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Leveraging through Software Patents
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Patentability of Software
The question of whether software is patentable dates back to the 1970s. The United States Patent and Trade Mark Office (USPTO) historically had been reluctant to grant patents on inventions relating to computer software. Their rationale was that patents could only be granted to processes, machines, and articles of manufacture and compositions of matter. Patents could not be granted to scientific truths or mathematical expressions of it. The USPTO viewed computer programs and inventions containing or relating to computer programs as mere mathematical algorithms, and not processes or machines.
In the 1980s the United States Supreme Court forced the USPTO to change it’s position. Diamond vs. Diehr, decided in 1981, provided the first instance in which the US Supreme Court ordered the USPTO to grant a patent on invention related to Computer Software. In this case, the invention related to a method for determining how rubber should be heated in order to be best “cured”. The invention utilized a computer to calculate and control the heating times for the rubber. However, the invention (as defined by the claims) included not only the computer program, but also included steps to heating rubber, and removing the rubber from the heat. The Supreme Court stated that in this case, the invention was not merely a mathematical algorithm, but was a process of molding rubber, and hence was patentable. This was true even though the only “novel” feature of this invention was the timing process being controlled by the computer.
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In the early 1990s, the Federal Circuit Court in the United States, which is the highest court for Patent Matters other than the Supreme Court stated that, if the invention utilizes the computer to manipulate numbers that represent concrete, real world values (such as a program that interprets electrocardiograph signals to predict arrhythmia or a program that analyzes seismic measurements), then the inventions relating to those real world concepts is patentable.
In 1995, the U.S.P.T.O. decided it was time to develop guidelines for patent examiners that reflect these recent court decisions. After releasing draft versions of the guidelines for comment, the U.S.P.T.O. adopted guidelines for U.S.P.T.O. examiners to determine when a  software related invention is statutory and therefore patentable.
Patent Protection vis-Ã -vis Copyright
Bitlaw a comprehensive website on Intellectual Property states that the primary benefit of protecting computer software through the patent system is the strength of protection provided by the patent laws. An owner of a patent may prevent all others from making, using, or selling the patented invention. In connection with software, an issued patent may prevent others from utilizing a certain algorithm (such as the GIF image compression algorithm) without permission, or may prevent others from creating software programs that perform a function in a certain way.
In contrast, copyright law can only prevent the copying of a particular expression of an idea. In connection with computer software, copyright law can be used to prevent the total duplication of a software program, as well as the copying of a portion of software code (both of which are examples of “literal infringement”). In addition, copyright does provide some protection against non-literal infringement, such as the near duplication of screen displays, and the creation of “cloned” software. However, courts have recently been reluctant to interpret copyright protection of computer software in a broad manner. In addition, the basic tenet of copyright law is that copyright will protect only the expression of an idea, and not the idea itself. Consequently, copyright law will not prevent the creation of a competing program that utilizes the same ideas as an existing program.
Need for Patent Protection
In recent years, the United States Patent and Trademark Office (USPTO) has granted a rapidly increasing number of patents for software-related inventions.
In recent years, the United States Patent and Trademark Office (USPTO) has granted a rapidly increasing number of patents for software-related inventions. According to the Software Patents Institute in the United States, thousands of “true software patents” are issued every year, covering such areas as business software, expert systems, compiling functions, operating system techniques, and editing functions. At the same time, software technology has continued to advance, using combinations of previous advances in order to create new goods, services, and production processes.
Regardless of one’s opinion on the issue of whether software-related patents are good or bad for society, the fact remains that a rapidly increasing number of software companies are filing software-related patent applications every day. This creates a need for software companies to begin developing programs and procedures to protect their intellectual property through the patent system.
India is emerging as a world leader in the field of software technology. The IT software and services industry in India grossed an annual revenue of Rs. 37,760 crore (US$ 8.26 billion) during 2000-01, according to the annual industry survey released by the National Association of Software and Service Companies (NASSCOM), the apex body of software, e-commerce and IT services industry in India.
Mr. Phiroz Vandrevala, Chairman, NASSCOM while releasing the highlights of Nasscom’s survey said, “the interesting highlight of 2000-01 was that one out of every four global giants, outsourced their `mission critical software requirements’ to India”. Mr. Phiroz Vandrevala further said, “The Indian software industry still requires moving faster on the value chain ladder and getting more involved in strategic consulting, brand management, Research & Development and providing more web based and e-commerce kind of interactive services to the customers”.
