Some important changes are going into effect on September 16, 2012 at the patent office. Those changes include: Inter Partes Reexamination being replaced by inter partes review, and the review will proceed only if it is determined that there is a reasonable likelihood that the challenger will prevail with respect to at least one claim; Third parties may now institute post-grant reviews of a patent; Third parties may now submit printed publications for consideration and inclusion into the record of any patent application; the inventor’s oath or declaration must contain new statements. A nice summary of the upcoming changes are provided here by Cole Richter of McDonnell Boehnen Hulbert & Berghoff.
I recently saw this article that talks about how to protect your invention when you are thinking of pitching it to a company or an individual. It gives much of the same advice that I would give to a client. Such advice includes: consider filing a patent application (design or utility) prior to pitching your invention, get a confidentiality agreement signed by the party you are disclosing to prior to the pitch, and relying on copyright protection are some of the ways to protect your invention.
The National Association of Patent Practitoners (NAPP) is holding their 2012 annual meeting in Alexandria, VA (where the U.S. Patent and Trademark office is located). I have been a member of NAPP for about 8 years now. NAPP was founded by 19 patent practitioners who had an interest in forming an organization that is focused on procedure before the USPTO. The brochure for the 2012 annual meeting is located here. I look forward to seeing again and making new friends among my fellow patent practitioners at the annual meeting!
There is an interesting copyright litigation case going on right now. John Wiley and Sons (“Wiley”), publishers, are suing patent attorneys for copyright infringement. Some background, when a patent attorney (or inventor) files a patent application, the patent attorneys and their clients are required by law to submit all material relevant to the patentability of the patent application that was filed. Often these documents include patents and published patent applications, which by themselves have no copyright protection, especially when copied in ordered to submit to the patent office. However, on occasion, scientific papers are relevant to the patentability of a patent application, and the attorneys (or inventors) need to submit copies of those papers to the patent office. This is the basis of the copyright litigation lawsuit started by Wiley. Wiley is claiming that the defendant law firm has made copies of scientific papers that Wiley owns the copyright on, and Wiley is suing for copyright infringement. Now, last week, the patent office filed a motion to intervene in that lawsuit, even though the patent office is not a party to the lawsuit. The motion does not present a substantive case as to whether the copying of those scientific papers should be considered copyright infringement, or not, they are just seeking the court’s permission to be able to be involved in the lawsuit. Presumably the patent office will argue that the copying of scientific papers should be considered “fair use”, and NOT lead to damages against patent attorneys and inventors, when copied in order to submit to the patent office. However, we shall see. The safest course of action is: when submitting scientific papers to the patent office with an Information Disclosure Statement (“IDS”), one should pay for a lawful copy of the paper(s). Stay tuned!
I was recently asked about how to protect ornamental and artistic designs with respect to furniture. My first reaction was to say “design patents”! But then I thought about it and realized using copyright in addition to design patents would be useful in protecting the furniture design.
The case of Huebbe v. Oklahoma Casting Co. et al.,2009 U.S. Dist. LEXIS 91824 (W.D. Okla. Sept. 30, malady 2009) was about animal designs such as stags placed on furniture such as chandeliers. The defendants argued that the plaintiffs could not win on copyright claims regarding the chandeliers because: “chandeliers are “useful articles” under the Act, pill and copyright protection extends only to those portions of the designs that can be “identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U. S. C. § 101.” However, the court disagreed and said: “Plaintiff’s chandeliers are not excluded from copyright protection because they are useful articles; rather, Plaintiff’s artistic expressions are conceptually separable from the utilitarian function of these items.”
Therefore, if your furniture designs have artistic expressions that are conceptually separable from the utilitarian function of the furniture, then copyright protection is available.
Of course design patents were created expressly to protect items like furniture when they have unique ornamental designs. The Patent Office defines “design” with respect to design patents as follows:
“A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.”
Thus, please consider both Copyright and Design Patents when thinking on how to protect your furniture designs.
My trademark clients often have questions about what to use for a proper trademark specimen. Many times a client will suggest using a letterhead that shows the trademark, pilule or a website that has the mark somewhere on it. However, the USPTO lists the following as proper specimens for use of a trademark with goods (products):
“Normally, a specimen for a mark used on goods shows the mark on the actual goods or packaging for the goods. You may submit a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods. Do not submit the actual product.
Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards generally are NOT acceptable specimens for goods.”
With respect to trademarks used with services,the USPTO .states the following:
“A specimen for a mark used in connection with services must show the mark used in the sale or advertising for the services. You may submit a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen, i.e. , not just a display of the mark itself. For example, if the mark sought to be registered is “XYZ,” a business card that only shows the mark “XYZ” would not be acceptable. A business card that states “XYZ REAL ESTATE” would be acceptable.”
So, using a website or stationary with letterhead is normally NOT a proper specimen for goods, but may be proper for services.
One interesting way to obtaining funding to develop an invention is to go through crowdfunding to obtain the necessary money. Many of my clients are independent inventors who may have a great invention, but they do not have the ten’s of thousands of dollars necessary to have prototypes built, and to finance a manufacturing run. Crowdfunding may be the answer. Wikipedia has a nice definition for crowdfunding: “…the collective cooperation, attention and trust by people who network and pool their money and other resources together, usually via the Internet, to support efforts initiated by other people or organizations.” Fon instance, one may post to a Crowdfunding site his or her invention and request a small amount from each person to fund a manufacturing run of the invention. However, make sure you have filed for patent protection PRIOR to disclosing your invention to the public! The Wikipedia article on Crowdfunding is a good place to get more information.
I am happy to answer questions from clients and potential clients. However, if you would like to ask a general question that is publically posted, the United Inventors Association has a forum called “ Ask a Patent Attorney “. Beware, that you may get some answers that are incorrect, and you should not disclose information about your invention that could be construed as a “public disclosure”.