225 Years Ago - U.S. Issues First Patent

On July 31, 1790, the United States government (well before the establishment of the U.S. Patent and Trademark Office) issued the first patent to Samuel Hopkins for the making of potash (and pearl ash) by a new apparatus and method. The Hopkins patent was the first issued under the newly enacted patent statute (April 1790).  Several noteworthy items to note about the Hopkins patent, mostly distinguishing then-from-now. Unlike today's evaluation by a patent examiner (with a technical degree in the field of invention), the first statute required the Secretary of State, the Secretary of War, and the Attorney General to act as a three-person committee to evaluate a petition for patent by an inventor(s).  Moreover, unlike the claiming system of today, the committee provided the written description describing the metes and bounds of the invention.

Despite the specified three-person committee set-up, the Secretary of War (Henry Knox) was occupied with the details of the many battles taking place in the Northwest Territory in retaliation for Indian raids on settlers in present-day Kentucky.  In his stead, President George Washington consulted with Secretary of State Thomas Jefferson and Attorney General Edmond Rudolph in approving Hopkins' petition for patent for the improvement in potash production.  For the improvement, Mr. Hopkins is currently memorialized as possessing U.S. Patent No. x000001.

Also notable is the patent number.  As originally issued, the patent number was 000001.  However, in 1836, a fire destroyed the patent office and all the contents/records, including approximately 10,000 patents issued by the government.  What is now available are recovered/restored records, and obviously not the originals, have been annotated with the designation "x" preceding the patent number.  These restored patent records are labeled the "X-Patents".

As for the invention, potash is the residue (ash) after wood is burned in a pot - thus "pot" and ash".  Chemically, potash is the nickname for calcium carbonate (CaCO3).  Calcium carbonate is found in rock, esp. as limescale, and in the shell of aquatic and terrestrial animals, and has been used for a variety of things, including as a calcium supplement, stomach ant-acid, and in vivo pH neutralizers.

In fact, I owned a miniature schnauzer that frequently developed bladder stones; as a preventative course of treatment, his diet included a special dog food mixed with crushed egg-shells -- the calcium carbonate in the egg-shells providing a pH-raising effect (to neutralize his normally acidic urine).

Potash (and pearl ash) became significant precursor material in the processes of making soap, glass, and gunpowder.  Thus, Hopkins' improvement on previously-known processes was an important contribution to the early economy of the new republic.  And finally, it is notable that Hopkins' invention was an improvement and not a pioneering sea-change.  This characteristic is a predominant feature of most U.S. patents.

If you have an invention, esp. any improvements on existing technology, you should consider the appropriateness of patent protection.  York Law LLC can assist all inventors in determining the appropriate course.  Feel free to send an email (info@olenyork.com) for more information.

30 Years Ago - Coca-Cola's New Coke "Fail"

Yesterday marked the 30th anniversary of Coca-Cola's public admission that "New" Coke was a commercial failure.  As the linked article reminds, in April 1985, Coca-Cola, Inc. announced that it would abandon the original Coca-Cola formula and switch to a "new" formula that resulted in a slightly sweeter taste similar to Pepsi.  Yet, a mere 79 days after its launch, Coca-Cola announced on July 11, 1985 that it would resurrect the original formula in the re-branded "Coca-Cola Classic" (or "Coke Classic") while maintaining the "New" Coke product as well. Whether this was a massive failure in understanding one's product and it's market, or a cleverly designed scheme to shelve the original formula for a short-time to drive up publicity and demand for that product, the return of the original formula ("Classic") to shelves resulted in improved sales and better competitive footing with Pepsi (which would later endure a similar "misstep" with Crystal Pepsi in 1992 - coincidentally, also set for a revival soon).

While the public tends to have a basic understanding of trade secret protection, many know that the original Coca-Cola formula is perhaps the most famous trade secret in business history.  It is one of the great examples of the value of a trade secret.  It also represents the leading alternative to the patent process.