Hence the need to protect our Intellectual Property Rights will be more keenly felt once the Indian Software Industry is well on its way to creating a niche as a mature developer of hi-tech software products.
Legal Protection
The Indian Patents Act, 1970 does not explicitly exclude patenting in computer programs. Section 2(1)(j) of the Indian Patents Act, 1970 defines “invention” as any new and useful
i)Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â art, process, method or manner of manufacture;
ii)Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â machine, apparatus or other article;
iii)Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â substance produced by the manufacture
As per the present legal interpretation of the above definition of the invention, the patentable subject matter in addition to being novel and useful, should be about manner of manufacture and it must result in a non-living and tangible thing. From this explanation, it can be inferred that software, as such, in the form of a mathematical algorithm may not be a patentable subject matter as it is not about manner of manufacture and it does not result in a tangible thing.
This situation changes when software is combined with a machine/computer and the machine/computer under the influence of the software, becomes a ‘novel’ machine/computer and this becomes patentable subject matter.
Contrary to popularly held belief that software related patents are not permitted by Indian Patent Office; there are several instances where software related patents have been granted by the Indian Patent Office. One example is the Software related patent no 176178 granted to IBM, USA for “System for Creating an Application Program Package’” by the Indian Patent Office.
Proposed Changes in the Law
The Patents (Second Amendment) Bill, 1999 to the Indian Patents Act, 1970 has been brought out in the light of the TRIPS Agreement and to make the Act a modern, harmonised and user-friendly legislation. However as far as Software Patenting is concerned, the proposed amendments to the act may be considered a retrograde step as it explicitly excludes computer programs from patentability.
This becomes evident if we consider the non-patentable subject matter, which have been specifically included by way of addition to Section 3 (of Indian Patents Act, 1970), which deals with non-patentable inventions. The proposed bill in addition to other non-patentable subject matter excludes “a mathematical or business method or a computer program or algorithms” from patentability.
Once these amendments are affected into the Act, patenting in software will become impossible as compared to the present legal position where the Indian Patents Act does not exclude, explicitly, computer programs from patenting.
Leveraging through Patents
Among companies with patent portfolios, it is a very common practice for one company to offer to cross-license one or more patents of its own when accused of infringing a patent belonging to another company. Through this practice, the patent assets of both companies are increased.
Small and medium software companies can benefit from patenting in software by reaping profits through licensing their patents to bigger corporations. In fact, lack of patent protection makes it easier for bigger corporations to copy ideas from the software developed independently by small and medium software companies.
Thus, software companies should begin evaluating the best internal procedures for identifying potentially patentable ideas and pursuing patent protection for such ideas. Since software-related patent applications are often relatively expensive and time-consuming, appropriate business decisions should also be made to support such an endeavor.
Urgent Needs
While making provisions for patenting in some form in the Indian Patents Act, we must also address the procedural realities of the Indian Patent Office. The facilities at four branches of the Indian Patent Office must be strengthened so that examiners are able to conduct an effective search while deciding the novelty and inventiveness of Software related inventions. The Patent Office should [...]
Archive for March, 2010
Leveraging Through Software Patents
5 Things Every Business Owner Should Know About Trademarks
We are often asked what is a trademark, do I have to register it before I use it, and other rather straightforward questions about mark usage in the U.S. and abroad. In our experience here are five (5) simple facts every business owner should know about trademarks:
1. What is a Trademark?
A trademark includes any word, name, symbol, or device used in commerce to identify the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name such as Coca-Cola® for beverages, the Nike swoosh for shoes, and FedEx® for package delivery services.
2. Can I Reserve a Trademark Before I Use It?
Yes. A trademark can be “reserved” with the U.S. Patent and Trademark Office by filing an Intent-to-Use Application for the trademark. Although an Intent-to-Use Application requires additional paperwork to be filed during the Registration Process, it permits persons to reserve a trademark for future use while their business, brand, or product line is developed.
3. Should a Trademark Search Be Performed to Make Sure my Trademark is Available Before I File an Application to Register the Trademark or Begin Use Thereof?
Yes, although a search is not required. Trademark Research allows you to verify that your proposed mark is not in use by another and is available for you to use.
4. Do I Have To Register a Trademark to Use a Trademark?
No. However, federal registration has several key advantages which make it important to obtain a registration especially to Enforce a Trademark and preclude others from using your mark or similar marks thereto. A federal trademark registration provides:
* Constructive notice nationwide of your claim of ownership of a trademark;
* Evidence of ownership of the trademark;
* Jurisdiction of federal courts to Enforce a Trademark may be invoked;
* Registration can be used as a basis for obtaining Registration in Foreign
Countries;
* Registration may be filed with U.S. Customs Service to prevent importation of
infringing foreign goods.
