Patents

A patent protects the exclusive right of its owner to exclude others from making, using, or selling the patented technology as defined in the claims of the patent for a period of time. In the United States, utility patents have a 20 year lifespan from the date of filing the patent application, while design patents remain in force for 15 years from the date of issuance. Rather than giving you a right to sell or market your invention, patent rights prevent others from doing so. In a sense, in exchange for disclosing your invention to the world for the common good, including the best mode of carrying out the invention, providing information on how to practice your invention, and so forth, governments of the world give you exclusive rights to your idea. With a patent, only you can reap the financial rewards and claim the idea to be your own. Otherwise, there is a high likelihood of a company overseas mass producing your technology and undercutting you before you can turn a profit.

A patent is one of many tools that can be used to strengthen your business. The rights granted can correlate to increased revenue through product sales or licensing agreements, as well as securement of a dominant share of the market and high profit margins. Furthermore, patents have real financial value, often being sold to large companies for great monetary sums. A patent may increase a company’s valuation, making it more attractive to investors or buyers, who know that their financial risk is mitigated due to the ability to protect the company’s intellectual property from competitors. Additionally, patents can protect from litigation, as alleged infringement can be disproven upon presenting an already issued patent for a technology in question.

For all kinds of entrepreneurs ranging from individuals to multi-billion dollar conglomerates and everything in between, obtaining a patent is vital for transforming an excellent idea to a profitable venture.

What Is And Is Not Patentable

What Is Patentable

Article I, Section 8, Clause 8 of the Constitution states that Congress has the power, “to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Modern statutes break down patents into three types:

Utility patents– Almost anything having a useful function fits into this category, including, but not limited to:

What is Not Patentable

Abstract ideas, laws of nature, and natural phenomena are not patentable. However, where the line between a patentable idea and law of nature is drawn is not always so clear. For example, is taking the square root of a number abstract? Is it a law of nature? Is it a natural phenomena? Is it just plain old obvious? Yet, algorithms are patented all the time when tied to a structure.

For example, Google has a plethora of patents on algorithms used for searches. In other cases, the Patent Office and courts have rejected patents for concepts such as signals and computations performed by artificial intelligence for edge detection as being abstract.

More on Novelty, Unity, and Nonobviousness

Your invention must be new and different from what already exists. A unicycle may be known already, but if you add training wheels, that is a novel invention. If the invention has been patented, published, known, or used by others, it’s not novel. Thus, I may have lost my ability to file a patent application for unicycle training wheels because the idea has now been published on this website!

If you invented it first and caused it to be any one of those things, the U.S. Patent Office will give you a year grace period to file your invention, but the laws here can be tricky and it is highly inadvisable to disclose your invention before filing at least a provisional application.

Your invention also must not have been obvious to a person having ordinary skill in the field. If Bozo The Clown would think adding training wheels to a unicycle is obvious, no patent. Courts have decided that a patent may be novel if there is some sort of long felt need, there is commercial success of the invention, and other factors. The patent process can be subjective and this is why it is important to hire a good agent to argue your case before the Patent Office.

Chances Of Patent Issuance

“What are the chances my patent will be issued?” ask many inventors. The answer for this firm is pretty good as we only file what we believe can be patented. Here are some of the factors that go into an “Allowance Rate”:

The Merits of the Cases You’re Filing

The uniqueness of your invention is critical. If the invention solves a new problem or significantly improves existing technology, the chances of obtaining a patent increase. We evaluate the invention against prior art and consider the likelihood of overcoming potential rejections.

The Type of Application Filed

Different scientific areas often have different approval rates. For example, chemical and electrical patents have high allowance rates. On the other side, software and business method patents are much more difficult to obtain.

The Examiner You Get

The U.S. Patent and Trademark Office (USPTO) has an overall allowance rate, which can fluctuate over time due to political considerations or what have you. This rate reflects the percentage of applications granted compared to those filed. While it’s a useful benchmark, the specific area of technology and the examiner assigned to the case can greatly influence the outcome. When your patent is examined we look up the statistics for the examiner. For most examiners the allowance rate improves with a video interview – though not all. As such, we tailor our approach to the examiner to get the best result.

Shouldn’t a New Idea be Patentable?

