Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

As a patent attorney in Erie County I often get asked, "how can I get my products on the shelf in Walmart?" Shelf space is like real estate and every inch inside the store has to be accounted for and the product on that shelf must earn a profit equivalent to the cost to keep that shelf space available in the store.

An independent inventor has to be able to sell his idea to Walmart such that Walmart will remove other things currently in the store to make room for that product. This is a very difficult thing to do for an independent inventor.

Well this might have changed because right now, on the Walmart webpage they have a contest to "get on the shelf".

Even if you don't win the contest you certainly can get some exposure on their webpage which is visited by thousands of people while the contest is going on.

You can go to the Walmart webpage and enter your invention up until February 22, 2012. If you win the contest you will get your product on the shelf at all the Walmarts throughout the country.

You can get your friends and family to vote for you and hopefully your great idea will get on the shelf at Walmart and you can be on your way to becoming a successful profitable entrepreneur with a new invention.

I think it's a great opportunity for inventors to get out there with their great ideas. Hopefully you're the next new inventor and your product is sold at all the Walmart stores. Good luck.

• Email This
• Print
• Comments

According to the United States Patent and Trademark Office “Performance and Accountability Report of Fiscal Year 2011” the USPTO granted an all-time high 244,430 United States utility patents in 2011.

Asian companies hold eight of the top 10 spots on the 2011 patent list and 25 or half of the top 50 U.S. patent-grant recipients with U.S. firms having17 spots. Asian countries represented in the top 50 include Japan, South Korea and Taiwan.

Most of the companies in the Top 50 were up from 2010, many shattering records and posting double-digit percentage gains.

IBM has held down the #1 patent rankings position for 19 consecutive years, with a record 6,180 patents in 2011, up from 5,896 in 2010. IBM was the first company to break 5,000-patent in a single year in 2010 and in 2011 the first to break the 6,000-patent mark in a single year.

IBM’s 2011 patent total was almost five times as many as Hewlett-Packard’s 1308 and exceeded the combined issuances of Microsoft, Hewlett-Packard, Oracle, EMC, Apple and Google.

More than 8,000 inventors residing in 46 different U.S. states and 36 countries generated the IBM's record-breaking 2011 patent tally. IBM inventors residing outside the United States were responsible for 26% of the company's 2011 patents.

Although in terms of patent grants, IBM has been No. 1 for the lat 19 years, Samsung's published applications eclipsed those of IBM in the last two years... so is the "writing on the wall" that the 19 year streak will end in the next couple years?

List of the top 10 company's to receive a US patent in 2011:

1. International Business Machines (US) 6180
2. Samsung (Korea) 4894
3. Canon K K (Japan) 2821
4. Panasonic Corp (Japan) 2559
5. Toshiba (Japan) 2483
6. Microsoft Corp Corporation (US) 2311
7. Sony Corporation (Japan) 2286
8. Seiko Epson Corp (Japan) 1533
9. Hon Hai Precision Industry Co. Ltd (Taiwan) 1514
10. Hitachi (Japan) 1465

Where are the most inventors with patents coming from in the U.S.? The inventors come from every state and all of the territories. In 2011, the top five states that led the list in numbers of patents were:

1. California 30,397
2. Texas 8,054
3. New York 8,026
4. Washington 5,227
5. Massachusetts 5,003

According to the "Performance and Accountability Report of 2011" of the 244,430 patents that were issued a little bit less than half (120,178) were issued to United States citizens. The remaining 124,252 issued patents went to citizens of a foreign country.

• Email This
• Print
• Comments

Even though a jury ruled that the software that runs the famous Facebook site infringed on the patent of Leader Technologies, Facebook still won the case. The reply appeal brief was just filed last month.

I think the issues in this case are relevant for all inventors. Inventors should be aware that disclosure of their invention prior to filing a patent application could invalidate the patent after it is allowed.

If you are an inventor and you have an idea and you want to "get it out there" into the market, you better file a patent application less than one year after you offer it for sale, publish it anywhere or use it in public.

On November 19, 2008, Leader filed a patent infringement suit against Facebook alleging infringement of United States Patent No. 7,139,761 (Leader Technologies, Inc. v. Facebook, Inc., (D.Del. 2008). Fed. Cir. Case No. 2011-1366). On July 28, 2010, the jury rendered a verdict that Facebook infringed all of the asserted patent claims and that the claims were neither anticipated nor obvious in light of the prior art. But the jury also ruled that even though Facebook directly and literally infringed on the patent...the patent was invalid because of 102(b) disclosures.

A patent is invalid under 35 U.S.C. § 102(b) if the patentee publicly used or offered for sale a product that embodied the patented invention more than one year before filing the patent application.

The jury found the patent invalid on the theory that Leader had publicly used the patented invention and offered it for sale more than one year before filing the patent application.

Leader Technologies is an innovative software company based in Columbus, Ohio. Chairman and founder Michael McKibben created Leader in 1997 with the goal of using "the internet as a platform for doing large scale communications and collaboration."

At that time, the internet was in its infancy, with the number of users measured in the mere millions. Leader recognized the untapped potential of the internet-"an unclaimed market space"-and moved to enter that marketplace.

Leader won the part of the trial that most people would think would be the most important: Leader won on "literal infringement" of 11 of 11 patent claims and no published prior art regarding Leader's U.S. Patent No. 7,139,761 (PDF).

In other words, the engine running Facebook is Leader's invention. But Facebook won because of a statutory bar called "on sale bar and public disclosure."

The case is now on appeal to the Federal Circuit Court of Appeals in Washington, D.C. The appeal briefs have been filed and a date for oral argument is going to be set. The Leader brief (PDF) argues that Facebook had no evidence of sale/public disclosure and confused the jury with court room theatrics. The Facebook brief (PDF) argues their evidence was "substantial."

It is pretty unbelievable that this case has not gotten more publicity.

The case raises many questions:

• Could  Mark Zuckerberg have invented Facebook in "one or two weeks" while studying for finals?
• Is it just a coincidence that Leader inventor's son Max was in the dorm next to Zuck?
• Could Zuckerberg have hacked into the inventor's son's Harvard email account that described McKibben's invention which Zuck just mimicked and launched a month later?
• Is there evidence that Facebook had to wait until the Leader patent published in the summer of 2004 to add the "groups functionality" in Facebook because they couldn't figure out how to do it without the patent?

But none of the questions of who invented really matter now because of the statutory bar. Perhaps Leader can overturn the jury's decision. The blog "Origin of Facebook's Technology?" breaks down the appeal briefs and points out all the weaknesses in the Facebook arguments. Perhaps the blog is a little one-sided, I wonder what the agenda is? But who knows what's going happen in this case.

The lesson every inventor should take away from this case is: file your patent application as soon as possible.

• Email This
• Print
• Comments (2)

The United States Patent and Trademark Office released its "Performance and Accountability Report" and one thing is obvious from the report is that the number of patent applications filed in the United States is going up. 

Record numbers of United States inventors and businesses find it more important than ever to protect their intellectual property by filing a patent application.

Here's a table from the report that shows the number of patent applications that were filed every year since 2007 has gone up.

So, over 500,000 new patent applications were filed in 2011. As much as the patent office wants to become more efficient the number of patents filed each year keeps the 6,664 patent examiners very busy.

With this great number of applications filed, the patent office discusses its goals and difficulties in trying to achieve a more efficient way to keep up with the huge numbers of patents filed every day in the United States.

In the report it is stated that the patent office has

"undertaken a series of initiatives to improve the speed and quality of patent processing in an ongoing effort to further strengthen the examination capacity of the USPTO."

For the first time in several years, the number of patent applications awaiting first action has fallen below 700,000. Even so doesn't a backlog of 671,409 seem like a pretty big number to you? Well it is, and even if the number of pending applications is much lower than it has been in the past, it still takes over two years for a new patent application to be looked at for the first time.

• Email This
• Print
• Comments

Last year I interviewed professional patent searcher Martin E. Keller after he sent me his 2011 patent calendar. Each month on the calendar is accompanied by a drawing of a funny device described in a US patent.

This year I received a PDF version of the calendar which I share with you here. It is entitled "The 2012 Keller Patents Top Twelve Calendar." Martin indicates in his calendar he has

"conducted a few thousand patent searches in (his) career, starting in the “paper only” days - all the way up to the present EAST system. Everything from simple mechanical and electrical novelty searches to validity and infringement studies.

In the 2012 calendar Keller shares some fun patents with us. Here are a couple drawings I pulled off the patent calendar that you might find interesting.

One patent describes how to save the lives of airplane passengers in a disabled airplane by separating the passenger compartment from the fuselage of the airplane. It's kind of like the idea of the saucer section of the Starship Enterprise separating in an emergency.

I'm sure it would have been valuable in the 911 terrorist attacks. But who would decide when to deploy the parachute's? The captain or the stewardess.

And if there were hijackers aboard and have taken over the captain's cabin should the stewardesses be able to do it on their own? And I'm sure it would not be the best ride in the world. 

What about these wheels on this guy's feet. This invention was from the 1980s. I am an ice skater but I I wonder if I could wear these. Of course the prototype probably has a lot of kinks to work out of it.

How about this motorized traveling case scooter. It appears that it's probably so heavy it needs to be wheeled. But this was made in 1967. Before anybody used suitcases with wheels.

Too bad for him he didn't try to sell the  suitcase with wheels.

He might have been much more successful. You remember that in 1967 a suitcase didn't have wheels. Now you can't find a suitcase without wheels.

What about this gasoline powered blender PDF? There's a  Nissan commercial that leads a new ad campaign that asks "What if everything ran on gas?" This guy certainly wasn't thinking green. 

How about this bicycle fan from 1890. Seems like a good idea to me. Wouldn't you want this on a hot summer day? I wonder why some of these inventions never took off?

Download "The 2012 Keller Patents Top Twelve Calendar (PDF) and take a look at all the rest of the interesting patents that Martin found for our enjoyment. 

Thanks Martin for the calendar. Here's Martin's contact information:

Martin E. Keller
Professional Patent Searcher
1940 Duke St., Suite 200
Alexandria, VA 22314
T:703-624-0310
F:703-636-7700
e-mail: kellerpatents@gmail.com

• Email This
• Print
• Comments (2)

Steve Jobs revolutionized our world through his inventions. There are very few inventors in the world that give us devices that change the way we live. There are not many households in the world that don't have some form of technology created by Apple.

My house is littered with almost every generation of iPod, the iPad I and II, Apple TV and a couple laptops made by Apple. I remember my first computer was a Mac in the early 1980s.

Steve Jobs co-founder of Apple passed away at the young age of 56. It makes me consider my mortality. You can have everything in the world but you can't control your time here.

We all live on the edge of life and death every minute but no one ever considers that death is going to take them away right now. So I try to remind myself to live my life now.

Inventors attempt to come up with ideas to change the world but there are very few people that actually do it.

Steve jobs and Apple revolutionized our world through the electronic devices he and his company invented.

The personal computer. In 1976 the Apple I was one of the first rudimentary computers made available for computer enthusiasts at the cost of $666.66.

Throughout the next 40 years the Apple personal computer evolved to a point where everyone could interact with the computer in our own language in a seamless iconic way.

The iPod forever changed the way we listen to music. It's iconic commercials of a young person listening to music with the earphone buds and long wire swinging to the music changed the music industry.

The iPad forever changed the way we interact with apps and the endless store of information on the Internet.

I would guess this is just the precursor of screens attached to walls and other devices that we swipe and tap with our fingers to manipulate the electronic images and music and remote control of virtually all electronic devices.

The iPhone the most popular smart phone in the world forever changed the way we communicate with each other. 

Steve Jobs has been compared to Edison, da Vinci and all the great inventors of all time and I agree he certainly deserves to go down in history as an iconic figure that changed the world forever.

• Email This
• Print
• Comments (3)

The Patent Reform Bill that everybody has been waiting for has been signed into law. President Obama visited Thomas Jefferson High School For Science and Technology in Alexandria, Virginia, and signed the American Invents Act into law.

This bill changes the United States patent system from a "first to invent" system with a "first inventor to file" system. So now the race is on to the patent office.

In addition the new law enables the patent office to retain the necessary funds to employ a staff of patent examiners that can reduce the backlog of patents in the patent office.

Currently close to 1.2 million patent applications are pending in the United States Patent and Trademark Office and 700,000 of those have yet to even been looked at, and there are only about 6,000 patent examiners.

Because of this backlog a patent application can take up to 3 years from the time that it is filed to be approved. It is believed that if the patents were granted sooner the technology could generate more jobs and create more products that can help society in general.

Whether or not granting a patent sooner will translate into jobs and a better America only time will tell. President Obama thinks It will and when he signed the bill into law he said:

"Somewhere in that stack of applications could be the next technological breakthrough, the next miracle drug," "We should be making it easier and faster to turn new ideas into jobs."

                                                                                                        President Barack Obama
 

Here is a video of the president actually signing the bill into law at Thomas Jefferson high school:

• Email This
• Print
• Comments (1)

The Leahy-Smith "America Invents Act" H.R. 1249, was passed by the U.S. Senate on September 8, 2011 and because the House of Representatives passed identical legislation on June 23, the bill will go directly to President Barack Obama to be signed into law.

Senator Patrick Leahy (D-Vt.),Chairman, Senate Judiciary Committee, commented on the final passage of "The Leahy-Smith America Invents Act",

“The America Invents Act is a true jobs bill at a time when we need it the most. After six long years of debate spanning three Congresses and two administrations, it is finally set to become law. This is bipartisan, commonsense legislation that will spur the innovation that drives the American economy.”

Prior to the final vote, the Senate voted to reject or table all amendments, avoiding the need to send the bill back to the House for consideration. This vote means that the final text of the new law is that found in H.R. 1249 as passed by the House on June 23, 2011.

The Leahy-Smith America Invents Act makes the most sweeping changes to U.S. patent law in many decades. Here is a checklist of a few key changes:

1. Establishing a first-to-file system,
2. Eliminating the ability for anyone to file False marking lawsuit;
3. Filing by other than inventor for corporations to file Oath and declaration;
4. Eliminating the Best mode requirement;
5. Eliminating interference proceedings,
6. Expanding prior user rights as a defense to infringement, and
7. Creating new USPTO proceedings for post-grant review.

While many provisions of the law will not take effect for at least one year after the date of enactment, several key provisions have an immediate effect:

Immediate Provisions of the Leahy-Smith America Invents Act

The effective date of the law will be at the end of the 1-year period beginning on the date of the enactment of the Act (once President Obama signs the bill ) and shall apply to any patent issued on or after that date, however the following provisions will take immediate effect and are applicable to pending proceedings:

• False Marking

Changes to 35 U.S.C. § 292 will eliminate qui tam actions for false marking suits. Under the new law, only the U.S. government can sue for statutory damages, although persons who have suffered a "competitive injury" from false marking can bring a civil action for damages "adequate to compensate for the injury."

The new law also provides that marking with an expired patent is not a violation of the statute. This means that virtually all pending false marking suits will need to be dismissed once the law is enacted.

• Defense to infringement

A defense can be raised in a patent infringement case based on prior commercial use if the commercial use that would otherwise infringe a claimed invention occurred one year before the filing date of the application of the patent. This will only apply to new patents from the date of the enactment. 35 U.S.C. § 273

• Joinder of Defendant

The new law will limit the circumstances for joinder of defendants in patent infringement cases.35 U.S.C. § 299

• Best mode no longer a Defense

A failure to describe the "best mode" to make or use the invention in a patent application will not be a basis for invalidating a patent or ruling a patent unenforceable. 35 U.S.C. 282(3). This will be applicable to new cases only.

• Reexamination

For new requests for reexamination, the standard for reexamination will change from "a substantial new question of patentability" to "a reasonable likelihood that the requestor would prevail" with respect to at least one of the challenged claims

For pending or subsequent Board appeal in an ex parte reexamination proceeding, such Board decisions may be appealed only to the Federal Circuit, not a district court.

• Patent Application

For pending applications, patents will not be granted to "tax strategy patents" or to claims encompassing human organisms.

Effective 10 days after enactment:

• Fees raised: a 15-percent surcharge will be added to all patent-related fees, including patent maintenance fees.
• The USPTO will be authorized to proceed with its "Track I" program for fee-based prioritized examination, and to charge a $4,800 fee for large entities ($2,400 for small entities).

Effective in 1 year after enactment:

New Post-Grant Review Procedures

The Act creates two different procedures for third-party initiated post-grant review:

• Post-Grant Review:

Under a new Chapter 32 (35 U.S.C. § 321. Post-grant review), there will be a nine-month window for challenging a patent on any ground, including 35 U.S.C. § 112. Chapter 32 takes effect in one year.

• Inter Partes Review:

Under a new Chapter 31, patents can be challenged on the basis of patents or printed publications only, after the window for post-grant review has passed. Chapter 31 takes effect in one year. Review may be granted upon a showing that the petitioner has a reasonable likelihood in prevailing that at least one of the challenged claims is patentable.

• First-to-File Provisions

Changes to 35 U.S.C. § 102 is the attempt to bring the United States closer to the rest of the world and a first-to-file system. It makes it more important to file an application as soon as possible.

As the law exists now there is a one-year grace period for any publication, sale or use in public of the product. But the new law will only retain a limited one-year grace period for filing an application after a public disclosure made by the inventor or somehow through the inventor. If the disclosure was made from somebody other than the inventor then the inventor will not be able to get a patent. The new version of § 102 will apply to applications with priority claims that fall 18 months after the date of enactment.

• Derivation Proceedings

Changes to 35 U.S.C. § 135 will add derivation proceedings to replace current interference proceedings. Derivation proceedings determine whether the inventor named in an earlier-filed application derived the claimed invention from the inventor named in a later-filed application without authorization.

A Derivation petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim.

Derivation proceedings will apply to applications with priority claims that fall 18 months after the date of enactment. Interference proceedings will continue to be available to earlier applications under the "old" version of § 135.

USPTO practice changes

• Fee Setting Authority.

The USPTO has authority to adjust fees to "in the aggregate" recover the estimated costs of its activities.

• Prioritized examination.

Prioritized examination of a nonprovisional application for an original utility or plant patent can be obtained for technologies important to American competitiveness. This has a hefty $4800 fee.

• Additional USPTO facilities.

Establishes additional USPTO satellite offices.

• Third-party submission of prior art.

Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application.

• Pro Bono Program

The Director shall work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.

• Email This
• Print
• Comments

Ronald L. Docie Sr is the president of Docie Development, LLC, an international company that provides services for inventors and corporations. His inventions are featured in Wal-Mart, Kmart and thousands of other distribution channels.

As an agent for inventors, Docie has negotiated license deals with many companies including General Motors, and he’s a consultant to Johnson & Johnson on idea submission.

When I first started blogging about two years ago I wrote a book review for the book "The Inventor's" Bible by Ronald L. Docie Sr. and a couple of months ago Ron found me on the Internet and contacted and thanked me for writing the book review.

When I spoke with him I found out what a gentleman he was and he agreed to answer some questions for this interview. And here are the questions and answers:

Ron can you tell me a little bit about yourself?

I am involved in four different entities, all which help inventors:

• Docie Marketing,
• Docie Development,
• DIMWIT - Self Help for Inventors, and i
• nventorinsider.com.

Docie Marketing performs market research for inventors to help them identify markets, potential licensees, manufacturers, and the market potential for their invention. This is a fee based service.

Docie Development is a commission based service and it works with inventors to seek potential licensing agreements from manufacturers.

What type of company is DIMWIT?

DIMWIT - Self Help for Inventors, has a lot of free information for inventors about how to go through the patent process, the confidential disclosure process and lots of articles and tips for inventors to help them throughout the commercialization process.

How does your company help inventors help themselves?

Inventorinsider.com has a free downloadable e-book that I created to help inventors better understand the invention commercialization process from start to finish. More importantly, it helps inventors to understand the difference between scam artists that are trying to rip off inventors, and legitimate invention companies.

The precursor to this work is from a grant that I received from the US Department of Energy, Inventors Initiative Program to help inventors understand the difference between the good guys and the bad guys with respect to invention service providers. Sadly, there are still more bad guys out there taking money from inventors than there are good and this is a situation that will probably remain. Therefore, it is very important to understand the lay of the land before dumping lots of money into your invention.

Do you have a checklist of things an inventor needs to do once they've come up with an idea?

The Inventor’s Bible; How to Market and License Your Brilliant Ideas, is in its third edition and is a book that I wrote that is a complete how-to get through the invention commercialization process and is available at Amazon, Barnes and Noble, local bookstores, and all three editions are in the reference section of every US Patent Office, Patent Depository Library in the US and its possessions.

There is also a Kindle edition that’s the third edition of the Inventor’s Bible along with a workbook that take an inventor step by step through the process of finding and prequalifying appropriate manufacturers and potential licensees.

Contained in these writings are a checklist of things that inventors should do and the order that they should do them in. This checklist is in the appendix of all three editions of the Inventor’s Bible.

What are the most important things an inventor needs to know?

The most important thing an inventor needs to know is that the world has existed this long without their invention and will continue to exist for quite sometime without it. Most inventions are incremental improvements and not life necessities. Therefore, they fall within a pecking order of millions of other inventions, all which are trying to get the attention of the buying consumer. Obviously only a choice few of these are going to make it to the retail shelf.

Those that make it are not necessarily the most beneficial for mankind, however, they are the products that the consumer wishes to purchase. As such, there is not necessarily a direct relationship between the invention’s benefit to mankind, and its ability to create sales.

This is a very frustrating phenomenon because most of my clients know that they have invented something of great benefit to mankind, and yet while their invention collects dust, they see plastic crap selling like hotcakes.

How does your company compare with a “Patent/invention Submission” company? What knowledge have you gained based upon your first-hand experience with these types of companies?

My company operates under the philosophy that an inventor should spend no more time or money than is necessary to find out that the invention is not worth pursuing. Since we know that 1 in 100 or 1 in 1000 inventions ever succeed commercially, the remaining 99 or 999 would be remiss to not realize sooner, rather than later, that they are indeed part of the majority.

For this reason, I have designed a tiered-risk program that takes inventors through the step by step process in a manner where they lay out the least amount of money initially and if the invention continues to make it through the various stages, then all the ingredients are there to also have it be a commercial success. Therefore, the process is a win win regardless of which the direction takes.

How bad are the odds stacked against an independent inventor?

How bad are the odds stacked against an independent inventor? Pretty damn bad.

Do you have any ideas for patent reform that could help the independent inventor?

I really have no ideas regarding patent reform that could help the independent inventor. The patent office is a big animal and is probably doing as well as it can under the circumstances.

Can an inventor get a license for a new product without Patent protection?

An inventor certainly can receive money from their invention without patent protection. In certain fields such as housewares and others, designers are paid royalties not unlike an inventor would be paid a royalty. Instead, the designer is being paid for the ornamental design feature that may even be covered under a copyright, trade dress or simply a design patent.

I have received royalties based on my design improvements because those designs were favored more by the consumer and I realized this through doing independent market research that no one else had done. This was of sufficient value to the companies that they agreed to pay for these design improvements. I happened to have a patent to cover a part of that invention; however the patent did not cover my design improvements so the patent really didn’t totally enter into the equation.

