September 2008

Requirements for Applying for a Patent

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 protect original works of art and patent laws protect original inventions. These laws prove for the protection of intellectual property rights which is not susceptible of being secured in a traditional manner, particularly when such creations often have little use until they are sold or distributed or used to make products that may be sold or distributed.

United States Patent and Trademark Office (USPTO)

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 who have fulfilled the patent requirements. In addition, the USPTO maintains and makes information available, including patents and applications that may be researched to determine if an invention is new and if another inventor has a patent related to 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. These types of inventions are 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 around 20 years, whereas the term of a design patent is approximately 14 years.

Requirements of a Patentable Invention

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 simple substitutions of a different material or a new size from 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

In the United States, 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 along with a description of what is claimed to be new, which are referred to as the inventor’s “claims,” and an oath or declaration that the inventor believes they are the original inventor of the item or items to be patented. 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 over half of all patent applications. A patent is a property right of 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

It is illegal for someone to build or use a patented invention without the patent holder’s permission even if that person builds the invention at his own expense. 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.

Unenforceable Patents

A patent is a right granted under U.S. law that allows the patent owner to exclude others from making, using, selling, offering for sale, or importing the patented invention and without the inventor’s permission for a fixed term. Generally, this term extends for 14 years for a plant patent; 20 years for other types of patents, from the time of filing the patent application. Any activity involving the patented invention which violates these rights is said to infringe the patent. The patent owner may bring a lawsuit for infringement to collect monetary damages and to stop the infringing activity. There are several defenses to patent infringement. One defense is the Doctrine of Intervening Rights. Another defense, which will completely insulate an alleged infringer from liability, is patent misuse.

Doctrine of Intervening Rights

United States patent law allows a patentee to request a reissue of a patent, a procedure used when a patent, as issued, needs to be corrected. There may be an error in the specification that undermines the validity of the patent, or a patentee may determine that the scope of the patent, as issued, is narrower or broader than intended. As long as the error occurred without deceptive intention, the patentee may seek a reissue of the patent.

Once issued, the patent is publicly known and relied upon to disclose what is claimed within the patent by the inventor as the subject of his invention. If a patent is changed in such a way that the original disclosure does not disclose certain features of the later claimed invention, the patent laws protect those who in good faith relied on the scope of the patent as originally issued in making, using, or selling some invention or process. These users are said to have acquired intervening rights. If such use of the invention or process was not covered by the patent as originally issued, the statute protects that use. In such a case, a court has no discretion and must find that there is no infringement on the basis of the absolute intervening rights. Even if a person or business has not used the invention but has made substantial preparation towards making, using or selling it prior to the patent’s reissue, equitable intervening rights may still be found. In contrast to absolute intervening rights, a court will determine whether there has been a sufficient investment of time and money to find that equitable intervening rights have been obtained that justify protecting the investment by finding that no infringement of the reissued patent has occurred.

A similar situation occurs when a patentee seeks a reexamination of a patent. In such a case, the patentee or a third party may discover evidence that a patent is not valid and wish to amend the claim in order to obtain patent protection or obtain a ruling from the United States Patent and Trademark Office (USPTO) that the claim as set out in the patent is valid. If the patent, as re-examined ,contains a patentable new claim, intervening rights will protect the use or substantial preparation for the use of a process or invention not covered by the original patent in the same way as with a reissued patent.

The final way in which intervening rights may be established is when utility patent maintenance fees are not paid on time or within the six-month grace period following the due dates for those fees, which are payable at three different times over the life of a 20-year utility patent. Although the USPTO allows a patentee of an expired patent to petition the USPTO to reinstate a patent when failure to pay maintenance fees on time was unintentional or unavoidable, the law protects persons, who relied on the presumption that the patent had been abandoned, to use, make or sell the subject of the expired patent or to make substantial preparations to use it. In such cases, intervening rights will be found to have been established in the same manner as in re-issued and re-examined patents.

Patent law is designed to encourage the disclosure of new inventions and technologies by providing the inventor with an incentive–the exclusive right in the invention–in exchange for making the details of the invention available to the public in the form of the patent application and the issued patent. Because the granting of exclusive rights runs contrary to cherished free-market principles, the federal government strictly limits the patent. An attempt by a patent owner to expand the scope of the exclusive rights granted by a patent may be found to have misused the patent, which will prevent the patent owner from prevailing in a patent infringement action.

Tying Arrangements

One of the ways that a patent owner can improperly expand the scope of a patent right is through a tying arrangement, which is where the patent owner conditions the sale of the patented product or the licensing of the patent on the sale of some other product that is not protected by any patent or on the sale of a product or license under a completely different patent. Whether a tying arrangement will actually be found to constitute misuse will depend upon an analysis of the relationship between the patent and the tied product and whether the patent owner has market power in the market for the patented product. If the patent owner does not have market power in the market for the patented product, which is to say that prospective purchasers of the patented product have other options, the tying arrangement will not be found to be anticompetitive or to constitute misuse of the patent.

