Create, Consult, Control
News & commentary on intellectual property issues.
Jul282009 | Steve O'Donnell
Open Source Chili
When I'm not managing my law office, writing or playing Wii Sports, I like to cook. As a patent attorney and cook, one of the most common questions I get is “can I copyright/trademark/patent my recipes?” The answer is a qualified “no.” but you can protect them as trade secrets.
Copyright protects artistic expression, so it can protect a story or narrative attached to a recipe, but won't give any protection to the recipe itself. There is an argument that cooking is an art so such artistic expression should be copyrighted, but that won't work. A particular dish may be art, delicious art, but its recipe is at least partially useful in that it instructs a reader how to make the dish. In cases where the artistic elements of a piece cannot be separated from the useful elements then the usefulness trumps and copyright will not protect it. Useful items can be protected by patents, but probably not recipes.
Unlike copyrights, patents undergo a ridged examination proceeding and must satisfy a number of requirements. For recipes, the big issues are probably going to be novelty and obviousness. That muffin recipe might be great, it might be the best muffin I've ever tasted, but based on all muffin recipes to have ever existed isn't there some prior art that teaches the same thing? Or maybe two or three other recipes that teach certain aspects of the recipe? It seems to be a very difficult requirement for a recipe to meet. Another requirement that could be a problem is utility, patents will only issue for useful goods. Although the level of usefulness needed is very low, I'm not sure that “delicious” would cover it. On the other hand, some recipes are patentable, such as this one for savory baking chips and this one for treating chest pain with lime juice. Granted, the lime juice patent is not much of a recipe, but it's one of my favorite patents and I wanted to use it. It has expired because the patentee didn't pay a maintenance fee, so if you feel a touch of angina coming on and want to try sucking a lime, go ahead. Let me know how that works out for you.
Trademarks also don't fit the bill. Trademarks identify the source of some goods, even if you printed an entire recipe on a t-shirt and tried called that your trademark, that wouldn't stop someone from taking your recipe and using it. It might stop them from being able to sell their own t-shirts marked with the same recipe, but why anyone would want to do that is beyond me.
What one is left with is trade secrets. As the name implies, trade secrets are secrets. They have served Coca-Cola and KFC quite well over the years. As an aside, I once knew someone that did some engineering work for KFC. He was able to automate 10 of the 11 secret herbs and spices, but the last one was added manually by a guy that would come out with an unmarked brown sack containing the most secret of the secret ingredients. Trade secrets won't help you at all if someone figures out your recipe, just look at how many copycat recipes one can find, so some extraordinary measures are taken to keep these secrets.
So, the bottom line is, if you don't want people to know your recipe, don't tell them.
Now, on to my non-patented, non-trademarked, non-copyrighted chili recipe:
Open Source Chili
from Steve O'Donnell (http://www.3cpatents.com)
time 4 hours
yield 6 servings
ingredients:
3 cans beans
1 t dried thyme
1 t dried oregano
1 t dried coriander
1 t dried red pepper flakes
4 t cumin powder
3 garlic cloves minced
1lb beef chopped
2 beef bouillon cubes
4 slices bacon chopped
1 red pepper chopped
1 onion chopped
4 oz mushrooms chopped
1.5 cup ketchup
1 tomato chopped
3 c water
2 oz corn chips
directions
1. Throw everything into a crockpot and cook on low about 4 hours or until done.
2. I trim the beef, usually a tip steak or something on sale and add it raw to utilize the rendered fat, lean hamburger can also be used, or any other protein you like. The bacon also goes in raw.
3. The corn chips are the “secret.” They disintegrate and add body and flavor. Without them, or masa powder, you get chili-soup instead of chili. I prefer Fritos, because if you buy a bigger bag you can make Frito Pie.
Chile pepper image from Forest and Kim Starr
Jun172009 | Steve O'Donnell
Patenting illusions II
Do you have an illusion that could be patented? If so, should you patent it?
