Laws of Invention Transcripts July 31, 1997 10 a.m. - 11 a.m. GUEST: TOM CANOVA, PATENT ATTORNEY The following are excerpts from the viewer call-in portion of the program. MS. GRASSO: Welcome back to our second hour of Legal Cafe. I'm June Grasso. So say you've been experimenting in your work shop for months, and you think you've come up with the perfect invention. What do you do next, and how do you make sure that no one steals your ticket to Easy Street? MS. GRASSO: I want to introduce my guest for this hour to give us that and other answers about inventions. Thomas Canova is an intellectual property attorney here in New York. He does a lot of patent work. It's great to have you here. MR. CANOVA: Thank you, June. Good to be here. APPLYING FOR A PATENT MS. GRASSO: You know, it's a complicated area, and, of course, it's called intellectual property, so it sounds very far-reaching. Why is it called intellectual property? MR. CANOVA: Well, generally, June, there are three types of property here in the United States. There's real property, which is land, and everyone knows that. There's personal property, which, for example, your clothing and your jewelry, and there's a third type of property that you can't really put your hands on. It's intangible. The rights to inventions, the rights to artwork, the rights to names of products -- those types of things are known as intellectual property. MS. GRASSO: And so you've named, really patents, copyrights, and trademarks. MR. CANOVA: Correct. MS. GRASSO: So that's an easy way to think of it. And what -- how much work is it to get a patent? It's -- what I was reading last night, it's really a lot more complicated than I thought, and it can take a long time. MR. CANOVA: It can take a while, and it's relatively expensive, especially compared to trying to get a copyright or a trademark. Typically, what you want to do is first do a patent search to make sure that your idea is not too similar to something that's already out there, because the Patent Office in Washington, DC, will not grant a patent to you if your invention is not novel or unique or useful, so generally you do a patent search first and you, through the search, you obtain copies of other patents and printed publications, and you try to formulate an opinion based on what's already out there if your idea really is patentable. And if you think it is, then you want to prepare and file a patent application with the Patent Office. MS. GRASSO: Now, once you do that, they assign someone to the case, and it sounds like this is a really rigorous examination they go through to decide whether you can patent this or not. MR. CANOVA: Well, it is, June, and the reason for that is that patent protection is very strong protection. The government doesn't just give it away easily. A patent is essentially a 17-year monopoly to make, use, or sell the invention, and for rights like that, the Patent Office wants to make sure that you satisfy all of the requirements and what you really do have is very unique, is novel, is not obvious to anyone, and is useful. MS. GRASSO: Okay. Well, we're going to talk more about the legalities and also just marketing that and all that's involved with that invention you may have in your basement for years, tinkering with it. If you have an invention, you probably want to make sure that no one else steals your idea and starts making money from it, money that you're entitled to. A patent is usually the best way to protect that idea. It's a document that contains a detailed description of what an invention is and how to make or use it. More importantly, a patent gives the holder a lot of legal rights and powers, but it's not easy to get. Here's the law of the land. To qualify for a patent, the invention has to be new, meaning it can't be on sale or out in the public for more than a year. The invention must also have some use, no matter how trivial. The invention must be non-obvious, which means a person with the appropriate field of expertise would consider the invention as an unexpected or surprising development. Finally, the methods of creation must be fully disclosed. Don't try to fool the Patent Office, or you risk losing your patent altogether. Incidentally, the approval process can last from one to three years, assuming your invention meets all these criteria. I'm here with Tom Canova, and before we take your calls, let me ask why is it so difficult to get a patent as opposed to a copyright? MR. CANOVA: Well, as I said before, June, a patent is a very significant piece of protection. Generally, you're not allowed to have a monopoly in this country. It violates the antitrust laws, but this is an exception to that. The government is providing a 17-year monopoly to make, use, or sell the patented invention. In return, you have to give something back to the public. It's almost like a contract with the American people. In return for the monopoly, you have to be able to teach the public how to make the invention, how use the invention, so that when the 17 years are up, they can take the patent itself and build the device, if that's what it is. COPYRIGHTS MS. GRASSO: Let's go to our phone calls now. Ira from New York. Welcome to Legal Cafe, Ira. Q Hi. How are you? MS. GRASSO: I'm fine. How are you? Have you invented