Patents are a tool and you have to look at them as such. Most people think they have patent “protection” when in fact they do not because very few patents are so tight that they cannot be designed around by someone who would come out with a similar product without infringing your patent.

Rarely do you have a slam dunk patent where a person can simply rely on their patent rights and everyone flocks to their door. The odds of this are probably more like 1 in 100,000 or more. Even so, the patent may be of value because it may help to influence a company to pay you to use its rights. These situations vary drastically depending on the product category, the companies involved, and your individual situation.

Can you work a deal with a nondisclosure agreement?

Deals can be negotiated with only a non-disclosure agreement in place, and I have used non-disclosure agreements, or confidential disclosure agreements, to help control circumstances so that I could influence companies to pay a royalty or commission when they otherwise may not.

There are several factors that need to be taken into consideration, however, such as whether the non-disclosure agreement also contains a non-compete clause so it can survive after the public disclosure of the invention and other technical issues to numerous to cover here. However, in today’s world of consolidation of big box retail stores and the consolidation of manufacturers, inventors largely do not have choice with respect to the signing of a non-disclosure agreement.

Many, if not most, Fortune 100 companies will demand that you sign their disclosure agreement which is a non-confidential disclosure agreement, or rely strictly on your US patent rights in order to even submit the invention to them. I am seeing a trend towards this.

On the flip side, there is also a growing number of companies who are so disenchanted about the patent process that they simply invite inventors to submit the invention, and if they use the invention they will pay the inventor a royalty such as 3% or 5% with a standard royalty agreement.

They typically will not sign any type of disclosure or confidentiality agreement, period. This is because these companies find that many inventions last for just a short time on the market, less than the amount of time it would take to have a patent issued. Therefore, they don’t even bother with the patenting expense.

Also, these companies realize that with the average cost per side in a patent infringement case being over a million dollars, many small to medium size companies have products that would even justify pursuing any type of legal action. In most cases it would be more cost effective to simply drop the item from the line and keep on going with the other thousand or ten thousand items that they may have in their product line. An inventor needs to keep these things in perspective when they are getting too overly concerned about disclosure agreements and patents.

Further, some of the companies that are willing to sign disclosure agreements for inventors have a record of not working with outside inventors at all. They simply take whatever information they can glean from your invention submission and use it to the extent they want to without infringing the patent.

Then you have these other companies that will not sign disclosure agreements what-so-ever, and yet they have a rich, positive track record of paying outside inventors. Therefore, using a disclosure agreement as a means of qualifying a company is not always the best indicator.

What type of industries are the hardest/easiest for inventors to break into?

The ability for an inventor to break into an industry is different from industry to industry. I think industries that involve retail consumer products tend to be a bit easier because the proof is on the retailer’s shelf and there is a well-oiled machine for getting product there. It is a matter of just selecting the right company to help get you there.

There are also plenty of companies that are willing to pay inventors in the retail industry. In those industries involving medical products, industrial products, and others that require a great deal of initial time and investment,

I believe there is more chance for a ‘slip between the cup and lip’, and as such it may be harder for the inventor to navigate in those industries, especially since more upfront investment is required before any company knows whether the product will be commercially successful.

Yet, with that being said, if an inventor is knowledgeable in their industry and has conceived a unique product or technology that is desired by those in the industry, it would not be uncommon for a company to pick up that invention and run with it. This would be a very streamline path for the inventor. So, there are exceptions to every rule.

Can you help a small or medium sized companies with new innovation?

The process of helping inventors, or helping companies to commercialize innovative products, particularly through licensing, is a very similar process regardless of the size of the company or the type of customer. The way licensing departments operate in Fortune 100 companies is, in principle, not unlike the way I operate for independent inventors.

If a large company wants to license out the technology or intellectual property t another company, it must go through steps to identify those companies that hold the market position for the part category, they need to determine the potential value of an invention, and they need develop the terms of a licensing agreement. The terms and principles are similar, the number of zeros behind the final figure changes.

I noticed on your website that you advertise the Patent Wizard, are you associated with that company?

I don’t make any money from the Patent Wizard software that is advertised on my website and I am not associated with that company. Michael Neustel, a patent attorney from Fargo, ND, created Patent Wizard as easy and convenient software for inventors to use to file a provisional patent application at very low cost.

Even then, I always suggest that the inventor have a patent attorney review the final patent application before submitting it to the patent office. I normally suggest that inventors work with a patent attorney or patent agent as they go through this process.

Knowing when to use patent attorneys and for which service is part of the key to making no more expenditures than are necessary at any given step. Docie Marketing helps inventors to understand which steps to take and when. The DIMWIT- Self Help for Inventors website also provides information about this, as does the Inventor’s Bible. The free ebook on www.inventorinsider.com is also a compendium of advice regarding steps to take.

Do you refer inventors to patent attorneys like myself?

I do refer inventors to patent attorneys all the time, however I try to avoid advising about specific patent attorneys because I think eventually the inventor needs to have the right chemistry with the patent attorney that they end up working with and this is something they need to determine for themselves.

Do you advise inventors to file a provisional patent application?

I am not an attorney and I do not give legal advice, nor do I give advice regarding patenting. However, I do give business advice as it relates to the patent strategy and how one might go about affecting such a strategy.

For example, lets say it is determined that an inventor wants to elect to not publish their patent after 18 months and keep their patent application secret for as long as possible while they go through development and pre-commercialization. In this case, they could potentially keep their invention a trade secret for five years or more.

In this case, they may want to extend the patent prosecution process as much as possible by not responding to the patent office until the last minute for every deadline that must be meant, filing a provisional application in anticipation of the utility application, filing continuations-in-part and any number of other strategic ploys that may be condoned by the clients patent attorney.

Therefore I work in concert with my clients patent attorneys to help develop a strategy that incorporates the best from both the business perspective and the patenting and legal perspective in order to have a wholistic strategic plan to provide the greatest and most secure benefit for the client. It takes very little extra effort and very little extra cash expenditure on behalf of the inventor in order to do it the right way, versus doing it the wrong way.

The bottom line is, with appropriate knowledge, all inventors can minimize their risk and increase opportunity for financial gain from their invention. Certainly it is best to obtain a wealth of knowledge from those people who have a depth of experience and effective results in this field.

That certainly is what the inventor should be seeking out, and not listening to the numerous flimflam artists who are only stroking the inventor’s ego in one breath and holding their hand out for heavy financial outlay at the next moment.

It is necessary for inventors to spend money at certain junctures whether it be for patent attorneys, invention brokers, prototype makers or any other number of legitimate services that the inventor should hire. The inventor just needs to be prudent in this process and not spend too much, too soon, and for the wrong things.

• Email This
• Print
• Comments

Today marks what would be the 93rd birthday of the inventor of Styrofoam, Otis Ray McIntire.

Inventor: Otis Ray McIntire

Born August 24, 1918 - Died February 2, 1996

Invention: Styrofoam Brand Foam: Patent #: 2,450,436

Inducted into the National Inventors Hall of Fame in 2008.

As with many great inventions, this one was developed partially by accident. McIntire worked for Dow Chemical Company during World War II, and part of his job was to design a material with the insulation properties of polystyrene that would be more rubber-like. In doing so, McIntire discovered that when he combined the polystyrene with isobutylene, bubbles of the latter formed in the polystyrene. This new foam was more flexible than polystyrene alone, as well as thirty times lighter!

While it was not quite the material that McIntire had hoped for, STYROFOAM was inexpensive to produce and also boasted moisture-resistance.

Since receiving its patent in 1944, STYROFOAM has been used in a variety of ways worldwide. It has become a primary brand of insulation for both homes and commercial buildings; STYROFOAM has proven to be effective in increasing energy efficiency as well as protecting against the elements.

But did you know that STYROFOAM has never been used to make coffee cups or coolers? The trademarked blue colored foam is formulated differently than the white foam that we typically associate with these products.

McIntire spent his entire career working for Dow Chemical. His positions included research director and director of technology. He retired in 1981.

• Email This
• Print
• Comments

The United States Patent and Trademark Office (USPTO)  issued US patent number 8,000,000 on August 16, 2011. I've been considering writing a blog post for the last month or so about who will receive United States patent number 8,000,000 and as it turns out on Friday, August 19th my law office received a patent that we wrote numbered 7,999,701 that was issued the same day number 8 million was issued. 

It was then that I realized how close we were to a truly milestone patent. It would have been pretty cool if we could have written the patent having the number 8,000,000.

But it was not to be because on August 16, 2011 the United States Patent and Trademark Office (USPTO)  issued patent number 8,000,000 to Second Sight Medical Products, Inc., for a visual prosthesis apparatus that enhances visual perception for people who have gone blind due to outer retinal degeneration. 

The invention uses electrical stimulation of the retina to produce the visual perception of patterns of light. The product - the Argus® II - is currently in U.S. clinical trials and has received marketing approval in Europe.

In his press release Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said

“The USPTO plays a major role in serving America’s innovators by granting the intellectual property rights they need to secure investment capital, build companies and bring their products and services to the global marketplace.”

But even though it was number 8,000,000 it wasn't really the 8 millionth patent. The first United States patent was issued, signed by George Washington himself, in 1790 to Samuel Hopkins for his invention of potash. But based on the current patent numbering system, US Patent No. 1 was granted to John Ruggles in 1836 for a type of train wheel.

So why is there a discrepancy between the first patent issued and patent number one? It is because when patents first began being issued in the United States, they did not receive a number. Now, they are referred to as the “X patents,” because they have since been assigned numbers, preceded by an ‘X,’ based on the order in which they were issued. In 1836, the system for patent applications was overhauled, and resulted in a new numbering system that started with the number 1. 

Here are a couple of milestone patents of interest posted by the USPTO:

It took 75 years after Patent No. 1 was issued, for US Patent No. 1,000,000 to issue to Francis Holton. It took less than six years to get from patent 7 million to patent 8 million.

Holton received his 1911 patent for an improved, more durable and puncture-resistant tire. Described as a pneumatic tire with solid material in its core, Holton’s tire was acclaimed by the New York Times as one of the “crying necessities of this modern world.”

On April 30th, 1935, the United States Patent Office celebrated another milestone: its 2,000,000th patent issued. On behalf of the Edward G. Budd Manufacturing Company, Joseph Ledwinka developed an improvement of the railway car in which a combination of a pneumatic tire and a rail wheel were used to enable the cars to safely travel at high speeds.

Ledwinka was not new to the world of patents; since 1899, he had been granted 247 others. The Edward G. Budd Manufacturing Company, which was a major player in the railway industry in the early and mid twentieth century, still exists today as ThyssenKrupp Budd.

• Email This
• Print
• Comments

Inventor Harry Coover
Born March 6, 1917 – Died March 26, 2011

Invention: Superglue

Patent Number 2,768,109 (PDF); Patent Issued October 23, 1956

Inducted to National Inventors Hall of Fame™ in 2004

Some of the most useful products in our daily lives were developed completely by accident— and among these is Superglue.

While working as a research chemist at Eastman Kodak during world war II, Coover worked with cyanocrylates in an effort to produce an optically clear plastic to use for precision gunsights.

These chemicals proved to be unsuited to this particular task, but Coover recognized their potential applications as an adhesive.

Originally called Eastman 910, so named for its ability to dry within ten seconds, we now know this substance as Super Glue or Krazy Glue.

This is the formula for polymerization of methyl-2-cyanoacrylate:

This discovery of cyanoacrylates, a class of chemicals with powerful adhesive properties, opened the door to a wide range of industrial, consumer, and medical applications.

Invention Impact

During the Vietnam war, field surgeons made dramatic use of cyanoacrylate by spraying it on potentially fatal wounds to stop bleeding instantly, thus allowing them to treat the wounds later in a conventional manner.

Cyanoacrylate adhesives are currently used for medical procedures such as performing sutureless surgery to rejoin veins and arteries, sealing punctures or lesions, and sealing bleeding ulcers.

Inventor Bio

Harry Coover was born in Newark, Delaware. He received his B.S. from Hobart College and his M.S. and Ph.D. from Cornell University.

Coover holds 460 patents is responsible for advances in the fields of graft polymerization, organophosphorus chemistry, and olefin polymerization.

Harry Coover's honors include:

• Southern Chemist Man of the Year Award for his accomplishments in individual innovation and creativity.
• The Earle B. Barnes Award for Leadership in Chemical Research Management,
• The Maurice Holland Award and was a medalist for the Industrial Research Institute.
• The National Medal of Technology and Innovation in 2010. 

Permission granted to copy photo and chemical formula under the terms of the GNU Free Documentation License.

 Posted with the permission of the  National Inventors Hall of Fame™

• Email This
• Print
• Comments

Eastman Kodak Company announced that it is "exploring strategic alternatives related to its digital imaging patent portfolios, a move reflecting the current heightened market demand for intellectual property."

Does this mean they're going to try to leverage their patent portfolio against other competitors in lawsuits? Can you say "patent troll"? Some people think that maybe they will be putting their patent portfolio up for sale to help their cash flow.

Does anybody still use film cameras? I can't remember the last time I printed up some of the pictures that I've taken with my digital camera. Because of dwindling film sales, Kodak has become more aggressive about licensing its patents.

Since 2008, it has generated almost $2 billion in licensing fees and royalties from intellectual-property battles, both in negotiations and the result of Patent infringement lawsuits.

Wednesday's announcement comes while Kodak is suing Apple Inc. and Research In Motion Ltd. (RIM), the maker of the BlackBerry phones, saying their phone camera features infringe on some of its patents.

The United States International Trade Commission (ITC) recently issued a favorable ruling in Kodak Patent Case against Apple and RIM. The ITC rejected a counterclaim by Apple that Kodak cameras infringe on Apple patents.

Eastman Kodak Co. (EK) shares have rebounded slightly as a result of this announcement and are currently selling for $2.50.

But today's price is close to Kodak's lowest level in more than 30 years.

Kodak’s portfolios include more than 1,100 U.S. patents pertaining to capturing, processing, storing, organizing, editing, and sharing digital images, as well as imaging monetization applications, which are fundamental to the digital imaging industry.

Those patents represent approximately 10% of Kodak’s patent portfolio. 

Kodak has retained Asset management firm Lazard LLC as its adviser in how to employ this new patent portfolio strategy.

“Given recent trends in the marketplace for intellectual property, we believe the time is right to explore smart, opportunistic alternatives for our digital imaging patent portfolios,” said Laura G. Quatela, Kodak’s General Counsel and a Senior Vice President of the company. "This effort reaffirms our commitment to the three pillars of our intellectual property strategy – design freedom, access to new markets and partnerships, and cash generation."

Kodak invented the digital camera and since then has pioneered many of the major advances in digital imaging devices, systems and services. The company’s portfolios of more than 1,100 digital imaging patents – plus foreign counterparts and related patent applications – comprise the world’s richest collection of imaging-related technology.

I wonder if they really want to sell 10% of their patent portfolio off or just use it as a weapon against all its competitors to start a series of patent infringement lawsuits?

• Email This
• Print
• Comments

On June 23, 2011, the House of Representatives overwhelmingly voted 304-117 to pass H.R. 1249, a bill sponsored by House Judiciary Committee Chairman Lamar Smith (R-Texas), also known as the America Invents Act, to overhaul to U.S. patent law so as to encourage innovation, job creation and economic growth.
 

“Today’s vote is a victory for America’s innovators and job creators who rely on our patent system to develop new products and grow their businesses. The America Invents Act is the most significant jobs creation bill passed by Congress this year. No longer will American inventors be forced to protect the technologies of today with the tools of the past. H.R. 1249 brings our patent system into the 21st century, reducing frivolous litigation while creating a faster and more efficient process for the approval of patents.                       Chairman Lamar Smith (R-Texas)

Much-needed reforms to our patent system are long overdue. The last major patent reform was nearly 60 years ago. Some of the changes the America Invents Act proposes:

• a first-inventor-to-file standard for patent approval,


• patent office keeps all the fees it generates,


• creates a post-grant review system to weed out bad patents, and


• helps the Patent and Trademark Office (PTO) address the backlog of patent applications.

The House of Representatives bill diverges from the Senate version of patent reform, so the bill will not go to the desk of President Obama just yet. Now the Senate will be asked to agree with the changes made by the House of Representatives, will this game of tag never end? It's amazing that any complex bill ever makes it into law. That's probably why this bill has been hanging around for what seems like forever.

I guess the big question is whether or not Senator Patrick Leahy (D-VT) and Congressman Lamar Smith (R-TX), the respective champions of the bills in the Senate and House will compromise on language that can pass both the House and the Senate.

There are so many divergent opinions and interest groups pushing for one side or the other it seems unlikely that it will happen anytime soon.

Upon passage of the America Invents Act in the House of Representatives David Kappos, Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office, issued the following statement:

We are encouraged by the statements of so many Members of Congress calling for the USPTO to have full access to all of its fee collections. We are particularly thankful to Chairman Rogers for his commitment to ensure that the USPTO has full access to its fees when fee collections exceed Congress’ annual appropriation for USPTO. Full funding of the USPTO is necessary for the USPTO to successfully implement this legislation and to more effectively perform its core mission.

We are hopeful that this critical legislation can move expeditiously toward final passage and enactment.

One major difference between the House and Senate bills is how they open the door to the overburdened patent office keeping all the fees it generates. All sides agree the office needs help given it faces a backlog of at least 700,000 applications and it takes on average three years to grant a patent.

The director certainly wishes the bill becomes law so that the USPTO can have full access to the mountain of money it collects for filing fees. Certainly if they could use that money to hire more examiners the backlog could be reduced. It's almost like the national debt! Even with reform is it possible they can ever reduce it to a manageable number?

There are more than 6000 patent examiners trying to stick their fingers in the holes of the dam. If the USPTO could hire many more examiners perhaps the backlog could be reduced to a reasonable number. What if patent applicants did not have to wait three years for approval? I guess the question is "if inventors didn't have to wait so long for their patents to be granted would that alone increase productivity, jobs and efficiency in society?" Can it be accomplished through patent reform?

• Email This
• Print
• Comments

Is patent reform really going to happen in June 2011? All indications are that the ongoing patent reform legislation–that has been bantered about for nearly 10 years and presented to lawmakers in five Congressional cycles–is going to be passed this month by the House of Representatives.

The US Senate passed its version of patent reform, S.23 the “America Invents Act,” in March by a wide margin of 95-5 and the House is expected to bring its version, H.R.1249 to the House floor and follow suit with a similar vote before the end of the month.

Tom Barkley, of the Dow Jones Newswires reported in an article published in the Wall Street Journal that

"Commerce Secretary Gary Locke said Wednesday he believes Congress is close to approving an overhaul of the patent system, dismissing a challenge by 50 lawmakers to the bill's constitutionality."

As I discussed in a few other blog posts this legislation will make many sweeping changes throughout the current patent law, however here are a couple noteworthy changes:

• a first-inventor-to-file standard for patent approval,
• a post-grant review system to weed out bad patents, and
• Addresses the Patent and Trademark Office (USPTO) problem with dealing with a huge backlog of patent applications. Over 700,000 pending patent applications as of today, June 4, 2011.

I believe the most important new change in the current law will be that first person to file a new patent application will take priority over inventors who may have invented the product first. So more than ever, there will be a race to the patent office. It would be advisable for inventors to consider filing patent applications as soon as possible.

Corporations and independent inventors alike should be able to Identify new inventions, draft invention disclosures and prepare and file patent applications soon after conception to avoid losing the race to the patent office.

• Email This
• Print
• Comments (1)

The Invention of Everything Else, by Samantha Hunt

LoTempio Law Blog Book Review

About the book 

The Invention of Everything Else brings us back to the early 1940's, when Nikola Tesla was living out his final years on this planet in room 3327 in the Hotel New Yorker.Tesla was arguably one of the greatest inventors of all time.

The story is set around a fictitious relationship between eighty-six-year-old Tesla and twenty-four-year-old Louisa, a chambermaid who cleans his room in the Hotel New Yorker. 

Louisa becomes obsessed with Tesla, his life and his inventions, and the two are drawn into a platonic friendship after discovering a mutual interest in homing pigeons.

Louisa is also a part of another sub-story involving her widowed father, a family friend who claims to have invented a time machine, and a mysterious young man who may have come from the future.

Tesla is touted as the father of the radio, wireless communication, X-ray, AC motor, and a host of other real and improbable innovations.

The book is a historical fiction and reports on his acrimonious relationship with Thomas Edison, his failed business ventures with George Westinghouse and his ability talk to pigeons.

My review of the book

I like the book because it includes a detailed account of the life of Tesla, his genius, his phobias,  and of his course inventions. I often tell inventors “a good idea does not sell itself,” it is not like a lottery ticket.. you win millions because you got the winning number. Tesla is proof of that. Although he made money he died penniless. As smart as he was, he never figured out how to commercialize his inventions.

The book takes us into his life, his thoughts, his “science fiction” inventions, his friendship with Mark Twain, and his belief that he could photograph thought. 

The writing style is eclectic, and the story is sometimes hard to follow. He has conversations with the pigeons and the deceased Mark Twain so you have to open your mind to believe that impossible is possible.

The story goes in all different directions, but the vivid descriptions of the architecture, social structure and the way of life in early twentieth century New York City make for fun and fascinating reading.

By the end of the book you really admire, like and feel sorry for Nikola Tesla and wish his inventions would all come true. I wish there was someone that was trustworthy and business savvy that could of handled his finances and acted as his agent. If money wasn’t an issue, maybe the world today would be a much different place because he invented everything else.

Here is my favorite excerpt from the book:

"The new device that does everything. It is a possibility device that does every last thing that you could ever conceive of, if time were not finite, if there were no end of invention, no end to living or at least no end to Nikola Tesla. The invention of everything else."

What are some of the things you would invent:

• picture telephone
• magnetic surgery
• wireless printing press
• teleportation
• perpetual motion
• immortality

I alone know best that the world will be lost without you once you are gone.

About the Author

The author, Samantha Hunt, received a National Book Foundation award for authors under 35, for her previous novel, The Seas. The Invention of Everything Else was shortlisted for an award from Believer magazine and shortlisted for the Orange Prize.

• Email This
• Print
• Comments

Happy Easter to all! I can still picture in my mind my mother boiling the eggs and preparing the Easter egg coloring kit and that unique vinegar smell that came along with that coloring process. And I can recall the excitement we all felt knowing that soon we all would receive a chocolate Easter bunny almost as big as us.

I wonder who was the first person to color an Easter egg? According to Wikipedia® "The egg is a symbol of the rebirth of the Earth in celebrations of spring and was adopted by early Christians as a symbol of the resurrection of Jesus."

I'm not sure who was first but I found a patent issued in 1890 for an Easter egg. I guess people have been marking eggs for a long time.

In my search I located a couple of Easter baskets from the early 20th century and a couple mechanical Easter toys.

I thought it might be interesting to share those with the readers. It appears that there is an invention and a registered patent for every occasion.

My search led me to many utility patents and design patents. At Thanksgiving I wrote a blog post regarding the difference between a utility and a design patent.

