BizMorph

NDA vs Patent Application

(reprinted from BML January Newsletter)

Protecting your rights while promoting your invention

 

I recently attended a talk given by a serial entrepreneur with a great track record of success.  In the discussion surrounding the talk the issue of NDA's came up.  The speaker opined that NDA's were a thing of the past.  That many large companies today refuse to sign them.  That they are difficult to enforce and getting them wastes time better spent elsewhere.

 

The entrepreneur suggested that inventors forget about getting NDA's and concentrate on building up their business so that they could dominate the market and demonstrate the value of their invention with sales statistics.

I believe there is a lot of truth in what the speaker said but what he said is also limited because it omits a good deal of important information and also ignores other options open to the inventor.

Since I have been in business I have signed dozens of Non-Disclosure agreements.  Most of them are pretty standard.  The only major differences I have found between them are in the term of the agreement. I did find one client who wanted the term to be "in perpetuity".   I refused to sign that one.   But otherwise getting an NDA signed with small companies and individuals has been easy.

Getting a large company to sign an NDA is another matter.  For whatever reason staff attorneys are advising big companies not to sign NDA's.  I have also heard it said that VC's and Angels wont sign them either.  My guess is that they want to avoid potential lawsuits around breach  of these NDA's.  

 Sometimes a big company will want you to sign their NDA which may have  some unacceptable content.  And some attorneys will combine NDA's with non-compete agreements, arguing an NDA only protects you from the other party disclosing your information but not from them using it.

So how does an inventor protect themselves when they want to talk to a big firm about licensing their invention or an Angel or VC about funding their  idea.

The simple answer is to file a patent application.  A provisional patent application can be quite inexpensive if you do the work yourself and cost about half the price of a full  application if you have a professional write it 

You can inform the party you are talking with that you have filed a provisional application on the material you are disclosing to them.  If you later file a non-provisional application (which you must do in one year) you can enforce your patent ,should the company use your IP  without permission,  as soon as the patent application publishes.

 

This method is not as quick as an NDA but it is probably more effective and will allow you to talk with those large companies and investors who refuse to sign NDA's while still protecting your intellectual property

 

If you need more help or advice on this topic, contact us.   just send us an email to rblazey@businessmetamorphosis.com or  give us a call at   (585) 520-3539  

 

Letters and Comments - BML Newsletter

To Readers of the BML Newsletter:

 

Many of you have wished to comment on articles in the newsletter and up until now there has been no mechanism to do so.  Now if you wish to comment you can just reply to this article.  Please mention the issue of the Newsletter (Month, Yr) and the title of the article you are commenting on.  Add your name if you wish

 

Best Regards,

 

Dick Blazey

How to Implement the Patent Law Changes in Your Business

Guest Article by Tracy Jong, Patent Attorney

You have undoubtably read about how The America Invents Act changes patent law and practice in the U.S. Now you are left to figure out what your company should do to implement the changes. Do you need to do anything? Will it matter? 

Yes, it will. Let’s look at some real steps you can take to protect your technology. 

• Review your internal procedures for capturing potential inventions. How do you solicit and record new technologies from your employees, contractors, consultants and joint ventures? Do your policies encourage employees to report new ideas? Is there an incentive for doing so? Good written or electronic records will provide the necessary evidence in terms of both substance and timeline in order to put your company in the best position to take advantage of derivation proceedings and the prior user defense.  Use inventor journals to record and document research; regularly have them witnessed and dated. 

• Review or create an intellectual property protection program, including employee policies and agreements, to convey ownership of patents and copyrights to the employer confidentiality agreements and trade secret protection measures. Mark documents confidential, use computer passwords and other electronic security measures and educate your employees on the expectation and importance of confidentiality. 

• The AIA enhances the importance of confidentiality agreements and supports trade secret protection. Take this opportunity to review and update your confidentiality and nondisclosure agreements. Educate your employees to put greater emphasis on Confidentiality Agreements. Emphasize to them that it’s not about distrust, but to protect patent rights. They tend not to use them when they “trust” the other person to whom disclosure is made. 

• When signing confidentiality agreements presented by others, read them carefully to understand all of the provisions, such as whether there are restrictions like non-use and non-competes. These seem like such common documents that people often do not always take the time to appreciate the promises and burdens they are undertaking. 

• Use this opportunity to review and update your consultant contracts and joint development agreements to clarify technology ownership issues in view of changes to patent law novelty/prior art/obviousness scope

• When doing prior art searches, expand your search to as many major global sources of prior art and relevant activities.
• Actively monitor applications and patents in your key technology areas
• You may want to use a patent watch service or monitor weekly USPTO publications (Tuesdays for issued patents and Thursdays for patent applications).
• Proactively evaluate your technology areas to determine if there are some areas where “defensive publication” or intentional disclosure is the best or most cost-effective strategy. For example, you should consider defensive publication when foreign filing is unnecessary or limited. You will want to publish to prevent competition if you are not able or do not want to invest in a patent.
•  For key technologies, file provisional patent applications early to establish prior art dates. Be conservative and file provisional patent applications before all public disclosures or any sales of the technology embodied in or used in the manufacturing of a product. When it is available, it is best to include experimental data that can demonstrate your knowledge of the metes and bounds of the invention. Remember, as tempting as it is might be to keep some portions secret, you must disclose ALL of the technology for the patent to be enforceable. 
• When you file nonprovisional patent applications, use the Fast Track option if you need a speedy process and can afford it the extra few thousand dollars.  

• Develop a website for virtual patent marking. This will enhance your ability to collect damages from potential infringes. It will also help manage against false marking claims. However, do NOT mark products as patented when they are not. 

