Patent Troll Cases Jump 40% in 2007

According to Troll Tracker, the anonymous blogger with the bounty on his head, while the number of patent cases has not increased much from 2006 to 2007, the number of actual defendants in those cases has increased significantly during than period. Troll Tracker attributes to this increase to Patent Trolls running rampant in our court system.

Patent trolls are patent holders that do no make any actual products. Instead, Patent Trolls derive income by suing others on patents purchased from third parties. According to Troll Tracker, the increase in the overall number of patent infringements is disproportionately due to suits by patent trolls. Troll Tracker estimates that in the busiest patent court in the country, The Eastern District of Texas, Patent Trolls account for about 40% of the patent cases filed.

Patent troll cases are particularly important as they are the primary motivation behind those attempting to overhaul the patent system. Rather than merely limiting patent trolls, the new patent rules throw the baby out with the bathwater. In addition to limiting patent trolls, the new patent rules hinder the ability of smaller inventors to obtain and enforce patents. Thankfully, the courts have stopped the Patent Office from enforcing these Draconian rules against small inventors. Unfortunately, if the number of patent troll cases continues to increase, the courts may not be able to stop Congress from legislating the anti-small inventor rules the Patent Office appears determined to enforce.

Brett Trout

patent troll patent office inventors

How Long Does It Take to Get a Patent or a Trademark?

You Want it When?
People are often surprised how long it takes to obtain a patent or a trademark. Copyright registrations often issue in less than a year. Why then, do patents and trademarks take so much longer? The primary reason is that there is no requirement that the copyrighted material be unique. Therefore, the Copyright Office does not have to hire anyone to run a search to see if anything like it has already been registered. Patent and trademark applications however, do have to be unique.

Expert examination
As you might imagine, if there is already a patent or trademark on your exact invention or name, rejecting your application takes little effort. Not surprisingly, the vetting becomes much more complex when the existing registrations are close, but not exact. Making determinations of unregistrable similarity requires someone with an undergraduate degree in engineering or science in the case of patents, and a law degree in the case of trademarks. With 467,000 patent applications and 394,000 trademark applications being filed every year, there is somewhat more demand for these jobs than there are applicants to fulfill them. Right now, the United States Patent and Trademark Office(USPTO) has a backlog of over 1 million patent applications.

Patent pending
The USPTO has just released its annual Performance and Accountability Report. The report states that, on average, it takes an average of 31.9 months to obtain your patent (or a final rejection if your invention is not patentable), and 15.1 months to obtain a trademark registration (or a final rejection). These are, of course, averages. Patents in high-tech fields like software and communications take an average of 42.9 and 43.1 months respectively.

Speeding things up
The USPTO is intent on bringing those numbers down through the hiring of new examiners. With the USPTO managing 99.9% of its patent applications and 99% of its trademark applications electronically, perhaps you can convince them to work from home, as in Des Moines. Granted Washington D.C.'s has a much higher murder rate than Des Moines, but there is really no substitute for getting a deer in the headlights look from a real deer in your actual headlights.

Sorry, I am getting all excited about deer season next week. Perhaps this year I can bring one home without one of my Suburban's quarter panels having to give up its life in the process.

Brett Trout

USPTO patent trademark

Second Life Patent and Trademark Office

According to Virtually Blind, Second Life players FlipperPA Peregrine (aka Tim Allen) and Michael Eckstein have opened up a virtual Second Life Patent and Trademark Office (SLPTO) within the video game. This comes on the heels of six Second Life gamers suing Rase Kenzo (aka Thomas Simon) for stealing their intellectual property. The allegations range from Unfair Competition, to Copyright Infringement, to Civil Conspiracy. The designs allegedly stolen include clothing, shoes and beds.

The SLPTO does not have any immediate plans for generating income, its owners have wisely stepped back and decided to let Second Life denizens choose how the SLPTO can best be utilized. Without legal teeth to back up the program, however, I doubt the SLPTO will solve many problems. Even if Second Life owner Linden Lab decides to support the new venture through enforcement, it is difficult to see how intellectual property registration, standing alone, gets anyone anywhere.

I mean I love intellectual property. I could read about it for hours. Methinks, however, most gamers, even Second Life gamers, might find intellectual property protection self study more repulsive than physiologically accurate avatars. Better protection of intellectual property merely begets better schemes of circumvention. As Second Life intellectual property issues become more complex and involve greater sums of money, the assistance of a First Life Intellectual Property attorney will become a necessity, rather than a luxury.

Brett Trout

Second Life USPTO patent trademark

Judge Prevents Patent Office From Punishing Inventors

I have written several times about the Patent Office's recent attempts to restrict inventors' protections under the patent laws. On Wednesday, the day before the new rules were to take effect, Judge James C. Cacherisi, of the Eastern District of Virginia, shut them down.

