How Do You Amend Your Patent Application After Allowance?

Friday, 10 February, 2012 09:24 Written by Mark Malek 0 Comments

By: Mark R. Malek

As has often been the case with some of my articles in the past, I like to introduce little practice tips as something interesting happens in my day to day life of prosecuting patent applications.  This past week brought me something interesting.  I received a call from an Examiner on a case that was already allowed.  This was a great case because I was dealing with an Examiner that really tried to take every possible step to help find allowable subject matter and place the application in condition for allowance.  It was not like some he examinations of the past where I was up against an Examiner that was in a rush to issue a Final Office Action.

Needless to say, however, I was a little tense when I received a call from an examiner on a case that was already allowed. As it turned out, the Examiner noticed that the serial number in the reference to the parent application was incorrect. No, that is not a typo – I am referring to the previous case upon which this case relied.  This application was a continuation-in-part application, which allowed our client to claim the benefit of the previously filed application (another post will follow shortly on continuation and continuation-in-part applications). The serial number that was referenced in the application was off by one digit. The issue, however, was that prosecution of the application was already closed. The Examiner had mailed a notice of allowance. After a notice of allowance is mailed, there can be no more amendments to the application. There is, however, a mechanism to make corrections to an application that has already been allowed, but for which the issue fee has not been paid.

The mechanism that allowed us to amend the application after the notice of allowance has been mailed is found in 37 CFR 1.312.  This section of the regulations allows for the introduction of an amendment to the patent application after the mailing of a notice of allowance.  Section 714.16(d) of the Manual of Patent Examining Procedures (MPEP) which, of course, is the bible of patent prosecution, outlines the steps necessary to amend an application after the notice of allowance has been mailed.  In short, you just have to be sure not to introduce new subject matter.  In this particular case, we were merely correcting the serial number of the parent application, so no new subject matter was added.

If the issue fee had already been paid, there is another mechanism to correct a patent. This is found in Section 1400 of the MPEP.  The only downfall of this section is that the correction is not actually made to the patent itself. Instead, a certificate of correction is attached to the patent indicating the correction that has been made. I will write more about certificates of correction in a later post. In the meantime, I just wanted you have some information regarding another practice that that I came across this past week.

COPYRIGHT INFRINGEMENT BY CHRYSLER?

Tuesday, 07 February, 2012 16:43 Written by danieldavidson 3 Comments

By Daniel Davidson

The Big Game (I will attempt to not use any of the words that you are banned from using in a commercial during football’s final event) does not just draw crowds for the battle of two teams scrapping for the glory of number 1.  The game also attracts because of the zillion dollar commercials.  With over 100 million viewers, companies make sure they create a lasting impression in their commercials. 

The past few years, Chrysler has made some epic commercials which last approximately 2 minutes.  This year, they used Clint Eastwood to narrate a commercial that refers to the American economic downturn as “halftime.”   Portraying Detroit and their losses due to the financial crisis, Clint gives hope for a new tomorrow, or “second half.”  Unfortunately, the commercial almost didn’t see a second half.

In the subsequent days since the game the G-Men won a silver trophy, Chrysler made the commercial available on their YouTube page.  The page featured interactive buttons to share the commercial on social media sites.  This would be cool and all except for the fact that instead of a commercial, there was a notice which read, “This video is no longer available due to a copyright claim by NFL Properties, LLC.”

NFL Properties, LLC is a subsidiary of the National Football League, Inc. which handles its trademarks and such (I have lost my attempt at refraining from using words not allowed in Super Bowl commercials).

I went ahead and watched the commercial multiple times to see what, if any, part of the commercial could infringe upon an NFL copyright.  In my attempt, I found none.  I am sure many others have done the same.  This is probably why the commercial has been reinstated on Chrysler’s YouTube page.

Did the NFL maybe believe they were the owners of the rights to the commercial since it was aired during the Super Bowl?  Maybe they thought they owned the rights to the word “halftime?”  Nonetheless, it seems that the NFL has retracted their copyright infringement claim, for now.  Cheers.

Can I Trademark a Sound?

Monday, 06 February, 2012 06:18 Written by Aaron Thalwitzer 0 Comments

Cooooo-stanza! See? Trademark sounds work.

We hear them every day. The clip that plays before the radio show you listen to. The short sound before a movie or TV show you watch, linked inextricably with a logo or other item.

A sound trademark is a trademark in which sound is used to uniquely identify the commercial origin of products or services. Think, “By Mennen” or “Co-stanza!”

The test for whether a sound can serve as a trademark “depends on [the] aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck”. In re General Electric Broadcasting Co., 199 USPQ 560, 563 (T.T.A.B. 1978) (a series of bells for radio broadcasting services was held to be capable of functioning as a service mark upon evidence of acquired distinctiveness. The decision also referred to other sound marks that had been registered in respect of series of musical chimes, sound of a creaking door, sound of a coin spinning on a hard surface and electrically produced series of three notes).

The biggest and baddest case was probably when Harley-Davidson tried to register as a trademark the sound of a Harley Davidson motorcycle engine. Of course, Harley Davidson’s competitors filed oppositions against the application, arguing that many similar motorcycles use the same engine which produces the same sound. After goodness knows how much money spent litigating (and six wasted years) Harley Davidson withdrew their application.

In recent times, sounds have become more common trademarks in the marketplace. The World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights definese a trademark as, “any sign…capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

Check the “USPTO Kids’ Pages” (somehow, that exists) for samples of many well-known trademark sounds.

Aaron Thalwitzer is an attorney practicing in Melbourne, Brevard County, Florida.

