A Nikolai & Mersereau associate, Laurie Young, has recently been published in two different online publications.  Laurie was first published in the Minnesota Intellectual Property Law journal, New Matter, in an article entitled “Even Intellectual Property Law Has Fictional Characters.”  This article is a brief study of the difference between trade dress infringement and patent design infringement.  The article is based upon a recent Federal Circuit decision Egyptian Goddess, Inc. v Swissa, Inc.  A copy of this first article can be found at: http://www.mipla.net/ricofiles/newsletters/December2008.pdf. 

Laurie’s second article was published in the William Mitchell College of Law publication Intellectual Property Research Series.  The article is entitled “Trade Dress Law: A Study of Select Countries.”  This article is a brief comparison of trade dress law, as it stood in 2007, in the United States, the United Kingdom, Germany, Japan, Australia and Brazil.  The article compares the trade dress laws and court decisions of each of these countries and then comes to a conclusion as to whether global harmonization of trade dress law is ever going to be a possibility.  Along with the article is a video interview of the author discussing some aspects of this paper.  This publication can be found at: http://www.wmitchell.edu/intellectual-property/research-series/default.aspx?page=271.

Jim Nikolai       (612) 392-7302           Jim.Nikolai@nm-iplaw.com

The Patent Rules require an applicant to identify any related patent applications.  This generally comes in the form of a list of co-pending applications in the body of a patent application under the heading Cross-Reference to Related Applications.  Typically these related applications will be a continuation (a new application claiming substantially similar claims as the original application), continuation-in-part (a new application claiming matter related to the original application, but with new material) or divisional applications (a new application claiming subject matter discussed in the original, but not claimed in the original application).  These applications can also be the co-pending parent or an earlier filed application and must be identified by the serial number, filing date and preferably title.  A common way to identify whether an application is related is typically there will be one common inventor to all the applications.

In addition the patent application should be cross-referenced to any other co-pending applications closely related to the invention claimed in the application.  For example, applications cross-referenced are often inventions with different components of a common apparatus or method and each invention requires knowledge by the reader of the other inventions for sufficiency.  In this situation the inventors will typically be the same or the related applications will be assigned to a common assignee.

At Nikolai & Mersereau we can help you identify these issues and ensure your patent application satisfies the rules regarding codependency and related applications.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

Under U.S. Law, the person entitled to receive a patent on an invention is not the first person to make the invention, but rather the first person to make the invention in the U.S. who did not abandon, suppress or conceal the invention.  This makes sense given the constitutional basis for the patent system — to promote the progress of science and the useful arts.  However, it does create a dilemma for a first inventor who is not interested in patenting an invention, but who also does not want someone else who discovers the same invention later to be able to obtain a patent.  One solution available to the first inventor is to create a “defensive publication”.

If an invention was described in a printed publication in the U.S. or a foreign country before the invention thereof by an applicant for a patent or if the invention was described in a printed publication in the U.S. or a foreign country more than one year prior to the date of the application, the applicant will not be entitled to a patent.  Thus, any printed publication early enough in time could bar a subsequent inventor from securing a patent on any invention disclosed in the publication.  Two questions often arise with respect to defensive publications.  First, what is meant by “published” under the patent laws?  Second, how much detail must be disclosed in the publication to achieve the goal of preventing others from patenting the invention?  Of course, the answers to these questions may depend on the situation so you should seek legal advice before proceeding.

Of course, these questions can be avoided by filing a Statutory Invention Registration (SIR) with the United States Patent and Trademark Office.  The SIR permits the inventor to forego the grant of a patent while preventing others from patenting the invention for themselves.  See Hyatt v. Boone, 146 F.3d 1348, 1356 (Fed. Cir. 1998).  A SIR will be published without formal patent examination.  A published SIR is treated the same as a U.S. patent for all defensive purposes and is “prior art” as of its filing date.  SIRs are classified, cross-referenced and placed in the search files, disseminated to foreign patent offices, stored on U.S. Patent and Trademark Office computer tapes, made available in commercial data bases and announced in the Official Gazette.  See MPEP § 1111.  The SIR prevents others from patenting the invention.  An inventor who files a SIR does not, however, obtain any rights to exclude others from practicing his or her invention. 

One problem with the SIR route is the cost.  First, the inventor must disclose the invention sufficiently to satisfy all of the requirements of 35 U.S.C. § 112.  The inventor must submit a specification having a written description capable of enabling a person of ordinary skill in the art to practice the invention, a best mode of practicing the invention and at least one claim.  The inventor must also pay fees to the United States Patent and Trademark Office that virtually are the same as those required for a patent.  Thus, a better approach might simply be to file a patent application, electing to have the application published after 18 months from filing and then abandon the application after the application publishes.  This provides the added benefit of time, time to assess the value of your application and decide whether it makes business sense to actually patent the invention.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

Shakespeare answered this question in Romeo and Juliet by saying, “That which we call a rose by any other name would smell as sweet.”  However, in a 1995 patent case related to effect of the title to a patent, the Court of Appeals for the Federal Circuit disagreed.

In Exxon Chem. Patents, Inc. v. Lubrasol Corp., 64 F.3d. 1553 (Fed. Cir. 1995), the Federal Circuit utilized the title of a patent application as support for holding Lubrasol did not infringe upon an Exxon patent.  Exxon had drafted the title to include specific elements which were not within the Lubrasol compound.  The Federal Circuit found Exxon’s claims were drawn to a specific product which included specifically defined ingredients.  They pointed to the title specifically: “Lubricating Oil Compositions Containing Ashless Dispersant, Metal Detergent and Copper Compound”.  Thus, the title should be drafted carefully as it may one day be utilized to interpret the breadth of your claims.  

The attorneys of Nikolai & Mersereau take to heart this and other rules of patent construction and interpretation when drafting patent applications.  Borrowing from another famous line of Romeo and Juliet, we try to make sure a patent’s name is not its enemy.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

On October 30, 2008, the Court of Appeals for the Federal Circuit in a nine-to-three decision in a case entitled In Re Bernard L. Bilski and Rand A. Warsaw, affirmed a decision by the U.S. Patent and Trademark Office Board of Appeals and Interferences that a process patent directed to a method of managing risk in the commodities market is not subject matter that patent laws have been designed to protect.

Under § 101 of the Patent Statute:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.

The Court effectively held that the word “process” used in the statute must involve “a transformation of an article to a different state or thing”, and that purported transformations of business risks in the commodities market does not involve physical objects or substances.  As such, the Court determined that the claims in the Bilski patent application did not define a process that constituted patentable subject matter.

The dissenting opinions were critical of the legal analysis by the majority, but did not differ on the outcome that precludes Bilski from securing a patent on his particular method for hedging risk in commodities trading.

Tom Nikolai                 (612) 392-7307           Tom.Nikolai@nm-iplaw.com