“But no one else is doing it!” you might say. That might be true, and you might even make a billion dollars if you go and do it; stopping others with a patent, however, is another story.

Your idea has to be both “new” and “unobvious”. This means it’s not just that no one else is doing it, but it has to be something more than combining two well known parts together. For example, you can’t put a cellular phone on a light switch and expect to get a patent on that. True, no one has done it, but you’re just combining parts without any unexpected outcome. I might even agree with you that such a combination isn’t obvious to . . . anyone, but the patent office definition is usually a bit higher than that. If you added that the phone only rings when the light is on … okay, maybe we’re getting somewhere now. Maybe.

The problem is that “obviousness” is subjective and though many government workers are seemingly robots, by and large, the Patent Examiners are very human and very much have different opinions. Sometimes they also have policies set by their supervisors or higher ups that might affect their judgment as to what’s obvious.

Subjectivity Of Patents

What if you could have the same patent application examined by different examiners at the patent office? Would the results of the examination be the same every time?

No.

It happened to us. We filed same patent application twice (The second time for expedited examination purposes). Normally the same examiner would examine both applications. Not this time.

A Tale of Two Examiners

Patent 1: Vertical and horizontal simultaneously and selectively expandable structure Patent no: 9,938,044 Issued: April 10, 2018

Patent 2: Vertical and horizontal simultaneously and selectively expandable structure Patent no: 10,279,956 Issued: May 07, 2019

Interestingly, both Examiners, Stephen Castellano and Kareen Kay Thomas, have about an 80% allowance rate at the time of this writing. However, what they were willing to allow and how they rejected the claims was quite different.

How They Rejected

The patent application is for a nifty box which you can use in the trunk of your car or to hold an air conditioner in your window. It really could be used for a lot of things – it expands/contracts in both the X and Y direction. The inventor is quite creative.

In Patent 1 the Examiner took issue with how we worded claims 8, 9, 11, 18, and 19. Briefly, this had to do with arguments within English grammar about whether the pieces were “directly” connected to each other or not, whether a bar across an opening constituted a “partial closing” of a side, and other such findings.

Yet in Patent 2, the Examiner found no issues with how the claims were written that were cited in Patent 1. Instead, the Examiner agreed implicitly that they were all fine. Instead, the Examiner found a problem with claim 1! Claim 1, the Patent Office said, was unclear because of the language “four separate pieces slidably connected to two others of said four separable pieces.” Sigh.

More Important: Is the Technology “Obvious”?

Well, this too depends – at least in scope. For Patent 1, the Examiner initially rejected all of the 19 claims submitted saying it’s obvious in view of a prior patent alone or when combined with another reference (which, in another bit of irony, has an inventor name which matches one of the inventor’s partners). We had to review the rejection depth, hold an interview with the Examiner and come to an understanding, all of which cost more money, in order to get a patent that was further limited to, for example, a claim that has “each said part of each of said four pieces [with] a diagonal bar.” It’s not as great as we had hoped, but it’s a patent nonetheless.

Then, out of nowhere comes the second examination by the second Examiner. Expecting this to be a rejection, the Examiner cited one of the very same references to support a rejection, but only for four of the 19 claims. The other 15 claims, including some very nice ones, were indicated as allowable! Amazing!

Alright, but that still leaves open the possibility that the second Examiner just didn’t find one of the other prior references. After all, a patent can even be invalidated after issuance if another reference is found showing that your concept isn’t new or is obvious. Further, there’s a duty to tell the Examiner of all references that you know about so we paid the late fee and submitted the references to the Examiner.

Now the Examiner came back with the same objection to how claim 19 was worded – finally, some consistency (we had “the” written where it should not have been – such is patent law … it’s precise … when we’re in the mood for irony). However, the Examiner still said that 10 of our 19 claims were allowable including much broader claims even after reviewing the exact same prior references! Frankly, we agree … it just would have been even more expense to go additional rounds with the first Examiner to try and get more claims allowed.

The claims allowed include, for example, the following (simplified for your reading experience):

– A box independently expandable in both a horizontal and vertical direction comprising:
four separate pieces, each forming a quadrant of the box;
each of the pieces slidably connected to two other pieces;
the pieces forming part of walls of a box which becomes double walled when the box is collapsed.

