Tuesday, September 18, 2007

What do you think?

As recently stated in the online blog Lexology, American Airlines recently sued Google for trademark misappropriation. See American Airlines, Inc. v. Google, Inc., No. 4-070V-487-A (N.D. Texas, Aug. 16, 2007). In its complaint, Amercian alleges that Google's policy of allowing other companies to display paid links to their sites when Google users enter American's trademarks as search terms, such as searching for "AA.com" or "American Airlines", is illegal.

Under the law, there must be a liklihood that a consumer will be confused between two marks for trademark infringment to occur. Some recent court descisions have held that no confusion is likely to occur as consumers are aware when they are choosing a company with a different name. Additinally, some decisions have recognized that the purchase of a trademarked key word may not constitute legal "use" of the trademark in commerce.

American counters these arguments in its recent complaint by allegeng that "Google and its advertisers... benefit financially from and trade off American Airlines' goodwill and reputation without incurring the expense that American Airlines has incurred..."

Google's response to these types of allegations in the past has included an analogy to retail stores. Retail stores, Google states, are allowed to place competing items next to each other in order to attract customers. Why shouldn't this policy also apply online?

As a trademark attorney, I understand the value of a trademark and believe that companies should not be capable of trading off on the goodwill associated with marks without compensation to those companies. However, as a consumer, I enjoy having the freedom to enter a company's name in a search engine and receive easy links to that company's competitors. There are multiple layers to this argument, including freedom of speech issues and my personal belief that companies such as American should feel confident that their products are better than their competitors' products, and therefore should welcome the competition. If their competitors are providing different services, then American shouldn't have a problem with it or it should begin to provide those services.

However, I'm curious - what do you think? I'd love to hear if any of you have any comments on this as this is one issue that is not going away.

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Tuesday, August 14, 2007

I was right.

Way back on April 19th of this year, I wrote about the potential for patent reform occuring this year, and stating my case for why I was against it (http://www.lld-law.com/2007/04/will-patent-reform-occur-this-year.html#links). Recently, the Wall Street Journal ran a commentary article on the Patent Reform Act of 2007. Although I missed this article, I was lucky enough to see the responses the article generated in the letters to the editor section that was published in today's (8/14/07) Journal.

I'm not sure if it was my blog article which paved the way for these reponses or not (I'd like to think it was), but thier sentiments echoed much of what I wrote about in my original article 4 months ago. For instance, David P. Vandagriff, the VP of IP for Helius, Inc. (www.helius.com), an IP broadcasting company, noted how interesting it was that the medical industry, universities, and most venture capitalists are all opposed to the act, which was somthing I mentioned four months ago. Mr. Vadagriff goes on to echo what I stated in April - saying "this reform bill is the brainchild of a small group of very large computer technology companies including Microsoft, Intel, and Oracle. It is not coincidental that each of these companies has been a defendant in an antitrust suit. They rely upon market power to maintain their dominant positions and are serial patent infingers."

I don't mention this article simply to show my view is commonly held. I'm writing this blog article becuase this Act is not going away unless you, the individual inventor, the small company with great IP, or just a member of the the general public who doens't want big business to win dirty yet again, contact your representative or senator and tell him or her why you DON'T want this bill to be passed. If we don't get this bill killed, the US patent system will essentially be "run" by the biggest technology companies on the planet.

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Thursday, August 09, 2007

Who's the bad guy here?

Another day, another post. I'm obvously trying to quickly break us out of the blogging slump we were in...

So, in today's Wall Street Journal, an article states that Johnson & Johnson (J&J) is suing the Red Cross for trademark infringement (WSJ Article Link). Apparently, J&J owns the trademark of a greek red cross in conncection with health care services. J&J had licensed the cross mark to the Red Cross & the Red Cross apparently licensed the mark to other companies, making a profit on their own licenses.

Although I'm tempted to jump on the side of J&J, I won't. J&J's argument is that trademark holders have a right to enforce their marks, and the Red Cross knew the cross mark was not their mark, yet they licnesed the mark out to others. However, the Red Cross may counter with an argument that a trademark holder who fails to enforce their mark may allow dilution of the mark or the mark may become "generic", and and the traademark holder may lose the right to enforce the mark. I think something like that is what's happened to J&J here. I don't know about you, but I've always associated the red cross mark with the Red Cross or healthcare services in general and not J&J. It will be interesting to see what the courts decide, but my guess is J&J loses.