As you know the two are defined as follows:

• Utility Patents: For any process, machine, composition of matter or manufacture
• Design Patents: For any original and ornamental design for an article of manufacture

Here are a couple examples of Easter design and utility patents. Happy Easter everyone! If you click on any of these drawings it will lead you to a .PDF of the actual patent.                                                                                                                                                                 

• Email This
• Print
• Comments

Inventors often come to my office looking for help to not only protect their intellectual property by filing a patent application, but to get help to sell their idea to a big company.

I often ask inventors that come to me why do invention submission companies charge you if your idea is so good? Why don’t they represent you on a contingency basis? Well that's exactly what Lambert and Lambert does.

So I figured I would reach out to Trevor Lambert founder and owner of Lambert & Lambert and ask him a few questions about his company.

What type of company is Lambert and Lambert?

Lambert & Lambert is a company directed at licensing inventions. At its basics, licensing is the selling of intellectual property to a person or business that wishes to produce it for a profit. The intellectual property could be a patent, copyright, or an idea.

We charge an initial evaluation fee to perform an analysis of the product. If the product passes the test in the analysis we work on a contingency basis and only get paid if the product makes money.

We employ attorneys, engineers, and those with expertise in market research, marketing and promotion, video production, drafting, CAD, industrial design, prototyping, and manufacturing. The only time that we get paid is when the product sales generate royalties from a licensing agreement. From that point our share of licensing revenue is 25-30% and so the inventor’s share is 70-75%.

How did your company start?

I had an invention idea and I approached an invention submission company and was appalled about how I was treated and the success rate that existed. And so I started working on my own product myself. And that’s sort of how Lambert and Lambert came about. At first we reached out to independent inventors, and now our business has grown to where we represent, inventors and small to medium-sized companies.

Recently we have been doing product portfolio management for consumer product companies. Patent attorneys call it “portfolio mining” but we are not necessarily doing it on an IP level but on a product level. We look for products that are under performing and might have some licensability and where the product may have some life in the infomercial world or we will explore if there are other ways to create new revenue streams for those products.

So your company must play a different role for different clientele?

Our clientele ranges, some are inventors, some are independent product developers, and some are small companies. So it varies whether the development is done prior to getting to us, so sometimes it is more downstream and we don't really need to go through all the steps of designing everything.

So every deal can be different where you may have an independent inventor bringing the concept and nothing else is in place and we can step forward and help out with the design work or design company with all the manufacturing in place and we step in and act as a licensing partner.

Can you get a license for a new product without Patent protection?

Well that's tricky because without a patent there is no IP and nothing is stopping the competition from copying your products.  Every product on the market doesn't have IP behind it. It often isn't licensed or even patented for that matter. A lot of times the patent is expired or sometimes even perhaps like in the toy industry they don't even bother to try to get IP.

Sometime being  “first to the market”  is more important because life cycles are so short it doesn't really even matter if you have a patent because it might only go for one or two Christmas seasons and that's it. Being  “first to the market” from a marketing perspective is super important, generally first to market captures 60 to 70% of the market share… so that is a big deal.

If I have a good relationship with a company they may pay a royalty for something that has expired patents or no patents or no hope of getting a patent. But you are not going to get the best royalty in that circumstance.  However, this is fraught with complexities and potential pitfalls, so I wouldn't recommend this to an inventor.

If an inventor isn't able to pay for the utility filing, I would suggestion a provisional application for patent and begin gauging interest from companies well positioned in the industry to see if filing the utility will be a good investment.

Can you work a deal with a nondisclosure agreement?

We seek to have companies sign nondisclosure agreements, yet that isn't always possible.You can ask them to sign a nondisclosure agreement but a larger more sophisticated company will have their own disclosure agreement that they'd want you to sign. Generally they won't sign your NDA. That is just one of the realities of pitching products to the bigger companies. They have teams of lawyers to protect them, which is understandable.If the company is not willing to sign an NDA, we need to be careful on what we divulge or simply need to move on to a different company.

What is so hard about working in the toy industry?

The toy industry is an industry unto itself when it comes to licensing. You generally need to be an approved agency to work with the companies like to Mattell or Hasbro. The requirements that they have can be different for any given product. Again the toy industry is a tricky one.

What type of industries do you work with?

The industries I work in are primarily the consumer markets like, house ware and automotive, anything that could be sold at a Home Depot, Lowes, WalMart and Target. In order to get a license agreement in those industries you will generally need to have a patent.

Do you ever work with small or medium sized companies with new innovation?

Yes we do because small and medium-sized companies usually don't have a research and development department. They don't have engineers on staff because it's pretty hard to include engineers on your staff when you only have a couple dozen products. So we become an outsourced service to handle a specific function for the company.

We work Licensing deals with small companies as well, for example a small outfit might have a limited product line selling through a couple retailers, but because they have an established line through the retailers they can be a potential licensee. This type of medium company could be just what a product needs because they can give it that love the product requires, where a large company might see it as only one line in its 4000 product line.

What if a client comes to you and already has a deal on the table?

Ordinarily we work on a strictly contingency basis but sometimes we negotiate a deal with the other party we can also work on an hourly basis or at a lower percentage on the contingency fee.

Every product is different. Every deal is different. It has to get our attention to make us believe that we can license it. If it is too nitchy or not really innovative then it's not something we will take on.

I noticed on your website that you go through a 16 point Marketability analysis to determine whether or not you will try to license an idea?

We examine an invention based on criteria that are essential in the success of a product in both marketability and "licensability."

Marketability Analysis:

1.  Legality
2.  Safety
3.  Impact on society
4.  Invention's performance
5.  Profitability
6.  Market demand and size of market
7.  Product-line potential
8.  Manufacturing feasibility
9.  Quantity of competition and related products
10.  Quality of competition and related products
11.  Competitive advantages and disadvantages
12.  Consumer appeal
13.  Licensing potential
14.  Major barriers toward market or manufacturer acceptance
15.  Miscellaneous recommendations
16.  Important resources and contacts for future development

Are there times when you bypass your analysis?

We can bypass the evaluation for clientele that possess issued patents or have already manufactured the product. The 16 point analysis is designed for the independent inventor to open their eyes to all of this stuff. So if we’re dealing with someone who's in the business or some big design firm and we don't go through the evaluation process step-by-step. When we are doing more of the corporate work we look at what they have and try to make a determination if there is a match.

If you were to have used that 16 point analysis on the "Pet Rock" what would have happened?

• First of all the "Pet Rock" wasn't licensed, it was marketed and commercialized by the inventor directly.
• Secondly, aside from the "Pet Rock" trademark, there was essentially no intellectual property on that item.

That being the case, since our evaluation seeks to analyze a products "licensability" it probably would've failed. The "Pet Rock" wasn't so much an innovative product with unique features, benefits, etc, but rather an innovative marketing scheme. It's an important distinction, because if the inventor went to a toy company at the time he would have almost certainly failed at licensing it. Really, the "Pet Rock" is a very interesting exhibit for product marketing study, not licensing.It probably would've failed, quite honestly. It's very hard for us to be perfect when we evaluate a product because every product is subjective and no one has a crystal ball.

Do you advise inventors to obtain a provisional patent application?

There are occasions in which a filed provisional patent application is enough for us to obtain a licensing agreement with certain companies or manufacturers. A filed provisional patent application allows us to pitch the product as patent pending. And if we get interest in the product and it gets licensed, then all of a sudden it warrants the cost to move forward with a full utility patent application.

As you know the filing requirements for a provisional patent application are far less stringent than that required for a utility patent and therefore it is less expensive to file a simple provisional patent application. Although we do advise that the inventor files a strong provisional application. So that's one of the strategies that we use, again it all depends where the inventor is when they come to us.

Tell me a little bit about the $199 fee for your analysis?

For that $199 not only do we do an analysis of the product but we preform a patent search and competitive product market research.

When you're looking at a product to analyze with regard to licensability there are three things that need to intersect:

• patentability;
• marketability; and
• commercial feasibility.

In fact we've put together a Venn diagram with three circles to show how those things overlap. So when we do our analysis we take into account our 16 points, which also takes into account prior art and then we make our determination of whether or not the product of the inventor is licensable.

From there we put together a report for the inventor that takes into account the patent search and the licensability analysis.

We look at the product through the lens of licensability to determine what we need to overcome in order to bring a product to market.

Once we provide this analysis and report and we make a determination if we want to represent that inventor for a consumer product. If so we get involved in everything that needs to take that product to market.

So we carry out the development and marketing. We have connections with certain companies in the industry and we also try to present the products at trade shows to well-positioned companies in the industry to commercialize the product.

The whole purpose is to find a company that can sell the product at a large volume. And that's the whole point because volume and sales equals royalties and that's our goal.

Is all the design work and marketing work included in the $199 fee?

The design work is included when we represent an inventor on contingency after the initial evaluation. We have a proprietary design for licensing package that we will perform for clients who don't have their product developed sufficiently for presentation.

Even though our client might not have a prototype, our design work focuses on developing computer renderings where the product looks like a photo-realistic image, as if the product actually exists in real life! This helps a potential licensee to see the product as it would sell on the shelves and maximizes likelihood of getting the product licensed.

Does it ever work out where the big company says to you "sure we like your idea give us 18,000 products by next Tuesday and we'll put them on the shelf"?

Pitching to a WalMart doesn't work that way. You have buyers that are segmented, you have product line reviews and if you are one product company you have an uphill road ahead of you. With that being said understand that Lambert and Lambert is a licensing company we're not a sales agency or a sales rep company where we rep direct to retailers.

Our contacts are with companies who work directly with retailers. So we can go to XYZ company and say hey we got a great new paint item for you it is going to fit right into your paint line, when is your product review with Home Depot? And of course they will say to get it over to me as soon as you can, we want to see it. And so we will give them the elevator pitch and we'll go from there. And then we'll have more serious conversations if they like the product.

How does Lambert and Lambert compare with a “Patent Submission” company?

Submission companies have a difficult road ahead of them. The problem submission companies have is they are fee based and they supply a service with no guarantee of success or profit. What are the deliverables? The contract states you're going to do this, this, this and this and that is what the inventor is going to get, but that doesn't mean that they're going to make it to the market.

And another problem with the submission company is that they have a gray area of deliverables. They really don't evaluate products they simply take the money from the inventors because it's fee-based, they provide the services whether not the product has any chance of success or not.

That's the model we'd like to change at Lambert & Lambert. Our model is simple,   the product comes in, you pay your 200 bucks, if we think we can license it we will represent it.

In order for us to take a product on a contingency basis we can only take a small percentage of the ideas that come to us. I'm not sure what the number is exactly but it's probably under 10% of all the inventions that we review. And out of that our success rate as I define it is between 30 and 40%, which means that we've actually obtained a license agreement for the inventor.

We do a lot of deals, I am very proud of that. My goal is to always be very honest with inventors, we tell them right up front, we think we could license this or we don't. But even then we sit down with inventors that we represent and tell them that it's an uphill battle, we can't make any guarantees that your product is going to be financial successfully.

But we put our money where mouth is, if we believe the product can be successful we do everything and there's no money out of pocket for the inventor. So our rep services are given without any out-of-pocket costs to the inventor unless we are successful and that means that includes travel, marketing, development getting a prototype and everything that goes along with pitching a product.

Do you cover the cost of a patent application as part of your contingency fee?

We don't pay for the patents because then we become partners, we give "licensing related intellectual property help." We may advise where to file a patent application, for example we may advise to file in certain countries and we refer inventors to attorneys such as yourself to provide them with the expertise on the IP side that they really need.

We refer this patent work out because we are not attorneys and we want inventors to get good advice from someone who's capable of giving legal advice. The more the patent attorney understands about licensing agreements the better. Because then they're on the same page as far as obtaining the licensing goal.

Thanks to Trevor Lambert for taking the time for this interview. And thanks to Lambert and Lambert for allowing us post the artwork.

It would be great if inventors with experience with Lambert & Lambert could post a comment on this page. I am sure readers who are thinking of engaging their services would be interested in the testimony of your first-hand experience. Thanks.

• Email This
• Print
• Comments (1)

Inventor Joe Iannello came up with an idea of how to easily clean the underside of a lawnmower and he developed a new product called the Spray–n-Mow.

He designed it, he received United States Patent 7,628,003(PDF)  for it, he got it manufactured and now he is marketing his own product and selling it.

It wasn't an easy road and he learned a lot of lessons along the way, and he would like to share those lessons with other inventors. 

He provided me with an "Inventor's Checklist" (which I included below) and he graciously agreed to answer a few questions about what inventors need to know...

What does an inventor need to do to get a product to market?

You just have to be patient and believe in your product. If you don't believe in your product it is not going to get anywhere. You cannot be afraid to put up the money and to put in a lot of effort… otherwise you will go nowhere.

How are you attempting to market your product?

I have reached out to a professional marketer that has certain corporate contacts. In order to get your product into a big company you have to have those corporate buyers and corporate contacts to sell the product. An independent inventor can't just call any company and say hey I have a product I want to sell to you. You need to have that corporate contact, because most buyers of these big companies won't even talk to independent inventor on the phone.

You can try to get those contacts by filling out vendor applications at corporate web pages. There are people in the marketing business that do it all the time but that doesn't necessarily mean that you're going to get your foot in the door.

These vendor applications ask in depth questions with regard to your background and your ability to bring a product to market. Once those applications are filled out you have to wait for the vendors to contact you. 

There are many elements which go into the reasoning of whether they contact you. Is the timing right?

• I believe that the market itself is always an issue because if the economy is bad it may be difficult for a company to take on new products in a slow economy.
• Secondly, most products are seasonal and the marketing begins months before the season.

What type of company do you use to market your product?

I use a company called Patents to Market. I did a profile and compared them with six other companies. I was looking at what his background was what is experience was. The guy who runs this thing is actually an attorney he's got a track record of all these different companies he's worked with in the past.

So what makes a good marketing company?

You're going to find once you get a patent you are going to be flooded by mail from many different marketing companies. I try to avoid those that are just blowing smoke that really don't have the experience and really don't have the contacts and they are telling you something that they really can't do.

Just because they market some other product doesn't mean you're going be able to market my product. I was looking for companies that have established corporate contacts, that have established a relationship with buyers.

What are some of the lessons that you learned that you would like to pass on the other inventors?

Take control of your own destiny. Believe in yourself! Have faith that you will succeed. But you have to teach yourself every part of the business from marketing, to distribution, to manufacturing.

Don't ever give up. Keep going! Keep plugging! Meet as many people as you can. Keep networking to find people that can help you do things that you can’t do or are able to teach you how it should be done.

Every person that I met with along the way that helped me bring my idea to reality I would recommend to a new inventor. I have a personal rapport with every single one of these people. I physically went to 10 different manufactures to find someone to manufacture my product.

I found Val Tech Holdings, Inc. who put their heart and soul into manufacturing my product. Everyone in the company from the president down communicated with me and they made the best mold to make the best product. They also informed me of all the pitfalls that every inventor has when trying to get their product to market, even after it's manufactured. They were very honest with me.

You have to find someone that can manufacture your product that you can trust, you can work with and that won't look down on you. It is not easy to get in front of the president or the vice present of a company, most manufacturing companies won't help you the way this company actually did.

How did you educate yourself as far how to make a mold and what you should expect from your mold?

I purchased an injection mold. I wanted a mold that would make a better product and last longer and produce a greater number of products before it wears out. And Val Tech Holdings, Inc. created a high quality mold. It might've cost me a little bit more money but in the long run it will save money.

Joe's "Inventor's Checklist" of what he did to take his idea to market:

1) Idea for an invention

2) Drawing and description

3) Design – CAD Drawing – 3Dem. – 6Dem.

4) Blue print – with measurements – 8” X 11”

5) CAD on DVD

6) Name of product for the U.S. Patent Office

7) Registered Domain Name – for product marketing

8) Registered Bar Code for pricing

9) Patent – Patent Pending

10) Working Prototype

Paragon Model Makers, Inc.

1705 Main Road

Corfu, New York 14036

Frederick Landers – President/Owner

(585)-762-9367

11) Company Name – DBA/Corporation

12) Company Logo – Product Logo

13) Product Packaging

Mod-Pac Corp.

1801 Elmwood Avenue

Buffalo, New York 14207

(716)-873-0640 – Ext. #232

Donald Coppola – Sales/Rep.

14) Manufacturing of product

A) Engineering Design enhancement

B) Develop a structured business relationship

15) Manufacturer

Val Tech Holdings, Inc.

1667 Emerson Street

Rochester, New York 14606

(585)-647-2300 – Ext. #248

Joe Czop – Business Development/CEO

16) Strategy for Pricing & Marketing

17) Marketing of product

18) Website Design

19) Product Brochures

20) Product Infomercials – Audio/Visual Production

Derrick Chamberlain - Photography

21) Liability Insurance

22) U.S. Consumer Product Safety Commission laws & Regulations

23) DBA – “Doing Business As”

24) Incorporation of Business

25) Federal Tax Number

• Email This
• Print
• Comments

As a patent attorney here in Buffalo, New York I was very happy to learn that Esther Takeuchi a University at Buffalo professor was among the 2011 inductees to the National Inventors Hall of Fame. So I contacted her and asked her a few questions which she graciously answered (see below).

The induction comes from her groundbreaking work in implantable medical devices. Her research began at Greatbatch Inc. and continues today at the University at Buffalo.

She led efforts at Greatbatch to invent and refine the lifesaving Li/SVO battery technology, utilized in the majority of today’s implantable cardioverter defibrillators (ICDs). ICD batteries have high energy density with the ability to support intermittent high-power pulses.

Esther Takeuchi has earned more patents than any other woman in the United States and has received many local and national awards recognizing her contributions to society through science.

She was honored at the White House where she was presented the National Medal of Technology and Innovation from President Barack Obama.

Here is the interview:

What brought you to Buffalo, New York?

My husband became a Professor of Chemistry at the University at Buffalo. I moved with him to look for suitable positions in my field.

What's the next step after lithium ion batteries or is it already old news?

Lithium ion batteries are continuing to advance. I expect multiple generations of lithium ion batteries to be forthcoming in the next few years. Significant advances continue to be made in how fast they can charge and discharge as well as the total amount of energy they store.

What about green technology and batteries?

Energy and sustainability are strongly linked. These are two of the most significant challenges facing us today. Renewable, environmentally friendly and cost efficient ways of generating and storing energy are issues that need to be addressed on a global scale. The widespread availability of cheap energy may be a key factor in determining the standard of living for many people.

What can we expect in the next generation batteries for medical devices, laptops, and Ipads and cell phones?

We can continue to expect longer life and faster charge. Also, notice that the shape of batteries has changed substantially. Ipads and other devices use very flat batteries. The days of cylindrical batteries for high-end devices are largely over.

Can Buffalo become a leader in developing cutting edge technology?

Buffalo is well positioned to do so. The knowledge base is here. Facilitating launch of companies is something that the region is actively working to improve.

Do you have any opinion on patent reform?

I assume that you refer to the rule of ‘first to file’ versus ‘first to invent’. I am in favor of the ‘first to invent’ as we have in the US.

What advice would you give to science students that wish to follow in your footsteps and become inventors?

Remain curious. Always believe that things can be made better. Also, each individual matters. Every person brings their own unique perspective based on their experience and background. That unique perspective may lead to the next big breakthrough.

How does it feel to be mentioned in the same breath as Henry Ford, Thomas Edison, Wilbur and Orville Wright?

It is a tremendous honor to be considered in the same company as the other inventors that have changed our lives.

About the National Inventors Hall of Fame

The National Inventors Hall of Fame is the premier non-profit organization in America dedicated to honoring legendary inventors whose innovations and entrepreneurial endeavors have changed the world. Founded in 1973 by the United States Patent and Trademark Office and the National Council of Intellectual Property Law Association, the Hall of Fame will have 460 Inductees with its 2011 Induction.

The National Inventors Hall of Fame and Museum is located in the atrium of the Madison Building on the campus of the United States Patent and Trademark Office, at 600 Dulany Street, Alexandria, VA. Admission is free.

This year’s Induction ceremony, sponsored in part by the United States Patent and Trademark Office and the Kauffman Foundation, will take place on May 4 at the historic Patent Office Building, now the Smithsonian American Art Museum and the National Portrait Gallery in Washington, D.C.

The location is particularly appropriate because this year’s class of inductees includes a group of 29 historical inventors who will be recognized posthumously, most of whom would have submitted patent applications to the same building where they will be honored.

Posted with the permission of the  National Inventors Hall of Fame™

• Email This
• Print
• Comments

For the second day in a row, (Senate Session, Part I and Senate Session, Part 2) Senator Patrick Leahy (D-VT) stood on the floor of the Senate and argued for the Senate to pass S. 23, now named the "Invent America Act."

In Tuesday's Senate session Senator Mark Kirk (R-IL), joined by Senator Mark Pryor (D-AR), introduced an amendment (S.AMDT.123) to provide a fast lane for small businesses within the USPTO.

Senator Leahy, while yielding to permit these amendments to be entered, insisted in each instance that the Manager's Amendment be the amendment under consideration by the Senate at all times.

Several amendments were approved, including the authorization of three more satellite offices over the next three years, the creation of an ombudsman to assist small businesses with patenting, a requirement that the PTO prioritize examination of applications “important to the national economy competitiveness” such as green or clean energy technology, and authorization for the PTO to charge small entity fees for Track I prioritized examination.

The bipartisan Leahy-Grassley-Kyl managers’ amendment to S. 23, the America Invents Act, makes the following changes to the Committee-reported bill:

• Change the short title of the legislation to “The America Invents Act” (currently pending as Leahy Am. SA 114)
• Correct the fee setting section to avoid any potential “blue slip” issues (currently pending as Leahy Am. SA 114)  BACKGROUND: Revenue raising legislation must begin in the House of Representatives. This provision will address any possible concerns that the bill as originally drafted could lead to so-called blue slip concerns regarding its origin.
• Provide a 50 percent reduction in application and search fees for small entities requesting accelerated patent examination at the U.S. Patent and Trademark Office (USPTO) (currently pending as Bennet Am. SA 116) BACKGROUND: The USPTO recently created a “fast track” process to allow applicants to pay an additional fee to cover the cost of having examiners work overtime on certain applications. This provision will ensure that small businesses and inventors receive a 50 percent reduction in the fee.
• End fee diversion at the U.S. Patent and Trademark Office; establish a revolving fund to ensure that funds collected by the USPTO can be used at the USPTO  BACKGROUND: This provision will benefit users of the patent system who expect the money they pay in fees to be used for patent services and operations, and will benefit the patent office, which is completely user-funded, by allowing the USPTO to budget for the future.
• Create a pilot program to review the validity of business method patents BACKGROUND: Many business method patents are of dubious validity because they are not truly inventive. This provision will create a temporary, limited proceeding at the USPTO to challenge business method patents.
• Strike provisions related to damages and venue (currently pending as Bennet Am. SA 118)  BACKGROUND: These provisions as currently drafted do not make substantive changes to existing law. The current damages provisions establish a gatekeeper role for the court, but do not change the actual legal standard for awarding damages. The current venue provisions codify recent circuit court decisions, provide useful clarity, but make no meaningful change to applicable law. Striking these provisions will address recent concerns of the high tech community, and address concerns of certain Members of the House.
• Change the definition of a “micro entity” BACKGROUND: This provision will provide more clarity and increase the income threshold.
• Technical changes BACKGROUND: This provision makes minor modifications to effective dates, federal jurisdiction and residency requirements of Federal Circuit judges.