 

• Proceed conservatively. Any prior art exception for inventor disclosure and derivation claim should be narrowly construed – precisely the same invention (even minor variations are likely to be problematic until the law is interpreted over time). Be sure that you file new provisional applications on even slight variations of the technology. Conservative practice will ensure that the company can benefit from derivation proceedings and will not be subject to prior art rejections, especially under Section 103 obviousness. The new 102 exception or grace period for inventor disclosures will likely be narrowly construed to cover the exact invention only and may not extend to non-disclosed variations, no matter how minor they may be. The same narrow construction is likely to apply in derivation proceedings. There is no concept in the new law of “derivation-in-part” for situations where the original invention is modified or improved on by someone else. Protection is likely to be accorded only for the exact version of the invention that was disclosed or shared with the other party.

 

• Lastly, organize your patent portfolio data. This will also help minimize the chance of missed maintenance fee payments.

 

Our firm can help you with these strategies to implement and benefit from the new patent laws. Call our office if you would like to discuss your situation in detail. We can help customize a technology protection strategy that helps your business profit from its most important and valuable assets.

 

 

Lessons from "The Social Network" [Jointly developed Intellectual Property]

Reprinted from the Business Metamorphosis Newsletter [www.bmllc.net]  December 2011

 

 

 

It's not often that an abstruse legal subject such as Jointly developed Intellectual property becomes the subject of a major motion picture, but that in fact is what happened with "The Social Network".  The movie about the founding ofFacebook, and who really invented it  is  rooted in the complex legalities of intellectual property law.

 

The movie is built around a court case between the Mark Zukerberg, the founder of Facebook  and the Winkelvoss twins who claim that he stole the idea for Facebook from them.   The story is very interesting to someone like myself who studies Intellectual Property ownership because it's an example of what happens when you don't follow the established procedures and then end up in a mess as a result.

 

As the story goes the "Winkelvii"  hire  Zukerberg to write the software that will drive their invention,  called the Harvard Connection.  At the time, social sharing sites were not unknown as MySpace was already in the market and doing quite well.   The Winkelvii supposedly had the idea to focus social sharing websites  on specific Universities rather than make it open to every one as MySpace did then [and Facebook eventually did also].

 

  When they hired Zukerberg they made their first mistake.   They did not execute and sign an intellectual property agreement with him.   It's a very common practice to draft such agreements.  Most large companies use them.  I signed one at Kodak.  They say very plainly that anything you invent on your boss's dime belongs to them, not to you.   Zukerberg could have declined to sign, but he never had to.

 

The Winkelvii apparently knew  little about writing software.  That's why they hired Zukerberg.  He eventually decided that  their concept was "lame"  and  went  off  on his own to design a "better mousetrap"  which eventually becomesFacebook.   Since the inventions Zukerberg makes after parting from the Winkelvii make no use of their original concepts,  as Zukerberg concludes, when he is brought to court over the matter, he feels they contributed nothing and are owed nothing.

 

Strictly speaking both the Winkelvii and Zukerberg are co-inventors as they both contributed elements of the final invention.  The rule in patent law is that anyone who is responsible for at least one patent claim is a co-inventor and thus is named on the patent. The fairest way to handle such situations is with a Joint Development Agreement. 

 

 A properly constructed Joint Development agreement (and I've seen many) has 2 basic rules. 

1) Each side specifies what they owned in advance.  The agreements  usually allow them to keep that material.  

2) Anything that is developed after the project starts, no matter by whom, is considered Jointly Developed Intellectual Property and its ownership is the subject of, and is determined by, the agreement.  

 

If the Winkelvii and Zukerberg had executed a JDIP agreement, both would have owned a piece of Facebook as specified by the agreement and there would have been no need for a court battle. 

 

The Winkelvii eventually earned $67M from their court case.   But, given the current value of Facebook, ($24-$32 Billion ) that was chump change.  Their lawyers also probably took at least a third of their $67M.   I understand they are now suing for more. They are not expected to get it. To bad they didn't think things through at the beginning.

 

 What is not said in the movie is that the Winkelvii founded the Harvard Connection well before connecting with Zukerberg.  If they had patented their  invention, and never even  connected with Zukerberg,  his inventions would have been viewed as improvements to their patent, and while he could have patented the improvements he would have needed a license from the Winkelvii to practice them.  All together the Winkelvii were the ones who made the biggest mistakes and lost the most as a result.

 

 If you are considering Joint Development of an invention, find out how to  do to right.  Just  check us out at www.alacartepatents.com , write us at rblazey@businessmetamorphosis.com or  give us a call at  (585) 520-3539  

 

 

Should you File a Provisional Patent Application?

 Provisional patent applications have value but its not always what the people who write them think it is.   A provisional patent gives the applicant one additional year to file a non-provisional patent application but its no substitute for a real patent application.  If you don't file a non-provisional within one year the provisional expires and you loose the one year extension that it brought you. 

The most important value of a provisional application is to protect your patent rights from being lost due  to public disclosure or offering for sale.  If you do either of those things without filing a patent application, you start a one year period during which you MUST file the patent application or loose all rights to your invention which becomes part of the public domain.  You loose all European rights on offering for sale or public disclosure , immediately.   There is no grace period for European applications. 

A provisional patent is filed but not examined.  That means no one will look at your provisional application. It will simply sit on the shelf until such time as a non-provisional claiming it is filed.    Then it is removed from the shelf and compared to the non-provisional.   Any material which is in both applications gets the priority date of the provisional. 

So what should be included in a Provisional application?   Many attorneys don't include claims in a provisional or include just 1.  The body of the provisional should contain everything you want included in the non-provisional patent. If you do this correctly, most of the information you want included in the non-provisional will get the "priority date"  of the provisional.

