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Bar News - June 15, 2012


Intellectual Property Law: Law Firms’ Intellectual Property – Are You Kidding?

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A law firm, just like any business, needs to have a good understanding of what Intellectual Property (“IP”) rights may be created in the course of its business and how best to protect those rights. By the same token, a law firm, just like any business, needs to know what IP rights others have to avoid becoming the subject of an infringement action. For the purposes of this article, the “big three” will be discussed; namely, patents, trademarks, and copyrights.

Patents

A patent is a federal right to exclude others for a limited term from making, using, or selling the patented invention.[1] In general, a patent is granted for any new, useful, and non-obvious process, machine, manufacture, or composition of matter.[2]

Law firms are customarily not expected to apply for a patent, or infringe another’s patent. Nevertheless, it is possible. According to the United States Patent and Trademark Office’s (“USPTO”) statistics, there were over 3,600 business method patents issued in 2010.[3] By conducting a simple search of the patent database, the following terms resulted in numerous hits: “tax planning” 4,870 hits; “mergers and acquisitions” 2,260 hits; “estate planning” 3,580 hits; “business financing” 8,600 hits; etc. Your firm may be infringing one of those patents. However, those business method patents may not pose as great a risk as they appear.

The recent patent reform bill, the Leahy-Smith America Invest Act (“AIA”), includes provisions that relate to business method patents that alleviate some of the risk to your business.[4] First, there is an enhanced “prior use defense,” which extends to all patents issued on or after September 2011. An accused infringer has a defense if it can provide clear and convincing evidence of commercial use in the U.S. at least one year before the earlier of the filing date or the date the invention was disclosed to the public.[5] Second, there are new limitations on patentable business methods. Tax strategy patents (e.g. strategies for reducing, avoiding or deferring tax liability) are now deemed unpatentable under the AIA. But, methods relating to preparing tax returns or financial management are not considered tax strategies.[6] Third, the AIA provides special post-grant challenges for “covered business method patents,” where a covered business method patent is defined as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service."[7]

In addition to the items discussed above, there are also ethics rules that relate to how a law firm or its employees can represent themselves to the public in reference to patent practice. The USPTO isthe federal agency which governs patent and trademark prosecution (the act of obtaining a patent or trademark). The USPTO requires all patent prosecutors to pass a federal patent bar exam.[8] The rules state that a person cannot represent that she is a patent attorney unless she has passed the patent bar exam and at least one state bar exam. There is no requirement that a person must be a lawyer to sit for the patent bar exam, but a person can only represent that she is patent agent if she is not a lawyer. However, an attorney is not required to pass the patent bar exam to advise clients on patent litigation or patent infringement matters, or to prosecute trademarks.

Trademarks/Service Marks

A law firm certainly has an interest in distinguishing its services from those of other entities by using trademarks. A trademark is a distinctive element or collection of elements, used by an individual, or other legal entity, to identify that the products and/or services associated with the trademark originate from a particular source. Some potential types of trademarks that a law firm might utilize could include a logo, or even a phrase associated with some or all of the firm’s services.

It is important to remember that legal ethics rules may dictate some of the choices for trademark protection. There are rules governing advertising, communications of fields of practice, and firm names and letterheads. Also, as noted above, there may be issues with “holding oneself out” as a specialist, or comparing your firm to others. The standard is that communications to the public cannot be “false or misleading.”

There are common law and federal trademarkrights. Common law rights arise just by using the mark in commerce. These rights protect the mark in the geographic areas in which it is used. U.S. federal trademark rights are governed under the Trademark Act of 1946.[9] Generally, federal registration provides protection for the entire U.S.

A firm considering trademark protection needs to weigh many factors before settling on a mark. An exhaustive search and some degree of diligence in choosing a unique mark can reduce costs and help ensure a successful registration.

Copyrights

An author obtains a copyright in an original work when it is fixed in a tangible medium.[10] There are five exclusive rights in a copyrighted work: reproduction, modification, distribution, public performance, and public display.[11] By federally registering, one gets additional statutory protections, such as the right to bring an infringement action and additional statutory damages.[12] Anyone who violates any of the exclusive rights of a copyright owner is an infringer.

The Copyright Act of 1976 (“Copyright Act”) governs copyright in the U.S.[13] There are several types of works of authorship protected under the Copyright Act,[14] and as one might imagine, several types of works may not be relevant to a law firm, but several are.

There are several interesting cases relating to law firms and copyright infringement that have come to light recently. One case involves two attorneys who have sued West Publishing and Reed Elsevier (publisher of LexisNexis)for selling access to the attorneys’ copyrighted legal documents without their permission.[15] Two other cases involve law firms that are being sued by John Wiley& Sons and the American Institute of Physics (publishers of scientific journals) for supplying copies of their copyrighted articles to the USPTO during patent prosecution.[16] These cases raise the question of whether a lawyer can be sued for using copyrighted articles in expert reports or other court documents.

Understanding the variety of forms of IP that are relevant to your firm can provide many opportunities to protect your hard-earned brand. It is also important to know how to safely navigate other’s IP rights. Each form of IP has nuances and this article is meant to highlight a few of the larger topics, not to be legal advice.


[1] See Herman v. Youngstown Car Mfg. Co., 191 F. 579, 584-85, (6th Cir. 1911), and 35 U.S.C. §§ 1-376.
[2] 35 U.S.C. §§ 101-112.
[3] See, http://www.uspto.gov/patents/resources/methods/applicationfiling.jsp, accessed March 21, 2012 (number for patents issued per year in class 705).
[4] Public Law 112-29, §§ 1-37, September 16, 2011.
[5] Id. at §5.
[6] Id. at §14.
[7] Id. at §18.
[8] An individual is permitted to prosecute their own patents (pro se) but it is not often advisable since the complexity of patent practice in the US and internationally is extensive.
[9] 15 U.S.C. Chapter 22 §§1051-1141.
[10] Id.
[11] Id. at § 106.
[12] Id. at § 411.
[13] Public Law No. 94-553 (Oct. 19, 1976) went into effect on January 1, 1978 as 17 U.S.C. §§ 101-810.
[14] Id. at § 102 (some include literary works; musical works; dramatic works; choreographed works; pictorial, graphic or sculptural works; audiovisual works; and architectural works).
[15] White v. West Publishing and Reed Elsevier Inc., S.D.N.Y. filed Feb 22, 2012.
[16] John Wiley & Sons and American Institute of Physics v. McDonnell, Boehnen, Hulbert & Berghoff (MBHB), N.D.Ill. , case number 1:12-cv-01446; American Institute of Physics and John Wiley & Sons v. Schwegman Ludberg, D. Minn, case number0:12-cv-00528.



Kimberly A.W. Peaslee

Paul C. Remus
Kimberly A.W. Peaslee is an associate in the Patent, Trademark & Licensing Group of Devine, Millimet & Branch. She enjoys art and the outdoors. She may be reached at kpeaslee@devinemillimet.com or 603-669-1000.

Paul C. Remus is chair of the Patent, Trademark & Licensing Group of Devine, Millimet & Branch. He rows and jogs and refuses to wear a tie. He can be reached at 603-669-1000 or at premus@devinemillimet.com.


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