Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

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Good Patent/Bad Patent?

Judging the quality of a patent application is very difficult, even for an expert.  For non-patent attorneys, discerning a good patent from a bad patent is probably impossible--at least unitl its too late.

In my opinion, a good patent describes the kernel of the invention.  That is, the core or the seed, the must fundamental part of the invention.  When the patent claims focus on the kernel, the invention will be clear to the examiner and the resulting patent will exclude competitors.

But isn't claiming the kernel obvious?  Don't all patent attorney write patent applications like this?

No.  Many patent attorneys take asimpler route.  A patent application can be written more quickly by simply listing the parts of a device, describing their connections and interoperation, and then writing a claim that describes the preferred embodiment.  However, such a patent application may not capture the fundamental principals (i.e. the invention) that is embodied by the device.  As a result, the kernel may be unprotected and competitors will be able to create alternate embodiments that rely on the underlying invention.

That sounded too much like lawyer speak.  Let me use an example.  Say, your invention is a better mousetrap.  The device is a foam block covered with adhesive and a piece of cheese to which the mouse get glued.  A superficial patent claim might read, "I claim: 1.  A block, adhesive applied to said block, and bait disposed on said adhesive for attracting a pest."  The problem is that a competitor might avoid that claim by placing an intervening layer of material, for example a paper label) between the block and the adhesive.  A better patent attorney would try to find the kernel of the invention.   The invention at its most basic may be using adhesive (not a spring loaded mechanism) for capturing a pest.  So, a better claim might be "I claim: 1. A method of trapping pests, which comprises: applying an adhesive to a surface, and adding bait for a pest to the surface."  This claim would prevent the label alternative discussed above.

The point is a good patent attorney should  be working with you to isolate the kernel of your invention.  If the attorney says, just give me a prototype and I will bang it out, you may be headed for trouble.

For similar tips for patenting your invention and chooding the right attorney, use the subscribe link in the header of this page.




Be Careful When Choosing a Lawyer for your Arbitration

The Miami Herald published an article, "Arbitration Cases a Growing Revenue Stream for Law Firms."  The article discusses that parties entering transactions and contracts, particularly, international transactions, are providing that disputes be solved by arbitration.  The advantages are speed of resolution and guaranteeing a sophisticated forum (i.e. avoiding a foreign court with an underdeveloped judicial history).

Daniel Vielleville and Andrew Riccio are lawyers in my firm's international arbitration group.  Daniel said the article did not stress one of the biggest advantages to arbitration: limitations on the scope of discovery and the associated financial saving.  Daniel also said the article forgot to discuss the added cost of hiring the actual arbitration panelists.  Andrew said the article failed to stress that arbitration provides a neutral forum, even when the parties are both from mature, sophisticated jurisdictions.

I see the article differently.  I see it as a hidden, cautionary prognosis.  The article's title emphasizes law firm revenue.  Law firms reading the article will be inspired to throw lawyers into practice groups and to include arbitration clauses for the purposes of increased firm revenue and not necessarily better client outcomes!

So what should a client do?  Do not automatically include arbitration clauses; weigh the alternatives of arbitration versus traditional litigation and then include an arbitration clause if the balance favors arbitration.  Vet your arbitration attorney before hiring him or her.  How long has he or her been practicing in this field?  What are examples of arbitrations that they have tried.  Arbitration attorneys tend to be scholarly: what articles has he or she written?

Check out the arbitration group at Assouline & Berlowe, P.A.

Read more here: http://www.miamiherald.com/2013/06/02/v-print/3429905/arbitration-cases-a-growing-revenue.html#storylink=cpy

Arbitration cases a growing revenue stream for law firms

Read more here: http://www.miamiherald.com/2013/06/02/v-print/3429905/arbitration-cases-a-growing-revenue.html#storylink=cpy

Google Penguin 2.0 / Keyword TM Infringement

Google is always looking for ways to improve its search results and to prevent others from gaming their algorithms. 

To that end, Google deployed its new SEO guidelines.  If you are involved with SEO, you should check out Google's video on where they are going with their algorithms (i.e. Penguin 2.0):


Now bringing this back to trademarks...

Webmasters should not use another's trademark as a keyword or metatag on their own website.  Imagine coke.com should not be using "Pepsi" as its keyword.  Using another's trademark, might be an act of infringement and could lead to liability for trademark infringement.  A third party's complaint might injure your legitimate page rank in Google.

If you notice a competitor using your trademark (registered or unregistered), the competitor is probably committing trademark infringement.  If you have a registered trademark, you can submit a complaint to Google and have the offending site removed.  If you do not have a registered trademark, you can enforce your common-law trademark rights judicially.


USPTO Closed Monday May 27, 2013, for Memorial Day

The United States Patent and Trademark Office (USPTO) is closed on Monday, May 27, 2013, in observance of Memorial Day.  All deadlines that are due during the weekend or Monday are due on Tuesday May 28.

The offices of Assouline & Berlowe, P.A. are closed as well.


Trademark Watch Service--No Fee through June 2013

Trademark watch services are the most underutilized service by trademark owners.

A trademark watch service monitors a database for similar trademarks and sends a notice to the search owner.  Trademark owners can use trademark watch services to monitor when a third-party files a similar trademark.  Applicants who receive early notice are often less invested in their trademark and are more willing to adopt a different mark.  Trademark owners can use trademark watch services to detect when a similar trademark application is published for opposition.  The trademark owner can be assured to file an opposition within the thirty-day window.  Trademark owners can use watch services to monitor foreign filings.  Watch services even can be configured to monitor domain name registers, corporate name registers, and state trademark registers.

Watch services are hired on an anual basis and start as low as $240 per year.

To encourage the adoption of watch services, I will charge my existing customers no fee, just the cost, for a trademark watch service through the end of June, 2013.

Do not be a trademark owner who says, "I wish I knew sooner about that infringer."  Hire a watch service.