What's the Right Patent Royalty?

Dear Rich: I have a patent pending product line. The patent was filed in January, 2011. A company has approached me and showed interest in licensing the technology. I had them sign an NDA. I shared all the info, production sheets, gave them actual samples, provided them with copies of my marketing material, approved their production sample. They want to use my three trademarks, as I am considered an expert in this particular technology. All of a sudden they are telling me that they want to produce the product, use my trademarks, but pay the royalty only once the patent is issued. I know that royalties are up to 8%. I like your approach of a tiered royalty. Although my products are still patent pending, and they want to use three of my trademarks, I feel a 5% royalty is what I should ask for. What do you think? Choosing the right royalty is a business decision, not a legal one, so we leave that one up to you. As for the rest of it, here's some info that may point you in the right direction.
The trademark licenses. When a company wants to license trademarks and patents, it's not unreasonable to set separate royalty rates for the trademarks. That way, if the trademark goodwill outlives the life of the patent -- for example, as with a product such as Scotchgard -- the trademark owner will still receive revenues, despite the lack of patent protection.
Two tiers.  In previous entries and in our licensing book, we have suggested a two-tiered royalty for patent-pending products: one rate if the invention acquires patent protection; the other rate if the USPTO won't issue a patent. This often works when a product's success is tied to a first-to-market strategy.
Will your NDA protect you?  If the company wants a single royalty -- they're saying that they will only license the product if the patent is granted -- then you need to re-group.  If the product doesn't get a patent and it still has commercial potential, can the company go ahead with production and cut you out of the picture? Will your NDA protect you if, during the patent process, your patent is published as typically happens after 18 month -- and it's no longer a trade secret? Does your NDA prohibit the company from selling your product if it doesn't enter into a licensing deal? These are issues where an attorney's analysis may prove helpful.

Bird Feeder: Patent or Copyright?

Dear Rich: I have a design for a bird feeder which hasn't been made by anyone else yet. I want to pitch the idea to a company but don't want them to steal my idea. Is a copyright on the design good enough to stop them, or should I apply for a patent? Copyright won't protect useful objects, so we don't think that would be the best choice (unless you want to stop others from copying your bird feeder's imagery). Instead, consider one of the following methods of protection:
Design patents. Inventors use design patents to protect the appearance or design of a functional object. Some examples of bird feeder design patents are this one and this one. Read more about design patents.
Utility patents. Inventors use utility patents to protect bird feeders with unique functional features -- for example, this squirrel-repelling feeder or this squirrel-repelling feeder or this squirrel-repelling feeder (whoa that's a lot of repelled squirrels). Read more about utility patents. (Also you can preserve your place in line at that Patent Office without filing a full patent application by filing a provisional patent application.
Trade secret. Some inventors seek to protect their rights when submitting ideas by using nondisclosure agreements (NDAs), thereby preserving trade secrets. The problem for inventors is that often the evaluating company won't sign the NDA because of concerns that they'll be precluded from developing similar ideas. Read more about NDAs and trade secrets.

Can I File Foreign Patent Application in English?

Dear Rich: I want to file for foreign patent rights using a PCT application. I'm planning on applying in a few countries. Can I file in English?  Some of our readers may not know that a PCT filing refers to a procedure administered under The Patent Cooperation Treaty. Using the PCT process, you can file a patent application in the U.S. and then file a single “international application” (the “PCT application”) with the PCT Department of the USPTO that establishes a filing date for all member countries. This filing does not result in a universal PCT patent; the inventor must eventually file separate or “national” applications in each PCT jurisdiction.
Translations needed. According to the PCT rulebook, a translation of the international application must be furnished if the foreign patent office requires it. (Some countries permit you to choose from more than one language.) What's translated? The translation must include the description (including the title of the invention), the claims, and any text in the drawings. Normally the abstract must also be translated. Most countries don't require that the request itself be translated. Any foreign patent office that requires a translation of the request is obliged to furnish to the applicant–free of charge–a copy of the request form in the foreign language.

