Patent Chips — the Blog


S-Signatures

THIS IS AN UPDATE  OF AN EARLIER BLOG POST

For a full explanation of the law regarding S-Signatures at the USPTO read the accompanying comment here.

In short, the USPTO's current and historical interpretation documents clearly show that:

(1)  the slashes are necessary indica that what is between the slashes is intended as a signature, but are not part of the S-signature;

(2)  the slashes may be inserted in the document by the practitioner prior to the insertion of the signature; 

(3) Document signing services may be integrated into a workflow for electronic signature of documents to be submitted to the USPTO.


Electronic Signatures

These days it seems like no one has a working printer, a scanner, or a fax machine.  This is a problem when your client must sign a document to be submitted to the US Patent Office.  The rules of the Patent Office allow for electronic signature, but the format and the way it can be used differ markedly from “e-signatures” for other legal documents.

Examples of proper s-signatures (what the Patent Office calls an e-signature) are here.

Of interest to us is that script fonts may be used in an s-signature (shown in Example 4 here).  Correspondence submitted via EFS (the USPTOs electronic filing system) may signed by a graphic representation of an S-signature (37 CFR § 1.4(d)(3)).

Of note is that script fonts are not permitted for any portion of a document except the S-signature. See 37 CFR 1.52(b)(2)(ii). Presentation of a typed name in a script font without the typed name being placed between the required slashes. however, does not present the proper indicia manifesting an intent to sign and will be treated as an unsigned document.  MPEP 502.02(II), paragraph 4.  The Rules require that the signer’s name be presented in printed or typed form preferably immediately below or adjacent the S-signature, and reasonably specific enough so that the identity of the signer can be readily recognized. 37 CFR § 1.4(d)(2)(iii).

What this all means is that the following would be proper s-signatures for client John Doe:

(a)/John Doe/ John Doe

(b)/John Doe/ 

John Doe

In other words, while the slashes and the part between can be in script font, the adjacent confirmatory portion must be in a non-script font. Of particular importance for practioners, however, the MPEP provides that the "printed or typed name may be inserted before or after the S-signature is applied, and it does not have to be inserted by the S-signer.”  Also, as explained here, the slashes may be inserted by the practitioner into the document BEFORE (not after) the document is signed.  This enables the practioner to create a workflow using a document signing service.

Signing Services

Currently, there are a multiplicity of signing services, and the overall landscape of the field is described at the Wikipedia entry here.  All seem to offer a similar service, differing in cost and interface.  They all, however, require a user to first adopt a signature, in script or a type font, which the user types in.  A graphic representation of that entry is then saved and by simple confirmatory click (on a smartphone, tablet, or computer) it is inserted into the document at pre-designated places.

These services can be integrated into an s-signature workflow as follows.  The practioner can prepare the document with a space left for insertion of the s-signature surrounded by slashes, with pre-placement of the electronic signature to be between the slashes.

Practioner Beware

While the MPEP permits the practioner to prepare the form by typing in the confirmation name, the practrioner must NEVER try to fix a client’s S-signature by insertion of slashes after the fact. 

Summary

The file that a signing service creates can be used as an s-signature for an EFS submission.  The file is a graphic representation of a signature that is permitted to be used with EFS by Rule 1.4(d)(3).  The S-signature must be surrounded by slashes, which may be inserted into the form by the practitioner before signing.

Also, there must be a confirmation typed form of the name adjacent to or beneath the S-signature.  The practitioner may insert that.


When is a photograph published?

One of the most difficult, yet important, issues concerning the copyright status of a photograph concerns whether it has been “published” within the meaning of the Copyright Act.  Whether a work has been published impacts what fees are due to register a copyright, what mandatory deposits are required, what forms must be used to register, the length of the copyright term, whether statutory damages and attorney fees will be available for infringement, and a host of other issues.  In short, it is a critical question.

The only thing we can say for sure is that the common understanding of the word “publish” is NOT the same as the meaning of “publish” as used in the Copyright Act.  Publication is defined in Section 101 of the Act as “the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending.”  It states that “offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication.” On the other hand, “[a] public performance or display of a work does not of itself constitute publication.”  Clear?  I don’t think so.

