Are you using the right law firm for your patent prosecution?
Applying for a patent is a highly specialized process. It requires an in-depth knowledge of your field of expertise as well as a firm understanding of patent law and a clear insight into what your patent examiner is likely to look for in an application. It is no surprise many applicants seek outside counsel, but how do you find the right patent attorney to determine which law firm will have the highest success-rate for the lowest cost?
Federal Circuit Clarifies Patent Eligibility Under McRO and Enfish
In an October 11, 2016, decision, the Federal Circuit affirmed the district court’s finding that FairWarning’s patent claims were invalid because the claims encompassed an abstract idea under 35 U.S.C. § 101.
Iatric Systems was sued for infringing FairWarning’s ’500 patent, directed to detecting fraud and misuse of personal information by identifying unusual patterns in users’ access to sensitive data. The district court granted Iatric’s motion to dismiss the case under Rule 12(b)(6). The district court found that the claims were directed to a patent-ineligible abstract idea, with no inventive concept, under the controlling principles of Mayo/Alice.
How to Engineer Your Application to Avoid Alice Rejections
Patent practitioners are still grappling with the fallout from the Supreme Court’s decision in Alice v. CLS Bank. Despite three sets of guidelines issued the PTO over the last two years for examination under Alice, many attorneys are finding themselves facing Alice rejections from patent examiners at an increasing rate. This is particularly true for applications in art units involving software and business methods.
Despite this trend, there are several strategies patent attorneys can use to increase their chances of overcoming Alice. So to speak, you can “engineer” your application to create the best opportunity for allowance. For an application that involves matter in an art unit with a high Alice rejection rate, there are several ways to reposition the application in order to increase its likelihood of overcoming the §101 hurdle.
The patent laws require that the applicant particularly point out and distinctly claim the subject matter regarded as the invention. The portion of the application where this is done is not surprisingly called the claims. Patent claims are in many respects the most important part of the application because it is the claims that define the invention for which protection is granted. You can have the most thorough and complete description of an invention imaginable in the issued patent and it won’t matter unless you have been granted patent claims that cover your invention. Sure, such a thorough and complete description is an absolute prerequisite, but without adequate claim coverage no amount of description is enough to save you.
A lot has been said about mom inventors who came up with ideas to solve problems that revolved around parenting, but there are plenty of hands-on dads who have come up with their own solutions to problems that involve their kids. Here are three examples of dad inventors who have done just that.
The Enfish Decision: Some Light at the End of the Tunnel for Software Patents Since Alice?
On May 12, 2016, in the case of Enfish, LLC v. Microsoft Corporation, et al., the Court of Appeals for the Federal Circuit issued an opinion (case no. 2015-1244) that should provide some hope for software patents facing invalidation under § 101 (and software patent applicants dealing with subject matter ineligibility rejections) since the Supreme Court’s decision in the seminal Alice v. CLS Bank Int’l case. See 134 S. Ct. 2347 (2014). Prior to Enfish, the only other post-Alice case where the Federal Circuit held that the patent claims at issue met the requirements of § 101 was DDR Holdings v. Hotels.Com, L.P.., 773 F.3d 1245 (Fed. Cir. 2014).
The Quid Pro Quo – How Bad Patents Can Harm A Startup Company
There are many examples of patents that had virtually no value because the claims were undetectable, unenforceable, or ridiculously narrow. In the process of getting a worthless patent — a bad patent, the company gave up their complete roadmap for how to manufacture and use their product.
These bad patents are not just a waste of money, but their competitive advantage is eviscerated by disclosing everything they know. The bottom line: Some patent applications can be very damaging to a startup company.
Part of the analysis prior to filing a patent is to first estimate how broad or narrow the patent might be, then evaluate whether the patent – at that breadth – would be worth pursuing. This analysis starts with a patent search.
Many investors want to check the box of “is it patented?”. However, most investors are not aware that the patent will post all the company secrets online for all competitors – with virtually no benefit to the company. The decision to get a patent or not needs to be made carefully and thoughtfully, and many companies are better off with no patent protection.