Doesn't Like His Patent Examiner

Dear Rich: I'm having a hard time with a patent examiner. I've tried to be reasonable but it seems like the examiner is just rejecting various claims because he can. What do I do if I'm stuck with a bum examiner? Most applicants or their attorneys bite the bullet and try to deal with the examiner as best they can. You can find advice on responding to unfavorable office actions in David Pressman's Patent It Yourself(Whatever you do, you don't fire off angry missives about the examiner's mental state because those can quickly go viral in the patent world.) If you get a final adverse ruling, you can appeal to the Patent Trial and Appeal Board (PTAB). You can browse past hearings or documents at the PTAB's site. If you're not happy with the PTAB's decision,  you can appeal to the Court of Appeals for the Federal Circuit located in Washington, D.C. By the way, a new site Reed Tech Patent Advisor advertises that, for a fee, it can provide you with a background analysis of any USPTO patent examiner including all kinds of info -- for example, the average time the examiner takes to issue a patent.

My Partner Patented My Idea!

Dear Rich: While I was in school, I came up with an idea for a product that allows you to get your car back from valet with a text message. I wrote a business proposal and found a partner. My partner started the company and we developed the product. I never signed any employment agreement, we never did any sort of paperwork for ownership of the company (he was a family friend), and he applied for the patent with his name and the company name. All was fine until a disagreement between us led to me leaving the company. Now he refuses to acknowledge my claim to the company (though I have him acknowledging my co-ownership in an email), and his name is on the patent for my idea. Obviously I learned my lesson about getting everything in writing, but do I have any recourse as far as challenging or becoming a co-owner? We're not clear whether your patent was granted or whether you're referring to an application still in progress. We're also not patent lawyers so we can't comment on the novelty or nonobviousness of your text message/valet system. But few applications fly through the patent process, so if a patent has not been granted (and we're not referring to provisional patent applications), we'd suggest that you search the USPTO website to determine where, in the patent food chain, the patent is currently located and to verify that you are not listed as a co-inventor. You need to also assess accurately what your contribution was. The more specific and detailed your contribution the stronger your position. But if all you provided was the one-sentence idea as in the question, above, the weaker your claim to invention co-ownership.
Can you afford the fight? Assuming you have a strong claim, you're going to need a patent attorney in order to validate your claim to co-ownership. (You'll need a patent attorney because you will need someone familiar with the the patent process and with claims such as patent fraud.) It's possible (though not likely), that if you have a really strong financial claim, you can find an attorney who will work on contingency. Before you proceed, consider the financial outcome. You don't want to spend more money on lawyers than you'll earn from your patent.

Sorry, You Can't Patent Cartoon Characters

Dear Rich: I would love to know more about patent drawing requirements. Well, first off my drawing in this case are cartoons characters which I would love to share around the internet but I am afraid that it will be easily stolen. Is it possible to patent cartoons for example, Mickey Mouse? If yes what should I do to achieve such actions and what documents are required? I'm interested in starting an online comic and my further plan is to sell some small merchandise into the market and therefore I will need such protection. We think you misunderstand the purpose of patent drawings. They're technical illustrations that explain how to make and use a patented innovation. So, they're not the right choice for protecting a cartoon character.*
How do most cartoonists protect their creations? Most cartoon characters are protected under copyright and trademark law (not patent law). Even though copyright is free and automatic, we still recommend copyright registration (online $35). Read more about copyright protection and registration for protecting cartoons and comic strips. You can also acquire trademark protection for your character. That provides exclusive rights to the character name, logo, and image on certain goods and services. Read more about trademark law, here. Keep in mind, no matter what laws protect your character, you can't prevent others from stealing it. These legal protections give you the basis - assuming you can afford it --  to chase, sue and recover from the wrongdoers.
* That Said Dept. Although there's no way you can obtain a utility patent for a cartoon character (utility patents only protect functional inventions), you can file a design patent, if, for example, your character is incorporated into the design of a lamp base. It's probably overkill in your situation because of the costs involved for filings (particularly if you are seeking expedited treatment). Copyright and trademark laws should provide equivalent or better protection.