5. Is a U.S. Federal Registration Valid Outside the U.S.?
A U.S. Federal Registration only protects your mark here in the U.S. However, any trademark owner with an application filed in or a registration issued by the U.S. Patent and Trademark Office can extend protection of that trademark into over 71 other countries through a treaty known as The Madrid Protocol.
The Trademark Company
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Tags: About, Business, Every, Know, Owner, Should, Things, Trademarks 
No Comments »Copyright Infringement Cases Can Teach Us To Obey Copyright Laws
Copyright infringement cases can be both costly and time consuming. Considering copyright infringement is something that isn’t as easily defined as theft or speeding, there are numerous copyright infringement cases changing the way copyright law is viewed in the U.S. By reviewing a few of these copyright infringement cases, you can get a better idea of what is, and what is not, acceptable use of copyrighted works.
As a forward, however, you’ll need to know something about copyright law. Most copyright lawsuits are brought to the courts because a copyright owner has found their copyright is being used outside the copyright laws. This usually means the copyright holder hadn’t been asked for permission to use the work; or if they had, the work is not being used in an agreed-upon context or they have not been paid royalties. The copyright infringement cases, listed below, sample of what goes to the Supreme Court in copyright infringement.
Feist Publications v. Rural Telephone Service Co (6th Cir. 1996)
This copyright infringement case was brought to the Supreme Court in 1996 regarding the copyright of a database. The Supreme Court, in this instance, decided that compilations of data (such as in a database) are only protected by copyright when they are “arranged and selected in an original manner.” Although the level of originality needed to make the database copyright-able is not very high, the pages of a directory (such as a phone book) are not protected because the data contained therein is arranged geographically, then alphabetically. Because of this, the data was not original enough to warrant a copyright infringement charge. The competing telephone company was allowed to tap into their competitors’ database and use that data in their own work without liability.
Princeton University Press v. Michigan Document Services, Inc (6th Cir 1996)
This case has to do with the Fair Use law, which is defined in the Copyright Act of 1976, 17 U.S.C. § 107. In this case, a photocopying service was sued for copyright infringement for making “course packs” for the University of Michigan. In this case, a course pack was a group of reading materials assigned by a professor — then the course pack was bound together by a professional copy shop.
In the Fair Use system, there is a system available for payment of copyright fees to publishers whose works are used in course materials. The printing shop owner refused to pay the copyright cost. When it went to the Supreme Court, they analyzed the Fair Use code and found that it was NOT Fair Use, and the printing shop had to pay the copyright costs.
As you can see, copyright infringement cases are cases in which someone violates the rights of a copyright owner, as provided by 17 USC §106, or of the author as provided in §106A. These copyright infringement cases can be taken to either criminal or civil court, and can carry with it a hefty fine.
Copyright infringement cases are brought upon people who violate copyrights every day. In recent times, you’ll find many copyright cases in relation to electronic copyrights — such as those you’d find on a website or PDF file, as well as other digital media such as music and audio files.
It’s probable that you’ve seen copyright cases brought against the common person — such as a child or family — for downloading digital music in the form of MP3s. In the current Internet age, it’s not surprising to see so many music and video copyright cases brought to us because of peer to peer file sharing made possible by the Internet. You can be certain that until people know the rules of copyright, and downloading copyrighted material from the Internet, we’ll see many more copyright cases.
The Beginner’s Guide to Understanding Copyright Infringement
As you’re creating something, you may wonder what copyright infringement actually is. It’s necessary, if you’re creating a work — albeit written, musical, videos, software or some other form — that you know the definition of copyright infringement. This issue is very complicated, and not very easily spelled out in plain English.
Copyright infringement is defined by the jurisdiction — the United States of America has different copyright laws than the United Kingdom, or Australia, or Russia, or even China. Because of this fact, you should first, before anything else, check the laws in your jurisdiction (country, city and province) before using something that isn’t in the public domain.
For our definition of copyright infringement, works in the public domain aren’t copyrightable. Works that aren’t copyrightable include ideas, works that aren’t eligible (150 years-old documents, or older — think Beethoven and Frankenstein), data that isn’t categorized in a creative way (this could be a database, such as a phone book or other publicly-accessible data), or items that the owners have specified creative commons copyrights.
