Steamboat Willie and the Impact of Trademarks on Public Domain Film

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On January 1, 2019, for the first time in over 20 years, works published in the United States will fall into the public domain due to copyright term expiration.  After the passage of the 1998 Copyright Term Extension Act (CTEA), copyright on works published before January 1, 1978 was granted a 20-year extension, increasing the term of copyright from 75 to 95 years.  Though all works published in the United States prior to December 31, 1922 were already in the public domain, those scheduled to be admitted on January 1, 1999 (i.e., all U.S. works published in 1923) were to remain bound by copyright protections for another 20 years.

            The CTEA generated controversy during its development, as major media conglomerates, most memorably The Walt Disney Company, had been lobbying for nearly a decade to extend copyright protections.  As a result, the CTEA was derisively referred to as the “Mickey Mouse Protection Act” by opponents of the legislation.  Indeed, a major motivation for Disney’s intervention was to extend protections for its earliest cartoons.  A particularly defining moment in the company’s history was the release of Steamboat Willie, a short cartoon with synchronized sound which introduced one of the most well-known popular culture icons of modern times, Mickey Mouse.  Notably, the CTEA represented the third extension of copyright of Steamboat Willie since its publication in 1928, a term which was originally set to expire in 1956.

            Trademarks stemming directly from early films are rarities.  By and large, the nascent 1920s film industry had yet to capitalize on the potential for extensive marketing campaigns.  Films in this era were often viewed as one-off experiences likened to symphonies or plays, though with less artistic standing.  Mickey Mouse stands as perhaps the most notable anomaly, a character that became a trademarked symbol of one of the largest mass media organizations on the planet.  It is precisely as a trademarked symbol under which Mickey Mouse will retain extensive legal protection.

            As a result, marketing of footage of Mickey Mouse, even footage which may have unambiguously passed into the public domain, may not be so straightforward.  Perhaps an enterprising person, looking to capitalize or build upon Disney’s intellectual property, will be able to produce a DVD of Steamboat Willie – but can they feature Mickey Mouse on its cover?  Even as a still from the film?  It is highly likely that any attempt to do so would result in litigation.  Disney is notoriously protective of intellectual property.  In one of the most highly publicized cases, in 1989, Disney threatened legal action against daycare centers which had painted Mickey Mouse on their walls.

            Any precedent that may result as a consequence of similar legal action will not be decided upon for some time, as Steamboat Willie is not set to enter the public domain for another five years.  Yet the case of Mickey Mouse is only one legal issue among many which may arise from the reopening of the public domain.  As such, the complex interplay of creators and the market in which they commoditize their creations is sure to fall under renewed scrutiny.

Making Every Cocktail Neat and Perfect

Learning cocktail making, as with many hobbies, has an inherent barrier to novices guarded by vexing terminology. What does it mean to “muddle” something? Is a “dash” the same amount as a “splash?” How can a cocktail be “dry?” Combined with an array of intimidating contraptions and an overwhelming abundance of complex, multistep recipes, it may be tempting to head out to the bar and put home mixology on the rocks.

Somabar® and other companies are seeking to change that. In the age of instant and facile domestic comfort led by smart home technologies, one patentable space remains sparse – the automated home cocktail maker. As can be surmised by anyone who has been to a novelty robot bar, automated cocktail making is known. For example, Smart Bar USA claims to market “the world’s first patented touch-screen bar and automated cocktail dispenser” (see U.S. Patent No. 8,584,900, wherein the inventors recognize “a lack of the ability to provide mixed alcohol drinks” via the beverage dispensing systems in the prior art).

However, Somabar® seeks to push through U.S. Patent Application Publication No. 2016/0039653 by linking the size of the invention to specific applications. The primary argument is based upon similar inventions in the prior art being six feet in height or taller, whereas a housing of the drink vending apparatus of the ‘653 application is “less than two feet in height.” The invention is therefore “small enough to fit on a standard kitchen counter and underneath standard kitchen cabinets,” as supported in the specification.

FIG. 1 below provides one embodiment of the drink vending apparatus of the ‘653 application. Liquor cartridges may be placed on the manifolds 128 to provide ingredients for a mixed drink. A glass may then be placed on dispensing tray 203 to receive the mixed drink as prepared by the apparatus. Tying the invention further to the smart home paradigm are its wireless capabilities; a mobile phone or tablet can operate the apparatus, from which a user can request specific drinks via an associated mobile phone application.

Bloomberg prices the Somabar® at $2000, which may be a little steep for the cocktail-curious. For now, at least, most amateur mixologists will have to suffice with their martinis shaken, not automatically dispensed.

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Precision Farming and Intellectual Property

With all of the intellectual property buzz around self-driving cars and blockchain, those looking for new breakthrough concepts might consider adjacent technologies that typically do not receive the same media attention. One of those areas that shows great promise is precision farming.

