June 2008

Timely Filing of a Patent

When filing a patent, it is important to remember that if the patent is not filed timely, the inventor will forever forfeit their patent rights. Patent protection in the U.S. is provided by federal law through the United States Patent and Trademark Office (USPTO) and gives a patent owner the right to exclude others from making, using, selling, distributing or importing the patented invention for a certain period of time. Only certain things may be patented, and there are several requirements that an invention must meet in order to be eligible for patent protection. One of the most basic requirements is novelty, or newness. The purpose of the novelty requirement is to prevent the patenting of inventions that have become widely known and used, which are said to have entered the public domain, and to carry out the general principle that only the first person to create an invention is entitled to patent it.

Definition of Novelty
In order to be novel, an invention cannot have been previously patented, described in a printed publication or used or known by others prior to its invention by the patent applicant. To be known by others, a patent must have been fully disclosed and the disclosure must be accessible to the public in the United States. Only minimal use of an invention by others is necessary to disqualify patent eligibility as long as the use is accessible to the public. Experimental use by the inventor to test the invention is not a use that will automatically disqualify the invention from patent eligibility. Printed publication of a description constitutes accessible disclosure of the invention if the publication is distributed or is filed in such a way that a member of the public could find it by exercising reasonable diligence.

Additional provisions of patent law prevent an inventor from obtaining a patent if another inventor had taken steps to patent the invention that resulted in the public disclosure of the invention or if another person invented the item before the patent applicant and did not abandon, suppress, or conceal the invention before the patent applicant invented the item. These provisions generally protect the rights of an earlier inventor against a later inventor.

In order to determine whether an invention meets the novelty requirement, the U.S. Patent and Trademark Office will search through existing patents and other literature in the field in which the invention is classified to see if the invention has been patented or described in a way that discloses it to the public. The body of information that will reveal whether an invention to be patented meets the novelty requirement is referred to as the “prior art.” If the prior art indicates that the invention to be patented has already been patented or described publically, the invention for which a patent is sought is said to have been “anticipated,” and it will not be eligible for a patent. Inventors may conduct searches prior to applying for a patent, and, in fact, this kind of search is usually encouraged in order to avoid the unnecessary expense of time and money in applying for a patent that may be anticipated by the prior art.

Liability for Indirect Patent Infringement

Patent rights are created by federal law and give an inventor the right to exclude others from making, using, selling, offering for sale, or importing a patented invention without the inventor’s permission. Violating these rights by making, using, selling, offering for sale, or importing the patented invention without the inventor’s permission is said to directly infringe the patent. Under direct liability the patent owner may be able to sue the infringer for infringing. In addition to direct liability, patent law also provides liability for indirect patent infringement.

Inducement to Infringe
One way of becoming liable for indirect patent infringement is to induce another party to commit an act of patent infringement. In order to be liable for inducement to infringe a patent, one must actively solicit or assist another in the infringing of a patent. Generally, to be liable for inducing patent infringement, one must knowingly and intentionally induce the actual infringer in comitting an act of infringement. One basic requirement for inducement is that there must be an actual case of direct infringement by another party; thus, one cannot be liable for attempting to induce the infringement of a patent when no infringement takes place. For example, offering to sell the parts necessary to build a patented invention and instructions on how to build it does not in itself amount to inducement to infringe. However, if someone accepts the offer to buy the parts and builds the invention, thus directly infringing the patent, the seller of the parts has induced the act of direct infringement and in doing so is liable for indirect infringement.

Contributory Infringement
Another form of indirect infringement is contributory infringement. Contributory infringement is defined as selling, offering to sell or importing an important part of a patented invention that has no substantial use except to build the patented invention. If the item being sold is a common item that has other uses, selling it is not contributory infringement even if the seller knows that the buyer intends to use the item to infringe a patent. As with inducement to infringe, liability for contributory infringement depends upon an actual act of direct infringement. The knowing and intentional element of inducement to infringe also applies to contributory infringement. Therefore, to be liable for contributory infringement, one must know that the item being sold, offered for sale, or imported has no real use except in the creation of an infringing product and that the person to whom the item is sold intends to use it in such a way that a patent will likely be infringed.

