On March 4, 2019, the United States Supreme Court issued an opinion that basically changed the long-standing practice of a plaintiff needing only to apply for copyright registration prior to bringing a copyright infringement lawsuit. Justice Ginsburg, writing for a unanimous court, said the law requires a litigant to have an issued registration, or a rejected application, subject to certain limited exceptions. Prior to this ruling, many litigators only filed an application for copyright registration prior to filing a copyright infringement lawsuit. However, the Supreme Court clarified the law, and made it clear that a copyright owner must have an issued registration or a refusal to register from the Copyright Office.
There are some exceptions. Such as “preregistration” for works that are particularly vulnerable to predistribution infringement, such as movies or musical compositions. Once a work is “preregistered” the owner may bring suit.
The decision can be read here.
On January 22, 2019, the US Supreme Court decided Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc. The main issue in that case was whether a “secret” sale of the invention triggers the 1 year time period to apply for a US patent application.
The America Invents Act (AIA) amended 35 U.S.C. §102 as follows: “A person shall be entitled to a patent unless . . . the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” The underlined portion was added by the AIA.
Plaintiff Helsinn argued, that the addition of the phrase “or otherwise available to the public” in the AIA statute altered the meaning of on sale in such a way that if an invention’s sale was confidential (and, therefore, not available to the public), the invention was not on sale under the AIA statute. The Supreme Court disagreed.
Thus, inventors and patent owners should be aware that any sale, secret or public, triggers the on-sale bar, and a patent application must be filed within 1 year of the first sale, or public disclosure of the invention—otherwise the invention is ineligible for patent protection. Stated another way, PATENT EARLY!
The case can be read here.