SECURING INNOVATION | The Business Blog of IP.com about Managing Intellectual Property, Patents, Trademarks, and Trade Secrets

In an article posted on Ohio.com, the official website of the Akron Beacon Journal offers some advice for inventors that is misguided, or limited, at best.

If you have an invention or idea, it is essential that you protect it or run the risk of losing your rights and any future rewards. Here is what you need to do:

First, start a diary/journal in a bound notebook. Include the date of the invention (when the idea was initially conceived) and a description. This is important in connection with filing for a patent in the future as the United States is a ''First-to-Invent'' country. Keep the journal updated as you develop prototypes, make modifications, etc.

Second, prepare a one-page nondisclosure agreement. If you want to tell anyone (relatives, friends, plant personnel, others), the receiver of the information should sign the agreement and keep the invention confidential. This way, you keep your idea protected and have a record of when and to whom the information was disclosed.

Now, that's all well and good, if you think you're "protecting your invention" by papering your relatives, friends and co-workers with non-disclosure agreements, to set up a cause of action in contract law for breach of that agreement if those people closest to you somehow disclose that which they have agreed specifically not to disclose, and you can prove those facts in court. Good luck getting "your future rewards" that way.

And the notion that keeping a secret diary/journal in a bound notebook (including the date of the invention) will "protect your rights" as the "first to invent" is delusional. Who's to say when those dated entries were actually written in your bound notebook? Can you imagine how you might prove those entries were written on the dates specified? And how is anyone else to be dissuaded from applying for a patent for an invention noted in your diary/journal notebook, however nicely bound.

In the real world, what is required to really protect an invention from anyone else gaining patent rights to that idea in the United States, is irrefutable evidence that the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent (US Patent Act, Section 102a). That is "prior art" in the language of patent law. In this modern digital world, there are accepted methods of recording creative work that could be regarded as prior art to prevent someone from getting a patent on something you've already invented.

The IP.com Creative Registry is a web-based registry that allows you to upload your documents and creative work for legal safeguarding. IP.com digitally fingerprints and date-stamps your work while placing it into a private archive for your personal access. IP.com then publishes the fingerprint and date into the public domain as a testament to the existence of your work. Your actual document is NEVER exposed to anyone else, yet you have irrefutable proof of its content at the precise time it was safeguarded!

When your invention is defined sufficiently that you'd like to ensure that USPTO examiners discover your "prior art" when examining any application for a patent that should not be granted to anyone else because of the disclosure of your prior art,  you may want to publish a technical disclosure of the invention in the Prior Art Database, which is searched by the USPTO examiners and many other patent agencies around the world as part of the patent review process. Defensive publishing is a widely-used tactic as an alternative to the expensive patent application process, which an inventor should consider as part of a comprehensive innovation management strategy with the advice of a patent attorney retained to consider the law and facts of specific cases.

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Since we linked IP Newsflash in the navigation header at the top of the home page of the IP.com website, our clients and visitors have been checking out this Intellectual Property meta-information portal that browses your information channels for you and presents only relevant, recent and customizable IP information on a single page.

As a result of this new traffic to IP Newsflash from IP.com, our website has risen rather quickly in the list of the top links that send visitors to this handy intellectual property news portal.

The list features websites that link to IP Newsflash and have sent visitors to IP Newsflash within the last four months. The rank is determined by the visitors that use these links. The number in the column 'visits' shows, how many visitors since 20th June 2004 came from this website.

To be featured on this list, you may simply link to IP Newsflash. IP Newsflash will automatically detect the link and store it in a database. Every visitor that uses your link counts toward your rank. The more visitors click on the link on your website, the higher your rank will be.

Thanks to Rolf Claessen, who created IP Newsflash, for sending a good number of his visitors to us, as well. We really appreciate all the new visitors to IP.com who have discovered our company from links on IP Newsflash.

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The idea of expanding the scope of the Eco-Patent Commons under the auspices of the World Business Council on Sustainable Development by creating a new system of technical disclosure publication including eco-friendly innovations not yet patented, which we blogged about here and here, has piqued more interest following the article by IP consultant Nancy Edwards Cronin in her Strategic Thinking column on Greenbiz.com.

On the Green Patent Blog, covering intellectual property issues in clean technology, patent attorney Eric Lane follows up that article with a post headlined "More on Gratis Greentech: A Proposal for Expanding the Eco-Patent Commons" where he writes:

Whether or not you agree with her argument about issued patents, her idea of adding invention disclosures to the Commons would almost certainly benefit the initiative and its participants by increasing the value and utility of the available green technology. Of course, no independent or targeted donations to the Commons would be necessary because enabled invention disclosures are by definition in the public domain and available to everyone. Instead, to make the technology available to greentech firms, it would just need to be made accessible via the Commons. Broadly, Cronin’s idea could be implemented in one of three ways. Either companies who publish environmentally-beneficial technology in these disclosures could provide the publication information or citations to the Commons, the Commons itself could monitor the disclosure publications, or the publications could alert the Commons of relevant published disclosures. However it’s done, I can’t argue with increasing green idea and technology sharing.