With any new/improved technology, process, or technique, the innovator(s) is faced with the dilemma of whether to patent the improvement or protect the innovation by trade secret.  While there are instances where both forms of protection may be utilized to protect different aspects of the overall improvement, each separate aspect of the new/improved innovation must be held in secrecy (trade secret) or disclosed (patent).  The two (different) forms of protection compel the different approaches, since these forms of protection are the opposite sides of the same innovation coin, in several legal and practical ways.

Trade secret laws are based in common law, and have since been codified at the state level and/or through interstate compacts (e.g., UTSA, the  Uniform Trade Secret Act).  Despite adoption in all states and in uniform acts, most versions are virtually identical in form.  Something of value must be held in secrecy and protected using reasonable means to guard against public accessibility.

Notably, one does not "apply" for a trade secret or await "approval" from a governmental agency.  Thus, there is no governmental cost to obtaining a trade secret; the only costs are business and legal.  One simply holds the technology, process, technique, information, or data in secret (well, more simply stated than simply accomplished).  If the tech/info is pilfered by another, then "misappropriation" of a trade secret has occurred and is actionable.  And unlike patent law, trade secret law has both a civil penalty and a criminal penalty aspect (exemplified by the unlikely team of Coca-Cola and Pepsico assisting the FBI in prosecuting three individuals for the theft and attempted sale of Coca-Cola info to Pepsico).

Conversely, patent laws are based in the U.S. Constitution (as are copyright laws).  To obtain a patent, one must file an application with the U.S. Patent and Trademark Office (USPTO or PTO).  The application must include at least one written claim defining the scope (the metes and bounds like the written description of a property deed), as well as an inventor's declaration, and the appropriate filing fees.

The application will often endure a 2-4 year road through examination, hopefully with issuance of at least one claim and a patent resulting thereafter.  In exchange for the limited monopoly of the granted patent, measured as a 20-year term from the filing date, the inventor/applicant must disclose all information necessary to practice the invention.

Thus, the flip-sides of the coin:  secrecy and potential protection into perpetuity (trade secret), or public disclosure and limited monopoly (patent).  Sometimes the dilemma is easy to resolve; other times, it is the decision that determines the livelihood of the business going forward.  If you have such a dilemma, do not hesitate to contact York Law LLC to determine which path is the best for your business.

Squabbles: Lennon/McCartney or McCartney/Lennon - And Does It Matter?

In the most recent edition of Esquire magazine, Sir Paul McCartney reflects on a long and storied career as a singer-songwriter and performer for The Beatles, with Wings, and as a solo artist.  Although McCartney is reportedly the second richest recording artist (and richest male), having a net worth estimated at $660 million, many may find it surprising that McCartney cares about the songwriting credit order attributed to The Beatles songs McCartney co-wrote with fellow Beatle John Lennon. In the two creative-creator centric intellectual property disciplines (copyrights and patents), the listed order of copyright owners or patentees is legally irrelevant concerning the separate rights of the owners/patentees.

For a copyright, the co-writers/co-owners individually enjoy all the rights set forth in 17 U.S.C. § 106, so that any, all, or a subset of all co-writers/co-owners may exploit the work by further reproductions, etc. Likewise, for a patent, each co-inventor may "practice" the invention (e.g., manufacture) or license the subject matter to another party.

However, the differences lie in what is owed to the co-creators upon successful exploitation.  For a copyright, each co-writer/co-owner owes the other co-writers/co-owners an accounting of the profits generated through the right(s) exploited (or be subject to litigation).  Conversely, for a patent, each co-inventor may separately make or license the subject matter without accounting for any profits to the other co-inventor(s).

So why the fuss from McCartney concerning whether a song is identified as a Lennon-McCartney work or a McCartney-Lennon work?  In the grand scheme, the publishing royalties will be no different - every penny will still be divided between McCartney and Lennon's estate.

As with many similar issues, there are multiple considerations at issue.  Ego is rather obvious - upon Lennon's murder, the other co-writer was no longer in the picture.  Yet, Lennon's estate (via Yoko Ono), and a rather divisive ego at that, blocked several attempts by McCartney to correct a perceived error in the attribution order.

