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shaking figure upsidedown moneyIn the American legal system, the popular notion is that the courts should be equitable and fair to all parties, both plaintiffs and defendants, regardless of the issue at stake. This is reflected in our system’s handling of lawsuit legal fees, which typically keeps the costs of engaging in litigation with the party who contracted those costs during the legal process. Only in the most special of circumstances does the losing litigant have to pay the attorneys fees of the prevailing party in the United States. This has long been believed to be the best way to make sure that even those of modest means have meaningful access to seek redress in Court for wrongs suffered.


The American concept that each party should ordinarily pay for legal representation regardless of whether they win or lose has developed in sharp and direct contrast to legal fee rules in other countries. The two contrasting regimes are named for the two countries that most clearly represent these differing views: the United States and England. In recent days, the United States Congress, urged on by certain high-tech corporations, has considered legislation that would create new rules regarding fee shifting for patent lawsuits as a way to discourage so-called “patent trolls” from engaging in litigation. Unfortunately, the legislative proposals currently being considered are not at all narrowly tailored to address the patent troll problem, even assuming there is a patent troll problem, which the objectively available data calls into question in the first place.


Certainly, there is abusive litigation that occurs in the patent world. This abusive litigation does not, however, signal a problem with the patent system. Rather, the abusive litigation tactics leverage judicial inefficiencies to force litigants into paying exceptionally paltry sums rather than pay to fight a patent litigation that on average could cost $2 million to see through to the end. Those sending demand letters for $500 or $1,000 to small entities should be stopped. Those that sue large entities without care of whether there is infringement and settle for $25,000 or $35,000 should be stopped.

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BPnfkFkCEfqyF6C6nKMPZD3wThe Copyright Act of 1976 (the copyright laws of the United States) gives the creator of a work five exclusive rights:
the right to make reproductions of the work;
the right to publically display the work;
the right to publically perform the work;
the right to distribute the work; and
the right to make or authorize derivative works based on the original


Generally, when someone who has not received the permission of the creator exercises one of those rights, that person is infringing on the rights of the creator and can be liable for copyright infringement. However, the Copyright Act includes some defenses. There are exemptions from the infringement provisions, along with “statutory licenses,” which allow an infringer to pay a set fee for the use of the material, even without specific permission. One of the broader defenses, however, is fair use.


What is Copyright Fair Use?


The fair use provision is meant to promote discussion, commentary, and education regarding works otherwise covered by copyright law. Essentially, it allows users of a copyrighted work to argue that their use is not infringement because it does not create the kind of threat to a creator’s right to be compensated for his work that copyright law protects. For example, fair use generally allows things like parody, or quotation in an editorial to facilitate commentary. Fair use is codified in the Copyright Act through a set of four factors the court will balance to determine if the use of the work is fair or should be penalized as infringement.

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globe earth arrows 335For better or for worse, there is no such thing as a world-wide patent. There is, however, something that approximates a world-wide patent application that can ultimately result in a patent being obtained in most countries around the world. This patent application is known as an International Patent Application, or simply an International Application. The international treaty that authorizes the filing of a single patent application to be treated as a patent application in countries around the world is the Patent Cooperation Treaty, most commonly referred to as the PCT. You can file an International Application pursuant to the rules of the PCT and that application will effectively act as a world-wide patent application, or at least a patent application in all of those countries that have ratified the PCT, which is virtually all of the countries where you would want a patent anyway.


So how is it possible that there is a single world-wide patent application but no world-wide patent? Patents are granted by individual countries, not by any international authority. Soon the European Union will change this by granting a Europe wide patent, but even then to obtain a patent around the world multiple jurisdictions will need to authorize the application and grant the rights.


The patent application process can be streamlined and uniform, as with the PCT process, but individual countries have different patent laws, which makes a uniform world-wide patent granting process impossible. For example, in some parts of the world living organisms are not patentable, but in the United States at least some living organisms are patentable if they are the product of human engineering. Similarly, in much of the world computer software is patentable, but computer software has become increasingly difficult to patent in the United States thanks to the Supreme Court’s decision in Alice v. CLS Bank and the way patent examiners have implemented that decision.

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patent definition 1During patent examination, pending patent claims are given the broadest reasonable interpretation that is consistent with the specification (i.e., the disclosure of the invention in the application other than the patent claims). This broadest reasonable interpretation of the claims is made as the claims would be understood by one of ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).
The broadest reasonable interpretation standard is frequently referred to simply as BRI within the industry. The Patent Office applies the broadest reasonable interpretation in virtually all circumstances.* Whether the Patent Trial and Appeal Board (PTAB) should be using the broadest reasonable interpretation when it reconsiders previously issued patents in post grant proceedings will soon be considered by the United States Supreme Court. Notwithstanding, the focus of this article is not specifically to evaluate the merits of the Cuozzo appeal, but rather to generally discuss the broadest reasonable interpretation standard and what it means from an analytical perspective.


Claim what you disclose


Patent Office regulations require the patent claims to conform to the invention described elsewhere in the patent application, with the terms and phrases used in the claims finding support within the patent application so that the meaning of those terms in the patent claims may be understood by reference to the overall description. See 37 CFR 1.75(d)(1). Said another way, you cannot claim something that you have not disclosed elsewhere in a patent application.


