November 25, 2009
Patent Language: “The Present Invention” versus “An Embodiment of the Present Invention”
If you spend any time reading patent applications, two things will probably become apparent to you: 1) you probably need to find a hobby or five to take up more of your time; and 2) sometimes it may seem like patent applications are written in some kind of strange, overly complicated, almost alien language. Usually, there’s a perfectly good explanation for why one would use a more complicated phrase, in a patent application, to say what could be said in a word or two anywhere else. It generally has something to do with legal precedent that would impact the protection granted by the patent. In our first of what will be another series of subject-specific posts about why we use the words we use in drafting a patent application, Tactical IP takes a look at one of the oft-inserted patent language twists – “an embodiment of the present invention,” used in place of “the present invention.”
When writing a patent application, there is a delicate balance that must be maintained, between describing an invention well enough to meet the statutory requirements and keeping your language general enough that the inventor’s competition can’t make a quick, easy design-around implementation that doesn’t infringe the patent. Patent protection is only worth as much as what you can prevent others from doing without paying you licensing fees or a royalty.
Luckily (or unluckily, depending on which way you look at it) decades of infringement litigation and appeals of patent office decisions give a roadmap for patent practitioners to follow when drafting a patent application. Unfortunately, the roadmap changes so often that the language you’re using today to draft a patent application may be no good by the time that application is used as the basis for an infringement suit – or even by the time it’s being examined by the PTO.
One patent drafting faux pas, which has developed in the last eight years or so, is stating that something is “the invention,” or stating that “the invention” includes something else. As the Court of Appeals for the Federal Circuit has demonstrated, such language can be used to narrow the protection that your patent would otherwise provide.
November 24, 2009
Why Did Chief Judge Michel “Pull an Oprah”?
by Philip Zies
You may have already heard that Chief Judge Paul Michel, of the US Court of Appeals for the Federal Circuit, announced that he will be stepping down as chief judge and will be retiring from the judiciary in March of 2010. Does it seem strange to anyone else that Chief Judge Michel’s announcement comes only a day after Oprah Winfrey announced that she will be leaving her show in 2011? While Tactical IP did not contact Chief Judge Michel for comment, a list of the top 10 reasons why Chief Judge Michel may have “pulled an Oprah” follows:
- 10: Didn’t want to be upstaged by Oprah.
- 9: Wanted some time off before the Mayan calendar ends December 21, 2012.
- 8: Wanted to form an exploratory committee for the Oprah/Michel ticket in 2012.
- 7: Wanted to vest in his health insurance coverage before healthcare reform is passed.
- 6: Didn’t want to preside over a possible appeal of the congressionally imposed BCS bowl schedule.
- 5: Wanted to show Oprah that he is available to take over her show in 2012.
- 4: Sending a child up in a weather balloon as a publicity stunt had already been done.
- 3: Wanted to be available for the Washington Redskins head coaching position.
- 2: Tired of carpooling to work with Arlen Specter
…and the number one reason why Chief Judge Michel may have “pulled an Oprah”
- 1: Two Words: Cosmetology School
If you can think of other reasons why Judge Michel “pulled an Oprah,” please let us know.
Actually, in all seriousness, we wish Judge Michel the very best. We also want to let him know that, with his qualifications, Zies Widerman & Malek can probably justify extending an offer of employment to His Honor, in either our D.C. area office or our Florida office.
November 23, 2009
Bilski Part Deux: Hilarity Ensues During Supreme Court Oral Arguments
Last week we reported that the Supreme Court heard oral arguments on In re Bilski. Since the Bilski case can have some major ramifications on determining the types of patentable subject matter, we wanted to take a deeper dive into what was actually discussed at the hearing. What we found was that the Supreme Court Justices presented several entertaining scenarios during the oral arguments.