Conclusion

Examination of patent applications is subjective. Multi-million dollar business decisions are often made based on what a government worker getting paid sometimes as little as about $50k/yr decides about a patent application.

Patents are granted based on what’s “new” (35 USC 102) and what’s “unobvious” (35 USC 103). While reasonable people will probably agree if something is new or not, we won’t always agree on whether if we combine two different references together … will be think of the new idea or not? Even once patents are issued, they are often overturned and often judgments against patent infringement are often overturned. Still, a patent can be extremely useful because patent litigation is so expensive and usually avoided by would-be infringers. Is there really anything new under the sun? It depends which lawyer you want to argue the case for you … and perhaps whether a higher power directs your work to the right Examiner. Patents can be scientific … and can also require a lot of praying. Go figure.

What Are Claims in a Patent?

Claims are perhaps the most important part of a utility patent. In order to infringe a patent, one generally must do everything listed in a claim. The claims use precise and often technical language to break down the points of novelty of an invention, and thus are the primary factor used in determining whether an invention is patentable and whether a third party is infringing. It is thus instrumental that the claims are written properly and professionally.

A balance between broad and narrow claims is both a science and an art. Overly broad claims risk rejection due to existing prior inventions. Excessively narrow claims allow others to avoid infringement by making minor changes to the technology.

For some extreme examples, a claim which is too broad (tries to patent too much) might be as follows:

A table having four legs and a flat top surface.

Obviously, furnishings such as dining tables that meet this description already exist, so this claim would not be allowable.

On the other extreme, a claim which is too narrow (i.e very easy to avoid infringing) might be as follows:

A table having four legs with flowers on top and flowers protruding from the top of the flat top side, with further inlaid woodwork on the sides of the table each 20 degrees offset from the previous, and a groove around the perimeter which undulates.

To avoid infringing this claim, one could prepare the exact described technology with a few small changes, such as by replacing the flowers on the table surface with chocolates, and effectively have a just as functional table without infringing the claim.

Types of Claims

There are a multitude of types of claims:

A device claim is for structural and/or functional connections of components.

For example:

A three-tiered cylindrical confection covered with icing.

Another type of claim is a method claim. As the name implies, a method of use of a technology to achieve a final result is described, broken down step by step. For a simple but illustrative example, a device claim may describe the features of a cake, whereas a method claim would encapsulate the steps of mixing the ingredients and baking to yield the baked good:

A method of making a cake, comprising steps of:
gathering and mixing ingredients;
baking the ingredients after the mixing; and
eating the cake after the baking.

System claims and kit claims describe a combination and interaction of a group of components or devices, each of which is functional in some capacity independently. An example of a kit claim would be:

A kit for knife maintenance, comprising:
a whet stone;
a liquid-retaining basin for cleaning the whet stone;
a high-grit polishing diamond sponge for resurfacing the whet stone; and
an angular guide adapted to orient a knife with respect to the whet stone.

Note that the whet stone, the basin, the sponge, and the guide all individually constitute unitary devices. It is thus not the goal of the kit claim to protect the invention of the knife, but rather the combination of the aforementioned devices for knife maintenance.

A product by process claim protects an end resulting item from a series of steps executed. This kind of claim is especially relevant to chemical applications. An example would be:

A crystalline product obtained by a process of:
boiling a sample of sea water until half the volume vaporizes;
incubating the remaining liquid at 10°C for one hour; and
flushing the remnants with ethanol.

It is not the characteristics of the final product that are claimed, but rather the process of obtaining such.

How many claims can I get?

As many as you pay for. Automatically included with filing of a US utility patent are up to twenty claims inclusive of three “independent” claims. An independent claim is a claim that stands alone without need to refer back to previous claims. Independent claims are thus used to introduce the basic essence of a technology in a broad sense. A “dependent claim” depends from the independent claim, narrowing the independent claim in scope by being more specific and/or providing further limitations.

A good way to conceptualize the idea of claim dependencies is a tree: In order for branches to exist on a tree, a trunk must be present; However, a trunk need not depend on branches for survival. Similarly with claims, an independent claim stands on its own. It is thus the most broad sort of claim, in which only the essential elements of a technology are disclosed. Every branch may have unique characteristics, despite all originating from the same trunk.

