Trade Dress and the Functionality Doctrine

By on December 22, 2014
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The Fourth Circuit in McAirlaids Inc. v. Kimberly-Clark Corp., held this year that ownership of a utility patent does not necessarily preclude a claim in trade dress rights, particularly where the patent does not specifically cover the asserted trade dress.

This decision is of importance as it reviewed the Supreme Court’s holding in TrafFix Devices, Inc. v. Marketing Displays, Inc., stating that the presence of a utility patent is strong evidence of functionality, thus defeating a trade dress claim.

McAirlaids filed suit in the Western District of Virginia against Kimberly-Clark for trade dress infringement and unfair competition after Kimberly-Clark started using a similar pattern on one of its products.

The Fourth Circuit reversed the district court’s decision granting summary judgment after it found that McAirlaids had presented sufficient evidence to create genuine factual question as to whether its selection of pattern was purely an aesthetic choice among other options the company had considered.

The Circuit Court held that the existence of a utility patent is only one of several factors that the district court should have considered in evaluating the functionality of the dot pattern. Unlike TrafFix, where the dual-spring mechanism at issue was not registered as a trade dress, in the present case the pinpoint dot pattern allegedly infringed was subject to trade dress federal registration, thus shifting the burden to defendant to show functionality by preponderance of evidence.  Another distinguishable element is that the utility patent held by McAirlaids does not mention the specific dot pattern as a protected feature.

This latest decision on the subject shows that the crossroads of trademarks and patents are as interesting as ever, and that many different factors may ultimately determine the fate of a trade dress.

Filed under Patent, Trade Dress, Unfair Competition

Not Licensed To Ill: Why Your Corporate Marketing Employees Need Training on IP Licensing

By on December 15, 2014
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The case, Beastie Boys et al v. Monster Energy Co, U.S. District Court, Southern District of New York, No. 12-06065 addressed the circumstances under which a corporate defendant can be held liable for acts of willful copyright infringement committed by its employees within the scope of their employment or for its benefit. In a Dec. 4 decision, U.S. District Judge Paul Engelmayer refused to throw out Beastie Boys’ $1.7 million jury verdict against Monster Beverage Corp over the energy drink company’s use of the hip-hop group’s music in a promotional video without permission.

IP BLOG_monster energyThat decision noted that the jury listened to testimony from the employee of Monster who prepared the offending video, where he admitted that he lacked any training in music licensing. Nevertheless, the Monster employee also testified he previously produced a dozen similar “recap” videos for Monster. In those earlier videos, the employee testified that he did contact the artists to seek permission to use the respective artists’ music. The Monster employee was therefore familiar with the process of seeking authorization. Notwithstanding this awareness, the Monster employee did not seek permission from the Beastie Boys or their manager to use their music, nor did he believe that anyone else at Monster had done so. Judge Englemayer held that the jury could thereby determine that the Monster employee acted in reckless disregard of the Beastie Boys rights when using the Beastie Boys’ music without authorization in the promotional video.

Judge Engelmayer’s decision concludes with the observation that “[a]s the Beastie Boys’ counsel noted in closing argument, Monster, at the time, did not perform any training of employees related to the use of copyrighted or trademarked content; it therefore left [the Monster employee] to his own devices in producing the video.” One must ask how Monster’s absence of music licensing training to its employees would have made any difference in this case, given the employee’s prior experience with, and habit of obtaining required authorization from the artists. The answer is simple: A corporate training program must implement compliance policies and procedures for requesting and securing material subject to license, with a direct report to corporate officers tasked with compliance.

