Pixelated TM sign made from cubes, mosaic pattern

By Lauren Rucinski

The Supreme Court ruled Monday that a provision of federal trademark law banning offensive trademarks from federal registration is unconstitutional. Matal v. Tam, No. 15-1293 (U.S. June 19, 2017). The case concerned a dance rock band’s application for a federal trademark registration of the band’s name, “The Slants.” “Slants” is a derogatory term for persons of Asian descent. However, members of the band are Asian-Americans and the band believes that by taking that slur as the name of their group, they will help to “reclaim” the term and drain its denigrating force. However, the U.S. Patent and Trademark Office (“PTO”) denied the band name’s federal trademark application because the trademark was offensive.[1]

The provision of federal trademark law at issue is the “disparagement clause” and states that a trademark may be denied for federal registration on the basis that it may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” 15 USC §1052(a). In applying the provision to a given trademark, an examiner at the PTO considers the likely meaning of the matter and whether that meaning may be disparaging to a “substantial composite” of the referenced group. The fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable.[2] Relying on this provision and analysis, the Trademark Examiner rejected the band’s federal trademark registration. The band appealed to the Examiner and PTO appeals board and eventually to the US Federal Circuit Court of Appeals. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The Federal Circuit’s decision was a hodgepodge of reasoning, but ultimately found that the disparagement clause was unconstitutional. On appeal, the Supreme Court affirmed.

A unanimous court of eight of the Justices agreed that the disparagement clause violates the free speech clause of the First Amendment because it engages in viewpoint-based discrimination.[3] Viewpoint discrimination occurs when the government has singled out a subset of messages for disfavor based on the views expressed. The Court found that the disparagement provision engages in viewpoint-based discrimination because it would allow “happy-talk” or marks that promote positivity while discouraging disparaging or derogatory marks. Matal v. Tam, No. 15-1293 at 25. The Court went on to reiterate that “[g]iving offense” is a viewpoint and that the “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Id. at 23 (citing Street v New York, 394 U.S. 576 (1969)).

Notably, the Court could not agree on whether trademarks are commercial speech. Commercial speech is subject to a relaxed standard of review. See Central Hudson Gas & Electric Corp. v. Public Service Commission of New York, 447 U.S. 557 (1980). However, all Justices agreed that regardless of whether trademarks are commercial speech, the viewpoint-based discrimination necessarily invokes a heightened standard, and in any case, the disparagement provision could not pass the relaxed standard. See Justice Kennedy’s Concurring Opinion in which Justices Ginsburg, Sotomayor, and Kagan joined.

The Court also held that although the PTO is an arm of the federal government, trademarks are private, not government speech. The Court opined that the “federal government does not dream up these marks and it does not edit the marks submitted for registration.”[4] Id. at 14. Therefore, the notion that the content of a registered mark is government speech is farfetched. The Court also pointed out troublesome, practical implications of labeling a trademark as government speech. For instance, other systems of government registration could easily be characterized in the same way, namely copyright. Id. at 18.

Monday’s decision is a boost to the First Amendment and could signify broader implications. It is significant because the Court directly addressed a constitutional, First Amendment question. The case was especially watched by others seeking to protect a brand deemed offensive by the PTO such as the Washington Redskins NFL team. It is also significant because although the PTO’s ability to deny a mark based on offensiveness may be diminished if not revoked, the extent of the First Amendment’s reach into trademark law is left unanswered.

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[1] Trademark law is not strictly federal law. A federally unregistered trademark may be enforced under state common law, or if it has been registered in a state, under that state’s registration system. Louisiana’s trademark law contains similar language to the federal law shot down in this case: “A mark by which the goods or services of any applicant for registration may be distinguished from the goods or services of others shall not be registered if it: (2) Consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, educational institutions, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” La. R.S. § 51:212.

[2] See the Trademark Manual of Examining Procedure at https://tmep.uspto.gov/RDMS/TMEP/current.

[3] Justice Gorsuch did not participate in the decision of the case.

[4] The Court further qualified that were trademarks to be considered government speech, the government would in fact be “saying many unseemly things, “expressing contradictory views,” and “unashamedly endorsing a vast array of commercial products.” Id. at 15 (citing marks such as “make.believe” (Sony), “Think different” (Apple), “Just do it” (Nike) and “Have it Your way” (Burger King)).

edtx

By Lauren Rucinski

On May 22, the Supreme Court tightened the reigns on where a patent infringement case with a corporate defendant can be filed, uprooting nearly three decades of common practice. TC Heartland LLC v. Kraft Food Brands Grp. LLC, No. 16-341 (May 22, 2017).

The specific statute for patent infringement venue states that a defendant may be sued in a judicial district (1) where the defendant resides or (2) where the defendant has committed acts of infringement and has a regular place of business.[1] Sixty years ago, the Supreme Court interpreted the patent venue statute to require that a domestic corporation only be sued in its state of incorporation. In Fourco Glass Co. v.Transmirra Products Corp., 353 U. S. 222, 226 (1957).  However, subsequent changes to venue rules in the 1990’s opened the door for a corporation to be sued anywhere it has sufficient contact. This change fostered forum shopping, allowing patent holders to seek out and develop patent friendly locations.

In TC Heartland, a corporate-defendant incorporated under the laws of Indiana was sued for allegedly infringing products in a Delaware district court. The Indiana corporation moved to transfer venue to the district court in Indiana. The Indiana corporation argued that under the patent infringement venue statute and the Supreme Court’s hold in Fourco, venue in Delaware was improper. The Delaware district court rejected the corporation’s argument and the Federal Circuit denied the petition for a writ of mandamus. The Supreme Court overruled the Federal Circuit, holding instead that the patent venue statute alone should control venue in patent infringement proceeding and that it is not to be supplemented by the general venue statute. The decision marks a drastic change from prior practices. Before the decision, the options for venue against a domestic corporation for patent infringement were quite numerous. For example, if a corporation ships an alleged infringing product to a state, that used to satisfy the venue requirements to file suit in that jurisdiction. The broad interpretation of venue allowed plaintiffs to cherry pick where the suite is filed. This is no more evident than the patent infringement “rocket docket” in the Eastern District of Texas.[2]  This Court, which is situated in the small town of Marshall, Texas, population c. 24,000, handles more patent lawsuits than federal district courts in San Francisco, Chicago, and New York. Marshall has often been referred to as the U.S. “patent litigation capital.” A combination of speedy infringement trials created by a series of local rules and allegedly plaintiff-friendly juries lead many plaintiffs to file patent infringement suites in this small, seemingly random Texas town.

The TC Heartland effectively nixes the “patent litigation capital” title in Marshall. The definition of a corporate residence is limited to the jurisdiction of incorporation and the general venue statute does not expand jurisdiction under the patent venue statute.

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[1] 28 USC 1400(b).

[2] For a New York Times article on Marshall and the patent infringement cases it hears, see http://www.nytimes.com/2006/09/24/business/24ward.html.

 

By Lauren Rucinski

On December 6, 2016 the Supreme Court ruled on the nearly $400 million dollar damages award to Apple, Inc. adding yet another chapter in the nearly five year-long case between the technology giant and a competitor, Samsung Electronics, Co. in Samsung Electronics Co., LTD., et al., v. Apple Inc., 580 U.S. __ (2016). When Apple released its first-generation iPhone back in 2007, it secured multiple design patents which included the black rectangular front face, rounded corners, raised rim, and grid of 16 colorful icons on a black screen. Subsequently, Samsung released a series of smartphones that resembled the iPhone and Apple sued in 2011 alleging, inter alia, that Samsung’s various smartphones infringed Apple’s design patents. Apple was successful in securing a three hundred and ninety-nine million dollar damages award, the entire profit Samsung made from the sales of its infringing smartphones. When the case was brought to the Federal Circuit in May of 2015, the court affirmed the damages award, holding that Apple was entitled to the total profits gained by Samsung on its infringing smartphones because consumers could not separately purchase components of the smartphone. On application of Samsung, the Supreme Court granted cert.

Section 289 of the Patent Act allows a patent holder to recover the “total profit” an infringer makes from the manufacture or sale of the “article of manufacture to which [the patented] design or colorable imitation has been applied.” 35 U.S.C. §289. The Supreme Court held that determining the “total profit” is thus a two-step process: (1) identify the “article of manufacture” and (2) calculate the infringer’s total profit made on that article of manufacture. The only question answered by the Supreme Court in the opinion relates to step 1 and is whether, in the case of multi-component products such as a smartphone, the relevant “article of manufacture” must always be the end product sold to the consumer or whether it can also be a component of that product.

