Climbing up to the World Stage: the Third Amendment to the Chinese Patent Law

In a showing of its desire to transform from a world's factory into an innovation-oriented country, China recently announced the enactment of the third amendment to the Chinese Patent Law. Since adopting its original Patent Law in 1984, China has enacted two amendments, the first in 1992 and the second in 2000. The first amendment inaugurated China's membership in the Patent Cooperation Treaty (PCT). The second amendment brought China's Patent Law into compliance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement.

Contrary to past experience, this third amendment was initiated from inside China.  Recognizing the country's weak technological competitiveness, in early 2005, the State Council announced its plan to formulate the National Intellectual Property Strategy ("Strategy"), aiming to boost China's IP creation, utilization, protection and administration by 2020. The Strategy became major ammunition for the initiation of the third amendment. Outlines of the Strategy were issued by the State Council on June 5, 2008.  Within three months, the draft of the third amendment was submitted to the top legislative agency for consideration. Four months later, the third amendment was enacted into law.

In passing the third amendment, China seeks to enhance patent protection, improve patent quality, and streamline the patent application process.  The major changes in the amendment can be grouped into four categories: higher bar for obtaining and enforcing a patent, improved procedural requirements, enhanced patent protection, and new limitations to patent rights.

Higher Bar for Obtaining and Enforcing a Patent

Absolute novelty requirement

The amendment changes the novelty requirement for obtaining a patent from the relative novelty standard to an absolute novelty standard. Articles 22 and 23 define the novelty requirement as an invention, utility model, or design that is not an existing technology or design. The amendment further clarifies that "existing technology or design" refers to a technology or design that is publicly known, inside or outside China, before the application date.

The amendment brings China's novelty requirement into accord with the international standard. Before the amendment, public use or knowledge outside China was not considered prior art. Combined with China's "first-to-file" system, the relative novelty standard allowed a Chinese manufacturer to obtain patent protection on a product that was marketed in another country, but not disclosed in a publication, and then block others from marketing the product in China, a practice known as "patent hijacking."  The new absolute novelty standard puts an end to such practice. The amendment is expected to make the country friendlier to foreign business and, therefore, more attractive to foreign investment.

Disclosure of genetic resource

The amendment adds disclosure requirements for inventions derived from genetic resources. Article 26 requires an applicant to disclose the direct and original sources for the genetic resources used to develop the invention, or provide reasons for nondisclosure, if the applicant cannot provide the required information. Article 5 denies patent protection to inventions based on illegally obtained genetic resources. 

China has vast and relatively unexploited genetic resources. In recent years, foreigners are increasingly drawn to China's genetic resources for biological and agricultural inventions. In many occasions, such exploitations were not accompanied by adequate compensation to the sources. The amendment aims to keep track of the country's genetic resources and to enforce disclosure of the origin of the resources, so that benefit sharing, as prescribed under the Convention on Biological Diversity, can be achieved.

Additional limitations in obtaining design patents

The amendment limits the scope of patentable subject matter for design patents.  Article 25 stipulates that two-dimensional printed matter, including graphic figures, colors, or the combination of both, which serves mainly as a mark or sign, is no longer patentable.

Under this amendment, a two-dimensional trademark most likely is not patentable.  In addition, the amendment raises patentability requirements for obtaining a design patent.  Article 23 of the amended Patent Law imposes an inventive step-like requirement for a design patent. Specifically, Article 23 requires that a patentable design should possess "obvious distinction" from an existing design or a combination of the characters from existing designs. Article 27 mandates a brief description of the design in the application, which was not necessary before, and requires that the figures or photos "clearly show" the design sought to be protected.

An application for a design patent in China is only subjected to the formality examination, not the substantive examination. The requirements under Article 27 appear to raise the bar for the formality examination. However, the new "obvious distinction" requirement required by Article 23 relates to the evaluation of the claimed design in view of prior art, which is only addressed during the substantive examination. Therefore, the effect of these new requirements on the quality of China's design patents remains to be seen.

Stricter double-patenting rule

Article 9 requires that, if an applicant pursues both the utility model patent and the invention patent for the same invention, the two applications must be filed on the same day. In addition, Article 9 mandates the abandonment of the utility model patent before the issuance of the invention patent.

It is common practice for applicants in China to apply for both invention and utility model patents, because the latter tend to grant more quickly. Typically, the utility model patent is abandoned once the invention patent is granted to comply with the one patent for one invention rule. The amendment simply codifies such practice.

Prior art defense

The amendment allows a prior art defense in a patent infringement lawsuit. Article 62 states that the accused infringer commits no infringement if she can prove with evidence that "the technology or design is an existing technology or design." The sweeping language of Article 62 seems to address both literal infringement and infringement under the Doctrine of Equivalents.

The amendment brings Chinese patent law practice closer to international practice standards. For example, U.S. patent law has long allowed an accused infringer to challenge the validity of a patent by claiming that the patent lacks novelty or is obvious in view of prior art. Similarly, because the term "existing technology or design" is used to define the novelty and inventiveness requirements in Articles 22 and 23, Article 62 seems to allow an accused infringer to challenge the validity of a patent by proving that the patented technology or design lacks novelty or inventive step in view of the "existing technology or design." The amendment balances the interest between a patent owner and an accused infringer, and will likely increase the cost of enforcing a patent. It will be interesting to see whether the amendment will have any effect on the quality of Chinese patents and the behavior of Chinese applicants.

Improved Procedural Requirements

Removal of the "first filing" requirement

The most significant procedural change is the removal of the "first filing" requirement.  Before the amendment, the Patent Law required all Chinese entities or individuals to first file applications in China for inventions made in China. After the amendment, filing in China first is no longer required. Article 20 allows an entity or individual to file invention or utility model applications in any country. However, before the foreign filing, applicants must submit their applications to the patent authorities of the State Council for secrecy clearance. If applicants fail to obtain secrecy clearance before filing the foreign application, the invention will not be allowed a Chinese patent.

The amendment brings China's foreign filing practice in line with the standard practice in many countries. Similar to the foreign filing license practice in the United States, the secrecy clearance requirement serves to protect the interest of the state by keeping sensitive technologies out of the public eye.

The amendment makes the filing process easier for foreign companies, especially those with significant R&D activities in China. The "first filing" requirement has been proven burdensome to international companies doing business in China. Before the amendment, to bypass the "first filing" requirements, some companies would assign the rights to an invention made in China to a foreign entity, which would then file the application in a foreign country. The amendment removes one more obstacle for foreign companies to develop and market new products in China. Coupled with China's inexpensive and bountiful skilled workforce, the amendment may increase China's attraction as a R&D outsourcing country.