The point? Enforce your marks early and often. That is all.

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Wednesday, August 08, 2007

Is InventSAI breaking the law?

The post is wholly one attorney's opinion and in no way states the opinion of the firm, or attempts to establish any facts.

Today I learned that an Invention Promotion Company, InventSAI, may not be fulfilling their required duty, by law, of disclosing the profitability of companies using their services. In fact, there appears to be a question as to whether The InventSAI Network, LLC is violating not only the the letter but also the spirit of the Amercian Inventors Protection Act of 1999 (the "Act").

Under the Act, whose full text can be seen at http://www.uspto.gov/web/offices/com/speeches/s1948gb1.pdf, an invention promoter or an invention promotion firm must disclose specific information regarding their past business practices. These mandatory disclosures are required by law. Specifically, invention promotion companies are required to provide "the total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by such invention promoter."

InventSAI states "An exact number of inventors commercializing their inventions can only be estimated because InventSAI clients are not obligated to disclose financial data. Nevertheless, based upon client feedback, of the 815 total InventSAI clients contracting for commercialization services, at least 152 have reported commercial success with hundreds of cases still active." Thier online post can be seen here: http://www.inventsai.com/AIPA.html

The law requires InventSAI to disclose "the total number of customers known... to have received a net financial profit.". It appears InventSAI is playing the ostrich game - what I don't "know", I don't have to disclose. However, I read the law differently. The law requires InventSAI to disclose "known" profitably customers. InventSAI by its own admission does not know of any net profitable customer since its customers "financial data" is not disclosed. Therefore, under my estimation, InventSAI is required, by law, to state it knows of zero profitable companies that have used its services.

Moreoever, stating that "at least 152 [customers] have reported commecial success" is misleading and potentially dishonest. If InventSAI does not know their customer's financial data, how can they know if they're commercially successful? I'd like to know what InventSAI's definition of commercial success is. Moreover, by simply providing "commercial succes" data as opposed to "net financial profit" data, InventSAI seems to simply be providing data they want to provide, instead of the data they are REQUIRED to provide, by law.

WHAT ARE THEY HIDING? I welcome a phone call from InventSAI to explain thier position and why they feel they can get around this law in this manner.

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Monday, August 06, 2007

DAVISON ROCKS!!!

OK, for thos of you who don't know me by now should realize that I'm sarcastic. Hence, the title of this blog article.

Addtionally, it would be remiss of me if I failed to say sorry. I'm sorry that we've been absent from posting any recent blogs - I suppose the summer blog malaise started to seep as the temperature outisde started to push 100 degrees on a daily basis. So, although this new blog article is waaaaayyyyy overdue, in the hopes of kicking off a new blogging season with the type of article we wish we did not have to post, but feel it is our job to so do...

Once again, an invention promotion company has reared its ugly head to show us just how inept they actually are. As our blog articles on InventHelp and Advent Product Development disclosed their inability to create profit for their clients, Davison's own website (http://www.davison54.com/disclosures/disclosure.php) states the same thing. Here's what Davison tells us about themselves:

(1) 41,128 consumers signed licensing agreements and purchased research services from Davison in the last 5 years.
(2) 11,598 consumers purchsed product design services from Davison.
(3) Of these, "THE TOTAL OF CONSUMERS IN THE LAST 5 YEARS WHO MADE MORE MONEY IN ROYALTIES THAN THEY PAID, IN TOTAL, UNDER ANY AND ALL AGREEMENTS TO DAVISON, IS EIGHT(8)."

So, you have about a .0002% chance at making money with Davison if you purchase their research services. That means, that about 2 out of every 10,000 people who purchase these services with Davison make more money on their product than they spend with Davison. And if you spend the big bucks with Davison and purchase product design services your chances at makign money with them go up to a whopping .0007%. Or, about 7 out of every 10,000 people who contract Davison to help design their product make more money off of their product than they spent with Davison. So, if you're thinking of using Davison, my suggestion would be for you to play the lottery instead. They appear to have better odds: http://www.coloradolottery.com/games/scratch/featured.cfm?FeaturedGameID=101 (please note sarcasm statement at beginning of post).

Oh, and one more thing. Davison also states "THE PERCENTAGE OF DAVISON'S INCOME THAT CAME FROM ROYALTIES PAID ON LICENSES OF CONSUMERS' PRODUCTS IS .001%." This means that for every $1 Davison makes from licensing a product submitted to it, Davison is making $1000 off of the people submitting the products.

