Author Archive

Terms of Service and Your Copyrights

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

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.”

What Is Antecedent Basis And Why Should I Care?

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

 

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.

Patent Claims – What the heck?

Friday, 06 January, 2012 18:11 Written by Scott Nyman 0 Comments
Share via email

Considering you made it to TacticalIP.com, it is possible that you have come in some contact with a patent in your life. If not, go ahead and browse through one. It’s sure to make your head spin.

Patents are generally made up of various sections, all of which typically being required to properly disclose an invention. These sections usually include a background, summary, drawings, detailed description, claims, and abstract. In the majority of patents, the language used throughout these sections is highly technical and written in what may seem like a cryptic language. This is especially true in the claims of a patent, which are required to be written in a series of rambling sentences.

Patent claims come in two varieties, independent and dependent. Independent claims stand alone. This breed of claims independently states every aspect or element of the invention without reference to any other claims. Conversely, dependent claims are included after an independent claim to disclose aspects or elements that may be added to those disclosed in the independent claim. Dependent claims typically add limitations to the independent claim, limiting the breadth of the invention to be included in a resulting patent. These limitations will narrow the scope of the invention, which is typically undesired. However, it is often necessary to narrow the invention with enough sufficiency as include novel and non-obvious features. These topics have been discussed in past articles here on Tactical IP, and will no doubt be covered in great detail again in the future.

If all goes well, hoping an applicant (and by applicant, I mean his or her patent attorney) didn’t draft the independent claims too narrowly, little to no claims that depend on an independent claim will need to be used in a resulting patent. However, if an applicant finds his or her independent claim being allowed without some form of rejection from an examiner, the applicant is left to wonder if the invention could have been claimed more broadly.

In an attempt to find balance between broadly and narrowly disclosing an invention, applicants will often include a number of independent claims in a patent application. Additionally, each independent claim will likely be followed by a string of dependent claims, each narrowing the scope of the claim on which it depends by a little bit. This strategy allows the applicant to experiment with different levels of breadth, while still allowing the claims to be narrowed through prosecution (the stage when an applicant must convince an examiner that the invention is new). As a result, a large number of patent applications will have what may appear to most people as a number of substantially similar independent claims, but with slight nuances. However, these nuances are crucial to the potential patentability of an invention and very carefully drafted. This is all part of the strategy to claim the invention from as many angles as possible.

If this all seems like a lot to digest, it’s because it is. And this is just scratching the surface of claims, which are just a part of the patent application, which is just a step in the process. I’ve been studying and practicing my entire life just to understand what the paragraphs I have written above mean. It is impractical to expect anyone to understand every little detail about a patent without dedicating your life to that knowledge. But, that’s the beauty of our forum at TacticalIP.com, which allows the professionals here at Zies Widerman and Malek to share the knowledge we have acquired with the public.

In follow-up articles, I will dig deeper into the anatomy of a patent. Stay tuned, I’m just getting started.

A Refresher on “Patent Pending”

Thursday, 29 December, 2011 09:11 Written by Scott Nyman 0 Comments
Share via email

Scott Nyman

 

Not quite a year ago, I posted an article about the term, “patent pending” and its sufficiency towards protecting your invention. Since that time, I’ve had a good number of people ask me just what the term means. I’ve also had people ask me, “so now that my patent is pending, I can sue people?” It seems the demand for these answers is high, so a refresher on “patent pending” seems appropriate.

Let’s start with the basics. What exactly does “patent pending” mean? The term “patent pending,” or something similar such as “patent applied for,” is used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the United States Patent and Trademark Office. Use of these terms should not be abused, for example by printing “patent pending” on a product for which no patent application has been filed. The law imposes a fine on those who use these terms falsely to deceive the public.

However, just because a searching party cannot locate a patent application on the invention through popular searches, such as Google Patents or the USPTO website, does not mean that no patent application is pending. Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published.

Once a patent application has been filed with the US Patent and Trademark Office, the disclosed invention may be considered “patent pending.” This holds true for both provisional and non-provisional patent applications. Provisional patent applications are not examined by the USPTO for patentability, but provide a disclosure of the invention with enough sufficiency to receive a filing date.

Non-provisional applications are examined by the USPTO, and may result in the issuance of a patent. In order to have any patent protection, an inventor is required to file a non-provisional application. To keep the filing date of a provisional patent application, an applicant is required to convert the provisional patent application into a non-provisional patent application within one year of filing the provisional.

