Benefits of Getting a Patent

Benefits of Getting a Patent

By Frederic M. Douglas; douglaspatents.com

© 2012, Frederic M. Douglas, All Rights Reserved.

Frederic M. Douglas (fdouglas@cox.net) is a solo practitioner specializing in litigation involving intellectual property (patents, trademarks, trade secrets, copyright, and more).

Often, people are unsure as to whether to apply for a patent or to go “naked” into the marketplace. Consider this list of benefits to owning a patent and talk to a registered patent attorney if you have further questions.

(A)                         Sue Someone

   If you own a patent, you can sue people to stop the infringement and to recover money damages.

(B)                         Defend Yourself If You Are Sued

   Having your own patent does not mean that you are automatically shielded from someone suing you on another patent. Still, your own patent might serve as a basis for a countersuit. Also, your own patent might be useful to bargain for a settlement with the other side. Don’t underestimate the positive effect of having your own patent before a jury. You will be less likely of looking like a rogue pirate stealing someone’s inventions, but more like an inventor contributing to the technology.

(C)                         Corporate Value

   If your company will offer stock to the public, such as in an Initial Public Offering (IPO), ownership of intellectual property, such as patents, can enhance perceived value. If another company seeks a merger, buyout, or other transaction, owning patents can be rather valuable.

(D)                         Cross License

   Someone else may have patent that you infringe. Those same persons may be infringing your patents. Make a deal to let them use your patents and they let you use their patents. The larger your patent portfolio, the better price you should be able to negotiate.

(E)             Joint Venture

  When entering into a joint venture, respective patents can help define the technology so that all parties know the lay of the land.

 

 

 

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Tasks for a Company Patent Committee

Tasks for a Company Patent Committee

By Frederic M. Douglas; freddouglas.wordpress.com

© 2012, Frederic M. Douglas, All Rights Reserved.

Frederic M. Douglas (fdouglas@cox.net) is a solo practitioner specializing in litigation involving intellectual property (patents, trademarks, trade secrets, copyright, and more).

Businesses of all sizes should consider organizing a patent committee. Such a committee helps to jointly makes decisions about the company’s patent applications and issued patents. Also, participation in the patent committee can serve to educate participants regarding patents in general.

(A)   Invention Disclosure Forms

   The company’s patent committee may choose to review invention disclosure forms to decide whether an invention should be scheduled for a patentability search and/or a patent application.

(B)   Prioritize Inventions

   The patent committee may set and implement company policy on which inventions should receive the most attention and resources.

(C)   Keeping an eye on the competition

   The patent committee can adjust patenting decisions to account for meeting competitor activities. Claims may be shifted and continuations may be undertaken to enhance the company’s competitive position.

(D)   Encourage Patenting

   Exposure to the company’s patent committee can naturally encourage employees to participate more completely in applying for patent applications and furthering the company’s patenting activities.

(E)   Patents 101

   Company personnel will become educated as to patent I concerns, such as patentability criteria, trade secret alternatives to patenting, prior art concerns, competitor patent publications, and other aspects.

 

 

 

 

 

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Three Types of Patents

Three Types of Patents

By Frederic M. Douglas; freddouglas.wordpress.com

© 2012, Frederic M. Douglas, All Rights Reserved.

Frederic M. Douglas (fdouglas@cox.net) is a solo practitioner specializing in litigation involving intellectual property (patents, trademarks, trade secrets, copyright, and more).

 

Often, novice inventors are confused as to the various types of patents. This list is a good starting basis for understanding the various types of patents.

(1)    Utility Patent

This is what most people think of when hearing the word “patent.” A utility patent involves something “useful” such as inventions in the electrical, chemical, mechanical, software, pharmaceutical, business method, and other fields. The term for a utility patent is 20 years after the patent’s application date.

 

(2)    Design Patent

The design patent protects the ornamental aspects of an item. Essentially the design covers how the thing looks. The term for a design patent is 14 years after the issue date.

 

(3)    Plant Patent

As the term plainly states, a plant patent covers a plant. More specifically, a plant patent protects asexually reproduced new plant varieties. The term for a plant patent is 20 years from the application date.

