Copyright Durations

The general framework for understanding statutory copyright duration involves the change of law effective January 1, 1978 (the 1976 Copyright Act). Under the prior law (the 1909 Act) the copyright term began on the date of publication or registration, and originally lasted 28 years; a series of laws, culminating in the Sonny Bono Term Extension Act of 1998, extended the term to a maximum, for some works, of 95 years from publication. The U.S. Supreme Court has upheld the constitutionality of the Sonny Bono Act. Eldred v. Ashcroft, 537 U.S. 186 (2003).

Under the 1976 Act, as amended by the 1998 Act, the copyright term for works created on or after January 1, 1978 begins on the date of creation and ends 70 years after the author’s death, 95 years from publication, or 120 years from creation (depending on the nature of the work, its authorship, and its date of publication).

This term also applies to works created but not published or registered before January 1, 1978. In addition, the 1976 Act, as amended, provides these works with a minimum term until the end of 2002; the term is extended, if the work was published by the end of 2002, through 2047.

We have prepared a flow chart setting forth some general guidelines regarding the duration of United States federal statutory copyright. There are a number of exceptions to these guidelines. In most cases, these exceptions may involve expiration prior to the theoretical date indicated. However, in some cases, copyright protection may continue past the indicated date. In addition, some remnants of state common law copyright protection continue to exist, and may provide protection even when federal copyright does not. See, e.g., Capitol Records, Inc. v. Naxos of Am., Inc., 4 N.Y.3d 540 (2005) (holding that New York state common law copyright protects sound recordings made before 1972 until February 15, 2067).

We recommend consulting with an attorney in our Copyright Practice Group before relying on any conclusions concerning the copyright status of a work reached using this flowchart.

Dates of Note
Use of the flowchart will reveal the following categories of works that have already entered the public domain, and works that will enter the public domain in the next few decades:

• Works published (or registered when unpublished) before January 1, 1923.
• Works published (or registered when unpublished) before January 1, 1964, for which the registration was not properly renewed.

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What is the process of obtaining a patent?

The process of obtaining a patent is typically referred to as patent prosecution.

In the United States Patent and Trademark Office, examiners with technical backgrounds do the substantive review of the applications, including searching for relevant prior art. Unlike trademark practice, only registered patent attorneys or agents, or the inventors themselves, can normally file and prosecute patent applications in the Patent and Trademark Office.

After an application has been filed, it usually takes the U.S. Patent and Trademark Office between approximately one and two years to consider the application. In some instances, however, accelerated examination may be requested.

Sometimes, if more than one “invention” is being claimed in a single application, the U.S. Patent and Trademark Office will require that one invention be elected and the others pursued, if at all, in divisional applications. After this restriction requirement, the application is examined substantively.

Although the examiner’s review sometimes results in an immediate notice of allowance, in the vast majority of cases the examiner’s review results in an initial rejection. The rejection is typically based on the lack of novelty in the invention (35 U.S.C. sec. 102), the obviousness of the invention (sec. 103), the failure to provide clear enough claims (sec. 112, 2nd para.), the failure to provide an enabling disclosure (sec. 112, 1st para.), or the subject matter not being subject to patent protection, e.g., the claimed invention is merely a mathematical algorithm (sec. 101).

These rejections can be overcome in most applications. Therefore, an inventor should not despair too much when the application is initially rejected. One responds to a rejection by amending the application (including usually the claims) and/or by arguing that the examiner’s rejection is ill-founded. This response may result in a notice of allowance or another rejection. There may be several iterations of this process, and one may appeal from a final rejection by the examiner. It is important that a patent attorney handle the prosecution of a patent application, as well as its drafting, since it is all too easy to lose valuable patent coverage by amending the claims, or even by arguing that the rejection is ill-founded.

Most industrialized foreign countries publish patents applications at eighteen months after the priority date. As of November 29, 2000, the United States also began to publish applications at the eighteen month date, but there are exceptions available where foreign filing has not occurred. International applications filed pursuant to the Patent Cooperation Treaty are also published at eighteen months after the priority date. Thus, pursuing foreign coverage can result in the application being published before a patent is issued in the United States. In situations where the invention is not yet being commercialized, it may be possible to delay the filing of foreign or international applications, at the cost of losing an earlier priority date, and thereby delay the publication of the patent application.

