Posts Tagged ‘IP rights’

International Patent Filings

Posted on May 24, 2012 by

Vintage globe

There are well over 140 countries in which you could file patents!

A patent is only valid in the country in which it was filed. If you have a US patent and have an infringer based out of Canada, you won’t be able to stop them with your US patent. (A great example of this is in the RIM/NTP Blackberry patent infringement case – for some of the claims, RIM didn’t infringe because their servers were in Canada). However, since filing patent applications in every single country on the planet gets pretty expensive, you should understand your options for managing costs and making smart filing decisions.


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.


Who really owns that patent?

Posted on March 10, 2012 by

Caution sign

Worried about employee assignment clauses? Maybe you should be. It’s time to take another look at the assignment language used in that template employee agreement you downloaded, since it could significantly affect your rights as an intellectual property holder years from now.

You need to own a patent before you can enforce it against others. In the US, inventors own the rights to their inventions until they explicitly assign the rights to someone else. If your employees don’t assign the rights over to your company, you don’t actually own that key patent. And if you intended to use it as a signal to investors or strategic partners, the first thing they’ll check is whether you own what you say you do. This is because the only way to enforce your patent is through a lawsuit where you request an injunction and/or damages from infringers – but, if not all of the inventors are listed as part of the suit, your case will be summarily dismissed. So, if you can’t gather all the inventors on a patent when you go to litigate, it is essentially unenforceable, and therefore useless. Between the nature of growing companies and the realities of a highly mobile workforce, it’s not uncommon for an employee or even a cofounder who invented key intellectual property to be long gone when a company decides to use that patent. This can be a real issue – especially when a company has invested a significant amount of time, effort, and money into its patents.

There are two ways to deal with this issue. One way is to have each inventor specifically assign the rights to the company after filing any patent applications, which may not be as easy as it sounds. The most common challenge arises when an employee was part of the inventive team but left before the company decided to file the patent application. In other cases, the employee may have (or suddenly develop!) a philosophical aversion to patents and/or start negotiating for additional compensation in exchange for their signature. You can avoid these issues by having employees assign their rights to the company in writing as part of your standard employment agreement. That way, any inventions arising during their employment will automatically be assigned to the company, alleviating any uncertainty.

However, the wording of that assignment needs to be precise – only a slight difference in the wording of an assignment clause in an employment agreement can render it void. The phrase “agrees to and does hereby grant and assign” is wording that will automatically assign an employee’s interest in later developed inventions to the employer. On the other hand, the phrase “agrees to execute any and all assignments or other transfer documents” is just an agreement that the employee will eventually sign the rights over but the phrase defers the actual transfer of rights to some point in the future. If this latter step is never taken, no assignment ever occurs. The distinction is slight, but the results can be disastrous – potentially resulting in an unenforceable patent.


This post co-written by Cynthia Gilbert and Hyperion Law’s Spring 2012 Intern, Kip Bodi. He is currently a third-year evening student at Suffolk University Law School with a concentration in Intellectual Property and Patent Law. He holds an M.S. in Bioinformatics from Boston University and a B.A. in Computer Science from Colgate University.


Prior Use Rights – a double-edged sword

Chess piecesOne interesting aspect to the new patent law is the section relating to prior use rights.


If you are a small company who hits on a great way of doing things but can’t afford to patent it, and someone, years later, gets a patent for that exact same technology and tries to sue you for infringing their patent, you can now defend yourself against infringement with the expanded prior use rights. You couldn’t do this before except in very limited circumstances involving business method patents and the new law has expanded this right. To take advantage of the defense, you yourself have to have been using the invention in commerce for at least a year before the patent holder filed her application – you can’t just assert that “everybody” was using it although you yourself weren’t. If you can do this though, you have a defense to infringement.


Prior use rights is a double-edged sword however. There are two related ways in which misuse of this right can impact companies:
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.


Prior use rights can be an extremely helpful way in which small companies can defend themselves against companies that have more funding and can afford more robust patent portfolios. Unfortunately, as is often the case, there are still ways in which a useful tool can backfire. This is a potentially troubling, and somewhat controversial, aspect of the new law that the industry will be watching with interest.


Frequently Asked Patent Questions

Question-Answer image
Here is a list of the most common questions clients ask me in our first meeting, with links to my posts with detailed responses:

1) Can I get a patent on software and/or business methods? Yes – but the real question is should you?

2) I’ve heard about provisional applications and non-provisional applications; what kind do I need? It depends – on how advanced development is, how soon you’ll be discussing the innovation in non-confidential settings, and how well funded your company is.

3) When do I need to file an application? Timing really does matter and the answer is often as soon as possible.

4) Is it expensive? Definitely. It also takes a number of years to get an issued patent. This means it’s extremely important to determine whether your company would benefit from investing in a patent application – before you file.


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A “Twitterview”

Posted on June 1, 2011 by

"Microphone with 'On Air' light" 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!


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Thoughts on Trademarks in the 21st Century

Posted on May 21, 2011 by

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!


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Is it really OK to continue?

Posted on May 18, 2011 by

How toNo 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!

But if you care about what other people can do with what you upload, you really need to understand those terms of service. This is especially important if you are a professional with a business interest in your data – a photographer posting photos to Twitter where his followers can give real-time feedback, or a musician sharing a new music video with her Facebook fans. An example of why reading the terms is so important came up on May 10 when Twitpic changed their terms of service, helping themselves to a lot more of your rights.

The new terms require that users let Twitpic give “affiliates” the rights to use, distribute, make derivative works, and reproduce an uploaded item, for free, forever, without asking the users. Now, a musician might be okay with letting Twitpic use her song in an ad for the service without paying her – could be great PR and a fair exchange for the benefit the musician gets from the service. But what’s this affiliate business? There’s no definition of affiliate so it could be anybody. Is it Twitpic’s employees, vendors, favorite news organizations? A company they do business with – perhaps a big search engine, social network, or computer company? A competitor of mine who also uses the service? Is it anyone I think ought to be paying me for the right to play that song? Doesn’t matter – by uploading the song, I’ve given Twitpic the right to decide for me who else gets free access to my song. Of course, I’m still the copyright holder, and I can still offer a license to the song to other people I approve of – but why should they pay me when they could just ask Twitpic for a free license?

These terms are not unusual – and courts have held that these kinds of click-ok-to-agree contracts are actually binding. If you create media and consider yourself a professional with any level of business interest in what you create, it’s really important to evaluate what media you share on-line and what the terms of service mean for you professionally. Decide what you’re ok with *before* continuing!


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Anatomy of a Patent Application

Posted on May 11, 2011 by

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.


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Believe it or not: Amazon 1-click Patent Shows System Works

Posted on April 26, 2011 by

Keyboard button with the word "learn" on itFew 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.


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Making Sense of Patent Claims

Posted on March 19, 2011 by

Keyboard button with the word "learn" on itIn 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:Method Claim diagram


Next time, we’ll look another common type of claim, the system claim.


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