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December Legal Column |
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INTELLECTUAL PROPERTY PROTECTION - QUESTIONS AND ANSWERS |
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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 jirosenblatt@mindspring.com FOOLS GOLD OR FOOLISH FOR GOLD (continued)? Last month, we took a virtual ride with Christopher Columbus, seeking wealth and fame, but in the parallel world of intellectual property. Perhaps a better word than “virtual,” would be “analogous, to describe a contemporary activity dissimilar on the surface but upon closer inspection, reveal striking similarities with Columbus’ voyage. The subject of last month was protection of the invention while necessarily disclosing its secrets to potential licensees or investors. The patent application was suggested as the better way to protect the inventive subject matter because it established a potential right under federal law to a patent and of more significance, established a priority date for the invention, useful in defending against later claims. The provisional patent application was discussed as inexpensive to prepare and file, while giving the inventor one year to test the market with relative security. This month, the requirements for preparing and filing a provisional patent application are discussed and compared with the relative merits of confidentiality agreements as complementing protection. For many, fearing misappropriation from a putative licensee, the combination of a provisional patent application and an “evaluation” confidentiality agreement would be recommended. To return to Columbus and the parallel universe, the inventor also needs certain protections, before departing into the unknown, where the dangers are random and violent. But first, a review of the basics. A utility patent application is made with the expectation of receiving a full U.S. Patent with all rights under the Patent Law. On the other hand, a provisional patent application is made only to secure for the inventor a one year period of protection for the inventor’s filing date. That means the priority of the inventor for the invention disclosed in the provisional application will be protected from the provisional application filing date, provided the inventor files a utility patent application within one (1) year of the provisional’s filing date and the inventor describes and claims (underlining added for emphasis) the same invention as disclosed in the provisional. By priority is meant the right of a prior inventor against anyone claiming the same invention but unable to prove an earlier date for making the same invention. That’s what is meant by a “later claim.” The priority date is also important in prosecuting a world wide patent application through any international patent office. Going back to Columbus and the systems he believed reliable, in our parallel universe, the reliable systems are the patent application and confidentiality agreement. Where a confidentiality agreement is first choice, the patent application should be considered as reliable complementing protection, especially where the misappropriation of the invention, once disclosed, would not be unlikely. But to return to Columbus, who, being a good mariner, knew how to use his reliable compass and while he possessed other aids such as the astrolabe for measuring the angle of the north star and the ship’s log for measuring speed, he understood their deficiencies and knew he had to rely on his own judgment. Such must be the case with the inventor where he or she only can safely disclose the invention to a potential investor, or licensee, if, in the inventor’s judgment, a suitable remedy is available under the laws of the United States. So You Ask- How Is It Done? By “how is it done,” of course, is meant how does the inventor disclose the invention in a way that takes advantage of the potential of the full protections afforded by the patent application. As Longfellow said, in the “Midnight Ride of Paul Revere,” “Listen my readers and you shall hear.” But first a word of caution. What may serve as an adequate or a minimum disclosure is a matter of judgment, to be made in careful consideration of all of the requirements. In the following, I have attempted to explain these requirements in an overview of the Patent Office Rule’s disclosure basics. The Rules of Disclosure Under Patent Office Rules, the part comprising the disclosure of the invention is called the “Detailed Description of the Invention,” or the “Description of the Invention.” As required by law, it must include drawings where necessary for the understanding of the disclosed invention. Now that we know about “disclosure,” we must confront the dilemma: how little can I disclose in the patent application to limit loss of control over the full details of my invention? This basic question has more than one answer. To explain, imagine that instead of using a patent application to protect inventive rights, the inventor asked a lawyer to prepare an “iron bound” confidentiality agreement. Admittedly, there are advantages to a confidentiality agreement when used with a limited disclosure of technical subject matter. And in our case, using a confidentiality agreement offers the advantages of freeing the inventor from the strict Patent Office rules of disclosure while the inventor is able to disclose as much or as little as he or she wants. However, any minimizing of the description of the invention, most always will invite the prospective investors or licensees, to ask for more of the details. As human nature goes, the inventor is likely to comply with that request, while not taking the time to amend the confidentiality agreement as a record of changes in the disclosed information or what the recipient of the disclosure committed to keep confidential. As it is not uncommon practice for the inventor to incrementally reveal details of the invention as discussions appear to be progressing to a commitment, it becomes necessary for a scribe to run behind the inventor, amending the confidentiality agreement to correctly reflect the then existent facts and commitments. Remember Columbus? His crew wanted a commitment to turn back by a certain date if land was not sighted. Columbus made that promise and at the same time, promised a golden ducat (or something like that), to the first sailor spotting land. The sailors believed him but as the story goes, it was Columbus who claimed to be the first to spot land and claim the golden ducat. As you see, it was a trap for the unwary and it wasn’t from the weather. However, if the sailor’s had invoked the doctrine of sea law or, in our case, if a patent application had been filed, the sailors and the inventor, would have had choices. First, by disclosing the invention in the manner required by Patent Office Rules, the invention would have been described by a written description with