I am frequently asked whether it is necessary to get a confidentiality agreement signed after a patent application has been filed.  As with many legal matters, the answer really cannot be summed up into either a YES or a NO, but rather is somewhat complicated.  The short answer, however, is that you are always better off getting a confidentiality agreement signed whenever possible.  The only caveat is that you do not need a confidentiality agreement when you are speaking with an attorney.  Attorneys do not sign confidentiality agreements and are invariably scared away from representing those who ask for a signed confidentiality agreement.  Attorneys are already legally obligated to maintain client information in confidence, and on top of that patent attorneys and patent agents are specifically required by Patent Office rule to keep information confidential.  It is simply urban legend that attorneys steal inventions.  There has never been a single provable case of an attorney stealing an invention.  It simply doesn’t happen.

You can file this under the “just what we needed” category.  Yes, more advertising will be thrust upon us as it seems thanks to Diebold, Incorporated, who announced on September 25, 2008, that they had received seven patents on software that will transform automated teller machines (ATMs) into revenue-generating business tools.  Said another way, Diebold is going to bring us a world full of ATMs that spew advertising as we are trying to pay needless fees to access our own money at ATMs all over the country!  Perhaps I am a little pessimistic about all of this, but advertising seems to be penetrating every aspect of life and I will certainly have a problem with paying a fee and having advertising reeled out to me as I am trying to access my own money!  Hopefully this won’t go the way of the DVD, where you have to listen to the ads for movies before you even get to the movie you rented or payed for.  That would be horrible.  Go to an ATM for some quick cash and not be able to proceed to withdraw funds and pay an exorbitant fee without first watching some advertising.  Hopefully there will be a “skip” button or something to save us all!

InventBay.com a dynamic service company dedicated to helping inventors successfully bring their creative genius to market – has just concluded arrangements with the creator and the host of PBS’s Emmy Award-winning “Everyday Edisons,” to participate in the 2008 International Inventors Expo in Las Vegas. Creator Louis Foreman and Host Michael Cable will use this event to recruit inventors and their inventions for a future Everyday Edisons episode.

As the financial crisis is on the mind of virtually everyone in Congress, on September 24, 2008, Senator Jon Kyl (R, AZ) introduced a new patent reform bill into the Senate. Biotechnology Industry Organization (BIO) President and CEO Jim Greenwood released the following statement regarding the patent reform legislation:

“BIO appreciates the efforts of Senator Kyl and his staff to address the concerns of many stakeholders with the patent reform legislation currently pending in the Senate, and commends him for introducing the Patent Reform Act of 2008. This legislation is a vast improvement over previous bills in the House and Senate with respect to many of the discrete issues and concerns raised by BIO, patient groups, universities, labor unions and many other stakeholders over the past two years.

Broadcom Corporation (Nasdaq: BRCM), a global leader in semiconductors for wired and wireless communications, has scored a significant victory in its ongoing patent infringement case against announced Qualcomm Incorporated (Nasdaq: QCOM).  On September 24, 2008, the United States Court of Appeals for the Federal Circuit upheld a unanimous jury verdict that Qualcomm cellular chips and software infringe two Broadcom® patents, and upheld the injunction entered by the district court on those two patents. The appeals court also rejected Qualcomm’s request for a new trial. The court ruled that a third patent was invalid.  Specifically, the Federal Circuit stated:

Because the district court erred in its construction of claim 3 of the ‘686 patent, we reverse the jury’s determination of infringement of that patent and conclude that claim 3, as properly construed, is invalid. Because the district court did not err in construing the claims of the ‘317 patent, and because substantial evidence supports the jury’s determinations of infringement and validity of the ‘317 and ‘010 patents, we affirm the judgment of infringement of the ‘317 and ‘010 patents, and the injunction as it pertains to those patents.

Hydraficient announced the availability of the Hydraficient Water Fuel Cell Kit, a safe and all-inclusive HHO generator that enables equipped vehicles to improve gas efficiency by more than twenty-five percent and decrease emissions by as much as fifty percent, all without the use of additives or significant electricity requirements. The Hydraficient Water Fuel Cell Kit will be available thru distributors October 1 or now at www.hydraficient.com.

How Does It Work?

The kit is powered by a patent pending electrode technology that uses electricity from the vehicle’s alternator to separate water into its molecular form. The simple gases enter the vehicle’s combustion chamber via the air intake supply and mix with the fuel source, whether it is gasoline or diesel. The hydrogen and oxygen gasses react with the fuel tank’s petroleum allowing it to burn faster and more efficiently, so more of the fuel is used to power the vehicle instead of released as a byproduct, which means less emissions and improved fuel economy. The Hydraficient Water Fuel Cell Kit is compatible with almost every make and year of car, van or SUV and with gasoline or diesel powered engines.

On Monday, September 22, 2008, the United States Court of Appeals for the Federal Circuit decided the much anticipated design patent case – Egyptian Goddess v. Torkiya.   This decision is quite important because it changes the law applicable to design patent infringement litigation, and because all of the judges of the Court heard the case together and all agreed!  It is rare for all of the judges to hear a single case, and when this happens it is called an “en banc” decision, so having a unanimous en banc decision is quite unusual.