A high-level example of an independent claim for a keyboard is:

An input mechanism with multiple rows of adjacent keys, each key sending a unique electrical signal to a processor to provide indication of depression of the specific key, the processor then inducing a screen to display a character associated with the unique electrical signal received.

Dependent claims, on the other hand, add details to the independent claim. A dependent claim for the keyboard example could look something like:

The input mechanism, further comprising a delete key electrically connected to the processor, which erases the last displayed character on the screen.

In our example, reading only the dependent claim without the independent claim doesn’t make sense. If someone infringes a dependent claim, they have also infringed the independent claim. However, the opposite isn’t always true. Dependent claims help to show the specific new features of a preferred version of the technology. If this version is made, it would infringe multiple claims, which could lead to higher damages in a lawsuit. Also, if the independent claim is rejected for being too broad, the details from the dependent claims can be added to the independent claim to make it acceptable.

Depending on the case, dependent claims may be “nested” claims such that a dependent claim depends on another dependent claim which in turn depends on an independent claim. There is hypothetically no limit to how many layers of nesting claim dependencies can comprise, though more nesting reduces generality and overall scope.

In addition to type, structure, and dependency, another key feature of claims is terminology. A patent attorney is said to be his/her own “lexicographer,” meaning that an attorney may define what exactly specific terms denote. For example, an attorney may choose to define the word “substantially” as “within ten percent of the term modified.” Thus, an eleven foot pole and a twenty foot pole and a twenty one foot pole would be said to be “substantially the same in length,” thus protecting the incident technology against slight variations and deviations. The way terms are defined in the main body of the patent specification thus is instrumental in providing interpretational direction for the claims.

Conclusion

A patent attorney may write different types of claims in the same patent application, or perhaps different sets of claims of the same type to cover different aspects of the same invention. Drafting multiple sets of claims allows the attorney to still retain valid claims should an examiner reject all claims of one set.

Patent writing is in some ways a methodological science and in some ways also a stylistic art. Rational thinking and reasoning combine with creativity to effectively convey the novelty of a technology. At Feigin and Fridman, it is our role to take the time to understand your invention so that we can translate its uniqueness into the language of a successfully protective disclosure.

Patent Examination in Four Months

The U.S. Patent Office has between about a 1.5 year and 3 year backlog before responding with even a first Office Action. For an additional government fee, examination is four months after you file a new application. (Inventors over 65 get the benefit without any fee payment!)

The process is more formally referred to as a “Track One” patent application with a goal of granting a patent within a year. While the quicker examination can be costly, having a patent 2 years quicker than others gives you a valuable asset that often offsets the costs.

Design patents can also be examined ahead of the line, though one can accelerate a design patent at any time and is required to provide a search report.

Foreign Filing

A patent issued in the United States does not give you intellectual property rights in any other country. The United States patent only gives you the right to stop other people from making, selling, or using your patented technology in the United States. However, the US patent can also stop the import of your patented technology to the United States, even when the entity is making an infringing product perfectly legally in their country. If you want Patent Coverage in ANY OTHER country, you have to apply for that patent in each country or at the appropriate regional patent office.

International Patent Law is governed by treaties amongst 181 countries / entities. Countries that agree and sign onto a treaty are called contracting states. Also some Patent Law Treaties allow contracting states to sign on for only some of the provisions outlined in a standard treaty and not all of them.

There are two major treaties that deal with International Patent Law. First is The Paris Convention. Once an application for a patent is filed in one of the contracting states, this treaty gives the ability to claim a priority date to that first patent application in any of the other contracting states. This is very helpful if there is an intervening patent application for the same invention. A filing of an application under the Paris Convention is usually referred to as a national filing. The benefit of the Paris Convention is that it gives the ability to grant that application a priority date.

PCT is the other major international treaty. PCT is short for Patent Cooperation Treaty. WIPO, the World Intellectual Property Organization, oversees the PCT patent process. This treaty created one entity to file and search an application for all the contracting states. The PCT does NOT grant any patents. An applicant still has to do national filings to actually get Patent protection in different countries.