Defensive Publishing denotes the disclosure of an invention with the purpose of creating prior art, and thus to prevent the granting of a patent. Regarding a worldwide initiative to "promote the progress" in the interests of the global environment, as envisioned by the the Eco-Patent Commons--beyond patents--including innovation and inventions not before patented, one must consider the different effects of "prior art" in various patent jurisdictions around the world.

In a  recently published Working Paper titled "Alternatives to the Patent Arms Race: An Empirical Study of Defensive Publishing", Joachim Henkel and Stephanie Pangerl note the differences between the European Patent Convention and US patent law.

US patent law is somewhat more restrictive in its definition of state of the art by excluding from patentability only those inventions that were “known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent” (US Patent Act, Section 102a). Public use in Europe would thus not be sufficient to establish prior art in the US. In addition, use or description of the invention must have taken place before the invention by the applicant or, as Section 102.b specifies, one year or more before filing of the application. This “first-to-invent” rule has an ambiguous effect on the attractiveness of defensive publishing. On the one hand, a DP may not pre-empt a patent application if the latter is filed less than 12 months after the DP and if it claims an earlier date of invention. In such a case, a DP might even trigger a competitor’s patent application. On the other hand, a DP can help to establish priority for an inventor, who maintains the option to file for a patent within the following year.

Consistent with the objectives of the Eco-Patent Commons, any similar system of technical disclosure publication should go beyond existing defensive publishing strategies to include a legally binding waiver of any option to file for a patent within the year following such publication.

We'd propose a definitive publication system for technical disclosures of eco-friendly innovations that would effectively relinquish all rights of the publisher to apply for a patent of the invention disclosed, anywhere in the world, anytime in the future.

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We're at the Bio-IT World Conference & Expo at the World Trade Center in Boston showing off the latest version of InnovationQ. This release, version 3.1, adds several major new features to the InnovationQ platform.

InnovationQ helps companies safeguard their intellectual property, derive more value from ideas, and speed the monetization of innovation. With streamlined processes and a secure system for managing innovation, InnovationQ effectively protects and enhances intellectual property from its earliest stages.

Version 3.1 incorporates collaborative features within the InnovationQ platform. With InnovationQ, users can now efficiently communicate as a team in an environment that secures their ideas as intellectual property. Combined with the workflow engine and document management capabilities, InnovationQ delivers full-featured innovation and intellectual property management solutions.

Next month, we'll be at the PharmaBiotech IP Summit in Philadelphia.

See what's happening here at IP.com in the weeks and months ahead, and where you'll be able to meet up with us between now and the Bio International Convention in San Diego in June.

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The Peer-to-Patent project announced that expert, volunteer reviewers from the general public have cooperated with the United States Patent and Trademark Office (USPTO) to identify “prior art” that has been used in Office actions to reject at least one claim in each of five applications.

The Peer-to-Patent project is an initiative of New York Law School in cooperation with the USPTO aimed at opening the patent examination process to public participation, and improving the quality of patents. Under the Peer-to-Patent pilot program, inventors agree to have their patent applications posted for up to four months on the www.peertopatent.org Web site. Expert volunteers from the public then discuss the applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious, as the law requires.

The program’s first 19 patent applications—including applications from GE, Hewlett-Packard, IBM, Intel, Microsoft, Red Hat, and Sun Microsystems Inc., all companies that volunteered to be part of this pilot—have been examined. For every 500 patent applications published in 2007, the USPTO received only one third-party prior art submission. In the Peer-to-Patent pilot, volunteer reviewers supplied nearly four prior art references for each pilot application - a trend which could significantly help the USPTO if Peer-to-Patent expands beyond a pilot phase.

So far, of the first 19 first office actions sent by the USPTO, five patent applications received non-final rejections that relied specifically upon prior art submitted through Peer-to-Patent. In these instances, submissions of prior art from the public enabled the USPTO to reject claims the examiners believe fail the novelty and non-obvious requirements that prohibit patents on inventions that have already been invented or would have been obvious. The USPTO response time on these office actions is notable. Because the USPTO agreed to examine patent applications in the pilot ahead of other applications, the time between application filing and the onset of examination shrank from four to two years.

USPTO’s Commissioner for Patents John Doll noted, “I hope other patent applicants look at the processing statistics from this pilot program and realize that Peer-to-Patent review might be a win-win situation for them. We are encouraged by the initial success of the pilot, and we believe it holds potential as a source of relevant prior art.”

