Newsletter Issue 71 - January 2015
In this issue:
Patent 'public use'
Ask Dr. Copyright ...
I heard that computers can now print in "3D", and make things out of plastic, metal and ceramic, and that there are websites that offer designs for guns and gun parts that can be downloaded for free, and then printed on these new printers. I even saw an episode of NCIS where the terrorists used plastic 3D printed guns that could not be detected by metal detectors. Shouldn't the government clamp down on these things?
John Q. Luddite
Yes! It's completely true! It's alarming! It's terrifying! It is possible to buy a 3D printer, such as a "MakerBot" or even a commercial one, download the designs for a gun, print it out, and use it. Law enforcement agencies are concerned. As with any new technology, however, the scary and dangerous uses are getting most of the press, while the kind and valuable uses are not covered as much.
Michael Balzer, has a 3D design business that used these new printers. His wife developed a tumor just behind her eye that could have taken her sight. She had an MRI, and Balzer used his 3D skills to convert that image into a 3D model that helped her surgeons plan a new approach to what would otherwise have been a difficult and dangerous operation. His wife is now fine, and her sight was saved. Doctors project that this use of 3D printing will become more common in the near future, as we print models of bones, organs, and other body parts to plan treatment.
Doctors are also using 3D printing to print prosthetic body parts. A doctor at Johns Hopkins University recently gave a new hand to a fourth grade teacher after the students in her school wrote to him to ask that he help. The entire school went to Baltimore to visit the Hopkins Medical School, and to see their teacher get her new hand.
Other uses may be equally creative. Jay Leno, the former host of the "Tonight" Show, collects old cars. Sometimes, it's impossible to get parts for them. So Jay 3D prints them, right in his own garage.
What does this have to do with copyright? Well, Lud, those 3D designs are protectable by copyright, but are also considered "speech" and are protected by the First Amendment to the Constitution. That's why the government can't just "clamp down" on the web sites offering gun parts. In our legal system, in order to have important rights, we sometimes have to take the good with the bad. We can't just limit what people publish on the Internet to the stuff we like. It's just a part of our democratic system.
Have questions about copyright and cutting edge technologies? Give the attorneys at LW&H a call, Skype, email, tweet, or any other kind of shout. They do this stuff.
Until next month,
The Jury System is Alive and Well: The United States Supreme Court Weighs In On a Question of Trademark Law.
It's not very often that the United States Supreme Court decides
a trademark issue but this month
the Supremes delivered an opinion
on a question of trademark law called "tacking." So what is
"tacking?" If you know, you probably should be reading a more
advanced newsletter, but if you don't, tacking is a doctrine for
establishing trademark priority in some infringement cases. Here's
how it works.
Typically, the owner of a trademark has priority over other users of the same or similar trademark if it began using the trademark in commerce first. We call that trademark owner the "senior" or "priority" user. Now, should the senior user decide it wishes to revise its trademark, the owner may lose its priority date. That may be okay unless the trademark owner is involved in infringement litigation. Then it would be desirable to have its priority based upon the original trademark, not the revised one. Courts may apply the original priority date if the trademark owner did not change the so-called "commercial impression" of the original trademark. This is called "tacking" and the test of whether to apply tacking is whether
"The original and revised marks are "legal equivalents" in that they create the same, continuing commercial impression....from the perspective of an ordinary purchaser or consumer."
Apparently, there was a split among federal circuit courts over whether the judge or jury should determine whether tacking is applicable in an infringement case. The United States Supreme Court granted certiorari for the purpose of resolving this question. In an opinion delivered by Justice Sotomayor, the Court held that a jury should make the determination although it did not rule out circumstances, such as bench trials, where a judge could. Here's what the Court wrote:
"Application of a test that relies upon an ordinary consumer's understanding of the impression that a mark conveys falls comfortably within the ken of a jury. Indeed, we have long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decision maker that ought to provide the fact-intensive answer."
So you see the jury system is alive and well even when it comes to application of trademark principles.
What is "Public Use?"
We'll start with the conclusion: don't use your invention in
AFTER you file a patent application.
Back to the beginning: Under the patent statute, a 'public use' of an invention prior to filing a patent application will destroy U.S. patent rights to the invention. Before March 16, 2013, the inventor had one year after the public use to file the application. On March 16, 2013 the law changed and any public use without a pending patent application IMMEDIATELY terminates patent rights.
But what is a 'public use?' Is a use that does NOT disclose the invention a 'public use?' How about use by a trusted confidant? What if the use if not by the inventor, but by a third person? What if an invention is stolen and the thief or a person who receives the invention from the thief uses the invention in public?
The Federal Circuit Court recently considered these questions in Delano Farms v California Table Grape Commission. Delano Farms challenged plant patents (yes, you can patent a plant) for two grape varieties owned by the U.S. Department of Agriculture. Before the U.S.D.A. applied for patents, an employee acting without authorization provided grape cuttings to two grape growers. The employee knew that his action was unauthorized and admonished the grape growers to keep the plants secret. The grape growers grew and propagated the grapes in secret. They informed one other person and provided plant material to that person, a confidant of the grape growers, who also grew the grape plants in secret. The grapes were grown in publicly visible fields, but were not labeled and were indistinguishable from the other grape plants in the fields.
The Federal Circuit determined that under these facts, the use of the grape plants by the grape growers was not a 'public use' and did not invalidate the plant patents. The factors that the court considered important were that the invention was not commercially exploited (at least not during the period that would trigger the bar), that the use did not create an impression in members of the public that the invention was available, and, most importantly, that the parties involved, including the U.S.D.A, the discloser and the grape growers, all treated the grape plants as secret and took steps to keep the grape plants secret. The court applied pre-March 16, 2013 law, but we believe that the results would be the same for post-March 16, 2013 law.
The most interesting question is one that the court did not decide - whether public use of an invention by a thief who steals the invention or receives the invention as stolen property triggers the 'public use' bar and terminates patent rights. The court did not reach this question because there was no 'public use.'
Want to avoid ever having to fight this issue out in court? File your patent application before you use the product where anyone can see you who does not owe you a duty of secrecy.