| PIPLA Home Page
| Comments ]
Please remember that Intellectual Property refers to anything considered creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them. There are four ways to protect intellectual property - patents, trademarks, copyrights or trade secrets. Questions concerning real estate or other non-intellectual property legal issues are not within the scope of this web site. In addition, it is beyond our organization's charter to provide legal advice. Questions asking for legal advice will not be answered.
If you are an intellectual property law professional and would like to respond to any of the questions posted here, we invite you to do so and we will post your reply.
March 31, 2006. Cyril Velikanov I am neither professional nor full novice in writing patent applications. Presently I am finishing preparation of a US patent application. I have the following question for which I couldn't find any answer neither on USPTO official site nor in the David Pressman's "Patent it Yourself" handbook. Context: Claim 1 claims "A" in a rather broad manner. Claim 2 claims "A/r" in a more restrictive way, and is put as a "backup" protection in case. Claim 1 were declared invalid by USPTO or by court decision. There are further Claims 3, 4, 5, all made dependent on Claim 1 and claiming, respectively, "A+B", "A+C", "A+D". By their nature they could also refer to Claim 2, thus claiming "A/r + B" etc. However, multiple dependence isn't acclaimed by USPTO. Question: If Claim 1 is contested, while the more restrictive Claim 2 remains in force, may I still enjoy validity of Claims 3, 4 and 5 as implicitly referring now to Claim 2 instead of Claim 1? More generally, in case some Claim X is "dropped", have I right to indicate explicitly, or to consider implicitly, that claims referring to Claim X are all "redirected" to refer to some other claim (of my choice, or according to some formal rules)? While the structure of dependent claims is relatively well explained elsewhere, it is not explained what really happens with it when it is "attacked" and "partially destroyed". Thank you in advance.
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE
Dear Mr. Velikanov: Thank you for submitting your question to PIPLA. It is beyond our organization's charter to provide legal advice. You might find it helpful to peruse the links on the PIPLA web site to find a firm that could provide the legal advice that you seek. You can obtain more information at: http://www.uspto.gov/ Best regards on behalf of PIPLA, Don Kinsley
October 25, 2005. Cali Soberanes (Musician) Hi, my question is related to trademarking my band's name. I would like to trademark my band's name "Felonious Groove Foundation" which has been in existence since 1999. I found another band in California has the name "Felonious: One love hip-hop" trademarked since 2002. would there be a conflict if I filed for a trademark of my band's name. thanks
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE
Dear Mr. Soberanes: Thank you for submitting your question to PIPLA. It is beyond our organization's charter to provide legal advice. You might find it helpful to peruse the links on the PIPLA web site to find a firm that could provide the legal advice that you seek. You can obtain more information at: http://www.uspto.gov/ Best regards on behalf of PIPLA, Don Kinsley
September 19, 2005. Donald Loftin (IT Manager) I am working on a research paper on the process of inventors as part of my requirements for a Master's degree in System Engineering. I am looking for an opportunity to interview inventors with one or more patents regarding their inventive process and to measure their problem solving style using Kirton's Adaption-Innovation theory. Is there some way I can submit a letter of introduction to inventors in the Philadelphia area or someway that I can contact them directly?
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE
Dear Mr. Loftin: Thank you for submitting your question to PIPLA. The names and some addresses of inventors who are issued patents are public information and available at the U.S. Patent and Trademark Office web site http://www.uspto.gov/. If you go to: http://patft.uspto.gov/netahtml/search-adv.htm and type in "ic/philadelphia" as a search query, it will produce a list of patents issued to inventors with Philadelphia addresses. Best regards on behalf of PIPLA, Don Kinsley
July 11, 2005. Scott (Writer) I signed a contract (7 years) for a Publishing company to publish my novel. I recieved no advance and feel I could have done much better through an agent. Can I bow out of the contract (for medical illness), I signed this contract 2 weeks ago when i was exhausted and NOT thinking. I belive the literary work is worth much more as it was THE BOOK which ended the Cold War.!
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE
Dear Mr. Scott: Thank you for submitting your question to PIPLA. It is beyond our organization's charter to provide legal advice. You might find it helpful to peruse the links on the PIPLA web site to find a firm that could provide the legal advice that you seek. You can obtain more information at: http://www.uspto.gov/ Best regards on behalf of PIPLA, Don Kinsley
July 19, 2004. Joel Goslar (Student) I have an intellectual property that I have trademarked and copyrighted already. I have managed to pique interest with Venture capitalist and a business incubator with a general proposal. Being a student at JHU and wanting to protect my intellectual property that I believe is potentially very valuable I have decided to ask the interested parties if they will sign a non-disclosure agreement. They have agreed and that is where I am now having problems. Should I include a non-compete section in the agreement? In addition, how much would it cost to make a tight NDA considering that I have found a sample agreement, which would of course have to be, reviewed by a lawyer? Would a general business lawyer do or should I try to get an IP lawyer to reviews this and draw up a tight NDA. I have limited resources but I would like to get the best help that I can with this. Thanks and I hope to hear some responses soon.
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE
Dear Mr. Goslar: Thank you for submitting your question to PIPLA. It is beyond our organization's charter to provide legal advice. You might find it helpful to peruse the links on the PIPLA web site to find a firm that could provide the legal advice that you seek. You can obtain more information at: http://www.uspto.gov/ Best regards on behalf of PIPLA, Don Kinsley
July 07, 2004. Benjamin Ferrara (Undergraduate Student-Biomedical Engineering) Hello, I am a biomedical-chemical engineering student. Recently, my college advisor was excited to tell me about the amazing opportunities for me and other biomedical engineers in the patent law industry. He quoted seemingly high salaries (six figures and more) for patent lawyers with biomedical degree right out of law school. I am deciding between med school and law school. I am interested in law, but am seeking any and all information possible. I would appreciate any help that could be offered on the specific sector of biomedical engineers in patent law. Can my advisor be right about the degree of demand and high salary?
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE
Dear Mr. Ferrara: Thank you for your question to PIPLA. The members of PIPLA would generally concur that patent law is a worthwhile and rewarding field. We do not, however, have any special insight into what the market will be like in the future, although the market for patent lawyers in the past has been good, as well as lucrative. Patent law is generally considered to be an area that is more resistant to economic downturns than many other specialties. Becoming a patent agent is another option. A patent agent is not an attorney (that is, is not licensed by the bar of any state) and is not required to have any law school, but rather has passed the patent bar exam administered by the USPTO. To sit for the exam requires a particular educational background, which you can find at www.uspto.gov. Becoming a patent agent would enable you to practice before the patent office, and would likely enable you to begin a meaningful career in patent law without spending time in law school. Becoming a patent agent also might be something for you to consider even if you do attend law school. Hope that the information is helpful, and good luck with your decision. Best regards on behalf of PIPLA, Don Kinsley
July 05, 2004. Maureen Sharrock (Buyer) I am interested in registering an item (not patent). Also how do I search within this site to see if such an item is not already produced. I have never done this before so I am looking for some guidance on doing this correctly.