It is important that all relevant prior art that is known to the inventors and others involved in the prosecution of the patent be disclosed to the U.S. Patent and Trademark Office during the prosecution. 37 C.F.R. sec. 1.56(a) states:

“A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patent examination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section…”

Where there has been an intentional failure to disclose all known material prior art during the prosecution of an application, a patent that issues from that application could be declared unenforceable in later patent litigation.  (More)   

Trademark Usage Guidelines

How can trademarks be used most effectively? In order to allow consumers to quickly and easily recognize a trademark, the rendition of the trademark should be consistent every time it is displayed. Further, a trademark should be used in a manner that distinguishes it from surrounding text. The mark should be clearly and visibly seen by consumers and should not simply be an indistinguishable part of a larger context. Whether this has been done successfully depends upon the “overall commercial impression” of the trademark in its particular setting. A trademark can be distinguished in a variety of ways, such as by physically placing the trademark apart from surrounding text or by distinguishing the trademark’s appearance by using a different size, typeface, capitalization, or color from the surrounding text.

When used properly, a trademark is a “brand name” for the type of goods or services that it identifies. If a trademark comes to be known as a common name for those goods or services, it is at risk of becoming generic. For example, the words ASPIRIN, THERMOS and ESCALATOR started out as trademarks but became so commonly used that they became generic words and lost their trademark protection. Therefore, it is important for trademark owners to refrain from referring (or allowing others to refer) to their trademarks as generic terms used to describe the products generally. A company should use a trademark as an adjective to modify the generic name of the product (e.g., “Xerox® brand copy machine”), either with or without the word “brand,” and should avoid using or allowing others to use the trademark as a noun (e.g., “make a xerox”) or a verb (e.g., “please xerox this for me”), and should also follow the general trademark usage guidelines set forth herein.

A trademark should be followed by a notice that it is being used as a trademark whenever possible. Although not required by law, such a notice serves a useful function by placing the world on notice of the trademark owner’s claim of exclusive right to use the mark. Such a notice is also necessary before the trademark owner can collect any monetary damages for infringement of the mark (although even without such notice the trademark owner can still seek injunctive relief, that is, a court order prohibiting another party from using the mark).

At a minimum, a notice should be used the first time the mark is used as a trademark on advertising, product packaging or other documents. Before registration in the United States Patent and Trademark Office, the notice should be ^TM for a trademark or ^(SM) for a service mark (e.g., Jeep^TM), or the mark can be followed by an asterisk that refers to a footnote that indicates the owner’s claim of rights in the mark, e.g., “Jeep^TM is a trademark of Chrysler LLC.” Once the trademark is registered, but not before then, the products, labels or advertising materials bearing the mark may carry the legend “Registered in the U.S. Patent and Trademark Office,” “Reg. U.S. Pat. & Tm Off.” (both of which commonly appear as footnotes), or the registration symbol ®.

Improper use of the registration symbol ® can result in loss of rights, and in some other countries, fines or imprisonment. Care should be taken to comply with the laws of the jurisdiction where the goods or services bearing the mark are being sold, especially where the mark is registered in some jurisdictions but not others.

It is also helpful to indicate in some way who owns the mark. Although this is not required by law, doing so may be helpful in the event of a dispute concerning trademark ownership. If ownership of the mark is not obvious, use an asterisk to indicate ownership in a footnote(e.g., “Jeep^TMis a trademark of Chrysler LLC” or, after registration, “Jeep® is a registered trademark of Chrysler LLC”).

Please contact a member of our Trademark Practice Group if you have any questions about these guidelines or would like further information.

Don’t Do It Unless You Mean It — Voluntary Surrender of a Trademark Registration is Irreversible

By Steven Abreu. A member of our Trademark Practice Group

Think twice before filing a voluntary surrender of a US trademark registration or expressly abandoning an application, because, like the decision to burn a bridge, the choice is irreversible. Registrant International Expeditions Inc. found this out the hard way as chronicled in the recent precedential Trademark Trial and Appeal Board (TTAB) decision, Christiane E LLC v International Expeditions Inc. (Cancellation No 92055645, May 24, 2013).

A cancellation petition was filed by Christiane E LLC against International Expedition’s registration for the mark INTRAV on May 22, 2012. Rather than file an answer, the registrant voluntarily surrendered its registration for cancellation on June 29, 2012. Nearly four months later, but before the TTAB had taken action on the surrender, new counsel made an appearance on the registrant’s behalf and filed motions for leave to file a late answer and to withdraw the voluntary surrender.
 

Whether or not to allow a party in an inter partes proceeding to withdraw a voluntary surrender of its registration prior to official action on the surrender was an issue of first impression at the TTAB. However, the TTAB took some guidance from the In re Glaxo Group Ltd decision from 1993 which held that only in an “extraordinary situation” could a withdrawal of an express abandonment of an application be allowed in an ex parte proceeding (In re Glaxo Group Ltd (33 USPQ2d 1535 (CCPA 1993))).

