PHOSITA :: an IP Blog!

Patents for Humanity

Angel Gerdzhikov — Thu, 09 Feb 2012 14:19:07 +0000

Teaser Image

Teaser Text

USPTO launches Patents for Humanity Program test

Today the USPTO announced the launch of an interesting voluntary pilot program called the Patents for Humanity Program. The program is an awards competition for patent owners and licensees who apply their patented technologies to address humanitarian needs.

Submissions will be accepted between March 1 - August 31, 2012, and application packets will become available for download and submission during the period. Applicants can describe how they have addressed humanitarian needs with their patented technology, and may submit images, videos, or web sites with their applications. Up to 50 winners will be selected in the first year of the pilot program. The entries will be judged by researchers from academia and federal labs donating their time in four categories: medical technology, food and nutrition, clean technology, and information technology. The judging period is from September 1 - December 31, 2012. The winners will receive certificates for accelerated processing of select patent USPTO matters.

As a background, the USPTO currently has an accelerated examination process in place, where certain applications can be “made special” by filing a petition. This simply means that the application is advanced “out of turn” for examination. There are several categories of special applications for which no fee is due with the petition, and there are some for which a fee is required and/or other requirements must be met. For example, no fee is required to make the application special where the inventor is 65 years or older or in poor health, or where the technology will materially enhance the environment, will contribute to the development or conservation of energy resources, or will contribute to countering terrorism.[1] Some examples of categories of special application for which a fee and establishing various other facts are required include prospective manufacture of the invention applied for, recombinant DNA technology, prospective infringement of the pending claims, inventions dealing with HIV/AIDS, and superconductivity technologies.

The four categories of the Program do seem to share some overlap with the above categories of application eligible to be made special. For example, medical technology does appear to overlap with recombinant DNA and HIV/AIDS technologies, and clean technology appears to overlap with contributing to the development or conservation of energy resources.

The interesting thing about the Patents for Humanity Program is that the incentive it provides appears to be similar to the incentives already provided by the USPTO for certain classes of applications and applicants. Therefore, the Program’s impact in accelerating the above categories of applications which are otherwise eligible to be made special may be limited. However, because patentees and licensees of issued patents are eligible to win the competition, they may be able to use their certificates to accelerate the examination of their future or pending applications that may not be eligible to be made special otherwise.

It seems like an exciting program, and hopefully it will generate enough interest to become a permanent addition to accelerated processing of applications at the USPTO. For more information, see the video provided by the USPTO:

http://www.youtube.com/watch?v=35WV6IyeUTw&feature=youtu.be

For further reading about the Patents for Humanity Program see:

http://www.uspto.gov/patents/init_events/patents_for_humanity.jsp

http://patentsforhumanity.challenge.gov/

Image by: Simon Howden (http://www.freedigitalphotos.net/images/view_photog.php?photogid=404)

[1] MPEP 708.02( http://www.uspto.gov/web/offices/pac/mpep/documents/0700_708_02.htm )

Megaupload’s Demise: A Warning to Cloud-Computing Services

Lewis Craft — Thu, 26 Jan 2012 16:40:19 +0000

Teaser Image

As most are aware, Megaupload recently came under fire from the government for violating copyright laws due to its practice of encouraging the public to upload and view enormous amounts of pirated movies. As Jeremy Pelofsky reports, Megaupload.com is accused of “engaging in a scheme that took more than $500 million away from copyright holders and generated over $175 million in proceeds from subscriptions and advertising.”

Megaupload provided a forum that encouraged third parties to upload infringing material and, thereafter, profited from both advertisements and from offering subscriptions for faster viewing and downloading speeds. The encouragement by Megaupload to upload infringing material onto its servers and inadequately removing the infringing material from its website after being warned by copyright holders eventually led to the government’s crackdown. The key to the infringement claims against Megaupload arise from its repeated failure to comply with the notice and takedown provisions of the Digital Millennium Copyright Act (DMCA), thereby resulting in charges of willful copyright infringement.

So…knowing that the basic elements of Megaupload’s infringement include 1) providing an accessible forum; 2) giving users the ability to upload legitimate or illegitimate material to the forum; and 3) allowing other users to view and/or download the legitimate or illegitimate material for free, the following question emerges: what other services might be liable in the same manner as Megaupload?

