Archive for the ‘Patent Prosecution’ Category

Provisional Patent Applications – File Early and Often

Wednesday, April 30th, 2014


A provisional patent application is a temporary application that provides patent-pending status for one year.  The provisional application can be a relatively low-cost way to preserve your patent rights while you develop your invention.  The protection offered by a provisional patent application is only as good as the information contained in the application and only addresses the invention as disclosed in the application.  The provisional application must include enough information in the specification (the narrative part of the application) and the drawings so that a person who is knowledgeable in the technical field of the invention can make and use the invention.

To have any continuing value, your provisional application must be followed within one year by a full U.S. non-provisional (utility) patent application.  If the invention is one for which you will seek international patent protection, your international patent application(s) also must be filed within one year of the provisional filing date.

If you develop improvements to your invention while your provisional application is pending, the improvements are not protected.   What to do? File another provisional application addressed to the improvements.

–Robert Yarbrough, Esq.

PTO’s ‘After Final Consideration’ Pilot Program

Wednesday, November 27th, 2013

USPTO Seal By filing a patent application and paying the filing fee, you are entitled to two reviews by the patent examiner.¬† The examiner has a very short and strict time limit to review your application.¬† If the examiner does not meet that time limit, then he or she may not meet productivity goals and may be denied raises and promotions.¬† If the examiner does not meet productivity goals three times, then he or she is out of a job.¬† By the second rejection of your application, the examiner likely has reached the end of the time allotted and can afford to give your application no more time.¬† In the past, when you received a ‘final’ rejection; that is, when the PTO patent examiner rejected your application for the second time, you generally had three options.¬† You could:

(1) File amendments that placed the application in condition for allowance.  Such amendments generally are limited to accepting what the examiner has decided that he or she will allow.

(2) File a ‘request for continuing examination’ and pay an additional filing fee for two more reviews.¬† In addition to the extra cost, this option generally defers final resolution for another six to nine months.

(3) File an appeal to the Patent Trial and Appeal Board.  The cost for an appeal is at least several thousand dollars and average time to resolve an appeal is three years.

You now have a fourth, and highly attractive, option: you can ask for additional consideration under the ‘after final consideration’ pilot program.¬† The ‘after final consideration’ program gives the examiner extra time to review your application and hence makes the examiner willing to further consider your application.¬† That further consideration may include an interview with the examiner and amendments to the claims.¬† There is no filing fee to take advantage of the program and no additional delay.¬† What’s not to like?

— Robert Yarbrough, Esq.

Beware of the On-Sale Bar

Friday, August 30th, 2013

police If you are a regular reader of this newsletter, then you know that a sale or offer for sale of your invention will terminate your patent rights unless you first file a patent application.   Did you know that the on-sale bar also applies to commercial sales of the invention to you, as from a contract manufacturer or prototype-maker?

Hamilton Beach recently learned to its sorrow that the on-sale bar applies not only to sales by the patent owner but also to purchases by the patent owner.  Hamilton Beach invented an improved slow cooker.  Hamilton Beach did not manufacture the slow cooker itself and instead negotiated with a foreign manufacturer.  The foreign manufacturer offered to sell the improved slow cooker to Hamilton Beach.  Hamilton Beach subsequently filed an application and obtained a patent for the improved slow cooker.  Hamilton Beach later sued Sunbeam for patent infringement.  Sunbeam argued that the Hamilton Beach patent was invalid because of the offer to sell the invention by the manufacturer to Hamilton Beach.

The U.S. Circuit Court for the Federal Circuit ruled that the offer by the manufacturer to sell the slow cookers to Hamilton Beach was an ‘offer of sale’ that tripped the ‘on sale’ bar and invalidated the patent.

Why is this decision important to small businesses and individual inventors?

The hidden risk of the Hamilton Beach decision lies in the production of prototypes.¬† The on-sale bar requires (a) a commercial sale or offer for sale of (b) an invention that is ready for patenting.¬† An estimate from, say, a machine shop to produce a prototype of an invention could be a commercial offer to sell the invention triggering the on-sale bar if the invention is ready for patenting.¬† An invention is ‘ready for patenting’ when (a) the inventor has a working prototype or (b) the invention is described in drawings or in written descriptions sufficient to allow a knowledgeable person to build and use the invention.

The only way sure way to avoid the on-sale bar is to not buy or sell the invention until after you file a patent application.  The Hamilton Beach case is yet another reason to file provisional patent applications early and often.

— Robert Yarbrough, Esq.

New Rules, New Strategies for Innovators

Wednesday, July 31st, 2013

coke bottle patent The past 15 years have seen an unprecedented attack on patents and patent-owners in the United States. Orchestrated by foreign nations, multinational corporations, and a variety of other groups, largely funded by similar vested interests, this attack has reduced much of the value formerly associated with patented innovations. In past issues of our newsletter we have described how patent owners can no longer realistically expect to block sales of products that infringe their patents through the injunction process, how infringers can conspire to divide patented processes among several actors to avoid infringement, how multiple infringers must now be sued separately, rather than joined in a single action, and how delays at the Patent Office and increasing fees put university researchers, solo inventors, and small companies at a disadvantage. We have also been counseling our clients to help them construct valuable patent strategies.

