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

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 effort or 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 an11 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 company to Poof Products, Inc.

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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?

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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.

 "Clipart courtesy FCIT"

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