"Beware the Ides of March" or "Much ado about nothing!"

"Beware the Ides of March" or "Much Ado About Nothing!"

Come March 16, 2013, the U.S. Patent Office adopts a "first ['inventor'] to file" system from its present, "first to invent" system.  Certainly, the rules will “change” after March 15, 2013 but the effect may be minimal.  In order to see how, one needs to understand the current "first to invent" rule, how it has worked over the decades, and compare it to how the new "first to file" rule will function.

Under the current "first to invent" rule, the first person(s) to create a new invention and subsequently file a patent application, is entitled to consideration for a patent.  Although an applicant is initially granted an "effective" date of invention as the date a patent application is filed, under the "first to invent" rule, an applicant can submit evidence of an earlier date of invention.  The earlier date is beneficial if the applicant needs to prove he or she invented the invention before another as well as for eliminating references from being cited against a patent application when the Patent Office is accessing a patent application for novelty and non-obviousness (e.g. requirements for patentability).

The soon to be enacted "first to file" system will eliminate an applicant from establishing an earlier date of invention.  But, will this rule change have any real impact on most patent applications?  In other words, should applicants "Beware the Ides of March" or is this "Much ado about nothing"?

Professor Dennis D. Crouch (University of Missouri School of Law and creator and author of the blog, Patently-o) in his 2010 Michigan Telecommunications and Technology Law Review, Vol. 16, No. 1, 2010 law review article, Is Novelty Obsolete? Chronicling the Irrelevance of the Invention Date in U.S. Patent Law suggests that a first to file system will have minimal effect on patent applicants.  Based on his analysis of 21,000 patent applications, very few applicants availed themselves of or were successful in establishing an earlier filing date.  For example, only 0.1 % successfully relied (exclusively) on establishing an earlier date of invention, to overcome an Examiner's rejection.

Other provisions to take effect on March 16, 2013 may also have limited impact on most U.S. inventors.  For example, starting March 16, the applicant's invention in public use or on-sale anywhere in the world will be considered prior art against a patent application, thereby possibly limiting patentability. Under current law, the public use and on-sale are limited to the U.S.  Since most U.S. inventors would have U.S. public use and/or on-sale inventions in the U.S. first (if at all), rather than somewhere else in the world, it appears on first blush that this change in the law will also have little impact on most U.S. inventors.

One provision which may have more impact on a U.S. inventor is that starting March 16, 2013, an applicant is given a limited* one year grace period to file a U.S. patent application after his or her own public disclosure* (which may include use or on-sale activities).  After the grace period expires, an applicant will be barred from filing a patent application.

Under the current law, the one year grace period for filing a patent application after a public disclosure, use or on-sale activities is not limited to only those of the inventor.  Consequently, under the existing law, an inventor could file a patent application up to one year after any public disclosure (i.e. the inventor's or a third party's).  Non-disclosure agreements and secrecy are two ways for limiting potential pitfalls from third parties' unauthorized public disclosure, which may bar patentability under the new law. 

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013

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Are the Keebler Elves the Cookie Monster?

Are the Keebler Elves the Cookie Monster?  According to Kraft Foods (parent company of Mondelēz International and Nabisco, makers of Oreos®, Chips Ahoy®, and Fig Newtons®), the Keebler elves were found with their hands in the proverbial cookie jar.  Kraft filed suit on January 16, 2013 alleging that Kellogg Co. (parent of Keebler), is infringing its "snack 'n seal" patent, U.S. Patent no. 6,918,532* covering a resealable cookie container. 

The patent covers the "crowd pleasing" feature of a cookie container with top, resealable opening verses the conventional container with crimped end opening.  In the "old school" cookie containers with crimped and twisted end, one had to painstakingly, uncrimp and untwist one end of the container, withdraw the cookie tray, remove one or more cookies and then tediously, return the tray to its original, completely, in wrapper position, and then re-twist the crimped end.  With the patented resealable opening, one effortlessly pulls back on a tab to withdraw a resealable flap from the top of the container, grabs one or more cookies from the tray inside, and gently returns the flap to its original, sealed position on top of the cookie container.

(* With full disclosure, my firm was responsible for drafting and prosecuting the patent application through the U.S. patent office.)

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013

Send email feedback- sweyer@stites.com

Kim + Kanye = Baby™

It appears that Kim Kardashian would like to follow in the footsteps of Jay-Z and Beyonce and seek a trademark registration her baby's name. Last year, the couple filed an application for registration of "BLUE IVY CARTER" for use on or in connection with a number of goods and services -- everything from fragrances to baby rattles to entertainment services in the nature of live musical perforances. The registration hasn't yet issued, since the couple hasn't actually used the trademark in commerce on or in connection with the goods and services listed in the application.

