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U.S. PATENT & TRADEMARK OFFICE ISSUES TEN MILLIONTH PATENT

On June 19, 2018, nearly 228 years after the first U.S.patent was issued to Samuel Hopkins for a process of making potash, U.S. Patent No. 10,0000 was granted to Raytheon Company for Coherent LADAR Using Intra-Peel Quadrature Detection. I wonder if the Founding Fathers, including President George Washington who signed the first patent, ever thought we would reach this milestone.

In order to “promote the progress of science and useful arts”, at the Constitutional Convention in 1787 the founding fathers granted to “authors and inventors the exclusive right to their respective writings and discoveries.” From these words sprang a patent system that spurs innovation by granting temporary monopoly rights to inventors in exchange for their disclosure of their invention to the public. The inventor benefits from the right for 20 years to exclude all others from making, using, selling, offering to sell and importing their patented invention. In exchange, the public receives a detailed description of the inner workings of the invention, which often times leads to further innovations and improvements.

It has long been rumored that, in 1899, then Commissioner of Patents Charles Holland Duell said “everything that can be invented has been invented.” Mr. Duell served as the twenty-fifth Commissioner of the United States Patent Office at the turn of the last century (from 1898-1901). There is little proof that Duell actually made this statement, and a number of authors have attempted to bust this myth over the years.

A quick look at Duell’s accomplishments as Commissioner of Patents would lead one to doubt that he made such a statement. His reports suggest that the Patent Office was experiencing significant growing pains during his tenure. Issues of office overcrowding, storing of soft copies of patents and a shortage of examiners to deal with the increased flow of applications appeared in his annual reports to Congress. Apparently Duell had some success in convincing Congress to fund the hiring of additional examiners when the wait time for a newly filed application to be examined was reduced to six weeks (according to current USPTO statistics, the wait time for a first office action is now 15.5 months!). The Division of Classification was also organized under Duell’s tenure to deal with a growing diversity of inventions.

A look at the state of industry and technology at the dawn of the 20th Century is further proof that no one in their right mind would have made such a statement at that time. By the end of the 19th century, the principles of generating electricity had been solved and production of electricity on a large scale was just ramping up. In 1899, German chemist Felix Hoffmann patented aspirin, and Bayer registered its name as a trademark. The petroleum industry was mounting a comeback as the trust creating the behemoth Standard Oil Company was formed in 1899. On August 5, 1899, Henry Ford resigned from the Edison Corporation and founded the Detroit Automobile Company. The founder of the Edison Corporation, Thomas Alva Edison was busy working on a number of inventions for which he was ultimately awarded 1,093 U.S. patents, including US Patent No. 425,761 which issued in 1900 for the Incandescent Lamp. Also in 1899, after Wilbur Wright had written a letter of request to the Smithsonian Institution for information about flight experiments, the Wright Brothers designed their first aircraft. In 1900, a 21 year old by the name of Albert Einstein became an assistant patent examiner at the Federal Office for Intellectual Property after graduating from the Eidgenössische Technische Hochschulethe in Zurich.

Without a doubt, the state of inventions and technology expanded at a meteoric rate in the first quarter of the 20th Century. At the end of 1899, a total of 640,166 patents had been issued in the then 109 year existence of the Patent Office. By the end of 1925 and additional 927,873 U.S. Patents had been issued. Patent No. 5,000,000 issued a mere 27 years ago when a then 23 year old by the name of Rick Martin was a patent examiner at the U.S. Patent & Trademark Office. While impressive, that rate of growth has continued to climb. At present, over 300,000 U.S. Patents are issued every year!

From this exponential growth, it is clear that the patent system has been instrumental in driving innovation. To celebrate this milestone, the USPTO unveiled a new patent cover design beginning with the 10 millionth patent and has prepared a multimedia presentation on the history of the US patent system. If history is any indication, we are nowhere near the point where “everything that can be invented has been invented.” In fact, at the current rate of growth, many of you reading this article will likely live to see the issuance of US Patent No. 20,000,000.

Do you have an idea for the next Process of Making Potash or Coherent LADAR? If so, contact us to discuss how we can help you protect these valuable assets!

