BizTech Law Blog
Foster Swift attorney Mikhail "Mike" Murshak recently appeared on an episode of Michigan Reimagined, a podcast that discusses entrepreneurship and small business development and shares the stories of the people and organizations driving Michigan’s economic sustainability, to discuss the importance for a business to protect its intellectual property (IP).
You have an idea, a million dollar invention! You have applied for and received a patent to protect that invention, but now what? One way to make money with your invention is to license your intellectual property rights to a third-party for production or use.
The Supreme Court recently decided a case involving the patent venue statute 28 U. S. C. §1400(b). The case, TC Heartland v. Kraft Foods Group Brands, No. 16-341, concerned flavored drink mixes made by TC Heartland, which is based in Indiana. Kraft sued it claiming patent infringement in Delaware, which has a high concentration of patent suits.
There are four basic kinds of intellectual property that you can protect: trademarks, copyrights, patents and trade secrets. At the very early stages of starting a business you will want to protect your business name or brand through a trademark. Learn more about intellectual property basics and what you need to protect, in the Youtube video below.
Sam Frederick and John Mashni, both attorneys for Foster Swift, will be presenting a live webinar on how to protect your business's intellectual property on Tuesday, September 15, 2015 at the Lansing Regional Chamber Board Room. The webinar will be held from 8 a.m. to 9:30 a.m.
They will discuss copyright, trademark and trade secret basics and the importance of monitoring and enforcing your intellectual property rights. Frederick and Mashni will also present the best practices for protecting your intellectual property.
For more information and to register for the webinar, click here (We have identified that the following link is no longer active, and it has been removed.)
So you just had a Eureka moment and your epiphany is going to make you millions as soon as it hits shelves. Learn more about patent basics in this short video including:
What do Google and WD-40 have in common? They can both attribute their continued success to trade secrets. It may be relatively easy to build a search engine or an aerosol can that sprays lubricant, but it is practically impossible to replicate the success of Google and WD-40. The two companies do not have patents on their products, precisely because that would require public disclosure of how to produce the product that has made them so successful. The benefit of a trade secret is that it continues in perpetuity. Coca-Cola's trade secret for its formula is over 120 years old. If Coke had decided to patent its formula instead, the patent would have expired over a century ago and the company would not be the giant it is today.
In order to qualify as a "trade secret," the information must have economic value and must be kept confidential by the company. This can be done through legal documents, compartmentalizing information, physical and digital security, and enforcement actions against leakers of information. Tech companies should consider the use of trade secrets if a product is one that is not easy to develop independently. Software code and chemical formulas are two prime candidates. Importantly, trade secrets are governed by state law, which can vary as to confidentiality requirements.
It is time that we talk about design patents. Generally, when I mention design patents to potential clients, they invariably protest that they have an “invention” and not a “design.” However, most “inventions” at least contain ornamental elements that have the potential for design infringement in the marketplace. In those cases, pursuing a design patent, by itself or in combination with a utility application, can be an effective and affordable way to secure valuable intellectual property protection.
To help you decide if a design patent might be right for you, I have devoted this post to answering the most common questions I get regarding design patents.
So you had one of those “Eureka!” moments a while ago and your epiphany is going to make millions as soon as it hits the shelves. This blog is about making sure you don’t lose your right to patent that million dollar idea by waiting too long to file a patent application.
Generally, an invention can only be patented if a patent application is filed within one year of the invention's first disclosure. A public disclosure can take the form of: 1) a publication, 2) a public use, or 3) an offer for sale. In the patent world, these events are called the statutory bars because they bar you from filing a patent on the idea if one year has elapsed since the event.
I get a lot of questions from clients about “provisional patents." Let me just start this blog by clarifying once and for all that there is no such thing as a “provisional patent” anywhere in the Patent Act. However, since 1995 the USPTO has offered inventors the option of filing a provisional patent application under §11(b) of the Patent Act. Provisional applications have some interesting advantages of which you should be aware.
We have all seen patent numbers marked on all kinds of products. In fact as I sit and write this article I can report that there are several items in my office with patent markings including my hole punch, stapler, Dictaphone and the insoles in my shoes.
So why is that? There has got to be a reason, right?
The reason is that if products are not appropriately marked before they enter the stream of commerce, the damages that the manufacturer can receive in a patent infringement action against someone that has copied that product are reduced. 35 USC §287(a) provides:
Among the many recent Supreme Court decisions, one decision regarding patents and self-replicating technology has a huge effect on farmers and the agricultural industry.