Precision farming is at the cross-roads of numerous engineering disciplines, including artificial intelligence, e-commerce, mechanical engineering, genetic engineering, control systems, drones, and more. Farms are a business and rely on technology for everything from improved seeds to determining how and when to harvest to pest control.

Many of the recent patent filings in this field of technology originate from China. Given that so many Chinese inventors have recognized the value in this field, it may be fertile ground for start-ups if they can get their concepts on file at the patent offices in time.

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Reefer Madness

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The burgeoning marijuana industry is witnessing incredible growth as the previously forbidden fruit becomes legal in an increasing number of states.  While the public is quick to adopt its legalization, other sectors are slow to adapt and the USPTO is no exception.  

            Early internet patents predicting various ways in which the internet would be used are now viewed as overly broad and the USPTO has swung the pendulum in the opposite direction (hello Section 101 rejections). Marijuana patents appear to be in a similar phase; it’s hard to say what is overly broad for a new product.  However, unlike the internet, marijuana has been known and tested, with many experiments occurring in the last century.  This presents an interesting issue - companies may patent previously known compositions, strands, and the like with little consequence, for now, as documentation of marijuana experimentation was minimal and possibly incriminating. 

            One example of such a case is going through the courts.  United Cannabis Corp is accusing Pure Hemp Collective Inc. of infringing a patent covering a liquid formulation with a high concentration of CBD.  People in the industry believe that the United Cannabis Corp patent, if maintained, could apply to most of the CBD products on the market, despite the fact that highly concentrated CBD formulations have been known before this millennium. 

            The marijuana industry is expected to reach about $75 billion by 2030, and patents will play a large part in who the big players in the industry will be, meaning that patents may dictate who gets to compete for those billions.  It will be fascinating to see how the patent side of a laid-back, laissez-faire culture shapes.  Will there be enough documentation from decades of marijuana research to limit new marijuana patents?  With so much money at stake, it is safe to say patenting early and often should be high on the priority list for all marijuana companies. 

Lessons from the “Nut Wizard”

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Inventions are often born out of a desire to improve upon current market products. If this is the case with your invention, clearly pointing out prior art that your invention has improvements over is useful information to include in a patent application.

One example of a patent application that includes discussion of prior art is for the “Nut Wizard” (U.S. Pat. No. 6,460,249 B1), a rolling basket with a handle that is used to pick nuts and fruit off of the ground.

The patent application for the “Nut Wizard” does a great job of emphasizing improvements made over other devices in the same space. For example, the “Nut Wizard” application points out how U.S. Pat. Nos. 3,215,293 and 3,604,190 includes axles that run through a basket, which may be difficult and expensive to produce. Then, to clearly contrast this prior art, the “Nut Wizard” application explains features that make it simple and inexpensive to construct.   

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Pointing out disadvantages in prior art and how your invention addresses these disadvantages is a strategy that may improve prosecution efficiency. For example, it is less likely that you will need to re-explain improvements over this prior art through an Office action response.

Learning from the “Nut Wizard”, do not be shy to point out disadvantages with previous approaches. Your patent application is a chance to point out all the great features of your invention and why these features are improvements over other products out there. Getting specific with the prior art that your invention has improvements over not only highlights advantages of your invention but also can make patent prosecution go more smoothly.

Volvo's Emission Problem

Volvo Trucks has just admitted to serious engine emission control problems in a new Press Release. The problem is not clearly defined, but rather the press release vaguely refers to it as follows:

The Volvo Group has detected that an emissions control component used in certain markets is degrading more quickly than expected, which could cause the engines to exceed emissions limits for nitrogen oxides (NOx). All products equipped with the component meet emissions limits at delivery; the degradation is due to a materials issue that occurs over time. A full analysis of the issue is not completed and it is not possible to assess the financial impact at this stage; however, the cost could be material.
— Volvo Trucks Press Release

One possible source that fits with this wording is degradation of an SCR catalyst using reductant injection. Another, previous, Volvo Press Release touted the advantages of such as system:

The solution was to improve the selective catalytic reduction (SCR) technology that Volvo Penta had already implemented in its Tier 4i engine generation. With SCR technology, AdBlue™ is injected into the exhaust line and reacts with NOx in the catalytic converter to turn the harmful compound into nitrogen and water. Another crucial part of Volvo Penta’s Tier 4f solution is light exhaust gas recirculation (light EGR). Because NOx is created at very high temperatures, the EGR further contributes to reducing NOx by lowering the peak combustion temperature.

