Supporting the Ravens
Our office manager and Senior Paralegal Tina Neuman in attendance at the Ravens game on Thanksgiving, supporting our Ravens that beat the Steelers 22-20 (phew!)
We hope everyone had a wonderful Thanksgiving.
How to Mark and Provide Notice of “Patent Pending” or “Patented” Articles/Products
Article by: Larry J. Guffey, Esq. and Pamela K. Riewerts, Esq.
A patent applicant who seeks the benefit of marking an article as “Patent Pending” must make a good faith effort to ensure that the articles are properly and consistently marked. An effective way to do this is to mark the article as “Patent Pending”. Use of this notice alerts the public that your article may soon be patent protected and that once a patent is issued, you have the right to initiate a patent infringement lawsuit against someone who is potentially infringing on that patent and wherein you seek monetary damages or other remedies for the copying, etc. of your patented article.
An applicant may only mark an article with “Patent Pending” once a patent application is filed with the Patent Office. It is also pertinent to note that it is a criminal offense to mark or offer to sell an article as “Patent Pending,” when an application for the invention has not yet been filed.
In deciding how and where to mark articles as “Patent Pending”, a patent applicant should be mindful of the purpose of giving public notice and also use common sense. For example, patent markings may be formed directly on the “Patent Pending” article by etching, molding, or printing, or if you are unable to place the marking on the article itself due to “the character of the article”, the notice may be provided on any packaging of the article, including the box and enclosed packaging papers, or marketing and promotional materials. In addition, there may be particular challenges that a patent applicant or patentee endures to properly mark an article. For example, often times, labels may fall off of the articles in transit, etc. The courts generally follow the “rule of reason” approach to hold that constructive notice is achieved when the patent applicant or patentee consistently marks substantially all of the articles.
Once a patent has been issued for the invention and you are a patentee rather than a patent applicant, the marking on the article should be changed from “Patent Pending” and instead be marked with the patent number and marked in the following manner: e.g., “U.S. Pat. No. X,XXX,XXX”, where your patent number is inserted therein. Examples of the proper use of this patent number marking can be found on the products and packaging of many reputable manufacturers.
More recently, the America Invents Act (AIA) allows patented articles to be marked “virtually” by using the internet. In order to comply with virtual marking requirements, the owner must mark the article itself, or the article packaging if it is not possible to mark the article, with the word “patent” or “pat.” along with a freely-accessible, internet address where one can find the patent numbers applicable to the patented article. Virtual marking provides certain advantages including aesthetic appeal as well as being able to easily update and identify later issued patents relating to the article without having to remark the articles individually. Instead, only a revision to the website page is needed. Examples of virtual marking via internet webpages may be found here: Examples of Virtual Marking
Please note that we recommend consulting with a patent attorney before moving forward with any marking or notice provisions.
Copyright 2013 Oliver & Grimsley, LLC
Disclaimer: The information provided in this article is not legal advice. It cannot be such since legal advice must be tailored to the specific circumstances of each case, including the consideration of federal law and jurisdictional law that can vary greatly from state to state. However, it is hoped that the information provided above will be helpful in familiarizing its readers with issues that may affect them.
Patent filing fee reduction strategies – micro entity status
Earlier this year, the United States Patent Office (USPTO) implemented a “Micro Entity” applicant status pursuant to the 2011 America Invents Act (AIA). This rule allows qualifying applicants to receive a 75% fee reduction of certain fees—including fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and issued patents. See the USPTO Fee Schedule for a complete listing of fees.
An applicant may qualify for “Micro Entity Status” based on: (1) experience and gross income; or (2) status as an Institution of Higher Education.
(1) Micro Entity Qualification Based on Experience and Gross Income:
An applicant must certify to the following four criteria:
- Small Entity Status: The applicant qualifies as a small entity under 37 C.F.R 1.27 (generally, an entity that has less than 500 employees, see 13 CFR 121.802); and
- No More than Four Previous Applications: The applicant or any joint inventor has not filed more than four previously filed US non-provisional patent applications (exceptions: applications filed in another country; international applications for which the National Stage fee 35 U.S.C. 41(a) was not paid – PCT applications which did not go past the International Stage; applications from a prior employment or assigned to the prior employer); and
- Gross Income Limitation: The applicant or any listed inventor did not have a gross income for the previous year that was greater than $184,116. The “Maximum Qualifying Gross Income” will change annually based upon median US household income. Check the current USPTO Qualifying Gross Income eligibility fee; and
- Grant of Rights (if any) must be to another Micro Entity: The applicant or any listed inventor has not promised, assigned, granted, or conveyed a license or other ownership interest (and is not obligated to do so) to a non-micro entity.
