June 2008 Summary

Patent attorney Charles Meyer (Woodard, Emhardt, Moriarty, McNett & Henry LLP) led a lively discussion of intellectual property, focusing his insightful and down-to-earth presentation on patents and trademarks. Background Congress may (not must) choose to promote progress of art and technology in the United States by providing us with an intellectual property system (U.S. Constitution article 1, section 8, clause 8). Not all intellectual property contributes to progress, but some, importantly, does. You can protect your creation with a: patent, trademark, copyright, trade secret, agreement (confidentiality and noncompete), license and contract, and litigation. The market, not intellectual property, gives your creation monetary value. If no one will buy your product without intellectual property, they won’t buy your product with it. The main purpose of intellectual property is to protect and enhance your product’s market value. A US patent is a property right in an invention that lets the patent owner, for a limited time, exclude others from making, using, offering for sale, or selling the invention in the US, or from importing it into the US. In order to get a patent for your invention, the invention must be useful and significantly different from publicly known inventions, and you must satisfy other procedural requirements. Remember this: if you want a US patent, you have 1 year from the first public disclosure of your invention to apply for a patent; if you want a patent from almost any other country, you must apply for a patent before the first public disclosure. After that 1 year clock runs out, even the best invention in the world is unpatentable. Help avoid starting that clock too soon by using confidentiality (nondisclosure) agreements to keep your invention confidential as you consult others. [Choose consultants you can trust – disclosure made public cannot be made secret again.] A provisional patent application is a confidential, relatively inexpensive, placeholder for a nonprovisional patent application in the examing queue of a patent office. Products disclosed in a filed provisional application may be marked “patent pending” – a benefit of special interest to those who market and sell products that would become outdated in the market before patent office examination of a nonprovisional application could be completed. A trademark protects words, names, symbols, sounds, or colors that:

• distinguish goods and services from those made or sold by others, and

• indicate the source of the goods and services.

(Similarly, a trade dress protects an established look - a product’s design, product packaging, color, or other distinguishing nonfunctional element of appearance.) The purpose of a trademark is to avoid buyer confusion, to let a buyer easily identify your product. It can be renewed forever as long as it is used in commerce and enforced (but you can lose a trademark word if the word enters common use; ex. Velcro). Trademark rights are acquired by using a trademark, not by registering it with a government (state or U.S.). Registration merely records your rights, and gives them a specific date. If contested in court, the earliest user of a trademark wins. Current Patent Events Our patent system evolves in response to selective pressures. Courts are trying to relieve the pressure of patent litigation by clarifying the meaning of patent statutes. Some large corporations are pressuring our Congress and our courts to give those corporations a competitive advantage in the patent system over the little guy (individual inventors and innovative small/medium businesses). Because the little guy is responsible for most pioneering inventions, acceding to that pressure could decrease U.S. technological progress. And, because the USPTO has more patent applications than it can timely handle, the USPTO is pressuring patent applicants to assume much of its responsibility for issuing strong patents.

• Our Congress has been debating during the last few years whether to pass a patent “reform” bill, but will not do so this year. That bill would decrease the ability of a patent owner to enforce a patent and would grant a patent to an inventor who is the first to file a patent application, rather than to an inventor who is the first to invent the invention.

• The USPTO recently established new rules that would 1) limit the number of applications and number of claims available to an applicant, and 2) impose extra requirements to search for prior art. Judge Cacheris (U. S. District Court, Eastern District of Virginia) ruled in April 2008 that the USPTO does not have the authority to make substantive rules (ex. those that alter the rights of inventors to win patents), and he permanently prohibited enforcement of those rules. The USPTO has filed a notice of appeal in the United States Court of Appeals for the Federal Circuit (see the USPTO appeal brief for Tafas v Dudas).

• The courts have recently changed patent law, and may make more changes soon.

KSR Int'l Co. v. Teleflex Inc. How different from publicly known inventions must your invention be to be patentable? The Supreme Court decided that a patent examiner can reject your claims to an invention if common sense would lead a person of ordinary skill in your technology to make the same invention. This increases the ability of an examiner to prima facie reject claims, because the examiner need not justify the conclusion that an invention results from merely using common sense. [Ortho-McNeil Pharmaceutical v. Mylan Labs seems to say that this common sense standard applies more to predictable than to unpredictable technologies (like pharmaceuticals).] [A patent application by our own Mr. Robert Brand has received attention lately in connection with the KSR v. Teleflex case. Listen to the CAFC appeal, read the decision, and see the response.] eBay Inc. v. MercExchange and NTP v. Research in Motion How do you enforce your patent? By getting a court to issue an injunction to stop an infringer from infringing. An injunction is how the US government enforces your patent right to exclude others from your invention. The Supreme Court changed patent law, saying that a court need not issue an injunction against a proven infringer. To get an injunction, you must now not only prove infringement, but also show that issuing an injunction is in the interest of justice (something that can amount to a popularity contest in court). This change can allow a court to require you to involuntarily license your patent rights, significantly weakening them. In Re Comiskey and In Re Bilski (pending; In Re Bilski Arguments Audio 1, In Re Bilski Arguments Audio 2, Ex parte Bilski) Should business methods and computer programs remain patentable? An abstract idea (ex. a math equation) is not patentable. An idea made useful and physical (ex. a machine) is patentable. What is the difference between the two? Is information just as real as matter and energy? The US Court of Appeals for the Federal Circuit is trying to answer those questions now. Thank you for sharing your insights with us, Mr. Meyer!