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12 Comments · Posted by Bob Brill in assignment, budgets, business method patent, business sense, claim construction, clearance, competitive advantage, constructive reduction to practice, contract, copyright derivative works, copyright fair use exception, copyright license, copyrights, design patent, design trademark, freedom to operate, licensing, non-provisional patent, nonobviousness, novelty, open source software, ownership, patent claims, patent doctrine of equivalents, patent enforcement, patent infringement, patent license, patent portfolios, patent prosecution, patenting incentives, patents, priority date, proprietary software, prosecution history estoppel, public policy, reexamination, software, software license, trademarks, utility patent
I am pleased to be an encore speaker for an Intellectual Properties Class of doctoral and masters students at Northern Illinois University (NIU). As a brief reflection, this is my third time presenting for the course, once every three years. My first time presenting was in 2003, using overhead transparencies plus handouts. In 2006, I provided HTML files that were displayed on a projector through a PC.
For 2009, I had the option of again visiting the classroom to speak in person, or instead engage the students in blogging interaction. This time, to bypass the travel from Chicago to NIU’s campus in DeKalb, I opted for blogging as a virtual presence. The students’ preparation included reading third party reference materials on patent law as well as my earlier blog post on intellectual property (IP) law for another university presentation. The students then submitted questions to me. The finale is this post addressing the students’ questions, in the order received.
Since I will present practical perspectives from my professional experience, I wanted to give context by outlining my practice profile, which is more fully developed in my biography on my website and in my LinkedIn profile.
Intellectual property lawyer with over fifteen years of experience. Business sense & cost-effectiveness. Several hundred projects with a wide variety of clients including startups, small to midsize companies, Fortune 500 companies, and universities worldwide. Patents, trademarks, copyrights, trade secrets & licensing. Electrical, software, medical, computer, imaging, financial, telecommunications & mechanical technologies.
Where the questions are especially expansive, I offer insight into the nub of each question. This post of course needs to be kept more on the scale of a pamphlet than a treatise. My responses include links for additional reading as may be desired. Extensions and permutations of various questions migrate to governmental and courtroom policy and procedure. These may intersect parts of my frequent work, but have their own spheres of influences and mechanics. In addition, I refrain from diving into specific fact patterns to the extent that would otherwise come with my counseling upon engagement to handle the matter, noting a standard disclaimer this presentation is not legal advice.
Why Negative Rather Than Positive Patent Rights?
Q: Over the years, I have heard about many inventors who have died penniless because of having to defend their patents in court. There being no “patent police,” inventors have to keep an eye on the marketplace, and go to court to defend their patent. Why is the law written so that the inventor must spend so much money defending his or her patent? Why is it not written more “positively,” rather than “negatively?”
A: A significant aspect that may be difficult to appreciate without experience is the Patent Office examination of a patent application involves a parallel and distinct review from the thrust of substantive decisions made in exploitation, including enforcement, of an issued patent. On the one hand, the legal and technical skills in patent preparation and patent analysis are complementary. On the other hand, the third party subject matter is different: rather than prior art, the subject is an accused device. Further, the focus of the claims review is different: rather than distinguishing other’s technical disclosure, the focus is determining infringement.
With the above framework in mind, I revisit and reframe the question.
Why doesn’t the Patent Office perform a forward-looking marketplace review atop the prior art review conducted in examination?
A significant difference between the Patent Office Examination and a marketplace review is analogous to the difference between studies of patentability and freedom to operate. Following are additional features of such a more involved review.
Another Skill Set
Rather than comparing claim language for technical differences only, the claims are analyzed for legal coverage.
Rather than having an instant comparison of a claim limitation to an object, many more documents and interpretations factor into considerations of infringement.
More Time Commitment
The time, expense, resources, and personnel involved in an enforceability review atop prior art examination would overwhelm the Patent Office in its current form, and greatly increase fees to patent applicants that may become financially excessive for many.
Following are snippets from prior posts, where you are welcome to continue reading through the highlighted links.
Your patent attorney should focus the language of the claims on what you and your patent attorney agree to recite as the improvement of your invention over the prior art.
In the US Patent and Trademark Office, each patent application is routed to a Patent Examiner familiar with the particular technical field.
A utility patent grants the right to exclude others from making, using, offering for sale, selling, or importing an invention as defined by the patent claims.
Owners of strong patent portfolios have an inherent advantage over competitors that hold a small number of individual patents.
The patent owner in general has its hand on the flow control valve whether to fund or otherwise invest in litigation attorney fees and costs for a particular occasion and target.
