Monday, November 10, 2014

The Patenting of a Design Trademark

It appears that the U.S. Patent Office used to issue design patents for graphical trademarks. Portland patent attorney James Walters reports his astonishing find of a U.S. design patent, D3444, issued in 1869 for this trademark:

 The "inventor" set out the following "claim":
What I claim as my invention, and design to secure by Letters Patent, is--
The design for a trade-mark, herein set forth and shown.
Exactly how the Patent Office came to issue Letters Patent in a trademark is more than interesting. The Patent Act of 1836 was designed to improve patent quality by removing the then-authority for the issuance of patents from the U.S. Secretary of State to a new official, a Commissioner of Patents. The 1836 Act established a formal criteria for issuing patents, allowing a patent to an inventor who "discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale ..."

It is unclear why the Patent Office viewed the design of a trademark as a new or useful discovery, invention or improvement of useful art, machine, manufacture or composition of matter. A trademark is a source identifier, not an invention, and is not authorized under the patent clause of the U.S. Constitution, Art I, Section 8, cl.8. In any event, since the 1836 Act limited a patent's term to 14 years, this "inventor" may have outwitted himself by obtaining limited patent protection when a trademark, in theory, can last as long as it is used to perform its source identifier function -- perhaps forever.

It would be interesting to learn whether the Patent Office's issuance of Letters Patent was a common practice for design marks at any point in time, or whether this one presently known example is an aberration. If any reader has additional examples, kindly share.

Thursday, November 6, 2014

Negotiation in the U.S. for the Sale of a Patent-Infringing Product Is Not Necessarily Infringement Under U.S. Law

Section 271(a) of the U.S. patent law permits an infringement claim against anyone who "without authority makes, uses, offers to sell, or sells any patented invention, within the United States..." A question exists as to whether a U.S. company is subject to a patent infringement claim when it negotiates in the U.S. for the sale of a patent infringing product, including the setting of price and sales terms. That is, is mere negotiation sufficient to constitute a "sale" or an "offer to sell"?

The Federal Circuit answered this question in the negative in the last week's Halo Electronics case. The mere negotiation in the U.S. by a U.S. seller for the sale of a product that infringes a U.S. patent, including negotiation in the U.S. over price and projected demand, is insufficient to constitute a sale or offer to sell in the U.S. This was so when the actual sales transaction, including the final formation of the contract, as well as all delivery and performance under the contract, occurred outside of the U.S.

The Federal Court noted that the final formation of the contract occurred outside of the U.S., and the performance under the contract including final product delivery occurred outside of the U.S. The Court determined that there is a strong presumption "against extraterritorial application of United States laws." As such, the Court ruled that "pricing and contracting negotiations alone are insufficient to constitute a 'sale' within the United States."

The Court further ruled that there is no "offer to sell" in the U.S. if the actual sale transaction occurs outside of the U.S. "In order for a offer to sell to constitute infringement, the offer must be to sell a patented invention within the United States."

 So, the negotiation within the U.S. for the sale of a patent-infringing product is neither a sale nor an offer to sell when the final contract formation, as well as performance and delivery, occur outside of the United States.

As the Federal Circuit noted, "if one desires to prevent the selling of its patented invention in foreign countries, its proper remedy lies in obtaining and enforcing foreign patents." In other words, a U.S. patent is not necessarily worth the paper its printed on outside of the U.S.

Wednesday, November 5, 2014

Lawyer Receives Accolades From Judge -- And Is Then Sanctioned

Stop me if you've heard this one.

A lawyer presented oral argument to a panel of the Federal Circuit concerning a patent issue. Apparently, the lawyer did very well. A judge on the Federal Circuit, who was not on the panel and who is presently retired from the court, happened to attend a judges-only luncheon held following oral argument. At the luncheon, the panel judges informed the now-retired judge that the lawyer performed exceptionally well. The retired judge was proud to hear this good news, as he was a friend of the lawyer. The retired judge sent a laudatory e-mail to the lawyer. The e-mail stated:

Note that the retired judge was not on the panel that heard oral argument. And note further that the retired judge specifically invited the lawyer to "let others see this message."

