Help me with my patent application

I get a lot of inquiries from potential clients asking for me to "review" the patent application they drafted themselves. They are often nonplused to hear that we cannot help them. After fifteen years of patent drafting it still takes me about 5-8 hours to draft a single sentence for the first claim of the patent application.

Just as I would caution someone not to trust an open heart surgeon willing to talk them through the procedure over the phone, I would shy away from any attorney willing to merely review a client's patent application. It is very likely a clement may indeed get a patent on their own (a little known hint is that the examiners at the Patent Office are supposed to assist inventors in writing acceptable claim language).

The problem is that the patent will be so narrow, that it will be essentially worthless. A patent claim (which defines the scope of protection) is a laundry list of the essential elements which combine to make the invention. If a competitor eliminates even one of these elements, they do not infringe. A client drafted claim, especially one written with the help of a patent examiner, will likely contain too many elements, making it very easy to circumvent.

Even after three years of law school and a year in practice, I could not write a good claim. I could write an allowable claim, but not a good claim. My mentors always had to chisel down my work to get to a claim that was not only allowable, but which actually had some value. It actually took them about twice as long to help me fix my application, as it would have been for them to have written it themselves.

For the same reason, it is easier for me to write a patent application from scratch. There are literally millions of inventions out there that never get patented because the time and money involved in the patent process is just too high. If there was a way for a patent attorney to "review" patents for a smaller fee, they would have so many clients they would be rich beyond their wildest dreams.

While there are ways to defray the costs over a longer period of time, I am not aware of any business savvy avenues to decrease the overall costs. If you have questions about the process, or about ways to delay certain costs, feel free to contact me at trout@bretttrout.com Good Luck!

Other Related Topics:
Patent Application, Patent Lawyer, Patent Attorney, USPTO, Patent Office

Blawg Seminar

Rush Nigut and I will be presenting a blawg (law blog) continuing legal education seminar this Fall in Des Moines, Iowa covering the nuts and bolts of getting your law firm's blog up and running. The seminar will include not only getting your blawg up and running quickly, but also tips on how to generate quality content to generate a base of avid readers. For more information, email me at trout@bretttrout.com or watch this site for more information on the date, place, curriculum and special blog reader pricing.

Other Related Topics:
Blawg, Seminar, Attorney, CLE, Iowa

Patent Bowl Final - Iowa 1 California 0

Patently O has blogged the results of the Regents of the University of California and the University of Iowa Research Foundation going head-to-head over a patents covering material that desensitizes people to allergens. Cali filed its patent application, Iowa filed its patent application and the Patent Office granted Iowa's patent. Cali amended its patent claims to make them similar to Iowa's and requested the Patent Office declare a patent interference.

A patent interference is a complex process of determining which inventor of two or more pending patent applications has the right to the invention. Although Cali filed first, the claims that made the patent applications similar enough to declare an interference were not filed at least one year before the Patent Office issued the Iowa patent. The Federal Circuit examined the case and ruled this month that Iowa is the winner. Now if we can just get the Regents to spend some of these mind-boggling attorney fees within the state.

Other Related Topics:
Patent, Iowa, Interference, Litigation, Patent Application

Blawg IT #1

Thanks for making Blawg IT number one on blawg.org under the Software and Information Technology catagories. Blawg IT also ranks #3 in the Patent and Trademark catagories. Thanks to all of my loyal readers!

Other Related Topics:
Patent, Trademark, Information Technology, Blawg, Software

How Good Is My Patent Attorney?

A patent is not simply a form your patent attorney fills out for you. It is a complex document detailing the scope of your invention. Too broad and the United States Patent and Trademark Office will not grant you a patent. Too narrow and your competitors can simply make a few changes to avoid the patent. Getting the mix just right is why patent attorneys with years of experience, like myself, can spend ten hours or more on a single sentence in the application.

The worst part is that it is difficult for most inventors to determine if the patent application is good or bad. Luckily, Phosita has posted a great video to help inventors determine if they are getting a good patent. Patent Attorney Katherine White guides you through each the step of reviewing your patent application. This is a must see for both new and seasoned inventors alike.


Brett Trout

Other Related Topics:
Patent, Patent Application, Patent Attorney, Lawyer

Why Are They Suing Me Over My Blog?

