Earlier today (Thursday, June 23rd), the House of Representatives passed its version of the America Invents Act of 2011, H.R. 1249. This follows earlier passage of the Senate Bill, S.23.
Chief among the reforms contained in both the House and Senate versions of the bill is the "First to File" provision. Such a change to U.S. patent law would harmonize us with the rest of the world in this respect. There may be reasons why individual inventors would prefer that we remain in a "First to Invent" system.
A significant difference remains between the House and Senate versions that will need to be resolved in conference. While the Senate voted to end diversion of fees from the USPTO, the House did not pass that provision. Currently, inventors' patent application fees can be diverted from the patent office to fund general operations of the government. The results are a shortage of patent examiners, an average pendency of patent applications of three years, a three to five year backlog of patent appeals, among other things. The Senate's version of patent reform held the promise that the patent office would soon be able to keep 100% of the revenue it generated, which would make faster processing of patent applications possible.
Let's hope an end to fee diversion is a part of the ultimate bill that comes out of the conference committee.
Thursday, June 23, 2011
Thursday, June 9, 2011
Supreme Court Upholds Clear and Convincing Standard for Showing Patent Invalidity
In February, I wrote about the Microsoft v. i4i case, being heard in the U.S. Supreme Court. Today, the Court has handed down its decision. In an 8-0 judgment (Chief Justice John Roberts did not take part because he has stock holdings in Microsoft), the Court upheld the lower court verdict for i4i and against Microsoft.
For the broader patent community, however, the decision is more significant. Microsoft had argued that the burden of proof that should be required for a showing that a patent is invalid was the "preponderance of the evidence" standard, rather than the higher "clear and convincing evidence" standard. You can read more about the argument in my earlier blog posting, but the Court rejected the proposition.
That is good news for patentees. Essentially, the Court was being asked to make it easier to show after the fact that a patent is invalid. If it became easier to invalidate a patent, patents in general would not have as much value.
More will be written about this important decision, but for now, it can be accessed at the website of the Supreme Court.
For the broader patent community, however, the decision is more significant. Microsoft had argued that the burden of proof that should be required for a showing that a patent is invalid was the "preponderance of the evidence" standard, rather than the higher "clear and convincing evidence" standard. You can read more about the argument in my earlier blog posting, but the Court rejected the proposition.
That is good news for patentees. Essentially, the Court was being asked to make it easier to show after the fact that a patent is invalid. If it became easier to invalidate a patent, patents in general would not have as much value.
More will be written about this important decision, but for now, it can be accessed at the website of the Supreme Court.
Wednesday, June 8, 2011
If you're selling your invention or using it publicly, you only have one year to file!
If you've invented something and brought it to market or put it into public use, in most cases you have to get a patent application on file within a year of the date you did so. Otherwise, you will likely lose the right to a patent on the invention.
An inventor who is granted a patent by the United States Patent and Trademark Office generally gets a 17-year exclusive right to the invention. Technically, for a utility patent (which is most patents) the term is 20 years from the filing date, but owing to the average of three years that it takes for an application for a patent to be examined, the effective term is 17 years.
In the United States, we have a "First to Invent" system. The first person to conceive of an invention generally is awarded the patent. Even if another inventor files an application for the same invention before the original inventor's application is received at the USPTO, the application of the original inventor (being the first to invent, not the first to file) gets priority.
In most other countries, the first inventor to file an application has priority. There is discussion in Congress to transform the United States patent regime to this "First to File" system used in the rest of the world, but for now the United States retains a "First to Invent" system.
But it is not a "pure" First to Invent system. In a "pure" First to Invent system, there would be no deadline for filing an application once you brought your invention to market. Since your monopoly term lasts only 17 years, an inventor could theoretically wait as long as possible to file the application, until a competitor was about to file. In this manner, the inventor would be "extending" the term of the monopoly by delaying its starting date through withholding the application as long as possible. Because the inventor was the first to invent, the inventor who delayed filing in a pure First to Invent system would still be able to prevent the competitor from practicing the invention AND have a longer patent monopoly.
This issue was recognized early on, see Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 (1829), and in 1836 the U.S. Patent Act was re-written to include a limitation on the amount of time an inventor could wait to file for a patent. That time limit is now one year.
There is another justification for the one-year time limitation. Remember the basic bargain in a patent exchange between the inventor and the U.S. government. The inventor receives the 17-year monopoly, but in exchange for a disclosure of the invention and how to make it. The government grants the exclusive rights to the inventor, and in return the invention passes into the public domain once the monopoly has expired. At that point, we all will get the benefit of the new invention, and it is in the public's best interest for that point to come as soon as possible. Therefore, inventors are required to make that disclosure sooner, rather than later.
One very important note if you are considering patent protection in countries in addition to the United States: in most instances you don't even get the one year. There is an absolute novelty standard in which the day you publicly use or offer to sell your invention, you lose the right to apply for a patent if you have not done so already. If you want a patent overseas, be very careful about disclosing your invention prior to applying for a patent. That's good advice domestically, but even more critical for foreign applicants.
If you have questions about what you can and can not do publicly before an application is filed, a qualified patent agent or attorney can help you understand what activities "trigger" the one-year clock, at the end of which you must file or lose the right to do so.
An inventor who is granted a patent by the United States Patent and Trademark Office generally gets a 17-year exclusive right to the invention. Technically, for a utility patent (which is most patents) the term is 20 years from the filing date, but owing to the average of three years that it takes for an application for a patent to be examined, the effective term is 17 years.
In the United States, we have a "First to Invent" system. The first person to conceive of an invention generally is awarded the patent. Even if another inventor files an application for the same invention before the original inventor's application is received at the USPTO, the application of the original inventor (being the first to invent, not the first to file) gets priority.
In most other countries, the first inventor to file an application has priority. There is discussion in Congress to transform the United States patent regime to this "First to File" system used in the rest of the world, but for now the United States retains a "First to Invent" system.
But it is not a "pure" First to Invent system. In a "pure" First to Invent system, there would be no deadline for filing an application once you brought your invention to market. Since your monopoly term lasts only 17 years, an inventor could theoretically wait as long as possible to file the application, until a competitor was about to file. In this manner, the inventor would be "extending" the term of the monopoly by delaying its starting date through withholding the application as long as possible. Because the inventor was the first to invent, the inventor who delayed filing in a pure First to Invent system would still be able to prevent the competitor from practicing the invention AND have a longer patent monopoly.
This issue was recognized early on, see Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 (1829), and in 1836 the U.S. Patent Act was re-written to include a limitation on the amount of time an inventor could wait to file for a patent. That time limit is now one year.
There is another justification for the one-year time limitation. Remember the basic bargain in a patent exchange between the inventor and the U.S. government. The inventor receives the 17-year monopoly, but in exchange for a disclosure of the invention and how to make it. The government grants the exclusive rights to the inventor, and in return the invention passes into the public domain once the monopoly has expired. At that point, we all will get the benefit of the new invention, and it is in the public's best interest for that point to come as soon as possible. Therefore, inventors are required to make that disclosure sooner, rather than later.