As Chloe Albanesius reports, there are a few widely used services that immediately come to mind including well-known cloud-computing services: Dropbox, Box, and YouSendit. These services essentially provide personal or group forums capable of meeting the aforementioned elements carried out by Megaupload.

Unlike Megaupload, however, Box and YouSendIt claim to take measures to avoid violating the Digital Millennium Copyright Act and act accordingly when the discovery of infringing material appears on their servers. In order to comply with the Digital Millennium Copyright Act, it is essential for these services to both understand and comply with the notice and takedown provisions of the DMCA requiring the removal of infringing material from servers once the webhosts are made aware. It is certainly feasible for these types of services to be run in a legitimate and legal manner as long as they take the necessary precautions and comply with the associated laws.

Thus, the takeaway from today’s blog post: As technology increasingly makes it easier for the public to electronically share information, it is important for companies to make themselves aware of the laws concerning both the internet and intellectual property in order to avoid following in the steps of Megaupload.

More information on the DMCA can be found at: http://www.copyright.gov/legislation/dmca.pdf

Image by cayobo on Flickr Creative Commons- some rights reserved.

Easy Access IP Project

Angel Gerdzhikov — Fri, 20 Jan 2012 21:00:47 +0000

Teaser Image

Three British universities recently proposed an interesting initiative called the Easy Access IP Project. The goal is to grant royalty-free licenses to anyone willing to commercialize technology within the university’s portfolio that has not yet been commercialized. Most licenses are non-exclusive, but exclusive licenses may also be available. The universities maintain websites where they post information about upcoming opportunities and summaries of available IP.

The idea is intriguing—provide companies with an opportunity to browse an otherwise unused portfolio and notify them when upcoming technologies become available for licensing. It certainly seems to promote commercialization of innovation, because if the university is unable, for whatever reason, to commercialize a patent, a third party could evaluate the patent and try to commercialize it royalty-free. The universities would be at an advantage since the terms of the license agreement reserve the rights to practice the technology for academic and research purposes. This could be the proverbial win-win situation for both the universities and business entities willing to exploit otherwise unexploited IP assets.

The counterargument, of course, is that the universities may be at a disadvantage, since companies may refrain from negotiating and obtaining royalty-bearing licenses, in hopes that they may license the same IP under a royalty-free license via the Easy Access IP Project. As another potential pitfall, it’s worth considering that an established company may obtain a non-exclusive license and rely on existing distribution or manufacturing capabilities to simply outcompete other non-exclusive licensees of the same technology. This may put small companies and start-ups at a disadvantage, and may come as a windfall to existing businesses, rather than serving to incubate startups and entrepreneurs around the respective university.

It will be interesting to see what kind of reception the Easy Access IP Project receives among the academic and business communities. Since the sample licenses for the project require annual reporting of the use of the technology and the economic benefits derived from it, some project metrics released by the universities would hopefully be forthcoming to see the program’s impact.

Image by electropod on Flickr Creative Commons- some rights reserved.

Your thoughts and comments are welcome.

Want to read more about the Easy Access IP Project? Check out the three links below.

http://www.bris.ac.uk/red/techtransfer

http://www.kcl.ac.uk/innovation/business/index.aspx

http://www.gla.ac.uk/businessandindustry/technology/easyaccessipdeals/

The Denver Broncos' use of Texas A&M's registered trademark "12th Man" during a playoff game forces the university to publicly assert its trademark rights.

Lewis Craft — Wed, 11 Jan 2012 20:20:17 +0000

Teaser Image

Although college football is officially on hiatus until next season, the NFL is still generating controversy on the gridiron—this time in the world of trademark law. The issue arises from the Denver Broncos’ use of Texas A&M’s “12^th Man” trademark during their playoff game against the Steelers on January 8^th. Apparently, a man parachuted into the stadium during the pre-game festivities with a flag trailing him bearing A&M’s registered mark, which was later flown throughout the game. Unfortunately for the Broncos, the use of the “12^th Man” mark caught the attention of Aggie alumni across the nation including Texas A&M’s vice president for marketing and communication, Jason Cook.

