A Prior Art Search…to do or not to do?

By Debby Winters

Many individual inventors and small start-up company entrepreneurs ask if they should do a prior art search, or if they can forego that and save the money for the patent application itself. This is a tricky question to answer as many start-ups don’t have a lot of money BUT, the risk of filing the patent application when the invention might not be patentable could be costly too. Therefore, I usually recommend conducting the prior art search, but the timing of doing so might be important.

Many new inventors are surprised that they are not the only ones working on the same or a similar invention. The internet research they do, although limited, may convince them that they are the only ones working to solve this problem. A thorough prior art search is the only way to know for sure.

Think about the risks of not doing the prior art search prior to filing the application.

1-     The possibility of getting hit with an infringement lawsuit might be the mostly costly risk. These suits can be extremely expensive, even if you don’t get hit with a large damage award. There is a risk that you will not be able to afford to defend such a suit and that all of your hard work in developing the invention, getting it through the prototype stage, and getting it to market would be wasted. There is usually a significant monetary and time investment involved with these steps. There is also a risk that a court could issue an injunction that would prohibit you from making, using, selling, or offering the invention for sale.

2-     The prior art search can help in preparation of the patent application and potentially keep down costs during the prosecution stage. By knowing the closest prior art, the patent application and the claims may be prepared more strategically to take advantage of areas of patentability. Claims may be prepared that get close to the prior art without encroaching on it. It may be possible to develop arguments and strategies for convincing the patent examiner that the invention is non-obvious based on the prior art you uncovered. If you don’t do the prior art search prior to filing you won’t have this information under your belt when the examiner brings it up. Besides, if you find a patent that prevents you from obtaining yours, you can always consider licensing the technology you need to still market your invention. Better to find out now rather than later.

Many times inventors complain that anything you uncover that is material to the invention must be disclosed to the Patent Office. While this seems like a disadvantage, the patent examiner will find this anyway. The patent examiners are very good at finding relevant, as well as irrelevant prior art. A route I typically recommend is to file a provisional patent application, which costs much less than a full utility application, to claim your priority date. You then have time to do the prior art search and ensure that you want to move forward. This also gives you the opportunity to raise more capital to pay for the regular application and the opportunity to draft the application to “work around” any pesky prior art.

If you have questions, please feel free to contact me. As a licensed patent attorney, I will see how I can help.

Copyright Confusion

By Debby Winters

I recently read an article in my local newspaper about copyright on tattoos. Earlier that week I received a question in a class that I teach about copyright and how it relates to teaching. Maybe it is time for a review of copyright law and how it affects our everyday lives.

The truth of the matter is that copyright law is the most straightforward of all the Intellectual Property laws. It protects any original expression that exists in a tangible form. What it does not protect is general ideas or procedures. While it is not required to have a copyright registration with the U.S. Copyright Office, taking this additional step beyond creation, where copyright arises, ensures that these legal rights can be enforced should someone infringe upon your work.

The basic thought behind copyright is that you always need permission to use another person’s work unless an exception applies. The most common exception is what is termed fair use. The determination of whether a use of a copyrighted work is within fair use depends upon making a reasoned and balanced application of the four fair use factors set forth in Section 107 of the U.S. Copyright Act. Those factors are

  • the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  • the nature of the copyrighted work;
  • the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • the effect of the use upon the potential market for or value of the copyrighted work.

While fair use is intended to apply to teaching, research, and other such activities, an educational purpose alone does not make a use fair. Based on the fair use provision, using another’s work in teaching is not an infringement of copyright. While that is true, it is always a good idea to acknowledge the person who created the work.

Let’s move on to the tattoo situation. The article discussed the very distinctive tattoo that Mike Tyson has on his face. Warner Bros. recreated a very s
imilar tattoo for Ed Helms’ character in The Hangover Part II. The tattoo artist that created Mike Tyson’s tattoo sued Warner Bros. This was not the first time a case like this has come about. Last year a tattoo artist sued video game maker Electronic Arts and former Miami Dolphin running back Rickey Williams over a tattoo. This case was settled before going to court but has been controversial in the football world due to the large number of NFL players who sport distinctive tattoos. The case over The Hangover tattoo also settled out of court. Since these cases have settled, we have no court decisions on this issue yet.

One question that arises, among others, is whether one person can own an integral part of another person’s body.  Another question is whether the human body constitutes a tangible medium, something that is required for even common law copyright to arise. Since a tangible medium is usually taken to mean that it just has to be written down in some way and to persist for more than a transitory duration, even the human body would meet the standard. But what rights attach to this form of copyright remains unclear.  As more and more people in our society get tattoos, this will be an interesting area to in the future. Which way will the courts go with this one?

Are Video Games That Use Athletes Names Violating Trademark or Copyright Laws?

By Debby Winters

Not too long ago I overheard two men discussing football video games. They were using the names of actual NFL football players and that made me wonder what the law is on using things that were subject to trademarked or copyright infringement.

Trademark law protects any word, device, symbol or the like that functions to identify source or sponsorship or affiliation of a good or service. That can be a name, such as Madden for video games. It can be the design of a logo, such as an eagle’s head on a football helmet, or the colors on a uniform. The owner of the trademark is the entity that controls the nature and extent of the use of the mark. Copyright law protects works of expression. This can include code for a game, the art or other representations of objects seen in screen shots, and the artistic renderings of various characters depicted on emblems. The right of publicity, a creation of state law, precludes the unauthorized use of a celebrity’s name or likeness or other identifying indicia for commercial purposes.

So what does all of this mean? Each of these rights is subject to a fair-use defense that essentially exempts from liability certain uses of a celebrity’s name or likeness or identifying characteristics, whether as a trademark or in a manner analogous to trademark use for purposes of identification that are fair and not misleading, such as in a biographical piece or as a title of unrelated work.

There are aspects of video games that make the traditional fair-use defense more difficult, but not entirely untenable. This is so even if the game, as it is played, presents no actual game but the figures represent actual, identified players.  There have been numerous cases covering these areas, but there is no clear direction that these cases lead us to. So for now, I leave it for you to ponder whether these games pose a violation of copyright or trademark law or if the right to use the likeness should depend fair-use as long as it is not misleading. However, the courts come down on these cases, clearly we will hear more about this as the number of cases filed on these topics increases every year.