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Love and Litigation – Swarovski accused of Copyright Infringement of “Two In One Heart” Pendant Design

In December 2017, Galatea Jewelry filed suit against Swarovski in a California Federal Court alleging infringement of its copyrighted jewelry design entitled TWO IN ONE HEART. The TWO IN ONE HEART design was created in 2009 by Galatea principal Chi Huynh to “capture his vision of love as a union of two individuals, at once both separate and together, with an optical illusion of a single heart comprised of two overlapping hearts formed from the same continuous loop of metal.” Galatea claims that it began selling its TWO OF ONE HEART design in 2010, and that beginning in around January 2016, Swarovski began selling its infringing design. The two designs are depicted below:

Galatea

Swarovski
   

While the Swarovski design is not identical to the copyrighted Galatea design, Galatea alleges that Swarovski merely (1) horizontally flipped the Galatea design shown above left; (2) removed the existing diamonds; (3) covered a larger portion of the design with crystals; and (4) tapered the points and rounded the edges as follows:

 

In general, copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner. Of primary concern where copyrights are concerned, is whether or not there was “copying” of the work. In theory, if two people create the exact same work completely independent from one another, there can be no copyright infringement. Copying can be proven by direct evidence (an admission, etc.) or circumstantial evidence.  Circumstantial evidence of copying requires a showing of “substantial similarity”: (1) access by the alleged infringer to the copyrighted work and (2) similarity of the alleged infringing work to the original copyrighted work. While Galatea does not claim that it had any direct dealings with Swarovski, it does claim that Swarovski had access to the the TWO IN ONE HEART design through Galatea’s catalog, retail jeweler network and website as well as through various trade shows.

Assuming copying can be proven, a plaintiff must next demonstrate that it was the copyrightable elements of their design that were copied. This requires removing the ideas, scenes-a-faire (commonplace themes), facts, and public domain materials from the alleged infringing work. In the affirmative defenses raised by Swarovski in its answer filed in January 2018, the defense of Non-Copyrightable Material is asserted. Presumably, Swarovski is relying upon the scenes-a-faire doctrine, under which the courts will not protect commonplace elements of a work. Sequences of events which necessarily flow from a common theme or commonplace ideas where the elements of the work are indispensable or are standard in the treatment of a certain idea are considered to be scenes-a-faire and are not protectable under copyright law. For example, a court has held that a motion picture about the South Bronx would need to feature drunks, prostitutes, vermin, and derelict cars to be perceived as realistic, and therefore a later film that duplicated these features of an earlier film would not infringe. Scenes-a-faire are still entitled some level of protection, although it is relatively thin. Where scenes-a-faire are concerned, a plaintiff must prove that the infringing design is “virtually identical” to the copyrighted design.

So how does a jewelry designer or artist protect himself or herself against infringers? The first step is to identify what intellectual property protections are available. Jewelry designs, for the most part, are capable of being protected by copyright. Copyright protection attaches upon creation of the work. The designer should clearly mark each piece of jewelry with the appropriate copyright notice to place potential infringers on notice of his/her claim to protection under copyright laws.

In addition, design patent protection may be available for some jewelry designs. Design patents protect the ornamental features and overall design of an invention. Unlike copyrights, infringement of a design patent may be found in the absence of any proof of copying, so long as an ordinary observer who is familiar with the prior art would conclude that the allegedly infringing article is “substantially similar” to the patented design.

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. While they normally would not be used to protect the jewelry design itself, trademarks can be used to distinguish the name of the design, or line of designs from others. For example, Galatea use the trademark Two of One Heart™ to identify its line of jewelry related to the copyright registration.

Once the intellectual property has been properly identified, steps must be taken to protect it. Under U.S. Patent Law, a design patent application must be filed within one year of the first public sale, use or disclosure of the invention or the inventor forfeits the ability to secure patent protection. Trademarks may be protected under common law without the need for a federal registration. However, there are several benefits to securing a federal trademark registration, including nationwide protection and incontestability of the mark after a certain period of time. Lastly, as discussed above, copyright protection begins upon creation of the work, but registration provides the owner with a number of additional benefits, including the right to sue alleged infringers in Federal Court.

Lastly, after protections are secured, the designer must enforce his/her rights. While there is not necessarily a duty to actively seek out potential infringers, a copyright or patent owner who turns a blind eye to infringing activity is in danger of having his or her intellectual property rights diminished or extinguished.

A jewelry designer should seek the advice of a qualified intellectual property attorney to guide him/her through the process of identifying, protecting and enforcing his/her rights. While it may not seem too difficult to do it yourself, simple errors in that process can undermine protection. At Martin IP Law Group, we take the time to work with designers, artists and inventors to build the best plan to protect their valuable property. Contact us today to see how we can help you.

