By Ryan Jones, attorney, Fay Sharpe LLP It’s just happened for you. That moment of inspiration. You’ve just come up with a brilliant idea, and now you want to get patent protection for it. Current U.S. patent law allows you to file a provisional (aka “temporary”) application with the U.S. Patent Office that describes the basics of your invention. You then have one year from that filing date to refine the idea and file a full patent application while claiming the priority date of the provisional application. Provisional applications work similarly to line stamps at an amusement park. You get a stamp to stand in line for a ride at a certain time (such as noon), then at your stamped time, you get to cut in front of everyone in line with a time stamp that is later than yours. Similarly, your provisional patent application allows you to cut in front of...

By Mark Einsiedel, attorney, Fay Sharpe LLP While they may have similar meanings to a layperson, the terms “repair” and “reconstruction” have been used by the courts to distinguish between those activities that are permissible and those that are prohibited with regard to a patented article once it has been placed into commerce by the patentee. Courts distinguish between the right to reproduce a substantially new article from the component parts of the patented article (akin to prohibited “reconstruction”) and the right to “preserve the useful life of the original [patented] article” (akin to “repair). Id. “Repair” of a patented article is a complete defense to a claim of patent infringement. (See, e.g. Jazz Photo Corp v. Int’l Trade Comm’n, 264 F.3d 1094, 1101 (Fed. Cir. 2001)). That is, the purchaser of a patented article “has the rights of any owner of personal property, including the right to use it, repair it,...

By Rachel A. Smoot, attorney, Fay Sharpe LLP In a sharply divided opinion issued on Dec. 22, 2015, the U.S. Court of Appeals for the Federal Circuit redefined the Lanham Act. Enacted in 1946, the Lanham Act provides a national system for registering and protecting trademarks used in commerce. However, 70 years later, the Federal Circuit has deemed it necessary to give the statute a facelift, rendering a signification portion of the act’s Section 2(a) unconstitutional. Section 2(a) includes a bar on the registration of a mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.” Over the past seven decades, the U.S. Patent and Trademark Office (USPTO) has used the subjective language “may disparage” to reject any trademark application that an examiner finds disparaging...

In professional baseball, when a player is traded, his former team often changes the hand signals it uses to call pitches and direct base runners, assuming the player will share everything he knows with his new employer. In corporate America, however, simply exchanging old data for new isn’t an effective means to protect intellectual property. Businesses need multiple forms of intellectual property protection to safeguard their patentable inventions, customer databases, digital coding, trade secrets and other intangible knowledge from competitors or other groups, and employee noncompete agreements can be part of that strategy. Consider these three factors to determine if a noncompete is right for your organization. Make sure there’s a real need A noncompete agreement is a legal document signed by key personnel, usually as a term of employment. It’s generally used to constrain those with inside knowledge from working for a competitor under stated conditions after leaving employment with your company. Some...

By William J. Samore, attorney, Fay Sharpe LLP How does a company obtain the patent rights to something invented by an employee? The current rule, decided in Filmtec Corp., v. Allied-signal Inc., 939 F.2d 1568 (Fed. Cir. 1991), is that when an employment contract creates a present grant of rights in future inventions and related patent rights, the title to the patent transfers to the employer upon creation of the invention. In other words, when employment contract language uses the present tense (e.g., I “herby assign” my rights), title transfers automatically upon creation of the invention. On the other hand, if the employment contract uses the future tense (e.g., I “will assign” my rights), the company may get only equitable rights (not legal title), and, in this situation, if the employee refuses to assign rights to the company, it may have to obtain a court order forcing the employee to transfer rights. This...

Fay Sharpe LLP is pleased to announce that it has achieved a national Top 10 ranking for patent allowance rates as determined by Juristat using data from the U.S. Patent and Trademark Office’s Patent Technology Center 2100. With an allowance rate of 90.17 percent, Fay Sharpe ranked seventh in the nation for 2015, well above TC 2100’s overall allowance rate of 66.2 percent, and well above the average of 71.3 percent across all USPTO patent examining centers. TC 2100 examines computer-related patent applications for the USPTO, including applications related to data processing, information security and artificial intelligence. All 10 firms honored as TC 2100 Top 10 were selected from IP Today’s top firms for 2015 and have at least 100 disposed patent applications in TC 2100. “For an intellectual property law firm such as ours, this is a tremendous achievement,” says Steven Haas, Fay Sharpe Partner and Management Committee member. “It’s proof that...

By Alan C. Brandt, attorney, Fay Sharpe LLP Copyright audits determine if the copyright assets of a party (e.g., an author or a copyright claimant) are suitably protected in a manner that is consistent with their value to the party. A more comprehensive audit could also determine whether the copyrights are being infringed and, if so, determine if they are being enforced. The audit might also investigate one’s own use of copyrighted materials to confirm compliance with applicable laws, regulations, license agreements and contracts. A copyright is an exclusive legal right that originates in an author when an original expression is fixed in some physical form. The original expression is considered a work of authorship after it is fixed in some tangible medium. Works that qualify for copyright protection include literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial, graphic and sculptural works, motion pictures and other audiovisual works, sound...

  By Rachel Smoot, attorney, and Diane Jacquinot, legal and research services manager, Fay Sharpe LLP There was a time when you only found counterfeit goods at flea markets and on the sidewalks of metropolitan cities. However, the Internet has allowed counterfeit products to easily make their way into our homes and businesses. For consumers, the increasing number of counterfeit goods purchased on the Internet is both intentional and accidental. Online consumers can quickly find cheap imitations and fake versions of name-brand goods, making it easier for them to knowingly buy counterfeit products. But because online shoppers cannot inspect products firsthand, they may have a harder time determining whether an item is counterfeit or name brand before they buy. The explosion of counterfeiting over the Internet has led to massive financial losses for many brands and corporations. However, cheap forgeries are not limited to high-dollar and luxury items. Counterfeiters have copied and sold watches,...

By Philip J. Moy Jr., partner, Fay Sharpe LLP There are a number of universal truths that we all recognize. One is that the sun rises in the east and sets in the west. Another is that the Cubs will not win the World Series this year. A third is that intellectual property (IP) litigation — especially patent litigation — is very expensive. In certain industries, paying lawyers to litigate IP disputes appears to be a recognized cost of doing business. Even among the Apples and Samsungs of the world, however, there is a compelling need to avoid IP litigation to the extent possible. So, how does a company reduce its chances of being a named party in an IP lawsuit? Patents Perhaps the most important step a company can take is to invest in understanding its industry and keeping track of the IP of its competitors. For example, a patent is infringed by...

Fay Sharpe will be inducted into the 100 Year Club of the Western Reserve Historical Society on Dec. 7, 2015. The 100 Year Club was created in 1953 to honor an elite group of the region’s corporations and institutions that have been in continuous existence for at least 100 years. The club recognizes and celebrates the longstanding entrepreneurial spirit embodied by Northeast Ohio organizations. There are currently 197 members. “We are honored to be joining the ranks of such an accomplished group of companies,” says Doug Graham, director of administration for Fay Sharpe. “We look forward to another 100 years of serving our clients and the region.” Fay Sharpe client Cleveland Play House is also an inductee. Proceeds from the December event support youth entrepreneurship education. For more information on the club and the event, visit https://www.wrhs.org/get-involved/100-year-club....