Ethical Representation of Every Inventor, Whether Paying or Pro Bono Patent pro bono programs match financially disadvantaged inventors with registered patent attorneys.

• Author: Mark R. Privratsky
• Position: Mark R. Privratsky is an attorney with Ballard Spahr LLP in Minneapolis, Minnesota, where he provides intellectual property litigation and transactional services, as well as software and data security and privacy advice. Over the past eight years, he has contributed hundreds of hours to training new volunteer lawyers and advising administrators...
• Pages: 29-66

Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

is no need to appeal or divide the application. In that case, the

provisionally refused part will be automatically deleted by the

trademark ofce after the appeal and dividing deadline, and the

provisionally approved part will be published.

Second, if a multi-class application is opposed only in

respect to part of the classes, a divisional application is

impossible. That means the whole application including the

unopposed classes cannot proceed to registration but will have

to wait for the results of the opposition on the opposed classes.

Third, if assignment or renewal concerning a registration

is needed, the whole multi-class application or registra-

tion must be assigned or renewed without division. In such

circumstances, it will be problematic if the applicant or regis-

trant would like to just assign or renew part of the classes.

Finally, the trademark ofce has simplied its formality

requirements for applications. When the same applicant les

applications in several classes, one executed power of attorney

is sufcient. Separate powers of attorney for each application

are no longer necessary. Furthermore, single-class and multi-

class trademark applications incur the same ofcial fees.

Therefore, ling the application in a multi-class way in China

will not be a better choice. Instead, ling the application in a sin-

gle-class way is recommended under current Chinese practice.

Ensure Proper Descriptions When Claiming Priority

According to Chinese trademark law, where an applicant, within

six months from the date it applies for registration of its trade-

mark for the rst time in a foreign country, again applies in

China for registration of the same trademark for the same kind

of goods or services, it may, in accordance with any agreement

concluded between the foreign country and China or any inter-

national treaty to which both countries are parties, or on the basis

of the priority principle mutually accepted, enjoy priority.

The CNIPA is very strict on the examination of priority. If

priority is claimed for a new trademark application in China,

make sure it meets the CNIPA’s requirements. First, all the infor-

mation should be kept in accordance with that appearing on the

priority document, i.e., name and address of the applicant, print

of the mark (with color or not), class, and descriptions of desig-

nated goods and services. Second, the original certied priority

document is required. If the same cannot be submitted together

with the Chinese application, it can be supplemented within

three months from the ling date of the application.

Since the CNIPA is also strict on the descriptions of desig-

nated goods and services, it will issue ofcial notication for

amendment of designated goods and services if the descriptions

are nonstandard. If priority is claimed for a Chinese applica-

tion claiming foreign priority and if such notication is issued,

the applicant can make amendment to the descriptions. If the

descriptions of designated goods and services after amendment

are accepted by the CNIPA, the application will be ofcially

accepted and enter into substantive examination procedure. In

such circumstances, the priority claimed will not be affected by

the amendment of descriptions of designated goods and services.

However, if such amendments are made before the applica-

tion claiming foreign priority is led, i.e., the application is led

with standard descriptions different from the priority, the priority

claimed probably will not be accepted by the CNIPA. Therefore,

it is recommended to le a Chinese trademark application with

the designated goods and services that are the same as those in

the priority application, even if the descriptions are nonstandard,

and to make amendments later on during prosecution.

Keep Sufcient Use Evidence

In recent years, the total number of new trademark applications

in China has been increasing tremendously, with China ranking

rst in the world for 16 consecutive years until 2018. Accord-

ing to statistics of the CNIPA, in 2018, more than 7.3 million

new national trademark applications were led in China.

However, trademark resources are not unlimited, and thus it is

becoming more and more difcult to register a trademark in China.

Nonuse cancellation has become a cost-effective weapon to clear

prior obstacles. According to Chinese trademark law, after a mark

is registered for three years, it is vulnerable to nonuse cancellation,

which anyone can initiate. For nonuse cancellation, the burden of

providing evidence is on the registrant. If no effective evidence can

be provided and there is no justiable reason for nonuse of a regis-

tered mark, the registered mark will be canceled accordingly.

