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Steve O'Donnell, Ph.D. Registered Patent Attorney

What can be patented?

In the US, one can patent any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof…” Great, so what does that mean?

If we break it into chunks, it’s easier to understand.

A process, machine, manufacture, or composition of matter pretty much covers everything. Really, we’re pretty broad about what you can patent. There’s stuff you can’t patent of course, things like mathematical formulas, scientific laws, mental processes, abstract ideas are pretty obviously out. Methods of doing things and software might be patentable or not, depending on the case. Most of time we don’t have to spend too much time on whether an individual invention is the type of thing that can be patented.

Whether something is useful is also something we don’t usually have to think about. There are some really stupid inventions that have been patented--things you just can’t imagine anyone wanting. Or course, you can’t tell an inventor their idea is stupid because they’ll never believe you. Trust me, I’ve tried.

New...now that’s the thing we need to worry about. We should probably think about the requirement really being “new and nonobvious” since that’s what it really means.

New is well, new. Something no one has done before, or even thought of before. Something that creates its own market. Radio was new. TV was new. The internet was new. The electric toaster was new. Now, not everything new is going to change the world quite like the toaster did, but we can hope. The way I think of it is that if something is new, it has no direct competition. Radio and TV may compete with each other and with movies and stage performances and books for your attention, but it’s not like people spend too much time deciding whether to buy a radio or a tv because they’re very different things.

Non-obvious is trickier and trips up more inventors that anything. Something is obvious when “differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” The way I think of it that is if someone familiar with the field of the invention would have been able to think of the invention without being particularly clever, then it’s obvious. Or, if you to go up to someone and ask them how to solve the same problem your invention solves, and they come up with the same idea, then maybe it’s not much of an invention. It might still be clever, it might still sell, but it might not be patentable.

For example: automatic windshield wipers. Lets say you put a water sensor on a windshield and wire that it starts the wipers. Is that an invention? Well, if you go up to just about anyone and ask them how to have windshield wipers turn on automatically they’ll probably come up with the same idea. In that case, it’s probably not patentable. I’m not sure if it’s even an invention. Now, if you built your wiper-device and discovered that the wipers were turning on in humid weather, or that they were being triggered too early or late to be effective so you designed a system where there were four sensors on the outside of the car and three of them had to be triggered to start the wipers and the speed of the wipers corresponded to how often the sensors fired...that might not be obvious.

Another indication of obviousness is whether all the parts of the invention already exist and someone could just put the parts together to make the invention. Going back to my windshield wiper example, if there was an existing product that measured precipitation which detected when rain started and reported the rate of rainfall, and all you had to do was buy it and wire it to the wiper switch...then your invention is probably obvious. Even though no one ever thought to put those things together before, and even if you didn’t know about the precipitation measuring device and build yours from scratch.

There are arguments we can make if an application is rejected for being obvious, and sometimes they work. Sometimes they don’t.

You and your patent attorney can save a lot of money and hassle by estimating the risk of your application being shot down for obviousness early in the process. Then, you can decide whether the risk is acceptable, whether you can change the invention to make is less obvious, or whether it makes more sense to save the money that would have gone to a patent application and spend it on marketing instead.

Who's Holiday

Society is not good and sweet, but coarse, vulgar and disappointing.

I had a call from someone about a month ago who wanted to use some song lyrics in a short story making fun of Congress and wanted to know if that would be a problem. Like any good lawyer my answer was “it depends, you should come in for a paid consultation.” He didn’t.

So, here’s part of what I would have said: “if you twist the lyrics so that you’re making fun of the song itself, that’s probably a fair use parody; but if you use the lyrics to make fun of something else, that’s satire and that could be a problem. Actually, are you sure you need to use those lyrics? Can you say the same thing with maybe a line or two instead of the whole verse?”