Numbers don't lie - and these are Davison's own numbers! As we suggst to our clients, do not use these companies - you are more likely to succeed if you are willing to put in the effort yourself and use reputable marketing and manufacturing organizations, while protecting yourself legally along the way. Contact Leyendecker and Lemire (www.coloradoiplaw.com) and we can steer you in the right direction.

Numbers are current as of June 30, 2007.

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Monday, May 14, 2007

Kudos to Advent Product Development!!!

Between Oct 1, 1998 and Dec 6, 2004, they had a perfectly imperfect record! That is, of 2452 people that signed Phase II representation Agreements, NO ONE, ABSOLUTELY NO ONE made more money than they gave to Advent Product Development! The beauty is this is the number the company itself presented in a recent lawsuit as reported by our friend, Stephen Nipper, over at THE INVENT BLOG.

And those of us in Colorado are especially lucky because we have our very own Advent Product Development office here in the state. Let's all give Advent Product Development a call and let them know how we feel about their good work.

So if you have an invention and a lot of money burning a hole in your pants, it seems you can't go wrong with the boys at Advent.

(I have been told sarcasm does not transfer well in writing. So in case you were confused, I am not advocating anyone use Advent Product Development and in fact my opinion is you should avoid them and other similar invention promotion companies like the plague.)

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Business Method Patents - Are they worth it?

Good Question.

A recent article in the ABA Journal by Steve Seidenberg discusses the most recent group of business method patents to hit the PTO - tax patents. These patents cover useful, unique and nonobvious implementations of the tax law. Mr. Seidenberg's article takes on an anti-tax patent strategy theme in discussing whether tax patents in particular and legal strategy patents in general should be valid, mentioning that Congress may be changing the law to limit tax patents.

This got me thinking about business method patents ine general and whether they were worth the cost, given recent decisions by the Supreme Court. At Leyendecker & Lemire, we charge at least 25% more for business method patents, and one reason for doing so is to ensure that we take into account recent changes in the law so that your patent is as broad as legally possible, and sill retaining the likelihood your patent will issue.

The question to ask yourself is whether it's worth it for you (an individual or small company) to protect your unique way of doing business - be that providing tax services or otherwise? Well, maybe. Like other patentable areas, and likely more imprtant in the business method arena, you need to ask yourself how great your idea is as compared to what's currently being done by your competitors? Does your idea give you a competitive advantage over other persons providing similar services and products such that you will can forsee obtaining a return on your patent investment which is higher than the cost of the patent? As discussed on our new website www.coloradoiplaw.com, the answer to these questions ultimately come to whether you have the perseverence to see your idea to patent issuance and to subsequently enforce any patent that may issue. Although this process may cost more with a business method patent, the reward can be just as great or greater - allowing you to provide your unique service that no one else can provide.

If you can answer these questions positively, then you have what it takes to see your business method idea through to the end and should contact our office.

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Wednesday, May 09, 2007

A Denver Colorado Trademark Attorney Answers Your Frequently Asked Trademark Questions Part III

For Answers to More Questions Click Here

Ok, I have been so consumed with writing content to expand the useful content displayed on our main Website , that I have kind of neglected the blog. Never fear, we are back with the next installment of answering your frequently asked questions. This next one was actually inspired by a comment that was left on one of the earlier trademark articles.

Q: I have heard of something called the supplemental register. What is it?

A: In the federal system there are actually 2 registers that a mark or potential mark can appear on. The first is the Principal Register, which contains marks that as of the date of registration actually function as marks. Usually this means that the term identifying the goods or services must be inherently distinctive or has acquired secondary meaning. The second is the Supplemental Register, which is for marks that have the potential to be on the Principal Register, but have not quite made it yet.

Marks that are inherently distinctive are generally placed into 2 categories 1) fanciful or 2) arbitrary. Fanciful marks are marks that have no inherent meaning. Examples of fanciful names, Google (the word Google is based on an actual number, but the word itself is meaningless), Kodak, Xerox, Dell etc. Arbitrary marks are words that exist and have meaning, but are applied to goods in an arbitrary manner (i.e. they have no relation to the goods). A good example of this is Apple for computers. In general inherently distinctive marks are given the widest breadth of protection and are the easiest to register.

