Page 73 - Akerman | 2016 Guide to Doing Business in Florida

After a proper application is filed, the application is assigned to an examiner
with knowledge of the particular subject matter. The examiner makes a
thorough review of the application and conducts a search of existing
concepts in the relevant area to determine whether the invention meets the
requirements of patentability. The examiner will make two determinations of
patentability on the merits of the invention. First, the invention claimed cannot
be disclosed completely within a single prior art document. Second, the
invention cannot be disclosed in part in two or more prior art documents
which would have been obvious to one of ordinary skill in the art. U.S. patent
law was recently updated on March 16, 2013, to expand the definition of prior
art to include all documents “available to the public,” including documents in
the U.S. and abroad, and evidence of public use and offers for sale in the
U.S. and abroad. The patent review process generally takes from 18 months
to three years or longer. Rejection of a patent application by the examiner may
be appealed to the Board of Patent Appeals. Decisions of the Board of
Patent Appeals may be appealed to the federal courts. Provisional patent
application requirements are less stringent than a regular patent application.
For instance, the oath or declaration of the inventor and claims are not
required and the application is held for the 12-month period without
examination.

(e) Markings. After a patent application has been filed, the product made in
accordance with the invention may be marked with the legend “patent
pending” or “patent applied for.” After a patent is issued, products may be
marked “patented” or “pat.,” together with the U.S. patent number. Marking is
not required, but it may be necessary to prove marking in order to recover
damages in an infringement action because damages are only recoverable
after a finding of infringement and actual or constructive knowledge of the
patent. The marking requirement may also be met by marking the patented
product with an internet address of a web page that identified the patent
numbers associated with the product.

(f) Rights to Patented Inventions. Disputes sometimes arise between employers
and employees over the rights to inventions made by employees during the
course of employment. Because of this, employers often require employees
to execute formal agreements under which each signing employee agrees
that all rights to any invention made by the employee during the term of
employment will belong to the employer.

7.1.3 Federal Trademarks
This area is governed by both state and federal law.

(a) In General. A trademark is often used by a manufacturer to identify its
merchandise and to distinguish its merchandise from items manufactured by
others. A trademark can be a word, a name, a number, a slogan, a symbol, a
device, or a combination. A trademark should not be confused with a trade
name. Although the same designation may function as both a trademark and
a trade name, a trade name refers to a business title or the name of a
business; a trademark is used to identify the goods manufactured by the
business. A business that sells services rather than goods may also use a

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