If you”ve done some reading about patents, you may have seen references to an “effective filing date.” For instance, while patent attorneys will often shorthand an explanation of patents by saying they offer protection for twenty years from filing date, they really mean that patents last twenty years from their effective filing date.

Typically, for most patent applications, the effective filing date is the day the application was filed. However, not all patent applications are typical; they can be continuations, continuations-in-part, or divisionals. While these can all issue as patents, they have special significance (a divisional, for instance, is an application that splits off from an original patent application, because the original claimed two or more inventions when it can only legally claim one) and they don’t always use their own filing date as the effective filing dates.

Instead, effective filing dates adopt the filing date of the application from which they sprung. So if the original – or parent – application was filed on January 1, 2009, and a divisional was filed on May 1, 2010, that was originated from the parent application, the divisional’s effective filing date will be January 1, 2009.

If you first file a provisional application and then later file a non-provisional, that non-provisional application can claim the provisional’s filing date as its own. The provisional’s filing date becomes the effective filing date for the non-provisional application and the patent that eventually issues.

These domestic examples are not the only situations in which an effective filing date is different from the actual filing date. If you originally filed for patent protection in another country and then filed in the US, you may be able to use the foreign filing date as your effective date.

What are the ramifications of effective filing dates? There are many. First, most patent applications are published 18 months after their effective filing date. Thus, in the example above, the parent and its divisional child will both be published on June 1, 2010. That means the divisional will be published just one month after it was actually filed. Publication day can be a starting point for obtaining damages in the event of infringement. Also, an earlier filing date can be an obstacle for other patents. Because the filing date is the presumptive invention date, an earlier effective filing date can mean that patent applications filed later by others can be refused because they were presumably invented later than yours.

Think of any restaurant that claims it has “The Best Wings in the State” or “World Famous Ribs.”  None of those slogans will qualify for trademark protection, because they just trumpet the product, and really don’t distinguish one rack of ribs from the next.

The context of the slogan matters, too.  Slogans on clothing, for instance, can be difficult to present as proper trademark usage, because they often seem to convey a message rather than a source.  Graphic tees with clever phrases on the front likely won’t qualify for federal trademark protection because the message is predominantly based in fashion.

Slogans used with services seem to be even more troublesome.  “Use of a designation or slogan to convey advertising or promotional information, rather than to identify and indicate the source of the services, is not service mark use.”  Did you get that?  That is some of the guidance the Trademark Office provides with respect to service marks.  Also, when you choose a slogan as a trademark for your service, you have to be careful that the slogan doesn’t describe a product used in the service.  If you run a cleaning business, try not to pick a slogan that describes the mop.  If you have a bakery, a slogan referring to hot cross buns probably won’t pass muster.

Bottom line: slogans can be a tricky area of trademark law and are worth some definite consideration – and probably a talk with a lawyer – before investing much time and money in one.

The song has its roots with The Rolling Stones, however. While The Verve wrote the lyrics, the underlying orchestral melody was performed and recorded by the Andrew Oldham Orchestra for The Rolling Stones’ song The Last Time. Oldham was the Stones’ manager in the ’60s around the time The Last Time was recorded.

It seems that some part of the original song was negotiated for, allowing The Verve to sample it. However, after Bittersweet Symphony took off in the charts, the Stones’ later manager Allen Klein alleged that the sampling had gone too far. The Verve lost, and Allen Klein subsequently licensed wide use of the song to the great dismay of The Verve. Not only did they not receive royalty payments, but their song came to be used in car commercials and sneaker spots, and when it was nominated for a Grammy, Mick Jagger and Keith Richards were the nominees.

Some might say the band that “wrote” the song never profited from it. Clearly, the validity, clarity, and power of the license here were incredibly important. A band can really expose itself to liability if it never seeks a sampling license, but even with one, risk still persists.