Opening of patent legal market

Article 19 allows all Chinese patent law firms to handle foreign patent matters.  Before the amendment, only patent firms authorized by the State Intellectual Property Office could represent foreign entities in patent matters.  The amendment opens up the patent legal market to all firms in China. The amendment may increase the competition among Chinese patent law firms vying for business from foreign entities. Additionally, the amendment may increase collaborations between Chinese firms having large domestic client bases and foreign firms with the intention of expanding into the Chinese IP legal market.

Multiple similar designs in one patent

Article 31 of the amended Patent Law allows an application to claim multiple similar designs for a product. Before the amendment, for a single application to claim multiple similar designs, the designs had to be in the same classification and the products based on the designs must be sold as a set and used together. The amendment lowers the requirements for an application claiming multiple similar designs and may lower costs for obtaining protections for similar designs of a product.

Enhanced Patent Protection

Expanded protection to design patents

The amendment expands the protection given to design patents. Before the amendment, the patent law prohibited unauthorized making, use, sale, and importation of products that would infringe a design patent. The amended Article 11 extends to design patent owners the right to prohibit unauthorized offering for sale of a patented product. The amendment means that no one may offer the patented products for sale, advertise the products, or display the products in a store or trade show without authorization. The amendment brings Chinese patent law into further compliance with TRIPs requirements.

Higher penalties for infringement and counterfeiting

The amendment raises liabilities for patent infringement. Before the amendment, the patent law provided that patent infringement damages are determined according to the loss incurred by the patent owner, or the profit received by the infringer as a result of the infringement; and when the loss or profit is difficult to determine, the damages may be a reasonable multiple amount of the patent royalties. Article 66 adds to the recoverable amount the reasonable expense incurred by a patent owner in trying to stop the infringement. In addition, when the loss, profit, and reasonable expense are difficult to determine, Article 66 allows a statutory damage amount from over RMB 10,000 up to RMB 1 million, based on the type of patent and the nature of the infringement action.

The amendment also seeks to address patent counterfeiting practices. Article 63 increased fines for patent counterfeiting from 3 times the illegal income (or up to RMB 50,000) to 4 times the illegal income (or up to RMB 200,000). Newly added Article 64 allows patent enforcement authorities to investigate individuals involved in patent counterfeiting and the facilities used in patent counterfeiting, collect relevant materials such as contracts, receipts, and accounting books, examine the suspected counterfeits, and confiscate the counterfeits.

These amendments demonstrate China's willingness to control the country's patent infringement activities and counterfeiting industries. How the court system applies these provisions may be a good indicator on how determined the Chinese government is to improve the country's IP protection environment and international image.

Evidence preservation before an infringement action

Article 67 provides that patent owners may make a motion to a People's Court for evidence preservation before instituting a patent infringement action. The court is required to make a decision within 48 hours from the time of the motion and to take action immediately upon granting of the motion. To protect the interest of an accused infringer, Article 67 requires a warranty bond from the patent owner and further requires the patent owner to institute the infringement action within 15 days from the date of the evidence preservation action; otherwise, the evidence preservation measures will be withdrawn.

Preliminary injunction

The amendment clarifies preliminary injunction procedures. Before the amendment, a preliminary injunction may be granted if the patent owner can prove irreparable damage.

The amended Article 66 requires a court to make a decision within 48 hours from the time of a preliminary injunction request and to impose an injunction as soon as the request is granted. As a balancing measure, the amendment allows the accused infringer to request reconsideration of the preliminary injunction decision by the court.¹

New Limitations to Patent Rights

Parallel importation practice legalized

The amendment legalizes the parallel importation practice.  Article 69, Item 1, states that it is not an infringing act to use, offer for sale, sell, and/or import a patented product, or a product obtained by a patented method, after the same product is first sold by the patent owner or with the patent owner's authorization.  The amended provision moves Chinese patent law closer to the first-sale doctrine in U.S. patent law.

The amendment is based on the previous Article 63, item 1, which states that it is not an infringing act to use, offer for sale, or sell a patented product or a product obtained by the patented method if the product is first sold, or and the product is made and imported, by the patent owner or with the patent owner's authorization. The location change of the term "import" from the patent owner's side to the accused infringer's sides signifies legislature's intent to legalize the parallel importation practice. The amendment allows importation of patented products, often referred to as "grey product," from another country without the permission from the patent owner.

"Safe harbor" provision

The amendment provides a "safe harbor" provision for activities conducted for the purpose of obtaining China State Food and Drug Administration (SFDA) approval. The newly added Article 69, Item 5, is a close translation of 35 U.S.C. § 271(e)(1), the "safe harbor" provision of the Hatch-Waxman Act.2 Article 69, Item 5, states that it is not an act of infringement to make, use, or import patented pharmaceutical products or medical devices for the purpose of providing information in order to obtain administrative approval.

Before the amendment, the Chinese judicial system experimented with the idea of "safe harbor" uses. For example, Article 2 of the Administrative Regulations on Registration of Pharmaceuticals allows an applicant to submit an application for SFDA approval using a patented technology within two years before the expiration of the patent. However, this regulation has no binding effect on courts. In addition, the Supreme People's Court suggested that "making, using a patented product, or using the patented process and using² the product directly obtained by the patented process during the SFDA approval for the purposes of clinical tests shall not constitute patent infringement."³  The same position was endorsed by several lower Chinese courts. However, because China is not a common law country, the fate of the safe harbor clause in a court remained unclear until the amendment. Coupled with China's loose regulation on tests involving human subjects, the amendment may encourage the activities of generic pharmaceutical industries in the country.

Expanded scope of compulsory license

The amendment expands the scope of compulsory license practices.  Article 48, Item 1, allows a compulsory license if a patent owner, without justification, fails to sufficiently exploit the patent within three years from the date of the patent and four years from the application date.  Article 48, Item 2, allows a compulsory license if the use of a patent is judicially and administratively determined as anti-competitive for eliminating or restricting competition. The amendment provides further clarifications on granting a compulsory license in the fields of medicine and semiconductor technology.

For patented medicines, newly added Article 50 allows granting of compulsory licenses for maintaining the public health benefit to enterprises, which manufacture and export the patented medicines to countries and regions according to the treaties participated in by the PRC. The countries and regions are limited to the least developed countries in the world and WTO members that lack, or have insufficient, capacity of producing such medicines.  Article 50 is based on the Declaration on the TRIPs Agreement and Public Health³ adopted by the WTO Doha Ministerial Meeting, and the Protocol Amending the TRIPs Agreement adopted by the WTO General Council to implement the Declaration.  The Declaration and the Protocol allow WTO members to break through the limitation of the TRIPs Agreement and grant compulsory licenses of medicine patents under specific conditions.

For patented semiconductor technology, newly added Article 52 allows a compulsory license only for the purpose of benefiting the general public and when the use of a patent has been judicially and administratively determined as anti-competitive. The amendment exempts semiconductor technology from the broad compulsory license practice under Article 48, Item 1.

