The Foundation of the U.S. Patent System

Inscribed above the front door of the Department of Commerce building in Washington, D.C. is a quote from Abraham Lincoln that neatly sums up the role that patents have played in developing the industry and commerce that have come to define the United States as we know it:

THE PATENT SYSTEM ADDED THE FUEL OF INTEREST TO THE FIRE OF GENIUS

Patents have been with us almost since the United States' inception and have acted, as Lincoln eloquently points out, as an incentive to innovate. It may be useful, then, to pause between bites of hot dog and fireworks shows this Independence Day to take a look at the genesis of the patent system in the U.S.

The power of Congress to establish a limited monopoly for inventors was laid out in Article I, Section 8 of the Constitution:

To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;

When George Washington signed the Patent Act of April 14, 1790, the burden of examining patent applications landed on a three person panel consisting of the Secretary of State, Secretary of War, and the Attorney General.

The first patent was granted July 31, 1790, to Samuel Hopkins of Philadelphia. Though the handwritten document looks pretty primitive compared to a modern patent, you can see the basic elements are there: a description of the invention (it was a new method for making something called pot ash, a material in the soap-making process), an affirmation that it was new and useful, and the granting to the exclusive right to use and sell the invention to the inventor and his heirs for a specified term (14 years at the time).

Try to imagine Condaleeza Rice, Michael Mukasey, and Robert Gates scheduling time every day to examine patents. After three years, Thomas Jefferson, Henry Knox, and Edmund Randolph found that examining applications and mediating interferences (when two people apply for the same or similar patents at around the same time) took up too much of their time. In 1793, Congress passed a revised patent law with a much more lenient process in which patents were registered without being examined.

It wasn't until the Act of July 4, 1836 that examination was restored. This act more or less established the modern patent system, in which the Commissioner of Patents, who was appointed by the President with Senate confirmation, led an office of examiners who would determine the usefulness and novelty of an invention. 1836 is also the year that patents were first numbered; the older patents have an "X" before their numbers, which were assigned retroactively.

There are some pretty great stories from the early days of the Patent Office, like where William Thornton, an early Superintendent, laid such a guilt-trip on the British soldiers burning Washington D.C. in 1814 that they spared the building in which the patent models were stored.

For those with any interest in the history of patents in the U.S., we have a couple of books here at the Patent and Trademark Center. (We also have a full run of U.S. patents, which itself is an astounding historical document.)

When you're lighting your hand-protector-equipped sparkler at your Independence Day celebration this year, don't forget the role that inventors played in the early years of the United States.

Patents -- Where are the forms, and how much does it cost?

If you've ever done business with any government entity in the U.S., you've probably learned very quickly how things tend to go. In my experience, there are two components that define a transaction with any office affiliated with any government -- a form or several forms, and a nominal fee.

Need a dog license? Owe taxes? Want a passport? Fill out the paperwork, cut a check, and be on your way.

It follows, then, that I, as a sort of go-between for people and the USPTO, am very frequently asked where the forms for patents can be found and how much it costs to apply for a patent.

The forms are simple enough to find: we have or can get copies of all of the forms for photocopying here at the library, and all of the forms are available for download from the UPSTO website. It's important to remember, though, that filing a patent application involves much more than filling out a couple of forms. To quote the USPTO brochure A Guide to Filing a Utility Patent Application, "a patent application is a complex legal document." Click on the link to that brochure to get an idea of the parts of a complete utility patent application.

Estimating the cost of filing can be a little more complicated. Since no two patent applications are the same, the USPTO has created a sort of patent application menu, with different costs associated with different parts of the application.

To help you figure out how much you need pay, one of the forms that applicants need to fill out, called a Fee Transmittal, is a sort of checklist that you can match to the fee schedule (the official name for the menu referred to above).

If you take a look at the Fee Transmittal, it kind of resembles an income tax return -- you fill in certain values on certain lines, add or multiply other values depending on your application, then enter new values on new lines with new variables with the goal of arriving at a specific amount which you owe. (Unlike tax returns, you will always owe something.)

Also like your taxes, it's very important that you take the time to calculate your fees, check your calculations, then maybe check them again before sending in your application. If you make a mistake and send too little, you may have to pay a surcharge and your application prosecution may be delayed.

All of the above really only gives a taste of the process of applying for a patent, but my goal here, as at the reference desk, is to help people gather all of the information and materials necessary to start the process. I suspect that to many novice inventors, it comes as a surprise that there is more to obtaining a patent than filling out a form and writing a check.

It's worth noting, then, that there is plenty of help out there for people who are ready to apply for a patent and would rather not hire an agent or attorney to prepare the application. I've recommended before, and will continue to recommend, David Pressman's excellent Patent it Yourself, which walks you through all of the steps in great detail. The USPTO also has a very helpful customer service line; if you need help with your application, you can call 1-800-PTO-9199, then select option 2.

