The Dobrusin Law Firm - Intellectual Property

Strategic Intellectual Property Law

Month: July 2021

Paul J. Palinski Appointed to McLaren Oakland’s Board of Trustees

Dobrusin Law shareholder Paul J. Palinski has been named to the board of trustees of McLaren Oakland, a 328-bed hospital providing primary and specialty healthcare services to the greater Pontiac and Oakland County communities.

“Social responsibility is a pillar of our law firm, as is our commitment to Pontiac,” said Mr. Palinski, who devotes his practice to intellectual property matters, including patent counseling and strategic patent prosecution with a focus on mechanical, electromechanical, and biomedical technologies. “I am honored to join the McLaren Oakland board and help support the hospital’s mission to be the recognized leader and preferred provider of health care services in the area.”

McLaren Oakland is part of McLaren Health Care. This integrated health network includes 13 hospitals, ambulatory surgery centers, imaging centers, an employed primary care physician network, commercial and Medicaid HMOs covering more than 630,000 lives, home health and hospice providers, retail medical equipment showrooms, pharmacy services, and a wholly-owned medical malpractice insurance company. McLaren operates Michigan’s largest network of cancer centers and providers, anchored by the Barbara Ann Karmanos Cancer Institute, one of only 49 National Cancer Institute-designated comprehensive centers in the U.S.

“Inside Out” Copyright Infringement Lawsuit Should Animate All Creators to Obtain Copyright Registration for Their Works

Joy, Sadness, Anger, Fear, and Disgust were the five personified emotions felt by a young girl named Riley in the animated 2015 Disney/Pixar blockbuster “Inside Out.” A Canadian filmmaker who is likely filled with anger and disgust at the makers of the movie may feel a bit of joy now that a Canadian court has allowed his copyright infringement lawsuit to proceed in part.

It turns out that 20 years ago, well before the release of the hit movie, a then-film student in Ontario made a short film about a young boy named Lewis whose behavior was controlled by five personified organs – the Brain, Stomach, Colon, Bladder, and Heart. The film was called “Inside Out.”

There are striking similarities between the two movies, extending beyond its title, broad themes, and narrative concept to many other details shared by both films. Along with allegations that Disney/Pixar likely was aware of his 14-minute short film, these similarities led to the filmmaker’s lawsuit alleging that Disney/Pixar deliberately ripped off his movie without credit, compensation, or consent.

“It is clear that the Infringing Work (the Pixar movie) reproduces the inventive and central concept at the heart of the Original Works: the behavior and actions of the main “external” character, a school-age child, are controlled by five “internal” characters who work together and struggle against one another to help the external character navigate his or her daily life,” the plaintiff claims in his suit.

This dispute is hardly the first high-profile copyright infringement lawsuit involving allegations that a famous movie, song, or other creative work was wrongfully appropriated from a previous work. A few years ago, for example, a court ordered Robin Thicke and Pharrell Williams to pay over $5 million to the family of Marvin Gaye after finding that their 2013 hit “Blurred Lines” was taken directly from Gaye’s 1977 song “Got to Give It Up.”

Copyright Registration Is the Key to Recovering Damages for Infringement

These cases, along with countless others that don’t make headlines, illustrate the consequences of copyright infringement for authors of creative works and those who seek to capitalize on their ideas unlawfully. They also serve as a reminder of how important it is for creatives to obtain federal copyright registrations for their original ideas as soon as possible, whether in writing, on the screen, on canvas, in recordings, or pieces of software.

Even though qualifying works are copyrighted the moment they are created and fixed in a tangible form, registration in the Copyright Office provides rights and remedies to stop the infringement and recover substantial damages. According to the Copyright Act of 1976, 17 U.S.C. § 411, a copyright owner cannot bring a lawsuit for infringement until “registration of the copyright claim has been made in accordance with” the Act.

