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Posts Tagged ‘IP rights’
The PCT application is one tool to preserve your options affordably. Over 140 countries have signed a treaty to cooperate with each other on patent filings and make it easier for their citizens to protect inventions abroad. Applications filed in accordance with the treaty are known as Patent Cooperation Treaty Applications (“PCT apps”). If you live in one of those 140 countries (which you probably do, since they include most of North and South America, most of Europe, Australia, and most of the Asias), you have one year from the date on which you file an application in your home country to file a PCT application, which gives you 18 more months to decide in which of those 140 other countries you’re going to file your application. At the time that you file an application in your home country, and even a year later, it’s often way too early to know whether the product or feature incorporating the invention is going to be successful enough to warrant international patent protection. Therefore, most companies decide to file the PCT application and preserve the option to file internationally.
At 30 months from the original filing, you have to make your final decision about where to file – no extensions. At this point, look to revenue, client base, and competitor locations to make your filing decisions. Got a huge client base in Europe, 90% of revenue coming from Singapore, an Australian investor that wants you to expand in Southeast Asia, or a big competitor in Canada? Those are all signs that you may need to invest in filing patents in those countries or regions. On the other hand, if you’re still boot-strapping the company, haven’t got much revenue anywhere outside your home country, or have an extremely country-specific technology, you might decide against making the investment. As with most patent-related decisions, look to your business objectives for guidance, consult with your attorney, and make the best decision possible given the resources available.
One interesting aspect to the new patent law is the section relating to prior use rights.
1) “Stealth Prior Art” – A competitor can invent technology, keep it a trade secret, and then later prevent a patent holder from enforcing a patent by showing that the competitor used the technology in commerce before the patent holder filed for the patent. In this way, the competitor acts as “stealth prior art” – no one knew how their technology worked or that they were using it in this way, the market wasn’t benefiting from having knowledge about this technology, and when a party that actually did disclose the technology to the public tries to enforce their patent, they are now faced with this secret prior use that weakens the utility of their patent, at least as to the stealth competitor. There’s something unsavory about the potential for abuse in this type of scenario. For a more detailed discussion of the ways in which prior use rights can be misused, you should check out IP Watchdog’s series of articles on this topic.
2) Pressure to file earlier – one clear way to deal with the possibility of stealth competition is to file as soon as you possibly can, which puts more pressure on already-constrained patent budgets.
Here is a list of the most common questions clients ask me in our first meeting, with links to my posts with detailed responses:
So, I had my first “Twitterview” yesterday. Until a few weeks ago, it hadn’t occurred to me that you might use Twitter to interview people. Then I got introduced to @22Twts and The Godard Group, where they do exactly that. They send you the questions a few hours in advance and then you respond to 22 tweeted questions.
Now that I think about it, this is brilliant. It’s a fun challenge for the lawyer – you only get 140 characters to respond to really interesting questions! – and a fun way for Twitter users to get to know the lawyer. Here are some of my favorite questions (and corresponding answers) from the interview:
Q: What would you say is the single most important legal issue affecting clients?
A: Understanding case law’s impact on software #patents & how to draft claims satisfying legal reqs while remaining useful to business
Q: How do you describe what you do to people you meet at a cocktail party?
A: “I help companies protect their world-changing technology via strategic use of IP. And run a radically different law firm to do so.”
Q: What would you do if you weren’t a lawyer?
A: An astrophysicist or an anthropologist. Or maybe an anthropologist who studies humanity’s obsession with the universe
You can see a transcript of the entire exchange here. And thanks again to Lance Godard and @22Twts for this opportunity!
I have been thinking a lot about trademarks recently, having just attended the INTA (International Trademark Association) annual meeting. As a small business entrepreneur myself, I’ve invested a lot in my own trademark and branding, and this issue is frequently on the minds of my clients. Now that I’m back, and with trademark law on the brain, I thought I’d share some of the highlights I learned about trademarks last week.
Lesson #1 – When enforcing your ownership of your trademark, find creative solutions that won’t accidentally alienate your customers and fans. When lawyers from BP tried to get a tweeter critiquing BP’s handling of the oil spill to stop using “BP” in the handle, it created a huge backlash and actually swelled the numbers of people following the tweeter. There wasn’t anything inappropriate about BP’s request – they have to be sure that the “BP” mark is well defended – but an angry cease and desist letter created a big PR nightmare.
Lesson #2 – Software and virtual world brand owners need to figure out their position on trademarks. I think if you’re a large cola company or a famous burger seller or a well known sneaker maker, you’re very accustomed to having to watch out for other people trying to sell goods under your name. But what if you sell virtual shoes in a virtual world, or create virtual restaurants so cool that avatars pay to hang out there? As these virtual good entrepreneurs build out their revenue-generating virtual businesses, they will begin to care about knock-offs, such as spam-generating, virus-laden virtual goods going out under their same product name. For those virtual good entrepreneurs: If sorting out your trademark policy isn’t already on your radar screen, it should be!