How it’s different
Many of Volvo Penta’s competitors have attacked the problem from another angle, configuring their base engines’ combustion rate to produce low levels of NOx but emit high levels of PM. Their solution is to add a diesel particulate filter (DPF), which captures the soot and periodically incinerates it down to harmless ash in a process called regeneration. Though effective, this approach has its own drawbacks, including higher fuel consumption. Furthermore, a DPF requires costly maintenance and must be replaced regularly. Overall, a DPF system requires many extra parts — from air pumps and compressors to ignition coils — all of which can fail or need replacing.
While most engine manufacturers installed a DPF to meet Tier 4i and SCR to meet Tier 4f regulations, Volvo Penta uses just SCR in its Tier 4F engines — a simpler, more straightforward solution for customers, with fewer parts and less maintenance than a DPF.
“Because we believed that reducing NOx and PM emissions to Tier 4f levels could be achieved with just SCR, we put all our effort into improving that technology — and making sure we didn’t need to use a DPF, which can end up being more hassle for customers,” says David Hanngren, manager of industrial product planning at Volvo Penta. “It would have been far easier for us to use a DPF, which was already an existing technology. And ultimately our competitors’ engines with DPFs emit the same low levels of PM and NOx as ours do. But because they’re configured to perform at optimum levels, burn less fuel and produce very little smoke, our Tier 4f engines have ended up being a much better solution.”
Though Tier 4 Final is major step forward, the process of lowering emissions in off-road engines isn’t over yet — there are more stringent regulations in the pipeline for years to come. Volvo Penta is already working with innovative technologies to meet future regulations — while continuing to keep customer needs at the forefront of every new advancement it makes in emissions reduction.
— Volve Trucks Press Release

So we looked to see if Volvo has any patents describing such as system and found US 9,097,159, related to a method for detecting urea deposits in an exhaust line of an automotive vehicle, a method for eliminating urea deposits and an automotive vehicle adapted to such methods. The abstract explains the method is for detecting urea deposits in an exhaust line of an automotive vehicle and includes determination if an exhaust gas's temperature is reached, if the result of determination is positive, stoppage of urea injection, and determination of the quantity of NOx in the exhaust gases on the outlet of the selective catalytic reduction system. A comparison is performed between the quantity of NOx determined on the outlet of the selective catalytic reduction system and a theoretical quantity or a measured quantity of NOx produced by the internal combustion engine. If the comparison shows that the quantities are different, it is considered that urea deposits are present in the exhaust line.

Volvo may have discovered their in-use problem via a diagnostic approach just like the one above. The question now is - what can they do to solve the issue. No doubt, whatever the solution, it may generate important IP that other competitors may not even realize they need.



U.S. Tariffs and China’s IP System

The U.S. tariffs being implemented against various goods imported from China has raised a lot of questions around IP protection strategies.

            Historically, enforcing IP rights in China has been difficult, primarily due to a lack of recourse and structure for enforcing rights against infringers. However, in recent years there has been an initiative in China to revamp their IP system, and the result has made filings in China stronger for foreign filers.  

            So in view of recent tariffs, what makes sense for intellectual property strategies? The answer, is “it depends”.

            For companies in industries that are particularly competitive in China right now, such as artificial intelligence, it would be wise to build a portfolio of filings in China regardless of manufacturing location. This approach may prove helpful downstream to block direct competitors from using the same technology. Moreover, if your industry is particularly competitive in China, there may be a greater chance for your suppliers to come from China (especially for specialized parts). Thus, Chinese filings may also prove helpful for protecting your IP against potential suppliers, even if the final products are assembled outside of China.

            For companies which have R&D or manufacturing in China, building a portfolio of filings in China is critical. Even if a company does not intend to sell their goods in China and is solely using facilities in China for R&D or manufacturing, Chinese filings are critical to help preserve recourse against potential infringers. By filing in China, you are in a position to take advantage of China’s patent system and have improved chances of stopping potential infringers.

            However, in a situation where a company may be moving manufacturing from China to the U.S. in view of the new tariffs, there may be further considerations. For example, if a company manufactures their products in the U.S. and does not intend to sell their products in China, it could make sense to focus filings only within countries where the goods will be sold, with the knowledge that there will be no recourse for knock-offs made and sold in China. These U.S. based companies may have the ability to stop infringing goods from being imported into countries where they have protection without having to pay for filing Chinese patents.

          There are many factors that come into play when implementing an IP protection strategy, and companies may be pivoting their IP approach in view of the recent policy changes.

Have a technical question? Look to patent applications!

Tankless Water Heater US8276548B2

Tankless Water Heater US8276548B2

My husband and I are in the process of remodeling our house.  Among the more fun tasks associated with the remodel is the selection of new appliances.  During a recent discussion of hot water heaters (we have to upgrade to an instant tankless heater!), my husband mentioned that he was curious how gas-fueled tankless hot water heaters work.  While I had a good guess, I didn’t want to share it with him until I confirmed I was correct.  A quick search on the web sites of some major appliance retailers provided little technical information, so I turned to the source I use daily at work—the USPTO’s patent and patent application database.  To narrow the results, I entered the name of a common manufacturer of hot water heaters into the assignee field, and searched for gas tankless hot water heaters.  The search results produced a few solid patent applications, including one application with a well-written background section that explained the core technology.  By reading the application, I confirmed my guess was correct, plus I learned about new mechanisms for recovering waste heat produced by fuel-fired heating appliances.

