Categories
Intellectual Property

Hurdles To Obtaining Patent Protection

Hurdles To Obtaining Patent Protection

Laura Marmulstein

Share Post:

Share on facebook
Share on linkedin
Share on twitter
Share on email

A patent is an intellectual property right that grants the owner the right to exclude others from making, using, importing, offering for sale, or selling the patented invention in the United States for a limited period of years. A patent does not grant the owner the right to make, use, import, offer for sale, or sell the patented invention.

Let’s use skis and a snowboard as an illustrative example of this right to exclude but not the right to use (this first comes to mind, as I’m an avid skier). You invented skis and obtained patent protection on a board that straps onto one foot and another board that straps onto the other foot. You can prevent others from making, using, and selling skis. However, another inventor has a patent on a snowboard that broadly covers a board that straps onto at least one foot. The snowboard patent owner has the right to exclude others from making, using, and selling a snowboard – or broadly, a board that straps onto at least one foot. Accordingly, you cannot make, use, or sell skis, your patented invention, because you would be infringing on the snowboard patent since you would be making, using, or selling a board that straps onto one foot. Thus, a patent gives an owner the right to exclude others from using or selling, but not a right to use or sell, the patented invention.

There are several hurdles to obtaining patent protection. An initial consideration is whether the invention contains subject matter that is eligible for patent protection. Patentable subject matter includes “any new and useful process [(e.g., a manufacturing process or software)], machine [(e.g., a car engine)], manufacture [(e.g., a camera lens or bicycle)], or composition of matter [(e.g., pharmaceutical drugs)], or any new and useful improvement thereof.” 35 U.S.C. § 101.

These categories of patentable subject matter exclude laws of nature, natural phenomena, and abstract ideas (known as “judicial exceptions”). See MPEP § 2106. Laws of nature include naturally occurring principles or equations such as E=mc2 or the law of gravity. A natural phenomena or product of nature is something that is naturally occurring. For example, a cloned sheep that was found to be identical to a sheep found in nature was not eligible for patent protection. See In re Roslin Institute (Edinburgh), 750 F.3d 1333, 1337 (Fed. Cir. 2014).

Abstract ideas include mathematical concepts (e.g., mathematical relationships, formulas, or equations), methods of organizing human activity (e.g., fundamental economic principles or practices such as hedging or mitigating risk, commercial or legal interactions, or managing behavior or relationships), and mental processes (e.g., concepts performed in the human mind such as observations, evaluations, or judgments). See MPEP § 2106.04(a). As an example, software patent applications are often rejected as abstract ideas where the software is simply expressed as code or a set of instructions detached from any medium. Typically, the software needs to be tied to some technology and to provide some technical solution to a technical problem to avoid being rejected as an abstract idea.

The rationale for denying patent protection for these judicial exceptions is to prevent others from monopolizing “the basic tools of scientific and technological work,” which could impede innovation rather than promote it. See MPEP § 2106.

The utility requirement under § 101 requires that the invention have a specific, substantial, and credible utility. See MPEP § 2107. A consideration under the utility inquiry is whether a person of ordinary skill in the art (e.g., in the field of the invention) would accept that the invention, as disclosed, is currently capable of the claimed use. “[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research.” In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005).

Additional requirements for patentability include (1) novelty and (2) nonobviousness. Novelty (or whether the invention is new) requires that the invention was not known, used, or sold by others or patented or described in a printed publication, or otherwise available to the public, prior to filing the patent application. See 35 U.S.C. § 102. These pre-existing disclosures, uses, or sales of the invention by others are known as “prior art.” If all of the features of your invention cannot be found in a single prior art reference (i.e., at least one feature is different), your invention is considered to be novel and passes this requirement.

Non-obviousness requires that the differences between the invention and prior art would not have been obvious to a person having ordinary skill in the art at the time the invention was made. See 35 U.S.C. § 103. This hurdle can be a bit more difficult to overcome than the novelty requirement, as it requires your invention be sufficiently different from the prior art. In other words, if the one feature of your invention that is different from the prior art is a minor tweak that anyone would have thought to do, it might be considered obvious and not protectable.

