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What It Takes To Infringe a Patent

Friday, 23 March, 2012 05:00 Written by Mark Malek 0 Comments
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By: Mark R. Malek

My last article discussed the permissibility of designing around a patent. To summarize, in order to design around a patent, also known as reverse engineering a patent, the product/device/method, etc., in question must not include all of the elements of just one of the claims of the patent in question.  If your product includes three of the four elements that can be found in the claims, then you should be in the clear.

Naturally, the next question comes from the perspective of the patent holder.  At this point, the patent holder may have discovered your invention that has purportedly designed around the patent.  The only issue is that the patent holder does not necessarily believe that your invention does design around the patent.  More particularly, the patent holder thinks that your invention reads on at least one of the claims in the patent.  Time to conduct an investigation.

The investigation for the patent holder is very similar to the investigation that I discussed in my previous article about designing around a patent.  In other words, the patent holder’s first step should be to create a claims chart and analyze every element of each claim to make sure that the allegedly infringing device meets all the claim limitations.   Please don’t begin to think that I am insisting that the patent holder much go through the chore of doing a claims chart – it is just that I cannot think of a better way to ensure that the patent holder is sure that the device in question actually infringes.  When analyzing the limitations of the claim, the patent holder may try to broadly interpret certain portions of the claims, i.e., the patent holder may try to give some elements of the claims a broader interpretation than would be normally provided just by looking at the English language.  This could be possible depending on the way that these terms are defined in the specification.  For example, suppose that one of the elements of the claim is that a portion of the device must have a rounded shape, but in the specification, there is a specific note that although the device is depicted as having a rounded shape, the term “rounded shape” is intended to include shapes that have rounded corners.

Prosecution history estoppel, however, is something that could prevent broader interpretations of claims, but that is a topic for another article – actually, it is a topic that can fill up several articles.  For more information on prosecution history estoppel, check out this article by Gene Quinn on IPWatchdog, which includes a discussion on the doctrine of equivalents.  A more updated article on the doctrine of equivalents can be found here.

As you can see, the analysis for the patent holder is similar.  In short, if the allegedly infringing device does not include all of the elements of at least one of the claims, then the patent holder should not go running down the path of patent infringement yet.  In another article, I will start to discuss the various options available for the patent holder once it is determined that the device in question does infringe.  In that article, I will also discuss some strategies (all opinion) for patent holders that find a device that is pretty darn close to the claims of the patent.

 

How To Design Around a Patent

Friday, 16 March, 2012 05:55 Written by Mark Malek 2 Comments
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By: Mark R. Malek

In this weeks episode of the question that I recently had to field at Zies Widerman & Malek is whether or not it is permissible to design around a patent.  The short answer is OF COURSE!  How else is there to be progress?  How else can inventions get improved?  This is the reason why people have come up with the better mouse trap, right – in other words, inventors have constantly improved that which came before them.  How else did we evolve from the original Apple computer to this tiny little MacBook Air that I am writing this article on while sitting inside of an airplane?

A simple “yes” to the question obviously is not enough.  How much is enough to design around a patent? How much do you have to change?  If I hear the “10% rule” one more time, I’m going to hunt down the crazy person that started it, and do some damage.  Where did that one come from?  I suspect it was on the “internet” and, therefore, it must be true.  There is no such thing as the 10% rule.  In case you are wondering, this is the rule that several clients have told me about and wanted to know how to calculate 10%.  The rule, apparently, is that all you have to do is change your invention by 10% in order to get around someone else’s patent.  I have also been informed that the same applies to copyright infringement.  Once and for all – THIS IS NOT TRUE.  Please do not expect an attorney to go to court with that argument.

When looking at a patent, go to the end.  You will notice a little section that is referred to as the claims.  The claims of a patent application can be described as the “property boundary” of the patent.  For a really good overview of patents, see Gene Quinn’s articles on IPWatchDog.com.  The claims are the way that the invention is defined in words.  The claims set forth the limitations of an invention, and defines the elements that make up the invention.  For example, suppose you have invented a widget.  The claims would indicate that the invention is a “widget that comprises elements A, B, C and D arranged in a particular way.”  Yes, this is an extraordinarily simplistic way of describing a claim, but it’ll make sense in a second.

