​​Design patents are a cost-effective mechanism to add value to a company and combat the counterfeiting of products when protecting ornamental features.  For more details contact me.

Do you have a new idea but don't know how to best protect it?  Do you know the importance of the dates when you first show your invention to the public or file a provisional patent?  Do you know what requirements are to be satisfied before the patent office will grant your patent application?  There are many issues to consider before and during the application process and unless you are aware of them you could lose your rights to a patent. 

This week I am offering free 30 minute consults on patents.  The consults may be over the phone or using internet based video conferencing.  During the consult I will review with you the patenting process using a flowchart that depicts the process.  If you are interested here is what you need to do:

1. You will need to contact me via email to request the free 30 minute consult between November 12 and November 16.  My email address is displayed in the top right corner of this webpage.  We will then setup a time via email.  Please do not call me regarding this offer.  
2. You will need to download and print my flowchart that depicts the patenting process before the consult.  Navigate to my IP Websites page and then look for the link "Flowchart Depicting the Patenting Process" in the "Attorney Online Forms and Downloads" section.
3. If you miss our appointment or you do not have my flowchart printed out before the consult you will forfeit your free consult.

I look forward to meeting each of you!

We all know what defamation is.  Often it is in the news when one celebrity claims that another celebrity said something false about them.  One of the better known cases is between Bill Cosby and a number of women over allegations of rape.  Defamation has lots to do with hurting someone's reputation and although we are most acquainted with cases between two people it can also happen between two businesses.  If a first business damages the reputation of a second business then the second business may have a cause of action against the first business.  The cause of action is not called Defamation but "Trade Libel".

Trade Libel has a few cousins that in some ways overlap.  They are:

1. Intentional Interference with Prospective Economic Advantage:  Used when the defendant intentionally disrupts or diverts the business relationship of another by improper methods which fall outside the boundaries of fair competition.
2. Negligent Interference with Prospective Economic Advantage:  Similar to the above but is not done intentionally.  Rather the defendant acts unreasonably and wrongfully.
3. Unfair Competition:  Here the California Business and Professions Code §17200 prohibits any "unlawful, unfair, or fraudulent business act or practice" and any "unfair, deceptive, untrue or misleading advertising".

If you would like to have me post a blog on one of the above let me know but for now lets discuss Trade Libel. 

Trade Libel occurs through the publication of a false statement that intentionally disparages the quality of property and induces another not to deal with the plaintiff, which causes the plaintiff actual pecuniary damage.  Key cases in California courts include Polygram Records, Inc. v. Superior Court, Nichols v. Great American Insurance Companies, and Erlich v. Etner.

To give rise to a cause of action for Trade Libel the plaintiff must prove the following elements:

• A False Statement:  Whatever was said or written by the defendant was false.  To be actionable the statement by the has to be an assertion, not an opinion (Hofmannn Co. v. E.I. Du Pont de Nemours & Co.)
• The Statement was Disparaging:  This may seem a bit obvious but clearly the defendant's statement must disparage the plaintiff (Nichols v. Great American Insurance Companies).
• The Statement was Published:  The defendant must have communicated the disparaging statement orally or in writing (Guess, Inc. v. Superior Court).
• The Statement Induces Others not to Deal with the Plaintiff:  The plaintiff must show that defendant's statement played a material and substantial part in inducing others not to deal with him.
• The Inducement causes Plaintiff Harm:  The inducement must be shown to have caused harm to the plaintiff.  The plaintiff cannot just show a general decline in his business.  Plaintiff must identify transactions and customers lost as a result of the inducement.

Defendant also has defenses that they may present in court to defeat a claim of Trade Libel by the plaintiff.  These defenses include Statute of Limitations, Absolute Privilege, Qualified Statutory Privilege, and Constitutional Privileges.

As you can see, the plaintiff has their work cut out for them to prove that the defendant is liable for Trade Libel.  In particular the element of proving the harm that was caused by defendant's inducement.  However an "ounce of prevention is worth a pound of cure" so be careful with statements that you make.  Check your facts and dot your i's and cross your t's when making a disparaging statement about another business or just not make such statements at all.

This blog posting is just a brief introduction into Trade Libel.  I recommend that you consult an attorney whenever:

1. You have been accused of making a disparaging statement;
2. You have received a disparaging statement; or
3. You plan on making a disparaging statement.

A qualified attorney can help you with determining your legal risks and minimizing them.

Do you want to save yourself $10,000?  That is about how much you will be paying those "invention assistance companies" you see on TV.  Be very careful when dealing with them and the promises they make.  I have read a number of agreements offered by these companies to inventors and all of them have many terms that are not in favor of the inventor.  Yet every year many inventors will hand over thousands of their hard earned money to these "invention assistance companies" and get very little as a result.  So what should you be looking for when you approach one of these companies?  I would say body armor, but seriously here are some pointers:

1. Offers of a free review of your invention.  What did you mother tell you about free things in life?  Listen to your mother.  "Free" is their hook to bring you in contact with their professional sales person who will then do what professional sales people do - make a nice commission off of you.
   
2. Market evaluation report.  The first thing their professional sales person will do is tell you that a market evaluation report needs to be performed.  Very likely that report will indicate that the market potential for your invention is great.  Of course their market evaluation report will say that because it is a lead in for the big dollar items that come next.  The purpose of the report is to get you excited enough to take the plunge.
3. "Poor Man's Patent".  Some of these companies will tell you to protect your idea by writing it down, putting it into an envelope, mailing the envelope to yourself, and then not opening it.  You will gain no legal protection by this process and your idea remains open to copycats who see it.
4. Agreements.  Once they have excited you with their market evaluation report they will offer you marketing services with brochures, TV ads, and phone banks.  But they will need to get you to sign an agreement first.  The agreement is key because the agreement will protect the invention assistance company from being sued by you!  Always have an attorney review the agreement and explain the risks you are taking by signing the agreement.

Because of the number of inventors being taken by invention assistance companies the US government has written 35 USC 297 to protect inventors.  35 USC 297 is nice but it is best to talk with an attorney first before signing the agreement.  

35 USC 297 allows you to ask the invention promoter the following:
​

1. The total number of inventions evaluated by the invention promoter for commercial potential in the past five years, the number of those inventions that received positive evaluations, and the number of those inventions that received negative evaluations.
2. The total number of customers who have contracted with the invention promoter in the past five years, excluding those who have purchased trade show services, research, advertising, or other non-marketing services from the invention promoter, or who have defaulted in their payment to the invention promoter.
   
3. The total number of customers known by the invention promoter to have received a net financial profit as a direct result of the invention promotion services provided by the invention promoter.
   
4. The total number of customers known by the invention promoter to have received license agreements for their inventions as a direct result of the invention promotion services provided by the invention promoter.
   
5. The names and addresses of all previous invention promotion companies with which the invention promoter or its officers have collectively or individually been affiliated in the previous 10 years.
   

Finally an attorney has certain ethical duties owed to their inventors.  An invention promotion company owes no such ethical duties.  An attorney who breaches their ethical duties to a client may lose their license to practice law in their state and to represent inventors before the patent office.  Those licenses are very hard to get and represents years of hard work in school.

Here in the United States you must use your mark in commerce else it will be considered abandoned and your competitors may seek to have it cancelled.  The reason for this is that trademark law serves to protect consumers and marks that appear and then reappear in commerce is confusing to the consumer and also prevents other businesses who may want to make more effective use of the mark from doing so thus harming the interests of consumers.  This stands in contrast to other forms of intellectual property law such as patents and copyrights which serves more to protect the creator of the patent or copyright.  

So you may be asking how long can you not use your mark in commerce before you run the risk of losing it?  15 USC 1127 holds that a mark shall be deemed to be abandoned if its use has been discontinued with intent not to resume such use and that intent not to resume use is inferred after three consecutive years of nonuse.  So your risk begins immediately when you stop using the mark in commerce but initially there is little to worry about as it is difficult for someone to prove that you no longer have intent to use the mark in commerce.  However, as time of nonuse increases, the risk grows and at the third anniversary of nonuse it is presumed that you no longer have the intent to use the mark in commerce.

​Artificial Intelligence, or AI for short, has been making rapid improvements over the past few years.  It seems so long ago when a computer called Deep Blue won its first chess game against a world champion in 1996.  However, some would argue that Deep Blue was not artificially intelligent but that it only processed computer code that would rank various moves and then pick the best ranked move.  After all, chess has a finite number of pieces that all move in a restrictive manner so in some ways chess is rather predictive and lends itself well to solutions by computer software.  Fast forward to the past few years and AI has been able to do some rather amazing things that previously was exclusively in the domains of humans.  Here are some examples:

• Just a few months ago, Google, together with various news organizations, announced a venture whereby humans would find local news stories, feed key information to the AI computer, and then have the AI computer to write the story.  The focus of this venture will be with local news as many media outlets are experiencing commercial pressures and cutting back on local news.  The goal here is for the AI computer to create up to 30,000 local news stores a month complete with pictures, quotes, and facts just as with any news story.
  
• Last year a Japanese AI computer co-authored a short novel, ironically called “The Day a Computer Writes a Novel”, that made it past the first round at the Nikkei Hoshi Shinichi Literary Award out of 1,450 submissions.  Writing a novel is a challenging task for a computer because (i) there are no right “answers” as there are with games such as chess and (ii) the novel has to be interesting to humans.  Also in the literary field a Google AI computer has been creating poems.
  