Finally, an inventor can lose the right to a patent if the inventor delays too long in seeking patent protection. If an inventor publicly discloses or uses the invention, or sells the invention or offers the invention for sale for over a year prior to filing a patent application, then the inventor loses the right to obtain patent protection in the U.S. Most foreign jurisdictions do not allow this year grace period and a public disclosure, use, or sale may act as an absolute bar to patentability regardless of when it occurred relative to filing the patent application. The rationale for this requirement is to prevent inventors from exploiting their invention for a period of time prior to obtaining patent protection. Accordingly, it is best practice is to file a patent application before any public disclosure, use, offer for sale, or sale of the invention.

In conclusion, if you believe you have patentable subject matter that is novel or has some new feature that is substantially different from the prior art, you should consult with a patent attorney to determine how to best protect your invention prior to any public disclosure, use, or sale.

Disclaimer: The images used in this article were provided courtesy of Unsplash

ABOUT THE AUTHOR

ASSOCIATE

Laura counsels clients on legal issues related to intellectual property, including patents, trademarks, and copyrights. Laura helps clients build strong intellectual property portfolios, taking into account various types of protection options, such as utility and design patents, including both U.S. and foreign, trademark and trade dress registrations, and copyright registrations.

More Articles

Estate Planning

Estate Planning for Women: Helping with Control

Let me get it out of the way…the elephant in the room after such a polarizing title. Estate planning is for everyone. Period. Regardless of your age, your marital status, your perceived wealth, or your family size, everyone benefits from preparing for the unexpected, covering essentials, ensuring a lifestyle, and ultimately leaving a legacy with minimal probate and family disputes.

Read More »
Miscellaneous

Dude, Diligence?

The due diligence process in the purchase and sale of a business can seem daunting and cumbersome. Any attorney or financial professional worth his or her salt will tell you that conducting adequate diligence is paramount and, despite what will almost certainly feel like an unnecessarily lengthy and intrusive process, serves to mitigate risks for buyers and sellers alike.
This post is meant to provide a very basic framework of the due diligence process in asset deals to assist buyers and sellers in understanding (a) what they are looking at, (b) what they should be looking for, and (c) setting expectations about how the process looks, and where it can go awry. This post should not be relied on as legal advice, and you should always engage counsel and other financial and tax professionals if you are considering buying or selling a business.

Read More »
Uncategorized

DON’T GET NFTEASED

It’s 2022, and everyone from Snoop Dogg to the cashier at your local supermarket is creating or sponsoring their own NFT project, including many of our Firm’s clients. NFTs (non-fungible tokens) might be a revolutionary way for artists and collectors to control their work, but they are currently a Wild West. Before you get rich quick on this “21st Century Gold Rush”, consider some of the lessons we have learned through our practice.

Read More »
Categories
Intellectual Property

The Patent Process: Getting Started

The Patent Process: Getting Started

Laura Marmulstein

Share Post:

Share on facebook
Share on linkedin
Share on twitter
Share on email

When should you seek patent protection? When you have an idea? A prototype? A product? It is often a misconception that you need a prototype or product to seek patent protection. While you cannot obtain patent protection for a mere idea, you can, in fact, file a patent application with an idea (and no prototype or product), so long as the idea is sufficiently concrete.

To be sufficiently concrete, the idea must be well thought out such that you could describe the invention with enough specificity to enable another to make and use it. Your invention should provide a solution to a problem, and you should be able to explain how to achieve that solution. You want to file a patent application when you know your invention can and will work – otherwise, there may not be much value in obtaining a patent on something that doesn’t work. If you are not sure the invention will work as anticipated, you may want to make a prototype and test it out before you file. Finally, you want to consider all the different variations and possible improvements to avoid others designing around your invention.

