Overview of semester and help for final exam
Trademarks
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Word symbol or device used to distinguish the holder’s goods from another
Based in common law and state/federal law
Lanham Act also protects trademarks
Will test on trademark registration as well o Registration can be based on use or “intent to use” o Once a mark is registered for 5 years (with continuous use) the mark becomes incontestable
Requirements for trademark protection: o Use o Distinctiveness o Nonfunctionality
Know the elements for acquiring a trademark
Be familiar with trade dress o Can be protectable, must be inherently distinctive o Will not require secondary meaning (if inherently distinctive)
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Know the “Polaroid” factors; determines the likelihood of confusion
Trademark infringement is a possible claim; trademark dilution is another (tarnishment and blurring)
Know about the domain name cases and ICANN
Know the defenses to trademark infringement (abandonment, equitable estoppel, genercide)
Know the “first sale” doctrine
Copyrights
Constitutional basis, Copyright Act of 1978
Copyright terms change over time
Duration: life of the author + 70 years
Must have originality, be a work of authorship, and fixation
Must be independently created and meet a minimum level of creativity
Amount of labor given is irrelevant (sweat of the brow doctrine is outdated)
-
§ 102 deals with works of authorship (statutory list is not exhaustive)
Arrangements/compilations can be protectable if they meet the level of originality o Must contain original expression o Cannot copyright facts o Feist & Harper Row Publishers cases
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Ownership can be by more than one, § 201 o Can be licensed o Can be sold o Case dealing with the play and joint ownership
Know the work-for-hire doctrine (CCNB) o The hiring party has the right to control the manner and the means by which the product is created
Know the different tests for the circuits (outlined in our group presentation) on how to prove copyright infringement
Be familiar with interests in public access o Fair use doctrine, § 107 of the copyright act o Transformative nature of the work is the most important
Talked about the Digital Millenium Copyright Act o We only talked about circumvention (allows the seller to remove different restrictions created by the copyright holder)

Patents
Constitutional basis, Patent Act, PTO Regulations, MPEP, Supreme Court, Federal Circuit COA
Must have statutory subject matter, utility, novelty, nonobviousness
-
Does not have to be “completely new”
Cannot be anticipated or inherent (based on the prior art)
Right of Publicity
*missed this in 4/26 class
- Right of a person to control the use of their name or persona
- Founded in state law
- Evolves from the right of privacy
- Degree of recognition will vary from state to state
- Generally an inherent right
- Most states recognize via statute or at common law
- Elements: defendant’s use of the person’s name, misappropriation of the person’s name, and actual injury
- Hoffman and Keller case
- There must be commercial nature of the work and transformative nature of the work

Ciara’s Notes: Trademarks
Trademarks
Only protected when it is being used to designate a product’s source or origin
Based on both state and federal law
Two ways to acquire a trademark o Use in the normal course of business o Register the mark with the USPTO or State

If registered with the USPTO, all provisions of the Lanham Act apply
 If unregistered, state law may apply OR § 1125(a) of the Lanham Act may apply
Microstrategy, Inc. v. Motorola
US COA, 4 th Cir., 2001
Facts: Motorola wanted to trademark a certain phrase in order to facilitate corporate cohesion; Microstrategy brought suit alleging trademark infringement
Issue: Does Microstrategy have a valid and protectable mark?
Holding: No.
Rationale: In order to obtain trademark protection, a designation must be proven to perform the job of identification; to identify one source and distinguish it from other sources. Person using the mark must be using it as a trademark. Must have the function of identifying the source of the merchandise to customers. Looks at the intent of the user
Heileman Brewing Co. v. Anheuser Busch
US COA, 7 th
Cir., 1989
Phrase: “low-alcohol”, LA

Set forth classifications for types of trademarks: o Generic or common descriptive o Merely descriptive o Suggestive o Arbitrary and fanciful

The last two categories are ideal for protection; generic terms are never protected; merely descriptive is protectable if there is secondary meaning

Suggestive marks describe the quality of a good or service; require some type of imagination, thought, or perception to come to some type of conclusion about the mark

Court will look to the market of the informed consumer *the consumer of that particular product)

Found that there was no secondary meaning because the mark had not been in use very long
 Secondary meaning is used to indicate that a mark or dress “has come through use to be uniquely associated with a specific source” o Must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself
Trade Dress
Two Pesos v. Taco Cabana
U.S., 1992
* Trade dress = refers to the image and overall appearance/total look and feel of a product
* Key issue: Can the trade dress of a restaurant be protectable under the Lanham Act? If not, will it be protected if there is secondary meaning?
* § 1125 or §43(a) are the infringement provisions for “false designation of origin” claims; applies to both registered and unregistered marks

* Marks that are merely descriptive of a product are NOT inherently distinctive
- if only describing a product, lacks identification of the source = no protection
* Protection under the Lanham Act also requires proof of a likelihood of confusion
* Trade dress may lose protection if the user of the dress is not successful in the marketplace
* Protection exists for trade dress to promote competition
* Trade dress cannot be “functional”
- a mark will be shown to be nonfunctional if it is merely ornamental, incidental, or an arbitrary aspect of the device (Traffix Devices)
* Two part test for generic terms ( In re Dial-A-Mattress)
- What is the genus of the goods or services at issue?
- Is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services?
*The court must look at the disputed phrase as a whole
Qualitex Co.. v. Jacobson Products
U.S., 1995
Issue: Can a color be trademarked?
Holding: Yes.
Facts: Qualitex had been selling and using a green-gold color on its dry cleaning pads; Jacobson began to sell the dry cleaning pads as well in a similar color

Lanham Act says a trademark is: any word, name, symbol, or device

Court says we as humans see symbols as anything that is capable of carrying meaning

A color will generally need to have secondary meaning established to identify and distinguish a particular brand
 A color may be “functional” but not barred from being used as a mark

Functionality o Promotes competition by protecting a firm’s reputation o Forbids use where doing so will put a competitor at a significant disadvantage because the feature is essential to the use of the article or affects the cost or quality
Trademark Infringement and Dilution
Statutory provisions
15 U.S.C. §§ 1114, 1121, 1125
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§1114 covers inter alia, remedies and infringement, applies only to registered marks
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§ 1121 covers inter alia, federal jurisdiction
§ 1125 covers false designations of origin, also provides federal subject matter jurisdiction
Likelihood of confusion
Must gauge the pre-sale context and post-sale context (is there confusion at any of these times?)
“Passing off” - using a trademark on a product (or service) in a manner that is likely to cause consumer confusion as to the source or origins of the product or service
-
Covered by § 1114 of Lanham Act (provides remedies)
§ 43(a) also covers/protects: marks, trade dress, false designations of origin, and false descriptions and representations
Also protects against dilution of famous marks
Questions to ask for whether there is a violation/right to claim trademark infringement:
1) How identical the marks must be to create a likelihood of confusion;

2) How identical the products must be to create a likelihood of confusion
Lois Sportswear v. Levi Strauss Co.
US COA, 2 nd
Cir. 1986
The mark was registered over 100 years, court said that the mark had become uncontestable, and had acquired strong secondary meaning; Lois Sportswear argues that labeling prevented consumer confusion at the time of sale
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Goes through an analysis of the “Polaroid” factors (gauges whether there will be consumer confusion) o Strength of the mark o Degree of similarity of the marks o Proximity of the products o Bridging the gap o Actual confusion o Junior user’s good faith in adopting the mark o Quality of the respective goods o Sophistication of relevant buyers
Intent of the junior user is not really at issue
Court found that Lois Sportswear could not sell their jeans
Incontestability: after registering your mark for 5 years, a mark becomes incontestable, no one can challenge the TM owner’s right to use the mark, or its validity
In the complaint, Levi alleges both federal and state law claims; does allege that the arc design is arbitrary and fanciful mark
When there is an incontestable mark, a defendant cannot raise certain defenses unless they are listed in
15 U.S.C. § 1115(6)
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Court says that trademark laws are designed to protect the senior user’s interest in being able to enter into a related field at some future time
McDonald’s Corp. v. Druck & Gerner D.D.S.
US Dist. Ct., N.D. of NY 1993
McDental case
Dental office which was in operation since 1981, did obtain a STATE service mark
There is a difference between confusion as to the source and as to sponsorship
Outline for a trademark infringement claim:
1) Does plaintiff possess a protectable trademark?
2)
If yes, is there a likelihood of confusion with the Defendant’s use of the mark?
Moseley v. V. Secret Catalogue, Inc.
U.S., 2003
- VS brought suit against “Victor’s Little Secret” who had recently opened and sold lingerie and other adult novelties
- was reversed in 2006 by 15 U.S.C. 1125(c), said only a likelihood was required as opposed to showing “actual dilution”
Blurring means that you reduce the capacity of the mark to identify the trademark holder
In a cease and desist letter, you will generally include: name of the TM holder, allege certain claims (dilution,
TM infringement, false designation, unfair competition, etc.), registration numbers if registered, send to registered agent if atty is unknown, date by which they need to respond or further legal action