Has Idea for Book Bag Design

Dear Rich: I am 20 years old and I'm looking to get my idea patented. Which forms are needed for a book bag type design?  Are all the fees due at the same time the application is turned in or can I just pay the $125? And also, do I file a utility patent or just a design patent. I am still unclear to the distinctions. Young inventors are an inspiration. Did you know Louis Braille was 15 when he invented the reading system used by blind persons? And Chester Greenwood was 15 when he invented earmuffs. Frank Epperson was 11 when he invented the popsicle (originally called the Epsicle). And Charles Babbage was 19 when he invented the concept of a programmable computer!
Right, you had a question. As for your last question --  the distinction between utility and design patents -- we talked about this in a recent post. Basically, if you're trying to protect something functional (like the massaging book bag on the left), seek a utility patent. If you're trying to protect appearances, like this combo vest/book bag, seek a design patent.
What forms are needed? Filing for a patent requires more than filling out forms and in most cases -- particularly for utility patents  -- requires the assistance of an attorney. You can read more about design patents here, and more about utility patents here. You can find patent forms at the USPTO website.
The fees. An applicant for a utility or design patent pays some fees when filing, others during the examination process, and more when the patent issues. If you are filing a provisional patent application and you qualify as a small entity, there is a one-time fee of $125 (soon to be $130) and if you qualify as a micro-entity after March 19, the one-time fee is $65. You can find more patent fees at the USPTO website.

Wants to Make Ric Rac Taggies

Dear Rich: I want to make a taggie for a friend and know people will see it and want one. I am aware of the legal issues on looped ribbon. Can I use textured ribbon and Ric Rac? I have ribbon which has "handmade with love" on it. Can I put the ribbon corner to corner diagonally? Is this allowed? I want to add texture to a normal square-shaped one and add a squeak to the shapes cut from a slice fabrique. Can you tell me if this is ok? Is it okay to use fleece? I need help so I am not breaching copywright issues. We're always excited to learn about popular crafts items, especially ones that we know nothing about ... Wait a sec ... we do know something about Taggies! We  wrote about them in a previous entry.
We can't really help. Because of the patent issued for Taggies, we really couldn't tell you whether you can get away with any of your plans but we have a feeling that if the Taggies Corporation learns of your proposed uses they'll ask you to stop no matter what you're doing. Of course, that's if they learn about your versions. If you avoid using the term, Taggies, you're unlikely to show up on their radar, particularly if you're just making the item for friends. Also, we know we have altered the grammar for much of your question and we hope that's okay -- our staff is a stickler for grammar and if anyone needs a grammar refresher we recommend this new book. (And we would also remind you -- in the gentlest of ways -- that there is no "w" in copyright.)

POST #1000!!!! 

Should I Patent My Clothing Idea?

Pat No. 4,151,613
A protective device for the buttocks and hips
 of a person for use in skateboarding

Dear Rich: There is sport-specific clothing, padded bike shorts, fishing vests, etc. I have an idea to use a specific aspect of one sport-specific clothing item and apply it to a different sport-specific clothing item. I think it would qualify for a design patent, since I would be merging two clothing aspects that have not been used together before. My question is whether it might qualify for a utility patent since the clothing item is "used" in the sport.  We understand your desire not to disclose your invention (and BTW -- after March 16, nondisclosures make even more sense). But because we don't know what your sports-related invention is, we can't really advise whether a utility or design patent is appropriate. The main guideline is that if your innovation does something (other than looking cool), you're in the world of utility patents. If your innovation primarily enhances the appearance, then you're in the world of design patents. That doesn't mean you'll qualify for the respective patents -- there's plenty of deets to deal with. But that's how you start your analysis.

Who Owns Employee-Created Invention

Dear Rich: This is a question related to the ownership of the invention between the employer and employee. I was employed by a company and I created an invention at work. The product that I invented was not related to any company business nor did I design the product using any knowledge that I acquired from the job; I just used the computer at work. In its program guidelines, the company said that if the invention was company business related, the company own the right although if the company was not interested in pursuing, it would release it and give the right back to the employee. If the project was not related to the company business, but the company was interested, then it would negotiate with the employee as to how two parties work together. If it was not interested, then the employee was free to do whatever he wanted.The employment agreement did say that if the employee uses any company resource to create anything, the company owns the rights. I left the company shortly after and a few months later, the company came back and proposed that we jointly submit the invention to a large corporation. They did not want to put any money in patenting. Without IP protection, I was not willing to go along. I told the company that I wanted to pursue the invention further on my own. A few days later, I received two documents that I requested --  a signed NDA and a letter of release, stating that I am the sole legal owner of the invention and that the company will not claim any legal right in the future: Is it safe for me to say that I now truly own the legal right of my invention (if I get the patent)? It seems that the guideline somewhat contradicts the terms in the employment agreement. My assumption is that the letter release should override the employment agreement.
Long Question; Short Answer Dept. You need to see an IP attorney. We believe the letter granting all rights will trump prior agreements but we couldn't say for sure without looking at the papers. If you're still interested in patenting the invention, you need to confirm your ownership and you also need to check your deadlines particularly if the invention has been disclosed or published. Here's a collection of articles that may help you sort out ownership issues and here's a previous entry relevant for California inventor-employees.
BTW, speaking of inventors, today (actually yesterday) marks the one-year anniversary of the America Invents Act and seven provisions of the AIA go into effect: inventor's oath or declaration; preissuance submissions; supplemental examination; citation of patent owner claim scope statements; post grant review; inter partes review; and covered business method review. Read more about it at our AIA timeline.