If you ask your attorney to determine if your invention reads on the claims of a patent, or if you have successfully defined around the claims of the patent, your patent attorney should set up a claims chart.  The claims chart will likely break down the claims in a spreadsheet and try to analyze whether or not your invention includes each and every single element that is listed in the claim for the widget.  If your invention is a widget that also includes elements A, B, C and D, arranged in the same way as in the claims of the patent, then you have not designed around it.  Suppose, for example, you have replaced element C with element E?  Now you are probably onto something.  The analysis should not conclude there.  You should continue the analysis to make sure that element C cannot be read broadly enough to include element E.  This can usually be found in the specification, i.e., the rest of the patent.  If there is a sentence in there somewhere that reads something like “those skilled in the art will appreciate that element C is meant to include element E” then you probably have not done enough.

Obviously, I can write about this topic forever, but I promise to put up some follow up articles on designing around a patent – also known as reverse engineering.  In short, I hope that you take the following away from this article: It is permissible to design around a patent, but the process is not a simple one.  Be very careful in what you are doing and how you are defining your invention.

How to Rescue a Patent That Expired for Failure to Pay Maintenance Fees

Friday, 09 March, 2012 23:31 Written by Mark Malek 2 Comments
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By: Mark R. Malek

You may recall that my last article, was directed to the requirement to pay maintenance fees in order to keep your patent alive.  As was discussed in that article, maintenance fees must be paid at 3.5 years, 7.5 years and 11.5 years after the patent has issued.

When someone has not paid a maintenance fee on their issued patent, however, that patent will expire.  Unfortunately, this is a question that we get a lot at our firm.  The story is usually something along the lines of “so I was looking through some old files and noticed that there was a requirement to pay maintenance fees on my patent – what happens if I have not paid them?”  After I tell them that their patent has now expired, the immediate question I get back is “well how do I get it back?”

Well – it’s not cheap, but there is a provision to “revive” a patent that has gone abandoned for failure to pay a maintenance fee.  This can be found in chapter 2590 of the Manual of Patent Examining Procedures.

In short, there are two ways to revive a patent that has gone abandoned for failure to pay maintenance fees.  Both involve filing a petition.  The cheaper of the two petitions is a petition to revive an abandoned patent that has unavoidably gone abandoned, and the second is a petition to revive an abandoned patent that has unintentionally gone abandoned.  In order for the Patent Office to find that the patent has gone unavoidably gone abandoned takes an act of God…no, literally.  It is nearly impossible to get the Patent Office to agree that failure to pay the maintenance fee was unavoidable.  Not having the cash at the time the fee was due is not good enough.  There has to have been something that prevented you from getting the cash to the government such as, for example, a lunatic held you down and would not let you put your payment in the mail (and that this is all documented), or that you can prove that the payment was sent, and the postal service lost it on the way, or some other measure that is completely out of your control.

More than likely, however, you will need to file a petition to revive a patent application that has unintentionally gone abandoned.  The only requirement there is that you check the box on the form that reads, “the failure to pay the fee was unintentional.”  Translation is “my bad.”  If you file such a petition, along with the petition fee, and the maintenance fee, the patent will be revived.

If you have run into this situation, contact your patent attorney to see if you can have your patent revived.  If you have more questions, you can contact me here.

 

Patent Maintenance Fees – The Patent Prosecution Process Continues

Friday, 02 March, 2012 23:21 Written by Mark Malek 0 Comments
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By: Mark R. Malek

Great news – you have just received your Notice of Allowance for your patent application.  In the Notice of Allowance, there is a requirement for you to pay an issue fee (unless it has already been paid pursuant to a request for early publication – see Section 1129 of the Manual of Patent Examining Procedures (MPEP)  for more information) as well as an issue fee.  As it currently stands, the combination of the issue fee and the publication fee is about $1100.

