Nolo’s Patent, Copyright, and Trademark Blog

Dear Rich: I have a question. I read recently that Victoria’s Secret stole somebody’s design for a bra. I have a design for something similar — I don’t want to say exactly what it is, because it kind of gives away the idea. How can I stop someone from stealing it? I’m so glad you asked. I’m familiar with the alleged bra theft, though I don’t think it’s fair to say — at least not yet — that Victoria’s Secret violated the law. The woman claiming theft has a patent, but there are many ways to design around patents, and it’s always possible to argue that the woman’s patent is invalid. Alas, patent law is rife with misinformation regarding bra inventions, including the claim that Mary Phelps Jacobs invented the first bra in 1914 or that Herminie Cadolle of France invented it in 1889. (For those interested in the true story, I recommend Hoag Levins’ wonderful explanation of brassiere inventions in his book American Sex Machines: The Hidden History of Sex at the U.S. Patent Office.)

Can you stop someone from stealing your idea? You can take preemptive steps — one approach is to get a signed evaluation agreement (a modified nondisclosure agreement) before presenting your idea. The problem with that is that many big companies don’t want to sign them because they’re afraid it will prohibit them from developing similar ideas. Another approach is to seek patent protection. A patent — as in this situation with Victoria’s Secret– gives the owner a hunting license to pursue infringers. If you’re not sure about investing time and money in the full patent application, you can reserve your place in line at the Patent Office by filing a provisional patent application for $105. Nolo offers books and software to prepare a provisional application. And remember, whatever you’ve invented, please consider the safety issues.

Dear Rich: I have a question. Somebody told me that the Heimlich maneuver is patented. Is that true? Can medical procedures be patented? Does that mean somebody gets paid whenever a procedure like that is used in a hospital? I’m so glad you asked. The answers to your questions are No, Yes, and Maybe. The Heimlich maneuver — the process that’s reportedly saved over 50,000 lives, and has even been used successfully on a few pets — is not patented. The process, though it seems obvious, now, was unknown before 1974. Dr. Heimlich did go on to patent some life saving devices, including a collapsible respiratory exerciser (4,323,078), and an improved tracheal tube (4,987,895).

Although the Heimlich maneuver isn’t patented, medical procedures can be protected under patent law — over 100 of these medical process patents are issued every month. And yes, patent owners can sue when their procedures are used without authorization. (FYI Dept.: A veterinarian won a case last year over his patented process for declawing a cat.) There is one big limitation on these patents. Under a 1996 federal law, the patent owner can’t sue a doctor for infringing a medical process patent. In other words, a surgeon can use a patented process in the operating room without asking for permission beforehand. Still, that hasn’t stopped lawsuits.

Anyway, thanks to Dr. H., many people — for example, Cher, former New York Mayor Ed Koch, Elizabeth Taylor, Goldie Hawn, and Carrie Fisher — are alive today. And since there is no copyright or patent on the method — though there is a trademark* — , let’s all review it for our own selves. Here’s the setup: A choking victim can’t speak or breathe and needs your help immediately. Follow these steps*

• From behind, wrap your arms around the victim’s waist
• Make a fist and place the thumb side of your fist against the victim’s upper abdomen, below the ribcage and above the navel.
• Grasp your fist with your other hand and press into their upper abdomen with a quick upward thrust. Do not squeeze the ribcage; confine the force of the thrust to your hands

P.S. Don’t you love this Heimlich imagery created by “Little Miss” Sunshine?

*Previously I suggested that you avoid backslapping in favor of the HM, but a tip of the hat to Mexican Radio (see comments below) who points out that the HM has been demoted in favor of the back slap. (See Heimlich’s response to back slaps, here.) Although there is no copyright or patent on the procedure, MR points out that the Dr. does have a trademark on the term “Heimlich Maneuver” — which may explain why the American Red Cross now simply refers to the procedure as “abdominal thrusts.”

