Posts in Inventors Information

Interest in design patents is increasing, in part, because they can be obtained relatively inexpensively and quickly. Dennis Crouch recently reported that from 2010-2012 the majority of design patents issue within 12-months of their filing date (see “Design Patents Are Still Relatively Quick” by Dennis Crouch, Patently-O, January 21, 2012,. In addition, most design patents issue without amendment and with little or no file wrapper estoppel, potentially leading to a “cleaner” patent with potentially fewer issues to be raised in litigation that could negatively affect the scope of the patent. The number of design patent filings has increased approximately 20% since 2009 (Robert Olszewski, “State of the Technology Center,” USPTO Design Day 2013), and, with this increase it is reasonable to expect an increase in design patent enforcement

Collecting the information necessary to prepare a patent application covering a computer related invention can be quite challenging. Typically, most computer related inventions today relate at least in some way to software, which is at the core of the challenge. This software challenge stems from the fact that the software code is not protected by patent law, but rather how the software operates is protected. This means that the description needs to be one that can be replicated by others regardless of how they choose to write code to accomplish the necessary tasks.

Just as most of society wrongly considers doctors as “gods”, many patent clients wrongly think that patent attorneys will help them achieve these business objectives simply by filing a patent. To be fair, patent attorneys are not being hired to study the client’s market, nor their competitive position within the market. They are not hired to develop the client’s internal IP budget, nor to help the company strategically develop an IP portfolio that could boost exit value. Such an engagement could be fraught with conflicts and confusion. Unless attorneys make clear the limited and narrow scope of their services, and unless and until clients become more IP-savvy, clients will continue to incorrectly assume that all is fine in their Patent La-La Land; nothing is further from the truth.

I wonder what it is about the dawning of Spring that gets people in the mood to clean house. Is it the smell of the blooming flowers that gets a person to finally throw out that old broken chair that’s been sitting in the corner of the garage forever because it’s missing one leg? Or maybe it’s a rainy Saturday that gets people’s cleaning juices flowing. Whatever the motivation is, one thing is for sure–having the proper tools to make one’s cleaning efforts worthwhile is essential. Perhaps these five patents will do the trick.

There are some exceptions whereby a person who files second can still prevail, but those exceptions are infinitesimally insignificant, and the law surrounding the parameters of the exceptions is non-existent and unfortunately rather ill defined by the USPTO at this point. It is also critical to understand that the new law contains traps and loopholes. For those who have not spent adequate time considering the many nuances of the law you will be surprised to learn what it really means. For example, did you know that long held and previously unpatentable trade secrets can now be patented? It seems unthinkable, but then again it is also unthinkable that the law will allow for the repatenting of inventions, but it does that as well.

A patent is a proprietary right granted by the United States federal government to an inventor who files a patent application with the United States Patent Office. Therefore, unlike copyright and trademark protection, patent protection will only exist upon the issuance of a patent, which requires you to file a patent application. You absolutely must file a patent application and have that application mature into an issued patent in order to obtain exclusive rights to your invention.

Recently Inc.com published an article titled The Art and Science of Corporate Icons, which discusses Skeeter the squirrel, who is apparently the only squirrel in the world allergic to nuts. Skeeter is also the cartoon mascot for Skeeter Snacks, a line of nut-free cookies created by Dave Leyrer and Pete Najarian, whose target audience is parents with children who have allergies to nuts. The Inc.com article, discussed the creation of Skeeter from the drawing board to the finished product, including what aspects of this critter they wanted to depict their brand. They wanted the product to not only be affordable and appealing to kids but also to show that they were “…more playful than other allergen-free brands.”

The patent process can be expensive, so the last thing you want to do is spend a lot of time and money preparing and filing an application when there is easy to find prior art that will likely prevent a patent from issuing. Likewise, a patent search can give you a good idea about the likely scope of any patent claim that you may be able to anticipate. Still further, a patent search will give you an opportunity to discover which aspects of your invention are most likely to contribute to patentability, thereby allowing the description in any filed patent application to focus on those aspects most likely to contribute to patentability. Without a patent search you would just be describing all the various aspects of your invention as if they are equally important, which we know won’t be the case.

I understand it is prudent to proceed with care and not needlessly waste money, which is why I try and help inventors understand how best to start the patent process on a budget, but a couple hundred dollars is not really a budget. You might as well go to Vegas and put it all down on black and let it ride. At least you have close to a 50% chance, which is a greater chance of success than having only a few hundred to spend on your invention. Inventors really need to know and fully understand that there is a big difference between inventing and describing an invention. For well over 100 years courts have marveled at how difficult it is to draft a patent application.

The United States Patent and Trademark Office (USPTO) is revising the rules of practice in patent cases to implement the micro entity provision of the Leahy-Smith America Invents Act (AIA). Certain patent fees set or adjusted under the fee setting authority in the AIA will be reduced by seventy-five percent for micro entities. The USPTO is revising the rules of practice to set out the procedures pertaining to claiming micro entity status, paying patent fees as a micro entity, notification of loss of micro entity status, and correction of payments of patent fees paid erroneously in the micro entity amount.

Even when hiring a patent attorney inventors still need to be engaged in order to give the patent attorney the best information available about the invention. This seems simple enough, but so many inventors fail to understand what information is important and why it is necessary.  If you don’t understand that “why” you will you will almost never be able to provide all the information necessary.

We pick up our conversation with where many inventors stumble as they attempt to move from idea person to small business person. We also discuss lessons learned from a Big Bang Theory episode, as well as the important of taking reasonable risks, protecting your innovations (Key is a fan of provisional patent applications to start) and the importance of knowing the market for your product.