Monsanto is an agriculture company headquartered in St. Louis, Missouri. Specifically, Monsanto genetically engineers seeds to yield herbicide-resistant plants that produce higher yields for farmers. One of its more popular products is its "Roundup-Ready" line of soybeans, which has been planted in over 50 million acres to date. The seed is attractive to farmers because it is herbicide-resistant.
Patent-trolling is a growing nuisance for business owners, particularly start-ups. Patent trolls will buy numerous patents – or buy struggling businesses just for the patents – for the sole use of threatening infringement claims on businesses. Most of the time, the threats are unfounded and rarely state which patents are being violated or how the target's use of that patent amounts to infringement.
Vermont has passed a new law that targets these patent trolls and allows their targets to pursue lawsuits against them. The law allows for a cause of action against "bad faith assertions of patent infringements," but does not define what this phrase means. Instead, it provides the courts a list of characteristics to consider when determining if an infringement assertion was made in bad faith.
In 2007, Newegg adopted a strategy to deal with patent trolls: Never settle – ever.
One of the first times it applied this new strategy was against Soverain Software. While Soverain's website appears legitimate, it has never made a sale. Instead, it targets large, online retailers that use shopping cart checkout technology. Soverain claimed that through two patents, numbers 5,715,314 and 5,909,492, it owned the "shopping carts" present in nearly every online retailer's website.
Crowdfunding, some would say, is the new social networking platform of raising money from people online. While crowdfunding is a relatively new term and concept, traditional principles of law still apply. Artists, startups and online creators using this new platform are governed by Intellectual Property principles.
Intellectual Property (IP) refers to the creations of the mind; and most commonly include ideas or inventions, literary and artistic works, symbols that identify your brand, names, logos and/or competitive business ideas or information. Under this broad umbrella of Intellectual Property, there are generally four categories that govern the use of Intellectual Property:
- Trademarks
- Patents
- Copyrights
- Trade Secrets
Before pitching or disclosing your concept to an online crowdfunding community to raise money these four categories of protection and the potential resulting consequences should be thoroughly examined. Failure to do so could result in the inadvertent theft, infringement or forfeiture of your IP rights. Let's take a deeper look at these four categories.
Recently in the case of Mayo Collaborative Services v Prometheus Laboratories, Inc., the Supreme Court of the United States found two patents invalid because they claimed subject matter that was not patentable. The patents in this case covered processes that help doctors who use thiopurine drugs to treat patients with autoimmune diseases determine whether a given dosage was too high or too low.
This is the third and final post in a series (Part 1: First-to-File; Part 2: Post Grant Review Proceedings) summarizing the most significant changes created by the Leahy-Smith America Invents Act (the "Act"). As you know, the Act was signed into law on September 16th. Although hyped as a major change in the U.S. Patents system, the Act does not affect many of the fundamental tenants of U.S. Patent law.
This blog post focuses on: (1) new limitations on false marking claims, and (2) USPTO funding and fees.
As noted in my previous post (Part 1: U.S. Patent Reform: First-to-File), the Leahy-Smith America Invents Act has been signed into law. The America Invents Act has been sold as "the biggest change in the U.S. Patents System since the 1950s." The hype, however, is far from reality – as the Act does not affect many of the fundamental tenants of U.S. Patent law.
This is the second of multiple blog posts that will summarize the most significant changes created by the America Invents Act. My previous blog post addressed the adoption of a "First-to-File" system. Today, I will discuss "Post Grant Review Proceedings."
On September 16th, President Barack Obama signed the Leahy-Smith America Invents Act into law. The America Invents Act has been sold as "the biggest change in the U.S. Patents System since the 1950s." However, the Act does not affect many of the fundamental tenants of U.S. Patent law and in fact is significantly modified from the bill that originally was proposed.
This is the first of several blog posts that will summarize the most significant changes created by the America Invents Act.
What is "intellectual property" and why should it matter to your business? At the most basic level, "intellectual property" is one of an organization's most valuable assets. Intellectual property frequently differentiates extraordinary companies from "average" organizations. For that reason, IP must be zealously protected. IP breaks down into four areas: patents, trademarks, copyrights, and trade secrets.
As noted in a previous posting, on June 23, 2011, the America Invents Act (H.R. 1249) passed the U.S. House of Representatives. The U.S. Senate approved a similar bill in March (S. 23). However, since the bills were not identical, the issue of patent reform must go before the U.S. Senate again. But what are the chances of that happening anytime soon?
The America Invents Act recently passed the US House of Representatives by a vote of 304-117. A similar bill was approved 95-5 in the Senate in March. President Obama has pledged that he would sign a patent reform bill once it reaches his desk. Therefore, it appears that it is only a matter of time before it is sent to the President to be signed into law.
