February 3, 2020

Can I Patent This?

Yes you can!

That’s what the board said in ex parte Linden.

Examiners are challenging claims of patents that are patentable as being directed to “ineligible subject matter” under section 101 of the patent law. This means that the claims are not patentable, but only due to the invention being directed improperly to some “abstract idea” rather than some practical application. (This stems from the difficulty in applying the Supreme Court’s logic in its “Alice” decision, which has left many inventors and patent professionals, alike, seemingly lost in patent Wonderland.)

The board disagreed with the Examiner’s reasoning for rejecting claims as ineligible in ex parte Linden. So, this case is instructive for showing software that is patent eligible.

Since no claims recited any mathematical concept, the Examiner was mistaken to base a rejection of the claims on an algorithm being recited in the specification. At least one mathematical concept must be recited in the claims to even go there.

Also, while it’s possible for transcription to be performed by a human, the board found the claims directed to a specific implementation that could not be performed in the human mind. The board pointed to the limitations in the claims including the steps of normalizing an input file, generating a jitter set of audio files, generating a set of spectrogram frames, obtaining predicted character probabilities from a trained neural network, and decoding a transcription of the input audio using the predicted character probability outputs. These steps are directed to a machine, not the human mind.

The Examiner’s argument that the claims recited “organizing human activity” was rejected by the board, also, because these steps have nothing to do with human activity.

The board sided with the Applicant that “…the claims of the current application include specific features that were specifically designed to achieve an improved technological result…” providing “…improvements to that technical field.”

Thus, the boards decision provides a blueprint for overcoming hasty rejections of claims that fail to provide any logical reason that specific limitations of claims are patent ineligible. Too often, Examiners seem to be rejecting claims on flimsy accusations of patent ineligibility. More board decisions like ex parte Linden will be needed to correct this common practice, which persists, notwithstanding the patent office’s revised guidance issued in October 2019.

February 2, 2020

Trademark Filing Change

The US Patent & Trademark Office announced that it will delay the effective date of its mandatory electronic filing rule change from December 21, 2019 to February 15, 2020.

Under this change, trademark applicants and registrants will be required to file their trademark applications and documents concerning trademark applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS). 

November 22, 2019

Google v Oracle

BREAKING: Supreme Court of the United States agrees to take up precedent setting case on copyrightability of software.

I don’t expect a ground breaking change in what the courts consider copyrightable, but this case does raise interesting legal issues.

The issues arise out of a brouhaha between Oracle and Google over Google’s rewrite of a JAVA-like operating system for Android devices that adopted the same API structure and calls as used in the JAVA programming language.

The Court of Appeals for the Federal Circuit, the “IP appeals court”, overturned lower court decisions that would have dismissed the case for no copyright infringement or found “fair use” by Google of the API structure and names.

It is black letter law that short names cannot be copyrighted.

Its also black letter law that facts cannot be copyrighted.

In fact, except for software, copyright only protects “original creative expression” and the content is not protected.

How a person expresses an idea is protected by copyright not the idea, itself. But how a person expresses themselves in source code is not really the issue, unless lines of code are actually copied.

17 U.S. Code § 102 (b) of the Copyright Act states: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” Software is just another type of “original work of authorship”. So, copyright doesn’t extend to the process or method.

For the most part, Google rewrote the source code for its operating system, expressing it in a different way. So, there doesn’t seem to be any significant actual copying by Google of any “original work of authorship.” Google chose to keep the functional API structure and call names substantially the same as Oracle’s JAVA API, but these calls to the code are a structurally functional process used to access Google’s operating system. It did this to make it easier for JAVA programmers to program for its Android operating system.

This is where it gets interesting.

Copyright’s protection of creative authorship is not an ideal protection for software, which gains its value from the functional procedures, processes, systems, methods of operation, and concepts — not from the expression of these. The real creativity in software is not how the source code is expressed but how it functions, the logic.