A federal trademark registration can only be obtained once a mark has actually been used in commerce. However, those applicants who have an "intent" to use a trademark in commerce in the future may file an application for registration of the trademark on an "intent to use basis". An applicant who files on an "intent to use" essentially gets to reserve the trademark in connection with the goods and services listed in the application, but must show actual use of the trademark in commerce on the goods and services listed in the application before a certificate of registration will issue. Keep in mind that a mark can't remain on reserve forever; applicants only have three years after the Notice of Allowance issues to prove use of their mark in commerce.

This raises another question. Can someone really register their baby's name? Suprisingly, yes. The Trademark Office will permit federal registration of a "personal name" such as BLUE IVY CARTER without proof of acquired distinctiveness. However, registration of a surname alone requires proof of acquired distinctiveness. It is also important to note that the name of a living person cannot be used as a mark or federally registered as a trademark without express authorization of that person (or their legal gardian). This begs the question -- will Kim sign or will Kanye? Sources say it surely won't be Kanye.

We'll be checking the PTO records intently to see whether the fashionista goes through with filing an application for registration of her baby's name. Will the owner of record be listed as Kimsaprincess, Inc. or Kim Kardashian? We'll have to wait and see.

High-Tech companies' patents dominate granting at the U.S. Patent Office

According to a New York Times article, "The 2012 Patent Rankings: IBM on Top (Again), Google and Apple Surging", I.B.M. ranked no. 1, for the 20th consecutive year with 6,478 patents being granted.  Samsung was ranked no. 2, with 5081 patents and Canon, no. 3 with 3174.  Honorable mention goes to Apple and Google which both had huge gains in the number of patents to issue in 2012 as compares with 2011, according to the Times article. 

A list of the top 50 U.S. patent assignees was compiled by IFI CLAIMS^® 2012 Top 50 US Patent Assignees.  From this list, the overwhelming majority are high-tech companies.  There are many reasons for this, including the nature of the technology and breadth or scope of high-tech inventions/patents verses other technologies.  What is clear is that high-tech companies value their patent intellectual property and are willing to invest time and money to secure patents for their innovations.

© Stephen J. Weyer, Stites & Harbison, PLLC, 2013
Send email feedback- sweyer@stites.com

Fighting for the Gold Glove

Rawlings Sporting Goods Co. Inc. has filed a trademark infringement suit against Wilson Sporting Goods Co. and Brandon Phillips, a second basement for the Cincinnati Reds claiming that the golden-colored baseball glove made for Phillips by Wilson infringes Rawlings' trademark rights. Rawlings asserts that the "golden glove" is a knockoff of Rawlings' famous Gold Glove award and is likely to result in consumer confusion. Rawlings also alleges that Wilson's glove with golden-colored webbing, stitching, and lettering constitutes unfair competition, trademark dilution and false advertising.

Rawlings owns trademark registration for "THE GOLD GLOVE AWARD", "GOLD GLOVE AWARD" and also "GOLD GLOVE". In early 2012, Rawlings filed an application for registration of "THE GOLD GLOVE CO." I think it's safe to say that Rawlings is trying to claim rights in . The real question is whether Rawlings' case is a home run. Phillips certainly doesn't think so; Phillips filed a motion to dismiss the case against him earlier this week.

One more byte at the Apple (over patent rights)

Those who are regular readers of this blog are likely aware of the ongoing battle among computer/software and mobile device giants like Apple, Inc., Samsung, Inc., Google and HTC over intellectual property rights.  As many know, in August of this year, Apple, Inc. was awarded a 1.2 billion dollar jury verdict for patent infringement by Samsung. (See NY Times article).  The jury found that Samsung infringed several of Apple's design patents and one of its utility patents.  During the trial, Apple presented evidence that it spent millions of dollars and years of research to find a design for its iPhone which was ascetically pleasing and comfortable to use and hold. 

In the wake of the $1.2 billion decision, many have questioned whether design patents (covering the appearance of a product) and utility patents (covering the functionality of a product) are hurting consumers and innovation rather than helping.

As previously noted in my post "Patenting...Real. Comfortable. Genes?", the reason we have a patent system is routing in the U.S. Constitution.

The Framers of the United States Constitution knew of the importance of technological progress.

The Congress shall have the power...

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. (U.S. Constitution, Article I, § 8, clause 8).

This provides inventors with an incentive to create new products and processes. It also gives companies and investors (e.g. venture capitalists and stockholders), incentive to invest capital looking for a return on their capital investment.