I am going to reiterate the disclaimer in the legal notice of this website: this is not legal advice. The situation I describe here is incredibly specific and is the product of my imagination. There is almost no chance this situation is going to be the same as yours. In fact, the situation here isn’t even a complete (or real) one. I’m not going to spend the time to come up with a technologically-savvy hypothetical. This will have to do. Your situation is going to contain facts, details, and nuances different and exclusive from the one here. If you’re reading this for educational purposes, great – this should be a wonderful starting point to better inform yourself. Talking to a lawyer about your specific situation should be the next step in informing yourself.

The Hypothetical Situation:

My home ski area publishes the status of their lifts online. I develop a program that jumps onto the site, downloads the page to memory, scans that page for the lift status, uploads that status to a database, and then dumps all the data. With my iPhone I can then hit my new app which connects to the database on the server and grabs the data to display on my iPhone. Now I can see what the wait time is for a lift on the other side of the mountain while I’m skiing, or I can decide if I want to stay home for the day if I’m looking at the app off-mountain. What exactly are the consequences of doing this? Can I get in trouble for web scraping?

Web scraping brings many possible areas of liability into focus. It can potentially implicate contracts, copyright, trademark, patent, internet law, various federal statutes, and some other areas, too. Let’s hit them one by one.

1. Contract: Terms of Use

Perhaps the easiest and most straightforward analysis. Terms of use, terms and conditions, end use license agreements – whatever the agreement may be called, you often agree to use a site according to its terms when you access and stay on the site. Courts routinely uphold terms of use despite the fact that you’ve probably never read them.

Terms of use – and thus violation of those terms – can be highly unique. What is allowed on one site may be prohibited on another site but may be permitted only to a limited extent on still another site. It is almost impossible to draw any sort of conclusion about whether web scraping will violate terms of use without having the site’s terms available. My home ski area actually doesn’t have any terms of use, for some reason, so this shouldn’t be a problem. However, if the terms of use said something like: “the site is only to be used for personal use” or “reproduction or display of any material from the site is prohibited” or “scraping content from this site is not allowed,” I’m probably in hot water.

2. Copyright

Copyright can be troublesome for this app. Information on a website can be protected by copyright. Copyright protection exists in creative material fixed in some semi-permanent medium. However, copyright protection does not extend to facts because they aren’t considered creative. This creative threshold is quite low, but facts don’t pass it; creative arrangements of facts, however, can qualify for protection. My home ski area’s website has a good deal of information on it. The lift status is displayed in a few ways: with a green/yellow/red icon next to the lift’s name, with wait time next to the lift’s name, or with a green/yellow/red line superimposed over the lift’s route on the trail map. However, that is merely the display. The data scraped is just that: raw data. Raw facts. Most likely, copyright protection does not extend to this, so I should be in the clear for the data itself.

However, I’m clear only if my app scrapes just the data. If it loads the entire page, culls the code for the data it needs, and discards the rest, a temporary copy has been made of the page. The page is almost certainly protected by copyright, and courts have found that even a temporary copy stored in RAM is a sufficiently permanent copy such that it can lead to infringement. So, the app may be infringing the ski area’s protection of the webpage that contains the lift data, even though I’m just trying to grab the data itself.

3. Trademark

Trademark law shouldn’t be much of a problem. Trademark law protects the public from becoming confused about the source of a product. My app will obviously display the name of the ski area so the user can look up a resort by name and find its lift wait times. The display of that name can’t create the appearance that the mountain is sponsoring the app. This shouldn’t be too hard. It is necessary to use the name in the app, but it can be done carefully: by stating something like “lift times at X Ski Area” should be sufficient to not endanger a likelihood that a consumer would be confused by the use of the name. Something like, “lift times at X Ski Area, provided by MyiPhoneAppName” would be even clearer. A disclaimer somewhere would be an additional safeguard against consumer confusion.

