February 2008

Protecting Patent Rights

Article I, § 8 of the United States Constitution authorizes Congress 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.” Congress has created two sets of laws to implement the object of this provision: copyright laws protects original works of authorship and patent laws protect original inventions. These laws allow creators of intellectual property such as inventions and works of authorship to protect their rights to property that is not susceptible of being secured under lock and key, particularly when such creations often have little utility until they are sold or distributed or used to make products that may be sold or distributed.

The United States Patent and Trademark Office

The government agency responsible for overseeing the patent process is the United States Patent and Trademark Office (USPTO). The USPTO examines applications and grants patents to inventors whose applications meet the requirements. It maintains and makes available information, including issued patents and applications that must be researched to ensure that an invention is new and that another inventor does not already have a patent right in the invention to be patented.

New and Useful Inventions

Types of things that may be patented are new and useful inventions that can be classified as machines, articles of manufacture, compositions of matter, processes, or any combination of those things. This type of invention is eligible for a type of patent called a utility patent and represents the common understanding of what a patentable invention is. An idea may not be patented, even if it as an idea for a tangible thing such as a machine. Accordingly, detailed specifications and descriptions for a machine or other invention must be set out in a patent application. Other things that may not be patented are laws of nature, physical phenomena, and types of intellectual property that are protected by copyright or trademark law.

Design Patents and Plant Patents

Two other types of patents are available that protect ornamental designs for articles of manufacture, called design patents, and those that protect certain types of plants, called plant patents. In order to be eligible for a plant patent, a new plant must not be a tuberous plant such as a potato and must be asexually reproduced. Utility patents and plant patents have a term of 20 years, whereas the term of a design patent is 14 years.

Requirements for a Patent and the Application Process

A patented invention must be useful and must be new. USPTO rules provide what constitutes new and preclude the patenting of things that have already been patented, have been sold or in use, or have been described in any publication before they were supposedly invented by the person seeking to patent them. USPTO rules also require that, once the creator of a truly new invention describes it publicly or puts the invention into use, he or she must apply for a patent within one year. Failure to do so will cause the inventor to lose the right to obtain a patent and the invention may then be used, made, or sold by anyone.

Another requirement for a patent is the non-obviousness of an invention. This requirement particularly applies to improvements of existing inventions and prevents the patenting of the substitution of a different material for an invention or patenting a new size of an existing invention. Obviousness is measured not from the point of view of the layman but from that of a person of ordinary skill in the area of technology within which the invention is classified.

Inventor must Apply for a Patent

Only an inventor may apply for a patent. If the inventor is deceased or incompetent, the inventor’s guardian or the representatives of the inventor’s estate may apply for a patent. In addition, if an inventor refuses to apply for a patent, another person with a proprietary interest in the invention may apply for a patent.

An ordinary patent application is called a non-provisional application. In addition to personal information of the applying inventor, a patent application must include a detailed description of the item or items for which a patent is sought, which are referred to as the inventor’s “claims,” and an oath or declaration that the inventor believes himself or herself to be the original inventor of the item or items to be patented. Additional statements required by law must also be included in the oath or declaration. Depending upon the subject matter of the application, detailed drawings will most likely be required.

Patent rights

Although applications are often rejected as first filed and need to be amended in order to meet all requirements for a patent, the USPTO eventually approves two-thirds of all patent applications. A patent is a property right in the patent holder giving him or her the right to prevent others from using, making, or selling the invention without permission. A patent may be sold, transferred, assigned, and mortgaged, or treated in any way that property may be treated; thus, although the inventor is required to apply for a patent, once the patent is issued someone else may own the patent or become the patent holder.

Patent Holder’s Permission Required to Build or Use Patented Invention

One of the most misunderstood aspects of patents, is that a patent does not allow an inventor to acutally practice (make, use or sell) the invention. A patent only grants the exclusive right to stop or sue someone for building or using a patented invention without the patent holder’s permission. Someone who makes, sells, or uses a patented invention without permission is said to have infringed the holder’s patent rights, and a lawsuit may be brought for an order that the activity cease and for any monetary damages that may have been incurred for lost sales or other injury. An exception to this rule exists in that the federal government may use a patented invention without permission; however, the holder is entitled to compensation. A patent holder whose rights have been infringed should consult an attorney, as the USPTO has no jurisdiction over patent disputes.

Patent Applications Covering Multiple Inventions

If an application contains claims to more than one independent and distinct invention, the United States Patent and Trademark Office (USPTO) may impose a restriction requirement. The applicant must then elect one invention for prosecution in the original application and may file divisional applications claiming the nonelected inventions. Restriction is imposed to prevent subversion of the statutory fee structure for the application for and issuance of patents and to preserve the integrity of the system of examination and classification within the USPTO.

Two or More Independent and Distinct Inventions Claimed in One Application

The Commissioner of Patents and Trademarks requires restriction if two or more independent and distinct inventions are claimed in one application. This is the independent and distinct standard. USPTO policy prevents restriction unless the two groups of claims are patentable over each other, which means that neither is obvious in the light of the other.