There’s nothing inherently creative about the expression of an API, which is utilitarian in nature. Nobody reads an API for enjoyment or to learn something, other than how to program a device to do something with the library of calls provided by the operating system.

Now, here’s the rub. It’s patent law that is intended to provide protection for a new, nonobvious and useful “…procedure, process, system, method of operation…” — not copyright. But the courts have been invalidating software patents for all types of “abstract ideas” and “algorithmic methods”. So, large swaths of software applications are no longer considered patentable subject matter.

If the functionality and utilitarian aspects of software are held to be unprotected by both copyright and patent law, this leaves trade secret law as the last vestige of protection for software. However, trade secrets only protect against misappropriation, not reverse engineering or independent redevelopment.

Many programmers embrace open source and might consider it to be just fine that companies can’t protect software using intellectual property rights. They see the benefits of reusing code and technological efficiency as a benefit to society and don’t see any significant benefit to keeping programs proprietary.

In fact, the Electronic Frontier Foundation (EFF), which declares itself the “leading nonprofit organization defending civil liberties in the digital world”, is celebrating the decision by the supreme court to reconsider the decision made by the Court of Appeals for the Federal Circuit.” The Supreme Court now has an opportunity to reverse the damage done by the Federal Circuit,” declare authors Michael Barclay and Katharine Trendacosta in an article posted to the EFF website.

They point out that the U.S. Solicitor General in the Obama administration opposed review by the supreme court and disparage the reasoning used in its briefs opposing review.

However, relying solely on trade secret law to keep software proprietary, ironically, could make it much harder to disseminate technology benefits. Programmers could be subject to egregiously restrictive covenants in employment and consulting agreements.

Let’s wait and see how the supremes deal with the issue. Proprietary software serves a purpose, allowing companies to invest and recoup some of their investment in large software development projects.

The term of 95 years under the Copyright Act is not at all reasonable for software. Even the 20 years from filing provided for patents seems long. Maybe it’s time to develop a new type of IP, with a shorter term, which provides protection for programmers without unduly burdensome repercussion on innovation in the technological arts.

November 21, 2019

Facts Not Copyrighted

A recent Florida case is a good example for teaching what copyright protects and doesn’t ptotect. Netflix was sued by the author of a memoire in Vallejo v. Narcos Productions LLC.

The court dismissed the case, because Netflix did not infringe Vallejo’s copyrighted work. While there was copying of some facts from the work, these facts do not belong to Vallejo.

According to the decision, in one alleged instance of copying “…the only similarities between these two scenes are the blindfold, caressing with a gun, and Plaintiff/Velez is aroused.”

How these facts are portrayed in the fictionalized version presented in the Narcos series is substantially different than the description in the memoir.

“These facts are not protectable. The idea of a sex scene involving a gun is not protectable…. There is no dialogue that has been copied, the settings are different, the feel of the scenes are different, and how the scenes play out are different.”

Copyright cannot be used to prevent others from disclosing facts, even if the only place that those facts are found is in one copyrighted work. Once the facts are known, anyone may retell the facts, so long as the reteller does so in their own way and own words, without copying the way that the original author expressed those facts in the original work.

The fictionalized retelling of a story that uses a few original facts from a copyrighted work but tells a different story in a different way is not copyright infringement.

October 24, 2019

Food & Beverage IP

Trademarks & Trade Secrets are great ways to build value in the food & beverage industry. Why?

Any company that sells (ultimately) to consumers needs a brand, because a good brand builds loyalty. Brand loyalty means that your customers will pay more for your branded product than for a generic.

But what about trade secrets? Most food and beverage companies won’t file patents, even if the product is technically patentable. As it turns out, the subjective nature of taste and mouth feel for food and beverage products depends not only on ingredients but also on the preparation, i.e. processing steps. Scale up can be a trick, also. This lends itself to trade secrets.

