really good starting place on the mechanics of how to create hyperlinks. For instance, I never knew you could link to particular pages of PDF documents online simply by adding ?page=<pagenumber> to the end of the link. However, the tutorials identified a few issues that our particular Mac-based workflow would cause, so I thought I'd write up how I addressed the problems.

We use Macs and Microsoft Word in our office. We have Adobe Acrobat 11. Lexis is our legal research provider. From what I can tell, this setup creates at least two issues that requires alternative solutions to that posted in the Nebraska USDC hyperlink manual.

Problem 1: Clean Lexis Links

Solution: Use the Copy with Cite link from your Lexis case page to get a permalink to the document.

Pro Tip: Instead of the page number of the beginning of the opinion, you can use the page number for the pinpoint cite. So, instead of: "http://www.lexis.com/research/xlink?app=00075&view=full&searchtype=le&search=347+Ark.+423", the last part becomes "347+Ark.+429".

Explanation: For Lexis links, the tutorial suggests copying and pasting the link from the address bar in the browser; however, the tutorial also notes some attorneys have difficulty using this method. In looking at the url for a case I pulled up in Lexis, I can tell it will cause problems simply because it contains a lot of HTTP session information that will expire in a few hours.

The hyperlink needs a permanent link to the Lexis document. The workaround is to click the (Copy w/ Cite) link at the top of the Lexis page for your document. This will open a popup window. Make sure the Copy reference as hyperlink box is checked, and you can then click the text and copy the citation with the hyperlink embedded. Here's a screenshot showing the Copy w/ Cite link and the popup:

When you paste into Word, you might have to click the little clipboard icon that pops up and select "Match destination formatting...", like this:

You'll need to work on the cite to get it in Bluebook format (de-bold and italicize the caption), unless your an anarchist. This will give you a permanent link to Lexis in your Word document.

Problem 2: Exporting Links to PDF

Solution: This requires a couple of different workarounds for me, as follows:

• Upgrade Adobe Acrobat to version 2015 (this is the Document Cloud version).
• Use File > Save As Adobe PDF... in Word 2011, not Word 2016 Preview.
• Don't put hyperlinks in footnotes for now.

Explanation: While reading through the Nebraska USDC tutorial, I saw that you can't simply do a File > Print > Save as PDF from Word because it doesn't preserve the links. I tried it, and sure enough, the links didn't work. I also tried the Save as Adobe PDF from the File > Print > Save as... menu, but that didn't work either. Finally, File > Save As... and selecting PDF was a dud too.

I found this Adobe support page discussing the link exportation issue. I wound up upgrading Adobe Acrobat to the latest version in order to able to embed links in a PDF created from Word. They now work in the body of the document, but not the footnotes. I like using footnotes for citations, but I'll have to modify my behavior until this problem gets fixed.

Of the three ways to create the PDF from Word suggested on the Adobe forum, I could only get one to work. I figured out this is due to having the Office 2016 Preview installed on my computer. The File > Save as Adobe PDF link works in the 2011 version of Word, but the link between the programs appears to be broken in the 2016 preview.

Other Features...

According to the Nebraska USDC tutorial, you can link to particular documents previously filed in your case simply by inserting the link from the email you received when the document was filed.

The really cool feature, I think, is linking to documents you're currently filing. I haven't tried this yet. If you've been able to do it, or have discovered any issues with the process on a Mac, please drop me a line @chaneylawfirm on Twitter. We'd also appreciate a follow on our blog at http://www.chaneylaw.com/blog. Thanks for reading.