Author: Delain Law Office

Martin Luther King Day on the Advent of Barack Obama's Presidency

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Today, we remember the contributions of Rev. Dr. Martin Luther King, Jr. to the American people, and especially to the African-American people. His dream has inspired generations, and may have been realized, at least in part, in the 2008 Presidential election.

Today, we eagerly look forward to the Presidency of Barack Obama. Mr. Obama is the first African-American to occupy the White House in real life (there has been at least one black president in the movies). He is our 44th President. He’s being inaugurated tomorrow using the Bible that was used to swear in Abraham Lincoln. That Bible hasn’t been used since 1861 to swear in a US President. Mr. Lincoln, of course, signed the Emancipation Proclamation and oversaw the bloodbath of the Civil War, which freed the black slaves.

The line of oppression that began when the first slaves were dragged to the shores of the United States and was fought over so bitterly in the early 1860s and was brought so vividly before the American people by Dr. King has come to what I hope is a Gordian knot with the inauguration of our first black President.

I wish all the best to Mr. Obama. I voted for you, Mr. President; I look forward to changing America with you.

World Copyright Treaty: Accession by the Republic of Tajikistan

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World Copyright Treaty (WCT) Accession by the Republic of Tajikistan.

The World Copyright Treaty was accessed by the Republic of Tajikistan on January 5, 2009 and will go into effect as to Tajikistan on April 5, 2009; the treaty was originally adopted on December 20, 1996.

So what took the Republic of Tajikistan so long to come on board?

And where IS Tajikistan, anyway?

The answer to the second question helps with the answer to the first, so let’s go in that order. Tajikistan is north of Pakistan and Afghanistan, west of China, east of Uzbekistan and south of Kyrgyzstan. In other words, it’s in the far east, in the middle of the Himalayas and not far north of India. This part of the world is not noted for strong enforcement of IP. China — home to more than a billion people — is coming into synch with the western portion of the world, but IP enforcement there is still a long and difficult process. That Tajikistan, its newly independent neighbor (independent since 1991), has accessed this treaty is an immensely positive step in the quest for worldwide recognition of intellectual property rights, and Tajikistan is to be congratulated.

Singapore Treaty on the Law of Trademarks to Enter into Force in 2009

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Singapore Treaty on the Law of Trademarks to Enter into Force in 2009.

This is good news for trademark owners worldwide. The Singapore Treaty, administered by the World Intellectual Property Organization (WIPO), will open the way for the branded goods industry to register and manage trademark rights cost-effectively and efficiently. The treaty “… standardizes procedural aspects of trademark registration and licensing and enables owners of trademarks and national trademark authorities to take advantage of efficiencies in using modern communications technologies to process and manage evolving trademark rights.” The USA ratified the Singapore Treaty on 1 October 2008.

Australia ratified the treaty on 16 December 2008. Australia was the tenth country to do so; therefore, according to its terms, the Singapore Treaty will go into full effect on 16 March 2009, three months after the tenth ratification. The ratifying nations are:

Singapore
Switzerland
Bulgaria 
Romania
Denmark
Latvia
the Kyrgyz Republic
USA
Moldova
Australia

Over time, other WIPO countries will, we hope, join with these first ten under the Singapore Treaty on the Law of Trademarks to help to standardize trademark law throughout the world and make registration across international boundaries more and more seamless. More information about the Singapore Treaty can be found on the Singapore Treaty’s webpage on the WIPO site.

Invention Convention

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Get ’em while they’re young….

I sit on a committee at the Schenectady Museum that deals with educating kids about invention and the inventive processes. My job is to go to schools and talk about invention with kids. Understand that these kids are mostly elementary age children, 4th and 5th graders (that’s age 9-11 for any readers who don’t know the US grade system).

Teachers all want their children to behave beautifully for the visitor; I learned early on to warn the teachers that I want the kids to get rowdy. And they do.