As you can see, copyright law is rather complicated. Wikipedia.org gives us the definition of copyright infringement as: “Copyright infringement (or copyright violation) is the unauthorized use of material that is protected by intellectual property rights law particularly the copyright in a manner that violates one of the original copyright owner’s exclusive rights, such as the right to reproduce or perform the copyrighted work, or to make derivative works that build upon it. The slang term bootleg (derived from the use of the shank of a boot for the purposes of smuggling) is often used to describe illicitly copied material.â€
Our definition of copyright infringement includes the works of creative commons. Creative commons is an organization that allows for the copyright author to determine the uses available for people who want to use their works — for such items as for audio, images, video, text, educational materials, and software. It allows for the copyright owner to allow people to use their works for non-commercial, commercial, no derivatives, share alike, or just by giving attribution. Creative Commons is a license granted by the copyright holder, and can be used in both online (electronic Internet) works and offline works.
The real definition of copyright infringement comes from your jurisdictions statutes. In the United States of America, our jurisdiction’s copyright laws are contained in Title 17 of the United States Code, §501 – §513. You can also find a definition of copyright infringement through such organizations such as the European Union or World Trade Organizations.
Copyright Infringement Statistics
Copyright infringement statistics, by most standards, are inflated. Most recent copyright infringement statistics cite that almost 30 percent of software is pirated in the United States of America. This means they think 30 percent of the software on your computer is illegal.
However, copyright holders have good reason to worry that we’re violating their rules: the number of suspects referred to the United States attorneys with an intellectual property lead increased twenty six percent in the period between 2002 and 2004 — and this number is rising. Copyright infringement statistics are difficult to come by, but it’s plain to see it’s affecting every aspect of intellectual copy.
Copyright infringement statistics show a lot of violations in pirating software and music. Many unsuspecting people, from college students to thirty-something professionals, download music on a consistent basis, and often it’s not downloaded legally. Often times, someone will download a song off a MySpace or YouTube page, without giving thought to who owns the copyright and if it’s legal for them to have it.
Copyright infringement statistics, brought to us by the music recording industry, would have us believe that online infringement is seriously hurting the recording industry. Statistics also show that many people are downloading games off the Internet. With the litany of games available to us — from complete alternate worlds such as World of Warcraft to the more mainstream “The Sims†series — people are clamoring for PC games. They’re fun, intelligent games that play on a system everyone has — a computer. Because of this, people are always looking for new games to play and download, and they may download a game without knowing that it’s not “freeware†(as many Internet games are).
In addition to computer games, copyright infringement statistics also show that movies are downloaded in abundance on the Internet. Many peer to peer file distribution sites and programs (such as Kazaa) allow transferring of large files; plus they’re easy to find online. Using a tool provided by one of many suppliers, users can search for any item they like — and, of course, the system is abused and people download copyrighted movies and entire DVDs instead of publicly available works.
Copyright infringement also branches into written works, such as articles, books, poems, etc. Many times, a student will copy a paragraph or two without realizing the implications of such copying. While they may think of it as “borrowing,†if it’s used on a grander scale, the person could be opening themselves up to a large court fight, especially if it’s used commercially.
As you can see, copyright infringement statistics show us that many people use copyrighted works illegally. Do your best diligence when using another’s work — and ask for permission every time you want to use something that you haven’t created. Chances are, if you just ask the question up front you’ll save yourself from becoming a copyright infringement statistic and save yourself from a major lawsuit.
Posted in Copyrighting Tags: Beginner's, Copyright, Guide, Infringement, Understanding No Comments »Patent ? Discussion and Suggestions
Patent – Discussion and Suggestions
This is the article contains some valuable doubts and answers for those doubts about Patent and related with Intellectual Properties. This article looks like the open discussion about the Patent and patenting the new invention. If you are a person, new to the Patents or other then the patent related professional, here you can clear your all most possible doubts about legal Patents. This article had written in the type of question and answer format.
Question 1: What is Patent?
A Patent is an exclusive monopoly granted by the Government various countries to an inventor over his invention for limited period of time. It is one of the legal document explains about the new invention used to protect the inventors idea using various claims.
Question 2: What is the difference between patents and exclusivity?
Patents and exclusivity work in a similar fashion but are distinctly different from one another. Patents are granted by the patent and trademark office anywhere along the development lifeline of a drug and can encompass a wide range of claims. Exclusivity is exclusive marketing rights granted by the FDA upon approval of a drug and can run concurrently with a patent or not. Exclusivity is a statutory provision and is granted to an NDA applicant if statutory requirements are met.