To limit the scope of the compulsory license practice, newly added Article 53 requires that the purpose of a compulsory license is for serving the Chinese market. However, there are two exceptions under which a compulsory license may be granted for a broader purpose. One is when the patent owner involves in anti-competitive practices, as described in Article 48, Item 2; and the other is for the purpose of maintaining public health as described in Article 50.

Rights of co-ownership of patent

The amendment clarifies a patent co-owner's rights. Article 15 allows a co-owner to use or license the patent without obtaining consent from other co-owners.  However, the article requires sharing of royalties. This is the first time that the Chinese Patent Law addresses the rights of co-owners of a patent. The amendment suggests a change of attitude in recognizing intellectual property rights by the legislative body and the legislature's intention to encourage such attitude in individuals.

In general, the amendment brings the Chinese Patent Law further into compliance with the WTO's TRIPS agreement. The amendment brings certainty to patent practices in China by clarifying the patent application process, enhancing a patent owner's rights, and balancing rights between an accused infringer and a patent owner. The State Intellectual Property Office is expected to soon modify the implementing regulations and examination guidelines to be consistent with the amendment. The rules are expected to further clarify and solidify the amendment.

In enacting the third amendment, the drafters hope to improve patent quality in China, promote domestic IP creation and protection, and further increase the country's attractiveness to foreign business. Noticeably, numerous national and local incentive policies, such as governmentally subsidized patent filing costs and tax incentives, are being put into place to motivate patent filing from domestic industries.  Whether the amendment and related policies would in fact accomplish what the drafters have set out to accomplish remains to be seen.

Thanks for reading!

Connie

connie@patentonomy.com

www.patentonomy.com

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1 Article 66, Chinese Patent Law.

2 35 U.S.C. § 271(e)(1).

3 See, Article 48 (2) of the Interpretation Draft of the Supreme People's Court on Several Issues Related to the Trial of Patent Infringement Disputes.

Patenting Strategies for Small Businesses and Individual Inventors—patentable subject matter

There are three types of patents under US patent law: utility patent, design patent, and plant patent.  In this blog, I will be mostly talking about utility patent.  Now, let’s look at the first question you need to answer before you invest more into your invention: is your invention a patentable subject matter?

To qualify for a patent, your invention must fall within one of the statutory patentable subject matters.  According to  35 USC 101, “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent…”  In a nutshell and from a practical point of view, think of it this way:

-          “Process” covers both processes and methods including, for example, methods for making a machine or device, a method for bioengineering a bacteria, a method for treating a disease, a business method etc.;

-          “machine” covers gadgets, machines, devices and systems including, for example, a gun, a molding machine, a bottle, a light bulb, a chair, a hair clip etc.; 

-          “manufacture” usually covers things that can be made by human effort—a component, a chemical compound, a synthetic protein, etc.; and

-          “composition of matter” usually covers mixtures and formulations including for example, a cosmetic lotion, a pharmaceutical formulation etc.   

Under the U.S. patent law, these subject matters are not patentable: laws of nature, physical phenomena, abstract ideas, human, mental process, and inventions that are offensive to public morality.  In a nutshell:

-          “Laws of nature” cover the theorems, equations, and principles in your math, algebra, calculus, and physics books.  These are fundamental rules that the components in the nature follow while interacting with each other; and they are not patentable.

-           “Physical phenomena” cover things that you observe in nature such as a rainbow, a cloud, a lake, a tree in its natural state, electricity, sound, color etc.  For example, you can patent an application of electricity such as a light bulb, but you cannot patent electricity itself. 

-          “Abstract idea and mental process” are a bit tricky—the rule of the thumb is that, if your invention is something one cannot see or touch and you can accomplish your invention with just thinking about it or, at most, using a pen and a paper, it’s likely will fall within the “abstract idea” or “mental process” category. 

Non-patentable subject matter can be a tricky concept.  This is further complicated by the fact that a skilled patent drafter can often turn a seemingly non-patentable subject matter into a patentable one (remember electricity vs. light bulb?).  So, if you aren’t sure, please do check with a patent attorney before you kill you invention.

The above description of the patentable vs non-patentable categories has been super-simplified.  The fact is that companies and inventors are fighting out every imaginable permutation of each of the categories every day with the US patent office and with each other in courts.   The information is only intended to help you to do a ballpark check on your invention.  I cannot stress this enough—if your research indicates that your invention has commercial potential, always check with a patent attorney before you kill your invention for “self-guessed” patentability reasons.

Thanks for reading!

Connie
connie@patentonomy.com

www.patentonomy.com

Patenting Strategies for Small Businesses and Individual Inventors--patent right basics

In this post, I will discuss a few basic concepts in the US patent law.  The discussion in this post will be very minimal and skeletal.  If you want to learn more about US patent law, I recommend you to read a book on basic patent laws (there are a lot of books on the market).  Also, if you really want to know what’s going on, the Manual of Patent Examining Procedure (MPEP) is an excellent resource.  The manual is used by the US patent examiners and is probably sitting on the desk of every U patent attorney (well, I know that I have a hardcopy on my desk, an electronic copy in my computer, and another electronic copy in my iPad—before the burgalrs took it).  Here is a link for the MPEP http://www.uspto.gov/web/offices/pac/mpep/index.htm.  If you have an appetite for reading the black letter laws, there is a link to statutes of the US patent law (United States Code Title 35—Patents) http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf.

First, patent right is a right to exclude; it is not a right to practice the patented technology on the open market.  I notice that inventors tend to think that, if he obtains a patent, he can practice the patented technology freely.  Not so!  Think of it this way—patent right is basically a property right.  Think of “claims” in a patent as a “land deed”—the claims describe the boundary of your intellectual property similar to a land deed describing the boundary of your real property.  If you own a piece of land, you know that you cannot just go ahead and build a house or a shopping mall on the land.  You need to obtain building permits from whatever the government bodies that governs that land.  Well, same applies to your “intellectual property land,” i.e., your patent.  You need permit to “build” from your patent.  If you have a patent on a drug that can cure cancer, you need approval from FDA to sell that drug.  Your patent gives you the right to exclude others from selling the drug; but it is not a permit for you to sell the drug.

Second, keep this in mind—as an inventor, you are entitled to a patent as long as your invention is useful, novel, not obvious, and fits under one of these categories: process (method), machine, article of manufacture, composition, or new and useful improvement of one of the first four.  Article I, Section 8 of the Constitution gives the Congress the power to promote the progress of science by securing for limited times to inventors the exclusive right to their discoveries.  From there, the Congress promulgated the patent law (35 USC).  35 U.S.C. Section 102 states that “a person shall be entitled to a patent unless…”   So, look at it this way—it is your constitutional right to have a patent if you invented something new, not obvious and useful.  Ok, this is an over implication of patent law.  Each of these words in the previous sentence after the “constitutional right” is loaded.  Billions of dollars have been spent and are being spent in courts to fight out what each word mean and billions more will be spent.  My point is that, if you are an inventor, the default by law is that you deserve a patent.  So, get one if you can.