A key consideration when determining whether to file is whether you plan to publicly disclose the invention. A public disclosure can be a non-confidential disclosure, a public use, a sale, or an offer for sale of your invention. Some common examples of a public disclosure include trade shows, press releases, publications, websites, product launches, advertising and marketing materials, and discussions with people outside your company (particularly without a confidentiality or non-disclosure agreement in place). A public disclosure of your invention can ruin your chances of obtaining a patent, especially if you are interested in foreign protection. In the U.S., there is a one-year grace period to file a patent application after a public disclosure. If over a year has passed since a public disclosure of the invention, you cannot obtain a patent. Most foreign jurisdictions do not have this grace period, and you will lose your patent rights in those countries if you disclose before you file. So best practice is to file before a public disclosure.

If you plan to publicly disclose your technology before it is fully developed, you can file a provisional patent application. A provisional patent application is not examined and remains confidential, but it provides you with a place in line at the U.S. Patent and Trademark Office to preserve your patent rights in the U.S. and foreign countries. The U.S. patent system is a first-to-file system, meaning whoever files first can obtain patent protection for an invention (so long as it meets the other requirements for a patent – e.g., is new and non-obvious). For this reason, it is best practice to file as early as possible.

For a provisional patent application, you want to include sufficient detail to teach others how to make and use your technology. You also want to provide a broad description of your technology to support a later-filed application – either a non-provisional application or an international or PCT application – which is substantively examined. The later-filed application receives the benefit of the filing date of the provisional patent application. However, this priority date only applies to the material disclosed in the provisional application. Any new material added to the later-filed application will receive the filing date of the later-filed application. For this reason, it is best to have sufficient breadth in the provisional patent application to cover any changes or additional details that you might add to the non-provisional patent application in order to obtain the benefit of the earlier filing date.

A provisional patent application may be beneficial if you are still developing your technology, you want to push costs to a later date, or you want to be able to say “patent pending” for a longer period. A provisional patent application gives you a year to develop your technology and add any additional improvements or variations before filing a non-provisional or PCT application. As a general rule for foreign filing, once you file the non-provisional or PCT application, you cannot add any new material to the disclosure. Further, the cost of filing a non-provisional or PCT application is much more expensive, so filing a provisional patent application gives you an additional year to obtain the finances and budget for the non-provisional or PCT application. See USPTO Fee Schedule for more on fees. Finally, once you file a provisional patent application, you can label your technology covered by the application as “patent pending.” Patent pending can be attractive to investors. For example, it shows investors that you are serious about your technology and think it is new, unique, and valuable. Patent pending can also be intimidating to competitors in your field, as they cannot predict the future scope of your protection. A competitor might think twice before developing technology that resembles your technology for fear of infringing on your rights. 

In conclusion, you should file a patent application before a public disclosure, when you have an invention that works, and when you can describe how to make and use the technology in sufficient detail. If you think you are ready to file a patent application, you should consult with a patent attorney.

ABOUT THE AUTHOR

ASSOCIATE

Laura counsels clients on legal issues related to intellectual property, including patents, trademarks, and copyrights. Laura helps clients build strong intellectual property portfolios, taking into account various types of protection options, such as utility and design patents, including both U.S. and foreign, trademark and trade dress registrations, and copyright registrations.

More Articles

Miscellaneous

Running a Business – Remotely

About three years ago, I spent a year living and working remotely from Europe. My experience was unique and interesting enough that I was featured in a series called Digital Nomad Life in Croatia. Of course, many people had been working remotely for years, but it hadn’t really become mainstream. Then came the major disrupter of all life as we knew it – Covid-19. Almost immediately, everyone the world over got a taste of working remotely, or at least of realizing that the world of work could look very different from how we always thought it had to be.

Read More »
Real Estate Law

Giving Back to the Community: Getting to Know Sharing Connexion

In January 2017, I joined the board of Sharing Connexion, Inc. (“SCI”), a non-profit organization founded by Ed Anderson, a real estate professional with 30+ years’ experience in acquisition, management, finance, and joint venture. SCI is devoted to sharing its collective real estate expertise with other non-profits and affordable housing organizations to empower their ability and capacity to support their missions. We aid our community partners by maximizing their real estate portfolios through funding assistance for existing facilities ensuring long term sustainability Additionally, we educate on the structure of donated real estate gifts to obtain the most favorable outcomes. SCI is committed to the long-term viability of affordable housing, and has created an impact fund which is used when “at-risk” projects are identified (those where displacement may occur based upon the loss or expiration of an affordable component (e.g. land use or rent restrictions)) to provide options to achieve long-term affordability.