In December 2014 the Copyright Office released a Compendium of U.S. Copyright Office Practices at its website, available here.  A draft of revisions to the Compedium is here.  The Compendium offers some useful examples of when a work is published, or not.  While not binding upon a court, and not constituting legal advice, these examples (Compendium Chapter 1900) are nevertheless influential:

  • Selling copies of a textbook to a local school board constitutes publication of that work.
  • Selling a product with copyrightable artwork on the packaging and label constitutes publication of that artwork.
  • Mailing copies of a catalog to potential customers constitutes publication of that catalog and any unpublished works revealed in that work.
  • Distributing copies of a leaflet on a street corner constitutes publication of that work.
  • Giving away copies of a photograph without further restriction constitutes publication of that work.
  • Lending, renting, or leasing copies of a work constitutes publication of that work.
  • Distributing copies of a motion picture through a retail service constitutes publication of that work.

On the other hand, putting restrictions on redistribution impacts publication status:

  • Sending copies of a manuscript to prospective publishers in an effort to secure a book contract does not constitute publication (regardless of whether the copies are returned).
  • Distributing copies of a research paper that are intended solely for the use of the participants at a seminar generally does not constitute publication if there was no right of further diffusion
  • Distributing copies of a speech that are intended solely to assist the press in covering that event has been deemed a limited publication under the Copyright Act of 1909 (i.e., not a publication). However, under the current statutory definition, offering to distribute copies to different news outlets for the purpose of further distribution, public performance, or public display could constitute publication.

The original law on publication was written long before the Internet, so there is a physical limiation that is surprising.  Distributing copies or phonorecords by non-physical means does not constitute publication. In particular, the legislative history states that “any form or dissemination in which a material object does not change hands... is not a publication no matter how many people are exposed to the work.” H.R. REP. NO. 94-1476, at 138 (1976).  What that means in the context of a USB drive driven, browser dependent, smartphone infested society is not clear.

Offering the work to some intermediary for further distribution is significant because:

  • Publication occurs when a motion picture is offered to a group of movie theaters or television networks for the purpose of exhibiting or broadcasting that work.
  • Publication occurs when copies of a greeting card are offered to retailers for the purpose of selling those copies to the public.
  • Publication occurs when copies of a photograph are offered to stock photography agencies for the purpose of licensing those copies to newspapers, magazines, and websites.
  • Publication occurs when phonorecords are offered to radio stations for the purpose of broadcasting the songs and sound recordings embodied therein.
  • Publication occurs when copies of a song are offered to a group of band directors for the purpose of performing that work at athletic events.
  • Publication occurs when fabric, carpet, or wallpaper samples are offered to sales representatives for the purpose.

Surprising to many is the exception that public display or performance is not publication:

  • Performing a song at a concert or on television or radio, regardless of the size of the audience.
  • Showing a motion picture in a theater or on television.
  • Performing a play, a pantomime, or a choreographic work in a theater.
  • Delivering a speech, lecture, or sermon at a public event.
  • Displaying a painting in a museum, a gallery, or the lobby of a building (regardless of whether the copyright owner prohibited others from taking photographs or other reproductions of that work).
  • Displaying a fabric design, wallpaper design, or textile design in a store front.

As noted above, the legal principles of publication were developed before the Internet, but in Chapter 1000, section 1008.3 of the Compendium (available here) the Copyright Office is trying to guide development of the law in this area.  Note that these ideas as not legally binding, but they are persuasive.  As a general rule, the Copyright Office does not consider a work to be published if it is merely displayed or performed online, unless the author or copyright owner clearly authorized the reproduction or distribution of that work, or clearly offered to distribute the work to a group of intermediaries for purposes of further distribution, public performance, or public display.  Section 1008.3(B)  For the first time we have a working principle that can guide determination whether an online work has been published.  The Office advises:  “[a] critical element of publication is that the distribution of copies or phonorecords to the public must be authorized by the copyright owner. To be considered published, the copyright owner must expressly or impliedly authorize users to make retainable copies or phonorecords of the work, whether by downloading, printing, or by other means.” Section 1008.3(C)

In other words, the mere fact that a work is disclosed on the internet does not “publish” the work. The end user’s technical capacity to copy, capture, save, or otherwise reproduce a work in and of itself does not imply that the copyright owner authorized the distribution or publication of that work, unless there is an express or implied-in-fact authorization that supports such an inference. So:

  • Posting a sound recording online for authorized downloading by the public may well provide evidence of publication.
  • Making a sound recording available for streaming would not constitute publication, because the work is only intended to be publically performed. 
  • Posting an article on a news website that authorizes users to download articles or email them to a friend may support a finding of publication for that particular article.