Over the strenuous objections of the Patent Office, Judge Cacherisi allowed amici (friend of the court) briefs from several entities bashing the Patent Office's new rules. Of particular note was the declaration of former Patent Office Director, Harry F. Manbeck, explaining why the new rules are illegal. The Judge actually relied on Mr. Manbeck's declaration in rendering the decision.

Most importantly, Judge Cacherisi's ruling stopped the new patent rules from taking affect yesterday. The Judge held that the Patent Office's restrictions on the number of patent claims and number of continuations that an inventor could file appeared to be beyond the Patent Office's authority. The Judge also found that the new Patent Office requirements that inventors conduct their own searches did not give inventor's sufficient guidance to be able to comply with the new rules.

The court found that the plaintiff, GlaxoSmithKline (GSX), was likely to succeed on the merits of the case, would suffer irreparable harm from the new rules, that the balance of the hardships weighed in favor of an injunction and that allowing the new rules to go into affect would potentially harm the public. From my read of the opinion, it appears the Patent Office tried to slip these rules by, assuming no one would have the audacity to question its authority. Lucky for inventors everywhere, there are 800 pound gorillas like GSK and judges like Judge Cacherisi with the fortitude to protect and defend the protections afforded inventors under the Constitution.

Brett Trout

patent USPTO

New Patent Office Rules Called "An Abomination"

The calvary has arrived. Suffering the slings and arrows of the United States Patent and Trademark Office's newly proposed rules, inventors now have reinforcements. The American Intellectual Property Law Association (AIPLA), the country's largest organization of Intellectual Property Law attorneys has filed an amici(friend of the court) brief in the GlaxoSmithKline (GSK) case. As you will recall, GSK is suing the Patent Office to force the Office to "perform neglected or unlawfully performed duties." (I wonder if I can sue my kids for that?)

The AIPLA brief explains how the new Patent Office rules destroy existing inventor protections. According to Patently-O, even former Patent Office Director Harry Manbeck filed a declaration explaining why the new rules are illegal. Patently-O has posted the full brief, detailing all of the ways in which the new rules threaten the underpinnings of the Constitutionally mandated protections afforded inventors.

Pundits are calling the new rules "Anti-American". As patents affect every aspect of our daily lives, these issues are important to all of us. The framers of the Constitution knew the importance of protecting inventors. If the Patent Office is allowed to take away these rights unilaterally, what will this do to innovation in the United States. More importantly, once the precedence is set, what Constitutional protections are next on the chopping block?

Brett Trout

USPTO patent

Blogger Eviscerates Amazon 1-Click Patent

Don't mess with bloggers.
A New Zealand Amazon.com customer, disgruntled that his order had taken too long to arrive, decided to take on Goliath, Amazon's 1-click patent. The 1-click patent is probably the most famous, and most controversial Internet-based patent ever issued.

The Problem
Until the State Street case in 1998, the United States Patent and Trademark Office (USPTO) had not allowed any patents on methods of doing business. That all changed after the Court of Appeals for the Federal Circuit ruled that business methods could be patented. This led to a deluge of patent filings. Since the USPTO had no bank of business method patents against which to vette these new patents, the USPTO issued many patents on technology which was old or, at the very least, non-obvious.

Will No One Fight?
People were free of course to research the "prior art" on their own and provide it to the USPTO in attempt to invalidate the patent. However, the companies with the resources and the most to gain from canceling these patents also had the most to lose in a fight. If the fight was unsuccessful, the patent owner would surely come after the losing competitor with the now-vetted patent. Additionally, others would use the same arguments to undermine the loser's own specious Internet patents.

Enter the Kiwi
Angered over two years ago by a long delay in the receipt of his Amazon.com order, New Zealand actor Peter Calveley took on the behemoth by filing a request for reexamination of the 1-click patent. After two years, on October 9, 2007, the Kiwi got his pound (more like 799 pounds) of flesh. The United States Patent and Trademark Office rejected all of the broadest claims of the 1-click patent, even going beyond the NZer's narrow request to reject claims 1-5 and 11-26.

Although torquing off a New Zealand blogger does not seem like a good idea a priori, it always gives me a warm fuzzy feeling to have my presumptions confirmed.


Brett Trout

Amazon patent 1-click Calveley

Law Firm Suing Patent Office

The Plaintiff
GlaxoSmithKline (GSK) is boldly going where nearly every independent inventor wishes he or she could go - to court with the United States Patent and Trademark Office over the Office's new rules which take patent rights away from inventors. According to the complaint posted on Gene Quinn's IPWatchdog, on October 9, 2007 GSK sued the United States Patent and Trademark Office for, among other things, issuing new rules which restrict an inventor's ability to continue to prosecute a patent application as well as the number of patent claims an inventor is allowed to prosecute. GSK claims in their complaint that the PTO's Final Rules' restrictions on patent applications are Ultra Vires, which is legalese for "Who died and made you boss?"