The stronger your position, the better will be your opportunities.
How Can One Look Out for Number One?
Q: During a tour of a distribution center open to the public, the guide announced most of the company’s flavors derived from write-in letters from the consuming public asking the company to create a certain flavor. The guide suggested the tour participants write their flavor suggestion to the company. A former acquaintance was extremely intrigued by this idea and wrote a series of letters to the company suggesting an entire line of flavor ideas. The company contacted the acquaintance expressing interest in the ideas presented. I don’t know what happened afterward, but it left me with an unanswered question.
Since the idea of the new flavor line originated from the acquaintance, should the acquaintance have sought the services of an intellectual property law office? Should the acquaintance get a patent for their idea? The doubt that I had toward these questions derived from the knowledge that the company has claimed trade secret rights to recipes for their products. I also recognize that the acquaintance freely submitted their idea to the company. Since this is an unanswered mystery to me, I am asking that you please let me know your thoughts on this circumstance.
A: Initially, I’ll provide a general lead-in. People can agree to a wide variety of terms in their own commercial or employment contracts. Circumstances can also generate rights. The decision, timing, and visibility for bringing in legal counsel involve business and negotiation strategies.
Now I’ll refer to the development of your fact pattern.
Originator of idea
From your acquaintance’s viewpoint, it seems the approach was to trust the company would reward the person by submitting a desirable idea. The reward could be structured in a variety of ways, such as a license and/or consulting arrangement for the project.
From the company’s viewpoint, a business or public relations policy may exist to pay or otherwise recognize winning entries to encourage the idea flow. Depending on the transparency available through the company, this may resemble the threadless or crowdSPRING models.
From a dispassionate viewpoint, your acquaintance would want to explore the potential benefits of disclosing before going ahead with disclosure of the ideas without any agreement of confidentiality or other form of protection such as a patent application filing. The review of available patent protection could have proceeded with a patentability study.
Bottom line: without reviewing the above avenues, your acquaintance risked handing over ideas without compensation.
What Is This Right to Exclude? – cups redux
Q: Patent law is something like a defensive move and does not give you rights, it just protects you from someone else using your ideas. You do not have rights to your own idea, but no one else does either. You simply have rights to royalties. How does this work? Once you have patented an invention, you have the right to produce it, but if anyone else wants to produce it they need your permission. Correct?
A: Directly on your question, I have three paragraphs and a photo of cups in a previous post, under the heading “Better Mousetrap,” that track my notes and props used in live speeches.
What Happens at The End? – no safety or surprise
Q: The patent is for 20 years. What happens after that?
A: Confirming your basic premise: Upon successful issuance, the utility patent term is generally twenty years from its priority filing date, with payment of maintenance fees. When the life of the patent ends, the disclosure of the patent enters the public domain. The cups example linked in my answer immediately above also speaks to your follow-up question: “When your competitor’s patent expires, you would no longer need permission from your competitor to make the handle added to the drinking container.”
How Does the Captain Navigate at the Helm?
Q: To what extent can a person make a different design like a product in production with a patent? By that I mean how much different does something really have to be in order for it to receive a patent if it is an invention already in production?
A: Your topics are deep and cover acquisition of a patent as well as avoidance of infringement of third party patents. Provided other requirements of patent-eligibility are met for a utility patent application, in a substantive comparison of a claimed invention to the prior art, the claimed invention must be new, useful, and nonobvious. The typical comparisons are whether the claimed invention is new and/or nonobvious over the prior art.
New – “anticipation”
You may think of “new” as a literal review whether all the claimed elements of the invention are already found in a single piece of prior art. Following is sample phrasing of the “novelty” dialog as may be presented to the Patent Examiner.
It is well-settled that there is no anticipation unless (1) all the same elements are (2) found in exactly the same situation and (3) are united in the same way to (4) perform the identical function. Since the Examiner’s citations to the applied reference are missing at least one element of each of Applicant’s independent claims, Applicant respectfully submits that the claimed invention is not anticipated by the Examiner’s citations to the applied reference.
The heavier maneuvering often occurs with respect to obviousness, which you may begin to think about as whether a person of ordinary skill in the technical field of the claimed invention could plainly obtain the claimed invention from preexisting experience and references. Following is sample phrasing of the nonobviousness dialog as may be presented to the Patent Examiner.
While Applicant does not acquiesce in the modification or combination of the Examiner’s citations to the applied references, Applicant respectfully submits that the Examiner’s citations to the applied references even so modified or combined, do not teach or suggest one or more elements of the claimed invention. The missing elements were neither well-known in the art nor mere predictable uses or variations of the cited prior art.
