Cotman facebook pageCotman IP twitter pageCotman linkedin

Archive for January, 2011

Patent Law Reform

In our last article, we discussed the principles and incentives behind the patent system.  Patent law reform efforts are meant to reduce inefficiencies, improve patent quality, and eliminate abuses that have the potential to stifle rather than promote innovation.

Starting in 2006, a patent law reform bill has been introduced in Congress annually.  The Patent Reform Act of 2011 is a bipartisan piece of legislation that will be introduced on the heels of Obama’s State of the Union Address.  Here are a few proposed patent law changes it contains:

  • a “first inventor to file” will have priority over a “first person to invent “
  • the right of a third party to submit prior art during examination of a  patent is expanded
  • an opposition procedure is created for newly issued patents
  • judges will have a more active role in assessing the legal basis for specific damages
  • supplemental examination process will be available after issuance to improve the quality of an issued patent
  • more flexibility in setting fees to ultimately reduce the backlog at the Patent Office
  • creation of a third entity status (the micro-entity) with a 75% fee reduction

Whether or not the bill is enacted, an experienced patent lawyer will prepare your patent while keeping in mind potential changes to the patent system in the future.

Tags: , , , ,
Posted in IP Pitfalls, Patent Pitfalls | No Comments »

The Role of Patents in America’s Future

In the 2011 State of the Union Address, President Barack Obama stated that innovation was the key to our success in the past as well as the key to our future as a world leader. Obama noted, “America still has the largest, most prosperous economy in the world. No workers are more productive than ours. No country has more successful companies, or grants more patents for inventors and entrepreneurs.” What do patents have to do with the economy, and how can they keep America ahead?

The principal purpose of the patent system is to promote innovation. Innovations are the product of research, which can be expensive. Consider the following example: a first company spends time and money to generate an invention. Without a patent, another company can copy the invention without investing any time or money. Consequently, the second company’s costs are lower. With these lower costs, the second company can undercut the first company’s price. In this scenario, there is no reason for the first company to develop the invention in the first place.

Another option for the first company is to keep its innovations secret. In this situation, no information is made available to the public other than the goods and services sold by the first company. The first company has now protected its investments as long as it maintains secrecy. However, the secrecy relies on individuals to be discreet. More importantly, no information is made available to the scientific community. Scientific development is a process that increases the collective knowledge. When scientific advances are not contributed to the collective knowledge, additional research becomes highly limited.

The patent system seeks to strike a balance by rewarding innovators with a period of monopoly in exchange for their disclosure of information to the public. In this way, the inventor’s investment is protected, giving him a reason to engage in research and development. Furthermore, the scientific community is still able to benefit from that research and development. On a large scale, scientific advancement is able to progress quickly, creating jobs, prosperity, industries, and prestige along the way.

An individual inventor should understand that the rules of the patent system are designed to promote disclosure. The system also imposes penalties that can jeopardize your rights for noncompliance. These penalties are also designed to prevent inventors from obtaining a monopoly without making the expected contribution to society. An experienced patent attorney understands the complex rules and procedures of the United States Patent and Trademark Office. Please consider our office in the Los Angeles area if you need guidance in navigating these rules and procedures.

Tags: , , , ,
Posted in IP Pitfalls, Patent Pitfalls | No Comments »

How to Terminate a Copyright Previously Assigned?

If you happen to be the  grandson of a famous comic book author, playwright, artist, or other creative icon who sold his rights for a fraction of what they ended up being worth, copyright termination is a subject you should know something about.

Section 304(c) of the United States Copyright Act enables a copyright owner or its heirs to terminate all grants, licenses or transfers of rights (made prior to 1978) beginning on the 56th year after that grant of rights was made.  Thus, in certain cases, it is possible to recapture rights to a copyrighted work that was previously transferred.  The purpose of the copyright termination laws is to allow authors to benefit from laws that extended the term of copyright from 56 years to 95 years, enabling them to recapture 39 years of term. The United States Copyright Act provides a five year period beginning in the 56th year, in which a grant of rights may be terminated. A qualified copyright attorney will know how to go about the termination process.

If an author or his heirs miss the opportunity to recapture the 39-year copyright term, there is another opportunity at the end of 75 years to recapture the final 20 years of copyright.  To take advantage of this new opportunity to terminate, notice of termination must be sent to the proper party no later than 78 years from the date of the original copyright (or, as early as 65 years after initial publication).

Termination notices must be recorded with the Copyright Office prior to the date of termination. Any copyright proprietor wishing to terminate a grant, license or transfer of any copyright rights must provide at least two (2) years’ and no more than ten (10) years’ written notice to the person to whom the grant was made. There are nuances in providing a notice of termination to the Copyright Office that are beyond the scope of this blog. If you believe you may be entitled to terminate a copyright you should contact a copyright attorney.

Tags: , , , , ,
Posted in Copyright Pitfalls, IP Pitfalls, Uncategorized | No Comments »

Copyright Termination – Heirs Can Recapture Rights Previously Assigned

Under the 1976 Copyright Act, authors who license or assign their copyrights have the right to unilaterally terminate such agreements thirty-five years later. This right is also retained by heirs. This termination right may be exercised without consideration. The first set of copyright assignments governed by the 1976 Copyright Act become eligible for termination on January 1, 2013. As a result, a looming crisis over termination rights is on the horizon. As long as the work is not a “work made for hire,” the right of termination cannot be waived — even if there are contractual provisions to the contrary. If your business relies upon rights made prior to 1978 you should have a copyright attorney carefully review your rights and determine if you will be impacted by termination.

Tags: , , , , , , ,
Posted in Copyright Pitfalls, IP Pitfalls | No Comments »

They’re mimicking me! When is a parody fair use?

A parody is fair use of a copyrighted work when it is a humorous form of social commentary and literary criticism in which one work imitates another.   Although a parody falls under “use of a copyrighted work for the purpose of criticism or comment” as provided under 17 USC §107, the determination of whether the work qualifies as a parody depends on the current case law.  There is no steadfast set of factors to be considered.  As with all gray areas of law, it is important to consult your Copyright Attorney before you publish a work you believe to be a parody.   Famous works are often the subject of parodies because of their mass appeal.   Famous is synonymous with wealth, or at least financial backing, so it would not be wise to infringe the rights of someone who has the means to defend their rights through litigation.

The following examples are from real-world cases:

PARODY:  Making fun of the famous photograph of a naked pregnant Demi Moore, taken by Annie Leibovitz for Vanity Fair, by placing the superimposed head of Leslie Nielsen on the body of a naked pregnant woman, using the same lighting and body positioning as the famous photograph, was a parody and therefore was ruled as fair use.  See Leibovitz v. Paramount Pictures Corp. 137 F.3d 109 (2d Cir. N.Y. 1998).

NOT A PARODY:  A book authored in Dr. Seuss style to tell the story of the OJ Murders, “The Cat NOT in The Hat!” by Dr. Juice, was not a parody and therefore ruled as infringement.  See Dr. Seuss Enterprises, L.P. v. Penguin books USA, Inc., 109 F.3d 1394 (9th Cir. 1997).

Tags: , , , , ,
Posted in Copyright Pitfalls, IP Pitfalls | No Comments »

What is considered fair use?

Fair use of a copyrighted work is the reproduction of a work for purposes such as criticism, comment, news reporting, teaching, scholarship, or research.   The doctrine of fair use, which limits exclusive rights, was developed through a number of court decisions over the years and has been codified in 17 USC §107 of the copyright law.

When determining whether use of the copyrighted work is indeed fair use, the following factors are to be considered: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.  See 17 USC § 107.  These factors apply to both published and unpublished copyrighted work.

There are many nuances of the law to be considered in determining whether your intended use is “fair use” or infringement.  The prudent thing to do is to consult your Copyright Attorney before publishing any work that contains copyrighted material.  We are located in Pasadena, California, not far from Downtown Los Angeles.

Posted in Copyright Pitfalls, IP Pitfalls | No Comments »

Restriction Requirement compared to Election of Species

An Examiner may issue a restriction requirement and/or require an election of species. The Examiner typically does so at the beginning of prosecution before evaluating patentability.  One reason is that both restriction and election of species reduce the initial search performed by the Examiner. It is important to understand the difference between a restriction and an election of species.

If the Examiner believes that more than one patently distinct invention is claimed, the Examiner can issue a restriction requirement. To respond to a restriction requirement, one invention must be elected. The election of the invention may be done with traverse (arguing that the restriction is improper). The other claims will be withdrawn from consideration.

The Examiner may also require an election of species when multiple variations of an invention are claimed. The claims may include one or more generic claims. The generic claim encompasses all variations. For example, a generic claim may be recite an incandescent lightbulb with a filament, while the species may include incandescent lightbulbs with a bamboo filament, a carbon filament, and a tungsten filament. To respond, the Applicant must elect one species.  The Examiner will begin by searching for the elected species. If the elected species is allowable, the generic claims will be prosecuted. If a generic claim is allowed, the Applicant is entitled to consideration of claims to additional species that are dependent on the generic claim.

The Applicant may pursue withdrawn claims in a divisional application. Other inventions disclosed in the application may also be pursued in a continuing application as long as the original application is pending.

Restriction practice and continuation practice involve complex issues. Your patent attorney can help you understand and address these issues to help you maximize patent coverage. Cotman IP has experienced patent attorneys located in the Los Angeles area.

Tags: , , , , , , , ,
Posted in IP Pitfalls, Patent Pitfalls, Patent Preparation Errors | No Comments »

Unclaimed Subject Matter

A patent specification includes a set of claims.  The claims define the scope of protection that is sought.  The specification also includes unclaimed subject matter described in other sections of the application.  There are several key concepts to remember regarding unclaimed subject matter.

First, unclaimed subject matter is still prior art.  For a later applicant, this means that unclaimed subject matter described in an earlier application may be relevant to patentability.  For a patentee, this means that other parties, including competitors, cannot obtain patent protection for inventions that are anticipated or obvious in view of the unclaimed subject matter.

Second, unclaimed subject matter may be pursued in a continuing patent application as long as the first application is still pending.  Continuing patent applications include continuation applications, divisional applications, and continuation-in-part (CIP) applications.  This means that after allowance, unclaimed subject matter should be evaluated to determine if additional patent coverage is desired.  A published patent application should also be similarly evaluated before abandoning the application.

After a patent is granted, unclaimed subject matter belongs to the public domain.  Subject matter in the public domain cannot be patented by any party.

Hypothetical: A is granted a patent.  The patent specification describes an incadescent lightbulb with a carbon filament or a tungsten filament.  Only the carbon filament is claimed.  No continuing application is filed.

Ex. 1: Applicant B attempts to obtain a patent on a lightbulb with a tungsten filament to prevent A from producing tungsten filament light bulbs.  The Patent Office rejects B’s application, citing A’s patent.

Ex. 2: Applicant C attempts to obtain a patent on a lightbulb with a molybdenum filament.  The Patent Office argues that C’s invention is obvious, citing A’s patent and another reference that states that molybdenum is often used as a substitute for tungsten.  C must now present arguments that the substitution was not obvious.

Posted in IP Pitfalls, Patent Pitfalls, Patent Preparation Errors | No Comments »