Create, Consult, Control
News & commentary on intellectual property issues.
May152009 | Steve O'Donnell
Advantages of a local patent attorney
Should you choose a local patent attorney to prosecute your application? For the most part, it doesn't make a difference where your patent attorney lives, but many people do feel more comfortable working with someone near them.
Unlike many other legal practices, the location of your patent attorney is not critical. Patent law is a federal creature and not state-specific. Your patent attorney will not need to go to a local court to prosecute a patent. I know patent attorneys that have never met a client in person. Many more have at least some clients that they have never met in person. Similarly, your patent attorney doesn't even need to be located or licensed in your state. Your patent attorney only needs an internet connection; many applications are prosecuted without even a phone call between the client and the attorney.
On the other hand, there are reasons to work with a local patent attorney. Many people feel more comfortable working with someone they can look in the eye, even if they never actually do. Also, there is something to be said for keeping your local economy strong.
Whether or not you choose to work with a local patent attorney is up to you. There are advantages to hiring a local attorney, but they aren't critical.
May132009 | Steve O'Donnell
Are square appliances patentable?
Would you like a square toaster that was the same height as your square tv? Sure, we all would. That is the American Dream after all. James Dyson (the vacuum cleaner designer) wants to patent that. What is maybe more interesting to note is that even if the patent doesn't issue, the application itself gives some competitive advantage to the applicant.
US Patent application 20090095729, “Domestic Equipment Grouping” was filed in September of 2008 and recently published 18 months after filing as required by the American Inventors Protection Act of 1999 (Public Law 106-113; Manual of Patent Examination Procedure § 1120). Since the patent is still pending, we can't be sure that it will issue in the form that we can see now, or really, if it will issue at all. That question isn't so important for the purposes of this post. Rather, I want to point out again how ideas that most people wouldn't think of as inventions may still be patentable. For a related post, see this.
The abstract of the patent describes a group of domestic appliances that all have roughly the same dimensions and are generally cuboid. The useful advantage to this system is that the user can put the appliances together in a way that minimizes wasted space.
Is that patentable? I don't know. We'll have to wait to see what the examiner thinks. Is it a good idea? I think it is. I can see a practical and aesthetic advantage to having appliances of substantially the same dimensions lined on the counter. It isn't a terribly complicated idea and would be extremely easy for someone else to infringe. In fact, I would bet that if it sells at all, that there will be other companies more than willing to make their own appliance blocks.
By filing an patent application, Dyson Technology has done two things that will keep competitors out of the business of appliance blocks. The first is obvious, the patent might issue and if it does they'll have a legal right to keep infringers out of the marketplace. The second is a little more subtle: a patent might issue, and competitors know that.
I realize that doesn't sound very different, but with this publication, Dyson's competitors know that there is a patent pending and what it might cover. Dyson is therefore able to manufacture and sell their appliance blocks and those that might copy the subject matter know they could be left holding the bag if a patent issues. Under 35 U.S.C. § 154, infringers can be made to pay royalties for articles sold between the publication of an application and issuance of a patent. Also, if the patent issues, any infringing stock on hand when the patent issues would likely be worthless since Dyson could prevent it from being sold. If someone is tempted to infringe, they likely won't because of the risk that the patent will issue.
I hope you see that there are really two related competitive advantages to patents, one coming from having the patent actually issue, and another coming from the threat of possible issue. More on the advantage inherent in the application itself later.
*UPDATED* My post on The value of a patent application itself is here.
May112009 | Steve O'Donnell
Creative Commons licensing
The Creative Commons licenses allow people to share their intellectual property with others while retaining certain rights to the work. It sounds good, but it can be it's own source of problems.
