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Does My Product Infringe This Patent?

The Deceptively Simple Rule

Determining whether or not a product infringes a particular patent is simple in theory, but quite complicated in practice. To avoid infringing a patent all you have to do is avoid doing at least ONE thing (and its equivalent) in every claim of the patent. A patent claim is a one sentence description of the invention covered by the patent. A claim is typically a list of items, or elements of the core invention, and a description as to how they are related to one another. So to avoid infringement of a claim, you just have to look at all of the items in the claim and eliminate at least one of these items from your product. To avoid infringing the entire patent, you have to avoid infringement of EVERY claim in the patent. If the patent has twenty claims, and you only infringe one of those claims, the amount of money you will have to pay for the infringement is often the same as it would be had you infringed all twenty claims.

To determine infringement of a claim, you first have to examine the claim. For instance, assume a patent issued with claim 1 reading as follows:

A sitting device comprising:
a seat;
a leg coupled to the seat; and
a back coupled to the seat.

Applying the Rule

To avoid infringement of this patent claim, your product would have to NOT have one of those items. So if your product was a stool, and had no back at all, your stool would not infringe this patent claim. If your product had a seat and a back and four legs, your product would still infringe this patent claim, because your product does have at least “a” leg. Even if your product eliminates one of the elements of a patent claim, if the element your product has instead of the eliminated item performs substantially the same function, in substantially the same way, to yield substantially the same result, your product may still infringe the patent claim under the “Doctrine of Equivalents.” As you can see, the determination of infringement can get complicated very quickly. Once you determine that you do not infringe claim 1, you would then repeat the process for every other claim in the patent.

Never Make a Determination of Infringement Yourself

Unfortunately, determining whether a product infringes a patent claim is harder than it first appears. There is a reason patent infringement lawsuits take years to litigate and cost millions of dollars in attorney fees. The legal determination of what or what does not infringe a patent claim is an extremely complex process, involving the analysis of the claims, the specification, the drawings, the proceedings before the Patent and Trademark Office, and mountains of other patents and documents. It is imperative that no entrepreneur move forward on the assumption that their product does or does not infringe a patent without obtaining a formal written legal opinion from a patent lawyer well-versed in drafting patent infringement opinions.

Brett Trout

Posted in Patent Law.

Top Ten Black Inventors

In honor of Black History Month, I have compiled a list of my top ten black inventors of all time. While these particular individuals may not be as famous as other black inventors, these individuals are all unparalleled in their unique contributions to these United States. Along with some background of each inventor, I have included a representative patent for review.

Every year it becomes increasingly difficult to select only ten inventors from the thousands of choices. This year, as opposed to simply listing the best patents, or most lucrative inventions, I have chosen to select those black inventors who have broken the mold, setting new standards for innovation. I have focused on the practical as well as the profound. What follows are ground-breaking accomplishments by great American pioneers.

10. Thomas L. Jennings – Dry Cleaning Described by Frederick Douglass as “a bold man of color” who led an “active, earnest and blameless life,” Thomas L. Jennings was the first African American to receive a patent. On March 3, 1821, forty-four years before the end of slavery, at a time when the inventions of slaves were owned by their masters, the United States granted Jennings Patent No. X3306, on a dry-cleaning process he called “dry scouring.” Thomas Jennings used the proceeds from his invention to purchase his family out of slavery. Jennings also used the money to donate to abolitionist causes for the remainder of his life.
Representative Patent: Cloth, Scouring United States Letters Patent Number X3,306 [When the United States Patent Office first began issuing patents on July 31, 1790, it did not assign numbers to the issued patents. The Patent Office only referred to issued patents by the name of the inventor and the patent grant date. It was not until the passage of the Patent Act of 1836 that the Patent Office first issued a numbered patent. The Patent Office began numbering patents issued in 1836, starting with Patent No. 1. Only in the 1950s did the Patent Office go back and start numbering pre-1836 patents with the prefix “X.” So the first U.S. patent ever granted is Patent No. X1, issued on July 31, 1790.

Unfortunately, on December 17, 1836, a fire destroyed the Patent Office and most of its records. The fire destroyed approximately ten thousand patents, dating back to 1790. Although Congress appropriated funds to restore the patents, only about twenty-six hundred have been recovered to date. For the remaining seventy-five hundred patents, all we have left is the inventor’s name, the registration date, and the patent title.]

