This Is General Information Not Legal Advice
About the Author
Your Business Plan
Intellectual Property Protection
I. Who Owns It?
- II. Patents to Protect Technology
- III. Non-infringement Analyses Are Different
- IV Trademarks Protect Trade Identity
- V. Copyright Covers The Means of Expression
- VI. Trade Secrets
- VII. When to Call Your Lawyer
This Is General Information Not Legal Advice
This paper is written to explain and illustrate situations which may come up involving intellectual property law issues for a typical individual inventor. This paper does not give specific legal advice to about specific fact situations. If you have a specific fact situation in mind you should seek professional legal advice addressing the relevant facts and law. Seemingly minor changes in facts may change a legal opinion dramatically. Space here does not permit an explanation of all the variables in complex legal areas.
About the Author
David C. Brezina, obtained his Bachelor's degree from Cornell College in 1975, his Juris Doctor from IIT Chicago Kent College of Law with Honors in 1978 and his Master of Laws in Intellectual Property Law from John Marshall Law School in 1988. He is a member of the Illinois bar and a registered patent attorney practicing intellectual property administrative and litigation cases as Counsel to Ladas & Parry, LLP. He is admitted to the Trial Bar of the United States District Court for the Northern District of Illinois, the Seventh Circuit, the Federal Circuit and the U.S. Supreme Court. Mr. Brezina is a Past President of the Bohemian Lawywers Association of Chicago, a past Chair of the Chicago Bar Association Patent, Trademark and Copyright committee. He is also taught as an Adjunct Professor at John Marshall Law School teaching Antitrust and Misuse Aspects of Intellectual Property Law in the Center for Intellectual Property Law as well as graduate and undergraduate Entertainment Law at Columbia College in Chicago. He has made presentations to lawyers and business people, has authored a number of articles and invented several patented items. Dave also is Past Commodore of the Chicago Corinthian Yacht Club and past Managing Partner of his former firm, providing some hands on management experience.
Your Business Plan
Intellectual property rights are exclusionary rights -- the right to stop someone else from making, using or selling your invention, the right to stop someone from using a name too similar to one you use in your business or the right to stop someone else from taking a substantial portion of your work of authorship. These rights are valuable to protect your investment in time and money and to protect your business. Making money in a business needs to be done by selling a "product" -- like a physical item, a property right or a service -- for a price higher than the total cost to produce it. You should have a plan to make and market your product to your intended buyer or buyers from the beginning. With rare exceptions, you are not required to have a patent or registered trademark before doing business. Having a patent or trademark does not guarantee you either that you will ever make money on the intellectual property right or that you don't infringe someone else's intellectual property rights. Put together a realistic business plan before you start.
Intellectual Property Protection
For a given new product, start protection early. As new "products" are developed, preserve confidentiality and make sure you "own" it. As the product develops plan protection early to preserve your options and maximize the strength of your position. Interaction with your intellectual property lawyers at various steps can get useful information on which to base decisions on a step by step basis. The America Invents Act makes it more important than before to seek patent protection early with its grant of priority to the first inventor to file.
I. Who Owns It?
If you do all the development work yourself, the question of ownership is easily answered. If you are in business and employ engineers, designers and marketers they should have employment agreements that recognize that the you own new ideas, products, inventions and the supporting documentation (like drawings and specifications) that relate to your business. Outside engineers, designers, artists, photographers and marketers should be hired only based on written agreements that recognize that you own the work product that relates to work you commissioned. Express written agreement relating to copyright should be signed by both parties, although some grants of permission can be effective when signed only by the owner.
Idea protection goes two ways. If you are the recipient, you want freedom to develop products without complications or lawsuits. If you expect to send your idea to a company, you want to be sure it is not taken unfairly.
Many companies strictly control receipt of unsolicited ideas. Many companies will not agree to confidentiality without an evaluation by their management. For everyone's protection all agreements should be in writing.
Because of fears of unfounded lawsuits, most large companies adopt a safe policy to refuse unsolicited ideas unless covered by an issued patent or a pending patent application, a copy of which is provided. These companies will document their return the idea to the submitter.
If you are the submitter of the idea, read any document a company provides you carefully. Consult with your intellectual property lawyer. Many companies entitle documents something like "Disclosure Agreement" and have the submitter of the idea agree that there will be no confidentiality and no obligation to pay anything -- that company is free do whatever they want unless you get a patent. The company is trying to protect itself and is not hiding anything. The vast majority of companies are ethical, but not all. You may decide to go ahead anyway, but you should do so with a correct understanding of what you may be giving up and you need to balance the risks, the costs and the possible rewards.
