Friday, February 17, 2017

“Get Out of Infringement Free” Card?

by Steve Reiss (

AVVO Questioners often give the impression they believe because they are acting as a "nonprofit", or are just not making any profit, they have a “get out of infringement free” card. This belief is invalid.

1. Other Avvo Contributors Agree
In one Q&A thread, I joked that when signing up for AVVO, people should see a big flashing disclaimer saying "THAT YOU ARE NOT MAKING A PROFIT DOES NOT SHIELD YOU FROM MOST LAWS". This joke received several “agrees” from other AVVO contributors.

One questioner described how he placed a well-known college's logo on a beach towel for his own enjoyment. However, when friends saw the towel, they asked him to make them similar towels, which he offered to do at no cost. The Questioner resisted the opinions of the AVVO contributors saying this unauthorized use of the logo would still be infringement.

3. Another Example
Another Questioner asked if he set up an educational nonprofit, could he use copyrighted materials without fear of liability, relying especially on the "fair use" rules of the Copyright Act. Here, the Questioner resisted AVVO contributors’ opinions that "monetary gain" is only one factor in the fair use analysis.  While the “monetary gain” fair use factor may be in the Questioner's favor, the use of the entire copyrighted material would was not in his favor.

4. Yet Another Example
Questioner has a "no advertisement", "no fee" travel blog, with fewer than 10 posts a year and 2-3 visits a day. However, he received a demand letter for $275 when caught using "a copyrighted image" from Google Search. The Questioner took the picture down.  However, Google still asked for money, though now only $27.50. The Questioner urged us to tell him that his token use should not subject him to damages.  The AVVO responders did not give the wanted answer.

5. Still Another Example?
Questioner asked if it was lawful to show copyrighted movies to a nonprofit movie club in a retirement community ballroom. The answer to this question was an easy "no". Showing the entire copyrighted work would negatively impact on the market for the protected work (fewer sale or ticket fees).
6. Boy, there really are a lot of Examples.
Questioners ask about potential for patent infringement liability when no money is made. However, patent infringement is sometimes referred to as a strict liability tort.  Lacking actual damages, a "reasonable royalty" is still available to the patentee.

7. And We Close it Out With One Final Example
Questioner asks whether it is lawful to use the marks of "nonprofit" organizations, such as mascots for state university athletic programs. State Universities may indeed be nonprofit.  However, universities will not allow others to profit from university intellectual property. Further, while the state university may be nonprofit, it may still receive large revenue through the sale of trademarked goods.


Wednesday, February 15, 2017

Mixing Known Materials

by Steve Reiss - now at

The question is often asked: Hey, can I get a patent if I am mixing together known materials?

The answer is typically "no", unless there are unexpected results. What are "unexpected results"?

From the Manual of Patent Examining Procedure (MPEP):

716.02(a)   Evidence Must Show Unexpected Result


“A greater than expected result is an evidentiary factor pertinent to the legal conclusion of obviousness ... of the claims at issue.” In re Corkill, 711 F.2d 1496, 226 USPQ 1005 (Fed. Cir. 1985). In Corkhill, the claimed combination showed an additive result when a diminished result would have been expected. This result was persuasive of nonobviousness even though the result was equal to that of one component alone. Evidence of a greater than expected result may also be shown by demonstrating an effect which is greater than the sum of each of the effects taken separately (i.e., demonstrating “synergism”). Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). However, a greater than additive effect is not necessarily sufficient to overcome a prima facie case of obviousness because such an effect can either be expected or unexpected. Applicants must further show that the results were greater than those which would have been expected from the prior art to an unobvious extent, and that the results are of a significant, practical advantage. Ex parte The NutraSweet Co., 19 USPQ2d 1586 (Bd. Pat. App. & Inter. 1991) (Evidence showing greater than additive sweetness resulting from the claimed mixture of saccharin and L-aspartyl-L-phenylalanine was not sufficient to outweigh the evidence of obviousness because the teachings of the prior art lead to a general expectation of greater than additive sweetening effects when using mixtures of synthetic sweeteners.).

Evidence of unobvious or unexpected advantageous properties, such as superiority in a property the claimed compound shares with the prior art, can rebut prima facie obviousness. “Evidence that a compound is unexpectedly superior in one of a spectrum of common properties . . . can be enough to rebut a prima facie case of obviousness.” No set number of examples of superiority is required. In re Chupp, 816 F.2d 643, 646, 2 USPQ2d 1437, 1439 (Fed. Cir. 1987) (Evidence showing that the claimed herbicidal compound was more effective than the closest prior art compound in controlling quackgrass and yellow nutsedge weeds in corn and soybean crops was sufficient to overcome the rejection under 35 U.S.C. 103, even though the specification indicated the claimed compound was an average performer on crops other than corn and soybean.). See also Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (unexpected superior therapeutic activity of claimed compound against anaerobic bacteria was sufficient to rebut prima facie obviousness even though there was no evidence that the compound was effective against all bacteria).

Presence of a property not possessed by the prior art is evidence of nonobviousness. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (rejection of claims to compound structurally similar to the prior art compound was reversed because claimed compound unexpectedly possessed anti-inflammatory properties not possessed by the prior art compound); Ex parte Thumm, 132 USPQ 66 (Bd. App. 1961) (Appellant showed that the claimed range of ethylene diamine was effective for the purpose of producing “‘regenerated cellulose consisting substantially entirely of skin’” whereas the prior art warned “this compound has ‘practically no effect.’ ”). The submission of evidence that a new product possesses unexpected properties does not necessarily require a conclusion that the claimed invention is nonobvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979). See the discussion of latent properties and additional advantages in MPEP § 2145.