Applying the broadest reasonable interpretation of patent claims during the patent examination process, which is referred to as patent prosecution, makes sense given the role the patent examiner plays in determining whether to issue a patent in the first place.

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businessman lockLast week, the United States Senate passed the Defend Trade Secrets Act of 2016 (the “DTSA”). If passed by the House of Representatives and signed by the President, the DTSA would for the first time grant owners of trade secrets a private right of action in federal court for the theft and misappropriation of trade secrets. While theft of trade secrets has been a federal crime since 1996, the United States has never enacted legislation granting to owners of trade secrets the right to commence civil actions in federal courts. Although trade secret owners have not gone entirely without civil remedies, as nearly all 50 states have enacted the Uniform Trade Secrets Act of 1979 (UTSA), the DTSA improves on existing state law in significant respects. First, the DTSA expands the universe of available remedies by providing for ex parte seizure orders that direct U.S. law enforcement officials to seize stolen or misappropriated assets. Second, under its expansive injunctive relief provision, the DTSA includes important mechanisms for preventing anti-competitive activity in the labor market. Third, although an initial period of relative uncertainty may ensue as the federal judiciary takes time to develop jurisprudence interpreting the DTSA, a national standard should guarantee greater predictability of legal outcomes. Thus the DTSA should ultimately benefit U.S. businesses. Accordingly, businesses would do well to familiarize themselves with key aspects of the DTSA, including how it differs from the UTSA.


Unlike the UTSA, the DTSA allows complainants to seek an ex parte order of seizure under “extraordinary circumstances.” The bill does not define “extraordinary circumstances,” although it does provide that ex parte seizures are unavailable where a temporary restraining order or other equitable relief would be sufficient to prevent damages, thus offering a clue as to where federal judges might begin when interpreting the meaning of this term. The DTSA seizure provisions also require that the alleged wrongdoer be in “actual” possession of the assets to be seized (i.e., the assets containing the trade secret, such as hard drives or paper documents). If the DTSA becomes law, the ability to obtain an ex parte seizure order would provide business owners with a new and valuable weapon against costly trade secret theft and misappropriation.


Where an ex parte order is unavailable under the DTSA, complainants may still seek injunctive relief. However, unlike the UTSA, which also offers injunctive relief, the DTSA includes language providing that an injunction is improper and not issuable if it: (1) prevents a person from entering into an employment relationship, or if conditions placed on employment are not supported by evidence of threatened misappropriation, or (2) otherwise conflicts with an applicable state law prohibiting restraints on the practice of a lawful profession, trade, or business. The Senate added these safeguards to quell fears that employers might abuse injunctions as a means for doing a run around local laws limiting the scope of restrictive covenants in employment contracts, thus inhibiting the free flow of labor. Another substantial difference distinguishing the DTSA from the UTSA—one which is very favorable to trade secret owners—is that DTSA injunctions lack any apparent time limitations. An injunction issued under the UTSA terminates once the trade secret has ceased to exist or any commercial advantage has subsided: the DTSA does not provide any similar limitation on the duration of the injunction. In sum, the DTSA language improves upon the UTSA by enhancing the ability of business owners to benefit from injunctive relief while ensuring that employees are not unduly harmed.

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downloadDisappointing some (i.e., Patent Owners) who were looking for a more significant changes to the rules governing inter partes review, post grant review, and/or covered business method review, on April 1, 2016, the Patent Office issued its Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board. About one year earlier, the Office hinted at the possibility of more sweeping proposals for change, but many of the more major proposals were not implemented and only more incremental change was adopted. Here are the five things every Patent Owner and Petitioner must know about the new ground rules governing the most seismic change in patent law in several generations – post grant administrative trials.


1. Expiring Patents May Not Be Subject to the Broadest Reasonable Interpretation Claim Construction Standard.


As we await the Supreme Court’s decision in In re Cuozzo Speed Techs., LLC, where it will decide whether the Office has been properly applying the Broadest Reasonable Interpretation (BRI) to post grant administrative trials, or whether it should have been applying a Phillips-type claim construction standard, the Office has implemented a rule that, for patents that will expire before the end of any trial, a Phillips-type construction can be implemented. 37 CFR §42.100 is amended to state that, if either party certifies that a patent will expire within 18 months from the petition being granted a filing date, it may be appropriate to treat the claims of that patent pursuant to a Phillips-type standard. If your post grant proceeding is directed to an old patent, keep in mind this opportunity to argue claim construction pursuant to Phillips, instead of BRI.


2. Patent Owner May Rely on Witness Testimony in its Patent Owner Preliminary Response.


Patent Owners often felt as if they were fighting with one hand tied behind their backs during the preliminary phase of a post grant proceeding because the Petition often contains testimonial evidence, but the Patent Owner Preliminary Response (POPR) was expressly required not to contain any such testimony. Now, 37 CFR §42.107 has been amended to eliminate the prohibition against presenting new testimony in a POPR. This change loosens the knot tying Patent Owners hand, but does not eliminate it entirely. While the Board can consider this testimony filed with the POPR, if a question of fact is created by such testimony, as compared to the Petition, the testimony shall be viewed in the light most favorable to Petitioner, solely for purposes of deciding whether to institute trial. 37 CFR §42.108. In addition, Section 108 is amended to make clear that Petitioner may seek leave to file a reply to the preliminary response, upon a showing of good cause.