Applicant respectfully submits that the Examiner’s citations to the applied references do not teach or suggest one or more elements of the claimed invention. A careful reading of the Examiner’s citations to the applied references fails to set forth a sustainable basis that the reference teaches or suggests, for example, _______________, as recited in Applicant’s independent claim 1.
Following is a summary of a sample dialog between a Patent Applicant and the Patent Examiner.
In response to a rejection over a prior art reference disclosing a device for bridging local area networks, the inventors stated: Unlike a bridge, which analyzes source or destination addresses to determine where data should be forwarded, the present invention more broadly analyzes the content of PDUs [protocol data units] in order to perform filtering and auditing functions which determine if and why data should be forwarded.
Another previous post highlighted in-depth earlier posts that further speak to your question.
A patent mouthful: a national government issued right on an idea usually obtained through fees to a patent lawyer translated into individualized sculpting of rights within a layered process and context capable of economic and political polarization. For more, see my posts on claim amendments, patent prosecution techniques and coordination, and US and international priority dates for provisional applications and public accessibility.
Infringement occurs if an accused device or process meets each limitation of a patent claim, literally or under the doctrine of equivalents, where available. For more, see my posts on claim construction, the doctrine of equivalents, and prosecution history estoppel.
Stellar Programmer and No Office Policy: Am I Prepared for My Initial Consultation?
Q: I have a bunch of questions all sort of centered around the creation of software in the university environment. I think I understand copyright fairly well. Patents, however, are more complex to me. I’m glad you have experience in computer science, because my questions are all related to that field. Where I work we have a stellar computer programmer that likes to code his own enterprise resource systems vs. buying them from major vendors. If this programmer sits at home and makes a great piece of software and then implements it at our office, do you recommend he patent it? If so, should the patent only be in his name? At what point would it be in his and the office’s name vs. only his or only our office’s? Is there a percentage rule that would dictate that he’d have to have coded more than 50% of his product at our office in order or our office to own half the patent on the software?
Also, why would it matter if he coded the software in his home or at our actual physical location? What would stop our office lawyers from saying to him, “You’re a full-time exempt employee with no fixed schedule. You can work from anywhere anytime. You developed the system for the office, and therefore it was the inspiration for the work. This gives, therefore, the office some stake in the software.”
My friend the programmer commonly says that he should make software products, and then go “into business” with our office. I don’t understand what “patent” path he and the office would take in order for both parties to be equally compensated. Is it a matter of which entity *wants* more ownership, so they should try to come to terms with a percentage split before the fighting in court begins? Or does the fighting begin, and then the court uses evidence to decide the percentage split?
We are a small organization. Employees sign no contract prior to employment that relinquishes their potential patent claim over anything they would “invent” during their course of work. Do you think it would be a good idea for the office to draft such a contract? If so, are there any examples on the web we can take a look at?
Finally, would it be better for my friend to incorporate on his own and then have his corporation register its inventions as patents? Would he hold less personal liability, for example, if he operated under an LLC?
A: In a nutshell, yes: since your office presumably would like to understand and have input on the flow of rights, your office should implement policy language with employees. My law firm has intellectual property and related business forms that I can adapt to situations, though I have no free site to recommend. The policy drafting and implementation should involve legal counsel at some point that makes sense to your office.
I appreciate the substance and arrangement of your questions. Following are links to some of my earlier posts as well as third party resources that speak to the situation you outlined.
University’s Patent Ownership Secured by Patent Policy and Inventors’ Earlier Conduct When Inventors Refuse to Assign
Licensing – Beyond Bootstrapping
Copyright will exist while patents may or may not be pursued. You may have studied the test: amount and substantiality of the portion used. Ownership and online topics are reviewed in the following post: You Can Be the Fairest (User) of Them All.
The Patent “Shop Right.”
IEEE guide: Intellectual Property and the Employee Engineer.
Illinois law limiting preinvention assignment agreements: Illinois 765 I.L.C.S. 1060/2.
Why Disturb My Bliss?
Q: Do you know instances where libraries or librarians have been accused of patent infringement? We are always on the lookout for copyright problems, but I don’t believe the issue of patent infringement has ever come up. I assume we can write alter computer code with violating a patent since (1) we can do it and (2) we don’t profit from it.
A: Off the top of my head, I do not immediately recall libraries involved in patent infringement disputes, though I believe this relates to the bulk of my practice having involved procurement, counseling, opinions, and licensing of IP more than patent litigation. Absent further research and review such as involving legislation specifically exempting libraries, I recommend against relying on the reasons you list hoping for exemption from patent infringement. You are correct copyright needs to be considered in parallel with patent concerns.