Question 3: What kinds of Inventions can be patented?
An invention must be of practical use; it must show an element of novelty, that is, some new characteristic that is not known in the body of existing knowledge in its technical field. In many countries, scientific theories, mathematical methods, plant or animal varieties invention, discoveries of natural substances, commercial methods, methods for medical treatment (as opposed to medical products) and software programs are generally not patentable.
Question 4: Who can obtain the Patent?
An inventor or company assigned by the inventor can obtain the patent over his/her invention.
Question 5: What kind of Protection does a Patent offer?
Patent protection means that the invention cannot be commercially made, used, distributed or sold without the patent owner’s consent/written permission. If any company/person wants to use that invention, they may need to buy that patent rights or to give royalty to that patent owner.
Question 6: How many inventors can joint together in a single patent application?
If the invention inventing by a group of people or a team means, they can joint together and make a patent application for that Patent as an inventors.
Question 7: Can a person get Patent for other person’s invention?
Yes, a person assigned by the inventor can obtain the patent for that inventor’s invention. Here the patent owner is that assigned person, but the inventor name only present in the Patent inventor’s column. If a person try to get a patent for an invention without the knowledge of inventor is illegal.
Question 8: How a patent is filed?
The inventor or his assignee obtains a patent by filing a patent application to the patent office in the stipulated forms as required by the Patent act of that country.
Question 9: Who checks the novelty features of the invention?
A patent examiner of patent office checks the novelty features of the patent application with the current state of the art available.
Question 10: Which invention qualifies for the grant of a patent?
A patent is granted only for the invention, which is new, non-obvious and has industrial applicability.
Question 11: Why an inventor should go for a patent?
If the inventor does not get the patent rights for his invention and introduce his product/process based on his invention in the market, any body can copy his invention and exploits it commercially. To debar others from using, selling or working out his invention, the inventor must go for getting a patent.
Question 12: Why does the Government encourage filing of patents?
Innovation, research and development activities of the particular country place the important roll in the technological development, industrial and economical growth of that country. So that, the government is encouraging the innovation and filing of patents.
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Question 13: When will the patent get expire?
A patent can expire in the following ways:
1. The patent has lived its full term i.e. the term specified by the patent act of the country. Generally it is 20 years from the date of filing.
2. The patentee has failed to pay the renewal fee. A patent once granted by the Government has to be maintained by paying annual renewal fee.
3. The validity of the patent has been successfully challenged by an opponent by filing an opposition either in the patent office or in the courts.
Question 14: What is the different between a Country issuing patents and WIPO?
World Intellect Property Organization (WIPO) is a specialized agency of the United Nations. The patents issued by WIPO are agreed by so many nations who are all the member of this organization. But the patent granted by a country patent office is applicable within the geographical boundaries of that country only like a US Patent is applicable within USA only and has no effect in other countries.
Question 15: Is there any International/Global patent office?
 No. There is no International or Global Patent. An inventor has to file an application in each country, where he seeks to protect his invention.
Question 16: Is there any International/Global law for patent?
The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its Contracting nations. But some countries and organizations only accepted this patent law for their invention patenting procedures.
The Patent Law Treaty (PLT) is a patent law multilateral treaty concluded on June 1, 2000 in Geneva, Switzerland, by 53 States and one intergovernmental organization, the European Patent Organization. Its aim is to harmonize formal procedures such as the requirements to obtain a filing date for a patent application, the form and content of a patent application, and representation.
The Substantive Patent Law Treaty (SPLT) is a proposed international patent law treaty aimed at harmonizing substantive points of patent law. In contrast with the Patent Law Treaty (PLT), signed in 2000 and now in force, which only relates to formalities, the SPLT aims at going far beyond formalities to harmonize substantive requirements such as novelty, innovation and non-obviousness, industrial applicability and utility, as well as sufficient disclosure, unity of invention, or claim drafting and interpretation.
Question 17: Can a person get a patent for his invention, which has already published in the National/International journal?
No. A patent is not granted to an invention if it is already available with the public either in the form product/literature/common knowledge. But many countries have some limitations like if the inventor publish his invention and put patent application within that year is acceptable. But this time limit may vary depends on each country. US time limit is within that publishing year; the inventor can apply for patent on his invention.
Question 18: Who is responsible to ensure that the patent has not been infringed?
It is the only responsibility of the patentee to see that someone else is not infringing upon his patent. So the prior art searches and previous patent analysis is important for every inventor and patent attorneys to make their invention be a unique.
