Can you keep a secret? Resist the urge to blab about that new gadget

Sometimes keeping quiet about a new product, service or venture can be difficult. While it may be difficult to fight the urge to tell everyone on the street all about your new innovative process, formulation or gadget, it is wise for a business to take a bit of time and see whether the new innovation is protectable under one of the theories of intellectual property law.

Peter writes a bimonthly column for ColoradoBiz Magazine

Peter writes a bimonthly column for ColoradoBiz Magazine

Some of the available protections such as trade secret require the business to take certain actions, or act in a certain way, and if not properly done, the protection under the law may be lost forever. In these cases we often discuss some of the more well-known intellectual property protections such as patents, copyrights and trademarks.

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Hey, that’s mine! The ins and outs of grey markets and the law

At some time or another, anyone who produces a product or commercializes a copyrightable work will inevitably run into the situation where you see your products being resold by someone that is not you or one of your direct distributors.

Oftentimes, this becomes an issue for a business because of the price at which the items are being sold (usually lower than the business would like) or possibly because of the bad reputation of the seller in question. Other times, it is a grey market situation where goods that were originally produced and sold in overseas markets make their way back to the United States.

The question my clients have is almost universally, “How do I stop this?” Generally speaking, the answer is that in the United States, it is either extremely difficult to stop it or you flat out cannot stop it at all, due to a theory of law called the Right of First Sale.

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The $64,000 Innovation Question

What do Yahoo, telecommuting and intellectual property legal services have in common?

At first glance, the popular answer may be “Absolutely nothing.” But those three seemingly unrelated topics might actually have a profound effect on your business and the quality of your intellectual property legal representation.

Peter writes a bimonthly column for ColoradoBiz Magazine

Yahoo made some waves last month by issuing an edict that it was discontinuing its telecommuting program.  While many in the techno press panned the decision as backward thinking, Yahoo’s rationale is actually quite interesting.  Yahoo’s reasoning was not based on efficiency, productivity or employee morale, it was based on innovation.

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Can I Patent That?

A question I frequently get from prospective clients is, “Is my invention patentable?” Variations on this inquiry include the following:

• “Can I patent an improvement to a device that is already available?”
• “Is it correct that in order for something to be patentable, it has to be at least 10 percent different than the known device from which it is derived?”
• “Can I get a patent on something that is already on the market, but I am using it in a new manner?”

The scope and breadth of what is patentable is very broad and wide. Chances are if your invention is useful, new (also referred to as “novel”) and not obvious, it is patentable.

Patents protect the rights of inventors to exclude others from making, using, offering for sale, or selling their invention throughout the United States or importing it for a specific period of time. Most people know this. But ask the same people what an invention is, and more often than not, the response will be much more narrow than is actually the case.

The prototypical invention is a completely new widget, tool or device that does something or accomplishes a task better (faster, easier or cheaper) than whatever was done before. In popular imagination, the likes of Thomas Edison remain the prototypical inventor: a person sitting in his lab, garage or workshop dreaming up ways to solve the world’s problems. Factually, however, the prototypical invention and the prototypical inventor are the exception rather than the rule.

Given the foregoing, perhaps the next question is: “What exactly is considered an ‘invention’?” You would think that this would be an easy inquiry to answer, but that would be wrong.

At its broadest according to Merriam-Webster, an invention is “something invented,” which requires us to look up the meaning of the verb “invent,” which is “to produce (as something useful) for the first time through the use of ingenious thinking and experiment.”

Putting this together, an invention is something new and useful invented by a person, and it can be anything from a new drug to a new medical device to a gardening tool to a manufacturing process to a musical composition. In other words, an invention may improve upon or create a new process, machine, device, product, result, function, discovery, art object—or even a genetically modified plant. Often times companies overlook patent protection because they do not consider the item or process an “invention.”

For example, even if the ultimate product is not patentable, the specific process, tool or machine that you use to make it is. If that process, tool or machine yields a product or result that is faster, cheaper or better than patenting the process, tool or machine may have enormous value to your company as you can prevent others from doing the same thing. This can give companies a competitive advantage in the marketplace, especially in mature industries.

