By James R. “Sonny” Chastain, Jr.

In a recent Supreme Court decision involving the Fourth Amendment, Justice Roberts noted that there are 396 million cell phones accounts in the United States for a nation of only 326 million people.  The cell phone provides numerous functions including access to contacts, data, information and the internet.  Some studies suggest people check cell phones every ten minutes and are less than five feet away from the phone most of the time.  It seems the cell phone has become an integral part of daily living. While the development may be productive in terms of the overall access to information, it also creates certain risks that employers should consider.

In many instances companies operate on a platform of bring your own device to work (“BYOD”).  Employers should consider what business information may be available to that employee on his or her personal cell phone.  An employer is vulnerable if an employee is connected to the employer’s computer system and can access valuable confidential information through the cell phone.   The risk is that the employer’s business information may “walk” out the door with the employee.  Moreover, if the information gets comingled with the employee’s personal information, there could be a problem in terms of “unscrambling” or wiping the phone on departure.   Certainly one approach is to not permit the employee to have access to the information on the phone.   However, an employee may need access in order to perform his or her job responsibilities.  Employers should consider whether to have a cellular phone policy that addresses how employees should use the phone, any issues regarding expectation of privacy, ownership of information, and wiping upon termination.

Additionally, a cell phone may cause distracted driving. Whether ringing, beeping, vibrating – the cell phone may cause drivers to lose focus.  A driver’s perceived belief that the ever important text/email may have just come in can create an overwhelming desire to check/respond.  To the extent an employee is on the road, the temptation to text, call or open an app may create serious risks.   Distracted driving is alleged to be a contributing factor in 80% of the automobile accidents on the road today.  Employers need to recognize this risk and be proactive in addressing it.  Employers should consider having a policy regarding the use of cell phones while driving.

Cell phones are integrated into our daily activities – just look around at any restaurant, getting on an elevator, or at a stop light.  No matter the time, place or circumstances, staying connected seems to be of utmost importance.  A cell phone is certainly very beneficial in terms of facilitating access to people and information.  However, cell phones may also bring about certain risks.  Employers may want to consider the risks which that may be applicable to it and any policies to put in place to address them.

By James R. “Sonny” Chastain, Jr.

On June 21, 2018, the Louisiana First Circuit Court of Appeals addressed the right of publicity and right of privacy in connection with Barry Seal (“Seal”) and the movie titled “American Made”.  In 2014, Universal City Studios, LLC (“Universal”) entered an agreement to purchase the life story of Barry Seal from his surviving spouse and children of his third marriage (“Seal Defendants”). Thereafter, Seal’s daughter from his first marriage, Lisa Seal Frigon (“Frigon”), as the administratrix of the estate of Adler Berriman Seal, filed suit against Universal and the Seal defendants seeking to nullify the agreement and claiming violation of right of privacy, right of publicity and asserting other causes of action.  Frigon claimed the right to control the commercial appropriation of her father’s identify and public image.  In response, Universal and the Seal Defendants filed a peremptory exception of no cause of action seeking dismissal of the claims which was granted by the district court.

On appeal, the First Circuit affirmed the district court ruling concluding that the right of privacy protects the individual.  Seal’s right of privacy was held to be strictly personal, not heritable, and died with Seal.  Moreover, the Court found no right of publicity has been recognized under Louisiana state law.  The court cited Prudhomme v. Procter & Gamble Co., 800 F.Supp. 390 (E.D. La. 1992) in which a federal court noted the possibility of a civil action to enforce a right publicity being recognized in Louisiana. However, the First Circuit said it could not find where such recognition had occurred.  The Court noted that judicial decisions are not intended to be an authoritative source of law in Louisiana, but are secondary.  The Court concluded, “Hence, for us to hold jurisprudentially that a right of publicity exists would constitute an unwarranted intrusion into an area in which the legislature has not seen fit to act”.  It declined to supply a cause of action through jurisprudence that it concluded Louisiana law does not.

We will see if Frigon files for a rehearing or seeks review at the Louisiana Supreme Court.

By Sonny Chastain

In its recent campaign, Bud Light recognizes true friends of the Crown by raising a cold adult malted beverage and chanting Dilly Dilly.  The marketing slogan was created apparently coming out of nonsense and fun.  In its campaign, Bud Light seems to want people to celebrate with a lighthearted toast of Dilly Dilly and escape the Pit of Misery.

On December 1, Modest Brewing Company in Minneapolis introduced Dilly Dilly Mosaic IIPA into the market place.  Instead of the typical “stop it or else” demand letter, Bud Light turned an infringement situation into a marketing opportunity.  Bud Light sent an actor into the Modest Brewery dressed in medieval garb to read a pronouncement from the Crown.   The Town Crier proceeded to read from a scroll, requesting Modest’s latest brew be put on a limited edition run.  The Town Crier stated that the Crown was flattered by the loyal tribute, but noted that Dilly Dilly is a motto of the Crown and disobedience would be met with additional scrolls, formal warning, and a private tour of the Pit of Misery.  As a peace offering, the Town Crier also offered two employees a free trip to the Super Bowl which is being held in Minneapolis.

The unusual cease and desist demand is achieving rave reviews on social media.   Instead of dilly dallying around in the typical strong-arm legal maneuvering, Bud Light raised a Dilly Dilly to the Modest Brewing Company.  In a creative manner, Bud Light made its point of protecting its trademark from further infringement, while generating some laughs and likely some goodwill among consumers. So, to Bud Light, Dilly Dilly!

By Sonny Chastain

General Mills filed an application to register the color yellow appearing as the uniform background on a box of Cheerios.   It contended that consumers have come to identify the color yellow specifically with Cheerios, when used in connection with the goods.  It submitted survey evidence and expert reports to support the claim of acquired distinctiveness.  However, the trademark examiner concluded that General Mills failed to prove acquired distinctiveness and that the mark fails to function as a mark.  An appeal was submitted to the Trademark Trial and Appeal Board (“TTAB”).