Another useful property of the provisional patent is that it is not published.  That means its not disclosed so if  you so choose you can resubmit the provisional after it expires.  What you have lost by doing this is the priority date, so anyone who happened to file on something similar to your invention during the year your provisional was in force, is now prior art which can be used against you.

For this reason we recommend anyone contemplating this strategy do a patent search for patents filed in the patent classes into which your invention falls , for the year that has just been lost due to the provisional's expiration.

 

 

 

Kicking the Tires : Checking out Potential Joint Venture Partners

It's important to know who it is you are  doing business with.  Many small businesspeople have found to their dismay that the company they had invested time and money getting to joint venture with was not who they thought they were.  We had such an experience recently when someone contacted one of our companies with an exciting proposal.  They claimed to be part of a well respected firm which could have credibly stood behind the promises they were making ,   but it later turned out they were working on their own and using the firm to establish a false credibility.  One one company buys another, its common practice to do a complete analysis of the other firm,  and a "due diligence"  report is often prepared.   However the time and cost associated with these reports makes them impractical for many purposes.  For example, if a company wants to consider several possible merger partners the cost of doing a full due diligence on all of them may be prohibitive.  Also the searching company may not need all the information in a due diligence report to make a decision.  This is the reason that Penguin introduced our First Look product line.  First  Look gives the purchaser a chance to buy only the information that they need and get it faster.  Also,  Penguin has partnered with C3 Business Information , vendor of Skyminder reports to provide top flight credit information on target companies.   Whiile you can often find much of what you want on the web,  a web search may also give you tons of irrelevant material to sort through.  Also some very useful  data sources are only available by paid subscription.   Penguin has those subscriptions and a skilled professional researcher who knows how to use them.  Contact us when you need to find out WHO that other party with the exciting offer really is.

 

Storming the Castle: How to get your ideas in front of the Right people

One of the most difficult problems in patent licensing is making contact with the people who  have the authority to make a decision on licensing your invention.  In many companies today the decision makers are so well insulated from the outside world that Michal Boylan in his book "Accelerants"  likened reaching them to storming a castle. 

Not that these folks have ever been easy to reach, but in the past the "gatekeepers"  were often human beings who could be reasoned with.  Those individuals have long since disappeared and been replaced by voice-mail trees that operate like Escher's endless staircase leading nowhere.. 

However, all is not lost because there are new media available that offer different routes to the decision makers.  Among these are the social media , particularly Link edIn. You can use these media to find out who works at the companies that you are targeting and more importantly who you know who can introduce you to them.

 

The first problem for the invenor or their agent is to identify who the decision-maker is.  Unless you have access to an internal corporate phone book (or its on line equivalent) this is extremely difficult,.

In some large companies there are persons whose job it is to "protect" the company from outside inventors.   The reason that such an unlikely job exists is that those companies are constantly creating new ideas internally.  They don't want find later on that their new product can be blocked in the marketplace by lawsuit from an inventor claiming he told them about it.   Hence the "Outside Ideas Office"  whose job is to be the only one in the corporation who talks to outside inventors,  and more importantly never to other members of the corporation.

To bypass this office you need to talk to someone else, for which you need an introduction.  And you need to be sure this person never sends your idea to the "Outside Ideas Officer"  as that is the kiss of death.

Again the Internet is one of your best resources to help find decision makers because they are often well represented at trade association conferences and other public documents.  For publicly held companies you can also find information on the officers and directors but this information is unavailable for many privately held companies.

If you need help in getting to the right people, its helpful to deal with a company that has been through this process and may even have contacts in the companies you are targeting.   Give us a call at ITTr and see if we can help 

 

 

 

 

Making the Most of Your Intellectual Property

Companies don't monetize their inventions well.  Sometimes they never collect the ideas their employees develop and the ideas walk out the door when the employees leave.  Sometimes companies unknowingly infringe the patents of others leaving themselves open to costly lawsuits.  Sometimes they lose revenue by not licensing their portfolios.

In a recent talk Patent Attorney Tracy Jong and I identified 5 common mistakes that companies make regarding their inventions that will cost them time and money.

1.     Not establishing Freedom to Use

Most people are surprised to learn that a patent does not give you the right to make or use an invention. It just means you can prevent others from doing so.  If you unknowingly use someone else’s patent  you open yourself to costly lawsuits.

2:    Ignoring Licensing Opportunities

Not seeking  licensing revenues from non-core uses of your patents. The extra revenue your earn from  patent license is “sleep money”.  Its earned for doing nothing extra (excluding any legal costs associated with drafting a license).   If you ignore licensing opportunities its like throwing away cash.

3.    Not Getting Intellectual Property Agreements with Staff

Bill Gates once said that the main assets of Microsoft walked out the front door at 5PM.   Valuable inventions can go right out the door with those workers.  The ideas in their heads that are never patented   and those projects that they worked on while at your company may later be patented by competitors.  

4.   Letting Competitors Patent your Inventions

While you don’t have to patent your inventions, you do have to protect them.  If you don’t you face another challenge, someone can patent something you invented and keep you from practicing it.  

5.   Not Protecting Valuable Inventions

Once you have invested the dollars to create something you need to be able to sell enough of those objects to recoup your investment or you have lost money. If someone else is able to copy your invention with impunity, that may never happen.