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A LOOK BACK AT 2017 AND A LOOK FORWARD TO 2018 IN THE WORLD OF INTELLECTUAL PROPERTY

As we say goodbye to 2017 and ring in 2018, we thought it would be a good idea to take a look back on some of the biggest game changing decisions from last year in intellectual property and look forward to how they might affect you and the world in 2018. While there were many to choose from, we selected three – a patent case, a trademark case, and a copyright case.

PATENTS

Since the passage of the America Invents Act (AIA) in 2012, there has existed a faster and cheaper alternative to the federal court system for attacking the validity of an issued U.S. Patent. An inter partes review is a trial proceeding conducted at the USPTO’s Patent Trial and Appeal Board to review the patentability of one or more claims in an issued patent under certain limited circumstances. A third party instituting an inter partes review must show that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within one year (much faster than the typical case in federal court).

The constitutionality of the inter partes review is under attack in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, which was argued before the U.S. Supreme Court in November 2017. The sole issue now being considered by the Supreme Court is whether inter partes review violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. A few years back (120 to be exact), in McCormick Harvesting Machine v. Aultman, the U.S. Supreme Court addressed this issue under similar circumstances, holding that “[t]he only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent.” Stay tuned to see if this “ancient” interpretation of the Constitution holds up in 2018.

TRADEMARKS

In Our September 2017 Blog and Newsletter we reported to you on the death of disparagement in the world of trademarks. In Matal v. Tam, Supreme Court ruled that the United States Patent & Trademark Office (PTO) could not refuse registration of the name “The Slants” to an Asian-American dance rock band from Portland, Oregon on the grounds that the phrase constitutes a slur and is offensive to Asian-Americans. In doing so, the Supreme Court ruled that the trademark law barring disparaging terms infringes on free speech rights, and, as such is unconstitutional.

The issue was raised again last month in In re Brunetti, a decision by the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit held that the “immoral” or “scandalous” marks provision of the Lanham Act is also facially invalid under the First Amendment. Brunetti
is the owner and founder of FUCT – a clothing brand that has been referred to as one of the pioneering brands of modern streetwear, often incorporating various elements and icons of pop culture alongside anti-government and anti-religious campaigns into their designs. It is worth noting that, in its opinion, the Federal Circuit concluded that strict scrutiny (high burden of proof), rather than intermediate scrutiny (intermediate burden of scrutiny as the name implies) is the applicable standard in assessing the issue because the law “regulates the expressive components of speech, not the commercial components of speech”. Even if the government concludes that the “immoral” or “scandalous” provision cannot be saved in light of Tam, there may be good reason to request review by the entire panel of the Federal Circuit or the U.S. Supreme Court on the proper level of scrutiny to be applied, particularly since federal trademarks are. by there very nature, “commercial”. Stay tuned!

COPYRIGHTS
Section 411 of the Copyright Act has long provided that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made”. At present, there exists a split between the various Circuit Courts of the United States as to just exactly when such a registration or preregistration “has been made”. In the Fifth Circuit (Texas, Louisiana, Mississippi) and Ninth Circuit (California, Arizona, Nevada, Oregon, Washington, Idaho, Montana) this is considered to have occurred when the copyright holder delivers the required application, deposit and fee to the Copyright Office. In contrast, the Tenth Circuit (Colorado, Utah, Wyoming, Kansas, Oklahoma, New Mexico) and Eleventh Circuit (Alabama, Georgia, Florida) require that the Copyright Office “act” on the application before registration or preregistration is considered to have been made. To complicate things further, our own Seventh Circuit (Indiana, Illinois, Wisconsin) has issued conflicting opinions on the issue.

With any luck, the U.S. Supreme Court will resolve this difference sometime in 2018. The loser of the 2017 decision of the Eleventh Circuit Court of Appeal in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC is requesting the U.S. Supreme Court review the case and resolve the split between the circuits once and for all. At the present time, the U.S. Supreme Court has not yet determined whether it will hear the case, and has asked the U.S. Solicitor General to weigh in with his views on the issue. Hopefully this is a sign that the Supreme Court is considering hearing the case, particularly for those of us situated in the Seventh Circuit where there is no clear answer to this question.