Lesson #3 – The Internet can actually be a trademark owner’s friend. When traditional trademark owners think of the Internet and social media, I suspect they think of the headaches – of new venues in which they have to police the use of their brands, of new ways people can generate knock-offs. But companies can benefit from embracing these technologies in developing their brands – their participation on fan pages and micro-blogging sites becomes a meaningful contribution to their brand image. There are plenty of good examples of ‘normal’, well-established companies embracing these technologies to really engage with their customers. We are moving to a world where regardless of industry, nearly every brand has an on-line presence and reputation. Reach out to social media/community management experts – and keep your trademark lawyer in the loop!
Trademark gurus (and I’m looking at you, @balmatlaw and @massiplaw!), I’d love to hear your thoughts on these and other trademark issues for brand managers. Please comment below or send us links to sites where we can learn more!
No one, not even an off-duty lawyer, enjoys wading through onerous, boring, never-ending fine print. Especially not when all that stands between them and sharing their favorite music, art, or other media with friends and fans is clicking on one little “ok” button!
We’ve previously looked at the anatomy of different types of patent claims. But, like the claims, the application itself is also not as intuitive to read as we might wish. So let’s take a look at the anatomy of a typical software patent application.
Few patents have inspired as much confusion, horror or even revulsion as the infamous Amazon “1-click” patent. This patent covers the ability to send a purchaser identifier and a request to order an item to a server, in response to only a single action being performed by a client. I often hear about how ridiculous it is to allow a patent on buying something with one click and how offensive it is that Amazon actually enforced the patent. While there are plenty of ridiculous patents, and plenty of companies taking advantage of the system in truly lamentable ways, there are two big reasons why the 1-click patent is actually proof of our patent system doing the right thing.
Do you remember the Internet in the fall of 1997? We’d barely had search engines for two years, Google hadn’t yet incorporated, and we were just starting to learn about MP3s. This was an era before dancing hamsters and rickrolling, and only a minority of companies had any web presence to speak of. If you approach the idea of 1-click from the perspective of someone trying to shop on-line via dial-up back in ’97, it starts to sound pretty revolutionary. Most sites required many steps to complete a transaction, intentionally modeled after brick and mortar stores with shopping cart interfaces mimicking real-world shopping experiences. So Amazon’s approach passes a litmus test of patentable material – that the patented idea was truly new.
Secondly, Amazon used their patent in a very innovation-friendly manner. Throughout history, patents have played a vital role in helping a new innovator gain a toehold against established ways of doing business. The Amazon patent issued in September 1999; e-commerce was just starting to gain traction, competition amongst e-retailers was intense, and Christmas was coming. In October 1999, Amazon sued Barnes & Noble and overcame B&N’s arguments to convince a court that there was a real question about infringement that B&N had to remove or modify their “Express Lane” feature. Regardless of how the case would go, Amazon was able to keep B&N from capturing all those holiday shoppers who were just starting to figure out they could do their shopping on-line. This is a case where a patent gave a forward thinking, innovative “David” a fighting chance against a “Goliath” – a Goliath doing everything it could to imitate, not innovate.
There’s no denying that there’s a lot to fix about the patent system – the Patent Office needs funding to hire and retain better-trained Examiners and to eliminate the current backlog; the patent term for software patents could stand to be shortened significantly. But just as important as the nay-saying is to focus on the times when the system does exactly what it’s supposed to do – promote progress.
In a patent, the claims define what that patent actually protects. Claims are the moral equivalent to the property description and plot plan in a real estate transaction that specify the boundaries of a parcel of land – to truly understand what intellectual property is actually covered in an issued patent, you must look to the claims.
To the uninitiated, many patents in the same subject area look and feel the same, and it can be difficult to tell what exactly a patent covers and what it doesn’t cover. Whether you’re a start-up founder, a business lawyer working at a tech company, a software engineer, or really anyone working in an innovative area of technology, reading a patent can be a frustrating experience. However, understanding the layout of a typical claim can help make reading them more manageable.
The first thing to know is that the claims are found in the very back of the patent. Anything you read in the abstract or in the main body of the patent may or may not actually be a protected part of the patent. This main body, also called the specification, is supposed to inform the reader about the subject matter and provide details about making or using the overall invention. So the first thing to do when reading a patent is to flip to the very last few pages where the numbered claims are listed.
Patent-ese is like a computer programming language. And, as with most programming languages, it looks weird or just plain wrong if you’re trying to read it as if it was actually English. Let’s take a look at the anatomy of a method claim, a common type of claim:
Next time, we’ll look another common type of claim, the system claim.