One very important note if you are considering patent protection in countries in addition to the United States: in most instances you don't even get the one year. There is an absolute novelty standard in which the day you publicly use or offer to sell your invention, you lose the right to apply for a patent if you have not done so already. If you want a patent overseas, be very careful about disclosing your invention prior to applying for a patent. That's good advice domestically, but even more critical for foreign applicants.
If you have questions about what you can and can not do publicly before an application is filed, a qualified patent agent or attorney can help you understand what activities "trigger" the one-year clock, at the end of which you must file or lose the right to do so.
Wednesday, June 1, 2011
Pre Appeal Brief Conference
Once a non-provisional patent application is filed, after an average of 18 months, the application receives its first substantive review by an examiner. In the majority of cases the patent claims of the application are rejected. The application can respond and argue for patentability, and/or make amendments to the claims.
Following the examiner's second review of the application, if the examiner still does not agree with the applicant that a patent should issue, the claims can be rejected a second time with the rejection being made "final." At that point, the applicant has a couple of options, one of them being an appeal to the Board of Patent Appeals and Interferences (BPAI).
Similar to an appeal heard in an Article III court, the parties (the applicant and the examiner) submit appellate briefs to the BPAI prior to the appellate proceeding. The applicant's appellate brief is due within 60 days of filing the notice of appeal. An appellate brief contains information needed by the board to decide whether to uphold the rejection or to return the case to the examiner for further examination (which usually means a patent). Appellate briefs are long and thorough documents, typically are expensive to prepare, and require the applicant to pay an additional PTO fee just for filing. Then the case goes into the queue for the BPAI, which can be three to five years long.
A few years ago, the PTO added a proceeding called a "Pre Appeal Brief Conference" (PABC). Where there is reversible procedural error in the examiner's rejection, an applicant can ask for a PABC when the notice of appeal is filed. The procedure is for the applicant to submit with the notice of appeal a memo of no more than five pages which points out the examiner's error. For example, an examiner may have asserted an invention is obvious without providing any evidence of obviousness. If the BPAI were to get such a case where that was the sole issue, a reversal of the examiner would be probable.
There is no fee for filing the PABC memo, nor is there a fee for requesting the conference. The PABC is held at the PTO within 45 days of the submission of the notice of appeal and the memo. The applicant and the applicant's agent or attorney do not participate. Instead, the examiner, the examiner's supervisor, and a third individual at the PTO who specializes in appeals discuss the memo. Statistics kept since the institution of the PABC procedure at the PTO show that in 1/3 to 1/2 of the cases, prosecution is re-opened following a PABC, with a patent often following.
So, the benefits of the PABC for the applicant if prosecution is re-opened are that the applicant does not need to pay a practioner to prepare the detailed brief, the applicant does not need to pay the PTO the filing fee to file the appeal brief, and there might be a positive decision from the PABC much sooner than an appeal might actually be heard.
The flip side is that if the PABC decision is not in the applicant's favor -- in other words, that the case must proceed to the appeal -- then the applicant has paid the practitioner to research and prepare a five-page PABC memo and still has to pay for the appellate brief. (The 60-day clock for getting the appellate brief filed is re-started once the notice of the PABC decision is mailed.)
However, if still there's a good case for patentability following a final rejection predicated on reversible procedural error on the part of the examiner, the PABC procedure is an excellent choice. In many instances, merely the 1 in 3 possibility of avoiding the 3-5 year period before an appeal is heard makes a PABC worth a try.
Remember, the PABC memo must be filed concurrently with the notice of appeal. A qualified patent agent or attorney should be able to review the case to see whether it's a good one to request the PABC. This will most often be in instances where there is a clear reversible error in the final rejection because the examiner has not carried his or her burden by adducing evidence.
Following the examiner's second review of the application, if the examiner still does not agree with the applicant that a patent should issue, the claims can be rejected a second time with the rejection being made "final." At that point, the applicant has a couple of options, one of them being an appeal to the Board of Patent Appeals and Interferences (BPAI).
Similar to an appeal heard in an Article III court, the parties (the applicant and the examiner) submit appellate briefs to the BPAI prior to the appellate proceeding. The applicant's appellate brief is due within 60 days of filing the notice of appeal. An appellate brief contains information needed by the board to decide whether to uphold the rejection or to return the case to the examiner for further examination (which usually means a patent). Appellate briefs are long and thorough documents, typically are expensive to prepare, and require the applicant to pay an additional PTO fee just for filing. Then the case goes into the queue for the BPAI, which can be three to five years long.
A few years ago, the PTO added a proceeding called a "Pre Appeal Brief Conference" (PABC). Where there is reversible procedural error in the examiner's rejection, an applicant can ask for a PABC when the notice of appeal is filed. The procedure is for the applicant to submit with the notice of appeal a memo of no more than five pages which points out the examiner's error. For example, an examiner may have asserted an invention is obvious without providing any evidence of obviousness. If the BPAI were to get such a case where that was the sole issue, a reversal of the examiner would be probable.
There is no fee for filing the PABC memo, nor is there a fee for requesting the conference. The PABC is held at the PTO within 45 days of the submission of the notice of appeal and the memo. The applicant and the applicant's agent or attorney do not participate. Instead, the examiner, the examiner's supervisor, and a third individual at the PTO who specializes in appeals discuss the memo. Statistics kept since the institution of the PABC procedure at the PTO show that in 1/3 to 1/2 of the cases, prosecution is re-opened following a PABC, with a patent often following.
So, the benefits of the PABC for the applicant if prosecution is re-opened are that the applicant does not need to pay a practioner to prepare the detailed brief, the applicant does not need to pay the PTO the filing fee to file the appeal brief, and there might be a positive decision from the PABC much sooner than an appeal might actually be heard.
The flip side is that if the PABC decision is not in the applicant's favor -- in other words, that the case must proceed to the appeal -- then the applicant has paid the practitioner to research and prepare a five-page PABC memo and still has to pay for the appellate brief. (The 60-day clock for getting the appellate brief filed is re-started once the notice of the PABC decision is mailed.)
However, if still there's a good case for patentability following a final rejection predicated on reversible procedural error on the part of the examiner, the PABC procedure is an excellent choice. In many instances, merely the 1 in 3 possibility of avoiding the 3-5 year period before an appeal is heard makes a PABC worth a try.
Remember, the PABC memo must be filed concurrently with the notice of appeal. A qualified patent agent or attorney should be able to review the case to see whether it's a good one to request the PABC. This will most often be in instances where there is a clear reversible error in the final rejection because the examiner has not carried his or her burden by adducing evidence.
Tuesday, May 10, 2011
Innovation Fund
For inventors with a great idea, but who aren't sure they have the resources or wherewithal to devote to patent protection or bringing the idea to market, an alternative is the Edison Nation Innovation Fund.
In brief, in exchange for a royalty once the idea is commercialized, you assign the rights to your idea to Edison Nation, who then funds the patenting and development of the concept.
There is a nominal fee for submitting your idea for review by the Edison Nation board and their partnering venture capitalists. Because you enter into a legal agreement with Edison Nation assigning your property rights, you should consult with an attorney if you are uncomfortable reviewing this information on your own. I am not an attorney, but I have colleagues whom I can recommend.