Term Extension

Another form of patent misuse is an attempt to extend the term of a patent. Although United States contract law is extremely liberal as to what parties may contract to, a contract to pay patent royalties beyond the statutory term of a patent, or any other mechanism for extending the term of a patent, constitutes patent misuse. This absolute enforcement of the statutory 20-year patent term is in keeping with the main purpose of patent law, which is to make new ideas available to the public and advance science and technology.

Patent misuse does not render a patent invalid. Although an alleged infringer will not be liable for infringement during the period of patent misuse, cessation of the misuse of the patent renders the patent fully effective against future or continued infringing activities.

Using Sound as a Trademark

A trademark is a device which can take almost any form, as long as it is capable of identifying and distinguishing specific goods or services. A trademark may be a word, name, symbol, or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A sound may also be a trademark or a service mark, rather than visual images or words. To qualify as a trade or service mark, the sound must function as a source identifier for the goods and/or services. Sound marks may even be superior to word marks among certain audiences, since the mark is perceived aurally rather than visually. New technology is providing increased opportunities for trademark owners to use sound marks

Examples of Registered Sound Marks

Sound marks may be entertaining, clever, and informative. Also, sound marks may become famous. The Tarzan Yell, the Merrie Melodies Theme, the sound of a finger swiping a dish and the spoken word “boing” are all registered sound marks in various jurisdictions.

Registration of Sound Marks

The U.S. Patent and Trademark Office (USPTO) began registering unconventional sound marks more than 50 years ago. In 1950, the National Broadcasting Company (NBC) obtained a sound mark for radio broadcast services. The mark subsequently expired, and in 1971, NBC obtained a sound mark for “3 chime like notes” to identify broadcasting services. The mark is used between television shows to identify the station. Although sound mark registration is not available globally, international branding for companies such as Deutsch Telekom, Nokia, Yahoo! and Intel include registration of sound marks in multiple jurisdictions.

Filing Sound Mark Applications

Where available, the sound mark application process is the same as for traditional trademarks and service marks. In the United States, sound mark applications must undergo the usual substantive examination process. The drawing requirement, however, is waived and a description of the mark is required in its place. Applications to register sound marks may be filed on an intent-to-use basis. The applications are published for opposition and specimens must be reviewed and accepted prior to the issuance of a registration certificate.

Searching Sound Marks

When searching sound marks, it is important to interpret the terminology that the registry uses to label its unconventional marks. The USPTO uses mark drawing code “6” to uniformly label sound marks in the database. The “6” indicates that there is no drawing of the mark because the mark is not perceived visually. Other useful search terms for sound marks are likely to be found in the mark descriptions. A sound mark within a registry may contain an aural element that is not disclosed in the title of the mark but is important to the search result.

Protection in the Global Marketplace

There is no uniformity regarding protection of trademarks consisting of sounds in the global marketplace even though trademarks consisting of sounds have existed for many years. The United States has long recognized sound marks. Although certain sound marks may not be considered inherently distinctive, they may be registrable upon proof of secondary meaning. There is no uniform protection on the international level. Even if permitted by statute, registration of sound marks may be frustrated by the practical difficulties of sufficiently describing such marks to satisfy local Trademark Offices. In view of the inconsistency in protection for sound marks, trademark owners with multinational interests must be wary of adopting such marks, since they will be difficult, if not impossible, to register at foreign trademark offices or protect in the courts of many jurisdictions.

Trade-Related Aspects of Intellectual Property Rights

The World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) requires a uniformity among members as to the extent of intellectual property protection, which extends to protection of sounds that operate as trade marks, but the way in which these provisions are interpreted from jurisdiction to jurisdiction is not uniform.

Dilution of Trademarks

It is often necessary for employers to make confidential information, including trade secrets, accessible to their employees. Employers certainly want to protect trade secrets from leaking to competitors, so they often make employees sign confidentiality agreements as a term of employment. The question is: what happens to trade secret information when an employee is discharged or voluntarily resigns?

The Solicitation of Customers by a Former Employee
A discharged employee who remains in a similar, if not identical, field of business after termination may face potential liability under trade secret law. For example, a former employee might benefit from soliciting the customers from former employment. Whether or not such solicitation constitutes a trade secret violation, when the customer list of a former employer was stored in a confidential file, depends on the accessibility of customer names elsewhere.