The Claims
In addition to arguing that the PTO does not possess the power to even make the new rules, GSK argues the Final Rules are vague, arbitrary, capricious, an abuse of discretion, not otherwise in accordance with law and that they smell vaguely of elderberries (I might be reading between the lines a little on that last one). GSK has asked the court to enjoin the PTO from enforcing the rules as well as for a writ of mandamus compelling the PTO to "perform neglected or unlawfully performed duties." But how do they really feel?

Potential Resolution
In an effort to ease tensions, GSK Senior Vice President for Corporate Intellectual Property has asked for a sit down with the PTO's General Counsel. Although GSK filed the case in the Eastern District of Virgina's rocket docket, this case is likely to be resolved one way or the other well prior to even the E.D. VA's lightening fast 8 months to trial. According to Gene Quinn, if the rules take effect and are later overturned by the court, the PTO "would have to spend years getting things straight."

On behalf of inventors everywhere let's hope this gets resolved prior to the Final Rules effective date of November 1st.

Brett Trout

USPTO patent GlaxoSmithKline

When Does a Patent Expire?

The U.S. comports with the World
Until December 8, 1994, the United States had held fast against reason in not knuckling under to the world's impression that patent terms should be calculated from the date the patent was FILED, rather than the date the patent was ISSUED. On that date Congress came to its collective sense and comported U.S. patent law with the General Agreement on Tariffs and Trade (the "GATT Uruguay Round"). Prior to 1994, the U.S. patent terms of 17 years from the date of issue. That means regardless of whether you filed your patent yesterday, or in 1970, you received 17 years of protection from the date of issue.

Sinking Submarine Patents
Submarines patents, made famous by the prolific and inventive Jerome Lemelson. Mr. Lemelson filed hundreds of patent applications on everything ranging from bar codes to superconducting electrical cable. Instead of prosecuting these applications quickly toward issuance, however, Mr. Lemelson would delay their issuance, often until after another company had commercialized the technology. Since the Patent Office maintained patent applications secret, competing businesses had no idea their new technology was actually the subject of a "submarine patent." This strategy led to the collection of over $1 billion in royalties. This strategy also led to the U.S. changing the term of patent protection to 20 years from filing, thereby undermining the devastating effects of submarine patents.

Dealer's Choice
Patent applications filed on or after June 8, 1995 expire 20 years from their filing date. Applicants filing before this date have the option of having their patent expire either 20 years from the date of filing OR 17 years from the date the patent issues. So, we have three cases:

1) Patents issuing before June 8, 1978 - Expire 17 years from issuance.

2) Patents issuing after June 8, 1978, on applications filed before June 8, 1995 - Expire later of 20 years from filing date OR 17 years from date of issuance.

3) Patents filed on or after June 8, 1995 - Expire 20 years from filing date.

Early Withdrawal
The foregoing terms apply to most patents. However, in certain circumstances, the actual date of a patent's expiration may vary from those dates. For instance, if the Patent Office caused delays in the issuance of a patent, which caused the patent to issue more than 3 years after the filing date, the Patent Office may extend the term of the patent by an amount equal to the delay. If you fail to pay the maintenance fees, or succeeding in torquing someone off, your patent may expire or be canceled. Cancellation usually occurs when someone complains to the Patent Office that one or more documents (usually other patents) were overlooked during the prosecution of the patent. In this case, the Patent Office can leave the patent "as is," restrict the scope of the patent or cancel the patent immediately.

Now, go off and impress your significant other with your newfound knowledge of patent expiry.

Brett Trout

Hat tip to Mike for keeping me on my toes!

patent USPTO expired canceled extension

Patent It and They Will Come (Maybe)

Should I Get a Patent?
As a patent attorney, I get that question a lot. Unlike a lot of patent attorneys however, my first answer is typically not an emphatic “Yes.” A good patent is like a safety deposit box. Very valuable, assuming you have something valuable to protect. A patent is not going to sell your invention for you. The only thing a patent can do is to stop other people from selling your invention. If no one is interested in buying your invention, no one else is interested in selling it, making your patent rather useless.

If Not Me, Who?
I long ago gave up trying to guess whether a new invention was going to make money. I have had clients walk into my office, with “can't miss” inventions, that missed by a rather wide margin. On the other hand, one of the most successful, albeit wacky, inventions I have ever had the pleasure to patent was invented by a client I nearly politely shuffled out of my office in my own misguided attempt to keep him from wasting his money. What changed my mind was the inventor's knowledge of marketing and his vast array of industry contacts, things the “can't miss” inventors never bothered to consider.