If you proceed and want to work with me on patenting your idea once Edison Nation has selected your concept, please use my Edison Nation Referral Code of 17-115-297 when you submit your idea.
http://www.edisonnation.com/searches#innovation
Good luck!
In brief, in exchange for a royalty once the idea is commercialized, you assign the rights to your idea to Edison Nation, who then funds the patenting and development of the concept.
There is a nominal fee for submitting your idea for review by the Edison Nation board and their partnering venture capitalists. Because you enter into a legal agreement with Edison Nation assigning your property rights, you should consult with an attorney if you are uncomfortable reviewing this information on your own. I am not an attorney, but I have colleagues whom I can recommend.
If you proceed and want to work with me on patenting your idea once Edison Nation has selected your concept, please use my Edison Nation Referral Code of 17-115-297 when you submit your idea.
http://www.edisonnation.com/searches#innovation
Good luck!
Monday, April 18, 2011
Updates
Just a couple of updates this morning for topics on which I have previously written...
The United States Supreme Court is hearing oral arguments this morning in the Microsoft v i4i case. The issue in this case is whether the burden of proof to show patent invalidity from "clear and convincing evidence" to "preponderance of the evidence." And if the burden should be lowered, in what cases should it be lowered? For example, should it be lowered when the defendant raises prior art which was not considered by the examiner?
The result of this case is important for all inventors, since it goes directly to the value of a patent. A patent which has a presumption of validity which can only be invalidated through clear and convincing evidence is a more valuable patent than one which could be invalidated through a lower standard of proof.
The second update for today regards the America Invents Act of 2011, which last week was approved by the House Judiciary Committee with all of the major provisions from the Senate act intact. First to File is still there, along with provisions permitting the PTO to keep all of the fees it collects rather than seeing some diverted for other government use. The bill now moves to the full House for further consideration.
The United States Supreme Court is hearing oral arguments this morning in the Microsoft v i4i case. The issue in this case is whether the burden of proof to show patent invalidity from "clear and convincing evidence" to "preponderance of the evidence." And if the burden should be lowered, in what cases should it be lowered? For example, should it be lowered when the defendant raises prior art which was not considered by the examiner?
The result of this case is important for all inventors, since it goes directly to the value of a patent. A patent which has a presumption of validity which can only be invalidated through clear and convincing evidence is a more valuable patent than one which could be invalidated through a lower standard of proof.
The second update for today regards the America Invents Act of 2011, which last week was approved by the House Judiciary Committee with all of the major provisions from the Senate act intact. First to File is still there, along with provisions permitting the PTO to keep all of the fees it collects rather than seeing some diverted for other government use. The bill now moves to the full House for further consideration.
Wednesday, April 6, 2011
America Invents Act of 2011 Introduced in the House
Following passage last month of the America Invents Act of 2011 in the U.S. Senate (Senate Bill S.23), a companion bill was introduced in the House of Representatives last week.
The House version of the bill is slightly different from the Senate bill. The major initiatives, first-to-file among them, are intact. The bill is in committee and it is too early to predict whether passage is a sure thing.
The House version of the bill is slightly different from the Senate bill. The major initiatives, first-to-file among them, are intact. The bill is in committee and it is too early to predict whether passage is a sure thing.
Wednesday, March 30, 2011
"Will a competitor be able to get around my patent?"
A question I am asked often is, "once I have the patent, will a competitor be able to get around it by copying the invention with just a modest change so that they no longer infringe?"
For example, if I have a patent on a table, and the patent claims recite that the table legs are joined to the surface by nails, can somebody make a table and defeat an infringement claim by joining the legs to the surface with screws?
One proactive way to defeat this would be to change the patent claim to recite that the leg is joined to the surface with a fastener, and then in the specification state that appropriate fasteners may be nails, screws, or other such implements. But after the fact, if we claim nails, can somebody just switch to screws and not be liable for infringement?
Probably not. Since the mid-nineteenth century, the courts have recognized a "Doctrine of Equivalents". The rationale is that patent law would be very weak if it were so easily defeated, to the extent that inventors would lose their incentive to innovate.
If it is clear to a jury that the alleged infringing design "performs substantially the same function in substantially the same way to obtain the same result," then it infringes the patent under the Doctrine of Equivalents. In our table example, joining the table leg with a screw most likely meets this test, so even if our patent recited nails and a competitor made their table with screws, they will likely be held liable for infringement even though our patent says nothing about screws.
Who determines whether the substituted design element is substantially the same? This comes back to the Person Having Ordinary Skill In The Art ("PHOSITA"). If a PHOSITA would recognize the substitution as one of just two interchangeable parts, then it is substantially the same. That is why this is a jury question. There will likely be testimony as to what a person skilled in the art would or would not recognize as being interchangeable, and a jury makes the credibility determination as to which side's assertion about what a PHOSITA would know is more likely.
The Doctrine of Equivalents helps assure strong patent rights, by ensuring a competitor can't pirate a patented invention by making some insignificant change that gets the device legally outside of what is literally claimed, while retaining the essence of the patented invention. In most instances a competitor won't be able to get around your patent because a court would invoke the Doctrine of Equivalents to find infringement.
Litigation is expensive, however, so the best solution is to employ a skilled patent drafter with the skills to protect your invention such that it is difficult for a copier to find an insignificant change to make that isn't already covered by the patent.
For example, if I have a patent on a table, and the patent claims recite that the table legs are joined to the surface by nails, can somebody make a table and defeat an infringement claim by joining the legs to the surface with screws?
One proactive way to defeat this would be to change the patent claim to recite that the leg is joined to the surface with a fastener, and then in the specification state that appropriate fasteners may be nails, screws, or other such implements. But after the fact, if we claim nails, can somebody just switch to screws and not be liable for infringement?
Probably not. Since the mid-nineteenth century, the courts have recognized a "Doctrine of Equivalents". The rationale is that patent law would be very weak if it were so easily defeated, to the extent that inventors would lose their incentive to innovate.
If it is clear to a jury that the alleged infringing design "performs substantially the same function in substantially the same way to obtain the same result," then it infringes the patent under the Doctrine of Equivalents. In our table example, joining the table leg with a screw most likely meets this test, so even if our patent recited nails and a competitor made their table with screws, they will likely be held liable for infringement even though our patent says nothing about screws.
Who determines whether the substituted design element is substantially the same? This comes back to the Person Having Ordinary Skill In The Art ("PHOSITA"). If a PHOSITA would recognize the substitution as one of just two interchangeable parts, then it is substantially the same. That is why this is a jury question. There will likely be testimony as to what a person skilled in the art would or would not recognize as being interchangeable, and a jury makes the credibility determination as to which side's assertion about what a PHOSITA would know is more likely.
The Doctrine of Equivalents helps assure strong patent rights, by ensuring a competitor can't pirate a patented invention by making some insignificant change that gets the device legally outside of what is literally claimed, while retaining the essence of the patented invention. In most instances a competitor won't be able to get around your patent because a court would invoke the Doctrine of Equivalents to find infringement.
Litigation is expensive, however, so the best solution is to employ a skilled patent drafter with the skills to protect your invention such that it is difficult for a copier to find an insignificant change to make that isn't already covered by the patent.