By analogy:

  • Posting a picture on a website such as Flickr with the downloading option disabled would not be publication
  • Posting a picture on a website such as Fine Art America that allows it to be downloaded (upon paying a fee) or on Flickr with the downloading option enabled provides evidence of publication.  Note that in either case the presence of a commercial transaction (a fee) is not the deciding factor, rather it is the downloading of the electronic file to be persistently stored at the user’s local memory.

Signifivgantly, the Copyright Office sums up website distribution this way:

"Authors and copyright owners who wish to clarify the publication status of their works should provide express information about what they are, or are not, authorizing others to do with their works. For instance, explicitly authorizing downloading or reproduction of all the content on a website would indicate that the works posted on that site have been published. Implicitly authorizing downloading or transmission of copies of works by offering copies for sale, free downloading, or transmission to others via email also may suggest that works subject to that implicit authorization have been published. By contrast, clearly stating that the content on a particular is available only for public display or public performance with an express prohibition on the reproduction, distribution, or transmission of any of that content would indicate that the works on that site are unpublished.”

Finally, group registration of unpublished photographs is fairly easy, straightforward, and inexpensive.  If a registered unpublished work is subsequently published, the registration is still intact and valid.

Where Does This Lead Us?

As should be evident, the issue of publication is not clear cut, but we can draw the following Best Practice standards.  Prior to registering an unpublished photograph:

1.  If you display your photgraph at a museum, show, fair, etc., don’t post it for sale without further need to contact you and get your authorization.

2.  If your photograph is in a show, don’t let copies be used in marketing, mailers, posters, postcards, etc., for the show.    

3.  Ask the curator of a show, museum, fair, etc., to post a “no photographs" sign.

4.  If you place your photographs online disable the download facility for the image.

5.  Don’t use a shopping cart for direct sales from the website, followed by download of a file. 

And, above all:

Register the copyright in the unpuiblished photograph so you don’t need to worry about these Best Practices.


Record Trademarks With Customs

U.S. Customs & Border Protection (CBP), a bureau of the Department of Homeland Security, maintains a trademark recordation system for marks registered at the United States Patent and Trademark Office. Parties who register their marks on the Principal Register may record these marks with CBP, to assist CBP in its efforts to prevent the importation of goods that infringe registered marks. The recordation database includes information regarding all recorded marks, including images of these marks. CBP officers monitor imports to prevent the importation of goods bearing infringing marks, and can access the recordation database at each of the 317 ports of entry.

CBP maintains the Intellectual Property Rights e-Recordation (IPRR) system. This system allows right holders to electronically file IPR recordation applications, thus significantly reducing the amount of time normally required to process paper applications.

Information about how to obtain a recordation, and about CBP's Intellectual Property Rights border enforcement program is here.  Or, go directly to the CBP recordation page.


An Open Letter

An Open Letter to All Department of Justice Lawyers

Like you, I was a Department of Justice lawyer.  I also served as a Special Assistant United States Attorney.  I understand the demands and pressure of the job, and the pride you feel in representing the United States.  My question is:

Why are you still working there?

No matter what state you come from, you are bound by an ethical rule of professional conduct that requires that you exercise independent professional judgment.  In other words, you are not allowed to say “Because my client (or employer) told me to do this.”  For example, California Rule of Professional Conduct 3-200(C) permits you to resign if your client:

(b) seeks to pursue an illegal course of conduct, or

(c) insists that the member pursue a course of conduct that is illegal .  .  .  .

(e) insists, in a matter not pending before a tribunal, that the member engage in conduct that is contrary to the judgment and advice of the member

The ABA Model Rules of Professional Conduct provides in Rule 3.1 that:

“A lawyer shall not bring or defend a proceeding, or assert or controvert an issue therein, unless there is a basis in law and fact for doing so that is not frivolous, which includes a good faith argument for an extension, modification or reversal of existing law.”

