Gregory Richardson, over at the Trademarks and Intellectual Property Weblog, has a number of good posts about trademark fundamentals. If you’re in need of trademark help or some TM explanations such as the differences between trade dress and a trademark, check it out.
He’s been blogging since the beginning of the year, and I think he provides some nice, easy-to-understand information without a lot of the legal analysis you might not be interested in.
Next in my series of posts, a topic probably deceiving the pithy label recently given: the detailed description.
This eponymous section of a patent actually needs more explanation than one might garner from its name alone: the detailed description goes beyond a description of the invention. The description is the primary means for providing support to the claims, offering explanation, giving body to the patent. The description lays out how the invention is made and how it is used in sufficient detail to enable someone in the invention’s field of industry to enable them to also make and use it. It teaches the public how to build and use this thing you’ve invented and is essential in the quid pro quo that the patent system represents.
The description generally is also the part of the patent that describes the best mode – sort of the best form of the invention – although it need not point out the best mode. There is no requirement that the patent specifically flag the best mode; it just has to be in there.
The description also provides the patent applicant to become “his or her own lexicographer;” to give words special meanings that may be uncommon or different from their general understanding.
Often, the detailed description follows the drawings from figure to figure, explaining what each shows with great specificity. The description will sometimes set out multiple embodiments of the invention, even if those embodiment aren’t claimed later on. And most patent practitioners show their apathy protect the breadths of the invention by including phrases like “many variations on the invention will be obvious to one having skill in the art and are within the scope of this disclosure but will not be repeated here.”
Continuing the post series explaining patents, we now address the drawing descriptions.
The description of the drawings is just that. It refers to each drawing by number and explains what the drawing is. The description is brief – it isn’t intended to go into great detail, but it does provide a general explanation of what the drawing is, the direction or orientation of the drawing, perhaps what the drawing features. The description helps create some continuity between the drawings and the more detailed description of the invention. The description is also useful for connecting one or more drawings – perhaps where it isn’t clear that two drawings represent opposed front and back views of the invention, or that one drawing is a sectional view of the invention taken from a sectional line of another drawing.
Next up in the Patents Explained series: the summary section of the patent. The summary is similar to the background of the invention, and, in that same vein, some consider it extraneous and potentially damaging to the patent as a whole.
The summary should describe the nature and subject matter of the invention. The summary should be comparable in scope to the disclosure and the claims of the patent – both when initially filed and before issuance.
Some patent drafters include the objects or purpose of the invention in the summary. Others feel that doing so could limit the patent, if it is ever the subject of litigation, to covering only what was disclosed as an object. They believe that avoiding disclosure of any objects will prevent the patent from be artificially limited to those narrow explanations.
Ben Sheffner writes about the recent Viacom v. YouTube case, which he finds extremely disappointing in its dodging of the question of what, besides an official takedown notice, can require an online content provider to remove copyrighted material.
Quick background: the DMCA requires that a content provider, such as YouTube, Facebook, Flickr, etc., remove copyrighted content if: 1) it has “actual knowledge” the material is infringing; or 2) it is “aware of facts or circumstances from which infringing activity is apparent.” The first situation arises easily: a copyright owner sends a takedown notice complying with the DMCA’s substantive requirements, and the material is removed (generally). Result: no liability for the infringing work.
What leaves Ben, courts, and countless others baffled is the circumstance in which the second situation would arise. What are facts and circumstances which show infringing activity? Apparently, material labeled “illegal” or “stolen” is not sufficient – in the context of pornographic photographs. Ben questions “whether the panel would have ruled the same way had actual red flags been waved in the defendants’ faces.” I think so.
Yeah, that situation is far-flung. But the “illegal” or “stolen” descriptors on porn run parallel to the content – they increase the excitement value and more likely describe the source of the pictures rather than the status of the copyright. A thin distinction, but an important one.
Imagine a video that gains global attention. Any video: Lady Gaga’s latest music video, in its entirety, is posted by CpyrghtAbUsr. For whatever reason, this video soars to the top of YouTube. It overwhelms their transmission lines. Corporate decides to dedicate huge amounts of bandwidth for this single video. The Today Show covers the video. Lady Gaga herself refers to it, but for some reason never sends a takedown notice. Would this qualify as a red flag?