Must consistently police the use of your trademarks because of likelihood as to source or sponsorship, dilution, genericide
Infringement on the Internet
ICANN - internet corporation for assigned names and numbers
UDRP - uniform domain name dispute resolution policy
ACPA - anti-cybersquatting consumer protection act; 15 U.S.C. §1125; requires a bad faith intent to profit from the mark
Wal-Mart Stores, Inc. v. Wallmartcanadasucks.com
Sets forth the 3 elements to a ICANN claim:
1) The accused domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2) The respondent has no rights or legitmate interests in respect of the domain name; and
3) The accused domain name has been registered and is being used in bad faith
UDRP gives more protection than the registration process
Trademark protection available for words, symbols, devices, or other designations that serve to identify and distinguish the source of goods or services…rights provided via state and federal law (e.g. Lanham Act 15 U.S.C. §1051. et seq.)
Two ways to acquire trademark protection
Being the first to use the mark in the normal course of business/commerce o Lanham Act still applicable (see 15 USC §1125(a) / Section 43(a))
Being the first to register the mark with the State or the USPTO o For USPTO

Must show actual use, bona fide intent to use, OR existing foreign registration o All provisions of the Lanham Act apply
Two basic prerequisites in order to serve as a trademark and to receive protection
Physical Use o Requires “actual use” of the trademark in commerce

Microstrategy: plaintiff failed to show it had actively, repetitively, clearly, & consistently used
“Intelligence Everywhere” to readily identify and distinguish the source of its goods to the consumer o Requires an element of display…mark must be directed at the goods/services for which protection is sought…actual physical affixation not necessarily required, but there must be a spatial association
Cognitive Use / Distinctiveness o Divided into categories based upon the relationship between the mark and the product

Generic : Describes the general category or genus to which the underlying product belongs (e.g.
“light beer,” “decaffeinated coffee,” “computer”)

No protection under trademark law
 Descriptive : Directly describes a characteristic or quality of the underlying product (e.g. the product’s color, odor, function, dimensions, or ingredients)

No protection unless it has acquired a secondary meaning (when consumers primarily associate the mark with a particular producer rather than the underlying product) o Courts consider factors such as level of advertisement, sales volume, length and manner of use, results of customer surveys

o Analyzed from the eyes of an “informed consumer” (average potential consumer in the context of the existing marketplace and exposed to the information currently available in the marketplace) o Five years of exclusive and continuous use is prima facie evidence of distinctiveness and establishes incontestable secondary meaning

Note: In re Dial-A-Mattress holds that composite marks/phrases may be granted protection as a whole even though individual elements are themselves descriptive or even generic

Suggestive : Evokes or suggests, as opposed to describing, a characteristic or quality of the underlying product and requires the observer or listener to use imagination and perception to associate the mark with the underlying word

Inherently distinctive and thus provides a high degree of protection, although parties may try to argue that it is descriptive instead of suggestive

Do not have to show that it has acquired a secondary meaning
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Arbitrary : Mark itself commonplace, but ‘arbitrary’ b/c no logical relationship to underlying product
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Inherently distinctive and thus receives the highest degree of protection

Fanciful : Created by the owner and exists for the sole purpose of serving as a trademark

Inherently distinctive and thus receives the highest degree of protection
Trade Dress
Refers to the overall image and appearance of a good or service…the total look and feel of a product (e.g. color, packaging, etc.)
Must be inherently distinctive OR have acquired secondary meaning o Two Pesos : restaurant trade dress inherently distinctive, and thus no need to show secondary meaning
But, more importantly, the trade dress must also be non-functional o The product feature (trade dress) must not be:
 Essential to the use or purpose of the item
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Affect the cost or quality of the item
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Provide a significant, non-reputation-related advantage to the trade dress holder
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Be a competitive necessity o Burden is on the party asserting trade dress protection to prove that it is non-functional
 If deemed functional, it is irrelevant whether or not it has acquired secondary meaning
 Expired patents are likely dispositive of the functionality argument

Traffix : dual spring design essential to the product o Qualitex: green-gold dry-cleaning pads not functional and had acquired secondary meaning
Trademark Registration and Application Process : three methods of establishing registration
“Use” Applications: also referred to as §1(a) applications o Basic Requirements of an application include:
 An application form
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Fee (usually between $275 - $375)
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Drawing of the mark
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Date of first use of the mark
 Date of first use of the mark in commerce and demonstration of actual use of the mark in commerce
 Specimen (actual picture of the mark on a product used in commerce) o Timeline: once the application is filed, a serial number for the application will be issued and the USPTO will review the application

If application is approved, USPTO will publish the mark in the Official Gazette where third parties will have the opportunity to contest the mark; if there is no opposition, the mark will be registered

Owner of the mark must then file a Section 8 Declaration and Section 9 Renewal


If application is not approved, USPTO will issue an office action and applicant will have an opportunity to respond; if the application is again rejected by USPTO, a final office action may be issued. Applicant may then appeal the rejection to TTAB.
“Bona Fide Intent-to-Use” Applications: also referred to as §1(b) applications o Basic Requirements of an application are the same as §1(a) applications EXCEPT:

Applicant must demonstrate a bona fide intention to use the mark in commerce
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Date of first use or first use in commerce not required
 Specimen is not required (because mark has not yet been used) o Timeline: same as §1(a) applications, except upon publication of the mark by USPTO without contest, a Notice of
Allowance will be issued (because the mark is not yet in use)

After Notice of Allowance is issued, applicant must either timely file a Statement of Use (SOU) OR a time extension request, OR abandon the application
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USPTO will review SOU and either approve/register the mark or issue an Office Action, and the remainder of the process is the same as §1(a) applications
Registration in a Foreign Country: not covered by the scope of this class
1.
Infringement under § 1114 a.
Protection of federally registered trademarks b.
Infringement: passing off by using a trademark on a product or for a service in manner that is likely to cause consumer confusion as to the source or origins of the product or services c.
Two part test: i.
Federally registered trademark entitled to protection and
1.
If not federally registered, go to § 43(a) ii.
A likelihood of confusion of the source of the product (based on the Polaroid factors)
1.
Strength of the mark **probably the most important factor**
2.
Degree of similarity of the marks
3.
Proximity of the product
4.
Bridging the gap (does the trademark holder plan to enter the market of the junior user)
5.
Actual confusion (not required by Lanham Act; rather only a likelihood of confusion is required)
6.
Junior user’s good faith in adopting the mark (intentional copying is not required; trying to protect the consumers)
7.
Quality of the respective goods
8.
Sophistication of relevant buyers iii.
The Polaroid factors help the court decide when there is confusion, its not an exhaustive list and should be used in the context of the case d.
Applicable cases: Lois v. Levi’s and McDonald’s v. Druck i.
Courts applied the Polaroid factors to find infringement ii.
In both cases, the court found for the senior trademark holder and granted an injunction to prevent the junior user from using the trademark
2.
False designation of origin under § 43(a) a.
Under Lanham Section 43(a)(1), “Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which— i.
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, OR

ii.
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. b.
Section 2 just defines what a “person” is.
3.
Dilution under § 43(a) a.
“Lessening of capacity of a famous mark to identify and distinguish goods or services” b.
Moseley v. V Secret Catalogue, Inc. i.
Dilution occurs in two ways
1.
Blurring: reducing capacity of mark to designate trademark holder
2.
Tarnishment: putting trademark in negative light ii.
Court held there must be a showing of actual dilution c.
Lanham Act § 43(a) i.
Moseley rev’d; activity likely to cause dilution is actionable
4.
Cyberpiracy a.
Liability under UDRP §15(a) i.
The complainant has the burden to prove:
1.
The accused domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2.
The respondent has no rights or legitimate rights in respect of the domain name; and
3.
The accused domain name has been registered and is being used in bad faith ii.
Factors for establishing bad faith:
1.
Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service or to a competitor of that complainant for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name
2.
Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in such pattern of conduct
3.
Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor
4.
By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or a product or service web site or location b.
Liability under 1125 U.S.C. § 43(d) i.
43(d)(1)(a)(i): a person shall be liable in a civil action by the owner of the mark, including a personal name which is protected as a mark under this section if, without regards to the goods and services of that section, that person:
1.
Has a bad faith intent to profit from that mark
2.
Registers, traffics in, or uses a domain name that: a.
In case of a mark that is distinctive at the time of registration of the domain name is identical or confusingly similar to that mark b.
In the case of a famous mark that is famous at the time of registration of the domain name is identical or confusingly similar to that mark c.
Is a trademark, word, or name protected by reason of section 706 of title
18 United States Code, or section 220506 of title 36, United States Code ii.
43(d)(1)(b)(i): relevant factors for determining bad faith including but not limited to:

1.
The person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site
2.
The person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties
5.
Nominative use (9th Circuit: Playboy ) a.
Defendant must prove each of the following: i.
The product or service in question must be one not readily identifiable without use of the trademark; ii.
Only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and iii.
The user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
ABANDONMENT/CONSTRUCTIVE NOTICE/CANCELLATION
Dawn Donut Company, Inc. v. Hart’s Food Stores, Inc.
 15 U.S.C.A § 1127Abandonment:
Failure to license a trademark is not sufficient to constitute abandonment.
 15 U.S.C.A § 1072 Constructive Notice:
Since the plaintiff had registered its mark it can enjoin the unregistered user of the same mark if it can later show an intent to use the mark in that area.
 15 U.S.C.A § 1064 Cancellation:
If the unregistered user of a mark does not exercise control over the operations of its licensees the mark can be cancelled.
PERMISSIBLE NOMINATIVE USE PRIVILEGE
Playboy Enterprises, Inc. v. Welles, 2002

