Inventorship and co-inventors

Participants: RRZE (CC BY-SA 3.0) license

US patent inventorship criteria are tricky, but “conception” of the invention and “intellectual domination” are more important than reduction to practice.

If multiple people are involved with your invention, one issue that commonly arises is: “who gets listed as inventor or co-inventor, and in what order?”

For academic and scientific papers, there is a common order – the junior person who did most of the work often goes in front, the senior professor or principal investigator who may or may not have done much work goes at the end, and other persons go in the middle as co-authors according to usually unwritten criteria. So long as no one is seriously offended, the co-author list otherwise doesn’t matter too much.

Many inventors begin their careers by writing academic papers, and often make the mistake of thinking that the same rules apply to patents.

However, patents are different.  You probably wouldn’t let a friend put his name on the deed to your house unless you want to give him co-ownership.  Patents are more like property deeds.  In the US, just who is and who isn’t a patent inventor can make a big difference in terms of who ultimately owns the patent.  As a result, patents have their own set of rules as to who is and who isn’t considered an inventor.

So what are the rules for inventorship? The USPTO rules are covered by MPEP 2137.01 INVENTORSHIP.  These rules were worked out through a number of court cases, and are occasionally a bit fuzzy and open to interpretation.  At the risk of oversimplification, the main idea is that the inventor is the person who conceived of the invention, and not necessarily the person (such as a supervisor) who suggested working on the problem, or the person (such as a technician or programmer) who did the hands-on work to reduce the invention to practice (e.g. make a working prototype). In fact, reduction to practice is usually not necessary.

Other considerations, such as the issue of “intellectual domination”, are also important.  An inventor who is “intellectually dominating” an invention may still be able to use suggestions from others without making them co-inventors.

Things can get tricky. Sometimes the supervisor’s suggestion is really the key insight behind an invention,  making the supervisor an inventor. Similarly, sometimes the person reducing the invention to practice ends up solving unexpected problems, and these solutions form a key part of the invention, making the “technician” an inventor.  Here looking at the invention’s claims can help sort things out.  Who was responsible for what?  Note, however, that claims can change during the examination, and sometimes an inventor can end up being added to an invention, or left on the “cutting room floor” as a result.

In any event, the best time to consider these issues is in advance of filing.  It is also important to discuss assignment in advance of filing as well since the usual goal is to have 100% of the invention assigned to the same persons or organizations.


Goodbye Texas Eastern District


But armadillos love patent trolls!

In the TC Heartland v. Kraft Food case, the Supreme Court ruled that the Eastern District Court of Texas is no longer patent litigation central. Goodbye forum shopping. 

In a strange quirk of patent law, a single judge from Marshall Texas (population 24,000) has been deciding more than 25% of the US patent infringement cases. If you wanted to sue someone for patent infringement and wanted a friendly court, the Eastern District Court of Texas was the place for you.

Put it this way: so much patent litigation happened here that Samsung actually sponsored a local Marshall Texas ice skating rink, just to keep the locals happy.

This is very unusual.  Corporations are typically sued in their state of incorporation or in the primary state where they do business.  However, patent litigation has had its own set of rules.  For nearly a generation, lower courts have interpreted these rules as implying that corporations can be for sued for patent violations nearly anywhere in the US.

It didn’t take long for patent litigation experts to figure out that if this was the rule, then why not sue where the courts are friendliest? This practice is also called “forum shopping”.

The local economy around Marshall Texas had been struggling.  What to do? In what may have been a bit of a “race to the bottom”, the Federal Court and local juries in Marshall Texas became increasingly patent-plaintiff-friendly.  Lots of attorneys with big corporate expense accounts started flying to Marshall.  Good for the local economy, but it starts to look a bit fishy…

In the recent TC Heartland v. Kraft Food decision, the Supreme Court decided that this had to stop.  They ruled that if Congress had intended this sort of thing, Congress would have said so plainly.  They also pointed out that there wasn’t much of a basis for the “file anywhere” interpretation. So goodbye “file anywhere” rule.  And for the most part, goodbye Eastern District Court of Texas.

Going forward, the new hot spots for patent litigation may become Delaware (many corporations are incorporated there), California (high tech industry), and other high-tech areas.

Blurred lines: copyright AFC tests

Blurred lines

The “Blurred lines” music copyright case went wrong because courts are not using modern abstraction-filtration-comparison (AFC) infringement tests.