The good new is that after you pay the publication fee and the issue fee, you will receive an issued patent.  As you can tell from the picture to the right, this is one of the prettiest looking documents the government has ever produced. Way better than anything I have ever received from the IRS. After you receive your issued patent in the mail, you will notice that the patent process has not exactly ended.  In order to keep your patent valid, you will need to pay maintenance fees.

Information on patent maintenance fees can be found in Chapter 2500 of the MPEP.  In short, in order to keep it alive, you need to pay maintenance fees on your issued patent.  These are due at the 3.5 year mark, the 7.5 year mark, and the 11.5 year mark.  To be specific, the window to pay the first maintenance fee opens at the three year mark and closes at the four year mark.  If the maintenance fee is paid within the first six months of the window being opened, then no surcharge applies which, of course, means that there is a surcharge that applies if the maintenance fee is paid in the last six months of the window.  The same goes for the next two maintenance fees.

If a patent maintenance fee is not paid, the patent will go abandoned, and the invention, as recited in the claims of the patent, will be dedicated to the public.  The current maintenance fees are outlined on the PTO Fee Chart.  As you can imagine, these fees change from time to time, so it is advisable to check the amount of the fee prior to attempting to pay it.    You can pay your maintenance fees on your patent by accessing the maintenance fee page on the PTO website.

Advancing Examination of a Patent Application Out of Turn

Sunday, 26 February, 2012 15:36 Written by Mark Malek 0 Comments
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By: Mark R. Malek

As many of our readers know, there is a somewhat significant backlog in patent examination right now. For example, the average time to get a patent allowed now is about 33 months.  You can reference the patent dashboard for more information.  I know that this sounds terrible, but it is a huge improvement, and things are going the right way.  For example, the patent backlog is down to 657,000 now – which is significantly lower than the 900,000 that I remember.

There are ways to try to shortcut the long wait associated with with the patent examination process, provided that the Applicant meets certain criteria.  I will be writing about many of these options over the next several posts, but the one that I wanted to discuss first is based on the age of the inventor.  Inventors over the age of 65 can advance examination of their patent application out of turn.  This is outlined in the Manual of Patent Examination Procedures (MPEP) Section 708.02.  Maybe it is because I am getting older, but I just don’t think that 65 is that old, but if the Patent Office sees fit to provide a benefit to inventors over the age of 65 – take it!

So what exactly does it mean to file a petition to make special?  In short, the Patent Office is offering to grant “special status” to an application that has a named inventor that is over the age of 65. Imagine that a patent Examiner’s desk might have a stack of papers on it that is about 3 feet high.  That stack of papers represents patent applications that still need to be examined.  Now imagine that the application you just submitted is on the bottom of that stack.  After the Patent Examiner receives the approved petition to make special based on the age of the inventor, your application is taken from the bottom of the stack and put right on top.  This is a very simplistic explanation, but this type of petition will likely provide an examination that lasts only about a year.

The biggest advantage to this type of petition is that it is completely free.  Once you receive a filing receipt, simply fill in the form and file it.  Another huge advantage is that this type of petition is automatically processed.  In other words, there is no need to wait for the petitions branch at the Patent Office to make a decision on the petition (sometimes taking upwards of three weeks or so).  A really good write-up on the procedure is available from the Patent Office here.

This petition can be submitted even if just one of the inventors on a patent application is over the age of 65.  It is imperative, however, not to try to trick the system.  Please do not just name someone who is over the age of 65 as an inventor for the sake of filing the petition.  This will likely lead to all sorts of headaches down the road when trying to enforce the patent.  For example, you do not want to run into an accusation that you have committed fraud on the patent office by naming someone over the age of 65 as an inventor when they truly are not an inventor. This could lead to invalidation of your patent.  In order to be named an inventor, one has to have had something to do with at least one of the claims that are allowed in a patent application (more on this in a future post).

As I will discuss in later posts, there are several other ways to accelerate examination of a patent application, but none as convenient, fast, and hassle free as a petition to make special based on age.

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