Nominative User Test o (1) product or service in question must be one not readily identifiable without use of the trademark o (2) only so much as necessary
CRITICISM OR PARODY PRIVILEGE
Wal-Mart Stores, Inc. v. Wallmartcanadasucks.com, 2000 – UDRP Panel Review

Criticism or parody privilege - UDRP (not binding – can still file a lawsuit if lose) o (1) confusingly similar or identical o (2) domain name holder no rights or legitimate interest in name o (3) accused domain name registered and used in bad faith

Bad Faith – UDRP ¶4; ACAP 15 USC 1125(d); Lanham §43(d) o Primary purpose of selling, renting, or otherwise transferring domain o Prevent owner of the trademark or service mark from reflecting the mark o Primarily for purpose of disrupting the business of a competitor o Intentionally attempting to attract for commercial gain
L.L. Bean, Inc. v. Drake Publishers, Inc., 1987

Prurient parody exception or constitution free speech guarantee in First Amendment

Threat of tarnishment – goodwill and reputation of trademark is linked to products shoddy quality or conjure associations clash – consumer capacity to associate it with the appropriate products diminished

Requires more than mere negative context

Commercial speech actionable but not noncommercial speech o Commercial speech related to the economic interest of speaker and its audience


Noncommercial
– solely for noncommercial purposes; parody constitutes an editorial or artistic rather than commercial; labeled as humor or parody; only two pages of 100 page; do not use mark to identify or promote goods or services to consumers; never intended to market products

Constitution tolerates an incidental impact on the rights of expression of commercial actors in order to prevent defendant from unauthorized merchandising of his products
GENERIC MARKS/FAMILY OF WORDS
Quality Inns International v. McDonald’s Corp, 1988
 Whether “Mc” generic – thrifty, consistent, and convenient or protected family of words
 Court concludes each use of “Mc” plus a generic word are coined and novel to each article

Whether implied or express – attribution of the source to McDonald’s is strong and persists; no single meaning

Equitable defenses 1115(b)(9) o Acquiesence – such that stopped to bring action
 Delay in enforcement; plaintiff’s acts toward individual defendant; personal defense o Estoppel – expressly or impliedly given an assurance to another will not assert trademark rights – then barred from enforcing mark

Definition of Abandonment 1127 o Abandonment – proof lost all significance of indication of origin; not just user has stopped using

Strength of mark factor in narrow scope of enforcement – failure to take steps to reasonably prevent TP uses of mark may weaken a mark to point entitled only narrow scope of enforcement; however, reasonably diligent in protecting
FIRST SALE DOCTRINE/EXHAUSTION DOCTRINE/MATERIAL DIFFERENCE
Davidoff & Cie v. PLD International Corp

First Sale Doctrine - Initial sale of the product exhausts owner’s right to maintain control over reselling products
UNLESS reselling materially different

Material difference – difference relevant to a decision about whether to purchase a product in initial instance.
General resale getting actual product; no damage to goodwill or reputation

Ciara’s Notes
-
Founded in the Constitution (Article 1, §8, Clause 8)
Placed to promote the progress of science and useful arts
1909 Copyright Act (still applies to works that were created before Jan 1, 1978), work had to be published and had to have notice of copyright affixed to the work, 28 years with option for renewal for another 28 years
1976 Copyright Act (current law), protection extends to original works of authorship fixed in any tangible medium (written down), 70 years after the death of the author
Bono Copyright Law, gave an additional 20 years of copyright protection
*Current law requires:
- originality (a work is original if it is not copied from another work)
- authorship
- fixation (17 USC § 101)
Fixation
§ 101 - has to be sufficiently stable, has to be seen, be able to be transmitted to others, for more than a transitory duration
* Does not have to be new, have ingenuity, or have aesthetic merit
* 17 USC §102 says what is copyrightable, 8 categories
* Derivative works and compilations will also be protected
* Derivative work = a work based upon one or more preexisting work in any form in which a work may be recast, transformed, or adapted
* Compilation = a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship
Kregos v. Associated Press
U.S. COA, 2 nd
Cir., 1991
- Key issue: whether the creator of a baseball pitching form is entitled to a copyright
- The court’s analysis focused on the categories of information concerning the pitcher’s past performances
- Kregos pulled his information from “universe of available data”
- Trial court said that there was no copyright because: 1) the pitching form was insufficiently original in its selection of statistics to be a compilation 2) the variation of selections of pitching statistics was limited 3)
“blank-form” doctrine disallowed copyright protection
- Rationale: Compilations of facts - independent creation as to selection and arrangement will not assure copyright protection (must have minimal creativity)
* 3 sections of analysis
- Copyright for a compilation of facts (independent creation as to selection and arrangement alone do not assure copyright protection
- Idea/expression merger (if there are limited ways or just one way to express an idea, cannot accord copyright protection to that expression because then would be protecting the idea itself; when matters involve taste or personal opinion, there is no need for applying the merger; only applies when determining whether infringement has occurred[not in relation to validity of the copyright])
- Blank-form doctrine (can only be protected when the pool of information that is selected is considered by the court; certain forms that have considerable blank space may be afforded protection)
Hearn v. Meyer

U.S. Dist. Ct., SDNY, 1987
- Wizard of Oz case
- Hearn reproduced copies of the original illustrations drawn in the wizard of oz
- Rule of law: can only copyright copies/reproductions of original works when it is of sufficiently artistic or creative
- What is original is the handling of the painting in another medium…Hearn is only this treatment in another medium is original
- Court also states that public policy arguments stating this is a rare work and access should not be restricted by giving a monopoly of rights
Baker v. Selden
U.S., 1879
Issue: Whether the exclusive property in a system of bookkeeping can be claimed under the law of copyright by means of a book in which the system is explained?
Holding: No.
Rule: The use of the art is a totally different thing from a publication of the book explaining it. The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell,, and use account books prepared upon the plan set forth in such book.
Brandir Int’l Inc. v. Cascade Pacific Lumber
U.S. COA, 2 nd Cir., 1987
Bicycle rack case
Temporal displacement v. Denicola

Temporal displacement - the article stimulate in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function

Denicola - if design elements reflect a merger of aesthetic and functional consideration, the artisitic aspects of work cannot be said to be conceptually separable from the utilitarian elements; where design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences, conceptual separability

Rationale: The designer has clearly adapted the original aesthetic elements to accommodate and further a utilitarian purpose
* Fictional characters are protectable if they are developed with enough specificity so as to constitute protectable expression (Anderson v. Stallone)
Potential owners of a copyright: creator/author; employer of creator; purchaser; licensee; co-owner; heirs; contributor
* Important sections: §106 (exclusive rights granted to copyright owners) §101 (definitions) §201(a) (vested rights in the creator) §201(b) (works for hire)

Joint work
A work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole
-
§101
Eldred v. Ashcroft
U.S., 2003
- Can Congress extend the duration of a copyright term?
- Holding: Yes.
- Court found the CETA to be a rational enactment, the public benefits not only from an author’s original work but also from his or her further creations
- Congress sought to equalize the amount of protection given to EU creators

- Extending the copyright for existing works could provide additional income that would finance the production and distribution of new works
- Dissent: extension makes copyright term is virtually perpetual; limits expression

Work made for hire
-
§101(1) “a work prepared by an employee within the scope of his or her employment”
Community for Creative Non-Violence v. Reid
U.S., 1989
- CCNV worked with to get a nativity sculpture created for Christmas pageant; CCNV contributed part of the work while Reid worked in his own studio and used his own tools to create the characters
- CCNV wanted to take the sculpture on tour, Reid says he is the owner of the sculpture and refuses to return the sculpture to CCNV; CCNV sued to determine who is the copyright owner
- Court determines whether Reid was an employee v. independent contractor (agency v. contract law)
- The court says that actual control of the hiring party is inconsistent with legislative history; must look to common-law agency rules to determined whether the work was created by an employee or independent contractor
- If an independent contractor, look to §101(2)
- There wasn’t a written agreement in this case, so CCNV was not the owner; may be a joint owner but this court does not get into that analysis
Childress v. Taylor
U.S. COA, 2 nd
Cir., 1991
- Issue: When can a contributor to a copyrighted work be entitled to be considered as a joint author?
- Holding: Must be an intention to create a joint work
- Trial court found that only when both authors intended at the time the work was created, “that their contributions be merged inseparable or interdependent parts of a unitary whole; AND that there was insufficient evidence of requisite intent
- Court says that the works must be copyrightable on their own (beyond the joint work)
- Joint creation v. joint ownership
Copyright Infringement: Approaches by Jurisdiction
Second Circuit test, as articulated in Nichols and Altai
I.
Copying a.
Defendant’s admission, or b.
Circumstantial evidence i.
Evidence of access ii.
Substantial similarity
1.
Expert testimony is relevant
II.
Unlawful Appropriation a.
General relevant considerations: i.
Ordinary lay observer test ii.
No expert testimony iii.
No analytical dissection b.
Computer Program cases (though may be applicable in other contexts) i.
Steps
1.
Abstraction
2.
Filtration
3.
Comparison ii.
Expert testimony is relevant