So, what happened? The lawyer sent copies of the retired judge's e-mail to clients and prospective clients. And what happened next? Once the Federal Circuit learned that this e--mail of accolades was circulated by the lawyer, the court en banc issued an order publicly sanctioning the lawyer for distributing the e-mail. A copy of the court's order is here. The court determined that the lawyer's distribution of the e-mail constituted unprofessional conduct in that it inferred the lawyer's ability to improperly influence the court.

Note, finally, that the retired judge was not a part of the en banc court, but apparently the three judges, who gave the high accolades to the retired judge, were.

Monday, November 3, 2014

PTO To Provide Courtesy Reminders of Maintenance Filings

The U.S. trademark office recently announced that, beginning in late January 2015, it will begin providing courtesy reminders of upcoming Sections 8 and 71 declaration deadlines, and of upcoming Section 9 renewal deadlines. The PTO announcement is here. Reminders will be sent at the beginning of the filing period, but only to registrations (1) that are "live" on the date of sending, (2) that have valid e-mail addresses, and (3) that have granted permission to the PTO for e-mail communication. Reminders will be sent only by e-mail, not by regular mail, and there will be no follow-up reminders in the event the first attempted reminder fails.

Friday, October 31, 2014

A Tale of Ghoulish Copyright Authors

Late last night, I settled into a chair in front of my warm fire.
With the windows closed and blinds drawn,
I picked up my Compendium of U.S. Copyright Office Practices,
Seeking guidance on the new copyright regimen.

I began with authorship, and learned that,
Right there, in Section 306, a new rule is presented,
Clarifying that only a work created by a human being can be registered.
“Work purportedly created by divine or supernatural beings” cannot register.

Intrigued, I wondered why it was necessary for such a rule?
Had divine beings previously sought the right of registration?
I wondered. I took my laptop, logged onto
And conducted an author search.

I searched filings by author names.
I searched Dracula, and Poltergeist,
Witch, zombie, demon, mummy
Ghoul and ghost.

During my search, I heard what I took to be
A knock at my door. But I assumed that it was
The wind pushing against the windowpane,
And nothing more.

I was surprised with my search findings.
There, on my laptop screen, were search results
In the author field for:

Dracula, and Poltergeist
And Witch, Zombie
Demon and Mummy,
And for Ghoul and Ghost.
Authors all.

How can this be, I thought, since only
Humans by rule can be registered authors?
And then it occurred to me that,
Given the learned experience of the Copyright Office,
These creatures must be human, and nothing more.

They are among us.

The wind continued to batter the windows.
But then I heard a distinct knock at my door.
I put down my laptop, stood from my chair,
And walked to my door.

"Who is there," I asked? "Who is knocking on my door?"

I pondered the copyright registrations by







                  Ghouls, and




I open the door, slowly.





Tuesday, October 28, 2014

Don't Assume That Your U.S. Patent Is Valid

My blog post yesterday reported on the high invalidity patent rates of several developed countries. And last Friday, Judge Raymond T. Chen of the Federal Circuit, the appellate court charged with reviewing appeals of patent cases, raised a warning that patent owners should be cautious in assuming that their patent grant has merit.

Judge Chen told the annual meeting in D.C. of the American Intellectual Property Law Association on October 24th that the large grant of invalidity petitions by the Patent Trial and Appeal Board should produce a chill in many patent owners. Stated Judge Chen,
It is quite a commentary it seems to me that in a short period of time, the patent board has found it likely that at least some claims in almost 1,000 patents are unpatentable,
Those grants are of course non-final decisions, but the decision to grant the petition is not simply a small hurdle. It is a significant event that should get the attention of any patent owner.

Monday, October 27, 2014

Are Patents Worth The Paper They Are Printed On?

At the IP Scholars Conference held at UC Berkeley this past August 8, 2014, Joachim Henkel and Hans Zischka of the Technical University of Munich presented their paper on invalidation rates for issued patents. Their presentation is here. Henkel/Zischka suggest that if all patents issued by Germany went through invalidation proceedings, then about 75% of issued patents would be ruled either partially or fully invalid. As presented in their report, invalidation rates for other countries are:

  • Japan:                   73%     
  • United States:       60%
  • Australia               53%
  • United Kingdom:  50%
  • France:                 27%

This report should not provide much confidence to a patentee over the perceived strength of its patent.