As McCartney recalls, early on, The Beatles and management agreed that any song predominantly written by one and brought to the other for "polishing" or "completion" would be specifically attributed in the album liner notes as [predominant writer] hyphen [polisher].  However, this preferred nomenclature convention did not materialize, and rather the alphabetical Lennon-McCartney label was the go-to form of songwriting attribution.

Upon Lennon's death, and in subsequent years (e.g., The Beatles Anthology Series), McCartney tried to reclaim this preferred naming convention, only to be obstructed by Ono.  McCartney identified the hit single "Yesterday" as a good example, noting that Lennon had absolutely nothing to do with writing the song, yet, the song is attributed to Lennon-McCartney and not to (McCartney's preference) McCartney-Lennon.

Related to issues of ego is perception, such as the public's perception that attribution order has significance.  It is likely that is the reason the individual Beatles agreed to the songwriting naming convention identified above is because of their own naive (mis)conception of the significance of naming attribution order.

Like many of the songwriting tandems in popular music over the last 50 years, such as Jagger-Richards (The Rolling Stones), John-Taupin (Elton John), Simon-Garfunkel, Plant-Page (Led Zeppelin), Simmons-Stanley (KISS), and Bon Jovi-Sambora (Bon Jovi), the first mentioned person seems to capture much of the songwriting attention.  This is probably due to an issue not particularly noticed (the primacy effect) - the strongest impression made on the mind of a viewer/reader based on the first item listed.

However, most interestingly, McCartney points out a legitimate gripe regarding technology.  In particular, McCartney notes that when an individual downloads, streams, or a song selected from an existing digital library, often the display is too small to fully display multi-writer attribution (or does so intermittently).  Consequently, using The Beatles as an example, on a smartphone or iPad display, The Beatles song "Yesterday" may be attributable only to John Lennon or John Lennon (and perhaps) Paul McCartney a few seconds later. Thus, at least in McCartney's view, younger generations may be misinformed or misled as to the appropriate songwriting credits, or frustrated by the bounce between one co-writer and the other(s) co-writer(s).  Thus, younger generations may be deprived of some knowledge, history, and searchable keywords that could link-up Lennon-McCartney with other valuable or culturally significant songs.

As someone who enjoys trivia and completeness of information, I can sympathize with McCartney's lament as a threshold matter.  However, given the younger generations Internet acumen, it seems unlikely that a user would not have such information readily available in just a few clicks or taps.  Alternatively, younger generations may simply not care enough to want to know/learn about the artist, esp. in an age when popular music is more disposable than ever before.

While McCartney's concerns possess some merit, the degree of import seems rather low.  Publishing royalties remain unaffected by the naming order; and the fame of The Beatles nearly negates any inverted (or lack of) attribution, as many folks will supplement their listening experience by browsing for information abut the artist (e.g., via Wikipedia).  As with so many things surrounding the surviving members of The Beatles and managers of the Lennon and Harrison estates this really descends into a Paul v. Oko battle of wills, wits, and strong-willed personalities.

A Long and Winding Road (Gibson's Self-Tuning Guitar)

Begging the pardon of The Beatles and their single-swan-song, the last studio single released in the United States (peaking at #1), "The Long and Winding Road", but it was a very suitable description of Gibson Guitar's latest technology, the self-tuning guitar having a cpu that communicates with robot-tuners that properly and mechanically tunes each guitar string.  Gibson (and inventor Chris Adams) admits that the conception, development, implementation, and "fine tuning" of this technology has been a long time (over 10 years) in the making.  The combination of the cpu and robot-tuners wind the stem of the tuning pegs to add or remove tension on the string necessary to meet the tuner's pitch. Although this is not the first attempt at auto-mechanical tuning of a stringed instrument (e.g., U.S. Pat. No. 6,437,226 by Viking Technologies), Adams was successful in gaining patentable subject matter via the claims of U.S. Pat. No. 7,786,373.  As part of the long and winding process, Adams first filed an application in the European Patent office in May 2004, followed by a PCT (Patent Cooperation Treaty -- aka "International" application) in Jan. 2005, and followed by national phase entries in 2008, and followed by US issuance in Aug. 2010.  However, the patent owners allowed this patent to lapse (by failing to make the maintenance fee payment, presumptively to focus resources on other related inventions).