So what is the point of this little anecdote?  After I read the patent application, it occurred to me that most people may not appreciate that the single largest collection of technical details relating to actual, manufactured and/or retail products is the USPTO’s patent and application databases.  The US government grants limited monopoly rights to inventors of new and useful inventions (including processes, machines, manufacture, or composition of matter) in exchange for public disclosure of how to make and/or practice the inventions.  Accordingly, typical patent applications include informative background sections where the general state of the art is discussed as well as extensive details pertaining to the invention.  These details might include overall system/apparatus structural details, controls, alternative implementations, and more, all accompanied by drawings illustrating the features of the invention. 

While granted patents have been publicly available in the US since the first patent was granted on July 31, 1790, the advent of the Internet as well as the decision by the USPTO in 2000 to also publish applications for patents, regardless of patentability, has led to an enormous database of patents and applications that are available for free, at one’s fingertip, and easily searchable by keywords, inventor, owner/assignee (e.g., the company at which the invention was developed), classification, and more.  So the next time you have a question about how one of your household appliances works, or you are wondering how your competitor’s product is made, look it up in a patent! 

Wish List: Coffee Drone

Ever wish a coffee would magically appear at your desk during your mid-morning slump? Well, the coffee drones from U.S. Patent. No. 10,040,551 granted August 7, 2018 are the stuff caffeine dreams are made of.

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In the patent, drones carrying coffee (or another caffeinated beverage) scan an area for people who look like their “cognitive capability is likely to be impaired” from sleep issues. The drone also looks for people requesting coffee by waving their hands towards the drone, for example. Taking on the role of caffeine guardian, the drone then delivers your coffee to you, “emit[ting] an alarm if the wrong individual intercepts the coffee.”

These patented coffee drones showcase just one of the many ways AI may make an appearance in our future daily lives. Based on its current trajectory, it appears AI is going to be used to complete increasingly complex tasks as time goes on. In the meantime, this coffee drone definitely makes my wish list. 

Elementary, my dear examiner!

 

In the current MPEP guidelines for assessing patentability under 35 U.S.C. 101, there are listed four categories of judicial exceptions: i) abstract ideas; ii) laws of nature; iii) natural phenomena; and iv) natural products. Thus, for pedagogical example, one might discount numerical counting under category (i),  the laws of thermodynamics under category (ii), lightning under category (iii), and the chemical elements under category (iv).

Actually, about that last case. Not every chemical element is a natural product. Only 90 of the 118 known elements occur in appreciable amounts in nature. The rest are, by and large, artificially synthesized. Where, then, is the judicial exception in obtaining patents for the remaining 28? This was the question that Glenn T. Seaborg and the Atomic Energy Commission posed to the Patent Office over 50 years ago. Indeed, when the Office rejected Seaborg’s patent applications for americium (element 95) and curium (element 96), Seaborg appealed and won. The patents were duly granted under nos. 3,156,123 and 3,161,462. The first three claims within the former read:

“What is claimed is:

1. Element 95.

2. The isotope of element 95 having the mass number 241.

3. The isotope of element 95 having the mass number 242.”

The phrase “in appreciable amounts” in the previous paragraph deserves some context. Some of the remaining 28 elements were later found to occur in nature, but in such small amounts as to remain undetected until the latter half of the twentieth century. Thus, technetium (element 43), promethium (element 61), and the 26 known transuranic elements (those elements with atomic numbers greater than 92) were first known to science when they were synthesized in a lab. Later, several of the elements were subsequently found to occur in nature (as byproducts of decay processes of more common radioactive elements). In an interesting twist, this latter set of naturally-occurring elements includes americium and curium!

Since most synthetic elements are first reported in the scientific literature, future discoveries are unlikely to be claimed by patents. Additionally, the most stable isotopes of the recent elements added to the periodic table have half-lives of less than a minute. These are thus unlikely to possess practical use beyond furthering fundamental scientific knowledge. Such sentiments were echoed in the 1964 New York Times article covering Seaborg’s appeals victory, which stated that americium and curium “have no known practical uses although they are of great scientific interest in understanding the nature of matter.” Seaborg’s discoveries, however, later found widespread use in smoke detectors and medical and industrial spectrometers. Certainly the future possibilities for the newest elements are slimmer, especially within the two decades’ monopoly allotted by US law. Yet the cases of americium and curium suggest that the pursuit of fundamental and abstract science often takes strange turns into practicality and patentability.