At issue in this case is whether a system for hedging risks in commodities trading is patentable subject matter pursuant to 35 U.S.C. § 101. This decision may have a profound effect on software inventions, business method inventions and pharmaceutical inventions, mainly because these inventions generally lack structure elements, i.e., these are not machines with big moving parts that one can lay hands on. Instead, these inventions can generally be defined as a set of steps that must be followed in order for the invention to be carried out.
November 20, 2009
File under “Lamest. Publicity. Stunts. Ever.”
A federal lawsuit was filed this week in the Southern District of Florida, alleging violation of the Trademark Protection Act (source). I would just like to refer the filing attorney, Juan Abogado, to Federal Rule of Civil Procedure 11.
Movie Night
Happy Friday, IP enthusiasts! We thought it might be interesting to celebrate the end of this hard-fought work week with a movie recommendation. So stop by your local movie rental establishment, or add this one to the top of your Netflix queue, nuke a bowl of popcorn, sit back, relax, and enjoy this flick.
Primer (2004) is a rough cut little gem that is still quite pretty, maybe because of its faults. It follows the cautionary tale of a couple of engineers who spend their off-work hours tinkering in a garage, looking for that next great technology. When they stumble across an invention that they don’t fully understand, the drama and suspense begin to heat up. As they come to realize the magnitude of what they’ve discovered, things boil over with tragic consequences.
Writer/director/producer/editor/star Shane Carruth was literally a one-man show in making this film. He even composed, recorded, and synchronized the soundtrack. Being his first effort at film making, one can’t help but be impressed. It really is no surprise that he took home the Grand Jury Prize at Sundance.
November 16, 2009
What is Patentable? A Brief Background on Bilski and Where We Are Now.
Oral arguments before the United States Supreme Court In re Bilski were held on November 9, 2006. This case has been closely watched by the patent community because it can have some serious ramifications as to the type of subject matter that is patentable. The patent application filed by Bernard Bilski and Rand Warsaw is directed to a method of hedging risks in commodities trading. The Examiner issued a final rejection, noting that the invention was not directed to patentable subject matter, pursuant to Section 101 of Title 35, United States Code. Pursuant to 35 U.S.C. § 101, to be patentable, an invention must be directed to a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”
The Applicants appealed the Patent Office’s decision to the Federal Circuit. The en banc Federal Circuit upheld the PTO’s decision and noted that patentable subject matter does not include “laws of nature, national phenomena, or abstract ideas.” The court went on to reiterate the “machine or transformation test” with respect to patentability. More specifically, patentable subject matter must be tied to a particular machine or apparatus, or it must transform a particular article into a different state or thing. Using that test, the Federal Circuit found that the method of hedging risks in commodities trading did not meet the requirements for patentability.
November 12, 2009
Patently-O’s First-to-File Survey
Professor Dennis Crouch
University of Missouri
School of Law
Not that we want to club anyone to death with stories about first-to-file patent reform, but given that Director Kappos has begun beating the patent reform drum, it’s becoming more important that all the facts are known. Up to now, there really hasn’t been any consensus on whether moving to a first-to-file priority system would be a drastic change. Dennis Crouch, over at Patently-O, insists that the Director may be using flawed statistics to demonstrate that change will not be so bad. Interestingly enough, after Professor Crouch and a few others posted comments about it on Director Kappos’s blog, the comments were closed off, ending the discussion on that forum. I guess Mr. Kappos is not really interested in hearing from the patent community — despite portraying that he will listen to feedback.
In an effort to come up with some real numbers, Professor Crouch has created a survey that is designed to record the position of patent professionals on this issue. If you have an opinion, one way or the other, you should take a minute, click over, and take the survey. You can’t complain later about how things end up, if you didn’t participate in the discussion.
UPDATE: It looks like Kappos’s blog has let through a few more comments, but they are clearly censoring responses.
