Month: December 2013

Hot Off the Press: Updates to USPTO Practice

By Stephen B. Schott
imgres_med_hrLike ebony and ivory living together side by side on my piano keyboard, the US Patent and Trademark Office’s goal is harmony. The PTO’s current harmonic goals bring it into compliance with the Patent Law Treaties Implementation Act of 2012. That act became law on December 18, 2013 and further aligns United States patent practice with that of other countries.
The USPTO issued a memo summarizing the changes for its examiners. The highlights for applicants include:
(1)   Patent applications no longer require a claim at the time of filing. Failure to file an application with a claim will result in the USPTO issuing a notice requiring a claim to be filed at a date specified in the notice.
(2)   Many office actions that previously set one month to respond, including those for restriction requirements and non-compliance, now allow for two months to respond. This is especially welcome for firms that work with international clients where correspondence and translations to and from the client may be delayed for weeks.
(3)   An application may now validly claim priority to, or the benefit of, a foreign or provisional application filed up to fourteen months earlier (eight months for designs to validly claim foreign priority). Any application that claims priority to a foreign application or the benefit of a provisional application filed more than twelve months earlier (except as a continuing application of another non provisional application) must include a petition to restore the right of priority to the foreign application.
Thanks to Donald Zuhn at McDonnell Boehnen Hulbert & Berghoff LLP for bringing the memo to my attention in his blog.
If you have questions, contact me.
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The Ten Most Important Patent Cases

By Stephen B. Schott
What are the 10 most important patent cases? University of Iowa professor Jason Rantanen of Patently-O answered this question with his list of the top 10 patent cases. My Christmas gift to you: A short summary of each case.
Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Once upon a time, there was a case called Texas Digital Systems, Inc. v. Telegenix, Inc. The author of this article worked on that case, was on the trial team that tried it in Dallas over 4 boiling weeks in August, and won the federal appeal from that trial. For 3 years, Texas Digital Systemswas the most cited patent case in the United States. ThenPhillips came along, overruled just one part of Texas Digital Systems, and ended my 15 minutes of patent fame. You could say that Phillips messed with Texas.
Phillips is the primary reference case when deciding how to interpret the meaning of a word or phrase in a claim. Specifically, courts must look at, in order of importance:

  1. A claim term’s plain and ordinary meaning in view of the patent’s use of the term;
  2. The meaning of the term as informed by the patent’s prosecution history, that is, the back and forth correspondence between the inventor and the US Patent and Trademark Office; and
  3. The meaning of the term in extrinsic sources like scholarly journals, expert witness testimony, and perhaps dictionaries, although dictionaries can inform the plain and ordinary meaning in (1).

Bowman v. Monsanto, 133 S.Ct. 1761 (2012). You can’t copy a patented article and reuse it. This holding may seem obvious but in this case, the article was Monsanto’s patented soybean seed, and the reuse was a later planting using seeds produced from the first planting.
450px-Samuel Morse 2
O’Reilly v. Morse (also known as The Telegraph Patent Case), 56 U.S. 62 (1853). Samuel Morse is just off the Mount Rushmore of famous inventors. Not only does he have an unmatchable appearance, but at least in this case, he tried to protect not only his invention, but just about every improvement that would come subsequent to it, using the language in a patent claim, “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims….” The Supreme Court found that this language went beyond the scope of patentable protection and was not enabled. Later cases expanded the O’Reilly holding to preclude inventors from claiming mere abstract ideas.
Diamond v. Chakrabarty, 447 U.S. 303 (1980). General Electric’s inventor Chakrabarty created a bacterium capable of breaking down crude oil, a useful life form for cleaning up oil spills. The Supreme Court considered whether creation of this living organism was within the scope of patentable subject matter and decided that a live, man-made organism was an article of manufacture, and thus protectable under patent law.
corset spring
Egbert v. Lippmann, 104 U.S. 333 (1881) and City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1878). These two cases consider the limitations of the public use and the on sale bar that prohibit an inventor from securing a patent when the invention is publicly used or sold more than a year before the date of the application for patent. In Egbert, the inventor of a steel corset-spring gave his inventive corset to his then-girlfriend in 1855, showed the corset to someone in 1863, applied for a patent in 1866, and later sued for patent infringement. The Supreme Court found the corset-spring patent invalid both for being used in public—even though such use was modestly unseen—for 11 years before the application for patent, and because the corset-spring gift was given without restriction to keeping it secret. City of Elizabeth considered just the public use question. In City of Elizabeth, the inventor Nicholson experimented with his inventive pavement for years before his application for patent. He performed his experiments using his pavement in publicly trafficked areas. After 6 years of such experiments and having identified which pavements were the most advantageous, Nicholson applied for a patent. In ruling that the patent was not invalid due to public use, the Supreme Court created an exception to the public use bar for experimental uses.
Graham v. John Deere, 383 U.S. 1 (1966); KSR v. Teleflex, 550 U.S. 398 (2007). These two cases describe the tests for determining whether a patent claim is invalid as obvious. InGraham, the Supreme Court held that in considering whether a patent claim is obvious, courts must consider the following factors: (1) The scope and content of the prior art; (2) the differences between the claimed invention and the prior art; and (3) the level of ordinary skill in the prior art.
The Supreme Court went on to suggest “secondary considerations” that could serve as evidence of nonobviousness including: (1) The invention’s commercial success; (2) long felt but unsolved needs; and (3) failure of others. From 1966 to 2007, obviousness law was in a state of flux until a string of cases in 2004-2007 resulted in an obviousness test that Justice Scalia described as “gobbledygook.” Seeking to de-gobbledygook obviousness, the Supreme Court in KSR held that there is no rigid test for obviousness and that a patent claim is invalid as obvious if a person of ordinary skill in the art would have found it obvious to try the claimed solution when choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
The Incandescent Lamp Patent Case, 159 U.S. 465 (1895). The inventors in this case sought to accuse none other than Thomas Edison and his bamboo filament bulb, of infringing their patent. On reviewing the patent in question, however, the Supreme Court found that the patent’s description was so vague and uncertain that the public could not tell, except by independent experiments, how to construct the patented device, and thus found the patent invalid.
Graver Tank v. Linde Air Products, 339 U.S. 605 (1950). Graver Tank took up the issue of whether a product infringes a patent claim when the claim does not quite read on the product. In deciding that a product can infringe a claim if the product is equivalent to, but not literally within, the claim, the Supreme Court formulated a test for equivalents. An accused product is equivalent if it performs substantially the same function as claimed, in substantially the same way as claimed, to yield substantially the same result as claimed. This function-way-result test remains a valid equivalents test and the cornerstone of the Doctrine of Equivalents
Gorham v. White, 81 U.S 511 (1871). Gorham involved forks and in particular the test for infringement of a specific type of patent on a fork called a design patent. A design patent’s scope is limited to the ornamental appearance of its drawings. Compare the accused and found-to-be-infringing designs on Christopher V. Carani’s webpage. The test for infringement of a design patent is “If in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such to deceive such an observer, inducing him (or her) to purchase one supposing it to be the other, the first one patented is infringed by the other.” This is the “ordinary observer” test.
If you want a more in depth discussion of the cases, please take Jason’s Introduction to Intellectual Property class. Otherwise, give yourself an A and I’ll see you after Christmas.
If you have questions, contact me.
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Start-ups: Get a Patentability Opinion to Help Raise Money

