Posts in Inventors Information

In order to have a patentable business method it is necessary for the invention to accomplish some practical application. In other words, in order for a business method to be patentable it must produce a “useful, concrete and tangible result.” Although the United States Supreme Court did away with that test when it issued its decision in Bilski v. Kappos, it is still nevertheless illustrative and the best test that is out there. If you really understand what Judge Rich meant by “useful, concrete and tangible result” you come to the inescapable conclusion that it is the appropriate test and if you really target the description of the invention to satisfy the test you will have something that is patentable under the Supreme Court Bilski v. Kappos test and the USPTO guidelines that have followed.

Like other years, the agenda is filled with great educational programs, such as commercializing intellectual property through licensing, claim drafting for beginners, advanced claim drafting, why file a provisional patent application, licensing vs. direct marketing, considerations for foreign filing, how to work with a patent practitioner and many other great sessions. There will be lunch presentations each day as well. On Thursday, November 4, 2010, the lunch speaker will be Arthur Fry, National Inventors Hall of Fame Inductee, Co-inventor of the Post It Notes. On Friday, November 5, 2010, the lunch speaker will be David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

I frequently am told by inventors that they have searched the marketplace and cannot find anything like their invention. I am also frequently told that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art that needs to be considered. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art. Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art. Even the greatest American inventor, Thomas Edison, faced prior art for the vast majority of his inventions.

Dilution by blurring slowly whittles away at a trademark’s distinctiveness whereas dilution by tarnishment is an attack on the reputation and positive image of a mark. Here’s the thing: dilution by tarnishment is an entirely separate analysis from your garden variety Likelihood of Confusion analysis. But before click up your heels and scream “Yahtzee!” you should know that it’s really hard to make a tarnishment argument stick so don’t get all antsy to trot this one out. The standard is all over the place because it’s typically analyzed under a state’s dilution laws (if there are any). And I hate to do that lawyer “well, it depends” thing, but in this case, a tarnishment cause of action really does depend on the jurisdiction.

Keeping an invention notebook or other invention record is an extremely wise thing to do, and in fact should be done by every inventor. As with so many things in life, however, there are a number of ways to do it correctly, and any number of ways to do it wrong. Compounding this is the urban myth, propagated by some scam companies over the years, which suggests that sending a description of your invention to yourself through the mail is beneficial to protect your invention. Unfortunately, protecting an invention is not so easy.

Claim #1, the broadest claim in this patent, says that this “animal toy” has a solid main section, at least one protrusion and is adapted for floating in the water. While not every stick would infringe claim 1 of this patent, I would venture that there are many which would. No need to worry, however. This patent fell into the public domain on March 26, 2010, for failure to make the first maintenance fee payment. The lesson here, however, is not that the Patent Office occasionally makes a mistake (true though that may be). The fact that a patent can be obtained or has been obtained does not mean that a valuable asset has been obtained, and this “invention” is a wonderfully vibrant example of that.

The trouble with explaining what prior art is stems from the fact that everyone already thinks they know what it is. Conceptually we do not want to issue patents for inventions that are not considered new, which seems fair enough. The trouble is defining what is “new.” For now, let’s just say that prior art must be a reference of some type (i.e., a patent or a printed publication) or some type of knowledge or event (i.e., public knowledge, public use or a sale of a product) that demonstrates that the invention in question is not new.

Now comes the curve ball you have probably been expecting. Not all references, knowledge or events that can demonstrate that an invention is “old” or already known can be used by examiners or during litigation against an invention.

So how do you decide whether you have a mere idea or a conception that is on the road to a full blown invention? That is a difficult question to answer and one that has few, if any, bright line rules or useful generalizations. What I would say, however, is this: If you can sketch out the invention on paper (in the case of a device) or list the steps (in the case of a process) you likely have something that is tending toward the invention side of the idea-invention continuum. When you are at the point where you can describe the uniqueness of your idea in comparison to other patents and pending applications then you are again tilting heavily toward the invention side of the idea-invention continuum.

I continually preach to inventors the need to follow what I call a “business responsible” approach, which is really just my way of counseling inventors to remember that the goal is to not only invent but to hopefully make some money. Truthfully, the goal is to make more money than what has been invested, which is how the United States Congress defined “success” in the American Inventors Protection Act of 1999. Odds of being successful with one of your inventions increase dramatically if you engage in some simple steps to ensure you are not investing time and money on an invention that has little promise.

After you savor that wonderful “Moment of Discovery” and you have finished daydreaming about striking it rich, you really do need to move forward to take a cold hard honest look at your new product. At this point you don’t have to go into excruciating detail, just a quick overview to make sure it is worth pursuing. The questions generated will form the basis of your development process. A full Proof of Concept Analysis consists of three equally important parts: Business Analysis, Ownership Analysis and Product Analysis. Let’s take a look at each part individually.

How often have you felt you had a great invention that was just what the world was waiting for. Unfortunately, many would-be entrepreneurs are under the illusion that that is all they need for someone to beat a path to their doorstep, big check in hand. If only it were that easy! The average entrepreneur usually does not think about what is really necessary to make their invention a commercial success. As a result, their great ideas often fizzle before they ever have a chance to get to the marketplace.

You have probably had circumstances when you have positively associated with a certain trademark.  Perhaps you were traveling and had the option to eat at one of several restaurants.  You might have preferred a sit-down meal, but you might have opted for McDonald’s or Burger King instead because you are familiar with what you will get, know it is going…

If you are really serious about doing a high quality patent search on your own I recommend doing whatever you can to find 1 or 2 patents or patent applications that closely relate to your invention, whether that means in terms of structure or concept. I hear all the time that inventors do searches and cannot find anything relevant, which is unbelievable. If you do a search and find nothing then you are doing something wrong. See No Prior Art for my Invention. Do whatever you have to, and in a pinch to find something quick that is at least somewhat relevant Google Patent Search will do. Then visit Public PAIR and see what you can find out about the prior art found and used by the patent examiner against that patent or patent application.

This past Sunday there was a brief but very interesting segment on Fox New Sunday that actually discussed the plight of the United States Patent and Trademark Office and how the enormous backlog of inventions in the queue at the USPTO is preventing organic job grow at a time when our economy desperately needs job creation. Sitting in for Chris Wallace was Brett Baier. He was interviewing Mark Zandi, who is Chief Economist for Moody’s Analytics, and Liz Claman, an anchor on the Fox Business News channel. The topic for this 11:54 second segment was the health of the U.S. economy and what can and should be done by our leaders in Washington, DC. Surprisingly, at least to me, Claman brought up the USPTO as an ideal opportunity for “instant stimulus.”

I am frequently asked if it is a good idea for inventors to file their own patent applications, and every time I am asked that question I suspect the person doing the asking already knows the answer, but is hoping that they might find someone who will tell them what they want to hear. You have probably seen the commercial where the guy is sitting at his kitchen table and is on the phone with the surgeon who is telling him where to cut to take out his appendix while using a butter knife. The guy asks: “shouldn’t you be doing this?” Well, writing your own patent application is a little like taking out your own appendix.