Google's Prior Art Button

Google announced a new feature for their patent search tools. It's a button that appears on the pages of certain patents. Clicking the button triggers a search based on key terms from the patent. What's nice about the search is that it only retrieves documents from before the date that the patent was filed. This may prove helpful for inventors seeking out prior art. Check it out.

Should I File My Own Patent Application?

Dear Rich: I read the article about doing one's own patent application and not needing an attorney. I have an invention for a product that I know will generate great interest. It's a method for treating metal surfaces that greatly will improve material strength at high temperature applications. Based on the article I assume that once I obtain a patent I will not have to worry about enforcing the patent. I have read how so many issued patents become invalid or that a court determines that the application is not broad enough to cover all aspects of the invention. I assume that cannot happen if as you say the patent office will help me with my claims. Is that correct? In the meantime, based on the legal advice I have read on your site I will prepare and file my application and save on legal fees. Assuming that this is the article to which you refer, the following info may help you.
You will have to worry about enforcing your patent. Having a patent doesn't relieve you from the obligation of enforcing it, just the opposite. As this article (and as David Pressman explains in his book Patent it Yourself), a patent is merely a license to go after infringers. Unfortunately, you will have to finance that enforcement out of your own pocket.
Don't rely on the patent examiner for your claims. Patent examiners have an obligation to assist applicants and the article includes two first-person accounts: one in which the applicant dissed the competency of the examiner; and the other in which the applicant was assisted in claims drafting by the examiner. (You can probably find many other comments about patent examiners by trolling the web or reviewing sites such as bustpatents.com.) In any case, though examiners can and may assist, you should draft and understand your claims before and after any modifications by the examiner. It would be best if you can have your patent claims reviewed by a patent expert (although practically, most patent attorneys will want to review the whole thing).
No matter who drafts your claims, it's always possible that a patent may be declared invalid.  Don't assume that your patent will survive all attacks just because an examiner helps you with your claims. (By the way, the same is true even if a patent attorney drafts your application; the difference being that you can sue the attorney for malpractice but not the examiner). Nobody can guarantee that an issued patent won't be later determined to be invalid, or too narrowly drawn to cover infringements. That often depends on the evidence that's uncovered, the tenacity of each party in the dispute, and the whims of the legal system.
"Based on the legal advice I have read on your site ..." Not to put too fine a point on it, Nolo and the Dear Rich Staff shy away from providing legal advice. Whether or not you should handle your own patent application depends on your resources -- time, money, and technical abilities --  as well as your personality (are you the type of person who can manage a fairly complex project?) If you need further information on whether you are suited (or whether it's worth pursuing a patent), check out Pressman's Patent it Yourself.

Wants to Patent an Idea

Dear Rich: I need detailed information on patenting an idea/product, the region that may or may not be covered, the limits to what cannot be patented etc. Thank you! IMOH. Lately we've been slowed down by the acronyms that are turning up in the Dear Rich emailbag. In this case we're baffled by your use of IMOH. Does this mean you're writing from the Iraqi Ministry of Health? Or does it mean you're just "in my own head," (which wouldn't make sense in this context, would it)? So that just leaves, "I'm outa here." But why would you be want to be out of here? Wouldn't you want to be here to get our answer? Ennyway, we're old, so maybe a younger reader can provide a path to enlightenment.
Right, you had a (broad, almost unanswerable) question. Considering that about six zillion pages have been written about patenting an idea/product, we'll try to steer you to a few sources of information that we find reliable (mostly, because we wrote them). To learn the basics of patenting, check out two sites we've worked on: Nolo's Patents and Business site has a fairly thorough explanation of the requirements and limitations of patent law; and Nolo's Patent Law and Inventions topic page provides some serious overlap. Of course, there's also a lot of great free information at the U.S. Patent and Trademark Office site, too. As for the regions that are "covered," the general rule is that your patent extends to the territorial boundaries of the country in which you have registered. Patent registration beyond the U.S. and Canada is complex, expensive and comes with time constraints --  for example, if you file in the U.S., foreign patent applications must be filed within certain times periods. Here's free information about international patents. (By the way, if you're planning on filing a patent without an attorney's help, the bible for DIY inventors is Patent It Yourself.)