Patent Strategy deals with these and other issues.  Contact us and we will help you with them. Here’s some links that will also  help you find resources to  deal with these issues-   www.ideas-to-assets.com,  www.alacartepatents.com ,  www.ittrifecta.com

Rejuvinating Rochester : The Aquaduct Cafe District

 Neal Rudin's Vision:

 A Cafe District at the  Broad Street Aqueduct

       Our extraordinary Broad Street Aqueduct is one of only three similar structures of its type in the world. One of these three, the “Ponte Veccio” bridge.(Fig 1)  is in Florence, Italy  where Leonardo DiVinci, Michelangelo, and the Medici’s walked.  Now it is our turn to create a new renaissance,  dynamic engine of change.  Both of our cities have pioneered advances in the human experience by changing the direction and flow of history though the arts, social activism, and the sciences. However, our Broad Street Aqueduct is nearly twice as wide as the Ponte Vecchio and is fully enclosed.  It is essential that we create our own Ponte Veccio, our own heart and center where the whole community can converge. The “BSA” must be developed into a place where a critical mass of humanity, surrounded by all the tools of civilization will be able to advance.  This marvelous catalyst will be the foundation of our self-actualization. This will be the place where we will discover our future by exploring and pursuing inspiration and self reflection, a place that reveals our greater vision, a place where history tells us its own story. The “BSA” will become the vital hub, heart, and focal point of our city and its economy. A place that reveals to us the world that we have helped make visible. All great tourist cities of the world have café districts at their centers where their people gather and exchanges ideas and bargains for exotic things, a place of music and laughter, smells and tastes, A celebration of the senses and surprises is around every turn.

The “BSA” will reflect our vast contributions and our integral and ubiquitous connections with rest of the world and the universe. It is a place that will draw unceasing crowds and a place of continuous expectation. We need a World Cultural Center, an international café district that hosts the wonders of our sister cities, a mixture of Disney’s’ Epcot Center and Atlanta’s Underground, and yet with 42 huge arched windows overlooking a fast and north flowing river.

Rochester has sister cities in Japan, Ireland, France, Italy, Hungry and Mali, Russia, Israel, and Puerto Rico, etc. There is enough room for 14 large cafés with its huge windows on the upper deck, to view the Genesee River and room for more than 30 shops like; bakeries, spice and herbal shops, world music, clothes, a public market and much more below. Our contributions include our New York State Wine Cellar and “Focal Point” our personal essence where we find the wonders of Rochester and the fantastic Finger Lakes.

Paralleling the War Memorial will be an enclosed Summer Sports Park. It’s place to play all year round. It will be a place to work out, play summer games and take Golf lessons, or practice batting, kicking a soccer ball, throwing a Frisbee, and even bicycling. Laughing children run around on rolling hills in this enormous space

Under the library side will be a Corporate Networking Center where business is cultivated and promoted. Next to it will be a Science Enlightenment Center particularly dedicated to the nature and nurture of light and optic and its applications. It would be a place filled with lenses, lasers, imaging technologies, and all the things they are used for.

A wonderful working canal museum will be proudly displayed within a large conservatorium on the Eastern end. It will exhibit the magic of our historic nurseries and parks. We were the “Johnny Apple Seed” of the world. It’s a place that helped to settle and beautify America and the world.

Next, there is a right-of-way from the western side all the way to the airport where a trolley can run passengers directly downtown. This would add another artery to our now beating heart, another opportunity for us to demonstrate to the world our creative potential, another reason for people to move here.

Rochester needs a place that is open all year long that is not influenced by the weather outside or the time of day. If we want to bring the world here we have to show them the things that make us so extra-ordinary.                                    

---Neal Rudin ZagoZana@Yahoo.com 585-442-5656

 

Ponte Vecco

 

 

 
Broad Street Aqueduct - Exterior View

 

 
 
Broad Street Aqueduct - Interior View

 

 
What it could be like-

introduction to Visions

 Welcome to the new VISIONS series on Bizmorph-  Its time our readers heard from someone besides me.  In my work I talk to many people with ideas for new products, services and systems sometimes their ideas go beyond business to the community as a whole.  This is your chance to hear some of the voices that I hear and have found interesting. Our first guest author is Neal Rudin. 

Neal Rudin is a visionary.  That is the way he described himself to me when I first met him 8 years ago.  Neal is many things.  An inventor, an artist a photographer a gardener.  He was the very first customer that BML had as we helped him draft his first patent application.   For years Neal has been sharing with his many friends his Visions for how Rochester could be a more attractive city and a magnet to tourists from all over the world. 

 However other than writing letters to the editor he has not put these materials out where more people could see them.  As the first guest author of our VISIONS series we take pride in being able to share his visions of a future Rochester with the online community.   Enjoy-

 

Dick Blazey

Secrets that they will never tell you about getting a patent

Why applying for  a patent is like being a defendant in a court case

Introduction

In this talk I’m going to cover materials that are not often dealt with in discussions of what it takes to get a patent.  Applying for a patent and all the work that entails is the first step in a long process.  What I’m going go focus on is what happens 1.5 or more years AFTER your patent application is filed,  a process called  Patent Prosecution.  It is in Patent Prosecution you find out how good a job you and your attorney did in preparing the application and also encounter the luck of the draw as you find out the prejudices and peculiarities of the person who decides if you will get that patent,  The Patent Examiner. 

To get a patent you have to survive a trial

I liken the patent prosecution to a trial.  While you are not in a courtroom, all the players are there.  You are the defendant, your attorney is the defense and the examiner fills the roles  prosecutor , judge and jury.  Because the examiner is so important it is a good idea to find out as much about them as possible and to establish a good relationship with him or her

Why apply for a patent?

Applying for a patent is confusing, time consuming and expensive. Why should you do it?

Before you involve yourself in this process you should know why you are doing it.  A patent can be a very valuable asset of your business or it may be totally worthless.  Some are fond of quoting statistics that show that only 5% of patents are commercialized, but as you will see that is an oversimplification of the situation.  Many patents are applied for with no intent to commercialize them at all. 

