Copyright and Trademark Perils of Websites

One of the first questions someone might have when they are building a website is: Am I violating someone else's copyrights or trademarks when I publish the website content? If it isn't one of the first things you are thinking about, it should be. You can infringe someone else's intellectual property rights without doing so knowingly.

Copyright infringement is the act of violating someone else's rights covered by the United States Copyright Act. There are six major categories of rights that a copyright owner has. These rights are the rights to

(1) reproduce the copyrighted work; (2) adapt the work (also known as making a derivative); (3) distribute the work to the public; (4) perform the work (such as a literary, musical, dramatic, motion picture or similar work); (5) display the work (such as literary, pictorial, graphic, sculptural or similar works); and (6) broadcast the work (such as radio or load-speaker transmissions of music).

Each of these rights could be violated if you use the copyrighted work or an adaptation of that work on your website or if you post in on a third party website.

The easiest way to infringe someone else's rights is to simply cut-and-paste content (such as text or images) or codes from another website without permission. This could spell disaster. If you are not sure whether you have the rights to post someone else's content or whether that content is copyright protected, you need to consult an attorney before posting it.

Trademark infringement is the act of using a word, phrase, logo or sound that is confusingly similar to an existing trademark and for similar goods or services. To infringe a trademark, there doesn't have to be actual evidence that customers were confused.

If you are going to refer to a trademark you do not own, you must be very careful and only do so in an appropriate manner. You must make sure that there is no way anyone would confuse your business as the same or related to another business. This goes to the heart of trademark infringement.

If you are using the trademark to refer to products you are selling through a store (online or brick-and-mortar), you can also use that trademark to identify or describe the items you are selling. This is called nominative fair use. You can only use the trademark if it is reasonably required to identify or describe the goods or services you are selling. If you can reasonably identify the goods or services without using the trademark, you need to avoid using the trademark.

This is especially the case with logos. If you can identify the goods and services without using the logo (i.e., spelling out the word rather than including the stylized logo - think of Dell's logo with the offset "E"), you must only use the word mark and not the logo. This is almost always the case.

The best way to protect yourself from an infringement lawsuit is to obtain the written permission from the owner of the copyright or trademark before publishing that content on the website. If you are concerned about infringing a copyright or trademark, you should obtain the advice of a competent intellectual property lawyer.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

The Basic Steps For Conducting an IP Audit

Nearly all companies have some sort of intellectual property that is essential to their success, whether these are patents, trademarks or copyrights. There are also instances where a company acquires the IP assets of another company and in such cases, an IP audit is necessary. This assures that your company keeps its eye on these valuable assets, maintains the necessary paperwork, and can make some profit off them if possible. But if you've never done this before, where do you start? How does one begin with an IP audit? Here are the basic steps you need to undertake.

First and foremost, you'll need a checklist, identifying all the IP your company has. Make an initial list, just to make sure you have a list of all assets. Do this is as soon as you can, as intellectual property rights usually have some sort of time limit. If it's just too much work, consider getting outside help, who know what to look for and what to do. Create this initial list, going through all the paperwork you have on hand. You can also check with the necessary government offices and associations. Later on, you can expand this list to include other details, such as the dates they were registered, the dates their corresponding fees need to be paid and when they expire. This will help you determine your time line for whatever next steps and actions need to be taken.

Next, you'll have to identify which ones of your IP you aren't using, and you can let go or make money through licensing. This ensures that you won't be wasting valuable time and money with upkeep, and that you can make the best use of your IP. For example, if you own the rights to a song, you can make it available for use in TV and movies. Or if you own the patent to a process, you can shop it around and see if any other company can use it for their purposes.

Lastly, it's time to take action. Once you've identified your assets, and determined which you can keep and which should go, you'll have to plan carefully to take the best course of action for your company. You'll have to set up some sort of management procedures, or assign someone to manage your intellectual property for you and your company, since your time is probably better spent on working on your business.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

Important Patent Legislation Changes in Australia Effective 15 April 2013

The Australian Parliament recently passed the Intellectual Property Laws Amendment ("Raising the Bar") Act 2012 ("the Act"), which received Royal Assent on 15 April 2012. The Patent legislation changes will come into effect on 15 April 2013. The changes will implement stricter patentability and specification requirements for patent applications.

