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October 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 To Sell Or Not To Sell; That However Is Not The Question. The Question Is Did You, Or Did You Not, Actually Make An Offer Of Sale For those who think my lead is no more than an exercise in the famous lines of Shakespeare, I will show there is more than method to my madness. Rather than lose a kingdom for a horse or suffer the fate of a misplaced message, as in the case of a disappointed reader who found out too late that an invention may be commercially exploited for the limited time of 1 year before filing a patent application, I will provide the last definitive word on what to do to make money with an invention without risking loss of patent rights, which incidentally will be forever and forever. Our inventive reader had an idea for a better way to manage money transactions over the Internet. The invention was in the form of a computer program and in many ways was not too different from the way deposits, check withdrawals and transfers and endorsements are used in commercial banking. In this case however, unlike commercial banking where only the last endorsement is verified, the invention was a system and method of verifying all of the endorsements or authorizations to charge an account or to verify the cash token used by a purchaser is from an authorized charge to a real account. (For your information a One Dollar Federal Reserve Note with the portrait of George Washington, is nothing more than a cash token which we verify by examination to determine if it is counterfeit. If genuine, we accept it on the faith and trust in the Federal Reserve that it was authorized to issue it and it will not be confiscated or declared invalid.) As this invention could have been placed in immediate use in paying for internet purchases or in giving as gifts, our reader inventor carefully prepared an invention disclosure in two (2) originals, each of which she signed as “Invented By” and dated and had a witness who read the disclosure and signed it as “Witnessed and Understood By” and dated. She then took one of the originals and placed in a secure file. She took the other original disclosure, placed it in an enveloped addressed to her and sent it return receipt required, showing its date of mailing and receipt. When she received the disclosure, she took the sealed envelope and the return receipt and placed them in a secure file. All this was done to be able to verify at a later time, the date the invention was conceived and reduced to practice. She then considered filing a provisional patent application to get a filing date but decided she would try to commercialize her invention first to raise some necessary cash and to see if the invention was worth an investment. This was her big mistake. Even though still requiring more development to perfect it for the Internet, our reader offered to license the invention both as an immediately usable program and as a concept with the right to develop it. She now wants to know whether she has compromised any of her rights to a patent. What Was Learned While the invention was timely, useful and would have been profitable, it was no longer patentable, because our inventor has waited more than 1 year after, a) the invention was ready to be filed in a patent application, meaning it could be described in exact terms so that one skilled in the art could make and use the invention, and b) the inventor made a commercial offer of sale of the invention in terms as would be commercially understood as inviting an acceptance and upon that acceptance, uniting with the offer to form a legally binding contract. That our inventor satisfied the first part of the test is clear. She was able to, and did, describe the invention is exact terms so that one skilled in the art could make and use the invention and that was confirmed by her written disclosure and her witness who signed the disclosure as “witnessed and understood.” At that point, she had wide latitude of opportunities she could have used to explore the commercial value of her invention, without risking the loss of her patent rights. For example, she could have discussed her invention with prospective purchasers, while not disclosing it in a printed publication or making any commercial use of it, and retained all of her patent rights, if she did not make a commercially understood offer of sale. However, once having make a commercial offer of sale, her clock started running. It was not the kind of 12 or 24 hour clock we all use in our daily routine but the famous or infamous 1 year clock as known and used in the U.S. Patent Law. I make this distinction because outside of the U.S. and Canada, any public disclosure of the invention renders invalid any right to a patent. In the case of our inventor, she carefully prepared a licensing agreement which she had ready to present and did present several times to prospective purchasers of her invention. All that would have been required was the signature on the dotted line and the commercial transaction would have been complete. She than pursued her marketing program for more than the maximum allowed 1 year period of time (measured from the date of her written disclosure) and so lost her right to a patent in the U.S. What our reader could have or should have done was at the very least file a provisional patent application. For a $80.00 filing fee payable to the US Treasury, and completing the requisite Provisional Patent Application form, available from the US, Patent and Trademark Office Website, she would have confirmed a patent application filing date and then marketed her invention without concern over loss of patent rights. However, her rights would only be to the invention as described in the provisional patent application and only as long as she filed a full utility patent application within 1 year from the filing date of the provisional patent application. Provisional patent applications have their use but are limited to an effective term of 1 year and may not be renewed. Most of us want to make money from our inventions. That requires marketing an inventive product or offering the inventive concept as a whole. Without some kind of patent protection, it is a difficult task, even if the complete inventive concept is not disclosed. However, the U.S. Patent Laws are demanding in requiring no delay in disclosing the benefits of an invention to the public if one expects to receive in return the limited patent monopoly for the disclosed invention. A Final Word About Trademarks Well not really “the final word,” just for this month’s column. Trademarks have always been too much fun to write about to quit. As many know, with the expansion in Internet domain names, a leg up has been offered in the way of a priority of domain name rights for those who have established rights in trademarks intended to be used as the domain names. However, the process is not automatic and in a recent ruling, a federal judge held trademark rights do not by themselves require the trademark holder is given the exclusive rights to the same domain name. .The case was styled Strick Corp. v. Strickland. Strick wanted Strickland enjoined from using strick.com. While Strick was successful in the ICANN arbitration proceeding, Strickland appealed to the U.S. District Court. Relying on the differences in the products, Strickland into computer consulting and software development and Strick into tractor trailer manufacturer, the District Court Judge ruled there was no evidence of confusion of the trademarks because of the differences in the goods associated with each of the trademarks, that consumers of more expensive goods would not be likely to make their respective purchases on the strength of the marks but would rely on the quality of the good or services and accordingly, the registered trademark was not given any priority in the dispute over the similar domain name. . |
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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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