Wednesday, March 23, 2011
The Reason for Patents
The most basic definition of a patent is an exchange between an inventor and the government representing the people.
The inventor has something of value that is needed by the people. That thing of value is the knowledge to construct something innovative that doesn't currently exist. The government, representing the people, wants to elicit that knowledge from the inventor so that everyone can have access to the innovation.
An inventor may not be so willing to just give up the knowledge gained through hard work, however. This isn't apparent with all inventions, but consider a formula, such as the recipe for Coca-Cola, invented by John Pemberton in 1886. Rather than tell us how to make the soft drink, Dr. Pemberton decided to keep the recipe a secret so that only he could make it and profit from the invention. The result? The formula for Coke is a "trade secret". Rather than the recipe being in the public domain, where it could be commoditized and sold inexpensively, instead there is only one source for Coca-Cola which keeps the price artificially high.
Instead, Dr. Pemberton could have sought a patent for his invention from the government. In exchange for a disclosure of the formula, the U.S. might have awarded Dr. Pemberton the exclusive right - a monopoly - to make Coca-Cola for a period of 17 years. But at the end of that period, the rights would pass into the public domain, meaning that anybody could make and sell the product.
Another invention at about the same time was the common breakfast cereal, Shredded Wheat, invented in 1893. A patent was applied and granted for the machinery that made Shredded Wheat biscuits for the cereal. The manufacturer enjoyed a monopoly on the sale of Shredded Wheat, after which time the rights to manufacturer the cereal passed into the public domain. (That's not all - in a landmark trademark case, the right to the name "Shredded Wheat" was held to have passed into the public domain at the same time.) Today, you'll see multiple makers of cereal called Shredded Wheat at the grocery store, but there's only one Coca-Cola. The difference? The Shredded Wheat company got a patent, enjoyed their monopoly, and now anyone can make it. But Coca-Cola was and continues to be held as a trade secret, so only the Coca-Cola company can make it (or license it to bottlers, as the case may be).
This illustrates the basic bargain embodied in a patent. In exchange for the inventor telling us how to make the invention, so that we can all benefit from the knowledge and work that went into the new finding, the inventor is granted a time-limited exclusive right to "practice the invention" (in other words, to make it, sell it, use it, etc.). This basic concept informs several tenets of patent law. For example:
- It is in the interest of the government to get the knowledge into the public's hands as quickly as possible. To facilitate that, the government forces inventors to apply for their patents within one year of public disclosure or sale. Otherwise, the right to a patent monopoly is lost. An inventor can't extend the monopoly period by selling the product until a competitor also figures out how to make the product, and then filing for a patent on the invention.
- If a central part of the exchange is the inventor's knowledge about how to make the invention, then that information has to be disclosed in the application in sufficient detail to allow the rest of us to do so. Patent applications can be rejected for lack of specificity. How much detail is required? In general, a person having ordinary skill in the art must be able to use the information disclosed in the application to practice the invention. There's even an acronym here that patent practitioners throw around: "PHOSITA". If a PHOSITA would understand how to make the invention after reading the contents of a patent if it were to issue, then there is sufficient content in the application.
As an inventor, if there's an aspect of patent law that seems unfair or hard to understand, always go back to the basic bargain between the inventor and the U.S. government: the monopoly rights in exchange for the rest of us receiving information about how to make and use the invention. Remember, as an inventor, you don't get awarded a monopoly just for being clever and innovative. You are giving something to your country, but in order for that to be a fair exchange, you have to be giving something of value to receive a monopoly. That means something that nobody has ever invented, and a disclosure of it in sufficient detail that we can all eventually have it.
The inventor has something of value that is needed by the people. That thing of value is the knowledge to construct something innovative that doesn't currently exist. The government, representing the people, wants to elicit that knowledge from the inventor so that everyone can have access to the innovation.
An inventor may not be so willing to just give up the knowledge gained through hard work, however. This isn't apparent with all inventions, but consider a formula, such as the recipe for Coca-Cola, invented by John Pemberton in 1886. Rather than tell us how to make the soft drink, Dr. Pemberton decided to keep the recipe a secret so that only he could make it and profit from the invention. The result? The formula for Coke is a "trade secret". Rather than the recipe being in the public domain, where it could be commoditized and sold inexpensively, instead there is only one source for Coca-Cola which keeps the price artificially high.
Instead, Dr. Pemberton could have sought a patent for his invention from the government. In exchange for a disclosure of the formula, the U.S. might have awarded Dr. Pemberton the exclusive right - a monopoly - to make Coca-Cola for a period of 17 years. But at the end of that period, the rights would pass into the public domain, meaning that anybody could make and sell the product.
Another invention at about the same time was the common breakfast cereal, Shredded Wheat, invented in 1893. A patent was applied and granted for the machinery that made Shredded Wheat biscuits for the cereal. The manufacturer enjoyed a monopoly on the sale of Shredded Wheat, after which time the rights to manufacturer the cereal passed into the public domain. (That's not all - in a landmark trademark case, the right to the name "Shredded Wheat" was held to have passed into the public domain at the same time.) Today, you'll see multiple makers of cereal called Shredded Wheat at the grocery store, but there's only one Coca-Cola. The difference? The Shredded Wheat company got a patent, enjoyed their monopoly, and now anyone can make it. But Coca-Cola was and continues to be held as a trade secret, so only the Coca-Cola company can make it (or license it to bottlers, as the case may be).
This illustrates the basic bargain embodied in a patent. In exchange for the inventor telling us how to make the invention, so that we can all benefit from the knowledge and work that went into the new finding, the inventor is granted a time-limited exclusive right to "practice the invention" (in other words, to make it, sell it, use it, etc.). This basic concept informs several tenets of patent law. For example:
- It is in the interest of the government to get the knowledge into the public's hands as quickly as possible. To facilitate that, the government forces inventors to apply for their patents within one year of public disclosure or sale. Otherwise, the right to a patent monopoly is lost. An inventor can't extend the monopoly period by selling the product until a competitor also figures out how to make the product, and then filing for a patent on the invention.
- If a central part of the exchange is the inventor's knowledge about how to make the invention, then that information has to be disclosed in the application in sufficient detail to allow the rest of us to do so. Patent applications can be rejected for lack of specificity. How much detail is required? In general, a person having ordinary skill in the art must be able to use the information disclosed in the application to practice the invention. There's even an acronym here that patent practitioners throw around: "PHOSITA". If a PHOSITA would understand how to make the invention after reading the contents of a patent if it were to issue, then there is sufficient content in the application.
As an inventor, if there's an aspect of patent law that seems unfair or hard to understand, always go back to the basic bargain between the inventor and the U.S. government: the monopoly rights in exchange for the rest of us receiving information about how to make and use the invention. Remember, as an inventor, you don't get awarded a monopoly just for being clever and innovative. You are giving something to your country, but in order for that to be a fair exchange, you have to be giving something of value to receive a monopoly. That means something that nobody has ever invented, and a disclosure of it in sufficient detail that we can all eventually have it.
Tuesday, March 15, 2011
What can Monk teach you about patent law?