• Email This
• Print
• Comments

Recently I received a calendar (PDF) from professional patent searcher Martin Keller.  On each month of the calendar is a patent drawing that is very unique.

So I contacted him because I wanted to thank him for sending me the calendar and see if he would answer a couple questions about preliminary "prior art" patentability searches.

Well here are a few of the "unique patent drawings" from patents that he came across over the years. If you click on the patent drawing it will bring you to a PDF of the entire patent.

Thanks again to Martin for his insight and gracious response to my questions regarding patent searching.

How long have you been employed as a patent searcher?

Since 1985 I have conducted a few thousand patent searches in my career, starting in the “paper only” days - all the way up to the present EAST system.

Have you had a lot of people come to you with regard to the same so called invention and you can just say hey I searched that one before and I know that is already out there? Like the self pasting toothbrush or the flip flop with an interchangeable toe piece?

Just did it the other day for a baby bottle with musical attachment that turns on when the bottle is tilted. Done this search - in a variety of ways. patent: 7134932 (PDF)

What types of things do you look for outside the particular classification of the invention, for example if someone came to you with a reel for a fishing rod would you look at reels on a sewing machine?

I look at all analogous art. I conduct every type patent search from a simple mechanical or electrical novelty search to validity and infringement studies and heavy duty chemical searches.

Since everything now is computerized do you conduct most of your searches online? Do you find that Google patents is a good searching tool? How does it compare with United States Patent and Trademark Office (see step by step search strategy) web page regarding searching? 

Google patents is only a fair tool. Better than the USPTO site.

Do you use use other search engines or websites such as IP.com as well? Do you ever actually go to the patent office anymore and search?

I go into the PTO every day and use EAST - the same system the examiners use. Nothing and I mean Nothing even comes close to EAST. In fact, the times when I find 102 art quickly on EAST - all other online databases fall very short.

Does anybody go through the old "paper shoes" and make searches? Do you ever make contact with an examiner and discuss the invention with an examiner?

No- all paper shoes are gone from the PTO. And on difficult searches I always consult an examiner.

Martin Keller
Professional Patent Searcher
1940 Duke St., Suite 200
Alexandria, VA 22314
tel 703-624-0310
fax 703-636-7700
email: kellerpatents@gmail.com

- Posted using BlogPress from my iPad

• Email This
• Print
• Comments

President Obama issued on February 8, 2011 an Executive Order called "The Establishment of the Intellectual Property Enforcement Advisory Committees," establishing two intellectual property enforcement advisory committees designed to improve the Federal Government’s intellectual property enforcement efforts.

The Enforcement Advisory Committee shall develop a Strategic Plan as provided for in title III of the PRO IP Act.

The President's issuance of the Executive Order is evidence that there is a growing awareness of the commercial importance of intellectual property laws and the need to strengthen the enforcement of the laws designed to protect and foster America's inventiveness and creativity.

The executive order states that in the development and implementation of the Joint Strategic Plan, the heads of the departments and agencies shall share with the Coordinator of the Intellectual Property Enforcement Advisory Committee and the other members of the Enforcement Advisory Committee relevant department or agency information such as: 

• (A) plans for addressing the Joint Strategic Plan;


• (B) statistical information on the enforcement activities taken by that department or agency against counterfeiting or infringement; and


• (C) recommendations to enhance cooperation among Federal, State, and local authorities responsible for intellectual property enforcement.

The Senior Advisory Committee shall be composed of the Coordinator, who shall chair it, and the heads of, or the deputies to the heads of: 

1. The Department of State;


2. The Department of the Treasury;


3. The Department of Justice;


4. The Department of Agriculture;


5. The Department of Commerce;


6. The Department of Health and Human Services;


7. The Department of Homeland Security;


8. The Office of Management and Budget; and


9. The Office of the United States Trade Representative

The $64,000 question is whether not this committee will actually do anything. It seems like committees are constantly being formed to vote on things to do in the future. For example the Senate Judiciary Committee voted recently to send bipartisan patent reform legislation to the full Senate. This was announced by the Senate Judiciary Committee Chairman Sen. Patrick Leahy on February 3, 2011.

I spoke with Leahy press contact David Carle on the telephone today and I asked him when did he expect it to go to the full Senate. He said that Patent Reform has been kicking around for years and it was just recently voted on by the committee and he didn't appear to have any idea when it might actually go before the Senate. His tone of voice seemed to say that to ask "when" at this early juncture is a little bit ridiculous.

I guess that's just the way things work in Washington one committee after the next kicking it around. The wheels of progress keep rolling along. But at least the politicians that we've elected are discussing patent reform and the importance of protecting intellectual property rights.

• Email This
• Print
• Comments (2)

The latest patent reform bill entitled “The Patent Reform Act of 2011" (PDF) , will be introduced to Congress by Sen. Patrick Leahy (D-VT), chairman of the Judiciary Committee, on Jan. 25, 2011. Could this be the year it becomes law? The Judiciary Committee has introduced patent reform bills to Congress every year since 2006.

A bipartisan group of Senators, including Senate Judiciary Committee Members Patrick Leahy (D-Vt.), Orrin Hatch (R-Utah) and Chuck Grassley (R-Iowa), will introduce patent reform legislation when the Senate returns to session next week.

Sen. Leahy plans to introduce the bill on the Committee’s first day of executive business, and has scheduled a mark-up session for Thursday, January 27, 2011.  I think he will try to fast track the bill again without permitting hearings or debate.

“This will be the first piece of legislation considered by the Judiciary Committee this year, and I hope the Senate will act promptly on this job-creating bill. Action by Congress can no longer be delayed. ..[t]he Patent Reform Act will keep America in its longstanding position at the pinnacle of innovation” Sen. Patrick Leahy (D-VT)

If the bill is legislated into law it will make the first significant changes to the nation’s patent system in nearly 60 years. But based upon the past 4 years that is a big “IF.”

Sen. Leahy notes that the bill “mirrors key improvements” to the legislation announced last March as the “Manager’s Amendment.” The Senate Judiciary Committee has held eight hearings in the last three Congresses examining the need for patent reform.

The Senate Judiciary Committee approved patent reform legislation in 2009. In September 2010 , 25 Senators joined together to urge Senate Majority Leader Harry Reid (D-Nev.) to schedule floor time to consider the legislation but it never made it to the Senate floor.

What’s in the Bill? The bill provides these specific provisions:

• Sec. 1. Short title; table of contents.
• Sec. 2. First inventor to file.
• Sec. 3. Inventor’s oath or declaration.
• Sec. 4. Damages.
• Sec. 5. Post-grant review proceedings.
• Sec. 6. Patent Trial and Appeal Board.
• Sec. 7. Preissuance submissions by third parties.
• Sec. 8. Venue.
• Sec. 9. Fee setting authority.
• Sec. 10. Supplemental examination.
• Sec. 11. Residency of Federal Circuit judges.
• Sec. 12. Micro entity defined.
• Sec. 13. Funding agreements.
• Sec. 14. Tax strategies deemed within the prior art.
• Sec. 15. Best mode requirement.
• Sec. 16. Technical amendments.
• Sec. 17. Effective date; rule of construction.

Although I have reviewed most of this before in my post Patent Reform Act of 2010: An Overview and the bill is "nearly identical" to the Manager's Amendment of S. 515 (PDF) from the 111th Congress (It includes similar or identical provisions on venue, best mode, false marking, and easing the residency requirements for Federal Circuit judges.) I’d like to highlight some of the major changes contained in the bill:

• “First-inventor-to-file” system: Under the current law, it doesn’t matter who’s the first person to file a patent application, the United States has a “first person to invent” system.

Currently there is a statutory 102B bar that says if the invention was published, offered for sale or used in public more than one year before an application for a patent then everyone is barred from filing a patent application on that invention. But all that will change.

The new bill proposes to change the law so that any disclosure before the effective filing date will be a bar. However there is an exception to the bar, it will allow a one year grace period for disclosures by the inventor or someone who obtained the disclosure from the inventor.

The proposed change:

A person shall be entitled to a patent unless— ‘‘(1) the claimed invention was patented, described in a printed publication, or in public use, on
sale, or otherwise available to the public before the effective filing date of the claimed invention; …

‘‘(b) EXCEPTIONS.— ‘‘…A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention— if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

• False marking: False marking cases will only be allowed if filed by persons who have actually been harmed by the alleged misconduct. False marking cases would also include a statute of limitations that limits the time to file such cases to 10 years after the alleged misconduct or 1 year after the plaintiff in such an action became aware of the alleged misconduct.
• Damages: Change of the procedure for determining damages. The district court judges will have more control over evidence and jury instructions on as it relates to Damages.

The damages portion of the bill is considered by many as a "grand compromise" achieved by Senators Leahy, Dianne Feinstein (D-CA), and then-Senator Arlen Spector (D-PA). 

Senator Leahy states on his web page the new law will establish a “ rigorous gate keeping role for the court, pursuant to which judges will assess the legal basis for the specific damages theories and jury instructions sought by the parties. The gate keeping provisions will ensure consistency, uniformity, and fairness in the way that courts administer patent damages law."

The proposed new law states:

“The court shall identify the methodologies and factors that are relevant to the determination of damages, and the court or jury shall consider only those methodologies and factors relevant to making such determination.'

The damages section of the bill also includes a sequencing provision. It states that “ Any party may request that a patent-infringement trial be sequenced so that the trier of fact (jury or judge) decides questions of the patent’s infringement and validity before the issues of damages and willful infringement are [decided]”

• Patent review: a person who is not the patent owner may file a petition to institute a review for a patent within 9 months of a patent’s issuance, and an inter partes proceeding before the USPTO after this time-frame.
• Preissuance submissions by third parties: Anyone can confidentially submit to the patent examiner during pendency of a patent application the following: prior art patents or publications, statements made by the patent applicant to the court or the USPTO. If you wanted to do this today you would have to do it within 2 months of publication (Good luck with that!)
• Willful infringement: The bill includes the changes to make pleading and proving intentional infringement with more specificity, including requirements of pre-suit notification and specificity in pleadings. I think a common sense proposed change is that the court can’t allow Punitive damages if it is “a close case” on the basis of infringement, validity or enforceability.
• Filing fee: additional fee of $400 for applications that are not filed electronically.

The proposed bill is 99 pages long. Could you get anyone to agree to everything contained in any 100 page document? At a first glance it appears to be very close to the previous bills. But even so, I plan on comparing the two and filing future posts on the subject. So sign up for an RSS feed on this blog or come back and check out the blog in the next week or so for updates.

If you have any questions on The Patent Reform Act of 2011 please comment below and I will do my best to respond with an answer.

• Email This
• Print
• Comments (1)

The United States Patent and Trademark Office (USPTO) granted an all-time high 219,614 United States utility patents in 2010 – up 31 percent over 2009. All but one of the companies in the Top 50 are up from 2009, most shattering records and many posting double-digit percentage gains.

IBM continues to hold down the #1 patent rankings position, which it has done for 18 consecutive years, with a record 5,896 patents, up 20 percent from 4,914 in 2009. IBM is the first company to Break 5,000-Patent Mark in a Single Year.

IBM’s 2010 patent total nearly quadrupled Hewlett-Packard’s and exceeded the combined issuances of Microsoft, Hewlett-Packard, Oracle, EMC, and Google. More than 7,000 IBM inventors residing in 46 different U.S. states and 29 countries generated the company's record-breaking 2010 patent tally.

IFI CLAIMS® Patent Services, a division of Fairview Research, compiled a ranking of global companies awarded the most U.S. patents in 2010.

I spoke with Darlene Slaughter, general manager of IFI CLAIMS Patent Services and she said that they provide statistical data to perform preliminary patent searching, infringement searches or freedom to operate searches." With that information companies can:

• Determine which companies are key players in a particular technology
• Identify strategic partners
• Gain an insider's view of a competitor's patenting activity
• Review the number of new patents in each category for the past year
• Track patenting trends across industries

Darlene Slaughter, reiterated that protecting innovation through the patent office is not slowing down

"Companies with the most patents focus on their IP and believe that protecting the innovation through patent is important in maintaining an edge on its competition."

Is this increase in patent grants a sign that innovation is not slowed by recession? Or is it a sign that United States Patent and Trademark Office is becoming more efficient at prosecuting patent applications and the increased number of patent examiners are reducing the back log of patent applications?

I think the increased number of patent grants can be directly tied to the number of applications filed.

In his Director's Forum: David Kappos' Public Blog the USPTO director posted that "Improving Key Patent Processes and Sub-processes" is the big reason for the increased patent grants and he quotes a couple remarkable numbers:

For the year 2010 the USPTO Technology Center Technical Support Staff of 274 legal instrument examiners and legal document review clerks:

• Entered more than 2.9 million documents;
• Verified more than 264,000 allowed patent applications;
• Reviewed and counted over 2,300,000 office actions; and
• Processed more than 257,000 new patent applications.

These stats represented all-time records for the USPTO, reflecting all-time record workflow through the Agency including interviews conducted, office actions processed, notices of allowance, and final rejections. David Kappos

The bottom line is that the United States patent office has been swamped with a rising flood of applications over the past 20 years:

• 174,711 applications were filed in 1990 and 100,975 patents were issued.
• 478,649 applications were filed In 2010 and 219,614 applications were issued.
• The 1990 gap between patent applications filed versus issued patents was 73,736 
• The 2010 gap has grown to 259,035.

Okay we know it is not humanly possible for 6,000 examiners to keep up with the 721,831 backlog of patent applications... but have the examiners increased their ability to process applications?

Dennis D. Crouch of Patently-O Blog posted a chart comparing the yearly number of patents issued per examiner over the course of the past decade. Dennis points out that apart from the “2007-2009 period where the grant rate dropped so precipitously” this chart does not suggest that the examiners are any more efficient today of disposing patents than they were in previous years.

So I would guess that the only solution to decreasing the backlog of patent applications is to hire more examiners.

John Schmid of the Milwaukee Journal Sentinel reports that despite efforts to improve, U.S. patent approvals are moving slower. And because of the huge backlog and the fact that the US publishes entire patent applications online 18 months after they are filed, “That puts American ingenuity up for grabs, free to anyone with an Internet connection.” In the article he quotes Paul Michel, recently retired chief justice of the United States Court of Appeals for the Federal Circuit, as saying

"In China, there are thousands of engineers who don't work in laboratories inventing new technologies. "They sit in computer rooms reading U.S. patent applications on the Internet. And they can use the technology anywhere in the world, including in America, for free.

But even with all the suppoed deficiencies of the United States Patent and Trademark Office, foreign and US corporations want to protect their innovations and have filed a record number of applications this year.

And as a result US companies own about half and the rest of the world owns the other half of the granted patents this past year. (see chart below World Wide Ownership of US Patents 2010)

Top-50 US Patent Assignees in 2010 (As reported by IFI)

1. International Business Machines Corp 5896
2. Samsung Electronics Co Ltd (Korea) 4551
3. Microsoft Corp 3094
4. Canon K K (Japan) 2552
5. Panasonic Corp (Japan) 2482
6. Toshiba Corp (Japan) 2246
7. Sony Corp (Japan) 2150
8. Intel Corp 1653
9. LG Electronics Inc (Korea) 1490
10. Hewlett-Packard Development Co L P 1480
11. Hitachi Ltd (Japan) 1460
12. Seiko Epson Corp (Japan) 1443
13. Hon Hai Precision Industry Co Ltd (Taiwan) 1438
14. Fujitsu Ltd (Japan) 1296
15. General Electric Co 1225
16. Ricoh Co Ltd (Japan) 1200
17. Cisco Technology Inc 1115
18. Honda Motor Co Ltd (Japan) 1050
19. Fujifilm Corp (Japan) 1041
20. Hynix Semiconductor Inc (Japan) 973
21. Broadcom Corp 958
22. GM Global Technology Operations Inc 942
23. Micron Technology Inc 917
24. Siemens AG (Germany) 873
25. Xerox Corp 858
26. Denso Corp (Japan) 853
27. Texas Instruments Inc 829
28. Honeywell International Inc 824
29. Sharp K K (Japan) 818
30. Toyota Jidosha K K (Japan) 802
31. Infineon Technologies AG (Germany) 774
32. Brother Kogyo K K (Germany) 771
33. Nokia AB Oy (Finland) 760
34. Silverbrook Research Pty Ltd (Australia) 752
35. LG Display Co Ltd (Korea) 738
36. Semiconductor Energy Laboratory Co Ltd (Japan) 734
37. Mitsubishi Denki K K (Japan) 700
38. Koninklijke Philips Electronics N V (Netherlands) 685
39. NEC Corp (Japan) 680
40. Boeing Co 662
41. Qualcomm Inc 657
42. SAP AG (Germany) 649
43. Oracle America Inc/Sun Microsystems Inc* 646
44. Bosch, Robert GmbH (Germany) 593
45. Fuji Xerox Co Ltd (Japan) 574
46. Apple Inc 563
47. Du Pont de Nemours, E I & Co 509
48. Sanyo Electric Co Ltd (Japan) 504
49. 3M Innovative Properties Co 496
50. Freescale Semiconductor Inc 494

*Sun Microsystems changed name to Oracle.

Do you think an increase in the amount of patents equates to an increase of productivity? Will that translate into bigger profits at the stock market? Here are the biggest percentage gainers on the 2010's Top 50 Companies Awarded a Patent List:

1. Apple, +94%
2. Qualcomm, +84%
3. NEC, +74%
4. SAP, +70 %
5. GM Global Technology, +68%
6. Hynix Semiconductor, +65%
7. Silverbrook Research, +58%
8. 3M Innovative Properties, +53%
9. Toyota, +50%
10. Brother, +45%
11. Hon Hai Precision Industry, +44%
12. LG Electronics, +40%

In 2010, American-headquartered companies collectively recaptured a lead on the total number of U.S. patent grants (just over 50%) after losing out slightly to foreign companies for the previous two years. In 2009, American firms received less than a majority at 49 percent. Here is a chart showing the ownership percentage number of patents awarded by country.

Market Sectors with the Heaviest New Patent Activity

• Multiplex Communications (US class 370) 3.3 %
• Solid-State Devices and Transistors (US class 257) 3.1 %
• Semiconductors (US class 438) 2.72 %
• Data Processing and File Management (US class 707) 2 %
• Computers and Processing Systems (US class 709) 2 %
• Drug Compositions (US class 514) 2.1 2 %
• Biotechnology (US classes 435 and 530) 2%

 IFI's full report, which offers comprehensive 2010 patent information on more than 2,000 companies, can be accessed online through IFI's Patent Intelligence & Technology Report, available on its website in a free-trial version.

• Email This
• Print
• Comments

Nikola Tesla
Born Jul 10 1856 - Died Jan 7 1943

Electro-Magnetic Motor
Alternating Current
Patent Number 381,968 (.PDF)

Inducted to National Inventors Hall of Fame™ in 1975

Nikola Tesla invented the induction motor with rotating magnetic field that made unit drives for machines feasible and made AC power transmission an economic necessity.

In 1887 and 1888 Tesla had an experimental shop at 89 Liberty Street, New York, and there he invented the induction motor. He sold the invention to Westinghouse in July 1888 and spent a year in Pittsburgh instructing Westinghouse engineers.

Invention Impact

Alternating current (AC) became the premier form of electrical energy after it overcame objections by Thomas Edison who designed direct current (DC). Tesla also showcased his invention at the 1893 Chicago World’s Fair where he and Westinghouse won the bid to illuminate the International Exhibition. Alternating current captivated the public with its efficient lighting and lessened heat.

Nikola Tesla developed polyphase alternating current system of generators, motors and transformers and held 40 basic U.S. patents on the system, which George Westinghouse bought, determined to supply America with the Tesla system.

Tesla Memorial Society of New York Website

AC has an electric current whose direction reverses cyclically rather than staying in a constant direction like DC. The waveform of AC is also more efficient than the DC. AC is the form in which electricity is carried to homes and businesses.

Radiant Energy Patent

When thinking about the 1900 turn-of-the-century you don't think of high-tech but Nikola Tesla certainly was one of the geniuses of the century. One of the most interesting patents I found was US patent number 685,958 (.PDF) for a Method of Using Radiant Energy.

If you look closely at the original patent drawing below you can see someone hand wrote: "electric stepping motor energized by corpuscular energy from the sun." Was this the precursor of the Solar Panel?

This reminds me of how in 1880 Alexander Graham Bell invented the photophone-transmission of sound on a beam of light- a precursor of today's optical fiber systems.

Inventor Bio

Born in Smiljan Lika, Croatia, the son of a Serbian Orthodox clergyman, Tesla attended Joanneum, a polytechnic school in Graz and the University of Prague for two years. He started work in the engineering department of the Austrian telegraph system then became an electrical engineer at an electric power company in Budapest and later at another in Strasbourg.

While in technical school, Tesla became convinced that commutators were unnecessary on motors; and while with the power company he built a crude motor which demonstrated the truth of his theory. In 1884, Tesla came to the United States and joined the Edison Machine Works as a dynamo designer.

Telsa obtained more than 100 patents in his lifetime. Despite his 700 inventions Tesla was not wealthy. For many years he worked in his room at the Hotel New Yorker, where he died.

 Posted with the permission of the  National Inventors Hall of Fame™

• Email This
• Print
• Comments

Recently I met with Fred Landers with Paragon Model Makers Inc. and we had a nice conversation about how he can help inventors build working prototypes and models. Having a prototype is important in the patent process as well as manufacturing process.

Like any endeavor cost and efficiency are concerns in trying to reach your goals. The goal for the inventor is to take an idea and turn it into a real product and then to market in the most profitable way.

The first step in the process is coming up with the idea and the second step in the process is to take it from the virtual world to the real world.

I asked Fred Landers a couple of questions as to how he can help in this process.

Question: What are some of the advantages of building a model?

Answer: if you can provide a manufacturer a prototype that the manufacturer can take and reproduce it will decrease the cost for engineering and design. When a manufacturer has a prototype they can simply copy it and avoid the time of actually coming up with a way of how to make it. 

Question: What are the different types of prototypes that you can create?

Answer: We can build two different types of prototypes.

1. A working prototype (Engineering Prototype) A working model is a great sales tool for marketing a product. It is positive evidence to show that the product can do what you claim it can do. A working prototype gives you a model that actually proves that the product works.
2. Nonworking prototype (Industrial Design)
   The nonworking model is usually made of a low-volume mold that is machined out of plastic. This industrial design prototype is an example of what the exterior of the product will look like. Examples of nonworking models that we have made in the past are: electric current tester or a computer cover. We create the nonworking exterior of the product and the company that we are working with brings it to life by filling the interior with the “guts” of the product.

Question: What do you need to begin the process of making a model?