The Court reasoned that “article of manufacture” has a broad meaning, broad enough to encompass both a product sold to a consumer and a component of that product. Therefore the Federal Circuit’s finding that the entire smartphone was the only permissible “article of manufacture” for the purposes of calculating §289 damages, was too narrow an interpretation of “article of manufacture.” Thus the Court reversed the Federal Circuit’s finding that the $399 million damages award was proper based on that reasoning.

Notably, the Court declined to address whether the relevant “article of manufacture” for the specific case at hand was indeed the smartphone or a particular component of the smartphone, our step 2, because of a lack of briefing from the parties. That issue was remanded to the Federal Circuit, leaving Apple and Samsung once again to battle it out in this ongoing dispute.

IP Infographic - Man

By Devin Ricci

Trademarks and service marks (collectively, “trademarks”) are source identifiers or brand names. For example, JUST DO IT ® identifies a brand of athletic clothing and gear by Nike. A trademark is essentially a word, phrase, symbol, design or combination thereof that is used to identify and distinguish the source of one party’s goods or services from those of another.

In reality, trademarks are regulated and protected in order to protect the consuming public. Trademarks have evolved as a use-based right which protects the goodwill that the public has come to associate with a source identifier for a good or service. Therefore, as a use-based right, a trademark owner develops his rights by actually using the mark in commerce. In other words, as a user consistently uses the mark overtime with his or her respective products and services, the marketplace of applicable consumers begins to associate the mark with the user’s goods and/or services, thereby creating and instilling the goodwill protected by trademark law. In it in this sense that a consumer ordering a BigMac® sandwich at any McDonald’s® restaurant knows exactly what he is going to receive.

Furthermore, because a trademark is a use-based right, it is not always necessary to register the mark in order for the user to obtain and assert rights in the mark. Indeed, most state laws provide for common law trademark rights which offer some protection to unregistered marks. However, because the degree of protection varies greatly from state to state, registration of a mark (particularly, a federal trademark registration) has significant advantages, particularly in a state such as Louisiana which traditionally rebukes common law traditions.

For example, a federally registered trademark is eligible for relief under the Lanham Act1 and allows a trademark owner to bring suit in federal court. A federal registration also carries with it presumptions of the validity of the mark, ownership by the registrant, and exclusive rights to use the mark in conjunction with the claimed goods and services. The federal registration essentially acts as a constructive use of the mark throughout the United States. This generally means that the user is considered to have at least minimal use-based rights throughout the entirety of the United States as of the registration date (with the ability to tie back that use to the date the application was filed). Such priority effectively prevents others who would start selling like goods or providing like services in a manner which would be deemed confusingly similar2 to the registered mark. Moreover, a federal registration can also aid in land-locking prior users into the geographic regions in which the prior users were operating when the registrant’s marks actually registered.

ELIGIBILITY OF TERMS FOR TRADEMARK PROTECTION

In the trademark sense, a term or word can fall under one of five categories – arbitrary, fanciful, suggestive, descriptive and generic. Terms that are arbitrary, fanciful and suggestive are distinct on their own rendering them prime candidates for trademarks. These are terms that do not immediately convey the underlying product or describe characteristics or intended usage of the products of services. For example, with Apple® computers, the term “apple” has nothing to do with computers and would thus be arbitrary, rendering it a prime candidate for a trademark. At the bare minimum, a term should be suggestive, meaning that it takes an imaginative step for a consumer to link the intended trademark with the covered goods and services. This need for an imaginative step or indirect association can be the defining line between a suggestive mark that is sufficiently distinct to be protectable and a descriptive mark that cannot be protected on its own.

Picture1

Trademarks cannot be used to protect generic or purely descriptive terms for the goods and services they identify, with one caveat discussed below. It is in this sense that Apple® computers cannot foreclose upon others using the term “computers,” and Planter’s® Peanuts cannot stop someone from using any type of “nuts” in their brand. Purely generic terms are free for all to use and can never be subject to trademark protection. It is possible over time to develop a descriptive mark into a protectable trademark. To do so, the mark must be sufficiently used for a sufficient period such that the consuming public begins to identify the mark as yours despite the descriptive nature. This is termed as the development of secondary meaning or “acquired distinctiveness” to the descriptive mark.

TRADEMARK DESIGNATION – WHERE AND WHEN TO USE TM, SM, OR ®

The TM and SM symbols represent trademark and service mark, respectively. These marks can be used without registration to alert third parties that the user is claiming some rights in the designated word, phrase, symbol, design, or combination thereof as a trademark. As soon as a party commences any sales, offers for sales, or marketing materials that employ a mark in conjunction with goods or services, the mark should be designated with either the TM or SM symbol. Failure to properly do so may hinder or prevent the user from asserting its rights in the mark.

Therefore, anywhere the mark is used as a source identifier (e.g., websites, product labels, e-mail footers, advertising materials, product packaging, etc.), the mark should be designated as such. To do so, the symbol should be prominently displayed so as to alert third parties that the user asserts trademark rights, but that does not mean that the symbol has to be a focal point of the mark. For example, the following designation of “trademark” with the “TM” displayed as a superscript would suffice: TrademarkTM.

It should be further noted that technically the term “trademark” is only fitting when discussing a source identifier for goods while the term “service mark” is only proper when discussing a source identifier for services. Through time, the public has grouped the two in common language under the term “trademark.” Despite this trend, the correct and recommended practice is to use the appropriate TM or SM designation depending on whether the mark will identify goods (TM) or services (SM). If the mark is used to designate both, however, it is acceptable to only use the TM symbol.

The ® (meaning “Registered”) designation, on the other hand, can only be used after federal registration has been obtained from the United States Patent and Trademark Office (“USPTO”). During the application process, it is suggested that the applied-for mark is marked with the TM or SM symbol, as applicable, to alert the public that the user asserts rights in the mark. After the applicant receives a certificate of registration from the USPTO, use of the mark as a source identifier for the registered goods or services should be designated by the ® symbol to alert the public that the user has obtained a federally registered trademark.

Finally, trademarks should be used as adjectives, not nouns. When properly used, trademarks modify the underlying products to present a source or brand of the product – e.g., Planter’s® Peanuts, Nike® tennis shoes or Apple® computers. Use of a trademark as a noun is improper and could diminish trademark rights.

APPLICATION PROCESS

A common question regarding the trademark application process is: “When should a user consider filing a trademark application?” Although the answer varies under the circumstances, the safest time to start considering the trademark application is during the brand development process. Even when picking and determining a brand name, it would be wise for a potential user to conduct a search of the federal trademark registry to determine if a prior federal registration exists which may prevent the widespread use of the mark. If the search does not turn up any prior registrations, which may cause issues down the line, the user should then consider filing an application with the USPTO to secure federal rights in the mark.

Generally, there are two types of applications a user can file with the USPTO: the use-based application and the intent to use-based application. Trademarks are use-based rights, so the trademark must be used to obtain any rights in the mark, including a registration. Furthermore,to obtain federal protection, the use must be in interstate commerce, i.e., the use must occur in at least two states.

Use-based applications are appropriate when a mark is already in use in commerce. The applicant files an application complete with specimen materials showing use of the mark in conjunction with the claimed goods and services with the USPTO. Typically, in about three to six months, the applicant will receive correspondence from the USPTO that the mark is either accepted or rejected. If rejected, the applicant has the opportunity to submit a response to the USPTO to overcome the rejection and seek registration. Once a mark is accepted by the USPTO, it is published in the Official Gazette whereby third parties have an opportunity to challenge the mark based on their prior registrations. If the application avoids any challenges, it is registered, and a certificate of registration is mailed to the applicant. The typical period for an application which “smoothly” passes through the USPTO is about six months to one year from date of filing to receipt of a certificate of registration. As previously stated, all trademarks should be designated with the proper TM or SM markings throughout the application process.

An intent-to-use (commonly referred to as an ITU) application acts as name reservation for a mark. If a user anticipates launching a product or campaign under a particular brand, the intent-to-use application allows them to file an application with the USPTO, which will reserve the mark until the applicant is capable of proving the mark is used in interstate commerce. An intent-to-use application follows the normal path of a use-based application with the exception that no specimen of use is filed with the application because no use has yet commenced. If the mark is accepted, the applicant is given six months from the date of acceptance to file a statement of use with applicable fee showing use of the mark in conjunction with the claimed goods or services in interstate commerce. If the applicant is unable to submit the statement of use at the time, the applicant is able to pay extension fees on a per class basis for an additional six-month extension of the name reservation. With timely requests and payments of extension fees, the applicant is afforded up to two and a half years of extensions (three years from the date of the notice of allowance) before the mark will be deemed abandoned.