Ninth Circuit test, as articulated in Apple Computer
Circumstantial Evidence of Copying
I.
Access
II.
Substantial Similarity a.
Extrinsic Test i.
Objective analysis of both ideas and expression ii.
Analytic Dissection iii.
Merger iv.
Scenes a faire v.
Originality vi.
Expert testimony appropriate b.
Intrinsic Test i.
Subjective analysis of expression ii.
Ordinary lay observer iii.
Should include unprotected elements for works comprised of unique arrangements
1.
Virtually identical standard applicable in cases involving a narrow range of protectable and unauthorized expression
Seventh Circuit test, as articulated in Stillman
Illicit Copying
I.
Copying a.
Access b.
Substantial Similarity of the works as a whole, including both the protected and unprotected elements
II.
Unlawful Appropriation a.
Plaintiff must show substantial similarity of protected expression b.
A combination of unprotected elements not dictated by the concept of the work can be given some protection
Sixth Circuit test, as articulated in Kohus
I.
Access
II.
Substantial Similarity a.
Identification of protectable elements through use of expert testimony i.
Court endorses use of an abstraction and filtration process with respect to this step of the test ii.
Considerations
1.
Abstract ideas
2.
Functionality
3.
Scenes a faire
4.
Merger Doctrine b.
Determining whether the allegedly infringing work is substantially similar to protectable elements of the plaintiff’s work i.
The substantially similar judgment is made by the ordinary lay observer in most cases ii.
Where the target audience possesses a specialized expertise, the substantially similar judgment should be made by the trier of fact from the perspective of the intended audience, and expert testimony usually is required to educate the trier of fact in this regard
Statutory provision - 17 U.S.C. 501 (a) and (b)

Must have a registered copyright in order to bring an action using these statutes
Nichols v. Universal Pictures Corporation
US COA, 2 nd
Cir., 1930
-
Issue: Is the defendant’s play substantially similar to plaintiff’s play to constitute copyright infringement?
Holding: No.
-
Must determine whether the part so taken is “substantial”
-
Some of the content in the plaintiff’s play was drawn from the public domain
Computer Associates Int’l v. Altai, Inc.
US COA, 2 nd
Cir., 1992
Former CA employee used 30% of ADAPTER code to create OSCAR software for competing company
Altai
In order to show infringement, the plaintiff must establish its ownership of a valid copyright, and that the defendant copied the copyrighted work
In proving that the defendant copied the work, the plaintiff must demonstrate the defendant has access to plaintiff’s copyrighted work AND the defendant’s work is substantially similar to the plaintiff’s copyrightable material
Must copy the “fundamental essence or structure of the work” to allege infringement
Non-literal components = general flow charts, parameter lists, macros
Non-literal components of computer programs are protectable using copyright (similar to non-literal structures of literary works)
Court established substantial similarity test for computer programs o Abstraction - break down the allegedly infringed program into its constituent parts o Filtration - examination of each part for such things as incorporated ideas, expression that is incidental to those ideas and elements that are taken from the public domain (sift out all nonprotectable material) o Comparison - compare the creative expression material with the structure of the allegedly infringing program
Scope of Copyright Holder’s Rights: Infringement
Apple v. Microsoft
US COA, 9 th
Cir., 1994
-
Was Apple’s GUI infringed by Microsoft and HP’s operating system?
Holding: No.
Apple had originally given Microsoft a license for use of its GUI and subsequent derivative works of its
GUI
-
Apple’s interface had overlapping windows, while Microsoft did not have the overlapping windows, and then it’s 2.0 and 3.0 systems did have the overlapping windows
In order to go through a copyright infringement case: 1) must have ownership of a copyright; 2) show that defendant copied protected elements of the copyrighted works
Copying can be shown by circumstantial evidence of 1) access AND 2) substantial similarity of both the general ideas and expression between the copyrighted work and the alleged infringing work
-
The court in this case, however defers to a “virtually identical” standard instead of “substantial similarity”
Scenes a faire doctrine - there are things that must be included to have expression, and cannot be deemed protectable
Intrinsic v. extrinsic test (when looking at copying)

o Extrinsic prong - analytic dissection and expert testimony about external criteria; sift out protectable vs. unprotectable elements of the work; look at originality, merger, scenes a faire o Intrinsic prong - looks at the elements from the standpoint of a reasonable observer; measures expression subjectively
-
The court will determine whether the work is entitled to “broad” or “thin” protection; broad = substantial similarity, thin = virtually identical (when you have a limited number of ways of expressing an idea)
U.S. v. Elcom
US Dist. Ct. N.D. Cal. 2002
Adobe e-reader case, the defendant produced software to circumvent the restrictions placed by the
Adobe software
-
Elcom alleged that §1201(b) was unconstitutionally vague
Issue: Whether the DMCA bans trafficking in all circumvention tools, regardless of whether they are designed to enable fair use or to facilitate infringement
-
Holding: Yes, §1201(b) does ban all circumvention use
Rationale: The court looks at the exact language of the statute; the statute does not distinguish between devices based on the uses to which the device will be put (fair use included)
*must have a copyright registration in order to institute any kind of copyright infringement claim
*the registration provides constructive notice of you being the owner
*prima facie evidence of copyright validity
Copyright Subject Matter: Useful Articles and Protection for Characters
1.
Introduction a.
Copyright Statutes i.
Sections that cover things such as
1.
Copyrightable subject matter (Sections 102-105)
2.
Copyright protection for compilations and derivative works (Section 103)
3.
The general categories that are copyrightable works of authorship (Section
102(a)), including those functional and useful articles (defined in Section 101) that should be protected.
4.
Exclusion from copyright protection, which is functional and remaining free for all to use (Section 102(b). b.
Two Themes in Chapter i.
What works constitutes the subject matter protected by Copyright without restraining competition, and ii.
Scope of Copyright for protection of fictional characters.
2.
Statutory Materials Used a.
Section 101—Definitions. Start here to know what terms mean i.
“Compilations”: is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term
"compilation" includes collective works. ii.
“Created”: when it is fixed in a copy or phonorecord for the first time; where a work is prepared over a period of time, the portion of it that has been fixed at any particular time constitutes the work as of that time, and where the work has been prepared in different versions, each version constitutes a separate work. iii.
“Derivative Works”: a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which

a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a "derivative work". iv.
“Fixed”: in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is "fixed" for purposes of this title if a fixation of the work is being made simultaneously with its transmission. v.
“Useful articles”: an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a "useful article". b.
Section 102—Subject Matter of Copyright: In General. Categories include i.
Pictorial, graphic, and sculptural works, that can be from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. ii.
In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. c.
Section 103—Subject Matter of Copyright: Compilations and Derivative Works. i.
Doesn’t include those compilations and derivative works that are unlawful. ii.
Extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material. d.
Section 104—Subject Matter of Copyright: National Origin. i.
Deals with published and unpublished works as defined in Section 101 and how they can be protected. e.
Section 105—Subject Matter of Copyright: United States Government Works. i.
Deals with works by the U.S. Government where it’s not protected but the U.S.
Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise. f.
Section 106—Exclusive Rights in Copyrighted Works i.
These are the bundle of rights given to an Copyright Owner that is the right to reproduce the work, prepare derivative works based on the copyrighted works, distribution, performance, display the work publicly, perform by means of a digital audio transmission. g.
Section 113—Scope of Exclusive Rights in Pictorial, Graphic, and Sculptural Works. i.
Subsection (a): subject to (b) and (c), is the exclusive right to reproduce a copyrighted pictorial, graphic, or sculptural work in copies under section 106(Exclusive Rights in
Copyrighted Work) includes the right to reproduce the work in or on any kind of article, whether useful or otherwise. ii.
Subsection (b) This title does not afford, to the owner of copyright in a work that portrays a useful article as such, any greater or lesser rights with respect to the making, distribution, or display of the useful article so portrayed than those afforded to such works under the law, whether title 17 or the common law or statutes of a State, in effect on December 31, 1977, as held applicable and construed by a court in an action brought under this title. iii.
Subsection (c) In the case of a work lawfully reproduced in useful articles that have been offered for sale or other distribution to the public, copyright does not include any right to

