Can I Use a Video Recording of a Concert in My Documentary?

When using a recording of a concert, there are actually several copyrights at play. Copyright law is interesting, so bare with me. First, there is the copyright that belongs to the composer of the music. This copyright covers the “musical composition” – think of it as the ‘musical notes on a piece of paper.” No matter who plays these notes or who records music using those notes, they would need to account to the composer.

Next, there is the copyright that belongs to the performer of the musical composition. Because every rendition of music can be considered a work of art in itself (taking those musical notes on a paper and transforming them into sound), the performer of the music composition is granted a copyright on their performance of the musical work.

Finally, there is the copyright of the actual recording of the performance. This is where the ‘record and production’ companies come in to play. They take music performances and produce them into something tangible, like a digital sound/video file (mp3, CD, music video, concert recording, etc.).
Sometimes, the music composer is also the performer and the recorded… but that is rare. If you obtain a copy of the recording, with permission from the recorder, you are only receiving ONE of the THREE copyrights you need to make a distribution or a derivative work therefrom. Firstly, you should make sure if the recorder of the performance had permission from the Performer of the work AND the Composer of the work to record the performance. If so, then you need to make sure that the Recorder had permission to not only record the performance of the musical composition, but to also Replicate and Distribute it to You.

Let’s say the Recorder does have a license to record and distribute from both the Performers and the Composers. Then, should you intend to produce derivative works of the performance or musical composition (ask, do you plan on changing the arrangement of the song?), then you need seperate permission from the composer of the work to change his musical composition!
But there is an exception

Educational Use – since you are making a documentary, the law may provide an exception know as “fair use”. If you are only going to be taking excerpts of the performance, and not playing the entire thing, and using it for educational purposes, then you might be able do so without obtaining permission from the composer/performances – ASSUMING that the recording of the work that you use was obtained with permission to begin with.

To rely on the “fair use” exception is a recipe for trouble, however… it is typically used as a defense once you are being accused of copyright infringement. I would recommend trying to locate all the parties (don’t worry to much about the Dancer) and tell them you are making a documentary under the fair-use exception and see how they react. In the documentary, you may be using photographs, background music, video exceprts, etc of Third Parties… you’d need to notify those third parties as well.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

What Is a Trademark, Service Mark, and Patent?

A trademark is what you use as a source identifier of the product or goods you offer to the public. When consumers see your products or goods, they instantly recognize your brand as the source of those goods.

A service mark is very similar to a trade mark. Except it doesn’t apply to products or goods, it applies to services. Often times, these to terms are used interchangeably.

A patent is right to exclude others from making using or selling an invention.

While a trademark/service mark protects against others using your NAME/LOGO/SLOGAN/DESIGN associated with your products or services, a patent protects others against making using or selling copies of your products or services under ANY mark.

Patent law is complicated, and every inventor’s situation is unique. SmartUp can connect you with a licensed Patent Attorney who will give you a free consultation and answer your specific questions.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Can I Get a Patent on My Idea?

Any person who has invented or discovered a new and useful process, machine, article of manufacture, or composition of matter may obtain a patent for it. This also includes any new or useful improvement on a past invention. Laws of nature and theories are not patentable. You do not need to have actually constructed or used your invention to get a patent on it. Having a good idea of how your invention is made and used is sufficient.

In general, the basic principles of patentability could be based on two questions:

Is the invention useful? and Is the invention new?

You may obtain a Patentability Opinion from a Patent Attorney who will determine if you’re your invention qualifies for patent based on the nature of its subject matter and its comparison to a Prior Art search.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

What Is Required in the Specification of My Patent Application?

If you’re trying to write a patent application on your own,please take caution – it has been my experience that almost all of the inventors who attempt to prepare and file their own application end up never obtaining any patent rights and inadvertently forfeiting their invention to the public domain.  Use this guide as an outline of what you’ll need to know in order to have a licensed professional prepare and file your patent application.

