INTELLECTUAL PROPERTY Archives - Page 7 of 7

COPYRIGHTS, INTELLECTUAL PROPERTY, PATENTS, TRADEMARKS

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!

ANGEL INVESTOR, ENTREPRENEUR, INTELLECTUAL PROPERTY, PATENTS, START UP

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.

ENTREPRENEUR, INTELLECTUAL PROPERTY, TRADEMARKS

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.

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

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

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

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MARTIN IP LAW GROUP, PC