For the sake of argument, lets say that “Artist” downloads a number of Creative Commons (“CC”) licensed photographs and makes a collage of them. Under the Attribution clause of the licenses, Artist would need to indicate the names of the original creators. That doesn't sound too onerous, if Artist is only using a few CC works, but at some point, the inclusion of names detracts from the Artist's own work in compiling and organizing the separate works. Additionally, Artist would have to ensure that the CC license allows him to do what he wants to do. Some flavors of the license would allow Artist to make derivative works, others don't. Similarly, some flavors would allow Artist to sell prints of his collage, others don't.
If someone doesn't comply with the CC license then the license terminates and they could be subjected to a copyright infringement suit. If the original author thought this through, the copyright on the piece would be registered within three months of first making it public. In that way, if the license is violated there are statutory damages as high as $150k + costs and legal fees that are available to the original author. 17 U.S.C. § 412, 17 U.S.C. § 504.
In short, nothing is ever easy. Just because a work subject to a Creative Commons license, don't think that you can use it for whatever you want. Read the license, and if you have any questions contact an intellectual property attorney.
May082009 | Steve O'Donnell
Choosing a trademark
A business' identity is likely its most important asset. It embodies all of the business' accumulated goodwill and assures purchasers that new products are of the same high quality as other products sold by the business. Unfortunately, if you don't plan accordingly, you might not be able to protect your brand, or worse yet, lose money over a bad decision.
A common life of a brand name begins when the business owner first thinks of it. Sometimes it's clever, often it is <ahem> less clever. The owner then starts using the name on everything, often marking it with a trademark symbol, next comes a business bank account and an accountant. The accountant, maybe working with a business lawyer, maybe not, files the appropriate paperwork with the department of state to register the business. Any required licensing is obtained and there is a grand opening. After the initial rush of things that most obviously have to be done, comes the consideration of other things, like brand identity, that often get put off until too late.
One situation you don't want to face with your business is finding out that someone already has a trademark on the name you're using and that the money you've spend on logo/web design, business cards, stationary, signage and advertising would have been better spent building a nice, warm fire. If that's not bad enough, if you're using a name that someone else has registered, you might find yourself on the receiving end of an infringement lawsuit. Neither is good for a new business' bottom line and can fairly easily be avoided for a fraction of what it will cost to clean up a mess.
When I'm working with entrepreneurs on their startup companies I recommend that they select creative trademarks, I prefer to see marks that have no relation to the products or services that are being protected. The rationale for that is simple, if the mark has no obvious connection to the product then the chances of someone else already using it is slim. I also like to see marks that are nonsense. That further increases the chance of the mark being unique and it also helps with the chance of getting a good domain name as well as a few variations on the domain. Also, the more abstract a trademark is (as opposed to it being more descriptive of the goods), the stronger the trademark will be.
One of the first thing I suggest to people is that they find out if the domain they would like is available. If it is, great, register it. If it isn't, then the question is if the business will be adequately served with some strained variant of the desired URL. If “[business name]” isn't available will “[business name][state]” or “[business name]'online'” be adequate? The answer to that depends, to some extent, on what the plans are for the business and how much internet marketing the business requires.
I prefer to get the domain name first because there are a number of businesses in the business of grabbing domains and reselling them to someone that will actually use them. For that reason, type the URL you want into your browser's URL bar and DON'T use a registrar's search to find if it is available. Also, since the internet is such a pervasive marketing tool, if the proposed mark hasn't found its way into a URL, the chances of it being successfully cleared are probably pretty good.
Once the URL is purchased then comes the actual trademark search. What steps your attorney needs to do differs on whether you need a state or federal trademark as well as on other considerations. If you have no plans of doing any business across state lines, then a state search might be all you need. If you plan to offer your wares across the country, then a federal registration is more useful. The internet has enabled just about everyone to operate in national and international commerce, so federal registrations are becoming more prevalent then the were a decade or two ago.
Once the trademark search is done, and your name is “cleared,” get a trademark application on file and start using it as soon as you can. If things go well, you'll have clear ownership of your trademark all across the country and your brand's reputation will be secure.