The following key information must be included in the use

evidence:

• User: The user of the mark should be the trademark

owner or its authorized party.

• Date: The use of the mark should be within the three years

prior to the date on which the nonuse cancellation is initiated.

• Mark: The mark in use should be the same as registered.

• Goods/Services: The goods/services on which the mark

is used should be within the protection scope of the

trademark registration.

• Territory: China.

Specic forms of use of a trademark on goods include:

• Attaching the trademark to the goods, goods packaging,

container, label, etc., or using it on the goods additional

label, goods manual, instruction manual, price list, etc.;

• Using the trademark in trading instruments linked to the

sale of goods, including goods sales contracts, invoices,

bills, receipts, import and export inspection and quaran-

tine certicates, customs declaration documents, etc.;

• Using the trademark on media such as radio and tele-

vision, or in publicly issued publications, as well as

advertisements in the form of billboards, postal adver-

tisements, or other advertising methods for trademarks

or goods on which the trademark is used;

• Using the trademark in exhibitions and fairs, including

printed materials and other materials provided at exhi-

bitions and fairs; and

• Other forms of use of trademarks that are in compli-

ance with the law.

Specic forms of use of a trademark for services include:

• Using the trademark directly at the services location,

including in introductory manuals for services, signage for

services venues, store decoration, staff clothing, posters,

menus, price lists, lotteries, ofce stationery, letterheads,

and other items related to the designated services;

• Using the trademark on documents related to the ser-

vices, such as invoices, remittance documents, service

Continued on page 54

Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

28 LANDSLIDE n September/October 2019

Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

September/October 2019 n LANDSLIDE 29

Ethical Representation

of Every Inventor

Whether Paying or Pro Bono

By Mark R. Privratsky

Mark R. Privratsky is an attorney with Ballard Spahr LLP in

Minneapolis, Minnesota, where he provides intellectual property

litigation and transactional services, as well as software and data

security and privacy advice. Over the past eight years, he has

contributed hundreds of hours to training new volunteer lawyers and

advising administrators for Inventor Assistance Programs, screening

inventors’ cases, and lecturing on procedures and ethics for the

programs. He can be reached at privratskym@ballardspahr.com.

Attorneys appreciate their careers, clients, colleagues, and overall legal lives, but they

may still nd themselves seeking something more. To nd additional fulllment,

many attorneys immerse themselves in their communities by providing pro bono

legal services to clients in need. In the pro bono world, a transactional attorney is

able to cover general corporate areas even if the specic question posed by the pro

bono client does not fall directly within the attorney’s usual practice area. Like-

wise, litigators typically have various options for assisting pro bono clients by appearing in court,

including for small claims, housing, harassment, immigration, or criminal defense, or by assisting

within another dispute resolution proceeding. For in-house and private practice patent prosecution

attorneys, however, representing clients in front of the United States Patent and Trademark Ofce

(USPTO) on a daily basis likely has not prepared the attorney to ght a deportation order or defend an

unlawful detainer. Offering services in a discipline in which one does not normally practice may be

stressful and even create a potential for mistakes. A need therefore existed for years for patent attor-

neys to be able to help low-income inventors in the area of patent prosecution.

The other side of the attorney-client coin presents a compelling need as well. Inventors seek

the fulllment of their dreams of one day seeing their great inventions for sale on the shelves of

local retail establishments, or in today’s world, the Internet. These inventors understand that a

signicant step to protecting their innovation is to obtain a patent thereon. When faced with the

complex and sometimes expensive process that patent prosecution may be, however, low-income

inventors realize that they must proceed pro se or not at all. Fortunately, many inventors apply

the same resolve and determination they used to conceive their inventions and tackle the problem

head-on. Unfortunately, the patent prosecution process is not necessarily suited for the novice.

Despite the signicant efforts the USPTO has made to educate independent inventors and to

make its website more easily understood, the inventor may nevertheless nd the patent process

confusing and complicated. These inventors t the mold to be the perfect clients for the patent

prosecution attorneys seeking to offer pro bono services in their respective elds.

Image: GettyImages/Anthony Nuccio