Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

How do you protect your intellectual property? What is intellectual property? Is a special sandwich that you make better than anybody else intellectual property? Imagine you are the owner of a new restaurant who has created a new edible masterpiece. And subsequently, to your surprise, you discover that a copycat sandwich is being made across the street, without your permission.What do you do? What are your remedies?

In a new television commercial, Burger King's mascot breaks into the headquarters of McDonald's and steals the recipe to the Egg McMuffin.

I don't think they can register the work with the U.S. Copyright Office and obtain a certificate of copyright. Can they file an application for patent registration of the sandwich structure?

Remember for something to be patentable subject matter it must be a new, useful and a non-obvious improvement over something that's already out there. You don't see too many patents on food recipes and sandwiches. Maybe a design patent (.PDF), but I doubt that will give them much protection.

It may be argued that the business conduct of Burger King in this instance is actionable under federal unfair competition provision of the Lanham Act. While the Lanham Act, in general, focuses primarily on obtaining, maintaining, and enforcing trademark and service mark rights, Section 43(a), allows for suits for false designation of origin. But I don't think there is a false designation, Burger King comes right out and says we're making our own version of this old sandwich.

And it's not a copy of a trade secret (like the McDonald's special sauce) so I don't think there's any grounds for McDonald's to bring a suit. There is probably not much McDonald's can do to stop Burger King from making their version of the egg McMuffin.

What is protectable is the brand name or the trademark. What Burger King is tacitly saying in this clever breakfast commercial is that, McDonald's doesn't own the rights to eggs, sausage, cheese or English muffins. McDonald's owns the trademark "Egg McMuffin(.PDF)."

John DeVore, recently wrote a Special article to CNN entitled "Big burger boys burgle breakfast." about the commercial showing how Burger King's new BK Breakfast Muffin Sandwich's is just a copy of the classic Sausage McMuffin.

But are McDonald's executives upset with this campaign? Have lawyers been rallied and accusatory calls been made?"We haven't received any direct feedback from competitors," said Brian Gries, Burger King's vice president of marketing impact. Gries further defends his company's choice to be up-front about the similarities between the BK Breakfast Muffin and the McMuffin, saying, "We are not above taking a product that we know customers like and delivering it to our guests at a great price."

I love the guile of Burger King making a full admission in the commercial that they are copying this sandwich. I would love to see the internal memos from the lawyers arguing about whether or not they should allow this commercial to air. It is not like McDonald's has not been involved in a number of lawsuits involving trademark issues in the course of its history. But I think if McDonald's brings a lawsuit in this instance it would fuel of a lot of bad press and they would have little chance of success.

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What is happening with regard to the Patent Reform Act of 2010?

Recently I asked this and other questions to first term Congressman Chris Lee, who represents New York's 26th Congressional District.

I think it's important to note that Chris Lee, true to his pro-entrepreneurial stance, has taken the initiative to advocate for Research and Development by introducing legislation in Congress. As evidence of his commitment to inventors and the need to continue to develop new products and technologies, he introduced legislation that would make the R&D tax credit permanent (H.R. 1545).

Here are a few questions and answers from the interview with Congressman Lee:

1. What will it take to get the patent reform bill through both the House and the Senate?

Versions of the bill have been introduced in both the House and Senate (H.R. 1260 in the House, S.515 in the Senate). The Senate Judiciary Committee has passed the bill and the House Judiciary Committee has held hearings on it. It will need to pass both committees and both chambers of Congress for it to be sent to the president.

2. Do you think it can be accomplished anytime soon?

It looks like the bill is moving forward. On March 4, 2010, Senators Patrick Leahy (D-VT), Jeff Sessions (R-AL), Orrin Hatch (R-UT), Chuck Schumer (D-NY), Jon Kyl (R-AZ), and Ted Kaufman (D-DE) released a statement saying that they’re moving forward on an agreement that, according to the release, “makes changes to first-window post-grant review, inter partes review, willfulness, interlocutory appeals, Patent and Trademark Office funding, and supplemental examinations.” According to the Senators, the proposed “agreement retains several critical improvements in the Committee-reported bill, including the transition to a first-inventor-to-file system, the gatekeeper compromise on damages, the new district court pilot program, and more.”