9. Michael Jackson – Gravity defying shoes michaeljacksonIn 1993, singer and entertainer Michael Jackson received a patent on a novel shoe, The shoe includes a cut-out in the heel, which an entertainer slides on and off a nail head in the stage. The nail head grabs the heel and allows the entertainer to perform apparently gravity defying leans.
Representative Patent: Method and means for creating anti-gravity illusion United States Letters Patent Number 5,255,452

8. Thomas Mensah – Patriot missile guidance system T_Mensah_sm_80 Born in Ghana, Dr. Mensah is the Chairman of Supercond Technology Inc. of Norcross, Georgia. Holder of over a dozen United States and International patents, Dr. Mensah’s inventions span the fields of fiber optics to guided vehicle systems. His work with SMART weapons, like the Patriot missile, were critical to the success in the Gulf War.
Representative Patent: Guided Vehicle System United States Letters Patent Number 5,035,169

7. Lewis Latimer – Electric light filament lewislatimer Everyone knows Thomas Edison invented the light bulb, but few know that it took African American inventor Lewis Latimer to come up with the carbon filament that made it practical. Edison’s original draftsman, Latimer drafted the plans for Alexander Graham Bell’s telephone. Working many late nights with Bell, Latimer worked tirelessly to file a patent on Bell’s telephone mere hours before the filing of a similar patent by a rival inventor.
Representative Patent: Electric Lamp United States Letters Patent Number 247,097

6. Elijah McCoy – Automatic railcar lubrication EJMcCoy Elijah McCoy patented dozens of ways to lubricate machinery. One advantage McCoy’s devices had over the competition, was that his inventions made it possible to lubricate machinery while it was running. This eliminated downtime maintenance and increased factory profits. One of his most famous inventions was an oil dripping cup. The oil dripping cup was so wildly successful that competitors worked diligently to copy it. Nothing however, worked as well as the original. That is why, even today, we ask for “The real McCoy.”
Representative Patent: Lubricator United States Letters Patent Number 472,066

5. Dr. Patricia Bath – Surgical cataract laser bathpatricia_bigBorn in Harlem, Dr. Bath has become an internationally acclaimed ophthalmologist and surgeon. Not content to rest on her laurels, Dr. Bath has dedicated her life to the treatment and prevention of blindness in African-Americans. A pioneer in laser cataract surgery, her laser-powered Laserphaco Probe allows physicians to vaporize sight stealing cataracts in minutes.
Representative Patent: Method of removing cataracts United States Letters Patent Number 6,083,192

4. Lonnie G. Johnson – Super Soaker squirt gun
President of Johnson Research Development Co. and formerly with NASA’s Jet Propulsion Lab, Lonnie Johnson is a nuclear engineer with over 100 patents to his name. This Tuskegee alumnus has generated over one hundred million dollars in sales with his world-renown invention, the SuperSoaker squirt gun. He is currently working on a solar energy cell which promises to cut solar energy costs in half.
Representative Patent: Pinch trigger pump water gun United States Letters Patent Number 5,074,437

3. Percy Julian – Cortisone synthesis percyjulian Granted over 100 patents Percy Julian is best known for his innovative synthesis of cortisone from soy beans. His inventions significantly reduced the cost of manufacturing cortisone used to treat rheumatoid arthritis and inflammation. Julian is a 1990 inductee into the National Inventors Hall of Fame.
Representative Patent: Preparation of cortisone United States Letters Patent Number 2,752,339

2. George Crum – Potato chips g_crum Part Native American and part African American, George Crum never received a patent. He is credited however, with inventing one of this country’s most ubiquitous snack foods, the potato chip. Known for his irascible nature, George Crum earned his living as a cook. One day, the story goes, a businessman entered Moon Lake Lodge, in Saratoga Springs, New York. Not happy with the thickness of the potato slices Crum was serving on that particular day, the businessman sent them back. While customers at the Moon Lake Lodge sometimes sent food back once, they rarely sent them back twice, especially if George Crum was working. Crum took it upon himself to make the meal so unpalatable, patrons would dare not try their luck a second time. In this particular case, Crum sliced the potatoes as thin as possible, fried them in oil until they were hard. Crum then doused the potatoes in enough salt to make them what he believed would be inedible. To his chagrin, the customer loved the new “potato crunches.” Crum began serving the snack at his own restaurant. Since Crum had no patent, Crum did not share in the profits from what others have turned into a multi-billion dollar industry.

1. George Washington Carver – New uses for peanuts Georgewashingtoncarver
Best known as the inventor who could do anything with a peanut, George Washington Carver patented only a small handful of his hundreds of his novel products and methods for improving agriculture. Born a slave, Carver consistently shunned fortune. Interested only in the betterment of mankind, he took no money at all for the majority of his inventions. Granted a scholarship in Kansas, the college refused Carver withdrew his admission after discovering Carver was African American. Carver enrolled at Simpson College in Indianola, Iowa, before eventually landing at what is now Iowa State University the following year. Carver researched at the Iowa Agriculture and Home Economics Experiment Station (IAHEES), and became the Iowa State University’s first black faculty member. Carver is a 1988 inductee into the Iowa Inventor’s Hall of Fame and a 1997 inductee into the National Inventors Hall of Fame.
Representative Patent: Process for Producing Paints and Stains United States Letters Patent Number 1,632,365

As a patent lawyer, I probably appreciate the foregoing inventor more than most, but if you have your own favorite black inventor, please leave a comment below; I would love to hear from you.