Three reasons were given for the decision in Glaxo:

1. third parties have a vested interest in relying on an express abandonment in planning their own prosecution strategy;
2. administrative requirements of the Trademark Office are implicated by withdrawing an abandonment; and
3. trademark examiners must be able to rely on the express abandonment or voluntary surrender of potentially blocking pending applications and registrations.

Continuing the logic in Glaxo, the TTAB agreed that once a party has expressly and voluntarily relinquished an interest, members of the public and employees of the Trademark Office may have relied on the filing to their detriment. Further, the TTAB felt that such reliance should be protected absent an extraordinary situation.

In the current case, the registrant’s two cited reasons for withdrawing their voluntary surrender were at the time of the surrender it did not know that the petitioner, Christiane E LLC, was formed by a founder of one of the registrant’s predecessors, and that the petitioner had hired away one of the registrant’s employees. The TTAB found this anecdotal evidence irrelevant and unpersuasive.

It remains to be seen what would qualify as an extraordinary situation. Perhaps the filing of the voluntary surrender by mistake – due to typographical errors in the withdrawal – would suffice.

Clients can and do change their minds. As the withdrawal of one’s registration (and in this case the entry of judgment against the registrant with prejudice) is an important and final action, it should not be done lightly. Thus, it is incumbent on trademark counsel to advise clients that voluntary surrender of one’s registration or an express abandonment of an application cannot be undone, and the decision to do so should only be taken after a thorough contemplation of the reasons and frank discussion of the irreversible consequences.

This article first appeared on WTR Daily, part of World Trademark Review, in June 2013. For further information, please go to www.worldtrademarkreview.com.

Patent Reexamination Produces Extra-Innings Win in Seesaw Infringement Battle

By Meredith Ainbinder. A member of our Litigation Practice Group

This past July, the Federal Circuit delivered a ruling that has defendants in patent infringement lawsuits, business executives and attorneys exploring new ways to wield patent reexaminations as a weapon in hotly contested patent fights.

 

Baxter and Fresenius have been engaged in years of tough competition and a long, tortuous litigation concerning hemodialysis machines. Their lawsuit came to a surprising close when the Federal Circuit determined that a late-in-the-game invalidation of Baxter’s patent claims in the PTO stripped Baxter of a string of wins in the litigation.

While reexamination itself has long been an arrow in the quiver of a company accused of patent infringement in district court, it was previously thought that a reexamination proceeding would affect an ongoing lawsuit only if the trial judge stayed the matter pending the PTO’s determination or if the reexamination was completed before rulings issued on infringement and validity.

In Fresenius v. Baxter, both the district court and the Federal Circuit had already ruled that Fresenius infringed Baxter’s valid patent, but the question of a proper damages award was still the subject of ongoing appeals. For that reason, the Federal Circuit held that the matter had not been finally decided. It thus took into consideration the PTO’s belated invalidation of the patent claims and dismissed the lawsuit.

For Baxter and Fresenius, the devil was in the details. The lawsuit was filed in 2003. In 2007, the district court determined that certain Baxter patents were valid and infringed by Fresenius. The case went up on appeal. In 2009, the Federal Circuit affirmed the district court’s ruling on validity of one patent, but reversed on two others. The Federal Circuit then remanded the case to the district court to reconsider remedies in light of the changed ruling on the patents actually infringed. (more)

Fresh Guidance for Owners of Standard-Essential Patents: Reasonable Royalties Can Be Expected; So Can Penalties if You Overreach

By Thomas Carey. Chair of our Business Practice Group

 

Until recently, thousands of companies had agreed to license their standards-essential patents (SEPs) on fair, reasonable and non-discriminatory (FRAND) terms in the course of participating in standard-setting organizations (SSOs), even though they were uncertain as to how or whether those commitments could be enforced or interpreted. A recent flurry of activity has brought the meaning and enforceability of FRAND commitments into sharp focus.

The Cellphone Wars
The most exceptional event was the August 3, 2013 decision by the US Trade Representative to overturn an exclusion order issued by the US International Trade Commission (ITC), the first such reversal of the ITC in over 25 years^[1]. The ITC order would have prevented Apple from bringing certain of its products into the United States because they infringed a Samsung patent essential to the 3G wireless communications standard.

Samsung had participated in the development of that standard. In doing so, it had committed to make its SEPs available on FRAND terms. The Apple products in question adhered to the applicable standard and, according to the ITC, used the Samsung technology. Although Samsung had offered a license to Apple over the course of prolonged negotiations, Samsung was persistent in asking for a license back of certain Apple patents that were not SEPs and not subject to FRAND commitments.