The case that really cemented protection for parody is Campbell v. Acuff Rose Music, 510 US 569. It’s one of my favorite cases to read, partially because of the discussion of Fair Use (which is always fun) and partially because I can’t help but imagine stuffy Justices listening to 2 Live Crew when a curtain drops behind them and suddenly they’re in a club with 2 Live Crew performing the song and the clerks are all wearing clothes one might expect to see in an early 90s rap video and at the end J. Scalia rips open his robe to reveal an “As Nasty As They Wanna Be” t-shirt...but I digress.

The case we’re talking about today, Lombardo v. Dr. Seuss Enterprises, SDNY 16-9974, involves an “adult-themed” parody sequel to How the Grinch Stole Christmas. In the play “Who’s Holiday“ little Cindy-Lou Who is a 45 year old woman and she’s been though some stuff. Turns out she became friends with the Grinch when she was in school and he got her pregnant on her 18th birthday. I’m not sure how old the Grinch was. In the original story, she was maybe 3 or 4. I think for the Grinch to be as hateful and bitter as he was at the start of the story he must have been at least in his mid-30s. So even if it wasn’t statutory rape, it shattered the ”half your age plus 7” rule. You’ve heard of that right? According to the rule the youngest that someone can date is half their age plus 7 years. So, if the someone is 34, the youngest person they could date is 24 (half of 34, plus 7). If the Grinch was 34 when Cindy-Lou was 4, then he would be 48 when she was 18, which is going to get people talking…but again, I digress.

The Grinch and Cindy-Lou get married and have a daughter named Patti, and then things really go bad. Unemployed, hungry, and starving, Cindy-Lou cooks the dog. The Grinch flips out and there’s a struggle which ends when he falls to his death off a cliff. Cindy-Lou goes to jail, and Patti goes to foster care. The play takes place after her release as Cindy-Lou is waiting for guests who never arrive.

Judge Hellerstein addresses each of the four prongs of fair use and finds the play to be fair use of the underlying subject matter.

The first prong is the purpose and character of the use, which mainly asks whether the use is transformative. So, if you record The Grinch next time it airs in Christmas and sell it on ebay…well, you’re not transforming anything. Here, the judge found the the play took bits of the original and twisted them around to turn the “Seussian staples upside down and [make] their saccharin qualities objects of ridicule” since the play’s coarse vulgarity mocks the “ridiculousness of the utopian society depicted in the original work: society is not good and sweet, but coarse, vulgar and disappointing.” Man, sounds like someone needs a hug.

The second prong is the nature of the copyrighted work. No one pays much attention to this. It’s supposed to allow a judge to consider that purely creative works are more worthy of greater protection than factual works. Since parody cases are necessarily going to involve creative works there’s not much need to think about this.

The third prong is the amount and substantiality of the use. Generally, don’t take more than you need, whether it’s a creative work you need to use for your parody, or a pizza buffet. I’m not good with buffets. They cause a switch to flip in my head and I won’t stop until I’ve “won.” I can’t even hit a toppings bar without things getting out of hand. Anyway, the judge noted that although the play reiterated the basic Dr. Seuss story, it didn’t copy blocks of text, show the Grinch himself, and weren’t set in Whoville. The play did use the character of Cindy-Lou of course, but that would be necessary to tell a story about Cindy-Lou. The play is in the familiar Seussian rhyming cadence, but that itself isn’t copyrightable, and is directly parodied when Cindy-Lou’s cellmate confronts her about her annoying speech pattern.

The fourth and last prong is the effect on the market for the copyrighted work. So, if the parody erodes the market for the original it’s more of a problem for the play. But, it’s kinda silly to think that a bawdy, boozy, and blue version of The Grinch is going to be shown on tv instead of the original cartoon or that parents are going to buy book versions of the play or doll of a mid-40s Cindy-Lou puffing on Whohash for their kids instead of the official Dr. Seuss products.

Case dismissed. The Cat in the Hat shrugs and dejectedly leaves the courtroom...or does he?!

Ok, so now that you know how to keep yourself within the warm embrace of “Fair Use” you’re ready to unleash your weird “Antiques Roadshow” fanfic on the world and you’ll never have to worry about the PBS goons coming after you, right?

