Filed under: Copyrights
Section 1201 of the Digital Millennium Copyright Act (DMCA) prohibits circumvention of technical measures that copyright holders use to to control access to their copyrightable works. Anti-circumvention technologies may include items such as encryption and other digital rights management (DRM) measures.
Section 1201 exempts several activities from the anti-circumvention requirement. The statutory exemptions include the use of certain tools for encryption research, security testing, and other activities. In addition, every three years, the U.S. Copyright Office publishes a list of additional exemptions to the anti-circumvention requirement. This week, the Copyright office published six exemptions for 2010. The list includes two new exemptions:
- Noncommercial DVD sampling: for DVDs that are protected by content scrambling systems (CSS), the ruling allows circumvention of the CSS to use a short portion of the DVD content for (i) educational purposes by college and university professors or film studies students; (ii) documentary filmmaking; and (iii) noncommercial videos.
- “Jailbreaking”: circumvention for the purpose of enabling interoperability of computer programs on a wireless telephone handset.
The jailbreaking exemption has received much attention, as it may permit the use of iPhone or other handset apps that haven’t been sanctioned by the device’s supplier. However, although the process of “jailbreaking” no longer violates copyright law, the act may void the manufacturer’s warranty on the phone.
The Copyright Office’s 2010 list also removed some exemptions that were present in 2006. For example, an exemption governing sound recordings whose DRM created security flaws was not renewed in 2010. The Copyright Office also declined to renew an exemption permitting access to software and videogames that were distributed in now-obsolete formats.
Filed under: Patents
Bill Bennett of Australian law firm Pizzeys recently posted an article about a new Australian Patent Office decision governing the patentability of business methods in Australia.
As Mr. Bennett states in the article, prior to the new decision:
the governing precedent was Grant v Commissioner of Patents [2006]. Grant stood for the proposition that a method must produce “a physical effect in the sense of a concrete effect or phenomenon or manifestation or transformation.”
In the new case, the Australian Patent Office:
has qualified the “physical effect” requirement by now making it clear that the physical effect must be “central to the purpose or operation of the claimed process or otherwise arises…in a substantial way”.
For the full text of the article and more information, visit the Pizzeys Australian Patent Law Blog by clicking here.
When performing intellectual property due diligence in connection with a corporate acquisition, a frequently overlooked question is whether any of the company’s copyrights may be subject to termination at some point in the future. UCLA School of Law Professor Doug Lichtman’s excellent Intellectual Property Colloquium podcast recently prompted me to think about copyright termination rights in the context of IP diligence.
Ordinarily, an assignment of intellectual property is just that — irrevocable unless the agreement says otherwise. However, an exception exists for copyrights that were not made as “works for hire.” Section 203 and Section 304 of the Copyright Act permit a copyright owner (or his or her heirs) to terminate all licenses and or transfers of rights after a certain time period.
Because of this, if a company acquired copyrights from founders, from consultants who did not sign work for hire clauses, or from others who were not employees at the time that the work was created, then that company may be at risk of copyright recapture at some point in the future. (more…)
Filed under: Patents
In its recent Bilski v. Kappos decision, the U.S. Supreme Court held that business methods are patentable, and the Court refused to accept the Federal Circuit’s “machine or transformation” test as the sole test for determining whether a process is patent-eligible. In a quiet counterpart to this decision, on the same day the Court also remanded two cases involving medical methods – Prometheus Laboratories, Inc. v. Mayo Collaborative Services and Classen Immunotherapies, Inc. v. Biogen Idec – to the Federal Circuit to reconsider the cases in light of the Bilski decision.
In Prometheus Laboratories, the Federal Circuit originally found (more…)
Filed under: Patents
On June 28, 2010, the U.S. Supreme Court issued its long-awaited decision in Bilski v. Kappos. The patent application at issue involved a method of hedging against risk of price changes in energy market commodities. The lower court held that the invention was not patentable subject matter because it was a pure business method — not tied to a particular machine or apparatus, and not transformative of a particular article into a different state or thing.
The Supreme Court held that the so-called “machine or transformation” test is useful, but not a strict requirement for patentability. While holding that “attempts to patent abstract ideas” — and in particular the claims that Bilski sought — were not patentable, the Court’s opinion also said that business methods are not per se unpatentable subject matter. However, the Court offered no guidance as to what specific types of business methods may or may not be patentable. In fact, the Court’s opinion notes that the Federal Circuit may develop additional limiting tests. In addition, several members of Congress have spoken out about adding limitations through amendments to the Patent Act — despite the slow movement associated with previous attempts to reform the Patent Act.
In a quickly-issued memorandum to its patent examiners regarding the Bilski decision, the USPTO signaled that Bilski is unlikely to change the way that it reviews business method patent applications. The memorandum notes that methods that meet the machine-or-transformation test are likely patent-eligible. However, the memo also notes that:
If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea.
