Patents – Page 2 – Intellectual Property Perspectives

Governmental Sources for Inventor Prototyping and Manufacturing Assistance

Many small businesses need help with design and development of inventions at various stages. A startup may want a mockup or virtual prototype in order to pitch for funding. Later, the business may need a working prototype for further proof of concept. Then that prototype may need to be further refined for efficient manufacture. Thus a business may need expertise in moving forward from the concept stage to a tangible product. As I have stated before, be extremely cautious in using inventor assistance companies for these services. That being said, there are some governmental entities that are available for free or at reduced cost.

One great resource for the proof of concept, prototype assistance, and working through some of the early stage engineering issues is the Space Alliance Technology Outreach Program (SATOP). SATOP is an alliance of scientists, engineers, and other technical professionals who provide free technical assistance in machine design, process engineering, material selection, and numerous other technologies. Note: SATOP does not work on software or information technology projects. SATOP offers up to 40 hours of hours of free technical assistance, with a goal a providing a solution within three months. A small business submits a request for technical assistance and the program checks its subject matter expertise and availability before accepting the project. SATOP has centers in Florida, New Mexico, New York, and Texas.

There are other similar programs around the country, although their focus, cost, and scope of assistance may vary. Some programs provide only with the original prototype and others focus on specific industries.. Frequently, the programs are associated with a university or a Small Business Development Center. The University of Pittsburgh Manufacturing Assistance Center can assist with a wide range of issues from conception to the manufacturing process. It can help in creating 2D or 3D CAD models, machining, fabrication, and pilot production. The University of Maine College of Engineering also offers a program available to businesses, entrepreneurs, and researchers. The University of Utah will soon open the Energy Innovation Commercialization Center offering services in the clean and renewable energy.

Other than a search engine, great starting points for locating these program are your local Small Business Development Center counselors or counselors at the entrepreneurship or engineering department of your local university. The programs do not typically retain ownership of the intellectual property, thus you would maintain control of the patents and proprietary technology.

Four Sources for Possible Patent Licensees or Assignees

Frequently inventors consider licensing or sale of their patent application or issued patent as the means for monetizing their intellectual property. One challenging step is to determine who might be interested in licensing or purchasing the patent rights. Determining potential licensees or assignees is a key step in developing the business plan.

1. Search Engines

This is probably no surprise, but the search strategy needs to differ from the typical internet search. The goal is to locate websites of companies that have licensed patents, news releases announcing licensing of patents, industry analyses of patent transfers, and the like. Be prepared to view more than just the first page of results.

Vary your search terms – You can start with a narrow search based on the features of the patent. For a fishing lure, the first search might be “patent license floating plastic fishing lure bass”. You can then alter the search to include different features and/or broaden the terms of your search to locate different results. Based on the above search, the next searches might be “patent pending clear plastic fishing lure” or “patented top fishing lures”.
Vary your search sources – Remember that a lot of the discussion of patent licensing and intellectual property sales is not on the general web. The discussion of companies’ licensing and technology transfers may be part of an article in a business journal. Instead of searching just the “web” option of the search engine, search other segments such as “news”, “finance”, or “directories”.
Vary your search engine – Even though Google is the preferred search engine for general use, other search engines can aid your search for licensees and assignees. There are industry specific search engines, thus you may look for an automotive electronics focused search engine if the patent application is in that industry (if it makes you feel better, you can search Google for the other search engines). Also there are search engines which group or “cluster” results. Thus a search with terms similar to the above fishing lure on a clustering search engine such as Yippy may present results categorized by “Business”, “Suppliers, Manufacturers”, or other relevant groups.

2. Trade shows

Trade shows are where a lot of suppliers and purchasers come together to buy, sell, introduce, and negotiate new technologies. Vendors, purchasers, sponsors, and suppliers listed on the trade show website may also be interested in acquiring rights to other technologies in the trade.

3. Thomasnet

ThomasNet is a comprehensive listing of more than 600,000 manufacturers, distributors, and services providers in more than 67,000 categories ranging from automotive equipment to chemical coatings. Some business in the relevant industries may actively acquire new technology.