Third, among all the components in a patent, claims define the scope of your patent right.  This statement is theoretically correct but practically incorrect.  Claims are consisted of words.  Therefore, the claim scope depends on the interpretation of the words.  This is where it gets tricky—huge bodies of case laws and various rules and regulations collective try to guide the “interpretation.”  Because the meaning of the words can be vague, the boundary of the intellectual property can be murky too.  This is like drawing a circle with a broad-tip pen.  Where exactly is the boundary of the circle?  Companies often spend millions of dollars in litigation to find that out.

Fourth, the written description in a patent is important.  My second point by no means diminishes the equal importance of the written description in a patent.  It is well-established in patent law that a patentee or applicant is free to be his or her own lexicographer. See, e.g., Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999); Hormone Research Foundation Inc. v. Genentech Inc., 904 F.2d 1558, 15 USPQ2d 1039 (Fed. Cir. 1990).  (I promise that I will try to cite as few cases as possible.)  Therefore, the way certain words are defined in the description will affect the interpretation of the claim scope. 

Hope this gives you a basic impression about the US patent law.  I will continue in my next post.

Thanks for reading.

Connie
connie@patentonomy.com

www.patentonomy.com

Patenting Strategies for Small Businesses and Individual Inventors--patentability search

So, you are an inventor.  You have a great idea.  What’s next? Two things you need to research into before you spend more money on your idea are: market research and patentability search.

Do you market research first.  I am assuming that your idea is a solution to a real world problem.  If that is the case, there could be market potential for the idea.  I am no market person. However, if it were my idea, the first place that I would look is internet.  Internet is a rich place for market research.  All these chat rooms, blogs, tweeters, and posts—people talk about everything in their life and every thought in their mind.  If there is a problem, you bet that someone is going to chat about it.  You might be able to find if the problem your idea solves is a common problem, what kind of solution people are hoping for, what are the existing solutions to the problem, and what the shortcomings of the existing solutions.  From there, research into each existing solution to figure out: what are the market size, how much the product is selling for, and what are the improvements/advantages your solution offers.  If you are satisfied that your idea has good market potential, you should then move into patentability search.

Patentability search helps you to decide if your idea is new (using patent term: novel) and not obvious (using patent term: nonobvious) over the existing solutions.  Usually, for the inventors, I suggest that you only make the novelty determination.  Obviousness determination is a tricky patent law concept.  If you think that your idea is novel, you might want to consult with a patent attorney before you kill your idea because you think “it’s obvious” over existing references.

The following are suggested steps in doing patentability search using free databases.  You don’t have to follow the steps or step sequences.  And, remember that you can always hire a patent attorney to provide a patentability search and/or patentability opinion for you.  Attorneys usually use paid databases—so, theoretically, the search results are more comprehensive than the ones you obtain from the free databases.  The end point is that you need to find out as much information relating to your idea as possible so you can decide if the idea is new or not.

First, do a general internet search.  I like to use google (www.google.com) and google scholar (http://scholar.google.com).  Bing (www.bing.com) gives very limited results—the search engine is better for regular internet surfing than for patentability search.  Try different combinations of the keywords for the search.  Try multiple searches.  Patent attorneys all know that keywords selection makes a huge difference in search quality.  Try to think like an attorney--if you were to describe your idea in a patent, how you would describe it and what words and/or word combinations you would use.  If there is a link that looks especially promising, follow through the links—usually the link with lead you to the most related reference.  During the search, you will notice that related search results will coalesce into the references by a few authors or a few manufacturers (if your idea is a specific product). 

Next, search authors’ names or manufactures’ names using common search engines and in the USPTO database.  The search will lead you to more information.  When search USPTO database (http://patft.uspto.gov/), search in both patent application and patent database.  To search an author name, set the “inventor” as the author name and try different combination of the name.  To search a manufacturer name, set the “assignee” as the manufacturer name.  Again, try different combinations of the name.  The search will provide you the patents and patent applications that the author or the manufacturer has filed before 18-months of your search date.  Those patents and patent applications are rich sources of information—you can find out the details of the product designs allowing compare the product designs with your idea.

There a lot of free patent database you can try out.  Some websites have collected free patent databases sites.  Here are a few you can explore:

-          http://www.patentcomplete.com/search.html

-          http://www.library.gatech.edu/search_locate/techres/patentsweb.htm#free

-          http://free.patentfetcher.com/

-          http://www.patentlens.net/patentlens/quick.html

-          http://www.patentlawlinks.com/patsearc.htm

-          http://www.freepatentsonline.com/search.html

-          http://patentscope.wipo.int/search/en/search.jsf

After a few days of exhaustive search, you are satisfied that your idea is new and there is a good market potential for your idea.  This is a good time to talk to a patent attorney.  If you want go a little further before spending the money hiring an attorney, or if you want to do this yourself,  then you need to have a basic grasp on patent law—which I will discuss in my next post.

Thanks for reading!

Connie
connie@patentonomy.com

www.patentonomy.com

Yes, you too are an inventor!

The title of “inventor” often carries with it a hallo of unreachability by common folks.  When we think of an inventor, we often think of Thomas Edison, Alexander Graham Bell, Samuel Morse, or Henry Ford.  We don’t usually think of the modern researchers in the labs, the professors in the universities, and the internet entrepreneurs.  We certainly don’t think about ourselves.

Several years ago, we had a house renovation project.  The workers put up wood window frames all over the house.  The dust generated by the sawing and drilling flew all over the house.  One night, my then 10-year old asked me “why can’t they have an electric drill with a built in vacuum tube?”  He even drew a drill with a built-in vacuum tube extending through the main body of the drill with an opening just under the drilling bit.  That was a great idea!  I told him that I would do a search for him.  If the idea was not patented, I would write and file a patent application for him.  I did a search in the patent database.  It turned out that a patent application covering almost exactly the same idea was filed just over a year earlier and the filing company is Boeing.  So close for a 10-year old inventor!

Yes, I call him an inventor—he saw a problem and came up with a solution to solve the problem—that is the very definition of an inventor.   What about you?  Have you encounter a problem and come up with a solution to solve that problem?  A few years ago, a client of mine became frustrated with her bra strap keeping slipping off.  She came up with a simple decorative clip to keep bra strap in place.  We filed a patent application for her and she started her own company. 

