Dewipat Inc.

Should you obtain a patent for your invention?

Sun, 19 Feb 2012 22:39:00 -0600

Patents are popular nowadays. If you invent something “cool” and tell people about it, you’ll likely receive advice that filing for a patent for your invention is the prudent thing to do. However, should you do it?

Before I address the question, I’d like to propose the idea that patent is a luxury. To do this, it’d be best if we both understand what luxury is. From the New Oxford American Dictionary, luxury means “an inessential, desirable item that is expensive or difficult to obtain.” “Inessential” means “not absolutely necessary.” For example, a 2.0 carat weight diamond is a luxury. It’s desirable, it’s expensive, it’s difficult to obtain, and it’s not essential to life.

Therefore, when I say that patent is a luxury, I mean that a patent is a desirable item that is expensive or difficult to obtain and that is not absolutely necessary. With this working definition, we can now explore why patent is a luxury.

If you obtain a patent for your invention in the US, for a limited time, you can exclude others from making, using, offering for sale, or selling your invention in the US. You can even prevent people from importing your invention into the US. For competitive advantage, a patent is therefore very desirable. You can license your patent to others and thereby make money from your patent. You can be the exclusive maker or user of your invention and thus monopolize the market. However, I should mention that a patent will not grant you the right to make or use your invention. It may be necessary for you to obtain licenses from others in order to actually make or use your invention.

On the subject of patent costs, consider a patent application describing and claiming an invention of minimal complexity. Assume that the patent application will be filed in the US and prosecution of the patent application will be smooth, e.g., the patent application will be subject to only two office actions prior to allowance. Then, the patent costs might look like what is shown in the table below. Note that the patent office fees are stated for a small entity, such as an individual. The fees are more exorbitant (e.g., double) for a large entity. Also, some patent practitioner charges are not indicated in the table, e.g., charges for filing the application, charges for filing information disclosure statements, and charges for reviewing the application after allowance and prior to grant of a patent. These omitted charges can easily add another $1,000 to the patent costs. At the low end, it’d cost roughly $15,000 to obtain and maintain a patent.

The patent application will be subjected to a rigorous examination at the patent office. To understand the difficulty in obtaining a patent, it will help to perceive the examiner as being happiest when he can reject the claims in the application for one reason or another. In some cases, it will be possible to amend the claims or point out errors in the examiner’s reasons for rejecting the claims. Often, the examiner will come back with new rejections, which may require additional amendments to the claims and definitely will require more arguments. This can get complicated if the invention is in a crowded field. At the end of the day, it may be impossible to overcome the rejections, in which case the patent application would have to be abandoned. Or, it may be necessary to appeal the case.

The idea of a patent not being absolutely necessary may be understood by considering the worst that could happen if you don’t apply for a patent for your invention. There are two things that can happen. The first thing is that somebody might practice your invention and not compensate you for it. The second thing is that somebody might come up with an invention similar to yours, patent it, and prevent you from practicing your invention or force you to take a license to practice your invention. Note that none of these two things are life threatening. Also, the second thing can be prevented by making your invention public as soon as you decide that you will not seek a patent.

Now, back to the question. Should you obtain a patent for your invention? It depends on how much money you have to expend on obtaining a patent and whether you care if other people practice your invention without compensating you for it.

Seven Sins: Intellectual Property Mistakes Start-Up Technology Companies Should Avoid

Fri, 17 Feb 2012 16:42:00 -0600

Seven Sins: Intellectual Property Mistakes Start-Up Technology Companies Should Avoid:

The start-up company often is an exciting and fast moving entity. However, without attention to detail involving intellectual property encompassed within the company product and/or service, the time, effort and sweat equity invested in getting that product and/or service to market can slow down, or even halt, company growth. This article looks at seven intellectual property mistakes start-up companies make and tips to navigate and address the issues to help ensure a solid foundation for long term growth.

(From WIPO SMEs Newsletter February 2012.)

Modern Inventions

Tue, 14 Feb 2012 22:35:00 -0600

1-Click, a method and system of shopping on the Internet, is an example of what humans are inventing and patenting in the 21st century. Presumably, humans have already solved all the hard problems. Now, humans want a speedier way of eating the fruits of their labors. I’ll explain the gist of 1-Click in English, i.e., as opposed to in patent language, which can be quite hard to understand. (For those interested in cerebral gymnastics, please see U.S. Patent No. 5,960,411.)

The gist …

To order an item,
sit in front of a computer,
make the computer show you the item you want to order, and
do only one thing, e.g., click on a button or talk to the computer, to send some information about you and a request to order the item to a server.

Without you having to do anything else,
the server will receive your request,
the server will retrieve some more information about you,
the server will create an order to buy the item you asked for, and
the server will fulfill the order it created.