Other Benefits of Copyright Registration

In addition to being a prerequisite for recovering infringement damages, copyright registration offers several critical benefits, including:

  • Acting as a public record of the creator’s copyright claim, thus countering any defense that the infringement was innocent.
  • Serving as prima facie evidence of the copyright’s validity if registered within five years of publication or being fixed in a tangible form.
  • Recovering statutory damages and attorney’s fees if the creator obtains a registration within three months of publication or prior to an infringement of their work. Otherwise, only an award of actual damages and the defendant’s profits are available as compensation.
  • Allowing U.S. Customs and Border Protection, upon receipt of a copyright registration certificate, to bar the importation into the U.S. of pirated or counterfeit works.

At The Dobrusin Law Firm, we help creators of all types protect their works and maximize the value and benefits of sharing their ideas with the world. If you have questions or need assistance with copyright registration, please contact us day to arrange a consultation.

IPR Decisions Now Reviewable by Director of Patent Office After Supreme Court Fixes Constitutional Defect With PTAB Judges

In a much-anticipated decision involving the constitutionality of the Patent Trial and Appeal Board (PTAB), the Supreme Court ruled in U.S. v. Arthrex that the appointment of PTAB administrative patent judges (APJs) by the secretary of commerce violated the Constitution’s Appointments Clause. But rather than throw the entire inter partes review process and all other matters handled by PTAB into disarray, the Court also fixed the constitutional defect in the same ruling.

“Unreviewable Authority”

In Arthrex, the court addressed the issue of whether PTAB judges are “Officers of the United States” under the Appointments Clause, and if so, whether they are “inferior” officers who do not require a presidential appointment or “principal” officers who do. Noting that neither the secretary of commerce nor the director of the U.S. Patent and Trademark Office (USPTO) had the power to review decisions by APJs, the Court held that “the unreviewable authority wielded by APJs during inter partes review is incompatible with their appointment by the Secretary of Commerce to an inferior office.”

The Federal Circuit had previously reached a similar conclusion, holding that PTAB judges were “principal” officers because of their lack of supervision by any presidentially appointed officials and statutory provisions that limited those officials’ power to review PTAB judges’ final decisions as well as their ability to remove judges without cause.  The court then immediately converted PTAB judges into constitutionally acceptable “inferior” officers by severing a portion of the Patent Act relating to removal protections, thus allowing PTAB judges to be removed without cause.

This result satisfied none of the parties involved, all of whom sought, and did not receive, a rehearing en banc by the full Federal Circuit before each filing a petition for certiorari.

IPR Rulings Now Reviewable By The Director of the Patent Office

While the Supreme Court in Arthrex agreed with the Federal Circuit that APJ’s were constitutionally deficient, they chose a different approach to remedying the issue. Joined by Justices Alito, Kavanaugh, Breyer, Barrett, Kagan, and Sotomayor, Chief Justice Roberts concluded that the only appropriate solution was to make PTAB decisions reviewable by the Director of the Patent Office, thus making APJs subject to a superior officer on the issue of patentability.

Notably, the Court’s opinion only addressed inter partes review proceedings and not reviews of patent examinations.

USPTO Issues Interim Guidance In Response to Arthrex

In response to the Arthrex decision, the USPTO implemented an interim procedure for Director review of PTAB decisions. Specifically, a review may be initiated sua sponte by the Director or requested by a party to a PTAB proceeding. Parties may request that the Director review a final written decision in an inter partes review or a post-grant review by concurrently:

  • Entering a Request for Rehearing by the Director into PTAB E2E; and
  • Submitting a notification of the Request for Rehearing by the Director to the Office by email to Director_PTABDecision_Review@uspto.gov, copying counsel for all parties by email.

If you have questions about the Arthrex decision or about inter partes review generally, please contact the patent attorneys at The Dobrusin Law Firm.

Q & A with Dobrusin’s Summer Interns: Meet Claire Pearce

Our Summer Intern Spotlight series features brief interviews with students who have been learning about intellectual property law and the work we do for the firm’s clients.


Hi Claire Pearce! Where are you in school?

A: I’m a rising junior at Davidson College in North Carolina.

Do you have a favorite subject?