Also titled "can you patent something that is considered immoral?"
My fiancee and I were watching a rerun of the TV show Monk last week. It was an episode from Season 4, with Jeffrey Donovan of Burn Notice guest-starring as an astronaut. As with all episodes of Monk, a murder had been committed. Here, the astronaut was the prime suspect. Trouble was, at the time the coroner suspected the victim died, the astronaut was in space.
It seemed like a pretty good alibi until Detective Monk figured out that the astronaut had heavily drugged the victim before he left and then propped her up in a homebuilt machine that carried out her killing a few days later, while he was in space. The gory details are not necessary for this blog, but my first thought upon seeing the "assassination machine" was "he won't be able to get a patent for that invention!"
Perhaps that means I think about patent law too much of the time, but it's true: the Supreme Court has ruled that assassination machines are not patentable subject matter. I have very few (ok, no) clients that are interested in patenting such an awful thing, fortunately, but is it possible to get a patent for something of questionable moral value? In most cases, provided the invention has some utility to someone, the answer is yes.
The leading case on this question is Juicy Whip, Inc. v. Orange Bang, Inc. (I'm not making this up). The product in question was a drink dispenser, of the type that has a clear container at the top in which there is liquid and a blending apparatus, so that it looks like your drink is being mixed and is ready to be dispensed. (If you've seen an Orange Julius store at the mall, you know what I am talking about.) In reality, the container at the top of the machine in which the orange liquid is swirling around is a decoy. Your drink is really being dispensed and mixed from a box that is hidden under the counter, just as with a soda-fountain dispenser.
The reason for the decoy is that there is something visually appealing about the juice swirling around in the container, but if that were the real juice, the container would need to be emptied and cleaned regularly and that's too much effort. The decoy lets the consumer believe he or she is seeing the actual juice, but in reality it's going to get mixed like a conventional fountain soda.
So the company holding the patent sued another maker of beverage dispensers for infringement. The defendant argued the original patent was invalid so they shouldn't be liable for infringement. That's a common defense in an infringement suit, but what is unusual is that the defendant argued the reason the patent should be invalid is because the subject matter of the patent is basically deceiving consumers. Isn't that immoral? And if so, why should the government grant a patent on immoral subject matter? The interesting part of this defense is that the defendant is basically saying, "hey, we're doing something immoral."
In any event, the Court of Appeals for the Federal Circuit (the Federal appellate court charged with hearing all appeals related to patents, regardless of geography) held that the key question is one of utility, not morality. The subject matter of the patent is in fact legal, even if it is questionable whether it is moral, and since there is something useful about not having to clean the dispenser it has sufficient utility for a patent.
So where is the line where something of questionable morality becomes unpatentable? It is shifting with time. For example, at one time gambling devices weren't patentable subject matter because gambling was seen to be immoral, but you could get a patent on a new and novel slot machine today provided it met all the other requirements for patentabililty such as utility (making money for a casino, in this case).
But "...inventions that are injurious to the well-being, good policy, or sound morals of society..." are unpatentable, including "a new invention to poison people, or to promote debauchery, or to facilitate private assassination." (This language is from Lowell v. Lewis, a case from 1817.)
So, astronaut resembling Jeffrey Donovan, your assassination machine was clever, but not clever enough to fool Detective Monk, and definitely not eligible for a patent.
My fiancee and I were watching a rerun of the TV show Monk last week. It was an episode from Season 4, with Jeffrey Donovan of Burn Notice guest-starring as an astronaut. As with all episodes of Monk, a murder had been committed. Here, the astronaut was the prime suspect. Trouble was, at the time the coroner suspected the victim died, the astronaut was in space.
It seemed like a pretty good alibi until Detective Monk figured out that the astronaut had heavily drugged the victim before he left and then propped her up in a homebuilt machine that carried out her killing a few days later, while he was in space. The gory details are not necessary for this blog, but my first thought upon seeing the "assassination machine" was "he won't be able to get a patent for that invention!"
Perhaps that means I think about patent law too much of the time, but it's true: the Supreme Court has ruled that assassination machines are not patentable subject matter. I have very few (ok, no) clients that are interested in patenting such an awful thing, fortunately, but is it possible to get a patent for something of questionable moral value? In most cases, provided the invention has some utility to someone, the answer is yes.
The leading case on this question is Juicy Whip, Inc. v. Orange Bang, Inc. (I'm not making this up). The product in question was a drink dispenser, of the type that has a clear container at the top in which there is liquid and a blending apparatus, so that it looks like your drink is being mixed and is ready to be dispensed. (If you've seen an Orange Julius store at the mall, you know what I am talking about.) In reality, the container at the top of the machine in which the orange liquid is swirling around is a decoy. Your drink is really being dispensed and mixed from a box that is hidden under the counter, just as with a soda-fountain dispenser.
The reason for the decoy is that there is something visually appealing about the juice swirling around in the container, but if that were the real juice, the container would need to be emptied and cleaned regularly and that's too much effort. The decoy lets the consumer believe he or she is seeing the actual juice, but in reality it's going to get mixed like a conventional fountain soda.
So the company holding the patent sued another maker of beverage dispensers for infringement. The defendant argued the original patent was invalid so they shouldn't be liable for infringement. That's a common defense in an infringement suit, but what is unusual is that the defendant argued the reason the patent should be invalid is because the subject matter of the patent is basically deceiving consumers. Isn't that immoral? And if so, why should the government grant a patent on immoral subject matter? The interesting part of this defense is that the defendant is basically saying, "hey, we're doing something immoral."
In any event, the Court of Appeals for the Federal Circuit (the Federal appellate court charged with hearing all appeals related to patents, regardless of geography) held that the key question is one of utility, not morality. The subject matter of the patent is in fact legal, even if it is questionable whether it is moral, and since there is something useful about not having to clean the dispenser it has sufficient utility for a patent.
So where is the line where something of questionable morality becomes unpatentable? It is shifting with time. For example, at one time gambling devices weren't patentable subject matter because gambling was seen to be immoral, but you could get a patent on a new and novel slot machine today provided it met all the other requirements for patentabililty such as utility (making money for a casino, in this case).
But "...inventions that are injurious to the well-being, good policy, or sound morals of society..." are unpatentable, including "a new invention to poison people, or to promote debauchery, or to facilitate private assassination." (This language is from Lowell v. Lewis, a case from 1817.)
So, astronaut resembling Jeffrey Donovan, your assassination machine was clever, but not clever enough to fool Detective Monk, and definitely not eligible for a patent.
Monday, March 14, 2011
Application Publishing Revisited
In a prior post, I discussed the publication of applications for patents in the United States. For inventors who seek patent protection exclusively in the United States, there is an option for the application not to be published. For many, this is a good choice. Publishing of the application does have a benefit that is worth noting, however.
The benefit is in the area of damages in an infringement suit. Let's say that after your patent issues, you become aware of a competitor who is practicing your invention without your permission (i.e. making knockoffs). You might consult with a patent litigator and decide to file an infringement suit against the imitator.
There are a variety of remedies you might seek upon proving infringement, including an injunction to require to competitor to stop selling the product, or a requirement that the competitor pay compensation to you for the unauthorized use of your patented invention.
