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

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

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)

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)