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trademark laptop 335Last June, Walter Palmer, an American dentist and recreational big game hunter, shot and killed Cecil, a southwest African lion who had been the subject of a study by Oxford University and a major attraction for Hwange National Park in Zimbabwe. At first, Cecil’s killing drew international outrage and media attention, the hashtag #CecilTheLion spreading like wildfire on social media. Then it drew trademark applications.


At least four different applicants currently have live trademark applications pending in the United States for CECIL THE LION, covering everything from the noble, including charitable fundraising services and information and news commentary relating to wildlife conservation, to the commercial, including dolls, trading cards, and charms.


Cecil’s case wasn’t unique in 2015. In the aftermath of the January 2015 terrorist shootings at Charlie Hebdo in Paris, France, the hashtag #jesuischarlie (French for “I am Charlie”) emerged as a way for people around their world to show solidarity in light of the massacre. At its height in the immediate aftermath of the attacks, #jesuischarlie was tweeted at a rate of 6,500 times per minute and was included in 3.4 million tweets in under a 24 hour period, making it one of the most popular hashtags in history. Beyond the solidarity for victims that the hashtag expresses on its face, it also came to be understood as a means of communicating support for freedom of expression and free speech principles generally. It too prompted a trademark rush. Just six days after the shootings took place on January 7, 2015, the French Institut National de la Propriété Industrielle – France’s national intellectual property office – had received so many applications to register JE SUIS CHARLIE that it issued a formal statement indicating it would not register the phrase because the slogan’s wide usage stripped it of the distinctiveness required to function properly as a trademark. The French government was forced to issue a similar statement in the immediate wake of the November 13, 2015 terror attacks in Paris. In that instance, the French intellectual property office indicated that beginning the morning of November 14, 2015 – the day after the attacks – it had received so many applications to register PRAY FOR PARIS and JE SUIS PARIS that it was once again refusing to register the phrases at all. This time, however, the government noted that its decision not to register the phrase in either language stemmed from its conclusion that granting registration could be “contrary to public policy” in light of the phrases’ “use and their perception by the community” in light of the terror attacks.

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capitol flag 335Conventional wisdom within much of the patent community is that patent reform is dead, at least for the 114th Congress. There is no way that patent reform, which famously stalled in 2015, could possibly restart and gain any momentum in 2016, right? After all, this is an election year, but not just any ordinary election year. This marks the final year of the Obama Administration, at least 14 major candidates are running for President, and the Republicans and Democrats couldn’t be farther apart on just about every issue. Patent reform is dead.
Not so fast!


Yes, President Obama is a lame duck and it will become increasingly difficult for anything of substance to be accomplished in Washington, DC. Unfortunately for the patent community, despite the hyper partisan times in which we live, patents, patent reform and innovation policy are not political issues. Patents and innovation policy will not drive voters to or away from the polls, and supporters seem not to care if a candidate takes positions they completely disagree with on patent matters. In short, patent and innovation policy presents no risk for politicians, but well-financed donors and lobbyists covet more reform, which makes for a dangerous combination.


Yes, there are a number of Constitutional conservatives, such as Republican Presidential Candidate and former U.S. Senator Rick Santorum and conservative commentator Ken Blackwell, both who have vocally made patents a property rights issue (see here and here). But so far even Republican Presidential Candidate Senator Ted Cruz (R-TX), a staunch Constitutional conservative, has yet to go on record equating patents to a Constitutional property rights issue, although he did vote against the PATENT Act in the Senate Judiciary Committee. Still further, some of the major proponents of additional patent reform are Republicans, including Senator Chuck Grassley (R-IA), Congressman Bob Goodlatte (R-VA) and Congressman Darrell Issa (R-CA), all of whom find themselves interestingly in alignment with the Obama Administration and the Obama Administration’s chief benefactor, the company formerly known as Google.

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patlogoAfter months of deliberation, India’s Patent Office has issued new guidelines that firmly maintain the country’s practice of not granting patents for software inventions. Issued February 19, 2016, the new Guidelines for Examination of Computer Related Inventions put to rest the country’s recent debate over whether software can be patentable if it has industrial applicability.

India’s patent law does not define or use the term “software,” but it does say that “a mathematical or business method or a computer programme per se or algorithms” are excluded from patentability, as is “a presentation of information.” However, during the past year, the Patent Office began to interpret this exclusion narrowly by stating that software could be patentable if it is applicable to a particular industry.

The new Guidelines reject that notion and direct examiners to apply a three-part test when examining claims for computer-related inventions:

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computer code softwareSource Code Review is the most powerful tool in a litigator’s war chest in patent and trade secrets cases. An important consequence of the judicial climate shifting farther away from business methods and closer to technically complex IP is that receiving parties now face a higher burden of proof and subsequently higher legal costs. Not only are receiving parties now required to be more diligent prior to a case filing but they also end up spending extra thousands of dollars reviewing millions of lines of code to successfully formulating their infringement arguments.


