Best Practices for Design Patents

By Debby Winters

The first examination to undertake is to understand what a design patent is and how it differs from a utility patent.

U.S. design patents cover the ornamental design of an object having practical utility. The subject matter claimed is the design embodied in or applied to the article and not the article itself.  In other words, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. In contrast to a utility patent that protects the way an article is used and works,  a design patent protects the way an article looks.

I am often asked whether a client should seek a design or a utility patent. While it depends on the invention, a U.S. design patent provides a number of advantages when compared to a U.S. utility patent. First, design patents have a higher allowance rate. Second, design patents have a faster time to final resolution. Finally, design applications are typically less than half the cost of utility applications due to their expedited prosecution and the limited specification required in design patent applications.

The five areas for our discussion on best practices will focus around the following:

  1. Know the Subject Matter Qualifications
  2. Drawing Quality is Key
  3. Figure Views Should be Consistent
  4. Use of Solid vs. Broken (Phantom) Lines
  5. Include Additional Embodiments

We will discuss each in a separate blog post starting with the first so keep reading!

What Every Startup Needs To Know: IP Pitfalls- Poorly Written Or No Agreements- Part Nine

By Debby Winters

Using poorly written agreements or no agreements at all can be a disaster for the startup. Not only is the valuation of a startup based on the IP that it owns, but also on the agreements with IP clauses. Examples are not just limited to things you typically think of as IP agreements but can include employment, consulting, funding, collaboration, settlement, licensing, research, and material transfer agreements. Thus, poorly drafted or non-existent IP-related agreements can be problematic for a startup.

Because of a lack of sufficient funding, many startups attempt to save legal expenses by using template IP-related agreements from a variety of non-professional sources, including the internet. However, such agreements can fail to include clauses that adequately protect the startup’s interest and in many cases, can include clauses that jeopardize a startup’s IP. Thus, when using IP-related agreement templates, the startups should have such agreements at the very least vetted by IP professionals. Startups can also do themselves a disservice by using an attorney who is not familiar with the nuances of IP law.

Many IP-related agreements, particularly research agreements, generally include confidentiality, publication, and IP clauses. The startup should review confidentiality and publication clauses to ensure that confidential information, including trade secret information, is protected from disclosure and that the startup has the right to review manuscripts and other materials containing confidential information before publication. With respect to the IP clauses, the startup should make sure the language allows for retaining its own IP and for protecting jointly developed IP.

Furthermore, with respect to patent license agreements involving a third-party licensor, startups need to make sure that the license agreement provides all the rights needed to commercialize the licensed technology, includes future improvements to the technology, and retains the right to sublicense the technology. The agreement should also have a sufficient termination clause in the event the startup needs to opt-out of the agreement.  The agreement should also specify the relevant field of use and possibly other fields for future expansion. Importantly, the startup should review patents to ensure that the commercialized product materials, methods, and tools are properly claimed with patent life remaining. This should be drafted and reviewed by an experienced IP attorney.

In conclusion to the series of blog posts dealing with common IP pitfalls for a startup, the process of bringing a new startup business to life and in launching new products to the marketplace can be an exciting time. However, many startups are so focused on bringing a new product or service to market that they fail to take the necessary steps to protect the associated IP. Failure to put an IP plan in place can cripple valuation and expose the startup to potential third-party infringement risk. In contrast, startups can protect and exploit their IP assets to build value and revenue by developing an IP plan as part of their conception, creating an action plan to protect IP assets including protection of confidential information, securing ownership rights to the IP, conducting freedom-to-operate searches, and ensuring properly drafted IP-related agreements are in place.

If you need help with your IP or with protecting it, let me know.

What Every Startup Needs To Know: IP Pitfalls- Failure to Identify Third-Party Rights- Part Eight

By Debby Winters

Next in this series, we will discuss the failure of the startup to recognize thrid-party rights. When we think about third-party rights in the IP, we are thinking about competitors who may have a patent for a technology within a product. Every startup should be cognizant that its company commercialization may be blocked by this type of third-party right. Accordingly, startups, at an early stage, should consider a “freedom to operate” (FTO) search or clearance to assess litigation risks. A FTO is performed to make sure that commercial products, marketing and use of the product, process or service do not infringe the IP rights of third-parties.

An FTO analysis begins by searching issued patents or pending applications and obtaining a legal opinion from a licensed patent attorney knowledgeable in that field as to whether the product, process, or service may be considered to infringe one or more patents owned by others. Patents that limit the startup’s FTO can be addressed by buying or licensing the underlying technology or patent, by cross-licensing the technology or patent, or by creatively “inventing around” the patented invention by altering the startup product or process, thus avoiding infringement.