These options are available to you after you are issued the patent. In other words, you can't enjoin someone from selling the knockoff until after the patent issues. And normally, you can't receive royalties from sales of the clone of your patented product before the patent issued. Any award of royalties would be computed from the date the patent issued. Unless, that is, your application for a patent was published.
If you do elect for the application to be published 18 months after filing, which is the default timeframe for apps to be published, in a subsequent infringement suit you can make a claim for "provisional damages": compensation for the time period between the date the application published and the date of issuance of the patent. The theory is that once the application published, a potential infringer could have become aware of the pending patent.
The damages for this time period are limited to a "reasonable royalty". You can't make a claim for other damages or for other relief (like the injunction) for the period prior to issuance. But you can ask to be compensated as if there was a licensing agreement in place under which you would have been earning royalties on the potentially-infringing device. You aren't guaranteed to receive these damages as there are additional showings that are needed (e.g. the infringer must have had actual notice of the pending patent, among other things). But it is one reason why you might elect to allow your application to publish.
Here's the typical disclaimer: this post does not substitute for actual legal advice, especially in regards to an infringement suit.
The benefit is in the area of damages in an infringement suit. Let's say that after your patent issues, you become aware of a competitor who is practicing your invention without your permission (i.e. making knockoffs). You might consult with a patent litigator and decide to file an infringement suit against the imitator.
There are a variety of remedies you might seek upon proving infringement, including an injunction to require to competitor to stop selling the product, or a requirement that the competitor pay compensation to you for the unauthorized use of your patented invention.
These options are available to you after you are issued the patent. In other words, you can't enjoin someone from selling the knockoff until after the patent issues. And normally, you can't receive royalties from sales of the clone of your patented product before the patent issued. Any award of royalties would be computed from the date the patent issued. Unless, that is, your application for a patent was published.
If you do elect for the application to be published 18 months after filing, which is the default timeframe for apps to be published, in a subsequent infringement suit you can make a claim for "provisional damages": compensation for the time period between the date the application published and the date of issuance of the patent. The theory is that once the application published, a potential infringer could have become aware of the pending patent.
The damages for this time period are limited to a "reasonable royalty". You can't make a claim for other damages or for other relief (like the injunction) for the period prior to issuance. But you can ask to be compensated as if there was a licensing agreement in place under which you would have been earning royalties on the potentially-infringing device. You aren't guaranteed to receive these damages as there are additional showings that are needed (e.g. the infringer must have had actual notice of the pending patent, among other things). But it is one reason why you might elect to allow your application to publish.
Here's the typical disclaimer: this post does not substitute for actual legal advice, especially in regards to an infringement suit.
Wednesday, March 9, 2011
Patent Reform passes the U.S. Senate
Yesterday (Tuesday, March 8th), the United States Senate passed the "America Invests Act of 2011" by a vote of 95-5. As I have previously written on this blog, the act is a significant overhaul of the patent system in the U.S. The House of Representatives will be next to take up patent reform. Given the different political makeup in the House, it will be interesting to see whether the same provisions are in that bill, or if a serious attempt to retain our "First to Invent" system will be made.
Meanwhile, I thought I would post about another interesting provision of the bill that was passed yesterday: the establishment of a separate discounted fee for "micro-entities". Currently, many PTO fees are halved for individuals and organizations with fewer than 500 employees. On the fee calculation worksheets, there is a checkbox for "Small Entity" status which I check for most of my clients.
Inherent in the new bill is a new category, the "micro-entity". Individual inventors will qualify for micro-entity status under the bill and be eligible for a 75% discount on many of their fees. Now, assuming individuals can beat larger, well-funded inventive entities in the race to the filing window that will be the result of the shift to "First to File", the prize is they are at least eligible for a reduced cost of dealing with the Patent and Trademark Office.
Meanwhile, I thought I would post about another interesting provision of the bill that was passed yesterday: the establishment of a separate discounted fee for "micro-entities". Currently, many PTO fees are halved for individuals and organizations with fewer than 500 employees. On the fee calculation worksheets, there is a checkbox for "Small Entity" status which I check for most of my clients.
Inherent in the new bill is a new category, the "micro-entity". Individual inventors will qualify for micro-entity status under the bill and be eligible for a 75% discount on many of their fees. Now, assuming individuals can beat larger, well-funded inventive entities in the race to the filing window that will be the result of the shift to "First to File", the prize is they are at least eligible for a reduced cost of dealing with the Patent and Trademark Office.
Friday, March 4, 2011
First to File Remains
Yesterday, Senator Feinstein's amendment to remove the "First to File" provisions from S.23, the "America Invents Act of 2011", née the "Patent Reform Act of 2011", was voted upon and did not have the votes. "First to File" remains in the current patent reform effort.
Historically, "First to File" has been looked at with less favor in the House, so the House version of the bill may retain the "First to Invent" system, leaving the discrepancy to be sorted out in a conference committee.
More to come...
Historically, "First to File" has been looked at with less favor in the House, so the House version of the bill may retain the "First to Invent" system, leaving the discrepancy to be sorted out in a conference committee.
More to come...
Thursday, March 3, 2011
Patent Reform Debate Continues
The "America Invents Act of 2011" is still being debated in the Senate. Among the amendments that have been made to the bill so far is an end to "fee diversion."
The Patent and Trademark Office generates a large pool of revenue, and some of that cash has gone to fund other federal government activities. But the PTO needs more money to increase its modernization, and to hire more examiners to help reduce the backlog of unexamined applications for patents.
The end to the fee diversion means the PTO will be able to keep and spend more of the money it takes in. One eventual outcome may be that the three-year time period it generally takes from the time a non-provisional patent application is filed until a patent is issued will be reduced.
As I previously discussed in this blog, a key provision of the act is transforming our patent system to a "First to File" system, harmonizing our patent law with most of the rest of the world in this respect. It was thought that Senator Feinstein of California would introduce an amendment stripping the change to "First to File" from the bill, but it hasn't happened yet and may not.
Yesterday's amendment featuring the move to let the PTO keep more of the revenue it generates by ending fee diversion shows the Senate is serious about making progress on this bill. Patent reform has not made it through Congress in previous sessions, but it seems likely we will get some movement in 2011. Of course, the House of Representatives will need to pass its own bill and then the two bills must be reconciled, but Senator Leahy, the primary sponsor of the America Invents Act of 2011 seems to believe that all will happen quickly.
More to come...
The Patent and Trademark Office generates a large pool of revenue, and some of that cash has gone to fund other federal government activities. But the PTO needs more money to increase its modernization, and to hire more examiners to help reduce the backlog of unexamined applications for patents.
The end to the fee diversion means the PTO will be able to keep and spend more of the money it takes in. One eventual outcome may be that the three-year time period it generally takes from the time a non-provisional patent application is filed until a patent is issued will be reduced.
As I previously discussed in this blog, a key provision of the act is transforming our patent system to a "First to File" system, harmonizing our patent law with most of the rest of the world in this respect. It was thought that Senator Feinstein of California would introduce an amendment stripping the change to "First to File" from the bill, but it hasn't happened yet and may not.
