Abbot Laboratories fought for 14 years (receiving 12 rejections) to get a patent allowed, only to have the patent found unenforceable because Abbot’s patent attorney withheld key information in connection with the patent filing. Lesson: disclose information which may be material to the patentability of any of your claims, as required under 37 CFR 1.56.
Links: Law.com article.
Josh Kopelman at First Round Capital has a good post on the value of patents after fighting for 8.5 years to get one of his granted. His Half.com (Ebay.com) patent received six rejections, half of them final, before it was allowed. I explain this to clients, particularly software startups, on a daily basis - good patents are often very hard to get, you will receive many rejections, and it will be very expensive to respond to those rejections with no guarantee that you will ever be granted a patent. Fire your patent attorney if he fails to explain that to you.
This might sound funny from someone who makes his living writing and prosecuting patents, but I have counseled many potential clients away from patents. Instead, I encouraged them to spend their initial funds on product development while keeping me abreast of their developments so we can file the right patent application, at the right time, that provides the most value to their business. There is no simple answer to the question of whether or not to patent, but the comparatively small amount of money spent on early consultations with a good patent attorney can set the stage for a valuable and well informed patent strategy. Some additional thoughts from Ask The VC (1, 2).
Links: Half.com Patent 7,373,317, First Round Capital, Redeye VC, Ask the VC.
This patent application from Apple seems to show a four layer arrangement comprising protective glass, an LCD display, a solar panel, and a circuit board. The solar panel receives light passing through the (semi-transparent) LCD display.
Links: MacRumors.com, Patent Application Solar cells on portable devices
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Postulated in 1971, a fourth passive circuit element called a memristor has been invented by a team from HP Labs. Circuit theory books, which will have to be rewritten, teach the existence and use of three passive circuit elements: the resistor, capacitor, and inductor. The memristor, short for memory resistor, changes its resistance based on the history of the flow of charge through the device. It essentially behaves like a non-linear resistor with memory. The device improves in performance the smaller it is made. The memristor can be used as both a digital and an analog device, depending on how current is passed through it. The applications are astounding, including computers that do not need to boot up, the elimination of disk drives, more energy efficient devices, and analog computers that can remember and associate patterns in the same way as the human brain.
Links: HP Press Release, HP Labs, Nature, EE Times, 1971 Paper in IEEE Transactions on Circuits Theory theorizing the existence of a memristor.
I recently won U.S. patent no. 7,344,086 for the inventors of an innovative lottery ticket having features that prevent theft. The patent also claims methods for preventing lottery ticket theft. Major lottery ticket suppliers are considering licensing the patent.
The former anonymous blogger of Patent Troll Tracker has been outed as a patent lawyer at Cisco Systems. He was unmasked after a $15,000 bounty was offered by a senior partner at a law firm criticized on the blog after he filed suit for a client against Google. The blog has been taken down.
Links: Patent Troll Tracker, law.com article.
A partial list of who is acquiring, licensing, and enforcing patents:
Acacia Research Corporation
IPotential
Inflexion Point
Altitude Capital Partners
Ocean Tomo
Rembrandt IP Management
NW Patent Funding Corporation
Intellectual Ventures
Gathering2.0 (online community for monetizing IP assets)
Articles:
Patent Attorneys, Clients Banking on IP Brokerages (law.com)
Patent Pirates (forbes.com)
37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure: MPEP 201.06(c)
Claiming the Benefit of an Earlier Filing Date: MPEP 201.11
Oath or declaration: MPEP 602.05(a), 37 CFR 1.63, MPEP 201.06(c)(II)
Information Disclosure Statements: MPEP 609.02
U.S. District Judge James Cacheris granted GlaxoSmithKline’s motion for a preliminary injunction blocking the U.S. Patent and Trademark Office from implementing the rules set to go into effect today. Glaxo filed its suit against the U.S. Patent and Trademark Office and its director, Jon Dudas, earlier this month. The company plans to seek a permanent injunction.
Link: Law.com article.
Effective November 1, 2007, and applicable to pending applications in various ways, there are some major changes in the number of claims permitted in an application, and in the number of continuations permitted. A few highlights (with many details left out):
* No more than 5 independent and 25 total claims per application (5/25 rule). For applications exceeding the 5/25 rule, an examination support document (ESD) must be filed before the first office action, or the application must be amended to comply with the 5/25 rule.
* An ESD must include: a preexamination search statement, a listing of references deemed most closely related to the subject matter of each claim, an identification of claim limitations disclosed by each reference, a detailed explanation of patentability, and a showing of support under 35 USC 112 paragraph 1.
* For applications that exceed the 5/25 rule and have claims directed to more than one patently distinct invention, the applicant may submit a suggested restriction requirement (SRR) and elect an invention complying with the 5/25 rule before a first office action or restriction requirement.
* The USPTO will give notice to applicants whose applications exceed the 5/25 rule.
* The new claim rules are in effect for all pending applications for which an office action has not been received before November 1, 2007.
* An application or chain of continuation applications may have only two continuation applications and one request for continued examination (RCE). More than this number of continuations or RCEs must include a petition and showing.
* Divisional applications to non-elected inventions may be filed only if the USPTO issues a restriction requirement.
* The applicant must identify the claims in a continuation-in-part application that are supported by the prior-filed application.