prevent the making, distribution, or display of pictures or photographs of such articles in connection with advertisements or commentaries related to the distribution or display of such articles, or in connection with news reports. h.
Section 120—Scope of Exclusive Rights in Architectural Works. i.
Includes permitted pictorial representations. The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.; and ii.
Alterations to and destruction of buildings. Notwithstanding the provisions of section
106(2), the owners of a building embodying an architectural work may, without the consent of the author or copyright owner of the architectural work, make or authorize the making of alterations to such building, and destroy or authorize the destruction of such building.
3.
Requirements for Copyright Protection a.
Original b.
Work of authorship c.
Fixed
4.
Conceptual separability: required for protection of the aesthetic elements of functional articles a.
Background: useful features cannot be protected b.
If the aesthetic and functional elements can be separated, the aesthetic elements can be protected c.
Also applies to costume designs d.
Potential tests for conceptual separability (from Brandir v. Cascade ) i.
Judge Newman’s test in
Carol Barnhart
1.
Aesthetic features are conceptually separable if the article stimulates in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function
2.
Downfall: extremely difficult to impossible to apply ii.
Kiefelstein-Cord test
1.
If the ornamented aspects were not any way required by their utilitarian functions, they were conceptually separable iii.
Professor Denicola’s test
1.
If design elements reflect a merger of aesthetic and functional considerations, the artistic elements are not separable from the utilitarian elements and none of it is protectable by copyright
2.
However, if the design elements can be identified as reflecting the designer’s artistic judgment independent of functional influences, there is conceptual separability and the design elements may be protectable by copyright
5.
Registration of Costume Designs a.
General rule: costume designs are not protectable as they are functional b.
However, if the functionality and the design can be separated, the design elements may be protected
6.
Registration of a Bookkeeping System (from Baker v. Selden ) a.
Plaintiff owns a copyright on a book about the art of bookkeeping that uses distinct columns and headings b.
Defendant wrote his own book explaining the system of bookkeeping that uses similar columns and headings c.
Can the exclusive property in a system of bookkeeping be claimed under the law of copyright by means of a book in which that system is explained? d.
“Where the truths of a science or the methods of an art are the common property of the whole world, an author has the right to express the one, or explain and use the other, in his own way”

e.
The court makes a distinction between the author’s original writing, which was subject of valid copyright, and the art or practical knowledge contained in that writing f.
The ideas or practical knowledge that are included in the system of bookkeeping are not copyrightable
7.
Other Important Notes a.
Compilation v. Derivative Works (found in Anderson ) i.
Unauthorized derivative works are not granted copyright protection b.
Protection for Characters found in Anderson, MGM v. American Honda Motor (James Bond and his character traits copyrightable under the story being told test or character delineation test i.
Characters can be copyrighted ( Anderson ) c.
Two tests for visually depicted characters i.
Nichols - protection granted if character developed with enough specificity so as to constitute protectable expression ii.
Sam Spade - protection granted if character constitutes the story being told d.
Abstraction test used to determine whether plaintiff seeks to copyright an idea or the expression of an idea i.
When an abstraction is so general that a copyright in it would unnecessarily hinder rather than promote the arts, the abstraction is an unprotectable idea ii.
Public Access Considerations & Fair Use
The rights provided within §106 are subject to the limitations and exceptions of §§107-12 o Fair Use §107

The fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching, scholarship, or research, is not an infringement of copyright.

In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work. o Factors are not all-inclusive; for instance some courts consider relative good faith as well as fair dealing o An affirmative defense; very flexible doctrine, applied on a case by case basis and very fact specific o Recognizes that some unauthorized uses of copyright material should be permitted; Seeks to strike a balance between rights of copyright owner and public’s interest in dissemination o General questions courts may consider when evaluating the four factors

Purpose : How much weight given for commercial vs. non-commercial use; how do you define commercial use; how much weight for transformative and how do you define it; if non-transformative, are the other factors less important
 Nature of work : What relevance should be given whether the work has not been published yet; determining between fact vs. fiction and greater need to disseminate factual works

Amount & Substantiality
: What test do you use (a % or a “heart of the matter”); is more copying permitted for certain types of fair use (e.g. parody); do you measure quality and/or quantity

Effect on market : What is the relevant market; what type of effect or impact is required o Sony application of factors


Purpose : Court relied heavily on the fact that private viewing was noncommercial

Nature of work : Dissent says b/c for entertainment, fair use claim diminished b/c not productive

Amount & Substantiality : Little weight given by the court

Effect on market : Said harm was purely speculative; some societal benefit to timeshifting; says that if for commercial use, then the likelihood of future harm will be presumed

Says there are two types of infringement: direct and indirect (contributory or vicarious)

Rationale: No copyright infringement because insufficient evidence showing there was liability for contributory infringement. To have vicarious liability must show Sony had constructive knowledge of the customers unauthorized use of copywrighted material

No contributory infringement if the Betamax is widely used for legitimate, unobjectionable purposes

Not all unauthorized uses of a copyrighted work are not necessarily infringing

To challenge noncommercial use, copyright holder needs to show a likelihood of harm or future harm exists o Harper Row application of factors

Purpose : was it merely news reporting or was it bad faith commercial gain

Nature of work : extended greater protection because unpublished and confidential

Amount & Substantiality : looked beyond % of copying; considered “heart of the work”

Effect on market
: most important element; there was direct causation…contract terminated

Seemed to give greater weight to right of first publication o Campbell application of factors

Analysis of parodies; resurrects “productive use” concept; questions significance of commercialism; parody can be fair use; case by case analysis for fair use

Purpose : was it transformative (not required, but it helps); was there commercial gain
(not dispositive, but a big factor)

Nature of work : little weight given; recognized that works were clearly protectable

Amount & Substantiality : parodies require some copying to conjure up comparisons

Effect on market : presumption of market harm is diminished for parodies, but must consider derivative, non-parody works by the copyright owner
 Compared §107 to Justice Story’s Folsom factors o Napster application

Purpose : court determined it was not transformative; took a broader view of commercialism

Nature of work : little weight given; recognized that works were clearly protectable

Amount & Substantiality : again, no transformation, entire song was simply copied

Effect on market : effect on record sales and ability for copyright owner to get into new market o Sun Trust application

Purpose : less weight to the fact it was for commercial use b/c so highly transformative
 Nature of work : little weight given; recognized that work was clearly protectable

Amount & Substantiality : Some copying required; issue is whether it was for parody purposes

Effect on market : little weight given; says that work may actually complement the original

Concurrence says very transformative b/c dealt with a sensitive political issue

Develops a basic threshold test

“can the parodic character be perceived”
Indirect Infringement Liability Doctrines (one of the two ways, ‘direct’ being the other, that one can infringe)

o Contributory Infringement

Elements: knowledge of the infringing activity AND material contribution to the activity

Sony took broader view and said not liable if “capable of substantial non-infringing uses” o Vicarious Liability

Closely related to doctrine of enterprise liability and respondeat superior
 Elements: Right and ability to supervise or control the infringing activity AND direct financial benefit from that activity ( see e.g. Napster )
DMCA o Provides an unprecedented level of copyright protection; designed to address piracy of digital content o §1201(a)

Prohibits access circumvention and trafficking that facilitates access circumvention o §1201(b)

Targets those that facilitate circumvention through marketing, sales, etc.

Must be offered to the public o One case, Corley (pg 479) said fair use does not apply if found liable for violating §1201(a)(2) of
DMCA

Said that it only applies to infringement actions, not DMCA violations
First sale doctrine: §109(a) - Only applies if owner sells the work, not merely licenses it
Public Display: §109(c) - Owner of a lawfully made copy of a copyrighted work can publically display that copy
Other equitable defenses o Laches
 Π inexcusably or unreasonably delays in bringing suit & Δ prejudiced by this delay o Estoppel
 Π aided the Δ in committing infringing acts , or to induce or cause their performance by the Δ o Unclean hands
 Π either participated in the infringing acts or committed fraud or some other transgression which resulted in harm or prejudice to the Δ o Copyright misuse

Has been rejected by some courts

Some say can only be used in an anti-trust context

But some permit the defense even outside anti-trust contexts

(requirements of statutory subject matter and utility)
Ciara’s Notes

Different sources of law for patents: o Patent Act of 1952 § 101 (definitions) o Constitution (copyright clause) o PTO Regulations in the CFR (§ 37) o Manual of Patent Examining Procedure o Case law

How patents differ for copyrights o Only have the right to exclude, only 20 years of protection from the date the application is filed o Must file an application to receive any kind of protection, patents do not arise automatically o Must disclose to the USPTO everything about the invention and distinctly claim it

Patent requirements - statutory subject matter, utility, novelty, nonobviousness, originality §§ 101 - 103

Must include specs and claims in the patent application; drawings are optional
Subject Matter
Can protect: ANY NEW AND USEFUL process, machine, manufacture, or composition of matter
Exceptions: laws of nature/naturally occurring products, mathematical algorithms, mental steps, abstract ideas
Diamond v. Chakrabarty
U.S., 1980
- Chakrabarty had created an oil eating bacteria to facilitate clean up in oil spills, was denied a patent on the basis that the bacteria was living matter
- Chakrabarty alleged that it was a product of manmade innovation
- Sup. Ct. rules for the microbiologist and says that congress was given a wide scope of what is defined as patentable
Patents: Utility
§ 101
 Synonymous with the term “useful”

Does the subject of the patent have a use?

