Category: Patent

Patent Grabs Continue – Why?

Thursday, 12 April, 2012 06:00 Written by Dan Pierron 0 Comments
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The latest major acquisition of patents by a big computer software corporation has been agreed to between AOL and Microsoft.  The sticker price this time: $1.06 billion.  The purchase includes more than 800 patents, putting the per-patent price north of $1 million.  On the heels of purchases by Google, buying Motorola Mobility and its attending intellectual property, and the Nortel portfolio sale, major corporations continue building their IP war chests.  More than this, they are doing so largely by raiding the portfolios of other large companies that are either distressed or worse.  If it has its way, Kodak will be the next big seller.  The question becomes: to what end?

In the battle between tech giants, the power afforded by a patent potentially allows the owner to prevent the manufacture, import, or sale of products that infringe the invention described in the patent.  Scale this power by the thousands of patents owned by companies like Google and Apple, and the opportunity to hobble a competitor is manifest.  Hence, tech companies are tripping over themselves to amass greater and greater numbers of patents in the areas of electronics, software, and, as in the case between AOL and Microsoft, advertising.  Given the numbers of patents owned by the major players, and the complexity of a given product, it’s a safe working assumption to say that every major product released by the likes of Apple, Goole, Microsoft and others of that ilk infringe on at least one patent owned by a competitor.

So what is keeping patent owners at bay, permitting infringing products to enter the market?  Essentially, mutually-assured destruction.  Given an increasing number of patents owned by a given competitor, the probability of that competitor owning a product that one or more of your products infringes approaches 1.  If one tries to assert patent rights, that will in turn spur a counter-assertion.  This gives rise to a stand-off; although there is potentially much to be gained by excluding a competitor’s product from the marketplace, the consequences of that action could substantially outweigh the benefits.

 

Continuing the Cold War allusion, patent acquisitions like those mentioned above are tantamount to an arms race between nations.  Nobody wants to be left behind, so everyone commits more and more resources to protection.  Consortiums are even arising, akin to treaty organizations, to the chagrin of those that are excluded.  In sum, barring major changes in the philosophy in the business practices driving the tech industry, the one with the biggest patent portfolio looks to be king of the hill.

You Can’t Patent God (or Perpetual Energy from Him) Part I: Oh God, Really?

Wednesday, 11 April, 2012 23:59 Written by Danie Roy 0 Comments
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Danie Roy

I really feel like we can’t reiterate what is and isn’t allowed to be patented according to 35 USC 101. The short version is, if you need to use the words “natural,” “God,” “perpetual motion,” “physics-defying,” “psychic,” or any combination or variant of the above, it’s probably NOT patentable. When in doubt, contact your friendly neighborhood patent practitioner.  Shockingly, there are never any shortages of patent applications for this subject matter.

Now, we’ve already discussed some variant of all of the above, such as “Godly Powers” and “Perpetual Motion Devices.”  Somehow, I managed to actually stumble upon patent applications for God himself and Perpetual Energy supplied by God. How is this different from Godly Powers you ask? In Godly Powers, the applicant claimed to be God. This new application is claiming God.

The correct answer to "can I patent God?"

Or at least, that’s what I can make out. The application claims to be a continuation of a patent on a drain trap as well as almost a page’s worth of other applications. In the words of the Examiner, “The claim(s) are narrative in form and replete with indefinite and functional or operational language.” The same goes for the rest of the application. As if that weren’t enough, the applicant cursed no less than nine times in the application, rightfully raising objections from the Examiner.

To be clear: never ever ever ever ever EVER curse in an application. One, it makes you sound uneducated. Two, you’re never going to get an Examiner to allow an application like that. Three, it’s against the rules (37 CFR 1.3).

Tune in next time for Part II: Holy Perpetual Motion!

Does My Patent Infringe On Another Patent?

Friday, 06 April, 2012 05:45 Written by Mark Malek 0 Comments
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By: Mark R. Malek

My last article discussed the possibility of obtaining a patent, but that the patent may still infringe on the claims of an existing patent.  Yes, this is a rare situation, but one that is possible nonetheless.