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE
Dear Ms. Sharrock: Thank you for submitting your question to PIPLA. It is beyond our organization's charter to provide legal advice. You might find it helpful to peruse the links on the PIPLA web site to find a firm that could provide the legal advice that you seek. You can obtain more information at: http://www.uspto.gov/ Best regards on behalf of PIPLA, Don Kinsley
June 22, 2004. Nicole Corley (baby-sitter) I have so many questions about this profession. I am going into the 10th grade and I would like to become a patent attorney when I graduate. I would like to know exactly what does a patent attorney does, just what the patent litigation attorney, that is the type that I am the most interested in. I know that I must have at least 3 years of law and I must have a undergraduate degree, my speciality, what types of other subjects can I get a degree in, I know biology and chemistry are some but what other? About how long does it take to become a patent attorney? Thank you soo much all of your time and this is a huge help on me...I want the perfect career and I know that becoming an attorney is definitly it but I am still a little unsure about what kind of attorney. Thank You, Nikki
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE
Dear Ms. Corley: Thank you for your inquiry about becoming a patent attorney. Patents are one aspect of Intellectual Property (IP) Law that encompasses patents, trademarks, copyrights, licensing, trade secrets, and other aspects of intellectual property. IP attorneys can be involved in prosecuting or litigating patents, preparing agreements, prosecuting trademarks, protecting copyrights, advising clients on ways to protect their intellectual property, among many other aspects of providing legal services to clients. As far as what other types of technical background would allow someone to become a patent attrorney, there are many and they are listed at the USPTO web site. Generally, patent attorneys complete a four-year undergraduate degree in a technical area, and then complete law school (generally three years). Many also have experience working and/or a post-graduate studies or a doctorate degree in their field of expertise. Becoming a patent agent is another option. A patent agent is not an attorney (that is, is not licensed by the bar of any state) and is not required to have any law school, but rather has passed the patent bar exam administered by the USPTO. To sit for the exam requires a particular educational background, which you can find at http://www.uspto.gov/. Becoming a patent agent would enable you to practice before the patent office, and would likely enable you to begin a meaningful career in patent law without spending time in law school. We hope this is helpful to you in making your decision. Best regards on behalf of PIPLA, Don Kinsley
March 12, 2004. Daniel B. Garrie (ClickIT Solutions) What sort of time frame would one expect in filing for a new patent regarding a computer processor chip?
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE
Dear Mr. Garrie: The amount of time from filing to issuance of a patent varies and you can obtain some information on the factors affecting the time for patent prosecution at http://www.uspto.gov/web/offices/pac/doc/general/index.html#patterm. Best regards on behalf of PIPLA, Don Kinsley
March 2, 2004. Gergana Staykova Georgieva What are the general differences between Bulgarian Intellectual Property Law and American Intellectual Property Law. What problems Bulgaria hasn't solved in the field of Intellectual Property Law?
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE
Dear Ms. Georgieva: Thank you for submitting your question to PIPLA. It is beyond our organization's charter to provide legal advice. You might find it helpful to peruse the links on the PIPLA web site to find a firm that could provide the legal advice that you seek. You can obtain more information at: http://www.uspto.gov/web/offices/pac/doc/general/index.html#examination Best regards on behalf of PIPLA, Don Kinsley
February 25, 2004. Denise Webster (Doctor of Pharmacy student) I have a question regarding becoming a patent agent. I am currently a Pharmacy student with prospective plans for becoming a patent attorney. I will be taking this upcoming year to apply to law schools for fall of 2005. My interests, of course, fall within intellectual property. I would like the chance to experience intellectual property prior to law school and was wondering if it would be in my best interest to become a certified patent agent? If so, how do I go about taking a prep course for the exam? I will most likely be taking an advanced chemistry course to better my chem background, as per advised by a current PharmD turned Patent attorney. Thank you for any advise and direction you can give.
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE Dear Ms. Webster: Only you can determine whether becoming a patent agent is in your best interests. If you can obtain a position and gain experience as a patent agent, that experience would be helpful in obtaining a position after law school as a patent attorney. A patent agent is not an attorney (that is, is not licensed by the bar of any state) and is not required to have any law school, but rather has passed the patent bar exam administered by the USPTO. To sit for the exam requires a particular educational background, which you can find at www.uspto.gov. Becoming a patent agent would enable you to practice before the patent office, and would likely enable you to begin a meaningful career in patent law without spending time in law school. Becoming a patent agent also might be something for you to consider even if you do attend law school. As far as what prep course to take for the patent bar, there are a number available and there are chat groups on the Internet that allow those who have taken prep courses to share their thoughts. You can obtain more information about the exam at: http://www.uspto.gov/web/offices/dcom/olia/oed/examregist.htm I hope that the information is helpful, and good luck with your decision. Best regards on behalf of PIPLA, Don Kinsley, Registered Patent Attorney
December 20, 2003. Mary Marky (ELEGANCE IN A GLASS/Loganholme, Queensland, Australia) Management of ELEGANCE IN A GLASS has successfully attained intellectual property rights covering both the company, company name and its product line. We now wish to earn royalty income from intellectual property rights to proceed from concept to commercialisation. Would you please advise to the steps necessary to license our IP rights? Thanks.
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE Dear Ms. Marky: Thank you for submitting your question to PIPLA. It is beyond our organization's charter to provide legal advice. You might find it helpful to peruse the links on the PIPLA web site to find a firm that could provide the legal advice that you seek. Best regards on behalf of PIPLA, Don Kinsley
October 24, 2003. Gloria Bobbie (Capella University/SUNY) As a consultant on a Federal Star School project, I conducted research into a specific topic. This project was a pilot project on which I am basing further research that will become part of my doctoral dissertation. I also am an adjunct at a university (not the university where I am completing my doctorate). Because my project is related to education, I thought that it would be a good opportunity for students in the school of education to gain experience that they would not normally receive in their school program and I approached the school to invite its participation in my project. Suddenly I find a department in the school usurping the project. I received a copy of a letter that they scripted to send to the list of local schools (which I provided as target participants) that all but excludes me from the project. Their reasoning is that "I don't work as full time faculty in the school so I can't speak to possible participants about the project". I feel that I have intellectual property rights over the project because it is a continuation of prior documented research. The prior documented research forms the basis for this project and future research that will be used in my doctoral dissertation which is in my life work. Since this is my life work and I plan to publish the findings of this ongoing research, I feel that my future work is being jeopardized by the confiscation of my project. Am I correct that I have intellectual property rights over the project? I am hoping to work this out without legal hassles, but am a bit uncertain about the way the intellectual property rights laws are written. SUNY does recognize intellectual property rights. Thank you so much.
