Top Ten List of Patent, Trademark and Copyright Folklore.

Dave Brezina

There is a lot of misinformation communicated by people who think they know all about the ins and outs of this complex area of the law. This is my "Top Ten List" of wrong assumptions. This is an unscientific list, not a statistical ranking and reflects personal opinion not fact. The list is to get you thinking, not to give you answers.

10. I have hooked up with an invention developer who will help me develop and market my invention.

Most invention brokers are charlatans. There are a few organizations that will help you develop your inventions, typically either sponsored by a charitable foundation, an educational institution or a government body. The legitimate groups can range from university design, engineering and marketing departments, some lawyers' groups, through clubs where inventors simply get together to share experiences and seek advice.

Unfortunately, most commercial 'invention brokers' are Charlatans. They are in the business of getting your money, not making money for you. The typical invention broker scenario has four steps: (1) the broker advertises for new inventions and signs a 'confidentiality' agreement with you in order to preliminarily evaluate your invention, often for 'free' or a small fee (2) invariably, their senior consultants are 'interested' and want to do a complete market analysis, costing perhaps $500 to $700; (3) the market analysis comes in a fancy binder, with general information on inventions, industry statistics and projections, usually one nice line drawing of your product, and often some prior art patents.

In reality, the invention information is all publicly available, probably for free or at low cost from a library, bookstore, government agency like the Patent & Trademark Office, Bar association, the Internet or even a giveaway from patent lawyers. The industry information is also statistics that are publicly available. Often it is of dubious relevance, along the lines of: "Your product can be made of plastic. The du Pont company has made billions of dollars in plastic since 1960 as shown on this graph. You can make billions, too." The patent 'search' is usually very cursory, sometimes not even including copies, and sometimes opining you can get a design patent but citing utility patents.

There are variations on the scams. One recent iteration dispenses with the preliminaries and asks for tens of thousands of dollars from the beginning, while others work things up over a long time with "just a few thousand dollars more" adding up to tens of thousands over several years.

9. I don't want to send in a patent application because then someone will steal my invention.

We can't say it will never happen, but patent applications are kept secret while they are pending, at least for eighteen months. We are unaware of any instance where a Patent Office employee has 'stolen' an invention. It would violate their rules, and if anyone filed their own application for something they didn't invent, they could only do so by making a false oath, which is a crime. Unless you file papers to 'opt out' and promise you will not file for a patent anywhere else in the world, the Patent Office will publish US applications after 18 months. So, even here, you have 18 months to get your product on the market. Foreign applications have long been published in 18 months. General attorneys, patent attorneys and patent agents have rules that require them to preserve client confidences.

8. A business method patent will let me control the entire industry.

Business method patents are a new theory of patenting, but must still meet all the standards of novelty, utility and non-obviousness. While up until several years ago, the rule was a negative one -- you could not patent a business method -- now it is merely permissive. While there have been a flurry of patent applications filed, many of which relate to computer programs, it it still necessary to have an enabling disclosure and claims that will pass muster.

7. It's not worth patenting or copyrighting because someone only has to change 10% to get around it.

There is no percentage rule, whether 10% or 90%, or anywhere in between. The scope of protection of a patent is defined by its claims. Very general claims, with few limitations may cover many variations on the prototype product. Different phraseology also has an effect on what equivalent elements may also be covered. In a crowded field, it may be that a "nuts and bolts" claim, covering only very close copies, may be the only thing allowed. But you also don't know how close an infringer may come.

For copyright infringement, how much taking is permitted depends on how important it was in the original. A couple of Supreme Court cases illustrate this. A phone book is technically copyrightable as a whole, but the data (names, addresses and numbers) is not itself protectable. If one wanted to republish certain data, it may well be permitted to take more than 10% of the data. On the other hand, if the unpublished historical memoirs of a former US President are taken, and only a small percent published, but those words provide unique insight into a key decision, the publishing may be impermissible, even though most of the information is public facts.

6. I know its patentable because there is nothing like it on the market.

Novelty and non-obviousness of an invention are decided based on the scope and content of the prior art, including not just what is 'on the market' now, but any publication in the past, including patents that issued and were never marketed and products that have been sold, but discontinued. Obvious combinations of these are not patentable.