Copyright covers creative expression but not ideas or information.  Many copyrighted works, however, are a mixture of creative expression and ideas/information.  This mixture gives courts headaches, and as a result, copyright litigation can be unpredictable.

For software copyright infringement cases, courts tend to use an “abstraction-filtration-comparison” (AFC) test. The AFC test was first introduced in the 1992 “Computer Associates v. Altai” case.  For this test, the court (i.e. the judge with expert help) first “abstracts” (analyzes) the work and determines what parts are “expression” (copyright protected) and what parts are ideas (copyright ineligible).  Then the court removes (filters out) the ineligible idea portions. If there are questions about what remains, the court can give the remaining “expression” portions to a jury to decide.

This test puts a lot of responsibility on the court to get things right and is hard to perform in practice, but at least it makes some sort of logical sense.  Throw out the ineligible stuff, and just look at the rest.

The AFC test was inspired by the earlier “Scènes à Faire” (Scenes a Faire) concept often used for literary and movie copyrights. As a quick example, if you want to write a Western novel or film, then horses, guns, salons, bandits and the like are considered essential ideas, and these would be tossed out in a copyright case involving a Western theme.

So what went wrong in the recent “Blurred Lines” music copyright infringement case? The song admittedly tried to capture the party atmosphere of Marvin Gaye’s earlier “Got to Give it Up” song, but the lyrics and music were quite different. Both had party noises and “cowbell”, but these were different party noises and different cowbell. In fact, Marvin Gaye’s copyright was for sheet music that didn’t cover party noises and cowbell at all.

The problem is that outside of software, older tests, such as “objective substantial similarity” and “total concept and feel” are still being used.  These older tests blur the distinction between creative expression and ideas and rely on an unskilled jury to magically sort things out.

To somewhat simplify the “Blurred Lines” case, the jury listened to music that contained a mixture of creative expression (different lyrics and music) and unprotected ideas (generic party noises and cowbell). To make matters worse, the jury instructions did not even tell the jury to try to distinguish between creative expression and copyright ineligible ideas.

So, not surprisingly, the jurors found infringement; most likely because both songs contained party noises and cowbell.  Never mind that these were not covered by copyright and that as far as the actual copyrightable lyrics and music went, the two songs were quite different.

This case is presently on appeal. Various copyright experts have suggested that the way out of this mess is to expand the use of the AFC test from computer software to other types of copyright cases as well. Unfortunately, the law works slowly. Until then, go easy on the cowbell at parties.

Utility patents

Caveman inventor
Wheel: both a machine and a method!

Utility patents are the best way to protect most inventions. But to get one, you have to convince a USPTO examiner that your application is worthy.

Utility patents are by far the most common type of patent.  In fact, the term “patent” almost always means “utility patent”.  Almost all of the famous patents in history – the telephone, light bulb, transistor, airplane, motion picture, are utility patents.

What is a utility patent?  Under US law, utility patents are the type of intellectual property (IP) that covers: “a new and useful process (e.g. a method of doing something), machine, manufacture, or composition of matter (e.g. a drug), or a new and useful improvement thereof.

Note the underlined new. To get a utility patent application allowed (granted), the applicant has to prove to skeptical USPTO examiners that the invention really is new, and not just a trivial (obvious) tweak to older prior art.

Here “useful” means that the invention must have some actual benefit (isn’t clearly impossible or too illegal) and does more than just being decorative.

Utility patents are often the hardest type of IP to get. USPTO examiners usually attempt to use prior art to reject new applications. They expect applicants to rebut their rejections, often several times, before allowing the application.  This process is called patent prosecution. If the applicant does not successfully rebut the various rejections, the application goes abandoned.

Legally, a US patent gives the owner the right to sue to collect royalties/damages and/or to attempt to block someone else from practicing the invention in the United States, but not internationally. The exact scope of legal protection is determined by the patent claims.

Patent valuation: Patent valuation is dictated in part by the desires of others to practice the invention, the effectiveness of the patent in thwarting these desires (what the claims cover), and the invention’s potential market size. If a particular patent covers an invention that no one else wants to practice, that patent isn’t going to be worth much!

Assuming maintenance fees are paid at 3-4, 7-8, and 11-12 years after issue, US utility patents typically last for 20 years from initial filing, sometimes more if the USPTO has taken too long to review the application. After that, they expire and become public domain.

Intellectual property for cheerleaders

Is the uniform decoration “functional”?

