I encourage many of my inventors to do their own patent searches, especially when they are developing new ideas. There is nobody more qualified to perform a search than the inventor who knows their idea and can benefit from seeing other people’s versions of their idea.
Tag: Patents in Business
One Example of When Taking a License Makes Sense
Licensing technology from other sources makes sense in several situations, even when the licensee does not practice the technology.
Remember that patents are merely business tools, and they are useful when they give your business an advantage over a competitor. Taking a license, even when your company may not currently infringe, may be appropriate in some cases.
Licensing technology from other sources makes sense in several situations, even when the licensee does not practice the technology.
Remember that patents are merely business tools, and they are useful when they give your business an advantage over a competitor. Taking a license, even when your company may not currently infringe, may be appropriate in some cases.
Patent Strategies in Light of the New Rules
The latest rules from the US Patent and Trademark Office are quite sweeping. The new rules have several facets. On one hand, the PTO is limiting the number of continuation and continuation in part applications, as well as requests for continued examination (RCE). On the other hand, the PTO is limiting the number of claims you can have by forcing the applicant to file an Examination Support Document if you exceed the claims.
The latest rules from the US Patent and Trademark Office are quite sweeping. The new rules have several facets. On one hand, the PTO is limiting the number of continuation and continuation in part applications, as well as requests for continued examination (RCE). On the other hand, the PTO is limiting the number of claims you can have by forcing the applicant to file an Examination Support Document if you exceed the claims.
Would the Outcome of Microsoft v. ATT Been Different if a Beauregard Claim Had Been Used?
There are many reviewers and pundits who have discussed the recent Supreme Court case of Microsoft v. ATT, which dealt with a patent that Microsoft admitted to contributory infringement. This meant that Microsoft’s software enabled someone else to infringe, but that Microsoft itself did not directly infringe. The question was whether or not Microsoft was to be liable for infringement outside the US because Microsoft sent master copies of infringing software overseas for copying and foreign distribution and whether that action amounted to infringement.
The court decided that Microsoft was not liable because Microsoft did not export the copies of Windows installed on the foreign made computers. Instead, Microsoft supplied a master from which copies were made.
This is a very, very fine distinction.
There are many reviewers and pundits who have discussed the recent Supreme Court case of Microsoft v. ATT, which dealt with a patent that Microsoft admitted to contributory infringement. This meant that Microsoft’s software enabled someone else to infringe, but that Microsoft itself did not directly infringe. The question was whether or not Microsoft was to be liable for infringement outside the US because Microsoft sent master copies of infringing software overseas for copying and foreign distribution and whether that action amounted to infringement.
The court decided that Microsoft was not liable because Microsoft did not export the copies of Windows installed on the foreign made computers. Instead, Microsoft supplied a master from which copies were made.
This is a very, very fine distinction.
Patent Reward Systems – It's Not About The Money
Patent reward systems are put in place by many companies to give employees an incentive to disclose their inventions and go through the patent process. Bosses like the idea because it gives them a way to recognize employees, especially those creative people who toil in obscurity in a lab. Employees like it because it is a true recognition for their contribution to the company. And they get paid.
A typical program may pay anywhere from nothing to $500 for merely submitting an invention disclosure, up to $1000 when an invention is submitted to the Patent Office as a patent application, and anywhere from $1000 to $5000 when the patent issues.
I have been on both sides of these programs. As an inventor and engineer at several companies, I have written many, many invention disclosures, some of which have turned into patents. As a patent attorney, I work with some inventors at larger companies who have submitted the disclosures. I bring a different perspective to this discussion.
Patent reward systems are put in place by many companies to give employees an incentive to disclose their inventions and go through the patent process. Bosses like the idea because it gives them a way to recognize employees, especially those creative people who toil in obscurity in a lab. Employees like it because it is a true recognition for their contribution to the company. And they get paid.
A typical program may pay anywhere from nothing to $500 for merely submitting an invention disclosure, up to $1000 when an invention is submitted to the Patent Office as a patent application, and anywhere from $1000 to $5000 when the patent issues.