General Mills argued that the purchasing public recognizes the color yellow on a package of toroidal (ring or doughnut-shaped) oat-based breakfast cereal as an indicator that it is the source of the cereal.  The record showed that General Mills has sold Cheerios since 1945.  In the decade prior to 2015, General Mills spent over $1 billion in marketing yellow-box Cheerios with sales exceeding $4 billion.  However, the question was not whether consumers recognized the term Cheerios as a source indicator but whether the color yellow identifies origin.

The TTAB agreed with the examiner’s conclusion citing lack of exclusive use of the color yellow.  The Board noted that the examiner pointed to 23 cereal products that offered packaging in a similar color.  Several of the products are even offered by companies which are recognized as General Mills’ biggest competitors:  Kellogg, Post, and Quaker.  Some of General Mills’ survey subjects showed their awareness of several of the products, especially Honeycomb and Corn Pops.  Additional cereal boxes cited included Joe’s O’s, Honey O’s, Tasteeos, Honey Bunches of Oats, Crispix, and Life.  The Board concluded that General Mills is not alone in offering oat-based cereals or even toroidal shaped, oat-based cereal in a yellow package.  Thus, customers are unlikely to perceive yellow packaging as an indicator of a unique source.  While the color may be attractive and eye-catching ornamentation, it alone did not connect to a potential source.   The Board noted that while customers are familiar with the yellow color of the Cheerio’s box, the color yellow is only one aspect of the complex trade dress that includes many other features that perform as a distinguishing and source-indicating function.   It was not persuaded that customers perceive the proposed mark, the color yellow alone, as indicating the source these goods.  The Board found the yellow background did not acquire distinctiveness and does not function as a trademark.

The case teaches that it is important to recognize what mark or components thereof function to identify a source. A question to ponder is, with what features do consumers identify to connect a particular good or service with a source of origin? General Mills took an aggressive view of the source identifying capability of this color which the Board concluded was not correct.  It is possible that if additional features had been included in connection with the overall trade dress, that registration may have been possible.

By Lauren J. Rucinski and R. Devin Ricci

As of December 14, 2017, the Federal Communications Commission (“FCC”) repealed the so-called net neutrality regulations in a 3 to 2 vote along party lines. But what does this mean and how may this decision affect you or your business?

To be honest, it is too early to tell if derailing the short-lived regulation of internet providers will significantly impact the casual user’s internet experience, but there are some issues which should cause companies and individuals alike to be wary.

What is Net Neutrality?

Net Neutrality defines the concept that all content transmitted over a phone company or cable company’s network are to be treated equally and without preference. During the Obama administration, the FCC adopted rules to protect net neutrality.[1] These 2015 rules reclassified broadband Internet service as a form of telecommunications, allowing the FCC to regulate providers of Internet services, e.g., Comcast, Cox, AT&T, as common carriers under the Communications Act. The rules also aimed at specifically prohibiting certain “non-neutral” leaning actions by the internet service providers such as:

  1. blocking (providers cannot discriminate against any lawful content),
  2. throttling (providers cannot slow data transmission based on content), and
  3. paid prioritization (providers cannot create internet “fast lanes” for those willing to pay premiums).”[2]

These rules were, at least somewhat, in contrast to case law at the time. For example, in Verizon v. F.C.C., the D.C. Circuit held that anti-blocking and nondiscriminatory rules were unlawful because they treated internet service providers as common carriers in violation of the Communications Act.[3] At the time, telecommunications companies were treated differently than common carriers like the telephone companies. The 2015 FCC rules circumvented this issue by expressly making internet service providers common carriers. Without the 2015 FCC rules, cases like Verizon are going to become relevant again.

Should the average business owner be concerned?

Maybe. By dismantling the net-neutrality rules, internet service providers are no longer regulated as common carriers. In theory, the service providers can demand premiums for fast or substantial access to web-based services. This, of course, may have immediate implications for popular streaming services such as HBO, Netflix, and news outlets. These companies are likely to pass along any increase cost to the ultimate users, so it may not affect their bottom line. Some argue that the common mid-sized business is unlikely to feel much effect as typical webpages do not require substantial bandwidth. However, modern business is intrinsically tied to Internet based services. Although a company may not be part of e-commerce, it may rely upon every day services for billing, time keeping, or communications that could be affected.

One thing is for certain: we should not expect Net Neutrality to be reinstated any time soon. The Trump administration successfully pushed for its repeal and has shown no sign of recanting. Past Congressional attempts to regulate the area have not been fruitful, and it is unlikely that any new legislation will fare better in the current political climate.

Many groups have already voiced their intent to sue the FCC over the new regulations: the Internet Association (representing tech firms like Google and Facebook), public interest groups, and the New York Attorney General, to name a few. But, whether or not they will be successful is far off and yet to be seen. The concept of net neutrality issue is no stranger to litigation. In fact, the net neutrality regulations were borne out of case law deeming the regulations of non-common carriers unconstitutional. Because the common carrier classification of Internet service providers was repealed, precedential case law implies that any attempts to regulate these companies in the future would be unconstitutional. Only time and, unfortunately, more lawsuits will tell if Internet service providers will be able to cherry pick users and broadband speeds for a fee. We will continue to monitor this progression and provide updates as it unfolds.

***************************************

[1] Protecting and Promoting the Open Internet, 80 FR 19738-01; 47 C.F.R. §8.1, et. seq.

[2] 47 C.F.R. §§ 8.5, 8.7, and 8.9.

[3] Verizon v. F.C.C., 740 F.3d 623 (D.C. Cir. 2014).

By Jessica Engler

  • This article originally appeared in the Fall 2017 edition of DRI’s In-House Defense Quarterly

On March 11th of this year, the Defend Trade Secrets Act (DTSA) celebrated the one-year anniversary of its enactment.  The DTSA, 18 U.S.C. Section 1831, et seq. expanded the federal legal protection for holders of trade secrets presently offered to holders of copyrights, trademarks, and patents.  As of April, 2017, approximately 129 DTSA cases have been filed in federal court since the DTSA’s enactment.