Federal Circuit says software patent claims not abstract, are patent eligible
Yesterday, the United States Court of Appeals for the Federal Circuit issued an important decision on software patent eligibility in Enfish LLC v. Microsoft. The opinion by Judge Hughes, who was joined by Judge Moore and Judge Taranto, doubles the total of Federal Circuit decisions where claims in a software patent were deemed to be patent eligible because they are not abstract. In other words, DDR Holdings is no longer the only point of hope for innovators and patent owners in the software space.
Please stop filing extremely short, overlybroad patent claims. This may seem like a simple request, one for which it is easy to say: “He’s not talking about me—my claims are reasonably short and broad, but not extremely short and overly broad.” If you are a patent attorney who prosecutes applications in the software-related arts, it’s safe to assume I am talking about you.
The Key to Drafting an Excellent Patent – Alternatives
I hear all the time from inventors who want to file a patent application that they don’t understand why I want to know about various alternatives and optional features that could be a part of their invention. After all, the invention they have created is one of a kind excellent and no one in their right mind would want to change it one bit! OK — you keep thinking that if you like, but it is that thinking that leads inventors to get unnecessarily narrow patents.
Why Does It Cost So Much to Prepare Patent Applications?
Preparing and filing patent applications in the United States can be a daunting undertaking. Indeed, the cost of preparing and filing a patent application can be quite high; far higher than most inventors and small businesses would prefer. Sure, there are the bargain basement discount providers on the Internet, but does anyone really think that in an industry that has only time to sell by the hour or by the project that the same quality will be obtained if you pay $1,500 for a nonprovisional patent application instead of $15,000? Unfortunately, there are some novice inventors who delude themselves into thinking they will get the same quality for $1,500, but sophisticated inventors, knowledgeable corporations, and even newbies who have their wits about them all know that the more time you spend on a patent application the better.
Building, Maintaining and Leveraging your Technology Patent Portfolio: A Qualitative Approach
Developing a strategy to optimize the return on investment of a patent portfolio requires both technical expertise and a solid understanding of the market and where it’s going. It always starts with the same question:
What are your most valuable patents?
This is the question IP executives and patent portfolio managers grapple with every day, and it is the most important question to answer in order to maximize the return on investment from IP.
Drafting a Licensing Agreement, a Patentee Perspective
Having an attorney draft a licensing agreement, or a licensing expert negotiate a licensing agreement, from start to finish is obviously the best way to proceed. But there will always be some who will choose to proceed on their own to negotiate a licensing and/or draft an agreement. This can certainly be dangerous, but sometimes there is no alternative given financial constraints. Whether you are going to represent yourself or work with an attorney or licensing professional, it is a worthwhile endeavor to engage in some strategic thinking, which absolutely must be the precursor to any memorialized deal.
The First Patent: A Roadmap for a Startup’s Patent Portfolio
A startup’s patent portfolio can be thought of in two distinct patent types: prophetic patents and non-prophetic. Non-prophetic patents can also be thought of as “data-driven” patents. Prophetic patents are a necessary evil, but they can be very damaging to a startup when used badly.
Prophetic patents are those that are almost purely forward-looking. These patents are filed prior to raising funds or at least before going to market. They are prophetic in the sense that there are guesses about how the technology will work and how the market will adopt the technology.
Non-prophetic or “data-driven” patents cover things for which data exists. The data may be performance-related test data, or market-related data that comes from customer behavior. The patents that come from market-related data tend to be some of the most valuable patents in a portfolio.
Eagle Harbor Holdings to sell second-largest portfolio of U.S. patents related to autonomous cars
There has been an unusual level of activity involving automotive sector patents in the past few years. Here at IPWatchdog, we first started noticing this trend with the June 2014 announcement by Elon Musk, CEO of Tesla Motors (NASDAQ:TSLA), that his company would not enforce its patent rights on any of its patents, essentially open-sourcing its electric vehicle (EV) technologies. Not to be outdone, Japanese automaker Toyota Motors (NYSE:TM) created a cost-free licensing program in January 2015 for thousands of its patents related to hydrogen fuel cell vehicles. Last June, we covered the continuing decline of the “not invented here” bias in the auto industry which was evidenced by a decision by Ford Motor Company (NYSE:F) to begin facilitating the licensing of hundreds of its patents and patent applications, much of it related to EVs.