Are there any other alternatives?

• o    Public  Disclosure- A patent is not your only option.  . If you disclose your invention publicly, no one can patent it.  Of course you then forgo the monopoly a  patent would give you
• o  Trade Secrets-If you keep the invention as a trade secret, you can save on patent costs, but you have to actively protect your invention from disclosure.
• o    Copyright-   Sometimes a copyright can substitute for a patent as in some cases involving computer software.  Public Disclosure
• o    Provisional Patents -And  a provisional patent can buy you 1 year  to raise the funds for a non-provisional application

Patentability  and  Freedom to use

When you consider a patent you should have two main concerns.  Patentability (can I get a patent on this invention) and Freedom to Use (does someone else already have a patent on this invention).

Preparing your Case

Since you are preparing for a trial you  and your  attorney should prepare your case as carefully as if you were going to court for any other purpose.  Your attorney will of course prepare the case which in this situation means draft a patent application.  But the application the attorney will draft will be built  almost entirely from what you tell him or her.   The attorney is an expert on the law and may have some knowledge of the technology on which your  invention is based.  But YOU ARE THE EXPERT ON YOUR INVENTION.  It is up to you to tell the attorney in  your words or better in a carefully prepared invention report, what your invention is about and most importantly  what its Novel Inventive Features are.

Finding the Novel Inventive Features

The novel inventive features of a patent are what patent claims are written on and what court battles are fought around.  I’ve written a blog article specifically on what they are[1],  but for the purpose of this article we can simply say that they are those elements of your invention that distinguish it from the inve ntions of others , the so called “Prior Art”.

 Identifying the Closest Prior Art

Prior Art is anything that was “known” in the public domain before your invention was made.  It includes  patents, articles, objects for sale, in any language and in any country.  While it is possible that the prior art that invalidates your invention is in an obscure article in Tajikistani,  its unlikely that such an article will be found by a patent examiner.

 Most citations that I have seen in patent office actions in  obtaining 35 patents and in representing inventors for 5 years have been patents,  and usually US patents.  Sometimes a European patent will be cited and rarely one from Japan.  There is a good reason for this.  Most inventors from other countries will also file their patent application in the United States.

Working with  your Attorney

o     Reviewing the claims with your patent attorney or agent

In working with your attorney it is very important that the most significant feature of your invention appear in the claims.  Drafting of patent claims is a high art , the province of attorneys, and is not going to be covered here.  The wording of the claims is up to your patent attorney, the content of the claims is largely up to what you tell him or her about your invention. 

There are many strategies attorneys use  in writing claims.  A good attorney will know most of them.  You should ask your attorney what the strategy will be.  For example, many attorneys write claims very broadly , knowing the patent office will object to the breadth with the intention of falling back to a more defensible position.  Its very important that this core position is what you want defended.  I have seen far too much time , effort and money expended by inventors and attorneys defending claims that were not really central to the clients business strategy

Another classic mistake is having the attorney write claims that do not protect the most novel features of the invention.  Frequently an attorney and inventor who do not know each other well will write claims which simply describe the invention.  Since most inventions are made up of known and unknown components, such a strategy is often rejected by the patent office as an “obvious combination” of known features.  The way to defeat such arguments is to have patents which contain either unknown features, or unknown , non-obvious combinations of features, preferably  both.

Another strategy often used when an invention is similar to the prior art is to define it by its range of operating parameters.  For example a hammer is a well known object which cannot be patented.  However , if  a standard hammer is used under conditions of extreme heat or cold it my not work.  A hammer which will stand up to such conditions can be patented.

è    An Invention must be Novel, Useful and Un-obvious

• What does that Mean?

If something is new it is considered Novel, whether its useful is also a pretty straight forward concept.  But the idea of Obviousness is something quite different.  It is this concept about which most patent arguments including patent examination and court battles over patent infringement are fought.  In patent law one basically compares an invention to what could be created by someone “skilled in the art”.  That is the USPTO does not just compare your invention to someone elses and ask if they are the same.  The test of obviousness  is much tougher than that

• The straw man

The obviousness test is based on the “strawman”  who is someone who not only is skilled in whatever field the invention is about but also has at hand every thing written anywhere in the world by anyone prior to your invention.  That means in principal , your invention could be ruled obvious  due to a publication written in an obscure journal in Uzbekistan. 

While that is the letter of the  law, in practice the USPTO almost always tests your invention against other patents usually US patents but sometimes foreign ones particularly European.   However, if someone else, such as a competitor happens to be involved, its possible that obscure foreign journal article might surface.  I once had a situation where I had to get such an article translated from the  Swedish   In our patent search business we let the client determine the worldwide scope of our search.  If we are asked to search Uzbek journals we will (for a big extra fee).

è   Finding the Un-obvious features of your invention

Your role as inventor, in interaction with your attorney and others who might help you such as AlaCarte, is to identify  those features of your invention which you know are most likely to be un-obvious. 

The easiest way to find those features is in two steps.

1.     First List all the features of the patent- Those that are known (such as those already part of other inventions)  and those that are unknown.  List them in one column on the left side of a piece of paper or  a spreadsheet.

2.     On the columns to the right side of each feature, note if you have ever seen it anywhere else in products or in the literature.  Thus if your invention is a Widget,  and while you have seen many widgets every widget you have ever seen or heard of was green , your list might  look like the table below

Feature	Known	Unknown
o    Color of Widget	o    Green	o    Yellow

In the example above your patent claim might be for a Yellow widget.

è    Are all the claims supported in the body?

