Intellectual Property Blog

There are four basic forms of intellectual property.

1. Trade Secret

2. Patents

3. Trademarks

4. Copyrights

Each form of intellectual property is defined differently and utilized in a different way to protect a business, or individuals, property.  Below is a brief description of each intellectual property and how it is utilized. 

Trade Secret:

A trade secret includes a design, instrument, process, practice, formula used by a business to gain advantage in a market.  This secret is protected through various employment agreements.  A few fallbacks to retaining information within a business: 1) Reverse-engineering could duplicate your trade secret, 2) Lost limited monopoly through patent grant if not filed within certain timeframes.

Patents:

 A Patent is a grant of a property right to an inventor.  Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed.  The right conferred by the patent grant is, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention. 

There are three (3) types of patents:

1. Utility - granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;

2. Design - granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and

3. Plant - granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

Trademarks:

 A trademark is a word, symbol, or device that is used in a trade with goods to indicate the source of the goods and to distinguish them from others.  A servicemark uses the same thinking, however, it identifies and distinguishes the source of a service rather than a product.  Trademark rights are used to prevent others from using a confusingly similar mark with like services or goods.  It does not prevent others from making the same goods or providing the same services.

Copyrights:

 A copyright is a form of protection provided to authors of “original works of authorship.”  This includes literary, dramatic, musical, artistic, and certain other intellectual works.  Under The 1976 Copyright Act the owner of a copyright has the exclusive right to reproduce the work, prepare derivatives, distribute copies or phonorecords and to perform and display the work publicly.

With the continuous advent of technologies involving the transmission of written, audio and visual artistic works, the laws specializing in copyrights is continually evolving.  Below is an interesting and brief history of copyright laws.

1662 - Licensing Act of 1662 - Established a register of licensed books, requiring a deposit of the book to be license.  This register was administered by the “Stationers’ Company,” whom were given powers to seize books containing matter hostile to the Church or Government and to censor publications. Repealed by 1681 at which time the Stationers’ Company passed a by-law to establish rights of ownership for books registered to its members to continue the trade themselves.

1710 - Statute of Anne - Introduced the principles of authors’ ownership of copyright and a fixed term for protection of copyrighted works.  Fourteen (14) years of protection was offered and was renewable for fourteen (14) more years if the author was alive upon expiration.  The statute required the depositing of nine copies of a book to certain libraries throughout England.  This statute also introduced the basic formulation of the first sale doctrine that once a work is purchased the copyright owner no longer controls its use.

1787 - U.S. Constitution - Article I, Section 8, Clause 8 of the United States Constitution states that “the Congress shall have power to…promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

1790 - Copyright Act of 1790 (An Act for the Encouragement of Learning, by Securing the Copies of Maps, Charts, and Books to the Authors and Proprietors of such Copies) - The First Congress implemented this Act modeling it after England’s Statute of Anne. This Act granted authors the right to print, re-print, or publish their work for a period of fourteen (14) years with the ability to renew for another fourteen (14) years. This limited monopoly granted to artists is thought to stimulate creators while also advancing “science and the useful arts” by granting public domain to the works after a number of years.  (Revisions 1831, 1870, 1909, 1976)

1831 - Revision of the Copyright Act of 1790 - The term of a copyright was extended to twenty-eight (28) years with the ability to extend this term for another fourteen (14) years.  Congress made this change to give Americans the same protection offered to Europeans.

1870 - Revision of the Copyright Act of 1790 - Copyright registration administration moved from the individual district courts to the Library of Congress’ Copyright Office.

1883 - Paris Convention - First major international treaty for the protection of patents, trademarks and industrial designs.

1886 - Berne Convention for the Protection of Literary and Artistic Works - Provided for development and implementation of mutual copyright protection to be offered in signing countries. 

1891 - Madrid Agreement and subsequent Protocol - governs the system of international registration.

1908 - Berlin Act - Set the duration of copyright to the life of the author plus fifty (50) years.

1909 - Revision of the Copyright Act of 1790 - Broadened copyright protection to include all works of authorship, and extended the term of protection to twenty-eight years (28) with the ability to renew for another twenty-eight (28) years.

1928 - Rome Act - First to recognize “moral rights” of authors, giving them the right to protect themselves from modifications, mutilations, or destruction of their work in a way that might impact the artists’ reputation.

