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Lee Rendeiro brings extensive experience in patents, trademarks, copyrights, and trade secrets. In addition to preparing and filing patent applications, clearance and patentability opinions, he prosecutes patent infringement matters to protect his clients’ creative works. Lee also handles copyright and trademark litigation and advises clients on appropriate courses of action regarding intellectual property matters, including licensing, contract rights, and franchising.

With a degree in mechanical engineering technology from Purdue, Lee spent two decades in various engineering roles encompassing research and development, design, manufacturing, project management, and product launch. His engineering roles spanned diverse technological areas such as power transmission systems, diesel/electric hybrid vehicles, vehicle exteriors, clean air emissions systems, fuel transfer systems, and chemical packaging systems.

Lee’s technical and legal experience provides a well-rounded solution for anyone seeking guidance on their intellectual property portfolio, obtaining proper protection for their intellectual property, monitoring their intellectual property registrations, and/or defending their intellectual property rights.

Lee received his B.S. in Mechanical Engineering Technology from Purdue University and his J.D. from The Ohio Northern University Pettit College of Law. He may be reached at lee.rendeiro@henlaw.com or by phone at 239-344-1179.

It’s funny the vast differences acronyms have. On Instagram, “FTO” stands for “flexible time off,” and on Facebook, it stands for the game “Faery Tale Online.” For purposes of this article and in the patenting world, an FTO is an assessment of the ability to make, use, and/or sell products/services without infringing another party’s rights.

Do I need an FTO performed if I already have a patent?

Now for my favorite attorney answer…it depends. First, we must understand what rights a patent gives.

A registered patent provides the owner of a useful, new, and non-obvious invention of patentable subject matter with the legal right to exclude others from making, using, or selling the patented invention for a limited period of time.

Isn’t “legal right to exclude” just a fancy legal way of saying that I have the right to make, use or sell my patented invention?

No! The right to exclude does not mean the same as the right to make, use, or sell.

To illustrate this, suppose inventor Sue Yoo develops and patents a system – that has not been previously invented – for preventing the sinking of a boat with a breached hull. The patented invention involves manually or automatically deploying helium-filled balloons which provide the boat with the ability to remain afloat. From these basic facts, it appears that Sue Yoo’s invention met the requirements for patentability, it is useful (prevents boats from sinking), new (hasn’t been previously invented), non-obvious (debatable but hey, for our purposes it’s not obvious), and of patentable subject matter (trust me on this one).

Continue Reading What is an FTO?

Firing their first shot on June 6, 2022, Shosh Yonay and Yuval Yonay, heirs of Ehud Yonay, took aim at Paramount by filing a complaint in Federal Court asserting that the movie Top Gun: Maverick, infringes upon a copyrighted story written by Ehud Yonay (“Story”). Shosh and Yuval claim that in May of 1983, Paramount obtained from Ehud, exclusive motion picture and allied rights – creation of merchandise or a television series – to the Story. Shosh and Yuval assert further that in January of 2018, they notified Paramount of their election to terminate those rights as of January of 2020.

On May 27, 2022, flying high over complaints from Shosh and Yuval and well after the termination date, Paramount released Top Gun: Maverick domestically bringing in over $120,000,000 during its opening weekend. Have Shosh and Yuval found their cash cow??

Do Shosh and Yuval have legal standing?

First, can Shosh and Yuval ‘elect to terminate’ rights in which they did not give? 17 U.S.C. § 203(a)(2)(A-B) states that in the case of any work other than a work made for hire, the exclusive or nonexclusive grant of a transfer or license of copyright or of any right under a copyright, executed by the author on or after January 1, 1978, otherwise than by will, is subject to termination under the following conditions:

[w]here an author is dead, his or her termination interest is owned, and may be exercised, as follows: [t]he widow or widower owns the author’s entire termination interest unless there are any surviving children or grandchildren of the author, in which case the widow or widower owns one-half of the author’s interest and [t]he author’s surviving children, and the surviving children of any dead child of the author, own the author’s entire termination interest unless there is a widow or widower, in which case the ownership of one-half of the author’s interest is divided among them.

This means that Congress provided copyright owners with the ability to recapture their works thus allowing the copyright owner to take actions such as renegotiating an agreement or creating their own works based on the original work.

Here, there is no indication that the work is for hire, the grant does not appear to be by will and allegedly occurred after 1977, plus Shosh is the widow and Yuval is the son of Ehud. It is clear that in this case, as the grant of rights occurred after 1977 and that Shosh and Yuval are widow and son, respectively, of Ehud, that they had the right to terminate the extension of rights to Paramount.

Did Shosh and Yuval provide Paramount with proper notice?


Continue Reading Copyright Claim Soars Over Top Gun: Maverick

Patent SearchA patentability search allows a patent practitioner to assess the likelihood of successfully obtaining a patent with the United States Patent and Trademark Office (“USPTO”). The USPTO may issue a patent to whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, subject to certain conditions and requirements.

A patentability search allows a patent practitioner to better understand the scope of the state of the art, the level of skill of a person in the art, and the potential for obtaining a peiroatent registration that protects the new and useful process, machine, manufacture, or composition of matter.

What does it mean to be “novel” and “non-obvious”?

To be patentable, the new and useful process, machine, manufacture, or composition of matter (“invention”) must be novel and non-obvious. In assessing novelty, a patent practitioner searches and reviews the universe of prior art, such as issued patents, expired patents, patent applications, and other non-patent literature, to determine if the exact invention has already been disclosed. In general, a prior disclosure by a third party is a complete bar to patentability, and a prior disclosure by the inventor is subject to specific timing as set by statute regarding such previous disclosures.

Continue Reading What is a patentability search and why should I have one conducted?