Even though eventually an applicant would still have to file or more national or regional patent applications, the PCT provides great advantages. One of those advantages is a central process with only one filing in only one language. Another advantage of the PCT is the ability to wait 30 months from the first filing before going into the national phase. This defers the cost for 30 months, hopefully giving the applicant time to evaluate how the invention is doing and where it would be most advantageous to have national patents. Still further, a patent search will be conducted and the applicant may amend their claims accordingly before having their application prosecuted in many countries, thereby potentially decreasing the cost significantly.

In very basic terms, the PCT Application works like this – Traditionally, an applicant files a base application in one of the contracting states such as the United States, for purposes of this explanation. (One may, however, file a PCT application first and skip a national filing of their patent application.) Before the one year anniversary of the United States filing, an applicant would file the PCT application. All contracting states of the PCT are included in a single fee. Next the applicant would receive an international search report and written opinion. The next step is the international publication. There is an option at this point in the process to get a supplementary international search. There is also another option of an international preliminary examination. Finally, at 30 months from the United States filing date, the PCT application goes to national and/or regional Patent Offices. There is a deadline for the completion of each of these steps. In addition, at each of these steps there are decisions to be made on how to proceed.

While this may appear to be a complicated process, it is easily handled by a knowledgeable Patent Attorney with expertise in this area. If you are considering filing any International Patent, we would be happy to assist you.

Patent Licensing

Overview

A patent license grants you the ability to use someone else’s patent without worry of infringement to their patent. Sometimes, licensing someone else’s technology is a less expensive alternative to patenting your own technology. Other times, for the success of your business, you may not have a choice but to license technology. However, one should not enter into a licensing agreement to be able to use someone else’s technology without some thought.

Before You Contact the Potential Licensor

Before you contact the potential licensor (the person or entity from which you are seeking a license), some background work should be done. Is the company serious about it’s intellectual property and are they actually using it, or are they an individual inventor that had no idea how much work it would be to get their product selling? Have the filed their patent in the United States only, or have they filed in many countries? Did they argue vigorously at the Patent Office, or perhaps they narrowed their claims so much as to have the teeth of their patent fall out. Further, maybe the Examiner at the Patent Office didn’t conduct a very good search and there is prior art out there which would make licensing the patent less worthwhile or perhaps, even a waste of money. Does the licensor have other patents on this technology? Are they protecting the entire field, or just a very small subset that you can perhaps work around?

These and other questions should be discussed with a competent Patent Attorney before seeking a license and before contacting the owner of a patent. Patents, except in extremely rare cases, are public records. The prosecution history is also public and one can learn a lot by reviewing such information before deciding to hand over your money to another.

What Kind of Patent License Do You Want?

Do you want an exclusive license or is it okay for others to use the patent as well? Is it okay only for you and the owner to use the license? How will you pay – a share of profits? A flat rate per period of time? Do you want the first right of refusal for future technology? Can you assign the license to another? Maybe you prefer to buy all rights to the patent outright. Instead of “renting” your license, you may want to “buy” the property, i.e. the patent. These and other questions should be considered.

Preparing for the Worst

Few people want to think about prenuptial agreements before marriage (which can also be drafted by this law office), living wills, or corporate dissolution. However, preparing for what happens if a party breaches the contract, how to all the parties to oversee that the other is reporting royalties, etc, properly, and the like may be the most important part of the contract. As long as the licensor and licensee are an agreement, there will rarely be a problem. However, when the disagreement starts, the contract is a place to look to for guidance and may save lots of aggravation and money in the long run.

One should think about what penalties there are if the other party breaches. Patents have to be renewed at the 4th, 8th, and 12th year of their life. Suppose you have a license to a patent and the owner fails to pay a maintenance fee. Hopefully, your license specifies that you are no longer paying royalties on a product, and even better, that this constitutes a punishable breach of the patent license.

What if you or the other party wants to terminate the license? Should the license terminate at the end of a fixed time period or should in continue until the parties agree to dissolve the license? Other possibilities may include the ability to terminate a contract with a monetary penalty or only after all goods in inventory which rely on the licensed patent are sold.

Conclusion

The above constitutes an overview of some of the issues which should be discussed with your Patent Attorney and considered when seeking or granting a patent license. You should be clear on your desires and the cost/benefit of seeking or granting a patent license as well as those of the other party before entering into a license agreement. Please contact the attorney at this office for more information on patent licenses.

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