The best way to ensure that your brand is really yours is to engage a trademark attorney as soon in your business planning as feasible.
Of course, things don't always go according to plan, and sometime. . . too often, a business will invest in branding itself and start operations without considering that they might be stepping on someone else's toes. Also, there is a possibility that a search will miss something, after all it is impossible to prove a negative. Thankfully, that doesn't necessarily mean that all is lost, but ways of working through that will have to wait for a another post on another day.
May052009 | Steve O'Donnell
I want an international patent, I think
If the first question asked by new inventors is “how much is this going to cost?” the second question is “can I get an international patent?” The answer is, well, there isn't such a thing, but we can try to get patent protection in a few countries. The question then becomes “does it make any sense to do so?”
The first thing to think about is the costs associated with multi-national patent protection. Since there isn't a single “international patent” available, you need to instead seek patent protection in each country that interests you. There are currently 141 countries that are members of the Patent Cooperation Treaty. Very generally, you'll probably spend as much obtaining a patent in each foreign country as you'll spend getting a US patent. A fair estimate is $15,000 per country, maybe more. In theory, one could get patents in each of those countries, at a cost of over $2 million.
Assuming that the additional cost doesn't dissuade you from filing applications in at least a few foreign countries, you also need to consider what countries you want? A common suite of countries would be the US, Canada, England, France, Germany, Japan, and maybe China, India and Italy. Other countries can also be an option if your business or your competitors' maintain offices there. Of course, if you're not going to do business in other countries, then you probably won't benefit at all from international protection.
Often, just pointing out that a US patent will give you the right to keep infringing good from coming into the US will satisfy concerned intellectual property owners. If you're still on the fence, consider that in addition to a US patent, that you also obtain a German patent. If you don't do business in Germany are you going to be out anything if your patent is being infringed by a German company? Would you even find out if your German patent was being infringed? If you did discover infringement, are you willing to hire a German attorney to sue?
There are certainly instances where it makes sense to get patents in other countries. For instance it probably makes sense if your company has an overseas presence or if there are plans to expand internationally. Patents in multiple countries can also increase your intangible assets without necessarily increasing R&D.
There are precautions you need to take if you think you want international patent protection and plans you should make. Your patent attorney can describe the requirements in greater detail help you decide if this makes sense for your invention.
May012009 | Steve O'Donnell
Apple seeking to patent volume controls for browser windows
A recent publication from the patent office gives some insight into what might be coming in Safari and again demonstrates Apple's aggressive patenting scheme.
In November 2007, Apple filed a patent application entitled Web Browser Audio Controls. That application claims priority to a provisional application filed the month before. The application is still pending, but it was published 18 months after filing as required by the American Inventors Protection Act of 1999 (Public Law 106-113; Manual of Patent Examination Procedure § 1120). Since the patent is still pending, we can't be sure that it will issue in the form that we can see now, or really, if it will issue a tall. That question isn't so important for the purposes of this post. Rather, I want to point out again how savvy Apple is about protecting their intellectual properties.
As I mentioned earlier, the definition of patentable invention encompasses more than what most people realize. In the case of Apple's browser volume control publication 20090106657, Apple is seeking a patent covering volume controls embedded in individual browser windows and volume preferences for individual sites. The underlying idea is to be able to set volume for each window and to save preferences. For example, you could set your browser so that new sites opened at a very low volume, but your favorite streaming audio site could always open at a high volume. Also, interestingly, the volume controls aren't necessarily wedded to Safari so the eventual implementation might be something like a multi-browser plug-in or part of the OS.
Of note, again, is that there is no code in the patent application. Actually making and using the subject matter is left to a programmer.
It is a good idea. I wish I had thought of it. If you had this idea, would you have realized what you have, that it could be patented and possibly turned into a revenue stream? What have you thought of but disregarded because you weren't sure how to build a prototype? Don't let that stand in your way.
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