The Gatekeeping Function of Patent Eligibility as Part of a More Complete Understanding of § 101 Principles
From a review of the opinions expressed in the majority decision and rehearing denial in Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, reh’g en banc denied, 809 F.3d 1282 (Fed. Cir. 2015), petition for cert. filed (No. 15-1182, Mar. 21, 2016), and in the briefs filed by various parties in relation to Sequenom Inc.’s petition for writ of certiorari, we can see several different viewpoints emerge with respect to the case. Some express the viewpoint that the case reached the wrong outcome, either because the Court (a) misunderstood the facts relating to the invention or patent, (b) misapplied existing § 101 principles, or (c) both. Others express the viewpoint that the case reached the right outcome, either because the Court (a) correctly applied § 101 principles, or (b) incorrectly did so but would have reached the same outcome under a correct analysis. And there are also some who express the viewpoint that the case correctly applied current § 101 eligibility principles but still reached a wrong outcome, such that § 101 requires a serious overhaul, or should be done away with altogether as a patentability criterion. In this article, we do not take a position on any of these viewpoints. Rather, we write to shed more light on the gatekeeping function of patent eligibility which we see permeating judicial decisions on § 101, making it worthy of careful contemplation when considering any one of the positions expressed above.
Patent Value and Changing Metrics – Time to Believe in Our Product
These are interesting times to be a patent attorney. (That was, as you will soon discover, a vast understatement soaked in sarcasm.) The value of the product patent attorneys help create,namely patents, has been, by most traditional metrics, seriously undermined. What was once a $ 1 million dollar plus proposition, is now sometimes tens of thousands of dollars – or zero. The primary driver of the loss: The AIA reconstitution of the PTO with the PTAB (aka “patent death squad”) combined with an untimely string of profoundly anti-patent S.Ct. and CAFC decisions. Both patent owners and their respective patent counsel are “on the run” or “in hiding”. In-house patent counsel (and their outside firm counsel) are having to “justify” themselves and their exorbitant staffs and fees in ways unheard of previously. Think back, fondly, to the patent bubble of only a few years ago: popped, gone, kaput. What happened and why aren’t we (the collective patent we) able to provide any useful answers?
Patent Financing: How startups can obtain funding for their patent applications
Year after year the patent laws become more complex. It seems with every decision from the Supreme Court and the Federal Circuit more detail is mandated for a patent application to be complete and for patent claims to have a fighting chance. These case law changes, as well as legislative and regulatory changes, are putting the patent system out of reach for startup companies.
The patent applications that must be filed require an enormous investment in time, money, and expertise – mostly by patent professionals who curate the inventions, write the patents, and nurture them through the examination process. To get high caliber, well researched, and well-written patents costs money – a lot of money unfortunately.
Ten scenarios are presented for dealing with what is usually the most contested issue in pre-collaboration agreement negotiations – the ownership of foreground IP. These scenarios range from preferably avoiding joint IP ownership altogether to more complex situations involving joint IP ownership with both nonexclusive and exclusives licenses, as well as nonexclusive and exclusive cross-licenses, and even scenarios based on defining the parties’ respective fields of endeavor
A trade secret is defined as any valuable business information that is not generally known and is subject to reasonable efforts to preserve confidentiality. Generally speaking, a trade secret will be protected from exploitation by those who either obtain access through improper means, those who obtain the information from one who they know or should have known gained access through improper means, or those who breach a promise to keep the information confidential. While virtually every business has at least some trade secrets, they are quite fragile because they protect information and resources that are secret, which necessarily means that protection is lost if and when the secret becomes publicly known. For that reason, when other forms of intellectual property protection are available, such as copyright or patent protection, one should carefully consider the wisdom of relying only on trade secret protection.
The concepts of indefiniteness and functional language have been entangled for a very long time. Indeed, it was this complicated interplay that lead to the eventual statutory inclusion of a "means-plus-function" section in the 1952 Patent Act.' But, long before the middle of the twentieth century, the American patent system had grappled with issues related to functional claiming and balancing those issues against the public need to know the extent of a patent's reach. It is not known when the first modern means-plus-function claim was patented, but it is generally known that this claim format was commonly used in the nineteenth century.