Will It Sell?
Now, much wiser (and wizened for that matter) when a client asks me if they should get a patent on an invention, I typically respond with another question. “What kind of sales do you expect, and how do anticipate getting those sales?” If the inventor details prior successful performance in a similar market, filing a patent is probably a pretty good idea. If the inventor does not have the first clue about marketing, but figures he or she will “patent it and they will come” I encourage them to prepare a business plan detailing proposed marketing efforts and anticipated sales. In between those two extremes, my advice still leans in those directions, albeit to a lesser degree.

How Do I Get a Patent?
Obtaining a patent involves filing a patent application which describes the parameters of your invention. Even for a skilled patent attorney, drafting a patent application is a very time consuming process, often taking several weeks to complete. Once the application is completed, it is filed with the United States Patent and Trademark Office (USPTO) Two to three years later (yep you read that right), the USPTO examines the patent against all of the other seven million patents in the USPTO (well maybe not all). If your patent application is very broad (which it should be), it is very likely that the USPTO will reject most, if not all of the patent protection you are claiming. Assuming you indeed have something novel, you fight back and forth with the USPTO, possibly for years until you either give up, or the USPTO grants you a patent.

Can I Patent It Myself?
While it is theoretically possible to obtain a patent on your own, even the USPTO recommends obtaining the learned counsel of an experienced patent attorney. Patent attorney are attorneys with a science background, who have passed a separate “Patent Bar” exam, demonstrating their knowledge and skills in the patent drafting arena. Not all patent attorneys are created alike, just like all patents are not created alike. While you often get what you pay for, there are some inexpensive patent attorneys who draft very good patents and expensive patent attorneys who draft very bad patents. To find a good patent attorney, get a recommendation from someone who has actually obtained a patent with the attorney. The problem with drafting your patent yourself or hiring a bad patent attorney, is that by the time you realize you have made a grave mistake, the most valuable aspect of your invention may be irretrievably cast into the public domain.

Its All About The Marketing
It's much better to have a great marketing plan and a bad invention, than a great invention and a terrible marketing plan. Sound strange coming from someone who earns a living drafting patents and openly professes the inability to market inventions? Well that is the way it is. What about those invention promotion companies? I have yet to run across one that is not a scam or, at the very least extraordinarily ineffectual at parlaying an invention into pictures of dead presidents. If you believe in your invention, but know you are not a marketer, team up with someone who is. Better yet, find an investor with a strong marketing background, preferably with experience marketing your type of product. If you are lousy at marketing, at the very least, team up with someone who has access to marketers.

That Being Said
Patents can be quite valuable. Several are valued at over $1 billion apiece. Also, patents can be marketing tools themselves. Many advertisements tout the patented nature of the product as one of its most impressive features. Patents can be the source of revenue streams, generating millions of dollars in licensing fees from eager licensees. Patents also impress potential investors. Many investors require patent protection be in the works before they will even talk to you. Patents can do things money can't. Good patents can carve out a broad swath of exclusive sales territory and may even “buy” your way out of a potentially crippling cross-infringement suit by your closest competitor. Patents can be some of the most worthless or valuable assets on the planet. Compiling an effective marketing strategy before diving into the patent process is often the difference between whether the “safe” your patent attorney constructs for you contains a lump of coal or the Hope diamond.


Brett Trout

EvilChristians battle Islamic Rage Boy at the PTO

Apparently having no problem issuing federal trademark registration for EvilChristians, the United States Patent and Trademark Office (USPTO) is seemingly deeply offended by an application for a design mark entitled Islamic Rage Boy.

Although I have not been in the trademark business as long as Christians an Muslims have been at odds, I have been in the game since long before they took their battle to the USPTO. Apparently, the website The Nose On Your Face (TNOYF) tried to file for federal trademark protection for its Islamic Rage Boy character as used in association with its comedy show broadcast. TNOYF is a comedic website which lampoons mainstream media coverage. TNOYF even has a tagline "News so fake you'll swear it came from mainstream media."

Trademark examination is a subjective thing. I am all too acutely aware that the subjective predilections of one trademark examining attorney are not necessarily precedent to another examining attorney. In this case, however, there seems to be more going on than a mere difference of opinion. Although not privy to the rational behind the USPTO's grant of the EvilChristians trademark, the particular examining attorney involved with the prosecution of Islamic Rage Boy appears, if TNOYF's reproduction of the USPTO Office Action is to be believed, to be arguing from a position based more on faith than law. Statements that the meaning is "clearly offensive to all Muslims" and that "associating Muslims with the imagery of extreme violence would be offensive . . . to the entire American public" does not seem to be supported by any citations.