In sending the program’s first non-final rejection, the USPTO examiner used prior art and commentary submitted by Steven Pearson, a senior software engineer at IBM, to reject claims of an HP application. The second non-final rejection relied upon prior art and commentary submitted by Rob Cameron, a Professor of Computer Science at Simon Fraser University, to reject claims of an IBM application. As a result, Pearson and Cameron have been awarded the title “prior artist” on the pilot Web site.

“It is a privilege to participate in this important project,” Steve Pearson, IBM software engineer, said. “I’m confident these early results will help validate that this community approach can have a meaningful impact on the examination process and the quality of patents. Hopefully this will encourage the participation of more domain experts in this pilot program.”

Professor Cameron believes “it is to everyone’s benefit—inventor, investor and the public at large—to make the best possible effort to ensure that issued patents are properly placed in the context of related prior art. In the future, I think that an open, mediated review process following the trail blazed by Peer-to-Patent should become an integral part of best practice patent examination.”

HP and IBM will now have the opportunity to respond to these first office actions and persuade the examiners their claims are new and non-obvious.

“We’re very pleased with this initial outcome,” Manny Schecter, Associate General Counsel for Intellectual Property at IBM said. “Patents of questionable merit are of little value to anyone. We much prefer that the best prior art be identified so that the resulting patent is truly bulletproof. This is precisely why we eagerly agreed to sponsor this project and other patent quality initiatives. We are proud of this result, which validates the concept of Peer-to-Patent, and can only improve the quality of patents produced by the patent system.”

Launched in June of last year, Peer-to-Patent opens the patent examination process for the first time, enabling the public to contribute prior art and commentary relevant to the examination of pending patent applications assigned in TC 2100 technologies with the goal of improving patent quality. On average, each posted application has garnered a community of 14 reviewers who have submitted five instances of prior art per application.

See also: www.peertopatent.org

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In her Strategic Thinking column on GreenBiz.com, Nancy Edwards Cronin recommends Growing the Eco-Patent Commons to Truly Promote Green Innovation. While lauding the objectives of this green initiative, she suggests that the Eco-Patent Commons itself is in need of some innovation if it truly hopes to accomplish its goal: sharing useful environmental technologies for "the greater good."

The problem is that the project includes only "patents" and not the undisclosed innovations and trade secrets within the intellectual property of companies and independent inventors that have not yet been patented. Many of those inventions might better be published now to promote the progress of science and the useful arts for a sustainable environment and ecology for the future.

To compensate for these drawbacks and make the Eco-Patent Commons as useful and powerful as it can be, the initiative requires expansion to offer truly recent inventions that have not spent years in the patent application process. This involves widening the scope of the initiative to include non-patented inventions that have yet to be marketed and made public.

One way to make these inventions available is through enabled invention disclosures. An enabled invention disclosure (also called “defensive publication” or “technical bulletin”) is a written description of an invention that ideally has the same degree of detail as an issued patent. Therefore a well-written invention disclosure provides sufficient information to the reader to understand and use the invention.

Many companies successfully use enabled invention disclosures as part of their intellectual property (IP) strategies. Companies frequently have inventions that they do not wish to patent because the patent process is so expensive, including invention development costs, legal preparation and patent prosecution fees. However, companies also wish to prevent competitors from patenting those same inventions.

By using enabled invention disclosures to publish the invention, companies accomplish both goals: they save the cost of patenting but they also establish a “prior art bar” to obtaining the patent and make it impossible for competitors to claim it the invention as their own. Several Web site forums exist for publishing inventions, including www.ip.com and www.researchdisclosure.com.

The Eco-Patent Commons should be expanded to include these enabled invention disclosures. Many inventions that companies deem non-strategic for patent application and instead decide to publish may be excellent candidates to be donated to the Eco-Patent Commons. These published inventions would be truly new, fresh and useful -- a good first step to creating the true springboard for green innovation that the Eco-Patent Commons was meant to be.

We couldn't agree more.

As indicated in our original post about the Eco-Patent Commons, IP.com would really like to contribute to this very worthwhile initiative by providing the publishing platform to broaden the scope of the project to include innovations and inventions useful to the environmental movement well beyond those patents that have been contributed by the project's founding companies, some of which are already using the IP.com Prior Art Database. We've got technologies available that could very quickly take this green initiative to a whole new level of global participation.

Let's discuss.

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It's interesting to see the growing number of Fortune 500 companies and Global 1000 businesses with blogs by CEO and other senior level executives who are blogging for their companies.

Today, we discovered another, The Manufacturing Industry Blog by Lynette McTigue, the Global Industry Marketing Manager for Xerox Global Services. On that corporate blog, Xerox highlights current industry themes and challenges, and how manufacturing organizations use document-related concepts and technologies to reduce costs, improve client relationships and increase productivity.

What caught our attention was this link to Enterprise Security – Tightening Your Grip on Trade Secrets, a white paper by David Drab, Xerox's thought leader on security,  He makes some excellent points about managing trade secrets we'd like to share with our readers here.

In today's world, if trade secrets are not nailed down they are more likely to walk out the door and into the hands of a competitor. Plain and simple they are at high risk, and perhaps someone's job is or will be as well. This is the way it works:

A company hires an employee because of her education, knowledge and expertise. The company pays her to invent, to create new ideas that ultimately add value in profitability and corporate growth. She does her job well, then after a half dozen years or so, greener pastures are on the horizon--bigger earning potential, more prestige, career fast-tracking. She markets the idea she was paid to create in pursuit of fame and fortune. She accepts the offer she can't refuse from a competitor and before too long the idea becomes a new product launch. Her former company files a theft of trade secrets lawsuit and ownership litigation ensues.

Many variations of this scenario unfold each day in enterprises across the globe providing endless drama. They represent the tip of the iceberg in spectrum of trade secret theft and misappropriation that extends far beneath the surface into high-stakes espionage. Trade secret litigation is a public spectacle. It is very costly and time intensive, not to mention the negative impact on reputation and shareholder confidence that results. Unfortunately, many of these kinds of cases could have been avoided had there been an effective trade secret management system in place that explicitly described company policies, procedures and protocols governing the identification, handling and use of trade secret information. An organization that exhibits a languid posture towards trade secret management subtly diminishes the importance of ownership, use and control. A person with authorized access can more easily rationalize that ownership is discretionary even though signed confidentiality agreements may be in place. The corporate message simply is not clear, it is not concrete and it is not convincing. Without a management system and definitive handling protocols, trade secrets are vulnerable and at high risk.

Many of our clients use a Publication Clearance System as a component of their  companies' Trade Secret Management. The pub clearance is one important part of filtering and identifying potential trade secrets before anyone in the company inadvertently discloses a trade secret to the public. Another key component of an effective innovation protection system is a secure repository for managing and protecting access to critical trade secrets.

What does your company use to protect its valuable trade secrets? If you're not sure, or wonder if adequate systems are securing your innovations, you may want to contact us for a complimentary review of how your trade secrets are safeguarded. You might also call David Drab at Xerox, who clearly understands the problems and solutions for trade secret management. Heck, with so much at stake for your company, you should probably give us both a call to see how we can help.

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One of our favorite patent law bloggers, Stephen Albainy-Jenei at Patent Baristas, points out that today is blogger appreciation day.

On this day, we'd be remiss if we didn't show our appreciation for all the new readers directed to our company blog from Duncan Bucknell's IP Thinktank and David Lat's Above the Law.

Our greatest appreciation, always, is for the intellectual property law bloggers who continuously recommend our blog to their readers by adding a permanent link to Securing Innovation in their blogrolls:

• Patent Baristas
• Likelihood of Confusion
• Patent Docs
• The Invent Blog
• The Patent Prospector
• Anticipate This!
• BlawgIT
• The Legal Thing

Editor's Note: From time to time, we'll update this list to show our appreciation for bloggers who have added this blog to their blogrolls, as we become aware of links.

We'd like to take this opportunity, on blogger appreciation day, to thank patent attorney Brett Trout for including Securing Innovation in his patent meme, an excellent list of patent blogs. We really appreciate all the attention that regularly comes from that special recognition.

Finally, we'd like to thank Kevin O'Keefe and the team of weblog professionals at LexBlog for helping us develop this corporate blog for our company, IP.com. We really appreciate the extraordinary service.

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This week, as the New York Times reported that writers blog till they drop dead, we were relieved to see IBM's technical disclosure in the IP.com Prior Art Database, promising a more relaxing experience for bloggers with the laptop of the future.

Method to use laptop generated heat for 'aromatherapy'

Often, certain smells can stimulate work productivity. Motivation and Healing by smell is a very common practice and long time tradition. How nice would be to be stimulated by the scent of Chocolate or a Coffee without have to digest it? Since one's convenience is sought after as a top priority in today's society, it is only fitting that it be addressed in respect to the integration of today's technology and the common practices or classic traditions of aromatherapy. 'Aromatherapy' via a fragrance gel/oil and your laptop's generated heat may be all you need to complete your daily tasks list more efficiently. This approach can result in enhance work experience and increased productivity.

Until that innovation finds its way into an IBM laptop of the future, technology bloggers should work on developing zen habits for haiku productivity.

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Today is World Health Day 2008. The World Health Organization has announced that this year's theme is" protecting health from climate change."

World Health Day, on 7 April, marks the founding of the World Health Organization and is an opportunity to draw worldwide attention to a subject of major importance to global health each year. In 2008, World Health Day focuses on the need to protect health from the adverse effects of climate change.

The theme “protecting health from climate change” puts health at the centre of the global dialogue about climate change. WHO selected this theme in recognition that climate change is posing ever growing threats to global public health security.

Through increased collaboration, the global community will be better prepared to cope with climate-related health challenges worldwide. Examples of such collaborative actions are: strengthening surveillance and control of infectious diseases, ensuring safer use of diminishing water supplies, and coordinating health action in emergencies.

Today, on our blog, we'd like to draw attention to a new invention by Dean Kamen that is a very promising innovation to provide safe drinking water in areas of the world that are experiencing drought as a result of climate change.

One person in six lives without regular access to safe drinking water, and more than twice as many lack access to adequate sanitation, according to the United Nations. Water-related diseases kill a child every eight seconds, and are responsible for 80 percent of all easily preventable illnesses and deaths in the developing world. These alarming statistics have not escaped Dean Kamen's attention.

The entrepreneur and quixotic inventor best known for the heavily hyped (and somewhat disappointing) Segway scooter has been working on what he promises will be a revolutionary new water purifier. Dubbed the Slingshot, Kamen's washing machine-sized device produces 10 gallons of clean water an hour on 500 watts of electricity. It uses heat to distill water—boil it, condense it and recycle the energy. The heat that it uses is captured from a new type of generator that, you guessed it, he's also invented. NEWSWEEK's Brian Braiker spoke with Kamen about his mission to bring light and water to the world's poorest.

Click here to read excerpts of the NEWSWEEK interview.

Dean Kamen's water purifier was recognized as a "runner up" among the Coolest Inventions of 2003 selected by Time Magazine. Dean Kamen, founder of DEKA, has registered a number of patents for this invention and others.

If you'd like to see a video of Dean Kamen's Miracle Water Distiller,code-named Slingshot,  check out this video clip from Kamen's appearance on The Colbert Report.

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Is this hot or not? Peter Zura points to a new website: USPTO Examiners.

From the USPTO Examiners Mission Statement at the time of this posting:

USPTO Examiners is a website designed for professionals to anonymously review, rank, and learn about a patent examiner or a trademark examining attorney who works at the United States Patent and Trademark Office (USPTO).

Patent examiners and trademark examining attorneys are public employees who help determine the technological and economical future growth of each industry and business in the world. A simple word such as “allowed” or “rejected” from a patent examiner or a trademark examining attorney could grow or financially burden a company, business, or individual. Accordingly, it is extremely important for the USPTO to have well trained patent examiners and trademark examining attorneys who understand that each of their decisions could benefit and/or harm an industry, business, and/or individual. Having highly competent patent examiners and trademark examining attorneys will result in the USPTO issuing high quality patents and trademarks.

Patent and trademark practitioners who deal with individual patent examiners and trademark examining attorneys are in the best position to express their opinions (e.g., their concerns, as well as their satisfaction) about each patent examiner or trademark examining attorney. Individuals who refer to this website may factor in the opinions of the patent and trademark practitioners when determining the competency and responsiveness of a particular patent examiner or trademark examining attorney. As such, these opinions could be a valuable tool when planning and strategizing a prosecution of a patent or trademark case, which can result in saving clients and inventors a substantial amount of time and money during the course of prosecuting a patent or a trademark.

Accordingly, this website has been developed to form an online collaborative environment in which members of professional organizations, corporations, and inventors may anonymously pool their experiences and opinions about a patent examiner or a trademark examining attorney, including their knowledge of the law and technology, as well as their accessibility.

Your opinions are completely anonymous. You are only required to make a user name and a password to post an opinion about an individual patent examiner or a trademark examining attorney. We do not require that you reveal your identity or provide any identifying information when making a user name and password to make a posting.

USPTO Examiners appreciates the time that patent and trademark practitioners take to post their anonymous opinions.

It remains to be seen how this "anonymous rating" of patent examiners will work in the patent industry, which tends to be litigious. Will companies that deal with patent examiners have to develop an Internet postings policy like Cisco's that emerged from "lessons learned" from the Patent Troll Tracker Blog fiasco? For a good overview of corporate blogging policies, see the recent post by Patent Attorney Brett Trout at BlawgIT.

If you're interested in the ongoing discussion of anonymous communications online, you might want to listen to the latest podcast on Lawyer2Lawyer in which host Craig Williams interviews Raymond Niro Sr., the attorney who seemed to have been a favorite subject of Rick Frenkel's Patent Troll Tracker Blog. In the second segment of the podcast, Craig speaks with the popular patent blogger, Dennis Crouch from Patently-O, to get his perspective on the Troll Tracker and the dangers of blogging anonymously. Some of that discussion might be relevant to this new USPTO Examiners site, as well, though not specifically mentioned. No doubt, it might be the subject of more blog posts and podcasts in the future.

We'll be following closely the discussion about anonymous free speech concerning patents, too, as it might well be relevant to consider with regard to the Patent Debate discussion board.

What do you think?

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Thanks to patent attorney Steve Nipper at The Invent Blog for pointing us to this new worldwide patent search engine, which we've added to the IP Resources in the sidebar of our blog. Very cool.

Our friends at Igor, the naming and branding agency, will like the name and logo, too, we think. Very smart.

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During the annual conference of the Association for Recorded Sound Collections at Stanford March 26-29, audio historian David Giovannoni showed a slide of a visual recording of a woman singing a snippet of “Au Clair de la Lune,” a French folk song. This “phonautogram,” made in 1860, is the earliest known recording of a human voice.

Joe Gratz has an interesting and thoughtful post about this discovery of a sound recorded by the 19th-century phonautograph.

Late last week, the New York Times broke the story with this piece:

Researchers Play Tune Recorded Before Edison

Scott’s 1860 phonautogram was made 17 years before Edison received a patent for the phonograph and 28 years before an Edison associate captured a snippet of a Handel oratorio on a wax cylinder, a recording that until now was widely regarded by experts as the oldest that could be played back.

Mr. Giovannoni’s presentation on Friday will showcase additional Scott phonautograms discovered in Paris, including recordings made in 1853 and 1854. Those first experiments included attempts to capture the sounds of a human voice and a guitar, but Scott’s machine was at that time imperfectly calibrated.

“We got the early phonautograms to squawk, that’s about it,” Mr. Giovannoni said.

But the April 1860 phonautogram is more than a squawk. On a digital copy of the recording provided to The New York Times, the anonymous vocalist, probably female, can be heard against a hissing, crackling background din. The voice, muffled but audible, sings, “Au clair de la lune, Pierrot répondit” in a lilting 11-note melody — a ghostly tune, drifting out of the sonic murk.

On the other side of the pond, news of this early recording caught the British completely by surprise. After listening to this recording BBC newsreader Charlotte Green dissolved in a fit of giggles while reading an obituary.

Edison must be rolling in his grave. We learned about this discovery over the weekend, but held our post about it until today to avoid the story being mistaken for an April Fool's hoax.

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You can't make this stuff up.

SAN JOSE, California -- Attorney General Michael Mukasey talked tough on intellectual property crime, telling Silicon Valley executives here Friday that the theft of their inventions poses a threat to the nation's "health and safety" and fosters terrorism.

"Every new technology we create can be abused -- whether it's a common identity thief looking for a new way to steal your bank account information, or an international terrorist looking to advance a murderous plot," the United States' top law enforcement official said here at TheTech Museum of Innovation.

...

Mukasey said U.S. anti-counterfeiting authorities are coordinating with the European Union, Asia, Canada, and a host of other countries he termed "hacker havens" like China and Romania.

"FBI agents teamed up with the Royal Canadian Mounted Police in an initiative targeting the distribution of counterfeit Cisco computer networking equipment manufactured in China," he said. "So far we've had more than 400 seizures of counterfeit hardware and labels with an estimated retail value of more than $76 million -- and the investigation is still ongoing."

He said the DOJ has trained and provided technical assistance to thousands of foreign prosecutors, investigators and judges in more than a hundred countries, and urged Congress to adopt legislation "that would criminalize attempted copyright infringement, and add important investigative tools such as granting courts the authority to issue wiretap orders in criminal counterfeiting and piracy investigations."

And in a move designed to show that it is doing its part in the global war on terrorism, China announced today a crackdown on counterfeit designer handbags coming across the border from Tibet. OK, we made that last part up. April Fool's!

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Nolo.com outlines what every business owner should know about trade secret law.

What is a trade secret?

What types of information can trade secrets protect?

What rights does the owner of a trade secret have?

How can a business protect its trade secrets?

How can a business enforce its rights if someone steals or improperly discloses confidential information?

Is stealing trade secrets a crime?

The most notorious recent case of a conviction for stealing trade secrets involved a former employee of DuPont, who is now serving an eighteen month sentence after pleading guilty to downloading thousands of documents from the company's databases when he was about to leave the company--with trade secrets worth an estimated $400 Million to the company.

Almost every few days now, it seems, we read news of some former executive of a company, or scientist working in research and development, being accused of stealing trade secrets.

Just last week, it was reported that a senior research and development associate at a Lubrizol research facility in Brecksville, pocketed at least $170,000 in exchange for trade secrets from 2001 to 2007, according to the information filed in criminal court. Apparently, Lubrizol employs a variety of protective measures to prevent trade leaks, including confidentiality agreements, according to the company.

In most of these cases, unauthorized access and misappropriation of trade secrets is discovered by forensic investigation only after the suspected theft is discovered. You'd think that big companies with significant assets in trade secrets would use the latest solutions for trade secret management. The objective should be to protect the company's trade secrets from misappropriation in the first place, not just to catch criminals who steal intellectual property left unsecured.

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Lumenis is purportedly Israel's largest medical device company with more than 1,000 employees worldwide. Apparently, some of its former employees are now with another company, Alma Lasers, "in what has become a highly competitive industry and business environment," according to Lumenis CEO Dov Ofer.

In June 2007, Lumenis filed an action against Alma for patent infringement in the US District Court in Chicago, Illinois claiming that Alma infringed seven of Lumenis' patents in the design of the Harmony product. Lumenis initiated the Chicago litigation by filing suit against Alma Lasers on June 28, 2007.

On January 25, 2008, Alma filed counterclaims and, among other things, asked the Court to declare six of the seven Lumenis patents unenforceable due to inequitable conduct in procuring those patents. Alma alleged that, when applying for those six patents, the applicants breached their duty of candor, good faith and honesty to the PTO and engaged in inequitable conduct by making false representations to the PTO and by failing to disclose material prior art to the PTO. Lumenis denied the allegations.

Meanwhile, in December 2007, Alma submitted 22 prior art references to the PTO for consideration with respect to the seven Lumenis patents. Subsequently, the PTO found a "substantial new question of patentability" with respect to each of the seven patents, and commenced reexamination of them. With respect to one of those patents, the PTO, on February 8, 2008, issued an Office Action rejecting 26 claims of the patent as obvious or anticipated by the prior art. On February 21, 2008, the District Court ordered the litigation stayed pending the PTO's reexamination.

In a press release issued on March 26, 2008, Alma seemed pleased to report that: (1) the U.S. Patent and Trademark Office in Alexandria VA ("PTO") has decided to reexamine all seven of Lumenis's patents that are at issue in the litigation, and (2) the Court has stayed the litigation, pending reexamination of the patents.

Also on March 26, 2008, Lumenis issued its own press release announcing that the company had that very day filed a complaint in the Tel Aviv District Court in Israel against Alma Lasers Ltd. and its four founders, Ziv Karni, Yoav Avni, Nadav Bayer, and Ivgeni Kodritzki, all former employees of Lumenis, claiming misappropriation of Lumenis trade secrets and technology and for the use of such technology in Alma's primary Harmony products, which are sold worldwide. Lumenis has requested relief from the court in the form of an injunction against the use of such core technology by Alma in its products and for monetary damages in the amount of 200 million shekels based on the profits earned by Alma and its founders from the utilization of such Lumenis technology. Lumenis will also be filing a similar action against Alma Inc., the US subsidiary and distribution arm of Alma, in the Federal Court in the US.

This new action alleges that Alma went even further than mere patent infringement -- it alleges outright misappropriation of Lumenis technology that was developed by Lumenis over a long period of time and at Lumenis' great expense.

All of the above is reported verbatim from the press releases issued by the companies separately on March 26, 2008, which we've just pieced together to make some sense of the litigation of which both sides appear to be telling their part of the whole story. Anyway, both companies seem to want to get the news out, and we're happy to write about it here.

We're always looking for interesting patent disputes that turn on evidence of prior art and allegations of misappropriation of trade secrets. We'll keep you posted on this one. If either of the parties want to dispute the facts stated in their respective press releases, by all means feel free to have it out in the comments below. We're pleased to provide a forum for discussion of the patents on the merits.

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With the recent death of Arthur C. Clarke, one of the world's most prolific writers of science fiction, including the short story that inspired the screenplay for 2001: A Space Odyssey co-authored with Stanley Kubrick, we've seen numerous obituaries and memorials to his achievements as an inventor and futurist. We'd like to share this.

If we have learned one thing from the history of invention and discovery, it is that, in the long run - and often in the short one - the most daring prophecies seem laughably conservative. -- Arthur C. Clarke, The Exploration of Space, 1951

Sir Arthur Clarke is credited with being the "godfather of the communications satellite" by many, including himself. "Although he was not the originator of the concept of geostationary satellites, one of his most important contributions may be his idea that they would be ideal telecommunications relays. He advanced this idea in a paper privately circulated among the core technical members of the BIS in 1945. The concept was published in Wireless World in October of that year." The Wireless World paper was written in late June and submitted to the RAF censor on July 7 and its title was changed from “The Future of World Communications” to “Extra-Terrestial Relays,” as noted in this powerpoint presentation. One slide in the presentation discloses this nugget of information that we found apropos our own blog about securing innovation.

Q: Why did Mr. Clarke not patent the communication satellite?

A: I have often been asked—usually pityingly--why I made no attempt to patent the communications satellite. Perhaps the most truthful answer is that I never really expected to see it in my lifetime; I also (though in more cynical moments I am skeptical about this) seem to recall thinking that it was an idea for all humanity, so I should publish to prevent anyone else from taking out a patent. As indeed I did...I learned from my patent attorney that even if I had tried to patent communications satellites in 1945, the patent would have been rejected because the required technology did not yet exist, and the patent wouldn’t have been worth getting because its life would only have been 17 years. The patent would have expired the year before Early Bird was launched.

A hundred years ago, the electric telegraph made possible - indeed, inevitable - the United States of America. The communications satellite will make equally inevitable a United Nations of Earth; let us hope that the transition period will not be equally bloody. -- Arthur C. Clarke, First on the Moon, 1970

Arthur C. Clarke: An Appreciation of a Life Well-Lived is an appropriate obituary for the man who, when asked how he'd like to be remembered, is reported to have said, "I have had a diverse career as a writer, underwater explorer and space promoter. Of all these, I would like to be remembered as a writer."

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Over the years I've written dozens of technical articles, blogs, and marketing literature.  Most of what I wrote was reviewed by marketing, engineering, and perhaps sales. My articles have been examined for their ability to carry the corporate message, technical accuracy, and how the pieces positioned products. No one ever brought up the issue of intellectual property. This is not something unique to my experience. Companies worry about the content and form of publications but not the IP that might be revealed in them. When someone does catch some important IP heading out the door it is often by happenstance. It's not so much that companies don't care.

If you bring up the subject of "IP in publications" most companies will sincerely tell you that they are worried about it. Yet despite that, examining publications for IP is not always part of the normal publication review process. On the flip side are the companies that are paranoid about IP in publications. For many, the knee jerk reaction is "publish nothing!" This doesn't work for long since publications are a major part of corporate communications. Are you going to tell scientists that they can't publish a scientific paper? They won't work for you. Just try and shut up an engineer with a good idea for an article. You'll only infuriate him. Marketing has to publish white papers and sales literature so you can't stop them from producing publications. 

The simple solution is a publication clearance process, implemented as a workflow. The process of Publication Clearance pushes the document in front of everyone who should see it including legal counsel, patent counsel, technical and marketing. Publication clearance within InnovationQ also protects the document as intellectual property. It is subjected to the same LegalSafeguarding process as documents in the Trade Secret Management modules. We can even build hooks into docketing or our Trade Secret Management modules to help better identify IP contained in publications before it is too late.

Adopting a publication clearance process is a good first step toward protecting important intellectual property. Having tools to automate this process makes it much easier to live with.

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What is a copyright?

A copyright is quite simply the definitive legal form of protection for your intellectual property rights in any work of authorship. The following is an excerpt from the Library of Congress copyright website:

“Copyright is a form of protection provided by the laws of the United States (title 17, U.S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works. Section 106 of the 1976 Copyright Act generally gives the owner of copyright the exclusive right to do and to authorize others to do the following:

• To reproduce the work in copies or phonorecords;
• To prepare derivative works based upon the work;
• To distribute copies or phonorecords of the work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
• To perform the work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works;
• To display the copyrighted work publicly, in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work; and
• In the case of sound recordings, to perform the work publicly by means of a digital audio transmission.

It is illegal for anyone to violate any of the rights provided by the copyright law to the owner of copyright. These rights, however, are not unlimited in scope. Sections 107 through 121 of the 1976 Copyright Act establish limitations on these rights.”

It is important to note that formal US copyright registration is not required for copyright protection. Copyright protection begins the moment the author fixes the work in a tangible medium of expression. The above rights exist for owners whether they have filed a formal registration or not. All one has to do is prove what they wrote and when they wrote it.

To better understand copyright, you might want to read our posts on the subject of copyright:

How To Copyrght
When To Copyright
Myths Surrounding Copyrights
How IP.com Supports Copyrights

Or, better still, go to The Patry Copyright Blog for the latest, in depth, coverage of copyright law and policy. William Patry is the Senior Copyright Counsel, Google Inc. Formerly copyright counsel to the U.S. House of Representatives, Committee on the Judiciary, formerly Policy Planning Advisor to the Register of Copyrights, formerly Law Professor, Benjamin N. Cardozo School of Law; author of numerous treatises and articles (including one on fair use with Judge Richard Posner), and the new 7 volume treatise on "Patry on Copyright" --  kept current by the Patry Treatise Blog, which supplements Bill Patry's magnum opus on copyright.

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