Duty of Disclosure During Patent Prosecution and Supplementing the Disclosure

Friday, 03 February, 2012 14:01 Written by Mark Malek 0 Comments

By: Mark R. Malek

You may recall that I wrote an article recently which noted that there is a duty of disclosure when filing a patent application in the United States.  For the sake of a quick summary, in return for the exclusive right to exploit an invention, the government requires the Applicant to disclose all prior art known to them in order to ensure a more detailed examination of the patent application.  In other words – no hiding the ball on the Patent Office.

The process in which information is disclosed to the Patent Office is by filing an Information Disclosure Statement (IDS).  The IDS includes a list of all the prior art references that the Applicant believes are relevant to the invention, as defined by the claims in the patent application.  There is a lot of prior art out there, and the best that every Applicant can do is to disclose the prior art that they know about.

The big question is about the prior art that the Applicant discovers after filing the IDS.  Is all lost?  Has the Applicant now committed fraud on the Patent Office?  That depends on how this is handled.  If the Applicant does nothing about the prior art that is discovered, then the likelihood that the patent stands up to a challenge of validity is very, very slim.  In fact, if it can be shown that the Applicant later became aware of relevant prior art, and chose not to inform the Patent Office, it is almost a foregone conclusion that the patent will be found invalid.  Worse yet, the Applicant may be found to have engaged in inequitable conduct, which can lead to liability for attorneys’ fees.

So how does the Applicant avoid this?  By filing a supplemental IDS.  It is exactly what it sounds like.  It is another IDS that supplements the original.  This is simple enough, and a good way to ensure that the Applicant has fulfilled the duty of disclosure to the Patent Office.

It’s STILL Kinda Like Dating: Unified Patent Fiasco Keeps Continuing

Thursday, 02 February, 2012 08:52 Written by Danie Roy 0 Comments

Danie Roy

Okay, to explain this one, I’m going to have to recap by taking you back to younger days… middle or high school will do. I want you to remember the most popular guy in school: he was probably the star sports player, dashingly handsome, girls wanted to be with him, and guys wanted to be him. Now that you remember that guy, imagine his name is Mr. Headquarters.

Yes, I know, you remember this part, but play along a little longer. Now remember the three most popular girls in school: they were probably pretty, from relatively wealthy families, and cheerleaders. They probably were also all friends (or frenemies) and regularly fought over the most popular guys in school. Now name them London, Paris, and Munich.

If this is Mr. Headquarters, it all makes sense, really.

“Wait a minute,” you protest, “you’ve already written this piece!” you’re probably shouting at the screen. Well… sort of. I wrote a piece explaining the fight over Mr. Headquarters before almost 2 months ago… when the end of the fight was supposedly in sight. In fact, this fight was meant to be resolved almost half a year ago and this plan has been in the works to the tune of three decades. Plus, a lot has happened in 2 months. Granted, a lot HASN’T happened in 2 months, either, but you know what I mean.

For starters, Italy actually got over the whole “you don’t speak my language” thing and has decided to join the party. At one point, it was speculated that she would do this on the condition of going to the party with Mr. Headquarters, but that clearly didn’t happen.

So now…poor Spain is sitting out, Belgium is offering to hold Mr. Headquarters while the other girls duke it out, and we’re still a ways away from getting the party actually started.

It’s not just kinda like dating, it’s EXACTLY like dating.

NEWT GINGRICH SUED FOR USE OF ‘EYE OF THE TIGER’

Tuesday, 31 January, 2012 17:50 Written by danieldavidson 0 Comments

By Daniel Davidson

These past few years, musicians have made it no secret that they prefer that the Republican Party not use their music.  Last year I reported on a story that consisted of David Byrne, lead singer of the Talking Heads, against Charlie Crist, Florida Govener.  You may recall, Crist was running for the U.S. Senate and ran an ad which contained Talking Head’s song “Road to Nowhere.”  In that case, Crist accepted settlement of a YouTube video where he “sincerely” apologizes for his misappropriation of the song.

In a recent case filed by Frank Sullivan, co-author of the inspirational song “Eye of the Tiger,” another Republican politician has become a target, this time Newt Gingrich.  This instance smells vaguely familiar to John McCain’s run in with musician Jackson Brown for he and the Ohio Republican Party’s use of “Running on Empty” at a rally.

No response has been filed on behalf of Newt, yet, but I would expect a fair use defense to be applied.  In most of the cases filed against politicians involving unauthorized use of songs (since fair use isn’t a defense to rendezvous in the oval office), a fair use defense has been raised, but no opinion has ever been given by the courts.  This leaves the question of whether politicians are able to use a song under the fair use blanket.  Also, if the campaign had purchased an ASCAP or SESAC license, a defense that they have authorized use is also plausible.  Newt’s worker bees have yet to comment on this present situation.

I would imagine that a quick resolution will be reached between the parties since Newt has no time to deal with a lawsuit while trailing in the polls.  This is unfortunate because I would like to see one of these taken all the way to the end.  That way the long running question will be answered.  Cheers.

Can I Trademark a Color?

Monday, 30 January, 2012 05:57 Written by Aaron Thalwitzer 0 Comments

Fiskars has registered the orange of their scissors.

Many products use a particular color to distinguish themselves.

The definition section of the Lanham Act, 15 U.S.C. § 1127, defines trademarks as including “any word, name, symbol, or device, or any combination thereof”. Further, the Court held that a product feature is only functional, and thereby barred from trademark protection, “if it is essential to the purpose of the article or if it affects the cost or quality of the article”. 514 U.S. at 165. Under this case, products with potentially confusing colors would be denied protection under the so-called “functionality doctrine”.

There are generally two reasons for this, which often overlap. First, the color may be useful or have a function, for example, chewing gum may match color with flavor — think red cherry gum. Second, the color may purely aesthetic, like a black iPhone; color here serves no functional purpose but is an aesthetic consideration. The United States Supreme Court in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) held that a color could meet the legal requirements for trademark registration under the Lanham Act, provided that it has acquired secondary meaning in the market. That means that a color alone could be a trademark, if it isn’t a useful feature of the product (and usefulness doesn’t include identifying the product’s brand).