While I am not advocating for or against registration of this trademark, the language used by the examining attorney in speaking on behalf of the sensibilities of the entire Muslim population and the American public concerns me greatly. An examining attorney is free to use any facts at his or her disposal to reject a trademark application. An examining attorney is even allowed to use his or her own moral compass to make an initial determination as to whether a particular trademark might be immoral or scandalous. However, when an examining attorney annoints his or herself the sole moral arbiter of what I personally find offensive, that is clearly not appropriate. Such over the line determinations should, on their face, prompt an objective review of the application by examining attorneys who have not demonstrated a bias in the past with regard to the matters at issue.

Immoral matter cannot be registered as a federal trademark. Pundits, however, should be allowed to protect the intellectual property contained in their parody and free speech. Without more information, I cannot determine upon which side of the line this trademark falls. I do feel, however, after reading the Office Action proffered in this case, that the words used by the examining attorney in this case are inflammatory, and indicate a rejection based more on hyperbole and emotion than reason and the rule of law.

For a somewhat irreverent translation of the Office Action in this case, jump over to TNOYF.

Brett Trout

evil christians islamic rage boy trademark USPTO

Engineers Show Patent Reform Bill is Anti-Inventor

According to the New York Times, the IEEE, the largest professional society of electrical engineers, may have put the final nail in the coffin of the very anti-inventor Patent Reform Act of 2007.

In a letter to Speaker of the House Nancy Pelosi and Senate Majority Leader Harry Reid, the IEEE points out that the Patent Reform Act is a "disincentive to inventiveness" and "stifles new businesses and job growth." The IEEE believes the Patent Reform Act creates an environment "harmful to individual inventors and small business."

By undermining the current protections afforded inventors under the current patent system, the Patent Reform Act would allow large companies to exploit inventions of smaller players, creating a huge disincentive to innovate. Consumers will not see any price breaks. Instead, if the Patent Reform Act were to pass, consumers would likely be paying higher prices to larger companies selling older, less efficient, technology. Under the current system, which fosters innovation, customers spend less money, with smaller companies, which have developed better, faster solutions.

The Patent Reform Act simply strips away the protections and rewards patents afford smaller, more innovative companies, ensuring such innovations, and the benefits they provide consumers, never see the light of day.

Brett Trout

Patent Reform Patent USPTO

The Best Patent Lawyer in the World

In researching my continuing series on finding the best patent lawyer in the world, I ran across a particularly interesting post on Stephen Nipper's Invent Blog. Stephen posted a great video produced by a successful toy inventor. Rather than recommend a particular attorney, the inventor recommends strategies for finding a patent lawyer with a skill set and hourly rate most suited to your needs.

One of the best pieces of advice the inventor gives is contacting inventors to find out how they feel about their patent attorney AFTER the process is over. This is great advice, but you are really limiting your research to that narrow group of people whom the patent attorney made happy. If the patent attorney only gets 5% of his or her clients patents, those 5-10% are probably pretty happy. This still gives you a 95% chance of being unsatisfied with the process.

A better solution might be to use the United States Patent and Trademark Office to search patent applications, rather than issued patents. This will give you the opportunity to contact satisfied, as well as dissatisfied inventors.

Other helpful patent attorney finding advice from the video:

Search patents by inventor city to find inventors who can refer local patent attorneys;
Locate inventor contact info through Google, call them and ask them if they liked their attorney.
Speak with several patent attorneys before you decide which one to hire.
You do not always get what you pay for.

That last point is pretty important. Many time larger market attorneys charge much higher rates and are much less responsive, especially to small inventors. If you live in a large market, you may want to search a smaller market city where the attorney's response may be better and the overhead smaller.

Brett Trout

best patent lawyer inventor USPTO

When Does a Patent Expire?

The U.S. comports with the World
Until December 8, 1994, the United States had held fast against reason in not knuckling under to the world's impression that patent terms should be calculated from the date the patent was FILED, rather than the date the patent was ISSUED. On that date Congress came to its collective sense and comported U.S. patent law with the General Agreement on Tariffs and Trade (the "GATT Uruguay Round"). Prior to 1994, the U.S. patent terms of 17 years from the date of issue. That means regardless of whether you filed your patent yesterday, or in 1970, you received 17 years of protection from the date of issue.

Sinking Submarine Patents
Submarines patents, made famous by the prolific and inventive Jerome Lemelson. Mr. Lemelson filed hundreds of patent applications on everything ranging from bar codes to superconducting electrical cable. Instead of prosecuting these applications quickly toward issuance, however, Mr. Lemelson would delay their issuance, often until after another company had commercialized the technology. Since the Patent Office maintained patent applications secret, competing businesses had no idea their new technology was actually the subject of a "submarine patent." This strategy led to the collection of over $1 billion in royalties. This strategy also led to the U.S. changing the term of patent protection to 20 years from filing, thereby undermining the devastating effects of submarine patents.