An Article in Schott, P.C.’s IP Law For Start-ups Series
By Stephen B. Schott
dollar_med_hr“I need money.”
That’s a common complaint among technology start-ups. There are many ways to get money and one tool for convincing investors of any size to invest in your start-up is by securing a patentability opinion.
What is a patentability opinion?
A patentability opinion* is a legal opinion about the patentability of your idea. In it, a lawyer renders a professional judgment about your chances of getting a patent based on a thorough search of patent archives and other sources. An outside patent searching expert usually conducts the search and the opinion is given after reviewing the search results.
Sometimes the search reveals a few things that you didn’t know about. This can be disheartening, leading to a “Someone already had my idea” moment. But in that moment, I try to calm the inventor who sees a negative search result. A few patents, papers, or websites in the general area of your invention can sometimes be a good thing. Working together, we can figure out what makes your idea better than all the others. Generally, after a short while, we identify what makes your invention better and how it improves upon what is known, and that is the basis for a positive patentability opinion. Once you have that positive opinion, you can use it as a fund-raising mechanism and here’s why.

  1. The patentability opinion shows that you have a new idea. One of the concerns that your potential investors may have is that your idea has been done before. They hear you saying it’s new, but there’s that lingering doubt. Didn’t Microsoft already solve this problem? Are you really sure that Sony doesn't already make one of those? A positive patentability opinion soothes those concerns.
  2. The patentability opinion shows that you can create an asset before you actually create it. Patents create value in your business. Whether you want to build the next Apple or Facebook, or are hoping to just create a small business that might be acquired later, a patent is the coin of the realm. The businesses that you compete with may steal all of your ideas unless you have some protection. The business that wants to buy your company will want to see that you have patents before making a commitment. And at the beginning stages of raising money, your investors want the assurance that you will be able to secure patents and the value that goes along with them.
  3. Although a patentability opinion is not the same as a noninfringement or clearance study,** it gives a sense of your field's technological development.Having a clearer view of what others in the field think is innovative presents your investors with an overview of the level of creativity in your field. The partial state of the art in a patentability opinion shows your investors the value of your invention relative to your competitors.
  4. Securing a patentability opinion shows that you’re willing to invest in yourself.Even though securing a patentability opinion is not as expensive as a utility patent application, it shows that you’re willing to make a financial investment in your idea.
  5. The patentability opinion is one of the first steps in building a business founded on your creativity. It’s not the most important step in building the business but it’s a tangible and professional building block that announces your intent to create an intellectual property portfolio, and your investors will understand and appreciate that.

Your patentability opinion, besides giving you and your patent attorney some guidance on how to craft your future patent applications, can be used as a fund-raising tool in the early stages of your growing business. That's why this simple and relatively inexpensive legal document should be part of your startup’s marketing plan.
If you choose to share your patentability opinion with your investors and potential investors, you might ask your patent attorney to join you for the meeting. He can’t pitch your idea but he can explain how he reached his conclusions and be a voice of support for your inventiveness.
If you have questions, contact me.
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* The Intellectual Property Owners Association has a good overview of the types of patent opinions you can obtain.
** These will be discussed in a future article.

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