I did such a talk today, at an elementary school in Canajoharie, New York, a tiny little town not too far from Cooperstown (Cooperstown is the home of the Baseball Hall of Fame). The kids were very rowdy and very, very fun to talk with. Part of my talk is to get the kids to think up inventions — whether practical or fantastical, and get them to think about how to actually make these things. I do this with light bulbs and with the fact that I need someone to PLEASE invent a transporter such as the one in Star Trek. Heck, flip phones come from Star Trek imagery; why can’t we have a device that disassembles and reassembles atoms? These two things seem to get the juices flowing and we get many fantastical inventions — x-ray vision goggles, flying, fire-breathing dragon aircraft, and the ever-present improvements on the commode (these are 10-year-old boys we’re talking about here). The kids have fun coming up with this stuff, and I love listening to them and encouraging their inventions.

Once each kid has come up with something could be patentable under 35 USC 101, that kid has to set about building a model and developing instructions for making and using the invention. These inventions are then entered at the regional Invention Convention competition at the Museum. The entries are judged by a panel (which I do not sit on) made up of scientists, engineers, and patent lawyers. This panel selects 100 top inventions, then selects 50 from those 100. Those 50 inventions are modeled by their young inventors and the models are put on display for a month (in May) at the Museum. The judges then select a regional winner. The winner of the regional competition gets to go to the statewide Invention Convention competition; that winner gets to enter the national Invention Convention competition. At the national level, there are some serious prizes involved.

This competition is annually held for the New York Capital District and surrounding areas at the Schenectady Museum for school kids of all ages — elementary through high school. If your school does not participate, perhaps you might consider suggesting that it be incorporated into the curriculum. 

There’s nothing like the thrill of solving a problem to get a kid’s juices flowing — perhaps for life.

CAFC precedential case on patent claim construction

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Boston Scientific Scimed et al. v. Cordis Corp. et al., __ F.3d __ (CAFC 2009)

This case, which deals with a drug-eluting stent that is implanted in a blood vessel to prop or widen the lumen of the vessel after a vascular incident, discusses the patent claim construction methodology used by the US District Courts. There is nothing particularly new here; the Court reminds us that they review claim construction de novo on appeal, and reminds us that “To determine the meaning of “[a particular term in the claim],” we begin by considering the language of the claims.” They reassert that the District Court correctly uses dictionary definitions of terms when the patentee has not provided, in the specification, a definition of a particular term to be used in constructing the claims.

This case also provides an application of the 2007 US Supreme Court case of KSR v. Teleflex, 50 U.S. 398, 127 S.Ct. 1727 (2007), a decision that redefined the 35 USC 103(a) obviousness standard in patents.

I think it’s important to keep an eye on how the Federal Circuit (aka CAFC) handles cases like this one, and to see how they interpret rulings of the higher court. The CAFC has a tendency to interpret things in its own way; indeed, the Supreme Court took the Festo case (FESTO CORP. v. SHOKETSU KINZOKU KOGYO KABUSHIKI CO., LTD., ET AL., 535 U.S. 722 (2004)), which dealt with the so-called Doctrine of Equivalents, to “slap” the CAFC back into line after they had ruled that the Doctrine of Equivalents was no longer valid in a really quite direct nose-thumbing at US Supreme Court precedent. The CAFC comprises a bunch of scientist-judges (Judge Gayarsa, for example, holds degrees in electrical engineering — from Rensselaer, one of my alma maters — and economics, as well as in law) who actually understand the patents that come before them on appeal. It is interesting, though, to watch the interplay between the CAFC’s scientist-judges and the n0n-scientist, traditional judges who sit on the US Supreme Court, which is the only court in the country with the power to overrule them.

I doubt Boston Scientific Scimed will get to the Supreme Court, but you never know…I wouldn’t have expected the Supremes to take Erie Railroad Co. v. Tompkins, 304 U.S. 64 (1938) either, and look what they did with that (Erie is not a patent case). So stay tuned!

The semester begins…

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…and along with it invariably arise questions about copyright fair use.

Teachers claim “fair use” for making massive numbers of photocopies of articles, books, cartoons, and other copyrighted materials to pass out to their classes. They stand firm in their belief that all educational use is “fair use.”

What IS “fair use” under the copyright laws of the US? That question is almost metaphysical in its scope. The statute defines fair use as:

Sec. 107. Limitations on exclusive rights: Fair use

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include–

        (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

        (2) the nature of the copyrighted work;

        (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

        (4) the effect of the use upon the potential market for or value of the copyrighted work.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

17 USC 107

Well, what does that mean?