Worried About Infringing Game Patent

Dear Rich: I am looking into possibly producing and selling a board game of my own design. I have done research into patent law and understand that patent applications are not available to the public for 18 months. So there is a "gap" where a patent may be in the works, but not available to patent searches. My understanding is that if I were to produce a product, my customers could be sued for patent infringement if my game ended up being in violation of some unknown patent. (Either unknown because of the "gap" I mentioned, or just an undetected.) Is this correct? Also, the theoretical unknown patent would likely have to be a method patent, as the types of game bits are not uncommon. As such, wouldn't that make the end user would the one actually infringing? If I pursue this business, is there a way to protect myself and my customers? It's true that an end user can be sued for patent infringement but that's rarely the case with board games. So, regardless of the patent issue, we doubt whether your customers would be in jeopardy.
Published patent applications. You're concerned that an unknown patent application will jettison your game. Keep in mind, you can't be sued for patent infringement until after a patent has issued --- that is, until after it's been officially granted by the USPTO. If you're concerned about recently published patent applications, you can review them at the USPTO's online patent gazette. When you review them, remember a few things:

• just because a patent application is published 18 month after filing does not mean it will be issued, 
• even if the application is issued as a patent, you won't be liable for infringements prior to issuance unless you have been placed on notice, and 
• even if you were placed on notice, you would only be liable for infringements that occur after the notification. In other words, you should have sufficient time to consult an attorney and decide whether to halt manufacture and sale before a lawsuit could be filed. 

In summary, if you do withdraw the game in a timely manner prior to issuance, you will likely avoid liability.
Searching for board games. If you're searching for existing board game patents (not patent applications), this article should help. And if, after reading it, you feel your board game is sufficiently novel and nonobvious, you may wish to consider filing your own utility patent application, design patent application, or provisional patent application.

Can You Copyright a Patent?

Dear Rich: I improved an expired invention. When I prepared my provisional patent application I downloaded drawings from the old patent and made a lot of modifications to show how I had improved the original. I'm submitting these drawings as part of my provisional patent application and I'm also citing that patent as prior art and wanted to attach a copy with my application. Here's my question. What if the patent has expired, but the copyright hasn't? Let's sort out a few things first. When you refer to an expired invention, we assume you mean an expired patent, one that's run out of gas because the term is over or the owner failed to pay maintenance fees. In other words, the patent is in the public domain. Second, if it helps to explain your invention, you can include the expired patent with your application (and mention it as prior art). But it's not necessary to provide copies of prior art patents when filing a provisional patent application. As for the drawings, we think you'll be fine but there are a few things to consider.
Copyrighting a patent? It's not uncommon for a patent applicant to use text or drawings from a prior art patent when submitting an application and there have been disputes as to whether a patent’s text or drawings are protected by copyright. The USPTO takes the position that, “Subject to limited exceptions reflected in 37 CFR 1.71(d) and (e) and 1.84(s), the text and drawings of a patent are typically not subject to copyright restrictions.”
What makes the issue somewhat confusing is ... One of the exceptions to the general rule, above, is that patent examiner regulations permit patent applicants to include copyright notices and copyright claims regarding authorship in patent text or drawings. The PTO’s website also states “There are also instances where a portion of the text or drawings of a patent may be under copyright. You should consult an attorney regarding these potential trademark and copyright issues.” And then there's also a 2003 case, Rozenblat v. Sandia Corp. 69 USPQ2d 1474 (7th Cir 2003) in which the Seventh Circuit, acknowledged the copyrightability of an inventor's patent drawings (although ruling against the inventor as to the issue of infringement). Finally, Copyright Office regulations  do not prohibit registration of patent drawings.
What's an inventor to do? As a general rule, the “borrowing” of technical language or drawings is likely to qualify as fair use under copyright law. However, exercise caution if the patent from which you are copying clearly indicates it is protected by copyright—for example the patent includes a statement of copyright ownership or a copyright symbol.
BTW Dept. Last month, the USPTO's General Counsel issued a paper on fair use and non patent literature (NPLs) that must often be furnished as part of the regular patent application. The USPTO concluded, “we believe that it is fair use for an applicant to make copies of NPL and submit those copies to the USPTO during examination in an IDS.”

