Month: July 2014

How to Keep an Inventor's Notebook

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
An inventor’s notebook can be a breeding ground for your creative ideas. Capturing your ideas and improving on them over time in a single notebook lets you revisit older ideas or combine ideas as you solve a problem. And if you think of the notebook like a brainstorming tool for your creations, you might find that just like in a brainstorming session, your best ideas come out in later pages after you have tackled a problem in more predictable ways. So go out and buy an inventor notebook to keep track of your inventions. Slide it in your backpack or briefcase and keep it handy. And once you do start one, keep the following in mind.
Legal Reasons to Keep an Inventor’s Notebook
A few years ago, an inventor notebook was a critical piece of documentation used to establish an inventor's date of invention. But with recent changes to US law that reward patents based on the first inventor who files their application, establishing a date of invention may be important but it is not as critical as it used to be.
Nevertheless, there are still important reasons to document your inventions in a notebook.

  1. Your notebook shows the date you conceived of the invention  Let’s say someone in your workplace gets access to your notebook and copies your idea. Your notebook can serve as evidence of their theft. Remember: Patents are only awarded to inventors, not people who steal ideas and apply for the patents.
  2. The notebook acts as a log of who has seen your invention. As I mention below, you should record who has access to your workspace and notebook. This record can be critical if someone steals your idea. But be careful: any public disclosure can bar you from getting patents in non-U.S. countries and in the U.S., a public disclosure starts a clock ticking: Within one year of the disclosure, you must file a patent application or you will be barred from doing so in the future.
  3. Your notebook pages can help your patent attorney prepare a patent application. The sketches, tables, and writeup that you keep in the notebook can help your attorney draft a patent application.

Features of an Inventor's Notebook

  • Permanent binding. Your notebook should have a permanent binding with no removable pages.
  • Gridlines. For sketching and tables, gridlines can be helpful.
  • Page numbers. You can number your pages or buy a notebook with pre-numbered pages.
  • Protective cover. Your notebook will benefit from being hard-covered or at least having a a durable cover.

Format for Entering Information in the Notebook

  • Use pen. I don’t draw well so this goes against my being. Everything that you put into your notebook should be permanent and uneraseable. If you make a mistake, simply line it out and keep writing. Don’t white it out or otherwise make your notebook unreadable.
  • Do not tear pages from your notebook.
  • Number your pages consecutively if they are not numbered.
  • Do not leave gaps in your writing. If you are moving from one idea to another, draw a line after your last written line and begin the new idea. Blank spaces give the impression that you could add material later—you don’t want that impression.
  • Date and sign every entry.
  • Get a witness who is bound by a nondisclosure agreement to sign your entries.

What to Include in the Notebook
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  • Describe your invention in words and drawings. Answer the questions: (1) How does it work, (2) What materials does it use, (3) When did you think of it, (4) What other fields could it be used in?
  • Label your figures “Fig. 1, Fig. 2" and use arrows and labels to refer to your drawings or steps in flowcharts.
  • If you want to include a drawing or chart printed outside the notebook, make a circle or appropriate shape around it, date the shape, describe the attachment and permanently affix the page into the notebook. If you can leave a gap on one side of your attachment to show the blank page beneath it, that is best.
  • Include variations on your idea, even if they are a little far-fetched. Today’s far-fetched idea may be widely adopted in the future.
  • Make a record of the people who see your invention. As you do this, understand that any public disclosure can bar you from getting patents in non-U.S. countries and that in the U.S., a public disclosure starts a clock ticking: Within one year of the disclosure, you must file a patent application or you will be barred from doing so in the future. The takeaway: Be careful who you show your invention to.

Backup and Safety

  • Backup your notebook. The notebook will be your best source of documentary evidence but that doesn’t mean that you shouldn’t back it up. Make copies of your pages and securely store them electronically or in paper.
  • Keep your notebook safe. When not in use, keep your notebook somewhere private and secure.

If you have questions, contact me.
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The Supreme Court Rules on Public Performance and Copyright

By Stephen B. Schott
Last week, the Supreme Court wrapped up a busy term for intellectual property cases. The latest and final IP case it decided was American Broadcasting Cos., Inc. v. Aereo, Inc. Aereo is a copyright case involving a copyright holder’s exclusive right to "perform the copyrighted work publicly.” In reviewing the technology at issue, a majority of the Court found that Aereo’s software violated this right. Justices Scalia, Thomas, and Alito dissented.
At the heart of this case is/was a growing Internet company with a technology that allowed users to rent a “dime-sized” TV antenna in a local market and stream the locally broadcast content remotely. In this way, a user could watch local programming in Philadelphia, Buffalo, or Los Angeles from anywhere in the world. Aereo’s own short video does a better job explaining its technology than the Supreme Court or this author.

Aereo successfully defended itself in the appellate court by arguing that the streaming it offered was personal, and thus not public as required under the statute. Aereo bolstered this claim by noting that when two users want to access the same local programming, its system assigned each of the users their own antenna and own individual stream.
The Court’s Analysis
The Supreme Court applied a two-part test to this case: (1) Did Aereo “perform” under the statute, and if it did, (2) Did Aereo perform “publicly?”
The performance question. The Court reviewed a history of the performance requirement, in particular that Congress amended the Copyright Act in 1976 to define acts by predecessors to today's cable providers' transmissions as “performances." The Court then concluded that Aereo is like a cable provider and thus it performs.
The public performance question. Again, the Court compared Aereo’s transmissions to those of cable companies and found them similar. Regarding the difference that Aereo only transmits programming to individual users, the Court stated, "We do not see how the fact that Aereo transmits via personal copies of programs could make a difference.”
The Aereo Holding: Consequential or Not? 
Justice Scalia, never one to shy away from a chance to pen a dissent, summed up the majority’s reasoning:

The Court’s conclusion that Aereo performs boils down to the following syllogism: (1) Congress amended the Act to overrule our decisions holding that cable systems do not perform when they retransmit over-the-air broadcasts; (2) Aereo looks a lot like a cable system; therefore (3) Aereo performs…. That reasoning suffers from a trio of defects….

And Jason Rantenen outdid Scalia in capturing the Court’s comparison of Aereo’s technology to cable companies: “If it’s basically the same as a duck, it’s a duck.”
Scalia concluded with an admonishment that this opinion would give content providers a wide net to accuse emerging technologies of copyright infringement whenever they looked-like-cable-TV. Introducing this dark specter, he noted that the Court nearly made a similar error in the 80s when it came within a vote of outlawing VCRs.

We came within one vote of declaring the VCR contraband 30 years ago…. The dissent in that case was driven in part by the paintiffs’ prediction that VCR technology would wreak all manner of havoc in the television and movie industries…. Hence, the proper course is not to bend and twist the Act’s terms in an effort to produce a just outcome, but to apply the law as it stands and leave to Congress the task of deciding whether the Copyright Act needs an upgrade.

But as David Post points out, "The majority is at pains, in several places, to say that the case is just about broadcast television and the re-transmission of broadcast signals.” For example, rather than simply allowing its holding to stand without commenting on Scalia’s dire predictions, it went out of its way to state that the holding was quite limited.

Aereo and many of its supporting amici [Professor Post being one of these] argue that to apply the Transmit Clause to Aereo’s conduct will impose copyright liability on other technologies, including new technologies, that Congress could not possibly have wanted to reach. We agree that Congress, while intending the Transmit Clause to apply broadly to cable companies and their equivalents, did not intend to discourage or to control the emergence or use of different kinds of technologies. But we do not believe that our limited holding today will have that effect.

Developing case law will shed light on this decision’s consequences. In the meantime, there is little doubt that content providers will use the looks-like-cable-TV test in an attempt to capture all manner of emerging technologies.
If you have questions, contact me.
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