KEAN MILLER TRADEMARK PROCESS

Kean Miller’s general practice for federal trademark applications is to conduct trademark searches, and if the search results come back favoring registration, to prepare and file a single federal trademark application in a single class of goods or services for a flat rate. The general format of the process includes the following services:

  • Search of the federal trademark records to assess whether a pre-existing federal trademark registration may cause the denial of the application on grounds of confusing similarity;
  • Analysis of the trademark search results including the creation of a memorandum to the client discussing prior registrations and other troublesome aspects which may arise during the application process;
  • Drafting and filing the federal trademark application (including filing fee for one class of goods/services3);
  • Tracking the application with the USPTO;
  • Responding to any non-substantive office actions on the client’s behalf; and
  • Mailing the trademark registration upon receipt.

A similar process is also available for state trademark registrations.

 

1 The Lanham Act (also known as the Trademark Act of 1976) is the federal statute that governs trademarks, service marks and unfair competition. It was passed by Congress on July 5, 1946, and signed into law by President Harry Truman.

2 Please note: “Confusing Similarity,” i.e., whether or not the public is likely to confuse the source of the marks, is the test for trademark infringement under the Lanham Act. The analysis of confusing similarity is left out of this primer in an attempt to limit the scope to information on obtaining rights as opposed to enforcing them after obtained.

3 The USPTO requires trademark applications to provide a specific description of the types of goods and services to be identified by the trademark. The USPTO divides goods and services into as many as 45 different classes, each of which requires a separate $275 filing fee. Applications for multiple classes of goods or services will require an additional fee of $275 per class for which the mark is applied.

 

Disclaimer: This guide does not constitute legal advice and is not intended to supplement the advice that would be obtained by retaining a qualified trademark attorney to help you identify and protect your intellectual property rights. It is being provided in an effort to clear up some of the more common trademark myths and misconceptions. It is highly suggested that anyone facing a potential trademark issue seek legal counsel on the issue.

By Devin Ricci

Copyright law protects original works of authorship fixed in a tangible medium. Although the phrase may seem complicated, copyrights are perhaps the most basic and widespread of the intellectual property rights. Copyright law affects our daily lives. However, copyright’s effects are most apparent in the way they negatively impact everyday life – as in the reason we can’t “pirate” music or movies. At its core, copyright law protects authors and, in doing so, fosters original expression. Copyright owners are provided with a number of exclusive rights to protect their interests and prevent others from copying or profiting from their original expression, both during their lifetime and beyond.

The owner of a copyright has the exclusive right to:

  • reproduce the work (i.e., make copies);
  • prepare derivative works based upon the work;
  • distribute copies of the work to the public by sale or other transfer of ownership, or by rental, lease or lending;
  • perform the work publicly; and
  • display the work publicly

It is in this sense that the owner of the copyright in a book (usually the author) has the exclusive right (i) to make copies (reproductions) of the book, (ii) to prepare derivative works of the book such as translations or a movie adapted from the book, or (iii) to sell copies of the book. Likewise, the owner of the copyright in a movie can prevent others from making and selling DVDs of the film, showing the film in theaters or elsewhere regardless of whether the showing was for profit, and transmitting copies online or for rent.

Although copyrights may be the most basic intellectual property right, Congress has amended the Copyright Act numerous times over the past century. Each amendment was in turn followed by numerous and often conflicting interpretations by U.S. courts. For this reason, copyright law is full of nuances and statutory regulations that can sometimes be difficult to understand. This guide presents some of the most common issues in copyright law to educate the reader on his or her potential rights and restrictions under U.S. Copyright Law.

THE BASIC REQUIREMENTS FOR COPYRIGHT PROTECTION

Copyrights are the easiest intellectual property rights to acquire. Whereas trademarks require use in commerce and patents require a long and expensive application process, copyright protection exists as soon as the ink dries. In other words, as soon as the work (i.e., the expression) is fixed in a tangible medium, copyright protection exists. Registering a copyright is beneficial, but the registration does not create the right; rather, it helps to enforce it.

There are two basic requirements for copyright protection: 1) it must be an original expression and 2) it must be fixed in a tangible medium. But what do these requirements really mean?

The Copyright Act of 1976 states that a work is fixed in a tangible medium “when its embodiment in a copy or phonorecord1, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” In plain English, you have to give your original expression a physical embodiment to obtain copyright protection. For example, a work is protected by copyright once (i) the ink dries on the piece of paper, (ii) the paint dries on the canvas, (iii) the song is recorded onto a hard drive or another medium, or (iv) the photo or movie is captured on film2.

So how then can live performances and broadcasts such as football games be copyrighted? Originally, the company would satisfy the fixation requirement by broadcasting the game while simultaneously recording it on VHS, thereby fixing it in a tangible medium3.

DURATION OF COPYRIGHT

Copyrights are limited to a set term, after which the copyright lapses and the work falls into the public domain free for all to use and copy. The length of a copyright’s term depends on the type of author and when the work was created (or published, in some circumstances). Currently, the duration of a copyright lasts 95 years after the author’s death, if the author is a human.

In some circumstances the author is a company such as in a true work for hire situation. In that case, the copyright lasts for the shorter of (i) 120 years from creation or (ii) 95 years from first publication. Anonymous writings, or those done under pseudonyms, follow the same terms as companies, with one caveat: once the author becomes known, it lasts 70 years from the author’s death.

A copyright’s term is governed by the provisions of the Copyright Act in effect when the work was created (or, sometimes published). Therefore, you have to look to the provisions of the Copyright Act in effect at the time the work was created or published to determine if it has fallen into the public domain.

WHO OWNS A COPYRIGHT?

Under copyright law, the person deemed to have created a work is called its “author.” The copyright in a work initially vests in the author or authors of the work. Copyright law recognizes three kinds of authorship: (1) sole authorship, (2) joint or co-authorship, and (3) employer authorship via works made for hire.

Sole authorship is the simplest – one person creates the work and owns it in his or her name. Joint authorship occurs when two or more people create a joint work. A “joint work” is defined by the Copyright Act of 1976 as “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” The general requirements for joint authorship are: (i) a copyrightable work created by (ii) two or more “authors” who each contributed copyrightable materials, with (iii) the intent that their contributions be merged into a unitary work. This is important because the authors of a joint work are co-owners of the copyright in the work. Consent of all co-authors in a copyright is only required to assign the copyright or to grant exclusive licenses. Each co-author may grant a non-exclusive license on his own without the consent of the other co-author(s). The licensing co-author is required to account to the other co-author(s) for any profits received from that license.

WORK MADE FOR HIRE

In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author and, unless the parties have expressly agreed otherwise in writing, owns all of the rights comprised in the copyright. The term “work made for hire” is over-used and, more often than not, misused. In reality, work made for hire is limited to two scenarios.

The most common work made for hire scenario occurs when the work is created by an employee acting in the course and scope of his or her employment. For example, if a marketing company has one of its graphic designers on staff create a logo on behalf of a client, the company, not the individual designer, is deemed the author of the copyright and owns all rights to it by default. Some courts have expanded the term “employee” beyond that of a statutory employee for a work made for hire by adopting common law agency principles to determine if an employment relationship exists under the specific circumstances at hand.

A second provision in the Copyright Act of 1976 allows for certain types of works to be “made for hire” by non-employees if the parties agree as such in writing before the work is made. These are often thought of as commissioned works made for hire. However, the Copyright Act of 1976 only recognizes nine categories of works that can qualify under this provision4.

Works made for hire are much more limited than many people think. Companies and customers too often rely on a work being made for hire when it is not. Numerous contracts are written with work made for hire provisions in them that likely can’t be enforced. In the example above, the client of the marketing company who paid for the logo would likely not be the author of the logo even if the client signed a “work made for hire” agreement with the marketing company. The client did not employ the graphic designer, and logos do not qualify as one of the nine enumerated works. Therefore, to own the copyright in the logo, the client would need a written assignment from the marketing company.

For more information, see Copyright 202, Work Made for Hire.