That focus has led to at least one other U.S. patent for Adams, including U.S. Patent No. 8,772,615 for the fine-tuning drive mechanism operating the tuning peg (to add/remove tension). Beyond the critics that question the reliability of the tuning (or more precisely, remaining in-tune), the device does not appear to be universal (at least beyond the Gibson models).

Unlike Gibson, which predominantly offers fixed tailpiece bridges and no locking nut at the headstock, most other guitar manufacturers have floating tremelo systems (e.g., Floyd Rose; Kahler; Steinberger) that must have a locking-nut at the headstock position to help maintain the string tunings.  In the locking-nut systems, a robot-tuner would (seemingly) be ineffectual as the locking-nut system maintains tension on the string (capable of withstanding dives and rises), and the robot-tuner would be unable to overcome the locked tension.

On the other hand, the Gibson robot-tuning system could still be installed and used on a locking-nut/tremelo system, but it would add the steps of requiring the person tuning the guitar to loosen the locking-nuts, allow the robot-tuner to place each string into proper tune, and then tighten the locking-nuts and fine-tune the strings based on the auto-tuner provided or by the ear of the human-tuner.

Whether this technology gains traction in usage by Gibson buyers (who will have no choice but to purchase the tech include in any new Gibson guitars) remains to be seen.  Musicians are hesitant to change anything that is not broken (or at least perceived that way).  Yet the convenience of a robot-tuning system is probably something that cannot be appreciated until it is used (and then not available).

If you have new or unique tech to add to an instrument, or have a new design for an instrument, please consider the intellectual property services of York Law LLC.  One never knows what new developments will strike the fancy of the instrument-playing public.

Celebrity Inventors & Inventions

I came across a news article discussing the recently issued design patent for an improved beverage and food cooler to Mike Golic (former NFL football player and current co-host of ESPN radio's Mike and Mike show), son Jake, and three other co-inventors. This got me to thinking about celebrity inventors and inventions (a distinction that will become more clear shortly), as well as the difference between utility (for mechanical arrangement and/or function) and design (aesthetic / ornamental design) patents. If it is not obvious, a celebrity inventor is someone that is already a celebrity and later develops an invention that is exploited in some way.  Although Thomas Jefferson was initially philosophically opposed to patents (and the limited monopoly provided), through his ministerial role as chief patent examiner as Secretary of State in the early years of the US republic, Jefferson came to appreciate the economic benefits derived from a patent system.  And despite is prolific mechanical acumen, Jefferson did not attempt to patent the many inventions he developed after the US patent system was implemented in 1791 (and, of course, many of his inventions pre-dated the system), thus falling outside a reasonable definition of celebrity inventor.

Before his election as the 16th President of the United States (but as a member of Congress), Abraham Lincoln received a patent for buoying water vessel over shoals.  Given the time (and times) of Lincoln's invention and congressional experience, any celebrity that Lincoln enjoyed at that point was limited.

Likewise, although Thomas Edison is extremely famous, his fame is tied to his inventions and his patents, and thus not quite within the celebrity inventor umbrella.

Shortly after she launched her American-film acting debut, in an effort to contribute to the allied war-effort during World War II, actress Hedy Lamarr teamed with George Antheil to develop a frequency-hopping signal system to prevent naval opposition from jamming naval torpedo signals that would cause the torpedo to veer off course and miss its target.  Lamarr (under her married name Markey) and Antheil were awarded U.S. Patent No. 2,292,387 in 1942.  However, a skeptical U.S. Navy did not adopt the technology.  Instead, the technology sat unused until the 1960s, when it was finally adopted.  Although Lemarr skirts the edge, since her technology was not adopted until after the patent term expired, this too falls short.