So, can you sue if you believe someone is infringing on your patent pending invention? Not just yet. In short, the USPTO states, “These phrases have no legal effect, but only give information that an application for patent has been filed in the Patent and Trademark Office. The protection afforded by a patent does not start until the actual grant of the patent. False use of these phrases or their equivalent is prohibited.”

The term “patent pending” describes the period between the filing of a patent application with the USPTO and the final disposition on the application, which may include abandonment, rejection, or allowance of the application. Having a “patent pending” status does not afford an applicant any patent protection, it simply puts would-be infringers on notice that they may be subject to a lawsuit if the application issues into a U.S. patent.

Furthermore, 35 U.S.C. 287 provides the notice requirements for issued patents, stating, “In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”

By providing notice to the public that your invention is in the process of potentially receiving patent protection, you are providing notice that continued potentially infringing conduct related to the applied-for invention may result in patent infringement. Although patent protection may not begin until the date a patent is issued, including a notice that such date is pending may help allow an inventor claim satisfaction of the notice requirement being met close to the actual date issue date of the patent, so long as the inventor promptly complies with the patent marking requirements of 35 U.S.C. 287.

However, the courts have routinely decided that “patent pending” alone is insufficient to support a finding of willful infringement. The Federal Circuit has stated, “A patent pending notice gives one no knowledge whatsoever. It is not even a guarantee that an application has been filed.  Filing an application is no guarantee any patent will issue and a very substantial percentage of applications never result in patents. What the scope of claims in patents that do issue will be is something totally unforeseeable.” Conopco, Inc. v. May Dep’t Stores Co., 46 F.3d 1556, 1562.

Patent Attorney or Patent Agent – What is the difference?

Thursday, 15 December, 2011 07:13 Written by Scott Nyman 4 Comments
Share via email

I have been asked from time to time what are the differences between a patent attorney and a patent agent. For the sake of saving me from having to the explanation in the future (and for a reason to direct people to TacticalIP.com), I believe this topic is ripe for an article!

Both patent attorneys and patent agents are required to be recognized by, and registered with, the U.S. Patent and Trademark Office to be licensed to prepare and prosecute patent applications for their clients. Prosecuting a patent is just a fancy way of describing the negotiation between the patent attorney/agent and the USPTO over the allowability of the patent application to issue as a valid U.S. patent. To be recognized by the USPTO, both patent attorneys and patent agents may possess a sufficient technical background and pass a grueling examination on the policies and procedure , which is informally known as the “Patent Bar.” Failure rates for this exam is typically around 50%, give or take depending on the period of administration. As an example, the FAILURE RATE for the October 2000 administration of the patent bar was 63%! For patent attorneys, this examination will likely be on a level of disfavor with the state bar exam he or she took to become a licensed attorney. For patent agents, this examination is a whole new animal and likely the worst exam the agent will ever take in his or her lifetime.

So, now that we know how amazingly fun the patent bar can be, why doesn’t everyone take it? Well, most people don’t qualify to even sit for the exam. In order to be eligible for enduring the six hour pain train delivered by the patent bar, you have to possess a college degree in engineering or physical science, or the equivalent of such a degree. For attorneys, this rules out over 99% of the law practicing population. I know, it’s a big shocker that not many people that end up practicing law come from math or science backgrounds. Those with an appropriate technical background usually do end up practicing patent law.

But, although both patent attorneys and patent agents have a similar process to become registered to represent inventors before the USPTO, what distinguishes one from the other? First, patent agents cannot prepare any legal documents relating to the patent application, and (hopefully) resulting patent. These legal documents typically include assignment contracts, but may also include business and corporate documents that discuss intellectual property. Also, patent attorneys can represent clients in litigation matters relating to patent infringement. By being involved in patent litigation, the patent attorney may gain a unique perspective on how a patent may interpreted by a discerning court and/or jurors. Furthermore, patent attorneys can analyze and render opinions at to whether an invention is likely infringing on a patent, whether a patent could withstand a challenge to its validity, or whether a business should proceed in manufacturing its product without fear of drawing out litigants that cry infringement.

Patent attorneys and patent agents are both extremely valuable to inventors in their respective ways. Patent agents are typically less expensive than patent attorneys, but may lack some of the perspective acquired through the practice of law. Conversely, patent attorneys may require higher fees, but may provide a larger number of services that are tailored to the client, since the attorney will have a wider understanding of the client’s business and unique needs.

There also exists a large number of differences between patent attorneys and general intellectual property attorneys, but that is a subject best reserved for another article.

 

« Older Entries

THURSDAY, MAY 17, 2012

Bad Behavior has blocked 1148 access attempts in the last 7 days.