Establishing and Perfecting Trademark Rights

The legal basis for protecting trademarks derives from a combination of state common law and federal statutory law. Actual use of most kinds of trademarks establishes protectable trademark rights under common law. However, if the use is made in interstate commerce, the user may apply for federal trademark registration in the United States Patent and Trademark Office (USPTO). Federal registration offers important substantive rights such as constructive notice and prima facie evidence of ownership and validity.

Establishment of Rights
Trademark rights are established by either actually using the mark or by filing a proper application to register the mark in the USPTO stating that the applicant has a bona fide intention to use the mark in commerce. Registering with the USPTO is not necessary for establishing trademark rights. However, registration of a mark helps secure benefits such as giving notice of a claim to the mark, having evidence of ownership of the mark, being able to invoke federal court jurisdiction, being able to use the registration as a basis for obtaining registration in foreign countries and being able to prevent the importation of infringing foreign goods.

Two Types of Rights in a Mark
There are two types of rights in a mark — the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application with the USPTO has the ultimate right to register that mark. The USPTO’s authority is limited to determining the right to register. The right to use a mark can be more complicated to determine, which is particularly true when two parties are using the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. Federal registration does provide a significant advantage in court proceedings.

Benefits of Federal Registration
The federal trademark registrant is presumed to be the owner of the mark for the goods and services specified in the registration. Also, a federal registration contains the date of first use. This date is presumed valid and acts as notice to a subsequent user. Additionally, when pursuing a trademark infringer, the trademark registrant is also entitled to additional damages provided for under the federal trademark statutes, which include attorney fees and punitive damages.

Territorial Nature of Trademark Rights
Trademark rights are territorial in nature. Protectable rights in a country depend on compliance with the laws of that country and do not ordinarily extend to another country. Thus, trademark use outside the United States creates no priority rights or rights to protection in the United States. Similarly, a business can establish trademark rights in the United States even when the identical mark is owned by another business in a foreign country.

Duration of Rights
Trademark rights can last indefinitely, unlike copyrights or patents, if the owner continues to use the mark to identify its good or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.

Owners of Foreign Trademark Registrations
An important exception to the principle that trademark protection derives from use has been carved out for owners of foreign trademark registrations who can obtain a U.S. registration under the Lanham Act without making use of the mark in the United States. However, the owner of the foreign registration must allege, at the time of filing, a bona fide intent to use the mark in the United States.

Jurisdiction of U.S. Courts Outside of the United States
While trademark rights are territorial in nature, under certain situations, the Lanham Act is given extraterritorial effect by a U.S. court. It is well-established that U.S. courts have jurisdiction to enforce the Lanham Act extraterritorially in order to prevent harm to U.S. commerce.

Infringement for Consumer Confusion

Trademark law seeks to proactively prevent consumer confusion; thus it does not require proof of actual consumer confusion in order for infringement to occur. All that is necessary is that the trademark owner proves that a hypothetical, “reasonably prudent” consumer would likely be confused by the use of the same or a similar trademark on potentially competing products. The hypothetical purchaser is not expected to make detailed, side-by-side comparisons or to have perfect recall.

Infringement Includes Consumer Confusion of any Kind
Infringement is not limited to confusion of consumers as to source, but includes confusion of any kind with respect to consumers or potential consumers. Courts have even found a likelihood of confusion to exist where the public at large could be confused, even though the actual purchasers themselves were not confused.

Factors Used to Determine Likelihood of Confusion
In determining likelihood of confusion, courts evaluate several factors. No one factor is determinative in and of itself and how important one factor is over another is case specific. The factors are as follows:
Whether or not the goods or services using the same mark compete with one another. Marks that are used on similar or related goods or services are more likely to confuse consumers as to the source of those goods or services.