Dear Rich: I have a question. Yesterday there was a story in the news about the Supreme Court and ‘patent exhaustion.’ What is patent exhaustion? I’m so glad you asked. Patent exhaustion is a legal doctrine that basically says that once a patent owner sells a product, the patent owner cannot seek further patent payments for that particular product. So, for example, if you buy a patented lawn mower, the patent owner cannot demand further royalties if you resell the mower or if you make your living mowing lawns. The principle is also known as the “first sale doctrine,” a term that also applies in copyright law for a similiar principle. For example, if you buy a copyrighted item such as book or DVD, you are free to resell it without paying the copyright owner. Wait, does that rule apply for copyrighted software? Hmm… that depends on where you live. In some states, courts have held that software isn’t sold; it’s licensed and can only be ‘resold’ under the terms of an end-user license agreement. But is software protected under copyright or patent law? Actually, it can be protected under both. If software is protected under patent law, does the first sale apply to patented software or is it considered to be under license? Could I answer this some other time? I’m exhausted.

Dear Rich: I have a question. What’s a patent troll and why does everybody hate them? I’m so glad you asked. A patent troll, according to Kirk Teska, author of the wonderful book Patent Savvy for Managers: Spot & Protect Valuable Innovations in Your Company (Nolo), is a “derogatory term used to describe a patent owner who sues for patent infringement but who does not make or sell any products using the patent technology.” Typically, a patent troll sends many cease and desist letters to companies threatening to sue, but also offering to settle, usually at an amount that is cheaper than proceeding with the litigation. The result is that many companies agree to pay a “license fee” rather than battle what may prove to be a dubious patent. The term was coined in 2001 by an Intel attorney, referring to the original patent trolls — attorney Raymond Niro and his client, TechSearch LLC. (Presumably, the troll reference had to do with bridge trolls, creatures who hid under bridges and exacted a toll from passers-by — or ate them. Kids: don’t try that at home.) A lot of people don’t like patent trolls (and whole blogs are devoted to tracking their whereabouts). But not everybody hates them. Some consider them unfairly labeled and some inventors get rich through their efforts. And we assume that their families like them, too.

Dear Rich: I have a question. I’ve tried filing a provisional patent application electronically at the patent office but the USPTO refuses to validate my application cover sheet (a PDF form). It’s driving me nuts because I can’t figure out the problem. I’m so glad you asked. Chances are you’re using the wrong version of Adobe Acrobat. Although many people are using Acrobat 8.0 (and higher), the USPTO EFS system currently only accepts forms prepared with Acrobat 7.0.8 which you can obtain using the links on this USPTO page. (You can get all the EFS requirements here.) And of course, if you’re interested in the other kind of acrobat…

Dear Rich: I have a question. How do I get a patent on a golf club? I’m so glad you asked, because coincidentally I was just reading about a design patent for a one-fingered golf glove. As you may know, there are two types of patents associated with golf products: design patents which give the inventor rights over design; and utility patents which gives the inventor rights over the functioning invention. You can learn how to get both by reviewing the patent information at Nolo. Or if you’re just interested in golf patents, check out Dave Dawsey’s Golf Patents website. Dave (the “Golf Lawyer with a Grip on the Industry”) tees off daily with fresh IP golf news.

And, if you’ve already decided to go ahead with applying for a patent for your club, you might find Nolo’s Patent Pending Now! software useful for filing that all-important provisional patent application, or PPA.

Dear Rich: Has anybody patented a system for storing cremated remains in a plush toy? I’m so glad you asked. Take a look at patent No. 7308741 — huggable cremated remains storage systems — issued today by the USPTO. According to the patent, “The present invention comprises a “plush container”, such as a stuffed animal, and further comprises ornamental symbols or similar features …” The patent also covers versions in which you can customize your plushie to include “photographic and similar graphic imprinting.” Shout outs to inventors Mary Rydberg and Sharon Robinson of Arizona for providing potential plot material for the next Wes Craven (or is it Joe Dante?) film.

Has anybody patented an urn that has a storage compartment for memorabilia? Sure thing. Check out patent No. 4324026 — cremation urn with readily accessible memorabilia compartment — by William K. Craft, not to be confused with the multicompartment funeral urn by Clement Poirier.

Has anybody patented a storage unit for ashes that looks like a book? Absolutely. If you’re looking for some light reading and your Kindle is on the fritz, check out inventor Gustav Bachofner’s book Urn (Patent No. 3167844).

Has anybody patented a lawn ornament that stores remains? Oh yeah. I don’t know if the patent covers garden gnomes, but you can check out the combination lawn/garden ornament and cremation container from Daniel J. Parker and Mark Thesken (Patent No. 5794318).