On the other hand, with increasing complexity of software, legal costs have been increasing as well. Production of complex source code, in particular, increases the effort required to collect, triage, transportation and host the code during discovery – each of which comes at a financial cost. Furthermore, producing more code means stricter data security diligence by IT, eDiscovery executives and outside counsel increasing both the cost and the risk for the producing party. Notwithstanding, several strategies exist which can potentially keep costs and risks under control for both parties.


Size and Scope of Code Production

 

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Recently, in a Report to Congress on trademark litigation tactics, the United States Patent and Trademark Office (“USPTO”) defined the amorphous term Trademark Bullying or Trademark Trolling as the vexatious practice of a “trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Mirroring the modus operandi exhibited by patent assertion entities and copyright bullies, several creative mark owners have adopted and modified this sue-to-settle paradigm and applied it in the trademark context. In short, trademark trolls—businesses both large and small—aggressively assert rights beyond the scope of trademark protection afforded by the Lanham Act through the issuance of threatening cease-and-desist letters.


When issuing a tenuous cease-and desist letter, it is common for these audacious entities to unreasonably interpret the Lanham Act by failing to conduct a comprehensive objective evaluation of the third party’s mark in relation to their delineated goods and services. Further, unreasonable interpretations may also include falsely aggrandizing the strength of the owner’s mark, exaggerating the mark’s scope of protection, or misrepresenting the likelihood of consumer confusion in the marketplace.


Further, examining the content of traditional demand letters, the sender will often attempt to force the target to cease using his or her own mark or face imminent litigation. Alternatively, others are issued in an effort to extract license payments, rapid settlements, or seek co-existence agreements from the alleged infringer. This litigious practice evinced by bullies occasionally results in filing infringement suits against arguable violators in an attempt to financially exhaust and deter that trademark holder from rightfully utilizing their registered trademark in commerce. However, the threat of litigation is typically sufficient economic pressure to force an individual or smaller business into compliance.

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fair compassAfter much public comment and debate, new changes to rules for post-grant administrative trials before the Patent Trial and Appeal Board (PTAB) go into effect on May 2, 2016. These final rule changes, which are the second set of changes since the America Invents Act (AIA) went into effect, are the culmination of a series of PTAB listening tours and public comments to the rule change proposals published in August 2015. Among other things, the new PTAB rules are intended to address concerns that patent owners were at a disadvantage in responding to patent challenges, particularly during the pre-institution stage of a PTAB proceeding. The rule changes also introduce certification requirements for documents filed with the PTAB, confirm the broadest reasonable interpretation (BRI) standard, as well as exceptions to the BRI standard for expiring patents, and adopt an appellate-style word count limit for major briefs.


New PTAB Rules Allow Owners to Submit Testimonial Evidence


To date, the PTAB has received over 4,600 petitions, which by the USPTO’s own account is more than three times the number of petitions expected at the outset of the program. Initially, the rate of institution for petitions for post-grant administrative trials was quite high. As the practice has evolved, the parties have increased their focus on the early pre-institution filings. Petitioners submit thorough expert declarations in support of their petitions and patent owners submit carefully crafted preliminary responses in an attempt to avoid institution, or at least limit institution to only certain claims and prior art references. Recently, patent owners are proving more successful in avoiding or limiting institution, as shown by a declining institution rate.


Many practitioners, however, have expressed frustration at the imbalance of allowable pre-institution evidence. In particular, until now, patent owners have not been permitted to submit testimonial evidence with their preliminary responses, meaning that decisions on institution are often based on unrebutted expert testimony in favor of the petitioners.

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b2ap3_thumbnail_NoSoftwarePatents.jpgSoftware patents have been the subject of much debate – not only in the US, but also in Europe. This has been a thorny issue for many years and the future of software patents still remains unknown. At the outset, a breakdown of the differences between patents and copyrights will highlight why the patent is the form of intellectual property which is proving to be the most problematic with regards to software.

 

Patents v. Copyright

Copyright protects the expression of an idea, such as a literary work. Patent protects the invention and therefore the idea itself. Copyright can prevent the total duplication of a software program, but it will not prevent the formation of a program that utilizes the same concepts as an existing program. This is where most issues arise. In order for an invention to be eligible for a patent, certain essential requisites must be satisfied. There must be an “inventive step” and the invention must be novel. It must also be industrially applicable; hence there must be a business scope to it.
In the US, software patents have been in existence since the early 1970s, but courts have recently started to reject software patents. The courts have ruled that simply “doing something on a computer” does not enable one to obtain a software patent on the matter. After hundreds of thousands of patents being issued, it became clear that there needed to be more restriction and the courts have recently been invalidating patents that were already granted. In 2014, in the landmark Alice Corp judgment, the courts stated “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent eligible invention.” Thus the US is now retreating from its original position of granting software patents somewhat liberally.
 

Can software be patented in the EU?