As Texas Tribune’s Reeve Hamilton reports, Cook tweeted a quick response to the Broncos’ use of the “12^th Man” mark saying “FYI #Broncos, the 12^th Man belongs to Texas A&M. We saw the flag today and will defend our trademark. #TAMU#gigem.” Cook later declared in an interview with the Texas Tribune that “[t]he 12^th man is synonymous with Texas A&M University” and that “[w]e take the protection of our marks very seriously. They are part of our intellectual property at the institution.” Cook is correct in that A&M does take the protection of its marks seriously. In fact, only six years ago A&M had to protect the same mark from being used by the Seattle Seahawks. Although the dispute with the Seahawks ultimately led to an out-of-court agreement granting the Seahawks a limited license to use the saying, the dispute put the public on notice of A&M’s intention to maintain and protect its “12^th Man” marks.

So, why is it so important for trademark holders, including Texas A&M University, to protect their trademarks and go after seemingly harmless uses like those of the Broncos? Well, it all stems back to the purpose of a trademark as a source identifier used to easily identify from whom goods and services originate. The phrase “12^th Man” has long been associated with A&M and the use of the mark on goods and services signifies that A&M endorses such products or services. As can be imagined, trademark holders want to protect the integrity of their brand names and prevent others from taking advantage of their marks without permission or some sort of license.

In addition, it is possible for a trademark holder to lose a mark for failing to protect it. When a mark is not protected, it can slip into the public domain by becoming generic. For example, brands like Escalator and Trampoline have slipped into the public domain and are no longer identified with the sources that originally coined the terms. Therefore, it is imperative that trademark holders seek out and stop unauthorized uses of their trademarks and continue to make the public aware that such marks should only be associated with the individual trademark holders.

By bringing actions against the Seahawks, and now the Broncos, Texas A&M is enforcing its rights in the mark “12^th Man” and putting the public on notice that the phrase should only be associated with the university. Without A&M’s diligent enforcement of its rights to the mark, the “12^th Man” slogan could potentially fall into the public domain as more and more football fans associate the meaning of the term to apply to those in attendance at a football game.

Image by Spacemanbobby on Flickr Creative Commons- some rights reserved.

Rumors of the anticipated Xbox 720 incorporating a DVR system come in the midst of a swirl of litigation involving digital video recording technology.

Lewis Craft — Fri, 06 Jan 2012 17:17:34 +0000

Teaser Image

Teaser Text

Rumors of the anticipated Xbox 720 incorporating a DVR system come in the midst of a swirl of litigation involving digital video recording technology.

As reported by Gamezone on January 4, a new rumor has surfaced about the development of the next generation Xbox, or Xbox 720 – a clever twist on the current Xbox 360 title, due to a patent recently granted to Microsoft.

United States Patent No. 8,083,593 was issued on December 27, 2011, and describes the implementation of a DVR system allowing for the recording of media, including television programs. The following abstract briefly describes the DVR application as implemented in the new system:

"An integrated gaming and media experience is disclosed, including recording of content on a gaming console. A digital video recorder (DVR) application running alongside a television client component allows users to record media content on the gaming console. The DVR application also integrates itself with the console menu. Once integrated, users can record media content while playing games. Alternatively, users can record content when the gaming console is turned off. The recorded content can include television programming, gaming experience (whether local or online), music, DVDs, and so on. When in the recording state, users can also switch between various other media modes, whether gaming, television, and so on."

Although the new Xbox 720 sounds pretty cool, this patent gives rise to yet another issue in the current controversy between Microsoft and TiVo regarding digital video recorder (DVR) technology. As you may have heard, Microsoft filed a lawsuit back in January 2011 and in subsequent motions alleged that TiVo violated seven of Microsoft’s patents concerning digital video recording. There is currently, however, a stay on the case due to the court’s having granted TiVo’s request for reexamination of the allegedly infringing patents. See Microsoft Corp. v. Tivo Inc., 2011 U.S. Dist. LEXIS 52619 (N.D. Cal., May 6, 2011).