A utility patent application is comprised of three primary portions (excluding all of the paperwork involved):

  1. Drawings
  2. A Specification
  3. Claims

This article discusses the requirements of the 2nd element – the Specification. In the US, a specification must consists of at least the following parts:

  1. Background;
  2. Brief Description of the Drawings;
  3. Detailed Description of the Invention; and
  4. An Abstract.

International patent applications require two additional parts:

  1. A Statement of the Technical Filed of the Invention; and
  2. A Brief Overview of the Invention.

1. The Background

The Background portion of your application should, generally, describe the state of the art at the time of the inventions conception.  It should present the problem that being solved by the invention. The drafter should be careful never to disclose the actual invention in the background section, as anything disclosed in this will be considered by the patent examiner as “Prior Art.”  Prior Art, in turn, is what the examiner will use to reject your application for ‘lack of novelty’ or ‘obviousness’.

2. Brief Description of the Drawings

This section should provide a brief, one sentence description for each Figure (referred to as a “Figure” or “FIG.” within the specification) that is submitted with the patent application.  This section should not discuss the labels or elements of the figures.  The drawings are required to show all elements that the patent application claims as the invention.  Even in the case of software patent applications, the drawings should present Block Diagrams of the system architectures or wire-frames of the user interface.

3. Detailed Description of the Invention 

The Detailed Description should answer two very basic questions: 1. How does a “person having ordinary skill in the art of the invention” (PHOSITA) make the invention, and 2. How does a PHOSITA use your invention.

Though you never need to have made or implemented your idea or invention to obtain a Patent, you still need to have a concept of how your idea or invention is made.  You are required to disclose the best way you envision making it.

The portions of the invention that may be easily derived by the PHOSITA need not be disclosed in detail in your application.  In other words, if you invented a solar powered car, you wouldn’t need to disclose how to put together the automatic windows – since that portion is already well-known in the field of your invention.  Here are some questions that your specification should answer:

  • What problem does your invention solve?
  • How does your invention solve the problem?
  • What’s new about this solution?
  • Does your invention perform a method or process? If so, describe the method step by step.
  • If your invention does something that’s been done before, but in a different way – what’s the difference?
  • Does your invention yield unexpected results?
  • What is the best way you would make your invention? (You never actually had to have made your invention, just tell us how you envision your invention being made.)
  • What components make up your invention?
  • How do you put the components together?
  • Is there a method of putting the components together? If so, describe the method, step by step.
  • Is there a special reason why are they put together that way?
  • What are the components made of?

For more information on the drawings check out our Drawings Article.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Who Should I List as an Inventor in My Patent?

Legally, an inventor is anyone who has contributed to the conception (not the realization) of what is claimed as the invention you wish to protect. So, if an employee conceived of Feature 4, but you only wish to Patent Features 1-3 and 5, the inventor does not need to be listed in the patent application. In general, however, it’s good practice to list everyone that has made a contribution to the conception of the invention.

Scenario One
When a first co-founder provides all of the ideas for the invention, and the second co-founder performs the steps in making the ideas into a developed app, the patent application should only list the first co-founder as an inventor.

Scenario Two
If the founders conceived of the ideas for the invention but hired employees/contractors to develop the app, only the founders should be listed as inventors.

Scenario Three
If an employee provides an idea for the invention, but his employer provides all of the resources and financial support in realizing the invention, the employee must be considered an inventor. However, in this scenario, the employee may be obligated by Employment Contract to assign his patent rights for the invention to his employer.  In this instance, the employer may be considered an ‘assignee’ of the invention and will own all of the rights to the invention. The employee’s listing as an inventor will merely be a formality.

You can read our latest blog article on assignments here: Who can be considered an inventor on my patent application?

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Do I Need a Patent Search?

Most of us like to feel that we were the first to have conceived of our great idea.  Before investing the time and resources into applying for a patent, it is good to know if there are any other patents or publications disclosing something similar to your idea. Ultimately, this information will help you and your Patent Attorney decide if pursuing a patent is a good decision, or if designing around may be needed.  Please note – a patent search is not the same as a clearance search (see My Article about the differences).

Typically, the importance of filing a Provisional Patent outweighs the costs of conducting a professional Patent Search.  This is due to both relatively low costs of Provisional Patent filings and the time sensitive nature of Provisional Patent protection.