In Star Athletica v Varsity Brands, the Supreme Court ruled that copyrights can cover the industrial designs of clothing, 3D objects, and other useful (functional) things.

The boundaries between different areas of intellectual property, such as copyrights and patents, can be fuzzy.  Copyrights, among other things, cover artistic images and 3D sculptures on various media or “articles”, but the artistic feature must be able to exist separately from any functional (useful) part of the underlying media.

Copyrights v design patents: Copyrights require only minimal originality, are cheap, and last for generations. But, if you want to claim an ornamental design for a functional (useful) item, this falls into design patent territory. Design patents have a higher threshold for originality, are more expensive, and only last for 15 years.

Some things, such as clothing, and other 3D designs that combine artistic/ornamental and useful/functional aspects, fall into multiple areas, but not always as one might predict. Clothing “knock-offs” exist because the overall pattern or cut of clothing is conclusively (legally) presumed to be functional, hence copyright exempt. So this goes into the design patent bin. However artistic fabric patterns can be copyrighted.

Which brings us to the cheerleaders, and the Supreme Court’s (SCOTUS) recently decided Star Athletica v. Varsity Brands case.  This teaches lessons that apply to other mixed artistic/functional things as well, such as 3D objects. So you folks with 3D printers, listen up!

Cheerleader uniforms have certain characteristic lines and colors, and Star Athletica copyrighted a number of these designs. Varsity Brands, possibly believing that fashion knockoffs are no big deal, copied them, got sued, and the case eventually made its way to SCOTUS.

Varsity had some interesting legal arguments – namely that the lines and colors were functional (no copyright) because they distinguished the uniform as a cheerleader uniform. However, SCOTUS didn’t buy it. They cited Mazer v Stein, an earlier 1954 SCOTUS case, where an artistic statute was ruled to have retained copyright protection even when used as a lamp base (made functional). Like this earlier case, SCOTUS ruled that if an otherwise copyrightable feature can be perceived as art separate from the useful article, then the feature can get copyright protection.

Unintended consequences?  So we can have an ornamental design for a functional item (design patent).  We can also have a useful item with an artistic feature (copyright); at least when the artistic feature can exist independently of the useful item. Confusing, and there may be some unforeseen economic issues. Although SCOTUS relied on the previous 1954 Mazar case, copyright laws have changed since 1954.  Copyright now automatically attaches to nearly everything and lasts nearly forever.

In any event, if you are planning on doing fashion knockoffs, be careful.  In fact, if you are any manufacturer planning on incorporating “an old art design” into a functional object, be careful.

35 USC 287: Marking inventions

Remember to mark your products!

To avoid damaging your patent rights, mark your products with patent numbers. The law covers devices but not methods, so marking software is a bit tricky.

You probably have noticed that some products are marked with the word “patent” and a list of patent numbers. These are usually written in small type somewhere on the product or on its packaging. If you (as a patent holder) are planning to start producing your own patented products, what happens if you don’t include this marking?

Because it is hard to tell what is and isn’t patented, Congress passed the 35 USC 287 statute (Federal law) to protect the public from accidental patent infringement. The law holds that absent such marking, your ability to recover past damages from an infringer can be very limited.  For example, past damages may only extend back to the time that you first sent a notice letter to the infringer. This law also covers your patent licensees (who often forget such markings) as well, so remember this for license negotiations.  Otherwise, your licensee could end up damaging your rights.

Although traditionally actual patent numbers had to be marked on the product, a few years ago it became OK to just use “virtual marking”. Here, just marking “patent or pat”, followed by a publically accessible web page address, is enough.  Virtual marking has advantages, but make sure the web page is actually “up”.

To prevent inadvertent loss of rights, it may seem safer to always err on the side of marking, but don’t overdo it.  There is a different law, 35 USC 292, designed to protect the public against false patent marking. So the general rule of thumb is to try to provide adequate patent notice, but avoid being deceptive.

35 USC 287 has some “bugs” and “features”

Bugs: Untended consequence — the law somewhat favors patent trolls. A patent holder who doesn’t produce anything (and hence has nothing to mark) can still recover past damages from up to six years earlier.

Features: Because it is hard to affix a mark to a method, 35 USC 287 generally doesn’t apply to methods patents.

But what about software and software implemented inventions? Software patents often contain a mixture of methods claims and device claims. However, software typically runs on (or is stored in) some sort of physical object. So is software covered by 35 USC 287 or not?  If so, what to mark, and how to mark it? What about websites and apps?