3. Does the entire bill have to pass or can parts of it be pushed through?

The Chairmen of the House and Judiciary Committees can choose to move forward the entire bill or split it into parts, however an identical version of the bill must be passed by both the House and the Senate. According to the March 4 statement, it appears as though the Senate Manager’s Amendment makes changes to makes changes to first-window post-grant review, inter partes review, willfulness, interlocutory appeals, Patent and Trademark Office funding, and supplemental examinations as they are stated in the Senate-introduced version of the bill.

4. What do you think about patent reform and its importance in protecting and advancing technology in the United States and the world?

Having run a manufacturing business before coming to Congress, I understand how much time, money, and resources are required to develop new products and technologies. I fully understand the need to protect the ownership rights for the development of these items. Without an adequate time frame to recoup your investment the development of Intellectual property could be dramatically curtailed.

It remains to be seen what the final version of the bill will be, should it be brought before the House for a vote. In the United States, we need to continue to develop new products and technologies, and I’ve introduced legislation that would make the R&D tax credit permanent (H.R. 1545). If individuals and companies invest in these technologies they must be able to realize the benefits of their investments. Therefore, I believe it’s critical that any patent reform legislation must effectively protect the ownership of patents. 

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What Inventors Need to Know...

Inventors often ask me “can I get a provisional patent?” But there is no such thing as a “Provisional patent.” A provisional patent application is a patent application that is used by a patent applicant to secure a filing date. A provisional patent application never matures into a patent. And there is no patent protection until a non-provisional application is allowed and issued as a patent. In order to maintain the filing date, a non-provisional patent application must be filed within the 12 month period starting from the filing date of the provisional patent application.

One of the most important things that an inventor should be aware of is that the disclosure of an invention in a provisional application should be as complete as possible because the claimed subject matter in the later-filed non-provisional application must have support in the provisional application in order for the applicant to obtain the benefit of the filing date of the provisional application.

The bottom line is if new matter is not disclosed in the provisional application, then the new matter will only get the benefit of the later filing date, which defeats the purpose of having filed the provisional application in the first place.

Independent inventors and startups focus too much on the "costs less" part while missing the bigger picture. People think that a provisional application can be quickly filed because the rules don't require all the formalities of a non-provisional application. While this may be true, if the disclosure of the invention is not the same in the provisional application as it is in the later filed non-provisional, the filing date will be lost.

The rule for DETERMINING THE EFFECTIVE FILING DATE OF THE APPLICATION is:

(D) If the application properly claims benefit under 35 U.S.C. 119(e) to a provisional application, the effective filing date is the filing date of the provisional application for any claims which are fully supported under the first paragraph of 35 U.S.C. 112 by the provisional application.

An inventor can still file a non-provisional application that claims priority to any provisional application, but with a weak provisional as the foundation there will likely have to be plenty of new matter added to the non-provisional application. Adding, subtracting, modifying parts, or changing the structure or operation of the parts would all qualify as not fully supported changes. An inventor will not be able to rely on the filing date of a weak provisional patent application for these new disclosures.

I believe that a strong provisional application should be prepared so as to look and feel exactly like non-provisional application so that the only thing a patent practitioner needs to add are the claims. If the non-provisional patent application is filed with the same disclosure as the provisional patent application the filing date is preserved. This will become even more important if the Patent Reform Act of 2010 is ratified and the first inventor to file system is enacted.