All clients involved in a lawsuit ask me about their odds of winning. This is a very difficult question to answer, especially in an information technology or intellectual property context. My typical answer is "Based upon my experience, if no new facts emerge, I would estimate our odds at __%" I then tell them that new facts will emerge and that the percentage I gave them will change with the facts. The more important question, one that clients never ask, is "Why are they suing me."

That is the question I ask the clients. I try to find out the cause of the lawsuit. I need to know what caused the plaintiff to spend money on a lawsuit they likely will not win, not the claimed legal underpinnings. Having a better case, in an of itself, will not generate a settlement. You have to determine the motivation for the suit and drive negotiations around that motivation.

I always dig deeper to determine the motivation. Are they mad about what you posted? Is the copyright lawsuit actually about you pointing out a mistake they made? Are they mad because they think your post is vindictive? Are they mad at you over how your use of their trademark ranks you in Google? Or are they made about what someone else wrote in your blog?

Once you determine the motivation, you are on your way to resolving the issue. As much as you want to win a lawsuit (and as much as I may need a new Jet-Ski), you do not want to win a lawsuit. You want to get out of a lawsuit as unscathed as possible. A Blawgsuit will definitely increase your Google ranking and page hits, but at a cost of $100,000 or more, there are cheaper ways to increase your exposure.

When it comes to Blawgsuits, the only way to win is not to play . . . unless of course you are a lawyer ;)

Brett Trout

Other Related Topics:
lawsuit, blog, blawgsuit, defamation, Attorney

Lawyers vs. IT Staff

Zane Safrit, congenial business pundit and convivial marketing guru turned me on Dennis Kennedy's insightful piece Bridging the Widening Communications Gap Between Lawyers and IT Departments. Ever wonder why two of the smartest teams in your company, the legal team and the information technology team, cannot communicate a single thought to each other? This article delves into the causes, cures and dire consequences to a communication gap left unchecked. Implementing these ideas will not only make your company run more smoothly, but will significantly increase employee job satisfaction and performance as well.

Other Related Topics:
Lawyer, Attorney, information technology, communication

Be Prepared . . . Oh, and Catch Some Criminals Too

The Chinese governemnt is constripting Boy Scouts, Girls Scouts and other youth organizations to track down copyright infringers online. While copyright infringers are indeed bad, this is clearly the wrong way to go about stopping them. The most important problem is the potential harm to the children. Online copyright infringers are savvier than most in terms of using the computer toward their own nefarious ends. First, I disagree with their use of these skills to steal copyrighted material. I would selfishly prefer the use of the skills toward those ends, rather than using them to coax information from my children or load malware on my home computer.

The second problem is that these copyright criminals are not self-policing themselves to steal only PG rated content. Much of the material they traffic is X-rated or worse, some of it criminal in and of itself, regardless of copyright. Third, most of these criminals will not be prosecuted. What are they teaching kids who turn in thousands of online infringers who never get prosecuted for their crimes. I would assume that at least one kid might decide that society does not see online copyright infringement as a societal evil. By using the skills gleaned from monitoring these criminals, it is not a stretch to assume more than one child might actually become an infringer.

There are other ways to stop these criminals. Regardless of how good getting kids mixed up with criminals may sound in theory, it is just not a good idea.

Other Related Topics:
Copyright, Infringement, Boy Scouts, Girl Scouts, China

Iowa Entrepreneur's Coalition

Have you been keeping tabs on Mike Sansone’s Iowa Biz Events website? If you have been, them you know the Iowa Entrepreneur's Coalition is meeting tonight at The Lift, 222 4th Street, Des Moines, Iowa at 5:00pm. Give them a call at 515.277.7966 for more info. With lots of entrepreneurs in the crowd, it will be a great opportunity to network and meet some new friends.

Other Related Topics:
entrepreneur, des moines, iowa , attorney, lawyer

Vishing Season

I won your auction for your Dell Inspiron 6000 and tried to pay you through PayPal but the payment would not go through. Please send me your PayPal information so I can pay you asap!

Most of us are wise to such email phishing scams. Not getting enough bites using old-school phish bait, new-school scammers are turning to vishing.
When scammers spoof a trusted email address, such as eBay or your bank to gain your private account information, the scam is called Phishing.The scammers typically state that someone has possibly gotten into your secure account. To confirm that your account is still safe, the scammer, posing as a trusted source, demands that you check your account. For your convenience, the scammer provides you with a link to the trusted website. The website associated with the link, however, is a link to a website the scammer mocked up to look like the trusted website. When you type your login information, the information goes right to the scammer who then uses the information to wreak havoc on your account.