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Tips for Patentability Searching

Tips for Patentability Searching

By Frederic M. Douglas

© 2012, Frederic M. Douglas, All Rights Reserved.

Persons new to filing patent applications often have basic questions regarding patent searches. Should an inventor do a patent search? Is a patent search required? Does it matter when a patent search is done? What happens when nothing is found? What should be done when the inventor finds out that the invention is not patentable?

Patent searches are optional. There is no requirement in the U.S. that an inventor perform a patentability search before filing a patent application. Some rookie inventors are confused by the requirement that IF a search is done and relevant prior art is discovered, that relevant prior art should usually be disclosed to the patent examiner or the inventor may be accused of fraud. Note that still, a prior art search is not required, just passing on known relevant prior art from an optional search is required.

Some inventors take the position that they do not want a search so that they don’t find out any bad news. If they find out no bad news, there is nothing withheld from the patent office, as the inventor never had the bad news to reveal. Also, waiting for patent search results and later making needed invention changes, can delay a race to the patent office. Certainly, when the U.S. Patent Office switches to a first-to-file system on March 16, 2013, promptly filing patent applications will become more important.

However, the patent office does do its own patentability searches. So, at some point the inventor may find out the bad news that prior art bars getting a patent issued. By the time that the patent examiner conveys the bad news, the inventor has spent a considerable amount to prepare and file the patent application, waited several years for the first notice from the examiner, and invested funds on manufacturing and marketing the invention with an expectation of exclusivity. By the time that the inventor finds out that no patent will issue, the original patent application issues, telling the inventor’s competitors how to make and use the invention. Once the competitor finds out that no patent will issue, then they can exploit the technology with impunity without paying one dime.

Certainly, an inventor should consider the patentability search as similar to having a mechanic review a used car before purchase. While the mechanic will not guarantee that the car will not break down, you will surely find out if there are any clear mechanical problems before you commit to buying the car, registering it, and maintaining it throughout its lifetime. In the same way, an inventor should want to know if there are any clear defects in the idea of patenting an invention before committing to filing a patent application (registering) and paying thousands of dollars in maintenance fees to maintain the life of the issued patent.

Just like the reviewing mechanic cannot guarantee that the car will last forever, a patent searcher cannot guarantee that no prior art exists that could block getting a patent. The mechanic looks for bad news that can be discovered without taking every bolt and washer apart on the car. The patent searcher can look for prior art, in the searcher’s native language, on computer databases throughout the world. However, the patent searcher is not likely to be aware of a single copy of a Swahili-language doctoral thesis sitting on a library shelf in Tajikistan. Thus, care should be taken to have a very good searcher involved with an understanding that searching must reach as far as feasible but at some point must reach a limit.

Rookie inventors sometimes do their own patent search and claim that they found “nothing like it” regarding their invention. The reality that they are missing is that their search was not competent. While there is no way to find every single piece of prior art throughout the universe, there also is no way to search adequately and not find at least some things that are related to the invention.

Another issue for novice inventors is finding barring prior art after performing an adequate search before filing a patent application. The fact is that a patent searcher can only find what is publicly available. If a search is performed on February 1st and the patent application is filed on April 30th, the patent office examiner may come up with prior art that only published on February 2nd.

Unfortunately, it is rather common that a patentability search comes up with a ton of prior art such that there is no way to get a patent for the invention. The good news is that the bad news is discovered before spending time and money on preparing and filing the patent invention that would have been rejected promptly. The take home message for the inventor losing out on a patent search is that the inventor now has a thorough review of the prior art, which should be helpful to learn further aspects that can be incorporated into improving the invention.  The inventor can now brainstorm with a focus on significant novel aspects of the invention above the prior art.

After further consideration of the unforeseen aspects of the prior art, the inventor should focus on noting what aspects are missing from the prior art so that the invention can contain several inventive steps above the general state of the prior art. To put it more bluntly, the inventor needs to get back to the drawing board and put more meat onto the present skeleton. The discovered pieces of prior art will help the inventor make progress.

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Tips on patent subject matter eligibility for computer readable media

Tips on patent subject matter eligibility for computer readable media

© 2012 Frederic M. Douglas. All Rights Reserved.