* Applicants may file “one more” continuing application after August 21, 2007, regardless of the number of continuing applications filed before November 1, 2007.
* Applicants must identify other commonly owned pending applications or patents that have an inventor in common, and a claimed filing or priority date within two months of the claimed filing or priority date of the application.
* Applicants must file a terminal disclaimer or explain how the applications (or application and patent) contain only patentably distinct claims if the applications also have the same claimed filing or priority date and contain substantial overlapping disclosure.
* Applicants may be required to put all patentably indistinct claims in a single application unless there is good reason for multiple co-pending applications having patentably indistinct claims. The single application would then be subject to the 5/25 rule.
* Applicants may request a refund of any excess claims fees paid on or after December 8, 2004 for a claim if the amendment canceling the claim is filed before an examination on the merits has been made of the application.
Links: USPTO Claims and Continuation Practice page, Federal Register - Final Rule (72 Fed. Reg. 46716 - 21Aug2007), Claims and Continuations Final Rule powerpoint slides.
The Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications having effect in many countries around the world. Although the PCT system does not provide for the grant of “an international patent”, the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in the PCT member countries (source: USPTO Inventor Resources).
PCT Links:
WIPO PCT Resources
About the PCT
PCT Articles (html, pdf)
PCT Rules (html, pdf)
PCT Treaty, Regulations, and Administrative Instructions
General FAQs on Patents from WIPO
PCT Applicant’s Guide
Types of Protection Available via the PCT in PCT Contracting States
WIPO Standard Two Letter Country Codes
Time Limits for Entering National/Regional Phase under PCT Chapters I and II
Effects of modification of PCT Article 22(1) time limit
PCT Contracting States for which a Regional Patent can be Obtained via the PCT
PCT Fee Tables by Countries/Offices
PCT Fees in US Dollars
Official Notices (PCT Gazette) Collection
PCT Newsletter
PCT Time Limit Calculator
USPTO PCT Office including Forms, Fees, and Information
European Patent Office (EPO)
Filing an application in the EPO
MPEP Chapter 1800 Patent Cooperation Treaty (html, pdf)
Searching:
PatentScope Search - International Patent Applications Search
esp@cenet - EP and WIPO Patent Search
Phone Numbers:
The USPTO PCT Help Desk, which provides information and assistance on the PCT process, may be reached by telephone at (571) 272-4300 between the hours of 9:00 am and 4:30 pm (EST/EDT), Monday through Friday or by facsimile (FAX) at (571) 273-0419 twenty-four hours a day.
The Free Software Foundation (FSF) released version 3 of the GNU General Public License (GNU GPL). GNU GPL is a free software license. According to FSF, almost three quarters of all free software packages are distributed under the GNU GPL license.
Links: The Free Software Foundation, GNU, List of Software Licenses, GNU General Public License.
Blockbuster and Netflix have settled their patent dispute stemming from a complaint filed last year by Netflix. Netflix alleged that Blockbuster was infringing on its patents US7,024,381 and US6,584,450.
Links: Complaint, US7,024,381, US6,584,450.
Biomedino v. Waters Technology (Fed. Cir. 2007)
(via Patently-O)
It may not have the sexiness of Myspace, or the hype of Youtube, but many a startup could learn something from focused and well executed Meetup.com. Founder Scott Heiferman has been diligently building his company which enables people to find and meet others with shared interests. I have been a member of “NY Tech Meetup” for a couple of years, but there are community groups worldwide on almost any subject. Scott is also the co-founder of the popular photo social networking site Fotolog.com.
Links: Meetup.com, Fotolog.com.
The second season of American Inventor premiered last night on ABC. By and large, the show was listless, kept afloat mostly by George Foreman’s smile and enthusiasm for almost everything. However, there were a few notables:
The Creepiest: “My Therapy Buddy” by Richard Kopelle is a deformed blue doll that whispers “everything is going to be alright” in a breathy Hannibal Lechter-like murmur. It was the second time Kopelle auditioned for the show and, with the exception of sourpuss British judge Peter Jones, Kopelle’s creepy vision was sent on to the next round. For you patent enthusiasts out there, it is now too late for Kopelle to receive a patent on his eerie doll since he publicly disclosed it more than one year ago on last year’s show.
The Simple: Ten year old Anthony Moebest presented a diaper with a package of wipes attached to the front. The judges sent Moebest home with tears in his eyes, but his invention, with a few tweaks, may have some potential – get rid of the package and in its place create a sealed exterior pocket on the diaper that houses a few tightly folded baby wipes. The sealed pocket ensures the baby wipes remain wet, and by tightly folding the wipes they contribute little to the bulk of the diaper. Most parents have experienced the messy frustration of not having baby wipes available at baby changing time.
The Best: Winsome firefighter and family man Greg Chavez delivered a heartfelt plea for his “Guardian Angel,” a fire protection system for Christmas trees. Tearfully, he showed video of a room being incinerated within fifteen seconds of a spark hitting the tree, and his experience witnessing a mother and father running from their home holding their lifeless child, killed by a tree fire. His invention includes a box holding water under pressure, and wrapped to look like a Christmas gift. The box is placed under the tree. A hose connected to the package runs undetectably up the tree to an angel perched at the top. Under the skirt of the angel is a plug that melts when heated, releasing the water to extinguish the fire. The Angel also includes an alarm to alert the homeowner of a fire. Chavez made it to the next round.