Dealer's Choice
Patent applications filed on or after June 8, 1995 expire 20 years from their filing date. Applicants filing before this date have the option of having their patent expire either 20 years from the date of filing OR 17 years from the date the patent issues. So, we have three cases:

1) Patents issuing before June 8, 1995 - Expire 17 years from date of issuance.

2) Patents issued on applications which were pending on June 8, 1995 - Expire later of 20 years from filing date OR 17 years from date of issuance.

3) Patents filed on or after June 8, 1995 - Expire 20 years from filing date.

Early Withdrawal
The foregoing terms apply to most patents. However, in certain circumstances, the actual date of a patent's expiration may vary from those dates. For instance, if the Patent Office caused delays in the issuance of a patent, which caused the patent to issue more than 3 years after the filing date, the Patent Office may extend the term of the patent by an amount equal to the delay. If you fail to pay the maintenance fees, or succeeding in torquing someone off, your patent may expire or be canceled. Cancellation usually occurs when someone complains to the Patent Office that one or more documents (usually other patents) were overlooked during the prosecution of the patent. In this case, the Patent Office can leave the patent "as is," restrict the scope of the patent or cancel the patent immediately.

Now, go off and impress your significant other with your newfound knowledge.

Brett Trout

patent USPTO expired canceled extension

Patent Office Pilot Program for Complex Works

The United States Patent and Trademark Office (USPTO) is seeking participants for a Complex Work Units (CWUs) Pilot Program scheduled for late 2007. CWUs are chemical structure drawings, mathematical formulae, protein crystal data, and table data, which often add significant complexity and cost to the examination and publication of patent applications in which they are contained.

The CWU Pilot Program will be conducted in an effort to:

* Investigate filing practice options for CWUs
* Gather information about existing CWU formats and their use in the Intellectual Property community
* Evaluate rule changes to allow applicants to submit CWU files
* Determine other acceptable file types

The pilot will allow applicants to submit original source files for CWUs through EFS-Web or on a CD, supplementing the traditionally-filed application parts. The CWU source file submissions will not be considered when calculating the application size fee, which will reduce the cost of filing for pilot participants.

The USPTO is requesting participants in an effort to gather more information about CWUs from the intellectual property community. If you have any questions or would like to participate in CWU Pilot activities, please send an e-mail to cwupilotsupport@uspto.gov .

Brett Trout

USPTO Complex Works

Provisional Patents are Naked

I have said it for over a decade and now someone else is joining the choir. The provisional patent emperor has no clothes. Since 1995, I have warned clients against the dangers of filing provisional patent applications. Except in a limited number of very special circumstances, provisional patent applications run the risk of placing invaluable intellectual property into the public domain.

Legal blogger Erik Heels has a nice little blog post (complete with drawing) on why provisional patents are a very bad idea for most small companies. Like me, Heels believes "it is not possible to write an effective patent specification without writing claims." When clients wanted a provisional patent, he would write the claims and then just not file them.

Heels found he was spending as much time writing the provisionals as he spent writing full utility applications. He finally decided that writing provisional patent applications was not only a bad idea for his clients, it was a bad idea for him as well. His firm has since stopped filing provisional patent applications because they "falsely raised the expectations of our clients about cost savings and were rarely the right solution."

While I guess that was one way to do it, I merely directed stubborn clients to another firm in town who I knew would be happy to oblige their Jones for a provisional patent. I may have lost a client or two, but I saved myself a lot of headaches. I would love to have been a fly on the wall when their new patent attorney explained to them why they ended up spending much more money for much less protection than if they had filed a standard utility patent application instead of a Paper Tiger.

Brett Trout

provisional patent USPTO patent application

The New Surge of Medical Patents

According to a recent online article at Law.com, the United States Patent and Trademark Office is issuing medical patents at double the rate it did two decades ago. Although 35 U.S.C. 287(c) still prohibits infringement lawsuits against doctors performing patented medical activities, with medical patents issuing at the record rate of 100/month and doctors negotiating billion dollar patent settlements for infringement of their patents, the huge upward trend in the filing of medical patents does not appear to be leveling off any time soon.

Brett Trout

medical patent medical method USPTO

What is a Patent?

As a patent lawyer the second thing people always ask me is "What is a patent?" (The first being of course "What is that stuck on your shoe?"). Now, to save you time if you ever meet me, and get right to the third question "Is it true you can actually stop a ceiling fan with your tongue?" I have prepared this handy and cogent analysis:

Patents protect inventions. Patentable inventions include new and useful processes, machines, manufactures or compositions of matter, as well as any new and useful improvement thereof. Patent protection is only available under federal law. States cannot grant patents. Under federal patent law , an inventor can obtain the right to prevent others from making, using or selling a particular invention. Patents used to last 17 years from the date of issuance. Now, patents last 20 years from the date of filing. The change is designed to prevent "submarine" patents from languishing in the Patent Office for decades until the market builds and the inventor comes out of no where to start suing people from something he or she invented decades ago.