A step down from inherently distinctive marks are those that contain various levels of descriptive terms. If those terms are incidental to the mark in general, the registrant can usually get by with a disclaimer stating that they do not claim exclusive use of the terms except as they are used in the mark. If the mark itself is descriptive of the goods or services, the mark will most likely be labeled merely descriptive by the patent and trademark office. Merely descriptive marks may be registered on the principal register upon a showing of secondary meaning or acquired distinctiveness. Basically the theory of secondary meaning and acquired distinctiveness is that sure, the mark describes the goods or services, but through my extensive marketing and the name recognition of my products, when you say the term “XYZ” , they do not think of the type of goods or services being described, they think of my goods and services. It is up to the applicant to prove secondary meaning or acquired distinctiveness, by showing marketing expenditures, name recognition and consumer opinion surveys, and the length of time the mark has been used in commerce. If a mark has not yet achieved secondary meaning or has acquired distinctiveness, it may not be registered on the principal register, but it may be able to be registered on the supplemental register.

Essentially, the supplemental register is a limbo for potential marks that have the ability to become marks (meaning they are not generic terms for the goods or services), but have not yet achieved the requisite secondary meaning required for the principal register. There are some advantages of going on the supplemental register while you try to build secondary meaning including:

1. Appearance in the federal database
2. Ability to use the ® symbol in connection of the mark
3. Federal jurisdiction of suits involving infringement of the trademark
4. Federal jurisdiction over state law claims of unfair competition when they are substantially
related to a claim of trademark infringement
5. Eligibility for monetary damages as provided for in the Lanham Act, including infringers
profits, damages and costs, and in appropriate cases trebled damages and attorney’s fees

However, a mark on the supplemental register is not eligible for the following benefits available to principal register marks:

1. Cannot file on an “intent to use” basis (ie must be currently using the mark)
2. A certificate of registration on the supplemental register is not prima facie evidence of the
validity of the registration
3. A mark on the supplemental registry does not have a nationwide priority against third
party users (basically your rights extend only to the geographic area you are actually using
the mark)
4. Cannot achieve incontestable status
5. Certificate of registration of a mark on the supplemental register is not prima facie evidence
of the registrant’s ownership of the mark.
6. The Certificate of ownership for a mark registered on the Supplemental Register is not
prima facie evidence of the registrant’s exclusive right to use the mark in commerce on the
goods or services contained in the registration
7. Supplemental Register registrations cannot be registered with U.S. Customs for the
purpose of preventing the importation of infringing or counterfeit merchandise bearing the
mark.

Depending on the circumstances Supplemental Register may be a good idea and give you and your business some advantages. However, it is important to be familiar with the potential short comings of the registration. In the end, really it’s better than nothing and usually is a good place for marks to reside, while they are building their required secondary meaning. Of course a wise strategy is to choose marks that are arbitrary or fanciful and they you don’t have to deal with the situation in the first place.

For more information on trademarks please click here to visit our website.

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Tuesday, May 08, 2007

Our New Website is LIVE!!!


Finally.... We have been working on a new site for two years, but we never got around to finalizing it. SO a few months ago we hired a graphic designer to generate our logos and we hired a web designer to design our site and he did a great job! See lighthousewd.com for more information about our designer.


The site is at WWW.COLORADOIPLAW.com.


It has over DOUBLE the useful content in an easy to navigate setting.


I might add that we believe this is the best Intellectual Property website on the web aimed at entrepreneurs and individual inventors, but, of course, we are a little bit biased.


Please review it and tell us what you think. Be forewarned, however, to fully peruse, let alone read, the massive amount of useful content, you will need several hours.


Next, we will tackle organizing the BLOG. Hopefully, this won't take us two years!

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Monday, May 07, 2007

Now or Never?

The past week has been rather sobering at the office: I found out that one of my clients dies of a heart attack at the age of 44. It drives home the point that one can't take anything for granted: even waking up in the morning. I only met with the client a couple of times nearly two years ago but he impressed me with his gregarious and friendly nature. He was certainly one of my more memorable clients.

The thing those of us can take from events like the foregoing is that there really is no time like the present to pursue you dreams and ambitions whether that is starting a business, commercializing your invention, or traveling around the world. As long as your are breathing, it is never too early or too late to begin. And realize that tomorrow, which may never come, may be too late. In other words, for those things and actions that are really important to you, such as your life goals, you may not be able to wait for another day.

As they say in a long dead language: Carpe Diem!

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Thursday, April 19, 2007

Will Patent Reform Occur This Year?