An example of how to “invent around” would be in software development, where a startup chooses to incorporate open source software into its code. However, open source licenses also need to be carefully reviewed to ensure compliance with license terms. In some instances, the use of open source code in a startup product may transform the startup’s proprietary code into open source software resulting in public disclosure of the proprietary code. It is always best to consult a licensed patent attorney.

A startup will sometimes use third-party photographs, images, or text in marketing or product support materials. In such cases, the startup should investigate if permission is required to use the material, identify the rights needed, and contact the owner for permission or a license. Startups should make sure the copyright permission or license agreement is in writing.

Comprehensive trademark searches should be conducted early in the business planning process to make sure that the desired business, product, or service name does not conflict with a registered trademark. A startup that fails to conduct a proper trademark search risks receiving a cease and desist letter or even being sued.  This may necessity a need to rebrand after launch and incur the tangible and intangible costs associated with rebranding.

Businesses need broad awareness when hiring new employees, especially those that may have knowledge of competitor’s trade secrets. This is another way to infringe on a third-party’s IP rights.  New employee agreements should include clauses that prohibit employees from transferring or using proprietary information or materials from previous employers. The startup should also verify that the new hire is not subject to any binding non-compete agreements from former employers.

In dealing with third-party rights, startups are well-advised to consider their options at an early stage. In some cases, minor product or service changes, payment of a small licensing fee to the patent or copyright owner, and/or changing potentially problematic trademarks early on and implementing careful employee hiring practices may be sufficient to avoid future disputes and can improve a startup’s chances of attracting business partners and investors to support its business development plans.

In our next blog we will discuss the pitfalls of using poorly drafted agreements to cover IP, and the danger of not using a written agreement at all.

Not Establishing Confidentiality Protections- Startups

By Debby Winters

Before publicly disclosing its intellectual property (IP), a startup should balance the risks with the rewards of allowing the confidential and sensitive IP information to get out into the public domain.  Startups often misstep and disclose patentable subject matter at investor meetings, pitch events, or on company websites prior to filing a patent application. Unfortunately, public disclosure of an invention prior to filing a patent application can limit or even destroy patent rights. Such public disclosure can also destroy a company’s trade secrets.

Third-party conversations with those not under legal obligation to maintain confidentiality, such as a public pitch or presentation, a trade show, or publication are common examples of what can be considered a public disclosure to the patent office. If such disclosure is necessary, the startup should file a provisional patent application prior to the disclosure or at the very least have the third parties sign a written Non-Disclosure Agreement (NDA).

One caveat to that rule is that venture capitalists generally avoid signing NDAs because they deal with many startups and believe confidentiality obligations limit their contact and investment opportunities.  Furthermore, while speaking at trade shows or making a pitch, securing an NDA may not be feasible. In such instances, to avoid disclosing confidential information, the revealed information should be limited to generalities.

In the next part of this series we will look at the IP plan.

What Every Startup Needs To Know: IP Pitfalls- Part One

By Debby Winters

On their path to success startup companies often face significant risk and liability with respect to Intellectual Property (IP). The failure to adequately address IP issues can potentially lead to the permanent loss of these rights and could possibly create a litigation risk. Insufficient or nonexistent IP protection can also hamper business transactions, including seed funding and status as a desirable acquisition target.

In a series of blogs, we will look at some of the common IP pitfalls startups face and possible steps that startups can take to avoid those pitfalls and protect their valuable IP assets while at the same time reducing the risk of litigation.

Let’s start out by defining what an IP asset is.

The term “intellectual property” can be thought of as creations of the mind that are given legal rights commonly associated with real or personal property. These rights can and do have real economic value. These property rights are generally a result of either federal and/or state laws and include the commonly understood rights belonging to patents, trademarks, copyrights and trade secrets.

All businesses have some form of IP that provides a competitive advantage and helps generate profits. Many companies mistakenly believe that patent protection is the only form of IP protection and ignore the value of non-patent IP. However, startups should identify both patent and non-patent related IP assets when evaluating their IP portfolio.

Startups, no matter whether small or large, should develop an IP plan. This IP plan should identify both existing and future IP assets. In the next of this series, we will talk more about the IP plan; what it should include and how to put it together. Stay tuned!

 

National Ice Cream Day 2017

By Debby Winters

It is finally here! July 16, 2017!! Hip Hip Hooray! To help you celebrate National Ice Cream Day, here are a few tidbits about ice cream that you may not have already known

1- In 1984, President Ronald Reagan decreed that July would be National Ice Cream Month. And on the third Sunday of July—yes, that’s today—we celebrate National Ice Cream Day.