I am a big fan of “Sharp Tank” show.   A recent episode featured a woman who enjoyed a manicure party every Friday with her four daughters.  Tired of assembling bottles of nail polishes, colors, polish removals, and cotton pads, the woman came up with a convenient nail color kit.  The kit has a nail color bottle on top of a screwed-on bottom container; and the bottom container houses cotton pads presoaked with nail polish--a simple and elegant solution for the problem.  The sharks loved it!  So, did I.

In another “Sharp Tank” episode, a mom noticed that her baby daughter became frustrated with the traditional Sippy cup, which usually has a straight and rigid straw and cannot reach the liquid at the bottom of the bottle.   This is a problem that has probably frustrated every parent I knew.  This mom set out to solve the problem: she came up with a Sippy cup having a weighted straw.  The straw will bend and reach the liquid when the baby tilts the bottle.  What an elegant solution!  Unfortunately, there is only a design patent covering the product.  The mom probably should have tried to obtain a utility patent covering a Sippy cup having a weighted straw.  In my next few posts, I will talk about patenting strategies if you have a great idea like this.

These inventors are just a few examples of inventors who are common folks like you and me.  I bet, if you think back about the stuffs that you’ve done, you might realize that you too have a few of these great ideas floating somewhere or prototypes lying around in your garage.  Physically speaking, human species is weak—however, we thrived and dominate all other species on the planet earth.  Why? because we invent to make up for our weakness.  We cannot out ran a tiger—fine, we invent cars; we cannot fly like bird—fine, we invent airplanes; and we don’t have sharp claws and teeth—no problem, we invent weapons that would defeat the sharpest claws in the animal kingdom.  By giving us this incredible creativity, God created us to invent.  We as a species are destined to have researchers who will come up with solutions to awful diseases, the professors who will come up with new energy harvesters, and the internet entrepreneurs who have changed and will continue to change the way we live our daily life. 

We are all destined to invent.  So, yes, you too are an inventor!

Thanks for reading!
Connie
connie@patentonomy.com
www.patentonomy.com

Doctrine of Repair and Reconstruction

Doctrine of repair and reconstruction, or repair doctrine, in U.S. patent law allows a person who is authorized to produce, use, or distribute a patented item to repair and replace unpatented components.  Essentially, the owner of a patented property has a lawful right to repair or replace his/her property. 

The repair and reconstruction doctrine was established by Aro Mfg. Co. v. Convertible Top Replacement Co. 365 U.S. 336 (S. Ct. 1960) (Aro I).  In Aro I case, petitioner manufacturer produced replacement fabric for convertible tops, on which respondent manufacturer held a valid patent. Respondent had brought an action against petitioner for infringing patent and enjoining petitioner from manufacturing replacement fabrics for such tops. The court held that fabric used was an unpatented element of respondent's combination patent, which covered only the combination of certain components, one of which was a flexible top material. However, no claim that the fabric or its shape, pattern, or design constituted the invention was made in application or included in patent. Thus, the fabric was an unpatented element of respondent's combination patent. As an unpatented element of a combination patent, the fabric could be produced and sold to owners of convertibles to replace worn out tops in order to continue to utilize convertible top.

Therefore, under repair doctrine, an owner or licensee of a patented device or combination does not infringe the patent by replacing an unpatented element of the combination that has only a temporary period of usefulness, so that replacement is necessary for continued utilization of the machine or combination as a whole.

However, the repair doctrine is not a loophole for a person, who purchased a first patented device, to construct another patented device entirely from components purchased from unlicensed sources after the first patented device reaches the end of useful life.  This limitation to the repair and reconstruction doctrine was illustrated by Stukenborg v. United States, 372 F.2d 498, 153 USPQ 292 (Ct. Cl. 1967).  In the Stukenborg case, plaintiff patentees sued to recover from defendant government for its unauthorized use or manufacture of plaintiffs' inventions for turnbuckle assemblies. The court held that there was no infringement where defendant used components from unlicensed sources to replace like parts in assemblies from licensed sources.  However, the court found that infringement existed where defendant did not have an implied license to use turnbuckle assemblies constructed entirely from components defendant purchased from unlicensed sources.  In clarifying the repair and reconstruction doctrine, the Stukenborg court states that the mere fact that a person has an implied license to use a device that is covered by one set of claims does not give the person an implied license to use the device in combination with other devices in which the combination is covered by another set of claims. Id., at 748. 

The following is an illustration of the repair and reconstruction doctrine using an example fact pattern:

Fact Pattern: Consumer bought a Product A, protected by Patent A, comprising a Component B, protected by Patent B, and an unpatented Component C.  In order to repair Product A, Consumer buys Components B and C from unlicensed Supplier.

Summary of Conclusion:

1. By repairing Product A, Consumer does not infringe upon Patent A.
2. By using an unlicensed Component B, Consumer infringes upon Patent B.
3. By supplying Component B without a license, Supplier infringes upon Patent B.
4. By supplying Component C, Supplier does not directly or contributorily infringe upon Patent A.

 Analysis:

1. By repairing product A, does Consumer infringe Patent A?

Answer: No. 
Analysis: According to the repair doctrine, a patent monopolist cannot prevent those to whom he sells from reconditioning articles worn by use, unless they in fact make a new article. Maintenance of the "use of the whole" of the patented combination through replacement of a spent, unpatented element does not constitute reconstruction. Aro I., 365 U.S. 336.

Therefore, when Consumer bought product A, Consumer has acquired the implied license to repair Product A without infringing upon Patent A.  Consequently, Consumer can buy Component B from a licensed source and Component C anywhere to repair Product A.

2. When repairing Product A by using Component B from an unlicensed source, does Consumer infringe upon Patent B?

Answer: Yes.
Analysis: The right of repair does not include the right to make, use or sell without authority parts or elements that are the subject of a separate claim or patent.  See, e.g. Stukenborg v. United States, 372 F.2d 498, 153 USPQ 292 (Ct. Cl. 1967); Porter v. Farmers Supply Service, Inc., 617 F. Supp. 1175, 1186, 228 USPQ 1, 8-9 (D. Del. 1985), aff'd, 790 F.2d 882, 229 USPQ 814 (Fed. Cir. 1986) ("Of course if a component used to repair a patented combination is itself patented, then a purchaser's authorization to use the patented component for repair without the patent holder's permission is severely restricted…..This court, however, has already determined that [the claim of the patent] does not read solely on the [the component at issue."); Medeco Security Locks, Inc. v. Lock Technology Corp., 199 USPQ 519 (S.D.N.Y. 1976)("Since each claim of a patent constitutes a separate grant of monopoly which must be read clear that the Medeco key is separately protected component part of the patented lock and key combination."); Esco Corp. v. Hensley Equip. Co., 251 F.Supp. 631, 148 USPQ 600 (N.D. Tex. 1966), aff'd, 383 F.2d 252 (5th Cir. 1967); National Malleable casting Co. v. American Steel Foundries, 182 F. 626, 639-41 (D. N.J. 1910); Singer Mfg. Co. v. Springfield Foundry Co., 34 F. 393 (C.C.D. Mass. 1888); Aiken v. Manchester Print Works, 1 F. Cas. 245 (No. 113) (C.C.D. N.H. 1865).