Yesterday, Wednesday, April 18th, 2007, the Senate and House both introduced "new" bills to overhaul the patent system. However, these bill aren't "new". This legislation looks like the same bills that have been introduced in years past. In one corner you have "Big Business" supporting the legislation and in the other corner you have "Individual Inventor" against the legislation. These sides are evidenced by a recent quote from Emery Simon, counsel to the Business Soware Alliance, an organization that apparently recieves funding from Microsoft, Apple, and HP. Mr. Simon is quoted as saying "The object of the patent law is to promote innovation and we think the balance has been tipped away from that and has created too much incentive for... litigation."

Well, this seems like an appropriate statement from an attorney who is representing the interests of Microsoft, who just happened to have lost a $1.52 billion patent infringement case in February 2007. If I were Microsoft, I'd sure as doo-doo try and change the patent law too. I'd want to make sure that the next time I was caught stealing patented ideas I wouldn't have to pay as much. The unfortunate reality is that if this legislation goes through, which is likely this time around because the Dems are in control (& the Repubs are against the legislation because they are well-funded by the drug companies, who are against this type of bill since it would allow easier creation of generic drugs), we all lose in the long run.

With this bill, innovation would only controled by the big guys as VC's would be less likely to invest in companies based on patent protected products and services as the patents they hold will be less valuable. This is just one of the MANY problems with this legislation. Do your civic duty and contact your Senators and House Representative & tell them why they need to vote AGAINST this bill. Like many governmental systems, the patent system is not perfect. But it's better for everyone if we don't let Microsoft & the other "big boys" write the laws for us.

You can find Leyendecker & Lemire on the web at www.lld-law.com.

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Sunday, April 15, 2007

Our New Blog: TWO YEARS LATER

This past Friday was our blog's second birthday! Sure, it is still referred to as "Our New Blog" on our aging website site of which much of its content is over 5 years old. Alas, the new site is coming, although not nearly fast enough for me anyway.

Anyhow to be nostolgic, here is our very first post:

Why a Blog? That is a question I am asking myself as I type away. Ultimately, Leyendecker Lemire and Daley, LLC is about providing information to our clients and prospective clients. And a Blog is a way to do this.

Hopefully, prospective clients will get a sense of who we are from this Blog. Lets face it, legal services can be expensive and you deserve to have attorneys on your side that you are comfortable with. I have no doubt many of you will appreciate and welcome our open, approachable and up front manner while others of you may prefer more traditional button-up attorneys. We just want you to make the choice that is best for you.

What can you expect from this Blog? Well as the Categories indicate you can expect our pontifications on legal matters relating to intellectual property and business. Perhaps, on occasion one of us might philosophize about something else altogether. And on yet other occasions one or more of us may provide a little insight in to our lives outside of the office. All I can say is tune in and see.

Now, if our Blog is a bit boggy in the beginning, please forgive us. After all, we are attorneys, not web masters. Of course, if you have any questions don’t hesitate to contact us.

Kurt Leyendecker, Esq

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A Denver Colorado Patent Attorney Answers FAQs: Part 6

FOR ANSWERS TO MORE QUESTIONS CLICK TO VISIT: OUR WEB SITE

We continue our popular Patent FAQ series below. Portions of this series can be found on our website. Also, check out our Trademark FAQ series, which, until our new and improved website is launched, can be found only in this BLOG. And if you have not already, click the link above or below and go to our website and add it to your favorites. The new and improved site with about 75% more useful content is nearing completion and should be available within the next month or two. It will be an indispensable resource for entrepreneurs, small companies and individual inventors alike.

6. What are Claims and why are they so important?

Simply, claims are one-sentence descriptions of what the inventor considers his invention. The claims legally define the scope of an invention and inventor’s right to exclude others from making, using or selling his invention. Without question, the claims are the most important part of the patent application and subsequent patent.

The claims are also the most misunderstood part of a patent application. They are often written in patent attorney legalese and are very difficult for someone not trained in patent law to read and properly interpret. The typical inventor is unable to judge the quality of the claims provided in a patent application and if the patent attorney has not done a good job, the scope of protection of any resulting patent may be severely limited to the point where the patent has little or no value in preventing other from copying your invention. It is an unfortunate reality that many patent agents and attorneys are also not very adept at writing good legally defensible claims, whether that is because writing good claims would take too long or because of simple ignorance concerning the rapidly changing state of patent law. On the other hand, a good patent claim may provide you with a scope of protection that is greater than you contemplated before you went to see your patent attorney. Accordingly, the choice of quality patent counsel is of the utmost importance.