The 1978 guidelines published by the EPO made it crystal clear that software is not patentable. However, this line was blurred in 1985, wherein the EPO stated that it was not important whether the invention is produced on a computer for such invention to be considered patentable, but focused instead on the effect it produced. The European Patent Office decided that the term “software” is too ambiguous and thus introduced the concept of a “computer implemented invention”. In the 1998 IBM case, the EPO’s Technical Board of Appeal stated:

"A computer program product is not excluded from patentability under Article 52(2) and (3) if, when it is run on a computer, it produces a further technical effect which goes beyond the "normal" physical interactions between program (software) and computer (hardware)".

Therefore, there needed to be a physical object which would benefit from this “technical effect”. 

In 2003, the EU proposal for a directive on the patentability of software patents intended to harmonize national legislation and practices with regards to the granting of software patents. However, it was rejected in 2005 by an astounding 648 votes with only 14 votes in favour during its second reading in Parliament. 

Article 52 of the European Patent Convention enlists programs for computers as one of the exclusions from patentability. However, the following paragraph states that such exclusion is “only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such”. This convoluted proviso has understandably confused many lawyers and jurists due to the addition of the words “as such”. This cast a lot of doubt as to whether software is actually patentable or not. However, the EPO has been known to grant software patents, provided that there is the “technical effect” laid down in the IBM case. In reality, the EPO has granted tens of thousands of software patents, even though this goes directly against what the drafters of the Convention had in mind.

Does this mean that such patents are not legally valid? It could be said that the EU will be following in the footsteps of the US – that is, invalidating patents that have been granted already, which effectively means that there has been a colossal waste of energy and resources. This is unfair on applicants and is not analogous to the idea of software patents to begin with – a patent implies ownership, which should not be capable of being bestowed and then swiftly taken away. The EPO has since felt a need to come up with a more efficient service where a patent will have a universal effect throughout the EU.

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FTC federal trade commissionIn the near future, the Federal Trade Commission is going to release the results of its study on patent assertion entities (PAEs)[1]. While it is very clear that we need additional information to understand the many complex business models that exist in the patent licensing world, the FTC’s study is unlikely to produce that information because of a few very critical flaws. What follows is an executive summary of my article, Sticks and Stones: How the FTC’s Name-Calling Misses the Complexity of Licensing-Based Business Models, published in the George Mason Law Review.


The premise of the FTC’s study is good. Most data on PAE activity is limited to publicly available information (i.e., litigation data), ignoring that the bulk of patent licensing behavior takes place before, and therefore outside, litigation. Using its 6(b) power, the FTC can obtain non-public data, including information about licensing requests, negotiations, patent acquisitions, and other activities that PAEs engage in. As the FTC noted, the study “will add significantly to the existing literature and evidence about PAE form, structure, organization, and behavior.” This information would be invaluable to those who study PAEs as well as to policy makers who remain concerned about PAE activity.


Specifically, the data that could be obtained through the FTC’s 6(b) study could do much to expose how much of the “patent troll” rhetoric is based in reality and how much is based on fear of what we do not know or understand. After all, it is always what is hidden that is the scariest. Although licensing of patent rights has occurred for hundreds of years, we simply do not understand its effects on innovation and the economy – in part because we do not understand patent licensing activity in general. While the FTC could have conducted a study that resulted in a “detailed understanding of the complex world of patent licensing firms,” the FTC’s study is instead “slanted in such a way that only part of the story will be uncovered. Worse still, the study has been shaped in a way that will simply add fuel to the anti-“patent troll” fire without providing any data that would explain the best way to fix the real problems in the patent field today.”
I describe two specific problems with the FTC’s study: one is definitional, the second is methodological.
First, the definition of PAE used by the FTC characterizes all PAEs as the same. But in treating patent licensing firms as a homogenous category, the FTC fails to recognize there is a wide spectrum of business models that exist under the licensing umbrella. It is “naïve and inaccurate” to lump them all together. The FTC’s study is explicitly “premised on a one-size-fits-all conception of patent licensing firms.” Where a well-designed study could shine an important light on the complex innovation ecosystem, the FTC instead squanders this opportunity from the outset by failing to recognize that not all PAEs are the same.

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b2ap3_thumbnail_portoflio-22.jpgRegistering a patent can be complex, expensive and can take many years. Below we evaluate what you should be considering before applying to register a patent.

 

Before registering a patent you should always evaluate whether there are alternative options that could be pursued to secure protection of your intellectual property rights. 

The alternative options could include registering a design in accordance with the registered design framework or protecting the documentation via copyright protection or alternatively by using the law of confidence.

If registering a patent might be appropriate for you and your business then you will need to determine whether your idea or invention can be patented. To be patented an invention must:
 
1. Be novel.
2. Involve an inventive step.
3. Be capable of industrial application.
4. Be sufficient described in the patent.
5. Not be within the scope of a statutory exclusion.
 
You can’t patent:
1. Literary, dramatic, musical or artistic works.
2. A way of doing business, playing a game or thinking.
3. A method of medical treatment or diagnosis.
4. A discovery, scientific theory or mathematical method.
5. New types of plants, seeds or animals.
6. The way information is presented.
7. Some computer programs.

If you believe that your invention satisfies the criteria for patentability then the next stage is to conduct a prior art search of the patent register to see whether your invention has already been registered and/ or is the subject of a patent application. You can undertake a prior art search using the online search facility at the Intellectual Property Office website. The IPO website also has the Espacenet search function which allows you to search worldwide published patent applications and registered patents.