Read the entire article here:  Defend Trade Secrets Year One

 

aqd2

By Devin Ricci

The City of Baton Rouge and the surrounding areas have been struck by devastating floods.  Thousands were stranded. The roadways to their homes are flooded and most impassable.  Flooding is not new to Louisiana.  Just over ten years ago, the state experienced one of the most devastating natural disasters on record with Hurricane Katrina.  Since then, numerous other storms have taken swipes at the state –  Gustav, Rita, Isaac, to name a few. 2016 has been the year of unnamed storms thus far for the citizens of Louisiana. Alexandria, Monroe, Shreveport, and Lake Charles each flooded in the months preceding the “Great Flood of 2016” currently affecting Baton Rouge.

Storms are uncontrollable, but as a patent attorney, I turn to technology that we can control for assistance in the aftermath. There is a glimmer of hope that we are not alone, that similar events throughout the world have resulted in great innovations some of which are currently being implemented throughout Baton Rouge to speed the recovery and rescue stranded citizens.  These innovations are far and wide, including solar technology, mobile cell phone towers, power stations, water filtration apparatuses. Even the oft-hated drones are being used to locate people and assess flooding from vantage points that would have previously been limited to helicopters.

One of the more popular examples of these innovations is the Aqua Dam by Layfield, which is being used across the area to block water from roadways.  We have all heard the moniker that you cannot fight fire with fire; the Aqua Dam is proof, however, that you may be able to hold off water with water.  Patented as U.S. Patent nos. 8,840,338 in 2014 and 9,297,133 in 2016, the Aqua Dam is a portable reservoir body apparatus comprising a plurality of interior bladders contained within an exterior housing (the outer tube).  The interior bladders are filled with fluids causing them to expand and fill the cavity of the outer tube.  The unit further comprises a series of fasteners to maintain its shape, thereby creating a displacement dam which prevents the passage of water.  These units are being used on the interstate, major highways and bridges.  In most instances, the flood water is being pumped straight from the road into the dam being formed to keep the water at bay, opening the roadways.

To the folks at Layfield, we salute you and appreciate your innovative contributions.  The Aqua Dam structures have and will continue to open our roadways, allowing evacuees to escape and rescuers to enter flooded areas. To others, and particularly the citizens of Louisiana, please keep innovating.  We cannot prevent all future flooding, but we can help diminish their impact with innovations like these.

 

trade secrets

By Jessica C. Engler

On May 11, 2016, President Barack Obama signed into law the Defend Trade Secrets Act of 2016 (“DTSA”). Through the DTSA, claims for trade secret misappropriation will now have a basis in Federal law and Federal Courts will have jurisdiction over such claims. In addition to the new federal cause of action, the DTSA adds in several tools that trade secret holders can use to protect their trade secrets, making this Act one of the most broad-sweeping changes to American intellectual property law since the Leahy-Smith America Invents Act in 2011. Given these changes and the Supreme Court’s recent decisions on the patentability of software and business methods, it is important that trade secret holders understand the new tools available for protecting their intellectual property rights and their new responsibilities.

Generally, a trade secret is information, including patterns, plans, compilations, formulas, design, processes, procedures, and more, where the holder has taken reasonable measures to keep the information secret, the information is not readily ascertainable or reverse-engineered, and the information gives that owner some kind of economic value or competitive edge.[1] Famous examples of trade secrets include the recipe for Coca-Cola, Google’s proprietary search algorithm, and the formula for WD-40.[2] However, trade secrets do not extend to just these highly-valuable examples. A majority of businesses have at least some trade secrets including, but not limited to, customer lists, marketing strategies and analyses, manufacturing techniques, pricing and purchasing information, business methods, business forecasts, and product information.

A trade secret is valuable for as long as the information remains a secret. Trade secrets can be lawfully learned through reverse engineering. What becomes more concerning for trade secret holders is unlawful use through commercial or industrial espionage, breach of contract, or employee poaching while non-compete agreements are in place. The unauthorized use or misappropriation of a trade secret by a person other than the holder is considered unfair competition and an unfair trade practice.

Before the DTSA, trade secrets were the only major form of intellectual property that that is not backed by U.S. federal civil remedies. Trade secret holders whose secrets were publicized typically only had state-level remedies available. The DTSA extends the current Economic Espionage Act of 1996, which criminalized certain trade secret misappropriations, to now permit civil lawsuits for trade secret appropriation. This new law will have significant impacts on holders of trade secrets.

First, this new law provides a federal remedy for trade secret misappropriation, but does not eliminate the remedies previously available in state court. Accordingly, litigation costs may increase since claimants may bring their claims in federal court alone or in both state and federal court. However, the federal claim will provide federal jurisdiction, which may reduce jurisdiction battles that were are common in trade secret litigation where the trade secret had crossed state lines. International companies will now also be able to bring suit in federal court where their United States office is located, which may help improve foreign companies’ ability to enforce judgments.[3] Further, having a federal remedy will create a nationwide body of trade secret law, which will provide a greater degree of predictability to trade secret litigation.

Second, in addition to allowing damages for wrongful takings of trade secrets, the DTSA includes a seizure provision, wherein a trade secret owner can obtain, on an ex parte basis, an order to seize “property necessary to prevent the propagation or dissemination of the trade secret that is the subject of the action.” This provision is intended to apply in cases where a trade secret thief who receives notice of the court action would leave the country or disseminate the secret before a court could stop them. For a seizure order to issue, the claimant must establish the standards necessary for a state civil injunction and show specific evidence demonstrating that the injunction would be insufficient because the thief would violate the order or would make the secret inaccessible to the court for seizure.