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE Dear Ms. Bobbie: Thank you for submitting your question to PIPLA. It is beyond our organization's charter to provide legal advice. You might find it helpful to peruse the links on the PIPLA web site to find a firm that could provide the legal advice that you seek. Best regards on behalf of PIPLA, Don Kinsley
October 14, 2003. Kevin Fletcher My wife and I plan to write and seek publishing for a book based on Interviews with Reality TV Show contestants about there experiences during and after their Reality TV shows (we are conducting the interviews). Would publication of said book be "fair use" of the copyrighted programs of the Reality TV Shows themselves .e. Survivor, Big Brother, Fear Factor? Cold they claim that such a book would be a "derivative work"?
Reply from Donald R. Kinsley, Registered Patent Attorney, Marks, O'Neill, O'Brien & Courtney, Wilmington, DE Dear Mr. Fletcher: Thank you for submitting your question to PIPLA. It is beyond our organization's charter to provide legal advice. You might find it helpful to peruse the links on the PIPLA web site to find a firm that could provide the legal advice that you seek. Best regards on behalf of PIPLA, Don Kinsley
September 18, 2003. NSReddy I am a postdoc working in the field of cancer drug discovery. Just I have an idea to synthesize a novel class of drug molecules (which are never synthesized/patented), which I am thinking to be an active class based on literature. Can I file a patent on that class of molecules? If yes, What is the procedure?
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Dr. Reddy: Thank you for your question to PIPLA. Although it is outside the scope of our organization to provide legal advice, and we suggest you put your questions to legal counsel specializing in patent law, we trust that a general statement of some aspects of patent law may be helpful. Patentable subject matter encompasses anything new under the sun made by man. This broad scope excludes such things as abstract ideas, laws of nature, and naturally occurring organisms (narrowly defined). An application for subject matter of the type suitable for patent protection is examined by the United States Patent and Trademark Office to determine whether it meets the requirements of inventiveness -- that is, novelty, non-obviousness, and usefulness. You can find more about the patenting process at www.uspto.gov. A patent lawyer with the appropriate technical background (all patent lawyers are required to have had an education in engineering, science, or the like) would be able to help in the process. Good luck and best regards on behalf of PIPLA, Hal Fullmer
September 12, 2003. Denise Webster I am currently a sixth year Pharmacy student graduating with my Doctor of Pharmacy degree in May 2004. I have decided to continue on to law school and one of my main interests is intellectual propery. I would like to combine both degrees and hopefully utilize them within a drug company setting. I have a couple questions: 1) Is my background a qualification to sit for the patent bar exam? and 2) Does it matter which school I attend? I'm not sure if that second question is a myth but the answer I received 2 years ago was 'for intellectual property law it does not matter which school you attend as opposed to any other law practice'. Thank you for any advice you can provide.
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Ms. Webster: Thank you for your question to PIPLA. The requirements for admission to the patent bar exam can be found on the patent office's website (www.uspto.gov). One of the requirements to sit for the exam is a bachelors degree in a "recognized technical subject" or showing an adequate technical background in another manner. In the form http://www.uspto.gov/web/offices/dcom/olia/oed/grb15oct03.pdf pharmacology is listed as a subject that satisfies this requirement. Because of the importance of determining whether one has met the requirements to sit for the exam, it would be advisable to carefully read the requirements (and even contact the PTO's Office of Enrollment and Discipline to confirm any close calls and to make certain that you are considering the most current regulations). Your second question requires a more subjective response, on which there may be disagreement among practitioners. While it is true that professional prospects for patent lawyers have generally been considered to be good, and for supply and demand reasons better than many other legal fields, it seems to be an overstatement that it does not matter what law school you attend. The patent law field is competitive, and any advantage in actual training and resume pedigree would, in my opinion, be an advantage. There are, of course, many additional factors to consider in choosing a school, including regional considerations, quality of IP curriculum, availability of night courses (if necessary), cost, culture, and many others. You might also want to consider the possibility that you will change your mind about the field in which you will practice -- as happens to a significant number of people. We hope that your pursuit of a career in patent law will be fruitful. Best regards on behalf of PIPLA, Hal Fullmer
July 09, 2003. Mr. Glenn Holbrook I have an on-going civil lawsuit case against a person for blatant and willful copyright infringement. Without any legal authorization, this person displayed my artwork on his internet website by scanning photos of my art and then sold 21 of them to a website broker who sold them all over the world. After 2 years and $12,000 in attorney's fees, my attorney wants this case to go into mediation. I fear I am being sold out. I am convinced I have a solid case but the lawyer I have may only want to get his fees and close this one out. He does not seem to be interested in the evidence I have collected. Why? A mediator is not supposed to take sides. Then how would he know that my case as the Plaintiff is the one of the victim. What good is copyright protection for registered and unregistered artwork when the courts are so backed up they want you to try mediation which is another name for the lawyer wins and you lose. No wonder the guy was so blatant in his copyright infringements. He has been sued before and knew that he could probably get away with it. As a free-lance artist I have seen my art business destroyed before my eyes, and I have lost my motivation to finish my art projects. I have followed the path of fighting for my copyrights, but I have to tell you in all honesty I believe copyright protection except for the rich is a myth.
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Mr. Holbrook: Thank you for your comments to PIPLA. Enforcing any legal right can be an imperfect and expensive process. We are not in a position to second guess your attorney regarding his suggestion of mediation, and nearly all attorneys take seriously the ethical duty of zealous advocacy. On each side of most legal disputes is a party that feels strongly about his case, and mediation can sometimes offer insight into the opponent's side in order resolve litigation before expensive discovery and trial. It is difficult to predict how a judge or jury would perceive evidence, and cases are rarely air-tight. Your view that a mediator is unlikely to take sides may be correct. Ultimately, it is best for a plaintiff to weigh the costs and benefits of each possible course of action while relying on trustworthy guidance from his legal counsel. The costs of the process must be weighed against the money damages, injunctions, or other remedy. Best regards on behalf of PIPLA, Hal Fullmer
June 18, 2003. Ms Beth O'Grady The Principal at our high school is requiring retiring teachers to submit all of their tests, syllabi, and curriculum materials. Some faculty members are wondering if this new school policy is legal. Our school administrators claim that faculty lecture notes and other teaching materials fall under the category: work-for-hire. I have been reviewing the few court cases that exist concerning copyright ownership of teaching materials. All of the reported cases state that the copyright to teaching materials belongs to the faculty. There is a "teacher exception" to the work for hire rule. The law seems ambiguous, however. Can you shed any light on this issue?