The courts have not been consistent here, and the law is still evolving. However, a fair number of court cases have required marking. It is safest to assume that patent marking is likely required, and then examine legal aspects as they apply to the specifics of your situation.

Thales patent eligibility ruling

HMD display
Not the Thales Head Mounted Display!

A recent Federal Circuit case, Thales Visionix Inc. v United States, continues the process of restoring sanity to the ongoing “Alice” patent eligibility mess.

As previously discussed, since the Supreme Court’s 2014 “Alice” decision, patent law has been burdened with an unworkable “is it abstract?” test for patent eligibility. This test is similar to a medieval test to determine witches:  Step 1:determine if the test subject is a witch abstract”;  Step 2:if so, does the witch float? is there something more?”

The Federal Circuit, charged with cleaning up patent law, has been slowly chipping away at this nonsense. In two earlier cases (Enfish and Rapid Litigation), the Federal Circuit established at least a few reasonable step 1 rules (such as read the entire claim), and now we have another.

Thales Visionix had a patent on a motion-tracking Head Mounted Display (HMD).  This patent claimed a HMD arrangement of inertial sensors and signal processing elements, used in the F-35 fighter jet. Any enemy pilot blown up by this HMD system might not consider this to be “abstract”, but a lower US court was not so easily impressed. They used their own “Alice: it’s abstract” weapon to shot down the HMD patent.

In the absence of rules (the Supreme Court thoughtfully declined to provide any), lower courts have often used a type of “guilt by association” logic, where if a given patent claim has some elements in common with another claim previously ruled to be abstract, then that claim is also abstract. The lower court argued that the Thales patent claims were abstract because the claims allegedly “used mathematical equations (previously determined to be abstract) for determining the relative position of a moving object to a moving reference frame”.

However the Federal Circuit disagreed.  They determined that just because a claim contains a patent ineligible (abstract) concept (e.g. mathematical equations) does not mean that the entire claim is (step 1) “abstract.” Rather, the question is if the patent ineligible concept (math, natural law) is being used to improve some other technique. If so, then the claim as a whole is not abstract. This is similar to their earlier, more biotech-focused, ruling in the Rapid Litigation case.

So as a medieval logic analogy, just because a woman has a cat does not automatically mean that the woman is a witch, if the cat is unusually good at catching mice. If improved mouse catching can be shown, the step 1 conclusion is that the woman is not a witch. There is no need to go on and subject the poor woman to a step 2 “witch float” test.  This is good, because there is a high casualty rate at step 2.

Patent claim charts

Patent claim chart, with one row not matching
Patent claim chart, with one row not matching

Think that someone is infringing on your patent?  Worried you are infringing, or want to show a patent reads on prior art?  Analyze with patent claim charts.

The basic idea behind a patent claim chart is to first break a given patent claim down into a series of smaller sections, and then to determine if each smaller section matches a corresponding aspect of a target of interest. This target may be a potentially infringing product or service, another patent, or even a public domain product or service (to try to show that a patent may be invalid).

Patent claim charts usually follow a row and column table format.  One column contains various sections from a claim of interest, spread out over a number of rows.  Another column contains various aspects of a target of interest, also spread out over a number of rows.  Rows containing sections from the claim column are compared with rows containing aspects from the target column.

If can be shown that every row from the claim column exactly matches up to one or more rows from the target column, then this suggests that claim does describe the target. Note, however, that although every claim row must match with a target row, there is usually no reverse requirement that every target row match-up with a claim row.

Sounds simple, but the devil is in the details.  Since patent claim charts are often part of an adversarial process, each side may feel under pressure to “slant” their claim charts in a way that favors their particular position.

Claim charts can be slanted in many ways.  One of the most common ways is to write the chart in a way that skips over important details, often by not breaking the claim down into small enough sections.

Some of the comparisons may not be accurate.  Also, remember that individual claim terms can sometimes be misleading because they may have been defined in the text of the patent application (or during prosecution), in a somewhat unexpected way.

So read and write claim charts with caution and skepticism.  Don’t use sloppy claim charts to initiate any legal action.  Of course, don’t blindly accept claim charts from others without doing your own independent analysis.

Common law trademarks

Common law trademarks can shield against Federal trademarks
Common law trademarks can sometimes shield against Federal trademarks

Think that a Federal US trademark applies throughout the US? Not always. Welcome to the murky world of common law trademarks.