The USPTO defines ”independent” as meaning ”not dependent,” which in turn means ”there is no disclosed relationship between the two or more subjects disclosed.” The USPTO defines ”distinct” as related or dependent but ”capable of separate manufacture, use or sale as claimed” and ”patentable (novel and unobvious) over each other.” The USPTO contends that restriction is appropriate where two joined inventions are either independent or distinct. The Commissioner of Patents and Trademarks must require restriction if two or more independent and distinct inventions are claimed in one application.

The USPTO may require restriction where two or more inventions are related or dependent but nevertheless ”distinct.” Inventions are distinct if they are both (1) capable of separate manufacture, use, or sale as claimed and (2) patentable over each other. Assuming two joined inventions are distinct in this sense, then restriction will in fact be required if but only if one or more of the following reasons are present: (1) separate classification, (2) separate status in the art, and (3) different field of search.

Examiner Enters Restriction Requirement

An examiner enters a restriction requirement when he or she determines that the application includes claims to independent and distinct inventions. The applicant must then indicate a provisional election and may oppose the requirement by requesting reconsideration. In the next action, the examiner may make the requirement final and will take action on the elected claims.

One restriction requirement does not preclude a second one at a later stage of the prosecution. Additionally, a restriction requirement may be made, withdrawn, and then required again if the circumstances warrant. In requiring restriction, the examiner must indicate clearly how the application is to be restricted as well as the reasons for restriction.

Applicant Must Elect an Invention

A restriction requirement calls on the applicant to elect an invention to which the claims will be restricted. Election is thus the designation of the particular one of two or more disclosed inventions that will be prosecuted in the application. In responding to such a requirement, the applicant must state a provisional election even though he or she contests the propriety of the restriction requirement. This enables the examiner to examine claims to the elected invention immediately as well as to reconsider the requirement.

Provisional Election Binding on Applicant

The provisional election binds the applicant throughout subsequent prosecution. The general policy of the USPTO is not to permit the applicant to shift to claiming another invention after an election is once made and action given on the elected subject matter. Shifting would allow the applicant to obtain two examinations for the price of one. However, the USPTO may waive election and permit the applicant to shift.

Traverse and Reconsideration

If the applicant wishes to contest the restriction requirement, he or she must traverse the requirement and request reconsideration as well as state a provisional election. The applicant must give reasons why the requirement is in error. After traverse, the examiner reconsiders the requirement and may repeat and make it final. In making the requirement final, the examiner also acts on the merits of the elected invention.

Petition and Review

If the examiner makes a traversed requirement final, the applicant may petition the Commissioner to review the requirement. The applicant may file the petition after the restriction requirement is made final and must file it not later than an appeal on the merits of final rejection. After a restriction requirement becomes final, the examiner will withdraw from further consideration all claims for nonelected inventions or species. If claims to elected inventions are allowed, the claims to nonelected inventions must be cancelled. The applicant may traverse the examiner’s holding that a given claim is not for elected subject matter. Such a holding is an appealable rejection.

Choosing a Trademark

The spectrum of trademark distinctiveness goes from fanciful marks, which are very protectable, to generic trademarks, which are not protectable. In trademark usage, words can be classified according to the degree of their distinctiveness. The right to protection of a trademark comes from its use to identify the product. When choosing a protectable trademark it should be highly distinctive. Choose trademarks that are fanciful, arbitrary, or suggestive because they are considered distinctive enough to function as trademarks.

A mark, such as a word or a logo, can only be considered a trademark or a service mark if it is distinctive. A distinctive mark is one that is capable of distinguishing the goods or services upon which it is used from the goods or services of others. A non-distinctive mark is one that merely describes or names a characteristic or quality of the goods or services. The distinctiveness of a mark can generally be categorized into one of five categories which fall along a spectrum of distinctiveness. The strength of a mark is determined in part by where it falls on this spectrum. Fanciful marks are considered stronger than suggestive marks, and therefore are granted greater protection by the courts. The categories, from most distinctive to least distinctive, are as follows:

1. Fanciful trademarks are marks which have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark. FAB is a shortened version for fabulous and is a fanciful word used for detergent. Other examples are Kodak, Starbucks, Verizon, Xerox and Reebok.

2. Arbitrary trademarks are common words used in a unique way so that the word has no relationship to the product. An arbitrary trademark neither suggests nor describes any ingredient, quality, or characteristic of a product. Examples are Apple for computers, Amazon for an Internet site, and Blue Diamond for nuts.

3. Suggestive trademarks indirectly allude to a quality of a product. Suggestive marks conjure images of the associated products without directly describing them. Trademark protection may be afforded to suggestive terms that shed some light upon the qualities or characteristics of goods but which are not descriptive of such goods. Secondary meaning is not necessary for suggestive terms because they are not merely descriptive. Stronghold for threaded nails is suggestive of their superior holding power, 7-11 for a store that is open from 7 a.m. until 11 p.m., Jaguar for a fast car, Gleem for toothpaste, and Orange Crush for a soft drink.