4. United States Patent & Trademark Office

The United States Patent & Trademark Office (USPTO) website lists owners of patents and patent applications. One can search the patents records or search the patent assignments to look for owners of patent rights in the selected technologies. Owners of patent rights in the fields related to the patent may be interested in acquiring rights in related technologies from third parties.

Of course locating prospective licensees or assignees is only an early step in patent licensing or assignment. The inventor should still further research and qualify the company before proceeding. And the inventor should understand the value of a license or assignment of the invention the other party.

Post Bilski Commentary For Software Startups

By now you’ve probably read about the “Bilski” decision recently released by the Supreme Court. Most of the coverage has been more focused on the policy aspects of the decision. This post focuses on where a software startup stands from a patent prosecution perspective in light of the decision.

Stepping back for a moment, I’d like to clarify the terms business method and software. In the coverage of the decision, the terms business method patent and software patent have sometimes been used interchangeably. The software startup should have a deeper understanding, as the Supreme Court states a holding for business method patentability but not directly for software patentability. The term business method usually refers to processes for doing business where the process does not require any tangible elements. An example might be a process for administering and accounting for mutual funds. Software, as popularly understood, is generally a set of instructions to be executed by a computer. In the case where the software of a patent application implements a business method, that software might be claimed in the same manner as a business method ie without any tangible elements. In other cases, the subject matter of the software patent application may lead to claiming the software in a different manner. For example, in software that processes radio waves reflected from a surface and generates images, the tangible components, such as a processor, may be claimed. Thus some “software” may fall directly within the scope of the recent decision and some may not.

In the Bilski decision, the Supreme Court rejected the exclusive use of the more restrictive “machine or transformation” test for business method patent applications, which essentially required tangible elements in the claims. It stated that machine or transformation test may be useful, but other tests may also determine whether the patent application contains eligible subject matter. Unfortunately, the Court did not provide any other specific tests, leaving it to future courts to do so.

It should be stated that the Court expressly refused to rule on the patentability of software, stating “[it] is important to emphasize that the Court today is not commenting on the patentability of any particular invention, let alone holding that any of the above-mentioned technologies from the Information Age should or should not receive patent protection.” However, the Court also quoted an older court decision saying to “freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology[,] … is not our purpose.” I believe a fair inference from this and prior decisions is that software will remain largely patentable. Thus the software startup seeking patent protection should view the decision favorably.

Patents – An Overview of the Application Process

Frequently, the creator of an innovative new product or process may seek patent rights in order to exclude others from practicing the new product or process. The typical steps involved in the process of applying for a patent include:

performing a search;
preparing and filing a patent application; and
responding to rejections raised by the patent office.

A search is not required by law before submitting a patent application, but it may be prudent to do so. The search can help determine whether a patent application should be filed. Moreover, if a patent application is filed, locating prior and related literature can help the inventor and patent attorney focus on the key features of the invention. The search sources can vary, but may include a general internet search, United States patent records, European patent records, Japanese patent records, commercial patent databases, industry databases, and trade journals.

After the search report is reviewed and discussed, a decision may be made to proceed with a patent application. Additional details for the invention may then be gathered. The inventor and patent attorney will work together to collection sufficient data in order to illustrate the invention, describe how to make and use the invention, and disclose the best manner of practicing the invention. From all of the disclosure, drawings, a specification, and claims will be included in a patent application filed with the patent office.

In time, about one to three years after filing, the patent office will review the submitted patent application for compliance with patent law. The patent office will perform its own patent search, as well as review the application for other compliance issues. Common issues raised by the patent offices include:

Ineligible subject matter – An invention’s subject matter must be products or processes made by man. Impermissible subject matter includes laws of nature and abstract ideas. Recent controversial and developing categories of subject matter include business method patents (in which some software may fall) and “gene” patents.
Lack of novelty – An invention must not currently exist in order to be patentable. In other words, it must not already be publicly known. If a reference document contains all of the features of the claimed invention, the invention lacks novelty and the patent office will issue an anticipation rejection.
Obviousness – Not only must the invention be novel, it also must be nonobvious. That is to say that the invention should not be obvious to a person having ordinary skill in the field of technology of the patent application reviewing reasonably related references. If it is obvious, the patent office will reject the patent application.