Third, the DSTA also has provisions that impact employee mobility. Employers can seek an injunction to prevent actual or threatened misappropriation of a trade secret by an employee, provided it does not prevent that person from entering into an employment relationship. For this injunction to be granted, there must be evidence of threatened misappropriation of the trade secret. An employer will not be awarded an injunction “merely on the information that the person knows.” Also important for Louisiana—a state that strongly disfavors non-compete agreements—the injunction cannot be used to circumvent state laws regarding restraints on employment and non-compete agreements.

Last, the DTSA provides immunity for whistleblowers. Under this provision, an individual cannot be held criminally or civilly liable under any federal or state trade secrets laws for revealing the disclosure of a trade secret in confidence to a federal, state, or local government official or an attorney for the purpose of reporting or investigating a suspected violation of the law. Employees may also disclose the trade secrets of their employer in court documents filed under seal as part of a lawsuit for retaliation by his employer.

In order to take full advantage of the DTSA, the Act requires employers make some changes to employee contracts, confidentiality agreements, and nondisclosure agreements. As part of the immunity provision, employers are now required to “provide notice of the immunity” created by the DTSA “in any contract or agreement with an employee that governs the use of a trade secret or other confidential information.” Failure to include this notice will strip the employer of certain remedies available in an action against an employee. The DTSA allows for exemplary damages when the trade secret has been willfully and maliciously misappropriated. Attorney fees can be awarded when the misappropriation is made in bad faith or when the trade secret was willfully and maliciously misappropriated. Attorney fees and exemplary damages are not recoverable unless the employer has provided the defendant employee, consultant, or contractor with notice of the immunity from criminal and civil prosecution granted by the DTSA to whistleblowing persons. Therefore, if an employer is to recover exemplary damages or attorney fees against an employee who unlawfully disclosed its trade secrets, the employee must have been notified of the immunity provisions. Therefore, if a company has employees, or employs consultants or contractors who have access to the company’s trade secrets, the company should consider consulting an attorney to ensure that their employment agreements include the proper DTSA immunity notifications.

While the DTSA presents new opportunities for a trade secret holder to enforce its rights, it is important to note that the DTSA did not alter the holder’s need to make efforts to keep the secret confidential. Trade secret holders must still make efforts to maintain the secrecy of their trade secrets and confidential information. An attorney can assist with ensuring that the proper steps are taken to maintain this confidentiality.

[1] 18 U.S.C. § 1839.

[2] Melanie Radzicki McManus, 10 Trade Secrets We Wish We Knew, HowStuffWorks.com (last accessed May 4, 2016) (available at http://money.howstuffworks.com/10-trade-secrets.htm)

[3] Monika Gonzalez Mesa, Latin American Companies Back New US Trade Secrets Law, Daily Business Review (May 3, 2016) (available at http://www.dailybusinessreview.com/id=1202756520297/Latin-American-Companies-Back-New-US-Trade-Secrets-Law?slreturn=20160404115326).

Go

By Jessica C. Engler

For many inventors, the grant of a patent application is quite exciting. However, once the inventor seeks to market their invention, they can find the process costly and overwhelming. Often when small companies or solo inventors develop new ideas that are later patented, they discover that manufacture or use of the patented invention is unmanageable for an entity of their size. Rather than sit on this technology and let the patent protection expire, these persons will seek to sell their patented idea to another person or company who can use them. Scattered among firms and investors who are attempting to acquire valuable patents for use in their own businesses are non-practicing entities, who have more litigious purposes in mind. Non-practicing entities, which are known colloquially as “patent trolls,” are entities that purchase patents solely for the purpose of enforcement of the patent rights. Patent trolls do not make, use, sell, or offer to sell the technology that is disclosed in the patent; rather, they acquire patents and then send out cease and desist letters or demands for licensing fees to persons (typically individuals and smaller companies who do not have the means to pay for expensive patent infringement litigation) that they perceive to be infringing its patents. At times, these claims of infringement are based on tenuous grounds, and the person receiving the threats feels that they have no choice but to pay the patent troll what they are demanding.

Patent trolls have contributed to the push to reform the patent system by a variety of people—from the legislature to late night television show pundits. However, a recent new player has presented an idea for changing the patent landscape by taking would-be sales of patents away from the trolls. Google, who has previously openly criticized the patent system and questioned the need for patents as a whole, announced on April 27, 2015 that it will be testing a new program for two weeks called the “Patent Purchase Promotion.” This promotion invites owners of non-expired United States patents to sell their patents to Google. From May 8, 2015 to May 22, 2015, Google will open a streamlined portal for patent owner to offer to sell their patents to Google at a price that the patent owner sets.[1]  Google will review all of the offers for sale and then let patent owners know Google’s decision by June 26, 2015. Google has not set any kind of standard for the type of non-expired United States patent that will be considered other than that the patent cannot be a design patent. Google anticipates that all of the patent sellers would be paid by the end of August. Through this, Google claims that it is seeking to protect those patent owners who wish to sell their patents without the risk of the patent falling into a patent troll’s hands.

Google has yet to announce how many patents it will be purchasing or how much money it has invested into this new promotion. Google has also not announced what kind of critiques or methodology that Google will be using to evaluate the patent purchase offers that it receives. However, since Google would likely want to obtain some value from the patents it purchases, considerations that are typical of intellectual property acquisitions will likely be involved including, but not limited to:

  • The remaining life of the patent rights (Patent protection is granted for 20 years from the date of filing the patent application. 35 U.S.C. 154.);
  • Strength of the patent (i.e., is the patent strong, or is there a high potential for a patent to be declared invalid?);
  • Breadth of patent rights (i.e., are the patent claims relatively broad, or are the claims limited to the narrow, specific, singular embodiment described in the application?);
  • Ease of use of the patent (i.e., is the cost of purchasing the patent outweighed by the cost of making or selling the disclosed technology?); and
  • Marketplace concerns (e.g., number of competitors, available alternatives in the marketplace, etc.)