This leads to problems that defy common sense. Why should you be forced to pick a less useful color in order to get trademark-type protections? The flip side of this is that there are only so many colors distinguishable by the human eye. We all know Coca-Cola red, but if that red was shifted only slightly, you’ve got a new color, but is there a likelihood of confusion? US intellectual property law is behind the times on this issue. Colors have been increasingly used as trade marks in the marketplace, but color was was not considered to be a distinctive ‘trademark’ until the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) was ratified. TRIPS created minimum standards of protection and regulation for most forms of intellectual property in all member countries of the WTO. TRIPS also broadened the legal definition of trademark to encompass “any sign…capable of distinguishing the goods or services of one undertaking from those of other undertakings” (article 15(1)).

Most if not all major corporations have registered trademarks with the USPTO, and why not? Trademark protection is some of the best bank for your buck around relating to property rights. When I drive around my hometown of Melbourne, Florida, I can’t help but think of all the businesses that should register at least some aspect of their trademark.

I Didn’t Respond To An Office Action and now My Patent Is Abandoned – Now What?

Friday, 27 January, 2012 08:36 Written by Mark Malek 0 Comments

By: Mark R. Malek

If you haven’t noticed, many of my posts lately have revolved around the questions that I get from various clients.  This one was a tough one. Not necessarily from the perspective of not knowing what to do, but having to hear the horror story from this client.  Unfortunately, it is a horror story that I have heard numerous times. I received a call recently from someone that was going the patent process alone.  At least he was until he received a “Notice of Abandonment” from the Patent Office.  How could this happen?  All those years of hard work down the drain?  Is there anything he can do?  Yes.

First and foremost, the patent process is not a simple one.  There are several nuances, and the process itself is very unforgiving.  There really is not much room for error.  For example, the deadlines are real deadlines.  These are not suggestions.  It is not ok to submit something one day late.  That’s not going to cut it in the patent prosecution system.  The one great thing about the patent system, however, is that you always have plenty of time to respond to any issue that may arise during the patent process.

The initial findings as to patentability of your invention are usually contained in an Office Action, which is a decision on patentability as expressed by the patent Examiner.  Many times, Office Actions include rejections of the claims that define the scope of the invention.  There are several ways to respond to an Office Action.  For example, you may chose to amend the claims, add new claims, or simply present arguments to the Examiner as to why the claims as filed define over any prior art that was cited.  No matter what you decide to do, however, you need to respond to the Office Action within three months from the date that the Office Action was mailed.  This is generally the case – sometimes it is two months, sometimes it is one month, and there are always extensions of time that can be filed (for a fee).

As you have probably guessed, if you do not timely respond to an Office Action, the application goes abandoned.  This is outlined in 711.02 of the Manual of Patent Examining Procedures (MPEP).  Is that it?  Is all lost?  Not necessarily.  If your application goes abandoned, there is a mechanism to revive the application.  You can file a petition to revive the application, which is not at all cheap.  The same section of the MPEP mentioned above also outlines the two types of petitions to revive – a petition to revive because the application was unintentionally abandoned (the expensive, and more common one) and a petition to revive because the application was unavoidably abandoned (less expensive, but nearly impossible to prove).

Upon filing the petition to revive, along with the appropriate fee, the application will generally be revived by the PTO.  For a petition to revive an application that was unavoidably abandoned, you will need to provide some kind of story as to why the application was unavoidably abandoned.  For a petition to revive an application that was unintentionally abandoned, all you pretty much need to say is “my bad” and the petition will be granted.  Personally, I have only seen one petition to revive for an unavoidable abandonment that was granted.  In that case, it turns out that the Applicant never received the Office Action because it got stuck somewhere in  patent office mail room limbo.  How could you possibly have avoided that?  I have filed plenty of petitions to revive based on unintentional abandonment (these are for clients that have come to me with an abandoned application and a check), and these are generally very smooth and simple to get granted.

Terms of Service and Your Copyrights

Thursday, 26 January, 2012 07:52 Written by Scott Nyman 3 Comments

Upon logging into my Gmail this morning, a mandatory step in my daily routine, I noticed an alert that Google is consolidating the privacy policies and terms of service for all of its various online offerings. Being in the business of law, I felt compelled to read through the changes to see how Google will handle managing information about a user.

For those that are unaware, a privacy policy generally comprises a statement from a company regarding the handling of a user’s personally identifying information. The privacy policy is typically accompanied by a terms of service, which sets out the rules a user must abide by to gain access to a service. The terms of service may often define the legal relationship between a user and a service provider, the ways in which the service may be used, and the procedure to follow in the event the terms are violated.

Of course, being an intellectual property attorney, I immediately look to see how the rights relating to user owned copyrights and other IP is handled. Google’s terms of service reads:

Some of our Services allow you to submit content. You retain ownership of any intellectual property rights that you hold in that content. In short, what belongs to you stays yours.

Sounds amazing, right? But, if you read on…

When you upload or otherwise submit content to our Services, you give Google (and those we work with) a worldwide license to use, host, store, reproduce, modify, create derivative works (such as those resulting from translations, adaptations or other changes we make so that your content works better with our Services), communicate, publish, publicly perform, publicly display and distribute such content. The rights you grant in this license are for the limited purpose of operating, promoting, and improving our Services, and to develop new ones. This license continues even if you stop using our Services (for example, for a business listing you have added to Google Maps).

So, if a user posts one of his or her copyrighted materials on onc of Google’s services, the user in effect grants Google a non-revocable license to use the material, essentially, how they see fit, for “operating, promoting, and improving service, and develop new services,” a pretty broad group of categories.

This peaked my interest as to how a user’s copyrighted materials are handled on other popular social sites, such as Facebook.  Again, things start out rosy:

You own all of the content and information you post on Facebook, and you can control how it is shared through your privacy and application settings.