Something most people do not realize is that a patent does not allow its owner to do anything. A patent only allows its owner to to prevent others from making using or selling the invention. Patent protection is not available for all types of inventions. You cannot get a patent on an idea, an obvious combination of pre-existing items, illegal or immoral matter, pure research, or anything that is simply a novelty or curiosity. The United States Patent and Trademark Office summarily rejects patent applications on items such as perpetual motion machines.

Examples of patents can be found on the governmental web site or through Google Patent Search. Patents typically consist of a brief description of the background and pre-existing technology, a detailed description of the preferred embodiment of the invention, drawings and/or flowcharts associated with the invention, an abstract of the invention, and one or more claims. The claims are each a one-sentence description of the invention. From a patentability standpoint, the claims must be narrow enough to differentiate the invention over any pre-existing devices or obvious combination thereof. From a commercial standpoint, the claims must be broad enough so that competitors cannot easily avoid the scope of the patent by making one or two minor changes. Not all patents are created equally. A skillful, experienced patent lawyer can often draft a much broader, more enforceable patent than a less skilled patent lawyer. Be prepared though, the Best Patent Lawyer in the World is probably going to cost you more than that fresh-faced associate right out of law school. Just make sure the patent attorney you speak with is the one actually drafting your patent application and he or she is not just pawning it off on a less experienced associate.

The owner of a patent may sue an infringer for copying the patented combination of elements in one or more of the patent claims. To determine infringement, a court looks at a particular claim within the patent to determine if each element thereof, or its equivalent, can be found in the accused device. If the accused device includes every element of the claim, the device infringes the patent. The infringer must not only stop making, using and/or selling the device, but the infringer is also liable to the patent owner for the owner's lost profits.

If the patent owner has no lost profits, the infringer must pay a reasonable royalty. Regardless of the number of claims included within the patent, if the device infringes a single claim, the infringer is liable for the same amount of damages as if the infringer had infringed every claim of the patent. If you are found to have infringed a patent, you may not only have to stop at compensate the patent owner for the damage, in the case of willful infringement, you might also have to pay triple damages and the patent owner's attorney fees as well.

While a patent prevents you from making, using or selling an infringing device, a patent does not prevent you from patenting an infringing device. As an example, say an inventor invents a chair and obtains a patent on the chair. A subsequent inventor could file for, and obtain, a patent on a chair with a rocker. Neither the first patent owner nor the second patent owner, however, could make the rocking chair without infringing the other’s patent. However, the parties could negotiate a cross-license, where both parties pay each other a royalty in exchange for being allowed to manufacture the improved device.

Brett Trout

Patent Patent Lawyer USPTO

Patent Examiners Are Fed Up

As a patent lawyer I have taken issue with many aspects of the United States Patent and Trademark Office (USPTO). My primary concerns revolve around the exorbitant fees the USPTO charges inventors, much of which it uses for purposes other than the examination of patents. Despite my concerns, however, my patent lawyer angst is not directed at the actual patent examiners, whom I always felt were brothers in arms in the fight. Now, I am sure.

In an open letter from the Patent Office Professional Association, patent examiners reveal that they are fed up with the current patent grant systems around the world. They feel higher productivity demands, increasingly complex inventions and an ever expanding collection of prior art have put so much pressure on patent examiners that the entire worldwide patent protection infrastructure is in jeopardy. The patent examiner workload is, simply put, at the breaking point.

This cannot help but translate into more legitimate patents being rejected and more frivolous patents being issued amidst the confusion. Unfairness in the prosecution threatens to undermine the entire patent system. This uncertainty, in turn, will lead to reduced innovation and increased litigation.

To reverse this trend, the patent examiners recommend:

Increasing the quality of examination by providing patent examiners with more time to search and examine patent applications.

Acknowledging the importance of protecting the intellectual property of inventors while simultaneously protecting the public domain by removing bias from reporting, rating and incentive systems with respect to granting or not granting patents.

Guaranteeing the independence of the examination process so that it is governed solely by the legal framework.

Ensuring that examiners maintain their legal and technological competence by providing adequate and continuing legal and technological training.

Maintaining staff skills with search, examination and administrative tools by providing regular update training.

Developing and maintaining collaborative rather than adversarial relations with employees and their representatives.

Strengthening the world’s patent systems by encouraging respective governments to provide standards of patentability that reward innovation while discouraging undeserving patent applications so as to provide a strong presumption of validity for issued patents.