Not exactly, even if you think you’re in the clear, and even if your team of attorneys think you’re in the clear, that doesn’t mean that PBS isn’t going to be angry, and it doesn’t mean that their team of lawyers won’t think there’s a reasonable argument that you’re not protected by fair use. That’s all they need, some reasonable basis to argue that their case is different enough from other parody cases. If they have that, you might find yourself on the receiving end of a few threatening letters and maybe even an expensive lawsuit. Even if you win like “Who’s Holiday,” it might not be over. An appeal was filed shortly after the decision, so I might need to update this post later.

Does this mean you shouldn’t test the waters with your own work? No, it’s your right to create a parody work. However, you should sit down with an attorney who knows copyright so you can access your risk and discuss ways of lessening it.

You mean you don't associate yellow with Cheerios

General Mills has been trying to register a trademark for a yellow box, since everyone knows only Cheerios comes in a yellow box, right?

Yeah, I thought it was a bit of a stretch too, but nothing ventured nothing gained.

To be fair, General Mills has tried to make a connection between the color and Cheerios, and I’ll admit that if I forgot how to read and wanted Cheerios I’d just look for the yellow box. But, they just don’t have substantially exclusive use of the color on cereal boxes. Too many other companies have been using yellow boxes for General Mills to be able to come in and trademark it. Maybe if they had tried to register the box color when Cheerios was first released they’d have a better chance, but still, it would be an uphill climb to convince the examiner that people will associate yellow with Cheerios instead of thinking yellow was merely decorative.

Interesting opinion by the TTAB. Well, interesting if you like trademark law or Cheerios.

Why would they want to register the color yellow? Were they really going to go after brands already using yellow for other products, even other cereal products? Probably not. But…I bet they would have gone after generic and store brand Cheerio-knock offs. You know the ones I mean, every popular brand name cereal has a generic version. Next time you’re in the cereal aisle look for these off-brands, notice they often pattern their packaging after that of the brand name. Some will go farther than that and even use similar logos or characters on their generic boxes. It’s obvious why they do that, just like it’s obvious why generic aspartame is in a blue package just like the Equal brand: they’re riding the coattails of the brand name’s trade dress. Trade dress which can be hard to protect in the best circumstances, and which now might be a little bit harder to protect.

Using brand names in your work

Some variation of this question comes up at least once a month:

Q: Hey Steve, I'm writing a book and one of the characters likes SpongeBob SquarePants, will I get sued for mentioning SpongeBob?

A: Probably not. You see, trademarks are meant to identify the source of goods or service to assure purchasers of some level of quality. So, you know if you buy a stuffed SpongeBob it won't be filled with tarantula eggs, or if you buy a SpongeBob children's book that it won't be the story of Squidward's suicide. At least, you really wouldn't expect either from Nickelodeon. So, when someone uses a trademark in a non-trademarky way, i.e., in a way that doesn't indicate the source of goods or services (like mentioning SpongeBob in passing in a book or having a character in a film drink a Coca Cola) the First Amendment comes into play and we have to determine which one beats the other (hint: it's real hard to beat the First Amendment).

The big case on this is Rogers v. Grimaldi, which established that use of a celebrity's name in the title of a creative work was trademark infringement only if the use had no artistic relevance to the underlying work or it explicitly misleads people into thinking there's some official endorsement of the work. Courts have slightly expanded the holding of Rogers and use its reasoning, over and over, to determine if the use of a trademark within a creative work is protected by the First Amendment.

The first prong of the Rogers' test, that there must be at least some artistic reason to use the trademark, is a very low threshold. Like, crazy low. Use of the Louis Vuitton mark passed the test because it pointed out that a character was the kind of twit who would pay Louis Vuitton prices without being able to pronounce the name (The Hangover Part II). A "morale" patch of an angry monkey was ok to use in Call of Duty: Ghosts because that's the kind of thing a real-lite, near-future soldier might wear, even if wearing such a patch on a military uniform or in an official context isn't allowed.

