Use Caution When Writing a Patent Application

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Writing a patent application is always a challenge.  In each case, it is a balance.  On one side, you are trying to ensure that you have provided an accurate and complete description of the invention.  On the other you worry about what the patent examiner might turn up in prior art that you didn’t think about when drafting the application.  Sometimes what is included may come back to limit the scope of your invention.

This is exactly what happened to UltimatePointer LLC when they sued Ninentendo for patent infringement (UltimatePointer, LLC v. Nintendo Co., Ltd., No. 15-1297 (Fed. Cir. Mar. 1, 2016).  The Federal Circuit, the appellate court for patent cases, affirmed a district court finding of noninfringement by Nintendo. The district court found the term “handheld device” to require a “direct pointing device”. The Federal Circuit found that UltimatePointer had made “repeated derogatory statements” relating to indirect pointing devices in the patent specification.  The court stated that the “criticized technologies were not intended to be within the scope of the claims.”  The court determined that Nintendo’s pointing involves the hand held remote relative to the sensor bar and not the television screen image. As a result, the court found the Wii system was considered an “indirect” pointing device and did not infringe.   

What’s the take away here?  Be careful what you write in your specification, especially in the area of describing other prior art.  You never know what prior art you may encounter down the road and you need to keep as many options open as possible. 

 Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

After a Long and Winding Road, Beatle Reclaims Publishing Rights

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Paul McCartney is using a US Copyright provision to right a wrong he feels occurred many years ago.  As you may recall, the bulk of the Beatles tunes were attributed to the duo of John Lennon and Paul McCartney.  However, in the 1960’s, Paul McCartney and the other Beatles lost their publishing rights to many of their songs when ATV, a publishing company created by the Beatles, their manager and some of their investors, was sold without the knowledge of the band members.

At one time Yoko Ono, John Lennon’s widow and McCartney tried to purchase ATV for 20 million dollars.  The deal fell through and Michael Jackson purchased ATV for 47.5 million in 1985.  McCartney may now be able to reclaim those rights 56 years later.

Rather than let it be, McCartney filed a “notice of termination” with the US Copyright Office.  This enables a songwriter to reclaim ownership in publishing rights for a song anywhere between 2 to 10 years before the 56 year lapse of time after the publication rights were originally sold.  Some of the songs won’t be eligible for release until the singer is 83. 

What’s the take away here.  Any artist, author or creator of a work protected under copyright law should understand those rights .  In addition, anyone who may have an interest subject to copyright law should think carefully about corporate structure and where the ownership of the intellectual property should be held when forming a new business.  This often takes the form of an IP holding company.  Situations may vary, but who will own the rights in the copyright and how the business will be structured should be well thought out when setting up any business.

 Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

Persistence and Patents Can Equal Success

Every once in awhile I come across a great inventorship story.  This is the story of Jane ní Dhulchaointigh (pronounced “knee-gull-queen-tig”).  A UK product designer, Jane developed a moldable glue which is sold today as Sugru.

Jane started out wanting a more effective ergonomic knife handle.  Using silicone caulk and sawdust, she spent 6 years experimenting with over 5000 different variations on a moldable glue formula.   Once she had attained the desired formula, Jane wanted to approach 3M to buy it.  But the year was 2008 and many advised her against it. 

Since necessity is the mother of invention, Jane and her team decided to launch the product themselves.  They initially focused on the online craft market and used social media to help advertise their product.   

What’s the take away here?  Be persistent.  It took Jane 6 years to develop this product and formula.  Most of us would have given up after 6 hours.  Also choose your advisors well and follow solid advice.  Sugru’s sales skyrocketed with the strong emphasis on social media.  Jane has also maintained a strong competitive advantage internationally by using the patent system.

Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.