You should also check and search internet and trade publications to see if your invention is already in the public domain. It might be the case that your invention has not been registered as a patent but is already in use and/ or in the public domain. 

Once you have reviewed and interpreted the search results you can then make an informed decision as to whether you wish to proceed with submitting a patent application.

The application process is:

1. complicated – approximately only 1 in 20 applicants get a patent without professional help
2. expensive - with professional help, applications typically cost in the region of £4,000
3. long - it usually takes 5 years

You should also note that if you get a patent, you will also have to pay to renew it each year, and there could be significant legal costs if legal action is required to defend the patent.
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b2ap3_thumbnail_google-460x275.jpgAs many people know, once information is on the Internet, it can stay there forever. However, some individuals have a legitimate interest in having certain information removed from the Internet, so they may pursue doing this through Google, the largest search engine at the time of publication. There is a certain process that individuals must usually follow in order to effectuate this, and Google does not guarantee that all unfavorable information will be removed.

 

Webmaster Request

If there is a photo, webpage or profile link that you want to be removed, you must first usually ask the webmaster to remove this information. This is important because this individual or entity still has the information that you want removed. Therefore, even if Google deletes it from their search options, the objectionable content is still on the actual page and accessible via social media, other search engines and the actual webpage. The webmaster has the ability to delete the entire page.

Removals for Legal Reasons
Google may remove content if it is for a particular legal reason. For example, it removes images of child pornography or sexual abuse.  Additionally, it will remove information pursuant to a legal request that the information is in violation of copyright infringement. 
 
Removal of Personal Information

Upon request, Google may remove personal information such as a Social Security number, other national identification card, credit card, number, bank account number or an image of a person’s signature. Additionally, Google may remove a person’s nude or sexually explicit picture that was uploaded without your permission. 

Before removing such information, Google assesses the risk of harm to you for identity theft, fraud or other types of risk. Therefore, it evaluates whether the information can be utilized for typical financial transactions, if it is something that was shared without your consent and whether it could be used to acquire additional information that could cause financial harm to you. 

Additionally, Google will not typically remove information that is already publicly available, including phone numbers, dates of birth or addresses because it can easily be found through other means. This also means that Google will not usually remove information that is included on governmental websites.

Due to this personal evaluation, every case is different. There is not a set formula for these types of requests that will automatically guarantee removal by Google. Additionally, if Google representatives conduct this analysis and determine that the request is being used to remove other information that is not personal in nature, the request will be denied. 

Removing Information

A person who wants to have information removed from Google can access the necessary request form through the Google website. There is a separate form for legal removals and personal information removals. If a person wants additional information on this subject, he or she may consider talking it over with a lawyer. He or she may be able to get a court-issued order requiring Google to remove such information. Alternatively, he or she may suggest other ways of remedying the situation, such as pursuing a claim for slander, fraud or misappropriation against the person who is responsible for publishing such information.
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b2ap3_thumbnail_copyright.jpgTechnological advancements in social media sites and website development tools have allowed users to easily share and discuss articles and photographs across the globe. In parallel with these technological developments, various organizations have sprung up that claim to represent owners of these shared photographs. These organizations send a letter and make an excessive copyright demand. Users must understand their rights before deciding whether to succumb to such excessive demands.

 

Social media websites have become a primary means of communication across the globe. Today, sharing of articles and photographs can be accomplished with a few simple clicks – many times from one’s mobile smart phone. Technological advancements have also made it quite easy for anyone to build their own website and share articles and photographs. In some cases, the photograph is part of an article posted on an online magazine’s website. Such articles typically include buttons for sharing the article on multiple social media platforms.
Copyrights are granted to the creator of a work of authorship the moment that the work is fixed into any tangible form. Copyright protection commences from the time that the photographer creates the photograph or the author writes the article. The creator owns the exclusive rights to copy, distribute, make derivative works of, publicly display and publicly perform the work. Other parties would require a license to use such works.
 
The organizations that represent photographers may have a legitimate purpose or may simply be copyright trolls. A copyright troll is a plaintiff who seeks damages for infringement upon a copyright it owns, not to be made whole, but rather as a primary or supplemental revenue stream. Trolls understand that enforcing copyrights can be more profitable than creating new works. Despite the possibility that some infringers will fight back in court, copyright trolls continue to exist today.

To prove copyright infringement, a plaintiff must show that it is the owner of the work, and that the user violated at least one of the exclusive rights. Users who receive letters should request proof of ownership or valid license from the applicable creator, and also proof of copyright registration.

A copyright holder can elect for either statutory damages, or for actual damages caused by the infringement as well as profits. Statutory damages generally range from $750 to $30,000. If the court finds the infringement willful, it may raise the statutory damages to as much as $150,000. But statutory damage awards can be as low as $200 if the user can prove that it was unaware that it infringed on the copyrights. However, if the work was not registered for copyright protection, then the creator may not be entitled to statutory damages. Without statutory damages, copyright trolls would lose their incentive to litigate.