February 03, 2003. Mr. Robert J. Duminiak Do you have any suggestions for locating entry-level intellectual property positions? I will graduate in May with a J.D. and am registered to practice before the USPTO. My undergraduate degree is in Biochemistry and Molecular Biology.
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Mr. Deminiak -- Your position -- seeking to enter into the patent attorney job market with compelling credentials -- is familiar to most members of PIPLA. I note that you ask your question from Philadelphia, which has a deep market for patent lawyers, and we hope that you decide to develop your practice here. In order not to prejudice you relative to any firm, I will not provide a list of the fine firms in greater Phildelphia that practice patent law in your field. However, targeted search on the martindale hubbell website (www.martindale.com) will provide a good summary of firms. You might want to consider whether your are interested in prosecution or litigation -- it is often advised that some of one is good training for the other. You should also consider whether the culture of a big firm or small firm, and whether that of a general practice firm or boutique, appeals to you. It is a good idea to interview with as many firms as possible to get a feel for the practice all over town. Finally, develop and use as many resourses and contact as you can to gain a perspecitve on where you see yourself. Regarding interviewing, you will click with some people and not with others, and it is up to your discretion to consider all factors. Best regards on behalf of PIPLA, Hal Fulmer
February 03, 2003. Ms Jacqueline Keith I am an undergraduate in business and would like to have any description concerning the intellectual property and also why this issue is so important.
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Ms. Keith, Intellectual property generally is considered to encompasses patents, trademarks, copyrights, and trade secrets, as sometimes other categories such neighboring rights and moral rights. The importance of intellectual property protection has grown as most governments recognize its importance in providing incentive for private invention and creation. The spread of free market principles and widespread international agreements, such as the TRIPS agreement, throughout most of the world also enhance the ability of inventors and creators to extend their rights internationally. I trust that this brief answer addresses your question. Please let us know if you have a more specific question that we can address, and thank you for your question to PIPLA. Best regards on behalf of PIPLA, Hal Fullmer
October 08, 2002. Ms Asya Pavlova Hello there, I am a Bulgarian Student and my major is Intellectual Property Business. I believe that Intellectual property is the right choice for my future career, I love working in the field of the Trademarks and Industrial designs. i am also interested in the Business Method patents that exists only in the USA. All that made me search for a long - lasting INTERNSHIP in the USA where I can gain an extremely Hands-on experience in this area. Since I cannot finance myself I need a paid position to be able to make my living during the Internship. IS there A CHANCE TO FINALLY FIND SUCH POSITION? Is there anybody that could help me in my efforts? Thanks in advance: Asya
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Ms. Pavlova, Thank you for your question to PIPLA. While I have no special insight into the market for the internship that you seek, we encourage you to stick with a job search, and offer the following thoughts for your consideration. Have you decided whether you interested in a law firm, corporate, or government position? An entry into a law firm or corporation may be as a paralegal with special expertise in European matters. Law firm and corporate legal department research may be performed on line at, for example, www.martindale.com. It might also be beneficial to contact the offices of multi-national corporations in Bulgaria to inquire about positions in the U.S. Finally, you might also consider contacting the US Patent and Trademark Office to inquire into a position as a trademark or design patent examiner, or other position. We hope that this information has been helpful. Best regards on behalf of PIPLA, Hal Fullmer
September 07, 2002. S.Ganesan, Chennai,Tamilnadu,India I am a post graduate in chemistry and having 5 years experience in synthesis (r&d chemist in pharma concern). Since I am interested in IPR field I have shifted my career to IPR field in the same organization. I am applied for patent law course in Nalsar University, Hyderabad India. Is a basic law course needed to become a patent attorney or agent? Can you guide me please?
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Mr. Ganesan -- Thank you for your question to PIPLA. The simple answer to your question is that a state bar membership is necessary to practice law in any field, including patent law, in the United States. Only a patent bar registration, not a state bar membership, is required to practice before the United States Patent and Trademark office. A patent agent is generally defined as a person who has passed the patent bar exam, but is not a lawyer. A patent lawyer is generally defined as a person who has passed both a state bar exam and the patent bar exam. We note also that a patent bar membership is not required to litigate patents in court, or to practice trademark, copyright, or trade secret law. The requirements for qualifying to take the patent bar exam include an undergraduate degree in an engineering or science discipline. You can find more information at www.uspto.gov. We trust that this information is helpful; best wishes in your career choice. Best regards on behalf of PIPLA, Hal Fullmer
August 26, 2002. Mr. Bijoy C. Antony, Managing Partner of Dreamworkz, Thrissur, Kerala, India I think you have gone through the dispute with Spielberg which was in the Hindu 24th Aug. We are searching for better advice. If you can help us please make it fast. Yours truly, Bijoy & Reji
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Gentlemen: Thank you for your interest in PIPLA. Unfortunately, it is beyond the scope of our organization to provide detailed legal advice. Best regards on behalf of PIPLA, Hal Fullmer
August 25, 2002. Mr. Michael Labovitz Currently I am beginning my third year at Pace Law School in White Plains, NY. I am interested in moving to Philadelphia to practice intellectual property law. I do not have a technical degree, mine is in Political Science from the University of Pittsburgh, so I am unable to practice patent law. I do have an interest in copyright, trademark, and technology law. I would appreciate any advice you can provide as to how to begin and structure my job search. Thank you.
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Mr. Labovitz -- Thank you for your interest in PIPLA. We agree with your conclusion that the Philadelphia area is an excellent place to practice IP law. Our organization does not promote one firm over another, so my advice will be general. It might be helpful to perform a Martindale search for firms that list IP as a practice area. From that list, ask around to find out which firms actually have business in the trademark & copyright area, as distinguished from firms that merely tout those words for marketing purposes. You will find both firms that specialize in IP and general practice firms that have IP departments. Best of luck with your search. Best regards on behalf of PIPLA, Hal Fullmer
August 14, 2002. Kelvin Williams I am trying to do research on implied license(s) for copyright registed material & what by law difines a license for a registed work & what difines a implied license by law. What are the requirements of the license such as written agreement, terms, payment and such. Can an Implied license be drawn in favor of a infriging party if there is no payment,credit or oral agreement?
August 01, 2002. Ms. Rebeca Novotny I have written a song inspired by a government sponsored, world wide muilticasted event in which several speakers took part. The song tries to capture the main ideas expressed by the speakers. At times the language is similar but, in my opinion, all falls under the "fair use" limitations as listed on Title 17 Sec 107. My questions are (1.) Is the song a "derivative work"? (2.) How exactly do I determine whether my use of the speeches falls under the fair use guidelines? Thank you for any and all assistance!
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Ms. Novotny -- Thank you for your question. It is, however, beyond the scope of our organization to provide legal advice. From the information contained in your question, you appear to have your facts well organized and the issue clearly framed. This kind of preparation will likely help a practitioner reach a conclusion. Best regards on behalf of PIPLA, Hal Fullmer
June 20, 2002. Ms. Ty Wilson I am looking for an Intellectual Property attorney in Philadelphia, PA to acquire trademark protection before launching my Product line. I've never hired an attorney before. What is the process?