something, Ira? Q No, I haven't, but I was just watching the program, and I'm a recent law school graduate, as a matter of fact, I took the bar yesterday, and my question is basically I don't think that the game Scully can be patentable because it's widely played around New York. I mean, I played it as a kid, and it's not -- it's not non-obvious, first of all, and I don't think it can be copyrightable, either, because it's the expression of the idea that's copyrightable, and not the idea itself. MS. GRASSO: Ira, I can tell you just took the bar exam, because you're in that mode. Hold on one second and let's let Tom answer that. MR. CANOVA: Well, first of all, Ira, congratulations on the bar exam. My girlfriend just finished it, also. Certainly if this Scully game has been around for a while, there's going to be trouble trying to get a patent on it. It would not meet the criteria. It would not be novel. With respect to copyright protection, Ira's absolutely correct, it is the expression of the idea that would be copyrightable, and there has to be some minimal degree of creativity. Perhaps the board game pieces might still qualify for copyright protection if somehow they are still original and have a minimal degree of creativity, and you gain copyright rights in this country not through registration, but through the act of creation, so whoever actually created those objects would have the copyrights to them. MS. GRASSO: And people are more familiar with copyright, because you see the copyright more often -- if you're at movies or you're looking at some CD covers, you see copyright. MR. CANOVA: Well, you do see the notice, usually, and that's the C in a circle with the word "copyright" and usually the name of the copyright owner and the year of first publication. That's changed over the years. Years ago, a copyright notice was required or you lose any copyright rights. That changed to a point where copyright notice was still required, but if the copyright owner omitted it, there were mechanisms to try to retrieve it back, and finally the United States signed a treaty that most countries in the world belong to, known as the Bern Convention, and I think that was effective in about 1989, and ever since then, copyright notice is no longer required in this country in order to preserve your copyright rights, but it's a good idea to keep it on anyway. It also helps you defeat any allegation of innocent infringement and allows you to get a higher degree of damages if there is infringement. MS. GRASSO: Our next caller is Barbara, also from New York. Good morning, Barbara. Do you have a invention you've been fiddling with? Q Yes. I've come up with a housecleaning aide that at least would go into every other home. It's plastic, and my question come in, how do I get a prototype made, and do I need a prototype to get patent? MS. GRASSO: Okay. Do you need her to describe more what it is before you answer the question, Tom, or -- MR. CANOVA: Not really. At least I can answer the second half of the question, probably, without anything more. MS. GRASSO: That's right. MR. CANOVA: You don't have to actually build the device in order to get a patent. You can what's known as reduce the invention to practice simply by preparing and filing a patent application. Now, in order to do so, the application must describe how to build the device and how to make it work, otherwise you're not giving back to the public -- MS. GRASSO: Do most people need someone to help them describe that? You might be good at putting things together, but describing, you know, exactly how to do it, would you need someone to help you with that? MR. CANOVA: Well, it usually is helpful, although no one knows their invention, perhaps, better than the inventor themselves, but particularly when it comes to drafting the claims of the patent, which really embody the scope of the invention, you should have a patent attorney start to do that for you. To get to the first half of the question, you can go to a mechanical engineer and perhaps if you enter into some sort of a confidentiality agreement to protect yourself in that way, you disclose your idea and you get the engineer to try to build a prototype for you, but, again, it's not necessary in order to file an application. MS. GRASSO: Barbara, do you want to go to an attorney, or do you want to try to handle this yourself? Q I wouldn't know how to begin handling it myself. MS. GRASSO: Mm-hmm (acknowledgment). So -- Q You know, I'm in -- I was -- not to cut you off -- but at some point during the program, if you could talk about the cost of the patenting and the lawyer? MS. GRASSO: We are going to talk about the cost, but let's give you a little preview right now. We said before it can be costly. How much can it cost to patent something? MR. CANOVA: Well, it depends, June. It depends on how complicated the idea is, and it depends what procedures you want to follow. It's usually a good idea to do a patent search first, to make sure that you have a good shot at a patent, and depending on how complicated the idea is, a patent search will vary in terms of cost. Typically, for an idea that's not too complicated, a mechanical idea, perhaps, as opposed to an electrical idea or a chemical invention, something along the lines of the