Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

     Below are three interesting and useful blog posts and websites dealing with copyright issues.

• Primer on Copyright Liability and Fair Use by Citizen Media Law Project

     This blog provides legal primers on a variety of legal subjects, including the linked primer that provides an in-depth summary of United States copyright, fair use, and Digital Millenium Copyright Act (DMCA) issues. The primer concludes with some helpful hints concerning the oft-misunderstood fair use exceptions, and what individuals can do to minimize their risk of copyright liability:

"Use only as much of the copyrighted work as is necessary to accomplish your purpose or convey your message;

"Use the work in such a way that it is clear that your purpose is commentary, news reporting, or criticism;

"Add something new or beneficial (don't just copy it -- improve it!);

"If your source is nonfiction, limit your copying to the facts and data; and

"Seek out Creative Commons or other freely licensed works when such substitutions can be made and respect the attribution requests in those works."

• Collectanea by the University of Maryland University College

     Pronounced kol-ek-tey-nee-uh, this blog is published by Georgia Harper, a scholar at UMUC's Center for Intellectual Property (CIP).  In it, Harper collects and discusses current copyright issues. Her latest post, Turnitin wins important victory in fight to combat plagiarism (and the bloat of copyright), is an excellent analysis of AV v. iParadigms, No. 07-0293, slip op. (E.D. Va Mar. 11, 2008), which involves the website Turnitin.com, which Harper says is "an application that teachers can use to compare their students' papers with Turnitin's database of previously compared papers and papers available from other sources to detect instances of suspicious similarity."

• Keep Your Copyrights by Columbia University

     This creative website, which is written by legal academics at Columbia Law School, is designed for authors and creators of works in the United States. It aims to provide individuals with information to help them retain their copyrights, or, in case they decide to license their rights to others, with information concerning how to obtain reasonable terms under that license. The website provides sample contracts for literary authors, photographers, journal manuscript authors, and others, and also useful information about royalty statements in author contracts. The website warns that it is specifically not intended for lawyers or other legal academics, and it should not be considered legal advice.  

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Summary:  The U.S. Patent Office issues guidance and revisions to its "claims and continuations" practice rules.

• Revised rule permits filing "one more" continuing application on or after Nov. 1, 2007, without a petition or showing, in certain circumstances.
  
  
• For certain CIP applications, depending upon filing date and issuance or not of a first office action on the merits (FAOM), the requirement of 37 C.F.R. 1.78(d)(3) than applicant identify the claim or claims in the CIP for which the subject matter is disclosed in the manner provided by 35 U.S.C. § 112, first paragraph, in the prior-filed application is either waived or postponed until Feb. 1, 2008 (a three-month compliance deadline extension).
  
  
• Disclosing the identify of other pending or patented applications is not required for certain applications filed before Nov. 1, 2007, depending on the filing dates and priority filing dates for the other applications. Disclosure is not required for applications filed on or after Nov. 1, 2007, in limited enumerated circumstances.

     The complete requirements are found in the guidance document "Clarification of the Transitional Provisional Relating to Continuing Applications and Applications Containing Patentably Indistrinct Claims," which is available here.

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     Yesterday, Part 1 of this post identified issues of potential concern regarding the impacts of the new U.S. Patent & Trademark Office (PTO) rules on the number of continuation, continuation-in-part (CIP), and Request for Continued Examination (RCE) applications being prosecuted at the PTO for an invention. Below are some suggestions for dealing with the rule's limitations on the number of claims permitted in those patent applications, as suggested by Peter Weissman, a Partner at Blank Rome LLP.  In particular, patent applicants and their representatives should:

• Carefully consider all claims in an application to ensure they add benefit to the application;
  
  
• Review pending unexamined applications that exceed the 5/25 number of claims limitation in preparation to limit the number of claims or conduct a search prior to receiving a notification from the PTO; 
  
  
• Be mindful of disclosed but unclaimed embodiments in the specification;
  
  
• Consider conducting a search prior to filing an application, because a search could be used for the combined purpose of accelerating examination in one application and requesting additional claims beyond the allotted 5/25 limit in another application. But remember that these procedures could have a substantial negative impact on the scope of claims.

Comments:

• Click here for part 1 of this post
  
  
• Final Rule:  "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications" 72 FR 46716 (Aug. 21, 2007)
  
  
• Thanks to Peter Weissman for granting permission to use his article"Patent Prosecution Considerations under the New U.S. Patent & Trademark Office Rules," which may be found here

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     Although there are 45 days remaining before the new U.S. Patent & Trademark Office (PTO) patent rules take effect November 1, 2007, the number of visitors to this blog looking for information about the rules suggests that patent applicants and their representatives are actively looking for the best ways to comply with the rules today. That’s not a bad idea, considering how the new rules will substantially limit how patent applications are prosecuted at the PTO, and may require applicants to modify their patent filing strategies for both prospective as well as pending patent applications. According to Peter Weissman, a Partner at Blank Rome LLP, applicants should begin considering strategies for complying with the new rules.  In particular, Peter says, given the limited number of continuations, continuation-in-part (CIP), and Request for Continued Examination (RCE) applications allowed under the new rules, applicants should:

• Consider relying more on interviews with Examiners, particularly personal interviews, which tend to substantially advance prosecution and reduce the need for filing continuations and RCEs;
  
  
• Carefully review all claims, including dependent claims, after a first action on the merits (FAOM) to ensure that the case is in condition for an appeal; all “formal” matters should be resolved at that stage as well;

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