
                            Finally !

        Thankfully, I finally made it here, and I am looking
    forward to exchanging with the readers of InterNational
    Online!!
    
        This new column is related broadly to new ideas, new
    inventions, and new concepts, with an emphasis to some extent
    on computer related developments and inventions.  Since this
    column is so "new," it seems worthwhile to provide a brief
    overview of the intellectual property scheme of things,
    starting with a look at patents.  We will examine trademarks,
    copyrights and other issues later on down the line. There are
    many possible issues that relate to a wide variety of diverse
    concepts. Obviously as a patent lawyer my "slant" is toward
    the legal or lawyer's viewpoint of the system. But anyone
    needing clarification of the points touched upon during these
    sessions is invited to respond and pose any reasonable
    questions. We will endeavor to answer them in a clear and
    concise manner.

    -------------------------------------------------------------
        Of course these articles and the subsequent discussions
    that we will be presiding over later are not intended to be
    specific legal advice! Keep in mind that for many problems it
    is wise for one to seek their own private legal counsel.
    --------------------------------------------------------------

        Remembering the old admonition that "an ounce of
    prevention is worth a pound of cure," it should be borne in
    mind that many legal problems, including intellectual property
    situations, can be most prudently handled by obtaining timely
    advice before making mistakes or getting in too deeply into
    complex business and legal entanglements.

        Two requirements basically determine when an invention
    results. These are "conception" and "reduction to practice."
    Ordinarily conception occurs in the mind, when one first
    mentally envisions up the broadest initial concept. Reduction
    to practice occurs during the prototype stage, when working
    models or prototypes are built and tested and improved and
    perfected. Reduction to practice can also be "constructive,"
    where one merely files a patent application on the conception
    without building a model. Of course one still has to provide
    an adequate disclosure to the Patent Office, enabling one with
    "ordinary skill in the art" to practice the teachings of the
    patent.

        Once an "invention" results, often immediately after mere
    "conception," inventors become interested in "protection."
    Inventions can be "protected" through a variety of legal
    procedures. Some procedures are established by Federal Law,
    and some techniques for protecting intellectual property are
    based upon "state law."  Federal remedies broadly include
    Patents, Trademarks, and Copyrights.  Federal laws passed by
    Congress are set forth in a multi-volume series of "statutes"
    known as "United States Code."   By the way, the entire United
    States Code can be perused on a very handy CDROM available for
    $34.00 from the Superintendent of Documents, P.O. Box 371954,
    Pittsburgh, PA 15250; ask for the "current" version, U.S.
    Code, 1992; VISA or Master Card orders can be faxed to
    (202)-512 2250). Examples of State-based remedies include
    "common law" concepts, General Business laws, contracts and
    agreements, Trade Secrets, Confidentiality contracts, and
    state Trademarks. Each State has numerous statutes relating to
    intellectual property.

        Besides statutes establishing the "law," there are a wide
    variety of State and Federal Court decisions.  These are
    published in various "reporters" easily available in hundreds
    of law libraries around the country.  Also, there are numerous
    state and Federal regulations that determine the "law."
    Federal Patent Regulations, for example, comprising numerous
    Patent Office regulations are set forth in Title 37 of the
    Code of Federal Regulations. (Lawyers would abbreviate the
    foregoing as "37 CFR").

        A "patent" is a grant received from the Federal
    government, through the U.S. Patent and Trademark Office,
    providing a right to exclude others from making, using or
    selling the patented invention. A patent does not necessarily
    grant the owner the right to make, use or sell the invention
    himself - there may be an earlier patent that "blocks" his
    rights.  To obtain a patent a written application must be
    prepared and filed. It includes a thorough discussion of the
    invention and its workings. Drawings are usually included to
    illustrate the invention. The most important part of the
    application includes patent "claims" that legally define the
    invention. Most inventors are surprised to find out after
    reading a patent that the items illustrated in the patent
    drawings are not necessarily patented (i.e., protected)-  only
    that which is clearly defined by the claims at the end of the
    patent is "protected."