The take away here is that the preparation of the offending video fell within the employee’s scope of work, for which no training was received, and his misdeeds were imputed to his employer. As noted in the decision, where the defendant is a corporation, it can be held liable for acts of willful infringement committed by its employees within the scope of their employment or for its benefit. See Sygma Photo News, Inc. v. High Soc. Magazine, Inc., 778 F.2d 89, 92 (2d Cir. 1985) (citing Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 308–09 (2d Cir. 1963)) (“All persons and corporations who participate in, exercise control over, or benefit from the infringement are jointly and severally liable as copyright infringers.”); Arista Records LLC v. Lime Grp. LLC, 784 F. Supp. 2d 398, 437 (S.D.N.Y. 2011) (same). “[A]n employer is responsible for copyright infringement committed by an employee in the course of employment, under the normal agency rule of respondeat superior.” U.S. Media Corp. v. Edde Enter., Inc., No. 94 Civ. 4849 (MBM)

Image courtesy of Flickr by Mike Mozart

Filed under Copyright, Copyright Infringement

A Functional Claim Language Warning From the Federal Circuit

By on October 22, 2014
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While at times commonplace in the patent prosecution world, the U.S. Court of Appeals for the Federal Circuit (CAFC) recently sent a harsh reminder to applicants regarding use of claim language that could be construed as functional.

In Oct. 14’s Bosch, LLC v. Snap-On Inc., the court held that “program recognition device” and “program loading device” were means-plus-function terms requiring the corresponding structure to be described in the specification.  This continues a recent CAFC trend to broadly construe certain functional claims terms under 35 U.S.C. §112, ¶ 6. (See Superior Industries v. Masaba where then-CAFC Chief Judge Randall Rader, in a concurring opinion, set forth that “a system claim generally covers what the system is, not what the system does” with reference to commonly used terms such as “configured”)

While functional claim language is permissible, its use generally is employed carefully and in limited situations.  This is because adoption of functional language can remove a claim from its broadest reasonable interpretation to limiting claim scope to corresponding structure in the specification directed toward the functional claim language.  This is significant at least because it provides competitors’ options to design around and clear avenues to invalidate a patent based on insufficiently described structure.

That is exactly what happened in Bosch, a patent infringement lawsuit where the patentee of U.S. Pat. No. 6,782,313 (the ’313 patent) claimed a diagnostic tester that analyzed whether a control system in a car needed reprogramming.  The claimed tester comprised “a program recognition device” and “a program loading device.”  Unfortunately, the claim itself lacked any further structural limitations as to either “a program recognition device” and “a program loading device.”   This was a problem such that these terms were found to invoke 35 U.S.C. §112, ¶ 6 because the defendant was able to show that no corresponding structure was in fact disclosed.

While conventional terms such as “means for” or “steps for” weren’t used in the claims, the court did discuss whether simple use of the word “means” was enough to invoke §112, ¶ 6 holding that this alone was insufficient to invoke the presumption.  However, this can be overcome if it is demonstrated “that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.”

In fact, there were no figures in the ’313 patent.  The patentee argued that plain language of the terms “program recognition device” and “program loading device” sufficiently described physical structures with physical connections to other components that were described in the ’313 patent.  While describing how a feature interconnects or interacts with other components is useful, in actuality it was likely dispositive that the specification failed to provide even a single reference to structure for either of “program recognition device” or “program loading device.”  Moreover, the patentee was unable to cure these deficiencies through expert statements during trial.

Accordingly, these two terms failed to provide sufficiently definite structure.  Further, because no structure was sufficiently provided in the specification, the claims were held invalid.

The lessons here are clear.  First, Bosch reinforces the principle that functional claim language should be used with the utmost care.  Typically, functional language is recognized in means/steps for claim terms.  But with this recent upturn in additional language invoking “means-plus-function” claim construction rules, applicants have no choice but to err on the side of caution and adopt language directed towards structural features versus functional language where possible.  Doing so will avoid unfortunate and narrowing §112, ¶ 6 claim constructions later on.  If the applicant in Bosch had included even one structural limitation in its independent claim, that may have been enough to avoid §112, ¶ 6 and ultimately a defense of invalidity.

To that end, practitioners must be certain that all claimed structure is sufficiently disclosed in the application at the time of filing.  For example, if the applicant here had included just one figure illustrating “a program recognition device” or “program loading device” in some level of detail, §112, ¶ 6 or invalidity could have been avoided.  While functional claim language may be necessary to overcome an art reference during prosecution, Bosch is a reminder that the rules of claim drafting are always changing.  Unfortunately, one cannot predict whether the terms that may be acceptable today will elicit functional suspicions tomorrow.  At a minimum, all known structure related to claim elements should be described in the specification.  Providing this level of detail in an application drafting will cure the sting of a particular claim feature being construed as a functional term during enforcement since sufficient structure to correspond to the claimed feature will be available as a fallback (in the event a term is found to invoke §112, ¶ 6).