Answer: We use a drawing as a starting point. We work in conjunction with various companies that are able to provide engineering grade drawings as a specification for the product. For example we work in conjunction with Devin Cooper from DCA Ltd. who has the ability to create excellent drawings from which we can create a model.

Question: What are the different types of materials that you usually work with?

Answer: We can use anything from metal, injection molded plastic or wood. We can even bore out a solid piece of acrylic and design it into almost any shape.

We have provided prototypes to many different types of companies’ s over the years such as Kodak, Xerox, Fisher-Price and Smith Corona.

Question: What are the benefits of creating a prototype?

Answer: We believe if you create prototypes it lowers the production cost. If the manufacturer has a model versus just a drawing they can:

• Avoid the trial and error normally associated with manufacturing
• Just copy what we give them because if you have a working model you know it works, they just have to copy it.
• Set a definitive cost of manufacturing a product.

• Email This
• Print
• Comments

Alexander Graham Bell
Born Mar 3 1847 - Died Aug 2 1922

Telephone / Telegraphy
Patent Number 174,465

Inducted to National Inventors Hall of Fame™ in 1973

Alexander Graham Bell's invention of the telephone grew out of his research into ways to improve the telegraph. On April 6, 1875, Bell was granted the patent for the multiple telegraph, which sent two signals at the same time. In September 1875 he began to write the specifications for the telephone.

On March 7, 1876, the U.S. Patent Office granted him Patent Number 174,465 (PDF) covering, the method of, and apparatus for, transmitting vocal or other sounds telegraphically by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds.

Inventor Bio

Born in Edinburgh, Scotland, the inventor spent one year at a private school, two years at Edinburgh's Royal High School (from which he graduated at 14), and attended a few lectures at Edinburgh University and at University College in London, but he was largely family-trained and self-taught. He also worked in medical research and invented techniques for teaching speech to the deaf. In 1888 he founded the National Geographic Society.

Never adept with his hands, Bell had the good fortune to discover and inspire Thomas Watson, a young repair mechanic and model maker, who assisted him enthusiastically in devising an apparatus for transmitting sound by electricity.

After inventing the telephone, Bell continued his experiments in communication, which culminated in the invention of the photophone-transmission of sound on a beam of light- a precursor of today's optical fiber systems. 

Invention Impact

The range of Bell's inventive genius is represented only in part by the 18 patents granted in his name alone and the 12 he shared with his collaborators. These included:

• 14 for the telephone and telegraph,
• 4 for the photophone (PDF),
• 1 for the phonograph (PDF),
• 5 for aerial vehicles (PDF),
• 4 for hydroairplanes (PDF), and
• 2 for a selenium cell (PDF).

 Posted with the permission of the  National Inventors Hall of Fame™

• Email This
• Print
• Comments (1)

I hope everyone is having a happy Thanksgiving. I searched through the patent office to find patents with a Turkey and I looked through the many utility patents and design patents. This led me to wonder if people really understand the difference between the two.

• Utility Patents: For any process, machine, composition of matter or manufacture

• Design Patents: For any original and ornamental design for an article of manufacture

In general terms, a "utility patent" protects the way an article is used and works ( 35 U.S.C. 101), while a "design patent" protects the way an article looks ( 35 U.S.C. 171). A design patent protects only the ornamental appearance of an article, and not its structure or utilitarian features.

Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

It can be to your advantage to simultaneously file for utility patent protection on the functional aspects of an invention, and design patent protection on the ornamental aspects of the invention.

But if you didn't file it simultaneously once the utility patent application is in condition for allowance, you may file a divisional design patent application based on the original utility patent application.

Another way to get design patent protection is to file a design divisional if a rejection is received and it doesn't look as though any of the claims are going to be allowed. 

In order to successfully follow this strategy the original utility patent application must filed with design application quality drawings and a brief description of the ornamental aspects of the invention.

What is an inventor's strategy for protecting intellectual property? Take a look at the examples of the utility and design patents that I posted here.

I doubt if Inventor Roy D. Williams ever sold this ingenious Turkey hunter's safety placard. And I wonder if anybody ever used the Retainer for dressed poultry invented by Anthony J. Volk.

Both patents have expired and are now in the public domain, so feel free to make, use and sell them if you wish to.

Entrepreneurs should consider using the vast amount of free technology that can be found in patents in the public domain. But I think that's a topic that will have to be dealt with in a future blog post.

Whether or not these patents are valuable can be determined by answering this question: would anybody have copied these products had they not received a patent?

The courts have ruled that to find infringement of a design patent, the accused product must be compared to the claimed design to determine whether the two designs are substantially the same.

To find infringement, the allegedly infringing product must incorporate the point of novelty of the claimed design. 

The standard of infringement involves two stages.

1. First, one must determine what the ornamental features of the patented design are and whether one or more of these were appropriated by the product alleged to infringe. If not, there is no infringement.
2. If there was appropriation of one or more of the unique features, then a second test is applied. One looks at both the similarities and differences between the two products to determine if there is sufficient overall similarity to deceive the ordinary observer. If so, infringement exists.

The protection offered by design patents is somewhat limited because courts determine infringement by comparing the design patent drawings to a competitor's "infringing" item. Consequently, the appearance of the drawings is critical in design patents.

Although the answer to the question as to the value of the design patent for the "hunter's safety placecard" is that nobody would have copied it, many companies recognize the value of design patents in various fields of invention.

For example, last month design patents were obtained in various industries for things like Semiconductors, transistors or integrated circuits  D625,695 (.PDF) and D624,890(.PDF), Parts, Accessories And Attachments For Vehicles D626,058 (.PDF) and Jewelry, Symbolic Insignia, And Ornaments D625640(.PDF)

• Email This
• Print
• Comments (1)

Guest Blogger: Arthur S. Cookfair, Registered Patent Agent

WHAT CAN BE PATENTED

The patent statutes (35 U.S.C. 101) specify four classes of subject matter suitable for the grant of a patent. To be patentable, an invention must be directed to a:

• process
• machine
• manufacture, or
• composition of matter

Often a close look at the creative efforts that led to one patentable invention, will disclose related inventions that may fall within one or more of the other statutory classes of invention. For example, the invention of a new composition of matter, such as a chemical compound, may also involve the invention of a process for making the compound.

Since the compound is probably intended for a specific use, there may at the same time be patentable inventions directed to the

1. use of the compound in a process, or
2. as a material for an article of manufacture.

In addition to falling within one or more of the statutory classes, a patentable invention must meet three requirements, it must be:

• novel, (35 U.S.C. 102)
• useful (35 U.S.C. 101), and
• non-obvious (35 U.S.C. 103).

Novel

In general this means that the invention must not have been known or used by anyone in the U.S. or published or patented anywhere in the world before being invented by the person applying for a patent. Also, it must not have been published or patented anywhere in the world, or in use or on sale in the U.S. more than one year prior to the date of application for a patent.

Useful

The invention must have some identified use. The use may be very limited (this is often the case in the very early stages of development of an invention), but it must be present.

Non-obvious

When viewed against the prior art (i.e. public knowledge, prior publications, etc.) The invention must be non-obvious to a person of ordinary skill in the field to which the invention pertains. (Obviousness is a very subjective factor and is a common source of disagreement between patent applicants and patent examiners.)

THE PATENT APPLICATION

Basic to the philosophy of patents is that, in return for the patent, the inventor must fully disclose the invention. In so doing, the disclosure becomes a part of the technical literature and “promote(s) the progress of...the useful arts" as required by the Constitution (Article I. Section 8).

The full disclosure of the invention insures that the public will have possession of the invention and how to make and use it after the patent expires.

The descriptive portion of the patent application (and of the subsequently issued patent) is called the “specification”. It is a description that is required by statute (35 U.S.C. 112) to be written in sufficient detail to enable those skilled in the art to which it pertains to make and use the invention.

For example, a specification of a patent (or a patent application) on a chemical invention should be sufficiently clear and detailed to enable an ordinary chemist working in the same subject area to make and use the invention.

Patents directed to mechanical inventions will commonly include drawings. Patents directed to chemical inventions will commonly include working examples which may be written in a “cookbook” style to guide other chemists in the practice of the invention. The specification concludes with one or more “claims”. The claims are statements that define the metes and bounds of the invention.

THE PATENTABILITY SEARCH

The patentability of an invention is measured against what others have done before. A patentability search is simply an attempt to find out what has been done before so that the best decision can be made regarding whether or not to file a patent application.

Referred to by various names -- novelty search, pre-examination search (or “pre-ex search”) or simply prior art search, it involves searching the literature to uncover any publications that might affect patentability of the invention. Patentability searches are often limited to searching the patent files. However, a thorough search should also include the non-patent technical literature in the field of the invention.

If the search shows that the invention is not new, or is obvious from the prior art, it may save the time and expense of preparing and filing a patent application. Even if the invention appears patentable over the prior art, the search may uncover references that will serve as a guide in the drafting of a patent application and help to determine the scope of patent protection possible.

PATENT PENDING

When the patent application is filed in the U.S. Patent and Trademark Office, the filing date is recorded and the application is assigned a serial number (sometimes referred to as an application number). The serial number and filing date are important in the identification of the application, and may be useful in relating that application (or the subsequently issued patent) to other related U.S. patents or equivalent foreign patents or applications.

The application is then sent to an Examining Division where it is assigned to a patent examiner who has expertise in the technical field of the invention. The examiner will study the application, make a literature search (i.e., a “prior art” search), and issue an “Office Action” rejecting or allowing the application. In most instances, the first office action will be a rejection, which may be based on formalities or on the Examiner’s opinion that the same invention is shown in the prior art, or obvious from the prior art.

The applicant may then respond by amending the claims to overcome the examiner’s rejection. The application will then be reconsidered and a second office action will be issued. Commonly, the second action will be a “final” action from the examiner, i.e., an allowance or a final rejection.

On receiving a final rejection, the applicant has the right to appeal that rejection to the Patent Office’s own Board of Appeals and Interferences who will consider the arguments and render a written opinion affirming or reversing the examiner’s rejection.

The “patent pending” process, from filing to issue of a patent, requires an average time of approximately eighteen months -- if the process goes smoothly. If there are problems, such as the need to appeal, the process may take considerably longer.

THE PATENT TERM

The term of a U.S. patent begins on the date of issue and ends 20 years from the date on which the application was filed (subject to the payment of maintenance fees). During that time the patentee has the right to exclude others from making, using, or selling the invention in the United States.

Related post:

Patent Fundamentals (Part 1)

• Email This
• Print
• Comments (1)

Guest Blogger: Arthur S. Cookfair, Registered Patent Agent

 “A country without a Patent Office and good patent laws is just a crab and can’t travel anyway but sideways and backways.”

Declared Mark Twain (speaking through his character, Sir Boss, in a Connecticut Yankee in King Arthur’s Court). In his homey way, Sir Boss was simply restating the philosophy that guided the framers of the U.S. Constitution when they established the constitutional basis for the U.S. patent system.

 The Congress shall have the power...to Promote the progress of science and useful arts, by securing for limited time to authors and inventors the exclusive
rights to their respective writings and discoveries.

                  Article 1, Section 8, U.S. Constitution.

The Constitution not only provides the authority for the establishment of our patent system, but clearly establishes the purpose: “to promote the progress of [the] useful arts”. Thus, the basic purpose of our patent laws is not simply to protect inventors’ rights to their inventions. It is a broader, societal purpose: to promote the progress of technology. The purpose has been well served. The 235 year history of our nation is interwoven with invention and technological progress.

In 1790, three years after the drafting of the Constitution, Congress passed a bill titled “Act To Promote The Progress of The Useful Arts”. The bill was signed by President Washington on April 10, 1790 and the United States Patent System was established.

In that same year, Samuel Hopkins of Philadelphia received the first patent. His invention was a chemical process for making potash from wood ashes. The patent was signed by Thomas Jefferson (Secretary of State), Edmund Randolf (Attorney General) and President George Washington.

Technological innovation is linked to three-quarters of America’s post-WW II growth rate. Two innovation-linked factors—capital investment and increased efficiency—represent 2.5 percentage points of the 3.4 percent average annual growth rate achieved since the1940’s.

Since that first patent more than 7.8 million U.S. patents have been granted. Our nation has grown from a population of about 4 million to more than 300 million and the granting of patents, like every government activity, has grown correspondingly in quantity and complexity.

The U.S. Patent and Trademark Office (USPTO), a branch of the Department of Commerce, employs nearly 10,000 persons (6,100 are patent examiners) and issues patents at a rate of about 190,000 per year.

There are three types of U.S. Patents:

1. Design Patents are granted for the protection of any new and original ornamental design for an article of manufacture.
2. Plant Patents are granted for the invention or discovery of a distinct and new variety of plant.
3. Utility Patents are granted for any new and useful process, machine, article of manufacture, or composition of matter.

Plant patents and design patents, although commercially important, are special categories of patents and account for a relatively small proportion of the U.S. patents granted. (There have been approximately 9,000 plant patents and somewhat more than 360,000 design patents granted, while more than 7,800,000 utility patents have been granted.)

The utility patent is the type of patent that most people associate with invention and is the type of patent to which the following remarks are directed.

WHAT A PATENT IS

The answer to the question “What is a patent?’ may vary greatly, depending on the person answering the question and that person’s association with patents or the patent system.

There are three basic characteristics commonly attributed to patents:

1. The contractual characteristic. In viewing the patent as a contract, the focus is on the contractual exchange between two parties the inventor and the government. The inventor gives a full disclosure of the invention and how to make and use it so that when the patent expires, the public will be in possession of the invention. In return, the government gives the inventor the right to exclude others from using his/her invention for a limited period of time.
2. The property characteristic. Patents have a right of ownership similar to real property that can be transferred in whole or in part. In a manner analogous to real estate, a patent can be sold, or it may be “rented” (licensed) and “rent” can be collected for its use (royalties).
3. The monopoly characteristic. The “monopoly” associated with patents is limited in time and negative in nature (i.e., exclusionary).

 The U.S. patent law defines the patent grant as

“...a grant to the patentee... of the right to exclude others from making, using or selling the invention throughout the United States...”

In this definition, the word “exclude” is key to an understanding of patents. The patent grant provides the patentee with the right to exclude others from practicing the invention.

WHAT A PATENT IS NOT

A patent is not a license to make, use or sell your invention. It does not give the patentee the right to practice his/her invention.

The most common misconception concerning patents is that a patent gives one a right to practice his/her invention. In fact, it is not uncommon for an inventor to be granted a patent and not have the right to practice the invention.

The patent merely grants the patentee the right to stop or exclude others from practicing the invention. At the same time, the patented invention may be directed to subject matter that falls within the exclusive rights of someone else’s broader patent. In such an instance, the broader patent is said to dominate.

Such a situation commonly occurs when the second patented invention represents an improved version of an earlier issued, more basic patent. The owner of the earlier dominating patent may be free to practice the basic invention (but may not be free to practice the improved version of the second patentee). The second patentee may not be free to practice either invention without permission of the first patentee.

Related post:

Patent Fundamentals (Part 2)

• Email This
• Print
• Comments

Today is Christopher Columbus Day and if you remember he invented America. No that's not right... he discovered America. Of course he thought he landed in India and we've been mistakenly calling Native Americans Indians ever since and today we celebrate his mistake.

It used to be you would plant a flag into the ground and stake a claim to that land for your country or your family. Today if you invent something you file a patent application and put everyone on notice that this is my intellectual property.

This past weekend I saw the movie  "The Social Network," which is about how Facebook was invented and how  they fought over who owned the company and the intellectual property rights for the Facebook "idea." The movie is set as a series of flashbacks of what the witnesses testify about in a pretrial discovery deposition. What is at stake? The multi-billion dollar pie that is Facebook.

The movie "The Social Network" revolves around two lawsuits. One brought by Cameron and Tyler Winklevoss, twins at Harvard who claim they had hired Mark Zuckerberg to build for them a Facebook type website. Instead Zuckerberg took the idea and created  Facebook. They settled for $65 million.

And a lawsuit brought by Eduardo Saverin, Facebook’s initial CFO and investor, who was "tricked" out of his 30% share of the company by Silicon Valley venture capitalists when Facebook was reorganized.

Mark Zuckerberg the founder and creator of Facebook is listed by Forbes as one of the world's 212 billionaires, he is listed as number 35.

The Harvard dropout's fortune surged $4.9 billion over the last year as private equity deals place Facebook's value at around $23 billion. (Illiquid private shares in secondary markets point to an even richer valuation.) Facebook has more than 500 million members.

This movie is so attractive to viewers because it is everyone's dream is to be the next billionaire. "The Social Network" is the no.1 movie at the box office this week. When clients ask me whether or not a patent will stop anybody from copying their idea, I answer "most likely when you start making money somebody will copy it. But that is a good thing because it means you're making money."

Ezra Klein a Washington Post Staff Writer delves into the deeper issue of  "how do we protect and promote innovation?" in the article entitled "A story bigger than Facebook."

The movie recasts a story of inevitable technological change as the saga of a socially inept genius, two or three of his most important relationships and the social pressures of Harvard University. That makes for a better film, of course. But it misses the richer drama behind transformative innovations like Facebook, and it's part and parcel of the way we misunderstand, and thus impede, innovation.

Robert Soave reporter for the Daily Caller penned an article entitled "The Social Network’ and the case against intellectual property rights" where he queries if Tyler and Cameron Winklevoss had any evidence showing that Facebook founder Mark Zuckerberg stole ideas like “profile pages” when they met in college.

Soave wonders "what if" the twin brothers were able to serve and enforce a "cease and desist" order through a United States court early in the process and stopped Zuckerberg from going forward with Facebook? Would it have been fair to stifle Zuckerbergs' innovation and eliminate the muti-billion dollar Facebook before it ever started to get rolling?

Simply put, Tyler and Cameron Winklevoss can’t claim ownership over what they accuse Zuckerberg of stealing. Ideas — in this case, an online student network — bear none of the qualities of property. They are abstract and intangible. They don’t exist in any physical sense. If another thinker has the same idea, the original thinker is not suddenly deprived of access to the idea; it simply multiplies.

I recently posted that ideas alone are not protectable, the thing, not the idea, is what generates IP rights. But what about protecting the idea by contract? A contract that says "we're going to work together on a project and you will not take the idea and compete against me." So why couldn't Tyler and Cameron Winklevoss claim "Breach of Contract?"

Often times these contracts are called a non-competition or a non-compete contract or agreement. This is the case when a company hires somebody to start a new project and a contract is signed that enunciates that the intellectual property is owned by the company and if the employee leaves the employee will not be able to use that information to compete with the company.

It used to be that a social contract based upon a handshake was all you needed to be protected. 

Recently the US Supreme Court handed down the decision in the Bilski case that ruled that "abstract ideas" were not patentable subject matter.

Is Facebook an abstract idea? Is there a machine or transformation of matter that would allow Facebook to pass the Bilski test? If I was to start a Facebook page that was identical to Facebook right now and call it FacePad would I be able to get away with using ideas such as "a wall" and a "profile" page etc.? Just checked, too late... they are using Facepad already.

Facebook has been working on getting their own patents and purchasing patent rights from others to protect their ideas. Certainly their name Facebook (.PDF) is a registered trademark, try to use something close like the word BOOK. It is very interesting to see how intellectual property has evolved through the virtual world of the Internet. Is Facebook an abstract idea?

• Email This
• Print
• Comments (2)

The 15th Annual Independent Inventors Conference, co-sponsored by the United States Patent Trademark Office (USPTO), and Invent Now® will be held in Alexandria, VA at the US Patent and Trademark Office campus on November 4 - 5, 2010.

A pre-conference workshop (November 3, 2010 from 5pm – 7pm) is included with your registration for anyone interested in learning patent basics and how they protect inventions. This workshop is for beginners and is a good foundation for the conference.

Presenters will include:

• Under Secretary of Commerce for Intellectual Property and Director of the US Patent and Trademark Office, David Kappos,
• Commissioner for Patents, Robert L. Stoll,
• National Inventors Hall of Fame® Inductee, Art Fry, co-inventor of Post-It® Notes, and
• George A. Peters, Jr. inventor of The Mitt®.

Registration is now open for this 2-day event. The fee is $120 per person for both days. The registration fee includes all sessions and presentations, morning and afternoon refreshments, lunch for both days and a networking reception Thursday evening. The networking reception is sponsored by the Intellectual Property Owners Association (IPO).

• Email This
• Print
• Comments

The United States Parent and Trademark Office (USPTO) just launched the beta version of a USPTO Data Visualization Center in a web page that looks like a bunch of speedometers on dashboard. This patent dashboard tool will provide statistical measures to track patent pendency.

The new dashboard, which will be updated monthly, will also be used internally by the USPTO to analyze and improve our examination process and to track the effectiveness of our improvement efforts. We intend to further refine the dashboard and welcome your input about ways we can improve it. A dedicated mailbox has been set up for your comments and we intend to monitor your feedback carefully.

The patents dashboard provides more refined pendency information than was previously available, as well as other critical performance indicators such as:

• the number of applications in the backlog;
• production;
• actions per disposal;
• and USPTO staffing levels.

The dashboard introduces six new measures of pendency designed to give a better overall picture of the contributions of different parts of the examination process to application pendency.

• Email This
• Print
• Comments (1)

Recently a client asked me to sue a competitor for infringement on her patent application. I told her that even though you can mark articles with the terms "Patent Applied For" or "Patent Pending" these phrases have no legal effect, but only give information that an application for patent has been filed in the United States Patent and Trademark Office. The protection afforded by a patent does not start until the actual grant of the patent.

However, damages for pre-patent grant infringement by another are now available. The American Inventors Protection Act, 35 U.S.C. § 154(d) gives the inventor provisional rights:

“patents issuing on published applications will include the right to obtain reasonable royalties from others who, with actual notice of the published application, made used, sold, offered to sell, or imported the invention as claimed in the published application before the patent was granted.”

Once a patent application is published, an applicant may assert provisional rights. Publication occurs 18-months following the filing date or priority date claimed by an application. These § 154(d) provisional rights provide a patentee with the opportunity to obtain a reasonable royalty from a third party that infringes a published application claim provided:

• actual notice is given to the third party by applicant (the inventor probably needs to send a cease-and-desist letter), and
• a patent issues from the application with a substantially identical claim.

Having this ability to protect an invention is a powerful sword in the inventor’s bag of weapons. It is risky business for your competition to take the chance and sell a patent pending product because they can be sued at a later date and possibly be forced to take all their products "off the shelf."

But what about the shield? How does the inventor protect an invention? If you give your competition notice of your published application is it possible they will submit documents to shoot down your patent? And what can you do to shoot down somebody else's patent or patent application?

Following publication, the application for patent is no longer held in confidence by the Patent Office and any member of the public may request access to the entire file history of the application in Patent Application Information Retrieval (PAIR). What are the available ways a competitor can submit prior art against an issued patent or pending patent application to the United States Patent and Trademark Office?