You may wish to review the statute on infringement of patents: 35 U.S.C. 271. From a brief review of my posts, I found an example of discussion of a research exemption. I thought this may be helpful to understand my comments above about exemptions from patent infringement: Pre-Clinical Research Not Exempt from Patent Infringement; report of subsequent rulings in the litigation.
Does Every Patent Have a Mother?
Q: 1) I was wondering what the strangest patent that you ever defended is? Is this anything too small that it cannot be patented?
2) If computers have a patent on it, how does each of the different computer companies make computers but put their own names on them? What is the different between Dell and Compaq computers besides the name of them?
3) Are there patents on designs for house or buildings? For example, each of the State universities has a castle on them. Does the State of Illinois own the patent for the state universities castles? I have not been to each of the State of Illinois universities, so I’m not sure if each of the universities has the exact same designs but I do know that they are similar.
4) Can research projects be turned into patents? If so, who owns the patent, the university or the individual(s) who is working on the research projects? I believe it would be the university because the student is working on the research project for the university.
A: 1) The strangeness would depend on your vantage point, and from my clients’ viewpoint the patents served a business objective. You are welcome to review my list of patent samples.
2) Each computer company would: decide which if any patents to pursue; and wish to avoid willfully infringing another’s valid and enforceable patent. I recommend you review my post on patent portfolio incentives and cups example already mentioned above.
3) Architecture may be considered for protection in a number of ways. As I mentioned in another post:
Trademarks are source identifiers, as in branding. Utility Patents and Trade Secrets protect ideas. Design Patents cover ornamental designs for functional items. Copyrights protect expressions of ideas. A same object can be protected by one or more of these intellectual property “buckets.”
Patents have expiration dates. You may wish to view samples of architecture that had been protected by design patents.
4) Absolutely yes: research projects in private and public contexts regularly yield patents. Each university may have its own arrangement with inventors and sources of funding in connection with patents. You may wish to review the post on university patent ownership I already mentioned above.
Did Someone Already Ask My Question?
Q: You have a person working for a school district in technology. That person writes a few pieces of code, some server side and some client side, that call on idling processor of computers in empty computer labs to do some of the servers processing, parallel processing. A computer company has a server that does something like this already. Is this process, patentable if it is like the computer company version in some of its function? If the person who developed the process was not a code designer per se and there were no intellectual property agreements between the district and the employee would the employee hold the patent?
A: Please allow me to ask you to kindly refer to my answers with text and links already provided above.
Who Is Said To Be the Most Creative Company of Them All?
Q: I am curious about design patents. Under the category of design patent, I read, on your website, your article “That’s an IPOD!” I am confused how such a plain rectangular casing with rounded corners could be considered a distinct design patent. Is it just the shape that is patented under design? If this is the case, could someone add ornamentation to the top cover, square off the rounded corners and claim a new design patent without it being considered derivative work?
A: Design Patents cover ornamental designs for functional items. The previous post is about an interesting use of trademarks to cover designs. To give you an example of Apple’s design patents, I looked up the following sample D593,994 and have reproduced the claim, the description, and the first of seven drawings.
CLAIM We claim the ornamental design for a media device, substantially as shown and described.
FIG. 1 is a perspective view of a media device showing our new design.
FIG. 2 is a front view thereof;
FIG. 3 is a rear view thereof;
FIG. 4 is a top view thereof;
FIG. 5 is a bottom view thereof;
FIG. 6 is a right side view thereof; and,
FIG. 7 is a left view thereof.
The broken lines are for illustrative purposes only and form no part of the claimed design.
Briefly searching by the patent identifier D593,994, I located an article noting this patent of Apple’s as “a design win for their second generation iPod[®] nano.”
The potential new design patent you mention would need to undergo its own examination in the Patent Office. The concern you mention about derivative works I understand to come from copyright law rather than patent law. We may consider each bucket of IP rights in parallel, applying the appropriate tests that exist within each bucket. Feel free to review another post: under US law, copyrights cover original literary, dramatic, musical, artistic, software, and other intellectual works of authorship. 17 U.S.C. § 102(a).
Can a Third Party Challenge Patents Through the Patent Office?
Q: In searching for information on patents in technology I came across an amazing amount of information on Blackboard and the controversies involved with the patents awarded by the USPTO. From what I have read people believe Blackboard was awarded patents on technologies that others believe already existed prior to their patent. How does the USPTO formally handle these claims/complaints?
