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Category: Business

Is the U.S. Patent and Trademark Office Affected by the 2018 Government Shutdown?

The U.S. Patent and Trademark Office is not affected by the shutdown which has closed many government offices and agencies after Congress failed to pass a funding resolution.  Navigate to www.uspto.gov and you’ll be greeted by the banner announcing the Office is still open.

While other agencies are dependent upon immediate funding for their continuance, the USPTO maintains a reserve account of funds. The funds allow the Office to continue operating at nearly full capacity for at least a few weeks. These are collected, in part, from the applicants that have filed and prosecuted patent and trademark applications in the United States in previous years.

In December 2017, the Commerce Department issued a shutdown plan which noted: “The USPTO anticipates that it will have sufficient funds from other than current year appropriations to continue full operations for a brief period after a general lapse in appropriations commences. Therefore, all employees of the USPTO will be excepted for such period following a lapse in appropriations.” Commerce Secretary Wilbur Ross emailed USPTO employees on Friday, January 19, 2018 directing them to continue reporting for work until they were notified otherwise.

Collections from previous years enable the USPTO to operate despite furloughs at other federal agencies. The USPTO is well-funded; in fact, it generates far more money in fees than it consumes in expenses. However, fee diversion moves much of its revenue to other governmental agencies. The 2011 America Invents Act allows the Office to trap some of those fees into the reserve account before they can be diverted outside the agency.

Should the shutdown continue and the reserve funds be consumed, employees would begin to be furloughed. A small staff would nevertheless remain to accept new applications and to maintain the IT infrastructure. The electronic filing systems through which most patent attorneys and agents correspond with the USPTO would continue to operate, allowing filing dates to be established and deadlines to be met. The shutdown does close down the File Repository Warehouse, where the paper files for older patent applications are maintained. That warehouse is not operated by the USPTO and so is affected by the shutdown. As such, requests for copies of paper files (which normally take 1-4 weeks for production) will likely be delayed. This would not affect electronic files, of course.

In 2013, the government shut down lasted for two and a half weeks. The USPTO stayed open then, too, using the same reserve fund.



Intellectual Property Lawsuit Between Google/Waymo and Uber

Trial is moving forward in the Google/Waymo v. Uber intellectual property case. It has been thought that this lawsuit might help crown an early king of the self-driving vehicle industry, which Uber describes as potentially “the most lucrative business in history.”

In February 2017, Google spin-off Waymo sued Uber for misappropriation of trade secrets and patent infringement, stemming from the actions of former Google employee Anthony Levandowski. Levandowski was a high-level engineer in Google’s self-driving car division. He downloaded nearly 10GB of Google’s data – over 14,000 files – a few weeks before leaving Google to start his own company in January 2016. His company, Otto, was focused on autonomous truck technology. Just six months after he started the company, Uber acquired it for $680 million, and Levandowski was named to head Uber’s self-driving car work.

Not long after, one of Uber’s supplies mistakenly emailed information to Waymo about a circuit board Uber had ordered. Waymo looked at the board, thought it was a little too similar to the technology it had been working on while Levandowski was part of its team, and filed suit for a preliminary injunction against Uber.

A preliminary injunction is, essentially, a temporary restraining order. It is an order from a court temporarily preventing an entity from taking certain actions until more evidence can be gathered and a lawsuit filed (or not filed) or settlement reached. Here, Waymo requested that Uber’s work on self-driving cars be halted until Waymo could figure out possible damages and how to proceed next. Waymo won that injunction, showing a likelihood of prevailing in an eventual lawsuit and the danger of irreparable harm.

The case revolves primarily around LiDAR, which is a laser-based radar technology that allows a computer to map or “see” an environment. LiDAR has been used extensively for decades, but has recently come to prominence with autonomous vehicle developments. The trade secrets and patent claims revolve around this technology. The trade secrets claims rest, in part, on things like the designs for the printed circuit boards that Waymo developed, the position and orientation of the diodes and photodetectors on the boards, the selection and placement of optical elements for modifying LiDAR laser beams, and the laser pulse rate in the LiDAR system to create a precise resolution profile of objects in the environment. The patents (U.S. Patent Nos. 8,836,922, 9,368,273, and 9,086,273) also cover LiDAR technology. For instance, the ‘922 patent claims protection in a LiDAR device including a rotatable housing including transmit blocks and receive blocks, with a number of transmitters and detectors in them, such that light is emitted from the device and return light is gathered and collimated, or aligned, and focused back into the detectors. This technology assists in three-dimensional mapping of the environment.

Uber has several different types of LiDAR devices, and the patent claims reflected actions against them. However, in July, most of the patent claims were dropped after the judge encouraged the parties to narrow the issues, and after Uber stopped work on its “so-called” Spider technology on one of the LiDAR devices.

Last week, Waymo’s case grew more tenuous with the release of a due diligence report Uber commissioned before it acquired Otto. Although report includes dark details like Levandowski’s deletion of files and then destruction of the hard drives holding those files. Levandwoski tried to talk with Uber CEO Travis Kalanick about the hard drives, but Kalanick put up a brick wall to the discussion. Together with the report, documents regarding Uber’s designs were released, and even the judge noted that “the product is dissimilar. In many ways, it may be a vast improvement of what was going on at Waymo. So [Waymo has] come up a little short there.” In light of the documents release, trial, set to begin yesterday, has been postponed now to early December.



Not Invented Here!

Inventors often dream big.  Nothing wrong with that – progress is made by dreamers.  Dream right, though; not everyone can take an idea, turn it into a great product or service, and sell it to someone.  There are a lot of reasons why a great idea might never buy an inventor his own private island in the South Pacific.  Just one of them is called the Not Invented Here syndrome.

Not Invented Here, or NIH, refers to a cultural resistance to ideas or products that were developed outside that culture.  There are a number of reasons it may be present.