Brett Trout

Posted in Patent Law.

No Friend to Inventors, California Congressman Darrell Issa Retires

Congressman Darrell Issa (R-CA) has just announced that he will not seek reelection in 2018. This comes as a pleasant surprise to inventors and technology-driven startups. Since being named Chair of the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet in 2014, Congressman Issa has enacted anti-small-inventor patent reforms.

In the past, Rep. Issa has even used the terms “plaintiff” and “patent troll” interchangeably. Rep. Issa’s reforms have hindered the ability of small inventors to pursue infringers and, according to Paul Morinville, Founder of US Inventor, “discouraged investment in innovative startups.” According to Adrian Pelkus, Director of US Inventor and the President of the San Diego Inventor’s Forum Issa’s departure is a positive for innovation.

So who will replace Rep. Issa on the Subcommittee on Courts, Intellectual Property, and the Internet? According to Gene Quinn and Steve Brachmann of IP Watchdog, the likely candidates are Congressman Doug Collins (R-GA) if the Republicans maintain a majority in the House of Representatives, or Congressman Jerrold Nadler (D-NY), Congresswoman Zoe Lofgren (D-CA), or possibly Congressman Hank Johnson (D-GA) if the Democrats wrest control of the House back in 2018.

While the future leadership of the Subcommittee on Courts, Intellectual Property, and the Internet remains unclear at the moment, what is clear is that almost any of the aforementioned candidates, from either party, will be a welcome change to both inventors and technology-driven startups.

Brett Trout

Posted in Internet Law, Patent Law.

Brett Trout selected for The Best Lawyers® 2018 in both Patent Law and Information Technology Law

Brett J. Trout has been selected by his peers for inclusion in the 24th Edition of The Best Lawyers in America® in the practice areas of Information Technology Law and Patent Law. The Best Lawyers in America® publication is the oldest peer-reviewed publication in the legal profession. Since 1983, Best Lawyers® continues to be regarded, by both professionals and the public, as the definitive guide to legal excellence in the United States.

The Best Lawyers in America®
The 2018 Best Lawyers in America® publication covers the largest and most targeted audience of any legal profession peer-review listing. Excerpts from the Best Lawyers® publication appear in The Washington Post, The Los Angeles Times, New York Magazine, and more than dozens of other regional publications, reaching more than 18 million readers. Best Lawyers selection process is based upon exhaustive and rigorous peer-review surveys. Over four million confidential evaluations by leading legal professionals are considered in the process. The American Lawyer and Corporate Counsel magazine describes The Best Lawyers in America® as “the most respected referral list of attorneys in practice.”

“The fact that a lawyer has been voted by his or her peers into Best Lawyers in a legal practice area does not signify that the lawyer has been certified by a state board of legal specialization in that practice area or specialty. A listing in Best Lawyers does not guarantee a desired legal result.” – Best Lawyers

Posted in General.

Federal Circuit Allows Registration of Immoral and Scandalous Trademarks

NSFW Disclaimer: This post contains strong language that may not be suitable for work.

The Law
Up until a few weeks ago, the law was that you could not register a trademark with the Patent and Trademark Office that included immoral or scandalous material. For years, 15 U.S. Code § 1052(a) (otherwise known as §2(a) of the Latham Act) prevented registration of trademarks such as BUBBY TRAP for bras, 1-800-JACK-OFF for a phone sex operation, PUSSY for non-alcoholic beverages, and COCK SUCKER for rooster-shaped chocolate lollipops. That all changed on December 15, 2017.

The Case
On December 15, 2017, the United States Court of Appeals for the Federal Circuit ruled that the portion of §2(a) of the Latham Act forbidding the registration of trademarks containing immoral or scandalous material was unconstitutional. The case arose when Erik Brunetti tried to register his clothing trademark “FUCT” with the United States Patent and Trademark Office. The examining attorney refused the registration, arguing that “FUCT” was the past tense of the verb “fuck,” and therefore was scandalous and unregistrable under §2(a) of the Latham Act.

The Trademark Trial and Appeal Board Finds the Trademark Scandalous
Mr. Brunetti appealed the refusal of the examining attorney to the Trademark Trial and Appeal Board. In rejecting Mr. Brunetti’s appeal, the Board relied on a definition posted on Urban Dictionary by a Mr. Charlie White. As Urban Dictionary aficionados will recognize, Mr. White is also the author of such urbane definitions as “Knob Goblins” and the indispensable phallic metric “The Whole Ten Yards.”