Question 19: Does a Patentee get money once a patent has been granted to him/her?
No. A patentee does not get any kind of money over the grant of the patent. The Patent issuing government/granting authority will not give any money to the patentee. Rather the inventor has to spend lot of money to get the patent rights over his/her invention and also to spend some money to maintain that patent.
Question 20: Does a Patentee sell his patent to any person/company?
The patentee has all the rights to sell his invention exclusively and/or non-exclusively to any person/party/company or he may choose to sell his invention for a royalty.
Question 21: Is any rule, only the Patent attorneys do the patent draft?
No, the inventor himself can draft the application. But that application should be in the acceptable format of the particular patent issuing country/organization. A look on the closely related patent applications already filed/granted, will render help to a great extent.
Questions 22: How would you know about your patent application status?
The Patent Office will answer an applicant’s inquiries about the status of the application, and inform you whether your application has been rejected, allowed, or are awaiting action by an e-mail/direct letter.
Questions 23: Is the Patent office assist the inventors for developing and marketing of their patents?
No. The Office cannot act or advise concerning the business transactions or arrangements that are involved in the development and marketing of an invention. The Office, however, will publish for a fee, at the request of a patent owner, a notice in the Official Gazette and site that the patent is available for licensing or sale.
Question 24: Which are the main sources for patent information?Â
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How To Renew Your Registered United States Trademarks
Unlike other forms of intellectual property (e.g., patents and copyrights) trademarks can, in theory, be maintained forever. To do so, however, the U.S. Patent and Trademark Office (“USPTO”) maintains strict and unwavering requirements concerning the maintenance of U.S. Trademark Registrations.   As such, once a Trademark Registration is received, you must calendar these important deadlines or use a service to do so to make sure that your Trademark Registration is not permitted to lapse.
Of note, many trademark owners do not realize that once a trademark is registered it can still be canceled through a Cancellation Proceeding initiated by any party who feels that it may be injured by the continued registration of the trademark. Typical grounds for cancellation proceedings include, but are not limited to: (1) a likelihood of confusion with another trademark wherein the other trademark claims priority of use; (2) that the registered trademark is merely descriptive and, as such, is incapable of functioning as a trademark; (3) fraud perpetrated in the filing or maintenance of the registration; and (3) abandonment or non-use of the mark without an intent to resume use thereof.
If a trademark owner receives notice of a cancellation proceeding typically through a document known as a Petition to Cancel they should seek the advice of counsel immediately as there are strict deadlines to respond thereto. If a cancellation proceeding is not defended in a timely manner the Trademark Registration will be canceled.
Putting the threat of cancellation aside, here are the standard renewal deadlines of which all trademark owners should be aware:
5th – 6th Year Affidavit of Continuous Use and Declaration of Incontestability
Between the 5th and 6th year anniversary of the registration a trademark owner is required to file a Section 8 Affidavit of Continuous Use to maintain the registration. This is an affidavit verifying that the trademark is still in use and requiring the trademark owner to supply evidence of that use to the USPTO. If the Section 8 Affidavit is not filed between the 5th and 6th year anniversary of the registration there is a 6-month “grace period” after the 6th year anniversary during which the affidavit can still be filed although additional fees will apply. If no Section 8 Affidavit of Continuous Use is filed during this 18 month  time frame the Trademark Registration is canceled.
During this same time, namely between the 5th and 6th year anniversary of the registration, a trademark owner may file a Section 15 Declaration of Incontestability. In short, this document certifies that a registration has been registered in excess of 5 years and, as such, can now only be canceled for (1) fraud perpetrated in the filing or maintenance of the registration; or (2) abandonment or non-use of the mark without an intent to resume use thereof. There is no mandatory requirement that a Section 15 Declaration of Incontestability be filed although it is recommended.
9th – 10th Year Application for Renewal and Affidavit of Continuous Use
On or about every 10-year anniversary of the registration of a mark a trademark owner is required to file a Section 8 Affidavit of Continuous Use and a Section 9 Application for Renewal of the Trademark. The filings are required to be completed within one year of each 10-year anniversary (e.g., between the 9th and 10th year anniversary of the registration of the mark, between the 19th and 20th year anniversary of the registration of the mark, etc.) or within a 6-month grace period following each 10-year anniversary. As always if the filing is made during the “grace period” additional fees will apply.
Provided that trademark owners comply with these deadlines and their Trademark Registration(s) is/are not otherwise canceled via a cancelation proceeding they will be able to maintain their trademarks for a long long time.