Filed under Claim Drafting, Federal Circuit, Functional Claim Language, Means-Plus-Function, Patent Prosecution

Motion to Compel Arbitration Denied Since Barnes & Noble Didn’t Provide Reasonable Notice of Terms of Use

By on October 10, 2014
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On August 18, 2014, the Ninth U.S. Circuit Court of Appeals published its opinion in Nguyen v. Barnes & Noble, Inc. affirming the trial court’s denial of Barnes & Noble’s motion to compel arbitration pursuant to the terms of use (TOU) on the Barnes & Noble website.  The court found that the TOU were part of a “browsewrap” agreement, where the website’s terms and conditions of use were generally posted on the website via a hyperlink at the bottom of the screen.

The court explained, “Unlike a clickwrap agreement, a browsewrap agreement does not require the user to manifest assent to the terms and conditions expressly . . . [a] party instead gives his assent simply by using the website.”  The court continued, “Because no affirmative action is required by the website user to agree to the terms of a contract other than his or her use of the website, the determination of the validity of the browsewrap contract depends on whether the user has actual or constructive knowledge of a website’s terms and conditions.”

The court agreed there was no evidence that the website user had actual knowledge of the agreement, thus the validity of the browsewrap agreement turned on whether the website put a reasonably prudent user on inquiry notice of the terms of the contract.  The three-judge panel held that the plaintiff had insufficient notice of Barnes & Noble’s TOU, and thus did not enter into an agreement with Barnes & Noble to arbitrate his claims. The panel held there was no evidence that the website user had actual knowledge of the agreement. The panel further held that where a website makes its terms of use available via a conspicuous hyperlink on every page of the website but otherwise provides no notice to users nor prompts them to take any affirmative action to demonstrate assent, even close proximity of the hyperlink to relevant buttons users must click – without more – is insufficient to give rise to constructive notice.

The court did point out that were there any evidence in the record that Nguyen had actual notice of the TOU or was required to affirmatively acknowledge the TOU before completing his online purchase, the outcome of the case might have been different.

The takeaways from this case are two-fold: First, businesses should review their online TOU and the need for users to affirmatively acknowledge the TOU, or display the TOU conspicuously enough to put users on inquiry notice.  Second, in the context of litigation defendants must develop the record sufficiently enough to support their contentions.  In Nguyen, there was evidence that the plaintiff was familiar with passive TOU on other websites, but that did not carry enough weight with the appeals court to establish that the plaintiff was aware of the TOU on Barnes & Noble’s website.

Filed under Arbitration, Browsewrap Agreement, Reasonable Notice, Terms of Use

DMCA Safe Harbor and Takedown Notice Checklists

By on September 23, 2014
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The Digital Millennium Copyright Act (DMCA) offers protection against liability for website owners from third-party content. Copyright owners can also demand removal of their copyrighted works by following the rules provided by the DMCA.

Below are some checklists for website owners as well as copyright owners.

Website Owners: Do You Need Protection from the DMCA Safe Harbor Provisions?

Should you set up DMCA notification policies? If the answer to any of the following questions is “yes,” you likely want to ensure that the DMCA safe harbor provisions will protect you.

  • Is your site reliant on or otherwise focused on user-provided content?
  • Are users likely to post infringing materials in the comments section, discussion boards, or forums?
  • Do you link to other sites that could be posting infringing material without your knowledge?

Keep in mind that there may be other less-typical circumstances where you would also want to consider DMCA safe harbor protection — the key is whether your site will feature a lot of third-party content that may be infringing.

Website Owners: Protecting Yourself Under the DMCA Safe Harbor Provisions

Once you have decided that you will likely need protection under the DMCA safe harbor provisions, below are the conditions you must satisfy.

  • If you have the right and ability to control the infringing activity, you must not receive a financial benefit directly attributable to that activity.
“Right and ability to control” has been interpreted by many courts to mean something more than just the ability to locate infringing material and terminate users’ access. It has been found where:

  • a site owner organized torrent files with specific search terms describing material likely to be infringing (e.g., “screener,” “PPV”), personally assisted users in locating infringing files, or personally screened files to remove fake, infected, or bad torrents; and
  • a service provider gave participating websites detailed instructions regarding issues of layout, appearance, and content, refused access to its system until the sites comply with its requirements, or monitored images to ensure that the sites did not primarily consist of celebrity images;

“Right and ability to control” has not been found where:

  • the site owner could have implemented and did implement automatic filtering systems and could have merely searched for potentially infringing content.

“Financial benefit” can include advertising revenue.
  • You must not have actual knowledge that the material is infringing.
Generally, knowledge is not imputed on the website owner simply due to the material’s existence on the website.
  • Upon learning that the material is infringing, you must expeditiously remove such material.
What constitutes “expeditious” has not been further explained in the statutes, and likely depends on the circumstances. Courts have generally found that removing infringing materials within a few days is “expeditious”; for DMCA notices identifying 170 videos, 3.5 weeks has been considered “expeditious.” A processing time of four to 17 months, on the other hand, may not be “expeditious” — the court left the issue up to a jury to decide.
  • You must designate an agent to receive DMCA notifications; this agent’s name, address, phone number, and email must be on file with the U.S. Copyright Office and available on your own site.
Make sure to:

  • keep this information updated and current;
  • have someone regularly check correspondences, preferably daily;
  • for email, double-check your spam filters; and
  • for online forms, double-check that these work.

If the forms are forwarded to an email address, double-check spam filters. Certain email providers will flag online form emails as a “spoofed” email.

If you need to provide certain instructions to the copyright holder (e.g., how to provide a link to a comment or bulletin board post that will be specific enough for you to identify the infringing material), make that information available as well.
  • You must have adopted and reasonably implemented, as well as informed users, a policy that terminates the accounts for repeat infringers in appropriate circumstances.
The statute does not define “appropriate circumstances.” The key here is to craft a reasonable policy, adhere to that policy, and inform users of that policy.In the Ninth Circuit, the website/service owner must also not actively prevent copyright owners from collecting information necessary to issue DMCA notifications. For example, a peer-to-peer file-sharing network that encrypted data as to which user was sharing which files was found not to have a reasonably implemented repeat infringer policy.
  • You and your site must accommodate and not interfere with standard technical measures.
The statute defines “standard technical measures” as “technical measures that are used by copyright owners to identify or protect copyrighted works” and

  • “have been developed pursuant to a broad consensus of copyright owners and service providers in an open, fair, voluntary, multi-industry standards process”;
  • “are available to any person on reasonable and nondiscriminatory terms”; and
  • “do not impose substantial costs on service providers or substantial burdens on their systems or networks.”

Congress attempted to think ahead with this provision, but to date, nothing has qualified as “standard technical measures.”

At least one court has rejected the argument that providing an online image-cropping tool that could potentially crop out copyright watermarks would constitute interference with “standard technical measures.”

Copyright Owners: Issuing DMCA Takedown Notices

Before issuing a DMCA takedown notice, here are some questions to consider:

  • Do you own the copyright? If not, are you authorized by the copyright owner to issue the takedown notice? You must answer “yes” to one of these questions.
  • Keeping in mind fair use, is the material infringing?
Misrepresentations of infringement may make you liable for damages suffered by the other party, including the attorneys’ fees and costs they incurred.Whether a use constitutes fair use can be a complicated issue, but usually the following uses are not considered infringing: criticism, comment, news reporting, teaching, scholarship, research, or parodies.

Have you completely filled out the DMCA notice? If you do not, then the infringing material may not be removed.

    • You must identify the work being infringed upon (e.g., copyright registration number, URLs for the official work, or title/author information).
    • You must identify the infringing material with specificity such that it can be easily located by the host (e.g., URLs of pages or images).
    • You must provide your contact information, including address and telephone number, and email address if available.
    • You must state that you have “a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.”
    • You must also state that “that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.”
    • You must provide a signature, electronic or otherwise.