Relying on Mr. White’s nonpareil practical lexicography skills, the Board held that FUCT was recognized as a slang and literal equivalent of the word “fucked,” with the same vulgar meaning. The Board also relied on the examining attorney’s Google Image search results, which the examining attorney stated showed Mr. Brunetti used the FUCT trademark in the context of “strong and often explicit, sexual imagery that objectifies women and offers degrading examples of extreme misogyny.” The Board refused to believe Mr. Brunetti’s explanation that he chose the term FUCT as an invented or coined word and ruled that Mr. Brunetti’s targeted market segment would perceive the trademark as the phonetic equivalent of the word “fucked.” The Board found the mark to be vulgar and, accordingly, upheld the examining attorney’s refusal to register the trademark under §2(a) of the Latham Act.

The Federal Circuit Also Finds the Trademark Scandalous
On appeal to the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”), Mr. Brunetti again argued that the word FUCT was not scandalous. The Federal Circuit rejected Mr. Brunetti’s argument, also relying on the Urban Dictionary definition to uphold the Board’s decision that FUCT was the phoenetic twin of “fucked,” and therefore vulgar, scandalous and unregistrable under §2(a) of the Latham Act. Although Mr. Brunetti took specific issue with Mr. White’s lack of “lexicographic expertise,” the Federal Circuit noted “[t]he pedigree of the author of a definition may affect the weight that evidence is given, but does not render the definition irrelevant.” In response to Mr. Brunetti’s objection that the Board failed to take into account the other, non-offensive Urban Dictionary definitions of FUCT (such as Failed Under Continuous Testing), the Federal Circuit held the Board reasonably focused on the highest rated definition. (It should be noted that as of this writing, the difference between the highest rated definition, which is offensive, and the second highest rated definition, which is not offensive, is only 26 online votes).

The Constitutional Issue
In addition to his failed argument that the FUCT trademark was not scandalous, Mr. Brunetti also made the argument to the Federal Circuit that §2(a) of the Latham Act was unconstitutional as it applied to speech protected under the First Amendment. Mr. Brunetti brought this argument, despite such a constitutional argument being specifically foreclosed by binding court precedent. In overruling this binding precedent, the Federal Circuit relied on the June 19, 2017 decision in Matal v. Tam, in which the United States Supreme Court upheld the Federal Circuit’s determination that the “disparagement clause” of §2(a) of the Latham Act was unconstitutional. In Tam, the Supreme Court held that trademarks are private, not government, speech. The Supreme Court explained the disparagement clause of §2(a) “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

The Ruling
The Federal Circuit examined the government’s position in support of the immoral and scandalous provisions of §2(a) of the Latham Act, but determined the government had not presented the court with a substantial government interest justifying the § 2(a) bar on immoral or scandalous marks. As in the earlier Tam case, “All of the government’s proffered interests boil down to permitting the government to burden speech it finds offensive.” which is not enough to survive the requisite intermediate constitutional scrutiny. The Federal Circuit attempted to “blue pencil” the immoral and scandalous provisions of §2(a) of the Latham Act into a construction that would allow the language to pass constitutional muster. However, the court ultimately determined immoral and scandalous could not reasonably be read to be limited to material of a sexual nature, and that the Federal Circuit could not stand in the shoes of the legislature and rewrite a statute. In finding in favor of Mr. Brunetti, and reversing the decision of the Board, the Federal Circuit held that the bar in §2(a) against immoral or scandalous marks is unconstitutional because it violates the First Amendment.

The Federal Circuit’s holding in In re Brunetti is interesting for several reasons. First, the ruling is an indication that courts are recognizing that while society has a right to be offended, it has no right to not be offended. We can expect this trend to continue, with subjective determinations of morality being increasingly excised from our laws. Second, the ruling is an indication that courts are more and more willing to accept as evidence, sources such as Urban Dictionary and Google images, that only two decades ago would never have passed evidentiary muster. Finally, the ruling is a notice to all trademark applicants that a thorough review of all online resources is in order prior to filing and appeal of an examining attorney’s refusal to register.

Brett Trout

Posted in General.

How Do I Sell My Idea?


It would be great if there was a company that would simply buy your idea and give you a stack of money and ongoing royalties. Unfortunately, there is no such company. The market for raw ideas is small, very small. For every dollar looking to invest in an idea, there are hundreds of ideas chasing that dollar. As a result, investors screen out only the best and/or most protected ideas. Why should investors waste their time with bad ideas in a buyer’s market?

One reason the market for idea funding is so small is that you cannot sell your idea without telling someone what your idea is. But if you do tell someone what your idea is, there is nothing to prevent them from simply taking your idea and using it without paying you anything. You do not want to spend the money on a patent until you know if someone wants to buy your idea, but you cannot tell everyone your idea if they are just going to steal it. This is the Inventor’s Catch-22.