Congress has limited the duration of the monopolistic protection. In return for the protection, the inventor must disclose his or her invention to the Patent Office which, in turn, discloses the information to the general public.

The Patent Act was drafted to accomplishes two goals. First, it encourages innovation and discovery through its incentive of limited monopoly Second, the patent system promotes the disclosure of useful technology to the general public by putting it in the public domain.

Opponents of design patents argue that the purported designs are too simple and therefore should be left in the public domain.  For example, with regard to Apple's design patents covering the curve design for its iDevices, opponents argue that these are simple design choices which lack any (or sufficient) creativity and are certainly not worthy of exclusivity which a patent provides.  Opponents of utility patents for mobile devices and software running on such devices make similar arguments saying that the software being patented lacks sufficient inventiveness to be worthy of patent protection.  Further, some opponents believe that patenting software and mobile devices stifle innovation of other software engineers and device manufacturers who fear lawsuits for patent infringement from the patent owner if they produce their own software or device.

Proponents of design and utility patents for software and mobile devices assert that the software and device companies need patent protection for their products.  These companies would argue, as Apple did, that they spend millions of dollars to research, develop, test, refine, re-design, and market their new products.  Absent patent protection, anyone could use the million dollar discoveries without having to invest a single dime. Further proponents of design and utility patents for software and mobile devices say that no one would invest in companies if anyone could use their discoveries for free.  As a result, high tech companies would cease to develop new and innovative software and devices.   Therefore, without the financial incentive of patent protection, new and innovated software and mobile devices will never be made.  Accordingly, proponents argue that software and mobile device patents accomplish the two goals of the Patent act, offering both economic development and providing a pathway for new software and products.

© Stephen J. Weyer, Stites & Harbison, PLLC, 2012
Send email feedback- sweyer@stites.com

Patenting... Real. Comfortable. Genes?

The U.S. Supreme Court has agreed to hear the appeal in ASSOC. FOR MOLECULAR PATHOLOGY V. MYRIAD GENETICS, INC. to decide whether isolated human genes are patentable under the U.S. Patent Act (35 U.S.C. § 1 et seq.)  Many have strong opinions either for or against gene patents.  In order to have an intelligent, informed debate, it is important to consider why we have a patent system at all.  

The Framers of the United States Constitution knew of the importance of technological progress.

The Congress shall have the power...

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. (U.S. Constitution, Article I, § 8, clause 8).

This provides inventors with an incentive to create new products and processes.  It also gives companies and investors (e.g. venture capitalists and stockholders), incentive to invest capital looking for a return on their capital investment.

Congress has limited the duration of the monopolistic protection.  In return for the protection, the inventor must disclose his or her invention to the Patent Office which, in turn, discloses the information to the general public.

The Patent Act was drafted to accomplishes two goals.   First, it encourages innovation and discovery through its incentive of limited monopoly  Second, the patent system promotes the disclosure of useful technology to the general public by putting it in the public domain.

Opponents of gene patents say, "Keep your hands off my genes."  They argue that human genes are naturally occurring, not the creation of human hands, and thus, not the subject of patents.  Therefore, opponents say that genes are in the public domain for all to use.  Further, some opponents believe that patenting genes stifle innovation of other researchers who fear lawsuits for patent infringement from the patent owner if they conduct their own research pertaining to the patented gene.  In addition, some proponents believe that for public policy reasons and pubic health concerns, physicians should not be prevented from access to the best diagnostics and therapeutic treatments which may include the gene discoveries of another.

Proponents of gene patents assert that biotech and pharmaceutical companies need patent protection for isolated genes.  These companies spend millions (or even billions) of dollars to isolate genes and to discover the role that these genes play in disease or in the therapeutic treatment of disease.  Absent patent protection, anyone could use the million/billion dollar discovery without having to invest a single dime.  Further proponents of patenting genes say that no one would invest in companies if anyone could use their discoveries for free.  As a result, biotech companies would cease to develop new diagnostics and therapeutic treatments predicated on isolated gene sequences.  Therefore, without the financial incentive of patent protection, new genetic diagnostics and therapeutic treatments will never be made.  Without patent protection for gene discoveries, entire industries will be lost and/or negatively impacted.  Accordingly, proponents argue that patenting genes accomplishes the two goals of the Patent act, offering both economic development and providing a pathway for new discoveries of disease diagnostics and therapeutic treatments. 

 

© Stephen J. Weyer, Stites & Harbison, PLLC, 2012
Send email feedback- sweyer@stites.com