PTO's First Fee-Setting Proposal Asks for Big Hikes in Current Rates, High Post-Grant Fees

Sat, 11 Feb 2012 15:33:00 -0600

PTO's First Fee-Setting Proposal Asks for Big Hikes in Current Rates, High Post-Grant Fees:

Combined filing, search, and examination fees will rise from $1,250 to $1,840. RCE fee will rise from $930 to $1,700. Notice of appeal fee will rise to $1,500. Appeal to cost an additional $2,500. Total cost of appeal will rise from $1,240 to $4,000. $5,180 to process supplemental examination. $16,120 for subsequent ex parte reexamination. Post-grant procedures and business method challenges to begin at $35,800 for a patent with less than 20 claims, to $125,300 for a patent with 61-70 claims, with $35,800 more every 10 claims after that, and so on.

PCT Newsletter 2012-02

Thu, 09 Feb 2012 12:58:00 -0600

PCT Newsletter 2012-02:

In this issue, you’ll find practical advice for changing the applicant in a PCT application. If the 30-month deadline for national phase entry has not passed, file a request to record the change with the IB under PCT Rule 92bis. If the 30-month deadline has passed, the change of applicant would have to be implemented at the national level according to national laws.

US Pat No 8110279

Tue, 07 Feb 2012 00:00:00 -0600

US Pat No 8110279:

Method for improving the edge strength of tempered glass sheet articles, Shashidhar et al., US 8110279

A tempered glass sheet article includes a glass sheet having a thickness t, at least one edge, and at least one surface. The at least one edge is connected to the at least one surface by an edge-to-surface corner. The edge-to-surface corner is rounded with a radius r and has a surface compression that is at least 78% of a surface compression measured at or near a center of the at least one surface.

(174) The patent application of US8110279 was drafted by the Dewipat Scribe in 2010.

US Pat No 8110277

Tue, 07 Feb 2012 00:00:00 -0600

US Pat No 8110277:

Fused silica blank and method of forming fused silica plate from the same, Burdette et al., US 8110277

A method of making a fused silica plate includes providing a fused silica blank having a length, a longitudinal axis, and an outer diameter. The method further includes forming a slot in the fused silica blank which extends from the outer diameter to a location at or offset from a center of the fused silica blank and is substantially parallel to the longitudinal axis of the fused silica blank. The slot is defined by a concave surface located at or offset from the center of the fused silica blank, a first side surface extending between a first edge of the concave surface and the outer diameter of the fused silica blank, and a second side surface extending between a second edge of the concave surface and the outer diameter of the fused silica blank. At least one of the first and second side surfaces are connected to the concave surface by a chamfered surface. The method further includes rolling out the fused silica blank having the slot to form a fused silica plate.

(136) The patent application of US 8110277 was drafted by the Dewipat Scribe in 2007 and prosecuted by the Dewipat Defender in 2011.

Patent Prosecution Highway for PCT

Fri, 20 Jan 2012 09:16:00 -0600

A Patent Prosecution Highway (“PPH”) request can be filed at the USPTO in any national stage application, regardless of the nature of the priority claim in the parent Patent Cooperation Treaty (“PCT”) application, provided there is a PPH agreement between the USPTO and the International Searching Authority (“ISA”) used in the PCT application. Presently, there are PPH agreements between the USPTO and each of the European Patent Office, the Nordic Patent Institute, and the intellectual property offices in Australia, Austria, China, Finland, Japan, South Korea, Russia, Spain, and Sweden.

Expediting Patent Examination

Fri, 13 Jan 2012 11:43:00 -0600

The U.S. Patent and Trademark Office (USPTO) offers several programs for expediting patent examination. Here are some examples:

Prioritized Examination (Track I)

Track I can be initiated (i) at the time of filing a patent application, (ii) at the time of filing a request for continued examination in a patent application, or (iii) after filing a request for continued examination (RCE) in a patent application but before receiving a first office action after the filing of the RCE. Non-provisional utility or plant applications filed under 35 USC 111(a) are eligible.

Accelerated Examination Program

Accelerated examination program at the time when a patent application is filed. Only non-reissue utility or design applications filed under 35 USC 111(a) are eligible. Guaranteed time period for making a final decision in the application is 12 months.

Patent Prosecution Highway

Patent prosecution highway (PPH) can be initiated before substantive examination of a patent application has begun. The types of US applications eligible for PPH are:

A Paris convention application that either (i) validly claims priority under 35 USC 119(a) and 37 CFR 1.55 to one or more applications filed in an OFF, or (ii) validly claims priority under 35 USC 119(a)/365(a) to a PCT application that does not contain priority claims.
A national stage application based on a PCT application, where the PCT application (i) validly claims priority under 35 USC 365(b) to an application in an OFF, or (ii) validly claims priority under 35 USC 365(b) to a PCT application that does not contain priority claims, or (iii) does not contain priority claims.
A so-called bypass application filed under 35 USC 111(a) that validly claims benefit under 35 USC 120 of a PCT application, where the PCT application claims priority under 35 USC 365(b) to an application filed in an OFF, or (ii) validly claims priority under 35 USC 365(b) to a PCT application that does not contain priority claims, or (iii) does not contain priority claims.

