|
By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jrosenblatt@cfl.rr.com
The Art of Self Defense - deja vu
This month, I chose to write about Defensive Publications, a topic that, in the world of intellectual property ebbs and flows, not with the regularity of the tide, but rather by the occasional surge. But as the past is prologue, first a bit of history. Back in the old days of finely written patent applications, prepared with an astonishing regard for a level of detail encouraged by a system then used for calculating legal fees, the cost and time to prepare a patent application, was beyond what was considered a reasonable business cost. Patent practitioners had a formula of $30 per page of specification and $45 per page of claims. Some firms may have charged more and some less, but that was about average for a midtown New York patent firm in the late ‘60's. Those were the days when the overhead could be paid by writing pages of multiple claims never destined to go anywhere except to the cancellation file. It was not unlike a medical practice lucky enough to have a patient with unlimited medical insurance, and with any treatment paid in full, no questions asked. However, faced with mounting patent bills, the larger companies did what they could to control costs, by staffing in-house patent departments intended for the sole purpose of producing patent applications and thereby circumventing the formula based law firms.
IBM, known by all as a very big patent player and being the innovator that is was, and perhaps continues to be, had the bright idea of a defensive publication. The IBM process was to require disclosure of all and any inventions on an IBM “Disclosure Form.” IBM provided an incentive for disclosing “inventions,” so there was no shortage of disclosures. The patent committees charged with invention evaluation, discarded many of the ideas, as not worth the cost of the application. Then, one bright patent attorney asked, “What if our competitors (and to IBM at that time, every one was a competitor), get a patent on the same idea that was discarded. Then IBM might be forced to pay royalties on, or even worse, be enjoined from, using an idea it had developed first but was first patented by someone else.
The solution was the IBM disclosure publications (books) comprising a regular printing of the discarded ideas as presented to the IBM patent committees. However, to protect IBM from an interloper patentee claiming IBM's invention, the publications had to be a "printed," as required by the words of 35 U.S.C. 102(a), which would absolutely bar patenting any invention described in a printed publication before the date of invention by the interloper inventor. It is interesting that the “printed” publication carries great weight. because the “printing” carries the presumption of public knowledge that is necessary to extinguish the consideration of new knowledge given to the public, and required before the limited monopoly of a patent can be granted.
The IBM solution then was to take these massive books of its printed disclosures (I think they were printed monthly) and send them to the patent office, where publication, with emphasis on the “public,” was undisputed. It was then the practice of the examiners to tear out disclosure pages that might be useful in searching the prior art in their respective field. However, as these ideas were discards to begin with, not many were selected and when I was an examiner, I never saw much use for them. However, it was more than likely, IBM kept a team of classifiers busy, indexing and cross indexing each printed disclosure to defend against an interloper who IBM knew would try someday to patent IBM inventions and then IBM would be ready.
The point of all this is that once again, as may have been the case for IBM, the cost of, and time required for, preparing a patent application has discouraged many inventors from pursuing full patent protection or from using the patent application (now published by the U.S. Patent & Trademark Office in about 18 months from filing date) as a full defensive disclosure. However, given that this may be the case, there may be a solution which relies on the Internet for establishing the level of “public knowledge” necessary to satisfy the 102(b) publication standard. One such Internet web site: IP.COM, will place an invention disclosure on its web site for a fee but its attraction to the public may really be the quantity of technology available for would be searchers. That leads us to the "printed," and to my knowledge, no one has said information available on the Internet is not printed and public. I recommend viewing the web site, if just for the pleasure of reading its legal contact.
the cost of a patent application should not be an unreasonable bar to the patent process; there are ways an inventor can reduce the costs of a patent application without sacrificing patent claim protection
But back to the patent application; because of the public benefit accruing to the public from a published patent application, the cost of producing one should not be an unreasonable bar to the patent process and there are methods for reducing the patent application costs without sacrificing patent claim protection. As a first step, the inventor should begin by preparing a full disclosure of the invention, including a statement of what the invention does that the prior art cannot. That will serve as an introduction of what particular features in the disclosure will be important and identify where in the disclosure, the attorney may look for the inventive parts, combinations of parts, or new functions or steps. This part takes on more importance in “business systems,” where the computer hardware or software technology is old and only the “new functions” performed by the computer are patentable.
Second, the inventor should state in a series of short paragraphs, what it is he or she believes is the invention. This information will assist the attorney in starting on the claims preparation. Many attorneys prefer to write the claims first, bringing into the claim the working environment of the invention and thereby adding to the claims unique subject matter. Third, the attorney will be greatly assisted by as full and complete a disclosure of the invention as can be accomplished with emphasis on the drawings used with the specification to explain to one skilled in the art, how to make and use the invention. Usually, the attorney will advise the inventor about revisions or additions. In the case of the drawings, it is best to provide drawings made to Patent Office specifications and with enough room in the drawings for the attorney to add the lead lines and numerals used to identify the parts described in the specification.
The purpose of following these rules is to reduce attorney time in preparation of the application and so, its cost. It would also make the application preparation easier for the attorney and contribute to making the inventor a favored client. Of course, the actual cost an attorney might charge varies and even with the right kind of preparation, the cost of an application will vary with the technology, its complexity and whether the invention is in an old or crowded art where special attention to detail is required to avoid the encroaching prior art. In any event, a target upper figure of about $5,000 would seem to provide enough attorney time for most applications with many capable of being done for considerably less. Of course, there is always the very advanced, or complex invention or the vague disclosure, requiring extra attorney time.
So next time you bring an invention to a patent attorney, by all means do a complete disclosure first and if you don’t know how, ask the attorney.
A Short Word About Copyright Licensing Agreements
“Licensing Agreement” is another word for “contract,” and while Copyright is federal law, for contracts, the agreement is controlled by state law and to an attorney defending your rights, that would be a big difference.
We all know about a written contract, where the express terms needed to resolve any dispute might be easily found in the document. That however may be easier said than done. While a written contract is better than an oral one, both forms of contacts, when express and unambiguous, are enforceable. But what about an agreement where the parties never expressly agree to anything but may by their actions, however, imply a contract in fact. This kind of implied contract should not be confused with a situation arising between two parties without any contract, express or implied, but where one party is so unjustly enriched at the expense of another, that the court will find a quasi contract or contract implied in law ((not fact as above), and the unjustly enriched party will be ordered to reasonably compensate the party plaintiff, in this case doing the enriching..
What has all this to do with licensing agreements? The answer is a lot if you are dealing with the entertainment field and agreements made for the purpose of licensing copyright. You may remember a copyright is the exclusive right to reproduce, modify, transfer, display or perform or use, a copyrighted work. Ownership can be separated for each of these individual rights but exclusive ownership in any one right cannot be shared. That’s why its called “exclusive ownership.” For an license agreement of an exclusive right, the Copyright Law requires the conveyance to be in writing, and like all well written contracts, should be in express terms. However, not all license agreements are exclusive and it is where the parties by their actions, other than word or deed, and without expressly committing, do enough for a court of law to find the conduct of the parties implied a contact in fact. So, be careful when negotiating and signing agreements for copyright rights, especially in the entertainment field.
Next month it will be Trademark infringement, where the possibility of doing battle with a “famous” trademark or the prospect of actual damages, could easily force a putative infringer into a quick but costly settlement.
|
|
Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jrosenblatt@cfl.rr.com . |
|