Which applications are affected?

The legislation changes will apply to (1) new applications filed on or after 15 April 2013, including divisional applications; and (2) applications pending on 15 April 2013 for which a request for examination has not been filed.

What are the legislation changes?

The changes are substantial and include the following:

Removal of territorial limitation for considering what is "common general knowledge" - The amended legislation will allow consideration of common general knowledge of the person skilled in the art outside Australia.

Removal of the words "ascertained, understood and regarded as relevant" from prior art references for inventive step - The prior art base for considering inventive step has been broadened to effectively include any prior art information, not just those that a person skilled in the art may consider relevant.

Introduction of new requirement for specifications to disclose a "specific, substantial, and credible" use for the invention - A new requirement based on USA Patent law, with the aim to stopping 'speculative' claims.

Introduction of new sufficiency requirement - A new requirement based on EP/UK provisions for the specification to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.

Replacement of "fair basis" requirement with new "support" requirement - An amendment to align with EP/UK provisions.

Removal of benefit of the doubt standard, and introduction of balance of probability standard for all grounds considered during examination, re-examination and opposition - The present standard which favours the applicant when considering patentability will be replaced with a "more probable than not" or "over 51% probability" standard.

Commissioner will have discretion to refuse to allow deferment of acceptance - This may lead to immediate acceptance of applications after examination, which may prevent opportunities to amend the claims prior to acceptance.

Modified examination will no longer be available.

No longer possible to add matter to specifications after filing, except when correcting a clerical error or obvious mistake

The deadline for filing all divisional applications will be restricted to three months from the date of advertisement of acceptance of the parent application - This deadline will also apply to conversion of a previously filed application into a divisional application.

Possible additional changes include the reduction of the acceptance period from a first examination report, from the current 21 month to 12 months.

Next Step For Applicants and Future Applicants

In light of these changes, we highly recommend present Applicants file a request for examination of their applications prior to 15 April 2013 to ensure those applications are subjected to the current, more lenient, patentability and specification requirements.

Future Applicants should consider filing an Australian application with an examination request prior to 15 April 2013. This may mean entering the national phase of a PCT application, filing a Convention application in Australia, or filing a divisional application before this date.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

Can My Invention Be Patented?

Whether your new product or other invention came about from a sudden flash of inspiration, or was the culmination of many years of sweat and tears, you may be anxious to protect this intellectual property you have created, and discourage others from stealing it. Apart from new products, patents may also protect intellectual property rights in relation to new manufacturing processes, testing processes, and chemical compounds, as well as alternative uses for some existing products such as pharmaceuticals and chemical compounds. The actual scope of inventions which can be patented varies from country to country, but generally an invention that is able to be used in some kind of industry will be patentable.

However, the invention must also be new or novel, and contain a "non-obvious" inventive step.

Most importantly, the person or organisation applying for the patent must be first to do so in relation to the particular invention that is the subject of the patent application.

If an invention has already been released to the market, advertised, used, or even just disclosed, its inventor may lose the right to obtain a patent for it. Although there is a grace period in Australia, and in exceptional circumstances (such as cases of inadvertent disclosure) applicants in New Zealand may still be able to apply for a patent within prescribed time limits, this is not the case in all countries. It is therefore important not to disclose your invention until you have filed your patent application. Having done that, even if there is then some delay before the application is considered and approved, you will be able to go ahead and publicise your invention, and even start selling it.

Special care is required in formulating a patent application, so as to ensure that the invention is described fully, including your "claims" defining the inventive step(s). Then, subject to the application being approved, you will gain a monopoly right giving you exclusive use of the invention for up to 20 years. However, to maintain that period of protection, you may need to periodically renew the patent.

In Australia, under the Patents Act 1990 (Cth), it is also possible to obtain an "innovation patent", which does not require an inventive step, merely an innovative step. Although the maximum term for an innovative patent is only eight years, in many cases innovative patents are an appropriate alternative, as there can be considerable costs savings. Ultimately, the decision about whether to apply for a standard patent, or an innovative patent, may rest on the value of the patent, and the period over which the monopoly right will be useful in practice. Because disclosure or publication of your invention may affect your ability to obtain a patent for it, it is important to obtain professional advice at an early stage.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

Patenting Advice - Think Ahead

Like having a baby, the patenting process starts with great difficulties and expenses, and like children, the difficulties and expenses of patents continue to grow over a long period of time.