A: I took Applied Ethics in Fall 2020, which was great – we covered a lot of “hot-button” topics and were able to have discussions using our own opinions along with current and past articles.

What is your interest in IP?

A: I am very interested in the protection of people’s ideas/images/words – specifically with an interest in trademarks and copyrights.

What do you hope to learn with us this summer?

A: I hope to gain a deeper understanding of the trademark and copyright side of IP Law. I am also hoping to gain even more insight into the path to law school and beyond.

What have you learned so far?

A: I’ve learned a lot so far this summer. I have gotten to see, edit, and work on patent applications as well as do trademark searches for active clients. The trademark search was the most interesting to me because it showed how complicated and thorough the search process needs to be to ensure a unique design.

What are your hobbies?

A: I have been dancing for 18 years and continue to do so at Davidson. In addition to dancing, I love spending time with my family up in Northern Wisconsin over the summer.

Do you participate in any extracurricular activities?

A: I am the Company Manager for Davidson’s Gamut Dance Company and Resident Advisor in the sophomore dorm. I’m the Publicity Chair and Event Planner for the Pre-Law Society, and member and Formal Chair for Warner Hall Eating House (like a sorority).

Anything else you’d like to share?

A: Criminal Minds is my favorite TV show to binge. I have one cat and one dog (Cinnamon and Libby). I’ll be taking a class this coming year called “Schooling Pandemics”, which should be an interesting reflection of the last year and a half!

Michigan Lawyers Weekly Spotlights The Dobrusin Law Firm’s Involvement With the Pontiac Community

Michigan Lawyers Weekly, a weekly publication covering legal news around the state, recently featured the Dobrusin Law Firm and our involvement with the City of Pontiac.

In “A Sidebar With Eric Dobrusin,” digital editor Kelly Caplan interviewed our founding shareholder about the many area activities and events the firm sponsors. Here are a few excerpts.

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Q: The Dobrusin Law Firm has called Pontiac home since 2004 and has left an indelible mark on that community over the past 15+ years. What drew you to Pontiac? Why did you make such a commitment to the city? 

A: Pontiac doesn’t receive nearly the attention it deserves. Aesthetically, its buildings (including ours) are architectural gems, and it offers a special environment teeming with creativity, intellect, and entrepreneurial spirit. We have benefited from that vibe, and we have been committed to the city because we want to be good neighbors and make a difference.

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Q: Corporate social responsibility – being a good neighbor in the community – is not a mainstream initiative for most law firms. Why do you do it?

A: The simple answer is that it’s the right thing to do. One of our core values is a commitment to give back to the community. We foster an environment in which team members feel encouraged to champion causes that align with their beliefs and make them proud to be firm ambassadors. Community involvement increases employee engagement in our workplace, improves client relationships, and allows our people to grow their skillsets in ways they might not within the traditional firm experience.

As a law firm, our primary obligation is to our clients, but it was crucial to have someone coordinating our civic and philanthropic activities. Marijayne Renny, a Pontiac resident, is our dedicated community outreach coordinator. She works behind the scenes and on the front lines to help the firm honor our pledge to be a good neighbor.

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Q: Your firm is particularly involved in the Phoenix Races. What is that event, and what prompted you to come up with the idea?  

A: Alley Cat Café owner Danny Martinez and I had an idea to create a derby event in downtown Pontiac, and Daniela Walters and Marijayne Renny then spearheaded the coordination. By partnering with Main Street Pontiac, General Motors, and local technology-focused companies, the coalition established the Phoenix Races in 2018 to encourage STEAM education and careers. Pontiac middle and high school students team up with adult mentors – including Dobrusin Law Firm attorneys and staff – to build wooden, gravity-powered cars they then race in a one-day derby. The event fosters relationships between students and working professionals and funds scholarships awarded to rising seniors who enter the race.

This summer, the Phoenix Races are shifting gears from gravity-powered cars to skateboards that participants can continue to enjoy after the event. We’re delighted the Oakland County Sheriff PAL (Police Athletic League) Program and local skate shops have signed as partners.