Magic inventions probably fall into one of two categories, gaffs and methods. Both may be patentable. The first thing to consider is whether your new illusion is really new. A new Topit design might be patentable, but stringing together an old card force with an old billet trick, even though no one has ever thought to do it in that way before, is probably not patentable. That doesn't mean that a patent for a card force is necessarily impossible, but it may be difficult to convince the patent examiner of that. On the other hand, since much of magic is not widely known, it might be difficult for an examiner to find prior art that would kill an application. Keep in mind that hiding information from the patent office may result in a patent that is ultimately unenforceable and expose you to civil liability if you try to enforce it.
If you do get a patent on your trick, what do you do with it? There are a few ways of making money from a patent. One would be if it was such a great trick that people would pay to see you perform that one trick. I have a hard time imagining an act that is one trick long, although shady mentalists have been bilking money out of people with little more for centuries. Another way of making money would be to either license the patent or to sell it outright. Licensing is really similar to what is done already under the Magician's Code model. A person would buy a packet trick and get a license to perform it. Unlike the Magician's Code model though, someone that learns the secret without paying for it may be liable for patent infringement damages and the person that shares the secret could be liable for indirect infringement.
Discovering that someone is infringing a patent is a different issue. A patent covering a intricate gaff is going to be much easier than discovering that someone is infringing a patent covering a method of performing an illusion. The first case likely would involve one of a fairly short list of companies, while the second could be someone performing at a birthday party.
Other than the money that could directly be made from a patent, there might also be a secondary value to a patent on an illusion if it increases the inventor's visibility and reputation in the community. An instructional DVD, seminar, or performance poster will likely get more attention if it rightly declares that the inventor is such a creative innovator that the US has granted a patent to his illusion(s).
Whether or not it makes financial sense to invest in obtaining a patent for an illusion is something that needs to be determined on a case-by-case basis. In addition to getting a patentability opinion from a patent lawyer, the inventor might also want to discuss the plan with a business manager.
I would love to work on magic patents. If you think you have something novel, please let me know and I'll see what I can do for you.
If you are a member of the Magic Cafe [http://www.themagiccafe.com] these is a great list there of magic patents in Secret Sessions, search for “Magic Patents - a list.” You'll need 50 valid posts, I think, to access that forum. . . which if you've read this far probably isn't a problem.
Jun162009 | Steve O'Donnell
Patenting illusions
Remember that “Masked Magician” that showed how a number of illusions were done during a series of specials on Fox a few years ago? He upset a lot of magicians by doing that. Could patenting illusions stop such exposure? Can illusions be patented?
When I was in grade school I had a Marshall Brodine magic kit that I studied tirelessly but eventually lost interest in. Years later, I picked up the magic habit again, and again put it down to chase all the other things that teenage boys chase. Then in graduate school I picked it up again. It was around this time that the Masked Magician made his debut. Fast forward a few years and the time constraints of the practice of law and having two kids has made me put down the hobby again although I do pull out the odd Tenkai palm or card force once in a while.
That aside, are patents a good way of protecting illusions? That depends. A few years ago I probably would have said no for most, but I think that has changed and more magicians should seriously consider patenting their original illusions.
The obvious argument against patenting illusions is that patents are public. That's the deal, you teach the public how to do something and in exchange, you get a temporary monopoly on it. Generally, magicians don't want to share their knowledge with the public at large (at least not until someone buys their instructional DVD). Patent applications are published 18 months after they are filed, so by that time, the cat would be out of the bag. In an attempt to avoid large scale exposure, many simply try to live by or enforce the “Magician's Code,” whereby one doesn't get to freely give away secrets and still be part of the fraternity. Of course, that only works if everyone agrees not to share the information they've obtained from someone else.
The Magician's Code worked fairly well for hundreds of years. Even having books at the public library that freely gave away secrets did not erode the public's general ignorance of how illusions are performed. If anything, it encouraged interested people to join the fraternity and support innovators by buying instructional materials and gaffs.