November 11, 2009
Interferences and Dodo Birds
by Philip Zies
The dodo bird, last sighted 1662
As you probably already know, the first to invent is the one who has the right to a patent under current U.S. law. If you invent something and someone else has already filed a patent application in the U.S. for the same invention, the U.S. Patent and Trademark Office (USPTO) will conduct an interference proceeding to determine who invented first. Interferences can be beneficial to the first to invent because there is no presumption of validity in an interference proceeding, the first to invent can obtain the patent rights of the first to file if successful in the interference proceeding, and the threat of an interference can be used by the first to invent as a tool in negotiating a license with the first to file. Or, at least, that is how it is in the U.S. right now. There has been a lot of talk about the U.S. joining the rest of the world in giving the right to a patent to the first to file a patent application, regardless of who was first to invent. Some say that if Congress passes any patent reform legislation at all that the first-to-file will be a part of the legislation because it is the least controversial part of the present reform bill. In the past when patent reform appeared imminent, the USPTO delayed declaring an interference proceeding, sometimes for years. While interference delays don’t appear to be the norm now, the delays could reoccur if the patent reform dialogue heats up. So, before interferences go the way of the Dodo bird, if you feel it is important to establish who was the first to invent by way of an interference proceeding, do it now.
Board of Patent Appeals and Interferences
SIGN ON THE DOOR: Appeals Only (after 2010)?
If you are interested in finding out more, this article provides more detail.
November 10, 2009
The USPTO Embraces the Blogosphere, Lobbies for First-to-File
Kappos: “Hey Ted, can you show me how these here tubes work?”
The U.S. Government Agency that is responsible for validating which technologies are new and useful has discovered a not so new, yet highly useful tool: web logs.
In an effort to open a line of communication between the USPTO and the practitioners who deal with the office on a daily basis, newly sworn in Director David Kappos published the inaugural post on his new blog. In it, he takes up the long-raging debate over whether moving to a first-to-file system of prosecution would have a drastic impact on the U.S. patent system.
The United States is unique in its position that the first to invent, not the first to file an application, should be the person to receive a patent for her invention. The rest of the civilized world holds the opposite view, giving patent protection to the first party to have her paperwork in. The first-to-file system eliminates the possibility of complicated and expensive arguments over who can prove the date of her invention. The downside is that someone could miss out on a patent for her invention, simply because she took an extra day to draft an application.
Congress has slipped this change into several proposed patent reform bills over the last several years, but it has failed, as of yet, to reach bicameral approval.
November 6, 2009
Classic Rewind: Can McDonald’s really sue you for how you make your sandwich?
This story was originally posted back in April of 2009 on The Legal Satyricon.
Short Answer: No. Probably not.
I call this one "the McBaby." Should I try to patent it before McDonald's does?
McDonald’s Corp. is getting some recent attention in the blogosphere for a patent application, originally filed in late 2004, which describes its “Method and Apparatus for Making a Sandwich.” What’s interesting to me about this news item is the array of different reactions that various people have to this kind of story. Personally, it makes me laugh that McDonald’s paid a patent attorney an *expletive/deleted*-ton of money to write and prosecute a fifty-four page app, comprising twenty-three pages of drawings and flow charts and describing, in painful detail, how one might go about simultaneously preparing sandwich garnishes while “heating a pre-assembled meat and/or cheese filling”. Clearly, my reaction is the same as the folks’ over at PatentlySilly.com.
The other response that I quite frequently see is one of outrage or consternation. “How can they claim a patent for that?” “Will they be able to sue me for how I make my sandwich?” “This is what’s wrong with the U.S. patent system.” “Yadda, yadda, yadda.” “I love lamp.” You get the idea. This was Marc Randazza’s reaction when we had a conversation on the subject a few days ago. Now I don’t mean to criticize or belittle anyone who has this initial reaction (obviously, Marc is no IP n00b), but it exposes the reactor as someone who doesn’t have a firm grasp on the intricacies of patent law. This is nothing to be ashamed of, because the majority of the world doesn’t either. Without digging into the details of each individual case, it’s easy to go off half cocked.