Read More »
Copyright Law

Trademark Symbols and When to Use Them

Given their constant presence in our daily lives, the symbols ® and TM are very familiar to most of us. But what do they actually mean? And as a business owner, how do you know when to use them?
Both symbols refer to U.S. federal protection granted to the logo or phrase. The United States Patent and Trademark Office catalogues all registrations and applications in its database and reviews the database for potentially confusing marks when processing new applications. Registering your mark through their office is the best way to defend your brand from competitors.

Read More »
Categories
Intellectual Property

How to Protect Your Designs with Patents and Trade Dress

How to Protect Your Designs with Patents and Trade Dress

Laura Marmulstein

Share Post:

Share on facebook
Share on linkedin
Share on twitter
Share on email

Designs are in everything—the computer you are currently looking at, the clothes you are wearing, the chair you are sitting on, the bottle you are drinking out of (and the list goes on).

There is value to having a product that looks different from anything else on the market. People often want things simply because they look cool or are unique. And wouldn’t it be cool if you could be the exclusive producer of that unique, cool-looking product? With the right protection, you can. There are several ways to protect a design, including design patents and trade dress.

Design Patents

Design patents protect new, original, and ornamental designs for articles of manufacture (35 U.S.C. § 171). In other words, they protect the way a product looks. Specifically, a design patent can protect the configuration or shape of a product and/or its surface ornamentation. An example of a product protected by a design patent is depicted below—which I’m sure you recognize as Apple’s iPhone.

U.S. Design Patent No. D593,087

A design patent gives the owner the right to prevent others from making, using, or selling a product that appears “substantially the same” as the patented product, as determined by an “ordinary observer, giving such attention as a purchaser usually gives.” Gorham Co. v. White, 81 U.S. 511, 528 (1871). An product may appear substantially the same as a patented product if a buyer purchases the infringing product thinking it was the patented product. Id.

As an example, the products depicted in the right two columns of the table below were found to be nearly identical to and to infringe on the Crocs footwear design protected by U.S. Patent No. D517,789, as represented by the drawings in the left column. Crocs, Inc. v. Int’l Trade Com’n, 598 F.3d 1294, 1304 (Fed. Cir. 2010). In this case, the court found that “an ordinary observer…would be deceived into believing the accused products are the same as the patented design.” Id.

A design patent provides the owner with a limited monopoly lasting fifteen years from the date the patent is granted. Once the patent term expires, the patented article falls into the public domain, meaning that anyone can use or sell it. A patent term cannot be extended; however, it is possible to effectively extend the monopoly through other means of design protection, such as trade dress.

Trade Dress

Trade dress is the non-functional physical detail and design of a product or its packaging, which indicates or identifies the product’s source and distinguishes it from the products of others. Trade dress is usually defined as the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 (1992).

When a company continuously uses a design, the public may come to recognize the design as exclusively coming from that company. For example, without seeing a company name for the images below, you likely recognize the product designs as Apple products. These products are protected by trade dress.

Apple has developed a strong reputation in the electronics industry, and consumers know they will get a certain quality product with Apple products. As such, consumers will continue to buy products simply because they come from Apple. A design protected by trade dress has associated value by serving as an indicator of a particular quality product coming from a particular source, influencing purchasers to buy it.

A trade dress owner can prevent others from producing products with designs that are likely to cause consumer confusion. Likelihood of confusion exists when another’s product design or packaging is so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. See TMEP § 1207.01.

For a design to be protected by trade dress, the public must associate the design with a source or producer of goods or services, rather than just the product itself. A product design is not capable of functioning as a trademark without a showing of secondary meaning, i.e., that the public associates the trade dress with a source or producer, rather than just the product itself. See, e.g., Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000). For this reason, it often takes time to acquire trade dress protection for a product design. Product packaging, on the other hand, may not require time to show it has acquired source-identifying function. See, e.g., Samara Bros. at 215 (“product packaging…normally is taken by the consumer to indicate origin.”).

