February 2009

Patents for Novel Inventions

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. If you have an invention and would like to determine if is patentable, call or email to schedule a meeting with one of our patent attorneys.

Litigating Patents – Re-examination Requests

After a patent is issued by the United States Patent and Trademark Office (USPTO), the discovery of prior art or publications not noticed prior to the patent’s issue may raise questions as to the validity of the issued patent. In such a case, a patentee or a third party may file an application for reexamination of the patent in the USPTO. For a third party, reexamination provides a lower cost alternative to a conventional lawsuit for challenging the validity of a patent. If the third party is an unsuccessful infringement defendant, a reexamination that results in the invalidation of a patent may provide vindication of that defendant’s rights despite the results of the court case. For the patentee, the reexamination process may reveal the need to narrow a patent’s claims in order to be in a better position to fend off a challenge to the patent’s validity. In addition, the USPTO may take it upon itself to reexamine a patent without it being requested by the patentee or a third party. If you feel you have rights that are being infringed, you should consider scheduling a meeting with one of our patent attorneys.

Federal Trademark Dilution

Federal Law protects trademarks from dilution from others. Recent changes to the federal law broadens the rights granted to famous trademarks under the Trademark Act of 1946 (also known as the Lanham Act). It strengthens the protection that famous trademarks are given by prohibiting dilution of the famous trademarks by third parties. To help determine if a Mark is available for protection or to help register your Mark, please contact one of our Trademark Attorneys.

Trade Dress Protections

Trade dress is governed by the same set of laws that protect unregistered trademarks. While traditional trademark law protects words or logos, trade dress law protects the total packaging and design of a product. Because trade dress often serves the same function as a trademark or service mark — the identification of goods and services in the marketplace — trade dress can be protected under the federal trademark laws and in some cases registered as a trademark or service mark with the United States Patent and Trademark Office. If you have questions about this or any other aspect of trademark protection, contact one of our trademark attorneys for more information.

Publication of Copyright Works

Publication was the key to obtaining federal copyright under the Copyright Act of 1909. Publication is still important to copyright owners but it is no longer the key. Publication is defined in the Copyright Act of 1976 as “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. A public performance or display of a work does not of itself constitute publication.”