Sounds reasonable to me. The money is there. Now if we can just get the USPTO to spend a little of it on the very people that make our patent system work.

Brett Trout

patent examiners patent reform USPTO

How to Get a Patent

When asked the process for getting a patent for one's self, I feel a little like a surgeon being asked how to take out one's own appendix. "Hey, I have handled a knife every day of my life since the age of five, I think I can take out my own appendix." Can you do it? Sure. Is there information online that can walk you through the entire process? You bet. The problem with both appendixes and patents is that you will not know if there was a problem until after it is too late.

A patent application involves several parts: the drawings, the specification (description) and the claims. I believe with a little training, most lay people could come up with something approximating drawings and a specification. Although there are issues like "best mode" and "enablement" that you have to address, these types of issues are explained extensively all over the Internet. Now the drawings and specification may still end up substantially limiting the scope of the patent, or invalidating the patent altogether. I am just saying that the best layperson, reading everything they could on the topic, could probably do as well as the world's worst patent attorney on the drawings and specifications.

The real trick is the claims. A claim is a single sentence which defines the metes and bounds of your patent. It includes the combination of elements no one has ever combined before. If you include too little, the claim will be rejected as obvious or as anticipating an already existing invention. If you include too much, your patent will be unnecessarily narrow and easier for the competition to circumvent. Claims are where the patent attorney's particular artistry, skills and experience come into play. Be aware, not all patent attorneys have the same skill sets. No two patent attorneys will draft the exact same patent. How broad and defensible your patent turns out to be depends a lot on the expertise of the patent attorney you select.

But back to doing things yourself. The United States Patent and Trademark Office (USPTO) offers a helpful website discussing how to get a patent. Assume you want a utility patent; the website guides you through all of the parts of the patent, including the "formal papers" that you have to submit along with your patent application. Here is what the USPTO has to say about claims:

Claim or Claims

The claim or claims must particularly point out and distinctly claim the subject matter which you regard as the invention. The claims define the scope of the protection of the patent. Whether a patent will be granted is determined, in large measure, by the choice of wording of the claims.

A nonprovisional application for a utility patent must contain at least one claim. The claim or claims section must begin on a separate physical sheet or electronic page. If there are several claims, they shall be numbered consecutively in Arabic numerals.

One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application. All dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable. Any dependent claim that refers to more than one other claim ("a multiple dependent claim") shall refer to such other claims in the alternative only. Each claim should be a single sentence, and where a claim sets forth a number of elements or steps, each element or step of the claim should be separated by a line indentation.

The fee required to be submitted with a nonprovisional utility patent application is, in part, determined by the number of claims, independent claims, and dependent claims.

Got it? Yeah, me neither. But it is not the USPTO's fault. Patent attorneys have to spend years learning how to draft claims under the guidance of a skilled senior patent attorney. They study books and take classes, sometimes for many years before they are ready to take the patent bar and become a patent attorney. Even then, the pass rate for the patent bar has not risen much above 50%.

There is a reason why patent attorneys can practice nearly any type of law, but no attorney, other than an attorney who has passed the patent bar, can draft your patent application for you. There is a reason even the Patent Office strongly recommends you do not attempt to draft a patent application on your own. Apparently dying of gangrene takes a little luster off the thrill of removing your own appendix. Patents are the same. You might pump a little more money into it and survive a little longer, but as with a autoappendectomy, methinks you shan't try it a second time.

Brett Trout

How to Get a Patent Patent it Yourself USPTO

Developing Patent Attorney "Street Cred"

I just ran across an interesting string of comments over on Patently-O. The actual blog post covers the new United States Patent and Trademark Office Accelerated Examination procedure.

Much more interesting is the colloquy involving whether the name of the inventor or attorney makes a difference in whether the USPTO issues a final rejection of the patent claims. While neither should make a difference, it makes sense that an individual patent examiner might want to avoid locking horns with a patent attorney known for a long unbroken record of successful patent appeals. It is not that an examiner would grant allowance to an invalid patent. A more likely scenario would be that an examiner might determine spending an hour discussing the addition of patentable limitations to the claim might avoid days work of work on an appeal that drops the case right back in the examiner's lap.

In my case, I have enjoyed considerable success filing appeals. Rather than try to exploit this success, I do not want to develop a reputation for losing any appeals. Appealing only solid cases, and pursuing them with a zealous advocacy has proven to be quite beneficial. I would like to think that if you develop a reputation for only appealing legitimate cases, you end up forced to appeal fewer cases.

When searching for the Best Patent Lawyer in the World, the patent attorney's record of appeals before the Board of Patent Appeals and Interferences, might just be one of the best questions you could ask.

Brett Trout


patent examiner USPTO patent appeal patent attorney

Community Patent Review Project