The scenario that was laid out in the last article indicated that you have invented a chair with five legs.  The clear advantage is that this chair is much more stable than the typical chair that you normally sit on with four legs.  You have now filed a patent application on your chair with five legs.  During the examination, the Examiner has cited a chair with four legs as prior art.  Although the Examiner allows your patent, the Examiner indicates in the “reasons for allowance” that none of the cited prior art discloses the advantageous fifth leg and, therefore, the claims in your patent application define over the cited prior art.

Fantastic – you now have a patent.  You now also start manufacturing and selling your chair with five legs.  All of a sudden, you one day receive a letter from the owner of the patent on the chair with four legs.  The patent owner is accusing you of infringing on the claims of the patent, and instructs you to cease & desist from further infringement.  The letter explains that your chair, although it has five legs, still infringes on the claims of the patent.  It goes on to specifically indicate that your chair has four legs, and other stuff, i.e., a fifth leg.

Now you must engage in an investigation to make sure that the claims of the letter are founded.  You probably go to your favorite website on intellectual property, Tactical IP, or even your other favorite website on intellectual property, LegalTeamUSA, you will read one of my articles about what it takes to infringe a patent.  In the above article, it was noted that in order to infringe a patent, you must meet the claim limitations of at least one of the claims.  In other words, your invention has to include all of the elements of at least one of the claims in the patent.  You quickly figure out that your chair with five legs does meet the claim limitations.  Now what?

Now you engage in some sort of settlement negotiation that will hopefully end in a mutually beneficial license for you to continue manufacturing and selling your very lucrative chair with five legs.  You also do some investigation into the success of the patent on the chair with four legs.  Perhaps there is a cross licensing opportunity here.  I will discuss cross licensing in another post.  In short, cross licensing is where you grant a license to the owner of the patent on the chair with four legs a license to your patent so that the four leg chair patent owner can make chairs with five legs, and the four leg chair patent owner grants you a license so that you can continue to manufacture and sell your five leg chair patent.  Much of this is also laid out in my article about the various ways to make money from your invention.

Now you are asking how this could have been avoided.  The answer is a clearance search – also known as a freedom to operate search.  These searches are quite thorough and quite expensive.  This is a really good article on patent searches on IPWatchdog.  I will go into more detail about clearance searches in another post.  Until then, happy inventing!

Patent Protection of Self-Replicating Tech: Will SCOTUS Weigh In?

Wednesday, 04 April, 2012 17:15 Written by Danie Roy 0 Comments
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Danie Roy

No, we aren’t talking about tribbles today. Today, we’re going to discuss soybeans. Okay, before I lose all the carnivores reading this, we’re actually talking about plants in general; the particular case we’re discussing (Bowman v Monsato) just happens to be about soybeans.

Tribbles are cuter than soybeans.

Before we start, let’s cover some plant patent basics. The USPTO website says that:

A plant patent is granted by the Government to an inventor (or the inventor’s heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of filing the application, protects the inventor’s right to exclude others from asexually reproducing, selling, or using the plant so reproduced. This protection is limited to a plant in its ordinary meaning:

  • A living plant organism which expresses a set of characteristics determined by its single, genetic makeup or genotype, which can be duplicated through asexual reproduction, but which can not otherwise be “made” or “manufactured.”
  • Sports, mutants, hybrids, and transformed plants are comprehended; sports or mutants may be spontaneous or induced. Hybrids may be natural, from a planned breeding program, or somatic in source. While natural plant mutants might have naturally occurred, they must have been discovered in a cultivated area.
  • Algae and macro fungi are regarded as plants, but bacteria are not.

Now, for backstory: Monsato bioengineered a soybean plant that would be resistant to Monsato’s herbicide, Round Up. This soybean, colloquially described as “Round Up Ready,” was patented and sold to farmers, accompanied by a contract requiring farmers no not re-plant future generations of beans. The farmers could, however, sell those beans as food.

Bowman figured out that, if he bought the food beans and planted them, a funny thing happened: the beans produced the patented plants. He then saved the seeds from those harvests and continued planting. How, you ask? Surely they were mixed in with regular soybeans, you ask? Well, they were – but the Round Up Ready beans had become so popular that, in any given handful, a vast majority would be descendants of the patented plant. In fact, the beans are so popular that it’s difficult to buy any beans that AREN’T Round Up Ready. Even if regular beans were mixed in, those could be killed off by applying… Round Up.