I have been on both sides of these programs. As an inventor and engineer at several companies, I have written many, many invention disclosures, some of which have turned into patents. As a patent attorney, I work with some inventors at larger companies who have submitted the disclosures. I bring a different perspective to this discussion.
Building a Patent Thicket
One of my clients likes to describe patents as hyenas. A lone hyena can be easily frightened away, but a pack of hyenas can be very aggressive.
With one patent, a competitor or potential infringer has one thing to analyze, dissect, and find a way around. It may cost a little bit of money to analyze, but it is certainly a doable proposition.
With a dozen patents, the competitor’s workload is substantially increased to the point (hopefully) that it is cost prohibitive for the competitor to find work-arounds for every one of the dozen patents.
One of my clients likes to describe patents as hyenas. A lone hyena can be easily frightened away, but a pack of hyenas can be very aggressive.
With one patent, a competitor or potential infringer has one thing to analyze, dissect, and find a way around. It may cost a little bit of money to analyze, but it is certainly a doable proposition.
With a dozen patents, the competitor’s workload is substantially increased to the point (hopefully) that it is cost prohibitive for the competitor to find work-arounds for every one of the dozen patents.
Writing Your Own Patent
Inventors sometimes file their own patents. Often, I consult with inventors who are considering writing their own patents or those who have already done so. In general, these pro se patentees are looking to save some very valuable cash and are willing to invest their time and effort into learning how to write and file a patent.
Inventors sometimes file their own patents. Often, I consult with inventors who are considering writing their own patents or those who have already done so. In general, these pro se patentees are looking to save some very valuable cash and are willing to invest their time and effort into learning how to write and file a patent.
Why I Will Not Be Filing Under the Accelerated Examination Program of the USPTO
The USPTO has a new Accelerated Examination Program that promises an issued patent within 12 months. This program has a couple essential elements. The first element is that the applicant must perform a thorough search prior to applying for the patent. The second element is that the applicant can only have three independent claims.
The USPTO has a new Accelerated Examination Program that promises an issued patent within 12 months. This program has a couple essential elements. The first element is that the applicant must perform a thorough search prior to applying for the patent. The second element is that the applicant can only have three independent claims.
Designing a Patent Strategy
To a very large extent, a patent attorney can craft a strategy for a patent that aligns with the business goals of a client. From my experience, very few patent attorneys/agents bother with such things, but it can make a very big difference, especially in some business situations.
To a very large extent, a patent attorney can craft a strategy for a patent that aligns with the business goals of a client. From my experience, very few patent attorneys/agents bother with such things, but it can make a very big difference, especially in some business situations.
Claiming Strategy for a Patent in Real Business Applications
One of my clients was complaining about how difficult and expensive their last patent was when it was handled by a big firm. Sadly, this is not an uncommon story, where the inventor had to suffer through several revisions of the initial application because it was technically incorrect and was missing many essential elements of the invention.
The problem was exacerbated when the response to an Office action was handed off to someone unfamiliar with the case, and the inventor essentially did all the background work to present their case to the Examiner. Oh, and by the way, over $180,000 was spent prosecuting the patent. (The Big Firm billed by the hour, too.)
Not only is this story one of utter incompetence, clearly excessive billing, but it is one of poor claiming strategy.
One of my clients was complaining about how difficult and expensive their last patent was when it was handled by a big firm. Sadly, this is not an uncommon story, where the inventor had to suffer through several revisions of the initial application because it was technically incorrect and was missing many essential elements of the invention.
The problem was exacerbated when the response to an Office action was handed off to someone unfamiliar with the case, and the inventor essentially did all the background work to present their case to the Examiner. Oh, and by the way, over $180,000 was spent prosecuting the patent. (The Big Firm billed by the hour, too.)
Not only is this story one of utter incompetence, clearly excessive billing, but it is one of poor claiming strategy.