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Q: In what other ways do you “act locally” and give back to the Pontiac community?

A: We continually find ways to support Pontiac’s businesses and residents. Besides the Phoenix Races, the Dobrusin Law Firm sponsors other Main Street Pontiac initiatives, such as Canvas Pontiac, a juried competition with the Detroit Institute of Arts that turns the downtown into a walking art gallery, drawing artists from around the country, area neighborhoods, and the local high schools; and Hauntiac, a series of Halloween-themed activities and events. Each year, we sponsor and volunteer with the downtown Holiday Extravaganza, which provides a holiday parade and WinterFUN festival. And when job opportunities arise, we look to hire people from the Pontiac community.

More in line with our practice, we present intellectual property-related educational programs to local business support organizations, including the Pontiac Regional Chamber, T. Ramsey and Associates, and the Center for Pontiac Entrepreneurship.  We help coordinate and participate in technology-centered networking opportunities, including networking sessions held by Oakland County’s Tech248 initiative, Main Street Pontiac’s technology group, and a Pontiac Tech Walking Tour organized by Automation Alley. We’ve sponsored two Leaders Dogs for the Blind “Double Dog Dare” fundraisers where participants rappel down Pontiac’s tallest building. And when we celebrated our firm’s 20th anniversary in 2019, we invited family, friends, clients, and colleagues to a party at Pontiac’s Little Art Theater with catering from Pontiac’s Moonlight Catering.

You can read the full article on the Michigan Lawyers Weekly website.

Q & A with Dobrusin’s Summer Interns: Meet Michelle Hudson

Our Summer Intern Spotlight series features brief interviews with students who have been learning about intellectual property law and the work we do for the firm’s clients.


Hey, Michelle Hudson! Where are you in school?

A: I graduated this spring from Grand Valley State University with my bachelor’s degree in Biomedical Sciences. This fall I will begin law school at the University of Detroit Mercy.

Do you have a favorite subject?

A: My favorite subject is microbiology! My favorite class in that department was Medical Bacteriology w/ Lab.

What is your interest in IP?

A: Intellectual property interests me because it combines science and law.

What do you hope to learn with us this summer?

A: I hope to continue learning about this field! More specifically, I want to get more practice with patent searches.

What have you learned so far?

A: I learned the parts of a patent as well as how to proof one. I have also been able to look at office actions and observed how the attorneys approach responding to them.

What are your hobbies?

A: In my free time, I enjoy reading, bike riding, and shopping.

Do you participate in any extracurricular activities?

A: During my undergrad, I was a member of the sorority Alpha Sigma Tau. I served as an executive member of our College Panhellenic Council for two years. I was also a staff member of our Chemistry Lab and was a Teacher’s Assistant (TA) for organic chemistry labs.

Q & A with Dobrusin’s Summer Interns: Meet Blake Salesin

Our Summer Intern Spotlight series features brief interviews with students who have been learning about intellectual property law and the work we do for the firm’s clients.


Hi Blake Salesin! Where are you in school? Do you have a favorite subject?

A: I’m a rising sophomore at Boston College. I really enjoy International Politics.

What is your interest in intellectual property?

A: IP can be protected internationally and provides businesses with the right to their own ideas and products.

What do you hope to learn with us this summer?

A: I hope to learn more about how Dobrusin protects the patents of its clients from any infringement, domestic or international.

What have you learned so far?

A: I have learned so much! The first day I received a crash course on all things IP and from there on have focused on different aspects of IP law. Many of the information and skills I have learned have been acquired through hands-on work, including filing certificates of correction, proofing patents, and labeling patent drawings.

What are your hobbies?

A: My hobbies include ice hockey, writing, and running.

Do you participate in any extracurricular activities?

A: I am a member of the opinions section at The Gavel, a news publication on Boston College’s campus. As an avid ice hockey player, I teach at the Detroit Skating Club. Additionally,  I am a graduate of Junior Leadership Oakland XI.

Anything else you would like to share?

A: I have a Golden Retriever named Gus and I am looking forward to having a great summer working at The Dobrusin Law Firm!