Does Provisional Trump Regular Patent Application?

Dear Rich: Can you answer a question about provisional patent applications? We've invented an automobile accessory and we filed a provisional patent application. Then we filed a regular patent application. We recently learned that someone else has filed a regular patent application before ours (but after we filed our provisional). Do we lose the race because they filed a regular application before us? Under current patent law (first-to-invent) there is no race to the patent office. The issue is who invented the device first. That said, filing dates are important because they often reflect the date of invention (or constructive reduction to practice). Your filing of a provisional patent application, assuming it accurately reflects the invention in your regular application, can be used as prior art to stop a later inventor (or filer in this case) from obtaining a patent. In summary, if you wrote a good provisional patent application, you're probably the winner. This rule was demonstrated in a court case about a year ago. An inventor, Giacomini, filed a patent application claiming a method of selectively storing sets of electronic data. Another inventor, Tran, filed a patent application after Giacomini for a similar invention. However, Tran’s application was based on a provisional patent application that accurately described the invention and was filed before Giacomini’s application. In that case, the Federal Circuit held that Tran as “first inventor,” could claim patent rights and use his patent application as prior art against Giacomini. In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010).
Would the outcome be any different under the America Invents Act? On March 16, 2013, the U.S. switches to a first-to-file system. Under that system, the first inventor to file gets the patent. So, the outcome would likely be the same as your provisional patent application would be considered the first filing. Again, that's assuming your provisional patent application accurately reflected the invention claimed in your regular application.

Does Filing For Patent End NDA?

Dear Rich: If company A and company B have both signed a legal nondisclosure agreement (NDA) and then company A applies for a patent on the business plan covered in the NDA, does that make the information public and therefore make the NDA null and void? Information in a patent application becomes public when the USPTO publishes an application 18 months after filing. If the applicant does not plan on filing in foreign countries, the applicant can opt out of the 18-month publication program. If the applicant has opted out, the application will only become public if the application issues (or the applicant changes position on foreign filing). (We've discussed that previously, here.)
What happens after publication. Whenever the information is published, that information can no longer be protected as a trade secret and will not be subject to an NDA. That doesn't necessarily make your NDA "null and void." If other nonpublished information has been included as part of the NDA, that should still be protected. For more on the subject, check out our NDA site.

Can Yoga Moves Be Copyrighted?