What really makes this interesting is that AT&T (one of Microsoft’s major customers) was sued in 2009 for infringing TiVo’s DVR patents 6,233,389, 7,493,015, and 7,529,465 which ultimately resulted in a settlement on January 3, 2012. Forbes reports that TiVo will receive approximately $215 million from AT&T with $51 million up front and recurring quarterly payments until 2018 to cover the rest. To add to the controversy, it has been suggested that Microsoft filed its suit in January 2011 in response to TiVo’s suit against AT&T because AT&T’s technology runs Microsoft’s Mediaroom client software. Thus, it raises the question that since AT&T settled and AT&T’s technology uses Microsoft’s technology, is it still feasible that Microsoft could win its suit against TiVo and be able to defend against TiVo’s counterclaim of patent infringement? Although I have not researched in depth the patents at issue in these cases, the settlement by AT&T, if anything, might shed some light on how Microsoft’s case will unfold once reexamination is complete.
Now back to the important stuff: video games. In light of all this litigation surrounding DVR technology, it seems like the video game community might have to wait even longer than the 2013-2015 projected release date of the Xbox 720 so that Microsoft can incorporate the rumored DVR feature without the risk of impending litigation. If Microsoft ends up winning the suit against TiVo before then, however, I, for one, hope that Microsoft passes some of the winnings on to the consumer in the form of discounted prices for the new system.

Image by Fanchile on Flickr Creative Commons- some rights reserved.

The End of Times for Passwords: Apple Inc.’s “Low Threshold Face Recognition” Patent Application

Lewis Craft — Thu, 05 Jan 2012 00:00:00 +0000

Teaser Image

Teaser Text

Apple’s recently published patent application gives some insight into the future abilities of computers, phones, and tablets to unlock themselves simply by recognizing an individual’s face.

The world of passwords for electronic devices is on the brink of extinction if Apple, Inc. (Apple) is able to effectively develop its latest published patent application. On December 29, 2011, the USPTO published US Patent Application 2011/0317872 entitled, “Low Threshold Face Recognition” giving the public a first glimpse into the revolutionary possibility of electronic devices not only recognizing a user’s presence, but also discerning whether the user is authorized and thereafter unlocking accordingly.

Although facial recognition systems have been around for some time, some believe that this application may be the first design that actually has the ability to work well enough such that normal passwords may become a thing of the past. In fact, Nigram Arora, a contributor to Forbes.com and a self-described “electrical engineer with a long background in patents,” claims that with this patent application, “Apple is about to change how we function in our daily lives.”

So how does it work and why is it so different from previous facial recognition patents? As described on PatentlyApple.com, Apple's inventionuses a reference model to match “high information” features of a face to the reference model. These “high information” features may include the eyes, nose, mouth, etc., of a face, including the distances between such features. In addition, the facial recognition technology incorporates a weighted system such that differences at non-high information areas do not drastically affect the facial comparison. In addition, the application uses an orange-distance filter to recognize skin tones and determine when a face is in front of the image capturer. The abstract of the applications sets out:

Methods, systems, and apparatus, including computer programs encoded on a computer storage medium, are disclosed for reducing the impact of lighting conditions and biometric distortions, while providing a low-computation solution for reasonably effective (low threshold) face recognition. In one aspect, the methods include processing a captured image of a face of a user seeking to access a resource by conforming a subset of the captured face image to a reference model. The reference model corresponds to a high information portion of human faces. The methods further include comparing the processed captured image to at least one target profile corresponding to a user associated with the resource, and selectively recognizing the user seeking access to the resource based on a result of said comparing.

The key distinction of Apple’s facial recognition design is effectively set out in the title of the application describing the design as having a low threshold. The low threshold level is significant because it allows for correct recognitions of a face even with a reasonable number of false positives.

In summary, Apple’s patent application describes a feasible system of replacing the normal password protections associated with various electronic devices. Thus, once Apple is able to put a working system into place that is capable of providing or surpassing the reliability and assuredness of using passwords, it is only a matter of time until our electronic devices will be able to unlock themselves due to our presence alone.

Image by d’n’c on Flickr Creative Commons- some rights reserved.

The Federal Trademark Application's Ticking Time Bomb

Michelle Briggs — Tue, 20 Dec 2011 00:00:00 +0000

Teaser Image

Trademark law is an ingenious little creature of the law that has managed to disguise itself as simple and straightforward, when in reality it is anything but. Trademark law is rife with complexity and subtle nuance, and at times can be unforgiving and uncompromising. One of the most unassuming documents in trademark practice is the federal trademark application. On the surface this application appears simple enough; it is, however, teeming with little traps and time bombs.

A particularly deadly time bomb is....wait for it...., the "applicant party name." I know, you're saying, "Really,?" "Seriously?," "Come on, what does it matter? Can't I just say 'Sorry' or 'Whoops' and change it?" The answer is, "well, not really."