Non-Disclosure Agreements

Fortunately, there are ways to disclose your idea without surrendering your rights to that idea. One way is to demand the other party sign a non-disclosure agreement before you disclose the idea. Be careful though. Not all non-disclosure agreements are created equal. Some may be inadequate to protect your idea, some may protect the other party and not you, and some may be invalid altogether. If you want to use a non-disclosure agreement, it is important to hire an intellectual property lawyer to prepare the agreement, to make sure it is valid, and to ensure the agreement protects the full scope of the idea you want to disclose.

Another concern with using non-disclosure agreements is the unwillingness of many companies and potential investors to sign non-disclosure agreements. The reasons behind this unwillingness are threefold. First, many companies have their own research and development team. That means there is a possibility that the company is, coincidentally, currently working on the same idea you have. If the company signs your confidentiality agreement, and it just happens to be working on the same idea as yours, the company is just inviting a lawsuit. Even though the company may win the lawsuit by proving it had the idea first, it is always easier not to get sued in the first place.

Second, some companies may be of the impression that if your idea is not valuable enough to you for you to protect it with a patent, your idea is probably not valuable enough for the company to consider either. Third, many times companies would prefer to only hear idea pitches from individuals who already have a patent. Having a patent ensures the company that the resources it expends on investigating in your idea, it can eventually recoup through the monopoly granted by the patent.

Getting a Patent

If money was no object, hiring a patent lawyer to file a patent application on your idea would be a logical first step. While ideas are not patentable, embodiments of an idea, such as specific inventions, may indeed be patentable. A patent serves as notice to all potential infringers of the exact specifications of your invention and which products they are not allowed to make, use, or sell without your authorization. The patent also lets your potential investors know exactly what they are buying.

Once you file the patent application you can disclose your invention to third-parties without fear of your invention falling into the public domain. Since you cannot sue infringers until your patent actually issues (which could be three years or more), there is a possibility an infringer could exploit your invention before the patent issues. While that is a concern, infringers do not get grandfathered in. Once your patent issues, infringers have to stop infringing. If they have built up a demand for your invention, once your patent issues, you are the now the only one who can legally exploit that demand.

Is a Patent Right for You?

As noted above, if money is no object, getting a patent is a great idea. But money, especially with new companies, is in very limited supply. Patents are expensive, with good patents costing from $8,000 to $25,000 or more. Moreover, once you have the patent, you still have to consider how you intend to go after infringers. Patent infringement lawsuits can cost millions of dollars in attorneys’ fees. If you are lucky, you may be able to find a patent lawyer willing to take your case on a contingent fee basis, meaning the lawyer only gets paid if they win, and they only get a percentage of any settlement or award. However, if your patent was poorly prepared, the damages are small, and/or the infringer has little or no money, it may be difficult, if not impossible, to find an attorney willing to take your case on a contingent fee basis.

If you get a patent, you want a good patent. Unfortunately, not all patents are equal, so picking a good patent lawyer is key. If you hired fifty patent lawyers to draft a patent application covering your invention, you are going to get fifty different patents, all with different scopes of protection, some good, and some not so good.

So how do you find a good patent lawyer? Ask around. Find out which patent lawyers have successfully helped entrepreneurs in your area in the past and set up an initial consultation to spak with them. Your first meeting should be free. Talk to several patent lawyers and decide with whom you feel the most comfortable working.

After you have decided on a patent lawyer, but before you hire the him or her to file a patent application on your invention, sit down with the patent lawyer and go over all of the costs involved, from filing the patent application, to getting the patent, to paying maintenance fees, to bringing a lawsuit to stop an infringer. Even if you get only general estimates of these costs, it will help you decide how to proceed.

If there is a competitor out there who you know has a history of stealing inventions from small inventors, whether they have a patent or not, you need to take that into account. Discuss strategies with your lawyer, such as a contingent fee option, or licensing the invention to a competitor with deep enough pockets to fight a patent infringement lawsuit, that will allow you to get to trial and not have to abandon your patent infringement lawsuit halfway through for lack of funds. Once you know all of the costs, only then can you make an informed decision as to whether pursuing a patent at this time is right for you.


Whether you eventually decide to pursue a patent or not, it is critical that you base your decision on as much information as you can get. Remember, at the outset you are only asking the patent lawyer for information regarding the costs, timelines, and pros and cons associated with getting a patent. The ultimate decision as to whether or not to proceed with a patent is a business decision, not a legal decision. Use your patent lawyer to get the information you need to make the business decision that is right for you.

Brett Trout

Posted in General.

Do I Need a Patent?

A Business Decision vs. A Legal Decision
The question of whether you need a patent is more of a business decision than a legal decision. While a patent attorney can help you make that decision, by providing you with information regarding the costs and benefits of a patent, only you can make the final determination as to whether a patent is right for you or not.