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Ms. Wilson: Thank you for submitting your question to PIPLA. There are many approaches to finding an intellectual property attorney, and it is likely that there is no consensus regarding a preferable means. The first step, and likely the hardest part, in hiring an IP attorney is to find someone with whom you feel comfortable. After deciding on a particular attorney, the rest should be straightforward, as your attorney can guide you through any issues that arise. In this regard, some might direct you to a general practice law firm that can provide advice on corporate or other issues regarding your business, and others might direct you to specialty firms that presumably have more expertise in a particular IP field. There are many considerations, including level of expertise & experience, cost, possible conflict of interest, and many others. The website http://www.martindale.com/xp/Martindale/home.xml can provide a brief biography of any prospective choice. If there can be any general guidance, it would be to ask around to others who might had trademark issues for recommendations, and then meet (either via telephone or in person) with the recommended lawyer to discuss representation. I hope that this information was beneficial to you, and good luck with your business. Best regards of behalf of PIPLA, Hal Fullmer
June 08, 2002. Dr. Steven Cheng My question relates to enforcing the legal protection entitled to patent applicant during the period of patent prosecution. In today's world of biomedical research, usually an important discovery is published in a scientific journal several years before a patent is rightfully issued to the inventor. Suppose the scientific publication revealed enough enabling fact, can the patent owner restrict others from using the invention disclosed before the patent is issued, can he seek compensation retroactively thereafter? Thanks
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Dr. Cheng: Thank you for your question to PIPLA. It is beyond the scope of PIPLA to provide legal advice, but the following general discussion regarding patent law might be helpful. The right to exclude others from practicing an invention springs to life upon issuance of the patent. Without patent protection (or some other intellectual property, contract, or other rights), no commercial rights to an invention exist merely based on a scientific article. Under certain conditions, a reasonable royalty may be obtained based on a published U.S. patent application that eventually issues as a U.S. patent. In this regard, the United States Patent and Trademark Office publishes patents after 18 months from the application's earliest filing date. Perhaps a patent practitioner could answer any particular questions that you have regarding patent protection. The patent office's web site -- www.uspto.gov -- also provide useful information. Best regards on behalf of PIPLA, Hal Fullmer
May 30, 2002. Charles Boulos I am listed as the inventor on a patent that was granted/assigned to a now defunct company in 1995. This patent has not been maintained. My question: Who now owns the patent rights? Can I as the inventor assume or take possession of the patent rights? Thank you in advance for any replies.
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Mr. Boulos, Thank you for your question to PIPLA. It is outside the scope of our charter to provide specific legal advice (that is, to practice law), but the following general discussion might prove helpful. Patents generally have attributes of personal property, so a patent assigned to a now defunct company would presumably be in the same category as other intangible rights originally possessed by the company. Your question really goes to property ownership rather than intellectual property law, although an assignment from an inventor to his employer of all right,
title, and interest in a patent does just that -- transfers all rights. Thus, if, for example, someone in bankruptcy obtained the intangible rights of the assignee, then that person would not own the rights to the patent. Perhaps a lawyer in your state familiar with bankruptcy or corporate
law could help you find a specific answer. Best regards on behalf of PIPLA, Hal Fullmer
May 16, 2002. K. Korte, Process Development Manager I have been working in the same company for 26 years. I have 14 patents of my own and find that area interesting. I am considering a career in patent law. I would like to know what that market is expected to be like in 3 years. Although I have an excellent background, I am also curious whether firms will be interested in hiring someone at age 53. Let me know your thoughts on the subject.
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Mr. Korte: Thank you for your question to PIPLA. The members of PIPLA would generally concur that patent law is a worthwhile and rewarding field. We do not, however, have any special insight into what the market will be like in the future, although the market for patent lawyers in the past has been good, as well as lucrative. Patent law is generally considered to be an area that is more resistant to economic downturns than many other specialties. Regarding your age, the law in general rewards lawyers who have gained experience. A famous lawyer in response to the question regarding the traits required for success in the law replied, "scar tissue." A person entering a legal career at 53 would be reaching high earning years typical
for partners in law firms at about the age most people consider retirement. Further, it is generally accepted that law firm salary, training, and overhead costs outweigh the income generated by an associate for the first (or first few) years of his or her career. This information is not intended
to dissuade you from entering the law, and these are only general observations that might not apply to your particular situation. Becoming a patent agent is another option. A patent agent is not an
attorney (that is, is not licensed by the bar of any state) and is not required to have any law school, but rather has passed the patent bar exam administered by the USPTO. To sit for the exam requires a particular educational background, which you can find at www.uspto.gov. Becoming a
patent agent would enable you to practice before the patent office, and would likely enable you to begin a meaningful career in patent law without spending time in law school. Becoming a patent agent also might be something for you to consider even if you do attend law school. Hope that the information is helpful, and good luck with your decision. Best regards on behalf of PIPLA,
Hal Fullmer
May 09, 2002. Iffy I desire to do an LL.M in Intellectual Property, but I have been told that I must have a science background to do this, also I would not be able to get a job even with an LL.M in Intellectual Property without a prior science background, is this true, and what is your advice?
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Iffy: Thank you for your question to PIPLA regarding whether a science or engineering background is required to practice intellectual property law. In order to sit for the patent bar exam and to prosecute patent applications before the United States Patent and Trademark Office, an undergraduate degree (or like number of courses) in an engineering or science is required. The requirements are provided on the USPTO's web site. In addition to patent law, intellectual property law encompasses the law of trademarks, copyrights, and trade secrets. In contrast to patent prosecution, there is no particular background that is required to practice in these areas, nor to practice patent litigation in federal court, nor to work on licensing matters. A large number of people who practice (or who claim to practice) intellectual property law do not have the engineering or science background required for patent prosecution. With the above background information in mind, your second question is directed to the job market for attorneys lacking a science or engineering background and wishing to practice intellectual property. Practitioners in trademark, copyright, and trade secret law typically do not have such background. Some may differ, but it seems that the specialists in these fields are successful based on their lawyering skills, as distinguished from a mixture of lawyering and technical skills, with the possible exception of highly technical applications of copyright or trade secret law -- such as with respect to computer software or network issues. Some patent litigation firms prefer to hire litigators with a science background or patent bar membership, others prefer to hire general litigators. My opinion, and this is only that of the writer and not of PIPLA, is that there should be no barrier to entering intellectual property law based on lack of a science or engineering background for the practice of trademark law, and for much of copyright law and trade secret law. It would be helpful to have a technical background to practice patent litigation or licensing (as part of the job market would be restricted), but a motivated attorney could break into those fields. Hope that this information is beneficial to you. Best regards on behalf of PIPLA, Hal Fullmer
May 02, 2002. Ronald Aloro (Student in Philippines) What are the penalties when you have copied a copyrighted item?