For a minority of companies, management may think it advantageous to consider outside submissions. These will probably be accepted only on strictly limited obligations in writing. They may be negotiated for particular disclosers, in consultation with your intellectual property lawyer.
Where new products are developed in cooperation with others, ownership of ideas, products, inventions and the supporting documentation should be made clear. Attention should be paid to your recovery of development costs, continued supply opportunities and sales to additional customers. A customer or company who either wants exclusivity or who wants to shop your inventions to competitors, should pay accordingly.
II. Patents to Protect Technology
a. Patent Application and Priority
Preservation of patent options is secured by early filing with the US Patent & Trademark Office. Different filings are permitted. Provisional Applications will be given presumptive effect in proving priority if the details disclosed in the provisional specification are the same as those disclosed and claimed in a complete, Nonprovisional Patent Application filed within one year of the filing date of the provisional application.
Provisional applications can be filed in series as the invention develops and can be filed on separate elements as each is developed. A full, nonprovisional patent application can claim priority from a number of provisionals and have different priority dates for each step or element covered in a provisional application filed within the one year period.
A patentability search is intended to locate patents which may anticipate or make obvious your invention. A patentability opinion by your patent lawyer, based on the search, is a subjective determination as to the scope, if any, of available patent protection and can be used to help make a judgment about whether to go to the next step of filing a patent application. The patentability search is not designed to provide a guarantee of patentability.
A patentability search and opinion is not designed to answer the question of whether the product itself infringes someone else's patent. You may be entitled to your own patent -- the right to stop someone else from making your invention -- while someone else has a blocking patent that stops you from selling your product. An infringement or noninfringement analysis involves considerably more research and analysis than patentability and needs to be discussed separately.
b. Prosecution of Patent Application
A complete nonprovisional patent application -- specification, drawings and claims -- begins the examination process and is the first step to yield a patent enforceable against competitors or others who make, use or sell the invention covered by the claims. Prosecution typically involves eighteen months from filing until the first office action, on average. Some applications take considerably longer for a variety of reasons.
To graphically see the way different patent applications and their priorities interrelate, you can view a patent application timeline.
Amendments to claims are usually needed. On the second, usually final, action, examiners who are unpersuaded will often not consider further amendment. A request for continuing examination, filed with additional governmental fees, entitles the applicant to further examination as a matter of right. However, the twenty year term of the patent will be calculated from the initial complete application filing date. Unusually long prosecution may result in an adjustment of the patent term. Provisional application dates are for priority, not for calculating the length of time a patent will last.
Continuation in part applications can add improvements -- new matter -- not included in the original application. Divisional applications can cover variations which the examiner thinks are really separate inventions. For these types of applications the twenty year term of the patent will still be calculated from the initial complete application filing date.
Once an application has claims the examiner finds to be allowable, an issue fee will need to be paid. Upon payment and after further processing, on the date the patent issues its claims can be enforced against anyone who makes, uses or sells a product, or a method to make a product, on which the claims may be "read," or induces someone else to do so. This is decided based on the claimed elements, not the features of a product which may actually be sold by the patent owner. Even "paper" patents -- which are for products the patent owner may never actually sell -- are enforceable.
c. Business, Computer and Scientific Method Patents
As computers have become commonplace tools for implementing business, scientific and technological methods patents that cover these methods have confounded courts. Rules for evaluating whether these methods are entitled to patenting include prohibitions on patenting abstract ideas and laws of nature. Using a general purpose computer to perform steps that could have been performed in the past using paper and a pencil is problematic. Claiming a method using a particular machine or apparatus, or transformation of matter can satisfy the patent eligibility requirement. It will be important for an inventor to fully discuss all the technological details needed to implement the invention with his or her patent attorney.
III. Non-infringement Analyses Are Different
a. Infringement or Non-infringement
Finding out if someone else's patent covers your product before introducing a new product is important. If someone else's claims read on a product you make, use or sell, then they can sue you for an injunction and damages. If you are selling your invention to someone else, they may want a warranty that there is no infringement. Be very careful. Finding the answer to this question is more complicated than a patentability opinion.
