Posts Tagged: "independent inventor"

It seemed like a trade secret trifecta when Congress in 2011 passed the America Invents Act (AIA). Although the statute was aimed at patent reform, it made three helpful changes in how trade secrets are treated. First, companies could hold onto secret information about an invention without risking invalidation of their patents for failing to disclose the “best mode” of implementing it. Second, the “prior user right” that guarantees continuing use of a secret invention, even if someone else later patents it, was extended to cover all technologies. And third, the law would no longer deny a patent simply because the inventor had already commercialized the invention in a way that didn’t reveal it to the public. Or so we thought. That last change depended on how you read the legislation. The long-standing requirement that an invention could not be “on sale” or “in public use” more than a year before filing a patent application was still there. But Congress added a qualifier to 35 U.S.C. §102: there would be no patent if the invention had been “in public use, on sale, or otherwise available to the public . . . .”

As mentioned in Part I of this series, many inventors will seek to obtain some kind of patent protection so they can stake claim to their invention. Filing at least a provisional patent application is a necessary strategy, because when you file a patent application you are articulating your invention and getting on record with a filing date that cannot be taken away from you with respect to whatever is in your patent application. A provisional patent application can be a great first step, particularly if you are going to need some assistance later to develop your invention. It is also a good first step because you do not need a confidentiality agreement when dealing with a patent agent or patent attorney because the law already requires that information learned from clients or even prospective clients must remain confidential. So, even if you just seek the advice of a patent attorney or patent agent and never wind up hiring them, they are legally required to keep what you tell them confidential. This legal requirement is much stronger than any confidentiality agreement you could ever have them sign. This is true because any confidentiality agreement will say that if the information becomes public the signer is no longer obligated to keep the information secret. There is no such “out clause” in the attorney-client privilege. What you tell a patent attorney or patent agent about your invention is confidential and will remain confidential even if no representation relationship ever is undertaken.

Most inventors understand that a certain amount of paranoia goes a long way when dealing with an idea or invention. Ideas cannot be patented, but every invention starts with an idea. When you have an idea that has been sufficiently formulated and described in a provisional patent application, you may even be able to license that invention idea without yet having received a patent. This all falls apart if you tell others about your invention or otherwise disclose your invention before a patent application is filed. Worse, if you tell someone your idea without a confidentiality agreement, they are free to use the idea without paying you anything. It can feel like the wild west sometimes for inventors seeking to become entrepreneurs—whether their dreams are to license inventions, to build a company to sell a product, or to offer a service representing the invention. Once your idea crosses the idea-invention boundary (discussed here), you can receive a patent, provided of course that it is new and nonobvious. But if you start telling others about your invention, they could make and use your invention without paying you—which is bad enough, but the mere act of someone else moving forward with your idea could forever prevent you from obtaining a patent.

Is an invention arrived at by multiple inventors within a short space of time necessarily obvious? If not, how far may the evidence of simultaneous or contemporaneous invention go toward proving obviousness? Simultaneous invention is not common, but evidence of such invention, when present, can be important for reaching a conclusion of obviousness. Simultaneous invention can sometimes occur in the aftermath of the introduction of an enabling or foundational technology, when multiple groups working independently solve a problem, which, but for the foundational technology, would not have been possible. A recent example of this scenario can be found in the litigation related to the CRISPR-Cas9 technology, which culminated in a decision by the Federal Circuit in September 2018. University of California v. Broad Institute, Inc. (Fed. Cir. 2018) (UC v. Broad).

On the morning of February 14, the New Hampshire Supreme Court will hear what could be one of this year’s most important set of arguments related to patent ownership taking place outside of the federal judiciary. At 10:30 AM that morning, the Court will listen to oral arguments in Automated Transactions, LLC and David Barcelou v. American Bankers Association et. al. to determine whether the New Hampshire Superior Court erred by dismissing a defamation case after finding that the term “patent troll” isn’t necessarily pejorative. Automated Transactions and David Barcelou alleged that the defendants in the action made defamatory statements by referring to them as a “patent troll.” This exposed them to hatred, ridicule and contempt, which caused them to be ignored by automated transaction machine (ATM) operators across the country and injured their legitimate business of licensing patents that they developed and that were issued by the U.S. Patent and Trademark Office. The appeal argues that the Superior Court did not examine the full context of the reference to the term “patent troll” when making its determination, dismissing the action before the plaintiffs were able to present any evidence or proof and depriving them of their rights to a trial on the merits.

