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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@earthlink.net
The History Channel - Where the past comes alive
That’s where “the past comes alive,” as Roger Mudd, the TV host repeats the program slogan. (For those interactive types who think they know more than the attorney and think of themselves as trademark specialists, there is a small trademark challenge at the end of this article.)
While intellectual property attorneys and especially patent attorneys are usually forward looking and progressive types, dependent on the unpredictable synergy between change, progress and innovation (remember, evolution is continuous and necessity is the mother of . . .), the patent attorney looking forward to the next invention, looks back in defense against the revelations of the past. A good reason is the history of inventions is fully recorded in patent or other publications, fully open to the public and which may include patents or other documents showing our invention was first made by another inventor or the invention was published more then one year prior to our inventor filing a provisional or full utility patent application for the invention. The attorney can reasonably address these concerns by a competent prior art search. However, another concern, to an extent out of the attorney’s control or perhaps, influence, is the inventor’s private documented history of the invention and its evidentiary value in an interparty litigation involving priority of invention.
A contest of priority usually is by an Interference proceeding, where the patent is awarded to the inventor able to prove by “admissible evidence,” that he or she was the first inventor. In the U.S. Patent & Trademark Office, nothing happens except as authorized by the Patent Statues 35 U.S. Code, or by the Regulations 37CFR written under the authority of the Code and providing rules of practice to implement the Code. In the case of disputatious inventors, nobody knows who were the first two or more inventors to appear at the Patent Office, each claiming to be the rightful owner of the claimed invention, but the two cases which remain the most known are the cases involving Bell and the telephone and the Wrights and Curtis and the airplane.
But first, a little background in litigation and particularly in the rules of evidence. “Admissible evidence,” is a legal term which means facts which are provable according to the rules of evidence and probative of the conclusion asserted. That’s the standard applied in any legal proceeding, wherein the parties are required to demonstrate their respective claims by record based facts connected by acceptable logic to the alleged conclusion. The production of admissible evidence is illustrated by the contention interrogatory “Describe all of the facts on which you depend to prove your allegation the claims of Patent xxx are infringed by the abc process.”
Interference, like “admissible evidence,” is a legal term, but arises out of the Patent Statues, has a definite indisputable meaning, and must be followed, as explicitly stated. In contrast to prosecution of a patent application which is ex parte, meaning there is no adversary as the applicant is merely petitioning the Patent Office for the grant of a patent, an interference is inter parte and an adversary proceeding in its full legal meaning. The interference process examines the priority of the respective claimed inventions to determine the answer to the one question: which patent applicant was the first to invent.
As I said, an interference is a full legal proceeding, involving the testimony of witnesses, real evidence, and most important, documents as in “invention disclosure.” Used as a term of art, an invention disclosure is any document record of the invention, signed and dated by the inventor, describing the invention as claimed, but only in sufficient terms for one skilled in the art to understand the invention and countersigned by that “person skilled in the art,” as “witnessed and understood.” The value of the invention disclosure is best seen in the context of an Interference.
Now for the “admissible evidence part. Remember, an interference is a litigation, but the trial is held before the Patent Office Board of Interferences, with transcribed recorded testimony instead of live witnesses. However, the Federal Rules of Evidence prevail and objections made during the taking of testimony may be raised at the hearing to exclude inadmissible evidence. Enter the invention disclosure showing in a single document, signed by the inventor and a witness, and offered to corroborate the facts testified to by the inventor as to the date of the invention and that this inventor invented first. If admissible under the Federal Rules, our inventor is able to demonstrate by a preponderance of evidence, the earliest date of invention and takes the patent.
Having established the unique value of an invention disclosure in establishing an indisputable right to a patent as the first to invent, will the Board of Interferences consider it over the objections of the interference opponent? Follow closely and you see how to do a proper invention disclosure which can be resistant to, but not necessarily immune to, evidentiary objections. To be admissible, the invention disclosure must be authenticated as actually being what it is alleged to be. That means the inventor proponent must testify that the disclosure is his writing. That may sound easy but does require some precise questions and correct answers before a judge or the Board will agree. I am happy to report that patent attorneys and their inventor, currently are held in high esteem but that wasn’t always the case. It wasn’t so very long ago, during a time when many of the patent practitioners were not attorneys at law but only patent agents and not bound by Bar rules of ethics, that inventors were held in suspicion and patent practitioners were viewed as their willing accomplices. The reason was the temptation to falsify technical documents, usually produced in the privacy of the lab or workshop, and outside a regular and audited business record system for indelibly and systematically recording record facts. So, when an inventor and his attorney conveniently produced the decisive invention disclosure, there was always the suspicion it was a fake.
Today, while all documents and other records may be viewed with suspicion, perhaps the inventor and his patent attorney are less so viewed, but only where the inventor, with the advice of his patent attorney, has taken care in producing an invention disclosure that on its face, is in a form which has the necessary indicia of authenticity and truthfulness. This “authentic” appearance may be accomplished in a number of ways, principally by requiring all development work which may produce an invention, be recorded in a bound lab notebook, with lined and numbered pages, to discourage erasures, or page deletions or insertions, and with instructions to fill each page, using lines where necessary to fill any blank spaces.
But what about the casual inventor, outside of the industrial or laboratory setting, with the occasional idea committed to blank sheets of paper? Fortunately, what may be authentic is a matter of judgment and not subject to a strict rule. Any record, offered as proof of invention, may be admitted as authentic if it bears sufficient indicia of authenticity. Accordingly, the signature of the inventor is not enough. A witness’ signature is required and that witness should be prepared to testify as to the authenticity of the signature and to the document signed. But what if the inventor and the witness are testifying to a forged document, forged as to date, or signature or content. To assist the patent attorney in her struggles to convince the Board, the invention disclosure is the real McCoy and not a forgery, help is provided from an unexpected source, the U.S. Post Office and its first class prepaid, certified - return receipt, mail system.
Imaging watching the inventor testifying to the date of her invention and then producing a self addressed sealed first class certified mail envelope with the return receipt dated within a few days of the alleged invention date, and then with the judge’s permission, opening it and producing the dated and witnessed original invention disclosure. As we hear said in the legal profession, that’s compelling evidence and should be incentive for all inventors to properly prepare an invention disclosure.
As promised, here is the trademark challenge. To those who regularly read this column, first, is the slogan “The history channel - where the past comes alive,” protect able as a trademark or service mark and second, would the trademark examiner require any part of the slogan disclaimed before approving the mark for publication? No, the answer does not depend on the type of associated goods or services, used in commerce with the mark. Anyone wanting my answer can send their conclusion and reasons, in an email.
For next month, the article will be on Copyrighting
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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@earthlink.net . |
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