The patent applicant and attorney need to address the rejections raised by the patent examiner. If successful in addressing those rejections, a patent will issue and the inventor may then exclude others from practicing the new product or process.

Small Business Innovative Research Funding for Your Patentable Concept

Funding is a concern for many startups and small business creating new products. The Small Business Innovation Research (SBIR) is a congressionally authorized, federal program that may be an option for funding for some of those businesses operating in select fields of technology. Two of the key driving policies of the program are to help the government agencies solve their problems and to bring innovative solutions to the public. Even though there is no man in a question-mark covered suit marketing the SBIR program, it is real and money has been and is currently being awarded. To be sure, the program is only available in select situations and is a difficult process. That being said, eligibility and successfully completing the process brings two key advantages:

Funding – The recipient can receive from about $100k in early phases to slightly less than $1,000,000 throughout the phases of a project.
Intellectual property – The recipient maintains substantial ownership of the involved intellectual property.

The program primarily operates at the agency level. An agency may have a very specific problem that needs to be solved or may be open to solutions to more broad problems. The range of problems is broad as some of the participating agencies include the Department of Agriculture, Department of Health and Human Services, Department of Defense, Department of Education, Department of Energy, Department of Homeland Security, Department of Transportation, and NASA. Those agencies create a diverse technological demand, which makes the SBIR program worth exploring for a lot of innovators. The titles of some prior awarded projects under the program indicate research across the spectrum and include:

Color Sorting of Post-Consumer Glass and Plastic Containers to Improve Their Recyclability
Improving Business-Consumer Commerce Via Mobile Social Networking Services
Household Hazardous Substances Data System
Hearing Aid Connectivity to Consumer Electronics
Device For Aiding Memory Dysfunction in Elderly
A Pollution Free Aerosol Dispenser

The first major step in seeking SBIR funding involves identifying the timing and solicitation topics of the various agencies. The agencies themselves do not post all SBIR solicitations in one location. They are typically posted on the individual agencies’ websites. However, there are some sites to aid your cross-agency search. The Zyn website allows robust searching of SBIR solicitation data.

The next major step involves registering and completing a detailed application in response to a solicitation. The instructions vary by agency and are complicated. The instructions must be followed with diligence or the application may be rejected without substantial review. In fact, about half of applications are rejected because of noncompliance with the rules. The application will take significant time to complete, as it involves detailed project planning, staff information, commercialization strategies, cost information, and other data requirements.

The Small Business Innovation Research program is arduous, but can be worth the reward and should be explored as an option for funding your innovations!

Provisional Patent Applications Must Have Sufficient Technical Description

Frequently I hear the misstatement that one can just submit some notes and pictures of one’s product in a provisional patent application. People think this is so because the application is “informal” and will not be examined by the patent office. Unfortunately, I have seen multiple situations where an entrepreneur had an inadequate disclosure because “Someone said I could just submit my notes and sketches and I’m covered.” WRONG! Even though provisional patent applications are not directly examined by the patent office, the provisional should be thought of as a “patent-lite” and prepared diligently.

The goals of a provisional patent application include securing a filing date, which is a critical date in the process. Sufficient technical disclosure should include enough detail to disclose any sold or publicly used versions of the product, support the claims and description of the future nonprovisional application, and support arguments which distinguish the product from the prior art. Failure to disclose adequate information can place the filing date or the scope of patent protection in jeopardy.

Imagine the following scenario:

Inventor creates a product on 1/1/10.
Inventor publicly demonstrates the product on 6/30/10 to promote the product, thus starting a one year period in which the inventor must have a filing date.
Inventor files an insufficient provisional patent file on 1/1/11.
Inventor files a thorough nonprovisional patent application on 1/1/12.
The patent office reviews the nonprovisional patent application on 1/1/14 (it is common for a couple of years to pass before examination) and determines that the invention as claimed in the nonprovisional patent application is not supported by the provisional patent application.