Yesterday's amendment featuring the move to let the PTO keep more of the revenue it generates by ending fee diversion shows the Senate is serious about making progress on this bill. Patent reform has not made it through Congress in previous sessions, but it seems likely we will get some movement in 2011. Of course, the House of Representatives will need to pass its own bill and then the two bills must be reconciled, but Senator Leahy, the primary sponsor of the America Invents Act of 2011 seems to believe that all will happen quickly.
More to come...
Wednesday, March 2, 2011
"At least", and support in the specification
Patent application drafters generally try to write applications that result in inventions being defined with a broad scope. A patent is essentially a property right, so wouldn't an inventor would want the patent practitioner to try to acquire rights in the most property possible?
One way patent practitioners accomplish that is to sprinkle the term "at least" liberally through the application. For example, pretend that the bicycle had never been invented, and an inventor sought patent protection for the two-wheeled pedaled-vehicle. But it might be desirable to hold the property right for pedaled-vehicles with more wheels that might be invented in the future. Say, a tricycle for example.
To ensure the inventor receives protection for both the current bicycle, but also for future refinements in pedaled-vehicles that have additional wheels such as the tricycle, a patent practitioner might compose one of the patent claims like this:
A pedaled-vehicle, said pedaled-vehicle having at least two wheels.
I wouldn't write a claim like that for various reasons, but it illustrates that the inventor's bicycle having two wheels is encompassed by the claim, as is a tricycle invented by someone else in the future.
So is "at least" the best way to get an extremely broad patent? A recent U.S. District Court case shows what can happen if this is done carelessly. In MagSil v. Seagate, decided about two weeks ago in the District Court for Delaware, a claim using the term "at least" was invalidated because there was no support for the claim in the patent's specification.
A patent specification must enable someone (not just any someone, but a PHOSITA, the meaning of which is a post for different day) to be able to make the patented invention. If the patent application contains "at least" in the claims, without there being a top end to the range, the specification must give some idea of how to construct the invention having virtually any number of whatever is being claimed. Otherwise, you haven't properly told another how to make the device you are claiming.
In MagSil, the claim in question had a value for resistance, and the claim specified "at least" a certain resistance. At the time the claim was written, the inventor had no idea that technology would progress to the point that a version of the device with the high resistance used in the eventual device was even possible.
Years later, another company came up with a design for a high-resistance device that was technically within the range specified by the claim, and got sued for infringement. They successfully defended on the grounds that the inventor had not specifically detailed how to construct a device with that much resistance in the specification.
The moral of the story is that when using the term "at least," it is important to reasonably bound the range with support in the specification for the range being claimed. Or, use claim language other than "at least" that still captures future variations.
One way patent practitioners accomplish that is to sprinkle the term "at least" liberally through the application. For example, pretend that the bicycle had never been invented, and an inventor sought patent protection for the two-wheeled pedaled-vehicle. But it might be desirable to hold the property right for pedaled-vehicles with more wheels that might be invented in the future. Say, a tricycle for example.
To ensure the inventor receives protection for both the current bicycle, but also for future refinements in pedaled-vehicles that have additional wheels such as the tricycle, a patent practitioner might compose one of the patent claims like this:
A pedaled-vehicle, said pedaled-vehicle having at least two wheels.
I wouldn't write a claim like that for various reasons, but it illustrates that the inventor's bicycle having two wheels is encompassed by the claim, as is a tricycle invented by someone else in the future.
So is "at least" the best way to get an extremely broad patent? A recent U.S. District Court case shows what can happen if this is done carelessly. In MagSil v. Seagate, decided about two weeks ago in the District Court for Delaware, a claim using the term "at least" was invalidated because there was no support for the claim in the patent's specification.
A patent specification must enable someone (not just any someone, but a PHOSITA, the meaning of which is a post for different day) to be able to make the patented invention. If the patent application contains "at least" in the claims, without there being a top end to the range, the specification must give some idea of how to construct the invention having virtually any number of whatever is being claimed. Otherwise, you haven't properly told another how to make the device you are claiming.
In MagSil, the claim in question had a value for resistance, and the claim specified "at least" a certain resistance. At the time the claim was written, the inventor had no idea that technology would progress to the point that a version of the device with the high resistance used in the eventual device was even possible.
Years later, another company came up with a design for a high-resistance device that was technically within the range specified by the claim, and got sued for infringement. They successfully defended on the grounds that the inventor had not specifically detailed how to construct a device with that much resistance in the specification.
The moral of the story is that when using the term "at least," it is important to reasonably bound the range with support in the specification for the range being claimed. Or, use claim language other than "at least" that still captures future variations.
Monday, February 28, 2011
First to File Coming?
As I write this, Sen. Orrin Hatch of Utah is speaking on the Senate Floor during debate on S.23, what was previously known as the "Patent Reform Act of 2011," but what Sen. Leahy is now calling the "America Invents Act of 2011".
Senator Hatch points out that there has not been meaningful patent reform in over half a century, but that during that period there have been significant technological advances for which corresponding changes in intellectual property laws are needed.
The proposed change with the greatest significance is a move to a "First to File" system of patent issuance. Today, the United States uniquely has a "First to Invent" system. Should S.23 be passed into law, the individual or entity who files a patent application on an invention first would be the one that receives the patent on the invention, irrespective of whether another invented it first. "First to File" is another initiative to harmonize the United States patent law with the rest of the world.
Senator Grassley of Iowa is now speaking, and he believes one result will be improved-quality patents. He says the ability of third parties to submit prior art during the examination process will facilitate that.
Still, some question whether changing the patent system to a "race to the patent office" will really result in higher-quality patents. Many foresee patent applications being submitted without the inventions being fully fleshed out, for the purpose of being the first to file and receiving priority over all others, including those who might have a fuller conception of the invention but less in the way of resources.
Stay tuned... there may be a vote this week, perhaps even today.
Senator Hatch points out that there has not been meaningful patent reform in over half a century, but that during that period there have been significant technological advances for which corresponding changes in intellectual property laws are needed.
The proposed change with the greatest significance is a move to a "First to File" system of patent issuance. Today, the United States uniquely has a "First to Invent" system. Should S.23 be passed into law, the individual or entity who files a patent application on an invention first would be the one that receives the patent on the invention, irrespective of whether another invented it first. "First to File" is another initiative to harmonize the United States patent law with the rest of the world.
Senator Grassley of Iowa is now speaking, and he believes one result will be improved-quality patents. He says the ability of third parties to submit prior art during the examination process will facilitate that.
Still, some question whether changing the patent system to a "race to the patent office" will really result in higher-quality patents. Many foresee patent applications being submitted without the inventions being fully fleshed out, for the purpose of being the first to file and receiving priority over all others, including those who might have a fuller conception of the invention but less in the way of resources.
Stay tuned... there may be a vote this week, perhaps even today.
Saturday, February 26, 2011
Publishing of Patent Applications
Did you know the Patent and Trademark Office will reveal your invention 18 months after your application is filed by default? Isn't the office supposed to keep your invention a secret until it's patented? Is there a way to keep it confidential?
