August 19, 2010
The Passing of a Great Inventor
This is a departure from my typical article, but very important to the Intellectual Property Community nonetheless. I received some news late last night that deeply saddened me. A great inventor, Dr. Shalaby W. Shalaby, who happens to be my Godfather, passed away on Wednesday August 18, 2010. Dr. Shalaby was a great man, and you would be hard pressed to find someone who could possibly say otherwise. In fact, you would be hard pressed to find someone who can remember a time when he was not smiling.
Dr. Shalaby W. Shalaby
In the early 90’s, Dr. Shalaby founded Poly-Med, a privately owned company, in Anderson County, South Carolina. Thereafter, a new research and development laboratory facility was opened in April, 1995 at the Center for Applied Technology in Pendleton, SC. Poly-Med describes their core mission as “applying scientific and engineering principles toward developing proprietary polymers analytical testing and fiber spinning services.”
Dr. Shalaby is the named inventor on more patents than you can imagine, and built a business based on research, development, and licensing of Poly-Med’s intellectual property. Take a look at the number of patents that are listed on Poly-Med’s website. As indicated, Poly-Med holds many US and Foreign patents. Poly-Med did not stop at the patent phase. They developed their products, gave them names, and secured trademarks on those names. Take a look at the number of trademarks that are listed on Poly-Med’s website.
Dr. Shalaby and Poly-Med are a great example of the value of intellectual property and the need for patent reform, a reduction in the backlog of patent applications, and the economic impact that intellectual property can have on the economy. When viewing the intellectual property that Poly-Med was responsible for, I begin to ask myself some economic type of questions. How many people did Poly-Med employ? What was the economic trickledown effect of the intellectual property that was developed by Poly-Med? How many technologies were developed using Poly-Med technologies as a springboard?
We can go on and on about the success of Poly-Med and how intellectual property played a big role, but the real point of this short article is to pay tribute to a great man, a great friend, and a great inventor. Dr. Shalaby has left quite a legacy and will be missed by many. He is survived by his wife, Dr. Joanne Shalaby, his four sons, and ten grandchildren.
July 20, 2010
THE ROADMAP TO THE SUPREME COURT FOR BERNARD BILSKI
Many of my clients have been following the Bilski case. As our readers know, the case of whether or not a method for hedging risks in commodities trading was recently decided by the U.S. Supreme Court (see our updates here, here and here). The Supreme Court decided that Mr. Bilski’s “invention” was not directed to patentable subject matter. But how, you ask, did the question of whether or not Mr. Bilski’s invention was patentable get all the way to the United States Supreme Court? Shouldn’t these matters normally be decided by the U.S. Patent Office? Allow me to step you through the road map on how a patent applicant can find themselves before the United States Supreme Court arguing that the Patent Office, and everyone up to that point, is wrong about their invention.
The patent process begins with a spark of genius, i.e., coming up with your invention. The prudent inventor writes their invention down in an inventor’s log (try using a notebook that cannot have pages torn out of it). After the inventor gets their invention down on paper (or otherwise reduces the invention to practice), a search is in order. A great place to start your search is at www.google.com/patents. If you hit a brick wall, i.e., you cannot find anything close to your invention out there, then talk to a patent attorney and have a search done. It is highly unlikely that there is absolutely nothing out there like your invention. There is normally at least something related out there. After you have found the closest prior art, read it in detail, and point out the differences between the prior art and your invention. These are points of novelty that will form the basis of your patent protection.
At this point, it seems as though you are ready to file a patent application. Go to a patent attorney and see which patent application is right for you (see my previous posts on the right patent application for you here). Let’s assume that you have filed a utility patent application including claims directed to your invention. The claims of a patent application are the most important thing. Claims can equate to a property description. They lay out the boundaries of your protection and serve as the club with which you will later beat infringers or command a high licensing fee.
We are the gatekeepers of all invention!
Patentability is initially determined by the Patent Office through an initial opinion issued by a Patent Examiner in the form of an Office Action. It is not uncommon for an initial Office Action to be in the form of a rejection of all the claims that you have filed. The rejection is not the end of the world. When filing your application, you should have drafted some broad claims in an attempt to seek as much protection as possible. Similarly, the Examiner will likely read prior art references broadly and use them to reject your claims.
After receiving an Office Action, you will engage in a “negotiation” process with the Examiner. You will attempt to either amend your claims to narrow the scope somewhat, or argue that the prior art cited by the Examiner does not read on the invention as recited in the claims. In Mr. Bilski’s case, those arguments were futile, and the Examiner issued a Final Office Action. Your option at this point is to file a response to the Final Office Action, file a Request for Continued Examination (RCE) or appeal. An RCE starts the examination process over again and, in short, gives you another bite at the apple.
Mr. Bilski filed an appeal of the Examiner’s decision. An appeal of an Examiner’s decision is heard at the Board of Patent Appeals and Interferences (BPAI). The initial step is to file a notice of appeal and an appeal brief. The Examiner, in turn, files a response brief. The briefs are reviewed by a group of Examiners prior to going to the BPAI. Often times, issues are resolved at that level, but not in Mr. Bilski’s case. If you do not like the decision of the BPAI, then your option is to appeal to the United States Court of Appeals for the Federal Circuit (CAFC). This is the first step that the inventor has taken outside of the Patent Office.