The several (and best) examples of celebrity inventors generally come from the performing arts, where some necessity was the inspiration for an invention for integrated use in the performer's milieu.  As such, Harry Houdini is probably the first celebrity inventor, creating a diving suit awarded a patent in 1921, some thirty-years into his illusionist career.  Walt Disney held two patents for animation and motion picture techniques, with the animation patent forming part of the launching pad for Disney Studios.

Although Houdini and Disney had utility patents, design patents are well represented by George Lucas and his LucasFilm empire.  Being the pioneer in film-to-toy merchandising, Lucas (and with the artistic input of legendary artist Ralph McQuarry) holds at least 11 issued design patents for various conceptions of characters from the Star Wars universe, such as the uber-popular Boba Fett, Yoda, and the AT-AT imperial transport.

The world of music provides some of the more recognizable implementations of invention-by-inventor.  Eddie Van Halen created a removable try that attaches to the underside of a guitar for assisting the guitarist in accessing the guitar like a piano (now expired).  EVH also invented and owns the patents for a single-string de-tuning system (branded as the D-Tuna) and the design for a guitar headstock (with a scallop cut removed).  EVH also has purchased other patents (here and here).

Musical genius Prince held a design patent for a portable keyboard (expired in 2008).  Prince's chief musical rival in the 80s, Michael Jackson, invented a shoe-device that created the illusion of anti-gravity, most effectively used in his video for the hit-song "Smooth Criminal".

The previous examples stand in contrast to "celebrity inventions" that are really no more than celebrity-endorsed products invented by other non-celebrities.  The "George Foreman Grill" is one of the best examples of this, since the grill was actually invented by Michael Boehm.  With the success of the Foreman Grill, the copycats followed, with the Evander Holyfield Real Deal Grill, the Carl Lewis Health Grill, and the Hulk Hogan Blender.  However, these are good examples of the licensing, use, and (somewhat) successful utilization of the valuable name, image, and likeness (aka, NIL) of a well-known celebrity.

Whether the Golics can land a licensing deal or sell to a cooler manufacturer, and achieve the desired monetary success with the ornamental design of this new cooler remains to be seen.  Mike Golic's celebrity certainly will be a large selling point in getting the product recognized, often one of the hardest parts of achieving commercial success.

While you may not (yet) be famous, if you have an invention that you believe functions or appears differently from what is out there, contact York Law LLC to get more information on what you can do to start down the path of success.  (E: oly3@olenyork.com).

(Cosmo) Kramer Teaches the Importance of an NDA

As it perpetually cycles through its Seinfeld inventory, last week TBS aired one of the early episodes ("The Pick") showing the entrepreneurial spirit of (not-yet Cosmo) Kramer.  "The Pick" is thematically connected to the previous season's "The Pez Dispenser" episode because of Kramer's concept for a fragrance based on the smell of the beach. In season three's "The Pez Dispenser", Kramer labels his fragrance "The Beach".  Through an acquaintance of Jerry's, Kramer gets an opportunity to pitch "The Beach" to an executive at Calvin Klein.  But, that is as far as the pitch goes, and to Kramer's knowledge, the idea dies a quick if not bloodless death.

Yet, in season four's "The Pick", Jerry begins dating an attractive model photographed for Calvin Klein's advertisement for the new fragrance "The Ocean".  The model visits Jerry in his apartment sporting the new fragrance, and despite his best efforts to keep the model (Tia) and Kramer from crossing paths, Kramer discovers the scent and declares (to Jerry) that CK had ripped off his idea: "I could've been a millionaire.  I could've been a fragrance millionaire!!"  Kramer confronts Calvin Klein, but allows himself to get sidetracked by an offer to model men's underwear for CK.