Think of it this way – if you only had, for example, $600 to spend, what would you prefer to get with that $600?

1. You can spend that money on filing for a provisional application for patent and gain legal priority to any potential patent rights for your innovation, as well as “Patent Pending” status on your innovation; or

2. You can spend that money to determine if your idea will be patentable in the long run.

For provisional patent applications, we recommend approach (A).  Firstly, provisional applications are never examined for patentability.  Rather, they are reviewed by the patent office for formalities, and then stamped with a priority date.  The longer you delay filing for provisional patent protection, the less likely you are to be the first one to file for patent protection on your innovation – and if you’re not the first inventor to file, you may lose your chances of getting your innovation patented.  As such, a patent search may only further delay and increase the expenses associated with filing provisional patent applications.  It’s not a bad idea to perform a quick ‘knock-out’ search on Google’s Patent Search tool – this will give you a good idea if anything similar to your idea has been patented or patent pending.

Formal, non-provisional patent applications, however, are more costly and resource intensive than provisional patent applications.  For that reason alone, it is usually wise to invest in a professionally conducted patent search prior to undertaking the expenses of non-provisional patent filing.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

When Should I Submit Patent Drawings?

The standard for submitting drawings in a provisional patent application is rather simple. Ask yourself, are these drawings necessary for “one of ordinary skill in the field of my invention” to understand what it is that I am trying to patent. If the answer is NO, then you don’t need drawings in a provisional at all. If the answer is YES, then you could submit ANY type of drawings – whether they are non-formal sketches, or expertly drafted figures.  What about when drawings ARE required for a formal patent application?

For the regular patent application that follows the provisional patent, there is a requirement for formal drawings. There are a number of requirements to which these drawings must adhere. You can look through the MPEP (manual of patent examining procedure) Section 608.02 for some of those requirements.

Lastly, if the drawings you submit with your regular (non-provisional) patent application don’t conform to the formal drawing requirements, you will NOT loose your priority date (so long as they were initially filed within a year). The patent office will give you a chance to correct your informal drawings. Here is the catch: If those drawings that you resubmit show some concept that was not understood from your provisional patent application, you may likely loose your priority date to those new concepts.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

How to Reduce Patent Fees by 75%

The newly enacted Patent Laws make patents more important to obtain and more enforceable to carry. Best of all, in the midst of big corporate world’s patent cold war, the new Patent Laws open a door to let startups and early-stage companies join the battlefield on even ground.  Here’s how.

The America-Invents-Act (AIA) created a first-to-file standard for awarding patent priority. In one sentence, this standard awards priority to an inventor who is first to file for patent on an invention (Inventor A) over any other inventor (Inventor B), even if Inventor B could prove that he came up with the invention before Inventor A filed for the patent.

What does this mean for you? You’re in a race to the patent office to protect your intellectual property.

The pros: A cleaner administrative process makes for a more enforceable patent system.

The cons: The inventor with the most money is most likely to be the one to file for patent first, thereby winning the priority to any patent rights the invention may have.

The equalizer:  In anticipation of this pitfall, the AIA reduces patent filing fees by 75% for inventors who qualify for Micro-Entity.

Do you qualify for micro-entity status? Well, if you have to ask…. you probably qualify!  Here are the requirements:

  1. You are an individual or small business (a small entity),
  2. Less than 4 filed patent applications (provisional don’t count),
  3. Your income is less than $150k a year (that’s three times the median household income for last year), and
  4. You don’t assign your patent rights to a non-micro entity.

Watch out for requirement #4.  If you end up licensing or assigning your patent application to a larger business, you may no longer qualify for this entity status. That may not mean that you’ll have to account for the difference on the fees you’ve already paid, but it may mean that any subsequent fees continue your patent examination will go up.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

7 Facts about Patent Rights

Here’s 7 Things to know about Patent Rights – #4 is what most people DON’T know, #1 is the most important to know, and #7 reflects a recent change to our patent laws.

Our Patent laws have seen some fundamental changes with the recently enacted America Invents Act.  Whether you have a large patent portfolio already, or just an idea you want to protect, here are 7 basic things you should know:

1.       First Come, First Serve:  The US patent system will only award a Patent on an idea or invention to the first inventor who files a patent application.  If you aren’t the first to file, you risk losing your patent rights.