2- The sound of the ice cream truck is a trademarked sound: On May 21, 2013 the Australian company Breville received the trademark for the sound the ice cream truck makes, which they described as follows: The mark consists of the song “Turkey in the Straw”, which consists of a keyboard synthesizer playing pickup measure: G4 eighth note followed by F4 eighth note; first measure: E-flat4 quarter note followed by E-flat4 eighth note followed by F4 eighth note followed by E-flat4 eighth note followed by B-flat3 eighth note followed by G3 eighth note followed by B-flat3 eighth note, played simultaneously with E-flat3 half note followed by B-flat2 half note; second measure: E-flat 4 eighth note followed by C5 eighth note followed by B-flat4 eighth note followed by G4 eighth note followed by B-flat4 quarter note followed by E-flat4 eighth note followed by F4 eighth note, played simultaneously with E-flat3 half note followed by B-flat 2 half note; third measure: G4 quarter note followed by G4 quarter note followed by G4 eighth note followed by F4 eighth note followed by E-flat 4 eighth note followed by F4 eighth note, played simultaneously with E-flat3 half note followed by B-flat 2 half note; fourth measure: G4 quarter note followed by F4 quarter note followed by F4 quarter note followed by G4 eighth note followed by F4 eighth note, played simultaneously with B-flat2 half note followed by F3 half note; fifth measure: E-flat4 quarter note followed by E-flat4 eighth note followed by F4 eighth note followed by E-flat4 eighth note followed by B-flat3 eighth note followed G3 eighth note followed by B-flat3 eighth note, played simultaneously with E-flat3 half note followed by B-flat2 half note; sixth measure: E-flat4 eighth note followed by C5 eighth note followed by B-flat4 eighth note followed by G4 eighth note followed by B-flat4 quarter note followed by E-flat4 eighth note followed by F4 eighth note, played simultaneously with E-flat3 half note followed by B-flat2 half note; seventh measure: G4 eighth note followed by B-flat4 eighth note followed by eighth rest followed by C5 eighth note followed by B-flat4 eighth note followed by G4 eighth note followed by E-flat4 eighth note followed by F4 eighth note, played simultaneously with B-flat2 quarter note followed G3 quarter note followed by B-flat3 half note; eighth measure: G4 quarter note followed by F4 quarter note followed by E-flat4 quarter note followed by quarter rest, played simultaneously with B-flat2 half note followed by E-flat2 half note.

3- Around 1832, Augustus Jackson created multiple ice cream recipes and pioneering a superior ice cream preparation technique and decoration.

4- Nancy Johnson of Philadelphia created the hand-cranked device that was the first ice cream machine in 1843. This revolutionizing the distribution and sale of ice cream throughout the United States and Canada.   It was a manual device cranked by a handle with a pewter cylinder.  Her invention, as illustrated in her patent no. 3,254 looked like the diagram below and was described as: An outer wooden pail contained crushed ice; an inner tin or pewter cylinder contained the ice-cream mix to be frozen.  A manual device cranked by a handle with a lid bolted on and the handle inserted through the top of the lid and turned to freeze the mix. The device inside attached to the handle was called a dasher. It was possible to split the inner cylinder such that 2 different ice cream flavours could be frozen simultaneously but separately.

5- Syrian immigrant and waffle salesman Ernest Hamwi has generally been credited with inventing the first edible ice cream cone at the 1904 St. Louis World’s Fair when a nearby vendor ran out of serving dishes, and the creation sparked a nationwide sensation.

6- Philadelphian entrepreneur by the name of Robert Green would regularly mix syrup and cream into his carbonated beverages in the last decades of the 1800s. Legend has it that on one fateful day, he ran out of these regular ingredients and used ice cream as a substitute, creating the first ice cream soda in the process.

7- The Oregon Research Institute in Eugene and published a study in the American Journal of Clinical Nutrition that found that when the brain craves ice cream and other high-fat/high-sugar foods, it reacts in the same way as a cocaine user’s does in a period of withdrawal.

8- In 2012, after an exhaustive survey of regional credit card transactions throughout the nation, researchers found that “Long Beachers eat ice cream a whopping 268 percent more than the average American.” Fort Worth and Dallas also scored well above average when it comes to devouring ice cream.

9- Prior to the invention of refrigeration, ice cream was a rather expensive dessert. Our nation’s first president is rumored to have once spent $700 on the delicacy in New York City over the course of one summer. Sharing her husband’s zeal, Martha Washington acquired a “cream machine for ice” in 1784 to serve ice cream to her guests at Mount Vernon.

10- Ben And Jerry wanted to buy a bagel machine but could only afford an ice cream maker, thus was born their famous ice cream.

Go get yourself some ice cream! Happy National Ice Cream Day 2017!