From a conceptual standpoint, it would seem logical to assume that writing text to describe a particular invention ought to be easy for the inventor of that invention. Unfortunately, it isn’t that simple. While inventors are very good at inventing, they tend to be less good at many of the adjacent and necessary tasks along the road from invention to market success. Indeed, while an inventor undoubtedly knows the invention better than anyone else, it can be enormously difficult for inventors to describe their own inventions. The inventor of a new and useful invention is always in the best position to describe the invention. The problem lies with the reality that most inventors simply don’t understand what needs to be described in order to satisfy the U.S. patentability requirements. And, sadly, when inventors forgo professional assistance, they all too often wind up focusing their entire description of their inventions on how their new device or gadget will be used at the expense of describing the parts and pieces that make up the invention. This is an enormous mistake, and one from which there is often no recovery.

This marks the final installment in my four-part interview with IBM’s Vice President and Assistant General Counsel Mark Ringes and Chief Patent Counsel Manny Schecter. I found our conversation fascinating and want to thank them both again for their time and insight. Below, we conclude with an in-depth discussion on how the U.S. patent system is affecting startups and the state of enforceability following Director Iancu’s Section 101 Guidance.

When you see a docket report with a patent lawsuit filed by a non-practicing entity (NPE), do you think it’s just another ‘patent troll’ taking advantage of the system? Or would you be willing to consider that underlying every patent litigation is a human story of invention, which is the embodiment and manifestation of an innovator’s aspirations and sacrifices? These human stories are too often marginalized in the ‘patent troll’ debate. One such story is that of Wayne Evans. His life took him from the depths of poverty and loss to the struggles of being an entrepreneur raising a family and, ultimately, to late-in-life success as an inventor, innovator, and author.

Selling an idea and waiting for lottery-like winnings to arrive at your doorstep seems to be the American dream. It is certainly the dream of every inventor, and it is a dream fanned by late night television commercials that suggest all you need is an idea companies will be falling over themselves to pay you for the rest of your natural life for the right to use it.

It all sounds too good to be true! Well, that’s because—in its most simple terms—it is. That doesn’t mean there isn’t a kernel of truth to the story. There’s just a little more to it than suggested by those late night commercials.

Let’s begin with a simple question: Can you sell your idea for profit? The short answer is yes, absolutely. And, if you come up with the right idea, you can make a very handsome profit. But there is a bit of a catch (or problem really). The problem (or catch) has to do with the definition of what qualifies as an idea worth paying for and what qualifies as something too vague to be worth anything.

It is worth remembering, however, that an invention notebook is not just for proving when you invented aspects of your invention, which will rarely if ever be necessary for the overwhelming majority of inventors now that the U.S. follows first inventor to file laws. An invention notebook or invention record is comprised of a collection of notes that will be critical for you as you progress down the invention path. While we might all like to flatter ourselves with how capable our memories are, you are likely to try so many different things that either fail or succeed to varying levels that days, weeks or months later you will not be able to remember every aspect of your efforts. This can and will lead to a need to recreate the wheel. So, keeping a good invention notebook is far more useful as a personal reference than it is for evidentiary reasons.

The term patent pending is a well recognized term of art that many inventors rightfully covet. It subtly, and very directly, conveys great meaning. It means that an inventor has taken steps to protect their invention in hopes of ultimately obtaining a patent. It also conveys to consumers the aura of innovativeness. Of course, patent pending status is just a stop on the road to obtaining a U.S. patent.

Obtaining a patent can be the best business move you could ever make. On other hand, it may wind up costing you time, energy and a lot of money that you didn’t need to spend. The investment placed into getting a patent may be wise, but it is important to realize that no one is simply going to show up on your doorstep with a money dump truck and unload lottery like winnings onto your stoop. The road to riches in the invention world is hazardous, has many detours and seldom goes as planned. That is why the first question you absolutely must ask yourself before you rush off to your friendly neighborhood patent attorney is this: Why do you want to get a patent?

When you are moving from idea to invention to patent, regardless of how or why you find yourself stuck in the idea phase, the first order of business to get the ball rolling. You need momentum. In order to get that ball rolling what you need is a strategy to help you move past the idea and learn to describe your idea with enough specifics so that it no longer is what the law would call a merely an idea.  In a nutshell, if you can describe your idea with enough detail you don’t have an idea, what you have is an invention, or at least the makings of an invention. Here are 7 concrete steps you can take to help you get from your idea, to an invention worth patenting.