On Friday, January 27, 2017, Donald Trump signed an Executive Order regarding immigrants and refugees from certain Muslim-majority countries.  The Executive Order was immediately challenged in a number of jurisdictions.  On Saturday, January 28, United States District Judge Ann Donnelly of the Eastern District of New York enjoined certain provisions of the Executive Order after finding that the petitioners had a strong likelihood of success in establishing that the Order violated the Due Process and Equal Protection guarantees of the United States Constitution.  On Monday, January 30, 2017, Donald Trump fired Sally Yates, the Acting Attorney General, after she stated publically that she was not convinced that the Executive Order was lawful.

From this day forward if you stay with the Department of Justice you own that Executive Order.  

A copy of this letter is available here.

Should Attorneys encrypt their mail?

Over the next few weeks I am going to address technology andf attorney-client communications.  We will be addressing the following use cases; which are permitted, which are not, and what should attorneys do in this fast changing environment?.

1.  Attorney takes his laptop computer to the local coffee shop and accesses a public wireless Internet connection to conduct legal research and sends an email to his client with the result. 

2.  Attorney takes her laptop computer home to conduct research and emails Client from her personal wireless system.

3.  Attorney uses postal or courier services, telephone lines, or other modes of communication beyond face-to-face meetings, in order to effectively carry out the representation.

4.  Attorney uses a research service operated by a competitor of the client.

5.  Attorney uses a research service operated by a department of the United States Government.

6.  Attorney stores client secrets on a firm server that is accessible from the Internet.

7.  Attorney stores client secrets on a third party server that is accessible only from the Internet, e.g., “in the cloud.”

8.  Attorney uses a third party data processing center without the client’s consent for bookkeeping, billing, accounting and statistical purposes; but such information does not include client secrets and confidences.  

9.  Attorney uses a third party data processing center without the client’s consent for bookkeeping, billing, accounting and statistical purposes; and such information includes client secrets and confidences.  

10.  Attorney leaves mail unattended in an open basket outside her office door for pick up by the postal service.

11.  Attorney does not encrypt his email to clients.

12.  Attorney does not password protect the documents she prepares for clients.

13.  Attorney does not activate password protection features on her mobile devices, such as laptops and PDAs, on which she receives emails from clients.

14.  Attorney uses a third party remote service provider to keep his computer operational, which permits the third party to remotely connect to his computer for service.  

15.  Attorney does not use a firewall on his network or drive encryption on his computer or office server.

16.  Attorney does not use a screen shade or polarizer which would prevent the person sitting in the adjacent seat on an airplane to see the computer screen.

17.  Attorney takes and receives cell phone calls with clients in public places.

18.  Attorney does not strip documents of confidential metadata before transmitting them to either opposing counsel or governmental agencies.

19.  Attorney does not provide any training or instructions to his support personnel regarding client confidentiality.

20.  Attorney does not maintain a separate Wi-Fi network for guests at the law firm.

21.  Attorney does not maintain a strong password for access to a law firm’s Wi-Fi network.

22.  Should attorney have a standard client disclosure regarding electronic communication?


Public-Keys

What is public-key cryptography, and why is this important for patents?  If you need security for transmisison or storage of your data, then you need to know about some simple concepts.  Let’s start with some analogies.

Many homes have a mail slot in the front door.  Anyone who knows the street address of the home (which is published on the Internet and in the Yellow pages) can drop a letter through the mail slot.  Only someone who has a key to the home, however, can read the mail.  The home key is analogous to a “private key” and the street address is analogous to a “public key.”

In cryptography a “key” can be a short password “1234” for example, or a long arbitrary phrase “Peter Piper picked a peck of pickle peppers” as another example.  There are many programs (some are OpenSource such as GPGTools for Mac and GPG4Win for PC ) that will create “key-pairs” based upon your choice of a key.  For example, suppose you decide on a long key phrase “I’m a Yankee-Doodle Dandy” and use a key generator program to create a corresponding “public key”.  The public key itself will look like gibberish (perhaps something like "Wy12ReFTphenFgmSk”) but it will be mathematically infeasible (based on current technology) to find out what your private key is from the public key.  Even hackers for the NSA or FBI currently wouldn’t be able to do it.  So, you had best remember your long pass phrase, which is now your “private key."