The scope of someone else's patent is defined by the claims. Each claim includes separate elements, all of which need to be found in an accused product in order for there to be infringement. One step in deciding if there may be infringement is to identify and interpret the elements for each claim. Another step is then to see if your product has each and every element. If an element is missing from your product, there is no direct infringement. This cross referencing must be done for each claim and includes analyzing the meaning of the claim language in light of definitions in the specification, disclosures in the prior art and arguments that were made during prosecution which appear in the file history.
Because most patents include multiple claims, each one requiring the described analysis, and multiple competitors' patents may come up, a full noninfringement study and analysis can be quite complex. A continued dialogue between patent lawyer and client can hopefully focus the efforts for maximum efficiency.
b. Applying Infringement or Non-Infringement Analysis to an Example
Take the following claim:
A gizmo comprising:
a lever pivotally connected to the base;
a pushrod connected to the lever so the lever moves the pushrod.
You develop a gizmo having a ball bearing lever pivot. Your gizmos have bases, pivoted levers and pushrods. The lever moves the pushrod. You infringe if you have all the claimed elements. You may be entitled to your own patent on a ball bearing gizmo lever pivot. But your patent simply means you can stop others from making, using or selling ball bearing gizmo lever pivots covered by your claims. A patent is not a clearance that your product is permitted to be sold.
Suppose you rig a cable to the lever. Instead of "pushing" your gizmo works by "pulling." Now you don't infringe. You no longer have a pushrod.
c. The Doctrine of Equivalents
Another complicating factor is that courts will not necessarily permit merely trivial or technical differences to be used to defeat an infringement case, if it would work a fraud on the patent system. To avoid letting sharp companies get away with infringement courts developed the Doctrine of Equivalents. If an element performs substantially the same function, in substantially the same way, to obtain the same result, there may still be infringement even if there is not "literal" infringement.
Suppose your gizmo uses what your sales literature calls a "torque tube" but it does the same thing as the claimed pushrod -- its simply a tube, not a rod. A court may not let you get away with avoiding infringement. The cable actuated gizmo, on the other hand, doesn't do the same thing in the same way. Cables don't "push."
d. The File Wrapper
Suppose a gizmo patented in 1880 showed a tube actuator gizmo. If the patentee in the later gizmo patent in which we are interested told the Patent & Trademark Office while trying to get his own patent: "I am entitled to a patent because the moment of inertia of a rod is different from a tube" then your tube actuator gizmo is in the clear. The patentee can't "give up" tubes in order to get a patent and then later tell the court they are all the same. Either he wasn't entitled to a patent in the first place, or a tube actuator gizmo does not infringe.
For each of these steps there are rules and exceptions to the rules. Application of the analysis depends on what facts there are, how those facts ought to be interpreted and predicting how the judge or jury will interpret them. The reason for an amendment will come into play as will court precedents on how to interpret the purpose of amendment. While there will always be a level of uncertainty, more data and more detailed analysis are better than less and are more helpful in predicting the correct result.
e. Patent Validity
Patents are legally presumed to be valid. But an accused infringer has a big incentive to find evidence that shows the invention is old or is obvious, was "on sale" or in "public use" in the U.S. or described in a publication more than a year before the filing date of the application. This can invalidate a patent, making it unenforceable against anyone. This is a defense to infringement and something the accused company will look for and something the patent owner will fight.
Occasionally there are changes in the law, genuine differences over compliance with technical requirements for patent applications, mistakes and, rarely, some inventors do not live up to the oath signed with the application. Occasionally improper business practices adversely affect the enforceability of a patent. These types of defects can also make a patent invalid or possibly unenforceable either against a particular defendant, or until a defect can be "purged."
IV Trademarks Protect Trade Identity
a. Trademark Law Protects Brands and Consumers Against Confusion
You may wish to manufacture and sell the product. Often additional areas of law come into play. Once a decision is made to try to market a product, regardless of its patentability, what is it going to be called, and what materials are going to be used to sell it? The "name" used to identify you to consumers as the source of the product can be a trademark. It is best to coin a new word or chose a name that is a distinctive identifier in and of itself. CREST toothpaste, TIDE detergent and EAGLE automobiles are recognized by purchasers as having consistent quality and origin coming from a single source -- even if they don't know the company name. These terms are trademarks.
Symbols, devices, sounds, smells, product coloration, packaging shape or configuration, and even the appearance of the product itself can occasionally be protected under trademark law theories as trademarks or as "trade dress." Effectively anything that indicates to consumers who the product comes from, rather than what the product is, may be protectable.