4. Patent

Patent infringement can be a tricky area. Patent owners can exclude anyone from making, using, or selling their technology. By accessing the site and interacting with the data, the app would arguably be using the technology. It is really difficult to analyze whether this app would infringe any patents without knowing exactly what the ski resort has patented (or licensed). Typically, software isn’t much of a patent-heavy industry, because it changes so rapidly that the time and money necessary to file and procure a patent just isn’t worth it. Further, a lot of ski resorts (and probably other places with online wait times) have this similar feature, which means either everyone is licensing it (doubtful), websites are stealing it (also doubtful), or the technology is in the public domain (most likely). I would venture to guess that my ski area doesn’t have a patent on the technology involved in the lift status display, but you never know.

Now, there may be other apps out there that use similar technology. My app could possibly be stepping on their patents if they have any. But do they have any? Again, hard to say. Only a really thorough freedom-to-operate opinion could tell me whether anyone has a patent on this technology and, if so, whether my app infringes it. Most likely though, because of the short-lived effective life of software and iPhone apps, there probably isn’t a patent on this sort of technology. If the technology has been around for a while, the chance that it is patented is even smaller.

5. Trespass to Chattels

Trespass to chattels is a physical-world legal wrong that has been adapted to the internet. In the tangible world, trespass to chattels is interference with someone’s personal property – trespassing on their stuff. The theory has been successfully applied to spammers, with ISPs claiming that the volume of spam ate up their bandwidth, reduced the quality of their service, and ultimately risked their business. The law has also been applied against bots that crawl sites looking for information, where those bots occupied only a small percentage of the site’s bandwidth but the risk of increased usage was feared. However, in California, where most of this law arises, the theory has been trimmed significantly, and actual damage or impairment is now required.

Central to the question of whether my app risks trespass to chattels is the coding. If the app has to jump onto the ski resort’s site every time to download information, then I risk having thousands of iPhones querying the site every day during the winter. The aggregated traffic from all these apps could cause some degradation of the site. However, if the app communicates instead with a central database, as described in the hypothetical, then the load on the site is reduced. Instead of having thousands of queries from thousands of iPhones, the site is touched only by one database several times a day, and the iPhones get all the information they need from the database without burdening the ski resort’s site.

6. Computer Fraud and Abuse Act

The Computer Fraud and Abuse Act (“CFAA”) is a federal statute that imposes civil liability where someone or something accesses a computer without authorization, or accesses a computer in a manner that exceeds the authorization that it did have. For example, if you hack into a database on a server that you were never given access to, you can be liable. If you had access to the server, but not the database, you’ve exceeded your authorized access, and can still be liable. Of course, you’re only liable if there is resulting loss or damage, but this is generally easy to find. There must be $5,000 in damage, and it can come in the form of lost revenue, repair costs, damage assessments, impairment to data, or costs of responding to the unauthorized access. The breadth of the types of damages, and the relative ease with which they can be shown (hire an IT guy to mull over your system, hire an attorney to respond to the hacker, etc.), make this element an easy one to satisfy.

The ski area gives people access to its site, of course – it wants people to visit, see the lift waits, and then come to the mountain. Those are people, though – not bots. Whether a bot has access may depend on the Terms of Use of the site and also the robots.txt file. And, even if access to the webpage is given, the ski area would almost certainly argue that scraping the data exceeded any access that was authorized. This is a big hurdle to overcome for my app.

7. Digital Millennium Copyright Act

The Digital Millennium Copyright Act (“DMCA”) is a controversial law that many see as an unnecessary clamp-down on fair use rights. The DMCA is designed to give copyright owners greater protection of their digital content. The DMCA creates liability for working around technological measures that protect copyrighted works (or trafficking in products that do so). For example, if you crack an RSA key to access someone’s computer and copy documents on it, you’ve not only committed copyright infringement, but you’ve also violated the DMCA for circumventing the protection that was blocking your access to the copyrighted work. A recent case has changed the law slightly, noting that the DMCA only prevents you from circumventing technological measures protecting copyrighted work and copying that work; if you circumvent the technology but only access the work, there is no DMCA liability. The case is incredibly new and there will probably be some fallout from it across the country. After all, merely “accessing” work online still necessarily requires a RAM copy to be made, and other courts have found that a RAM copy is sufficient to find copyright infringement.