To give you a better understanding of claims, there are basically two types: independent claims and dependent claims. An independent claim is a complete description of the invention in and of itself. It comprises a set of elements (or limitations) that when taken together in combination defines a novel and nonobvious invention. A dependent claim is a claim that includes additional limitations that further define and limit an independent claim. Consider the example of a pencil with an eraser as provided below:

1. A writing device comprising:
(i) an elongated core comprised of a first material, the first material having a property of exfoliating when frictionally engaged with and moved across a surface;
(ii) an elongated shell comprised of a second material substantially surrounding the elongated core, the elongated shell having a first end; and
(iii) an eraser, the eraser being attached to the first end.

2. The writing device of claim 1, wherein the first material comprises graphite.

3. The writing device of claim 2, wherein the second material comprises wood.

Claim 1 is an independent claim. Claim 2 is a dependent claim that includes all of the elements of claim 1 plus the additional requirement that the first material be graphite. Accordingly, if these claims issued in a patent and a person made a wood pencil with a lead core, he would be infringing claim 1 while not infringing claim 2, because claim 2 requires that in addition to all the elements of claim 1 that the core be made of graphite. Claim 3 is dependent on claim 2 and accordingly includes all the limitations of claim 2 and claim 1 from which claim 2 depends as well as the additional limitation that the second material comprises wood. Accordingly, if a person made a mechanical pencil with a graphite core material and a plastic shell he would still be infringing claim 1 and claim 2, but he would not be infringing claim 3.

How does an inventor know if the claims that a patent attorney wrote for his invention are any good? We do not have an answer for you. Our basic response would be to question your patent attorney before you hire him. Listen to his responses. Does the attorney seem like he takes the claims portion of a patent application seriously. Ask him/her how much time it takes to draft a set of claims. If he/she indicates it can be done in a couple of hours, you can rest assured that the claims will probably not be very good. If you prospective patent attorney says he can draft an entire application for $3000 and his hourly rate is $225 or more, you can be confident he is not going to spend more than a few hours on the claims. In our opinion to draft three really good sets of claims (you can have up to three independent claims in your application for the basic filing fee) takes around 5-8 hours. And incidentally, the shorter the length of the claims, the better they are likely to be. Long claims with a lot of additional language are almost always too narrow!

FOR INFORMATION REGARDING OUR FIRM CLICK HERE

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Wednesday, April 04, 2007

A Denver Colorado Patent Attorney Answers FAQs: Part 5

FOR ANSWERS TO MORE QUESTIONS CLICK TO VISIT: OUR WEB SITE

5. What is the Difference between a Design Patent and a Utility Patent?

A utility patent is typically what comes to the mind of most people when they think of a patent. Utility patents can be obtained for new and useful processes, machines, articles of manufacture or compositions of matter. Utility patents may not be obtained for: printed matter (usually protected with a copyright); naturally occurring articles; scientific principles, mathematical laws; and “inoperative” inventions, such as perpetual motion machines that are incapable of achieving a useful result.

Unless otherwise stated, throughout this web site when we use the term “patent” and “patent application”, we are referring to a utility patent and utility patent application respectively.

Art is generally not within the purview of utility patents. Sculpture, paintings, and music are not considered to possess utility (or usefulness) and are, accordingly, not patentable. Creative works are typically protected through copyright. Patent law does overlap with copyright concerning design patents. To learn more about copyright law, click here.

Design patents protect the novel, nonobvious ornamental designs of articles of manufacture. In other words, the design patent protects the way an article looks. Unlike utility patents, there is no requirement that the ornamental design be useful. Rather, a design patent cannot protect the features of an article of manufacture that are dictated wholly by functionality. It is not uncommon to apply for and receive both a utility patent and a design patent for the same article provided the novelty and nonobviousness of the article resides in both its utility and its ornamental appearance.

As mentioned above, sculpture is protectable through copyright, but since it is an article of manufacture, it is also protectable through a design patent. Because registered copyrights are inexpensive to obtain when compared to design patents (typically about $300 versus about $1000-2000) and considering the much shorter term of a design patent (14 years), it is rarely prudent for a sculptor to apply for and obtain a design patent when a copyright will provide adequate protection. Furthermore, since copyright protection actually applies to a creative work immediately upon its creation, the sculptor need not even apply for a registered copyright, although by registering the copyright, the sculptor does gain certain additional avenues of legal recourse against those who copy his work.