Absence of property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of unobviousness. Ex parte Mead Johnson & Co., 227 USPQ 78 (Bd. Pat. App. & Inter. 1985) (Based on prior art disclosures, claimed compounds would have been expected to possess beta-andrenergic blocking activity; the fact that claimed compounds did not possess such activity was an unexpected result sufficient to establish unobviousness within the meaning of 35 U.S.C. 103.).

Wednesday, January 25, 2017

The Civil War and patents...

by Steve Reiss (

From E. Burke Inlow's 1948 "The Patent Grant" (page 82-83):

The year 1858, brought the question of the patent grant to the eve of the great Civil War. That war marked the end of an era of patent development. Henceforth, in contrast to the desultory progress made in the early courts, the investment of the patent property was to drive forward with the greatest possible speed. The formative years were over. In the burgeoning greatness of American capitalism, the years beyond the Civil War were to bring the patent grant to it's highest substantive value. 

Friday, December 30, 2016

That Webster?

by Steve Reiss (

Noah Webster, of dictionary fame, was one of the first to write a bill for the American patent system. On Apri116, 1789, he wrote what he called a federal copyright bill, a combined patent and copyright bill. A committee was appointed to draft a general law. On June 23, 1789, House Bill 10, a printed document of 11 pages, was presented as a combined federal copyright and patent bill. After much argument, this bill was defeated.

The Copyright Act of 1831 was the first major statutory revision of U.S. copyright law, a result of intensive lobbying by Noah Webster and his agents in Congress. Webster also played a critical role lobbying individual states throughout the country during the 1780s to pass the first American copyright laws, which were expected to have distinct nationalistic implications for the infant nation. <from wikipedia>.

Thursday, December 29, 2016

There are Abortions in Art, as Well as in Nature...

by Steve Reiss (

The multitude of useless structures found in the office, do not lessen its value as a whole. For men of science know full well, that there are abortions in art, as well as in nature; since it is not every effort of the one, or of the other, that is ultimately to succeed: and moreover, that the genuine operations of both, are not unfrequently aided by these abortions.

Wednesday, December 28, 2016

Inventors and the Bible (Part One: Adam and Eve)

by Steve Reiss (

I am not a very religious person, but a little blurb about Adam and & Eve caught my eye as I read the 1888 book, Curiosities of the US Patent Office, written by then-examiner William Raymond. Even today, this dusty, worm-holed filed book remains quite quotable.

On page 102, Raymond quotes from Genesis 3:6 (emphasis added):

When the woman saw that the fruit of the tree was good for food and pleasing to the eye, and also desirable for gaining wisdom, she took some and ate it. She also gave some to her husband, who was with her, and he ate it. Then the eyes of both of them were opened, and they realized they were naked; so they sewed fig leaves together and made coverings for themselves.
Raymond postulates (emphasis in original):
For them to have sewed, without using the needle, would have been utterly impossible, therefore they must have invented one; but whether from a thorn or a fish bone, is a matter of conjecture.
While Raymond says it is an open question as to whether the credit for inventing the needle should go to Adam or Eve; Raymond misses that maybe Adam and Eve were not only the first inventors, but also the first joint inventors.

In a future post, we will look to the inventiveness of Noah.

The Increasing Complexity of the Arts and Sciences

by Steve Reiss (

The difficulties" of the judges in comprehending the facts involved in patent cases, which have been cumulative with the increasing complexity of the Arts and Sciences, have somewhat weakened the authority of their opinions.

E. J. STODDARD (member of the Detroit bar).

May 1, 1920. 

Friday, December 23, 2016

Another Early Assessment of Patents

by Steve Reiss (

 The Patent Office is a valuable repository, the contents of which, though accessible to all, are known to but few. By placing them within the convenient reach of every one, the Patentee, the man of inventive genius, (to whom it is important to possess accurate knowledge of abortive as well as successful essays,) and the community at large, may be benefited. 

Henry Clay (1777-1852)

Thursday, December 22, 2016

An Early Assessment of the Value of Patents

by Steve Reiss (


A very small portion, of the Whole number of intelligent men in the United States, will ever visit the Patent Office; and very few, even of those who do visit it, have either time or opportunity to examine the principles and adaptations of the many inventions there deposited. The public are not sensible how large this deposit has become. Often have‘ we seen those, who visited it for the first time, astonished at the amount and variety of the models, and contrivances, and purposes, of ingenious minds, which have already manifested themselves in this infant country; and yet it is well known, that for a portion of the inventions, no models are deposited, because none are required by law. So great, however, is this accumulation of models, in less than forty years from the first law of Congress on this subject, that one entire story, in the General Post Office, is needed for their proper classification and display. Nor can we conceive what it may be in ages to come. Already it looks more like the work of ages, than like the offspring of a day.

By way of general remark, we might, perhaps, throw these inventions into three classes.

That some of them are useless, is obvious——say, One-third of them come within this description.

Another third of them are merely exhibitions of ingenuity, useful only, as displays of the inventive faculties of our countrymen.

The remaining third, are either directly applicable to some practical purpose; or, they are such specimens of mechanical construction, as cannot fail to be useful for other purposes, than those for which they were designed by their inventors.