First to File Means File First! The Risk of Not Immediately Filing a Patent Application
It is not surprising that those who are patent attorneys will recommend that you should first file a patent application, and it is not surprising that those who are business coaches or licensing executives may recommend a different first step on the path to what will hopefully be commercial success with an invention. While there is not a single right way to successfully get from point A to point B on the road to invention success, with every choice there are associated risks that inventors and entrepreneurs must appreciate.
More Applicants Should Use the First Action Interview Program
The original First Action interview (FAI) Pilot Program went into effect in 2008. Because of the success of the program, it was extended into two additional pilots since and remains open today. The FAI program requires an applicant to conduct an interview with the examiner early in prosecution. To enter the FAI program, an applicant must file a request form prior to receiving a first office action on the merits (FOAM). The program is free, but the application must include no more than 20 total claims and no more than 3 independent claims up until the time at which the requisite interview is conducted.
How the AIA requires the USPTO to be a patent system arms dealer
In a comment on a recent article, an anonymous individual claiming 10 years of patent prosecution experience lamented the transformation of the U.S. patent system into a Byzantine system that appears to have the goal of denying the benefits of having a patent. “It now looks like a bait-and-switch system,” the commenter known as Ternary wrote. “You will get a patent, which will be taken away in post-issuance procedures, preferably at the moment when you want to obtain its legal benefits as a rightful owner.”
Missing patent file for Wright Brothers' 'flying machine' found in cave after 36 years
The century-old patent file for the Wright Brothers’ pioneering airplane—a file containing one of history’s greatest patent applications—has been found 36 years after it disappeared, The Washington Post reported Sunday. The last time anyone had seen the file was in 1980 when it was returned to the National Archives after being on loan to the Smithsonian Museum for an exhibit.
Finding the Best Patents – Forward Citation Analysis Still Wins
We found that forward citations (later patents that cite the subject patent) were the most significant factor in identifying patents that were likely to be purchased. In fact, the patents that were sold—or even highlighted by brokers, e.g. the representative patent—in a brokered patent package exhibited an even more extreme number of forward citations than litigated patents.
Why forward citations? Why not claim length or any number of other factors? We believe that forward citations are a proxy for industry-wide R&D investment in a technology area. With more investment, there are generally more products. With more products, there is a higher chance of infringement. Infringement drives value and most likely meets a client’s needs. Specifically, a purchase either eliminates the client’s own infringement or provides a tool to use against someone else).
Patents, for a long while, have been an integral part of business development strategy. Companies like ARM and Qualcomm, for example, have built their business around patents which constitute a major part of their revenue. And the quality of their patents, for sure, is playing a key role in it.
Lowballing on patent quality has its own risks. It does not only affect the direct income from royalties but can also affect the revenue from proprietary products. Patents by nature exclude others from using the protected invention. Therefore, products backed by strong patents have less likelihood of copycats appearing in the market and even if it happens the chances of recovery on the basis of patent infringement still holds. A poor quality patent or a patent with unnecessary limitations on the other hand, can compromise this intent and can impact the entire business.
Tricks & Tips to Describe an Invention in a Patent Application
One of the biggest problems that inventors face when setting out to describe an invention is with defining what the law refers to as “alternative embodiments of the invention,” or simply “alternative embodiments.” Whenever you read the word “embodiment” in a patent application or issued patent the drafter is merely talking about a particular version of the invention. The trouble many inventors have is that they don’t understand why they would ever have more than a single version of their invention. They will sometime say: “Everyone would do it this way and include all the features, you’d be crazy not to!” The problem created by this mentality can be enormous. If you do not describe it then it is not a part of your invention. So, for example, if you describe an invention as always having elements A + B + C + D and then someone makes virtually the same thing but leaves D (or any of the other elements out) they couldn’t possibly be infringing. Why? Because the invention was too narrowly described.
Patent Drafting: Define terms when drafting patent applications, be your own lexicographer
A fundamental principle of patent application drafting is that the patent applicant can be his or her own lexicographer. Patent professionals say that all the time, but what does it mean?