Copyrights are not available, however, for articles of manufacture that are primarily functional unless the nonfunctional portion can be conceptually or actually separated from the functional elements of the article. For example, a 1.5-foot high sculpture of a person is protectable through copyright whether the sculpture stands alone or serves as the base of a table lamp. Interestingly, the lamp's design (i.e. the sculpture) would also be protectable for use in a lamp using a design patent. There is a degree of overlap between copyright and design patent protection but in general, design patents are most useful to protect the ornamental and non-functional features of an article of manufacture that possesses functionality.

Generally, a design patent by itself without an accompanying utility patent is of little use to the independent inventor. Some unscrupulous invention companies have in the past used the design patent as a way to inexpensively (for them) obtain a patent for their customers. They, however, often failed to inform the customer that the design patent only pertains to the look of the device and that a competitor could produce a similar device that has the same functionality without infringing the design patent. And if the competitor cannot produce a device having similar functionality as the design-patented device without copying the look of the device, than the design patent is probably invalid because the look of the product is not wholly ornamental but is at least partially dictated by function.

We do recommend that an inventor or company consider obtaining design protection when they intend to produce an article of manufacture themselves and the design is unique enough in their opinion that there is a concern about someone copying it. Often a design patent is a good companion to the utility patent as it further protects a particular product.

FOR INFORMATION REGARDING OUR FIRM CLICK HERE

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Thursday, March 29, 2007

A Denver Colorado Patent Attorney Answers FAQs: Part 4

FOR ANSWERS TO MORE QUESTIONS CLICK TO VISIT: OUR WEB SITE

Question: Can I get a patent on my idea or invention?

We have observed over the years that many people think that in order to receive a patent a person must invent something earthshaking or of great significance. The truth is that merit, potential and/or groundbreaking significance have nothing to do with obtaining a patent for an invention. The United States Patent Office makes no judgments as to the merit or potential value of your invention. Rather, they look to see that an invention satisfies three basic requirements: (1) utility; (2) novelty; and (3) nonobviousness.

Utility is by far the simplest requirement to satisfy requiring only that the invention serve a utilitarian purpose. In other words, the invention must be useful. Most inventions easily satisfy the utility requirement. Some types of creations excluded from patentability for lacking utility include: creative works, such as music, literature and sculpture; scientific or mathematical algorithms, which are considered to be discovered rather than invented; and purely mental processes, which can be performed solely in one’s mind.

Novelty merely requires that someone else did not invent your invention and disclose it to the public before you. In general, a patent search combined with a patentability opinion is very effective in determining whether an invention is novel. If your attorney believes that your invention isn’t novel, he/she will usually recommend that you do not file a patent application.

Nonobviousness simply requires that the invention not be obvious in light of prior art to someone of ordinary skill in the art in which the invention is to be practiced. Obviousness or the lack thereof is very difficult to objectively judge. Not surprisingly, nonobviousness is the most common hindrance to having the claims in a patent application allowed. Further, it represents the greatest source of disagreement between patent attorneys and the patent examiners in the patent office. An examiner will contend that a claim is obvious, the attorney will respond with a legal argument why it is not, and this may go on and on until one side gives up. Mind you, arguing with the examiner costs money in terms of (i) having your attorney draft office action responses and (ii) continuing the prosecution of the invention. Many attorneys will try to reach an accord with an examiner in a telephone interview after the second and typically final office action has been presented. We will, however, almost always recommend a telephone interview being conducted after the first office action

An obviousness rejection by a patent examiner usually takes the form of two or more prior art references (typically issued patents) that when combined teach all of the elements in one or more of the patent application's claims. Often, however, the attorney can successfully argue that the combination of the references is not proper even if the two references contain all the elements of the claim. In order to combine references, the examiner must demonstrate that the two references pertain to the same field of art as the subject invention and that there is a motivation to combine the references. Interpreting these legal standards and applying them to the facts of a particular patent application and rejection are not easy and are best left up to a qualified patent attorney. Suffice it to say, just because you think an invention may be obvious does not mean that the invention is obvious in terms of the requirements for patentability. Obviousness as viewed by you is probably based on your common sense and life experiences while obviousness relating to patentability is based on statute and case law. In our experience, the legal standard of obviousness is much narrower than one would imagine and accordingly, can often be argued around to obtain a patent.

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