Updated August 3, 2020
The coronavirus seems to be exerting itself upon all phases of life, and your intellectual property is not immune. While you, your families, your friends, and your colleagues are getting comfortable with the new normal of social-distancing, intellectual property (IP) offices worldwide have also been grappling with how to handle the impact of coronavirus (also referred to as COVID-19). Responses from IP offices around the world are varied and evolving, as the landscape changes in each individual country and on a global scale. For example, some offices, such as the European Patent Office (EPO), India, and the United Kingdom, have automatically extended deadlines, while others have refrained from any extensions but permit, under certain circumstances, remedial action for rights lost due to effects of the coronavirus. While the U.S. Patent and Trademark Office (USPTO) has not provided for automatic extensions, certain deadlines associated with patent and trademark filings and fees may be extended for small and micro entities provided the delay in filing or payment was due to the COVID-19 outbreak. Additionally, the USPTO will waive the petition fee to revive certain lost rights resulting from a failure to take action due to effects of the coronavirus.
Building upon our recent note concerning general international intellectual property protection considerations, this article describes how foreign IP expansion efforts might play out in a case study format. The company, a hair restoration lotion manufacturer named WonderFlo Tonight, is fictional, but the fact pattern is derived from real world situations encountered by businesses as they seek to establish and protect their intellectual property in foreign markets.
The importance of patent term, or the period of time during which the exclusive nature of a patent is in effect, cannot be overstated. The patent term for an issued patent, which is currently set at 20 years from the filing date of the earliest U.S. non-provisional application, can drive business and investment strategies, dictate allocation of technological resources, and impact financial valuations.
Steve Saunders, co-chair of Nutter’s Intellectual Property Department, recently drafted a Nutter Insights on how patents should be drafted with an emphasis on technical problems and technical solutions delivered by the claims.
Invention disclosures made by an inventor to an attorney, or a review committee including attorney(s), often contain sensitive information that a client would prefer to keep confidential. It is important for both inventors and attorneys to appreciate the boundaries of the attorney-client privilege, as applied to inventor-attorney communications, to determine which communications can be privileged, and thus sheltered from discovery, and those that will remain discoverable. As in other areas of law, the attorney-client privilege attaches to confidential communications between a client and an attorney made for the purpose of seeking legal advice or services. The Court of Appeals for the Federal Circuit (CAFC) has applied this principle to patent law and found that the privilege attaches to confidential invention disclosure communications between an inventor and an attorney made for (1) seeking advice on patentability or (2) for obtaining legal services of preparing a patent application. See In re Spalding Sports Worldwide, Inc., (Fed. Cir. 2000). Thus, the attorney-client privilege attaches to invention disclosures submitted or communicated to an attorney to assist the attorney in evaluating patentability or in prosecuting a patent. Additional inventor-attorney communications which may fall within the attorney-client privilege include draft patent applications prepared for or received by an attorney and communications between a named inventor and a patent attorney about patent prosecution.
Taking into account what constitutes a disclosure, we can see the following guiding principles and trends emerging:
The issue of public disclosure is a frequent concern for inventors looking to obtain patent protection. While it may often be safest to wait until at least a provisional patent application is filed before having any discussion regarding the invention with a third party, it is often not practical. Is the idea of waiting to discuss with a third party until a patent application is filed an overly cautious practice? Consideration of what actually constitutes a public disclosure and the factors that courts take into account illustrate that avoiding any and all discussion of the invention may not be necessary.
Key Takeaway: Key business considerations relevant for choosing between patents and trade secrets include: (1) Need for transfer of IP rights; (2) Life cycle of the product or service; (3) Cost of IP protection; and (4) Other business considerations.
Akin to the hype that surrounded the Internet during its early years in the 1990s, blockchain technologies and their associated cryptocurrencies have dominated the news cycle recently. Cryptocurrencies are a form of digital currency that use cryptography to enable financial transfers between two parties without an intermediary. By touting a new technology that could reshape the way transactions are performed, cryptocurrencies grew exponentially, attracting investors searching for “the next big thing.” The demand for cryptocurrencies has reached such a fever pitch in the past two years that cryptocurrency trading platforms have struggled to keep up with the demand for new accounts and trading services. Driven by media coverage of extravagant returns for investors in cryptocurrencies such as Bitcoin, Ethereum, and Ripple, among others, some of which have exhibited 100,000 percent or more annual growth in the last year alone, the cryptocurrency market, and the blockchain technologies by association, have received a tremendous amount of exposure for an industry that is still in its infancy. While the prevalence of the Internet and social media have greatly contributed to the explosive growth and popularity of blockchain technologies and cryptocurrencies, such growth so early in the lifecycle of a fledgling technology can have negative consequences, such as significantly impairing development despite an overwhelming number of new adopters entering the space daily.
In Part 1 of this post, I discussed various advantages of provisional patent applications, which are a growingly popular initial filing option for applicants seeking patent protection. These advantages include: establishing a filing date without starting the patent-term clock, obtaining additional time (e.g., to study the market, raise funds, etc.), delaying further costs associated with a regular application, delaying examination, and avoiding the need for immediate formalities, among others.
Yet, despite the numerous advantages of first filing provisional patent applications, there are also various disadvantages that companies and inventors should keep in mind when developing a patent filing strategy and deciding the role of provisional patent applications in that strategy. Some of these disadvantages are described below.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.