1. Third-Party Submissions in Patent Applications (37 C.F.R. 1.99)
2. Protests Against Published Applications (37 C.F.R. 1.291)
3. Citation of Prior Art in Issued Patents (37 C.F.R. 1.501)

1. Third Party Submissions pursuant to 37 C.F.R. 1.99 are:

• Submissions by the public of patents or publications only
• During the pendency of a published application

Third Party Submissions must be filed within two months from the date of publication of the application (§ 1.215(a)) or prior to the mailing of a notice of allowance (§ 1.311), whichever is earlier. This really isn't a big window of time. How would anyone even know it was published unless they were constantly searching the United States Patent and Trademark website? Based on this law, I would suggest not giving anyone notice of your pending patent application until at least two months after publication.

2. A protest, pursuant to 37 C.F.R. 1.291, may be filed by:

• Any member of the public, including private persons, corporate entities, and government agencies
• In a pending patent application
• Will be matched with application file if adequately identifies the patent application.

A protest has to be filed before publication or before a notice of allowance. This rule has always bothered me. I think this time constraint should be addressed through patent reform because there aren't many ways to find out whether an application is pending unless it's published. I would guess you would need some sort of inside information. Or based upon the marking of patent pending on an object you might guess there is an application,but then you'd have to act as a Detective and find out the application number because it isn't published.

3. Citation of Prior Art in Issued Patents (37 C.F.R. 1.501) may be filed by:

• Any person, individual, corporate or government entity, real parties in interest, persons without a real interest
• May submit patents or publications along with an explanation
• Having a bearing on the patentability of any claim in a particular patent

I'd like to throw this out for discussion, why does the patent office make it so difficult to either submit third-party submissions or protests by limiting the time in which you can file these types of submissions? How could you protest and identify a patent application if it's not even published? And isn't two months from publication such a narrow time period that makes it very difficult for anyone to even find out that there is a pending published application for a Third Party Submission?

"Clipart courtesy FCIT"

• Email This
• Print
• Comments (8)

Recently I authored a blog post regarding whether or not you can patent an idea? Remember you can get a patent for the" thing" you make not the idea.

In order for an idea to become a patented invention, the inventor must be able to teach someone of ordinary skill in the art how to make and use the invention.

I used the example of the “idea” for the transporter in the Star Trek television series as an idea that can only be patented if someone could make it.

What about the "Back to the Future" movie where Michael J. Fox has automatic clothes and automatic sneaker laces.

Well, I found this cool video on YouTube and the actual patent application (.PDF) by Nike. Take a look. What do you think?

• Email This
• Print
• Comments (1)

The United States Patent and Trademark Office (USPTO) has prepared further interim guidance for the patent examining corps to use when determining subject matter eligibility of a  business method patent application under 35 U.S.C. § 101 in view of the recent decision by the United States Supreme Court in Bilski v. Kappos (.PDF).

This interim guidance, which was published in the Federal Register July 27, 2010, is a supplement to previously issued interim instructions dated August 24, 2009, and it supersedes the interim guidance memo to the examining corps dated June 28, 2010.

The USPTO is seeking public comment on this interim guidance and intends to issue final guidance after evaluating the public comments. Any member of the public may submit written comments on the Interim Bilski Guidance.

Comments concerning this Interim Bilski Guidance should be sent on or before September 27, 2010 by e-mail to Bilski_Guidance@uspto.gov or facsimile transmitted to (571) 273–0125.

Other related posts:

Senator Leahy Uses Bilski to Push Patent Reform

USPTO Sends Bilski Memo to Patent Examiners

Bilski vs. Kappos Decision

Bilski vs Kappos

Legal community weighs in on Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

• Email This
• Print
• Comments

Tweet of the week

Thanks to @ifones for tweeting this week about how Apple may take on a new role in video gaming if its latest patent application, published by the U.S. Patent and Trademark Office last week, ever makes it into a product.

Take a look how Patently Apple breaks down the Apple patent application that teaches new methods to convert a computer user's video game play into a "book, e-book, or comic book."

• Email This
• Print
• Comments

The United States Patent and Trademark Office (USPTO) web page is not very user friendly when searching for prior art patents. But I found an add-on for Firefox called Aspator that makes it much friendlier.

The Aspator add-on works with search pages for patents and patent applications on the USPTO and the European Patent Office (esp@cenet) websites.

Aspator is designed for inventors, engineers, scientists, patent agents, patent attorneys, and patent executives who search patents regularly.

I’ve used it for a few patent searches now and I like how everything is built right into the USPTO website. No having to go to multiple pages for different features, especially for downloading a .PDF copy, everything comes up right on the USPTO search page.

Another great feature is that searches can be manipulated and saved, and your own personal comments added. The comments are conveniently located and will come in handy when writing a patent opinion. It simply brings all patent information to one page. This feature will save so much time looking for patents that I just looked at because you do not have to hit the “back” button 20 times to return to previously viewed patents.

I will definitely keep this Ad-on on all my computers.

Features of Aspator:

1. Read searched patent abstracts, claims, drawings and bibliographies from USPTO and esp@cenet on a single page.
2. View USPTO patent drawings directly. No need to install TIFF viewer.
3. Instant translation of patent abstract.
4. Patent classification analyzer.
5. Direct access to esp@cenet and Google Patent Search.
6. Download PDF of an entire patent with  one click.
7. Download multiple patents in one single PDF file or in separate PDF files.
8. Store your search records with your comments.

I liked the Aspator add-on so much I decided to interview the Developer Kenneth Yip and learn why Aspator was created and find out what's next for this add-on. Here is the interview:

Q: Can you give us a little background about yourself?

A: I was born and raised in Hong Kong. My family immigrated to Toronto when I was in high school. I earned a bachelor degree in electrical engineering from the University of Waterloo, and a master’s degree in electrical engineering from Stanford University.

After worked for a telecom research company in New Jersey and two startups in New York City, I moved back to Hong Kong to work for a research institution. In the research institution, I was responsible for all IP maters and spent most of my effort in patent searches, reviewing patent applications, and IP licensing. I then earned a LLB from University of London external program. Now, if everything goes smoothly, will become a lawyer in Hong Kong later this year specializing in tech and IP.

Q: Do you have any experience searching patents and what got you into creating add-ons for patent searches?

A: As I needed to search patents regularly and found Delphion a bit overpriced (or too powerful for my need) and slow, I began thinking of different ways to improve patent search efficiency. Also, at about the same time, Firefox became popular. Because of these two factors, I decided to create Aspator.

Q: One problem many users have with the USPTO website involves viewing images of patents and drawings, which are in TIFF format. Even if a user has a TIFF viewer, such as Alternatiff, conflicts with programs such as Apple’s Quicktime can make TIFF files difficult to display properly. Does Aspator help with this issue?

A: Yes, as there is also a big issue with printing TIFF files embedded in a web page. In the newest version of Aspator, 1.0252, Aspator will allow a preview of pages 2-4 of a patent/patent application without a TIFF viewer by converting TIFF images to PNG images, a much more common and easily-viewed image format. Pages 2-4 are usually the first 3 diagrams of a patent/patent applications. If there is a demand, future versions of Aspator will turn all images from TIFFs to PNGs.

Q: When testing out the Aspator add-on for Firefox I was impressed with the ability to save search results for later use, when you created this feature how did you envision it to help a searcher?

A: Haha, I love this feature. I believe this feature will distinguish a casual patent searcher from a professional patent searcher. A casual patent searcher will only search patent once in a few months and may not need this feature. On the other hand, a professional patent searcher needs to deal with many patent search requests a day and may find this feature useful.

Q: What do you think the most important features are for the Aspator add-on for Firefox?

A: I would say it is the ability to show the patent contents along the search result.

Q: Did you apply for any patents regarding this add-on?

A: No. As most features of Aspator are about information display and simple HTML parsing, there is not much need for patent application. However, I have at least 15-20 features in my to-do-list. Two or three of them I believe are quite "revolutionary" and worth for patent protection. Hopefully, these features would be able to leave Delphion in the dust:)

Q: Why did you pick the name Aspator?

A: A person (or) who is an ace (as) in patent (pat).

Q: What what can tell me abut the lifespan of Aspator?

A: One happy thing that Aspator users need to know about is the life span of Aspator. The value of Aspator is inversely proportional to the value and features provided by USPTO, esp@cenet or Delphion.

It is my sincere hope that one day I can stop thinking about Aspator because a patent search in USPTO, esp@cenet or Delphion becomes very powerful and user-friendly.

• Email This
• Print
• Comments (1)

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor..."  35 U.S.C. 101

A patent on an invention may not be obtained if the differences between the invention sought to be patented and the prior art are such that the invention would have been obvious at the time it was made to a person having ordinary skill in the art to which the invention pertains. Patentability shall not be negatived by the manner in which the invention was made. 35 USC 103

That last sentence basically means that if an invention came about because of many hours of diligent work and effort or in a flash with no effort at all it doesn’t affect whether it is patentable... even if invented by accident.

How Do Inventions Come About?

• Identification of a problem
• Finding a new way to solve the problem
• Scientific method
• Trial and error
• Hypothesis
• Accident

There are many products that were invented by accident that changed the world but here are examples of a couple interesting inventions that came about accidentally:

Accidental Invention – Popsicle®

In 1905 an 11 year old Frank Epperson mixed some soda water powder and water, which at the time was a popular drink. He left the mixture outside overnight with the stirring stick in it. The temperature dropped to a record low that night and the next day Frank had a stick of frozen soda water. In 1923 Frank Epperson began a business producing Epsicles in seven fruit flavors. The name was later changed to the Popsicle®.

Frank realized the commercial possibilities of his invention and was granted a patent in 1924. By 1928, Epperson had earned royalties on more than 60 million Popsicle® ice pops. In 1998 Popsicle® celebrated its 75th anniversary and continues to be one of the top frozen novelty brands in America. The trademark is registered to Unilever Supply Chain, Inc.

Accidental Invention – Post-it Notes®

Post-it® Notes was actually the product of an engineering mistake by 3M scientists who accidentally stumbled upon an adhesive that could stick and be repositioned on just about any surface. Spencer Silver was working in the 3M research laboratories in 1970 trying to find a strong adhesive. Silver developed a new adhesive, but it was even weaker than what 3M already manufactured. It stuck to objects, but could easily be lifted off. It was super weak instead of super strong.

Another 3M scientist named Arthur Fry was singing in the church's choir and used Silver's adhesive to coat his markers. Success! With the weak adhesive, the markers stayed in place, yet lifted off without damaging the pages. 3M began distributing Post-it ® Notes nationwide in 1980 -- ten years after Silver developed the super weak adhesive. Today they are one of the most popular office products available. 

Accidental Invention – The Slinky®

In 1943 during World War II, Richard James an engineer in the United States Navy saw a torsion spring fall to the floor and flip-flop as he watched. James and his wife Betty James perfected a long steel ribbon tightly coiled into a spiral. They began production of Slinkys® out of 80 ft of wire in 1945 under the company name James Spring & Wire Company. According to one estimate more than 300 million Slinkys have been sold. In 1998, Betty James sold the Slinky to Poof Products, Inc.

• Email This
• Print
• Comments

In an effort to push forward patent reform,  Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) posted a press release using the highly publicized Supreme Court decision in Bilski v. Kappos (.PDF) as a reason as to why reform is needed.

Bilski affirmed a Federal Circuit decision denying a patent for a process for hedging on energy commodities because it was deemed merely an abstract idea.  Here is what he said:

In Bilski v. Kappos, the Court unanimously affirmed the judgment of the Federal Circuit that the application for a patent on a business method should be rejected. The Court’s opinion, joined by only five of the Justices, however, needlessly left the door open for business method patents to issue in the future, and I am concerned that it will lead to more unnecessary litigation.

Since the debate over comprehensive patent reform began many years ago, the Supreme Court has demonstrated an increased interest in patent law cases. The Court’s decisions have moved in the direction of improving patent quality. While today’s decision will take time to analyze and may not have advanced the law and created the stability and certainty that it could have, it appears to continue this trend, which is consistent with the goal of patent reform legislation pending in Congress. The courts, however, are constrained by the text of our outdated statutes, and it is time for Congress to act.

I wonder what he meant about needlessly leaving the door open for business method patents? Does he  believe a business method is not a viable subject matter for a patent? Does he believe that if a patent application for a business method passes the machine-or-transformation test it shouldn't be allowed a patent?

I wish there was more substantive information in the press release. But I guess it's a political maneuver to use a well-publicized case to draw attention to his pet project, the Patent Reform Act of 2010. Still, with summer recess approaching, even with the publicity that Bilski has drawn is it possible that we will see anything in the way of progress on S.515 until the fall?

Other related posts:

USPTO Sends Bilski Memo to Patent Examiners

Bilski vs. Kappos Decision

Bilski vs Kappos

Legal community weighs in on Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

Patent Reform Act of 2010: An Overview

"Patent Reform Act of 2010" and "First Inventor to File" Rule Change

• Email This
• Print
• Comments

Almost immediately after the Supreme Court handed down the Bilski decision Robert W. Bahr, Acting Associate Commissioner for Patent Examination Policy sent a memorandum to the patent examining corps which gave guidance as to how the USTPO examiners should interpret the case.

Bahr told examiners to examine patent applications for compliance with section 101 using the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101.

If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea.

Bahr summarized what the Supreme court decided in the short memo:

The Supreme Court confirms section 101 specifies four independent categories of inventions and discoveries that are eligible for protection: process, machines, manufacturers, and compositions of matter.

The Supreme Court confirms that laws of nature, physical phenomenon and abstract ideas are not patentable subject matter.

The Supreme Court decided claims of Bilski not patent-eligible because under section 101 because they are an attempt to patent abstract ideas.

The Supreme Court indicated machine for transformation test is only a threshold inquiry and is not the sole test for patent eligibility of processes under 35 USC 101.

Significantly, the Supreme Court also indicated that a business method is at least in some circumstances eligible for patent under section 101.

Bahr concluded by saying an examiner should continue to examine patent applications for compliance with section 101 using "existing guidance" concerning the machine-or-transformation test.

I tried to figure out what the existing guidelines are for the USPTO regarding the examination of a process claim. I found another memorandum dated January 7, 2009, by John J. Love, Deputy Commissioner for Patent Examination Policy, addressed to the Technology Center Directors and the Patent Examining Corps which explained that the Bilski machine-or-transformation test for a method claim is whether or not the claimed method is:

1. Tied to a particular machine or apparatus; or
2. Transforms a particular article to a different state or thing.

The "guidelines" go on to say that there are two corollaries to the machine-or-transformation test :

• First, a mere field of use limitation is generally insufficient to render otherwise eligible method claim patentable. This means the machine or transformation test must impose and meaningful limits on the method claim scope to pass the test; and
• Second, insignificant extra-solution activity will not transform an unpatentable principle into a credible process. This means for citing a specific machine work or a transformation of a specific article is an insignificant step, such a data gathering or outputting, is not sufficient to pass the test.

Other related posts:

Senator Leahy Uses Bilski to Push Patent Reform

Bilski vs. Kappos Decision

Bilski vs Kappos

Legal community weighs in on Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

• Email This
• Print
• Comments

To summarize today's Supreme Court ruling in Bilski (PDF), business method patents remain viable subject matter and the machine-or-transformation test enunciated as the sole test by the Federal Circuit is not the exclusive test, but merely one tool in the Examiner toolbox.

The court affirmed that Bilski’s risk-management method was not patentable subject matter. "Indeed, all members of the Court agree that the patent application at issue here falls out-side of §101 because it claims an abstract idea."

You can not patent laws of nature, physical phenomena, and abstract ideas.

Indeed, Justice Kennedy writing for the Court found that 35 U.S.C. §273 acknowledges the existence and statutory protection of business method patents.

Adopting the machine-or-transformation test as the sole test for what constitutes a “process” (as opposed to just an important and useful clue) violates these statutory interpretation principles. Section 100(b) provides that “[t]he term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”

"The Court is unaware of any “‘ordinary, contemporary, common meaning...of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article..., under the doctrine of noscitur a sociis."

The Court found that the invention in Bilkski, is an attempt to patent an abstract idea as well as a mathematical formula to express that idea. The Court reasoned that this was not patentable subject matter under 35 U.S.C. §101.

In his concurring opinion, which was joined by Justices Gindburg, Breyer, Sotomayor and Stevens, Kennedy agreed with the majority that Bilski revolved around the attempt to patent an abstract idea and therefore ran afoul of §101.

Nevertheless, Stevens (and the concurring justices) would have taken this decision further by reiterating their position that business method “patents” are not patent-eligible subject matter in the first place.

I asked patent attorney John Del Vecchio of the Buffalo patent law firm of  Del Vecchio and Stadler about his thoughts regarding this much anticipated Supreme Court Decision, he highlighted the following quotes from the Biliski opinion (PDF):

Page 8
This Court’s precedents establish that the machine-or- transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or- transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.”

Page 9
As a result, in deciding whether previously unforeseen inventions qualify as patentable “process[es],” it may not make sense to require courts to confine themselves to asking the questions posed by the machine- or-transformation test. Section 101’s terms suggest that new technologies may call for new inquiries.

Page 10
Section 101 similarly precludes the broad contention that the term “process” categorically excludes business methods.

Page 12
But beyond this or some other limitation consistent with the statutory text, the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101.

Page 13
Petitioners’ claims are not patentable processes because they are attempts to patent abstract ideas.

Page 16
In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act.

Del Vecchio concludes, "So, it looks like the machine/ transformation test is a great clue, but not the sole test under 101. And, it looks like business method patents are alive and well.

Too bad the Court failed to spell out what the other 101 clues are!!!  Seems like we might be back to the machine/transformation test as the only sure way of satisfying 101."

Based on today’s ruling and the concurring opinion of Justice Stevens, it will be interesting to see whether the Supreme Court will further define patent eligible subject matter and grant certiorari (PDF) in Mayo v. Prometheus (PDF) a case challenging the patentable subject matter of Prometheus Labs' patents that cover a method of optimizing the dosing of a drug.

Other related posts:

Senator Leahy Uses Bilski to Push Patent Reform

USPTO Sends Bilski Memo to Patent Examiners

Bilski vs Kappos

Legal community weighs in on Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

• Email This
• Print
• Comments (1)

What's taking the Supreme Court so long to hand down an opinion on the Bilski vs Kappos case? Bilski was argued on Nov. 9, 2009... 225 days ago. There has been much speculation that the decision will be published when the Supreme Court next releases its opinions on Thursday (June 24, 2010) or next Monday.

Dennis Crouch's Patently-O blog posts a nice chart of Joseph Miller, a professor at Lewis & Clark Law School, which shows the length of time it took the Supreme Court to render decisions on 20 other patent cases. The range was between 35 and 153 days. Dennis Crouch concludes:

"If you feel like you've been waiting a long time to see the Bilski opinion, it's because you have been waiting a longer time than usual."

My first thought was how can you compare Bilski, a case that's going to have long reaching consequences to many existing patents and software companies futures, with any other patent case? Wouldn't you expect it to be longer than the rest?

But a quick glance at the list and I saw a couple of the seminal cases in patent law history and a big one is right there at 140 days- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a case that was pending for almost twenty years and a case the Supreme Court looked at twice regarding the scope of prosecution history estoppel under the doctrine of equivalents.

The questions presented to the supreme Court in Bilski were:

1. Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas."
2. Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business." 35 U.S.C. § 273.

The Bilski decision may affect whether any business method, software, e-commerce and/or medical diagnostic technology is patentable. It will be interesting to see what and when they decide this case. Stay tuned for my next post on the Bilski decision.

Other related posts:

Senator Leahy Uses Bilski to Push Patent Reform

USPTO Sends Bilski Memo to Patent Examiners

Bilski vs Kappos Decision

Legal community weighs in on Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

• Email This
• Print
• Comments

What is patentable subject matter? Many people believe that they can patent anything. But the truth is there is only certain statutorily allowable subject matter that can be patented (35 USC 101).

Here's a list of the basic allowable subject matter:

1. Process (Method of making infrared heaters which reduces costs by 25%) 
2. Machine (Motorized device for clearing leaves out of a gutter without climbing)
3. Article of manufacture (Pencil, chair)
4. Composition of matter (Paint, drugs)
5. Or any new and useful improvement thereof (Chair with a footrest)

If your invention falls into one of the above categories it must also be:

• New (no one has ever done it before) 35 USC 102
• Useful (it can't be something that has no use whatsoever) and
• Non-obvious 35 USC 103 (It must be non-obvious to one having ordinary skill in the pertinent art at the time the invention was made)

It doesn't take much to show that your idea is new because the slightest change will cause it to be original. And useful isn't really much of an obstacle, almost everything has some sort of use. There is a joke among chemical patent attorneys, "Any chemical composition has a use, it either kills grass or helps it grow!"

The hard thing to understand and to teach is what is non-obvious! I sometimes use the example of the invention of a table to get this idea across.

Let's pretend you were around 10,000 years ago and you were the first person to invent a table. Your table has a square top, a bottom and four legs.

Now someone makes an improvement on the table and tries to get a patent. The improvement is that the top is circular in shape instead of a square. The argument by the patent office may be someone skilled in the art (a carpenter) would think it obvious that the top could be made in any shape or dimension and a round top would be rejected as an obvious improvement.

Even though the improvement of the first ever circular top is new, and it is useful it would be arguably not patentable if it was determined that it would be an obvious improvement for a carpenter to make a table top in any shape.

Now let's take a different approach. Let's say that the new inventor was the first to invent a table with pedestal legs connected to the center of the bottom. It could be argued that this way to connect the legs to the top is a non-obvious improvement and would be potentially patentable in the prehistoric patent office.

But obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. 

So if there was a chair in the prior art with a with similar legs like the pedestal legs of the invention table the examiner might combine the references of the square table with the chair and say it was obvious to come up with the new table.

I am not trying to replace the many legal treaties and case law on this the question of obviousness, not to mention the Manual of Patent Examining Procedure (MPEP) where there are many examples of what is non-obvious. I hope the simple logic of the table scenario is an easy way to generally grasp this concept.

• Email This
• Print
• Comments (1)

Can you patent an idea? No.

Many potential inventors say to me “I have an idea I would like to patent” but what they do not understand is that the invention itself is patentable, not the idea. In order for an idea to become a patented invention, the inventor must be able to teach someone of ordinary skill in the art how to make and use the invention.

In 1966 Eugene Wesley "Gene" Roddenberry came up with the “idea” for the transporter. In the Star Trek television series Captain Kirk would use his communication device (which looked a lot like the cell phones of today) from a planet’s surface to order his engineer to “beam me up Scotty.”

Could Roddenberry have applied for a patent in 1966 for the cell phone or a transporter? Not unless he could describe to someone skilled in the art how to make and use it.

The law doesn’t even require that you actually make it (“reduction to practice”) you just have to be able to describe how to make and use it. 35 U.S.C. 112 often referred to as the enablement clause reads

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same…”

§ 112 paragraph 1 requires nothing more than objective enablement. In fact, an inventor can "constructively" reduce an invention to practice, which is unique to patent law.

"The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented. Neither the statutory definition of the term in § 100 nor the basic conditions for obtaining a patent set forth in § 101 make any mention of "reduction to practice.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60-61 (1999)." 