On one of the forms that accompanies a patent application to the Patent and Trademark Office ("PTO"), there is a section called "Publication Information". The form is the Application Data Sheet -- what practitioners and the PTO refer to as the "ADS" -- and it mostly contains demographic information about the inventor. In the "Publication Information" section, there's a checkbox called "Request Not to Publish". By default, the contents of a patent application are published 18 months after filing. An inventor may, but not always, be able to prevent the application from being published.
It usually takes 3 years for a patent to issue from the time the application is filed. My clients have been surprised to find out that the PTO would disclose what they've invented before a patent issues. The general rule for most of the PTO's history is that they keep the applications that are before them confidential. Has something changed?
Yes, in fact something did change. Several years ago, in the interest of harmonization with patent procedures in patent offices around the world, the United States began publishing applications just as other countries do. There is increased pressure for our patent law to be consistent with that of the rest of the world. One significant proposed change is for the United States to move from a "first to invent" system to the "first to file" system, but that's a topic for another day.
With respect to application publishing, there are some drawbacks for U.S. inventors that result:
On one of the forms that accompanies a patent application to the Patent and Trademark Office ("PTO"), there is a section called "Publication Information". The form is the Application Data Sheet -- what practitioners and the PTO refer to as the "ADS" -- and it mostly contains demographic information about the inventor. In the "Publication Information" section, there's a checkbox called "Request Not to Publish". By default, the contents of a patent application are published 18 months after filing. An inventor may, but not always, be able to prevent the application from being published.
It usually takes 3 years for a patent to issue from the time the application is filed. My clients have been surprised to find out that the PTO would disclose what they've invented before a patent issues. The general rule for most of the PTO's history is that they keep the applications that are before them confidential. Has something changed?
Yes, in fact something did change. Several years ago, in the interest of harmonization with patent procedures in patent offices around the world, the United States began publishing applications just as other countries do. There is increased pressure for our patent law to be consistent with that of the rest of the world. One significant proposed change is for the United States to move from a "first to invent" system to the "first to file" system, but that's a topic for another day.
With respect to application publishing, there are some drawbacks for U.S. inventors that result:
- If the patent never issues, prior to application publishing, an inventor could choose to practice the invention as a trade secret and still have some level of protection of intellectual property rights. But once the application publishes, it can't be a trade secret any longer either.
- The patent office charges the inventor a publication fee! (Adding insult to injury, naturally.)
So why does the PTO have a checkbox on the Application Data Sheet called "Request Not to Publish"? If the inventor does not plan to seek patent protection outside the United States, then there are no world harmonization concerns and the PTO will grant the inventor's request not to publish the application.
There is one very important wrinkle, which is that should the inventor decide to seek patent protection internationally after asking the PTO not to publish the application, the PTO must be notified of that decision. They will then publish the application as they would by default. But failing to inform the PTO that the inventor is seeking patent protection overseas in that instance means the application will automatically go abandoned. In other words, it will receive no further consideration for a United States Patent.
The upshot of all of that is that for clients of mine who only seek U.S. patent protection of their invention, I advise them not to publish. Otherwise it's more expensive and forecloses the possibility of ever invoking trade secret protection. But inventors who take this advice and later change their minds about going for international patents must inform the PTO. The consequences of not doing so -- a probable loss of your patent rights in the invention -- are drastic.
EDIT: here is one reason why you might elect for the application to be published even when there is an option not to.Friday, February 25, 2011
Microsoft v. i4i, U.S. Supreme Court - What's at Stake?
On April 18, 2011, the United States Supreme Court will hear arguments in the Microsoft v. i4i case. The outcome of the case may be that the Supreme Court makes it easier for patent infringers to contest the validity of the patent in question, if the Court finds for Microsoft. On a go-forward basis, the rule would be that the burden of proof for a finding of patent invalidity would be the lower "preponderance of the evidence" standard, rather than the "clear and convincing evidence" standard in use today.
The principal issue in the case being argued is what it takes to invalidate a patent. When a patent owner believes another party has infringed on the patent owner's patent, that owner will bring a patent infringement suit as the plaintiff. The alleged infringer, now the defendant in the case, may argue that there is no infringement because the patent is invalid and should never have been issued.
The question for the Court is what burden of proof is used to find a patent is invalid. Currently, a patent is presumed valid, and the burden of proof needed to invalidate it is called "clear and convincing evidence."
That is a phrase that is less familiar to most individuals than other burdens of proof we commonly read about in the news or see on TV. Most of us are familiar with the concept of burden of proof from criminal law: a defendant must be found liable "beyond a reasonable doubt" to be guilty. In a civil trial, the burden of proof is a lower threshhold, called "preponderance of the evidence."
The most common example contrasting these two burdens of proof is that of O.J. Simpson, who was found not guilty of murder in the criminal trial brought by the government because the jury was unable to reach a verdict of guilty beyond a reasonable doubt. He was later found liable in the civil suit brought by the families of the victims, where the burden of proof was the lower preponderance of the evidence standard.
The clear and convincing evidence standard is used in civil trials, like a patent infringement suit. It is a higher burden of proof than preponderance of the evidence. It is not as high of a burden as beyond a reasonable doubt. But for a court to hold that a patent is invalid, the finding must be borne out by clear and convincing evidence. That means it is harder to get a patent invalidated than most common matters brought before a court in a civil suit.
Microsoft is arguing that in some instances, the threshhold should be lowered to "preponderance of the evidence." Is that a good thing? That is probably a post for another day.
EDIT (6/9/11): The decision has been handed down and the Court left the standard at clear and convincing evidence.
The principal issue in the case being argued is what it takes to invalidate a patent. When a patent owner believes another party has infringed on the patent owner's patent, that owner will bring a patent infringement suit as the plaintiff. The alleged infringer, now the defendant in the case, may argue that there is no infringement because the patent is invalid and should never have been issued.
The question for the Court is what burden of proof is used to find a patent is invalid. Currently, a patent is presumed valid, and the burden of proof needed to invalidate it is called "clear and convincing evidence."
That is a phrase that is less familiar to most individuals than other burdens of proof we commonly read about in the news or see on TV. Most of us are familiar with the concept of burden of proof from criminal law: a defendant must be found liable "beyond a reasonable doubt" to be guilty. In a civil trial, the burden of proof is a lower threshhold, called "preponderance of the evidence."
The most common example contrasting these two burdens of proof is that of O.J. Simpson, who was found not guilty of murder in the criminal trial brought by the government because the jury was unable to reach a verdict of guilty beyond a reasonable doubt. He was later found liable in the civil suit brought by the families of the victims, where the burden of proof was the lower preponderance of the evidence standard.
The clear and convincing evidence standard is used in civil trials, like a patent infringement suit. It is a higher burden of proof than preponderance of the evidence. It is not as high of a burden as beyond a reasonable doubt. But for a court to hold that a patent is invalid, the finding must be borne out by clear and convincing evidence. That means it is harder to get a patent invalidated than most common matters brought before a court in a civil suit.
Microsoft is arguing that in some instances, the threshhold should be lowered to "preponderance of the evidence." Is that a good thing? That is probably a post for another day.
EDIT (6/9/11): The decision has been handed down and the Court left the standard at clear and convincing evidence.
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