There are several important lessons in this episode for entrepreneurs and innovators.  First, if one believes s/he has a valuable idea, concept, or product, one should try to envelope the idea/product in some form of protection.  At a bare minimum, one should disclose a proprietary idea to an outside entity only if the entity will execute a non-disclosure agreement (NDA).  An NDA binds the parties from engaging in the unilateral disclosure of the proprietary information received.  Any unilateral / unauthorized disclosure of the non-public/proprietary information would (potentially) be actionable as a breach of contract claim.  However, NDAs are problematic because even if one proves a breach occurred, the damages for such a breach are often highly speculative.  Consider:  how does a judge or jury evaluate the commercial value or potential of an idea/concept that likely has few if any antecedents in the market?

Accordingly, an NDA should be only one of the several arrows drawn from the entrepreneur's quiver.  In addition to an NDA, one should consider the use of a provisional patent application, esp. in light of the US's move to a first-to-file application system (an abandonment of the first-to-invent system).  Without a provisional patent application on file prior to disclosure to a third-party, even if an NDA is used, the novelty of any inventive subject matter is forfeited and the validity of any claims issuing from the subject matter will be in serious jeopardy.  The ease (and relative low cost) of filing a provisional patent application, and the twelve-month secrecy in which it exists, also allows the innovator to abandon the patent pathway for trade secret protection if it becomes evident that trade secret protection is more beneficial than one or more issued patents.

The most conservative route includes waiting for the issuance of one or more claims in a patent issued by the USPTO, in combination with an NDA and/or other beneficial contractual clauses.  However, the major draw-back of waiting for an issued claim (and patent) is that an inventor is likely pushing off commercial enterprise by three-to-five years as the administrative examination process moves at a less-than-optimal pace.  Yet, there may be limited circumstances where this strategy makes the best sense.

Looking back, Kramer would have been better off to use an NDA with Calvin Klein, while also utilizing the quick and low cost of the provisional patent application system to put him at the head of the line (and protect against the alleged theft that occurs after "The Pez Dispenser" episode).  Had Kramer had these two pieces of the puzzle in place, and had Calvin Klein proceeded with manufacture and/or sale of "The Ocean", Cosmo would have had several options in cutting the knees of Calvin Klein, and may have had a good shot at a significant monetary damages award (or a hefty settlement to save both parties a lot of litigation costs).

If, like Kramer, you have a fun idea or concept that you want to present to another business, but you want to prevent your idea/concept from being taken without any potential for compensation, please contact me and my office (olyork at gmail dot com) for a consultation on what options you may have to protect your intellectual property.

Coming to American Pizza Huts? Pizza Table-Turned-Video-Projector

Last week, a couple websites took notice that in Hong Kong, Pizza Hut has introduced a new pizza protector (saver/table) that has a lens in its center.  The protector + lens may then inserted into a hole in the front of one of four specially designed Pizza Hut delivery boxes.  A video player (e.g., smartphone) may then be placed within the box, with the lens magnifying the video image(s) onto a wall or screen.  However, as the articles indicate, because the player is buried inside a cardboard box, any audio synchronized with the video may require additional amplification. This is an interesting wrinkle on basic technology:  adding a lens to the pizza protector and adding a hole in the box for the lens apparatus.  Carmela Vitale was issued a patent on the original package saver in 1985.  Although there have been a couple of dozen improvements in arrangement, manufacture, and aesthetic design in the pizza table, the basic design depicted in Vitale's patent remains.  The addition of a magnifying lens is a clever thought.  Certainly, some folks have re-purposed pizza tables, including holding items of varying size and shape.  Modifying the pizza box to accommodate the protector + lens is also clever, keeping this new feature completely contained without any additional components necessary.

Whether Ogilvy Hong Kong (designer) or Pizza Hut has filed a patent application in any office protecting the various aspects of this idea is unclear, although it does not appear any action has taken place in the U.S. or through WIPO that the public would be able to access.  My suspicion is that the appropriate entity filed the application(s) very recent and the product is being made available in Hong Kong to test the market and taking advantage of the procedural lag times that occur with international patent application filing protocols (via the PCT system).