During the time it takes to develop trade dress protection for a product design, the design can be protected by a design patent (so long as it is novel, non-obvious, and ornamental). Once the design has acquired source-identifying function, the design can also be protected by trade dress. In this manner, a design can be protected by both a design patent and trade dress. When the design patent expires fifteen years after its grant date, the design will still be protected by trade dress so long as the public continues to associate the design with its source or producer.

As an example, Coca-Cola has obtained numerous design patents on its unique bottle shape, including U.S. Design Patent Nos. D63,657 and D105,529, shown below. The Coca-Cola bottle is also protected by trade dress, as the public readily recognizes the bottle as Coca-Cola’s product. Coca-Cola registered the trade dress with the U.S. Patent and Trademark Office in 1977 under U.S. Registration No. 1057884, which is depicted in the far right image below. While the design patents provided Coca-Cola a fourteen-year monopoly (design patent term changed from fourteen years to fifteen years in 2015) on the bottle designs, Coca-Cola was able to effectively extend this monopoly through trade dress protection, which still exists today.

U.S. Pat. No. D63,657

U.S. Pat. No. D105,529

U.S. Reg. No. 1057884

In conclusion, design patents and trade dress provide valuable protection, and you should consider these forms of intellectual property protection when designing a product.

Disclaimer: This article is intended for scholarship and educational purposes only. The images used in this article were taken from publicly available documents on the U.S. Patent and Trademark website (tsdr.uspto.gov and portal.uspto.gov/pair/PublicPair) and Google Patents (patents.google.com). The image used from Crocs, Inc., is from a publicly available case accessed through Westlaw (next.westlaw.com). We believe incorporating images showing examples of design patents and trade dress is necessary to adequately convey the information to educate the general public. We believe our use of these images constitutes fair use. If you are the copyright owner of any of these images, please feel free to contact us at info@milgromlaw.com

ABOUT THE AUTHOR

ASSOCIATE

Laura counsels clients on legal issues related to intellectual property, including patents, trademarks, and copyrights. Laura helps clients build strong intellectual property portfolios, taking into account various types of protection options, such as utility and design patents, including both U.S. and foreign, trademark and trade dress registrations, and copyright registrations.

More Articles

Intellectual Property

Hurdles To Obtaining Patent Protection

A patent is an intellectual property right that grants the owner the right to exclude others from making, using, importing, offering for sale, or selling the patented invention in the United States for a limited period of years. A patent does not grant the owner the right to make, use, import, offer for sale, or sell the patented invention.

Read More »
Copyright Law

Copyright Infringement at the 2022 Olympics Illustrates the Broad Scope of Potential Defenders

Businesses, beware! Copyright infringement can happen anywhere, even on the biggest sports stage: the 2022 Beijing Olympics. Two U.S. Olympic figure skaters, Alexa Knierim and Brandon Frazier, were sued last week for copyright infringement by the musical artist, Heavy Young Heathens, for using their song without permission. The lawsuit also names as defendants Comcast Corporation, NBCUniversal Media, LLC, Peacock, USA Network, and U.S. Figure Skating. The lawsuit was filed in California for the skaters’ use of the song, “House of the Rising Sun,” which the musicians allege was used without their permission for the skaters’ short program in the Olympics. Heavy Young Heathens state they have not received any payment for use of the song, causing them “substantial, immediate, and irreparable injury.” Interestingly, one of the damages alleged was that the song’s use in figure skating has forever linked it to that sport, which limits its future use.

Read More »
Contracts

LLC Member Bankruptcy and Automatic Buy-Out Provisions

When an LLC member claims bankruptcy, or otherwise becomes insolvent, it can pose problems for the LLC and other members. Many operating agreements contain provisions addressing this scenario, which often allow for the other members to immediately purchase the membership interests of the bankrupt or insolvent member. The buy-out process is often automatic, meaning the insolvent member has no choice in the selling of their membership interests. This is a harsh remedy, appropriately reserved for situations where the bankrupt or insolvent member is in serious financial peril.

Read More »