ASSIGNMENT

The sale of a work itself does not automatically carry with it the transfer of the copyright in the work. Copyrights can only be transferred via a signed written agreement. By default, an artist who sells his painting retains the exclusive rights to make reproductions of that painting. The buyer may obtain that particular production or copy, but he only obtains a limited license such as to view or show that particular copy of the work. It certainly does not give the buyer the right to make more paintings or other products showing the artwork. If the buyer did want these rights, he would have to obtain them from the artist. For this reason, it is advisable for parties to work out and memorialize any intended transfer of rights in a copyrighted work in a written agreement.

MORAL RIGHTS

In addition to the numerous rights afforded by copyright law, the creator of certain rights may also be entitled to a separate non-monetary set of rights known as “moral rights.” These rights protect the personal and reputational attributes of the work’s creator, such as the right of attribution – the right to get credit for your work by name.

An author generally retains his moral rights through an assignment or transfer of the copyright in his work. To terminate such rights, they must be expressly waived in writing. To account for this requirement, many copyright assignment agreements specifically call for such a waiver. Numerous artists, particularly in the marketing and advertising fields waive their moral rights, subject to a reservation of their portfolio rights.

THE BENEFITS OF TIMELY REGISTRATION

Registration is no longer a requirement for copyright protection under U.S. Copyright Law, but registration is required to commence an infringement action. Numerous copyright infringement cases are put on hold or even thrown out because the copyright holder has failed to register the work before bringing suit. An early registration of a copyrighted work can avoid these hurdles at a time when quick action might be necessary.

The timing of registration also weighs in on the recovery of damages and attorney fees. A copyright holder can seek actual damages plus profits from the infringer, subject to acceptable deductions. However, if the work is registered prior to the infringing activities, the copyright holder may instead elect to recover statutory damages which can range from $750 to $30,000 per work infringed. These statutory damages can be increased up to $150,000 per work infringed if the infringement is found to be willful. The timely registration also enables the copyright holder to seek attorney fees.

The benefits of registration are not limited to litigation. The owner of a copyrighted work can evoke the assistance of U.S. Customs to prevent the importation of infringing contraband.

FAIR USE

The concept of “fair use” is a widely misunderstood and misused tenant of copyright law. Individuals and companies of all sizes often believe that their potentially infringing actions are excused by the Fair Use Doctrine. However, all too often they are incorrect in their assumptions and have made a potentially costly mistake. The Fair Use Doctrine provides an affirmative defense, which is not the best stance to take when conducting a risk analysis on copyright infringement. The fair use defense takes the position that you infringed a copyright, but that the law provides an excuse for your particular infringement under the specific circumstances of your infringement.

The reality is that the Fair Use Doctrine is a lot more limited than people think. For a more in depth discussion on the applicability of the Fair Use Doctrine, see Copyright 202: Fair Use. However, a safe rule of thumb for fair use would be that if the use of another person’s material is commercial in nature, it is likely not fair use. If you are not sure if your intended use would be permitted under the Fair Use Doctrine, consult an attorney who can help you analyze the issue.

WEBSITES

We are routinely asked about copyright protection for websites. Websites are capable of copyright protection. To the extent that the layout, coloring, and other non­functional features are original, they can be protected under copyright law. Practically speaking, websites are ever evolving with the display and content changing daily. Therefore, it may be impractical to register all the various changes with the Copyright Office. Some web site creators choose only to register their webpage designs when major overhauls occur; others forego registration entirely. It is recommended that the site is marked as copyrighted as follows:

[“© or Copyright”] [owner] [year published].

For example, the marking on this guide would be: © R. Devin Ricci 2016.

For more in-depth information on these and other topics, see the Copyright 202 series of articles.

 

1 The Copyright Act is old. Despite its numerous updates, it still uses words like “phonorecords” in its statutes. Think of this term as a catch all for any device that holds recorded sounds, be it a cassette, cd, hard drive for mp3s or another similar device.

2 Note: this is a non-exhaustive list, and there are numerous ways to fix an expres­sion in a tangible medium.

3 Note: today, live performances are protected through the international Trade-Re­lated Aspects of Intellectual Property Rights (TRIPS) agreement, which extends beyond this basic guide. TRIPS is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulations as applied to nationals of other WTO members.

4 The nine enumerated works are a contribution to a collective work, a part of a motion picture or other audiovisual work, a translation, a supplementary work, a compilation, an instructional text, a test, answer material for a test, and an atlas.

 

Disclaimer: This guide does not constitute legal advice and is not intended to supplement the advice that would be obtained by retaining a qualified copyright attorney to help you identify and protect your intellectual property rights. It is being provided to clear up some of the more common copyright myths and misconceptions. It is highly suggested that anyone facing a potential copyright issue seek legal counsel on the issue.

By Devin Ricci

  1. You obtain copyright protection in a work simply by creating it. In order to sue for copyright infringement, however, you must register the work with the Copyright Office. The timing of your registration can greatly impact your rights against a potential infringer.
  2. If a work is registered prior to the alleged infringement, the copyright owner is entitled to actual damages plus any additional profits of the infringer or statutory damages. Statutory damages can range from $750 to $30,000 per work infringed, and can be increased up to $150,000 per work infringed if the infringement is willful. Statutory damages are the reason you may have heard of astronomical awards for downloading and sharing music.
  3. Courts often award attorney fees to a plaintiff who registered the work with the Copyright Office before the infringement began. However, judges in a copyright case can award attorney fees to the prevailing party, and some prevailing defendants have been awarded the recovery of their attorney fees.
  4. The Copyright Act has been modified numerous times over the past century. When determining if a work is in the public domain, start by looking at the version of the Act when the work was made and when it was first published. Depending on the Act in effect at the time, you may need additional information, such as the death of the author, to determine if it is in the public domain.
  5. The Fair Use Doctrine likely does not forgive your intended infringement of another person’s copyright. Courts rarely allow the defense to be used when the infringement took place in a commercial endeavor. If it is related to a business, it is likely a commercial endeavor as far as fair use is concerned. This includes the use of another person’s images on your website or in advertising and marketing materials without their permission (i.e., a license). In fact, fair use often does not forgive non-commercial uses either.
  6. The Work for Hire doctrine considers the employer or commissioner of a copyrighted work as the author, not the physical creator. But, the doctrine is much narrower than most people believe. Generally, there are only two ways for a work to be a work made for hire: 1) if it is done by an employee (included common law agency employee) in the course and scope of his employment; or 2) if there is a writing before-hand declaring the work to be a work made for hire and the work is one of nine enumerated types under the Copyright Act of 1976.
  7. Copyright assignments must be in writing to be effective. They can, but do not have to be, registered with the Copyright Office.
  8. Employers who want to own all copyrights in their employee’s work product should impart duties onto their employees to create works on the employer’s behalf. These duties should be outlined in a standalone written agreement or employment agreement signed by the employee. It should also couple a duty to assign all works made.
  9. If multiple people are going to contribute to a work, determine early on who owns what rights, and put it in writing. The default rules for joint authors grants equal rights, subject to a need to account to the others for their share of profits.
  10. The creator of certain works of art has certain default rights called moral rights, which include the right of attribution to the work he or she created. That said, it is suggested that any continuing rights of the creator, such as portfolio rights, be expressly covered in any assignment or work for hire agreement.

aqd2

By Devin Ricci

The City of Baton Rouge and the surrounding areas have been struck by devastating floods.  Thousands were stranded. The roadways to their homes are flooded and most impassable.  Flooding is not new to Louisiana.  Just over ten years ago, the state experienced one of the most devastating natural disasters on record with Hurricane Katrina.  Since then, numerous other storms have taken swipes at the state –  Gustav, Rita, Isaac, to name a few. 2016 has been the year of unnamed storms thus far for the citizens of Louisiana. Alexandria, Monroe, Shreveport, and Lake Charles each flooded in the months preceding the “Great Flood of 2016” currently affecting Baton Rouge.

Storms are uncontrollable, but as a patent attorney, I turn to technology that we can control for assistance in the aftermath. There is a glimmer of hope that we are not alone, that similar events throughout the world have resulted in great innovations some of which are currently being implemented throughout Baton Rouge to speed the recovery and rescue stranded citizens.  These innovations are far and wide, including solar technology, mobile cell phone towers, power stations, water filtration apparatuses. Even the oft-hated drones are being used to locate people and assess flooding from vantage points that would have previously been limited to helicopters.