Some companies follow NIH because they are worried about compatibility issues.  An outsider will almost certainly lack total knowledge about a company’s product.  If that lack of knowledge means the product won’t function properly, problems will arise.  Thus, bringing in a solution from the outside can mean a lot of reverse-engineering, debugging, and problem fixing, while if the product had been developed internally, it is possible those problems could have been avoided.

For some, NIH is based in hubris.  “We’re the best, and we can do it better than you.”  A company that consistently chooses to re-invent the wheel may do so because it feels it can make and improve the wheel, simply because its people are better and smarter than the rest, and something made by someone outside the company is likely inferior.

Other companies adopt NIH polices because they’re worried about patent litigation.  I’ve been involved in lawsuits where two companies met to discuss a merger or patent purchase, disclosures were made to each other, the deal fell apart, and then the patent-holding company sued the other for patent infringement when the other later released a product very similar to the patent.  This is a common occurrence, and one that many companies try to avoid.  It is symptomatic of the left hand not knowing what the right is doing.  In large corporations, it is entirely possible that R&D is working on a product while deal markers are considering acquiring an entity outside the company that makes a very similar product, but the deal makers simply don’t know every scheme that R&D is working on.  One approach that large companies lacking the ability to track information like this will therefore take is to simply establish a policy that no outside information comes in.  They simply don’t entertain outsiders.

NIH is a problem for small inventors because it can mean they can’t get their foot in the door.  It can force an inventor to take his idea to market and show that it can command a powerful presence.  Hopefully, the NIH companies then come to the inventor.



Who owns my logo? The graphic design company that developed it or me?

You may have hired a graphic artist or agency to develop your company’s logo. Do you know who owns the rights in it?

There are two main types of intellectual property rights that can reside in a logo: copyright and trademark. Copyright protects an original work of authorship fixed in tangible means of expression; typically, a creative or artistic piece that is drawn, painted, saved, or otherwise recorded. Trademark rights protect the use of a symbol or identifier in connection with the sale or advertisement of a product or service.

Copyright usually vests in the person that created the work. However, when someone is hired by another to develop a work, the copyright may be owned by the employer or hiring party. Generally, in standard salary-based employment relationships, the employer will own copyright in works produced by the employee. But a graphic artist hired to develop a logo isn’t a standard employee – he or she is an independent contractor. The fact that the work is being produced expressly for the company’s use as an emblem for its identity likely weighs toward finding that the company is the owner of the copyright in the work, but it doesn’t provide a guarantee. A contract should be in place between the company and the graphic artist defining the relationship, and it should also cover the copyright in the work(s) produced.

Why is copyright a concern? Technically, if it were determined that the graphic artist retained ownership in the copyright, then the company would be infringing that copyright each time it used the work as its logo (absent a licensing agreement). Ouch. Or, if the company wanted to make a similar logo with a few slight differences, that newer logo could be considered an infringing derivative work of the original. Losing control of the copyright effectively equates to a loss of the ability to use and develop the logo.

Trademark rights are more clear-cut. Trademark rights arise only where there is use. While the graphic artist may have developed the logo, she did not use it in a trademark sense; in other words, she did not advertise a product with the mark affixed or sell an item that carried the logo. She has merely created the mark, and creation alone does not spawn trademark rights. Therefore, trademark concerns shouldn’t be too problematic when using a graphic artist to develop a logo.

Nevertheless, make sure that the contract with the graphic artist deals with trademark rights. There isn’t a reason for the graphic artist to hold onto any copyright or trademark rights that might arise in the work she creates. Her business isn’t holding copyright and trademark lawsuits over people’s heads; it is helping people develop creative and effective logos for their businesses.



Past Future of Computing

With the D: All Things Digital conference going on right now, there is a great video posted over on Kara Swisher’s digital column: an interview of Bill Gates and Steve Jobs at the D5 conference back in 2007.  Interesting to look at future projections from the past.



Why register a federal trademark?

A trademark registered with the federal government carries a number of advantages over one that has not been registered.

First, only federally registered trademarks can be enforced in federal court – so if someone is using your mark illegally, you can use the federal courts and federal law to get them to stop.

Second, if you’re successful in such a lawsuit, you may be able to get damages for their use of your trademark.

Third, if you register your mark federally, you are presumed to have used it across the entire nation and thus are presumed to have superior rights over anyone else that starts to use the mark after you.



Branding

Last night I attended a Phoenix Chamber of Commerce Valley Young Professionals event called Making a Brand Stronger: Your Company, You, and Your City.  The hosts, David and Sam PR, spoke mainly about Phoenix’s image as a national city and the discontinuity between its size and its commercial strength. They spoke very intelligently about the different metrics on which Phoenix can be ranked and about the country’s perception of us.  They emphasized how each of us can help improve Phoenix’s brand and how that brand can spur development and raise our profile in the future.

Before narrowing down on Phoenix, however, they called on the invitees for definitions of what a brand is: an image, a reputation, a logo, a promise to the customer, an atmosphere or culture.  Importantly, they said that a brand isn’t just a trademark, or a logo, or a name.  While those elements are important, they are merely just that: elements.

It is important for a new company to think about what its brand is and what it will become.  A brand can’t be fabricated; it has to be cultivated, evaluated, and developed.  A trademark is a small but important part of that brand.  It should align with the brand, help express it, but not define it completely.  A trademark is a valuable asset, but it is not the only element of a company’s goodwill.  Attitude, culture, friendliness, honesty, and a promise – all these things are important to a young company’s growth.



Venture Capital in 2009

The New York Times and the Arizona Republic recently published stories on the condition of venture capital in 2009, as documented by Friday’s report released by PricewaterhouseCoopers and the National Venture Capital Association.