Therefore, the repair doctrine gives Consumer an implied license to Patent A when repairing Product A, but does not give Consumer an implied license to Patent B.  If Consumer uses a Component B from an unlicensed source, Consumer infringes upon Patent B.

3.  By selling to Consumer Component B without a license, does Supplier infringe upon Patent B?

Answer: Yes.
Analysis: As noted above, the right of repair does not include the right to make, use or sell without authority parts or elements that are the subject of a separate claim or patent.

In Esco Corp. v. Hensley Equip. Co., appellee, the assignee of an excavating teeth patent, sued appellant for patent infringement.  The patent embraces the complete machine, i.e., the excavating tooth, and also the two basic parts, wear point and adapter.  The Esco court decided that appellant infringed specific claims of the patent by manufacturing and selling patented wear points, and cannot be protected by the doctrine of legitimate repair.  To support its decision, the Esco court cited a holding from the Warner court, which states that to supply patented parts of a patented combination without authority from the patentee to purchasers of the combination is a direct infringement of the claims of the patent on the part and a contributory infringement of the claims of the patent on the combination. Warner & Swasey Co. v. Held, 256 F. Supp. 303, 311 (E.D.Wis., 1966).  In fact, the Warner court has stated clearly that there is a limitation upon the right of replacement, and the part replaced must be an unpatented part of the combination.  Id. at 311.

Therefore, by selling the patented Component B without a license, Supplier infringes upon Patent B.

4. By selling to Consumer the unpatented Component C, does Supplier directly or contributorily infringe upon Patent A?

Answer: No.
Analysis: In Porter v. Farmers Supply Service, Inc., 617 F. Supp. 1175 (D. Del. 1985), plaintiffs manufactured a tomato harvester that utilized a patented "header" component. Defendant sold replacement discs made to fit the header. Plaintiffs alleged patent infringement. The court held that the sale of an unpatented component of a combination patent was not direct infringement. Furthermore, because the replacement of the discs by purchasers was repair and not reconstruction of the header, the purchasers were not direct infringers and the defendant could not be held contributorily liable for selling the discs.

Therefore, Supplier does not directly or contributorily infringe upon Patent A by supplying Component C to Consumer.

Thanks for reading!
Connie
connie@patentonomy.com
www.patentonomy.com

COPYRIGHT PROTECTION FOR MECHANICAL DRAWINGS

Imagine that you are a mechanical engineer who has designed a new type of umbrella.  The umbrella has a unique arrangement of ribs and stretchers, which, you believe, would enable the umbrella to withstand higher wind speed than the conventional umbrella.  You created several mechanical drawings of the umbrella.  In these drawings, you showed the details of the design, the measurement of various umbrella parts, and the process of making the umbrella.  You then approached a friend who owns a machine shop, asking the friend to make a few prototype umbrellas for you.  It took an unusually long time for the friend to finally provide you with the prototype umbrellas.  Testing of the umbrella showed that the umbrella withstood the wind speed as high as 60 miles/hour.  Excited, you started researching the market potential of your umbrella by contacting several local retail stores.  A few months later, you spotted similar umbrellas on the shelves of a retail store.  It turned out that your friend gave a copy of your mechanical drawings to an umbrella manufacturer, who immediately started the manufacturing and marketing your umbrella.

What do you do? what are your remedies? could you stop the umbrella manufacturer from manufacturing and marketing your umbrella? could you stop the retail store from selling your umbrella?  Most importantly, do you have copyright protection on your drawings? what about the umbrella described in the drawings?  should you seek patent protection of your umbrella immediately? 

The scenario above describes not so rare fact pattern and illustrates the dynamics intersection of mechanic drawings and intellectual property law.  Many mechanical engineers remain unsure about whether their mechanical drawings are copyrightable, how far the copyright protection reaches, and whether they should apply for patent protection of their designs, which usually costs more and needs to overcome onerous patentability requirements.  This article offers information on the current state of copyright protection of mechanical drawings, while distinguishing the copyright protection of mechanical drawings from the copyright protection of architectural drawings.

1. A general introduction of U.S. copyright law.

U.S. copyright law originates from the U.S. Constitution and protects "original works of authorship" that are "fixed in" a "tangible medium".[1]  The first copyright law, the Copyright Act of 1790, limited the copyright protection to maps, charts, and books printed within the United States.  The Copyright Act of 1909 ("the 1909 Act") expanded the copyright protection to "all the writings of an author"[2] including "drawings or plastic works of a scientific or technical nature."[3]  Superseding the 1909 Act, the Copyright Act of 1976 ("the 1976 Act") restated the copyright protection to scientific and technical drawings by defining "works of authorship" to include "pictorial, graphic, and sculptural works."[4]  The 1976 Act further clarifies that "[p]ictorial, graphic, and sculptural works" include two-dimensional and three-dimensional works of …charts, diagrams, models, and technical drawings, including architectural plans.[5] 

Copyright affords the copyright owner the exclusive right to reproduce, sell, create derivative work, perform, and display the copyrighted work.[6]  A copyright is automatically created when a copyrightable work is fixed in a tangible medium, regardless of whether the work has been published or registered with the U.S. Copyright Office.[7]  The protection is available to both published and unpublished works.  A copyright notice is not required for an unpublished work.[8]  However, the copyright owner is not precluded from posting a copyright notice on publicly distributed copies of the work.[9]

2. Copyright protection for mechanic drawings.

Mechanic drawings usually are drawings of a useful article, such as an umbrella.  By definition, mechanic drawings are a form of graphic communication used in transforming an idea into physical form.  Therefore, mechanic drawings often contains concise and clear specifications of the three-dimensional structure of the useful article embodying the idea and, sometimes, the method or process of making the article.  Consequently, copyright protection for mechanical drawings is a collection of copyright protections for various components of the drawings, including the two-dimensional drawings (traditionally, the blueprints), the three-dimensional structure derived from the drawings, the idea embodied in the design, and, if applicable, the method or process of making the structure.  The scope of copyright protection for mechanical drawings depends upon the depth of the protection for each of these components.

(i) The two-dimensional mechanical drawings are protectable under copyright law.