(2) Micro Entity Qualification for Institution of Higher Education Status:
An applicant must certify to one of the following criteria:
- Employee of Institution: The applicant is an employee of an Institution of Higher Education from which the applicant obtains the majority of the applicant’s income—(Institution of Higher Education as defined in Section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)) (not the same as a “not for profit” or school); or
- Grant of Rights to Institution: The applicant has assigned, granted, or conveyed a license or other ownership interest (or is obligated to do so) directly to the Institution of Higher Education itself (not a research institute, foundation or technology transfer office). ** Under the current USPTO rules, an assignee can be listed as the named application, however, in order to qualify for reduced micro entity fees, an Institution of Higher Education (with current or promised ownership interest) should list the inventors as the named as applicants until discrepancies in the law are resolved.
Moving forward, applicants can secure (or lose) reduced fees at anytime throughout the life of a filed application or issued patent. Keep in mind that each time fees are paid the applicant must certify that it has “Micro Entity” status. Therefore, it’s best to conduct to review of these requirements prior to each fee filing.
For more information on this topic, please contact Pamela K. Riewerts, Esq. (U.S. Registered Patent Attorney) at pamela@olivergrimsley.com
California law changes the right of certain users to delete online posts, prohibits certain marketing starting in 2015
Beginning in 2015, any website or mobile service that is directed to minors under the age of 18 and allows them to post content, will have to delete that content on request of the minor user. SB 568 provides in part that a site directed to minors must “(1) Permit a minor who is a registered user of the operator’s Internet Web site, online service, online application, or mobile application to remove or, if the operator prefers, to request and obtain removal of, content or information posted on the operator’s Internet Web site, online service, online application, or mobile application by the user. (2) Provide notice to a minor who is a registered user of the operator’s Internet Web site, online service, online application, or mobile application that the minor may remove or, if the operator prefers, request and obtain removal of, content or information posted on the operator’s Internet Web site, online service, online application, or mobile application by the registered user. (3) Provide clear instructions to a minor who is a registered user of the operator’s Internet Web site, online service, online application, or mobile application on how the user may remove or, if the operator prefers, request and obtain the removal of content or information posted on the operator’s Internet Web site, online service, online application, or mobile application. (4) Provide notice to a minor who is a registered user of the operator’s Internet Web site, online service, online application, or mobile application that the removal described under paragraph (1) does not ensure complete or comprehensive removal of the content or information posted on the operator’s Internet Web site, online service, online application, or mobile application by the registered user”
Some exemptions to this requirement apply (such as data that must be retained for law enforcement, data that is posted by a third party about the minor, and data that is anonymized). It is not clear (to this writer) that the law would apply after a minor reaches his or her 18th birthday. In other words – it is not clear a minor who does not make the request before their 18th birthday could make the deletion request after their 18th birthday.
That law also prevents a site “directed to minors” from presenting any content or advertising in the following enumerated categories:
(1) Alcoholic beverages
(2) Firearms or handguns
(3) Ammunition or reloaded ammunition
(4) Handgun safety certificates
(5) Aerosol container of paint that is capable of defacing property
(6) Etching cream that is capable of defacing property
(7) Any tobacco, cigarette, or cigarette papers, or blunt wraps, or any other preparation of tobacco, or any other instrument or paraphernalia that is designed for the smoking or ingestion of tobacco, products prepared from tobacco, or any controlled substance
(8) BB device
(9) Dangerous fireworks
(10) Tanning in an ultraviolet tanning device
(11) Dietary supplement products containing ephedrine group alkaloids
(12) Tickets or shares in a lottery game
(13) Salvia divinorum or Salvinorin A, or any substance or material containing Salvia divinorum or Salvinorin A
(14) Body branding
(15) Permanent tattoo
(16) Drug paraphernalia
(17) Electronic cigarette
(18) Obscene matter
(19) A “less lethal weapon”
A site is directed to minors if “[the] Internet Web site, online service, online application, or mobile application, or a portion thereof, [] is created for the purpose of reaching an audience that is predominately comprised of minors, and is not intended for a more general audience comprised of adults.”
This rule also reaches “advertising services” if the website/mobile operator advises the advertising service that the site is “directed to minors.” Advertisers therefore will need to obtain certification from their customers that the site they are servicing is not directed to minors, or, they will need to add the above filters for such sites.
The California law appears to be the first law that has used the age of 18 in regulating website/platform content; prior to this, under the FTC COPPA act, the applicable age was “less than 13.”
Sites and services that are “directed to minors” will need to begin technologically addressing the issues raised by SB 568 in 2014, to be ready in 2015.