plastic cleaning device, probably on the order of several hundred dollars, maybe up to a thousand dollars, would get you a reasonably good search and have an attorney for a couple of hours review the search results and formulate an opinion as to patentability. To take it to the next stage, which is preparing and filing the patent application, would cost several thousand dollars. It's much more costly. MS. GRASSO: And, Barbara, we're going to have later in the show some names and numbers up and some websites that might help you a little bit. I know if it would help me clean my house, I would buy your invention, so good luck with that, Barbara. RESEARCHING PATENTS Our next caller on the line is Irene from New York. Good morning, Irene, and welcome to Legal Cafe. Q Good morning. MS. GRASSO: Hi. Do you have an invention? Q Yes, I came up with an invention that I'd like to go forward with, which is a maternity bra, and the first thing that I have is how can you do your own patent search to eliminate the expenses? MS. GRASSO: First of all, is your -- is your -- this bra different from other bras that are out there? Q Yes. MS. GRASSO: Okay. All right. Don't tell us how. Now, first of all, this is the kind of thing that would be patentable? MR. CANOVA: It is certainly patentable subject matter. MS. GRASSO: Okay. Can she do her own search? MR. CANOVA: She can try and she can probably do a reasonably good job if she goes to, for example, the New York Public Library has a variety of resources available, including computer data bases which will allow you to search, to some extent, the records of the Patent Office. You could physically visit the Patent Office, and continue the search down there. It's unlikely that someone who is not well versed in patent searching will be able to hit all the right places, but, again, a patent search is not required, but it's probably a good idea. MS. GRASSO: But now suppose -- let's say two people come up -- she goes -- she does the patent search and she doesn't find it because she's missed it and she goes to apply for a patent and there's another patent there. They'll tell her right away that someone's already patented this? MR. CANOVA: Well, the Patent Office will assign the application to an examiner, and the patent examiner will conduct his or her own search and presumably find that other patent that is related in some way to this idea and will cite that other patent against the applicant's application, and that begins the process of the give and take with the patent examiner trying to sort of fight in a friendly way to get the patent. MS. GRASSO: So, Tom, what's the down side? Even if you don't find it yourself, they'll find it for you, so you're just going to lose the application fee and the time invested in filling it out? MR. CANOVA: Yea, that's true. Also, you probably want to know whether or not you're infringing the rights of someone else, and while the patent examiner will do a search, there's no guarantee he or she will find everything, so it's usually safer to do a search and to have a patent lawyer do it. MS. GRASSO: What does it cost to file a patent initially? MR. CANOVA: Seven hundred and seventy dollars is the filing fee -- MS. GRASSO: So it's pretty hefty for a small-time investor? MR. CANOVA: Well, no, a small entity, such as a single person not working for a -- I don't mean married, but a single -- MS. GRASSO: Not working for a company. MR. CANOVA: -- yeah, gets the filing fee cut in half. Now, that's just the filing fee at the Patent Office. As I said, if you have a patent attorney take care of it for you, they'll usually charge by the hour and, depending on how complicated the idea is, it'll take a variety of an amount of time and, again, not a complicated idea would be in the five (thousand dollars) to $8,000 range, probably. MS. GRASSO: Okay, but that's still a pretty -- a lot of money on something that you don't know if it's going to take off or not. Thanks so much. Good luck to you, Irene. Also, Irene, we're going to have some titles up later on, some websites, that will help you and tell you about filing patents and things like that, so you'll have some helpful information there. Thanks for calling. REPRODUCING IMAGES OF CELEBRITIES MS. GRASSO: Welcome back to Legal Cafe as we continue our look at the laws of invention. One of the greatest inventions in recent times is the Internet, e-mail, and we have received a number of e-mail questions about copyright and patent laws. Vincent from New Jersey sent us a question about copyright. He asks, "Is it legal to print and sell T-shirts with famous but dead people on them?" That's a valid legal question, Tom, and I think an easy answer for you. What's the law? MR. CANOVA: Well, generally, that'll implicate two types of intellectual property protection. I'm not sure where the picture came from that Vincent is putting on T-shirts, but if it came from a photograph, for example, the photographer may very well have a copyright in the photograph itself, and, of course, that photograph cannot be reproduced in that way without the photographer's consent. Another form of protection that's implicated is the right of publicity. A person's likeness or signature and sometimes even their voice, the sound of the voice, people have rights in