Two-dimensional mechanical drawings are considered as a copyright protectable "expression," not "a useful article."   Current copyright law provides for copyright protection to two-dimensional technical drawings.[10] Generally, the Copyright Office recognizes published or unpublished two-dimensional drawings as including diagrams or models, illustrating scientific or technical works or formulating scientific or technical information in linear form, such as a mechanical drawing or an engineering diagram.[11] 

Consistent with the Copyright Office's position, courts have recognized the copyright protection for various mechanical drawings.  As eloquently stated by one court deciding on the copyright protection over the blueprints of a pharmaceutical machine to place medicinal pills into blister packs, mechanical drawings exist "to convey information as to size, form and assembly."  Because the drawings' sole utility is to explain the arrangement and relation of parts of the article depicted, the drawings cannot be considered useful articles under § 101."[12]  Other mechanical drawings that courts have confirmed copyright protection include drawings for automotive wheel covers,[13] eyeglass displays,[14] printing presses,[15] medical cabinets,[16] stabilizer benders, welders, and other special machinery used to manufacture parts for cars and trucks,[17] and an electric vacuum device.[18]  Consequently, in the above scenario, the mechanical drawings of the umbrella are entitled to copyright protection at the moment of their creation.

(ii) The copyright protection for the three-dimensional structure derived from mechanical drawings extends only to the artistic features of the structure that are separable from the utilitarian aspects of the structure. 

Current copyright law limits the scope of copyright protection for "a useful article" to the "artistic craftsmanship," but not the "mechanical or utilitarian aspects."[19]   "A useful article" is "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."[20]  The useful article doctrine was first articulated by the Supreme Court in Mazer v. Stein in 1954.[21]  The doctrine is codified in the definition of "[p]ictorial, graphic, and sculptural work" in the 1976 Act, which states that "such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned."[22]  The three-dimensional structure derived from mechanical drawings is usually a useful article.  Therefore, the copyright protection for the three-dimensional structure extends only to the artistic features of the structure.

For copyright protection, the artistic features in the three-dimensional structure derived from mechanical drawings must be able to, physically or conceptually, exist independently as a work of art.  According to the 1976 Act, "the design of a useful article…shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporate pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article."[23]  Accompanying the passage of 1976 Act, House Report No. 1476 explains that "[a] two-dimensional painting, drawing, or graphic work is still capable of being identified as such when it is printed on or applied to utilitarian articles such as textile fabrics, wallpaper, containers, and the like"; and "the same is true when a statue or carving is used to embellish an industrial product or…is incorporated into a product without losing its ability to exist independently as a work of art."[24]  Courts' interpretation of this seperability test has been consistent with the statutory requirement and the legislative history.  When confirming the copyright protection for the ornamental aspect of two belt buckles, the Second Circuit noted that, while utilitarian objects such as belt buckles could not be copyrighted, elements that were physically or conceptually separable and that were capable of existing independent of the article's utilitarian aspect could be copyrighted.[25]  Similarly, when considering copyright protection for an eyeglass display, a Delaware district court states "a useful article possessing sculptural elements that are conceptually, though not physically, separable from its utilitarian elements is copyrightable."[26]  The court suggests that the existence of artistic features conceptually separable from functional features is a matter to be determined by the trier of fact rather than as a matter of law.[27]  Therefore, the artistic features in the three-dimensional structure derived from mechanical drawings, which are physically or conceptually separable from the utilitarian aspects, are copyright protectable. 

However, the high aesthetic value of a useful article does not confer the article copyright protection.  The House Report accompanying the 1976 Act emphasizes that the fact that "the shape of an industrial product may be aesthetically satisfying and valuable" does not confer the industrial product copyright protection.[28]  The 1976 Act rejects copyright protection to design elements directly related to the useful function of the article.  The notion has been reinforced by courts' action.  For example, in Esquire, Inc. v. Ringer, an appeals court affirmed the Copyright Office refusal to register certain outdoor lighting fixture stating that the overall shape of certain outdoor lighting fixture is eligible for copyright protection as a "work of art."[29]  Therefore, no matter how aesthetically pleasing it may be, the structure derived from mechanical drawings is not entitled to copyright protection in the absence of the artistic features separable from the utilitarian aspects.

Going back to our umbrella engineer case, if the wind-resistant umbrella includes an original artistic design printed on the cover fabric or an original sculpture on the handle, the artistic print or the sculpture would be protected under copyright law as artistic features conceptually or physically separable from the function of the umbrella.  However, the fact that the overall shape of the umbrella is artistically appealing would not entitle the umbrella to the copyright protection.

(iii) The idea and process in mechanical drawings are not copyright protectable.

Ideas and process are not protectable under copyright law.  Copyright law protects the ''expression'' of a work of authorship, but not the ''idea'' being expressed.  This idea-expression dichotomy of copyright law was first explained by the Supreme Court in Baker v. Selden, in which protection was sought for original bookkeeping forms contained in a book explaining a new method of bookkeeping.[30]  The court held that exclusive rights to the "useful art," such as methods of bookkeeping described in a book, was only available by patent; the description itself was protectable by copyright.[31]  The Copyright Act codifies the idea-expression dichotomy in 17 U.S.C. § 102(b), which provides that "[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such a work."

Various courts have held that ideas and processes described in mechanical drawings are not protectable under copyright law.  In Herbert Rosenthal Jewelry Corp. v. Kalpakian,[32] plaintiff has a copyright for "a pin in the shape of a bee formed of gold encrusted with jewels."[33]  Plaintiff argued that its copyright was infringed by defendant's line of jeweled bees.  The appellate court found that "[a] jeweled bee pin" is an "idea" and that plaintiff's particular design was an "expression" of the jeweled bee pin idea.[34]  The court refused to enforce plaintiff's copyright, declaring that enforcing plaintiff's copyright would "effectively prevent others from engaging in the business of manufacturing and selling jeweled bees."[35]  In National Medical Care, Inc. v. Espiritu, the court rejected the copyright protection of the specification for installing the medical cabinet structure described in the mechanical drawings.[36]  In Niemi v. Am. Axle Mfg. and Holding, Inc., the court held that the process for manufacturing the machineries described in the mechanical drawings is not eligible for copyright protection.[37]  Therefore, it is well established that ideas and processes described in mechanical drawings are not protectable under copyright law.

Going back to our umbrella engineer case, the unique arrangement of ribs and stretchers that makes the umbrella wind-resistant most likely will be judged as an idea.  Therefore, the arrangement will not be protectable under copyright law.  In addition, the installation instruction in the mechanical drawings is not entitled copyright protection under 17 U.S.C. § 102(b).

3. Copyright infringements.

The copyright protection on the two dimensional drawings grants the engineer owner the right to control the reproduction, distribution, and creation of derivation work of the two dimensional drawings.[38]  In our hypothetical umbrella engineer case, the engineer's friend reproduces and distributes the drawings without authorization from the engineer and, therefore, has infringed up the engineer's copyright on the two-dimensional drawings.  However, our engineer may not have an action against the umbrella manufacturer and the retail store.