Monsato figured out what was going on, and accused Bowman of, loosely defined, manufacturing plants that infringed on its patent. Bowman countered, claiming that he was not bound by a contract through Monsato, and the exhaustion doctrine should apply in this case.

The exhaustion doctrine in patent law is a bit like the first sale doctrine in copyrights: first unrestricted sale of an item exhausts the patentee’s rights to control over that item. In other words, by buying the beans from the food market (sale) without a contract from Monsato (unrestricted), Bowman believed he had a right to do with the beans as he pleased, including replanting indefinitely.

The Federal Circuit sided with Monsato, finding that Bowman infringed. The Supreme Court is requesting that the US Solicitor General weigh in before deciding whether to grant certiorari. This is a bit of a difficult situation, so getting a lot of opinions is, after all, a good idea.

On one extreme, advocated by Monsato, plants and other self-replicating patented technology should be exempt from the exhaustion doctrine. In this scenario, however, some poor kindergartener’s science project is going to be infringing.

On the other extreme, advocated by Bowman, Monsato might be entitled to all of ONE sale of ONE seed and theoretically no longer be in control of its invention at all. I think we can all agree that that’s not horribly fair to Monsato, either.

The problem with self-replicating technology is that it is self-replicating. You only need one to have as many as you want, and there’s really no way to lay down  a hard rule without someone feeling slighted, and not without good reason. We’ll just have to wait and see if SCOTUS picks this one up.

My Invention Has All The Elements Of A Patent…And Then Some

Friday, 30 March, 2012 13:12 Written by Mark Malek 1 Comment
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By: Mark R. Malek

This is yet another article in the series of “questions that Mark Malek gets all the time when playing attorney at Zies Widerman & Malek.”  Every now and again, I get the phone call from a very creative person who has really gone above and beyond what most inventors do initially.  This person has laid out their invention in great detail, then has taken the time to do a little bit of prior art searching and, the following is the best part in the world – has actually taken advantage of a quick, free consultation that most patent attorneys offer (at least the ones at our firm do) to determine if they can move forward.

The details of the call are quite interesting, generally.  Normally, the client has identified a piece of prior art, and has figured out that their invention has every element identified in the patent that they have located, but that their invention adds a little bit more to it.  Now what?  Recall my article a couple of weeks ago where I indicated that it is perfectly acceptable to design around a patent.  There is a discussion about the steps you need to take to design around a patent during our conversation.  The thing is, however, that you can’t design around a patent by simply adding to it.

For example, let’s say that there is a patent out there for a chair that has four legs, a seating surface, and a back.  Let’s now say that the invention in question is a chair that has five legs, a seating surface and a back.  Let’s also assume that there is no other prior art out there that is at all related to this technology.  As my movie-quoting partners would now say “and then the space ship lands.”  Yes – that is a quote from one of the best comedies of all time, “City Slickers.”  Back to the story, however, the question to be answered now shifts around where does the inventor on the phone stand?  Has this inventor come up with something patentable?  Does this new invention read on the patent for the chair with four legs that the inventor uncovered?  The answer to both is YES!

Big help I am, right.  Here is the thing about it.  The invention for the chair with five legs still incorporates all the limitations of the patent on the chair with four legs.  Therefore, one cannot make the chair with the five legs without infringing on the patent on the chair with four legs.  Here’s the real rub – the invention on the chair with five legs may still be patentable.  Put your self in the Examiner’s shoes for a second.  The Examiner may have on his/her desk a patent application for a chair that has five legs.  During the Examiner’s prior art search, the only thing that shows up is a patent for a chair that has four legs.  The Examiner cannot seem to find any related prior art that is related to any five-legged device.  Therefore, the Examiner may decide to allow the case.

The next two articles that I will put up are related to this situation.  The first will be an analysis of the situation where you have a patent, but you may still be infringing on another patent – does having a patent gives you the right to manufacture the device that is covered by the patent?  The next article that I will post is directed to options when your patentable invention infringes a patent.

 

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