 But the devil is in the details:

For content that is covered by intellectual property rights, like photos and videos (IP content), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have not deleted it.

When you delete IP content, it is deleted in a manner similar to emptying the recycle bin on a computer. However, you understand that removed content may persist in backup copies for a reasonable period of time (but will not be available to others).

To my surprise, Facebook seems to make less of a grab on your copyrighted materials than Google. Of concern, Facebook claims the right to transfer and sub-license your content. However, it appears that any and all of Facebook’s rights in your content ends upon deletion of the content from Facebook’s system by the copyright holder and those with whom the content has been shared.

As a little bonus, section 5.6 of Facebook’s terms of service states, “You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall and 32665), or any confusingly similar marks, without our written permission.” So, allegedly, the word “face” is now owned by Facebook. If this turns out like the Superbowl-”Big Game” situation, we may have to start referring to our faces as our “head fronts.”

Trademark Infringement: One Name, Two Restaurants, Two Blocks Away

Monday, 23 January, 2012 05:29 Written by Aaron Thalwitzer 0 Comments

You are not alone!

I’m in Orlando, Florida, this weekend, visiting my family, and an old friend has asked me a question.

Question: I’ve owned and operated a restaurant under the name [JR's] for 20 years. A month ago a restaurant opened up less than a mile away with the exact same name, [JR's] [ed. note - names have been changed to protect the innocent]. They serve barbecue, we serve Tex-Mex. Both are casual, moderately-priced, serve beer, and are generally ‘fun’ places to eat. They stole my name, right?

Answer: You are alleging trademark infringement, which, once proved, could warrant an injunction, damages, or both. You have a good claim.

First, let’s again review the Lanham Act, which creates a cause of action against any person who, in connection with goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin … which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the… connection … of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, [or] services… See 15 U.S.C. § 1125(a)(1).

The key for a plaintiff in proving infringement of its trademark is to show the likelihood of consumer confusion. See Restatement (Third) of Unfair Competition § 21 cmt. a (1995) (“The test for infringement is whether the actor’s use of a designation as a trademark … creates a likelihood of confusion ….”).

An injunction will force the new JR’s to stop using the mark “JR’s”. A party seeking a preliminary injunction must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits or (b) a sufficiently serious question going to the merits and a balance of hardships tipping decidedly in the moving party’s favor. See Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979) (per curiam). In a trademark infringement case, proof of a likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm. See Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir.1988).

Relief may be available under 15 U.S.C. §§ 1114 (imitation of registered mark) and 1125(a) (false designation of origin). To prevail on a claim of trademark infringement, a plaintiff must show, first, that its mark merits protection, and, second, that the defendant’s use of a similar mark is likely to cause consumer confusion. I will assume you have have validly registered your mark (if not please do so; a registered mark in continuous use for five consecutive years after registration, and still in use, becomes incontestable under 15 U.S.C. § 1065) and turn consider the pivotal question: the likelihood of confusion.

Now we apply the multi-factor test, which requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant’s good faith in adopting its mark, (7) the quality of the defendant’s products, and (8) the sophistication of the purchasers. This will give us a good idea of the likelihood of confusion, but the court is not limited to these factors, and all must be viewed in the context of whether the consumer will be confused as to the source of the product.

I’ll go factor by factor.

(1) Your restaurant has been around for 30 years, so I will assume you have a strong mark. (2) The marks are identical. (3) You are directly competing geographically (6) and in terms of markets and could walk from one location to the other. (7) Good faith is impossible to determine without additional facts, but it may be inferred that the new JR’s is aware of your mark. (7) I don’t know anything about the quality of Defendant’s products. (8) I’ll assume the purchasers are an average sampling of the population, since the prices are moderate and you both serve beer.

There is an additional factor. The mark, “JR’s” probably derives from someone’s proper name. If both restaurants have proprietors named “JR”, things get mucked up. “[C]ourts generally are hesitant to afford strong protection to proper names, since to do so preempts others with the same name from trading on their own reputation. ‘To prevent all use of [a man's personal name] is to take away his identity; without it he cannot make known who he is to those who may wish to deal with him; and that is so grievous an injury that courts will avoid imposing it, if they possibly can.’” Brennan’s Inc. v. Brennan’s Restaurant, L.L.C., 360 F. 3d 125 (2d. Cir. 2004). The name of a person, therefore, like other descriptive marks, is protectible only if it has acquired secondary meaning.

The ultimate answer will depend on the overall impression of the name. I believe, on these facts, that you would probably prevail on an infringement claim. However, if the new JR’s added “BBQ” to their name, you would have an uphill battle. You will have to show that consumers will be confused by the names. Given the extreme proximity of the restaurants, one can envision two people meeting at disparate JR’s if an address wasn’t specified. You may want to consider hiring a trademark attorney. There are other claims and options beyond the scope of this article.

SOPA, PIPA, and a Criminal Copyright Indictment Against Megaupload.

Saturday, 21 January, 2012 09:00 Written by Rene Dial 0 Comments

By Rene Dial

What a week in the world of intellectual property protection!

Okay I am trying to figure this one out.  Legislation is/was being pushed through with regard to SOPA and PIPA.  Read Danie Roy’s article here.  Then a couple of days after Wikipedia, Craig’s List, Google, and a bunch of other sites were down in protest to SOPA and PIPA the government shows that they do have the power to stop online piracy overseas. On Thursday the US Justice Department and FBI shut down Hong Kong based company Megaupload, seized $50 million in assets, and begun extradition proceedings in New Zealand for the company founder according to Robot6.comicbookresources.com.

Let me get this right the government has the ability to shut down a site for alleged copyright infringements, freeze assets, extradite those involved from other countries but yet we need SOPA and PIPA to allow us to basically do what was just done to Megaupload.  Not sure about you but how about we utilize the laws we already have in place instead of enacting new broader legislation.