A: Your question above and its follow-up below are precocious in the sense I understand you have limited background in patents, yet you have walked into raging infernos on interests, funding, debate, technology, politics, and competition. The evolution remains ongoing with changes expected. A basic introduction to a route to challenge follows.
Any person, including a third party, can file a “request for reexamination” in the US Patent and Trademark Office to request further examination of a patent in view of additional prior art. You may wish to read the statutes 35 U.S.C. 302 Request for reexamination and 35 U.S.C. 301 Citation of prior art.
What about Open Source?
Q: I’m assuming the claims were at least in part correct because on Blackboard website this statement is given, “Blackboard commits not to assert any of the U.S. patents listed below.”
A: Reading the full statement and an article in the Open Source community, I understand the statement relates in major part, and perhaps entirely, to Open Source issues and relations, rather than any Patent Office procedure. For more discussion of the issues in Open Source software, I invite you to read my related posts.
You are correct in the idea that a company can selectively choose *not* to enforce its patents. As I already noted: The patent owner in general has its hand on the flow control valve whether to fund or otherwise invest in litigation attorney fees and costs for a particular occasion and target.
What about Constructive Reduction to Practice?
Q: Given that a person has an idea that is of patentable subject matter, novel, non-obvious and useful (i.e. patentable) what resources could the inventor utilize to support them in the development of their idea into a prototype or model?
A: Assuming you are speaking about Patent Office requirements, rather than business funding, please note:
Reduction to practice may be an actual reduction or a constructive reduction to practice which occurs when a patent application on the claimed invention is filed. The filing of a patent application serves as conception and constructive reduction to practice of the subject matter described in the application. Thus the inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of the patent application.
Apples and Oranges?
Q: First, if the right that we are granted for our invention does not allow us to produce or sell what we invented, does this mean that we have to copyright it to do so?
A: In a nutshell: no. Just outside the nutshell: each bucket of intellectual property can be looked at on its own. For a fuller explanation, please allow me to ask you to kindly refer to my answers with text and links already provided above.
What about International Protection?
Q: Second, I’m from Thailand and I am curious about filing the application of patent in the US. My question on this is whether or not I have to file the application of patent in the USA for my invention to get a property right if I already did that in Thailand.
A: Issued patents are specific to countries, so your patent from Thailand would not equate to a patent in the US. I understand your question to be framed as a hypothetical, though in the event someone or an entity is considering a filing or has already completed a filing without review of international possibilities that are desirable to the person or entity, it is *critical* that filing and payment schedules under the countries and/or available international agreements be met to reserve and pursue opportunities for desired protection.
International docketing procedures serve to track countries and dates for client matters. For purposes of this blog post, I performed a modest internet search to view some history involving Thailand and recent/nearing accession to the Paris Convention and the Patent Cooperation Treaty.
The Internet’s Influence?
Q: What types of challenges has the advent of the Internet brought about in the field of patent law?
A: The US movement into the information economy, flattening of worker hierarchies, and utility of social networks have translated into ongoing ebbs and flows in availability of business method patents and licensing terms of open source software as examples of notable influences on the evolution of the patent field and business views of technological innovation.
How About US Trading Partners?
Q: How does U.S. patent law compare with the laws of other countries? Is it more/less stringent?
A: I believe the thrust of your question relates to enforceability of IP. To begin consideration, please see this discussion of US trading partners regarding the effectiveness and adequacy of their intellectual property rights protections.
Q: How do patents work for multiple inventors, e.g. a team of computer science students working on a software program?
A: Having multiple inventors is common. All the inventors are named. Failure to name all inventors may invalidate a patent. A business or institution typically would want assigned to the entity, the rights each inventor has related to the subject matter of the patent, with the corresponding arrangements between the entity and the inventors having a variety of possible forms.
Q: I’m involved with a fledgling non-profit and we were just officially granted non-profit status after filing with the state. Does this mean we can now use our organization’s name as a trademark?
A: The registration process for trademarks goes through specific trademark application procedures with the government. So, to pursue registration, you would want to go through the specific procedures. In addition, your use of a trademark may present exposure such as from a third party challenging your use relative to trademarks already used by the third party. Please note this presentation is mostly about patents, so I’ll hold off diving into further trademark review at this time. You are welcome to review my posts on trademarks.
Should I Save the Postage?
Q: Is there an informal way of filing a patent? For instance, I have heard that you can mail an envelope to yourself with a document inside, and consider it copyrighted. Does this work for patent?
Text Copyright © 2009 Bob Brill