1976 - Revision of the Copyright Act of 1790 - Enacted to help the US conform with international laws, such as the Berne Convention.  This Act extended the time of protection to the life of the author plus fifty (50) years.  It also protected works for hire for seventy-five (75) years. For the first time in the US the fair use and first sale doctrines were introduced. 

Also in this year The National Commission on New Technology Uses of Copyrighted Works (CONTU) was appointed by Congress to establish guidelines for the “minimum standards of educational fair use.”

1988 - United States becomes a member of the Berne Convention.

1996 - Uruguay Round Agreements Act (URAA) - Signed by Bill Clinton, this Act implemented the General Agreement on Tariffs and Trade (GATT) including Trade-Related Aspects of Intellectual Property (TRIPs). 

1998 - Digital Millennium Copyright Act (DMCA) - Signed by Bill Clinton, implemented the two WIPO Internet Treaties.  This Act criminalized the production and dissemination of technology, devices, or services that are used to circumvent measures that control access to copyrighted works.  It also criminalized the act of circumventing a measure even when the circumvention is used for fair use purposes.

Effective April 28, 2008 through November 1, 2008, the United States Patent and Trademark Office (USPTO) initiated a pilot program in which applicants who comply with certain requirements will receive the results of a prior art search conducted by the examiner, via a condensed Pre-Interview Communication, and then be permitted to conduct an interview with the examiner to discuss the cited prior art references prior to the first Office action on the merits.  An interview under this pilot program would advance the prosecution of the application because it enhances the interactions between the applicant and the examiner, provide the applicant the opportunity to resolve patentability issues one-on-one with the examiner at the beggining of the prosecution process, and facilitate possible early allowance.  The pilot program provides a procedure which, if followed, makes the granting of an interview non-discretionary on the examiners behalf.

New utility applications that fall within either of the below groups, Group I or Group II, as outlined below may be eligible for the First Office Action Interview Pilot Program.

Group I:

(1) The application is filed on or before September 1, 2005, and prior to a first action on the merits;

(2) The application is classified in Class 709 (Electrical Computers and Digital Processing Systems: Multi-Computer Data Transferring); and

(3) The application is assigned to an art unit in either working group 2140 (group art unit 214x) or 2150 (group art unit 215x).

Group II.

(1) The application is filed on or before November 1, 2006, and prior to a first action on the merits;

(2) The application is classified in Class 707 (Data Processing: Database and File Management or Data Structures); and

(3) The application is assigned to an art unit in working group 2160 (group art unit 216x).

The First Action Interview is conducted in accordance with the procedure provided in MPEP 713 except as otherwise provided.  The interview should focus on the fowwling material:

(1) A discussion to assist the examiner in developing a better understanding of the invention;

(2) A discussion to establish the state of the art at the time the invention was made, including the prior art references cited by the applicant and the examiner; and

(3) A discussion of the features of the claimed subject matter which make the invention patentable, including any proposed amendments to the claims.

 These patents speak for themselves, but please feel free to submit more for the list and comment as you feel necessary.

1)   Amusement Device - As in a human slingshot - 6497623.

2)     Device for the Treatment of Hicupps - 7062320.

3)   Finger-mount Toothbrush - 7234192.

4)   Religious Lamp with Fluid Flow - 7118242.

5)   Weed Cutting Golf Club - 6988954.

6)   Forehead Support Apparatus - 6681419.

7)   Spherical Rolling Hull Marine Vessel - 3933115.

Please submit your suggestions for future blog entries.

http://www.uspto.gov/web/offices/com/annual/2007/50302_table2.html

As shown by the above link to the USPTO, the number of filed patents, while still increasing on a yearly basis (except for plant and reissues), is starting slowly retreat.  This could be because one would expect the number of patents to plateau at a point due to the fact that humans can only engineer so much at one time.  You could not expect the trend of continuous patent number increase to continue forever. Or could you?

Should we be worried about the changes that are to take effect when the Patent Reform Act changes the U.S. from a first to invent to a first to file system?  For instance, will there be an impact to the small business owner and the individual patent owner?  These are the players that at times do not have the capital to gain patent protection in a hasty nature such as the other participants. 

W.I.P.O., or the “World Intellectual Property Organization,” has released an article giving the latest statistics on international trademark applications.  The article, released on February 27, 2008 states that the amount of international trademark filings in 2007 has increase 9.5% since 2006.  It also states that the country of Germany has, for the fifteenth year, dominated on the international trademark application front and the country of China has, for the third year, been the most designated country.

What does this mean for Americans?