There has to be some purpose or end-use of the subject matter

Generally a lenient standard
Brenner v. Manson
U.S., 1966
- Mason was a chemist who wanted to patent a certain chemical process that produced a known steroid, to establish the usefulness of HIS particular process, he provided evidence that a similar process (created by
Ringold) has been used to treat tumor-inhibiting characteristics
- PTO examiner denied interference petition and patent app; CCPA reversed, Sup. Ct. grants cert
- Issue: Did Mason prove the utility of the subject matter of the patent?
- Holding: No.
- Rationale: Could not award the patent based on similar processes because it did not demonstrate the usefulness of Manson’s particular process. The court cannot create a monopoly when there is no clear use for the subject matter of the patent application. “Such a patent may confer power to block off whole areas of scientific development, without compensating benefit to the public”

Genetically modified animals
Arguments against: religious, moral
Two diff categories: animals used for research & animals used for farming

Utility is multi-dimensional

General utility - capacity to do something

Specific utility - the potential to work as claimed

Substantial and Credible utility (USPTO guidelines on TWEN)
Patents: Novelty
§ 102 and § 103

An invention must be new

The U.S. uses a “first-to-invent” system; provides few incentives
 A person can receive a patent UNLESS it is in the public domain, or exists in a prior art (§ 102)

Cannot abandon, suppress, or conceal the invention; otherwise there is no patent
Gayler v. Wilder
U.S., 1850
- Fitzgerald had filed for a patent and was granted a patent for a fireproof safe that stored important papers in case of fire, Conner had his own personal business and had use a device similar to Fitzgerald’s safe about 10 years prior to Fitzgerald’s patent
- Issue: Was Fitzgerald’s invention new?
- Holding: Yes.
- Rationale: The Conner safe had passed away from the memory of Conner himself and of those who had seen the product in use and then the safe itself disappeared, the knowledge of the improvement was as completely lost as if it had never been discovered. The public could derive no benefit from it until it was discovered by another inventor. There was a use assigned to Conner’s device, solely because of Fitzgerald’s invention.
- Practical accessibility: The things that were made before your invention, are they accessible to the public? i.e. if you have invented something but kept it to yourself for 10 yrs prior to someone else patenting the device, was it “practically accessible?”
Coffin v. Ogden
U.S., 1873
- Expands on practical accessibility + corroboration
- Ogden had filed for a patent, however there was evidence that lock in question had been created prior to the patent application
- Rationale: The law requires certainty. The knowledge and use by a single person is sufficient. Until a work is done, the inventor has given nothing to the public. (The invention of the prior art must have had a use and must be complete/demonstrative of that use) The lock made by Erbe was complete and capable of working.
In re Cruciferous Sprout Litigation
US COA, Fed. Cir., 2002

Reread
 Discusses the inherency factor under §102(a)

Inherency anticipates a future invention, is there evidence of a prior art in your field that dictates your invention
Patents: Nonobviousness requirement
§§ 102 - 103

Cannot receive patent protection when those who have ordinary skill in the prior art already knows the process, design, or skill
Stems from the requirement of “invention”
-
Previous standard before § 103 (only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable)
Litigation phase
Graham v. John Deere Co.
U.S., 1966
- Clamps for vibrating plow shanks
- The purpose of the clamp was to absorb shock from plow shanks
- Issue: Is the requested patent application nonobvious?
- Holding: No.
- Primary considerations: 1) scope and content of the prior art 2) differences between the prior art and the claimed invention 3) level of ordinary skill in the pertinent art
- Secondary considerations: 1) commercial success 2) long felt but unsolved needs 3) failure of others
- Rationale: The patent monopoly was not designed to secure to the inventor his natural right in his discoveries; it was a reward, an inducement to bring forth new knowledge. The court found that the arrangement of the patented device had the same tendencies of the previous patent.
Sakraida v. Ag Pro. Inc.
U.S., 1976
- Device in question: water flush system to remove cow manure; basically eliminated the hand labor aspect of removing manure with water
- Issue: Was the invention nonobvious?
- Holding: No.
- Rationale: Even if the invention is nonobvious, there may be an exception if there is synergy. The result must be greater than the sum of the several effects taken separately. The patent in question arranges old elements with each performing the same function it had been known to perfor, although perhaps producing a more striking result than in previous combinations.
Stratoflex, Inc. v. Aeroquip Corp.
U.S. COA, Fed. Cir., 1983
- overrules Sakaraida
- Fuel hose case
- Electrically conducive material for use in tubing was patented by Aeroquip originally, Stratoflex also purchased the tubing and made some improvements on the tubing, Aeroquip sues Stratoflex for unauthorized manufacture and sale
- Issue: Whether the invention set forth as a whole, would have been obvious to one of ordinary skill in the art when made, in view of the teachings of the prior art as a whole?
- Holding:
- Rationale: It appears to have been obvious to one skilled in the art to place the conductive material in the wall where the electrostatic buildup occurs; it was obvious to place a conductive PFTE layer on the inside and a nonconductive layer of PFTE layer on the outside. A court cannot stop until all pieces of evidence are considered. There was no evidence in this case that those with a level of ordinary skill in the area that they had tried and failed to find a solution for the problem.
- Rejects the “synergism” requirement
Application phase
In re Dillon
U.S. COA, Fed. Cir., 1990
- Dillon wanted a patent for a tetra-orthoester that reduces emissions of soot

- There were 2 other previous patents for orthoesters that worked to take water away from fuel (Sweeney)
- There was also another patent by Elliott that operated similar to Dillon’s invention but with hydrocarbon fuels
(not the same type as Dillon)
- The PTO has to make a prima facie case for obviousness; Dillon appealed their decision
- The court affirms that the PTO made a prima facie case for obviousness of Dillon’s invention
- Dillon had to rebut that prima facie case by giving test data showing: 1) improved properties that the prior art does not have 2) that the prior art is deficient that there is no motivation to make what might otherwise be obvious changes 3) any other argument or presentation of evidence that may be pertinent
- Test for non-analogous art reference being appropriate: 1) if the reference is within the field of the inventor’s endeavor, if not, 2) determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved
Patents
Review of nonobviousness
How far back into the prior art does the inventor have to go? o No temporal limitation o Go as far back as possible
Statutory Bars
* All related to the novelty requirement
* Occur before the patent application
* Relevant provisions: 35 U.S.C. § 102 (c) & (d) [useful for assignment 19] 35 U.S.C. 102(b) [important for the exam]
Public use bar
On-Sale bar
Abandonment
Forfeiture
Application for patent in several foreign patents (more than 1 year prior to U.S. application)
Plain language of 102(b), no patent available (or can be found invalid) if:
The invention is patented or described in a printed publication available anywhere in the world
The inventions is in the public use in the US
The invention is on sale in the US
ALL WITHIN 1 YEAR OF APPLICATION, statutory bars relate to matters after the applicant invented the invention
Egbert v. Lippman
U.S., 1881
* make a chronology of events beginning with the application date, and the 2 years (in this case) as the “critical date”; currently the critical date is 1 year
Corset steels were created for a friend by Barnes
Issue: Were the corset steels available for public use and thus barred from acquiring a patent?
Holding: Yes.
Rationale: If an invention is in public use or on sale prior to two years of application, it will be conclusive evidence of abandonment, and the patent will be void. An invention (such as this corset steel) can be hidden or covered from view, but can still be deemed as a public use. The invention was completed and used in 1855 (such that it was not being used for testing). It is not necessary that more than one of the patented articles by publicly used; the greater the number of users may strengthen the proof but one case is enough.

Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co.
U.S. COA, 2 nd
Cir., 1946
- Process patent for conditioning a metal surface; inventor said that his process was secret and was not being used publicly, could only see the result of the process; district court agreed with inventor
- Filing date: 8-6-1942; Critical date: 8/6/1941
- Issue: Was there public use that invalidated the patent?
- Holding: Yes.
- Rationale: A patent can be deemed invalid when: 1) there was a delay that indicated an intention to abandon, and 2) there was a forfeiture b/c of the inconsistency of a practical monopoly by means of secrecy and later legal monopoly of a patent. If an inventor goes beyond the period of probation (1 year) he forfeits his right regardless of how little the public may have learned about the invention; just as he can forfeit it by too long concealment even without exploiting the invention at all.
Pfaff v. Well Electronics, Inc.
U.S., 1998
- computer socket chip case
- Inventor had made the socket for Texas Instruments, but had not rendered the actual product only sent the drawings to prospective buyers, TI orders 31,000 units, creates the actual socket in summer of 1981
- Application date: 4/19/1982; Critical date: 4/19/1981
- Issue: Was the application for the patent invalid due to the on-sale statutory bar?
- Holding: Yes.
- Rationale: An invention is generally a concept or idea. May conduct extensive testing without losing the right to obtain a patent for his invention. Patent law encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.
- Factors for on-sale bar: 1) the product must be the subject of a commercial offer for sale 2)
- Can sell/assign right to whatever you create in the future, without violating the statutory bars
Patents: Infringement

The Patent Act gives the patentee only the right to exclude others; a cause of action against those who make, use, sell, offer for sale, or import the patented invention in (or into) the U.S. {negative right}

Patentee = the person who created the invention

Indirect infringement = inducing infringement; contributing to infringement
 Any unauthorized practice is infringement 35 U.S.C. § 271

How is infringement determined? o Determine the scope of the claim(s) {look at the literal meaning of the claims} o Compare the elements of the clam to the composition or method accused of infringement using the “all elements” rule: every element required by the claim must be present in the accused composition or method either literally or under the doctrine of equivalents

Infringement outline o What is patented? {question of law} o Has what is patented been made, used, or sold by another? {question of fact}

Defenses to infringement include: o Invalidity o Unenforceability (inequitable conduct)
Fromson v. Advance Offset Plate, Inc.
U.S. COA, Fed. Cir., 1983
- Invention was a process for making lithography {printing plates}
- Issue: What is patented? What is the meaning of “reaction”?