As Judge Pauline Newman as described, "[t]he inclusion of constructed examples in a patent application is an established method of providing the technical content needed to support the conceived scope of the invention" because "[u]nlike the rules for scientific publications, which require actual performance of every experimental detail, patent law and practice are directed to teaching the invention so that it can be practiced." Hoffmann-LaRoche, Inc. v. Promega Corp., 323 F.3d 1354, 1377 MPEP § 608.01(p).

People often come to me with an idea of how some type of machine might help solve a problem. But when I ask "how do you make it?" they cannot describe the inner workings of the machine. I ask them to tell me how it works and they say "can’t we get someone like an engineer or an electrician to make it work?"  I reply "wouldn’t that engineer be the inventor?"

If we go back to 1969 and the wireless phone idea... just having the idea to transmit voice signal wirelessly wouldn’t be enough to get a patent. You would have to be able to describe it like George Sweigert of Euclid, Ohio did on June 10, 1969. Sweigert  is the man who is credited as the person who came up with the first cordless phone and was awarded US Patent Number 3,449,750 (.PDF). Download the patent to see the way he described how to make and use his invention.

The bottom line is that your new idea of a way to solve a known problem can only be patented if you can describe how to make and use it. You cannot  get a patent on the idea alone. 

• Email This
• Print
• Comments (1)

Tweet of the week

Thanks to Innovator, Consultant, Strategist, Emerging Media, Social TV, Canadian Expatriate Richard Kastelein for tweeting @expathos this week about a Sony patent application that may give us a preview on how viewers could interact with their TVs. What is the future TV of and TV apps?

We all know that one day the computers and TVs will be the same; there will be central location in your house that will control all your entertainment from movies, games, music, internet and the television. But who will bring us there first? Will it be the Sony  'Smart TV'?

Richard Kastelein reported for appmarket.tv that Financial Times (FT) and the UK Times said that Google and Intel are expected to announce Google’s I/O conference on May 19th, in San Francisco a significant breakthrough into consumer electronics and the broadcast industry with the launch of a “Smart TV” platform.

“The technology is allegedly powered by Android and Intel's chips, and will make Sony televisions and even Blu-ray DVD players function like computers, running Google's search, Chrome Web browser, YouTube and other programs.

Kastelein thinks that this smart TV will be a windfall for the App industry, he quoted Julie Jacobson

"...that by 2015, more than half of all TVs shipped worldwide will have a network connection - and seven out of ten of those units will ship with an embedded app platform and app store, according to a new report from Gigaom Pro called, “TV Apps: Evolution from Novelty to Mainstream” (subscription required)."

Janko Roettgers authored an article for newteevee.com "Is This the Sony Smart TV?"  And Paul Johnson of appmarket.tv wrote an article "Google TV - Does Sony patent give us a view on how viewers could interact with their tv's?"  Both are of the opinion that a recent Sony patent applicattion entitled NETWORK MEDIA PLAYER WITH USER-GENERATED PLAYBACK CONTROL(.PDF) may be the basis for the announcement.

The patent application essentially describes a network media player able to generate and consume XML-based metadata for programming from any source, including over-the-top, local media and cable TV. This type of metadata would then be stored on a central server and exchanged between users through social networks, or made available by broadcasters or other entities.

Here is a excerpt from the patent application:

It is desirable to provide a mechanism to create, use, and/or share different playbacks of television programs and other sensory works. For example, it is desirable to provide an individual who has recorded the Super Bowl only to watch the commercials with the ability to playback his recording of the Super Bowl on his PVR such that only the commercials are shown. Similarly, an individual who has recorded the Super Bowl only for the football may desire to only see each football play during playback. This [patent application] discusses techniques and systems that may be used to create metadata or the like that controls or varies the playback of a sensory work, such as, a television program.

It also gives a hint as to how big business will profile the American consumer and narrowly direct advertisements at a specific communities. The next step will be to direct ads at a specific household or individual. Talk about "big brother" getting closer to reality. Take a look at this:

In some instances, it may be desirable to insert additional information, video, audio, and the like, during the playback of a sensory work. For example, a user may desire to insert media from another source, from another segment within the same source, or to insert new data. One implementation of this technique would be to insert profile-based advertising during playback. For example, during the playback of the Super Bowl, viewers may be shown advertisements based on demographics or any other information available. Thus, viewers living within one census block group may be shown a Lexus advertisement, while those in another census block group may be shown a Toyota advertisement.

What are you able to afford? The Lexus or the Toyota? So will big business/brother show the Lexus to you or just to your rich brother?

• Email This
• Print
• Comments (1)

The Buffalo Law Journal May Special Report focusing on Intellectual Property is now available.

Thanks to Matt Chandler and the staff at Buffalo Law Journal for allowing me to author a guest column in this months issue.

If you haven't had a chance to check it out, here is a sneak peek at what's inside:

A look at SPLiCE, the Society of Product Licensors Committed to Excellence, through the eyes of its executive director Kimberly Billoni written by David Bertola.

Billoni shares her thoughts on the role her group plays in bringing businesses together.

An overview of the IP practice in WNY by Matt Chandler. Local attorneys say business is strong despite economic concerns. Comments of registered patent attorneys from both large and small firms to get a sense of what they are seeing as well as what the future holds for the practice of IP law.

A guest column by me Vincent LoTempio, looking at an overview of the Patent Reform Act of 2010.

Stepping away from the IP world, Matt Chandler takes a look at what impact recent health care legislation may have on companies considering implementing wellness programs in the workplace.

A spotlight on Lancaster Town Justice Mark Montour who was recognized for his efforts to reach troubled teens battling addiction in Lancaster.

Follow the Buffalo Law Journal on Twitter @BufLawJournal and Facebook.

• Email This
• Print
• Comments

What Inventors Need to Know...

The "IP.com Global Patent Search"  tool may be your answer if you're looking for a free and easy way to search for prior art patents. The speed of this search engine is amazing. It finds a result almost immediately.

IP.com offers a free search engine box to be integrated into a web site or blog. The search box enables the user to search patents and selected non-patent literature. It takes just seconds to copy and paste the HTML code snippet in an appropriate location on your website, allowing visitors to quickly access patent searching.

Try searching something in the Global Patent Search box below to see how it works!

I tried a few searches myself and was impressed with the database and its ease-of-use. While the USPTO search site makes it difficult to see images and to download patent documents in .PDF format, the IP.com search engine allows you to do both seamlessly.

However there was a point it asked me to type in a CAPTCHA to ensure that my search was not generated by a computer and I was a real person. What a pain in the neck! My eyes aren't what they used to be, but I managed to type it in okay.

Below I pasted a sample of what a search result page looks like. I particularly like the "Options" box, especially its "More Like This" option because it instantly gave a neat organized list of prior art under the following titled headings:

• US Utility Registered Patents;
• US Utility Patent Applications; and
• Prior Art Database English Language Disclosures.

The "More Like This" feature certainly saves time because it allows you to get many similar examples of prior art with one simple click. This is faster than a search on the USPTO  search page where you have to go back and forth from the Patent Application search page to the Registered Patent search page. 

The IP.com search engine provides many other features, like an Advanced Search page that allows the searcher to customize a search to more efficiently find what their looking for. All in all I believe the IP.com Global Patent Search engine is a valuable tool for inventors and patent practitioners alike.

• Email This
• Print
• Comments (2)

Is the United States patent system broken and does it need to be fixed? Can our governmental leaders fix the patent system through legislation? Patent reform legislation has been introduced in each of past three Congresses and has yet to be ratified. Through the current Reform Act it is hoped that better patents are issued, patent rights will be enforced and the flow of technology advances our society for the good of us all. The argument over the many proposed changes appears to be getting closer to a conclusion.

Versions of the bill have been introduced in both the House and Senate (H.R. 1260 in the House, S.515(.PDF) in the Senate). The Senate Judiciary Committee has passed the bill and the House Judiciary Committee has held hearings on it. It will need to pass both committees and both chambers of Congress for it to be sent to the president.

The Obama administration has signaled support for a bipartisan patent reform agreement in the Senate. Senate Judiciary Committee Chairman Patrick Leahy (D-VT) recently came to agreement with Jeff Sessions (R-AL) regarding changes to the Patent Reform Act of 2009 (S. 515), increasing the chance that patent reform will actually happen.

In an April 20, 2010, letter addressed to both Senators Leahy and Sessions, Commerce Secretary Gary Locke pointed out that President Obama supports patent reform and would like to see the bill brought to the floor of the Senate and passed. Here is an excerpt from Locke’s letter:

The Obama Administration strongly supports your efforts to achieve such reforms and is committed to working with members of both houses of Congress to bring these efforts to fruition as you seek to bring a bill to the Senate floor. Regardless of any issues that remain under discussion, there is a consensus that a strong patent system, including an appropriately funded and well-functioning United States Patent and Trademark Office (USPTO), fosters innovation that drives economic growth and creates jobs.

Leahy’s procedural move is called a “hot line,” in which Senate Majority Leader Harry Reid (D-NV) will ask all Senate offices for unanimous consent to proceed to the bill, substitute the new language, and consider it passed.“Hot line” is the term used for a request to Senators to agree to allow a bill or resolution to be considered approved by the Senate without debate. It is has been reported by Dan Friedman of the NationalJournal.com that Senator Leahy is seeking floor time for consideration of S. 515, and hopes it will be taken up by the full Senate prior to Memorial Day.

Some of the proposed changes to current law are outlined below:

• First Inventor-To-File: The U.S. currently uses a "first-to-invent" system, which seeks to determine which applicant actually invented it first. The proposed reform would grant a priority of a right to the inventor who first-filed a patent application. Currently an inventor has a one-year grace period to file a patent application from the time the invention is used in public, published or offered for sale. This change would eliminate the one-year grace period unless the inventor was the "first-filer."
• False Marking: The proposed reform would eliminate the right of "any person" to file a false marking claim. Claims would be limited to individuals who have "suffered a competitive injury." This change would apply to apply to all cases, without exception, pending on or after the date of the enactment of this Act.
• Damages: The Patent Reform Act of 2010 attempts to address allegations that awards in patent cases are at times unfair and inconsistent. The Act proposes that courts be required to "identify the methodologies and factors that are relevant to the determination of damages, and the court or jury shall consider only those methodologies and factors relevant to making such determination." In other words, juries will only be allowed to award damages if the contentions are supported by substantial evidence. Each party would be required to "state, in writing and with particularity, the methodologies and factors the parties propose for instruction to the jury in determining damages … specifying the relevant underlying legal and factual bases for their assertions." This approach looks to strike a balance between the rights of patentees and accused infringers. However, as this approach does not actually limit damage awards, it remains to be seen how much this will affect a jury’s determination of damages.
• Trial: Right to split trial into segments: damages; infringement; validity; and willfulness.
• Willful Infringement: Under the current law, if it is determined that an accused infringer willfully infringed on another’s patent, "the court may increase the damages up to three times the amount found or assessed" (see S. 515 – Patent Reform Act 2009). Understandably, willful infringement was asserted in a majority of cases, and was found in many of them. This led to a number of unforeseen consequences. For instance, since one defense to willful infringement is reliance on an opinion from a patent attorney that there was no infringement, a number of lawyers were charging outrageous amounts (in excess of $100,000) for these opinions. In other cases, it was found that some businesses deliberately avoided learning about patents in order to avoid willful infringement claims. This completely goes against the whole purpose of the patent system, which is to promote science and useful arts. As a result, the Patent Reform Act of 2010 attempts to fix the willful infringement doctrine by increasing the standard for finding it. The 2010 Act proposes that, in order to be found “willful,” you must be found to be “objectively reckless” by clear and convincing evidence. It would also be made clear in the statute that knowledge alone is not enough to establish willfulness, and that any close cases should ere against a willfulness finding. This approach strikes a nice balance by making it much more difficult to assert willful infringement without getting rid of the doctrine all together.
• Pre-Issuance Submissions of Prior Art by Third Parties: The statute would expand the time frame for third-party submissions and allow third-parties to submit references and a statement regarding the relevance of the reference to patentability during examination of a patent application. This provision will benefit the public, the Patent Office, and inventors by giving the public additional time and the ability to make arguments to the Office; the Office more thoroughly examines an application in the first instance thereby decreasing potential reexamination proceedings; and the inventor is granted a patent which has been more thoroughly examined thereby decreasing the likelihood that the patent will later be invalidated through a novelty/nonobviousness argument.
• Litigation Venue: Patent cases could be transferred for the convenience of the parties to venues clearly more convenient than the venue in which the civil action is pending.
• Federal Circuit Judicial Residency:  Federal Circuit Judges would no longer be required to live in the Washington, DC area.
• Micro-Entity: A new type of entity defined as a "micro entity" for an inventor that has not been named on 5 or more previously filed patent applications would qualify for reduced fees.
• Best Mode Requirement: The Best Mode requirement would no longer be an invalidity defense and it cannot serve as a basis for holding a patent unenforceable. If the bill is made into law it will result in: Patents that do not teach the best way to make the invention, but teach “a way” to make the invention; this change favors the inventor over the infringer because it will make it harder to invalidate a patent.
• Inequitable Conduct: Currently, when applying for a patent, the patentee is required to supply to the Patent Office any information deemed relevant to the invention’s patentability. If you intentionally mislead the Patent Office at this time, you are guilty of inequitable conduct, and the penalty is unenforceability of your patent. While that appears to be fair, it turns out that because of the penalty at stake, inequitable conduct is alleged in almost every major patent case. As a result, the Patent Reform Act of 2010 proposes to allow patent owners to request “supplemental examination” prior to litigation. During this time, the patent owner could submit relevant information to the Patent Office for consideration. Any patentee surviving this reexamination would be exempt from an allegation of inequitable conduct based on the initial examination process. However, a big question mark is the ability of the Patent Office to handle the changes created by this proposed law, including processing a host of new reexamination proceedings. With 750,000+ applications sitting in its backlog, can the USPTO afford to devote manpower to this?

The Patent Reform Act of 2010 appears to balance the playing field for patentees in defending their patents.In the long run, the pressures of market competition will determine the fate of the patent system based on its performance. If the patent system fails, over time it will make the United States economically less competitive, and industry will demand change.

• Email This
• Print
• Comments

How do you protect your intellectual property? What is intellectual property? Is a special sandwich that you make better than anybody else intellectual property? Imagine you are the owner of a new restaurant who has created a new edible masterpiece. And subsequently, to your surprise, you discover that a copycat sandwich is being made across the street, without your permission.What do you do? What are your remedies?

In a new television commercial, Burger King's mascot breaks into the headquarters of McDonald's and steals the recipe to the Egg McMuffin.

I don't think they can register the work with the U.S. Copyright Office and obtain a certificate of copyright. Can they file an application for patent registration of the sandwich structure?

Remember for something to be patentable subject matter it must be a new, useful and a non-obvious improvement over something that's already out there. You don't see too many patents on food recipes and sandwiches. Maybe a design patent (.PDF), but I doubt that will give them much protection.

It may be argued that the business conduct of Burger King in this instance is actionable under federal unfair competition provision of the Lanham Act. While the Lanham Act, in general, focuses primarily on obtaining, maintaining, and enforcing trademark and service mark rights, Section 43(a), allows for suits for false designation of origin. But I don't think there is a false designation, Burger King comes right out and says we're making our own version of this old sandwich.

And it's not a copy of a trade secret (like the McDonald's special sauce) so I don't think there's any grounds for McDonald's to bring a suit. There is probably not much McDonald's can do to stop Burger King from making their version of the egg McMuffin.

What is protectable is the brand name or the trademark. What Burger King is tacitly saying in this clever breakfast commercial is that, McDonald's doesn't own the rights to eggs, sausage, cheese or English muffins. McDonald's owns the trademark "Egg McMuffin(.PDF)."

John DeVore, recently wrote a Special article to CNN entitled "Big burger boys burgle breakfast." about the commercial showing how Burger King's new BK Breakfast Muffin Sandwich's is just a copy of the classic Sausage McMuffin.

But are McDonald's executives upset with this campaign? Have lawyers been rallied and accusatory calls been made?"We haven't received any direct feedback from competitors," said Brian Gries, Burger King's vice president of marketing impact. Gries further defends his company's choice to be up-front about the similarities between the BK Breakfast Muffin and the McMuffin, saying, "We are not above taking a product that we know customers like and delivering it to our guests at a great price."

I love the guile of Burger King making a full admission in the commercial that they are copying this sandwich. I would love to see the internal memos from the lawyers arguing about whether or not they should allow this commercial to air. It is not like McDonald's has not been involved in a number of lawsuits involving trademark issues in the course of its history. But I think if McDonald's brings a lawsuit in this instance it would fuel of a lot of bad press and they would have little chance of success.

• Email This
• Print
• Comments

The patent reform legislation has been amended and introduced in the Senate as Amendment to S. 515 (“Patent Reform Act of 2010 (.PDF)″). When and if it will ever be enacted is a question in and of itself, however here is my summary of one of the more relevant sections of the proposed patent reform act.

Elimination of the Best Mode Requirement

Patent reformers wish to modify or remove the subjective elements of patent infringement litigation that depend on proving an inventor’s state of mind. Current patent law (35 U.S.C. 112) requires that a patent application “set forth the best mode contemplated by the inventor of carrying out his invention” and failure to comply can invalidate a patent in court.

The courts, however, have failed to consistently define and set the scope of the best mode requirement, such that compliance with the best mode requirement currently presents a guessing game for patent practitioners and inventors. Steven B. Walmsley, Best Mode: A Plea to Repair or Sacrifice This Broken Requirement of United States Patent Law, 9 Mich. Telecomm. Tech. L. Rev. 125 (2002),(PDF)

Two patents (5,827,698 and 6,040,160) in the billion dollar Bio Tech industry were recently invalidated in the case of Ajinomoto Co., Inc. v. International Trade Commission (Fed. Cir. 2010) because of failure to meet the best mode requirement of 35 U.S.C. 112. The two patents relate to methods of producing L-lysine using GM E. coli and include fairly broad claims. The evidence showed that Ajinomoto intentionally concealed their preferred host strain. The court ruled the claims were invalid for violations of the best mode requirement of 35 U.S.C. § 112, and that both patents were unenforceable for inequitable conduct because of those best mode violations.

If the Patent Reform Act of 2010 where enacted it would have eliminated the best mode invalidity defense and the Ajinomoto patents would not have been invalidated. Not to mention the time and expense to litigate the issue. I wonder how many hours were billed in the discovery and argument of this issue?

If the bill were passed, SEC. 15. BEST MODE REQUIREMENT would read in part as follows:

‘‘…failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable…”

The reasoning behind the recommended change is that the subjective “best mode” requirement throws a monkey wrench in every patent litigation. The best mode requirement focuses specifically on the best mode known to the inventor at the time the application is filed. It is a subjective standard. Time and money are expended  looking for examples of “Evidence of concealment” of a subjective state of mind of the inventor at the time of filing.

Is this “subjective” best mode requirement necessary when 35 U.S.C. 112 has an "objective" requirement that a patent application give a “written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use” the invention?

The public is fully informed of the patented technology by the requirement for a complete written description and enabling details to permit the complete scope of the claimed invention to be used. The added requirement to also disclose the “best mode” was placed into law because it was thought of as

“… a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute. The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves.” In re Nelson, 280 F.2d 172, 126 USPQ 242 (CCPA 1960).

"The best mode requirement creates a statutory bargained-for-exchange by which a patentee obtains the right to exclude others from practicing the claimed invention for a certain time period, and the public receives knowledge of the preferred embodiments for practicing the claimed invention." Eli Lilly & Co. v. Barr Laboratories Inc (PDF)., 251 F.3d 955, 963, 58 USPQ2d 1865, 1874 (Fed. Cir. 2001).

This edition of the patent reform act is an example of yet another "balancing act" by the legislature. If the bill is made into law it will result in:

• Patents that do not teach the best way to make the invention, but teach “a way” to make the invention; and
• The elimination of a defense from defendants that use (infringe) patented technology so that they can not invalidate an otherwise valid patent.

Here is a patent reform that favors the inventor over the infringer and arguably over society as a whole.

• Email This
• Print
• Comments

New inventors are often looking for a short overview of the patent process. Ordinarily sending inventors to the United States Patent and Trademark Office (USPTO) web site is like sending someone into a great quagmire.

But there is a nice flow cart with links directing viewers to pertinent information regarding each step of the process for getting a utility patent on the USPTO web page.

• Email This
• Print
• Comments

The Patent Reform Act of 2010 was recently made public in the form of an (“Amendment to S. 515”). Senate Judiciary Committee Chairman Patrick Leahy (D-Vt.) spoke at an Executive Business meeting (webcast) February 25, 2010 about this amendment to the patent reform act.

Leahy stated, “When Senator Orrin Hatch (R-Utah) and I started this process several Congresses ago, along with Congress members  John Conyers Jr.,  Howard L. Berman, Lamar Smith and others in the House, we wanted to improve patent quality and the operations at the PTO, and address runaway damage awards that were harming innovation. We are close to a compromise that will address these issues. No one will think this a perfect bill, but we are close to a comprehensive patent reform bill that benefits all corners of the patent community.”

The 2010 amendment of the "Patent Reform Act" proposes a number of so-called improvements that are the subject of other LoTempioLaw blog posts (See the list below). This post is directed at the proposed change regarding First-Inventor-to-File.

First-Inventor-to-File

The proposed change does not call for a “First To File” system as some people mistakenly believe; it proposes a “First Inventor To File” system. Remember you cannot file a patent application in either system unless you are the inventor. Because two people can independently invent the same thing at different times there may be a race to the patent office by two inventors.

The current US system awards a patent to the inventor who is the first to invent regardless of whether the application was the first to be filed in the patent office for that invention. The new system will reward the inventor who wins the race to the USPTO and files the first application.

In the current US system, when two inventors seek a patent on the same invention the fact finder must determine who invented it first (it doesn’t matter who filled it first). The proposed “First Inventor To File” system will minimize Issues such as

• whether an inventor “abandoned, suppressed, or concealed” the invention
• “when was first conception,”
• “when was actual reduction to practice” and 
• “if the inventor used reasonable diligence coming to the patent office with the invention”

People now question if a first-inventor-to-file system is put in place will big business always beat the independent inventor to the patent office to file a patent application? Under Secretary of Commerce and USPTO Director David Kappos, says that there is a big misconception regarding “First Inventor To File.”

With the “First Inventor To File” system there is no risk of business beating the independent inventor to the patent office to file a patent application because the interloper is not an inventor. All filers have to sign an oath and declaration under penalty of criminal sanctions.“This leaves only the issue of simultaneous, non-collaborative invention—what we call interferences. The chances that a patent will be subject to interference based on a first to invent claim—that’s our current system—is .01%. In 2007—the most recent year for which we have statistics. The total number of interference cases for all applicants of all sizes that were decided based on a priority claim was seven! Of those seven decisions, only one involved a small or medium sized entity, and not a single one was won by an independent inventor who was the second to file. That means we already essentially have a first inventor to file system.”