Will a Patent Increase the Value of My Invention?
Think of a patent as a safe to store your valuables. If your invention (your valuables) is extremely valuable, a patent is probably right for you. If your invention is not valuable, a patent is probably not right for you.

Another way to look at a patent is as a value multiplier. If your invention is worth $100,000, a patent could possibly increase that value to $1,000,000 or more. Whereas if your invention is worth $0, no multiplier, not even a patent, can increase that value above $0.

How Do I Determine the Value of My Invention?
As you might imagine, most inventors believe their inventions are extremely valuable. So how do you place a fair value on your invention? While there is no precise formula, it is useful to consider things like how much money other people are willing to invest in your invention. If you have a contact at a major distributor who is interested in writing you a royalty check today, your invention has value. Conversely, if no one but you is willing to put their own money behind your invention, your invention may not have much value.

One problem inventors have is how do you find out how much someone is willing to invest in your invention without disclosing your invention first. While you may be be able to convince a potential investor to sign a confidentiality agreement, most will not. The problem then becomes that if you disclose your invention outside of a signed confidentiality agreement, you run the risk of possibly losing the right to patent your invention down the road. While some counties have disclosure grace periods, this is not always the case. And once your invention enters the public domain, you lose the right to patent it forever.

Since patents can run $7,500 to $30,000 or more, you are often left in a Catch-22. You do not want to spend the money on a patent application until you get an investor, but the investor will not talk to you until you file the patent application.

Typically, for a new inventor, the best course of action is to meet with a patent lawyer. Many patent lawyers provide an initial free consultation to give you the answers you need to make the business decision that is right for you.

Do Your Research
Patents, like the patent lawyers who write them, are not all created equal. For a given invention, two different patent lawyers will get you two different patents. More often than not, the better patent lawyer will get you the better patent. However, while the highest priced patent lawyer is not always the best patent lawyer, the lowest priced patent lawyer is likely the lowest priced for a reason.

Even the best patent lawyer in the world cannot guarantee they can get you a great patent on your invention. But you can be quite certain that if a bad patent lawyer does get you a patent, it will be easier for competitors to avoid infringing that patent, than if you had the patent prepared by a more competent patent lawyer.

Thankfully, if you do your research, you should be able to find a great patent lawyer willing to offer you an initial free consultation to answer the questions you need to take the next step toward protecting, or not protecting, your invention.

Brett Trout

Posted in General, Patent Law.

Brett Trout selected for The Best Lawyers® 2017 in both Patent Law and Information Technology Law

Brett J. Trout has been selected by his peers for inclusion in the 23rd Edition of The Best Lawyers in America® in the practice areas of Information Technology Law and Patent Law. The Best Lawyers in America® publication is the oldest peer-reviewed publication in the legal profession. Since 1983, Best Lawyers® continues to be regarded, by both professionals and the public, as the definitive guide to legal excellence in the United States.

The Best Lawyers in America®
The 2017 Best Lawyers in America® publication covers the largest and most targeted audience of any legal profession peer-review listing. Excerpts from the Best Lawyers® publication appear in The Washington Post, The Los Angeles Times, New York Magazine, and more than dozens of other regional publications, reaching more than 18 million readers. Best Lawyers selection process is based upon exhaustive and rigorous peer-review surveys. Over four million confidential evaluations by leading legal professionals are considered in the process. The American Lawyer and Corporate Counsel magazine describes The Best Lawyers in America® as “the most respected referral list of attorneys in practice.”

“The fact that a lawyer has been voted by his or her peers into Best Lawyers in a legal practice area does not signify that the lawyer has been certified by a state board of legal specialization in that practice area or specialty. A listing in Best Lawyers does not guarantee a desired legal result.” – Best Lawyers

Posted in General.

Supreme Court Takes On Design Patent Damages

Apple v. Samsung

Apple applied for and received two design patents covering design elements on the front face of the Apple iPhone. Apple then successfully sued Samsung for infringement of these design patents. The jury awarded Apple damages in an amount equal to Samsung’s entire profits on its infringing smartphones. On appeal, the Court of Appeals for the Federal Circuit pointed to 35 U.S.C. 289, which states that the infringer shall be liable to the owner to the extent of his total profit.

The Supreme Court Steps In

Although the United Supreme Court has not ruled on a design patent case in over 120 years, the Supreme Court is taking up this one. The Supreme Court granted Samsung certiorari today, but just on the following issue:

“Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?”

Apple obviously opposes the grant of certiorari in this case.

Article of Manufacture

35 U.S.C. 289 states that a design patent infringer shall be liable for the total profit an infringer makes in association with an “article of manufacture.” Since the Patent Act does not define the term “article of manufacture,” Samsung suggests looking to the first edition of Black’s Law Dictionary, which was published only four years after Congress enacted the relevant statutory text in 1887. At that time, Black’s Law Dictionary defined an “article” as “one of several things presented as connected or forming a whole.” Black’s Law Dictionary 92 (1st ed. 1891). From Samsung’s perspective, it is clear that Congress never intended an infringer disgorge profits unrelated to the invention embodied in the design patent.