               Many patent applications have been filed aimed at protecting inventions involving computers. Often the patent claims describe using disc drives or other media for storing data. A common name for data storage devices (such as hard disks, floppy disks, USB drive, DVD, CD, media cards,  and so on) has been “computer readable media.”

This term seems broad enough to cover every type of data storage device. However, one thing to keep in mind in writing patent claims is that one wants the claim scope to be broad enough to cover everything under the sun while being narrow enough to not be already present in the prior art.

For “computer readable media” another concern is not just prior art, but patentability under the law. The United States Patent and Trademark Office (USPTO) interprets the term, “computer readable media” more broadly than just data storage devices. The USPTO interprets “computer readable media” to include signals in addition to data storage devices. The USPTO’s understanding of the “ordinary and customary meaning of ‘computer readable media’” to include non-transitory tangible media and transitory propagating signals.

 

 

The USPTO considers data storage devices to be “non-transitory tangible media” which is only one part of “computer readable media.” Note that signals, such as radio signals, microwave signals, and such can carry data that is “computer readable.”

 

 

Thus, if the patent specification does not exclude signals from the term, “computer readable media,” then the USPTO claim is deemed not patentable as transitory embodiments are not patentable under 35 U.S.C. Section 101. See In re Nuijiten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007). Often, such a problem may be repaired by an amendment that does not add new matter. Similar problems happen for claims to “multi-cellular organisms” as that term includes human beings, which are not (yet) patentable.

Frederic M. Douglas

fdouglas@cox.net

freddouglas.wordpress.com

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Who’s an Inventor for a Patent?

When filing a patent application, the applicant must state correctly who are the inventors of the invention(s). If the patent issues with the wrong inventor listed, the patent may end up being invalid or unenforceable. Be sure to not omit one of the inventors or to add someone to the patent application that is not actually an inventor.

What is a patent?

In the U.S., a patent is an intangible form of property allowing the patent owner to stop others from practicing the invention.

What is practicing the invention?

Practicing the invention means making, using, selling, marketing, or importing the invention into the United States.

So, does the patent give the patent owner the right to practice the invention?

No. This is one of the most common misconceptions about patents. Owning a patent means that you have permission by the government to sue someone else for practicing your invention without your permission (“infringing your patent claims”).

So who is an inventor?

An inventor is one that thinks up an invention (“conception”) and figures out how to make the invention and how to make it work (“reduction to practice”). When you have more than one inventor, each inventor should have made an independent, conceptual contribution to an invention.

What types of inventions are patentable?

The invention must be a new and useful process, machine, or composition of matter that is not obvious. There are some exceptions for certain types of inventions, but for the general nature of this discussion, the above criteria provide a good starting place for understanding patentability.

What is “conception?

Conception can be defined as forming in the mind a definite and permanent idea of the complete and operative invention as it later will be applied in practice.

How do I know when I have an invention?

When you can describe the invention so that another person of ordinary skill in the relevant field can build or use the invention without too much research or experimentation.

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A Star In The Night

Photo by Dylan Edwards

When I think of February, I think of Valentine’s Day, Ground Hog Day, and Presidents’ Day. I also remember that Black History Month falls in February, the shortest month of the year. This makes me remember a joke I heard on the WB network. “There they go again, always trying to keep the Black man down, giving him the shortest month of the year.” Back in the day when they first started Black History Month, I learned in school about famous Black heroes, Martin Luther King, Sojourner Truth, Benjamin Banneker, and others. We remember these leaders for the examples they set, the adversity they faced with dignity, and for the effects they had on others. In my personal list, I place the name of my grandmother, Philee Douglas, as a great leader. She’s not famous. However, she has left a profound effect on my life, through her example.

She was born over 100 years ago, in Mississippi. As many Blacks did then and now, her parents decided to be creative in naming her. They wanted to use the word “love.” The Greek word, “Philo” means love, but the last letter makes the word seem masculine. So they played with the word a little, and came up with “Philee.” In Mississippi, my grandma married Charles Douglas. They had six children, the eldest being my father.

My grandma took the children and took off for California. Back then Mississippi was the poorest state in the Union. It’s the same way now. People, Black and White, have continually moved out of Mississippi, looking to go anywhere, so long as it wasn’t Mississippi. Besides being a poor state, I don’t think that I am going out on a limb when I assume that Blacks in Mississippi weren’t living the good life, especially not during the Great Depression. My grandma ended up in a place now called “South Central L.A.”