First, court has held that the manufacture of a useful article from a copyrighted technical drawing is not copyright infringement.  In Niemi, the court confronted the issue whether the use of copies, or derivatives of copies, of copyrighted technical drawings to manufacture a machine is an act of copyright infringement.  The court held that the manufacture of a machine from a copyrighted technical drawing is not copyright infringement.[39]

Second, it has been held that an as‑built structure or feature is not an infringing copy of a technical drawing.  In National Medical Care, Inc., when examining the technical drawings of medical cabinets, the court described the medical cabinets as useful articles, which have "an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."[40]  The court decided that a technical drawing's copyright simply does not give the copyright owner the exclusive right to build a structure as depicted in the drawing, and the owner has no claim against another who builds a structure from an infringing plan.[41]  The court held that an as‑built structure or feature cannot be an infringing copy of a technical drawing. 

Going back to our umbrella engineer case, absent a separable and, therefore, protectable artistic features in the umbrella, the umbrella constructed by the umbrella manufacture and sold by the retail store will not be considered as an infringing copy of the engineer's mechanical drawings. In addition, under Niemi court's rationale,[42] the umbrella manufacturer did not commit copyright infringement when constructing the umbrella according to the instruction in the technical drawings.  Therefore, our umbrella engineer most likely will not be able to launch any significant copyright infringement action against the manufacture and the retail store.

4. Distinguishing the copyright protection of mechanical drawings from the copyright protection of architectural drawings.

Mechanical drawings are distinguishable from architectural drawings under copyright law.  Mechanical drawings are only protectable under one category, i.e., as "pictorial, graphic, or sculptural works" under 17 U.S.C. §102(a)(5).  There is no separate copyright protection for the three-dimensional structure of a useful article depicted in mechanical drawings.  In comparison, architectural drawings are protected under the Architectural Works Copyright Protection Act of 1990 (AWCPA), which provides two layers of protection for this type of drawings.  First, under 17 U.S.C. §102(a)(5), architectural drawings are eligible for copyright protection as "pictorial, graphic, or sculptural works."  Second, under 17 U.S.C. §102(a)(8), architectural drawings are eligible for copyright protection as "architectural work."  17 U.S.C. § 101 defines an "architectural work" as "the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings."  Therefore, the Architectural Works Copyright Protection Act of 1990 provides the copyright of a three-dimensional building depicted in architectural drawings as a separate copyright from the two-dimensional drawings.

In conclusion, the copyright protection for mechanical drawings depends upon the protection on the two-dimensional drawings and the artistic features in the three-dimensional structure derived from the drawings.  The idea embodied in the design and the method or process of making the structure are not protectable.  In addition, it is worth noting that the as-build structure made according to the mechanical drawings of a useful article is not considered an infringing copy of the article.  Therefore, the copyright protection of mechanical drawings is very limited.  To protect a design idea and the utilitarian features in the design, the engineer should seek patent protection upon an invention of an ingenious design for a useful article.  As for the umbrella engineer in our hypothetical case, in the absent of any copyright protectable artistic features in the umbrella, seeking patent protection might be the only route to save his work from being commercially exploited by others.

Thanks for reading.

Connie
connie@patentonomy.com
www.patentonomy.com

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[1] 17 U.S.C. §102(a).

[2] The Copyright Act of 1909, § 4.

[3] Id. at § 5(b)(i).

[4] 17 U.S.C. §102.

[5] Id. at §101.

[6] Id. at §106.

[7] Id. at §201(a).

[8] Id. at §405(a).

[9] Id. at § 401(a) (A valid copyright notices includes: 1) the symbol , or the word "copyright" or the abbreviation "corp."; 2) the year of the first publication; and 3) the name of the owner of the copyright. After March 1, 1989, the use of a copyright notice is not longer mandatory. The absence of a copyright notice may exonerate an alleged "innocent' infringer liable for actual or statutory damages. After March 1, 1989, as a result of the United States adhering to the Berne Convention, the requirement of a copyright notice on a published work was eliminated. Although there are numerous benefits to using a copyright notice, it is no longer essential for copyright protection. The Berne Convention recognizes copyright protection across international boundaries. The Berne Convention was signed in 1886 but was not adopted by the United States until 1989.)

[10] Supra note 5.

[11] 37 C.F.R. § 202.12(a) (1959).

[12] Gemel Precision Tool v. Pharma Tool Corp., 1995 U.S. Dist. LEXIS 2093 (E.D. Pa. Feb. 13, 1995).

[13] Norris Industries, Inc. v. International Telephone and Telegraph Corp. and David L. Ladd, 1981 U.S. Dist. LEXIS 15975 (N. D. Florida, Aug. 12, 1981).

[14] Trans-world Manufacturing Corporation v. Al Nyman & Sons, Inc., 1982 U.S. Dist. LEXIS 15279 (Del. July 16, 1982).

[15] Tensor Group, Inc. v. Global Web System Inc., 1998 U.S. Dist. LEXIS 4574 (N. D. Ill, March 31, 1998).

[16] National Medical Care, Inc. v. Espiritu, 284 F. Supp. 2d. 424 (S.D.W.Va. 2003).

[17] Niemi v. Am. Axle Mfg. & Holding Inc., 2006 U.S. Dist. LEXIS 50153 (E. D. Michigan, July 24, 2006); See also, Niemi v. NHK Spring Co., 2007 U.S. Dist. LEXIS 63502 (N. D. Ohio, Aug. 2007).

[18] Gusler v. Fischer, 2008 U.S. Dist. LEXIS 75454 (S. D. N.Y. Sept. 29, 2008).

[19] Supra note 5.

[20] Id.

[21] Mazer v. Stein, 347 U.S. 201, 218 (U.S. 1954) (artistic articles are protected in "form but not their mechanical or utilitarian aspects.")

[22] Supra note 5.

[23] Id.

[24] H.R. Rep. No. 1476, 94th Cong., 2d. Sess. 55, reprinted in 1976 U.S. Code Cong. & Ad. News 5668;

[25] Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. N.Y. 1980).

[26] Trans-World Mfg. Corp. v. Al Nyman & Sons, Inc., 95 F.R.D. 95, 98-99 (D. Del. 1982).

[27] Id. at 99.

[28] H.R. Rep., supra note 24.

[29] Esquire, Inc. v. Ringer,192 U.S. App. D.C. 187 (D.C. Cir. 1978).

[30] Baker v. Selden, 101 U.S. 99 (1879);

[31] Id.

[32] Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971).

[33] Id. at 739.

[34] Id. at 742. 

[35] Id. at 740-42.

[36] National Medical Care, Inc., supra note 16.

[37] Niemi, 2006 U.S. Dist. Lexis 50153.

[38] 17 U.S.C. §106.

[39] Niemi, supra note 37.

[40] National Medical Care, Inc., supra note 16.

[41] Id. at 435.

[42] Niemi, supra note 37.