To be honest I never heard of Megaupload before this hit the news.  I am one of those guys that believes in paying the artist so that the artist can continue to put out music or movies that I love.  A lot of the problems with the industry now is getting the product to the masses in a cheaper and more efficient way.  The music industry has done a great job but movies are a different story.  A person can go to a Redbox and rent a movie for a dollar but if they want to stream the movie from a website or cable provider the provider wants somewhere between $5 to $7 to stream the same movie and they do not have to deal with inventory or with maintenance of a box somewhere. Okay I will stop my rant and get back to Megaupload.

According to ABCnews.go.com the indictment alleges that Megaupload caused a half-billion dollars in copyright losses.  A copy of the indictment can be found at onlinewsj.com.  As this is a criminal indictment I am curious to see how this plays out and if the hearings will occupy the news stations as some other well known criminal trials have in the past.  On ABC.com the article had a quote that was placed on Megaupload before the site was taken down. “Ira P. Rothken, a lawyer for Megaupload in Novato, Calif., said “the allegations do not appear to have support in the law, and the company is going to vigorously defend against them.”"  Something tells me that they really do not have a choice but to vigorously defend themselves as they are facing criminal not civil charges.

Have a great weekend!

The Duty of Disclosure When Filing A Patent Application

Friday, 20 January, 2012 22:24 Written by Mark Malek 0 Comments

By: Mark R. Malek

When people think of most areas of law, they generally picture an adversarial process.  In other words, most areas of law involve two parties in a dispute of some sort and each party having their side of the story that they want a judge (and sometimes a jury) to proclaim as being the correct side of the story.  That is not the case in the field of patent prosecution.  Although it may sometimes feel as though the patent Applicant is on one side of the fence fighting with the patent Examiner, it truly is not an adversarial process.  Instead, it can be better described as a cooperative process wherein the patent Examiner is working with the patent Applicant in order to determine the correct level of protection to be granted from the federal government.

In order to achieve this goal, patent law requires that a patent Applicant disclose the best mode of carrying out the invention, and disclose any prior art that they know of.  Many people come to me and indicate that they do not want to disclose everything about their invention, at which point I have a very serious conversation with the Applicant wherein I indicate that they must disclose all that they know about their invention.  The issue that many of the clients have, and I understand where they are coming from, is that they want to maintain some of their invention as a trade secret.  In patent law, that just about equates to having your cake and eating it to.

During patent prosecution, there is a trade off.  Essentially, the federal government will agree to grant you a right to exclude others from making, using, selling or offering to sell you invention in exchange for you disclosing everything you know about your invention, and also working with the patent office to ensure that the patent Examiner has all the relevant information in order to make a decision as to whether or not your invention is patentable.  This includes informing the patent Examiner of any prior art that you may know of.  That is regardless of whether or not the patent Examiner would have found the prior art during the search that is conducted during prosecution.

This article very much so simplifies the process, as well as the duty to disclose prior art, but there is one thing that I want to leave you with.  That is – your attorney is your ally in this process.  Your patent attorney should walk you through the process and should instruct you to disclose any information that could be considered prior art.  The risk you run of not disclosing relevant information is, in the worst case, invalidity of your patent and, in extreme circumstances, the possibility that a court finds that you engaged in inequitable conduct before the patent office, exposing you to potential liability.  The moral of the story is that you should never think it is a good idea to keep something from your attorney regarding your invention.  I will post additional articles about the importance of your relationship with your attorney and how the attorney-client privilege should encourage you to let your attorney in on everything that you know about your invention.

SOPA and PIPA vs The Internet: The Epic Copyright Battle

Wednesday, 18 January, 2012 15:40 Written by Danie Roy 2 Comments

Danie Roy

Before we begin, I’d like to make some statements that you may remember from when I discussed embryonic stem cells: this article is largely meant to be informative, although it is very difficult to stay completely unbiased when I am informing you about the opinions of other people. I apologize in advance if my own opinion shines through too brightly, largely because this seems to be an issue that is polarizing people more than stem cells ever could. Add the previous sentence to the list of things I never thought I’d say. Then again, this is the internet.

By now, you’re probably aware that you can’t access Wikipedia or Craigslist as you normally would. You’ve gone to see teh lolcats or hang with your bronies, and you’ve been greeted with a popup begging you to take action. The Google doodle is now a black box. Even the news stations are talking about the sites going down. What’s going on? Just a preview of what could happen if SOPA and PIPA pass in their current forms.

SOPA and PIPA are bills in the House of Representatives and Senate, respectively, that were intended to stop online piracy from overseas sites like The Pirate Bay. Currently, nobody can touch The Pirate Bay, as evidenced by their response letters (or, as Scott called them, f/u letters). The language of the bills is entirely too broad, however, and reeks slightly of “did not do the research.” For instance, you don’t have to infringe to be taken down, you just need to be capable of infringing: that is, have a comment box, text, links, a link to someone else’s link, etc. And you may be guilty until proven innocent.

These are popping up everywhere today.

I’ll be the first to admit that most people have no idea what’s going on in Congress most of the time. I personally would rather read image file wrappers, watch paint dry, or have a root canal than watch C-SPAN. It’s boring, and in a language called “legalese.” Great for curing insomnia, though.

Before I get too far into this, I’m going to be perfectly clear: I am FOR protecting intellectual property. I’d be an out-of-work hypocrite if I wasn’t; protecting intellectual property is my job as a patent agent. However, I personally believe that SOPA and PIPA can’t protect intellectual property in their current forms.