If the host refuses to act, or if the user issues a counter-notification, would you want to litigate the issue in courts? If so, your copyrighted material may have to be registered with the U.S. Copyright Office.

If there is a counter-notification and you would like to keep the infringing material off the website, you only have 10-14 days to file a lawsuit. Some federal districts require only that you have begun the registration process; others hold that you will need an issued registration at the time of filing the lawsuit. As case law is continually updated, you will have to verify the applicable law before issuing the DMCA takedown notice if litigation is a possibility.

 

Filed under Copyright Owners, DMCA, DMCA safe harbor provisions, DMCA take-down notices, Third-Party Content, Website Owners

Parties Seeking Injunctive Relief Under Lanham Act

By on September 11, 2014
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On August 26, 2014, the U.S. Court of Appeals for the Third Circuit held in Ferring Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc. that parties seeking injunctive relief under the Lanham Act will not be afforded a presumption of irreparable harm and must demonstrate that irreparable harm is likely. In affirming the lower court’s decision to deny the plaintiff’s request for an injunction, the Court of Appeals based its ruling on precedent set by two recent U.S. Supreme Court cases, eBay Inc. v. MercExchange, L.L.C. and Winter v. Natural Resources Defense Council, Inc.

Ferring is yet another precedential decision, among several other recent cases, that demonstrates a continuing trend in rejecting a presumption of irreparable harm for parties seeking injunctions in actions involving claims under the Lanham Act. The Second and Ninth Circuits also have applied this rationale to copyright actions. An even greater number of courts across the nation have recognized that the eBay analysis is applicable in lawsuits filed pursuant to the Lanham Act and concurred that it casts doubt on the application of the presumption of irreparable harm, but have nevertheless declined to rule on the matter.

The Ferring litigation arose from a dispute among two New Jersey-based pharmaceutical companies that market competing products designed to assist women undergoing in vitrofertilization to become and remain pregnant. In the complaint, filed on September 17, 2012, plaintiff Ferring alleged that defendant Watson coordinated two programs, during which Watson conveyed false and misleading information about Ferring’s competing product in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), the New Jersey Consumer Fraud Act, and New Jersey common law.

Ferring moved for a preliminary injunction on November 9, 2012, seeking to obtain corrective advertising and enjoin Watson from making any additional false statements. In denying Ferring’s motion, the district court found that Ferring was not entitled to a presumption of irreparable harm and had failed to demonstrate a likelihood of irreparable harm.

On appeal, Ferring argued that a presumption of irreparable harm should be applied in Lanham Act comparative false advertising cases and, accordingly, the district court erred in declining to permit Ferring to benefit from this presumption for the purposes of obtaining a preliminary injunction. Watson, in turn, argued that the Third Circuit has never recognized this presumption; the U.S. Supreme Court’s rulings in eBay and Winter do not support the application of this presumption; and, without the presumption, Ferring is unable to demonstrate a likelihood of irreparable harm.

Where a party in a comparative false advertising case, like Ferring, seeks a preliminary injunction, courts in various jurisdictions have historically permitted the application of the presumption of irreparable harm after a likelihood of success on the merits has been demonstrated. The Third Circuit pointed out, however, that this rationale preceded eBay and Winter, which set the precedent that broad categorical rules are inappropriate when determining whether to award injunctive relief, a determination that should be made within the court’s discretion and in accordance with the traditional principles of equity. The Court of Appeals alsocited a 2013 Ninth Circuitdecision as concurring analysis, which held that “the likelihood of irreparable injury may no longer be presumed from a showing of likelihood of success on the merits.”

The reasoning employed in Ferring provides a clear interpretation and explanation of precedent set by the Supreme Court with regard to issuing injunctions in actions not only involving claims under the Lanham Act, but in various types of cases governed by similar standards, and certainly reinforces the growing trend to reject the application of the presumption of irreparable harm for parties seeking injunctions in the future.