- Must look to the specification, the language of other claims, the prosecution history, expert testimony, and standard references {for claim interpretation}
Graver Tank & Manufacturing Co. v. Linde Air Products
U.S. 1950
- Invention: electric welding process
- Doctrine of equivalents - if the infringing invention performs substantially the same function in substantially the same way to obtain the same result
- Issue: Whether the trial court should be affirmed in deciding that the Lincolnweld 660 was an infringing invention?
- Holding: Yes, should be affirmed.
- Rationale: The Lincolnweld 660 is substantially similar; the magnesium and manganese function and produce the same results
1.
Source of law a.
Constitution art. 1, § 8, cl. 8.: To promote the progress of science and useful arts, by securing for limited times to . . . inventors the exclusive right to their respective . . . discoveries.” b.
Patent Act of 1952 (35 U.S.C. §§ 101, 102) i.
Protected Subject Matter ii.
Utility iii.
Novelty iv.
Nonobviousness v.
Originality
2.
Statutory subject matter a.
Protected under § 101 i.
Process ii.
Machine iii.
Manufacture (also called an article of manufacture) iv.
Composition of matter v.
Or any new or useful improvement vi.
Broad standard; “everything under the sun made by man can be patented.” b.
Traditional exceptions (not patentable): i.
Laws of nature ii.
Products of nature iii.
Mathematical algorithms iv.
Mental steps v.
Abstract ideas vi.
Methods dependent on human reactions c.
Idea/embodiment: ideas are not protected, but the embodiment of an idea will be d.
Diamond v. Charkrabarty i.
Broadens scope of what can be protected ii.
Permitted patenting of a human-made microorganism because it was a product of human ingenuity and cannot be found in nature iii.
Nothing in § 101 prevents patenting of a living bacterium e.
Process Patents ( 35 U.S.C. 100): “process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” i.
Cochrance v. Deener : a process is “a mode of treatment of certain materials to produce a given result. It is an act, or series of acts, performed upon the subject matter to be transformed and reduced to a different state of thing.”

ii.
Creator cannot obtain a patent on the material itself, but can obtain a patent on a new way to use it iii.
Need to balance rewarding significant improvements with reducing another’s ability to make useful contributions in the future iv.
If information is in the public domain, someone wishing to practice an improvement will need the patentee’s permission v.
If the original technology is also patented, it could create a “blocking effect” vi.
Anyone wanting to use either of the technologies will need permission from both inventors
3.
Utility a.
Must be “useful” b.
Lenient standard c.
Application must have an end use d.
“Patent is not a hunting license” e.
Must be different, although not necessarily better, than the prior art f.
Three types of utility (all three required for patent) i.
Specific: potential to do what is claimed. ii.
Substantial: practical application for the invention. iii.
Credible: whether the asserted use is believable to a person of ordinary skill in the art. g.
PTO will presume the utility is true, but it can challenge if there is evidence showing doubt as to the utility h.
Burden shifts to the applicant to prove utility i.
Brenner v. Manson i.
Court rejected patent protection for a chemical process because the end use of the steroid produced form the process was unknown ii.
A patent is not a hunting license iii.
Just because other similar steroids are useful, does not mean this one will be; need something more j.
Introduction of Legislation for a Moratorium on the Patenting of Genetically Engineered
Animals i.
Concerns for patenting
1.
Economic
2.
Ethics
3.
Environmental ii.
Two types of animals to consider
1.
Research: should not patent because it would inhibit research
2.
Farming: will be more expensive and push small farmers out of business
Assignments 17 and 18 (Novelty & Nonobviousness)
Novelty
In exchange for the right to exclude, the inventor needs to create something new for the public o Ties in with U.S.’s first-to-invent system as opposed to a first-to-file system
Relevant statutory provisions…a person entitled to a patent unless o §102(a): there is prior knowledge or use of the invention by others in the U.S.; or it has been patented or described in a printed publication anywhere in the world, prior to the patent application o §102(e): invention has been described in a published patent application filed in the U.S. before invention by patent applicant; or invention has been described in a patent granted on an application filed in the U.S. before invention by patent applicant (note, an int’l application only satisfies requirement if designates the U.S. and is published in English) o §102(g)(1): during an interference, another inventor shows he preceded the other applicant and has not abandoned, suppressed, or concealed the invention

General inquiry and factors the court takes into consideration when determining novelty
1.
Whether the reference adequately gives the public the benefit of the invention…concept of anticipation a.
Does it allow or enable the public to practice the invention (public being defined as a person
“with ordinary skill in the art to which the invention pertains”) i.
Public can be as small as a single third party that has prior knowledge and use
( Coffin ) b.
Does the reference disclose every element or limitation of the applicant’s invention i.
All elements of a claim (expressly or inherently) must be included in single piece of prior art c.
Inherency – prior art will anticipate if it necessarily contains the inherent element i.
In re Cruciferous Sprouts : raises issue of when the inherent nature has to be disclosed; how you determine what is inherent (e.g. the use of experts?)
1.
Is claim limitation inherent in the prior art even though not expressly referenced
2.
Whether the reference is accessible to the public a.
Gaylor
: the underlying value of the fireproof safe hadn’t been made known to the public…there was no “practical accessibility” i.
Need to have independent corroboration that the prior art existed, worked, and was understood by those skilled in the art (see Coffin ) b.
Geography (raises issue of cost of searching) – ties in with §104 and how foreign activity plays a role i.
§104: a patent may be granted in the U.S. on an invention made but not patented abroad c.
Has the product been disseminated i.
Role of documents that are marked Confidential or limited distribution d.
Operability i.
Some courts have imputed this requirement into §102(a) e.
Field of Knowledge i.
Inventor charged with knowledge of the entire universe of prior art, including art in fields different from own specialties
3.
Whether the date of the reference actually precedes the date of the applicant’s invention a.
Effective date: date the public received the benefit of the prior art i.
Date on which an ordinary artisan in the field has effective access to the disclosure b.
Critical date: for §102(a), the date on which the applicant invented the invention i.
How to determine critical date…conception, reduced to practice, first commercialization? ii.
PTO usually assumes the critical date is when application disclosing the invention is filed
1.
If prior reference found, then looks to see if the reference predates the date of invention, not the date of filing
2.
Inventor able to offer evidence of conception date, reduction to practice, etc
Nonobviousness
Stems from the requirement of needing to be an invention…a balancing of determining how large or impactful the contribution has to be from the inventor
Nonobviousness was expressed in Hotchkiss but had been thrown into confusion in subsequent cases with tests such as “flash of creative genius” (rejected by §103) and “synergism” (rejected in
Stratoflex )
Basic terms that often are important to pin down o Critical date: date on which the invention is reduced to practice o Effective date: date on which the reference is considered accessible
Relevant statutory provisions…a person entitled to a patent unless o §102(f): he did not himself invent the subject matter sought to be patented (derivation)

o §103(a): although not identical, the differences between the subject matter and the prior art are such that the subject matter as a whole would have been obvious to person having ordinary skill in the art
General inquiry and factors the court takes into consideration when determining novelty o Graham v. John Deere

Primary considerations/Process

Evaluate scope and content of the prior art; Identify differences between the prior art and the claimed invention; Are they ordinary for someone skilled in the pertinent art

Secondary considerations (per Stratoflex , these must be considered even if appears obvious)

Commercial success; long felt but unsolved needs; failure of others to solve the problem; willingness of others to accept patent and seek license o Does the prior art “teach away” from the invention in that it discourages doing what the inventor has done…or has the prior art obscured a problem the inventor has resolved o Stratoflex court disposed of the “synergism” requirement…combination patents not subject to any more stringent test than other patents o “Obvious to try” does not constitute obviousness…rather look at whether there was a reasonable expectation of success
Inquiry can be similar to the §102 test for novelty in that it involves examining prior art, but nonobviousness is a much more open-ended analysis than the novelty’s “every element” test (can consider multiple references) o Inherency concept is not used in the nonobviousness analysis as it is in novelty under §102 o The scope of the prior art is different
 §102 says every field can be considered

Stratoflex says relevant prior art is that “within the field of the inventor’s endeavor” or
“field reasonably pertinent to the particular problem with which the inventor was involved” (
In re Dillon dissent says even this is too broad and too much of a burden on the inventor)
How nonobviousness issues arise in practice when dealing w/ the PTO (see In re Dillon
’s burden shifting process) o PTO must make a prima facie case of obviousness in order to reject

New compound or composition is structurally similar to the reference and

Suggestion/expectation in prior art that new compound/composition will have similar utility o Once rejected, the applicant has the opportunity to rebut by showing that

Composition has unexpectedly improved properties or properties that prior art did not have

Prior art so deficient there is no motivation to make an otherwise obvious change

Any other relevant or pertinent argument or evidence
 the invention has different/new properties or properties that exist to an unexpectedly greater degree
Principal problem 19
Relevant Statutory Provisions
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent
 102(b) A person is entitled to a patent unless:
 (1) the invention is patented or described in a printed publication available anywhere in the world
 (2) the invention is in the public use in the US

 (3) the invention is on sale in the US
102(c): Abandonment

Rule: Abandonment under section 102(c) is rarely used…because o Abandonment is usually an inference based on action, therefore unless the action of abandonment goes on for a long time (usually over a year) the inference cannot be drawn..
o Typical abandonment issue is one in which the inventor expressly states an intent to donate the invention to the public and changes his mind within the year.
102(d): Foreign Patent

Rule: In order for the statutory bar provision of 102(d) to be triggered in regards to foreign patents, two things are required o 1. A foreign Filing more than a year before the U.S. filing o 2. Foreign Issuance before the U.S. filing.
Public Use Bar—Egbert v. Lippman and Metallizing Engineering Co.