2.      The Clock is Ticking: If you don’t file a U.S. Patent Application within 12 months of public disclosure (such as sharing your idea with others) or within 12 months of offering your invention for sale to the public, you lose your patent rights.  Even still, the longer you wait, the greater the risk of someone else filing a patent application for the idea you came up with first. Important Note: Although the US gives you a 12 month “grace” period to file a patent application after your first public disclosure, most other countries in the world do not.  This means, in those countries, you will have lost your patent rights if you’ve made a public disclosure before filing the U.S. patent application.

3. Filing a Provisional Patent Is a Great Place To Start: It’s affordable and it’s an essential take away from these 7 facts.  A provisional application secures your priority date (your spot in line) to the patent rights while you develop your idea, market it, and raise funding.  This helps to ensure that no one will beat you the patent office.  Our platform has made the provisional patenting process quick, easy, and affordable for thousands of entrepreneurs and businesses across the nation.

4. Put the Public on Notice: Simply put, once you have a patent or patent pending status, tell everyone about it.  The traditional way to do this was to write your patent number on your product.  However, now this can be done virtually (See Fact 5).  Notice is crucial, because if you don’t provide notice of your patent (or pending) rights, then you aren’t entitled to monetary compensation from competitors who have been infringing your patent rights under your radar. 

5. Virtual Patent Marking Makes Things Easy: Recent updates to our patent laws allow for a “Virtual Patent Marking”.  This simply means that you can now put the public ‘on notice’ of your patent rights over the internet.  If done correctly, you satisfy your notice requirement, and you no longer have the burden of constantly monitoring and notifying your competitors one-by-one. 

6. Use the Patent Seal™:  It’s effective, inexpensive, and easy to use.  The Patent Seal™ is a Virtual Patent Marking certificate issued by licensed patent attorneys that you can use to meet the Legal Notice Requirements under 35 U.S.C. § 287.  Just place the Patent Seal™ Virtual Patent Mark on your website. When your website visitors click on your Patent Seal™, they will be directed to a certificate detailing your intellectual property rights.

7. The more you wait, the more you lose: It could take months, if not years, to discover and locate people who infringed on your patent.  By the time you find these infringers and put them on notice of your patent rights, they may have made substantial profits from your idea.  Moreover, you won’t be entitled to any of those profits unless you can prove that the infringers had notice of your patent rights.  The Virtual Patent Mark is a legally recognized form of ‘public notice’ that will entitle you to a portion of the infringers’ revenue, even if you didn’t provide them with notice directly.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

How Do I File for International Patent Protection (PCT Application)?

A PCT application is an international application that allows you to reserve your priority in most countries with a single filing. Once you have a PCT application on file, your application undergoes a form of “preliminary examination” in which the international search authority renders a patentability opinion.  With this opinion, you can choose to enter Patent Examination on a country-by-country basis – one-by-one, or all at once (Europe has a unified patent office for each member of the EU, while Asian countries have separate patent offices).  Any country that is member to the PCT (Patent Cooperation Treaty) must honor the patent priority established by your international patent application, but there is still an examination process.

If you are considering international protection, the PCT application is a good tool to lock down your priority in most of the world with a single filing. Having made this single filing, you will then have 30 months to decide in which countries you’d like to obtain a patent based on your PCT application.   Without a PCT application, you’d need to separately apply for a patent in each country with different rules and regulations, all within 12 months of whichever country you filed in first (assuming that the first-filing jurisdiction is recognized by the subsequent jurisdiction).

If you’re unsure about international patent protection, you can start out with a patent filing in the US.  As soon as you file a formal, non-provisional U.S. Patent Application, you have a period of one (1) year to decide if you want to pursue international patent protection (better known as a Patent Cooperation Treaty (PCT) application). This one year deadline is an important date to consider, as some foreign countries will not grant you patent rights if you’ve publicly disclosed your invention without first filing a patent application before your public disclosure.  Alternatively, you can file a PCT directly without having first made a US Filing.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal