Overenforcement of Copyrights

Friday, 06 July, 2012 05:30 Written by Mark Malek 0 Comments

As promised in my last article, I wanted to provide you with an example that I have come across of the overenforcement of copyrights. The articles that I am posting lately regarding copyrights find their origin in a debate I had recently on twitter with some folks that believe that copyrights should be abolished. As indicated in my last article, I just do not understand the thoughts of copyright abolitionists. That is despite the several times that they have tried to explain it to me. Go back and read some of the back and forth comments in the last article.

I do understand the view that copyrights are sometimes over enforced. The example I provided in my last article was when an alleged owner of software attempted to bring a copyright infringement lawsuit against one of my clients, but took the position that since my client’s software performed the same function, it must have infringed the copyright of his software. WRONG! The unfortunate part is that my client had to engage in federal litigation in order to win his case, but it just should not have ever even come to that point.

In that particular case, the two parties attempted to enter into a business relationship, but for a number of reasons, they decided to go their separate ways. One party moved forward with a very old version of his software. The other party, my client, decided to independently create a new version of the software without copying a single line of code or any screen shot of the original version of the software. In fact, the new version of the software was written in a completely different software language, had a different appearance, and carried out far more functions than the original.

Despite all of the above, my client was, nonetheless, served with a lawsuit alleging, among several other ridiculous causes of action, copyright infringement. There are two options at that point. First, ignore the lawsuit, have a default judgment entered against him, and the court grant all the relief that the plaintiff is asking for. Second is to fight the suit. Of course, a third option, settlement, was explored, but that did not exactly work out.

Throughout the process, I was up against an attorney that really did not have much experience in copyright litigation. This is despite being admitted to the bar for about 30 years (probably more, but I didn’t care to ask). I have always said that intellectual property law is not something that an attorney should dabble in. It is pretty specialized, and although times may be tough for some attorneys, that does not mean they need to start practicing door law, i.e., they can handle any case that walks in the door. It was very frustrating to continuously try to explain copyright law to opposing counsel, and to have to appear before the court simply for the court to also explain why certain things were not discoverable. Turns out the case was just an attempt for the plaintiff, who was not a proficient computer programmer, to get his hands on my client’s source code so that he could infringe it.

Almost needless to say, the case ended in my client’s favor, but to what end? My client spent substantial sums of money defending a case for copyright infringement when there really was no case to be made for copyright infringement. This was an example of someone trying to overenforce a copyright. This guy had a copyright in the original software, but was not pleased that someone else had a software that carried out a similar function. Again – function is not protectable with copyright.

I’m going to keep posting on this topic. Some of the issues I want to discuss in the future is going to be about the copyright term (why it may be too long) and the blurred lines between copyrights and patents.

How To Design Around a Patent

Friday, 16 March, 2012 05:55 Written by Mark Malek 2 Comments

By: Mark R. Malek

In this weeks episode of the question that I recently had to field at Zies Widerman & Malek is whether or not it is permissible to design around a patent. The short answer is OF COURSE! How else is there to be progress? How else can inventions get improved? This is the reason why people have come up with the better mouse trap, right – in other words, inventors have constantly improved that which came before them. How else did we evolve from the original Apple computer to this tiny little MacBook Air that I am writing this article on while sitting inside of an airplane?

A simple “yes” to the question obviously is not enough. How much is enough to design around a patent? How much do you have to change? If I hear the “10% rule” one more time, I’m going to hunt down the crazy person that started it, and do some damage. Where did that one come from? I suspect it was on the “internet” and, therefore, it must be true. There is no such thing as the 10% rule. In case you are wondering, this is the rule that several clients have told me about and wanted to know how to calculate 10%. The rule, apparently, is that all you have to do is change your invention by 10% in order to get around someone else’s patent. I have also been informed that the same applies to copyright infringement. Once and for all – THIS IS NOT TRUE. Please do not expect an attorney to go to court with that argument.

When looking at a patent, go to the end. You will notice a little section that is referred to as the claims. The claims of a patent application can be described as the “property boundary” of the patent. For a really good overview of patents, see Gene Quinn’s articles on IPWatchDog.com. The claims are the way that the invention is defined in words. The claims set forth the limitations of an invention, and defines the elements that make up the invention. For example, suppose you have invented a widget. The claims would indicate that the invention is a “widget that comprises elements A, B, C and D arranged in a particular way.” Yes, this is an extraordinarily simplistic way of describing a claim, but it’ll make sense in a second.

If you ask your attorney to determine if your invention reads on the claims of a patent, or if you have successfully defined around the claims of the patent, your patent attorney should set up a claims chart. The claims chart will likely break down the claims in a spreadsheet and try to analyze whether or not your invention includes each and every single element that is listed in the claim for the widget. If your invention is a widget that also includes elements A, B, C and D, arranged in the same way as in the claims of the patent, then you have not designed around it. Suppose, for example, you have replaced element C with element E? Now you are probably onto something. The analysis should not conclude there. You should continue the analysis to make sure that element C cannot be read broadly enough to include element E. This can usually be found in the specification, i.e., the rest of the patent. If there is a sentence in there somewhere that reads something like “those skilled in the art will appreciate that element C is meant to include element E” then you probably have not done enough.

Obviously, I can write about this topic forever, but I promise to put up some follow up articles on designing around a patent – also known as reverse engineering. In short, I hope that you take the following away from this article: It is permissible to design around a patent, but the process is not a simple one. Be very careful in what you are doing and how you are defining your invention.

The Duty of Disclosure When Filing A Patent Application

Friday, 20 January, 2012 22:24 Written by Mark Malek 1 Comment

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.

The Three Most Common Ways to Make Money From Your Invention

Monday, 02 January, 2012 22:49 Written by Mark Malek 1 Comment

By: Mark R. Malek

One of the things that I have encountered over the years is an inventor that comes up with an incredible invention, but that does not know what to do with the invention in order to make money with it. During my consultations, I generally break down the very complicated business side of inventing to the three most common ways that I believe the inventor can make profit from an invention. Of course, this article assumes that the invention is patentable, will eventually be granted a patent, and does not infringe on someone else’s patent (many assumptions, but I will discuss those in a future post.)

The first way that I know how to make money on your invention is to manufacture it and sell it yourself. Why do you need a patent to do that? To tell you the truth, you don’t. There is no requirement for you to patent your invention in order to sell it. If, however, you start selling your invention, or otherwise disclose it, and one year passes, you can kiss any hope of getting a patent goodbye. Suppose that obtaining a patent is not that important to you. That’s fine, but I guarantee that it becomes important to you once your invention starts getting knocked off and there is no reasonable remedy to stop the knock offs. Also, one thing that I have notices about trying to launch your own product, i.e., trying to manufacture the product and get the product into a distribution chain, is that the patent is usually the cheap part. Depending on the invention, just getting manufacturing set up can be extraordinarily expensive.

The second and third ways that I suggest profiting from an invention does require a patent, or some other protectable right. Way number two to make profit from an invention is to license a patent covering the invention. This is usually the case when an inventor can come to terms with an entity or person that desires to make, use or sell an invention that is covered by the inventor’s patent. In such a case, the two parties can enter into a licensing agreement. A licensing agreement is an agreement that allows the inventor to maintain ownership of the patent, and grant rights to another to use the patent for some sort of compensation (or other consideration) and for a fixed amount of time. Licensing agreements are not something that are scratched on the back of a Denny’s napkin in crayon. They are very complicated, and require a great amount of detail. If you find yourself in a position where you are shaking hands in a bar and thinking that you have just saved money on your licensing negotiation by not using an attorney, chances are you will be using an attorney in the not to distant future – in a much more expensive lawsuit.

The third way to profit from an invention is an outright sale of your rights to the invention. This, almost always, involves the sale of a patent. I have had many conversations with inventors that want to skip the patent process and just go right to the big company (say Johnson & Johnson, for example) and sell their invention for millions. Really? What would Johnson & Johnson be purchasing? The inventor’s thoughts? It doesn’t really work that way. An invention inside of one’s head does not result in a protectable right. Johnson & Johnson does not have any reason to pay for the invention because there is no protectable right in that invention until a patent is granted on it. Put another way, there are no lawsuits for idea infringement, but there can be a lawsuits for patent infringement. The above simplistic outline does not discuss other legal remedies, such as theft of trade secret, for example, but that is not really applicable to this situation.

There are several other ways, some more complicated, to profit from an invention. I will continue to write on this topic, as well as provide some additional details of the above in future posts. This is just a short intro to satisfy some of the common questions that inventors sometimes have.

Patent Attorney or Patent Agent – What is the difference?

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

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.

Posts Tagged ‘attorney’

Overenforcement of Copyrights

How To Design Around a Patent

The Duty of Disclosure When Filing A Patent Application

The Three Most Common Ways to Make Money From Your Invention

Patent Attorney or Patent Agent – What is the difference?

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