Dear Rich: I've been following the Bikram Yoga stories and it's still not clear to me. Can I practice Bikram Yoga techniques at my studio or will I get sued by the Bikram people? The jury is still out on the case you're discussing in which Bikram founder Bikram Choudhury sued a former Bikram practitioner who started a competing "hot yoga" school (Yoga To The People or "YTTP") for copyright and trademark infringement. We thought we answered a similar question a while back but we couldn't dig it up so we assume it was written in a parallel universe.
The copyright case(s).  Bikram and his competitors have been in and of courtrooms over the past ten years. One group of yoga practitioners sought relief after Bikram sent out a bunch of cease and desist letters in approximately 2002 and 2003. That battle ended in a settlement in 2005 but not before a court weighed in on a few important issues. The court determined that: individual yoga moves could not be protected; a compilation of moves might be protected if sufficient originality could be demonstrated; even if a copyright were granted for a collection of moves, it would be a "thin copyright" and would likely be limited to performing the moves in the exact sequence; and the performance of yoga moves did not necessarily amount to their publication. As for the use of heat as part of the sequence -- and who wouldn't want to be in a yoga room packed with half-naked sweaty people -- no protection can be granted for this "concept." In September of this year, Bikram started up again, this time going after YTTP for copyright and trademark infringement. Bikram has received several copyrights for books and other compilations. However, the Copyright Office announced last week that yoga moves are not eligible for copyright protection. Bikram's lawyers discounted that decision as meaningless because Bikram's copyright has already issued and is presumed valid. It's true that there is a presumption of validity associated with a copyright registration but it's a rebuttable presumption and courts periodically eighty-six registrations when the situation calls for it. This may prove to be one of those situations.
Can you use the trademark? Probably, the strongest claim that Bikram can make is for trademark rights -- specifically as to the use of the name, Bikram Yoga. Bikram hasn't made the mistake of Pilates and permitted the unlicensed use of his name. So, if he can demonstrate that the Bikram marks (and we're not sure what is claimed beyond the name)  have been used, he may be able to succeed on trademark infringement claims.
Can it be patented? We don't think a collection of yoga moves is patentable, an opinion shared by other patent practitioners and by the patent office, although it is possible to obtain patents on yoga products, like the yoga gloves and shoes, shown above). (And of course let's not make the sad journalistic mistake of confusing copyrights and patents.)
Bottom Line Dept. If we were a betting blog, we would bet that Bikram will fail in his current copyright case though we doubt if that will deter the celebrity attraction that is associated with his "brand." The takeaway point, however, is that, until stopped by a published court ruling, the company is likely to continue to aggressively "protect" its turf.

Insurance for Patent Enforcement?

Dear Rich: I am patent pending and am worried about what will happen if my patent is granted and a big company rips me off. I can't afford to sue a big company. Will lawyers take my case for a cut of the profits? What do the little guys do? Getting into a lawsuit sounds pretty scary, probably a lot scarier than our neighbor's excellent Franken-pumpkin which appeared yesterday afternoon. It's a beautiful job and when we asked him whether he bought that shaped pumpkin because it looked like Frankenstein, he replied that no, when he got it home and looked at it for a while, the pumpkin said "Frankenstein" to him. Now that's how creative people channel inspiration. It's a little bit like the sculptor who, when asked how to scultpt an elephant, said, "Take a big block of marble and chip away everything that doesn’t look like an elephant."
Right, you had a question. Yes, an independent inventor with limited funds is in a bind when it comes to patent enforcement. Even if the funds can be found to fight a big company, the battle can drag on for years and cause much personal turmoil. Like patent expert David Pressman puts it, the utility patent is basically a hunting license. Obtaining the license without the necessary funds to use it against others makes it a useless piece of paper. There are three common solutions for this issue:

• align yourself with a big company. A big company usually will -- as part of your licensing agreement --  chase down (or possibly scare off) thieves and competitors. The downside is that you may end up earning less from your invention if someone licenses it (versus the profit margin if you manufacture it). On the other hand, often it's just the opposite and the right licensee can earn you substantial profits and save you a lot of hassle.
• consider offensive insurance. Yes, there is such a thing as offensive patent insurance and you can read more about its pros and cons.
• find a contingency litigator. Some patent attorneys take cases on contingency. This is often difficult and can be expensive (giving up a third or more of the recovery). Learn more here.

When Will the 1-Year Grace Period for Patents End?

Dear Rich: I filed a provisional patent application this week. I've been selling my product that I hope to patent for the past three months. The new patent law ends the one-year grace period. So where does that leave me and my application? You should be fine, provided that you file your regular patent application within a year of the provisional filing. The aspect of the law that you're referring to doesn't go into effect until March 16, 2013, and only applies to patents filed on or after that date.
What about the one-year grace period? The one-year grace period -- which allowed applicants to obtain patents even if if they had been selling or had published their patent less than a year before filing -- will terminate (with some exceptions) on March 15, 2013. As David Pressman, author of Patent It Yourself, recently explained in his excellent analysis of the America Invents Act:

"The one-year grace period has been decimated so that any publication, public use, or offer of sale of an invention before an application’s actual filing date will bar the application. An exception: if the actual inventor-applicant created the publication and it was made up to one year before the filing date, it will not bar the application. However it is still unwise for an inventor to publish before filing since they will lose their foreign filing rights and another person may see the publication and file their own application on it before the true inventor files, thus requiring an expensive and uncertain derivation proceeding."

Check out the article for more details, and for more on the AIA, you can read about the USPTO's implementation plans, and you can review a timeline for AIA implementation.