Vishing is similar, but it involves your phone. Standard vishing involves an email directing you to call a phone number to discuss fraudulent activity on your account. Sometimes the scam initiates with a phone call, but people are generally more wary of someone who calls them, as opposed to someone they call themselves. In either case, the caller gives you a little publicly available information about your account and then requests that you provide some confidential information in return to confirm you are the owner of the account. Once the scammer has your private information, they can use it to make purchases on your credit card, drain your bank account or steal your identity.

A new wave of vishing scams are sweeping the country. Companies like telespoof offer the ability to spoof your phone number. Salesmen, debt collectors and private investigators all use this technique to speak to people who would not otherwise pick up the phone. More evil-minded individuals have, in some cases, used this technique to access the phone mail of others or redirect their calls. Most commonly, scammers use phone spoofing to extract confidential information from people. While very few people will give confidential information to someone who comes up on the caller ID as Caller Unknown many more would be inclined to give bank information to a call that came up on the caller ID as the name of the person’s bank.

To aid in the ruse, the scammer typically again offers you some commonly available information about your account. The scammer then mentions there is possibly a problem with your account, but states that before he/she can discuss the matter further, he/she needs you to provide a password, social security number, or other confidential information. Relying on the caller ID, you give the information to the scammer who then uses the information to convert your life savings to his/her ends.

Voice over IP (VOIP) systems are even more vulnerable to security intrusions and the types of viruses that affect email and internet browsers. VOIP is also more susceptible to interception and manipulation than standard landline calls. Scammers can also use VOIP directly. SPIT, or spam over internet telephony is just around the corner. SPIT involves transmitting millions of phone calls over the internet for little or no money. Security measures are being implemented to prevent these abuses, but the scammers have to stay one step ahead of the controls to survive.

Although there are no federal laws specifically addressing these activities, they generally constitute fraudulent practices under most state laws. While some state laws may provide a private cause of action, your best bet is to avoid the problem altogether. How do you protect yourself? Here are some simple steps to avoid falling prey to any type of phishing/vishing scams:

1) Never give any confidential information to anyone initiating the call. If you must provide them with confidential information, you initiate the call to a number you verified yourself, not the number they gave you.
2) Never visit a website identified in an email. If you must visit the website, type the uniform resource locator in yourself, do not rely on the website information they provide you. Scammers can make their website look like anything.
3) Never respond to unsolicited phone calls or emails. The more you speak to them, the more likely they are to call you again or sell your name to another scammer.

If you have been involved in a phishing/vishing scam, contact an experienced internet attorney to discuss your options. While it is unlikely you will be able to recover your money, you may be able to reduce the likelihood of a recurrence.

Other Related Topics:
vishing, phishing, scams , attorney, law

Is Lowering Your Google PageRank Defamatory?

Depends. Yesterday U.S. District Judge Jeremy Fogel for the Northern District in San Jose dismissed all nine claims in KinderStart’s lawsuit against Google for what Kinderstart claimed was a monopolistic practice denying KinderStart of its free speech rights and constituting predatory pricing. In the ruling, the Judge noted that the PageRank score was merely Google’s “opinion” and that an algorithmically generated PageRank would not likely be defamatory.

Judge Fogel left the door open, however, for KinderStart to refile new allegations, and opined that if KinderStart were able to demonstrate Google manually maniputed the PageRank that KinderStart could have a case. Based upon the ruling, KinderStart plans to filed amended claims prior to the September 29, 2006 court date.