If you ever feel like testing your attorney’s knowledge ask him or her  how they would deal with a “No-Antecedent Basis”  rejection by the patent office.  This  rejection is far more common than it ought to be.  What it means, translated from legalese, is that a patent claim is not supported in the body of the patent (at least the examiner couldn’t find the supporting information).

 Often this is an attorney error, but its one you can help to avoid.  When your attorney gives you the draft application to review before filing, check each claim carefully to see if there is something in the body that relates to it.  Often an attorney will throw in a bunch of extra claims for strategic reasons and then not check to see if they are supported in the body.  This mistake costs you money in the prosecution phase when the claim must be reworded or deleted as the body  of a patent cannot be changed in prosecution (except by spending even more money filing what is called a Continuation in Part or CIP).

The Patent Process

Getting a patent is not an overnight activity.  From application to issuance usually takes at least  3 years and often longer.  The process can be extended if you file a provisional application first (add 1 year) and by the time spent in  each of the  patent stages.  Office Actions take place any time after the application is published which works out to about 2 years as shown below.

Process Step	Duration (yrs)	Elapsed Time (yrs)
Search	0.25	0.25
Draft and file Application	.33	0.58
Wait for Publication (1.5yrs+)	1.5	2.08
Office Actions (Prosecution)	.5	2.58
5) Grant and Payment	.1	3.0
6)Afterward Defense/Offense/Maintenance	17	20

Patent Searches

è    Why Search

           What happens if you don’t do a  search?

People who decide not to search for prior art are taking a big risk.  There behavior reminds me of the Fram Oil Filter add where the mechanic says " you can pay me now, or pay me later".  If you don't search the patent application that is written on your invention may be easily dismissed by the first office action that occurs when the examiner finds prior art that conflicts with your invention.  If you had known about that art in advance your attorney could have adjusted your claims to go around it. (See The Patent Mine Field) article in this Blog.

  Not only will you be spending money on unnecessary legal fees but it may not be possible to rescue your application.  This is true because while patent claims can be adjusted in a prosecution, the body of a patent may not.  This was exactly the situation when I was called in on a case where a search had not been made.  The patent claims did not contain the inventors most important and defensible ideas and it was not possible to add them in prosecution so the whole patent application had to be re-written.  Essentially the inventor had to pay twice for his patent application.

·            Doing your own searches

Many inventors seek to save money by doing their own searches.  But, unless they are very familiar with how patents work, those searches may not do them much good.  Inventors are usually looking for something that looks or works just like their invention. 

 However, that is not the way the patent system works.  Patents are based on claims addressed to Novel Inventive features.  And features from several different patents can be combined in an "Obvious Combination" argument by the examiner.  Often inventors are stunned by the patents an examiner chooses to cite against them for this very reason.  The note that the "prior art"  doesn't look or work at all like their invention. Unfortunately  that is no defense.  If the combination of "Obvious"  elements from other patents can be shown to contain the Novel Inventive Features described in the patent claims, their application will be thrown out.

  At AlaCarte we think like and search like the USPTO and for that reason we are more likely to find the kind of prior art the examiner will cite (that doesn't mean however, we will always find it.  Examiners are all unique human beings with their own way of thinking and no one can predict exactly what they will do.

è   Where to Search

·    Patent Classes

We search patents at AlaCarte using patent classes. Thats the way the USPTO does it.  You can access the USPTO class system from their website using this link -US PTO Classification System.

Most people find the system quite complex and difficult to use.  It takes a long time for a novice to get use to it.  One way to start is to take a look at a patent of interest such as one of your own and look for the field where the Primary US class is listed.  Then go to the classification system  using the above link and see what it tells you about that class.  Sometimes you will be very surprised as to how the patent office classifies  your invention. Note that the USPTO often looks at and classifies a patent in more than one class.  

To  further complicate the situation the world patent office uses a completely different system.  You can also find the primary world patent class listed on most US Patents.  A thorough discussion of patent classes and how to use them is beyond the scope of this article.

è    Types of Searches

·    Fully Electronic

If you search the web you will find some patent searches offered at very low cost.  Often these searches are done completely with software.   While all searchers use some electronic searching in their work, a fully electronic search that actually produces useful results requires a level of artificial intelligence that I at least have not seen anywhere.  If you order a fully electronic search you will either get a very long list of patents to go through yourself or a shorter list which may be missing very important elements.  You probably can do as well with Google Patents, Free Patents Online or many of the other free services as by signing up for one of these searches.

·     Manual

In the days before computers, patent searching consisted of pouring  through drawers of patents in your local library or in the patent office in Washington.  This method was tedious and time consuming but had the advantage that a human being, particularly one "skilled in the art"  can recognize the importance of  a patent claim that no computer currently can.  Hardly anyone searches this way anymore.  Because they are so labor intensive, such searches can be very expensive.

·     Hybrid

Most searchers including AlaCarte use a hybrid combination of  manual and electronic techniques.  You can find a complete description of how AlaCarte searches on our website  (AlaCarte Searches).  The simplest way to describe how we search is that we select a large group of patents which  fit a profile,  reduce this group by wholly electronic sorting and then use two steps of human sorting:  A quick relevance scan and a finally a detailed read of the most significant patents.  We feel this system offers the best combination of  Quality and price.

The Patent  Application

Once a patent search is completed the next step is often to have a patent application drafted by an attorney or agent.  We strongly recommend that the inventor prepare an invention report first before contacting the attorney so as to save costly attorney  time in interviews.  Sometimes a attorney will ask the inventor to prepare an invention report.  At my former job in a Fortune 500 company, it was a requirement that the inventor prepare such a report before contacting the company attorney.  The sections of a typical patent are listed below.  They are also the sections of an Invention Report.  If you want help preparing an invention report checkout this link (Invention Reports). 

