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.
January 19, 2010
Removing “Confusion” with Trademarks
Trademarks are a huge part of everyone’s daily lives; yet the laws that dictate their use and abuse are not nearly as well known. A single trip to the grocery store may expose you to literally thousands of trademarks. There are the ones you expect to see (e.g., the word “Kellogg’s” on that box of cereal, or that jovial peanut wearing a top hat) and the ones you are hardly even aware of (e.g., the emblem on the front of the car that you parked next to in the lot, or that familiar swoosh on the sneakers of the woman behind you in the checkout line). Each of those words or symbols represents an important mechanism for lubricating the wheels of commerce, providing a shortcut for you (or your intended customer) to make informed purchase decisions. The economic advantage of trademarks lies in their ability to quickly convey, by association, a wealth of information about the quality, value, and reputation of a product, or its producer.
As an example, when someone goes shopping for clothing, they are able to quickly pick out which garments are desirable, and which ones are not, simply by looking at the tag or emblem stitched on the left breast. If you see a silhouette of a man riding on a horse and swinging a polo mallet, you immediately know something about the characteristics of that shirt, whether it’s from your own experience or from what you may have heard from other satisfied purchasers. You know a little something about the quality and whether it falls into your intended price range – all without having to spend the time, effort, and expense of buying one of each brand of shirt and conducting your own comparative analysis. You know, before even opening it, that when you take a sip from that can that has “Coca-Cola” printed on it, it will taste a certain way, and you likely made your purchase (or selected the one with “Pepsi” printed on it instead) based on that knowledge.
January 12, 2010
What type of patent application is right for me?
Generally speaking, a patent is a grant, by the government, for a fixed period of time, of the right to exclude others from making, using, selling, or offering for sale an invention as defined in the claims of a patent. (For more information, check our our Overview of U.S. Patent Protection.) Of course, the first step in the patent process is filing a patent application. There are several different types of patent applications that can be filed by an inventor. What follows is a brief outline of the types of patent applications that can be applied for, as well as the differences between them all. The patent applications that will be discussed below are Provisional Patent Applications, Utility Patent Applications (sometimes called Nonprovisional Patent Applications), Design Patent Applications, and Plant Patent Applications.
November 5, 2009
IP Overview: A Brief Intro to Trademark Law
Trademarks are used to identify the source of a good or service. Trademarks can be extremely valuable to maintain the identity of a good and/or service. In order for a mark to qualify for Federal protection, it must be used in interstate commerce. It is possible for an owner of a trademark to reserve protection on the Federal level by filing an “intent to use” trademark application. Such an application is examined in the Trademark Office, but does not issue until the owner of the mark uses it in interstate commerce. The State of Florida also offers protection of trademarks on the state level for marks that are only used within the State of Florida. However, there is no “intent to use” status for Florida trademarks. Applications can be filed with the Secretary of State’s office.
Although registration of a trademark is not necessary in order to claim protection in it, registration does provide a trademark owner with a presumption of validity and evidence as to the length of use of the trademark. Trademarks are important to ensure that a business owner can maintain a certain level of quality that can be identified by a single source. Further, trademarks allow the owner to ensure that an inferior product or service is not associated with their trademark.
One of the caveats that trademark owners have to keep in mind, though, is that protection can be lost if you don’t actively look out for infringing uses. In other words, with respect to your enforcement rights, you have to “use them or lose them.” With the all-encompassing reach of the Internet, policing one’s mark can become an extremely difficult task. Google’s “Alert” service, which runs automated searches for keywords and emails the results, can be an important tool in making sure you stay on top things. Also, it can be a bit of an art form to eliminate improper uses of your trademark without looking like a bully.
November 3, 2009
IP Overview: Copyrights Explained
United States copyright law protects original works of authorship that have been fixed in any tangible medium of expression. Pretty much anything that you can write down or record is automatically protected from direct copying without your permission. Everything from that flier for your company’s last promotion to the business plan that you spent weeks drafting in preparation for that product launch is covered. As long as it’s original, and as long as you took the time to get it down on paper, you’ve got copyright protection.
The “originality” requirement of our copyright statute is a very low hurdle. As long as you created it, and as long as it has the smallest amount of creativity, then a work of authorship qualifies for automatic protection. Only the most basic and unoriginal material is considered ineligible for protection. For example, the United States Supreme Court has ruled that alphabetized lists of names and contact information (e.g., phonebooks) are not original enough to be protected by copyright. Also, anything that can only be expressed in a limited number of ways, e.g., contest rules or contract terms, will not be afforded protection. Anything else is fair game.
Where many people run into trouble is the “fixation” requirement. There is no protection for unexpressed ideas. The statutory language is careful to point out that there is no limitation on what medium must be employed, but unless the expression is fixed in such a way that it can be duplicated, then you cannot stop someone else from getting it down and claiming their own expression.
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.