•Whether or not the goods or services are so closely related that they are being marketed through the same stores or channels of distribution.

•Whether or not the alleged infringer intended to trick consumers in order to “cash in” on the plaintiff’s business good will.

•Whether the marks are similar in appearance, phonetic sound, or meaning.

•How careful the consumer is likely to be prior to purchasing. The more sophisticated the consumer or the more expensive the product, the more discriminating the consumer is expected to be and the less likely confusion will be attributed to them.

•Whether or not the companies are accessing overlapping customer bases. If the companies both sell mainly to the same groups, there is more likely to be consumer confusion.

•The legal strength of each of the marks. The greater the public recognition of a mark as a source identifier, the more likely that similar uses will be confusing.

•Whether there has been any actual confusion. The fact that there has been actual confusion is not conclusive evidence of likelihood of confusion, but it must be weighed together with the other factors.

Control Over Quality of Products
Trademark law frequently refers to the confusion of consumers or the probable confusion of consumers. The reason for this is that trademark law is not as much about protecting business interests as it is about protecting consumers. By providing a business with the incentive of increased profits by the grant of exclusive rights in a mark and imposing a duty upon that owner to stop others from using that same mark on competing products, trademark law gives consumers some amount of certainty about the quality of products they buy. If one brand satisfied the customer more than another, that customer could easily find the brand they liked without having to read ingredient labels or scrutinize packaging, materials, and workmanship. This saves the consumer time and allows him or her to make informed purchase decisions. For this reason, the standard of when a trademark right is being infringed has entirely to do with whether or not a consumer is going to be confused, and thus deprived of making informed purchasing decisions.

Obligation to Police Trademark
It is because of the focus on consumer protection that businesses are not allowed to ignore infringing uses of their mark. Companies who tolerate infringing uses of their mark risk losing all their rights in the mark if a third-party challenger claims the company abandoned the mark by not enforcing it.

Musical Works as Copyright Subject Matter

The copyright law of the United States provides for copyright protection in “musical works,” including any accompanying words, which are fixed in a tangible medium of expression. With music, both the lyrics and the musical composition itself are copyrightable expressions. Musical works include both original compositions and original arrangements or improvements to earlier works. In general, the owner of a copyright in a work has the exclusive right to make copies, to prepare derivative works, to sell or distribute copies, and to perform the work publicly. Anyone else wishing to use the work must have the permission of the author or someone who has obtained rights through from author.

Right to Make and Distribute First Sound Recordings
A sound recording of a musical work includes the right to make and distribute the first sound recording. Although others are permitted to make subsequent sound recordings, they must compensate the copyright owner of the musical work under the compulsory licensing provision of the law.

Copyright Protection Is Automatic
Under the present copyright law, which became effective January 1, 1978, a work is automatically protected by copyright when it is created. A work is created when it is “fixed” in a copy or phonorecord for the first time. Neither registration in the Copyright Office nor publication is required for copyright protection under the present law.

Different Holders of Various Copyrights
Different entities may hold the various copyrights. Generally speaking, the copyright to the song, which includes the music and lyrics, may be transferred to the publisher of the song. The recording company usually holds the copyright to the sound recording. Once a song has been lawfully recorded, others may record the work as long as they pay at least the statutory license fees. If music is to be synchronized with a movie or other audiovisual work, a synchronization license, generally with the publisher or other copyright holder, will be necessary. Royalties will also have to be paid to the copyright holder when a song is sung or played on radio, television, live concerts, and over the Internet.

Advantages to Copyright Registration
Although it is not mandatory, there are certain advantages to registration, including the establishment of a public record of the copyright claim. Copyright registration must generally be made before an infringement suit may be brought. Timely registration may also provide a broader range of remedies in an infringement suit.

Publication, as defined by the Copyright Act, is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. However, a public performance or display of a work does not of itself constitute publication. The following acts also do not constitute publication: performance of the work, preparation of copies or phonorecords, or sending the work to the Copyright Office.