Unlike children poorly planned patent applications are seldom worth the effort. To earn money from a patent you must know your resources and plan accordingly.

Know your field:

The vast majority of valuable patents come from experts in the field (experts include scientists, engineers, or experienced entrepreneurs). If you have a great idea in a field that you don't know, find a friend or partner with experience in the field and discuss the idea with him. Often an idea that seems brilliant to the uninitiated already exists or is impractical for reasons that are not obvious.

Be practical:

Once you've found a good, novel and practical idea, know how you will make money from the idea. Developing and marketing a new product defending your monopoly through patent litigation are extremely expensive and risky. If you are an independent inventor or a small entrepreneur you should definitely consider selling or licensing your invention.

While working for a large international law firm, I had a client who brought a patent portfolio (accepted patents in the US, EPO, China and Japan) to a large car maker. Quickly looking over the details of the patent, the company representative told him, "This is exactly the technology we need. But we aren't going to pay you royalties. We have hundreds of top notch lawyers on staff and if you take us to court you'll go bankrupt long before you can win a settlement."

Of course, they're right. Nevertheless, we advised our client that bankrupting even a little company through litigation can be very expensive. Furthermore, if the car maker wants exclusive rights to the technology, they need to make a deal with the patent holder, not break him. With this more realistic basis, they started negotiations.

Be prepared:

Many inventors spend a few thousand dollars and a lot of time filing a patent, but are unprepared for the cost of patent prosecution. One result of this mistake is losing your investment in the patent. Even worse this can lead to permanently losing rights to your invention because without prosecution the patent application will be published but not granted making idea into public domain. For more details on patent planning see my previous blog "Patent Costs Timetable for the Independent Inventor - Be Prepared Before You Draft."

Know your limits:

If you are thorough and organized you can probably write and file your own provisional application (although it is recommended that you show it to a patent agent/attorney to check if it is enabling). A non-provisional patent application should only be written by an experienced professional. Self written patents are often invalid and result in loss of money and may result in loss of control of the invention. Even if a self written patent is valid, a well written patent will save time in prosecution thereby saving money in the long run.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

How to Invent Something Great

If you are an aspiring Inventor, you may well have wondered how to invent something.

Well it's not as difficult as at first it might appear. Most Inventions come about because an Inventor sees a problem that needs fixing, or an opportunity that can be exploited. In the end for an Invention to be commercially successful, it needs to offer a solution to a problem or failing of existing technology.

From that start point, the process continues with a brainstorming phase, during which the inventor brainstorms and repeats the process relentlessly until they find the solution they are looking for. Now it's easy to say that we are relentless and will keep trying, but actually doing it can be a demoralising path to follow. So to successfully invent something you must be a believer, you must be absolutely certain that you will get there. A reporter once asked Thomas Edison, "How many times are you going to fail at creating the light bulb?" Mr. Edison replied, "Son, I haven't failed! I've simply discovered another way not to invent the light bulb!"

Once you have the basis of an idea, you need to draw how it works, and complete a technical design. From there you should look to create a working prototype. This is critical, because it is a big mistake to ask non commercial people to visualise how something may work once finished. It is a fact that the closer your invention gets to being as 'real' as possible, the more likely you are to sell it. So you can't do too much to bring it to life, because by doing that you give yourself the best chance of creating a real product from your idea.

The next part of the process is to seek qualified, expert legal advice to advise you on how to legally protect your invention, this may involve patents, trademarks, copyright and some other measures you might be advised to take.

Once you have protected your invention, you need to work out your route to market. This might be working with an invention agent who can help you to open doors you wouldn't otherwise get through, or it may even involve your going it alone and trying to sell a finished product yourself. Either way, just remember, finishing your invention is often the easy part - selling it can be another story...

Steve Reece http://www.RichInventor.com The Rich Inventor website provides information to help Inventors.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue