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Steven M Greenberg

Steven Greenberg’s Answers

10 total

  • I have an idea for a device that combines two readily available technologies. Is such a thing patentable?

    I have an idea for a device that takes two readily available machinery technologies (which likely have simple electronic components too). I assume at this point that the basics of each technology are not protectable. I did a pretty thorough We...

    Steven’s Answer

    Patent protection under US law requires that a *claimed* invention is both new and not merely an obvious variation over the state of the art. If you cannot find a single patent or publication that teaches the combination of your technologies into a single entity, then you may be viewed as having invented something "new". Whether or not your combination of known technologies would have been obvious to the skilled artisan at the time of your invention is both fact driven and can be subjective in nature. I recommend you review the criteria of the "Examination Guidelines for Determining Obviousness" published by the USPTO and available at M.P.E.P. section 2141 on the USPTO web site ( I also recommend that you speak with a patent attorney regarding this issue.

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  • Is it an infringement of intellectual property if one sews others' designs?

    Is it illegal to personally sew and wear clothes that are replicas of other designers? As a college student stationed in the Midwest, I do not have access to actual design patterns or intimate knowledge as to the construction of such garments. I ...

    Steven’s Answer

    The use of the trademark or trade dress of another can result in a conclusion of trademark infringement where the use is "in commerce" and creates a "likelihood of confusion" in the consuming marketplace. If your use is personal and not commercial (e.g. you are just sewing logos on your clothing for your own personal use), it may be difficult for the brand owner to succeed in an allegation of trademark infringement. Further, proving substantial "damages" would be complicated since you are not selling your garments and are not diverting sales from other potential customers.

    To the extend that the logos reflect copyrightable expression, you may have an issue with copyright infringement, but again, damages may be a factor likely to dissuade the expense by the copyright holder in pursuing a legal course of action against you. Further, there are fair use provisions in the Copyright Act that may weigh in your favor.

    Given that you are an individual in school sewing your own clothing, practically it is not likely that you will face consequence for your actions, even if legally warranted.

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  • Competitor in another state changed their website name to exactly the same business name as mine. Can they do that?

    My trade name was registered in my state in 2002. When I moved online I checked to make sure the domain name was available and that no one else was using the name on the internet within the same industry. A year later a business in another state ...

    Steven’s Answer

    The remedies available for a domain name dispute vary dramatically and provide litigants with substantial flexibility in resolving the dispute ranging from the cost effective UDRP proceedings to domestic litigation in Federal Court under the Lanham Act or the ACPA.

    However, the use of a mark in a Web site irrespective of the underlying domain name at which the Web site can be viewed provides far less opportunity for a cost effective remedy. There is no domain name dispute in this latter circumstance. Rather, you are faced predominantly with a remedy for unfair competition (given the lack of a Federal registration in your mark) and state law trademark infringement. Both remedies can be costly.

    The issue of likelihood of confusion is of paramount importance when determining trademark infringement. Part of determining likelihood of confusion is the presence of actual confusion in the consuming marketplace between your product and the product of an alleged infringer. It seems that your two customers inquiries lend themselves nicely to this argument.

    I would consult your IP attorney regarding the costs and available remedies in this case as your options are dependent upon the details and the costs and risks are substantial.

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  • Do intellectual property rights extend to physical aspects of a product?

    I have taken photographs of a type of a candy that has a unique and identifiable shape. I would like to sell t-shirts with silk screened images of the photo I took of the candy on the shirts. There is no logo visible, and the candy is not in the...

    Steven’s Answer

    Your exposure to the tradedress and copyright in the candy will depend on the extent to which your "work of authorship" in the t-shirt is considered a derivative work of your "work of authorship" in the photograph, and to the extent that the work of authorship in the photograph of the candy is considered a "derivative work" of the candy.

    The courts have recently found that a photograph of a work of authorship like a 3D sculpture (the candy) is a separate work of authorship and is not derivative given the transformative nature of the photograph. Applying an additional degree of separation in the t-shirt would leave me to conclude that your risk, while still present, of copyright infringement is lower than average.

    Still, if the shape of the candy is likely to be recognized by the consuming public in connection with the source of the candy (like the shape of a Coca-Cola bottle indicates to the consuming public that the bottle of soda was manufactured by Coca-Cola), then you still have a trade dress issue and your risk would be higher than average. Your analysis with respect to trade dress should begin and end with the question, "Would a consumer viewing my t-shirt think that the manufacturer of the candy also is the manufacturer of the t-shirt?" If so, then you have a problem.

    Definitely, have a conversation with your trademark counsel in this regard.

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  • In USA, intellectual property created by students belongs to the university. Is this also true for a masters thesis in Finland?

    I've seen a masters thesis written by a student of the University of Art and Design Helsinki. I'd like to build upon this work, and think that my derivative work will require me to license the IP described in the thesis. But I'm in the USA, and do...

    Steven’s Answer

    Your question raises a few issues and the answers to those issues depends upon facts unknown.

    1. Worldwide, most academic institutions govern ownership of IP rights in "inventions" according to contract--usually a "tech transfer" or "IP rights" manual for its employees (faculty members). A master's thesis written by a student may not fall within the purview of a university IP policy simply because the author may be a student and not an employee of the university. In that case, the student may have retained all IP rights in any underlying invention. To the extent the student has used university resources to develop the invention, however, the university may own a "shop right" in the technology. Of course, the copyrightable expression of the thesis itself probably remains with the author (the student) and may have been committed to the public domain depending upon any copyright disclaimers embedded with the thesis.

