Posts Tagged ‘patent application’

New First To File Patent System Explained

Friday, 07 September, 2012 10:24 Written by Mark Malek 0 Comments
Share via email

By: Mark R. Malek

Someone brought to my attention a very well put together video on some of the nuances of the America Invents Act.  Essentially, the video discusses the first to file requirement and shows us that it is now truly a race to the patent office.  We can pick the video apart all day long, but take it for the joke that it is, and not as an indication that anything and everything under the sun is actually patentable.  By the way, I especially like the cameo appearance by USPTO Director David Kappos.  I thought he did a great job in his acting debut.

 

 

Google Introduces New “Prior Art” Finder for Patent Searching

Friday, 17 August, 2012 11:33 Written by Mark Malek 0 Comments
Share via email

By: Mark R. Malek

As I was perusing my intellectual property news after traveling most of this past week, I found out about this Google’s new “Prior Art Finder” tool.  I gave it a shot and it was pretty darn cool.  In short, the tool “searches multiple sources for related content that existed at the time the patent was filed.”

Personally, I have used Google Patents to do some prior art searching in the past.  It is important for inventors to identify prior art that can be a bar to patentability.  A great way to do that is to conduct a patent search, but sometimes, a great start is to just search using the tools that are out there for free.  When you conduct a search using Google Patents, several references will be located. These references will likely be related to the invention that you are searching for. The new Google tool will allow you to identify additional sources of prior art.

I read one article that seems to indicate that the Prior Art Finder can become an Infringement Finder for patent trolls. Perhaps it may be the case, but at the very least this will allow inventors to enhance their prior art searching by viewing additional references that are related to their invention.

I am going to follow up on this article with a series of articles on patent searching, whether or not you need to do it, whether or not you should do it, and what you have to do with prior art once you find it. I will try to use this tool more in the future and let you know how my results come out.

Board of Patent Appeals and Interferences Becomes Patent Trial and Appeal Board

Friday, 10 August, 2012 09:27 Written by Mark Malek 0 Comments
Share via email

By: Mark R. Malek

I was reading through my daily update this morning from Patently-O and noticed a bulletin that the Board of Patent Appeals and Interferences has changed it’s name to the Patent Trial and Appeal Board (PTAB).  Dennis Crouch indicated that this information was obtained from this alert.

This is just one of the many change that is coming from the America Invents Act (AIA).  The change is not due to a desire to have a different name.  Not by a long shot.  This is a product of the First to File system that is coming into place.  Interferences were a tool that currently can be used by inventors when two different entities invented the same thing at around the same time.  In short, when two applications were pending that were directed to the same invention, one party can request that an “interference” be declared.  After an interference is declared, the Board of Patent Appeals and Interferences (BPAI) would determine who was the “first to invent.”

Well, the AIA does away with “first to invent” and moves the United States to a “first to file” system.  In that case, we don’t need interferences any more.  The protection goes to the inventor that filed their application first.  Yes, yes, I am very much so simplifying this, but I just wanted to let you know that this is more than just a desire to change names.  The PTAB will still be carrying out many of the other functions that the BPAI carried out, i.e., appeals of Examiner’s decisions, appeals of reexaminations, inter partes review, post grant review, etc.

Many of these changes are set to take effect on September 16, 2012.  Here at the firm, the patent department is gearing up for the changes. I will be posting more on what inventors need to be on the lookout for as many of the provisions of AIA are implemented.

Software Patents – A Question That Will Never Be Answered

Wednesday, 01 August, 2012 08:46 Written by Dan Pierron 0 Comments
Share via email

In a recent post on PatentlyO.com, patent law guru Dennis Crouch detailed two recent decisions from the CAFC, Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada and CLS Bank Intern. v. Alice Corp. Pty. Ltd.  Each case involved a patent having its validity challenged under 35 U.S.C. 101 as being directed to unpatentable subject matter, namely software.  Mr. Crouch excerpted a portion of Bancorp, reposted below, which helps illuminate the trend of thinking apparently being adopted by our venerable interpreters of the Patent Law:

In CLS, we reversed the district court and held that method, system, and medium claims directed to a specific application of exchanging obligations between parties using a computer were patent eligible under § 101. In faulting the district court for “ignoring claim limitations in order to abstract a process down to a fundamental truth,” we explained that the asserted claims in CLS were patent eligible because “it [wa]s difficult to conclude that the computer limitations … d[id] not play a significant part in the performance of the invention or that the claims [we]re not limited to a very specific application of the [inventive] concept.” Here, in contrast, the district court evaluated the limitations of the claims as a whole before concluding that they were invalid under § 101. As we explained above, the computer limitations do not play a “significant part” in the performance of the claimed invention. And unlike in CLS, the claims here are not directed to a “very specific application” of the inventive concept; as noted, Bancorp seeks to broadly claim the unpatentable abstract concept of managing a stable value protected life insurance policy.

 Judging from the above, the determination as to whether a claim is directed to patentable subject matter turns on whether it might be difficult to conclude the computer limitation plays a significant part in the performance of the invention.  A nebulous standard to be sure.  If only it were the case that a second qualifying determination provided more concrete guidance, but we are left with that the claim must be “a very specific application” of an inventive concept.
In my own experience, 101 rejections related to software require recitation of a computer with at least one of two types of qualification: specific function or specific form.  Examples have included computers configured to include a user interface that can be manipulated by a user, mobile telephones (having both form and function requirements), and computerized devices configured to communicate across a network.  Examiners appear to have been emboldened by promulgated USPTO guidance, based upon recent case law, to issue more and more 101 rejections on grounds similar to the issues presented in the cases above. Moreover, given the impossibility of getting clarification from the bench, those in the trenches are dealing with the fallout of seemingly arbitrary and capricious decisions making distinctions that are difficult to extrapolate beyond the specific facts of that case.  Perhaps the CAFC is falling prey to its own line of thought; its decisions appear to not be playing a significant part in answering the big questions of the day.

The Options For A Patentable Invention That Infringes A Patent

Friday, 18 May, 2012 06:45 Written by Mark Malek 2 Comments
Share via email

By: Mark R. Malek

Sorry for the lack of articles on TacticalIP regarding basic IP rights, but duty called.  I’m going to get back to the series of articles directed to some of the nuances of patent law.  You may recall in my previous article on this situation I indicated that one option might be to enter into a mutually beneficial licensing agreement, or even a cross licensing agreement.

A licensing agreement (I am going to focus on patent licensing agreements for the sake of this article, but you should understand that it is possible to license any intellectual property) is one in where the patent holder grants the licensee (he/she who is the beneficiary of the licensing agreement) the right to make, use, sell, or offer to sell the invention covered by the claims of the patent.  I’ll get into details of licensing agreements in another article but, in short, there is normally some sort of fee for the right to use the patent.  These can be paid up licenses, i.e., the entire fee for the right to sue the patent is paid up front and the license is granted for a certain period of time.  License fees can be paid per use, or as a percentage of sales, or any number of combinations.

Another option is cross licensing.  This is when you and the patent holder license each other the rights to use one another’s patents.  Why would you want to do this?  Perhaps this is your best option.  The reason why the patent holder is interested in your patent is because it is likely an improvement of the original.  We all know that continued success in business does not come with one product.  Sure, there are some one product wonders, but what happens to those companies that do not do anything else, or try to update their products?  They are here today, gone tomorrow.  A couple of examples off the top of my head – beanie babies and silly bands.  Being a father of young children, I have seen these come and go…quickly.

In the case of cross licensing, the original patent holder sees value in what you are doing and is hoping to improve their product line by being able to offer a product that is improved.  You may not want to be creating competition, but sometimes it may be your only option.  There are ways to work such agreements so that everyone wins.  For example, you can insert terms that you agree to a minimum retail price of the product (which prevents one party from drastically undercutting the price of the other party).  You can also set up territories, or include a number of different terms to make sure that the cross-licensing agreement works more like a partnership.

My next series of articles will deal with some mischaracterizations of patent protection, and a discussion about how patents are NOT monopolies!

« Older Entries

Subscribe

Login



SATURDAY, MAY 18, 2013

Bad Behavior has blocked 8444 access attempts in the last 7 days.