Please see the following citations for further reading on this topic:

eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006)

Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008)

Ferring Pharms. v. Watson Pharms., 2014 U.S. App. LEXIS 16426 (3d Cir. 2014)

Filed under Trademark

Routine Patent Litigation Giving Rise to Antitrust Liability

By on September 9, 2014
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On Aug. 6, in Tyco Healthcare Group LP v. Mut. Pharm. Co., Case No. 2013-1386, the Federal Circuit looked at whether antitrust liability can arise from routine patent litigation and suggested that a patent owner can face antitrust liability resulting from bringing patent infringement claims and administrative petitions.

In Tyco, the patent owner of a drug, Tyco Healthcare Group, filed a claim for patent infringement against a generic drug manufacturer, Mutual Pharmaceutical Co., after Mutual filed an application with the Food and Drug Administration (FDA) to manufacture and sell a generic version of Tyco’s drug.  In response, Mutual filed antitrust counterclaims against Tyco.

In 2009, the district court entered a judgment of non-infringement and the following day, Tyco filed a Citizen Petition with the FDA urging the FDA to change the criteria for evaluating the bioequivalence of the proposed generic product to ensure therapeutic equivalence of the generic drug to the brand name drug.  Ultimately, the FDA approved Mutual’s application to manufacture and sell the generic drug and denied Tyco’s Citizen Petition.

Mutual moved for summary judgment on its antitrust counterclaims against Tyco, arguing Tyco was not immune from liability.  The district court held Tyco was not liable for antitrust violations as alleged by Mutual, however, on appeal, the Federal Circuit vacated the district court’s ruling in part and remanded it for further consideration as to whether Tyco’s patent infringement claim and Citizen Petition were shams.

Ordinarily, a party is exempt from antitrust liability for bringing a lawsuit against a competitor under the Noerr-Pennington doctrine.  This doctrine is not limited to just lawsuits, but can also apply to administrative petitions.  There is an exception to immunity for sham litigation.  In determining whether litigation is a “sham,” a court will look at objective and subjective elements: (1) the litigation must be objectively baseless in the sense that no reasonable litigant could realistically expect success on the merits; and (2) the litigation must be motivated by a desire to interfere directly with the business relationships of a competitor.

In its decision, the Federal Circuit concluded that Tyco may not be immune from antitrust liability because there are issues of factual dispute as to whether Tyco’s patent infringement claim was objectively baseless and whether the Citizen Petition was objectively baseless and intended to interfere with the FDA approving Mutual’s application to manufacture and sell the drug.

So what does this mean for patent enforcement?  There is concern that the Federal Circuit has inserted antitrust liability into patent litigation, which could result in antitrust penalties for routine patent enforcement.  Further, the case could have a possible chilling effect on patentees’ communications with administrative agencies, such as the filing of a Citizen Petition with the FDA.  However, because the Noerr-Pennington doctrine continues to live, patentees are still protected unless the party alleging antitrust violations can present facts to show the litigation activity was a sham.

Filed under Federal Circuit, Patent

Lawfully Taking Your Competitor’s Technology: Optimize the Design Around

By on September 2, 2014
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When a party is sued for patent infringement, an alternative for avoiding infringement is to develop design around technology not covered by the subject patent.  Even if there is no lawsuit, often a company has competitors that make products or offer services that include attributes and features you would like to include in products and services.

As a general rule it is completely proper to take advantage of any aspect of a competitor’s device and include it in your device unless it is protected under the U.S. patent laws.  (Other countries also have patent laws that must be considered if manufacture or sales are made in those countries.)

In some cases there may be other intellectual property rights, such as trade secrets, copyright and trademark laws, that must be considered, but these circumstances are rare and easier to avoid than the patented features.

Non-Patented Features

Often the desired feature is NOT protected by patent, meaning you can add that feature to your device as long as you do not create a “look alike” device.  Non-patented features are public and available for anyone to use.  You may want to consult with patent counsel to help determine that this particular feature is not the subject of a pending patent application, which would cause an important interruption to this plan (see discussion below), but if the feature is a couple years old most likely there will be no pending or issued patent complications.