And, as always, you can get in touch with me or any of the librarians at the San Francisco Public Library Government Information Center.

New Exhibit at the Patent and Trademark Center

If you are reading this, you are probably afflicted with what we might call a touch of intellectual-property-nerdiness. Come on, admit it. Perhaps you admire the effect patents have had on ingenuity and technological advancement in the last couple of centuries. Maybe you're an inventor yourself and recognize the beauty of contributing to the unparalleled body of knowledge that the USPTO's files represent.

Or, if you're like me, you think patents have an appeal beyond the inventions that they describe; that they are a very cool historical record of the times from which these inventions arose. If that's the case, you may be interested in "Patently Beautiful," a new exhibit that will be showing through August at the Patent and Trademark Center in San Francisco Public's Main Library.

Here's the blurb from the flyer:

Patently Beautiful is a look at patents from each decade of the 20th century representing the technological march forward in the world of beauty products. Often familiar and occasionally absurd, these drawings, taken from original United States patents, illustrate the innovation behind the products that have helped define the concept of beauty in the United States in the last 100 years.

Teresa Riordan, author of Inventing Beauty (a work which helped inspire this exhibit) sums up the fun of this exhibit and of all patents:

No small amount of folk are lies hidden in the patent archives, as Siegfried Giedion once observed.

If you're into the idea of seeing an electric hairdryer from the turn of the century, or what a Scrunci is called in technical terms, stop by the library and have a look at the exhibit.

Register Your Copyright Online

The U.S. Copyright Office has begun beta testing of an online copyright registration system that will enable people to file what they're calling "basic registration claims" for literary works, visual arts works, performing arts works, sound recordings, and single serials. I've always thought that the Copyright Office should try harder to keep up with the USPTO, both in terms of their web presence and in the amount of acronyms they employ.

They're doing both with their "electronic Copyright Office" or eCO. Like the USPTO's TEAS (Trademark Electronic Application System) and EFS-Web (Electronic Filing System, uh, Web) , the Copyright Office's eCO will allow some users to forgo mailing documents by submitting works to be registered entirely online; others will be able to file the forms and pay fees online, but will have to send in a hard copy of the work to be registered.

Copyright registration is similar to patent registration in that both parties (the registrant and the general public, represented by the Government) benefit from the registration. When a person registers a patent, the general public benefits from the disclosure of a new invention; the registrant benefits by retaining the exclusive right to bring that invention to market.

Copyright registration offers concrete and public proof of ownership, and though registration is not required for a work to be protected, owners of registered copyrights have an easier time bringing suit against infringers. In exchange for this, they pay a small fee and deposit a copy of their work with the Library of Congress.

This is all my long-winded way of explaining why it will probably be a long time before all copyright registrations will be done entirely online. The Library of Congress holds over 138 million items in its collection; copyright deposits represent a massive amount of this collection.

That said, it's nice to see that the Copyright Office is taking steps to streamline the process, especially for items that are born digital. There's also a discount for people who file electronically. Check it out here.

The '08 Candidates and IP

It looks like the the Patent Reform Act (House version and Senate version) is stalled in the Senate, so we may not get to see how the 2008 Presidential Candidates will vote on it. Still, all of us IP loving folks may wonder if the candidates have publicly taken any positions on intellectual property.

Of the remaining major candidates, (Hillary Clinton, John McCain, and Barack Obama by my estimation) Obama seems to me to be the only one to have a neat, focus set of intellectual property positions posted on his website. Fortunately for us, CNET sent a questionnaire to all of the candidates in order to create their Technology Voter's Guide, and included in that questionnaire is a question about the Digital Millennium Copyright Act. None of the candidates really provided a stellar answer, but I think their attitudes towards this hot-button issue may provide a little insight.

Here's the DMCA question:

The 1998 Digital Millennium Copyright Act's section restricting the "circumvention" of copy protection measures is supported by many copyright holders but has been criticized by some technologists as hindering innovation. Would you support changing the DMCA to permit Americans to make a single backup copy of a DVD, Blu-ray Disc DVD, HD DVD, or video game disc they have legally purchased?

And here are the responses, alphabetically by candidate's last name:

Hillary Clinton's response:

Strong copyright protections and efforts to stem piracy are critical to ensuring that our technology industries remain competitive in the global market. As we go forward, I would support a review of a range of issues related to the Digital Millennium Copyright Act insofar as it did not concern degrading copyright protections or encourage copyright infringement.

John McCain's response:

The Internet and digital technology have provided widespread access to enormous quantities of information. This, in turn, made it necessary to update our copyright laws in 1998 to protect the rights of copyright holders to keep pace with the technological advances that characterize the Information Age.

As digitization of commerce, education, entertainment, and a host of other online applications proceeds, international copyright agreements have to be maintained and updated while protecting the rights of copyright owners.