Before the ITC rendered its decision, the Department of Justice and the US Patent and Trademark Office issued a joint statement supporting a theory that we have reported as gaining traction worldwide: that injunctive relief should not be available to remedy infringement of patents that are the subject of FRAND commitments. This theory is based on the doctrine that injunctive relief is available only where monetary damages is not an adequate remedy; by agreeing to license on FRAND terms, the patent holder has conceded that it would be adequately compensated for a license if a reasonable royalty were paid.

An ITC exclusion order is comparable to an injunction in that it prevents the importation, and thus the sale, of the infringing product. Many observers felt that the ITC should have denied Samsung its requested relief on this basis.

The ITC rejected this argument. Furthermore, it complained that the parties had not adequately briefed the question in the initial ITC proceedings before the administrative law judge, and therefore it was not in a good position to rule on whether the Samsung patent really was essential to the 3G standard, how important it was to the standard, and what precisely the FRAND obligations were.

One of the ITC’s commissioners argued in dissent that Samsung had violated its FRAND obligations by consistently tying its license offers to Apple to a cross-license of non-SEP patents. While the dissenter did not accept the notion that the ITC could never exclude the importation of products on the basis of infringement of FRAND-burdened SEPs, he felt that no exclusion order should be granted because of Samsung’s failure to offer FRAND terms and the relative unimportance of its patent to the 3G standard.

On August 3, 2013, the US Trade Representative, with the backing of the White House, reversed this ITC’s exclusion order. The Trade Representative’s decision gave the ITC two succinct instructions in handling similar cases in the future. It directed the ITC:

1. To consider whether exclusion orders of products infringing FRAND-burdened patents is an appropriate remedy at the outset of the proceeding, rather than at the end; and
2. To require the parties to develop the factual record relating to the FRAND issue in the initial ITC administrative proceeding.

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New Obstacles Are Raised to Protecting Computer-Related Inventions

By Bruce Sunstein. A member of our Patent Practice Group

 

Recent court decisions make it more challenging to protect computer-related inventions with patents. On September 5, in the case of Accenture v. Guidewire,^[1] the Federal Circuit issued a split decision holding that a computer-related invention was not eligible to be patented.

At issue in Accenture was the validity of an already issued patent having claims directed to a system, and to a method, for generating tasks to be performed in an insurance organization. The system claims required an “insurance transaction database,” a “task library database,” a “client component,” and a “server component.” These items, which have sub-items that also appear in the claim, cooperate with each other to generate the tasks to be performed.

The patent also included a method claim that recited steps in a computer environment involving an event processor that interacts with an insurance transaction database, a task assistant, and a storing step.

In the past, this kind of structural detail in a computer-implemented system claim and a computer-implemented method claim would be sufficient to support a determination that the subject matter would be eligible for a patent, and, indeed, a patent with such claims was issued by the Patent and Trademark Office. Illustrating the structural detail in the system claim, the last subparagraph of the claim reads this way:

. . . wherein the event processor is triggered by application events associated with a change in the information, and sends an event trigger to the task engine; wherein in response to the event trigger, the task engine identifies rules in the task library database associated with the event and applies the information to the identified rules to determine the tasks to be completed, and populates on a task assistant the determined tasks to be completed, wherein the task assistant transmits the determined tasks to the client component.

 

Accenture put considerable additional detail into its patent, which has 15 figures, and occupies 110 columns of print. The patent is loaded with examples, including numerous excerpts of actual programming code, showing how Object Oriented Programming structures implement the invention.

Yet the Federal Circuit held that the subject matter defined by the system claims is not patent-eligible, relying on the court’s own non-precedential opinion in CLS Bank Int’l v. Alice Corp., decided in May 2013 .^[2] The plurality opinion in Alice Corp. in turn relied principally on the Supreme Court’s 2012 decision in Mayo Collaborative Servs. v. Prometheus Labs., Inc.^[3]

Determining that subject matter defined by a patent claim is eligible for a patent does not mean that the owner of such a patent claim deserves a patent, because the patent law also requires that the subject matter must be new and must not have been obvious to a person of ordinary skill in the field of the invention. These last two requirements correspond to sections 102 and 103 of the patent law.^{[4]
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^[1]Accenture v. Guidewire, No. 2011-1486 (Fed. Cir. 9/5/13)(slip opinion).

^[2] Accenture v. Guidewire, slip opinion, page 8 et seq., citing CLS Bank Int’l v. Alice Corp., 717 F.3d 1269 (Fed. Cir. 2013) (en banc). Accenture had not appealed invalidation of the method claims.

^[3] Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2013), cited in CLS Bank Int’l v. Alice Corp., 717 F.3d 1269 at 1279.

^[4] 35 U.S.C. §§ 102 and 103.