My iPhone app probably doesn’t run afoul of the DMCA, though. The app doesn’t work around any technological measures protecting the lift status or the webpage. The web page source code can be viewed and scraped without bypassing any security measures. Therefore, the DMCA is probably not a problem. If, however, the lift status were hidden behind a CAPTCHA code, this would bring the activity under the DMCA.

So, it looks like my app has a couple of problems. Of course, there are some factors that balance in my favor. Does the ski area want to sue me, a skier, a customer, and a developer of a helpful iPhone app? If they do, they’ll have to spend some pricey legal fees, and they also risk the possibility that the public gets upset about a ski area suing its customers. It generally doesn’t fit with a ski area’s image.

You can’t patent just “an idea.” It isn’t allowed by the law.   Patents are granted only for things, processes, machines, manufactured articles, inventions.  Abstract ideas and theories, alone, cannot be patented.  Recent Supreme Court law just reaffirmed this.   Generally, you have to work up with something a bit more developed than just an idea to get a patent.

Let’s say you’ve taken your idea and made a prototype – now you’ve got something which you might be able to patent.  Attorneys would probably disagree on the first step to take.  Some might say to document it in an inventor’s notebook.   Some might say to work on it and develop it.  Hopefully none tell you to write about in a letter in and mail it to yourself.  I advise that you speak with an attorney once you are reasonably close to a “finished” product.   That may only take three prototypes, or it might take three hundred.  Once you’ve got something you think is truly different, truly new, and nearly complete, talk to a patent attorney (unless you need help developing the invention).

Critical in you ability to get a patent is when you first disclosed it.  Above all, respect the one-year deadline: once you’ve disclosed your invention to a person or people who have no obligation to keep it secret, you’ve only got one year to patent it in this country.   After that, you lose the right forever.   In other countries around the world, you can lose the ability to patent it if you tell or show the invention to someone before you file a patent application.

A patent attorney may suggest a few things when you first talk to him or her.  They should listen to what you’ve come up with, take a look at it, hear what your ultimate plans and goals are, and discuss your options.   Some may recommend a provisional patent application – a sort of place-holder that can have advantageous early-filing benefits.   Some may recommend you go ahead with a full utility patent application.   Others may suggest you perform a patent search first to determine whether your invention has been invented or described before, in which case it might not be eligible for a patent.

If you proceed with a patent application, please find an attorney to draft the application.   Just as you would want a plumber to move your toilet lines from one side of the bathroom to the other, or a cardiologist to perform your bypass (unfortunate pairing of examples), you want a patent attorney to write the patent application.   Doing it yourself can render your invention worthless.   There are many rules that have to be followed, many court cases that inform how a patent application is read and construed, and a patent attorney will be aware of these and use them when drafting the application.

The patent attorney will work closely with you before filing the application.   You’ll talk with him or her often, describing the invention and its possible variations.   Once the application is ready, you’ll have to sign some papers verifying the contents and veracity of the application and acknowledging the duties you have to the Patent Office once the application is filed.  The application is then filed along with a set of fees paid to the Patent Office.   Then begins the waiting game.

The Patent Office is extremely backlogged – it takes, on average, two to four years before the Patent Office sends a first response to you.   When it does respond, it will either allow your application or it will make rejections and objections that point out problems.  You can then abandon the application or make changes and send them back in response.  If you continue with the application, the Patent Office will send a second response.   Sometimes, at this point, you may continue arguing against the Patent Office’s rejections.   Sometimes though, it is more worthwhile to just let the application die.   Hopefully, your application will be approved and then issue as a patent.   You’ll have to pay another fee – an issue fee – to have your application become an official patent.

Once the patent issues, you will have to pay maintenance fees every few years to keep it alive.   During this time, you should monitor the patent to see if others are infringing it.  You might also want to market it or try to license it to competitors or companies that could use your product.  Twenty years after the effective filing date of the patent, your patent will expire. At that point, the public can start making your invention without your permission.  The twenty-year monopoly you were granted to exploit and sell your invention is your trade-off for giving the invention to the public at the end of that 20 years.