Here’s why people are protesting and your favorite sites are dark:

  • A site does not necessarily have to infringe to be taken down. A site that could infringe, in other words, has a comment box, links, or any upload capability, can be targeted.
  • If you’ve been accused, there is no real defense: you’re assumed guilty until proven innocent, and the bill makes proving yourself innocent extremely difficult. In order to be innocent, your website must not have the functionality to infringe; which of course, all websites have. So, you’re either infringing or you’re perjuring yourself. Take your pick.
  • Takedowns are incredibly easy to initiate. The RIAA already has a history of using questionably ethical legal tactics to take out legitimate businesses. Imagine what they can do with SOPA and PIPA on their side.
  • Ever posted anything to any website? YouTube, ICanHasCheezburger?, even Facebook? Yep, you’re a potential target.
  • Ever used Gmail, Yahoo! mail, or AOL mail? Same deal.
  • Fair use will be practically considered obsolete… and ignorance will not be a defense.
  • Anyone working for the government (like our wonderful Congresspeople) is immune from the consequences of violating SOPA and PIPA.
  • The link I posted to the f/u letters? That could be a violation of SOPA/PIPA, due to The Pirate Bay’s unsavory activities.
  • Earlier versions (and possibly later versions) allowed for destabilizing the infrastructure of the internet in order to “protect” IP. That is, addresses could be removed from the universal internet lookup system, DNS, which would make site spoofing that much easier… hello viruses and stolen personal info!

To quote a godly entity, you “should pretend like it is a big deal, because it is.” Whether you’re for or against SOPA/PIPA, you really need to speak up about this issue. It affects the internet as we know it, and it affects intellectual property, too. If you’re like me, you’re for protecting intellectual property, but against seriously inhibiting the free flow of the internet.

To read more:
Tim O’Reilly’s thoughts (with some from Nancy Pelosi)

Wikipedia’s two working English pages: SOPA and PIPA

LA Times: Three congresspeople drop support, including FL Senator Marco Rubio

PCWorld’s rather factual take

THE NATIONAL MEDAL OF TECHNOLOGY AND INNOVATION

Tuesday, 17 January, 2012 17:31 Written by danieldavidson 0 Comments

By Daniel Davidson

I remember the day i won an award from the President.  Yes, it included a shuttle run and various other physical activities, and was presented to me by my PE teacher, but I still won an award from him!  Albeit, the Presidential Physical Fitness Award is not quite the award that is presented annually to the leading innovator of our country, however, it is an award from the POTUS.

All kidding aside, it has come time for nominations to be submitted for the National Medal of Technology and Innovation.  This medal is given to the individual, company, or group that has made the biggest contributions to America’s economic, environmental and social well-being through their inventions and/or innovations.

Currently, the U.S. Patent and Trademark Office is accepting nominations for the award, and information on the nomination process and a nomination form can be found here.  Some of the guidelines include:

  • No self nominations.  They will be rejected.
  • You can nominate an individual, a group (up to 4 people), a company, or a division of a company.
  • Governmental agencies and laboratories are eligible.
  • Finalists are subject to FBI background checks (I would only be worried if the Florida Bar was conducting the background check).

Now that you are up to speed on how to go about nominating someone, or “something,” here are some notable winners:

  • 1985 – AT&T Bell Laboratories – For contribution over decades to modern communication systems.
  • 1985 – Apple Computer, Inc. – For their development and introduction of the personal computer which has sparked the birth of a new industry extending the power of the computer to individual users.

Here is to the next recipient of the National Medal of Technology and Innovation.  Cheers!

Asset Protection and Intellectual Property: A No-Lose Situation, Ideally

Monday, 16 January, 2012 04:31 Written by Aaron Thalwitzer 0 Comments

So, you want to make money from your intellectual property? First, read this article by Mark Malek here. Now that you’re primed like a lawnmower, I’m sure you’d agree that making money is more likely to happen if you’re not losing money, no? Stay with me. If you get sued, the best you can usually hope for is breaking even, and, usually, legal fees and the time you waste will result in a net loss, even if you win. If you lose, and judgment is entered against you, or you decide it is in your best interests to settle, cash is still flowing the wrong way. One of the considerations in deciding upon a settlement amount is the potential net loss. If you have no assets, you have less to lose. If you have assets (intellectual property among them, and possibly the most valuable), you have much to lose, and the other party(ies) knows this. Therefore, each and every one of you should educate yourselves on protection your assets, especially if  they are valuable.

The area in and around Melbourne, Florida and Brevard County, Florida, where I practice law, are densely packed with technology and media companies, for whom intellectual property is often the substance of their business. Many of these companies know that patents, trademarks, copyrights, and trade secrets are their primary income source, without which they could not thrive or even survive. The most obvious, common, and often cheapest way to protect your IP is to properly transfer it to a separate limited liability company (LLC). For example, your company could create a business structured as follows. The founder of a company create a holding company structured as corporation. The corporation then two LLCs, one which owns and holds the IP, and one which has contact with the public.

Or, you could do without the holding company and just have the operating company lease the IP from the IP holding LLC See a lawyer for this. There are no ifs ands or buts; it is not hard to mess up the formalities which make possible the asset protection in the first place. There might even be tax advantages to such an arrangement, see a lawyer or accountant on that.

Of course, NastyCo sues your holding company, you lose big, and the holding company decides to file bankruptcy. With the asset protection structure we set up, it will probably be much more difficult for creditors (i.e. the people you owe money to) to reach your IP. As long as everything is done correctly, the LLC’s assets are reachable only by charging order — meaning the creditor gets any distributions otherwise allocated to members, but doesn’t actually control the assets. Even better, if the LLC allocates profits without distributing them , the creditor must pay taxes on those profits, even though he/she can’t touch them! Fun stuff.

There are other advantages to separating your IP assets from your operating company. You may retain more control over the assets if your company loses control to a private equity firm who lent you money. Again, more leverage. The corporate veil is tough, and expensive, to pierce, but, for experienced attorneys, relatively easy and inexpensive to create. In Florida, you can check out sunbiz.org for the basics of creating LLCs and other business entities, but to realize the full benefit of these entities, contact an attorney.