Has anybody invented a combination of funeral urn and cigarette ash receptacle? Let’s not go there.

And, to find out how you can make legally sound patent drawings like the one above,  see Jack Lo & Attorney David Pressman’s How to Make Patent Drawings: A Patent It Yourself Companion (Nolo).

Who patented fire? As wildfires create terror in southern California, we “celebrate” the 171st birthday of the U.S. patent for the friction match (inventor: Alonzo Phillips), the invention that made fire portable.

Who really invented the match? The friction match was actually invented by English chemist John Walker in 1827, and the process was initially patented by another Englishman, Samuel Jones, and sold in the UK as “lucifers.” Phillips improved on the process and patented his “Manufacture of Friction-Matches” (”for the Instantaneous Production of Light”) in 1836 in the U.S., calling his product “locofocos.”

And the match gave us? Lucifers and locofocos quickly led to the rise of smoking tobacco and the mass production of cigarettes. Using a match was a dangerous (and smelly) proposition until Carl Lundstrom of Sweden invented the first red phosphorus “safety” matches in 1855.

How do you sell a matchbook? Joshua Pusey—annoyed by the size of safety matches—invented book matches in 1889. Ironically, the product was unpopular until somebody realized you could advertise on it. (Kind of like the invention of the radio: nobody made a dime off it until they invented commercials.)

If you’re looking to file a patent yourself, try Nolo’s Patent Pending Now! software for filing provisional patent applications in a flash.

The patent that started the Internet Business patent stampede may soon be in the public domain. The U.S. Patent and Trademark Office recently rejected 21 of 26 patent claims in Amazon’s famous 1-Click patent (No. 5,960,411).

Why did the PTO come down on Amazon? Pesky prior art undid the mighty online mall. In particular the PTO cited two older patents discovered after the patent issued: one for a one-button ordering process for interactive TV (No. 5,819,034) and the other for a method of purchasing online financial transactions with a “BUY” button (No. 5,729,594).

What did Amazon end up with? Only claims 6-10 made the cut, and, according to patent gadfly and Nolo author Greg Aharonian “claims 6-8 are client-side patents, hard to enforce.” However, as Greg notes, “Claim 9 still basically claims one-click processing, though, and Amazon will be appealing the rejection.”

Wonder why Amazon cared about the 1-click system? Because 60-65% of shopping carts are abandoned before checkout.

To learn more about the basics of the patent process,  check out Nolo’s Patents for Beginners, my book with David Pressman (Nolo).

Every once in a while people ask me IP questions that start with “Is it illegal to…?” Actually, that’s not true at all. People rarely talk to me about IP law because they know my answers will only bring their head down. In an attempt to change that, here are five questions that people might ask me.

Is it illegal to unlock an iPhone? No, not if you’re using it to connect to a wireless network other than AT&T (although you may lose certain warranty rights with Apple). If you’re selling unlocked iPhones, that’s going to be a legal problem. Punk copyright attorney Nilay Patel explains it better here.

Is it illegal to have Mickey Mouse tattooed on your back? Mickey is a copyrighted character and any reproduction … blah blah blah… Okay, yes it’s a violation of copyright law. It may also be excused as a fair use. In reality, Disney is unlikely to do anything about it unless you’re a postal maintenance worker with 1,643 Disney characters in tats, in which case, they’ll come after you and make you promise not to appear in tat magazines or make money off the exhibition.

Is it illegal to divulge the Coca Cola formula? First of all forget that legend that there are only two Coke execs who know the formula and each one only knows half of it. If you work at Coke, or you’ve signed an NDA with them, then you’d better not divulge any secrets. (And don’t bother trying to sell it to Pepsi, either. That type of entrepreneurship will get you eight years in jail, and don’t assume that Pepsi would benefit from knowing the formula, anyway.) If you learn the secret independently by chemically analyzing the Real Thing yourself (known as “reverse engineering“), you’re free to post it anywhere you wish (though good luck tracking down the mysterious ingredient known as Merchandise 7X).

Is it illegal to claim copyright in artwork created using your buttocks? No, though you won’t be able to stop others from using the same idea to create works similar to your “Tulip Butts” masterpiece. However, we do counsel against the practice if you are a high school art teacher in Virginia.

Is it illegal to reproduce a picture of Britney Spears and post it at your blog? I don’t know; let’s find out.