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Mr. Aloro: Thank you for you question to PIPLA. The following information is, of course, not legal advice, but rather is a general statement of the law. The penalties for copying copyrighted material may be measured either by actual damages (of copyright owner) & profits (of infringer) or by statutory damages. Statutory damages are between $200 and $150,000 with the willfulness of the activity taken into consideration. If a copyright owner is eligible for statutory damages, he can also possibly entitled to recover attorneys fees and costs. There are also criminal penalties for copyright infringement under 18 USC 2319. This information is based on U.S. law, and we note that your question came from the Philippines. Although international treaties govern some aspects of copyright law, penalties for infringement differ on a country-by-country basis. It is, of course, important to seek counsel from a local attorney who is familiar with the law of your nation. Best regards on behalf of PIPLA, Hal Fullmer
April 19, 2002. Prangan Bhatia from Bangalore, Karnataka, India Can we patent an idea or a thought that has been written down on the sheet of papers in the form of a business model?
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Mr. Bhatia, In the United States, business methods are indeed patentable subject matter, as confirmed by the State Street Bank decision. The requirements of utility, novelty, and non-obviousness must, of course, be satisfied before any patent could be granted. Thank you for your question, and we note that your e-mail question originated in India. While we are pleased that you would choose PIPLA to which to direct your question from so far outside the greater Philadelphia region, our expertise is in the IP laws of the United States. Our only comment is that the TRIPS agreement requires that all member states provide patents without discrimination as to subject matter, but nations interpret and implement this requirement differently. Best regards on behalf of PIPLA, Hal Fullmer
March 02, 2002. Derek from Baxter Healthcare I am doing a research paper on intellectual property issues in the biotechnology area and was hoping someone could point me in the right direction. I am looking for some web portals that would be a good place to start to get some basic information. There are an overwhelming number of sites (44,000) to choose from. Any suggestions would be welcomed.
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Derek: If you are looking for legal information, a search of the law review and journal section of Lexis or Westlaw will likely provide you with ample information. Perusing the titles and abstracts of the articles may be a way efficiently to cut down the information to a few articles that may be on point (without overloading on information). You did not mention whether you had access to these databases, or even whether you are interested in legal aspects as distinguished from economic impacts or the like, but these sites would be the most comprehensive. Portals such as law.com may also be useful. Good luck. Best Regards on behalf of PIPLA, Hal Fullmer
February 28, 2002. Blyden Potts I have what I believe is a great concept for a reality TV program. What is the best way to go about securing property rights to my ideas, with an eye toward marketing the concept to producers?
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Mr. Potts: Thank you for submitting your question to PIPLA. It is beyond our organization's charter to provide legal advice. You might find it helpful to peruse the links on the PIPLA web site to find a firm that could provide the legal advice that you seek. Best regards on behalf of PIPLA, Hal Fullmer
February 22, 2002. Kyle Wagner Compton I'm a student at the University of Pennsylvania Law School. My organization, the Penn Intellectual Property Group is hosting a panel discussion on Tuesday, February 26, 2002 on intellectual property in the biotechnology and pharmaceutical industries. We would like to extend an invitation to PIPLA's membership if they are interested in attending. If your group has a mailing list and it would be possible to forward the attached invitation, we would appreciate it very much. Sincerely, Kyle Wagner Compton. The "Penn Biotech Group" is pleased to join with the Law School's "Intellectual Property Group" in welcoming you to attend a seminar: "Intellectual Property & Life Sciences: Upstream Research to Downstream Product" Please join us for a panel discussion of how intellectual property rights affect the transformation of scientific research into bio-pharmaceutical products and successful businesses. WHEN: Tuesday, 2/26/02 TIME: 5:00 - 6:00 pm, reception and light refreshments to follow WHERE: Levy Conference Center at the University of Pennsylvania Law School (Entrance on Sansom, between 34th & 36th Streets) PANELISTS: * Kenneth J. Dow, Assistant Patent Counsel at Johnson & Johnson, Vice President for Patent Law at Centocor, Inc. * Edward T. Lentz, of Counsel in the Intellectual Property Practice Group at Morgan Lewis, former Senior Vice President and General Counsel-US at SmithKline Beecham * Arti K. Rai, Assistant Professor of Law at the University of Pennsylvania Law School (moderator) * Stephen M. Sammut, Venture Partner of Burrill & Company and Lecturer at Wharton * Robert W. Stevenson, Vice President for Intellectual Property at Cell Pathways, Inc. PBG and the Intellectual Property Group are grateful for the generous financial sponsorship of the following organizations to make this program possible: * University of Pennsylvania Graduate and Professional Student Assembly (GAPSA), and * Institute for Law and Economics No RSVP required. For information, call 215-898-7719.
October 8, 2001. William B Harvey
What is the "hired to invent" doctrine? Does the "work for hire doctrine" apply to patents as well as copyrights?
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Mr. Harvey: Thank you for your question to PIPLA. Although it is beyond the scope of our organization to provide detailed legal advice, your question is generally directed to patent law so that we can provide the following information. In the absence of an obligation otherwise, an employee owns the patent rights to inventions that he or she develops. In practice, however, most employee/inventors are under an obligation to assign his or her inventions to the employer. Even if there is there is no written document that expressly conveys the patent rights from the employee/inventor to his or her employer, the employee/inventor may still be under an obligation to assign the patent rights. The outcome depends, of course, on the particular facts. Therefore, it may be fruitful to contact a practitioner if you wish to pursue an aspect of patent ownership. Best Regards on Behalf of PIPLA, Hal Fullmer
October 8, 2001. Linda Galligan
Can a new buyer on the lot next to ours come in and say that they had a new survey done and that our lot lines are wrong after we have owned this property for 25 years? The original owner had showed us the lines when we purchased back in 1976. Since that time he has passed away, but we still have all the original papers showing where things are. Can you inform me of any rights I have?
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Ms. Galligan: PIPLA is an organization directed to intellectual property matters, which include patents, copyrights, and trademarks. Thus, I regret that it is beyond the scope of our organization to provide detailed legal advice. It seems that your question is directed to an area of the law generally referred to as real property or real estate (that is, relating to land). Because real property law is generally governed by state law, you might find it helpful to contact a knowledgeable lawyer in your state to provide guidance for your questions. Best Regards on Behalf of PIPLA, Hal Fullmer
April 26, 2001. Mohamad Fararjeh More than five years ago, I presented in idea (completely mine) to my company which. I did my studies and analysis and proved to be legitimate new invention. We then decided to start the process of filing a patent under my name only since it was my sole idea. I was also asked to write a paper to give a presentation of the invention in one of large conventions.
Shortly before that, a large company acquired our company, took my idea and assigned an institute to do further study and analysis. Few months after the acquisition, that company closed down our company and decided to move all production lines to their headquarter in another state. They offered me a job and to move me from California to Pennsylvania, but I declined.
The company filed a patent on the invention July 15, 1997. And when I last checked which was few days ago I found out that assigned the invention to somebody else who is part of their organization and never was a party of the idea and first analysis.
When I checked the law on patents, in the FQA section, I noticed these two questions:
Q. If two or more persons work together to make an invention, to whom will the patent be granted?
A. If each had a share in the ideas forming the invention, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.
Q. If one person furnishes all of the ideas to make an invention and another employs him or furnishes the money for building and testing the invention, should the patent application be filed by them jointly?
A. No. The application must be signed by the true inventor, and filed in the Patent and Trademark Office, in the inventors name. This is the person who furnishes the ideas, not the employer or the person who furnishes the money. http://www.uspto.gov/web/offices/pac/doc/general/faq.htm
My questions: What is the best way to go by challenging this? How strong is my case against that company if I to file a law suite and prove it in the court of law?
I indicated in my resume to my employer that there is a patent pending under my name assuming that the company would recognize me as the legal inventor. They told me before leaving that the patent would be under my name.
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Mr. Fararjeh: It is beyond PIPLA's scope to provide detailed legal advice, but below is some information that may be helpful to you. Inventorship, as distinguished from ownership, of an invention and patent application is based on conception. Even if an inventor assigns all ownership rights in an invention, a patent will still issue in the name of the inventor. Generally speaking, prosecution of a patent application should not proceed without the inventor unless the inventor refuses to cooperate, can not be located, is deceased, or the like. Ownership, including the right to control the marketing and licensing, is another matter. Ownership of a patent or patent application may be assigned from an employee to his or her employer by contact or implied by the conditions of the work. I hope that the above information has been helpful. A legal counsel may be able to help you with more specific information. Best Regards of behalf of PIPLA, Hal Fullmer
April 09, 2001. James Reiher
Are there industrialized countries that have very little or no intellectual property laws? If so, what countries does this include? I am trying to understand all the economic and technological effect these laws have. Thanks
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear James, Most industrialized countries are members of the WTO and bound by the TRIPS agreement, which sets minimum substantive and procedural standards for intellectual property protection. You might want to look into the TRIPS agreement and other international treaties. A place to begin is www.wipo.org. Best Regards, Hal Fullmer on behalf of PIPLA
April 05, 2001. Brendan Babcock Regarding time extensions: Did the new rules change the date from which the extension is calculated from? (i.e. is the date calculated from the date on which the petition and fee are filed or is it still calculated from the mailing date from the patent Office?) Regarding Final Rejections: Do the new rules change what may be submitted as "a matter of right"? Also, does a new rejection preclude the use of final Rejection?
April 03, 2001. Josh Jelin Character Protection - Is it possible to claim ownership/protect a character I've developed by filing for copyright registration three detailed pages that fully describe the character and the character's appearance, thoughts, emotions, approach to problems, wardrobe, eductional history, likes & dislikes, philosophy etc. In other words, by reading these pages one understands the character and even has a general idea of the character's physical appearance. I don't have a drawing of the character yet, but I want to go on record as having created it so that if I get a job somewhere and let them use the character, it's clear that I owned it before I ever started working there.
March 28, 2001. Ms. Estibaliz, Spain I would like to know how are the informatics programs (more especifacally the author who had done the program) protected in your system. Is it a literary work, like here in Spain, or is it inside the law of patents? Donīt you consider that the author is not well protected without any moral rights? I don't understand very well the copyright law, so I get very confused. I should be grateful if you could answer my questions and I apologise for my English. Thanks a lot.
February 26, 2001. James N. Smalley
I am undergrad at Penn State University majoring in mechanical engineering and I am currently seeking a summer internship position with the USPTO. I hail from the western suburbs of Philadelphia and I would ultimately like to end up in the area. I am writing to you requesting information about PIPLA and, if you can supply, how many firms in Philadelphia and the surrounding region are devoted to patent law.
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear James, Philadelphia is home to a thriving patent law practice. A first place that you might look to investigate patent law firms in Philadelphia and the surrounding region is the appropriate portion of the PIPLA web site. You might investigate further by searching on the Martindale-Hubbell site at http://www.martindale.com/locator/home.html by entering search terms that limit the search to law firms based on the characteristics that interest you. I am not certain whether this information answers your question regarding the number of firms that are "devoted to patent law," as I do not know whether you intend to exclude firms that have only patent lawyers, as distinguished from firms having other IP attorneys, or other non-IP attorneys. Often, firms that have a strong patent practice will also practice in the trademark, copyright, and related fields. Also, large general practice firms may also have a group that is "devoted to patent law." Nevertheless, I trust that you will be able to find your answers with the above information. Thank you for your interest in PIPLA. Regards, Hal Fullmer on behalf of PIPLA
October 17, 2000. Melissa Hilts, Office Manager
Our company is in the process of developing a employee handbook. We would like to know what rights we have when it comes to employees developing ideas and intellectual property on behalf of the company. Upon termination/resignation do we have the right to keep those items within the company and if so how would we address this issue in the handbook.
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Melissa -- It is outside the scope of our organization to provide detailed legal advice, but I can talk generally about the state of the law. Your question depends on the particular state law governing your question, which I will presume is Pennsylvania. In general, in the absence of an explicit agreement or an implied duty, an employee is entitled to ownership rights to his or her inventions. There are several issues to consider regarding this general rule. For example, if the employee is hired to invent in a specific field, then the employee is obligated to assign the rights to the inventions conceived within that field (that use the company's resources). The determination about whether a person is an employee or independent contractor sometimes is relevant in this analysis. The employer may, under certain circumstances, have a right to practice the invention (without paying a royalty), even for inventions that an employee owns. Further, employers typically have employees sign an agreement providing for the transfer of rights in the inventions to the employer. In most states, the promise of continued employment is sufficient to exchange for such transfer. For more specific information, you may wish to consult with a patent attorney. I hope that this general information is useful to you. There might be additional pertinent information available on the patent office's web site at http://www.uspto.gov/. Best of luck with your employee handbook. Lititz must be especially beautiful this time of year. Regards, Hal Fullmer on behalf of PIPLA
September 07, 2000. Ms Christine Ricks, Paralegal, Bellevue, WA
If the inventor of an issued utility patent dies without a will, how can his widow have the patent rights assigned to her without a formal assignment? Does it have to go through probate or is there any other way?
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Ms Ricks - I believe that an answer to your question depends on state law.