The internet has changed the game for many industries including the business of magic. Instructional books and DVDs can be found on P2P sites or by downloading a torrent file. This itself is one problem, but a bigger problem might be that it's too easy to find a secret these days. If you can describe a trick, you can probably find an explanation online. If not, one of your Facebook friends or twitter followers will probably tell you how it's done.
A patent won't change that, but the disclosure required to get a patent doesn't matter anymore since the information is going to be available online shortly after the trick is first sold if not earlier.
How would patent protection work? That's for tomorrow.
Jun112009 | Steve O'Donnell
Keeping records of your invention
Hopefully you'll never have to prove when you really invented the thing you're trying to patent, but if you do, you better hope you have good records to back you up.
The patent office assumes that the actual date of invention is the date the application was filed. Unless the inventor thought of the widget in the morning, worked through breakfast and lunch to get the invention ready for patenting and then able to get a patent application drafted and submitted by midnight, this isn't going to be the case. Many inventions take years to go from conception to the patent office.
For illustration, we'll say that Inventor A has an idea in January, has it ready for patenting in June and files the application in December. In the mean time, Inventor B has the same idea in February, has the invention ready for patenting in July, but files that application in in November. Who gets the patent?
What should happen is that Inventor A proves that he was the first to have the invention ready to go and so he gets the patent. But, if Inventor A didn't keep notes or kept sloppy notes he might be out of luck if Inventor B kept an organized notebook.
Those notes can also be needed if there is prior art that is published between the time of invention and the time the application is filed or if the invention goes on sale within the year long grace period allowed under 35 U.S.C. § 102(b).
Ideally, counsel will assist in designing and implementing a record keeping system, but that isn't realistic for many first time inventors. However, anyone can keep useful records with a notebook and a pen.
Jun092009 | Steve O'Donnell
Protecting your invention on the way to the patent office
I recommend to everyone that they contact a patent attorney as early as possible after they have an idea for a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Of course, not everyone is going to do this. In the meantime, there are a couple things you should be doing or not doing to keep you from accidently losing your rights to your invention.
The most important, but maybe most difficult one to do is the SHUT UP! I don't mean to shout, but seriously, SHUT UP! The easiest way to lose your rights is to go around talking about or showing your invention.
35 U.S.C. § 102(b) bars the patenting of something that has been in public use or on sale for longer than a year before the application is submitted. The U.S. is the most liberal country as far as public disclosure of an invention goes, in other countries a public disclosure is most likely going to block a patent from being issued.
The real question is whether talking about your invention a “public use?” It can be. Certainly telling someone that you've invented a time machine is not giving anything away and won't bar your patent. Sitting down and describing enough about how your time machine works that someone else could build it might be enough to bar.
Section 2133.03 of the Manual of Patent Examination Procedures has a short overview of the requirements for “public use” under the statute. Some of these problems that can come up can be solved, or at least minimized, with the use of non-disclosure agreements and other precautionary measures. The downside with protecting yourself that way is that you might have to convince the patent office or a court that you did take the proper measures to protect yourself. A cheaper and easier way of ensuring that you don't have a 102(b) problem is to. . . SHUT UP!
Another problem that can occur if an inventor shares too much is that the person receiving the information might try to poach the invention and file their own patent. Unfortunately, there is no shortage of dishonest people and although the real inventor might be able to defeat such a fraud, that is an unnecessary expense that could have been easily avoided by keeping quiet.
Sometimes, it just isn't possible to keep the invention completely secret before an application is filed. It may be that public testing is needed, that some design help is needed or maybe that investment capital needs to be raised to pay for the patent application. In that case, tread carefully, and enlist a patent attorney to make sure that you are protected.
Jun042009 | Steve O'Donnell
The value of a patent application itself
In an earlier post I noted that there is a competitive advantage in the application itself, even if a patent never issues or if the final patent is so narrow that it can be easily designed around. What is this advantage and how can it be used to benefit your business?
The first advantage is somewhat tangential to the application. An application or narrow patent will count towards your business' intangible assets (assets that aren't. . . ahem. . . tangible, things that can't be touched). Increasing a business' assets will make it more attractive to lenders or investors, which in turn can mean increased capital available to take on the competition.