For more information, contact Mike Oliver
Tapped Out: Controlling the internet via selective authorization
Craigslist, Inc. v 3Taps Inc., No. CV 12-03816 CRB. (N.D. Ca. August 16, 2013) is another case in a now long line of cases that establish that in most situations access to even an otherwise publicly accessible website can be controlled via selective authorization.
The 3Taps case is very straightforward. 3Taps scraped Craigslist’s website, and replicated it. Craigslist sent them a letter revoking all permissions to access the Craigslist site, but 3Taps ignored that and circumvented IP filters and continued accessing the website, and replicating it. In other words, Craigslist “singled out” 3Taps and told them that they could not access the Craigslist website. 3Taps was singled out because it was copying the entire Craigslist site, in apparent competition with Craigslist.
Note that unlike the Digital Millenium Copyright Act, which requires there to be sufficient technological measures to protect copyrighted content before there would be a finding of circumvention, under the CFAA, no such technological measures are required. 3Taps sought to dismiss the complaint filed by Craigslist, which complaint asserted that 3Taps violated the Computer Fraud and Abuse Act (“CFAA”) which generally prohibits a person from “intentionally accesses[ing] a computer without authorization or exceed[ing] authorized access, and thereby obtain[ing] . . . information from any protected computer.” The essence of 3Taps’ argument was that because the Craigslist website is publicly available, the CFAA does not apply, and therefore, just as anyone else had “authorization” to access and use the website, so did 3Taps. [Note: this decision did not address copyright issues with 3Taps’ conduct.]
A long line of cases enforce “terms of service ” either under contract law, under the CFAA, or both – that is, if terms of service authorize access to information on certain conditions, and those conditions are not met, then the access to that information is not authorized and is a violation of the contract and often, the CFAA. See Register. com, Inc. v. Verio, Inc., 126 F. Supp. 2d 238 (S.D.N.Y. 2000), affirmed on other grounds, 356 F. 3d 393 (2nd Cir. 2004) and their progeny.
You can now add this case to that list. This case even more bluntly stands for the proposition that a website owner can, with only the typical “protected class” exceptions, discriminate against a particular user and revoke authorization, while at the same time generally authorize the public to access and use the website. This right, moreover, does not make the website operator a so-called common carrier, and the website operator does not give up its other important immunities, such as the immunity under the Communications Decency Act (47 USC 230). There may be other limitations on a website’s right to discriminate – for example, there may be first amendment interests in the data being accessed, or there might be an argument that certain provisions in a contract limitation constitute a copyright misuse (and hence might make enforcement of the contract, even under the CFAA, problematic). However, in the majority of private interest cases like Craigslist (or Twitter, or Facebook or virtually any other social media provider) – the owner of the data is going to have a pretty broad right in the U.S. and under U.S. law to protect access to that data via restrictions either in a terms of service, or more directly as was done in the 3Taps case.
Congress is considering an amendment to the CFAA (Aaron’s law – for background, see this Techdirt article the EFF pages, and what I believe is the current draft here) that might limit a website platform operator’s use of the CFAA to control its content . . . but that issue has come up in various contexts before and Congress has not seemed to have much appetite for monkeying with the CFAA. Also, that would not eliminate the breach of contract claim (see the Verio case above).
The 3Taps case has been cited in some online commentary for the proposition that IP proxies or anonymization systems (like Tor) are “illegal.” That is not what the court held. There are many legal and pro-privacy reasons to use such systems that would not violate the CFAA. The simplest example would be use of such a system to avoid being tracked while browsing the web. In these cases you are not accessing a protected computer without authorization, you are simply sending a false identifier to a computer that is collecting the data on its own volition. CFAA punishes unauthorized access, not access gained by presenting false location or identification data. However, under the 3Taps case, apparently a terms of service agreement could be written to withdraw consent to any access of the site if a person is using a location or tracking anonymizer/IP spoofer, and hence, a person using such a service and accessing the site could then be in violation of the CFAA. That question, however, also raises substantial 1st Amendment issues (right to anonymous speech), which were not present in 3Taps. Thus, it is not clear at all that a court would hold that the CFAA claim would survive in that instance.
Until Congress modifies the CFAA internet users should be cautious about use of “publicly available” but privately owned information on a website, RSS feed, social media firehose, or other resource, and be careful to read and comply with the terms of service. [Note: this blog entry does not address governmental or public information, FOIA or the right (or lack of a right) under a contract or CFAA to “privatize” governmental public data]
For more information contact Mike Oliver
(unless specifically attributed, all links on this page are provided for information purposes only and have not been vetted by, and do not necessarily represent the views of, the author)