Here are a few basic points regarding a provisional patent application:

• Provisional applications provide an early effective filing date and a one-year extension as to the filing of a U.S. non-provisional patent application (35 U.S.C. 119; Benefit of earlier filing date; right of priority)
• In order to retain the priority benefit of the provisional patent application, a regular U.S. patent application and any foreign counterpart applications must be filed within one year of the provisional patent application and must claim priority based on the provisional patent application or the provisional patent application will become abandoned
• The foreign patent application may include national, regional (e.g., European), or Patent Cooperation Treaty (PCT) patent applications
• Provisional applications can be filed without any formal patent claims, oath or declaration, or any information disclosure (prior art) statement
• Provisional applications have a lower initial cost with one full year to assess the invention’s commercial potential before committing to the higher cost of filing and prosecuting a non-provisional application for patent
• The 12-month pendency for a provisional application is not counted toward the 20-year term of a patent granted on a subsequently filed non-provisional application which relies on the filing date of the provisional application.

The USPTO recently posted an article in the InventorsEye April Newsletter answering basic questions about a provisional patent application. The newsletter also provides a checklist of some facts the USPTO deems important:

1.  A provisional patent application expires after one year;
2.  A provisional patent application cannot be extended;
3.  A provisional patent application cannot be renewed;
4.  A provisional patent application will never become a patent;
5.  Provisional applications may not be filed for design inventions;
6.  The USPTO does NOT examine provisional patent applications on their merits.;
7.  The USPTO does not conduct a prior art search on provisional patent applications;
8.  The USPTO does review provisional patent applications to make sure they meet minimum filing requirements;
9.  A provisional patent application is not published by the USPTO (unless claimed as priority in a later-issued or published non-provisional application); and
10.  The term "patent pending” can be used by the inventor for the duration of the one-year pendency of a provisional patent application.

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Tweet of the week

Thanks to @StrongerAmerica for tweeting this week about the importance of making innovation a top priority in corporate America.

James Andrew, senior partner and head of the global innovation practice at Boston Consulting Group, authors this article for Business Week.

The difference between a company whose CEO and leadership team have an "all-in" mentality regarding innovation, and one whose leadership supports innovation merely at an abstract level, is unmistakable—and so is the impact on the company's culture and results.

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Many US Soldiers have recently lost limbs in the service to the United States and now look to Dean Kamen to design a prosthetic arm that will make their lives less of a struggle.

Kamen is best known for inventing the Segway PT. He also founded FIRST (For Inspiration and Recognition of Science and Technology), a program for students to get people interested in science technology and engineering.

"A few years ago I was visited by the guy that runs DARPA... [Kamen] said, "Why is it, at the end of the Civil War They were shooting each other with muskets, if somebody lost an arm we gave them a wooden stick with a hook on it. Now, we've got F18s and F22s, and if somebody looses and arm we give them a plastic stick with a hook on it."

I found this video at TED2010… 

DEKA has been working on the project since 2005, and it’s come a long way. The neurally-controlled device promises a better quality of life for bilateral amputees. In The TED video Dean Kamen says the technology has not changed much since the civil war and he took up the challenge to make an electric hand that the fingers can move gently enough to pick up a grape and eat it. But can it throw a ball or hold a baseball bat? I don't think so. If you put that arm on me when I was 12 years old... after an hour of hockey or touch football in the street it would have a couple fingers hanging off it. And I'd be saying give me the hook back.

Having to live as an amputee using the existing technology is a challenge. I lost my arm in 1972 and I still have a prosthetic arm using the technology of the 70's. Even with this old technology I still play ice hockey, tennis and softball at a high level (better than most people with 2 hands). Playing  softball I bat using the hook, but I can't throw with the hook. I had to learn to throw with my left hand (I was right handed)  and flip off the mit and catch the ball in the air and then throw it. Watch this video of me and my daughter demonstrating "how to throw and catch a baseball with one arm".

I wonder when an arm like Kamen's will be available for guys like me. Maybe in the next 50 years? Too bad it takes war to make people aware of these types of issues. Kamen has a mountain to climb; making a machine mimic a human hand is clearly way beyond the current science, but he has made remarkable strides. Even Stephen Colbert the host of  "The Colbert Report" was amazed by this new attempt at making a bionic arm. I think we should be thankful to Dean because he is pushing the technology in the right direction.