Now comes the cool part.  The public key is posted to a very public “key server” which is hosted on the Internet.  MIT operates the biggest one, but there are several others.  Anyone can look up your public key.  Anyone.  With it they cannot figure out your private key, but they can use it to encrypt a message to you, which might then be sent to you (perhaps by email).  Since it is encrypted, no-one can intercept and open the message.  When you get it, however, using your private key (you do remember your long key phrase, right?) you can open and read the message.

So, once you set this all up, anyone can send you secret messages.  (”Meet me at midnight; Your Secret Admirer”)  And, you didn’t have to exhange secret keys!

But wait, suppose that the message from John says “My answer is Yes.”  How do you know that John sent the message?  Or if you are an attorney you will like this one; the message says “We accept your offer” but the opposiing counsel now says “we didn’t send that; anyone could have gotten your public key from MIT.”  Ah-ha! There is a variant of public-key cyptography called "digital signature" which almost guarantees that a signature is authentic, and provides non-repudiation.

When Bob sends Alice a message he can “sign” the message using his private key.  The actual private key doesn’t travel with the message, but using Bob's public key (which Alice can get from MIT, remember?) she can confirm that Bob sent the message.  Or Alice’s attorney can determine that Bob’s attorney is probably lying.

Good programs will integrate with your mail client so that you can sign outgoing emails and be advised whether incoming emails are signed.  Integrated programs should also be able to handle encryption and decryption for you.

Of course, if Alice gave away her private key then she had better revoke her public key and make a new one, or some mischief can result.

We are almost finished.  Alice and Bob might decide to insist that all signed communications come with a certificate from a Certificate Authority attesting that the public key is still valid.  There are many Certificate Authorities; some charge, some don’t.  Some companies issue their own certificates.  (In all cases, you will have to let your operating system know which certificates you trust)  And, there are many other reasons to use a certificate.  But, now you have an overall idea of public-key cryptography.

In case you were wondering, yes, if everyone used digital signatures THERE WOULD BE NO SPAM.  Just think about that.

Renewing Your Trademark

You should know this, but many trademark owners forget or never understood this in the first place:  the trademark has to be used; it will last forever only if you use it and act to renew it and keep it alive.

There are three Sections of the trademark law to remember; unfortunately this is harder than it needs to be:  

What to File

Section 8:    Prove Use.  This arises from 15 U.S.C. §1058

Section 9:    Renew.  This arises from 15 U.S.C. §1059

Section 15:  Make the mark incontestible.  This is not needed to keep the mark alive, but it is to your advantage to do so.  It arises from 15 U.S.C. §1065

When to File

A Section 8 affidavit must be filed between the 5th and 6th year after the registration date, between the 9th and 10th year after the registration date, AND between every successive 9th and 10th year after the registration date (e.g., between 19th and 20th; 29th and 30th, etc)

A Section 9 renewal application must be filed between the 9th and 10th year after the registration date, AND between every successive 9th and 10th year after the registration date (e.g., between 19th and 20th; 29th and 30th, etc)

Because a Section 8 adffidavit and Section 9 renewal are so often filed together, there is a combined form available.

Section 15 makes certains parts of the registration incontestable, and can be filed whenever there has been 5 years of continuous use.  Although it is not free, it is to your advantage to file it.

Because a Section 8 adffidavit and Section 15 affidavit are so often filed together, there is a combined form available.

The Sections 8 and 9 dates have a 6 month grace period.  For a fee you can file late.  Miss that date, however, and you may find that the mark has been canceled.

What Does this Cost?

As of March 2016, the USPTO fee is Section 8 - $100; Section 15 - $200; Section 9 - $300.  For a combined form add the fees (e.g., 8&15 - $300).  The late fee is $100.  Remember that your lawyer does not work for free, so that gets added to the bill.


Provisional Patent Applications

Now that the America Invents Act (“AIA”) has changed everything, it is important to be the first to file for an invention.  Quite simply, the first to file gets the patent (assuming that there is a patentable invention), and a provisional could be a good way to lock in an early date.  It is cheaper to prepare (there are no claims), and cheaper to file (it is not examined in the usual case).  What is not to like?