        The patent laws are set forth in Title 35 of United States
    Code.  In short, the subject matter of a patent must be
    "useful," "novel," and "non-obvious." (35 U.S.C. Secs. 101,
    102, and 103 respectively). Most patents are "Utility Patents"
    that relate to mechanical or electrical or chemical
    inventions. They can protect "what it is" and "how it works,"
    but not what it looks like. So called "design patents" protect
    how utilitarian devices "look." Thus Design Patents are said
    to protect the "ornamental appearance."  Often it is a good
    idea to file for both utility and design patents to protect a
    marketable product. There are other curiosities such as Plant
    Patents beyond the scope of this review.

        To be "useful" the patent disclosure must set forth an
    invention that works or functions. 35 U.S.C. Section 101
    states:

    "Sec. 101. Inventions patentable

          Whoever invents or discovers any new and useful process,
          machine, manufacture, or composition of matter, or any
          new and useful improvement thereof, may obtain a patent
          therefore, subject to the conditions and requirements of
          this title. "

       Under the "utility" requirement an invention must not be
    against public policy. Certain concepts such as methods of
    doing business, perpetual motion machines, computer programs
    (i.e., the mere listing of program steps) are ordinarily
    banned by the "usefulness" requirement. I have seen many
    curious "perpetual motion machines" over the years, and I am
    frankly amazed at the many new ways inventors propose gizmo's
    that fall into this classification. So far I have not seen a
    perpetual motion machine that really works. I haven't seen a
    time travel machine yet either, but that doesn't mean it can't
    be done! The Patent Office frowns on such machines, and Patent
    Applications aimed at such subject matter will almost
    certainly be contested and rejected.

        Inventions must also be "novel" or "new"  to be
    patentable. Section 102 of 35 United States Code, reads as
    follows:

        "Sec. 102. Conditions for patentability; novelty and loss
        of right to patent

        A person shall be entitled to a patent unless -

        (a) the invention was known or used by others in this
        country, or patented or described in a printed publication
        in this or a foreign country, before the invention thereof
        by the applicant for patent, or

        (b) the invention was patented or described in a printed
        publication in this or a foreign country or in public use
        or on sale in this country, more than one year prior to
        the date of the  application for patent in the United
        States, or

        (c) he has abandoned the invention, or

        (d) the invention was first patented or caused to be
        patented, or  was the subject of an inventor's
        certificate, by the applicant or his legal representatives
        or assigns in a foreign country prior to the date of the
        application for patent in this country on an application
        for patent or inventor's certificate filed more than
        twelve months before the filing of the application in the
        United States, or

        (e) the invention was described in a patent granted on an
        application for patent by another filed in the United
        States before the invention thereof by the applicant for
        patent, or on an international application by another who
        has fulfilled the requirements of paragraphs (1), (2), and
        (4) of section 371(c) of this title before the
        invention thereof by the applicant for patent, or

        (f) he did not himself invent the subject matter sought to
        be patented, or

        (g) before the applicant's invention thereof the invention
        was  made in this country by another who had not
        abandoned, suppressed, or concealed it.  In determining
        priority of invention there shall be considered not only
        the respective dates of conception and reduction to
        practice of the invention, but also the reasonable
        diligence of one who was first to conceive and last to
        reduce to practice, from a time prior to conception by the
        other."

        Basically, the aforementioned "novelty" statute says it is
    not patentable if it has been "anticipated" (i.e., done
    before!). To determine anticipation, or examine so-called
    "novelty" it is often a good idea to conduct a patent search
    as explained below.   Section 102(b) of the novelty
    requirement sets forth an important one year "Statute of
    Limitations" that requires the filing of a patent application,
    if at all, within one year of various critical acts. These
    acts include sales, offers for sale, public disclosures, or
    other acts  of commercialization or publicity.  If you are
    already making and selling your product, you better act fast
    if a patent is desired! There are other provisions set forth
    in the novelty statute that often come into play. Perhaps
    readers will questions the more obscure portions for further
    elaboration on my part.

        Finally, even if the proposed invention is "useful" and
    "novel" it will still not be patentable if it is "obvious."
    Section 103 of United States Code reads as follows:

        "Sec. 103. Conditions for patentability; non-obvious
    subject matter

        A patent may not be obtained though the invention is not
    identically disclosed or described as set forth in section 102
    of this title, if the differences between the subject matter
    sought to be patented and the prior art are such that the
    subject matter as a whole would have been obvious at the time
    the invention was made to a person having ordinary skill in
    the art to which said subject  matter pertains. Patentability
    shall not be negatived by the  manner in which the invention
    was made.  Subject matter developed by another person, which
    qualifies as  prior art only under subsection (f) or (g) of
    section 102 of this title, shall not preclude patentability
    under this section where the subject matter and the claimed
    invention were, at the time the invention was made, owned by
    the same person or subject to an obligation of assignment to
    the same person."