Do you have issues involving patents, trademarks, copyrights, or trade secrets, or want to know more about protecting your valuable intellectual property? If so, contact us to discuss how we can help you protect these valuable assets and make 2018 your most successful and profitable year ever. Happy New Year!

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PITCH PERFECT – ARE YOU FORFEITING PATENT PROTECTION WHEN YOU PITCH YOUR IDEA TO POTENTIAL INVESTORS?

Since the debut of Shark Tank in 2009, a number of similar contests and competitions involving entrepreneurs publicly “pitching” their idea or invention to a group of people have arisen across the country. The general premise is that a select number of entrepreneurs have a limited amount of time (say 3 minutes) to pitch their idea to those in attendance. At the end of the evening a panel, or in some cases all those in attendance, vote for their favorite and awards are given for the best pitches. In some cases, seed money is awarded to the winning entrepreneurs to help move their project forward.

For the entrepreneur, making such a public pitch before filing an application for patent protection is potentially devastating. Securing patent protection for an invention provides a huge competitive advantage to a start-up – the ability to exclude all others from making, using, importing, selling or offering to sell your patented invention for up to 20 years. In many cases, without proper patent protection, the barriers to entering the market are so low that good ideas can be legally copied by those with market influence leaving the entrepreneur/inventor empty handed. The best way to avoid such a devastating loss – file at least a provisional patent application that provides “full disclosure” of your invention prior to making your pitch.

Prior to the America Invents Act (AIA), which took effect on March 13, 2013, inventors had a one-year grace period after a public disclosure to file their application for patent in the United States before that disclosure would be considered to be prior art barring issuance of a patent. The biggest change in the AIA was going from a “first to invent” system to a “first to file” system. Accordingly, if two patent applications are filed after March 13, 2013 claiming the same invention, the USPTO does not consider who was the first to “invent”, but rather who won the race to the Patent Office by filing first. An inventor who publicly pitches an idea before filing for patent protection runs the risk that someone in the audience will take that idea, modify or expand on it, and file for patent protection first, effectively precluding the pitching inventor from securing patent protection.

Another potential problem that may arise when an inventor pitches before filing is the subsequent re-disclosure of the invention by a third party. Consider the following common scenario – Inventor discloses her idea at a Pitch Competition on December 22, 2016. A third party who was in attendance presents his “improvement” to the original pitch to potential investors on July 10, 2017. Inventor files her provisional application on December 21, 2017. One would think that the one-year grace period clearly applies under these circumstances. However, the answer, as is often the case in the law, is not so clear cut.

Under the AIA, the inventor’s ability to overcome the July 10, 2017 third party prior art is significantly limited. First, in order to avoid the third party prior art, the inventor must first prove that the third party did indeed obtain the information form the inventor. If third party was in attendance at the December 22, 2016 presentation, proof of that may not be too difficult. However, as is often the case, the third party may have received the information indirectly such as from another person who was in attendance. As the link to the original presentation becomes more distant, it becomes more difficult to prove the third party’s disclosure was obtained from the inventor. If such a situation arises, affidavits must be prepared and filed with the USPTO during the prosecution of the patent application, adding significant time and cost to the process of obtaining a patent.

All of this can be avoided by simply filing an “appropriate” provisional application before the pitch is made. For the application to be “appropriate”, it must include a written description that enables a person of ordinary skill in the art to make and use the invention. Thus, while a provisional application can be a useful tool for establishing an early filing date, simply filing academic papers, white papers, inventor notes or anything else that may be lying around does not necessarily provide protection. Therefore, when filing a provisional application, it is a good idea to seek the assistance of a registered patent attorney or agent who is experienced and familiar with the written description requirement of the USPTO.

To further complicate the one-year grace period, it can often times be difficult to establish just exactly when the grace period begins. Clearly, pitching your invention at a pitch completion attended by the public would trigger the start of the grace period. But looking deeper, was there some other activity that you engaged in earlier that may have triggered an earlier start to the grace period? Has there been another earlier “public” disclosure of the invention or an “offer to sell” the invention? There are a variety of risks associated with reliance on the one-year grace period that make it easy for an inventor to misjudge the actual beginning and end dates of the grace period.