The statute lays out a test that the court must follow to determine if a particular use that would ordinarily be an infringing use is fair use under the Copyright Act. There’s a sliding scale: if the copying work is commercial, it’s more likely to be found to infringe than if it is for a non-commercial or educational purpose; if the purportedly infringing work increases the market share of the original work, the copy is more likely to be found not to infringe than if it took the market share away from the original. If the accused infringer took only a small part of the work and copied it, he is less likely to be found to infringe the original than if he took a large chunk. If the original work is a work of fiction, any copying of it is more likely to be found to infringe than if it were a factual work. And so on.

At the end of the day, though, the judge has to weigh the factors and render a decision based on that ever-wonderfully vague term “the interests of justice.” So, basically, a copyright infringement case defended with fair use can turn out whichever way the judge wants it to turn out.

Late-Night Infomercials

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Information About Some of the Late-Night Infomercial Companies.

This link is why NOT to use the services of the late-night infomercials that tell you that your patent can be pending in as little as 24 hours and promise you the moon.

A bona fide patent attorney or agent does not make promises about marketing your invention; we merely do our best to obtain protection for you. We can sometimes send you to bona fide marketing experts who might be able to help you with your invention’s market, but that is the end of our involvement with your marketing.

A bona fide patent attorney or agent does not promise you the moon. In fact, I spend a lot of my initial meeting with inventors popping their bubbles and letting them know, as best I can, what the required investment in their patent will be. If the inventor wants to pull the plug at any time, all s/he has to do is tell me; I don’t threaten to sue over breach of contract if an inventor runs out of money; I simply inform him or her that no money means no work and what the consequences are of that. It then becomes entirely the inventor’s decision as to whether or not to proceed.

A bona fide patent attorney or agent wouldn’t be caught dead advertising in a glitzy half-hour commercial.

A bona fide patent attorney or agent will charge you a fair price for the work to be done. Yes, we often require that the funds be deposited with us, but we then earn our fees.

You can check out who is a real, live patent attorney or agent by visiting the USPTO’s website at https://oedci.uspto.gov/OEDCI/ and doing a search. Fill in as many or as few of the fields as you believe would give you meaningful results.

Be very very careful before you invest with a late-night television invention promoter; you don’t always get what you pay for, as demonstrated in the link above.

Inventors Resources and Information

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USPTO’s Resource’s Page Inventors Resources and Information.

This is a page from the US Patent & Trademark Office’s (“USPTO”) webpage that provides really, really good information about patents, the patenting process, and how to go about finding a patent attorney or agent, among other excellent tidbits of knowledge.

In general, the USPTO’s website, at www.uspto.gov, is a plethora of really, really good information. I heartily recommend checking it often (the information on it changes) and noodling around to learn something about patents and trademarks. You might be surprised at what you didn’t know….

How to Register a Copyright

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U.S. Copyright Office – Online Services (eCO: Electronic Copyright Office).

It’s actually a very simple process, except that the Copyright Office has mashed its forms into one form and has not done anyone any favors in that revision.

You fill out the form at the linked page, you write a check for $45.00 to the REGISTER OF COPYRIGHT, and you send the form, the check and either one or two copies of the work to be registered (depending on whether the work is published or not) in to the US Copyright Office in Washington D.C. You then wait several months until a Certificate of Copyright is returned to you. Note that even though the registration certificate may take months to come back to you, the copyright is presumed to be registered when your mailing is received by the Copyright Office. You might therefore want to include some sort of proof of receipt with your mailing.

Copyright actually attaches the instant a work of authorship is affixed in a tangible medium, but the protection is less than ideal until that work is sent to the Copyright Office and registered. The federal courts, which have exclusive jurisdiction over copyright matters, won’t even look at a case where an unregistered copyright is infringed. No statutory damages are available to unregistered works, which means that the copyright owner must prove actual damages from the infringement to get any relief at all.

Since copyright is so easy to register, there really is no reason not to register it. Spend the $45 and get full protection for your valuable works of authorship.