Users are typically not aware that the material was protected by copyrights, and any alleged use was likely unintentional, not willful. Upon receipt of the demand letter, the allegedly infringing material may be immediately removed from the user’s websites. Even if statutory damages do apply, the $150,000 maximum would not apply to infringement that was not willful.

The copyright troll’s demands for fees for a retroactive license are typically excessive and unreasonable. Courts have ruled that copyright royalties must be reasonable. On Davis v. The Gap, 246 F.3d 152 (2d Cir. 2001) (finding that a claim of $2.5 million was wildly inflated and speculative and that evidence supported a much more modest claim). Users should review the license fees for comparable photographs to determine the range of reasonable fees in the marketplace.

Under U.S. copyright law, the fair use exception allows use of copyrighted material for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. One factor of the legal test addresses commercial use. Commercial use is given some weight in favor of finding fair use when the use is transformative – for example, use of the plaintiff’s copyrighted work in a different context such that the plaintiff’s work is transformed into a new creation.

Use of thumbnail versions of images linking to full size images and content on another website is fair use. Even though the entire original photo is used by online search tools, it serves a different function than the original photo. The search tools transform an image into a pointer directing a user to a source of information and provide a social benefit by incorporating an original work into an electronic reference tool. The use does not harm the market for full size images. Perfect10 v. Google, 508 F.3d 1146 (9th Cir. 2007).

Use of an image of a magazine containing photos to provide information to legitimate purchasers of the physical magazine is also fair use. The use was transformative with a purpose different than that of the photographer. The photographs in the article were already altered by the editors of the magazines. The photographer had already consented to have his works copied, altered and widely distributed, and had been compensated accordingly. Rosen v. eBay, 2015 WL 1600081 (C.D. Cal. 2015).

In the end, users should modify their processes and select images that are available royalty free or simply get a license in advance. Many online sources exist for such purposes. But when a demand letter is received, users must understand their legal rights and request the above additional information and make the appropriate legal arguments before deciding to pay an excessive royalty.
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Posted by on in TRADEMARK
b2ap3_thumbnail_trademark-shutterstock_116812078.jpgAre you aware that even if you have not registered a trade mark, you may still be able to enforce rights in your trading name or brand name and prevent others from exploiting it? If not, read this article for more information.

 

Are you a business owner who uses a trading name and/ or a brand name, but has not registered the name as a trade mark? If so, you may in certain circumstances, still be able to protect your mark and prevent its exploitation by a competitor. In order to do so you will need to be able to establish rights in the tort of passing off.

In very brief terms passing off involves a three-part test:

1. A goodwill or reputation attached to the goods or services.

2. A misrepresentation by the defendant to the public leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the claimant.
3. Damage to the claimant, by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the claimant. 
 
Goodwill has been described as "the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom". Although goodwill may be embodied in words, names or get-up, passing off protects the goodwill of the claimant's business as a whole and not individual marks. 

The most common form of misrepresentation is where a defendant falsely represents that his goods are the goods of the claimant. The misrepresentation can either be: (i) an express statement by the defendant to this effect; or alternatively; (ii) implied from the use by the defendant of the same or similar marks in respect of his goods or services as are used by the claimant. The misrepresentation must concern the source of the goods or services and not their quality, unless the quality is such that it is attributable to a particular trader. 

The claimant must prove on the balance of probabilities that a proportion of the public would be confused or deceived as a result of the defendant's misrepresentation. This is a question of fact to be decided in all the circumstances. Factors that are typically taken into consideration in assessing whether the public are likely to be deceived include:

1. The phonetic and visual similarities between the marks.

2. The nature of the marketplace and circumstances in which the goods are sold or services supplied.

3. The nature of the goods themselves.

In certain cases, the courts may find that there has been a misrepresentation even where there is no evidence of confusion. However, where possible a claimant should provide evidence of, and establish, confusion between the goods and services since this will clearly assist any claim in passing off.

The tort of passing off protects the claimant's right to the goodwill in his business and the claimant may therefore bring an action in passing off to protect this goodwill from damage. To bring a successful action for passing off, the claimant must show that the misrepresentation by the defendant caused damage to his goodwill. 

Where the claimant and defendant operate in a common field of activity and the defendant misrepresents that his goods are those of the claimant, the damage most frequently alleged by the claimant is the diversion of sales to the defendant. The public may be induced by the defendant's misrepresentation to buy the defendant's products or use his services and not the claimant's.
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b2ap3_thumbnail_bill-feig-san-francisco-49ers-new-orleans-saints-nfl-san-francisco-49ers-helmet.jpgDid you know that you can register your name as a trademark in sports? Many athletes know this and they obtain many benefit from this. Radamel Falcao, know as the ¨Tiger¨ or ¨Tigre¨ from Colombia’s soccer team, has a company named, Business Tiger S.A.S., his company manages all the sponsoring contracts and profits that the trademark FALCAO earns. Radamel Falcao had many trademark lawsuits with people that tried to use and register his name without permission.

Intellectual Property protects legally everything on the world’s market; it protects creams, suitcases, shoes, scientific ideas, and much more elements and objects. There is a legal document named The Nice Classification (NCL), that is an international classification of goods and services applied for the registration of marks, it discriminates 45 different classes.