What President Biden’s Recent Executive Order on Promoting Competition Means for IP

On July 9, 2021, President Joe Biden issued a sweeping executive order authorizing and facilitating a “whole of government approach” designed to promote competition and innovation, reduce marketplace consolidation, and protect the interests of workers, farmers, consumers, and small business owners.

The “Executive Order on Promoting Competition in the American Economy” touches upon almost every aspect and sector of the economy, including intellectual property development, ownership, and rights. Here is what IP owners should know about President Biden’s order and its potential implications for their inventions, intellectual property portfolios, and businesses.

Intersection of IP and Antitrust Laws

As one would expect in an order “promoting competition,” there is a significant focus on antitrust and anti-monopoly laws and policies. In the intellectual property context, the order emphasizes steps to “avoid the potential for anticompetitive extension of market power beyond the scope of granted patents, and to protect standard-setting processes from abuse.”

The order goes on to state that, “the Attorney General and the Secretary of Commerce are encouraged to consider whether to revise their position on the intersection of the intellectual property and antitrust laws, including by considering whether to revise the Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitmentsissued jointly by the Department of Justice, the United States Patent and Trademark Office, and the National Institute of Standards and Technology on December 19, 2019.”

Generics and Biosimilars

The order sets forth the administration’s goal of reducing prescription drug prices and its perspective that “too often, patent and other laws have been misused to inhibit or delay — for years and even decades — competition from generic drugs and biosimilars, denying Americans access to lower-cost drugs.”

In addition to supporting “aggressive legislative reforms that would lower prescription drug prices,” the order directs the Federal Trade Commission Chair to consider adopting rules to address “unfair anticompetitive conduct or agreements in the prescription drug industries, such as agreements to delay the market entry of generic drugs or biosimilars.”

Agricultural Patents

“To help ensure that the intellectual property system, while incentivizing innovation, does not also unnecessarily reduce competition in seed and other input markets beyond that reasonably contemplated by the Patent Act,” the order directs the Secretary of Agriculture to submit a report “enumerating and describing any relevant concerns of the Department of Agriculture and strategies for addressing those concerns across intellectual property, antitrust, and other relevant laws.”

There are many other matters addressed in the order that do not involve intellectual property per se but could impact intellectual property-focused businesses and industries. This includes, for example, encouraging the FTC Chair to consider rules that would “curtail the unfair use of non-compete clauses and other clauses or agreements that may unfairly limit worker mobility.”

To learn more about the provisions of President Biden’s Executive Order or ask questions about how it may implicate your intellectual property interests, please contact the attorneys at The Dobrusin Law Firm.

The Dobrusin Law Firm Is Helping to Make the Pontiac Skatepark Project a Reality

In Pontiac, longboarders and shortboarders need a new place to ride. Providing a modern skatepark is the impetus behind a new project in the city, one the Dobrusin Law Firm actively and proudly supports.

The Pontiac Skatepark Project seeks to build a safe, accessible, and sustainable 10,000 square-foot facility for youth and adults. Tentatively slated for construction across from Pontiac’s high school and middle school, the new facility will replace the current park consisting of broken-up tennis courts with deteriorating rails.

Pontiac resident Marijayne Renny is the Dobrusin Law Firm’s community outreach coordinator, an avid roller skater (even previously part of Detroit Roller Derby), mother of a roller-skating daughter, and wife of a skateboarding husband. She spends her free time teaching kids how to comfortably roller skate and helped identify the need for a better quality skatepark in Pontiac. She has been particularly active with this initiative, helping prepare grant applications and leading corporate and grassroots donation efforts.

So far, the Skatepark Project (previously known as the Tony Hawk Foundation) and the Ralph Wilson Foundation have extended up to $250,000 in grant money, and another $50,000 grant will pay for “green space” elements, including edible landscaping features. To receive the full $250,000 grant, the Pontiac Skatepark Project needs to raise matching funds of at least $50,000, but ideally $250,000, by November 1, 2021, then complete construction of the park by November 2022. To help with fundraising efforts and financial management, the Pontiac Skatepark Project has partnered with Oakland County Sheriff Police Athletic League which is a 501c3.