I believe now, as I did then, that knowledge and ideas are central parts of what make the U.S. economy productive and competitive. It is vital that this intellectual property be protected and defended. However, we must ensure that such protections are never so onerous as to stifle the very innovation they strive to safeguard.

Barack Obama's response:

I would support, in concept, allowing Americans to make a single backup copy of a digital product they have purchased. And I think the market is moving in the direction of greater consumer freedom.

As policymakers, we are in a constant process of examining our laws to ensure that the protections we place on intellectual property are sufficient to encourage invention without hindering innovation that builds on previous work or unfairly limiting consumers from using the goods they purchase in a way that is fair to creators.

I would guess that the next administration will be dealing a lot with intellectual property, so here's hoping that the nominees will be asked some more tough questions about it during the debates leading up to the election.

Copyright, Digital Rights Management (DRM), and Libraries

A colleague here at the library recently brought to my attention a post on the Boing Boing message board regarding libraries and intellectual property and, more specifically, about libraries' use of content controlled by Digital Rights Management (DRM) software. An organization called DefectiveByDesign.org is encouraging people to write their libraries to demand that they quit buying digital material from publishers who impose DRM technology on users.

It's intellectual property, it's digital, and, judging by the message board posting, it's got people riled up. It must be complicated, right?

It sure is! But it's also interesting, if you're into this sort of thing.

DRM technology is a blanket term used to describe any software that restricts the use of something that is sold digitally but still protected by copyright.

Wonder why you can't burn a million copies of your mix CD that you made with songs you bought from iTunes? That would be DRM.

Remember the scandal that erupted a couple of years ago when Sony encrypted music CDs with some piracy-prevention software that made people's computers susceptible to viruses? Another form of DRM.

If you've ever tried to read or listen to an eBook or watch digital content from one of the major vendors that the library buys from, you have also experienced DRM. These companies generally require that you use their proprietary reader to view the book. This is so that they can restrict the amount of pages you can print, the amount of copies you can make, etc, and prevent people from illegally copying the works.

If you read the whole complaint from the anti-DRM crew, you'll find that their primary complaint is not about the clunkiness of these interfaces (having worked in libraries, I suppose I could furnish a few complaints if you want me to), but rather about the need to use certain software to access the digital material you borrow from the library. For instance, to read an eBook, you may need to have Internet Explorer. To listen to a digital audiobook, you may have to have Windows Media Player. If you want to watch streaming video content, you may have to have Windows Vista. Not all vendors have the same software requirements, but the argument seems to be that enough do that it has an effect on the software market -- if enough library users are using digital material that requires them to favor a certain brand of computer products, there is an adverse effect on the other software producers.

The companies that attach these restrictions to their materials are not doing anything illegal. What they are doing is using a contract to prevent libraries from exercising rights that they would otherwise have. Libraries have enjoyed a fair amount of wiggle room in our application of copyright law. By building restrictions into licensing contracts, the publishers are preventing what has been standard practice for decades, or at least as long as photocopiers have been around.

The professional organization that represents librarians, the ALA, recommends a compromise in the form of updated guidelines for DRM. What do you think? Is it fair for companies to exercise this level of control over their intellectual property?

Carrie Russell has written an indispensable copyright reference for librarians called Complete Copyright: An Everyday Guide for Librarians. No DRM concerns for this book; we only have it in print.

Shoe Company Discovers That Infringement Can Be Expensive

A discount shoe company lost some big money because of their use of what a Portland court determined to be a protected mark this week.

As soccer players and fans of old school rap already knew, Adidas uses three more or less vertical stripes to represent their products. Collective Brands, Inc., makers of Payless and Stride Rite learned that the hard ($305 million) way.

Read more about the case here.

Companies sue each other all the time, but it's interesting to me that these three lines cost Collective Brands so many millions of dollars. How can somebody register something as simple as a geographic figure?

Trademark law covers much more than words and pictures. Essentially, anything that helps consumers identify a specific service or product is protected. Stephen Elias talks about it in his excellent Trademark: Legal Care for Your Business & Product Name (available at SFPL):

"...[I]t's not just a clever business or product name that pulls in the customers. Equally important in the vast U.S. consumer marketplace are the logos, packaging, innovative product shapes, cartoon characters, website address names (domain names), and unique product characteristics that businesses are using to hawk their wares."

Something as simple as a big yellow "M," a big brown truck, or pink fiberglass insulation can qualify. A mark, unlike a patent or a copyright, doesn't have to be unique to the world; it simply has to be unique as a marketing device for a particular product or service.

I'm going to assume that Collective Brands, Inc., didn't innocently use the vertical stripes, that it never occurred to their designers that the design resembled Adidas'. Trademarks exist so that consumers can reliably identify goods and services from certain providers, so it seems like a legit ruling to me. Anybody else?