that type of thing under rights of publicity, and that's a state-based protection. MS. GRASSO: Suppose he wants to draw on a T-shirt a picture of Elvis Presley. MR. CANOVA: The estate of Elvis Presley probably would sue for a violation of the right of publicity. MS. GRASSO: And they'd license that out. In other words, they might make a deal with someone to produce those kind of T-shirts if they're happy with what's going to be done? MR. CANOVA: Correct, and there's a lot of merchandising that goes on with Elvis Presley. MS. GRASSO: And that -- you'd have to find out how long that may last, because suppose it's someone who's -- like Albert Einstein, who's been deceased a long time, how long that right of publicity lasts. MR. CANOVA: Well, the right would be descendible to Albert Einstein's heirs, and you'd probably have to do some research at the state level to determine just how far those rights extend. MS. GRASSO: Okay. Thanks so much for writing us and e-mailing us. Keep it up. PURSUING PATENT INFRINGEMENT Our next caller is Sheila from South Carolina. Hi, Sheila. Q Hi. MS. GRASSO: Do you have an invention? Q Yes, I have two questions. The first one is we have already been told by the Patent Office that we have gotten our patent and we've paid our filing fee, and my first question is we heard that somebody is selling a similar product that doesn't look like -- you know, is similar to ours, but used for the same purpose ours is going to be used for, but we haven't gotten a copy of our patent yet in the mail. Do we have legal recourse to go against them for selling a product that's used for what our product is used for? MS. GRASSO: Okay. So she hasn't gotten the patent back in the mail, but she understands she has gotten the patent. Can she right away go after the people that she thinks are using something similar to hers? MR. CANOVA: Well, you could certainly send a cease-and-desist letter and try to get the people to stop using the same invention. The patent rights issue from the date of issuance of the patent, so technically you're not going to be able to sue for patent infringement until the patent actually issues. MS. GRASSO: And you say -- you were talking about how you've been recently out on these runs trying to stop people from infringing. How difficult is that? MR. CANOVA: Well, it depends who you're up against. What we were discussing before actually were trademark products and people taking certain products and putting them in boxes that looked like the boxes of other companies. And, you know, you bring a lawsuit, which is a little bit expensive, and you try to get people to stop through that. Before you go the lawsuit route, usually you'll send a cease-and-desist letter and see if they'll just stop on that basis. MS. GRASSO: Tom, will you describe what a cease-and-desist letter is in laymen's terms? MR. CANOVA: Generally a lawyer will write a letter to an infringer and identify the rights of his client and indicate that we're aware of the infringement taking place and demanding that the infringement stop and that we receive written assurances within a certain number of days that the infringement has stopped. MS. GRASSO: "Cut this out or we'll sue." MR. CANOVA: Exactly. MS. GRASSO: Okay. COPYRIGHT PROTECTION AND THE INTERNET MS. GRASSO: So actually, Daisy, you're in luck, because it's easy to do. You just have to send away to the Copyright Office to get all that information, and you're on your way. And good luck with that production of yours. You know, we were talking in the break about the Internet and some of the problems on the Internet, and you mentioned something about the names used on the Internet. MR. CANOVA: That's right. There are a lot of people out there who are registering as Internet domain names -- addresses where you can receive e-mail on the Internet -- the famous names and trademarks of other companies. Over the years, people have registered things like mtv.com, mcdonalds.com -- MS. GRASSO: They must make those companies very happy. MR. CANOVA: Well, those companies then go and try to get their names back, and oftentimes the people who own the domain name registrations will only give it back to the rightful owners for a price. Some companies pay the price. Other companies bring lawsuits. MS. GRASSO: Well, if you want to do that, if you want to have your own name and you want to protect it, what do you do? Is there something you go through to protect your name on the Internet? MR. CANOVA: Indeed. You file an application with the Internet people down in Herndon, Virginia. There is a company called Network Solutions, Inc., and they are the ones responsible for registering Internet domain names. TIPS FOR PROTECTING YOUR INVENTION MS. GRASSO: We still have a few minutes left in the show. Before we wrap things up, let's summarize some of the key legal points we've discussed this hour. We'll call this Tom Canova's House Blend for Protecting Your Invention. First, don't talk to anyone about your invention until you've talked to a lawyer first. Once you've found an attorney, make sure he or she conducts a patent search to make sure someone else hasn't already thought of your idea. If that search turns up nothing, go ahead and file your patent application. Then get started on marketing the invention.