One interesting aspect of Google’s promotion is that the sale between the patent owner and Google will not completely remove all rights that a patent owner has in the patent. After the sale, Google promises to grant a non-exclusive, non-transferrable, non-assignable, non-sublicenseable license to the patent owner to develop, make, use, sell, offer to sell, import, export and otherwise transfer or dispose of the patented technology.[2]  So, while a patent owner cannot license his or her invention to another person after Google has purchased the patent, the patent owner still has rights to make some use of the ideas he or she developed and patented.

Google has stated that this initial two-week program is experimental, and that it may reinstitute the program or open the program to foreign patent owners if enough interest is generated in the promotion. The full details of Google’s program are still being released, but the new Patent Purchase Promotion presents an interesting strategy to combat patent trolls’ attempts to purchase patented technology for litigious uses. Rather than sell to the patent trolls, Google hopes that patent owners will instead sell to it.

Selling a patent to Google may be a tempting opportunity to many inventors and patent owners. In its detailing of the program, Google strongly encourages potential patent sellers to consult with an attorney before making a pitch to Google. Among other services, an attorney can assist patent owners with review of the terms of making the pitch to Google and the terms of sale. An attorney can also assist patent owners in understanding what rights they will have to the patented technology once the sale is complete. Consultation with an attorney who is experienced in transactions that involve intellectual property would be extremely beneficial to a hopeful seller to Google.

_______________________________________________

[1] Allen Lo, “Announcing the Patent Purchase Promotion”, Google Public Policy Blog, Google (Apr. 27, 2015) (available at http://googlepublicpolicy.blogspot.com/2015/04/announcing-patent-purchase-promotion.html).

[2] “Patent Purchase Agreement”, Google (last accessed April 29, 2015) (available at http://services.google.com/fh/files/misc/patent-purchase-agreement.pdf).

uspto-office

By R. Devin Ricci

The general outlay of this guide is to present some of the who, what, where, when, and why of the patent system in order to be able to explain the all-important how to obtain a patent. This guide aims to acquaint the reader with various aspects of the patent process, laying a proper foundation that will help the reader make informed decisions regarding patents. It should be stressed that the patent system is very complex – this guide will only touch on some of the many rules, nuances and exceptions contained in the United States patent system. Therefore, you should not rely solely on this guide and should consult an attorney.

The patent process is a long and expensive process, and the result of obtaining a patent cannot be guaranteed. However, what awaits a truly novel, non-obvious, and useful (1) invention at the end of the process is one of the most powerful intangible property rights available in the United States.

Disclaimer: This guide does not constitute legal advice and is not intended to supplement the advice that would be obtained from retaining a patent attorney or agent to aid in the patent process. This guide stands as a cursory review of the United States patent system as it relates to utility patents. This primer does not encompass on international patent protection. It is being provided in an effort to better acquaint the reader with some of the major aspects associated with the patent process. It is imperative for those considering or currently undertaking the patent process to understand what to expect when they choose to seek patent protection for an invention.

Why – the Great Incentive for Disclosure

The patent system aims to foster innovation. From single inventors to corporations, the great lure, the carrot of the patent system is the powerful, exclusive rights afforded by a patent. An issued patent grants an inventor the exclusive rights to exclude others from making, using, and selling the patented invention throughout the United States for a period of up to twenty years from the date of filing. In exchange for this right to exclude (2), an inventor must fully disclose to the United States Patent and Trademark Office (“USPTO”) how to make and use the claimed invention. The tradeoff for the public is twofold. First, the information contained in the patent is published at least by the date of issuance. Therefore, the information itself becomes public knowledge, available as information in research and development. Second, the invention becomes part of the public domain once the patent’s term ends, free for all to exploit and use.

It may seem counterintuitive that eliminating some competition would actually foster innovation, but it does. Remember, the public or its elected government generally cannot walk into a business, laboratory, home, or garage and force an inventor to disclose his invention to the public. Companies and inventors are free to hide their innovations as trade secrets, which are not subject to term limits. Trade secret rights vary from state to state; however, the gist is that by keeping an invention as a trade secret, an inventor can remain the sole beneficiary of his invention as long as the information does not become public knowledge (3). The power of a trade secret lies in its potential longevity, but is limited to information that remains secret and cannot be discovered through ordinary use or reverse engineering, i.e., taking apart an object to see how it works in order to duplicate or enhance the object. Technological advancements in the modern marketplace hinder the use of trade secrets. Simply put, it is continuously becoming easier to reverse engineer products and discover the process or machine the inventor attempts to hide through trade secrets. This shift has led many companies and inventors to seek patent protection instead of attempting to keep their innovations as trade secrets.

What – Patentability and Components

Patentable subject matter

There are three types of patents: utility patents, design patents, and plant patents. Utility patents are by far the most common of the three types. Both plant and design patents adhere to their own sets of rules and attributes (4); however, this guide solely addresses the process of prosecuting a utility patent. Patentable subject matter for a utility patent comprises any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof (5). In addition to fitting into one of these five enumerated categories or “improvements thereof,” an invention must also be useful, novel, and non-obvious as determined by the USPTO and/or a court.

Utility – is the innovation useful?

Courts have generally whittled the “utility requirement” into a de minimus (minimal) threshold. Under this viewpoint, an invention with any conceivable use or function generally satisfies the utility requirement. The purpose of the utility requirement is to prevent rights which arguably lie under other forms of intellectual property from gaining patent protection. For example, purely aesthetic functionality such as that of a painting would not qualify for patent protection; rather, it may eligible for copyright protection. However, it should be noted that the ornamental look of an otherwise functional item may qualify for a design patent.

Novelty – is the innovation “new”?

The question of novelty asks whether or not the invention is truly inventive; i.e., are the elements of the invention anticipated by the prior art (i.e., already known in the industry). In other words, the question of novelty asks whether or not any single prior art reference exists in the pertinent industry which already discloses the invention at the time of effective filing (i.e, the priority date).