This is truly a legal proceeding. At the CAFC, the inventor will file an appeal brief, and the Patent Office will file an answer brief. The case will initially be heard by a panel of three judges who will hear the inventor’s arguments and the Examiner’s arguments. The CAFC will issue a decision either upholding the Examiner’s decision, overturning the Examiner’s decision, or sending it back to the Patent Office with some instructions on how to further examine the case. In Mr. Bilski’s case, the CAFC upheld the Examiner’s decision and noted that Mr. Bilski’s invention was not patentable. The game did not end there, however. Off we go into extra innings (as I’m typing this I’m watching the Phillies/Cubs game).
Since Mr. Bilski was obviously dissatisfied with the decision of the three judge panel at the CAFC, he then requested a rehearing before the CAFC en banc, meaning that all the judges of the CAFC should hear the case. It was the decision of the en banc CAFC that gave us the “machine or transformation” test. As noted in my previous post, the en banc CAFC held that Mr. Bilski’s invention was not patentable because it did not meet the machine or transformation test.
The case didn’t end there, however. Mr. Bilski, and much of the patent community, was not satisfied with the en banc CAFC test as it had ramifications in many industries, and essentially did away with business method patents. The next step was to appeal this decision to the United States Supreme Court. The parties filed their respective briefs were filed, and several third parties filed amicus briefs (as was also the case at the CAFC) putting forth various points and opinions for both sides. After the Court took into consideration the briefs filed by both sides, as well as amicus briefs, they eventually handed down the decision that is before us today.
Clearly it was a long road for Mr. Bilski, and quite the dissatisfying one, but as a patent practitioner, I sure am glad he stuck with it. His decision to take this case to the High Court brought to the forefront the issues that have been plagued the Patent Office for years, i.e., are business methods patentable and are software inventions patentable. The answer to both is yes, but that came along with some more questions. I’ll be back soon with some more analysis about these issues.
July 12, 2010
BILSKI IS FINALLY DECIDED AND NOW WE HAVE SOME REAL QUESTIONS
As many of you already know, the United States Supreme Court has finally handed down its decision in the case of In re Bilski (Decision). For some background on the Bilski case, please see my previous posts here and here. The Court of Appeals for the Federal Circuit held that Mr. Bilski’s invention was not patentable. In doing so, the Federal Circuit essentially did away with business method patents and pronounced the “machine or transformation” test for patentability.
The Bilski Patent Application has Died
The Supreme Court affirmed the Federal Circuit’s decision with respect to Mr. Bilski’s patent application, i.e., his invention is not patentable. Mr. Bilski’s invention relates to a system for hedging risks in commodities trading. Although the Supreme Court noted that the Federal Circuit’s decision was too restrictive, the Court still held Mr. Bilski’s invention to be unpatentable. More specifically, the Court held that Mr. Bilski’s claimed invention fell into one of the three specific exceptions to §101 of the patent statute, finding that it was an abstract idea. The other two exceptions are laws of nature and physical phenomena.
In holding that the “machine of transformation” test is not the only test of patentability, the Supreme Court noted that the Federal Circuit erred by violating two principles of statutory interpretation: Courts should not read into the patent laws limitations and conditions which the legislature has not expressed and that unless otherwise defined, words will be interpreted as taking their ordinary meaning. Since Mr. Bilski’s invention was defined as a “process” the Court held that there is no meaning of process that would require Mr. Bilski’s invention to be tied to machine or to transform an article.
Finally, the Supreme Court held that the term “process” does not exclude business methods as being patentable. The Court specifically noted that it is not clear whether a business method exception would exclude technologies for conducting a business more efficiently. Of course, that raises many questions for inventors and patent practitioners across the board. It seems to me that it would be impossible to write a patent application that was not tied to machine or apparatus without it being an abstract idea. After all, is that not what Mr. Bilski was trying to do? The court does note that while §273 of the patent statute appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions. Therefore, the Court just let us all know that if you can somehow get a business method through the PTO, it had better be very narrow. I suppose you have to question the value of such a patent, i.e., is a patent that can be very easily designed around very valuable? In many cases, the answer can certainly be yes, but it is something that needs to be analyzed during the patent prosecution process.
Probably the toughest part to swallow about this decision is that the debate over business method patents and, more than likely, software patents, is far from over. This is evident in the last paragraph of the syllabus when the Court invites the Federal Circuit to develop other limiting criteria that further the Patent Act’s purposes and are not inconsistent with its text. At the end of the day, this decision likely created more questions than answers, but at least we know that patent litigators will still be busy over the next few years trying to flush out that which is still patentable. Stay tuned for some follow up articles on how the Patent Office is handling this decision.
November 20, 2009
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.
October 15, 2009
An overview of U.S. patent protection
Below is the first in our series of "IP Overview" documents, which are designed to provide a capsule description of the various flavors of intellectual property protection. If you are new to IP, and you want to know more, we’re hoping that these posts will provide all of the information that you might need to get started. Enjoy, and sound off in the comments if there’s a question you have about this subject that was not answered here.
A patent is an exclusive right granted to an inventor by the United States government to exclude others from making, using, selling, or offering to sell the invention that is the subject matter of the patent. These rights are provided to the inventor in exchange for a full disclosure of the invention, which is published as public record for others in the field to learn from and hopefully improve upon. This exchange of rights for information aims at promoting the progress of science by trying to remove the natural tendency to keep innovations a secret for competitive advantage.
The protection in a patent lies in the claims. If one were to compare a patent to real estate, the claims of a patent are comparable to the property description of the deed. In other words, the claims define the scope and breadth of the patent. In the ideal scenario, the patent claims will carve out protection that is valuable to the inventor, i.e., define the invention in such a way that it is difficult to design around the protection granted in the patent.