In any event, the Federal Circuit has done away with the point of novelty test, set the new design patent infringement test as the “ordinary observer” test, explained that district courts are not obligated to issue a detailed verbal description of the design claims if it does not regard verbal elaboration as necessary or helpful, and recognized that if the accused infringer elects to rely on the comparison prior art as part of its defense against the claim of infringement, the burden of production of that prior art is on the accused infringer.

Frequently I speak with inventors who have made mistakes as they attempt to protect their inventions and ultimately obtain patent protection.  Unfortunately, these mistakes can sometimes make it impossible to obtain patent protection at all.  While there are many mistakes that one can make, here is a list of those things that are the biggest mistakes that can be made.  Sadly, these are mistakes that happen every day.

One of the things that makes protecting computer related inventions tricky is that first you have to define the invention, and defining the invention is not something that is altogether easy when the invention is a computer process or relates to software. Sure, it is easy enough to define a list of desired functionality, and if you have some computer programming skills it is easy enough (after investing the requisite time) to write the code that will enable the functionality, but that which can be protected via patent lies somewhere between the desired functionality and the code, making the defining of the invention rather elusive.

As I wrote in a blog post a couple weeks ago titled Writing Software Patent Applications, a patent does not have to be a blueprint, but it must direct.  What this means is that you do not have to provide micro-level details, but rather you need to be able to describe how a computer programmer would be able to get from point A to point B, with point A being a list of desired functionality and point B being the code that enables the functionality.  So that which is patented is not found either at point A or at point B, but in between.  The exclusive rights that will flow from a patent that protects computer processes will describe the journey from point A to point B.

QUESTION:

I have done a lot of research on the patent process and believe using the Invent & Patent System will be most helpful at this point.  Also at what point do I need to have a patent search done and what needs to be submitted for a search.

QUESTION:

I am new inventor. I have a couple of products that are new .  The problem is that I have no idea where to start other than a patent.

ANSWER:

We do hear this from inventors a lot, but I have spent my career working with independent inventors.  There is a road map that you can follow to move forward if you are interested.  Doing so will take time and money, but I can help you do it in an economical and sensible way if you are interested.

The first step is typically to file a patent application.  I recommend provisional patent applications, and for what it is worth I file provisional applications on my own inventions (yes I am an inventor too).   When done properly it provides you tremendous benefit for a reasonable price.  You will eventually need to file a nonprovisional patent application (best to think of it as a regular patent application) but the provisional application gives you benefits.  A provisional application will freeze in place your filing date for 12 months, which means that when you later file a nonprovisional patent application it will be entitled to the filing date of your provisional application, at least with respect to whatever you disclose in the provisional application.  So if you do a conscientious job describing your invention in the provisional a later filed nonprovisional application, which will hopefully ultimately mature into an issued utility patent, will be entitled to be considered filed as of the provisional filing date.

As I have previously discussed in several posts (see PTO Kills Invention Promotion and Patent Self-Help Now More Difficult), on August 14, 2008, the United States Patent & Trademark Office profoundly changed the rules that govern what patent attorneys and patent agents may do when working with independent inventors who are seeking advice but not full representation. In a nutshell, the Patent Office has decided that patent attorneys and agents can no longer provide limited consulting to inventors, but rather if an attorney or agent provides specific advice/assistance with respect to a patent application the attorney or agent giving the advice must also file the application on behalf of the inventor. The importance of this is that inventors will no longer be able to merely seek the advice of patent attorneys or agents to review what they have done on their own. These new rules will go into effect on September 15, 2008.

On August 14, 2008, the United States Patent & Trademark Office decided to profoundly changed the rules that govern patent attorneys and patent agents may do when working with independent inventors who are seeking advice but not full representation.  In a nutshell, the Patent Office has decided that patent attorneys and agents can no longer provide limited consulting to inventors, but rather if an attorney or agent provides specific advice with respect to a patent application the attorney or agent giving the advice must also file the application on behalf of the inventor.  The importance of this is that inventors will no longer be able to seek the advice of patent attorneys or agents to review what they have done on their own.  These new rules will go into effect on September 15, 2008.  For more on the rules see PTO Kills Invention Promotion Business.

Effective October 2, 2008, the United States Patent Office fees will once again be changed, which is a yearly or bi-yearly event. The filing fee to the Patent Office for an individual inventor or a small company that qualifies for small entity status (i.e., companies with fewer than 500 employees) is now $165.00. For those who are familiar with the fee structure prior to December 8, 2004, you will remember that the filing fee for small entities was formerly $395.00. It would, however, be a mistake to believe that the Patent Office has decreased its fees in such a significant way. The Patent Office has always like to charge a la carte fees, and now they have taken that tendency to new heights. In addition to the basic filing fee the patent fee legislation enacted on December 8, 2004, requires payment of a Search Fee ($270 for small entities) and an Examination Fee ($110 for small entities). Therefore, the total fee due to the Patent Office for a small entity to successfully launch a non-provisional utility patent application is $540.00. It is also important to realize that this initial fee covers 3 independent claims and 17 dependent claims. If you have more claims it costs more.