#booleanip

Boolean IP provides you a one stop solution for all your Trademark needs. From Searching and Registering to Infringement handling, Boolean IP has an extensive experience of providing services in more than 200 Trademarks. We at Boolean IP, in addition to ensuring the uniqueness of your brand, also make sure that you get the optimum returns for your trademark.

The number of patent filings per year keeps surging globally with each coming year because of the increased pace in continuously evolving technologies and market competition. Many patent applications for similar inventions are being filed and the burden on patent examiners to distinguish between those keeps on piling. As a result, many patent applications are rejected because of similar existing patents or prior arts and many non-novel or inventive-step lacking patent applications are erroneously granted after lack of a thorough prior art search. Now the second case may seem beneficial to the assignee of the patent in the initial stages before product launch or licensing-out of the patent, it may pose threat to the validity of the patent at a later stage. In the nutshell, the effort or money invested in granting of the patent or other stages after grant may go futile if the patent gets invalidated.

It is therefore imperative for inventors to know the basics of prior art search during their invention research to understand existing similar technologies or patents. There are many available patent as well non-patent databases that provide reliable prior art information. Most of those allow searching by paying certain subscription fee. However, there are many freely available databases like Google Patent as well that provide decent coverage of main patent jurisdictions. In most free databases, the searching can be done similar to what we do in normal Google search. We input a simple sentence query and the database provides all the relevant hits that include some of the keywords from your query. You have to be lucky enough to get the bang-on prior art using such databases depending on the technology.

However, when it comes to running complex search queries, especially in domains related to Life Sciences and Chemistry, it becomes difficult to identify very similar prior arts on freely available databases. For such cases, paid databases come handy. Most of the paid databases use similar kind of operators (or rather say logic) to identify closely related prior art. The most common ones are the Boolean operators such as AND, OR and NOT. Here are some simple examples:

Touch AND Screen: This search finds patents containing both the terms “touch” and “screen”.  AND operator always narrows down your search by necessarily including all the terms included in the search.

Touch OR Screen:  This search finds patents that contain either of the terms “touch” or “screen”.  OR operator always expands your search by including atleast any one of the terms included in the search.

Touch NOT Screen:  This search finds patents that contain the term touch but not screen.  NOT always excludes documents with the specified term.

Depending on your requirement, you may use any of these three operators mentioned above. AND operators are mostly used to identify the bang-on prior art documents that disclose all the terms that you have included in your search. OR operators are mostly used to play around safe when the search is not outputting bang-on documents after using AND operator. Using OR operator can provide similar (not bang-on) documents that gives you an idea of your technology and helps you understand the distinguishing aspects of your invention. However, it is recommended while performing novelty searches to initiate the search in the direction from narrowed (i.e. using AND operator) searches to broader (i.e. using OR operator) searches. While conducting Invalidity and FTO searches, it becomes important that not a single similar invention disclosing document is missed. For these cases, the searches must be run broadly (i.e. using OR operator) followed by AND operator to remove the unwanted results. Although the only issue with using OR operator is that it outputs many irrelevant junk documents, it is always recommended to discard the unwanted results from a big chunk than to not knowing what exists. All modern patent search engines have sophisticated relevancy algorithms under the hood. Construct your query containing 10 or more terms, and OR them together. Of course, you’ll likely get well over a million documents that contain at least one of the terms in your big OR’ed query, but the search engine’s relevancy algorithm will return the best matches first. Just make sure your default sort is by the relevancy column. The best matches are those documents that contain the most term hits with the highest frequency. It is likely that only the first hundred or so documents will be truly relevant.

This process, which leverages the Boolean OR operator and the relevancy-sorting algorithm, is repeatable for any technology. Conceivably, you could even do this type of search in a language that you don’t even speak or a technology with which you have no familiarity and still get highly accurate results. Keep in mind that while it is effective, and repeatable, it is not something you can do in 10 minutes. Some veteran patent searchers spend a day or more refining and testing a query, but once it is done, they can save it and reapply it over and over.

If you have a business name, product name, tagline, or logo that you use regularly, you may have common law trademark rights—even if you have never registered your trademarks with any governmental agency. An unregistered or common law trademark is an enforceable mark created by a business or individual to signify or distinguish a product or service. Which means an unregistered trademark upto some extent can protect your brand within the scope of your geographical market or practice area.

Most people (including me until few days ago) believe that just a prior adoption and usage of a trade name for their product or services is sufficient to protect their brand in their respective practice areas.

This is true in those cases where you have done all your homework while opening your business with utmost secrecy and no other similar mark exists during adoption and starting the business.

It can be deceiving when someone specifically and intentionally wants to copy your brand name and have it registered before you went for trademark registration. A common law or unregistered trademark is legally weaker in such cases when compared with a registered trademark granted by statute.

Although, since in most countries the trademark rights stay with the person or company that started the business first as per common law right; a person or company that has been granted the registered trademark for similar trade name can be annoying specially in cases where they have filed a trademark infringement lawsuit against you.

Even if you were the first adopter and user of your brand name, the person or company owning the registered trademark has an upper edge to exercise their rights until you invalidate their trademark on the basis of your prior adoption and usage. The only catch in such cases is that when a lawsuit is in place, the judge may grant interim injunction against you till the pendency of the suit. Which means you cannot produce, sell, market or conduct any activity that involves exploitation of the trademark. In India, an average trademark lawsuit can go for more than 1.5 years. So, even if you win the lawsuit after 2 years or so, your market won’t be the same or you will find yourself out of the market.

So, what should be done to avoid such hassles so as to keep your focus on building your business.

Always conduct a thorough global trademark search along with common law searches to look for similar brand names.

Always apply for a trademark while opening your business. In India, it costs only Rs. 4,500 for trademark applications by Individual/ Startups and Small Enterprises.

Once you have applied for the trademark, make sure to start using it as soon as possible. In India, a registered trademark gets cancelled for no usage till after 5 years of approval.

Keep yourself updated for any new entity having a similar brand to yours.

When someone copies your trademark, make sure to send a notice to the party notifying them of your exclusive right. Not doing so will be used against you in case of a dispute or lawsuit.

Also, if someone has been granted a trademark similar to yours, ensure to file a rectification against that trademark. Not doing so will be used against you in case of a dispute or lawsuit.