Dean Kamen isn't the only person trying to make amputees lives easier. Take a look at Handicap International whose health teams help people get prostheses and orthopedic devices in places where disaster has struck, like the recent earthquake in Port-au-Prince, Haiti.

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The patent reform legislation has been amended and introduced in the Senate as Amendment to S. 515 (“Patent Reform Act of 2010 (.PDF)″). When and if it will ever be enacted is a question in and of itself, however here is my summary of one of the more relevant sections of the proposed patent reform act.

Elimination of the Best Mode Requirement

Patent reformers wish to modify or remove the subjective elements of patent infringement litigation that depend on proving an inventor’s state of mind. Current patent law (35 U.S.C. 112) requires that a patent application “set forth the best mode contemplated by the inventor of carrying out his invention” and failure to comply can invalidate a patent in court.

The courts, however, have failed to consistently define and set the scope of the best mode requirement, such that compliance with the best mode requirement currently presents a guessing game for patent practitioners and inventors. Steven B. Walmsley, Best Mode: A Plea to Repair or Sacrifice This Broken Requirement of United States Patent Law, 9 Mich. Telecomm. Tech. L. Rev. 125 (2002),(PDF)

Two patents (5,827,698 and 6,040,160) in the billion dollar Bio Tech industry were recently invalidated in the case of Ajinomoto Co., Inc. v. International Trade Commission (Fed. Cir. 2010) because of failure to meet the best mode requirement of 35 U.S.C. 112. The two patents relate to methods of producing L-lysine using GM E. coli and include fairly broad claims. The evidence showed that Ajinomoto intentionally concealed their preferred host strain. The court ruled the claims were invalid for violations of the best mode requirement of 35 U.S.C. § 112, and that both patents were unenforceable for inequitable conduct because of those best mode violations.

If the Patent Reform Act of 2010 where enacted it would have eliminated the best mode invalidity defense and the Ajinomoto patents would not have been invalidated. Not to mention the time and expense to litigate the issue. I wonder how many hours were billed in the discovery and argument of this issue?

If the bill were passed, SEC. 15. BEST MODE REQUIREMENT would read in part as follows:

‘‘…failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable…”

The reasoning behind the recommended change is that the subjective “best mode” requirement throws a monkey wrench in every patent litigation. The best mode requirement focuses specifically on the best mode known to the inventor at the time the application is filed. It is a subjective standard. Time and money are expended  looking for examples of “Evidence of concealment” of a subjective state of mind of the inventor at the time of filing.

Is this “subjective” best mode requirement necessary when 35 U.S.C. 112 has an "objective" requirement that a patent application give a “written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use” the invention?

The public is fully informed of the patented technology by the requirement for a complete written description and enabling details to permit the complete scope of the claimed invention to be used. The added requirement to also disclose the “best mode” was placed into law because it was thought of as

“… a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute. The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves.” In re Nelson, 280 F.2d 172, 126 USPQ 242 (CCPA 1960).

"The best mode requirement creates a statutory bargained-for-exchange by which a patentee obtains the right to exclude others from practicing the claimed invention for a certain time period, and the public receives knowledge of the preferred embodiments for practicing the claimed invention." Eli Lilly & Co. v. Barr Laboratories Inc (PDF)., 251 F.3d 955, 963, 58 USPQ2d 1865, 1874 (Fed. Cir. 2001).

This edition of the patent reform act is an example of yet another "balancing act" by the legislature. If the bill is made into law it will result in:

• Patents that do not teach the best way to make the invention, but teach “a way” to make the invention; and
• The elimination of a defense from defendants that use (infringe) patented technology so that they can not invalidate an otherwise valid patent.

Here is a patent reform that favors the inventor over the infringer and arguably over society as a whole.

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