My colleagues Russ Barron, Mike Renaud, and Courtney Quish have published a more detailed analysis of the Bilski decision, available here. In the meantime, the Court’s opinion may encourage software developers and business process inventors to continue seeking patent protection for their inventions.
Filed under: Patents
On June 24, 2010, the U.S. Patent and Trademark Office announced that it will expand its Patent Application Backlog Reduction Stimulus Plan to all applicants. Under the plan, applicants with more than one copending patent application may have one of the applications accorded “special status” if the applicant agrees to abandon another pending application. “Special status” means that the applicant is advanced for faster examination — typically receiving action within one year.
The previous version of the backlog stimulus plan was limited to small entity applicants, and it was scheduled to end June 30, 2010. The new version of the plan is not limited to small entities. Instead, it will be limited to the first 10,000 applicants of any size, and it will last through at least December 31, 2010.
As noted in a previous post, it is a common practice for companies to mark a patented product with the applicable patent number. Patent marking provides several benefits, of which the most notable is the ability for the patent holder to collect damages for past infringement.
However, the Patent Act also imposes penalties on those who mark products with false or expired patent numbers. These penalties have spawned a wave of false marking lawsuits by individuals who hope to collect from companies who mark products with incorrect patent numbers or numbers of expired patents.
This week, the Federal Circuit issued an opinion that gives some comfort to patent holders who involve counsel in their marking decisions. In Pequignot v Solo Cup Company (No. 2009-1547, Fed. Cir. June 9, 2010), the Court reminded potential plaintiffs that the false marking statute requires that the marker apply the false patent number ”for the purpose of deceiving the public”. 35 U.S.C. 292(a). In the case, the Court stated: (more…)
Filed under: Patents
On June 3, 2010, the U.S. Patent and Trademark Office announced a proposal to revise the patent examination process in a potentially significant manner. Under the new proposal, patent applicants can choose one of three “tracks” for patent examination:
- Track I (prioritized examination): Applicants who pay an additional fee will receive a first office action within four months. Final disposal (allowance or final rejection) will occur within twelve months.
- Track II (standard examination): This option will involve standard fees and will proceed under current procedures.
- Track III (deferred examination): Non-continuing applications that originate in the U.S. may have examination deferred for up to 30 months. The examination fee — and possibly also the search fee — also may be deferred during this period.
In a telephone conference, USPTO Chief Communications Officer Peter Pappas explained that (more…)
Filed under: Business Law
On the “business” instead of the “intellectual property” side of IP Spotlight, I thought that the readers of this blog would find a recent article relating to unpaid internships interesting. Startups, small companies, and others who may have students provide a temporary helping hand this summer should consider that the failure to pay interns who provide services that benefit the employers may risk attention from the Department of Labor.
In the article, my colleagues Susan Lessack and Kali Wellington write:
The U.S. Department of Labor (DOL) has been and will continue to be more aggressive in policing violations of the Fair Labor Standards Act (FLSA), which requires the payment of minimum wage and overtime to covered, non-exempt employees. One exception to the FLSA’s minimum wage and overtime requirements is that a for-profit, private sector employer may hire individuals for internships or training programs without compensation if the internship is primarily for the interns’ educational benefit.
The article lists six criteria that must be met for the internship exception to apply. The full article is available at this link on the Pepper Hamilton website.
Filed under: Patents
On May 21, 2010, the U.S. Patent and Trademark Office announced that it would open up its Green Technology Pilot Program to patent applications that cover additional technology categories. Under the Pilot Program, an applicant who has filed a patent application covering technology that enhances environmental quality may apply for special handling status. When the special status is granted, the USPTO will advance the application out of turn so that it is reviewed more quickly.
The original guidelines for the Pilot Program, published in December 2009, limited the program’s benefits to patent applications filed before December 8, 2009 in certain categories, including:
- alternative energy production;
- energy conservation;
- environmentally friendly farming; and
- environmental purification, protection, or remediation.
So far, the program has had limited impact. In the first five months of the program, the USPTO awarded special status to only 342 patent applications. This may be because the program’s original technology classification requirement only covered technologies for which the wait time is generally not very long at the USPTO. Thus, applications that achieved special status often received little actual benefit. In addition, the program only covered already-filed applications. It did not cover (and thus did nothing to encourage) new patent applications for “green” technologies.
Under the newly announced expansion of the program, the USPTO has eliminated any technology classification requirements. Rather than limiting the program to specific technology areas, the program now simply requires the applicant to explain how the invention materially enhances the quality of the environment by contributing to the restoration or maintenance of life-sustaining elements. The program is still limited to applications filed before December 8, 2009 — and thus it does not cover newly filed patent applications. However, elimination of the technology classification requirement may encourage more applicants to participate in the Pilot Program, and thus spur extension of the program past its original pilot period.
The Pilot Program lasts through December 8, 2010 and is limited to the first 3,000 applicants. More details are available on the USPTO website.