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Dr. Pepper, Dublin, Texas, and a Trademark

Saturday, 14 January, 2012 09:05 Written by Rene Dial 0 Comments

By: Rene Dial

While I was perusing the web I ran across an article with regard to Dr. Pepper suing its oldest distributor over the Dr. Pepper trademark.  Yes, that is exactly what I was thinking… Why are they suing their own bottling company over the trademark if they are selling the corporation’s product and if there is an issue, why not pull their contract to bottle Dr. Pepper.  Okay yes, it took me a few minutes to realize they were talking about Dublin, Texas not Dublin Ireland as well.

It seems that the bottler was adding the Dublin name to the Dr. Pepper mark resulting in, you guessed it, Dublin Dr. Pepper which is causing dilution of the Dr. Pepper mark.  Using the mark in this manner would make Dublin the trademark and Dr. Pepper the generic name for the drink which as a trademark owner you do not want.  If the mark is used in this manner there is the potential for the mark to go the way of aspirin and become the name for the type of product instead of the source of the product.

According to the article I read on WSJ.com Dublin makes their Dr. Pepper from cane sugar unlike most other bottlers that use high fructose corn syrup.  Funny as I always thought that the different manufacturers all had to use the same formula to make the product.  The bottling company has agreed to stop bottling and distributing Dr. Pepper as part of the settlement.

I do not have a copy of the complaint or settlement so I am not sure as to how long Dublin has been using the name with the trademark to sell Dublin Dr. Pepper and related paraphernalia or else I would go a little more in detail about the case.  The coffee mugs and other related items were supposedly being sold over the internet and I can only assume that Dublin Bottling not Dr. Pepper Snapple Group was receiving the proceeds.

With the historic value of being the oldest bottler, the surrounding town’s tourism, why not come to some other agreement.  I wonder if Dr. Pepper will force the town to take down their signs?

Have a great weekend.

What Is Antecedent Basis And Why Should I Care?

Thursday, 12 January, 2012 17:03 Written by Scott Nyman 0 Comments

 

In my last article, I began an almost endless discussion about the claims of a patent application. As a recap, the claims are the real meat of a patent. The examiner will review the claims to determine what about your invention (if anything) is new, and to what scope your invention is patentable. In fact, the vast majority of the prosecution stage of applying for a patent is based around defending the claims against an examiner’s rejections and objections. To clarify, rejections are made over the subject matter of the claims. Conversely, objections are typically made over noncompliance with a required format for the claim.

One of the most well known objections among inventors and patent practitioners involves indefiniteness of a claim, or wherein the claim contains words or phrases whose meaning is unclear. More specifically, a claim may be objected to for lacking antecedent basis. But, what exactly is antecedent basis?

Typically, when drafting claims, an inventor (or the patent attorney representing the inventor) will initially disclose an element of the invention using the article, “a” or “an.” Every subsequent reference to that disclosed element will likely be preceded by “the” or “said.” The Manual of Patent Examining Procedure (MPEP) includes the following on antecedent basis at 2173.05(e):

The lack of clarity could arise where a claim refers to “said lever” or “the lever,” where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what element the limitation was making reference. Similarly, if two different levers are recited earlier in the claim, the recitation of “said lever” in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended. A claim which refers to “said aluminum lever,” but recites only “a lever” earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made. Obviously, however, the failure to provide explicit antecedent basis for terms does not always render a claim indefinite. If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.

Claims are often very complex, and certainly not easy to read. Plus, with a large number of elements being recited, it is not impossible to mistakenly use refer to “the thing” before first calling it “a thing.” So, what is a person to do if he or she makes an mistake that results in the lack of antecedent basis? The MPEP continues on, stating:

Antecedent problems in the claims are typically drafting oversights that are easily corrected once they are brought to the attention of applicant. The examiner’s task of making sure the claim language complies with the requirements of the statute should be carried out in a positive and constructive way, so that minor problems can be identified and easily corrected, and so that the major effort is expended on more substantive issues. However, even though indefiniteness in claim language is of semantic origin, it is not rendered unobjectionable simply because it could have been corrected.

In practice, patent examiners will often point out issues with antecedent basis to be corrected by the inventor. Besides, the examiner will typically cite and rely on some form of prior art in a rejection as a basis for an invention not being patentable.

TROY LANDRY SUES OVER TRADEMARKED SAYINGS

Tuesday, 10 January, 2012 18:07 Written by danieldavidson 1 Comment

By Daniel Davidson

Entertainment must be hard to come by these days, or the broadcast companies have realized that it is as easy as following around an alligator trapper to keep viewers entertained.  I have to admit, I am a huge fan of the show ‘Swamp People’ which airs on The History Channel.

‘Swamp People’, a show centered on various families in the Louisiana Bayou, depicts the everyday lives of an alligator trapper and the obstacles they encounter.  Some obstacles include extreme weather, poachers, gun misfires, and of course, “Tree Shakas”.

For one trapper, he has encountered a new kind of obstacle, trademark infringers.  Troy Landry, one of the more popular personalities of the show, filed a lawsuit in the U.S. District Court for the Western District of Louisiana claiming that Halpern Import Company, National Cap and Sportswear, Inc., and Ripple Junction Design Co. have infringed upon his trademark rights.  Among the trademarks which Landry claims have been infringed are, “Choot Em”, “Tree Shaka,” “Tree Breaka,” and “Mudda Fricka.”

In the Complaint filed by Troy Landry Productions, LLC, they claim that they are owners of “unregistered and federally registered trademarks,” which include the marks listed above.  Upon examination of the U.S. Patent and Trademark Office’s TESS (Trademark Electronic Search System) for trademarks filed by Landry, I did not come across any trademark registrations for any of his marks, including the applications filed for “Troy Landry” and “Got Gator.”  Although Troy doesn’t have any federal registrations for the trademark sayings, Troy does enjoy common law trademark rights in them.