Most recently, the Pontiac Skatepark Project hosted SK8 Art in downtown Pontiac to raise awareness about the project on international Go Skateboarding Day. The evening was full of music and skating in the West Alley in downtown Pontiac and kickstarted a week-long silent auction of custom-painted skateboard decks.

Up next is this year’s Phoenix Races on Friday, August 13th, another Dobrusin Law Firm-supported event. This year, the Phoenix Races are replacing derby cars with skateboards to bring further awareness to the Pontiac Skatepark Project.

For more information about the Pontiac Skatepark, including ways to donate, please visit the Project’s website and Instagram.

Utility Patents v. Design Patents: What’s the Difference, and Which One Is Right for You?

“Form follows function” is a famous axiom in the world of architecture. In the world of patents, form and function are the defining characteristics that separate two distinct types of patents: utility patents and design patents.

Both utility and design patents provide valuable protections for patent owners, but there are significant distinctions between them. Determining which is best suited for your invention will affect what your patent protects, how much the application process will cost, and when and whether the U.S. Patent and Trademark Office (USPTO) will issue your patent.

If you are an inventor or entrepreneur seeking the rights and protections a patent provides, here is what you need to know about utility and design patents.

Utility Patents

A utility patent protects the functional elements of an article; that is, how it is used and works. To obtain a utility patent, the invention must be “novel, non-obvious and useful.”

Those three terms have very specific meanings in patent law, and if your invention does not hit all those marks, the USPTO may deny your application for a utility patent.

  • Novel: You cannot patent an invention that already exists. An article must not have been known or used by others before the inventor created it. However, improvements to an existing invention may be patentable.
  • Non-Obvious: Even if an invention differs from an existing invention so that it is “novel,” a patent will not be issued if that difference is obvious “to a person having ordinary skill in the art to which the claimed invention pertains.” Determining whether an invention is obvious involves several complex factors and can be a very involved aspect of the patent prosecution process.
  • Useful: You cannot obtain a patent for an item that doesn’t actually do anything. A claimed invention must have a “specific and substantial utility.”

Design Patents

Many patentable items will not only do something; but will look like something. A design patent protects what an article looks like, i.e., its unique exterior appearance, such as its shape, configuration, or surface ornamentation. For example, you could obtain a design patent for a new shoe tread, car design, or beverage container shape. The key for a design patent is that it relates to a visible, exterior aspect of the invention.

Other Key Differences Between Utility and Design Patents

Utility and design patents not only cover different aspects of an article, but the application process and protection each type of patent provides are distinct.

Typically, utility patents are much more difficult to obtain, and the USPTO’s review process of a utility application can take much longer than for a design application. The analysis involved in determining whether the functional aspects of an article satisfy all of the elements required for a utility patent includes a great deal of detailed, scientific, and technical analysis compared to reviewing an item’s ornamental appearance for a design patent.

That is why the typical pendency of a utility application is about two to three years, while the pendency of a design patent application is about one to two years.

Utility patents are valid for generally 20 years from the application filing date, while design patents are valid for generally 15 years from the date of patent issuance. And while a utility patent owner must pay periodic maintenance fees to prevent patent expiration, no additional maintenance fees are required to maintain a design patent.

Which Type of Patent Is Right for Your Invention?

You can apply for both a design and utility patent for an article if the invention’s novelty resides both in its utility and its ornamental appearance. Given the lengthier and costlier application process for utility patents, many inventors move forward with only a design patent application. The best way to determine your patent prosecution strategy is to meet with an experienced patent attorney.

If you would like more information about utility and design patents or would like to discuss applying for a patent for your new invention, please contact the attorneys at The Dobrusin Law Firm.

Contact Information

The Dobrusin Law Firm
29 W. Lawrence St.
Suite 210
Pontiac, MI 48342

Phone: 248-292-2920
Fax: 248-292-2910
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