Lastly, if you have global aspirations for your invention (which you should), most other countries have no such grace period, and such prior public disclosures are considered to be an “absolute bar” to obtaining patent protection. Australia and Canada operate under a 12-month grace period similar to the United States. Japan, Europe and the UK operate under a 6-month grace period, but under very limited circumstances. The World Intellectual Property Organization (WIPO) maintains a  for a number of countries throughout the world. The filing of an appropriate US provisional application prior to any public disclosure as discussed above effectively gives a one-year grace period from the date of filing to the inventor for purposes of pursuing foreign patents. A knowledgeable patent attorney will be able to devise a filing strategy to best fit the needs of any inventor.

Are you about to pitch your idea to potential investors and/or the public in a pitch competition and concerned about protecting your patent rights? If so, contact us to see how we can help BEFORE you pitch and potentially compromise your patent rights.

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Final Score on Issue of Trademark Disparagement: REDSKINS 8 USPTO 0

The 98th season of the National Football League (NFL) kicked off earlier this month with the Kansas City Chiefs defeating the defending Super Bowl LI champion New England Patriots 42–27. But before the season was even underway, the Washington Redskins scored a victory that may be more controversial than Deflategate, and is arguably more valuable to the Redskins franchise than the Patriots’ five Lombardi Trophies.

Earlier this Summer, in Matal v. Tam, a decision totally unrelated to the sport of football, the United States Supreme Court ruled that the United States Patent & Trademark Office (PTO) could not refuse registration of the name “The Slants” to an Asian-American dance rock band from Portland, Oregon on the grounds that the phrase constitutes a slur and is offensive to Asian-Americans. In doing so, the Supreme Court ruled that the trademark law barring disparaging terms infringes on free speech rights, and, as such is unconstitutional.

Curiously, as was raised by the Redskins in an amicus brief filed in the Tam case, the PTO previously registered marks such as WHITE TRASH COWBOYS and OFF-WHITE TRASH for two all-white rock bands, and N.W.A. for an all-African American rap group, as well as a number of other marks that could be considered by various groups to be disparaging. In the majority opinion, Justice Samuel Alito found that trademarks constitute private speech—not government speech—and federal registration of trademarks does not convert such marks into government speech. Alito went on to conclude that, because trademarks are private speech, the government cannot choose which speech it finds offensive and which it does not find offensive without running afoul of the First Amendment.

Prior to this unanimous decision of the Supreme Court, the so called disparagement clause of the Lanham Act had authorized the PTO to refuse registration to, or even cancel a trademark if it disparages a substantial percentage of a distinct group of people, be it a racial, ethnic, religious or political group. In 2013, five Native Americans sought to cancel six (6) federal trademark registrations issued to the Washington Redskins between 1967 and 1990 on the ground that the registrations were obtained contrary to the disparagement clause of the Lanham Act which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute. In a June 2014 decision, the Trademark Trial and Appeal Board (TTAB) sided with the petitioners and canceled the marks because “they were disparaging to Native Americans at the respective times they were registered”. The Redskins organization has been pursuing appeals of that decision ever since, so the ruling has never gone into effect. In light of the Tam decision, it is expected that the Redskins will seek further review of the cancellation of their marks by the TTAB, and that those efforts will be successful.

While preservation of the federal trademarks is not required for the Redskins to continue use of the Redskins name, logos and marks, those registrations confer some significant benefits and advantages to the owner which would not otherwise be available without the registrations. Chief among those benefits is the exclusive right to use the marks in connection with the specified goods and services throughout the entire United States. Because the marks have been continuously in use and registered for more than five (5) years, they are considered to be “incontestible”, which, under normal circumstances, renders the marks immune from being challenged. Federal registration of a trademark also comes with the ability to utilize the services of the U.S. Customs and Border Protection Services to prevent infringing merchandise from entering the United States. Federal law also allows owners of federally registered marks to seek, and in some circumstances recover treble (3X) damages against infringers in certain circumstances.

The benefits conferred upon the owner of a federal trademark registration far exceed the time, money and effort invested in acquiring those rights. Most small businesses spend thousands of dollars or more each year on branding tasks such as logo creation, signage, social media, advertising and search engine optimization (SEO). If that branding strategy is not properly coordinated with a strategy to adequately protect the associated intellectual property rights, you may be throwing money away.  At Martin IP Law Group, our approach is to work with clients to identify and protect their valuable intellectual property rights, including federal trademarks.  If your business has an image and identity to protect (HINT: It does), contact us today to discuss how we can help you identify and protect these valuable assets in a way that will make your business stand out from the competition.

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