Trademarks can be used as long as someone else doesn't have prior rights on a similar mark for similar products -- so similar as to cause a likelihood of consumer confusion. An availability search can be conducted to decide if there are blocking registrations.
Relying on actual use means you have to commit to production and marketing before you acquire rights. An intent to use application will undergo examination over the course of several months to more than a year. If approved, you can then file proof of use to get a registration.
An availability search can be conducted to decide if there are blocking registrations. Often a computer search can locate these. A full search locates registrations and also some unregistered common law uses. Services charge varying amounts for varying degrees of thoroughness. Common law uses may block rights even if there is no registration. Your lawyer can interpret the results, analyze how theses facts will likely be treated under the law and provide you an opinion on whether the mark is available for that product.
As with patent searches, these searches are not necessarily designed to decide if you can use a mark, only to see if someone else has something which will block your registration. A full search can provide data from which to draw some conclusions about infringement. The greater your investment in product introduction and the greater the consequences if you are forced to drop a mark, the more data ought to be found to minimize uncertainty. Be sure you convey the "stakes" involved to your lawyer.
To protect your mark -- a new mark or an old mark on new products -- you can get priority by either actual use or by filing a Federal intent to use trademark application.
b. A Few Words About Cybersquatting, Keywords and Sponsored Links
The above system developed over centuries from medieval Guild markings to modern trademark law balancing companies'property interests against competitors needs to adequately identify their own products and compare, and benefitting both the trademark owner, whose advertising and quality control investment is protected, and the consumer whose uncertainty about quality and shopping time is diminished. The consumer can rapidly decide to buy the highly advertised national brand, or the distinctive regional or ethnic brand, or the best value store brand, without experimenting to exclude products of dubious quality or value, because the mark conveys source, goodwill and a level of quality. Against this backdrop, with the initial creation of the world wide web, certain overly "clever" people attempted to capitalize on administrators' desire for maximum accessto the 'net and the slow speed at which many companies were able to recognize the potential of the new communications medium, by appropriating famous companies' marks and holding them for ransom. The idea was not new, simply the medium, as trademark pirates of an earlier era are well known.
Anecdotes abound, from abusive companies with no sense of humor picking on children who had sites, to lame excuses for cybersquatters' taking a well known name -- my ex-girlfriend's nickname, I posted aerial photos of a small town with that name, I might want to use that some day.
The Anticybersquatting Consumer Protection Act gives a trademark owner a right to sue for bad faith adoption of a name, considering factors such as the existence of other rights in the domain name, whether the name is a legal name or common name of the registrant, whether the mark was previously used for goods or services, any noncommercial or fair use of the domain name, intent to divert customers from the trademark owner, whether the purpose of registering the name was to make a sale for profit or bona fide sale of goods under the name, use of false contact information, if multiple domain names were acquired and whether the mark protected is distinctive or famous.
Arbitration of domain name disputes is available through ICANN using an efficient but very accelerated process.
Cybersquatting is not a way to get rich quick, it can expose the registrant to serious liability. But not every conflicting domain name is cybersquatting. There are many legitimate reasons for concurrent use to occur. As with many areas if intellectual property law, results will depend on subtle distinctions in the law and slight differences in interpretation of evidentiary facts.
As the World Wide Web has developed over twenty years or more, and as computers have become faster, cheaper, smaller and more mobile, commerce has had some aspects change dramatically. Many principles, particularly legal principles, have not essentially changed. Because the medium is different, practical aspects of enforcement are different, but false advertising is no more legal today than it was in 1950. Vendors selling "replica" products are no longer confined to Times Square, Maxwell Street or flea markets. They are prevalent on eBay, Amazon and a host of other sites and locatable through Google and other search engines. Their advertising, similarly, is no longer limited to store front banners and printed Yellow Pages books and misleading advertisements are not limited to those media. Balancing long existing legal requirements with easier, faster, more far-reaching media requires a careful look at how the media work and how consumers react -- factors such as buying and accurately identifying sponsored links on search engines, truthful explanation and the ease of use of the "Back" button on the destination, and the impact of hidden code, metadata and search terms will all need to be evaluated.