One of the more popular examples of these innovations is the Aqua Dam by Layfield, which is being used across the area to block water from roadways.  We have all heard the moniker that you cannot fight fire with fire; the Aqua Dam is proof, however, that you may be able to hold off water with water.  Patented as U.S. Patent nos. 8,840,338 in 2014 and 9,297,133 in 2016, the Aqua Dam is a portable reservoir body apparatus comprising a plurality of interior bladders contained within an exterior housing (the outer tube).  The interior bladders are filled with fluids causing them to expand and fill the cavity of the outer tube.  The unit further comprises a series of fasteners to maintain its shape, thereby creating a displacement dam which prevents the passage of water.  These units are being used on the interstate, major highways and bridges.  In most instances, the flood water is being pumped straight from the road into the dam being formed to keep the water at bay, opening the roadways.

To the folks at Layfield, we salute you and appreciate your innovative contributions.  The Aqua Dam structures have and will continue to open our roadways, allowing evacuees to escape and rescuers to enter flooded areas. To others, and particularly the citizens of Louisiana, please keep innovating.  We cannot prevent all future flooding, but we can help diminish their impact with innovations like these.

This article first appeared on the Louisiana Law Blog here

By Jessica C. Engler

On May 11, 2016, President Barack Obama signed into law the Defend Trade Secrets Act of 2016 (“DTSA”). Through the DTSA, claims for trade secret misappropriation will now have a basis in Federal law and Federal Courts will have jurisdiction over such claims. In addition to the new federal cause of action, the DTSA adds in several tools that trade secret holders can use to protect their trade secrets, making this Act one of the most broad-sweeping changes to American intellectual property law since the Leahy-Smith America Invents Act in 2011. Given these changes and the Supreme Court’s recent decisions on the patentability of software and business methods, it is important that trade secret holders understand the new tools available for protecting their intellectual property rights and their new responsibilities.

Generally, a trade secret is information, including patterns, plans, compilations, formulas, design, processes, procedures, and more, where the holder has taken reasonable measures to keep the information secret, the information is not readily ascertainable or reverse-engineered, and the information gives that owner some kind of economic value or competitive edge.[1] Famous examples of trade secrets include the recipe for Coca-Cola, Google’s proprietary search algorithm, and the formula for WD-40.[2] However, trade secrets do not extend to just these highly-valuable examples. A majority of businesses have at least some trade secrets including, but not limited to, customer lists, marketing strategies and analyses, manufacturing techniques, pricing and purchasing information, business methods, business forecasts, and product information.

A trade secret is valuable for as long as the information remains a secret. Trade secrets can be lawfully learned through reverse engineering. What becomes more concerning for trade secret holders is unlawful use through commercial or industrial espionage, breach of contract, or employee poaching while non-compete agreements are in place. The unauthorized use or misappropriation of a trade secret by a person other than the holder is considered unfair competition and an unfair trade practice.

Before the DTSA, trade secrets were the only major form of intellectual property that that is not backed by U.S. federal civil remedies. Trade secret holders whose secrets were publicized typically only had state-level remedies available. The DTSA extends the current Economic Espionage Act of 1996, which criminalized certain trade secret misappropriations, to now permit civil lawsuits for trade secret appropriation. This new law will have significant impacts on holders of trade secrets.

First, this new law provides a federal remedy for trade secret misappropriation, but does not eliminate the remedies previously available in state court. Accordingly, litigation costs may increase since claimants may bring their claims in federal court alone or in both state and federal court. However, the federal claim will provide federal jurisdiction, which may reduce jurisdiction battles that were are common in trade secret litigation where the trade secret had crossed state lines. International companies will now also be able to bring suit in federal court where their United States office is located, which may help improve foreign companies’ ability to enforce judgments.[3] Further, having a federal remedy will create a nationwide body of trade secret law, which will provide a greater degree of predictability to trade secret litigation.

Second, in addition to allowing damages for wrongful takings of trade secrets, the DTSA includes a seizure provision, wherein a trade secret owner can obtain, on an ex parte basis, an order to seize “property necessary to prevent the propagation or dissemination of the trade secret that is the subject of the action.” This provision is intended to apply in cases where a trade secret thief who receives notice of the court action would leave the country or disseminate the secret before a court could stop them. For a seizure order to issue, the claimant must establish the standards necessary for a state civil injunction and show specific evidence demonstrating that the injunction would be insufficient because the thief would violate the order or would make the secret inaccessible to the court for seizure.

Third, the DSTA also has provisions that impact employee mobility. Employers can seek an injunction to prevent actual or threatened misappropriation of a trade secret by an employee, provided it does not prevent that person from entering into an employment relationship. For this injunction to be granted, there must be evidence of threatened misappropriation of the trade secret. An employer will not be awarded an injunction “merely on the information that the person knows.” Also important for Louisiana—a state that strongly disfavors non-compete agreements—the injunction cannot be used to circumvent state laws regarding restraints on employment and non-compete agreements.

Last, the DTSA provides immunity for whistleblowers. Under this provision, an individual cannot be held criminally or civilly liable under any federal or state trade secrets laws for revealing the disclosure of a trade secret in confidence to a federal, state, or local government official or an attorney for the purpose of reporting or investigating a suspected violation of the law. Employees may also disclose the trade secrets of their employer in court documents filed under seal as part of a lawsuit for retaliation by his employer.

In order to take full advantage of the DTSA, the Act requires employers make some changes to employee contracts, confidentiality agreements, and nondisclosure agreements. As part of the immunity provision, employers are now required to “provide notice of the immunity” created by the DTSA “in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.” Failure to include this notice will strip the employer of certain remedies available in an action against an employee. The DTSA allows for exemplary damages when the trade secret has been willfully and maliciously misappropriated. Attorney fees can be awarded when the misappropriation is made in bad faith or when the trade secret was willfully and maliciously misappropriated. Attorney fees and exemplary damages are not recoverable unless the employer has provided the defendant employee, consultant, or contractor with notice of the immunity from criminal and civil prosecution granted by the DTSA to whistleblowing persons. Therefore, if an employer is to recover exemplary damages or attorney fees against an employee who unlawfully disclosed its trade secrets, the employee must have been notified of the immunity provisions. Therefore, if a company has employees, or employs consultants or contractors who have access to the company’s trade secrets, the company should consider consulting an attorney to ensure that their employment agreements include the proper DTSA immunity notifications.

While the DTSA presents new opportunities for a trade secret holder to enforce its rights, it is important to note that the DTSA did not alter the holder’s need to make efforts to keep the secret confidential. Trade secret holders must still make efforts to maintain the secrecy of their trade secrets and confidential information. An attorney can assist with ensuring that the proper steps are taken to maintain this confidentiality.

[1] 18 U.S.C. § 1839.

[2] Melanie Radzicki McManus, 10 Trade Secrets We Wish We Knew, HowStuffWorks.com (last accessed May 4, 2016) (available at http://money.howstuffworks.com/10-trade-secrets.htm)

[3] Monika Gonzalez Mesa, Latin American Companies Back New US Trade Secrets Law, Daily Business Review (May 3, 2016) (available at http://www.dailybusinessreview.com/id=1202756520297/Latin-American-Companies-Back-New-US-Trade-Secrets-Law?slreturn=20160404115326).

This article first appeared on the Louisiana Law Blog here

Go

By Jessica C. Engler

For many inventors, the grant of a patent application is quite exciting. However, once the inventor seeks to market their invention, they can find the process costly and overwhelming. Often when small companies or solo inventors develop new ideas that are later patented, they discover that manufacture or use of the patented invention is unmanageable for an entity of their size. Rather than sit on this technology and let the patent protection expire, these persons will seek to sell their patented idea to another person or company who can use them. Scattered among firms and investors who are attempting to acquire valuable patents for use in their own businesses are non-practicing entities, who have more litigious purposes in mind. Non-practicing entities, which are known colloquially as “patent trolls,” are entities that purchase patents solely for the purpose of enforcement of the patent rights. Patent trolls do not make, use, sell, or offer to sell the technology that is disclosed in the patent; rather, they acquire patents and then send out cease and desist letters or demands for licensing fees to persons (typically individuals and smaller companies who do not have the means to pay for expensive patent infringement litigation) that they perceive to be infringing its patents. At times, these claims of infringement are based on tenuous grounds, and the person receiving the threats feels that they have no choice but to pay the patent troll what they are demanding.