Like Samsung, it appears the Supreme Court also has some concerns about how lower courts have been construing “article of manufacture,” in apportioning damages in the context of design patent infringement. Although no one can say for sure, it is not inconceivable that the Supreme Court will reign in the concept of “article of manufacture,” to something more commensurate with Congress’ understanding of what that term meant in a time where the Gramophone, rather than the iPhone, was cutting edge technology. From a legislative history standpoint, a logic standpoint, and an equitable standpoint, the Supreme Court seems poised to limit damages in design patent cases to just those profits attributable to the patented design itself.

Brett Trout

Posted in Patent Law. Tagged with , , .

Not So Fast – “Happy Birthday To You” May Not Be in the Public Domain

The World’s Most popular Song

You all know the tune, so why do you rarely hear the song Happy Birthday To You in movies and on television? The reason is that from 1988 until yesterday Warner/Chappell Music, Inc. had been demanding royalties on the lyrics to the song. 1988 was the year Warner/Chappell purchased purchased Birchtree Ltd., the purported owner of the copyright in the lyrics, for an estimated $25 million, placing an estimated value on the Happy Birthday To You portion of the purchase at a reported $5 million. Since that time, Warner/Chappell has been collecting a reported $2 million per year in royalties on the lyrics. That all ended on September 22, 2015, when a California U.S. District Judge George H. King ruled that Warner/Chappell was not the owner of the copyright in the lyrics to the world’s most popular song.

What About the Music?

Songwriters are entitled to three separate copyrights on their songs. They can obtain a copyright in the music, the lyrics, and the performance. Each of these elements of a song are protected against infringement independently. For many pop songs, the performance copyright can be the most valuable, and therefore the most lucrative to license. Conversely, for “standards” like Happy Birthday To You where the song is more important than the singer, the license fee on the music and lyrics is more valuable than the license fee on any particular performance of the work.

Sometime prior to 1893, Mildred Hill and her sister, Patty Hill, wrote a song called “Good Morning.” While the lyrics of Good Morning were different than the lyrics of Happy Birthday To You, the music was the same. In 1893 the two sisters assigned the rights in Good Morning to Clayton Summy. That same year, Mr. Summy published Good Morning in a songbook entitled Song Stories for the Kindergarten and registered the copyright therein. A third Hill sister, Jessica, filed for renewal of the copyright to Song Stories for the Kindergarten in 1921 as Mildred Hill’s heir. Under the Copyright Act of 1909, songs could receive copyright protection for two consecutive 28-year terms. The copyright in the music therefore expired in 1949 and the music entered into the public domain.

The Lyrics

Although the music to Good Morning/Happy Birthday To You entered into the public domain in 1949, the lyrics did not. The lyrics to Happy Birthday To You did not appear in Song Stories for the Kindergarten. Instead, the lyrics to Happy Birthday To You do not appear to have been published until 1911, where they appeared in a book entitled The Elementary Worker and His Work. The lyrics were published several more times, but none of the publications, including The Elementary Worker and His Work credited any of the Hill sisters with authoring the lyrics. In 1934, Jessica Hill sued the producers of a work entitled As Thousands Cheer. During a deposition in that case, Patty Hill asserted that she had written the lyrics to Happy Birthday To You around the the same time she wrote Good Morning with her sister Mildred.

In 1935, Clayton F. Summy Company registered a copyright E51990. While the E51990 registration related it some way to Happy Birthday To You it is unclear exactly what that copyright registration covered. In 1942, the Hill foundation, an entity formed by Jessica and Patty Hill, sued Clayton F. Summy Company for licensing the Hill’s works without authorization of the Hill sisters. In 1944, the Hill sisters and Clayton F. Summy Company settled the lawsuit by entering into an agreement assigning to Clayton F. Summy Company various copyrights, including copyright E51990. Warner/Chappell claims to be a successor in interest to this assignment, but there is some dispute as to whether Warner/Chappell can establish a clear chain of title in the copyright from Clayton F. Summy Company to itself.