V. Copyright Covers The Means of Expression
As marketing and sales efforts develop, other ancillary materials come into existence. Advertisements, photographs, catalog sheets, specifications and a variety of promotional items can all be protected to some degree. Often copyright comes into play and is useful depending on the degree of originality and, frankly, the laziness of the competition. Most important for copyright purposes is to be sure outside contractors agree in writing that you own the copyright by assignment or sometimes a work for hire.
Registration of a copyright has valuable practical advantages. Timely registration can entitle you to recover statutory damages and attorney's fees. Failure to timely register means you can still sue, but your recovery may be less.
Copyright registration has some unique nuances dealing with modern media. Works that are entirely digital -- no paper version -- can typically be registered entirely digitally. Dynamic databases may obtain registration through the following of specific steps, despite their being ever-changing. Certain unpublished photographic collections have unique registration procedures. Despite these unique examples, many works still require submission of paper deposits to the Library of Congress, although much of the registration procedure can be conducted online.
VI. Trade Secrets
Trade secrets can exist for any business that has information of value that is not generally known to its competitors. The subject matter can include, for example, manufacturing know-how, technical information, financial and pricing information and customer information. There is a good deal of flexibility in judging whether a trade secret has been improperly taken, so deciding what you have that may be a trade secret depends very much on your business, your employees and what your competitors know and how they obtained that information.
As a checklist, the following things should be considered to maximize protection, considering the nature of your information:
- identify confidential materials as such;
- confidential materials should be segregated from other information;
- limit the people who have access to confidential information;
- keep track of who obtains that information;
- have non-disclosure agreements with employees and outsiders;
- have materials returned or data effectively erased when done;
- destroy extra or outdated copies of confidential materials, keeping only secure backups;
- visitors to your facilities should sign-in, sign-out and be escorted;
- photographs inside your facilities should not be permitted;
- use password and copy protection procedures for electronic information;
- distribute confidential information on a need to know basis only;
- remind employees of confidences periodically and have exit interviews when employees are leaving to reinforce confidentiality concerns and avoid misunderstandings.
Often independent inventors need to bring in additional know-how from consultants, suppliers or even partners. Bearing in mind your developed ideas may or may not be protectable under patent, trademark or copyright law, secrecy or confidentiality may be your only effective recourse. Your voluntary disclosure to others not under a duty of secrecy or confidentiality may result in loss of rights. It is the safest legal course to have a written confidentiality agreement signed before disclosure, as discussed above under "Who Owns it?"
Of course, when you hire employees from within your industry, make sure that you do not unwittingly become part of a claim by a competitor that your new employee took something that should not have been taken. General industry knowledge is something employees can take with them.
VII. When to Call Your Lawyer
Call before things become public. Some level of continuing feedback can refine decision making. There will always be trade offs on goals, expense and timing. Be sure you advise your lawyer of not only the facts and timing, but the full range of decisions you will be making based on the legal work done. Be sure the work you ask to have done is expected to answer the questions you have in mind, not some other questions: "Can I get a patent?" is quite different from "Can my competitors sue me?
If you have been sued for infringement, certainly you should obtain a legal opinion on liability and damage exposure. This may also be appropriate where has received a serious threat of infringement or in other situations considering such things as the competitive environment in which the client does business, the nature of patents owned by others in the client's field and the economic stakes involved. There are three purposes of the formal noninfringement opinion: to provide the client with thorough analysis on which to base business decisions; to prepare a strategy for defense and to enable the defense of a charge of willful infringement.
Are you simply wishing to get peace of mind that your priority is protected while you shop your idea around to manufacturers? Do you simply need "patent pending" before a trade show or is your multi-million dollar R&D program going to revolutionize the industry for decades? Are competitors going to knock off the product immediately and cheaply or are they going to bide their time until next year's models to see if you succeed or fail? Are you investing hundreds of thousands into production of a component to be used on 90% of your finished products on which a competitor claims patent rights or is it an in-house alternative that can be changed at low cost and inconvenience? Will you be selling the product now or simply trying to avoid having someone else sell it? Will enforcing a patent in eighteen months be more important than enforcing it in eighteen years? Are you an innovator who others follow and copy? Are your competitors the ones who differentiate products to keep prices high while you stress efficiency? Is the answer "all of the above?"
The answers to all these questions will help your intellectual property lawyer give you the best and most cost-effective advice. Please call, write or e-mail if our firm may be of assistance.
David C. Brezina
Ladas & Parry LLP
224 S Michigan Ave
Chicago, Illinois 60604
Tel. (312) 427-1300
Fax. (312) 427-6663