Patent trolls have contributed to the push to reform the patent system by a variety of people—from the legislature to late night television show pundits. However, a recent new player has presented an idea for changing the patent landscape by taking would-be sales of patents away from the trolls. Google, who has previously openly criticized the patent system and questioned the need for patents as a whole, announced on April 27, 2015 that it will be testing a new program for two weeks called the “Patent Purchase Promotion.” This promotion invites owners of non-expired United States patents to sell their patents to Google. From May 8, 2015 to May 22, 2015, Google will open a streamlined portal for patent owner to offer to sell their patents to Google at a price that the patent owner sets.[1]  Google will review all of the offers for sale and then let patent owners know Google’s decision by June 26, 2015. Google has not set any kind of standard for the type of non-expired United States patent that will be considered other than that the patent cannot be a design patent. Google anticipates that all of the patent sellers would be paid by the end of August. Through this, Google claims that it is seeking to protect those patent owners who wish to sell their patents without the risk of the patent falling into a patent troll’s hands.

Google has yet to announce how many patents it will be purchasing or how much money it has invested into this new promotion. Google has also not announced what kind of critiques or methodology that Google will be using to evaluate the patent purchase offers that it receives. However, since Google would likely want to obtain some value from the patents it purchases, considerations that are typical of intellectual property acquisitions will likely be involved including, but not limited to:

  • The remaining life of the patent rights (Patent protection is granted for 20 years from the date of filing the patent application. 35 U.S.C. 154.);
  • Strength of the patent (i.e., is the patent strong, or is there a high potential for a patent to be declared invalid?);
  • Breadth of patent rights (i.e., are the patent claims relatively broad, or are the claims limited to the narrow, specific, singular embodiment described in the application?);
  • Ease of use of the patent (i.e., is the cost of purchasing the patent outweighed by the cost of making or selling the disclosed technology?); and
  • Marketplace concerns (e.g., number of competitors, available alternatives in the marketplace, etc.)

One interesting aspect of Google’s promotion is that the sale between the patent owner and Google will not completely remove all rights that a patent owner has in the patent. After the sale, Google promises to grant a non-exclusive, non-transferrable, non-assignable, non-sublicenseable license to the patent owner to develop, make, use, sell, offer to sell, import, export and otherwise transfer or dispose of the patented technology.[2]  So, while a patent owner cannot license his or her invention to another person after Google has purchased the patent, the patent owner still has rights to make some use of the ideas he or she developed and patented.

Google has stated that this initial two-week program is experimental, and that it may reinstitute the program or open the program to foreign patent owners if enough interest is generated in the promotion. The full details of Google’s program are still being released, but the new Patent Purchase Promotion presents an interesting strategy to combat patent trolls’ attempts to purchase patented technology for litigious uses. Rather than sell to the patent trolls, Google hopes that patent owners will instead sell to it.

Selling a patent to Google may be a tempting opportunity to many inventors and patent owners. In its detailing of the program, Google strongly encourages potential patent sellers to consult with an attorney before making a pitch to Google. Among other services, an attorney can assist patent owners with review of the terms of making the pitch to Google and the terms of sale. An attorney can also assist patent owners in understanding what rights they will have to the patented technology once the sale is complete. Consultation with an attorney who is experienced in transactions that involve intellectual property would be extremely beneficial to a hopeful seller to Google.

_______________________________________________

[1] Allen Lo, “Announcing the Patent Purchase Promotion”, Google Public Policy Blog, Google (Apr. 27, 2015) (available at http://googlepublicpolicy.blogspot.com/2015/04/announcing-patent-purchase-promotion.html).

[2] “Patent Purchase Agreement”, Google (last accessed April 29, 2015) (available at http://services.google.com/fh/files/misc/patent-purchase-agreement.pdf).

This article first appeared on the Louisiana Law Blog here

uspto-office

By R. Devin Ricci

The general outlay of this guide is to present some of the who, what, where, when, and why of the patent system in order to be able to explain the all-important how to obtain a patent. This guide aims to acquaint the reader with various aspects of the patent process, laying a proper foundation that will help the reader make informed decisions regarding patents. It should be stressed that the patent system is very complex – this guide will only touch on some of the many rules, nuances and exceptions contained in the United States patent system. Therefore, you should not rely solely on this guide and should consult an attorney.

The patent process is a long and expensive process, and the result of obtaining a patent cannot be guaranteed. However, what awaits a truly novel, non-obvious, and useful (1) invention at the end of the process is one of the most powerful intangible property rights available in the United States.

Disclaimer: This guide does not constitute legal advice and is not intended to supplement the advice that would be obtained from retaining a patent attorney or agent to aid in the patent process. This guide stands as a cursory review of the United States patent system as it relates to utility patents. This primer does not encompass on international patent protection. It is being provided in an effort to better acquaint the reader with some of the major aspects associated with the patent process. It is imperative for those considering or currently undertaking the patent process to understand what to expect when they choose to seek patent protection for an invention.

Why – the Great Incentive for Disclosure

The patent system aims to foster innovation. From single inventors to corporations, the great lure, the carrot of the patent system is the powerful, exclusive rights afforded by a patent. An issued patent grants an inventor the exclusive rights to exclude others from making, using, and selling the patented invention throughout the United States for a period of up to twenty years from the date of filing. In exchange for this right to exclude (2), an inventor must fully disclose to the United States Patent and Trademark Office (“USPTO”) how to make and use the claimed invention. The tradeoff for the public is twofold. First, the information contained in the patent is published at least by the date of issuance. Therefore, the information itself becomes public knowledge, available as information in research and development. Second, the invention becomes part of the public domain once the patent’s term ends, free for all to exploit and use.

It may seem counterintuitive that eliminating some competition would actually foster innovation, but it does. Remember, the public or its elected government generally cannot walk into a business, laboratory, home, or garage and force an inventor to disclose his invention to the public. Companies and inventors are free to hide their innovations as trade secrets, which are not subject to term limits. Trade secret rights vary from state to state; however, the gist is that by keeping an invention as a trade secret, an inventor can remain the sole beneficiary of his invention as long as the information does not become public knowledge (3). The power of a trade secret lies in its potential longevity, but is limited to information that remains secret and cannot be discovered through ordinary use or reverse engineering, i.e., taking apart an object to see how it works in order to duplicate or enhance the object. Technological advancements in the modern marketplace hinder the use of trade secrets. Simply put, it is continuously becoming easier to reverse engineer products and discover the process or machine the inventor attempts to hide through trade secrets. This shift has led many companies and inventors to seek patent protection instead of attempting to keep their innovations as trade secrets.

What – Patentability and Components

Patentable subject matter

There are three types of patents: utility patents, design patents, and plant patents. Utility patents are by far the most common of the three types. Both plant and design patents adhere to their own sets of rules and attributes (4); however, this guide solely addresses the process of prosecuting a utility patent. Patentable subject matter for a utility patent comprises any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof (5). In addition to fitting into one of these five enumerated categories or “improvements thereof,” an invention must also be useful, novel, and non-obvious as determined by the USPTO and/or a court.

Utility – is the innovation useful?

Courts have generally whittled the “utility requirement” into a de minimus (minimal) threshold. Under this viewpoint, an invention with any conceivable use or function generally satisfies the utility requirement. The purpose of the utility requirement is to prevent rights which arguably lie under other forms of intellectual property from gaining patent protection. For example, purely aesthetic functionality such as that of a painting would not qualify for patent protection; rather, it may eligible for copyright protection. However, it should be noted that the ornamental look of an otherwise functional item may qualify for a design patent.

Novelty – is the innovation “new”?

The question of novelty asks whether or not the invention is truly inventive; i.e., are the elements of the invention anticipated by the prior art (i.e., already known in the industry). In other words, the question of novelty asks whether or not any single prior art reference exists in the pertinent industry which already discloses the invention at the time of effective filing (i.e, the priority date).

Any public disclosure, regardless of how the disclosure was made, constitutes prior art as of the date it is made publically available. This includes any subject matter that was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. One notable exception exists to the public disclosure requirement in that the inventor’s own disclosures will not count as valid prior art so long as the subject matter is described in a patent application applied for within one year of the public disclosure. Therefore, once the inventor makes any public disclosure, a time clock starts ticking by which the inventor has one year to file an application with the patent office or the subject matter is barred by statute (a “statutory bar”) from being novel.

Moreover, as of March 2013, the United States patent system was reformed by the America Invents Act, switching the patent system from the long standing ‘first to invent’ system to a ‘first to file’ system. The present system renders any U.S. patent, patent application publication, or a World Intellectual Property Organization (WIPO) published international patent application (Patent Cooperation Treaty – PCT) as prior art as of the date the subject matter was effectively filed in the respective patent office, whether in the U.S. or abroad.