If you think your invention is patentable, by all means protect it. Consult an attorney. The next step is to obtain a U.S. patent for your invention, which is the granting of a property right to the inventor(s), issued by the U.S. Patent and Trademark Office. Contrary to popular belief, new patents are issued all the time to ordinary people, just like you, with not-so-ordinary ideas.

Got content for kids? You better get to know the new COPPA

If you say “COPPA” to somebody who works in the business of providing online content to kids, they will instantly know exactly what you are talking about, and it might cause them to have a panic attack. Due to regulations promulgated by the FTC this past December, many more business owners will need to become familiar with the law, the associated regulations and their requirements.

The Child Online Privacy Protection Act (“COPPA”) was passed in 1998. The purpose of the bill was to regulate how online businesses collected and used personal information of children under age 13. The act sets forth requirements for what must be disclosed in privacy policies and mandates that covered businesses seek verified consent from parents prior to obtaining any information from children under 13 years of age.

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File that Patent! Time is Running Out

Do you or your company have a product or process that you’ve been developing for some time but have yet to patent? If so, a new law could considerably affect your ability to patent.

In 2011, Congress passed the America Invents Act (AIA), with the provisions of the act to be amended over time.  The most significant provision takes effect on March 16, switching the U.S. patent system from a first to invent paradigm to a first to file paradigm. This change brings U.S. patent laws in this regard in line with those of almost every other industrialized nation.

Under the old paradigm, the pertinent consideration in awarding a patent to one person over another was when the inventor first conceived of his or her invention. Conception of an invention occurs the first time an inventor mentally envisions the invention: in other words, the “ah ha” moment. At this moment, the inventor might not know exactly how the invention will work or be implemented, but the invention is formulated in her mind to a sufficient degree. It is considered a sufficient degree if the details of the invention can be disclosed to someone of at least average skill in the particular field to which the invention pertains, and this person could, through the development process, make or implement the invention.

After conception, an inventor is required to reduce the invention to practice. This can be accomplished in one of two ways: by actually making or implementing the invention or by filing a patent application. Providing the inventor is diligent in developing the invention from conception through reduction to practice and files a patent application, she will be awarded a patent over co-pending applications by inventors who later conceived of a similar invention. The foregoing is the case even if the other inventors actually filed a patent application first.

All this changes on March 16, when only the inventor who first files a patent application on a particular invention will be eligible for a patent. If you file your application on March 17, it will not matter at all that you have been working on the invention diligently for years. Rather, someone else who first conceived of the same invention independently of you only a month ago, but files a patent application before you on March 16, will be awarded the patent.

The new first to file paradigm will change the inventing process in the United States. For instance, in my firm’s practice, we will be recommending that clients file patent applications sooner rather than later, even if there are a few bugs to be worked out in a particular invention. In the past we often recommended the inventor perfect his invention before filing, since the filing date was not wholly determinative of patent priority. If the invention changes after the application is filed, an additional sibling application can be filed to incorporate any new or different features. Inventors will also be encouraged to more quickly reduce an invention to practice, compressing development times as much as possible.

For smaller companies and independent inventors, the new paradigm may prove more costly, requiring more resources to be expended on development and requiring filing of additional patent applications as a new product morphs into a final design during development. Certainly, these changes favor larger entities with substantial product development and legal budgets.  However, large companies are also often bureaucratic in nature and take longer than they should to accomplish even the most sensible tasks, so their new-found advantage may not be fully realized.

Nevertheless, this column is a call to action for any company or individual that has a product or process that they have been developing for some time to consider filing a patent application on the invention before March 16, thereby preserving first to invent status for the invention.

As the lead times in drafting a patent application can be significant, the sooner you discuss your situation with a competent patent attorney the better. Filing before March 16 instead of after could make all the difference in whether you can ultimately receive patent protection.

Revenge of the prom dress: Fashion Wars episode 100,001

Over the years, our firm has represented numerous apparel companies with regard to intellectual property matters, and we have observed many of the difficulties these companies face in protecting the value of their designs. The interesting aspect facing apparel companies is that often times the “low brow” fashion of graphic T-shirts and sneakers are more protectable than the “high brow,” haute-couture fashions of world-famous designers.