The patent system both flourishes and flounders under the influence of money.  Costs – those associated with government filing fees and attorney’s fees – are the largest reason to not pursue a patent.  The authors thus propose a tax-credit to offset those costs.  If such a tax-credit spurred the application of a few more patents, and a few of those patent applications matured to patents, a few more jobs would be created, and a few more tax dollars would be returned to the economy.

Additionally, they argue that a billion-dollar investment in the Patent Office to overhaul the computer system and hire and train more employees would drastically improve the patent backlog, thus allowing possibly game-changing applications to enter the market sooner.  New patents allow small companies to obtain financing (provided it’s available) and grow, in turn hiring employees, striking deals with other businesses, providing investment and earning potential to the public, etc.

I want to keep it secret!

• I want to make sure that no one knows about my invention until the last minute – the moment the patent issues.
• My patent application description discloses a trade secret that I want to preserve as long as possible.
• I want to prevent big companies from learning about my invention and doing some serious R&D to discover a workaround.  They might file patents that surround my invention and thus keep me from practicing and profiting from my invention.
• I don’t care about ever obtaining patent protection internationally.

I think publishing the application is a good idea!

• If someone copies my invention while it is in prosecution, I can try to get damages for the infringement that occurs between publication and issuance.
• I can use the publication as prior art and prevent others who file after my publication date from getting a patent.
• I want to file internationally.
• Everyone else is doing it.

Procedural Pointers:

• The request must be filed with the application.  Federal statute requires that the non-publication request be made contemporaneously with the filing of the application.
• You can file a non-publication request and then rescind it later if you change your mind.
• If you made a non-publication request and then filed a patent application for the same invention in another country, you’ve only got 45 days to notify the Patent Office.  If you inform the PTO more than 45 days later the foreign filing, your US application will be abandoned.  Oops.

The court disagreed.  Well, the court probably would have agreed with that, but found that because the couple signed a divorce decree that stated something like “we’ve got no community property in this marriage,” the ex-wife no longer had any interest in the patent and therefore wasn’t required to be joined in the infringement suit.

I agree with the court, but it did spark a question in my mind.  Whether or not the spouse is a co-owner of a patent, the court decided, is determined as of the patent’s filing date.  I’m not sure about that.  The law that the court relied on was pretty flimsy.  Hard to say that a patent application is property – federal law says “patents have the attributes of personal property,” but it doesn’t say they are property and it doesn’t say patent applications are property.  So is there property before a patent issues from a patent application?  If yes, is there property before the application is even filed?  At what point does the invention go from an idea to actual property – that seems to the point at which the community property/separate property determination should be made.  California law was pretty bare on this, according to the cites in Enovsys v. Nextel, and I don’t know of any Arizona law dealing with this.

Appropriately bringing this series of explanatory posts to an end, the claims conclude a patent.  A patent can have one claim or many; generally, though, they’ve got 20 or less because the Patent Office will let you write up to 20 claims without paying extra fees for additional ones.  If the invention necessitates a more complete claiming profile, going beyond the 20 may be a good idea.

Patent claims are written in independent and dependent form.  Independent claims stand on their own.  Dependent claims – get this – depend from independent claims.  They include all the subject matter of the independent claims from which they depend and then add additional subject matter, making the dependent claim more specific (narrower) than the independent claim.  Again, the Patent Office will let you have 3 independent claims “for free.”

The claims are what count when it gets down to litigation.  They define the scope of the invention or how far the protection of the patent extends.  Therefore, whether the defendant’s product infringes the patent depends on the breadth of the claims.  However, the claims aren’t considered in isolation.  Their relationship to the drawings, the detailed description, and the patent’s disclosure as a whole is important, because those parts affect how the claims are construed in court.  So while the claims are a crucial component of the patent’s protection, they aren’t the whole story.