5. This is in the public domain because there is no copyright notice.

This hasn't been the rule for more than twenty years. If a work was published before 1978 without a copyright notice, it is probably in the public domain. If a work has a copyright notice more than 75 - 100 years ago (depending on some other factors) it is probably in the public domain. There may be exceptions and ways to extend the term of certain works, so you need to check the specific law and facts. We have had one client get bad legal advice from a billboard company, and another who got bad legal advice from a printshop.

4. Once I get my patent I'll know I am in the clear because the government has reviewed my invention on found that it doesn't infringe someone else's patent.

No. Absolutely not. Whether you get a patent -- the right to stop someone else -- does not affect whether someone else has a patent with claims that give them the right to stop you.

3. I got a poor man's patent by mailing my idea to myself.

There is no provision in the patent law for the grant of any rights or even any evidentiary presumption that results from mailing something to oneself. If we had to guess at the source of this myth, it would probably be either: (1) the postmark provides an objective date of conception of the invention in the case of a patent interference or (2) under the 1909 Copyright Act (which was changed more that twenty years ago) Federal copyright jurisdiction for works not commercially 'published' was sometimes attempted to be invoked based on the use of the mails. In a patent interference, a rare proceeding to decide who invented first, mailing to oneself is not given any greater formal recognition than testimony as to the date. It would be better to have the disclosure witnessed by two uninterested parties who sign affidavits that they received and understood the disclosure. The PTO also has a Disclosure Document program to receive disclosure and document the date of receipt. More advantageous would be a Provisional application, and best would be a complete, nonprovisional patent application.

2. People should be free to use whatever is in Cyberspace in whatever manner they want -- nobody should "own" domain names, code or music.

The Internet may be a global marketplace, but just as its physical counterpart the flea market or swap meet, it can be a source for good values, ordinary commercial transactions or a place for unscrupulous merchants to sell counterfeit goods. The Internet is also a medium for the international exchange of ideas. As such it is subject to free speech protections, but as in other media, free speech is not absolute. Communications planning crimes, pornography and publications which violate copyright are all traditionally controlled, and the law on the Internet is not substantially different. Just as using 'snail mail' in furtherance of racketeering subjects the participant to RICO jurisdiction, e-mail cannot be expected to be insulated. Similarly, it should not matter whether a bootleg musical recording was made on tape, burned in a CD or copied digitally on the Internet, copyright infringement would be present, while where applicable, so should the 'fair use' defense. Interactive web sites selling products subject the seller to court jurisdiction by the same logic as a direct mail or catalog retailer may be subject to jurisdiction. Cybersquatting, the 'staking out' of a company's trademark by someone with no discernable reason to need to use the terminology is really no different than international trademark piracy -- where a profiteer in a trademark registration country files for a mark just before a famous international company gets its bureaucracy up to speed and files its own paperwork. Cybersquatting is simply a cheaper, faster and international version of an international problem addressed by international treaties.

Open code is a great idea. So is freeware. I use some of these programs myself. One I like is better than the "pay" equivalent for many things. But it is the author who decides that it should be open code or freeware, not simply a user who doesn't want to pay. People have been taking a free ride on the labor of authors and inventors for centuries (the first English patent law was in 1623) it is simply easier to steal software than it was to set type in the seventeenth century.

1. I know my invention will make money, I would pay $25 for one and have been looking for it for a long time.

This is not really a function of patent law or any other branch of intellectual property law. Whether you call it economics or call it business the key is that someone has to be able to make the product and get it to the end user at a price the end user will pay and will also make a profit. If you would pay $25 for one, but it costs you $12 to make, and you have to sell wholesale to a distributor, who has to mark-up to stay in business, and sell to a retailer who has to mark-up to stay in business, you may not be able to sell the product for $25 retail and have the profit needed to get the product on someone's shelf for the consumer to see. If you sell direct, all the promotional and distributional burden, as well as the capital needed for production, storage, shipping, returns & customer service will all be costs you have to bear, over and above the simple cost of the merchandise. Do a thorough business plan, no matter what your preference for manufacturing, distribution or licensing. Whether the business plan justifies your own investment, or someone else's a rigorous analysis will help you decide