The next step in taking your competitor’s technology is to consider your device, which now includes the additional feature, and enhance it in some new, useful and non-obvious way.  It is best for this new feature to have some market appeal but now you have the basis for seeking a patent on your enhanced device with the additional feature.

Under this plan you can provide your customers a patented enhanced device.

Patented Features

If the competitor device is patented in whole or as it relates to a particularly desired feature, you must determine the date of the patent application directed to the protected feature knowing that patents last for 20 years from the earliest application in the patent family.

You should determine if the patent can be invalidated.  Securing an invalidity search and the advice of patent counsel will assist in this evaluation.  What you are looking for is a piece of prior art the examiner did not consider during his examination that is directed to the novel feature(s) in the application that were cited by the examiner as the basis for allowance of the application.  Invalidity searches are readily available in most technology-based countries.

Once new prior art is located, you must determine the most efficient method to challenge the patent: declaratory relief action for invalidity (assuming a reasonable apprehension), or a request for re-examination (the patent may be fixed in this process).  These invalidity activities can be time-consuming and expensive.

The alternative is to identify the oldest patent that covers the desired feature.  Analyze the structure of this technology and conceive an enhancement feature that employs the desired feature and offers an enhancement that avoids all patent coverage and has market desirability.  File an application for your enhancement of the old technology.

To find a new enhancement, dissect the device into its components and analyze each component to see how current technologies can be used to enhance the device.  Typical areas of attention include materials; computer control; display features; ease of use; ease of manufacture; report functions; inclusion of multiple dependent attributes; specific limitations to a desired attribute; and ascetic nonfunctional features.

Once you have sought patent protection on your enhanced version, identify a migration plan for further enhancements and seek sequential patent protection on these continuing developments.

When the competitor’s patent ultimately lapses you will have a family of patents on enhancements, thereby limiting the competitor from making his device with your new market-desirable enhancements.

In addition, you may be able to immediately make, use and sell your enhanced device outside the United States unless the competitor has patent protection in the other country.

This method, in a relatively short period of time, permits you to properly design around and take your competitor’s technology.

Filed under Patent

Does Your Business Need a Patent Audit?

By and on August 18, 2014

A patent audit evaluates and reports on the status of your business’ technology protection program.  A patent audit outlines considerations relevant to your ability to secure, protect and enforce your patent rights and, if desired, provides an appraisal of the value of these rights. You can save significant money by doing some preliminary research to clearly describe product ideas before engaging into patent attorney services by using a patent database search solution.

To know if you need a patent audit, consider:

  • Does your business have a portfolio of patents and do you have the original patents?
  • Does your business have a migration plan for expanding its technology and do you manage the protection of the new technology?
  • Does your business use its patented technology out of the country and is this technology patented where it is used?
  • Does your business use patented technology of others and do you have copies of these authorizations?
  • Does your business permit others to use your patented technology and do you have copies of these authorizations?
  • Does your business rely upon employees or independent contractors to create improved technologies and do you have the agreements that cover these relationships?

Your answers to these questions will indicate if it is time to contact an IP audit specialist to ask about a patent audit.

Filed under Patent

Does Your Business Need a Copyright Audit?

By and on August 5, 2014

A copyright audit evaluates and reports on the status of your business’ copyrightable works of art.  An audit outlines considerations relevant to your ability to secure, protect and enforce your rights and, if desired, provides an appraisal of the dollar value of these rights.

To know if you need a copyright audit, consider:

  • Does your business rely on copyrightable works of art (writings, images, drawings, computer programs, photographs) and do you have certificates of copyright registration for these works?
  • Does your business use copyrightable works of art for ancillary business activities (marketing, advertising, website images, product descriptions, product manuals) and do you have certificates of copyright registration for these work?
  • Does your business use works of art from others and do you have copies of these written authorizations?
  • Does your business have the right to enforce the copyright rights you are authorized to use?
  • Does your business authorize others to use works of art and do you have copies of these authorizations?

Your answers to these questions will indicate if it is time to contact an IP audit specialist to discuss a copyright audit. If you have had an audit already and  need marketing guidance visit Victorious.

Filed under Copyright

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