I say “could be” because like a will you don’t know whether you have a good one until it is needed.  In other words, a provisional is only good to lock in a date if it is well prepared.  If a provisional doesn’t have adequate disclosure, then it won’t work.  If there is new disclosure in the non-provisional, and claims which depend on the new disclosure, they might not get the benefit of the provisional.  Also, a non-provisional must be filed within a year (along with any foreign applications or PCT application) or they can’t claim priority from the provisional (in fact, under some circumstances a PCT might not be able to claim any priority).

Let’s take a look how this might all play out in an example.  Abel files a provisional on January 1, 2015.  Baker independently invents the same thing, and files a non-provisional on September 1, 2015.  Able then files a non-provisonal on December 31, 2015, and claims priority to his earlier provisional.

In this case the examiner will pull the provisional and read it.   If she thinks that the provisional does not support the claims being made in the non-provisonal, then Baker might be considered the first to file (that will depend on whats in his application), and get the patent (if there is one to be had).  But it doesnt stop there.  The decision by the examiner is not binding upon a court should there be subsequent infringement litigation.

So, you can see why it is important to have a provisional that is well drafted, and the attorney drafting the non-provisonal will want to craft at least one of the claims so as to clearly take advantage of the provisional disclosure.

It is good to keep in mind what you need, and don’t need.  You don’t need a working model, and so long as the disclosure is sufficient to teach a person of ordinary skill in the art how to make and use the invention, it should be enough.  In other words, if an engineer is only going to make a prototype, or a working model, then evaluate whether you should file a provisional without delay.  Your best advice is to consult with a patent attorney on this question. 





Non Disclosure Agreement

I am often asked whether a Non Disclosure Agreement (“NDA”) makes sense for an inventor.  The answer is of course, but there are some important issues to know about.

Drafting, advising and editing an NDA is practicing law.  You can’t ask an attorney not admitted in your state to do this, nor can a patent agent do this.  You need an attorney.  You can do it yourself, but you can also do brain surgery on yourself.  Also, getting a form off the Internet, editing it yourself, and asking a lawyer to “check it over” won’t work.

What Is An NDA?

An NDA is just what its name implies:  an agreement that the recipient of information will not disclose it.  It is not self-enforcing, however, so it is only as reliable as (1) the parties entering into the agreement, (2) the attorney who drafted it, (3) the clarity of what is covered, and (4) the court that will be asked to enforce it.

Are There Common Terms in an NDA?

Read enough NDAs and you will start to see a theme.  The recipient is under an obligation not to disclose certain “trade secrets” but what if the information gets on the Internet through no fault of the recipient?  What if the recipient already knew the information?  For that reason, a well drafted NDA will probably contain “exceptions.”

What Does it Cover?

This is a hard issue.  Sometimes it only covers documents that are marked “Confidential.”  So, a well drafted NDA will anticipate how information will be disclosed, and how closely guarded the information must remain.

Choice of Law

This is an issue that most people miss.  You are in California, but you ask a lawyer in New York to draft the NDA, and she (or he) puts in a clause choosing New York law for the agreement.  Then you have someone in Arizona sign it, and ask a judge in Nevada to enforce it.  What happens?  Anybody’s guess.  Just pick a good lawer to draft it, and listen to the advice you get.

What Could Go Wrong?

You have a startup, and you have a great idea for a product.  But you don’t know how to build it (or code the software) and you decide to hire an engineer to help. Lots of things could go wrong.  What if the engineer has to invent something to get the job done?  Then the engineer might be a co-inventor and needs to be listed as such on the patent application.  So, maybe you need an assignment, and not just an NDA.  Maybe the engineer has already written the code needed.  Do you get a license, and if so is it exclusive or non-exclusive?  Not many engineers want to sell their reusable code.  Do you add a clause assigning future inventions by the engineer?  Is that even enforceable in your state?  These are all legal issues, and you will need a patent attorney to sort it out and help you along the way.

Has the Law Changed? 

Yes.  As of 2013 and the AIA, the US is a first to file jurisdiction  Sort of.  The old “first to invent” inquiry was for the old, or pre-AIA law.  So, your best practice is to get an applicaiotn on file, or at least a provisional application, as soon as possible.  See here for information on provisionals.


`© Robert Rose 2015