The solicitation of customers will probably not constitute a violation of trade secret law if:

A former employee did not copy or memorize the confidential customer files

Employers’ customers were known users of employers’ merchandise

Customers engaged in business at advertised locations

Customer names were readily ascertainable in the trade as likely users of employers’ services

Criminal Penalty for Government Employees
A federal statute imposes a criminal penalty for any United States government employee who discloses trade secret information that is revealed to him during the course of his employment. This means that government employees are obligated to keep the trade secret information confidential. Imposing a penalty for the violation of a trade secret fosters business and, subsequently, the economy, by:

Discouraging government employees from capitalizing on confidential information they become privy to during the course of employment

Arming owners of a trade secret with a sufficient remedy in the case of disloyalty

Copyright Piracy and The NET Act of 1997

Although United States copyright laws originally contained no criminal liability provisions, the 1897 revision to the Copyright Act made it a misdemeanor to unlawfully perform dramatic or musical works for profit. In later revisions, additional sections were added for the infringement of other types of copyrightable works. Although leaving unchanged the one-year imprisonment penalty established in 1897, the Copyright Act of 1976 increased the monetary penalty for copyright infringement from $1,000 to $10,000. Infringement of musical recording and motion pictures was subject to a penalty of $25,000, and repeat offenders could be fined $50,000.

Following the enactment of the 1976 Amendment, it became apparent that the criminal sanctions for copyright law were completely ineffective against large-scale piracy operations, in part this was attributed to the fact that the Justice Department admittedly was unwilling to expend its resources to obtain misdemeanor convictions of copyright infringers. Accordingly, the music recording and motion picture industries convinced Congress to provide felony liability for large-scale copyright infringement, specifically illegal copying of more than 1,000 copies of sound recordings or 65 copies of motion pictures over a 180-day period carries a penalty of up to five years in prison and a $250,000 fine. As in the past, to be criminally liable an infringer was required to act willfully and for commercial advantage or private financial gain.

With the advent of personal computing and the widespread distribution of computers, the copyright landscape continued to change in the 1980s and 1990s. Further facilitating the unauthorized distribution of copyrighted material was that virtually every type of copyrightable work could be digitized–translated into a series of 1’s and 0’s–and could thus be readily copied and transmitted over wire connections. When processed by a computer, these digitized versions resulted in a perfect copy of the original work. In addition, computer software became as desirable a target for piracy as were music and movies. In response to the concerns of the computer software industry, Congress enacted the Copyright Felony Act in 1992, which applied felony liability for large-scale infringement of sound recordings and motion pictures not only to computer software but to all copyrighted works. The Copyright Felony Act also increased felony sanctions and lowered the thresholds for determining what constituted infringement.

After Congress seemed to have covered all the bases regarding large-scale piracy of copyrighted works with the Copyright Felony Act, a student at the Massachusetts Institute of Technology (MIT), operating what might be regarded as a forerunner of Napster and similar music-sharing systems, invited licensees of software products to upload copies of their software onto his electronic bulletin board and invited others to download it. Because the student derived no profit whatever from this activity, he could not be prosecuted under the criminal provisions of the copyright law and, therefore, was prosecuted for wire fraud. A federal district court, however, ruled that the government could not prosecute the student for wire fraud because a copyright was not an ordinary form of property and, thus, interference with a copyright could not be classified as fraud. Moreover, although the conduct constituted a civil violation of copyright law, the court was unwilling to allow a criminal prosecution under the wire fraud statute when the conduct was not a criminal violation of the copyright law.

The aftermath of the MIT student case was the enactment of the No Electronic Theft Act (NET) of 1997, which according to at least one legislator was intended to “plug the loophole” in copyright law made evident by the case. NET modifies the definition of “financial gain” in the Copyright Act to include the receipt or expected receipt of other copyrighted works. In addition, “financial gain” is not a prerequisite to criminal liability, as long as the infringing conduct is willful and the threshold quantity of copying for criminal liability is reached or exceeded. NET also extends the statute of limitations for prosecuting a violation of the Copyright Act to five years, whereas the statute of limitations for civil actions remains at three years. NET also specifically allows victim impact statements to be presented at sentencing in which the scope of economic loss to the victim from the acts of copyright infringement can be described.

NET is understandably popular with the motion picture, music recording and computer software industries but has had its share of critics as well. Those critics point out that, while copyright owners have a legitimate right to protect their interests in their copyrighted works, the provision in the United States Constitution that provides the basis for copyright law states as its objective the promotion of the progress of science and the useful arts and not the rewarding of the labors of the creators of works. Concern has been expressed that, without the requirement of financial gain to find criminal liability, NET will criminalize fair use and other legitimate uses of copyrighted works that facilitate the educational process and the open exchange of information.