        Obviousness is a difficult thing to define. An invention
    may be "novel" as long as it is "different" from the "prior
    art." Even though it is slightly different than earlier
    inventions and hence "novel," it might be very similar,
    although not identical. If the changes are so slight as to be
    "obvious" there is a good chance that the invention is
    unpatentable. Probably a good thing to do is to "search" the
    invention and let an experienced attorney at least comment on
    the obviousness issue. There is a danger in determining
    obviousness. Laymen often improperly abandon good inventions
    by incorrectly diagnosing their ideas as "obvious." At the
    same time, many overly enthusiastic inventors ignore the
    obviousness criteria in what often becomes a blind rush to
    obtain a patent.

        Patent searches are usually conducted to explore the
    obviousness and novelty issues. In the "old days" most if not
    all searches were conducted manually at the Patent Office. The
    procedure was to first determine likely patent "classes" and
    "subclasses" for an idea being searched. All inventions
    presumably are classified in a particular "class." A fishing
    lure, for example, will be in class 43.  Particular details
    associated with a given invention will determine what
    "sub-class" the invention is defined in. Once the relevant
    classes and subclasses are determined, the procedure is to
    locate the shelves where patents in the desired
    classifications are stored. Many rows and columns of patents
    stored in little "shoes" would then be reviewed during the
    manual searching process.  Manual searches are still common,
    and such search techniques are often advantageous. But as time
    goes on, computer searches are becoming more and more
    powerful. Manual searches are becoming less and less valuable
    in my opinion.  Most searches I conduct are primarily done by
    computer. There are numerous databases that one can consult
    via modem. The Dialog service, for example, is probably the
    most exhaustive (you can get information on this by calling
    1-800-3dialog).  If you use CompuServe, you can type GO IQUEST
    at the prompt and eventually conduct a patent search.

        One of the best sources of computer data on patents is
    provided by the Patent and Trademark Office on CDROM. Patent
    CDROMS entitled "BIB," "ASIST," "PASN" and "CLASS" are
    currently available.  Information on the Patent Office CDROM
    program is available from the US Patent Office, Office of
    Electronic Info, Crystal Plaza 2 Room 9D30, Washington DC
    20231; telephone (703) 308 0322, fax (703) 308-0493. The CDROM
    information is widely available in the US at certain "Patent
    and Trademark Depository  Libraries." These libraries have the
    CDROM equipment for public viewing and searching of patent
    data. Usually they are staffed with knowledgeable folks that
    will offer a valuable helping hand to the neophyte who desires
    to conduct his or her own "search." Copies of patents going
    far back in time can be made from microfiche. Better yet, it
    is almost all free!

        Next month's installment will include a listing of the
    Patent and Trademark Depository Libraries around the country.
    Many of these have on file the full text of patents issued
    since 1790, trademarks published since 1872, and select
    collections of foreign patents.

    The value of the patent attorney in researching and
    representing the interests of a client may be best shown by a
    quick anecdote ...

        Years ago I worked in a gas station. A very simple job I
    had was to change oil. Changing oil in your car is a
    worthwhile and pleasurable "do-it-yourself" routine for even
    mildly interested "shade tree mechanics." There is nothing
    like regular routine oil changes to prolong the life of one's
    engine! And what could be easier?! But we had "do-it yourself"
    customers almost once a month that screwed up the job! Often
    they stripped the oil drain plug. Sometimes they cross
    threaded the oil filter. Worse yet, sometimes they forgot to
    replace the filter, or the drain plug, and then burned out the
    engine. One guy poured five quarts of Pennzoil down his
    mother's Cadillac carburetor! And believe me, analogous
    disasters often afflict "do-it-yourself" inventors!

         Maybe the foregoing has given you a few ideas. Perhaps a
     question or two has been suggested. If so, get back to me
     here at the magazine and I'll give your question a shot!
     Meanwhile, I am working on some basic copyright and trademark
     materials, and once we complete the overview, we will dive
     into specific issues involving computers, software, programs
     and the like! I am looking forward to your feedback from this
     and other articles!

     Stephen D. Carver