Non-obviousness

Not only must innovations be deemed novel in light of the prior art, but they must also not be found to be obvious improvements of the prior art. Whereas novelty inquires as to whether or not the claimed invention is anticipated by a single prior art reference, obviousness asks whether or not it would have been obvious to a “person having ordinary skill in the art” (“PHOSITA”) to combine the elements of multiple prior art references to develop the proposed innovation.

The same prior art relevant to novelty is applicable for obviousness. However, more so than with novelty, the test for obviousness is to be viewed in light of the supposed “person having ordinary skill in the art” or the particular field relevant to the subject matter. For example, a typical organic chemist or electrical engineer would be the relevant PHOSITA for patent applications concerning an organic chemical process or an electrical apparatus, respectively.

Patent Applications

As will be explained in greater detail below, two types of utility patent applications exist– provisional and non-provisional applications. The provisional acts as a place holder while a non-provisional is a full application; however, they can be used in concert to maximize protection.

Provisional Applications: The provisional application is essentially an initial disclosure made to demonstrate that an invention was created. Provisional applications are filed to attempt to to prevent others from later claiming prior invention. The provisional application can be thought of as a place holder or a stake in the ground to claim and lock in a priority date for a claimed invention. However, no substantive rights will be granted from a provisional application. The provisional application will not be reviewed by an Examiner to determine if a patent should be granted; therefore, a provisional application need not meet all of the formal requirements that a non-provisional must meet. Rather, it needs to disclose enough of the invention so that when a full (non-provisional) application is filed, the applicant can point back to the provisional disclosure to show that the invention was disclosed and that the priority claim is accurate.

Provisional applications are optional. The priority claim of a provisional application lasts one year from its filing date. Essentially, it grants the applicant one year from the filing date of the provisional application to finalize and/or market its invention with patent pending status before the applicant must file a non-provisional application to keep the priority date and patent pending status alive. It should also be noted that the one year pendency between the provisional and non-provisional filing does not count against the potential twenty-year term of the patent, which commences on the date the non-provisional is filed.

Non Provisional Application: The non-provisional application is the full application for a patent that will be reviewed and prosecuted by the Examiners at the USPTO. A non-provisional application must meet the formal requirements set forth by patent laws and the USPTO. Therefore, it must comport with formal drawings (i.e., tagged drawings and figures which are capable of being reproduced by the UPSTO Printing department), a specification which discloses the invention to a degree that allows a person having ordinary skill in the art to make and use the invention, an abstract, and claims.

Specification: The specification, or disclosure, is a written description of the invention. Patent applications are subject to a written requirement whereby the application must disclose the invention with enough specificity in order for the disclosure to enable a “PHOSITA” to make and use the invention without undue experimentation. These requirements are often satisfied through a background section, a short summary, and a detailed disclosure of the invention in light of the drawings.

The specification also defines the scope of the patent claims. The claims and all potential amendments thereto must find descriptive basis in the disclosure as filed. No new matter can be added to a non-provisional application once it is filed. If the applicant wishes or needs to add new matter, it can be done through a continuation-in part application; however, the new matter would have a new filing date and would not be able to claim priority to the original application.

Claims: By statute, the application must claim a “definite” invention. The definiteness requirement mandates that each patent must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.” (6) Courts have mandated that definiteness is to be evaluated in light of the specification (the written description of the invention) and prosecution history from the perspective of a person skilled in the relative art at the time the patent was filed.

The claims section is the heart of the patent. As the name designates, this is the section wherein the applicant tells the USPTO and thus the public what is the intended invention. The claims of an issued patent define the scope of protection afforded by the issued patent. Claim drafting can be viewed as a strategy. An ideal claim walks a fine line. The goal is to draft the claim as broadly as possible so as to not unnecessarily limit the scope of protection while keeping the claim within the boundaries set forth by the prior art and the enabling disclosure. Remember, only novel, non-obvious, and useful inventions are capable of being patented. Therefore, while an ideal claim is drafted to provide broad protection, the claim cannot be too broad such that it is rendered either not-novel or obvious in light of the prior art in order to be accepted. It is typical for claims to be amended and limited during prosecution to obtain protection.

Drawings: Applicants are required to submit drawings when they are useful for the understanding of the invention. The USPTO has determined that applications for methods, processes or compositions of matter may not require drawings. Other applications, particularly applications for apparatuses or widgets, which incorporate component parts, are generally deemed to require drawings for a proper disclosure. The USPTO imposes requirements and formal restrictions on drawings; therefore, it is suggested that trained patent draft-persons be used to draft drawings.

Abstract: the abstract is a formal requirement which the USPTO requires that each and every non-provisional application contain. The abstract is a brief summary of the technical disclosure in the specification in fewer than 150 words.

Where – the United States Patent and Trademark Office

The physical “where” of patent applications is becoming less important in the modern world because most filings for patent applications are conducted online via the patent electronic filing system (“EFS – Web”). That said, the United States Patent and Trademark Office is the federal bureaucratic agency in charge of prosecuting all United States patent applications. The main office itself is located in Virginia; however, satellite offices have been opening around the country in select cities, each housing specialized art units designed to decrease the pendency for applications involving key hotspots of innovation. The URL for the USPTO is https://www.uspto.gov/.

Who – Inventors, Applicants and Examiners

Applicant(s): Generally, the applicant for patent rights is the inventor. Patent rights initially inure to the inventor and remain with the inventor unless he assigns or licenses his rights. Such assignments typically occur via sales or through contractual relationships, such as when an employee develops the innovation as part of his employment with a company. The provisions of the American Invents Act allow a company, to which an invention is assigned, or to which the inventor has a duty to assign, to apply for patent rights to the invention in the name of the company. Therefore, it is possible and rather common for a company to file a patent application.

When two or more inventors contribute to the conception of the invention they are termed joint inventors. It is important to determine the inventive contributions of each person involved in the creation of the invention. For example, as patent prosecution proceeds, it is possible and even likely that certain claims sought for patenting will be rejected. It is, after all, the USPTO’s job to be the gatekeeper ensuring that the monopoly of patent rights is not handed out lightly. Therefore, as claims are removed through prosecution, it is possible for a listed inventor, whose contributions only applied to cancelled or rejected claims, to no longer qualify as an inventor. If that happens, the affected inventor needs to be removed from the application.

Examiners: The USPTO employs examiners separated into art units, each specializing in a particular field. Many of the examiners have specialized degrees in the sciences (chemistry, biology, physics, engineering etc.), and a juris doctor degree, or other practical experience pertinent to their art units. For example, an application for a computer related invention will likely be assigned to a computer related art group wherein an examiner with a background in computer science will prosecute the application.

When to File

The inventive process commences at conception. Interestingly, all that is required to file a patent application is that the invention be fully conceived. The inventor or applicant must have enough of the invention conceptualized so that he can disclose the invention, in writing, to enable others in the field of the invention to make or use the invention.

The current patent system behooves potential applicants to “file early, file often.” As previously discussed, the United States patent system was reformed by the America Invents Act, switching the patent system to a ‘first to file’ system from the long standing ‘first to invent’ system. Admittedly, some exceptions to “first to file” exist under the current governing laws; however, the gist of the system is that the first applicant to file an application for a particular invention with the USPTO is deemed the inventor under the patent laws, preventing a later filing applicant from obtaining a patent. The “file early, file often,” strategy has been adopted by many corporations. The strategy is to file provisional applications as soon as a potentially marketable invention is conceived and follow up with additional provisional applications as notable improvements are made. This system allows for inventors to claim the earliest possible priority date for the invention while fleshing out the details to determine if a full non-provisional application is warranted.

In addition to the other considerations, the patent laws impose certain time limits or constraints on the filing. As discussed previously, the United States patent system imposes statutory bars that govern the novelty of a proposed invention. If the invention is disclosed to the public such as by use, sale, offer for sale, publication or otherwise, the statutory bar period is triggered. Any of the actions grouped as public disclosures of the invention trigger a one year countdown by which an application must be filed with the USPTO or no patent protection can be obtained.

How- the Patent Process

The typical patent process described herein involves the use and assistance of a registered patent attorney or patent agent. This process generally commences with an initial consultation in which the attorney explains the patent process to the potential-applicant and the potential-applicant discloses the invention to the attorney. After the initial consultation, a patentability study is often performed to determine the potential likelihood that a patent could be obtained. After a promising patentability study, or otherwise skipping the study entirely, a formal patent application is prepared and filed with the USPTO. In due time, the application will be assigned to an examiner who will review the innovation for patentability. If deemed patentable, the patent process concludes with the receipt of an issued patent. If not, the applicant has opportunity to submit arguments in favor of patentability.