Defamation Factors

Once a defamatory statement has been proven under one of the previous definitions of slander or libel, the victim must still prove the statement was both published and identified the victim. If the statement was made about a public figure, the victim must also prove malice. Similarly, if the victim was a private figure, but the subject matter of the allegedly defamatory statement was a matter of public concern, the victim would have to plead and prove at least negligence on the part of the alleged defamer.
(1) Publication. Publication simply means that the statement was understood by a third party in a communication that was not subject to one of the privileges discussed below. A single third party understanding the communication is sufficient to find liability. The statement, however, cannot have been relayed by the victim or the victim's agent, unless the victim was under a strong external compunction to relay the information.
(2) Identification. To qualify as defamation, the statement must relate to a corporation, a partnership or a living person (deceased individuals do not qualify). The identification of the victim can either be a direct or indirect identification, such as through an inference, a general description of the victim, or in a roman a clef, where it is clear the publication relates to the victim.
(3) Damages. Although damages are presumed if the statement is libel per se, it is still advantageous to prove damages, not only to maintain the option of changing the cause of action to a claim for libel per quod, but also to increase the potential award. Damages in a defamation case can be shown through a detailed description of the victim's prior reputation and the extent of the distribution of the defamatory statement. Associated damages may include loss of income, emotional distress, physical pain and suffering, medical bills for mental anguish, humiliation, and embarrassment.
(4) Malice. While proof of malice is not necessary in a case of libel per se, proof of malice is required for causes of action where the victim is a public figure. Additionally, malice must be shown if the victim is a private figure and the victim desires to obtain punitive damages. Actual malice typically means that the statement is made with knowledge that it is false, with reckless disregard for whether or not it is false.

The Law of Libel

Libel
Libel is a malicious publication, expressed either in printing or in writing, tending to injure the reputation of another person or expose him or her to public hatred, contempt or ridicule, or to injure them in the maintenance of a business. Like slander, libel falls into two categories: libel per se and libel per quod.
(1) Libel per se. This includes publications that are defamatory on their face. This is the broadest category of libel. Libel per se is presumed to be false, made with malice and damaging to the plaintiff unless rebutted by the defendant. Most libel actions are actions for libel per se.
(2) Libel per quod. Libel per quod is a publication capable of defamatory interpretation when considered in context with other extrinsic evidence. Unlike libel per se, however, libel per quod does not include the presumptions of malice, falsity and damage, and is, therefore, a much less desirable pleading from a plaintiff’s perspective. It is often prudent, however, to plead special damages in a libel per se case. If it is later determined that the defamatory publication was not libel on its face, without consideration of extrinsic evidence, failure to plead special damages could lead to dismissal of an otherwise viable cause of action for libel per quod.

Tomorrow . . . other factors

Online Defamation

While freedom of speech is a Constitutional right, defamation and the right of publicity are a hodge-podge of state and common laws. Although these laws differ from state to state, some general guidelines do emerge. Since the following is an amalgamation of various state laws, it would be wise to compare them against the defamation laws in your own state.

First, we will look at the laws of defamation in general. Second, we will examine how these laws apply in cyberspace.

Slander
Slander is a verbal defamatory statement, made with malice and causing damage to its intended victim. Slander is divided into two categories: slander per se and slander.
(1) Slander per se. Slander per se relates back to English common law in the 1500's, and is narrowly confined to specific subject matter. Proof of falsity, malice and damage are presumed if the slander is slander per se. Slander per se relates only to defamatory verbal statements in one of the following categories: Sexual misconduct, lack of business acumen, a communicable disease, or criminal conduct that involves either moral impropriety or has the potential to lead to imprisonment.
(2) Slander. If the verbal defamation does not fall into one of the preceding categories, but does include speech that could be reasonably interpreted to be defamatory on its face, slander can be proven if the plaintiff proves the statement was false, made with malice, and the plaintiff can prove special harm or pecuniary damage. The question of whether the statement could be interpreted as being defamatory is one of law. The actual determination of whether the statement in question was indeed understood as defamatory is a question of fact.

Tomorrow . . . The Law of Libel

Is the Term Google Generic?

Internetcases.com has posted an interesting blog on
Merriam Webster listing Google in their online dictionary. Normally the death knell for a trademark, Google apparently feels the listing "to use the Google search engine to obtain information about (as a person) on the World Wide Web" will not undermine the trademark status of the word. For more information on this developing situation, check out Internetcases.com or
Siliconvalley.com

The New Dictionary is Here!

Most trademark attorneys would be horrified to see their client's product listed in the dictionary. For some, more altruistic entities, however, the goal is to promote the use of a particular product by everyone. In an effort to prevent anyone from monopolizing a particular industry term, the entity rushes to secure the term's generic status. National Biodiesel Board is one of those altruistic entities and has been working to secure the generic status of the term "biodiesel". It now appears these efforts have been sucessful. The Merriam-Webster Online Dictionary now lists the following definition for biodiesel:

Function: noun
: a fuel that is similar to diesel fuel and is derived from usually vegetable sources (as soybean oil)

Congratulations National Biodiesel Board!