Under trademark law, certain types of legal rights, often called “common law trademark rights”, automatically (without any registration) go into effect as soon as someone starts using some sort of distinctive mark (word, logo) to identify a product or service that they are selling in commerce.

Common law trademarks are murky because it is often hard to determine who first used a particular mark to sell a particular product or service at a particular geographical location.

Sounds strange?  To better understand common law trademarks, think back to an earlier era when long distance communication was poor and most commerce was local. In earlier eras, Federal and state-level trademark registration systems were either non-existent or impractically hard to use.

Occasionally different merchants, located in geographically different areas and unaware of each other, would innocently start using confusingly similar marks for their local products and services. The problem might go undetected for years until one merchant eventually expanded into another’s geographic area. Customers would then get confused, and the merchants would file lawsuits.

It wasn’t fair to strip an innocent merchant of all rights to their mark.  As a compromise, at least for merchants who had been clearly acting in good faith, the courts would often award each merchant exclusive local trademark rights to their respective marks.  As a result, under common law, different merchants, operating in geographically different areas, could even legally use the same trademark.

Communications and transportation improved, and the need for a Federal level trademark system became apparent.  However Congress faced some problems: 1) due to Constitutional limitations, they believed that they lacked authority to phase out the older, state-level, common law system; 2) it wasn’t even a good idea to phase-out the older system because it was still very important to commerce. Congress’s solution was to acknowledge that the older system would continue to operate and to make the newer Federal trademark system “backward compatible” with the older common law trademark system.

The net effect is that although a Federal trademark normally gives exclusive rights throughout the US, there are some limited common law trademark exemptions or defenses, such as 15 U.S. Code § 1115 (b)(5) and (6).

Consider a merchant (company) who didn’t register a Federal trademark, but who was otherwise innocently using their mark in geographic region “A”.  Assume that this use was prior to the Federal trademark filing of a confusingly similar mark by another merchant, previously only selling in geographic region “B”.  Under 15 U.S. Code § 1115 (b)(5) and (6), the merchant in region “A” can argue “common law rights”, and with adequate proof keep using this mark in region “A”. The Federal trademark holder (the other merchant) will otherwise have full US rights outside of region “A”.

Copyrights and creativity

Macaca self-photograph. No human creativity, so no copyright?

Copyright protection requires that a work have at least a minimum amount of human creativity, but the laws are vague as to what this minimum is.

Legally, US copyright protection is provided for information (typically preserved in a non-transitory medium) that has at least a small element of a human author’s own creativity. Courts have held that mere facts and ideas alone can’t be copyrighted. The amount of creativity can be very small, but it isn’t zero.  For example, using human judgment to select and compile facts according to personal criteria often qualifies, and an author’s annotations of facts may also qualify, but routine alphabetical sorting is not enough (Feist Publications v. Rural Telephone, 499 US 340, 1991) .

From an engineering or mathematical perspective, these rules may look vague. This is in part because copyright concepts date back hundreds of years, back to the early days of printing presses, and have evolved slowly over time through various laws and court decisions. However copyrights are big business, and copyright law enforcement tends to be efficient and harsh. So like them or not, the rules are important.

One area where the rules are fuzzy is short works, such as short sections of text or individual photographic images. What is the minimum work (creative information) that might get copyright protection?  The rules are not uniform throughout the world, and here we are discussing US laws.

Short text:  Very short text fragments are often considered too trivial (de minimis) for copyright protection, but the court will consider originality here, and more originality gets better protection. Although there is no minimum word-count cut off, text fragments of 11 words or less at the “news article” level of originality are often considered non-infringing.

Individual photographs:  Again the law requires a small amount of human creativity for copyright protection.  The US copyright office will not register works produced by non-humans, and lower court cases are consistent with this decision.  Additionally, exact copies of public domain work (Bridgeman Art Library v. Corel Corp.) are also exempt from copyright. Otherwise, the courts often ignore the creativity requirement.  This raises some interesting questions for future cases. However, unless the law changes, assume that copyright applies to nearly all human-produced photographs, no matter how repetitious, trivial or otherwise non-creative.

There are other copyright exceptions.  Federal Government work is often not copyrightable.  Further, under “fair use”, there can be additional exceptions where it is OK to reproduce another’s copyrighted work.  Fair use rules are complex and will be the topic of another discussion.