OFF stands for Office of First Filing. Presently, OFF can be Australia, Austrian Patent Office, Canada, Denmark, European Patent Office, Finland, Germany, Hungary, Japan, South Korea, Russia, Singapore, Spanish Patent and Trademark Office, and United Kingdom. (More at the USPTO.)

Petition to Make Special

A petition to make special can be made if (a) the basis for the petition is that the applicant is 65 years of age or older, (b) the applicant is such that s/he may not be available to assist with prosecution of the application if the application were to run its normal course, or (c) the invention will materially (i) enhance the quality of the environment, (ii) contribute to the development or conservation of energy resources, or (iii) contribute to countering terrorism.

A day made of glass

Sat, 31 Dec 2011 11:12:00 -0600

A day made of glass

What makes an inventor?

Mon, 26 Dec 2011 20:25:00 -0600

What makes an inventor?

New use of old device

Fri, 16 Dec 2011 16:02:00 -0600

Every now and then, people will discover a new use for an old or known device and wonder if they have invented something that could be patented. The notes below might help.

—Mere application of an old device to a new use does not constitute an invention. Exer-Genie, Inc. v. MacDonald, 453 F.2d 133 (9th Cir. 1972).

—Adaptation of an old device to a new use may constitute invention especially where the device is transferred from one art to another. But where such adaptation—with or without such transfer—is the product of mere mechanical skill, it does not constitute invention. Id, 453 F.2d at 133.

—The grant of a patent on a machine cannot be predicated on a new use of the machine. In re Schreiber, 128 F.3d 1477 (Fed. Cir. 1997).

—The discovery of a new use of a known device does not render the device patentable per se. The reason, however, is not “inherency”; it is that the device is already known to the public, and cannot be removed from the public. The new use can of course be claimed as a method of use. Id., 128 F.3d at 1481.

Thus, an adapted old device may be patentable if the adaptation involves more than mere mechanical skill. If the new use of the old device does not require significant adaption of the old device, then the new use may be claimed as a method of use. However, there would still be the hurdle of showing that the method of use is not obvious.

Buyer beware: IP is not just another asset

Fri, 16 Dec 2011 10:53:00 -0600

Buyer beware: IP is not just another asset:

There is no doubt that trade-marks, brands, and other trade indicia and intellectual property (“IP”) can be one of a company’s most valuable assets. That does not mean that trade-marks and other IP can be treated like any other asset in the context of an acquisition.

End of Inventor's Notebook as Patent Instrument

Thu, 15 Dec 2011 19:13:00 -0600

It used to be that inventors intending to file for patents in the United States were admonished to be meticulous about recording their inventions in hardbound notebooks. The entries had to be dated and signed with a witness on hand. No more. On 16 March 2013, the United States will no longer be a first-to-invent country. For the same claimed invention, the applicant who makes it first to the patent office will get the right of priority. This can be good news or bad news depending on how you look at it. Some say that the little guy may not have the resources to get to the patent office on time. On the other hand, the first-to-file system will simplify resolution of effective filing dates of patent applications and patents and would align the United States with much of the rest of the world.

Under the first-to-invent system, right of priority in two applications or an application and a patent claiming the same invention was determined in an interference proceeding. This is where an inventor’s notebook may come in handy in showing date of invention. With the first-to-file system, there will be no need for interference proceeding. As a matter of fact, in anticipation of the end of interference proceeding, the Board of Patent Appeal and Interferences now has a new name, i.e., Patent Trial and Appeal Board. Although, it’s not clear what would be done in the very unlikely event that two applications or an application and patent claiming the same invention were filed on exactly the same day and at exactly the same time.

The change to a first-to-file system is part of the America Invents Act signed into law by President Obama on 16 September 2011.

What best mode?

Wed, 14 Dec 2011 11:00:00 -0600

With signing of the America Invents Act (H.R. 1246) on 16 September 2011, failure to disclose the best mode in a patent specification will no longer form a basis on which any claim of the patent may be canceled or held invalid or unenforceable. However, the patent specification is still “required” to disclose the best mode of carrying out the invention.

PCT Newsletter 2011-12

Tue, 13 Dec 2011 12:29:00 -0600

PCT Newsletter 2011-12:

Availability of patent applications for licensing to be made available on Patentscope starting in January 2012.