Coca-cola’s formula for its cola beverage is a well known trade secret. The formula was first reduced to writing in 1919 and is locked behind a reinforced steel door in a vault with palm scanner and numeric code access required. The company takes measures to prevent most employees from learning the entire formula by departmentalizing and managing vendors that under obligation of confidentiality. Only two executives know the entire formula, which includes the specifications for the water used in the process. (Different water sources taste different.) In order to successfully litigate a trade secret infringement case, a company must show that it has taken reasonable measures to protect the trade secret from public disclosure. Coca-cola has managed to keep its secrets for a century.

Kentucky Fried Chicken has a secret recipe for its fried chicken. Aunt Claudia wrote down a recipe for fried chicken that was discovered by Joe Ledington, a descendant of Colonel Sanders, in a scrap book. It is only trade secret infringement if the trade secret is “misappropriated” by someone. In this case, Joe wasn’t under any obligation to keep the family recipe secret. However, commercial recipes are seldom the same as a family recipe. Scaling up a recipe to a commercial process usually requires changes to a family recipe. It’s not as simple as simply making a bigger batch. At least two different suppliers make portions of the recipe, which prevent suppliers from knowing the entire recipe. These suppliers are sworn to secrecy in nondisclosure agreements. So, the “secret recipe” is still secret and is locked up in at least two safe deposit boxes to keep it both safe and secure.

McDonald’s has a “special sauce” that is prepared only for its Big Mac. Unfortunately, it was once reported that McDonald’s lost the recipe for its secret sauce, and for a few years its recipe changed, until the recipe was recovered from a vendor that had a copy of the original recipe. Then, McDonald’s made a video public that showed how to make its special sauce. A secret loses the ability to be protected if the secret is disclosed publicly. Therefore, the “special sauce” is no longer a secret sauce, because McDonald’s did not take reasonable measures to protect the secret from public disclosure. Once secrecy is lost, a trade secret is lost forever. On the other hand, so long as the secrecy is protected, trade secret rights never expire. McDonald’s loss of its trade secret is probably not significant, because the value of its “special sauce” has been transferred to its brand.

If you have information that derives economic value from being kept secret and make reasonable efforts to maintains its secrecy, then you have a trade secret. Trade secrets can give you a competitive edge. If use the value of your trade secret to build value in your brand, then even if your trade secret is discovered, later, by reverse engineering or dumb luck, it won’t matter. The value of your company will be greater than it otherwise would have been. For that reason, trade secrets are valuable intellectual property. Don’t ignore them.

October 23, 2019

Important Change To Trademark Filing

On the 26th of October, users will no longer be permitted to electronically file marks without first registering for an account with the US Patent and Trademark Office (USPTO). Access to the Trademark Electronic Application System (TEAS) will only be available to users with a USPTO.gov account and two-step authentication. To find out more and sign up for an account go to www.uspto.gov/about-us/news-updates/teas-login-requirement.

August 26, 2019

I Double Dare You

What happens when a trademark owner allows a registration for a mark to lapse? What if someone else wants to register the same mark? Is it abandoned?

Armstrong filed an application for registration of the mark “Double Dare” for several classes of goods and services including:
IC 041. Entertainment, namely, a continuing children’s show, and segments thereof, broadcast over television, cable televiion (sic) and the internet

Viacom filed an opposition to Armstrong’s application after the application was published, and Viacom sued Armstrong for a declaratory judgment that Viacom still had “common law” rights in the “Double Dare” mark, even though it allowed the federal registration to lapse.

According to Viacom, it has continued to use the mark. Continuous use of a mark in commerce establishes a common law right in a mark, even without a registration.

But the district court in New York dismissed the declaratory judgment action as being too speculative, at least until Armstrong’s application registers. To add complexity, the opposition proceeding is suspended, preventinng the mark from being registered, until after a final resolution of the declaratory judgment lawsuit.

So, until Viacom either fails to appeal the decision of the district court or the appellate process is completed, Armstrong’s application will be suspended.

Armstrong’s intent-to-use application is part of a pattern of trademark squatting, according to Viacom’s declaratory judgment action. So, it will be interesting to see what happens in this case, assuming the matter is not settled by the parties first, as so often happens in situations similar to this.

The takeaway is to be very careful and circumspect when considering whether to file an application for a mark with a registration that has lapsed but remains well known. You’ll want to have evidence that the mark has been completely abandoned by the original owner.

August 20, 2019

Court dismisses DNC trade secret case

The Democratic National Committee (DNC) sued the Russian Federation and others for theft of trade secrets and other counts. 

The “relief from the alleged activities of the Russian Federation should be sought from the political branches of the Government and not from the courts,” because sovereign nations cannot be hauled into civil lawsuits without some waiver of their sovereign immunity. 

The DNC’s trade secret claims under the Defend Trade Secrets Act and a local Uniform Trade Secrets Act were dismissed because the DNC failed to identify facts that supported a conclusion that it owned any valuable trade secrets, took reasonable measures to protect, and derived commercial benefits from keeping the allegedly purloined information as trade secrets.  anything about the development of the list and strategies or the value of their alleged secrecy. The DNC made “conclusory allegations” that were “insufficient to state that the stolen documents were trade secrets.”

Also, the dissemination of already publicly released documents is not misappropriation, and trade secret law only protects against misappropriation. The DNC failed to allege liability, except for the Russian Federation, for any of the hacks of the DNC’s computer systems. The remaining defendants were not liable for use of documents, even if previously trade secret, after the documents were published. Use of “documents that had already been published by the Russian Federation and WikiLeaks is not an unlawful or improper use of the documents.” A “trade secret that becomes public knowledge is no longer a trade secret.” And “…so long as the disseminator did not participate in any wrongdoing in obtaining the materials in the first place,” the dissemination is protected free speech. 

The Court distinguished between soliciting someone “…to steal documents…” and “…a request for material that had been stolen,” already.  The law is clear that “journalists are allowed to request documents that have been stolen and to publish those documents.” 

The trade secret claims were dismissed “with prejudice” as barred by the First Amendment and for failure to state a claim for which the relief sought could be granted. So, the only course open for the DNC is to request reconsideration or to appeal the decision.

Lesson:  Take reasonable measures to protect your trade secrets like encryption and training for those that have access to trade secret information. Keep track of your trade secrets and how the information came into your possession, how much it cost, and the measures taken to protect it.

August 19, 2019

Do I need a patent attorney to file a U.S. patent?

If you are filing a patent in the U.S., the law does not require you to have a patent agent or attorney.

That said. A patent application is not easy to draft without significant training. Even for experienced patent attorneys, with all of the changes that are occurring in the law, drafting a patent application that will stand up to a legal battle in the future is challenging, to say the least.

So, you SHOULD hire the best patent attorney that you can afford, if you really NEED a patent.

The real question is … why do you need a patent?

I’m a US registered patent attorney and make my living from preparing, filing and stewarding patent applications through the patent office.

Most innovative and creative startups don’t NEED a patent.

If you need a patent, then you should be prepared to spend the money to get a good one.

August 19, 2019

How do I avoid copyright infringement?

Either independently develop or license from a reliable source all of the images and other works of authorship that you use personally and in your businesses. If you do this, then you won’t infringe anyone’s copyright.

There is a legal way to use copyrighted works in the US without getting a license. It’s called “fair use” and is a limited defense against copyright infringement for use of a copyrighted work for a specific purpose. There are 4 factors to consider:

  • the purpose and character of your use of the copyrighted work;
  • the nature of the copyrighted work, itself;
  • the amount and substantiality of the portion taken (used); and
  • the effect of the use upon the potential market for the copyrighted work.

You’d like to know that your use is “fair use” BEFORE being sued. But this is a difficult analysis, even for an intellectual property attorney.

Typically, a legal opinion for a relatively easy analysis would cost $10,000. So, “fair use” is not for everyone.

Also, fair use is merely an affirmative defense to copyright infringement. So, relying on fair use basically admits infringement. If you’re analysis is wrong, it’s going to cost you.

So, it’s better to own or license works.