Patentability Study

Patents are often a costly endeavor. Therefore, many applicants elect to “do their homework” before embarking in the process. In other words, before spending considerable sums on the patent process, many applicants order a patentability study to gauge the viability of their proposed patent application. A typical patentability search seeks relevant prior art which may be used by an Examiner to reject an application based on either novelty or obviousness grounds. These searches are usually conducted through a patent attorney, a patent agent or third party companies which specialize in prior art searches.

In the patentability opinion, a qualified person, typically the patent attorney or agent, uses the relevant prior art from the patentability study and compares it to the applicant’s disclosed invention in order to determine the potential for obtaining a patent. It should be noted that knowledge of the prior art can help to determine the breadth of a potential patent’s scope, and thus its overall granted protection. Also, as with most legal matters, issues of patent law require subjective determinations which are many times unpredictable. Therefore, even with a favorable patentability opinion, the applicant may not receive an issued patent.

While extremely useful, patentability searches are inherently limited and it can never be guaranteed that every potential prior art matter will be discovered. By law, the USPTO must keep any application in confidence for eighteen (18) months after the application’s earliest priority date (i.e., the date the application was first filed). Applicants can further delay the publication of patent applications by payment of non-publication fees. Furthermore, it should be noted that a majority of searches are conducted via “term searches.” Because a patent applicant is allowed to act as his own lexicographer, it is possible that the terms used in the search may be different from those used in patent applications and issued patents; therefore, it is possible that applications and patents exist which did not turn up in the search. Finally, many searches do not include the extensive listings of foreign patents, magazines, trade or technical journals, or other publications that may contain articles that will impact the patentability. Overall, the search acts to exemplify and bring to light the available pieces of prior art that are the most similar to the invention as described by the applicant. However, it is typical that at least a few patents from the preliminary search will turn up and be cited during prosecution of an application.

Draft and File Application

If the patentability search and opinion comes back favorable, the typical next step is to file an application. As previously discussed, there are two general types of utility applications for patent protection in the United States: provisional applications, which act more as place holders than anything, and non-provisional applications which are full-fledged applications for patent rights that are examined by the USPTO. Depending on his or her circumstances, an applicant has the choice to either (1) file a provisional application and then to come back within a year and file a non-provisional application or (2) file a non-provisional application and commence patent prosecution.

International Patent Rights

An applicant may have the ability to file for international patent rights. However, the scope of this guide is to discuss the United States patent system. It is highly suggested that any reader considering foreign or international patent rights seek qualified patent counsel to discuss options for doing so either under the Patent Cooperation Treaty or otherwise inform themselves of international patent rights. Note that a public disclosure is often a bar for most foreign patents.

Patent Pending Status

There is no such thing as a “provisional patent.” Once a patent application is filed with the USPTO, the invention covered and claimed by the patent application is deemed to have “patent pending” status. It is important to note that patent pending status does not grant the holder any substantive rights under the law. Indeed, no patent exists during prosecution for others to infringe, let alone be sued upon. The applicant can, however, alert others to the fact that it has claimed priority to an invention and that the applicant will bring an infringement action if necessary, if and when the patent issues.

Patent Prosecution

Expected Delays: As previously noted, the patent process is long. Typical applications can take anywhere between 2-4 years for the process to be resolved, with many applications taking even longer. The pendency period generally depends on the art class to which the invention is assigned and the backlog that art unit is facing at the time. Often a patent application may sit in a given art unit for one or more years before being assigned to an examiner for prosecution. It has been our experience that the art units for software, business method, and electrical engineering patents have generally experienced a heightened workload compared to many other units, and therefore have longer prosecution period.

It is possible to expedite a patent application under certain circumstances. Applications can be expedited at the USPTO under one of three categories: (1) payment of an additional fee, (2) by statute if the invention involves a certain, recognized class of subject matter, and (3) by statute based on the status (usually health or age) of the inventor. It should be noted that some expedited applications require a great deal of additional work on the part of the applicant.

Office Actions: During prosecution, the USPTO generally communicates with the applicant via one or more office actions which set forth a period of time for the applicant’s response. Examiners often object to certain aspects of the application in these office actions based on issues with formality (such as issues with the drawings) or substantive issues which concern the patentability of the claimed invention. If the examiner opines that the application is formally deficient or that the claimed innovation is not novel or is obvious, the examiner will first issue a non-final rejection in an office action. The applicant is allowed to submit an argument to rebut the examiner’s position. Depending on the circumstances, applicants may be able to employ several avenues for rebutting the Examiner including arguments rooted in law or fact, amending or cancelling claims in light of objections, or amending the specification to eliminate the formality issues raised by the examiner. In response to the applicant’s arguments, the examiner may grant the patent, object to the patent based on new grounds through another non-final rejection, or issue a final rejection. It is typical for an application to be met with one or more office actions before a final determination is made by the examiner. In the event that a final rejection is issued, the applicant may still be able to continue prosecution through the filing of an appeal with the Patent Trials and Appeals Board (PTAB), filing a continuation or a request for continued examination (RCE) to further seek protection.

Maintenance Fees: Although patent terms can last up to twenty years from the effective filing date, the USPTO requires the payment of periodic maintenance fees to keep the patent alive and enforceable. The window periods for the three payments are (a) 3 years to 3 1/2 years after the date of issue for the first maintenance fee payment, (b) 7 years to 7 1/2 years after the date of issue for the second maintenance fee payment, and (c) 11 years to 11 1/2 years after the date of issue for the third and final maintenance fee payment. These payments can be made up to six months after the above mentioned time periods (4, 8, and 12 years) with the payment of a surcharge fee.

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[1] There are three types of patents: utility, design, and plant patents. The focus of this guide is to acquaint the reader with utility patents because they are the most common and sought after of the three.
[2] In exchange for these exclusive rights, the patent holder must fully disseminate the invention to the public. Although others are prohibited from exploiting the patented invention during its term, the innovation enters the public domain upon expiration or abandonment, rendering the invention free for all to use.
[3] Trade secrets exhibit great benefits and drawbacks; however, this guide is limited to patent issues so a foray into the pro’s and con’s of trade secrets will not be discussed.
[4] For example, only asexually reproduced plants may be patented, and design patents can be obtained for any new, original, and ornamental design for an article of manufacture.
[5] See. 35 U.S.C. 101; Please note that the United States Supreme Court has recently heard a multitude of cases which impact patentable subject matter. The holdings of these cases are too numerous to detail in this guide; however, it is strongly recommended that the reader consult with a knowledgeable person, such as a registered patent attorney or patent agent, to discuss the various implications these cases may have on patentable subject matter.
[6] See. 35 U.S.C. 112, Paragraph 2
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About the Author:

Devin Ricci is an associate in the Baton Rouge office of Kean Miller. He joined the firm in 2012 and practices in the intellectual property group. Devin has experience in the four areas of intellectual property rights: patents, trademarks, copyrights, and trade secrets.

He represents a variety of clients including single inventors as well as companies of all sizes seeking a patent, artists and software engineers seeking copyright protection, and startup companies seeking to protect their intellectual property rights. He also has experience resolving intellectual property issues in the energy, refining, textile, marketing, advertising, manufacturing, and industrial sectors. Devin frequently drafts and files federal and state trademark applications for companies of all sizes as well as federal copyright registrations. He is a registered patent attorney and is licensed to practice before the United States Patent and Trademark Office.

As a registered patent attorney, Devin also drafts, files, and prosecutes process patents such as refining and chemical processes, apparatus patents such as consumer and industrial products, and systems patents such as plant designs. In addition to the experience in filing and prosecuting applications to obtain various intellectual property rights, he also has experience in drafting licensing and acquisition agreements concerning the various intellectual property rights.

Devin earned his B.S. in Biochemistry in 2009 from Louisiana State University. While earning his degree, Devin worked as a student researcher under a professor in the Biological Chemistry Department. He earned his J.D., magna cum laude, in 2012 from the LSU Law Center, where he was a member of the Order of the Coif. He also earned an additional diploma in Civil Law while attending the LSU Law Center.

Devin may be reached at 225.389.3713 or devin.ricci@keanmiller.com

This article first appeared on the Louisiana Law Blog here