The companies listed for infringement allegedly offer for sale t-shirts, caps, sweat shirts, etc. containing the “Choot Em,” “Tree Shaka,” “Tree Breaka,” and “Mudda Fricka” trademarks.

Troy Landry Productions, LLC is praying that the Court order the named Defendants be enjoined from using the trademarks, that they deliver all the merchandise, signs, displays, advertisements, packaging, and other materials, which bear the trademarks, to Landry for destruction, an accounting of all profits from the sale of the merchandise, to pay punitive damages, attorney’s fees and costs, and anything else Court deems to be proper.

I have a feeling that Mr. Landry is going to have to wage a few fights to protect his valuable trademark rights.  In protecting those rights, he will be preserving the goodwill which comes with trademarks and his fame.  In turn, Troy will be making his trademarks that much more valuable.

Should I Trademark My Business?

Monday, 09 January, 2012 05:22 Written by Aaron Thalwitzer 0 Comments

Probably, yes! But before elaborating, some fundamentals are in order.

What’s a trademark?

Most anything that identifies and distinguishes the source of goods of one party from those of others. Service provides get “service” marks, but I’m going to call them both trademarks.

Do I have to register my trademark?

No. Using the mark in commerce can establish rights, but registering your mark provides many important benefits, including:

Owning a federal trademark registration on the Principal Register provides several advantages, including:

  • Public notice of your claim of ownership of the mark;
  • A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
  • The right to use the federal registration symbol ® and
  • Listing in the United States Patent and Trademark Office’s online databases.

I think I have a trademark, but I haven’t registered it. Can I use the federal registration symbol “®”? 

No. You may use “TM” (trademark) or “SM” (service mark), but you only get the ® after the USPTO actually registers a mark.

Back to the real question: should I trademark my business name?

Let’s use a hypothetical. Fred’s company, FredCo, sells designer fire extinguishers. FredCo, which is currently selling only in the USA, but is considering international expansion, has been selling its product for about a year, has a website, a logo, and its motto is “Extinguish With Style”. So, why bother? After all, things are going fine, and what’s the harm in waiting?

I’ll try keep this simple.

First, FredCo may not be as unique as Fred thinks it is. Fred may be infringing on someone else, thereby wasting his time and money on a brand that could be taken away by the original FredCo! Fred may even be liable for damages for failing to conduct a trademark search before adopting his mark. There goes FredCo.

Second, FredCo may be unique, and hugely successful! What’s the easiest way to make money? Copy someone else! FredCo’s success could be it’s downfall if other, lower-quality companies dilute or tarnish FredCo’s trademark.

Third, since FredCo has international ambitions, registering FredCo’s trademarks gives it an opportunity to receive advantageous trademark treatment with other members of the Paris Convention. Trademark piracy can be avoided by early, strategic registration. Why pirate a registered trademark when others are unregistered? They’re like carjackers — they’ll keep trying doors until they find the one that’s unlocked. Easy pickins!

Fourth, if FredCo’s domain name isn’t precisely registered with the USPTO, they’re risking that someone else may have (rightly or wrongly) registered it. If so, the trademark holder may ask Internic (the entity that oversees most domain name registration in the US) to stop FredCo from using it’s domain name pending judicial determination of the FredCo’s rights.

There are numerous other reasons to trademark your business. Remember, trademarking is like voting: its best done early and often.

“Work for Hire,” Copyright and IP Lawsuits

Saturday, 07 January, 2012 09:00 Written by Rene Dial 0 Comments

By Rene Dial

It never ceases to amaze me how often we hear of lawsuits over comic book characters once the studio decides to turn it into a movie. Most recently the creator of Ghost Rider lost in court to Marvel Entertainment in a copyright lawsuit that was filed in 2007.

Not long ago I wrote an article dealing with the same subject with regard to the Avengers and the X-Men.  The family of Jack Kirby filed suit to terminate copyright grants to Marvel.  The ending in both cases was that the characters were created as works for hire belonging to the employer.  Since this subject keeps popping up I think we should have a better understanding of what a work for hire is.

A “work for hire” defined under Section 101 of the Copyright Law is

  1. a work prepared by an employee within the scope of his or her employment

or

  1.  a work specially ordered or commissioned for use as a contribution to a

collective work, as a part of a motion picture or other audiovisual work, as

a translation, as a supplementary work, as a compilation, as an instructional

text, as a test, as answer material for a test, or as an atlas, if the parties

expressly agree in a written instrument signed by them that the work shall

be considered a work made for hire. For the purpose of the foregoing sentence,

a “supplementary work” is a work prepared for a publication as a secondary

adjunct to a work by another author for the purpose of introducing,

concluding, illustrating, explaining, revising, commenting upon, or assisting

in the use of the other work, such as forewords, afterwords, pictorial illustrations,

maps, charts, tables, editorial notes, musical arrangements, answer

material for tests, bibliographies, appendixes, and indexes; and an “instructional

text” is a literary, pictorial, or graphic work prepared for publication

and intended to be used in systematic instructional activities.

What it boils down to is unless you have an agreement stating otherwise and someone requests and pays you for creating a work of art such as a comic book character there is a pretty good chance that the person that hired and paid you owns your creation.  I feel for artists that create these awesome characters.  Out of the hundreds if not thousands of characters they create one sticks and becomes famous and the creator gets their agreed upon paycheck while the studio makes millions if not billions of dollars.  The good is that the artist gets paid to do what they love and create while the employer foots the bill.  Bad news is they do not own their creations and have no control over the future of their creation or profits.  These artists need to take a lesson from photographers because you hire them to take pictures and somehow they still charge you for the copyright to the pictures you paid them to take!

Have  a great weekend!

 

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