I'm only covering this section briefly because I want to focus on what happens AFTER your patent application is filed and is ready for examination.  That examination will start with and focus almost entirely on the Claims.  Its not that the other section of the patent application are unimportant,  but they play mostly a supporting role in patent prosecutions.

• Abstract
  
• Background: Prior Art
  
• Description of the Invention
  
• Figures
  
• Claims

Office Actions (Prosecution)

After about 18 months your patent application will be published on the USPTO website.  Shortly thereafter your attorney will receive the first "Office Action"  from the USPTO.  Make sure your attorney knows to inform you as soon as an office action arrives  as the clock then starts running and you have a limited time to respond or your patent application will be automatically abandoned. I have 35 patents and I have never had one that didn't have at least one office action.  An initial rejection is pro-forma for the patent office.  

The office  action will be written in legalese and may be entirely unintelligible to you.  Your attorney should explain it to you.  Leaving out boilerplate the office action will be a list of rejections of one or more of your claims on various grounds such as [ Claims 1-4 are rejected as being taught by US 1,234,567 by Smith and Jones (inventors).  Claim 5 is rejected as having "No Antecedent Basis".  Claims 9-14 are rejected as being too vague etc.etc., Claims 15-19 are reject as being taught by Rogers   (US 9,876,543) in light of Smith and Jones)

The first thing to find out is:  Are all my claims rejected or only some of them?  This will be very important in considering your strategy as to what to do next.  The next thing to find out is what patents (or other prior art) are being cited against you.  In the above example its two patents by Smith and Jones, and Rogers. 

 You should get copies of each of those patents.  Then look carefully at the sections the examiner cites against you.  Your attorney should offer an option on the rejections but you are the expert on the technology , not the attorney.  Often examiners are miles off in what they cite, but sometimes they find something  that is right on the money.  Tell your attorney the most significant differnces you see between what the examiner cites and what your invention is.  Remember here its the claims that count.  Even if your widget looks completely different from the cited art,  if the feature the examiner cites is the same in the claims of  both the art and your application thats what counts.

Parts of an Invention

Every invention combines known and unknown features.  The prior art consists of everything known before your invention.  It includes materials that are patented where the patents are in force and materials in the public domain because they were never patented or the patents on them  have expired. You can get a patent that is an improvement of someone else's  invention, but if that patent is still in force you may have to pay royalties to the inventor who owns it.

   Prior Art

•    In Public Domain
•    Property of others

Novel Inventive Features

We have spoken about Novel Inventive Features before in this article and elsewhere on this blog.  Its in the patent prosecution that NIF's are really significant.  The features that the inventor and attorney propose in the patent claims are judged by the examiner against the obviousness standard.  The examiner will try to prove by citing the prior art that the NIFs were known or could have been easily deduced by the strawman (skilled in the art).  Here the role of the examiner as both prosecutor and judge causes problems.

  

The Opposing Witnesses

As in a trial there are witnesses for both sides.  The opposing witnesses are those inventors who have created the prior art that is being cited against you.  They are represented in proxy by the examiner who will use their work against your invention in several different ways:

Obvious Combinations

One tactic that often surprises inventors is the "Obvious Combination" argument where the examiner takes claims from two or more other patents and makes the arguement that they form an "obvious combination"  which adds up to your patent.  There is a classic legal precident in this space involving a road building machine which dispensed tar and gravel and also rolled those substances into pavement  doing the work formerly done by 3 machines with one.  This  patent was ruled invalid with the argument that the invention was simply the combination of three known techniques in a common platform with nothing new about them.  Obvious combination arguements can be defeated in two ways

1. By showing that one of the elements in the combination is not known in the art
2. By showing that the combination is not obvious because it results in an unexpected result.

For example in  the paving machine invention, if the machine did something different because the three machines were used together such as made stronger pavement, laid pavement faster or cheaper or whatever and that difference could not be argued to be "obvious"  to the strawman skilled in the art, then the obvious combination could be broken

.
Unpleasant Surprises

   The luck of the draw-- Your examiner

Examiner’s motivation

If an examiner gets it into his/her head that your idea is obvious, its hard to dislodge that with any argument.  Its here that the skill of your attorney is most important.  You need lots of ammunition and skill in assessing the psychology of the situation.  For example, one technique I have seen used successfully by some attorneys is what is called the "Rabbit Garden".  In that technique the attorney deliberately creates some weak claims for the examiner to disallow so that he will leave the strong claims behind.  Cleaver attorneys all have their own methods and some are familiar with the examiners.  This is the attorneys province but you should be kept informed of and approve of strategies that are used to make sure they align with your own.  Claims that are well crafted in the first place and take into account known prior art make it less likely that an examiner will make an obviousness argument using that art against you.

 Rabbits out of the Hat-- Second attacks

Sometimes, Unfortunately an examiner decides to play hardball with an inventor.  I've seen this happen a few times to some unfortunates.  In this situation after the inventors attorney successfully defeats the examiners argument that the prior art he cited in the last office action does not block the inventors claims, the examiner then reaches into his grab bag and pulls out a "surprise witness"  a completely different patent that he never cited before. 

 Its hard to defend against such attacks particularly if the patent cited is highly irrelevant.  In cases like this you might want to talk to your attorney to see if another examiner can be assigned to your case.  I haven't seen this done successfully but its worth a try.  This scenario is more likely  to happen if you haven't done a prior art search or the one that was done was poor quality leaving lots of relevant prior art around that you and your attorney have never seen.  If you have seen most of the relevant prior art before its much more likely that you will be able to prepare a good defense to it. 