Being your own lexicographer means is that you who can define your invention using whatever terms you choose, and after attributing pretty much whatever meaning you want to give to the terms you use. Indeed you get to define the terms you use so long as any special meaning you assign to any particular term is clearly set forth in the specification (i.e., the written text of the application other than the patent claims). In essence, you can define terms in the specification so that you can then later in the patent claims use the term. If you do define the term in the specification the meaning attributed to that term would trump any other possible definitions when it comes time to interpret the claims.
10 of History's Greatest Women Inventors You Should Know
March is Women's History Month and Design News is celebrating by honoring some of history's most prominent female inventors. Did you know a Hollywood actress revolutionized wireless communications? Or that the first computer programmer was a woman? Many of these women didn't get credit for their work until long after their deaths, but their contributions and inventions have shaped technologies that have changed our lives and the course of history.
Alice’s Tourniquet: A Solution to the Crisis in Patentable Subject Matter Law
Unless Congress acts first, which is unlikely, it seems inevitable that the Supreme Court will soon revisit the abstract idea doctrine. The Court is likely to revisit the abstract idea doctrine simply because its recent decisions on the doctrine are incomplete and unsatisfying. In many ways, the Court “punted” in both the famous Bilski and Alicecases by issuing decisions that left many questions unanswered. Bilski v. Kappos, 130 S. Ct. 3218 (2010) (“Bilski II”); Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014) (“Alice II”). Since these two recent cases, the Patent Office and the lower courts have ran with the thrust of these decisions by routinely rejecting patent applications and invalidating or revoking issued patents. In view of these recent developments, I would argue that the lower courts, by interpreting these precedents so broadly, have begun to realize the Supreme Court’s fear of the abstract idea doctrine “swallow[ing] all of patent law.” Alice II, 134 S. Ct. at 2354. What is needed, then, is concrete guidance from the Supreme Court that establishes an appropriate limiting principle to prevent these precedents from doing more unintended harm.
I am frequently asked about the benefit of filing a provisional patent application. I am a big fan of provisional patent applications and encourage independent inventors, small businesses and universities to start the patent process by filing a provisional application whenever possible. In fact, now that the U.S. is a first to file country the best practice is to file a provisional patent application as early as feasible, and you also probably want to file multiple applications as your invention continues to take shape. Early and often is the best provisional patent filing strategy because there is real risk to waiting to file a patent application. You want — you need — that earliest priority filing date that you can get.
Patenting business methods and software still requires concrete and tangible descriptions
Since at least 1998 business methods have been patentable in the United States. This is thanks to the decision of the United States Court of Appeals in State Street Bank & Trust Co. v. Signature Financial Group, Inc., which categorically and unceremoniously did away with what had previously been come to be known as the business method exception to patentability. Essentially, the business method exception said that no method of doing business deserved patent protection. The rule excluding business methods was as absolute as it was ridiculous, because after all aren’t all patent methods used for some business purpose?
Patently Trump: Can He Do a Better Job Enforcing American Innovations?
Donald Trump welcomed the Intellectual Property Owners Association, the largest association of corporations that own patents, to New York City in 2007 when they held their annual meeting at the Waldorf-Astoria Hotel. Twenty years earlier Trump launched himself as a self-made celebrity thanks to the success of his book Trump: The Art of the Deal. As media and technology have evolved over the past thirty years so too has Trump kept up. In fact, Trump’s intangible asset value expansion today is a lot like the Kardashians. For candidate Trump, according to his beloved New York Times, this means 6+ million fervent supporters loyally help his brand, purchasing his campaign themed hats and ties, responding to anti-Trump comments in the media. Trump, like President Obama and the Clintons, has made a fortune branding and licensing himself. Trump brags about his superior negotiating and deal making skills. So how would a President Trump use such intellectual property talent to Make America Great Again?
Obtaining and maintaining dead weight patents doom a patent portfolio to failure
Unfortunately, the issuance of a patent simply does not guarantee that the underlying innovation is of any kind of foundational importance, or that the patent and claims are written in ways that suggest the patented innovation is valuable. Sure, patents are statutorily presumed to be valid, but the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) does not presume patents to be valid during post grant proceedings, so if you have a commercially viable patent that is being infringed you simply cannot assume it will be presumed to be valid despite what the statute says.
At the recent Mizzou-USPTO symposium there was some discussion about whether the European Patent Office (EPO) has positioned itself as a more favorable patent venue than the US. Most practitioners will agree that the US is now more restrictive in terms of subject matter eligibility and the new pan-European patent enforcement court makes those patents obtained in Europe more all the more valuable. Today, the EPO released a set of data that makes these prognostications appear to ring true.
Go Ask Alice: Looking Back At Patents For Entrepreneurs
As I’ve often said: all companies—from startup to small- and medium-sized businesses—have IP. I recently spoke to a group of more than 400 CPAs on the topic of IP, and about one third did not think that was the case. IP is critical to identify and protect from day one. I have written here about how investors like venture capitalists value IP, mainly patents. However, entrepreneurs are deterred by the complexity and fear of expensive litigation not to mention non-practicing entities (NPEs), plus the Supreme Court’s 2014 Alice v. CLS Bank decision curbing software patents.
Patent searches are always a good idea, even if your invention is not on the market
I frequently hear inventors ask why they need a patent search. Frequently the question will proceed: I’ve done a search of the market and there is nothing at all like my invention available to be purchased. Many times this will give inventors a false sense of security, leading them to feel a false sense of comfort believing that because they could not find the product to purchase that has to mean that there are no patents related to their invention.
10 of the Greatest Inventions by African-Americans
Design News is celebrating Black History Month with a look at some of history's great African-American inventors and the technologies they developed and helped create. We know a lot about various Civil Rights figures but black engineers and scientists have had just as significant an impact. Many inventions and technologies that we use every day and take for granted exist because of the involvement of an African-American. And we're counting down 10 of our favorites.
The Patent System: It is important for America that we get it right
Small businesses and independent inventors are critical to revolutionary advancement of American technology. They file over 20% of the applications at the USPTO, and their patents are more likely to encompass breakthrough inventions, rather than incremental change, as they have the incentive and the flexibility to take risks that might be unacceptable for larger, established enterprises. Small businesses and independent inventors are the incubators of novel ideas and the source of inventive products that they develop or which they license or sell to others. Many large successful companies throughout our history have started from meager beginnings. Hewlett-Packard began in a garage where its first product, an audio oscillator, was built. That garage was used for many years as a research lab and is now a private museum known as “the birthplace of Silicon Valley”.
Should you file for patents yourself or use an IP law firm?
For new inventors or scaling companies, the patent application process can be tricky and weighing the filing options can be even harder. On one hand, filing with an intellectual property lawyer can make the process much easier, but on the other hand, the attorney fees associated with filing patents can be daunting. How do you decide which is the better option?You should first have an understanding of the drawbacks and benefits.
It seems like all anyone hears these days in the patent blogosphere is “Alice.” The case, Alice Corp. v. CLS Bank was decided well over a year and a half ago, but seems to have fundamentally changed the way patent attorneys and scholars think about, and talk about, software and business methods patents. The general consensus is that Alice has thrown a wrench into several practice groups at the USPTO and that the courts, as well as the USPTO itself, are not entirely sure how to interpret or apply the decision with any consistency.
In some ways, 2013 appeared to be a moderating year in patent infringement litigation. The “mega” verdicts of prior years (2012 saw three cases that resulted in damages awards of over $1 billion) were missing, with the largest new award falling to just over $200 million. Four of the ten largest awards from previous years were settled, overturned, modi ed or remain under appeal in 2013. And the median damages award continued its gradual downward tapering, to $4.3 million in the most recent four-year period.
Creating a strategy for your organization’s intellectual property can be critical for both emerging and mature companies alike. Above all else, a patent strategy can create scope for an organization. Similar to what a business plan provides for the company as a whole, a patent strategy provides a “bigger picture” view for what the patent looks like now and perhaps more importantly, what it will look like in the future. This view enables the organization to leverage the patent continuously and create sustainable competitive advantage. Additionally, for emerging companies, a well-thought out patent strategy can be a signal of commitment to investors or stakeholders.