Apparel companies are a good example of where two different theories of intellectual property protection come together and, to some extent, overlap. When applied to an apparel company, the two main forms of protection we are talking about are trademarks and copyrights.

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Does Tim own Tebowing?

And does this mean you can’t do it any more?

Has a trademark taken Tebowing off the table?

The short answer: No. Neither Tim Tebow nor any business entity with which he is involved owns a trademark on his signature move.

Interestingly, headlines just a week or so ago may have indicated otherwise. The opening line of the widely carried AP story reads, “Dropping to a knee like Tim Tebow might cost you now.” And an article on Yahoo Sports proclaimed, “We can argue that the intention of prayer shouldn’t be a copyrighted exercise, but Tebow’s legal and business acolytes would clearly disagree.” That particular author went on to write, “Genuine gesture or patent offense? The latter, we suppose.”

This kind of misreporting as it pertains to trademark law frustrates intellectual property attorneys, though maybe it shouldn’t. So long as lay people don’t understand intellectual property law and don’t know the difference between trademarks, patents and copyrights, my job is safe. And having a safe job in this economy is nothing to scoff at.

However, let’s set the record straight.

Tim Tebow’s marketing company XV Enterprises LLC, filed a number of trademark applications last year to protect use of the word, “Tebowing” to identify a number of products.  The application pertaining to the use of the mark to identify hats, shirts and t-shirts has been approved by the United States Trademark Office, and barring some unforeseen event, should issue in the next month or two. Once issued, selling t-shirts under the Tebowing name by anyone but Tebow himself will be infringement of a federally registered trademark.

Trademarks protect words and logos, often referred to as brand names, used to identify a product or a commercial service. They exist to prevent unscrupulous parties from trading off on the goodwill associated with a particular product or service as developed by another company.   Imagine if there were no trademarks and every soft drink company was able to call their cola, Coco Cola, and package it in the same manner as the real thing. When you went to buy a Coke, you wouldn’t be able to ascertain whether or not the cola on the shelf was the drink you know and love or some foul tasting knock off. Thankfully, because of trademarks, when you want a Coke and you buy a Coke, you can rest assured that it is a Coke.

Trademarks do not and cannot lock up the rights to non-commercial expression. They can’t prevent someone from selling a particular product or offering a particular service. They can only prevent people from using a particular name or logo to identify a product or service. Copyrights on the other hand can protect expression, but only an expression that is fixed in a tangible medium.

The act of Tebowing is not fixed in a tangible medium just as your strumming of Stairway to Heaven as you attempted to play the guitar so many years ago was not an infringement of Led Zepplin’s copyright. The act of Tebowing isn’t protectable by patent either, which requires a patentable method to be useful and have a tangible non-abstract result. While those partaking in Tebowing might take exception to any determination that the act is not useful, patent law is interpreted in relation to our physical existence and not benefits received or felt ethereally.

The moral of the story?  When you buy that Tebowing baseball cap, you can rest assured it’s backed by the original Tebower himself. And if this makes you want to fall down on one knee in prayer, feel free, because no one is going to stop you.

Kurt Leyendecker is a founding member of the intellectual property law boutique, Leyendecker & Lemire. Leyendecker & Lemire specialize in patents, trademarks and related complex civil litigation. Kurt Leyendecker can be reached directly at 303.768.0123 or kurt@coloradoiplaw.com.

 

The Perils of Employee Classification

An ounce of prevention and all that…

One of the battles employment attorneys constantly struggle with is raising
awareness about the consequences of misclassifying workers that are technically
employees as independent contractors. While these attorneys are concerned about
possible penalties from the government or lawsuits from employees, IP attorneys
are concerned with a possibly more serious issue – who owns potential “crown
jewel” assets of the company.

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The perils of public-generated content

There is a well-known phrase known to businesses relying on the internet to help drive marketing and sales: “Content is king.”

That phrase has expanded, in the wake of businesses turning to Facebook and YouTube and in the development and use of better consumer digital cameras and video. That new and improved phrase is this: “User-generated content is king.” Soliciting user-generated content (UGC) is often an attractive marketing strategy: It engages customers and cultivates much-desired online content for a business all at the same time.

Read more at ColoradoBiz Magazine