The Lawsuit

Musician Rupa Marya and filmmaker Robert Siegel set out to make a documentary about the the song “Happy Birthday To You.” While making the movie, Warner/Chappell, a music publishing division of the much larger Warner Music Group, demanded a license fee of $1,500 to use the song in the documentary. Rather than paying the fee, the pair filed a lawsuit against Warner Chappell Music in 2013. Marya/Siegel argued that Patty Hill was not the author of the lyrics to Happy Birthday To You. They argued that there were several publications of the lyrics prior to her first assertion of authorship more than forty years after her purported authorship. U.S. District Judge George H. King held that as a reasonable fact finder could find either way on this issue, a directed verdict on the issue of authorship was not warranted. There was also an argument that even if Patty Hill was the author of the lyrics, she she lost the copyright in those lyrics through divestive publication before 1935. When an author creates a work he or she is entitled to common law copyright protection. Back in 1935, when a work was published for the first time, it lost state common law protection. If the owner published the work published work in compliance with the requirements of the 1909 Copyright Act however, the owner could obtain federal protection for the published work. Failure to comply with the 1909 Copyright Act would cause the published work to irrevocably enter the public domain. As with the issue of authorship, the judge held that a directed verdict on the issue of divestive publication was not warranted. The judge held similarly on the issue of whether Mildred or Jessica Hill abandoned their rights in the lyrics prior to the publication and registration of E51990. While these issues may resurface if anyone else were to claim copyright in the lyrics to Happy Birthday To You, these issues would require additional findings of fact before any ruling could be made on them.

The Agreements

The final matter decided by the court was the issue of the transfer of the copyright in the lyrics to Happy Birthday To You. Marya/Siegel argued that Warner/Chappell had no evidence that Summy Co. ever obtained the copyright in the lyrics to Happy Birthday To You from the Hill sisters. Marya/Siegel contended that the evidence showed that the E51990 copyright registration was merely for one of several piano arrangements that Jessica Hill authorized Summy Co. to publish and register. Warner/Chappell argued that Summy Co. obtained the copyright in the lyrics to Happy Birthday To You through one or more of three separate agreements.

The First Agreement, allegedly executed in the 1890s was between Mildred and Patty Hill and Mr. Summy and Summy Co. The court held that this First Agreement did not “contemplate the use of the aforementioned songs in sound motion pictures or dramatic performances or in any other wise or manner except in sheet music form.” Warner/Chappell also argued the Second Agreement, allegedly entered into between Jessica Hill and Summy Co. in 1934 and 1935 transferred rights in the Happy Birthday lyrics to Summy Co. The court however, held the Second Agreement was merely for rights in the piano arrangements of the song. Warner/Chappell argued the Third Agreement entered into in 1944 between Jessica Hill and Summy Co. to resolve the Hill-Summy lawsuit included a transfer of the E51990 copyright registration. Unfortunately for Warner/Chappell, the Third Agreement does not include any discussion of the lyrics to Happy Birthday To You or any suggestion that the Hill sisters transferred their common law rights in the lyrics to Happy Birthday To You to Summy Co. The court went on to find that there is no other testimony or circumstantial evidence tending to show that a transfer of the lyrics occurred. The court noted that Warner/Chappell “cannot even point to evidence showing that the Hill sisters transferred their rights in the lyrics to the Hill Foundation, such that the Hill Foundation could, in turn, legitimately transfer them to Summy Co.”

Who Owns the Copyright in the Lyrics to Happy Birthday to You?

Unfortunately, courts can only decide the specific issues presented to them for adjudication. Once the court decided that there was insufficient evidence to prove Warner/Chappell owned the copyright in the lyrics Happy Birthday To You, the court was not able to resolve the unasked question of who actually does own the copyright in those lyrics. For now, the copyright in the lyrics to Happy Birthday To You appears to be an “Orphan Work.” So while it is clear for the time being that Warner/Chappell does not own the copyright, it is unclear who does. Although highly unlikely, it is possible that a potential owner may surface with a chain of title to the work, at which point that owner may have a cause of action for copyright infringement against anyone using the lyrics to Happy Birthday To You. This “problem” with orphan works is well known and results from the entertainment industry’s relentless push to continually extend the length of copyright protection.

Unlike “patents” which last twenty years from their filing date, copyrights can last well over 100 years. Article I, Section 8, Clause 8 of the United States Constitution secures to authors, for a limited time, the exclusive right to their writings. The First Congress enacted the Copyright Act of 1790, granting American authors the right to print, re-print, or publish their work for a period of fourteen years and to renew that term for another fourteen years. Today, for an individual author, copyright protection extends for the life of the author, plus 70 years. For anonymous works and works for hire, the term is 95 years from publication, or 120 years from creation, whichever comes first. Applying this calculation to the lyrics to Happy Birthday To You, there is still a possibilty of someone claiming copyright in the lyrics until the year 2030, which is 95 years after their first publication by the authors.


While it is clear Warner/Chappell can no longer demand royalties for use of the lyrics to Happy Birthday To You, it is less clear that the lyrics are in the public domain. Given the extensive research done by both parties in the Marya, et al. v. Warner/Chappell Music Inc. et al. case above, it seems unlikely another owner will come out of the woodwork any time soon. Without the ability to definitively confirm the passage of the lyrics into the public domain however, any usage of the lyrics must come with the clear warning of caveat emptor.

Brett Trout

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