In law, while there are always token exceptions to a general rule, the general rule here is that a trademark application filed by the wrong party is void and must be canceled and refiled. An application must be filed by the party who owns the mark or reaps the benefit of that mark's use. This rule is unforgiving. The USPTO will not allow a defect of this nature to be cured by amendment or assignment. If you think about it, they have a point. The policy behind the trademark registration is not only to give additional rights to trademark owners, but to put the public on notice of WHO is using a mark in connection with WHICH goods and services. It would, in essence, be a fraud on the public to have the wrong party listed.

Yes, this rule may seem a bit trite and unnecessarily rigid, but that is just the way the cookie crumbles. I feel this topic is important because time and time again we have encountered clients who have been unaware of the importance of applying for their federal trademark under the correct party name. These clients usually come to us after they have filed the application on their own and are either in a situation where another party is attempting to cancel their mark, or they want to do someing with the mark--i.e., assign or license the mark. These clients find themselves between a rock and a hard place when we discover that the registration was applied for by the wrong party and their mark is now vulnerable to procedural attack, or they must eat the cost of filing the application again.

It's a hard lesson for what appears to be such an inconsequential form field, but that's the ingenious nature of trademark law--nothing is as it initially appears. This is why the safest course is to have an attorney skilled in the "art" of trademark law review a Federal Registration before it is filed.

Illegal Distribution of 'X-Men Origins: Wolverine' Lands One Man in Federal Prison for a Year

Lewis Craft — Tue, 20 Dec 2011 00:00:00 +0000

Teaser Image

Sharing X-Men Origins: Wolverine on Megaupload.com almost a month prior to its May 2009 release date resulted in a one-year prison sentence for a New York man. According to Gilberto Sanchez's guilty plea, he purchased an unfinished copy of the movie on a Bronx street corner and subsequently uploaded the film for all to see.

Unfortunately for Sanchez, he was either unaware or defiant of the criminal copyright laws that specifically outlaw uploading copyrighted works being prepared for commercial distribution--the Huffington Post reports that Sanchez had a prior offense for similar acts (so assumedly he was aware)--and ultimately pled guilty to releasing a pirated copy of X-Men Origins: Wolverine.

A California federal court, on December 19, sentenced Sanchez to one year in federal prison, one year of supervision after release from prison, and even restricted his computer rights after release. Matthew Belloni of The Hollywood Reporter noted that U.S. Attorney Andre Birotte, Jr., stated, "[t]he federal prison sentence in this case sends a strong message of deterrence to would-be Internet pirates....[t]he Justice Department will pursue and prosecute persons who seek to steal the intellectual property of this nation."

This case should be eye-opening for the seemingly numerous participants engaged in downloading, streaming, or uploading pirated movies--or any other protected media for that matter. Not only are monetary punishments available for copyright infringement, but in certain circumstances, infringers can also face prison time.

Not So Fast, Qwikster!

Michelle Briggs — Mon, 19 Sep 2011 00:00:00 +0000

Teaser Image

Looks like Netflix is having "the best month ever." Not only are they at risk of losing over 1 million customers in the wake of their decision to split their streaming and DVD-by-mail services into two companies--Netflix for streaming and Qwikster for DVDs--but now Netflix has the privilege and honor of negotiating the @qwikster Twitter handle with the prolific Jason Castillo, otherwise known as the "pot-smoking Elmo with a potty mouth." Castillo has recently tweeted such gems as:

"@kill About tired as shyt n I can't sleep"
"Man so much to plan so much deal so much negotiation n I want a plan when I still have part of it n stiL be making bank"
"Don't bother telling me who my ex is now dating! Cuzz now I feel bad for the bitch that has my sloppy seconds :)"

And how can we forget the classic....

"Bored as shyt wanna blaze but at the same time I don't ugh fuck it where's the bowl at spark me up lls"

But enough with the sarcasm. I think it is safe to say while this situation is comedic, it is also a wonderful example of a backward business strategy when it comes to branding and trademarks. Before a business or individual selects a new business name or trademark, it is generally advisable to do some level of searching to ensure that the name is available for use, or in the alternative, to assess the amount of time, energy, and money it will take to secure the name.