One possible result is that the effective filing date is now the filing date of the nonprovisional patent application, which is 1/1/12. That filing date is more than one year after the inventor publicly used the product, thus the inventor is barred from receiving a patent (Even if the bar to patenting did not exist, any relevant technology created between the filing date of the provisional and the nonprovisional can now be prior art). Another possible result is that the issued patent is limited in scope to what was sufficiently disclosed in the provisional, thus it has less less value.

Don’t fall prey to the myth and take great care in the preparation of your provisional patent application.

Beware: Patent Application Drafting Software

I have reviewed a few situations where someone has sought direction after submitting a patent application which was created using patent application drafting software. Such software is typically marketed as allowing one to create quality patent applications without having any prior experience. Of the applications that I have reviewed where the applicant used such software, I have yet to see a quality patent application. Each had a questionably specification and questionable claims. I don’t know whether it was the user or the software, but I knew some of the likely results for the applicant: higher difficulty in being granted a patent, lesser scope of protection on any granted patent, and/or the need for an additional patent application on the same product.

A patent is a technical document that is supposed to communicate nuanced technical information to the patent office and others having skill in the technology at issue. The language is typically college level with technical terms and frequently uses non-primary definitions of terms or self-defined terms. Having been a software developer and software enthusiast for several years, it doesn’t seem that off-the shelf software could produce such a result. When I think about some of the results from commonly available language related software, such as Babelfish, Google translator, or the word processor grammar level ratings, it seems consistent with that view. It is a far leap to take natural language input and consistently produce a nuanced technical document that complies with the goals of the applicant and the non-intuitive requirements of the patent office. That view has been supported by the poor patent applications that I have seen from such software. Problems from those poor applications included very weak applications to the need to effectively start over.

Disclaimer: This post was written by a patent attorney… but you probably knew that when you came here.

Warning: Inventor Assistance Companies

It is tough to sit across the desk from someone and tell them that I think someone took advantage of them, especially when that money could have been better used to help them with prototyping or other steps in their business plan. When I have spoken with people who have used inventor assistance outfits, it appeared they spent a lot of money and received little value in return. In one situation, an inventor and his/her associates paid about $20,000 to an inventor assistance outfit. From what I could tell, they were delivered the following:

the filing receipt for a submitted provisional application (they did not have the actual submitted application).
the filing receipt for a later filed nonprovisional application (they did not have the actual submitted application).
a five to ten page marketing presentation for their product with illustrations, advantages of the product, and other information.
about 200 addresses for companies that might be interested in purchasing the product (the addresses were general and not directed to a specific person at the company).

For argument, let’s assume a value of $5000 – $10,000 for the preparation and filing of the patent applications, which may or may not be fair given the product at issue. That leaves a range of $10,000 to $15,000 for the remainder of the deliverables. That value for those deliverables seems very questionable. Moreover, the inventor assistance company was still marketing further “services” to the inventor and associates (for additional fees or royalties, of course).

Make no mistake, the invention and entrepreneurial process can be difficult, expense, and time-consuming. Furthermore, it is rare that an individual will possess all of the skills, time, and money necessary for the complete invention and commercialization process. Thus it is tempting to fall prey to an outfit that markets “one stop shopping” support and relief to the time and stress involved in the process.

I am not sure why such low value was delivered, as the above $10,000 – $15,000 is enough to deliver higher value deliverables and still have a good profit margin. Nonetheless, the situation is fairly typical of what I have seen from inventor assistance companies. For this reason, I suggest talking to other inventors, business counselors, intellectual property attorneys, business attorneys, or others to seek professionals to help you in your invention and entrepreneurial process.