explanatory drawings, of sufficient quality to enable “one skilled in the art,” to make and use the invention and which additionally would describe the “best mode for carrying out the invention.” Suffice it to say that “one skilled in the art” is anyone with more or less the same technical background and the “best mode” is the best idea the inventor has at the time for the commercial product using the invention. As would be apparent, making a full disclosure, while distasteful to the inventor as laborious or disclosing too much, has the benefit of placing within the patent application umbrella of protection, the full scope of the inventive concept as should have been disclosed under the Patent Office Rules. Second, a full patent disclosure, does not necessarily mean all of the inventive details be disclosed. Often, the most important details in an inventive concept is what is commonly known as “know how,” an elusive term meaning all of the information important or even crucial to making or operating the invention and which is acquired in working with the invention in its conception or reduction to practice or in its commercial development. I’m sure we all have an idea of what “know how,’ means but just to tie it down, know how could be the knowledge that when two torque nuts are tightened, one of the nuts must be fully torqued before the other, to properly align two inter working parts. There is no requirement to disclose that know how unless required to meet the Patent Office disclosure rules. Third, the disclosure agreement may incorporate by reference the patent application. In the case of the provisional patent application, which does not include the claims to the invention, the contemplated scope of protection is not revealed and the putative licensee who may possess or later acquire a plan for misappropriating the invention, would have no clear idea how to design around the invention or could not know how to avoid investing a sum of money only to find himself or herself, in patent litigation. Fourth, a well written disclosure and confidentiality agreement, intended for the very limited purpose of prospective licensee evaluation, could effectively limit the use of the disclosed information to evaluation only, where any expanded use breaching the “evaluation only,” terms would stand an increased chance for a court’s visibility and prompt remedy. On this point, just a few more words may be useful. Because the Patent Office disclosure rule requires a full description to place the manufacture and use of the invention in the hands of that legal fiction called “one skilled in the art,” and to show the “best mode” for carrying out the invention,” it becomes incumbent on the inventor to not only describe the invention but to identify all of the possible combinations or permutations for the inventive elements (that means the parts of the invention for an apparatus or the steps of the invention for a method) and all possible uses. A patent attorney typically would write a utility application in this way as a matter of course to support as broad an interpretation of the finally allowed claims as possible. However, an inventor making a pro se provisional patent application might easily or conveniently, as the case may be, ignore the disclosure rules, with the result a putative licensee may be more inclined to modify the invention to escape the protective umbrella of the application’s disclosure. Not to gild the lily (that’s from Shakespere and the exact quote will be provided on request), it is important to consider that a careless or less protective disclosure may be made as a matter of choice instead of filing a full and complete invention description, as would be made in preparing a utility application. In these unfortunate circumstances, the inventor may find himself in the unenviable position of watching a prospective licensee, who the inventor thought was legally tied up in the combination of a restrictive confidentiality agreement, and patent application, bring to market a product which is an immaterial variation of the invention disclosed in the provisional patent application and outside the scope of the confidentiality agreement. And that leaves us precisely where we and Columbus started, making our way to the new world or where we believe it should be, but meanwhile still on the deep blue sea. As there must be a lesson in all of this, I will temporarily leave this topic with a few do’s and don’ts, but only as a guide to be used in connection with native skill and judgment. Do prepare a complete disclosure for the invention, as close as possible to the spirit and intent of the Patent Office Rules. Do incorporate that disclosure in a provisional patent application. For a small entity, the Patent Office filing fee is a mere $80. Do prepare as a separate document, and in as much detail as you can, the novel functions or steps of your invention and the elements in the disclosed best mode for carrying out the invention’s functions or steps. Do incorporate the disclosure in the confidentially as a description of what the prospective licensee is confidentially given for evaluation only. As you will be careful and judicious in preparing the disclosure, as I have instructed, you will have included every possible use and application of the disclosed invention, which would extend the coverage and protection given by the non-disclosure and confidentiality agreement. Don’t reveal to anyone except possibly your husband or wife and then only if you expect to remain on good terms, your claims and what you believe is the fully protect able scope of your invention. Don’t allow any prospective licensee to manipulate or advance you to the next step of disclosure without amending the confidentiality agreement to cover what the initial discussions have accomplished, why the parties are proceeding to this next step and the limited and restricted purpose for which the expanded disclosure is given. Don’t give anyone any more information about the invention than what is in the four corners of the provisional patent application or the utility patent application with the claims redacted. And finally and the biggest don’t, when in the process of selling your invention, don’t reveal any of the working know how painfully and laboriously acquired in the process of invention or product development and which may be only trump card left to play when the prospective licensee, after breaching the agreement and failing to develop a commercial product, comes back to the inventor to be shown how to make it work. Next month I’ll cover the elements of a confidentiality agreement and one or two other interesting topics, including more on the new internet “dots.”. |
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Biography |
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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. jirosenblatt@mindspring.com . |
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