To be involved in commerce today means more than just picking a name and putting up a sign; it means being part of a conversation. Social media is made up of a set of very powerful tools, and when properly managed, those tools can take brand identity to the next level. Social media tools allow consumers to feel that they are interacting not just with a product or service provider, but with an entity that has an identity--a personality, if you will. It has been said, ad nauseum, that "reputation is everything." There is a reason for that. Businesses, just like people, must take proactive measures to protect that reputation. Reputation defense, in turn, is the value of trademark protection.

So, you have a name....now what? How do you ensure that you are in the best position to introduce your "business personality" to the world? How do you make that critical first impression?

Conduct a trademark clearance search: A thorough trademark search will scour various databases and search engines to determine whether the name has been registered as a trademark on the federal or state level, or whether someone has acquired common law trademark rights--i.e., using the name in connection with a good or service in commerce, but without a formal state or federal registration. A trademark attorney will analyze each potentially conflicting mark found in the search to determine the level of risk the brand runs in moving forward with their chosen name.
Domain Names: After it has been determined that a name is available for use and registration, it is important that a business owner find out whether the domain name is available, because YOU NEED AN ONLINE PRESENCE. If a brand owner is lucky, and their chosen domain name is available, they should also consider registering the .net, .biz, and .info variations of the domain name as well--i.e., for example, Qwikster should register www.qwikster.com, www.qwikster.net, www.qwikster.info, etc. This will protect the brand from many unscrupulous folks who want to confuse and spam the public through domain squatting or other techniques.
Social Media Handles: Before a brand owner introduces its name and business to the public, it is important to do a quick search to determine whether the social media handles for Twitter and Facebook are available. Social media is how a large and growing number of consumers learn about and choose to interact with businesses today. This is where Qwikster went wrong. They launched before even checking to see what was going on with their name on Twitter. The result...a teenager with a "pot smoking Elmo cartoon" for an avatar was what consumers saw when they went to follow Qwikster on Twitter. Talk about bad first impressions. Now, instead of quietly resolving the issue with Jason Castillo, or choosing a different handle or name, Qwikster is showered with negative press, Jason Castillo is getting 15 minutes of fame, and negotiation is likely going to be an expensive nightmare (and equally likely to violate Twitter's Terms of Service, causing more trouble for the fledgling company). All of this was easily preventable.
Important Note Regarding Domain Names and Social Media Handles: We recommend that a brand assess the entire online landscape at the same time--i.e., domain names and social media handles. Recently there has been a flurry of namesquatting on Twitter. What happens is that when a new domain name is registered it catches the attention of a "bot" that is controlled by hackers, spammers, and/or cybersquatters. Once this bot recognizes that a new domain name has been acquired, it immediately checks Twitter to see if the equivalent Twitter handle is taken. If the Twitter handle is not taken, the unscrupulous bot will register that Twitter handle before the lawful name holder does--i.e., the person who registered for the original domain name. This causes headaches and costs money for business owners and service providers who are trying to get their online ducks in a row. This is why it is important to determine the availability of social media handles for use on Facebook or Twitter, for example, at the same time a brand determines availability of the domain name. If everything is available, the best course of action is to sit down and register everything--domain names and social media handles--at the same time.

The bottom line for business big and small is this: DO YOUR HOMEWORK! Your name is everything. Often, the only thing you can control is your reputation. So take the little bit of extra time to do a search and to secure critical registrations to protect your name before you launch or as soon as possible after you launch. Take a cue from Qwikster and don't fall prey to the "pot smoking potty mouthed Elmos" of the world.

does a container really make a difference?

Douglas Sorocco — Fri, 14 Jan 2011 22:28:23 +0000

This is an old video from RocketBoom – but I really have been drawn back to it the last couple of days (probably because it was rerun). It is a cool product and the issues it raises about the interaction between branding, packaging and art really made me stop and think.

My favorite quote is when he speaks about price – [paraphrasing] “When it was $10, people picked up as a novelty. When I priced at $25, they thought about it as a souvenir. When I priced it at $50, it became art.”

So the question I ask: Would you pay $50 for a plastic package of street trash? Would you be willing to pay more than $1,000 for a piece of New York City performance art? Is your product (or brand) a piece of trash or a work of art? More importantly – how does the perceived “value” impact your business plan?

Lots of questions – hopefully folks will pick up the discussion in the comments. What do you think?