Three Strikes

In patent prosecution you and your attorney get three tries to convince the examiner to accept at least some of your claims.  Each time an office action is filed you get three tries to get the examiner to accept it.  You have 1-6 months to reply ( see this link to Brown and Michaels for details).  Its important that you do reply in time because if you do not your application will be marked Abandoned and you will loose all the time and money you spent on it.

First Rejection

In the first rejection the examiner shows at least some of the cards in his/her hand.  You will learn for the first time which of the claims have been accepted,  which rejected and one what grounds. You will also learn which prior art patents are cited against your invention.  Here you get to make your first strategic decision.  If some of the claims are accepted and some rejected ask yourself how important the rejected claims are.  You can stop the prosecution right here and accept the claims the examiner allows and get your patent without paying any more attorney fees (you will still have to pay patent office fees). 

 If however, all the claims are rejected or the most important ones, you have no choice but to fight.  You can challenge the examiners arguments,  or reword your claims to clarify the differences  between what the examiner says and what you think is the truth.  You can provide arguments as to why a combination is not obvious by citing synergies that may not have been mentioned.  One thing to be careful of here is that while claims can be amended in prosecution the patent body may not be.  So any new or amended claims must be supportable by something in the body or you will risk the dreaded "no antecedent basis"  rejection.

Second Office Action

The second office action tells you how successful you and your attorney have been in responding to the examiners rejections.  Sometimes the examiner will go along with our new arguments and claim revisions and sometimes not.  If at least some of your claims are now accepted you may want to revisit the question about whether the claims that are allowed are now enough for you to take your patent and run.  If your claims are still rejected you need to know why.  Did the examiner simply refuse to be convinced by your flashy new arguments or did he Pull a Rabbit out of his hat (see previous section)

Final Rejection

If you have not yet convinced the examiner to accept at least some of your claims or if you are fighting to get more approved  than have been allowed so far you may get the to the third and final office action.  If your claims are not accepted by now you will get a FINAL REJECTION.  

At this point you are done (sort of).  You do have the right of Appeal.  From what I'm told this is VERY expensive and seldom used unless the patent and the claims you are trying to get accepted are potentially very valuable.  To go to appeal you need deep pockets and lots of time.  If you want to carry on-- consult a good attorney and GOOD LUCK.

 Afterward

You might think that after your patent is granted that you would be done with the patent office for a while but you would be wrong.  

Maintenance Fees

You still have to pay the government fees for "maintenance"  on a regular basis starting with your "issuance fee"  and continuing for the life of the patent.  If you have several patents and particularly foreign patents those fees can add up quickly.  This is one reason that many patents are abandoned after just a few years.  Its amazing how much free IP there is out there due to these fees.  Of course if your invention is making lots of money and you have competitors who would love to grab a piece of your market you will be happy to pay the fees. 

Interference and Defense

Again if your invention is valuable you may also have to defend it against infringers.  Just because you have a patent doesn't mean that others are prevented from copying your invention.  It just means that you can get the courts to stop them from making it (If you find out about them).

There are firms whose entire business is seeking out these infringers and threating them with lawsuits to cease and desist.  Sometimes you can force the infringers to stop or collect royalties from them due you but in other cases the infringers have an army of attorneys on staff and find it less expensive to fight you in court forever than to pay you anything. The right approach here often depends on economics and is beyond the scope of this monograph.

Another unpleasant surprise that may await you is that someone may sue to have your patent declared invalid asserting it infringes their patent.  They may be owners of one of the patents the examiner cited against you who don't agree with his/her decision, but more often they are owners of one of those patents overlooked by both you and the examiner.  Persons "skilled in the art"  have a better idea of the technology in their field than most examiners.  This by the way is another reason to do a good patent search in the first place.

Trolls and Anti-Trolls

Trolls

There are some less than scrupulous individuals who take advantage of the patent system to essentially extort money form unsuspecting inventors.  These "Patent Trolls"  file or purchase patents with no intention of ever commercializing them.  Instead they sit quietly waiting for someone else to commercialize something similar to their invention (hopefully a company with deep pockets) and then  they pop out of hiding with a letter from an attorney threating suit, hoping to get the inventor to pay royalties for the use of their invention which is often only peripherally related to the invention you patented.  A troll can also try to get your patent ruled invalid.  The best protections from Trolls are a good search in the first place and a good attorney who knows how to defend you from their attacks.

Anti Trolls

Some large companies, having had quite enough of the trolls have banded together to buy rights to patents that might someday pose a problem for them.  One of our clients at ITTr is an Anti-Troll pool.  These companies buy the rights to pools of patents from their inventors  with the only stipulation that the inventors may not sue members of the pool.  Inventors are free to commercialize their inventions  , they just may not stop a pool member from practicing it

Assertion and Offense

There are other ways to use your patent.  You can look for companies that are using it without permission.  This is the Troll strategy  except that unlike the trolls you may be using it to defend an invention you are practicing.  Not all competitors may be visible to you especially if they are using your invention in a field where you are not.  Often inventions have uses unsuspected by their inventors.  This licensing for non-core uses is one of the things our ITTr sister company is involved in.  While ITTr doesn't seek out infringers for clients, there are companies that do.  Ask us and we can recommend some.

Resources

There are many resources available to inventors.  Your should start with the US Patent Office          website .  But as well as their many services you can get easier to use searching tools and features  at Free Patents Online  and Google patents  .  If you are on LinkedIn you can join one of the many groups involved with patents such as the Patent and Intellectual Property group.  For Blogs dealing with patent law checkout "Everything Under the Sun Made by Man"  which is Russ Krajec's excellent blog.  You can find a link to it in the blog list in this article.  

 

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[1] Novel Inventive Features