Public Use: If a patent is sought on something that has been in public use (that is, the inventor allows use without restriction) for more than a year before the patent is sought the patent will be barred.
o Public Use Defined: (1) the invention does not have to be widely disseminated to fall under the public use bar—one instance of public use is sufficient; (2) broad knowledge of the inventions use is not required to fall under the public use bar; (3) even for inventions that will never be in the public eye if an inventor allows the invention to be used without restriction it will fall under the public use bar; (4) secret use of the invention does not remove it from the scope of the public use bar, See Metallizing Engineering Co. o Experimental Use Exception (Baxter International v. Cobe): Evidentiary factors in determining if a use is experimental include: (1) length of the test period; (2) whether the inventor received payment for the testing; (3) any agreement by the user to maintain the use confidential; (4) any records of testing; (5) whether persons other than the inventor performing the testing; (6) the number of tests and length of test period in relation to tests of similar devices.
On-Sale Bar—Pfaff v. Well Electronics, Inc.

Issue: Whether the commercial marketing of a newly invented product triggers the 1-year period even though the invention has not been reduced to practice.
Rule: the on-sale bar applies when two conditions are satisfied before the critical date. (1) the product must be the subject of a commercial offer for sale; and (2) the invention must be ready for patenting. This condition can be satisfied in two ways: (a) by proof of reduction to practice before the critical date; and (2) by proof that prior to the critical date of the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
Assignment 20 – Priority
I.
Introduction – Priority disputes are resolved within the PTO under its interference procedure

A patent is genuinely an exclusive right: only one patent will be awarded for any given invention

Priority rule necessary – sometimes more than one entity independently invents the same invention
 §102(g) – first party to invent receives the patent, unless the entity engages in certain disqualifying acts

Disqualifying acts: abandonment, suppression, or concealment

Law prefers the party that is eager

Inventive Acts: (1) conception, (2) diligence, (3) reduction to practice

Conception is the most valued, but the public benefits flow mainly from a working rendition

If first to conceive is not first reduce to practice, look at the cause of delay (diligence) from just before the second inventor conceived


If lack of diligence , defined as failure to work on concept from just before the second inventor conceived it, then the first to conceive is disqualified, and the second inventor – the first to reduce to practice gets the patent

Policy against first to conceive – no ability to motivate to translate their ideas into viable applications

Policy against first to reduce to practice – small inventor could never outcompete a major research corporation in preparing an application; might waste resources to encourage inventor to make a working model quickly – a phenomenon economists call “dissipation of rents”

Policy for requiring diligence from time second inventor enters the picture – good proxy for costeffective diligence; indicates ripe for development
II.
Statutory Material – 35 U.S.C. § 102(g)

A person shall be entitled to a patent unless – o Before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. o In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice , from a time prior to conception by the other.
III.
Case Material

Townsend v. Smith, Ct of Customs and Patent Apps, 1929 – Complete Conception; First
Conceive & Reduce o Machine to create multithread screws case o Burden on appellant to prove prior conception by preponderance of the evidence o Complete Conception – formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter applied in practice that constitutes an available conception within the meaning of the patent laws o Priority of conception – when invention made sufficiently plain to enable those skilled in the art to understand it o This case Rule – where inventor has established priority of conception, disclosure and reduction to practice, in the absence of any clearly proved abandonment, his right to a patent has not become forfeited either to the public or to his rival – entitled to priority o Very rare no experimentation – but too much is bad o Senior – First to file; junior – second to file

Griffith v. Kanamaru, US Court of Appeals, Federal Circuit, 1987 – Reasonable Diligence o Professor delay research for funding and special assistant case o Summary Judgment – plaintiff must establish a prima facie case of reasonable diligence, as well as dates of conception and reduction to practice to avoid summary judgment on issue of priority o Burden from time immediately before second inventor filing until own reduction to practice o Reasonable diligence standard balances the interest in rewarding and encouraging invention with the public’s interest in the earliest possible disclosure of innovation o Reasonable problems/limitations: other applications substantially contributed, vacation, delay testing, not required abandon ordinary means of livelihood, poor health, war o Funding commercial considerations NEVER accepted as reasonable delay o This case – Griffith failed to establish prima facie case of reasonable diligence or a legally sufficient excuse for inactivity to establish priority over Kanamaru o This case Rule – if the inventor #1 is the first to conceive but second to reduce to practice , inventor #1 still wins so long as he can show diligence from the time right before inventor #2 conceived the invention up through inventor #1’s own reduction to practice

Paulik v. Rizkalla, US Court of Appeals Federal Circuit, 1985 – Spurring; Renewed Activity

o Mere lapse of time will not prevent an inventor from receiving a patent – the sole exception resides in the § 102(g) and the exigencies of the priority contest o Long period of inactivity need not be fatal forfeiture, if inventor resumes work on the invention before the second inventor enters the field o This case Rule – if first inventor renewed activity on the invention and that inventor proceeded diligently to filing his patent application, starting before the earliest date to which inventor #2 is entitled – in accordance with established principles of interference practice – inventor #1 is not prejudiced o Deliberate concealment impedes the progress of science and the useful arts o Spurring – first inventor spurred to file a patent app by news of the second inventor’s activities o Basic purpose of patent system – exclusive right, constitutionally derived, for the national purpose of advancing the useful arts – carries obligation to disclose the workings of the invention
IV.
Notes

Conception – whether inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention o Must prove by corroborating evidence , preferably by showing contemporaneous disclosure o Idea definite and permanent – when inventor has a specific, settled idea, a particular solution to the problem at hand – not general goal or research plan he hopes to pursue o Mental formulation must be complete enough so that only routine experimentation is needed to make the invention operable o Contemporaneous recognition and appreciation of the invention

Reduction to practice: constructive v. actual o Tests (1) Actual RTP - constructed an embodiment or performed a process that met all the limitations of the interference count and (2) Constructive RTP - determined that the invention would work for its intended purpose relying on the filing date o In some rare cases – conception can require reduction to practice

Diligence – focus on excuses whether legally sufficient o Commercial considerations will not do o Doubts about the value of the enterprise will not do o Acceptable excuses for lack of diligence – day job, poverty, and illness

Abandonment, Suppression, or concealment – Mason v. Hepburn - gun clip 1887 o Between two inventors, the one who abandoned it should not later obtain the patent on it o Not three definitions – two sorts of activities – (1) implicated when an inventor actively abandons, suppresses, or conceals his invention from the public; (2) occurs when abandonment, suppression, or concealment may be inferred based upon the prior inventor’s unreasonable delay
in making the invention publicly known (failure to file application, describe invention in published document or to use the invention publicly within a reasonable time after first making the invention may constitute abandonment, suppression, or concealment)

Corroboration – proponent must corroborate his allegations o Too easy to tell a good self-serving story; but might be barrier for small inventors o Rule of reason looks at individual circumstances – but nonetheless requires some independent evidence of the facts that need to be proved in an interference

Interference practice –Section 35 of Patent Act o Commissioner of Patents the authority to declare an interference whenever an application claims the same thing as is claimed in a pending application or in an unexpired patent o Board of Patent Appeals and Interferences decides priority; proceeding between senior party, first to file and junior party second to file

o Senior party enjoys the presumption of having invented first; junior bears burden of demonstrating their earlier dates of invention o First goal to receive the patent; next-best convince invention should not be patentable
(example show invention obvious); then losers avoid becoming infringers o Alternatives – parties settle agree one receives patent and other receives license rights or joint inventors; agreements to settle interferences must be placed on public record o §154(b) extends the term for up to five years to compensate for delays caused by an interference

International considerations o §119 provides that the US application shall have the same effect as the application would have if file in this country on the date on which the application for patent for the same invention was first filed in such foreign country – so long as the US application is within 12 months of the foreign application o Foreign activity could now be used to establish a date of invention in an interference o US the only country in world with priority rule that turns on who invented; every other first to file o Constitution protection limited to inventors not filers o Policy - better things not invented too soon (1) does not excuse waiting for collateral developments (2) all-out efforts do produce superior results (3) best way to compensate for the rent dissipation problem is to encourage early patenting

Provisional Applications o 1995 § 111 of Patent Act amended permit filing of provisional applications; must include information in § 112 ¶1 and § 113; if app meets all requires and full is filed within 12 months, the date of the provisional will be used for priority purposes; patent term upon filing full application