July 17, 2000. Dr. Dale E. Vitale, Kean University, Union, NJ USA
Does US copyright law allow the digitization and network delivery (i.e. from a single point to a single point) of VHS tape content that was originally purchased for use in a classroom VCR?
Reply from Harold H. Fullmer, Registered Patent Attorney, Woodcock Washburn Kurtz Mackiewicz & Norris LLP Dear Professor Kean: On behalf of PIPLA, thank you for your question. PIPLA is, of course, not able to provide specific legal advice. However, here are some general, well-settled aspects of copyright law that may provide you food for thought. The copyright statute provides to the owner of a copyright the exclusive right to reproduce the work and to make derivative works. Either or both of these exclusive rights, inter alia, might be violated by the digitization and network delivery of a work. A use of a copyright work might be deemed a fair use, and therefore allowable. Factors to consider for the fair use exception generally include the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for or value of the copyrighted work. The analysis of these factors to your particular circumstances may be best undertaken by your intellectual property counsel. Regards, Hal Fullmer
October 12, 1999. Jason Williams, Student, Tasmania, Australia I was just wondering if you give me a brief description on "Intellectual Property". I'm doing a study on copyright at the moment. So if you can give me some information on "Intellectual Property," it will be greatly appreciated.
September 04, 1999. Susan Gorinshek, Correctional Officer I would like to know the exact definition of Intellectual Propert Law.
September 02, 1999. Dorcas Rodriguez, Student at SUNY Institute of technology at Utica/Rome I am a student in a healthcare law class and we have had some problems trying to find a straight answer to "What is intellectual property law?" Could you help us? our textbook does not provide an answer.
July 12, 1999. Stephen Pazan
Which of the Philly area law schools offers an LL.M. program in IP law, and what is the current concensus regarding the marketability of such a degree?
Reply from Jeffrey T. Spangler, Registered Patent Attorney I will tell you that I don't know the answer to either question, but I will refer you to our 1999-2000 President John Caldwell for further direction. To my knowledge, none of the area law schools yet offer an LL.M. in IP law, such as well-known IP powerhouses like Franklin Pierce. Temple's Beasley Law School has an LL.M. program in Trial Advocacy and another non-tax, I believe. But from my experience with the students of the Temple IP Law Society, and with their cyberlaw authority Professor Davis Post, I would not be surprised if Temple is first to offer this degree. Try Temple's Law site to ask Professor Post directly. Thank you for visiting our site, and please call if you wish to discuss this question further.
May 05, 1999. Jason Thibeault, Internet Strategist What are the legal precedents, if any, for protecting intellectual assets developed within a corporation? For example, if I develop several Internet initiatives and my company either (1) does not wish to use them or (2) undermines me in a way that I am forced to leave the company, what are my legal options in protecting the ideas that I have developed while in the company?
Reply from Jeffrey T. Spangler, Registered Patent Attorney The ownership of intellectual property (IP) developed while employed is determined by the employment agreement, which should be rather specific on this matter, as well as the work-for-hire doctrine. Without a complete set of detailed facts about "initiatives", "undermines" and "leaves", it is not possible or prudent to render a useful opinion. That's why you should consult with a patent attorney experienced in these issues for specific advice. Many garden-variety disputes over ownership of IP between employers and employees are, in my opinion, easily avoidable by thoughtful drafting of agreements, and if they must be resolved by litigation or ADR (alternative dispute resolution), they can be expensive and counterproductive to the development of the technology at issue. For some basics on work-for-hire, see the Oppedahl & Larson website at www.patents.com, with much useful information and many good links. Thank you for visiting our site.
April 15, 1998. Jim Loughin I am planning on attending law school this fall with the purpose of practicing intellectual property law. I would very much like to attend the July seminar. I feel that this would provide me a great opportunity to see what working in this field would be like. If this is possible, please email me.
April 08, 1998. Kathleen Brown, Research Associate Would an exhibition (ie. the idea for an exhibition and the selection of the works of art to be exhibited and plans for their installation) be protected under intellectual property law?
Reply from Jeffrey T. Spangler, Registered Patent Attorney I will punt on this question to a colleague who practices actively in copyright matters. John Luneau is Chair of the Philadelphia chapter of the Copyright Society of the U.S.A. and with the Rykodisc record label in Ardmore. The PIPLA and I appreciate any assistance he can provide for you. Thank you for visiting our site.
August 08, 1997. Keith A. Davis I am inquiring about a potential summer career at your law organization next year. Does your group hire?
July 09, 1997. Christopher Halliday This comment is in regards to the May 1997 Newsletter. Under the title "Temple Law's Technology.....", a statement was made that I find rather disturbing. The first sentence of the second paragraph read as follows: "Mr. Burgoon emphasized the importance of intellectual property in the biopharmaceutical industry, positing that patents are solely for litigation." I fail to see how a patent can be "posited" as having any sole purpose, let alone the sole purpose being litigation. A patent is a right to exclude others from making using and selling an invention. If a patent on an invention were not available, especially in an industry where the Research and Development costs are so high, no company would undertake to pursue the invention. For example, in biopharmaceutical industry, if one company could not recoup the losses made because someone else could "free ride" on the work already done. Of course, one could argue that the researching company could develop the product as a Trade Secret, which is true. But as any good IP lawyer will tell you, trade secrets tend not to stay trade secrets for long and they work best when coupled to patents. Further, trade secrets do not protect against independent invention, where a patent does. Another aspect patent law that boldly defies the statement that patents are solely for litigation can be found in Article 1, section 8, clause 8 of the Constitution. Paraphrasing it reads, "to promote useful arts.....reserving for limited times". The patent can be viewed as an agreement between the public and the inventor where by virtue of his/her disclosure to the public, the inventor may exclude others from making, using or selling the invention, FOR A LIMITED TIME. This of course forces people to either 1) infringe [not a good idea if you want others to respect your patents] 2) license from the inventor 3) get an assignment from the inventor 4) DESIGN AROUND THE INVENTION. When a person can not do a thing one way, he/she tends not to give up but rather tries a different way. Therein lies the beauty of the patent system. By looking at the patent, a different invention that does the same thing in a substantially different way can be created. In other words, the patent system spurs innovation giving people a chance to be competitive by making a better product that is not covered by the original patent. The improvement could then be itself patented and the whole process repeats itself. I hope that this excerpt clears up any confusion, but as everyone is entitled to their own views, it may have the result of creating only controversy, which is just fine, too. I apologise for any grammatical and spelling errors, as I only had five or so minutes to write this before class.
May 28, 1997. Stephan Gribok Some time ago, a set of model jury instructions for patent cases was made up by PIPLA and was approved by the E.D.PA. Can anyone aim me to or fix me up with a copy of the model instructions? It is possible that the court's approval may be affected by recent action in the Supreme Court, but they could be useful in other respects. Thanks in advance.