4. Descriptive trademarks are those which describe to potential customers the characteristics, nature, qualities or ingredients of goods or services. These trademarks are often referred to as inherently “narrow” or “weak.” Through use and advertising such marks may attain ”secondary meaning,” or trademark significance, to the public. In the absence of secondary meaning or distinctiveness, descriptive trademarks have generally been denied trademark protection in the belief that the number of such appropriate terms is limited and that all merchants should equally be allowed to describe their own goods while competing for customers. Examples are Computerland for a computer store, Vision Center for an optics store, and Tender Vittles for cat food.

5. Generic trademarks are terms that describe a whole class of products. A generic word is one which is the language name for the product. There can be no trademark rights in a generic term. They remain in the public domain as a part of your language. Examples are Personal Computer for a personal computer and Butter for butter.

Trademarks are referred to as strong or weak because of the amount of use necessary to create protected rights. Words which are fanciful or arbitrary are distinctive almost from their first use, so they are considered strong and would be the best choice for a trademark. These terms take less effort, time, and money to protect. Suggestive words are also protected as trademarks when used distinctively for particular products. Fanciful, arbitrary, and suggestive marks are registrable on the Principal Register without proof of acquired distinctiveness. Words which are merely descriptive do not obtain protection solely from their use as a trademark. Descriptive words must first acquire distinctiveness from the effect of the owner’s efforts in the market place. This is what is called the development of secondary meaning, which is when, in the minds of the consuming public, the primary significance of a descriptive term that has been used as a trademark is not the product itself but the identification of it with a single source.

Secondary meaning is the term applied to the source-indicating significance of a mark as contrasted with its primary or language significance. Thus, Ivory has acquired a secondary meaning signifying a particular manufacturer’s soap, whereas its primary meaning is the substance of an elephant’s tusk. Factors typically considered in determining whether a mark has secondary meaning include (1) length and manner of use; (2) manner and extent of advertising and promotion; (3) sales volume; and (4) evidence that potential purchasers actually view the mark as indicating the product’s source, including consumer testimony and survey evidence.

Fair Use of Trademarks

A party is entitled to use a trademark in such as way as to describe the qualities that a mark represents, as long as the use of the mark is not in a trademark manner but in a descriptive sense. Fair use of a trademark occurs when a defendant uses a descriptive trademark of another party to describe the defendant’s own product. This is the fair use defense set forth in the Lanham Act that provides that it is not an infringement when the use of a trademark (name, term or device) is not used as a mark but which is used in a descriptive sense and used fairly and in good faith to describe the goods or services of the party. While a trademark will protect a word which is used by a manufacturer or merchant to identify goods and distinguish them from others, trademark law will not prevent the use of such a word in good faith where the primary purpose is to describe a product or service, not to infringe the trademark resembled by it. The statutory fair use defense provided in the Lanham Act prevents a trademark owner from monopolizing or appropriating a descriptive word or phrase. It allows non-owners of the trademark to accurately describe their goods. Therefore, the defense is only available when the mark at issue is descriptive, and then only where the descriptive term is used descriptively.

Judge-Made Categories of Fair Use

Although the Lanham Act contains the statutory fair use provision mentioned above, there are three additional judge-made categories where use of the trademark of another may be considered non-infringing. They are (1) nominative fair use, (2) comparative advertising as fair use, and (3) parody as fair use.

Nominative fair use involves the descriptive use of another’s mark to describe or identify the plaintiff’s goods or services, not the defendant’s. Comparative advertising involves a situation where the trademark of a competitor is used to refer to the competitor’s goods. Parody is a humorous form of social commentary and literary criticism.

Factors Considered in Determining Fair Use

Several different factors are considered by courts to determine whether a particular use is an infringing use or a fair use. Those factors are as follows:

  • the manner in which the word or mark is being used by the defendant is considered;
  • whether the defendant is using the word or mark in good faith is considered; and
  • whether the use of the word or mark is likely to confuse consumers is also considered.

The author’s use of the mark must accurately describe the trademark owner’s product or service, the author must use the mark in a non-trademark manner and not as a source identifier of the author’s work, and the author’s use must be in good faith in order for the fair use defense to be successful.

Works of Authorship under Copyright Law

The Copyright Act uses the phrase “works of authorship” to describe the types of works that are protected by copyright law. This phrase is purposefully broad to avoid the need to rewrite the Copyright Act every time a new “medium” was discovered. Congress enumerated eight works of authorship within the Copyright Act as follows:

1. literary works;

2. musical works, including any accompanying words;

3. dramatic works, including any accompanying music;

4. pantomimes and choreographic works;

5. pictorial, graphic, and sculptural works;

6. motion pictures and other audiovisual works;

7. sound recordings; and

8. architectural works.

Most protected works fall into one of the specified categories. These categories are broader than they initially appear to be. For instance, computer programs and most compilations are registered as “literary works,” while maps and architectural plans are registered as “pictorial, graphic, and sculptural works.”

Several categories of material are generally not eligible for statutory copyright protection. Categories that are not eligible include the following:

  • works that have not been fixed in a tangible form of expression;
  • titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents;
  • works consisting entirely of information that is common property and containing no original authorship, for example: standard calendars, height and weight charts, tape measures, and rulers, and lists or tables taken from public documents or other common sources; and
  • works by the U.S. government.