    2. When you say "build upon the work", you mean improve the invention described by the thesis, or borrow text from the thesis in writing your own? I suspect the former. In that case, if the student has described an "invention" in the thesis that has gone unprotected for more than a year (meaning that no one has filed for patent protection for any invention described in the thesis), then it is quite possible that the invention described in the thesis now is part of the public domain and you would be free to build upon that invention without a license.

    3. This is not to say that you should not be concerned with the potential patent rights of others implicated by your proposed improvement to the invention described in the thesis. Until you begin to make, use or sell a product embodying your improvement, however, no liability for patent infringement can arise, though. Thus, you would be free to experiment at present.

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  • Is a paton necessary when you add a feature to an existing product already designed on the market?

    As an example I want to change some handle features on a plastic container. Several containers are on the market already using the same materials. But if I change the design do I need a paton on something like this. I didn't see any patons onli...

    Steven’s Answer

    As a threshold matter, a patent right is a "negative right". That means, the owner of a patent in the U.S. can EXCLUDE others from making, using or selling an infringing device or process; but the owner of the patent needs no patent to make, use or sell a device claimed by a patent. Thus, one seeks patent protection in order to gain a "barrier to entry" to bar others from producing a copy-cat product or service.

    A more pressing matter would be whether or not your proposed design change on your plastic container would "infringe" the patent rights of another. The exposure in that case would be substantial.

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  • I am working on an improvement to an existing board game. I would like to market-test the product without getting sued. Advice?

    I would like to market-test this item before contacting Hasbro (why would they be interested otherwise?) But I would need to use their TM to actually sell anything. It seems like a catch 22 - how should I proceed?

    Steven’s Answer

    First, the act of trademark infringement occurs when an unauthorized party uses the mark of another in a manner causing a likelihood of confusion in the eyes of the consuming public as to the source of product or service to which the mark has been affixed. Thus, unless you have permission from Hasbro (which you do not), you cannot use the Hasbro mark on your product during test marketing.

    You can, however, use the mark HASBRO in a non-trademark sense such as referring to the company by name such as "It is our intent to market the XYZ Board Game" through Hasbro, Inc.

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  • How can I protect a business idea while in the process of developing it and not have somone steal my idea?

    I want to start a web-based business and need to know how to keep someone from stealing my idea while I am in the development stages. Do I copywrite, trademark or patent?

    Steven’s Answer

    The extent of what types of "ideas" are considered "patentable subject matter" changes often. Business methods in particular have been treated by some in the US Patent & Trademark Office (USPTO) as de facto patentable, while others also at the USPTO have viewed pure business methods as inherently not patentable. Indeed, as recently as earlier this week, the US Supreme Court heard oral arguments on this very topic.

    By comparison, the copyright protects only the *expression* of an idea (such as a written description of an idea or a picture or diagram) and not the idea itself. Thus, to reduce a business idea to a written plan means that you could enjoy copyright protection in the plan itself (so as to enable you to limit the reproduction of your plan when you pass it to a third party)

    Trade secrecy rights extend in most States to information that is valuable and secret. Passing your business information to a third party in the absence of a confidentiality agreement, then could jeopardize your trade secrecy status of that business information.

    Therefore, a proper agreement (written) established and managed between you and third parties prior to disclosing information can be critical to avoid any loss of intellectual property rights including the unwitting granting of license rights.

    As you can see, the issues are complex and factually intensive. Therefore, you should retain competent patent counsel to address all of these issues.

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  • I have a provisional patent. What if I am talking to a company and they need to change the design for manufacturing purposes? I

    I have a provisional patent. What if I am talking to a company and they need to change the design for manufacturing purposes? If they find an area where they could tweak my product, could they just then steal it?

    Steven’s Answer

    As an inventor, when you contract with an engineering firm to implement an embodiment of your invention, you should always incorporate an "invention rights" clause in your contract that provides for the assignment of any improvements to your invention to you are your company--particularly where those improvements are those of the engineering firm. That is the "price" the engineering firm "pays" for your business. In this way, you will be able to interact freely with your engineering firm without viewing the relationship as adversarial. That is critical for bringing a product to market cost-effectively and in a timely manner.

    If you do not have such a contractual provision with your engineering firm, you should do an "addendum" to your contract to establish these rights. You may have to "pay" the firm some money as "consideration" for the addendum...perhaps even a small amount, but it is critical to do so.

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  • Is the law firm working on my patent (contingency based) taking to long or being ineffectual?

    I have a U.S. patent 6966942 Process for purifying exhaust gases by employing a bubble generator. I have done allot of research on the mater and am confident that these company's making oil from algae are infringing my patent. After contacting th...

    Steven’s Answer

    Irrespective of the nature of your business relationship with your attorney, your attorney still is required to represent your interests in a professional and timely manner. Oftentimes, clients in an attorney-client relationship forget that the attorney-client relationship is a vendor-customer relationship. As a customer, you should speak with your attorney and bluntly ask not only whether or not the attorney will bring suit in a timely manner, but also whether or not the attorney you have retained on contingency is able to competently handle your matter. If not, you should terminate your attorney and retain different counsel.

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