Is this a naive view of the world? Or will non-inventors race to the office to file applications and basically say, hey prove I didn’t invent this invention. Will more litigation result because of this proposed change in the patent law? Or will the independent inventor just lose out on his/her invention because they won't have the wherewithal to fight it out in court even if he/she is the only true inventor?

The Professional Inventors Alliance USA viewpoint is that this provision will not guarantee that the actual inventor will be granted the patent.

"It creates conditions for very poor prior art, which is the existing knowledge of a similar innovation known to the general public. It burdens examiners with questionable applications by non-inventors. It creates a new malpractice liability for patent practitioners who may not beat another party to the patent office, thereby increasing the potential for litigation.

Kappos thinks the benefits will be reaped in the cost savings when filling internationally,

"... all other countries in the world use a “First Inventor to File” system. The change in the Patent Reform Bill will streamline the process for you to acquire patent rights and reduce your costs in seeking rights outside of the United States as you consider entering the global marketplace. This change will make it easier for you to “go global” with your invention."

Personally, I think this argument is much to do about nothing. I haven't heard many inventors consciously say I know it is a "first inventor system" so I don't care if somebody else files before me. I think that even with the system as it is now, inventors still believe that it's vitally important to be the first to file. Being the first to file always has its advantages. Even the patent office recognizes a patent application as a "constructive reduction to practice." I'm sure that if inventor observes an application pending in the United States Patent and Trademark Office for their invention he/she is less likely to go forward and file a second in line application regardless as to whether it's a “First Inventor to File” or a "First Inventor to Invent" system.

• Email This
• Print
• Comments (1)

Guest Blogger: Brendan S. Lillis, Registered Patent Attorney

These days, with the average waiting period to hear back from the patent office regarding a new application exceeding three years, the patent office needs all the help it can get. As such, filers of patents are required to disclose all relevant information about prior art that they know of to the patent office. This is known as the “duty to disclose,” and is governed by 37 CFR §1.56. This not only saves the patent examiner time otherwise spent searching for this information, but it also gives the patentee the chance to distinguish the new invention from prior art right off the bat.
 

But how can we be sure that the information disclosed by the patentee is accurate? How do we know some piece of information will purposely not be disclosed, in the hopes it will never be found?

Enter the Doctrine of Inequitable Conduct. This doctrine attempts to set the law, and asks two questions:

1. Was there intent to deceive the Patent Office?
2. Was the disputed information material to patentability?

According to the  Manual of Patent Examining Procedure (MPEP), the USPTO wants nothing to do with answering these questions. This leaves it up to the Federal Circuit, which has been all over the board in recent years in determining the levels of intent and materiality required to violate the doctrine. An in-depth look at the Federal Circuit’s handling of this matter can be found in a Marquette Intellectual Property Law Review (.PDF) article.

There are some real problems with the system as is it currently operates. For one, the Federal Circuit’s desire for flexibility in interpreting the rules on a per-case basis is at odds with the Patent Office’s desire to clearly state what is expected of patentees. This is due in large part to the fact that there is no statutory standard on which the rule is based. For instance, how do you determine whether certain information is “material” or not? So many different standards have been used that you don’t know which one to go by.

Also, the doctrine asserts that the best way to police patent fraud is for competitors (not the patent office or interested third parties) to raise the issue as a defense, as opposed to an independent action.

With so much recent talk of patent reform one would think this issue is sure to be brought up.  I spoke with Kali Murray, Assistant Professor of Law at Marquette University Law School and co-author of the aforementioned Marquette Law Review article and she said it's not that simple. She notes that, while this issue was in the Congressional spotlight a few years back, reform never came, and now false marking grabs all the attention. 

“Reform in Congress over the last 10 years has been very reactive as opposed to thoughtful and systematic.  They see the trees but not the forest.”

Murray also sees this as a basis for larger questions about the foundation of our patent system. 

“Congress first needs to figure out what type of patent system we should be working towards, only then can they can determine how fraud prevention fits into the system, including false marking and the doctrine of inequitable conduct.” 

At this point, I wonder whether it would be best for Congress to attempt to clarify the standards, or to scrap the Doctrine of Inequitable Conduct and start from scratch.  The feeling here is that the rule’s “heart” is in the right place, but there’s work to be done on its substantive language, and even that requires attention in the first place.
 

Related Post:

"Patent Reform Act of 2010" and False Marking Rule Change

• Email This
• Print
• Comments

The latest edition of the proposed patent reform legislation was announced by the leaders of the Senate Judiciary Committee on legislation for patent reform. The act is now called the "Patent Reform Act of 2010" and is memorialized in the form of the Manager's Amendment (“Amendment to S. 515”).

When will this bill become law? This is a good question because it is a follow-up to the Patent Reform Act of 2009, the Patent Reform Act of 2008, the Patent Reform Act of 2007, the Patent Reform Act of 2006 etc. etc. etc.

Among the provisions of this proposed legislation is a modification of the false marking statute. Presently, 35 U.S.C. 292(b) provides that any private citizen can bring a qui tam action on the government’s behalf against an entity that falsely marks unpatented products. However the proposed legislation amends 292(b) to read as follows:

"A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury."

The Senate bill, if enacted, would have retroactive effect even for still-pending but earlier-filed actions as it states the amendment would "apply to all cases, without exception, pending on or after the date of the enactment of this Act."

Is this another way to protect big business at the cost of the little guy? Or is it just a way stop the onslaught of potential litigation? A list of 75 false marking lawsuits filed in the last two months against over 100 companies can be found on the Gray on Claims law blog. Many of these lawsuits have been filed by qui tam plaintiffs who are individuals or entities specifically formed to litigate such false marking suits and presumably have no claim of "competitive injury." Will they have to find an injured party?

If the patent reform amendment becomes law, qui tam plaintiffs who have filed or intend to file false marking suits for expired patent numbers will have another element to prove to win the case. How will the court define a "person who has suffered a competitive injury?"

Will something that a person would have done if not for the false marking be admissible?

1. Can a plaintiff claim it is a potential competitor and was dissuaded from entering the same market because of the false marking?
2. Can a plaintiff claim it suffered injury because it was deterred from continued scientific research to avoid possible infringement?
3. Can a plaintiff  argue that it suffered a competitive injury because it invested money to analyze patent validity or enforceability?
   

Related posts:

Patent Marking Police" Looking for the Big Jackpot

"Patent Trolls" Search for Falsely Marked Products

• Email This
• Print
• Comments

Since my recent blog post entitled "Patent Trolls" Search for Falsely Marked Products the ad hoc “patent marking police” have filed at least 17 lawsuits alleging false marking against 33 different companies. This number is an approximation because False Marking suits are not consistently categorized within the federal court system. To see a list of False Marking suits filed in the last 2 months, go to Justin Gray’s blog, Gray on Claims.

The law allows any private citizen to bring a qui tam action on the government’s behalf against an entity that falsely marks unpatented products. A court can levy a fine for up to $500 for every product that is falsely marked. The final award is split evenly between the government and the person that brought suit.

What will happen if one person wins a huge damages award in one of these cases? How many more would be “Patent Police” will come out of the woodwork? In a blog post on IPWATCHDOG.com you can read A Fanciful False Marking Fiction By a Cottage Industrialist where the author daydreams about how “I just made 42 bajillion dollars today. And it’s not even 9 am.”

How easy is it to file a Patent False Marking complaint? Take a look at this complaint (PDF). Maybe you can be the next bajillionaire.

The two elements of a 35 U.S.C. § 292 false marking claim are:

1. marking an unpatented article; and
2. intent to deceive the public.

It will be interesting to see if the courts will find the necessary intent or mens rea to find false marking and what the courts will do in the “exercise of their discretion” as to the size of damage awards. Some argue that if you are marking a product with a patent number you should know when it expires and what it covers. Intent to deceive should be easy to prove. (See comment #7 by "Noise above Law"on IPWATCHDOG's post)

Now what about the damages award? The Federal Circuit held in the case of Forest Group, Inc. v. Bon Tool Co., No. 2009-1044, that the plain language of the false patent marking statute, requires courts to impose penalties for false patent marking on a “per article” basis.

The §292 statute provides a fine of “not more than $500 for every such offense. This does not mean that a court must fine those guilty of false marking $500 per article marked, even though it can. The statute provides district courts the discretion to strike a balance between encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities.

This means a court has the discretion to determine that a fraction of a penny per article is a proper penalty. The court's exercise of discretion is a balance between the chilling effect of false marking and imposing a mind boggling 42 bajillion dollars to be shared between the government and a brilliant member of the “patent marking police."

What is the chilling effect of a patent whose number has been falsely marked upon a product?

• Potential competitors may be dissuaded from entering the same market
• It may deter scientific research when an inventor decides to forego continued research to avoid possible infringement
• Can be the reason for unnecessary investment to design around
• Increases cost incurred to analyze patent validity or enforceability

I think the chilling effect of False Marking may be a serious consideration but I don’t think courts are going to start printing money. I have learned that what seems too good to be true, usually is. So don’t buy an armored truck to carry away your billions of dollars just yet.

Before taking my first law school exam Joe Walsh, a fellow law student, said to me that his attorney father gave him this advice: "If you don’t know what the answer to a question is, make pretend you are the judge and come up with a fair resolution."

Okay, you are the judge, what do you think is fair?

Related posts:

"Patent Trolls" Search for Falsely Marked Products

"Patent Reform Act of 2010" and False Marking Rule Change

• Email This
• Print
• Comments

The Inventor's Bible by Ronald L. Docie Sr.

LoTempio Law Blog Book Review

About the book

The Inventor's Biible by Ronald L. Docie Sr., includes a workbook to help an inventor take an idea from conception to the distribution of a product. The book touches on marketing, licensing, and selling an invention. The book reviews the invention process, including:

• Patenting
• Selecting a manufacturer
• Finding the right market
• Developing a marketing plan
• Presenting a product to a company
• Negotiating a royalty deal

My review of the book

This book provides a good explanation of the invention process. The real life stories teach inventors of the potential pitfalls commonly encountered by new inventors. It maps out an inventors voyage through invention, development of the product, to protection and marketing. I think The Inventors Bible is a good book for independent inventors. The book is well written, very readable and covers a lot of useful topics. The Inventor’s Bible is an excellent collection of practical information from an inventors prospective, based on the author’s business experience. Even though the book is not presented from a legal viewpoint it is helpful because it looks at inventing, patenting and product development from a business angle.

About the Author

Ronald L. Docie Sr’s career in selling inventions spans more than three decades. His inventions are featured in Wal-Mart, Kmart and thousands of other distribution channels. As an agent for inventors, Docie has negotiated license deals with many companies including General Motors, and he’s a consultant to Johnson & Johnson on idea submission. He is the president of Docie Development, LLC, an international company that provides services for inventors and corporations.

• Email This
• Print
• Comments (1)

Tweet of the week

Thanks to @Patent Wire for tweeting about the new pilot program where the first 3,000 applications related to green technologies will be examined by the USPTO on an accelerated basis. Go green!

• Email This
• Print
• Comments

In a January 12, 2010 press release IBM reported that it was awarded more U.S. patents than any other company in the world for a 17th straight year,  breaking its own record by receiving 4,914 patents in 2009. The number of patents awarded to IBM was nearly four times that received by Hewlett-Packard and was more than the combined total patent allowances of Microsoft, Hewlett-Packard, Oracle, Apple, Accenture and Google.

Data provided by IFI Patent Intelligence indicated that South Korea’s Samsung Electronics Co came in second with 3,611 and Microsoft Corp., was awarded 2,906 patents to place third in the patent race. The figures clearly show IBM’s commitment to being the world's leader when it comes to filing new patent applications. The reason why is simple, they make a lot of money by protecting their innovation and exploiting their patent portfolio through licensing deals.

Steve Levine of Bloomberg.com reported that Christopher Andrews, a spokesman for the IBM said “We invest $6 billion annually in R&D and we continue to pursue patents for inventions that will advance IBM’s business strategies..."

2009 U.S. Patent Leaders*

1. IBM 4,914
2. Samsung 3,611
3. Microsoft 2,906
4. Canon 2,206
5. Panasonic 1,829
6. Toshiba 1,696
7. Sony 1,680
8. Intel 1,537
9. Seiko Epson 1,330
10. HP 1,273

* Data provided by IFI Patent Intelligence

In addition to filing patents to stop others from using their technology, IBM published almost 4,000 defensive publications so that others are precluded from filing patent applications on certain technology and in turn stopping IBM from using that technology. As a result this technology is open and free for anyone to use because it is in the public domain. Tom Colson the CEO of IP.com  stated in a recent blog post,

"By definition, defensive publishing is the practice of placing innovation into the public domain. Although the tactic is not new, when used hand in hand with patents and trade secrets, it lets companies efficiently build and maintain competitive IP portfolios."

IBM reports, "IBM released these inventions through publication as part of its commitment to improving patent quality. Consequently, the inventions are freely available in a public database of prior art and can be cited by patent offices in limiting the scope of patent applications. The company's publication effort may also spur follow-on innovation, which enables dynamic business growth."  

• Email This
• Print
• Comments (1)

Thanks to @ipwatchdog for tweeting this week about the pitfalls of inventors representing themselves and the USPTO effectively advancing "submarine patents" through Patent Office delay.

"Inventors who represent themselves always wind up with rights more narrow than they should."

@ipwatchdog makes two points I would like to comment on:

First, when the USPTO causes long delays for an unpublished patent application, it essentially creates a "submarine patent."  The problem with "submarine patents" is that when issued, it forces companies already using the newly patented technology to pay retroactive licensing or rights fees. US Patent No. 7,631,368, was a pending application out of the public eye for about five years before it issued.

The second point is that the patent claim is so darn long and  "narrow" because it has so many elements, it would be almost impossible for anyone to infringe upon it. Therefore making it not only a "submarine patent" but a "wallpaper patent" as well,  essentially having no value. The only thing it is good for is to  hang it on the wall. The submarine was sunk by the heavy load of elements in the claim.

Inventors should know...

The lesson here is, make sure you are represented by a registered patent attorney or agent that knows how to draft broad claims.

• Email This
• Print
• Comments (1)

What Inventors Need to Know...

An inventor does not need a prototype to file for patent protection. Many inventors incorrectly believe they need a working prototype in order to file an application for a patent. The law requires that a patent application include a description of the invention so that somebody skilled in the art can make and use it. However, prototypes can be useful to prove whether the invention will work properly.

I spoke with Merry R. Constantino, a former Product Design Manager at Fisher-Price and currently the president of a "new product development company" called Product Logic and she said that,

A common problem when making a prototype after a patent application has been filed, is that all of the bugs have not been worked out of the product and often the 'end product' that we produce is not the same thing that was described in the patent.

Inventors should know that no "new matter" can be added to a patent application after it is filed.

There are many manufacturing and marketing factors that an inventor should consider in the initial idea stage. Here are a few of the things that Product Logic brainstorms when making a prototype:

• Human Factors/Ergonomics
• How can it be made with the fewest possible number of parts?
• What is best way to mass produce (labor sensitive)?
• What is a cost-effective way to produce?
• Can it be made in a way that others cannot easily copy?
• What is the best material it should be made from?

Another thing that an inventor should know is that when working to prepare a prototype with a new product development company is that if the company makes changes which improve the product it is possible that the company becomes a co-inventor.

Merry stated that "our company assigns all rights over to the inventor for any product that we work on." It's important to understand that when an inventor retains the services of  a company to produce a prototype there is a risk of loss of intellectual property rights unless a written assignment of rights document is prepared and executed by the parties.

If an inventor plans to license or sell their "patent rights" to an invention,  it may be necessary to build a prototype to demonstrate  to a potential licensee how great it works. In order to mass produce a product it may be necessary to design a working prototype as a model of reference for the manufacturer to duplicate.

Although an inventor does not need a prototype to get a patent, working out all the potential manufacturing issues before filing appears to be a logical step in the invention process.

• Email This
• Print
• Comments (1)

Guest Blogger: Registered Patent Agent, Gerald F. Gibbs Jr.

Practical Patent Prosecution Training for New Lawyers Seminar

I am Gerald F Gibbs Jr., a Registered Patent Agent. I am a native of Buffalo, N.Y. For the past 13+ years I have served as an industrial electrician for General Motors Corporation. Recently  I passed the patent bar examination on my first attempt and began my second career in intellectual property as a patent agent. I qualified to take the patent bar exam based upon my technical background and a Bachelor of Science degree in Physics.

On August 26 - 28, 2009, I attended the annual Practical Patent Prosecution Training for New Lawyers Seminar sponsored by the American Intellectual Property Law Association (AIPLA). The three-day event was held at the Westin Hotel, in Alexandria, Virginia which is in close proximity to the United States Patent and Trademark Office (USPTO).

The 2009 Practical Patent Prosecution Training for New Lawyers Seminar also referred to as “boot camp” is designed for new practitioners (i.e., those having about 0-2 years of experience), that want to learn the basics of patent application preparation and prosecution.

I attended the patent “boot camp” to have the opportunity to learn directly from experienced practitioners. Patent practitioners from all across the country lectured on an array of topics associated with patent law over a 3-day period. Topics included (just to name a few):

• Requirements for Patentability
• Application Drafting
• Provisional Applications
• Petitions
• Appeals & Interferences
• Responding to Examiner Actions & Affidavit Practice

The lecture portion of the seminar was by far the best part of the event.

A reception was held after each of the first two days of lecturing that gave the attendees and lecturers an opportunity to network. Many of the attendees that I met were very cordial and friendly, but many didn’t have business cards to exchange and didn’t seem interested or prepared to further a relationship beyond the 3-day event. As a result I focused on networking with the guest lecturers and I found that every practitioner was very helpful to provide career advice, exchange business cards and offer words of encouragement. 

As a result of this networking I have since communicated with and received helpful career advice from practitioners that I met at the boot camp. One of the connections I made was with Denise M. Kettelberger, PhD, JD of Faegre & Benson, LLP. She is an established and experienced patent practitioner from Minneapolis who gave an interesting and informative lecture on Responding to Examiner Actions & Affidavit Practice. She opened her lecture by saying, “This is the year of compact prosecution....compact prosecution requires that the patent practitioner get to know your examiner and vise versa.” This, she explains, provides a more friendly exchange during patent prosecution. 

On the last day of the seminar I attended the “hands on” claim-drafting workshop. It was a little disappointing because it was far from “hands on” and consisted of mostly lecturing.

AIPLA provided each attendee with a binder with valuable information on all the topics discussed and a hard copy of the power point presentation of each lecture. I also received a copy of the entire seminar on CD-ROM, which includes the audio portion of the program. I found this to be a very valuable resource to review key points of the lecture and discover information that I may have missed.

Overall the seminar was very informative and insightful and well worth the 7 hour drive from Buffalo, New York. I would recommend attending this annual event to anyone who is interested in a career in patent law.

• Email This
• Print
• Comments

In Matt Chandler's Buffalo Business First article, Legal Community Weights in on Patent Case, Western New York's business newspaper, I was quoted along with other Western NY patent attorneys regarding the US Supreme Court case of Bilski v. Kappos (the case which will decide how business method patents are to be reviewed by the United States Patent and Trademark Office). 

Chandler noted, "Sources from the Buffalo legal community said it is a case that has been on their radar for quite some time, and their opinions on how the court should or will rule were mixed."

I was quoted saying,

...believes the rejection of Bilski’s patent could have wide-ranging negative consequences.The plaintiff is saying, ‘We’re the first person to come up with a way of doing this. Why shouldn’t we get value for it?’ ” he said. “Why would people even bother coming up with new ideas and ways of doing business if it’s just going to be stolen from them?”He said followers to his Twitter page – many of whom are patent attorneys – have also been weighing in on the Bilski case via daily tweets.

Michael Berchou, a partner at Phillips Lytle LLP, believes if the past is any indication, change may be on the horizon.

Anytime a case is going up to the Supreme Court, I think it usually suggests that the Supreme Court sees something in the federal opinion that they want to take a closer look at, and there might be a change in the law ...The bigger question is: Are they going to set out a new standard that might impact software companies and the patents that are in effect today?

I think should the court affirm the appellate court’s ruling that the Bilski patent should not be issued,  the business-methods patents already in place may be invalidated. This could have great economic consequences to many software companies, for example, computer software now protected by patents would be open to copying without payment of a royalty or fear of an infringement law suit.

Other related posts:

Senator Leahy Uses Bilski to Push Patent Reform

USPTO Sends Bilski Memo to Patent Examiners

Bilski vs Kappos Decision

Bilski v. Kappos

Business method patents...what will the Supreme Court Do?

• Email This
• Print
• Comments (2)

On November 9, 2009 the Supreme Court heard an oral argument on the appeal from the Federal Circuit of the case of Bilski v. Kappos, wherein the central issue was whether the Federal Circuit erred by holding that a business method patent application based on a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101.

Do the questions asked by Supreme Court mean they are leaning toward not allowing patent protection to non-traditional “virtual” methods of doing business unless it is somehow tied to something tangential like a machine?

In some questions the Justices attempted to concoct scenarios that would make the application for a patent for certain business methods appear ridiculous:

JUSTICE BREYER: So you are going to answer this question yes. You know, I have a great, wonderful, really original method of teaching antitrust law, and it kept 80 percent of the students awake. They learned things — (Laughter) … It was fabulous. And I could probably have reduced it to a set of steps and other teachers could have followed it. That you are going to say is patentable, too?

JUSTICE BREYER: Do you think that the framers would have wanted to require anyone successful in this great, vast, new continent because he thinks of something new to have had to run to Washington and to force any possible competitor to do a search and then stop the wheels of progress unless they get permission? Is that a plausible view of the patent clause?

JUSTICE BREYER: transactions between commodity providers and commodity consumers. You set a fixed price at the consumer end, you set a fixed price at the other end, and that's it. I mean, I could patent a process where I do the same thing. I initiate a series of transactions with sellers. I initiate a series of transactions with buyers. I buy low and sell high. That's my patent for maximizing wealth.

JUSTICE SOTOMAYOR: So how do we limit it to something that is reasonable? Meaning, if we don’t limit it to inventions or to technology, as some amici have, or to some tie or tether, borrowing the Solicitor General’s phraseology, to the sciences, to the useful arts, then why not patent the method of speed dating?

I hope the judges are not missing the boat.

Remember, for an idea to qualify as patentable subject matter, whether it is a method of doing business, article of manufacture or a machine it still has to be something new, useful and a non-obvious improvement over whatever is already out there.

If this new idea meets these requirements it logically adds to the wealth of society as a whole. And isn't the enhancing the good of society as a whole what the founding fathers intent was when drafting the Constitution?

Just because the invention is not tied to a machine or something tangential doesn't mean it's not a good idea that can benefit society. If inventor comes up with a new idea of doing business and somebody somewhere can benefit and make money from that idea, shouldn’t the inventor also profit? If the Supreme Court denies the inventor the benefit of his new, useful non-obvious idea there would be no incentive to share their invention with the world.

Other related posts:

Senator Leahy Uses Bilski to Push Patent Reform

USPTO Sends Bilski Memo to Patent Examiners

Bilski vs Kappos Decision

Bilski v. Kappos

Legal community weighs in on Bilski v. Kappos

• Email This
• Print
• Comments