Without fail, when you entered her house, there would be the smell of something cooking in the kitchen. I didn’t think she ever completely turned off the stove. She always pushed food our way. I can still remember her giving me the juiciest turkey I ever tasted. She loved jazz music. When I would visit her, her records would play in the background. I talked a lot with my grandma. She would always have an opinion on something. When I would tell her about something I was doing in school, she would often smile and respond, “Sho’ Nuff?” You see, my grandma spoke what some people call “Ebonics.”

Though she talked this way, she didn’t prescribe Ebonics for her children or grandchildren. She came from Mississippi, where undereducation was normal, more so for students of “Separate But Equal” schools. Though she never hit us, we knew that if anyone ever spoke Ebonics in her house, they would get slapped upside the head. There was no messing around. You acted properly around grandma. My grandma would tell me to go to school, and work hard. She didn’t go to school, but she worked hard. During the Great Depression, she worked as a maid. This was the career track for a Black single mother of six, with no education. Wanting the best for her children, she sent them to Catholic School. Though she had to shop at thrift stores, her kids all owned suits. After she reached an age where she could get Social Security, she continued to work as a maid. She told me that the Social Security check “Ain’t enough.”

She would come home exhausted and frustrated. She would tell me, “I’s tired a cleaning them White people’s floors.” Grandma said that when she would prepare to clean the floors, the woman of the house would say, “We lost our mop. But I happen to have this brush and some kneepads you can use.” Grandma told her she had better find that mop, because she wasn’t going to scrub the floor by hand. She would tell me about the fine furniture they had. How “That Lady’s smart! Gots plastic on da couch, and still makes da chillen sit on da rug.” Then she’d look at me and say, “Freddie Jr., youse sittin’ on my couch, sit up straight, don’t you be actin’ lazy.” As a teenager, I got into a phase that some adolescents get into, acting weird, off to themselves, not paying attention to anyone else. I would walk right by Grandma in the morning without saying “Good Morning” or even “Hi.” Grandma didn’t go for that. She made you straighten up and fly right. She made sure you learned courtesy around her.

Once, my brother and I were sitting on the couch, looking bored. Grandma said, “Get up and go to church.” We said that we didn’t know where a church was. She gave us directions, gave us money for the offering plate and sent us on our way. We could have easily not have gone and act like we did go to church. Though we didn’t want to go, especially not to a Catholic Church, we had too much respect for our grandma to lie to her. We walked to the church. After arriving back to Grandma’s house, she explained to us that when she came to California, she wasn’t a Catholic. However, she stuck with the Catholic Church, “Cause they’s da only ones dat helped me when I came to California.” She went through some tough times to get a better life for her children.

I am reminded about my grandma frequently. Every time someone comes on TV, saying, “I live in the Hood. I’m Black. The reality of life on the streets, in the ghetto, is violence. I don’t know any other way. I’m a victim of society.” I also am reminded of her when I see people promoting Ebonics. Some people think this is what being Black is all about. They call you an “Oreo” if you don’t walk like a chicken and talk like Buckwheat. These aren’t things of pride. This is not a part of Black culture. It is not a part of anyone’s culture.

This month, we celebrate our Black heroes. You will never hear a great Black hero use their environment for an excuse for lack of respect. No Black hero speaks Ebonics. Martin Luther King, Jr. didn’t say, “I Have An Excuse.” Nor did he say, “I Has Me A Dream.” Frederick Douglass, Malcolm X, Barack Obama, Barbara Jordan. I could go on. You never heard Ebonics from them. How about Louis Farrakhan? He doesn’t speak Ebonics.

I think of what my grandma would say. I remember her example. How she wouldn’t let me think I can slack off. Responsibility, hard work, respect for others, self-respect, get an education. Grandma Douglas had nothing going for her, but herself. She could have easily given up. Black, single mother of six, undereducated, living in South Central. She lived in the ghetto, but the ghetto didn’t live in her.

 © Frederic M. Douglas 1998, 2011.  All Rights Reserved.

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