The definitions for the specialty practice area of intellectual property can be found in Rule 6-26.2.
Definition of Patent Application Prosecution
Under Rule 6-26.2(a), the term “patent application prosecution” is defined as the practice of law dealing with patent rights, representing clients in proceedings before the USPTO,and covers all aspects of:
- the U. S. Patent Statutes, 35 U.S.C. §§ 1- 376, as amended;
- the Rules of Practice in Patent Cases, 37 C.F.R. §§ 1.1 – 1.997, as amended;
- the American Inventors Protection Act of 1999;
- United States Patent and Trademark Office (USPTO) rules of practice;
- the Manual of Patent Examining Procedure (MPEP);
- the Patent Cooperation Treaty (as modified by any later court decisions or Official Gazette notices);
- the Assignment, Recording and Rights of Assignee, 37 C.F.R. §§ 3.1 – 3.85, as amended;
- the Secrecy of Certain Inventions and Licenses to Export and File Application in Foreign Countries, 37 C.F.R. §§ 5.1 – 5.33, as amended;
- the Register of Government Interests in Patents, 37 C.F.R. § 3.58, as amended; and
- Representations of Others before the USPTO, 37 C.F.R. §§ 10.1 – 10.170, as amended.
Definition of Patent
Under Rule 6-26.2(a)(1), the term “patent” is defined as "a governmental grant derived from the United States Constitution to encourage innovation and a form of protected personal property under federal statute set forth in title 35 of the United States Code that guarantees the holder of a U.S. patent a right to exclude others from making, using, offering to sell, selling, or importing an invention for a statutory period of years."
Definition of Patent Matters
Under Rule 6-26.2(a)(2), the term “patent matters” are defined as the areas of knowledge required of lawyers registered to practice before the USPTO, including:
- rules, practice, and procedure;
- understanding how to draft claims and the ability to properly draft claims;
- knowledge about preparation and prosecution of patent applications based on education in and practical experience in engineering or science;
- understanding the application of patent laws to that endeavor;
- preparation of patentability opinions;
- filing and prosecuting patent applications, interferences, and re-issuances;
- preparing opinions concerning the validity or infringement of patents;
- prosecuting patent applications at the USPTO and in foreign jurisdictions; and
- the re-examination of patents.
Definition of Patent Infringement Litigation
Under Rule 6-26.2(b), the term “patent infringement litigation” is defined as the practice of law (including substantive law, evidence, and procedure) dealing with the litigation of patents in federal district courts and appeals to the federal circuit of the United States of America, and includes:
- Service of Process, 37 C.F.R. §§ 15.1 – 15.3; and
- Testimony of Employees and the Production of Documents in Legal Proceedings, 37 C.F.R. §§ 15.11 – 15.18.
Definition of Infringement of a Patent
Infringement of a patent is a tort giving rise to a federal cause of action for a form of trespass.
The grant of a patent by the USPTO carries with it the presumption of validity, including compliance with federal statutes.
Definition of Invalidity as a Defense to a Claim for Patent Infringement
Invalidity is a defense to a claim for patent infringement and may be based on a number of factors, including:
- anticipation;
- obviousness;
- derivation;
- failure to disclose “best mode”;
- estoppel and laches;
- ineligible subject matter;
- lack of utility or operability;
- lack of enabling disclosure;
- claim indefiniteness;
- double patenting;
- inequitable conduct;
- violation of antitrust law; and
- non-infringement.
The term “adjudicated decision” is defined as a decision resulting from a proceeding in which:
- a tribunal rendered a decision on a motion for preliminary injunction following an evidentiary hearing involving live testimony;
- a tribunal rendered a decision on a motion for summary judgment;
- a tribunal rendered a decision on significant issues of patent law following briefing (e.g., a Markman hearing, a Daubert hearing, etc.); or
- a tribunal or jury rendered a decision following a trial, or the federal circuit court of appeals rendered a decision following an appeal.
A single proceeding may generate multiple adjudicated decisions and an applicant receives credit for 2 of these qualifying adjudicated decision as a separate contested matters.
Definition of Trademark Law
Under Rule 6-26.2(c), the term “trademark law” is defined as the practice of law dealing with all aspects of the Trademark Act of 1946 (the “Lanham Act”), as amended, 15 U.S.C. §§ 1051-1127, Trademark Counterfeiting Act of 1984, as amended, 18 U.S.C. § 2320, Tariff Act of 1930, as amended, 19 U.S.C. §§ 1337 and 1526, Chapter 495 of the Florida Statutes, as amended (the “Florida Trademark Law”), and common law principles.
Those common law principles related to trademark law include:
- advising clients as to ownership, registration, transfer, validity, dilution, enforceability, and infringement of trademarks in the state of Florida, the United States and internationally;
- representing clients in proceedings before the USPTO and the Florida Department of State; and
- representing clients in proceedings in federal or state courts, or in arbitration, relating to the ownership, registration, licensing, transfer, validity, dilution, enforcement, and infringement of trademarks.
Definition of Trademark
The term “trademark” is defined to include trademarks, service marks, certification marks, and collective marks. Each of these forms of marks has the meaning given in the Florida Trademark Law, Fla. Stat. § 495.011(1)-(4).
The term “trademark” is further defined to include trade dress as that term is used in the Restatement Third, Unfair Competition, Section 16, and domain names as that term is used in the Lanham Act, 15 U.S.C. § 1125(d).
Definition of Substantive Refusal
The term “substantive refusal” is defined as a refusals of trademark applications during ex parte USPTO prosecution under Section 2 of the Lanham Act, 15 U.S.C. § 1052.
Definition of Copyright Law
Under Rule 6-26.2(d), the term “copyright law” is defined as the practice of law dealing with the protection of the works of the human intellect (literature, music, art, computer programs, etc.) under the copyright laws of the United States, including:
- subject matter;
- ownership;
- duration;
- registration;
- formalities;
- exclusive rights;
- transfers and licensing, including the rights and obligations of parties, appropriate terms and conditions in licensing contracts, antitrust and misuse constraints, international licensing considerations;
- contested matters relating to claims of infringement of copyrights and to disputes regarding the authorship, ownership, licensing, and transfer of copyrighted works, including infringement actions and defenses, remedies, jurisdiction and venue, jury considerations, federal preemption of state law;
- the Copyright Acts of 1909 and 1976, as amended;
- recent amendments to copyright law such as the Digital Millennium Copyright Act; and
- international aspects of copyright, including the Berne convention and other treaties on copyright and related subjects.
The primary federal copyright law is contained in Title 17 of the United States Code.
Generally, the practices that the copyright law is concerned with involve, but are not limited to, registration, licensing, transfer, and protection of copyrighted works.
A single proceeding may generate multiple adjudicated decisions and an applicant receives credit for 2 of these qualifying adjudicated decisions as separate contested matters.
Definition of Intellectual Property Law Certification Committee
The term "Intellectual Property Law Certification Committee" is defined as a committee consists of 9 members, including a minimum of 3 registered patent lawyers with experience in patent application prosecution, 2 members with experience in patent infringement litigation, 2 members with experience in trademark law, and 2 members with experience in copyright law.