• Another Google venture, called WaveNet, is tackling the problem of speech synthesis using AI.  Speech synthesis has come a long way since 1984 when Steve Jobs revealed the new Apple Macintosh computer and had the computer introduced itself by saying “Hello, I’m Macintosh”.  However, in spite of the improvements, humans are pretty quick to recognize speech as been synthesized.  WaveNet aims to change all that by using AI to synthesize speech that is undetectable from human speech.
  
• In 2016, Microsoft and others, created an AI program that analyzed thousands of Rembrandt paintings and fragments and when presented with a human model the program created a painting that unmistakably looks like an original Rembrandt.  The computer generated artwork is shown along with this blog.

 
This all sounds exciting and scary at the same time.   In the past AI only played a very limited role when creating works of art by assisting the human creator in a particular aspect of the work.  Now computers running AI software are starting to replace humans in creating music, writing literary works, and painting works of art.  For intellectual property attorneys the question “Who owns the copyright?” is immediately raised.  The answer to the question is found by looking at the law.  Here in the United States the Copyright Office has declared that it will “register an original work of authorship, provided that the work was created by a human being” as case law held that copyright law only protects “the fruits of intellectual labor” that “are founded in the creative powers of the mind.”  (Feist Publications v Rural Telephone Service Company, Inc. 499 U.S. 340 (1991)).  See also the first paragraph in Circular 1 - Copyright Basics published by the United States Copyright Office.
 
Here in the United States works of art such as music, literary works, and images that are created by a computer are not copyrightable.  The impact of this is that all works created by a computer are in the public domain.  Many other countries have similar laws which hold that only humans may obtain a copyright.  To the general public this may be desirable as these works of art will be free to copy.  However, such an outcome may cause technology companies to invest their billions on other technologies that have the potential to produce a revenue stream and thus hindering the development of AI software here in the United States.
 
Some countries, such as England and other commonwealth nations, have already changed their copyright laws to grant the copyright to “the person by whom the arrangements necessary for the creation of the work are undertaken” in the case of works created by a computer.  It is not clear how courts will define “arrangement necessary” but it is a start.
 
In many areas of life the computer has required that we rethink how some of our laws are written.  The day is approaching when the United States will have to rethink its copyright law to take into account AI.

Last week I posted in my blog an article that talked about the different levels of trademark protection one may obtain here in the United States.  The levels of trademark protection, from lowest to highest were:

1. Common law (unregistered trademarks)​
2. State registered trademarks
3. Trademarks registered in the federal supplemental register
4. Trademarks registered in the federal principle register
5. Trademarks registered in the federal principle register with incontestable status.

​​In this article I will be taking a closer look at highest level of protection -- that of a trademark registered in the federal principle register with incontestability status.

First I want to make it clear that just because your trademark is incontestable doesn’t mean it cannot be contested.  Like so many other areas of the law there are exceptions.  So the word “incontestable” is actually somewhat of a misnomer and there are a number of grounds where an incontestable trademark may be attacked.  But before we get into that let us look at the benefits provided by incontestability that are above and beyond what is provided by registration on the principle register. 

• The owner of the trademark needs to file for incontestability only once in the life of the trademark.  There is no need to renew the trademark’s incontestability status.
• Rather inexpensive with government fees at $200 to $300 per class.
• The trademark is immune to challenges based on descriptiveness such as (i) the trademark merely describes the goods or services, (ii) the trademark is primarily merely a surname, and (iii) the trademark is a geographic place name that will immediately convey a goods-place or services-place association in the minds of consumers.  This immunity applies both to challenges filed in the administrative courts at the trademark office as well as in federal court.
• Potential infringers, upon seeing that your mark is incontestable, are more likely to respond favorably to a cease and desist letter.  This may be quite beneficial in reducing potential legal fees.

However, incontestability does not shield your trademark from the following kinds of attacks that all trademarks are susceptible to:

1. Genericness;
2. Functionality;
3. Abandonment;
4. Fraud on the trademark office;
5. Immorality, deception, or scandalousness;
6. Disparagement;
7. False suggestion of a connection;
8. Geographical indications on wines or spirits meeting certain requirements;
9. Representation of a flag or coat of arms of any nation; or
10. Representation or name of a living person without his or her consent or of a deceased president without the consent of his widow.

Some would argue that incontestability does not provide much of an advantage over a trademark that is registered on the principle register.  However I have found that telling a potential infringer that your mark is incontestable provides quite a punch to your cease and desist letter and encouraging the potential infringer to come to terms.

To claim incontestability status for your trademark you must prove that:

• Your trademark has been in continuous use for at least five consecutive years from the date of registration;
• Your trademark is currently being used in commerce;
• Your trademark has been registered on the principle register;
• There has been no final decision adverse to your claim of ownership or right to register the trademark;
• There is no proceeding adverse to your claim of ownership or right to register the trademark that is pending;
• It is within one year of any five-year period of continuous and consecutive use subsequent to the date of registration; and
• The mark has not become generic.