Any public disclosure, regardless of how the disclosure was made, constitutes prior art as of the date it is made publically available. This includes any subject matter that was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. One notable exception exists to the public disclosure requirement in that the inventor’s own disclosures will not count as valid prior art so long as the subject matter is described in a patent application applied for within one year of the public disclosure. Therefore, once the inventor makes any public disclosure, a time clock starts ticking by which the inventor has one year to file an application with the patent office or the subject matter is barred by statute (a “statutory bar”) from being novel.

Moreover, as of March 2013, the United States patent system was reformed by the America Invents Act, switching the patent system from the long standing ‘first to invent’ system to a ‘first to file’ system. The present system renders any U.S. patent, patent application publication, or a World Intellectual Property Organization (WIPO) published international patent application (Patent Cooperation Treaty – PCT) as prior art as of the date the subject matter was effectively filed in the respective patent office, whether in the U.S. or abroad.

Non-obviousness

Not only must innovations be deemed novel in light of the prior art, but they must also not be found to be obvious improvements of the prior art. Whereas novelty inquires as to whether or not the claimed invention is anticipated by a single prior art reference, obviousness asks whether or not it would have been obvious to a “person having ordinary skill in the art” (“PHOSITA”) to combine the elements of multiple prior art references to develop the proposed innovation.

The same prior art relevant to novelty is applicable for obviousness. However, more so than with novelty, the test for obviousness is to be viewed in light of the supposed “person having ordinary skill in the art” or the particular field relevant to the subject matter. For example, a typical organic chemist or electrical engineer would be the relevant PHOSITA for patent applications concerning an organic chemical process or an electrical apparatus, respectively.

Patent Applications

As will be explained in greater detail below, two types of utility patent applications exist– provisional and non-provisional applications. The provisional acts as a place holder while a non-provisional is a full application; however, they can be used in concert to maximize protection.

Provisional Applications: The provisional application is essentially an initial disclosure made to demonstrate that an invention was created. Provisional applications are filed to attempt to to prevent others from later claiming prior invention. The provisional application can be thought of as a place holder or a stake in the ground to claim and lock in a priority date for a claimed invention. However, no substantive rights will be granted from a provisional application. The provisional application will not be reviewed by an Examiner to determine if a patent should be granted; therefore, a provisional application need not meet all of the formal requirements that a non-provisional must meet. Rather, it needs to disclose enough of the invention so that when a full (non-provisional) application is filed, the applicant can point back to the provisional disclosure to show that the invention was disclosed and that the priority claim is accurate.

Provisional applications are optional. The priority claim of a provisional application lasts one year from its filing date. Essentially, it grants the applicant one year from the filing date of the provisional application to finalize and/or market its invention with patent pending status before the applicant must file a non-provisional application to keep the priority date and patent pending status alive. It should also be noted that the one year pendency between the provisional and non-provisional filing does not count against the potential twenty-year term of the patent, which commences on the date the non-provisional is filed.

Non Provisional Application: The non-provisional application is the full application for a patent that will be reviewed and prosecuted by the Examiners at the USPTO. A non-provisional application must meet the formal requirements set forth by patent laws and the USPTO. Therefore, it must comport with formal drawings (i.e., tagged drawings and figures which are capable of being reproduced by the UPSTO Printing department), a specification which discloses the invention to a degree that allows a person having ordinary skill in the art to make and use the invention, an abstract, and claims.

Specification: The specification, or disclosure, is a written description of the invention. Patent applications are subject to a written requirement whereby the application must disclose the invention with enough specificity in order for the disclosure to enable a “PHOSITA” to make and use the invention without undue experimentation. These requirements are often satisfied through a background section, a short summary, and a detailed disclosure of the invention in light of the drawings.

The specification also defines the scope of the patent claims. The claims and all potential amendments thereto must find descriptive basis in the disclosure as filed. No new matter can be added to a non-provisional application once it is filed. If the applicant wishes or needs to add new matter, it can be done through a continuation-in part application; however, the new matter would have a new filing date and would not be able to claim priority to the original application.

Claims: By statute, the application must claim a “definite” invention. The definiteness requirement mandates that each patent must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.” (6) Courts have mandated that definiteness is to be evaluated in light of the specification (the written description of the invention) and prosecution history from the perspective of a person skilled in the relative art at the time the patent was filed.

The claims section is the heart of the patent. As the name designates, this is the section wherein the applicant tells the USPTO and thus the public what is the intended invention. The claims of an issued patent define the scope of protection afforded by the issued patent. Claim drafting can be viewed as a strategy. An ideal claim walks a fine line. The goal is to draft the claim as broadly as possible so as to not unnecessarily limit the scope of protection while keeping the claim within the boundaries set forth by the prior art and the enabling disclosure. Remember, only novel, non-obvious, and useful inventions are capable of being patented. Therefore, while an ideal claim is drafted to provide broad protection, the claim cannot be too broad such that it is rendered either not-novel or obvious in light of the prior art in order to be accepted. It is typical for claims to be amended and limited during prosecution to obtain protection.

Drawings: Applicants are required to submit drawings when they are useful for the understanding of the invention. The USPTO has determined that applications for methods, processes or compositions of matter may not require drawings. Other applications, particularly applications for apparatuses or widgets, which incorporate component parts, are generally deemed to require drawings for a proper disclosure. The USPTO imposes requirements and formal restrictions on drawings; therefore, it is suggested that trained patent draft-persons be used to draft drawings.

Abstract: the abstract is a formal requirement which the USPTO requires that each and every non-provisional application contain. The abstract is a brief summary of the technical disclosure in the specification in fewer than 150 words.

Where – the United States Patent and Trademark Office

The physical “where” of patent applications is becoming less important in the modern world because most filings for patent applications are conducted online via the patent electronic filing system (“EFS – Web”). That said, the United States Patent and Trademark Office is the federal bureaucratic agency in charge of prosecuting all United States patent applications. The main office itself is located in Virginia; however, satellite offices have been opening around the country in select cities, each housing specialized art units designed to decrease the pendency for applications involving key hotspots of innovation. The URL for the USPTO is www.uspto.gov.

Who – Inventors, Applicants and Examiners

Applicant(s): Generally, the applicant for patent rights is the inventor. Patent rights initially inure to the inventor and remain with the inventor unless he assigns or licenses his rights. Such assignments typically occur via sales or through contractual relationships, such as when an employee develops the innovation as part of his employment with a company. The provisions of the American Invents Act allow a company, to which an invention is assigned, or to which the inventor has a duty to assign, to apply for patent rights to the invention in the name of the company. Therefore, it is possible and rather common for a company to file a patent application.

When two or more inventors contribute to the conception of the invention they are termed joint inventors. It is important to determine the inventive contributions of each person involved in the creation of the invention. For example, as patent prosecution proceeds, it is possible and even likely that certain claims sought for patenting will be rejected. It is, after all, the USPTO’s job to be the gatekeeper ensuring that the monopoly of patent rights is not handed out lightly. Therefore, as claims are removed through prosecution, it is possible for a listed inventor, whose contributions only applied to cancelled or rejected claims, to no longer qualify as an inventor. If that happens, the affected inventor needs to be removed from the application.

Examiners: The USPTO employs examiners separated into art units, each specializing in a particular field. Many of the examiners have specialized degrees in the sciences (chemistry, biology, physics, engineering etc.), and a juris doctor degree, or other practical experience pertinent to their art units. For example, an application for a computer related invention will likely be assigned to a computer related art group wherein an examiner with a background in computer science will prosecute the application.

When to File

The inventive process commences at conception. Interestingly, all that is required to file a patent application is that the invention be fully conceived. The inventor or applicant must have enough of the invention conceptualized so that he can disclose the invention, in writing, to enable others in the field of the invention to make or use the invention.

The current patent system behooves potential applicants to “file early, file often.” As previously discussed, the United States patent system was reformed by the America Invents Act, switching the patent system to a ‘first to file’ system from the long standing ‘first to invent’ system. Admittedly, some exceptions to “first to file” exist under the current governing laws; however, the gist of the system is that the first applicant to file an application for a particular invention with the USPTO is deemed the inventor under the patent laws, preventing a later filing applicant from obtaining a patent. The “file early, file often,” strategy has been adopted by many corporations. The strategy is to file provisional applications as soon as a potentially marketable invention is conceived and follow up with additional provisional applications as notable improvements are made. This system allows for inventors to claim the earliest possible priority date for the invention while fleshing out the details to determine if a full non-provisional application is warranted.

In addition to the other considerations, the patent laws impose certain time limits or constraints on the filing. As discussed previously, the United States patent system imposes statutory bars that govern the novelty of a proposed invention. If the invention is disclosed to the public such as by use, sale, offer for sale, publication or otherwise, the statutory bar period is triggered. Any of the actions grouped as public disclosures of the invention trigger a one year countdown by which an application must be filed with the USPTO or no patent protection can be obtained.

How- the Patent Process

The typical patent process described herein involves the use and assistance of a registered patent attorney or patent agent. This process generally commences with an initial consultation in which the attorney explains the patent process to the potential-applicant and the potential-applicant discloses the invention to the attorney. After the initial consultation, a patentability study is often performed to determine the potential likelihood that a patent could be obtained. After a promising patentability study, or otherwise skipping the study entirely, a formal patent application is prepared and filed with the USPTO. In due time, the application will be assigned to an examiner who will review the innovation for patentability. If deemed patentable, the patent process concludes with the receipt of an issued patent. If not, the applicant has opportunity to submit arguments in favor of patentability.

Patentability Study

Patents are often a costly endeavor. Therefore, many applicants elect to “do their homework” before embarking in the process. In other words, before spending considerable sums on the patent process, many applicants order a patentability study to gauge the viability of their proposed patent application. A typical patentability search seeks relevant prior art which may be used by an Examiner to reject an application based on either novelty or obviousness grounds. These searches are usually conducted through a patent attorney, a patent agent or third party companies which specialize in prior art searches.

In the patentability opinion, a qualified person, typically the patent attorney or agent, uses the relevant prior art from the patentability study and compares it to the applicant’s disclosed invention in order to determine the potential for obtaining a patent. It should be noted that knowledge of the prior art can help to determine the breadth of a potential patent’s scope, and thus its overall granted protection. Also, as with most legal matters, issues of patent law require subjective determinations which are many times unpredictable. Therefore, even with a favorable patentability opinion, the applicant may not receive an issued patent.

While extremely useful, patentability searches are inherently limited and it can never be guaranteed that every potential prior art matter will be discovered. By law, the USPTO must keep any application in confidence for eighteen (18) months after the application’s earliest priority date (i.e., the date the application was first filed). Applicants can further delay the publication of patent applications by payment of non-publication fees. Furthermore, it should be noted that a majority of searches are conducted via “term searches.” Because a patent applicant is allowed to act as his own lexicographer, it is possible that the terms used in the search may be different from those used in patent applications and issued patents; therefore, it is possible that applications and patents exist which did not turn up in the search. Finally, many searches do not include the extensive listings of foreign patents, magazines, trade or technical journals, or other publications that may contain articles that will impact the patentability. Overall, the search acts to exemplify and bring to light the available pieces of prior art that are the most similar to the invention as described by the applicant. However, it is typical that at least a few patents from the preliminary search will turn up and be cited during prosecution of an application.

Draft and File Application

If the patentability search and opinion comes back favorable, the typical next step is to file an application. As previously discussed, there are two general types of utility applications for patent protection in the United States: provisional applications, which act more as place holders than anything, and non-provisional applications which are full-fledged applications for patent rights that are examined by the USPTO. Depending on his or her circumstances, an applicant has the choice to either (1) file a provisional application and then to come back within a year and file a non-provisional application or (2) file a non-provisional application and commence patent prosecution.

International Patent Rights

An applicant may have the ability to file for international patent rights. However, the scope of this guide is to discuss the United States patent system. It is highly suggested that any reader considering foreign or international patent rights seek qualified patent counsel to discuss options for doing so either under the Patent Cooperation Treaty or otherwise inform themselves of international patent rights. Note that a public disclosure is often a bar for most foreign patents.

Patent Pending Status

There is no such thing as a “provisional patent.” Once a patent application is filed with the USPTO, the invention covered and claimed by the patent application is deemed to have “patent pending” status. It is important to note that patent pending status does not grant the holder any substantive rights under the law. Indeed, no patent exists during prosecution for others to infringe, let alone be sued upon. The applicant can, however, alert others to the fact that it has claimed priority to an invention and that the applicant will bring an infringement action if necessary, if and when the patent issues.

Patent Prosecution

Expected Delays: As previously noted, the patent process is long. Typical applications can take anywhere between 2-4 years for the process to be resolved, with many applications taking even longer. The pendency period generally depends on the art class to which the invention is assigned and the backlog that art unit is facing at the time. Often a patent application may sit in a given art unit for one or more years before being assigned to an examiner for prosecution. It has been our experience that the art units for software, business method, and electrical engineering patents have generally experienced a heightened workload compared to many other units, and therefore have longer prosecution period.

It is possible to expedite a patent application under certain circumstances. Applications can be expedited at the USPTO under one of three categories: (1) payment of an additional fee, (2) by statute if the invention involves a certain, recognized class of subject matter, and (3) by statute based on the status (usually health or age) of the inventor. It should be noted that some expedited applications require a great deal of additional work on the part of the applicant.

Office Actions: During prosecution, the USPTO generally communicates with the applicant via one or more office actions which set forth a period of time for the applicant’s response. Examiners often object to certain aspects of the application in these office actions based on issues with formality (such as issues with the drawings) or substantive issues which concern the patentability of the claimed invention. If the examiner opines that the application is formally deficient or that the claimed innovation is not novel or is obvious, the examiner will first issue a non-final rejection in an office action. The applicant is allowed to submit an argument to rebut the examiner’s position. Depending on the circumstances, applicants may be able to employ several avenues for rebutting the Examiner including arguments rooted in law or fact, amending or cancelling claims in light of objections, or amending the specification to eliminate the formality issues raised by the examiner. In response to the applicant’s arguments, the examiner may grant the patent, object to the patent based on new grounds through another non-final rejection, or issue a final rejection. It is typical for an application to be met with one or more office actions before a final determination is made by the examiner. In the event that a final rejection is issued, the applicant may still be able to continue prosecution through the filing of an appeal with the Patent Trials and Appeals Board (PTAB), filing a continuation or a request for continued examination (RCE) to further seek protection.

Maintenance Fees: Although patent terms can last up to twenty years from the effective filing date, the USPTO requires the payment of periodic maintenance fees to keep the patent alive and enforceable. The window periods for the three payments are (a) 3 years to 3 1/2 years after the date of issue for the first maintenance fee payment, (b) 7 years to 7 1/2 years after the date of issue for the second maintenance fee payment, and (c) 11 years to 11 1/2 years after the date of issue for the third and final maintenance fee payment. These payments can be made up to six months after the above mentioned time periods (4, 8, and 12 years) with the payment of a surcharge fee.

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[1] There are three types of patents: utility, design, and plant patents. The focus of this guide is to acquaint the reader with utility patents because they are the most common and sought after of the three.
[2] In exchange for these exclusive rights, the patent holder must fully disseminate the invention to the public. Although others are prohibited from exploiting the patented invention during its term, the innovation enters the public domain upon expiration or abandonment, rendering the invention free for all to use.
[3] Trade secrets exhibit great benefits and drawbacks; however, this guide is limited to patent issues so a foray into the pro’s and con’s of trade secrets will not be discussed.
[4] For example, only asexually reproduced plants may be patented, and design patents can be obtained for any new, original, and ornamental design for an article of manufacture.
[5] See. 35 U.S.C. 101; Please note that the United States Supreme Court has recently heard a multitude of cases which impact patentable subject matter. The holdings of these cases are too numerous to detail in this guide; however, it is strongly recommended that the reader consult with a knowledgeable person, such as a registered patent attorney or patent agent, to discuss the various implications these cases may have on patentable subject matter.
[6] See. 35 U.S.C. 112, Paragraph 2
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About the Author:

Devin Ricci is an associate in the Baton Rouge office of Kean Miller. He joined the firm in 2012 and practices in the intellectual property group. Devin has experience in the four areas of intellectual property rights: patents, trademarks, copyrights, and trade secrets.

He represents a variety of clients including single inventors as well as companies of all sizes seeking a patent, artists and software engineers seeking copyright protection, and startup companies seeking to protect their intellectual property rights. He also has experience resolving intellectual property issues in the energy, refining, textile, marketing, advertising, manufacturing, and industrial sectors. Devin frequently drafts and files federal and state trademark applications for companies of all sizes as well as federal copyright registrations. He is a registered patent attorney and is licensed to practice before the United States Patent and Trademark Office.

As a registered patent attorney, Devin also drafts, files, and prosecutes process patents such as refining and chemical processes, apparatus patents such as consumer and industrial products, and systems patents such as plant designs. In addition to the experience in filing and prosecuting applications to obtain various intellectual property rights, he also has experience in drafting licensing and acquisition agreements concerning the various intellectual property rights.

Devin earned his B.S. in Biochemistry in 2009 from Louisiana State University. While earning his degree, Devin worked as a student researcher under a professor in the Biological Chemistry Department. He earned his J.D., magna cum laude, in 2012 from the LSU Law Center, where he was a member of the Order of the Coif. He also earned an additional diploma in Civil Law while attending the LSU Law Center.

Devin may be reached at 225.389.3713 or devin.ricci@keanmiller.com