The second prong is maybe even easier to pass than the first, and really, you'd have to try to satisfy it. In the Hangover case it might be satisfied if the name Louis Vuitton was prominently displayed on the movie poster, or maybe if its use was so pervasive during the movie that you'd walk out thinking "whoa, what did Louis Vuitton pay for all that advertising?" To get an idea of what pervasive use looks like, rent Superman II; Marlboro paid $43k to have their logo show up 22 times in the movie. Twenty-two times! I remember watching that as a kid and thinking it looked weird.

So, if you're going to mention SpongeBob in your book, make sure there's at least some reason for it and maybe not use "SpongeBob" as part of the title.

Does that mean you won't get sued. Hell no. There's a lot of caselaw on this, which means a lot of people sue over these kinds of things, but it lessens your chance of getting sued and puts you in a better position if you do get sued. Be smart.

No reading of the law gives you free rein to do whatever you want though. For example, if instead of having a character in your book mention SpongeBob, you have him sing the whole theme song (reproducing they lyrics) and include pictures of SpongeBob, then you're moving from a trademark issue into copyright law, which is a whole other gnarly beast. Also, if you are using the name of a real person, even if that person is dead, you could be running into rights of publicity as well as defamation. So, don't do that.

To protect yourself, even if you think you're ok, it's a good idea to have an attorney review what you're doing and evaluate the risks….because there are always risks.

The On-Sale Bar is back baby.

Back in the olden days, when things were more sepia-colored, there was a rule in patent law that gave inventors one-year after their invention was on sale to get to the patent office. If they didn’t get something filed by then, they were barred from getting a patent.

So, if I invent a widget in March, sell one at a farmer’s market in April, and wait 13 months before filing a patent application, I can’t get a patent because I waited too long. This let people test the market and see if their widget would sell before investing in a patent application, but prevented them from capitalizing on sales and never filing a patent application until they had competitors.

Then, there was the America Invents Act in 2011.

The AIA has some really good stuff, but like anything made by people it has some imperfections. One of these imperfections was in how it defined prior art and disclosures, which now seemed to say that secret sales and uses didn’t start the one-year race to the patent office.

A person shall be entitled to a patent unless …the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.


That or otherwise available to the public is the interesting part. Lawyers will read that as meaning that all the preceding conditions are necessarily also available to the public. So, it follows that if a sale isn’t public, it’s not a “sale” as far as the statute goes, and doesn’t interfere with patentability.

If that’s true, in theory at least, an inventor could sell their invention as long as they want as long at the sale isn’t offered to the public. That could be secretive, dark alley sales, or it could just be products that aren’t offered to the general public.

Crazy right?

Not really, the US Patent and Trademark Office thought that was the case. The manual of patent examination procedure states:

The phrase “on sale” in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning as “on sale” in pre-AIA 35 U.S.C. 102(b), except that the sale must make the invention available to the public.


So, for the last few years some people have been working under the assumption that they could sell their widgets privately, and maybe even sell their stuff in a way that didn’t make the invention “public” like a secret recipe, and still be able to get a patent on their invention if they ever decided to sell publicly or if their trade secret became known.

That’s changing.

Today the Federal Circuit Court clarified in Helsinn Healthcare v. Teva Pharm. that Congress "evidently meant that the public sale itself would put the patented product in the hands of the public," and not that only sales which make all the details of the invention public are “public sales.”

The case was whether a public sale is public, even if the details of the invention aren’t publicly disclosed. So, in other words, selling my famous chili can keep me from patenting the recipe, even if I never tell people my secret ingredient (it’s cinnamon).

The court, as they usually do, didn’t go further than they absolutely needed to and didn’t clarify other outstanding questions about the new on sale bar, but I’m taking this as an indication that we should think of the new on sale bar as the same as the old on sale bar. At least until the courts tell us otherwise.

So, bottom line is that you should get on file before you take the invention out of your garage and someone sees it. That’s not always possible, but try. Problems creep up when you start involving anyone that isn’t you or your co-inventors.