Patent Specification

Tue, 13 Dec 2011 07:01:00 -0600

Independent inventors are often very surprised when a patent practitioner tells them it’d cost a couple of thousands to prepare a patent application. I suppose they had gone to the practitioner with the presumption that preparing a patent application is all about filling out forms. No, it’s not all about filling out forms. You’ll get to the forms eventually, but not before shedding a large quantity of brain cells. Perhaps the patenting community is at fault. What we call a patent application should really be called a patent specification or specification, which would give the impression of something more than filled-out forms.

By the way, the Oxford English Dictionary has an entry for specification:

A document, drawn up by the applicant for a patent and submitted to the proper authority, giving an explicit description of the nature, details, construction, and use of an invention.

US Pat No 8067883

Tue, 29 Nov 2011 00:00:00 -0600

US Pat No 8067883:

Frit sealing of large device, Wang, US8067883

A hermetically sealed device comprises a spacing unit and a resistive heating element desirably having a closed-loop structure and process for hermetically sealing a device by using such heating element and spacing unit. The frit can form multiple closed-loops to prevent crack propagation. The heating element can be advantageously made of a metal such as Invar® and/or Kovar®. The invention enables hermetic frit sealing with low residual stress in the seal for large-area displays. The invention is particularly advantageous for hermetic sealing of OLED display devices having a large area, such as those above 10 inches (25 cm).

(190) The patent application of US 8067883 was prosecuted by the Dewipat Defender from 2010 to 2011.

Unrestrained and promiscuous grants of patents

Tue, 15 Nov 2011 06:00:00 -0600

The United States Patent Office granted Letters Patent No. 1 to John Ruggles ofThomaston, Maine, on the 13th day of July, 1836. Ruggles’s patent was not the first patent granted by the patent office, but it was the first patent granted by the patent office after the Great Fire of 1836, which destroyed about 10,000 patent records, or after reorganization of the patent office in 1836.

Ruggles was 47 years old and serving in the Congress as a senator when he was granted Letters Patent No. 1. He is credited with framing the bill for the reorganization for the United States Patent Office in 1836.

Before the reorganization of the patent office, 11,348 patents had been granted, many of which were thought to be worthless because the Secretary of State didn’t have any power to refuse a patent for lack of either novelty or usefulness, nor were patent applications examined on the merit. In a Senate report accompanying Senate Bill No. 239, 24th Congress, 1st Session (28th day of April, 1836), Ruggles outlined the evils of granting patents without examination. The evils were that:

patents were infringing upon one another or on public rights not subject to patent privileges;
the country was being flooded with embarrassing patent monopolies;
lawsuits were being filed at an alarming rate; and
frauds were stemming from sales of speculative patent rights.

Afraid of the extent of the evils that would result from the “unrestrained and promiscous grants of patent privileges”—at the time patents were being granted at a rate of more than 1,000 a year—Ruggles recommended that a check be placed on granting of patents so that only meritorious inventors were granted patents.

174 years later, it’s not clear how well the reorganization of the patent office has worked, and, woefully, many of the evils outlined by Ruggles are present today. About 11,348 patents were granted from 1790 to 1836 [1]. If this amount is spread evenly over 46 years (from 1790 to 1836), then the number of patents per year would be roughly 236. After the reorganization, from 1836 to 2010, over 7.8 million patents have been granted, about 44,827 patents a year if the patents are spread evenly over 174 years.

Interestingly, the reorganization of the patent office was prompted by public outcry. Today, there are murmurings about the need for reform in patent law, but certainly not public outcry sufficient to prompt immediate change.

——————————

[1] Patent Laws and System of the United States, New American Supplement to the latest edition of the Encyclopaedia Britannica, Volume 4, 1898, page 2312.

US Pat No 8058634

Tue, 15 Nov 2011 00:00:00 -0600

US Pat No 8058634:

Method and apparatus for determining sheet position using information from two distinct light beams each at a different position and a different angle, Xin et al., US8058634

A method for determining a position of a selected area of a sheet of material relative to a reference plane includes launching a first incident light beam at the selected area of the sheet of material such that the first incident light beam strikes the selected area at a first position and a first angle, thereby producing a first reflected light beam. A second incident light beam is launched at the selected area of the sheet of material such that the second incident light beam strikes the selected area at a second position and a second angle, thereby producing a second reflected light beam. The second position and second angle are different from the first position and first angle, respectively. The first reflected light beam and the second reflected light beam are intercepted at the reference plane. Information related to positions at which the reflected light beams were intercepted and angles at which the incident light beams were launched were received and correlated to the position of the selected area relative to the reference plane.

(165) The patent application of US 8058634 was drafted by the Dewipat Scribe in 2008 and prosecuted by the Dewipat Defender in 2011.