Why Aren't More Lawyers Blogging?

With sharp writing skills and a penchant for connecting with their clients, you would think every lawyer in the country would be blogging like crazy. Why then are less than 1% of lawyers blogging? Ari Kaplan provides some insights in his article Lawyer Bloggers: Fact-Fiction. Principle barriers to lawyer blogging appear to be lawyers' reticence to adopt new technology and their herd mentality. Another big reason is that most attorneys do not know how to blog. Rush Nigut and I have been keenly aware of these issues and are preparing a lawyer blogging "how-to" continuing legal education seminar for this fall. If you have an interest in blogging yourself, feel free to contact Brett Trout or Rush Nigut for more information, or just stay tuned to Blawg IT.

Iowa Senators Blazing the Blog Trail

Checking out Mike Sansone's blog, Converstations, I ran across an interesting tidbit of information. According to Mark Woodman of Inkblots Iowa is one of only two states in the country that have RSS feeds for both Senators. Check out Converstations and the feeds for Iowa's Chuck Grassley and Tom Harkin for more info.

What Do Patent Examiners Do All Day?

Ever wonder what the person examining your patent application at the United States Patent and Trademark Office does all day when they are not thinking up ingenious ways to deny your patent claims. Well now The Patent Examiner Blog provides insight into what Examiners do with their time. This interesting blog also gives you some insight as to how best you might approach your own examiner. Giving insight into what the job of patent examiner requires, The Patent Examiner Blog streamlines and shortens the patent application process for both you and your examiner. Do not speak to another patent examiner without taking a look at The Patent Examiner Blog.

Other Related Topics:
patent, des moines, iowa , attorney, lawyer

Copyright Registration For Blog Posts

You can file a copyright registration on the complete collections of all of your blogs/podcasts, but the registration will not cover any later added material. You have to file a new registration to cover the new material. Also, since "fair use" and damages analyses examine the proportion of the work taken, if you ever sue someone, you would probably rather have ten small registrations, than one big registration.

I usually recommend registration on a monthly, quarterly or annual basis, depending upon:

1)The value of the blog/podcast content;
2)The likelihood of infringement; and
3)How much you want to spend on copyright registrations.

For companies like Microsoft, that have employees blog for them, these "works for hire" may qualify for serial registration. As determining whether something is a "work for hire" is a complex legal issue, if you are interested in pursuing the serial registration, it is best to consult a copyright attorney to advise you not only with regard to registration, but as to initial ownership and transfer as well.

Brett Trout

Judge Deals SCO a Huge Blow in Linux Lawsuit

Magistrate Brooke Wells of the US District Court Central Division, District of Utah, has just dealt a humiliating blow to SCO’s $5 billion Dollar lawsuit against IBM. Judge Wells dismissed 182 of the 294 claims in SCO’s software misappropriation lawsuit. From the ruling, it appears the judge is fed up with SCO hiding the ball in terms of what particular code SCO claims has found its way into the Linux operating system through IBM’s alleged intellectual property misappropriation. Judge Wells likened SCO to a security guard telling a shoplifter to point out in the store catalog everything the shoplifter has taken. The Judge went on to note that even if SCO could prove that some code had been misappropriated, if the code was no longer in the Linux operating system, “damages may become nominal instead of in the billions.”

Brett Trout

Bootleg DVDs

What do you do when you buy DVD off eBay and it turns out to be an illegal copy? Well, what you do not do is resell it on eBay. I had a case where an individual did just that and found himself in the middle of a federal copyright infringement lawsuit 1000 miles from his home. He offered to pay $1000 to make the case go away, but the plaintiff refused. A $5.99 purchase on eBay turned into a nightmare costing over $5000.00.

If you receive an illegal bootleg disc, contact the seller to question why they sent you an illegal DVD. Sometimes the DVD is legitimate, but the original packaging was destroyed. If the seller refuses to provide a responsable justification for the appearance of the DVD, report the illegal activity to the Motion Picture Association of America.

In the future, watch out for new sellers, with low or negative feedback. Also, avoid DVDs that appear from the picture, or description to have Asian writing on the package. And most of all, never ever resell an illegal DVD online or anywhere. Feigning ignorance will not make a federal lawsuit go away.