The other advantage is that is puts the competition on notice that copying the invention may be foolish. After an application is filed, the patentee has the right, under 35 U.S.C. § 292 to mark a product as “patent pending” or similar. This by itself alerts potential infringers that the product might be later patented, and they could face an infringement lawsuit if they copy the product. Also, because applications are held in confidence for the first 18 months after they are filed, the competitor has no way of finding out what the subject matter of the application is.
Consider you invent a gadget and, after consulting with your patent attorney, decide to pursue a patent on one small aspect of it, after filing, you can use mark it as “patent pending.” A competitor wants to copy it, but has no way of finding out what the application covers or its likelihood of issuing. Now, the decision to copy becomes more complicated because of the uncertainty and the possibility of being hit with an infringement lawsuit.
This same type of “persuasive protection” comes up again when the application is published 18 months after filing. Here, as was the case with the “square appliances” application, possible infringers have a better idea what the patentee is trying to protect, but still no idea if the patent will eventually issue or exactly what it might cover. Additionally, the possible infringer should also realize that there might be other related patent applications haven't been published yet (as can happen with a continuation application).
In the case where a patent has to be very narrow in order to get past the examiner, this still has value beyond the legal monopoly it grants the patentee. Possible infringers probably don't have the patent background to analyze the patent and discern what it covers, so they'll need to have their lawyers work on it and draft an infringement opinion. Depending on the complexity of the patent, even if it is rather narrow, these opinions can quickly turn into tens of thousands of dollars. That might be enough to either dissuade the possible infringer or bring them to the table for a possible license.
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.
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.
Apr302009 | Steve O'Donnell
Pending patent reform
It seems that every year there is a patent reform bill kicking around the capital, and this year is no exception. The biggest proposed change is moving the US from a first-to-invent to a first-to-file system. This change would put us into phase with most of the rest of the world, but it it not without it's problems.
Currently, if there are two applications for the same invention, the patent will go to the first inventor after the resolution of an interference proceeding. Proving that one is the first inventor can be an expensive, time consuming bother, but it can be done. Amended bill S. 515 would change that. If it becomes law in it's current form, then the winner of the race to the patent office would be the one to get the patent..
As reported by PatentlyO, the bill has been approved by the Senate Judiciary Committee and has been placed on the Senate Legislative Calendar. If it passes through the Senate and the House, then it will go to the President for his signature. You can watch the progress of this, and other bills via the legislative search engine Thomas (search for bill number S. 515)..
At first blush, this doesn't seem to be that bad of an idea. That is the way most of the rest of the world's patent offices work and it would eliminate the need for interference proceedings. Unfortunately, I fear that it will adversely impact small businesses and independent inventors..
Assume that a small business person (A) invents a widget in January but doesn't file an application until June, during which time the business person is test marketing the widget or looking for investors. If another person (B) happens to invent the same thing in April and gets an application on file in May, A may still be able to obtain the patent for the widget. At least that's how it is now. If the proposed changes become law, then A is shut out because he didn't move fast enough. There is a real risk that this would adversely impact first time inventors that aren't familiar with the patent process and might not have the money on hand to invest in obtaining a patent..
The new law will probably also increase the overall cost in patent office and legal fees to the inventor. No practitioner is going to sit on an application, or take longer than needed to draft it, but under the new law, very application will be a race. Practitioners will find themselves exposed to greater malpractice premiums due to the possibility that a slight delay may kill their clients' chance of getting a patent. That cost will be passed on to inventors. Inventors will also likely find themselves paying premium prices to have their attorney push their applications to the top of their docket. Additionally, since they can be filed faster than a non-provisional application, provisional patent filings will increase, causing inventors to pay additional fees that they wouldn't have otherwise needed to pay in order to preserve their right to a patent.
If this concerns you, contact your elected officials.
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Comments
We will try that recipe, forwarding to Marlena. The Cook.