Perhaps this is a ridiculous situation, but that may be the very nature of the case that finally forces a court to decide what satisfies the test. Until then, the judiciary may continue to dodge and weave, and we’ll be left without meaningful interpretation.
I was talking with a client about two weeks ago and explaining the benefits of a provisional provisional application. I was telling him that a provisional patent application is place holder – it keeps your spot in line – but he had a much cleaner way of expressing the idea.
Imagine you’re in line at the deli counter. You take a number. Once you have your number, you can go walk around the store, pick up the rest of your groceries, come back, and jump in when your number is called. You get served before all the people who have numbers after yours. A provisional application is similar: once you’ve filed it, you have a year to “walk around the store.” As long as you come back before the year is up, your number is good. If you wait too long and the year goes by, you lose out on your number.
The metaphor basically works. A provisional application also limits what you can order. Let’s say, instead of just taking a number at the deli counter, you could also place a sandwich order. You take #129 and ask for a ham and turkey sandwich. If your order is like a provisional, you can come back within a year and get a ham and turkey sandwich. You can come back and get a ham sandwich, or a turkey sandwich. You could ask for just bread. But you couldn’t ask for a roast beef sandwich or a turkey, ham, and salami sandwich. If you tried to get those last two sandwiches, you’d have to pick up a new number, because your new order was different from (and not encompassed by) your first order. Make sense? With a provisional application, the follow-on patent to the provisional has to be limited to what is disclosed in the provisional – claiming more than was in the provisional prevents you from using the provisional’s filing date.
Today in the Explaining Patents series: the background and field of invention section.
The background generally comprises two parts: an explanation of the field of invention and a description of the prior art. The Patent Office rules suggest that it give context to the rest of the application, explain problems with the prior art, and describe objects of the invention.
This can be a tricky section. Describing failures with the prior art can lead to the patent being construed narrowly – some courts will read the background and say, “well, if these were the problems in the prior art, your patent probably solves those problems and not others, because otherwise you would have described those other problems as well.”
For this reason and a few others, some patent attorneys do not believe in using a background section. There really is nothing in the laws or rules that requires it, but leaving it out can risk initial complaints from the Patent Office, thus requiring back-and-forth discussion about whether it is really required.
Continuing the series of posts explaining the parts of a patent, today we move on the drawings. A drawing is required when it is necessary to understand the patent application. Most applications have drawings. Like the abstract, drawings often provide a quick way of figuring out what the invention is. Drawings must show every part of the invention that is claimed in the patent. Drawings are labeled with part numbers so you can read the patent application and check the drawing for the part referred to in the description.
Drawings are generally black and white line drawings – in rare occasions color is permitted. Likewise, photographs are usually not allowed. The drawings are meant to clearly show the parts and features of the invention, and the use color or photographs can make depiction of the parts difficult.
The abstract is similar to a summary of the patent. It is intended to let the Patent Office and the public quickly know what the patent is about without having to read the entire patent. There aren’t hard rules on what the abstract must include, but the PTO does make a number of suggestions on its content. Abstracts generally track the broadest claim in a patent, but may include additional detail for clarity. Abstracts cannot be over 150 words, and thus provide a convenient way to understand the invention.
Everyone knows 
of the widespread copyright infringement the Internet made possible. And I think most of us are aware that the RIAA and record studios have been the most visible face of copyright infringement lawsuits. But movie studios also sue. I had a friend who got a warning from Stanford several years ago for downloading a movie, presumably prompted by a studio. The IP ADR Blog just wrote a nice post on the continuing efforts to clamp down on copyright infringement. The article describes how saber-rattling has taken a new form: a company/law firm trolls P2P networks for IP addresses of those downloading movies, links up with a studio or filmmaker, sends out subpoenas to the IP address holders, and then ask for settlement cash. A fairly easy, quick, money-making strategy.
The article also points out reluctance by some in the business to pursuing this tactic. Sam Bozzo, an indie film director, says that torrent releases create buzz about a movie, consistent with an article I wrote about a bit ago.