Common Factors in the Decision to File a Patent Application

When working with an inventor or startup, a frequent question is whether it is prudent to proceed with a patent application. More often than not, I am not in a position to concisely answer the question, as the question may hinge more on economics than intellectual property. A patent search may shed some light on the prudence of moving forward from an intellectual property standpoint, but it doesn’t help answer whether the cost and effort involved in a patent application are worth it. For people at some large business entities or educational institutions, the value may be easier to determine. Moving forward with the process may increase that person’s salary or credibility. For an individual inventor, startup, or small business, the choice is not that simple.

For the startup or individual inventor, a patent should be thought of as an asset. The goal for a patent application should not be a certificate to hang from the wall. In other words, what will moving forward do for your business. You purchased a computer to easily enter, store, search, and communicate data (reducing labor and storage expense). You purchased hosting services for your website to inform others of your product or service (increase revenue) and to enhance your other marketing efforts (reduce expense). You worked with a product designer to optimize the experience of your product for your customers (increase revenue). Even though you probably did not formally analyze purchases for the above, you at least made a “gut level” feel as to how the purchases were beneficial.

There are several formal methods of patent valuation, such as the cost approach, the market approach, and the income approach (the dominant approach for intellectual property). Typically, those approaches may require the expense and effort equal to the cost of moving forward in the patent process. Thus they may not be suitable at this stage of the process. Some questions that might give a “gut level” feel as to whether to move forward to not include:

How does your idea help increase revenue or decrease expense?
Will a patent application help investors better understand and evaluate the concept?
Is the idea in a new field of technology?
Is your idea operable only as an improvement to another product or can it be sold independently as a complete product?
How large is the total market for your idea (or a related market)?
What percentage of the market can your idea help you gain?
How many related products exist as your competition?
How fast is the industry changing?
What are the alternatives to your idea?
How much does it cost to manufacture your product?
Is the idea in a growing, stable, or declining industry?

Those questions may not lead to a definitive answers, but they should provide guidance on the decision as to whether to proceed towards a patent. When you made the decision to purchase (or not purchase) a computer, hosting services, or other products and services, you analyzed how it would help your business. You should do the same in deciding to move forward in the patenting process.

Common Factors on Timing to File a Patent Application

Frequently, I am asked when a patent application should be filed . I often start the discussion with questions in two areas:

1. Is the new product or process complete?
2. What is (or will be) happening to demonstrate and monetize the new product or process?

Frequently, I am asked when a patent application should be filed . I often start the discussion with questions in two areas:

Is the new product or process complete?
What is (or will be) happening to demonstrate and monetize the new product or process?

Is the product or process complete?

In asking this question, I am, in part, trying to determine if the inventor can meet disclosure requirements for a patent application. The disclosure needs to be sufficient and precise enough to show what the inventor knew at the time of filing the patent application. Additionally, the disclosure should contain enough information to enable one knowledgeable in the technology at issue to make and use the technology.

In one conversation, I talked to a musician who wanted to alter input sounds and music in a certain manner. At the time, he was not clear whether he wanted to alter the sound mechanically, electronically, or other means. In his case, it was far too early for him to proceed with a patent application. He needed to work further on his idea to define, refine, and possess it. On the other hand, I have met with people who have had the idea for a new product, drawings, and were able to effectively discuss the creation and operation of the new product. In some cases, those individuals had sufficient disclosure to file a patent application, even before a prototype was built.

What has been done and what will be done with the new product or process?

Frequently innovators are trying to monetize the new product or process (no surprise there). This may involve demonstrations, pitching to angels/VCs, sales, offer of sale, distributing information on the product, etc. In the United States and other countries, patents rights are impacted by public disclosure, public use, offers of sale, or sale of material which is the subject of a patent application. Generally all of those actions cause a loss of foreign patent rights. In the United States, a patent must be filed within a year of those actions to avoid a bar to one’s patent rights. However, as a practical matter, even if one expects to only seek patent rights in the United States, the patent application should be filed before any of the mentioned actions. One risk in exposing the idea is that another may file a patent application prior to your patent application. In the U.S., the first person to file usually succeeds in litigation when there is a dispute as to who owns the intellectual property. Thus, one is in a better position by filing a patent application prior to public presentation, public use, sale (or offer) of the new product or process.