It is really important for sports celebrities that practice football, baseball, soccer, tennis, golf, basketball and other sports, to protect their image and name so that they can have benefits in the sport and marketing field using its name as a trademark. Some examples are the soccer players like Messi, Cristiano Ronaldo, Beckham and James Rodriguez, these players uses their image to promote lotions, clothes, sport items and even underwear, things that are not always related to soccer but that for being a recognize person they can sell much more than what they get paid to play soccer.

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b2ap3_thumbnail_000_par8049419.21db1162141.original.jpgOne may question whether athletes would be able to claim copyright on their performance. It is well known that artists are able to do so and in fact do claim copyright on their work, such as song writing.

 

The answer as to whether athletes can claim copyright would affect not only the athlete directly, and their teams but also the entities that usually lay exclusive claim to the rights to exploit the event, such as sponsors and broadcasters.

The most important point which need addressing is whether athletes are, in the context of their sporting event, preforming or producing a qualifying “work” in relation of copyright legislation. If the answer is in the positive then they would have a claim over the exclusive rights to control the distribution of their work.

Maltese law provides that “works” shall be eligible for copyright if they are either:
i. artistic works;
ii. au diovisual works
iii. databases;
iv. literary works;
v. musical works.
 
From the above the one where athletes performance could possible fall under would be ‘artistic works’. The law defines it as including paintings; maps; diagrams; sculpture; photographs; works of architecture; works of artistic craftsmanship. Therefore, after analysing the definitions provided in law relating to what amount to “works”, it would be difficult to come to the conclusion that a performance would indeed fall under this definition.

The law goes on to define ‘performance’, whereby it states that it is the direct rendition of the work to a public which takes place under such circumstances that the works performed can be perceived by the public without any intermediate communication. Therefore, could the performance of an athlete fall under the definition? The law does not directly include athletes.

In the case of ‘Infopaq International’ the European Court of Justice (ECJ) has analysed the Copyright Directive, whereby it stated that copyright within the meaning of Article 2(a) is only applicable in relation to a subject-matter [work] which is original in the sense that it is its author’s own intellectual creation. Moreover, for the purpose of copyright protection, the term “literary and artistic works” is understood to include every original work of authorship, irrespective of its literacy or artistic merit. The form of expression must be the original creation of the author.

The question as to whether sporting events can be considered as “works” to qualify for copyright protection was addressed in ‘Football Association Premier League Ltd (FAPL) and Others v QC Leisure and Others’. In this case, FAPL, who runs the Premier League in the UK, distributed and marketed the television broadcastings rights for the matches based on territorial exclusivity. Certain companies in the UK were using foreign decoder cards, issued by a Greek broadcaster to subscribers in Greece, in order for them to access Premier League matches, instead of paying FAPL for broadcasting rights.

FAPL brought an action against them claiming that such activities undermined the value and exclusivity of their television broadcasting rights.

The ECJ stated that ‘FAPL cannot claim copyright in the Premier League matches themselves, as the matches cannot be classified as works (…) to be so classified, the subject matter concerned would have to be original in the sense that it is its author’s own work intellectual creation’.

The Court went on to say that ‘football matches cannot be regarded as intellectual creations classifiable as works within the meaning of the Copyright Directive. That applies in particular to football matches, which are subject to rules of the game, leaving no room for creative freedom for the purposes of copyright (…) It is, moreover, undisputed that European Union law does not protect them on any other basis in the field of intellectual property.’

After analysing what the Court has stated, one can conclude that a sport event which is susceptible to rules cannot amount to ‘work’ for the purpose of copyright law, because a person does not have the freedom to create ‘work’ of original intellectual creation which falls within the parameters of copyright law.

It is ,thus, safe to conclude that the majority of sportsmen cannot obtain copyright for their sporting performance, given that sport is rule bound and, therefore it prohibits them from the creative freedom which, would amount to a ‘work’ in terms of copyright law.

However, certain sport are less rule bound and thus, the person would be in a position to express and create their thoughts into practice. For example ice-skating and gymnastics provide a certain extent of freedom onto the athlete to express and create their own choreography. It is true that dancers, ice-skaters and gymnasts have rules to follow, however such rules are not to the same extent as football. Moreover, the degree of originality is higher than in football.

That said, it is still questionable whether ice-skating and gymnastics performance could fall under copyright law given that, dancers, athletes and the like still have rules to follow, and the freedom to express and create their personal ideas into practice is all-the-same limited.

Although, one may argue that if the characteristics of originality are present then such performances could amount to ‘works’ under copyright law, and athletes could thus be classified as artists. However one may question how it would be possible to distinguish and classify which athletes and which sport would fall within the ambit of copyright law.

Even though it is widely accepted that most sport performances do not fall under the definition of “works” for the purpose of copyright protection, certain sporting performances which, require a higher degree of original intellectual creation, could, possibly be classified as “works”. One may question why a distinction between the performance of a gymnast and the performance of an artist is drawn up.

One can therefore, conclude that the answer as to whether an athlete’s performance could fall under copyright law is debatable and open to interpretation. Therefore, regulations and national legislation should be clearer in order to provide legal certainty on what can or cannot be considered as “works”.
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