In the latest round of anti-patent actions, a committee of the Federal Courts including some noted judges and attorneys has issued a model order that they recommend be adopted by federal trial courts to govern patent suits. Such model orders are usually adopted quickly and without significant change by courts around the country. What is troubling about the present document, “A MODEL ORDER LIMITING EXCESS PATENT CLAIMS AND PRIOR ART” is that for the history of our patent system, which dates back to the time of Thomas Jefferson, inventors have always been able to present claims in as much detail as they wish, so that their patents would clearly and particularly cover all aspects of their inventions, and, at least since the 1950s, inventors and their attorneys have been required by both the Patent Law and the rules of the Patent Office to submit every relevant item of prior art of which they were aware. The background of the model order cites a study that shows that litigated patents contain an average of 24 claims, and cite 31 prior art references, which the committee calls, “problematically excessive.”

Some recent cases have seen individual judges impose limits on patent owners, requiring that they limit the number of patents in a suit, and that they throw away claims in the patents that they assert to reach some arbitrarily small number. In other cases, the number of products accused of infringement has been limited by court order. All of this trimming is claimed to streamline cases and to promote the administration of justice. In reality, however, such rules are evidence that our judicial system often fails to handle the technical complexity of our modern technological world. When it takes teams of hundreds of researchers years of effort to develop and commercialize complex inventions such as synthetic proteins, chips with millions of components, and software with tens of millions of lines of code, the refusal of our courts to expend the mental energy needed to understand and to protect such innovations harms innovators. For courts to say to inventors, you have done the hard work of creating value, but we require you to be able to explain it to judges and juries in monosyllabic terms, and to choose, “not more than ten claims from each patent, and not more than a total of 32 claims,” means that for some inventors, they will have a more difficult task to defend the value that they create.

Inventors must and will respond. Already, we are counseling clients to submit more patent applications with fewer claims per application. In litigation, the proposed limits will mean that separate law suits will have to be filed on small groups of patents against the same defendant. The erosion of the patent system has caused some innovators to opt for trade secrecy, at least in part, rather than patenting every aspect of their inventions, and this impoverishes our entire society, because it keeps technical advances out of the public view, which slows follow-on innovation.

We are confident that Americans will continue to innovate, despite the limits being imposed on the patent system. We are confident that we, and others who value our tradition of individual innovation will continue to find strategies to protect the value generated by inventors. Because we believe in the long-term value of innovation and the patent system that protects innovation, we at LW&H continue to develop new strategies for our clients, and particularly university researchers, garage inventors, startup companies, and established concerns to implement effective and efficient legal strategies for protecting their inventions.

— Lawrence A. Husick, Esq.

Patentable Subject Matter, the Sequel

Saturday, June 29th, 2013

DNA In the issue that will not die, the Supreme Court again considered what can or cannot be patented.  This time the question was whether human genes can be the subject of a patent.

The U.S. Constitution at Article One, Section 8 gives Congress the power “to promote science and the useful arts, by securing for limited times…to inventors the exclusive right to their…discoveries.”¬† Congress exercised that authority in Section 101 of the patent statute, which authorizes patent protection to “[w]hoever invents or discovers any new and useful… composition of matter.” In the past, the Supreme Court has created exceptions preventing patenting of laws of nature, natural phenomena and abstract ideas.

Myriad Genetics discovered the precise locations of certain genes, the mutation of which increased the risk of certain cancers.¬† The U.S. Patent and Trademark Office issued patents to Myriad for the genes.¬† The Federal Circuit Court of Appeals agreed that Myriad’s discovery of the genes was patentable.

The Supreme Court decided that the naturally occurring genes that Myriad located and isolated are a ‘product of nature,’ fall within the ‘law of nature’ exception and are not patentable; however, genes that were modified by Myriad are patentable.

Naturally-occurring materials are staples of biotechnology patenting. Because of the complex questions involved, the transactional costs for the industry to identify and investigate the effects of the Myriad decision will be very high. We can anticipate that the value of companies holding patents to naturally occurring biological materials may be affected.

— Robert Yarbrough, Esq.

The Fable of the Supreme Court and the Beanstalk

Thursday, May 30th, 2013

Once upon a time, a farmer purchased a magic bean.  The farmer planted his magic bean, as farmers do.  The magic bean grew into a magic beanstalk and made more magic beans.  The farmer harvested the magic beans, as farmers do, and saved the new magic beans for the next year.   For eight years, the farmer planted his new magic beans, grew new magic beanstalks and harvested magic beans for re-planting.

Monsanto, which owned a patent on the magic bean, filed suit against the farmer.¬† Monsanto believed that the farmer infringed Monsanto’s patent because the farmer made copies of the magic beans, violating the prohibition on making or using a patented product.¬† Monsanto’s beans were magic because they were genetically modified to survive treatment with glyphosate herbicides.¬† Use of the genetically modified bean allowed the farmer to kill the weeds in the farmer’s fields using herbicides without damaging his crop.

The farmer believed that once Monsanto sold the magic bean, then Monsanto had no further rights to the bean. The farmer’s friends agreed.¬† The farmer argued the doctrine of ‘patent exhaustion,’¬† which means that once a patent owner sells a patented product, the purchaser and any subsequent purchasers can use or sell the product and the patent owner has no further rights to control the patented product.¬† In this case, the genetically modified soybeans were twice-removed from Monsanto – Monsanto sold the patented soybeans to farmers, the farmers planted the beans, raised crops and sold their crops to a grain elevator, and the grain elevator sold soybeans from the crops to Vernon Bowman, the farmer of our fable.

The case of the magic bean went all the way to the Supreme Court.¬† On May 13, 2013 a unanimous Court ruled in favor of Monsanto.¬†¬† The Court concluded that the doctrine of ‘patent exhaustion’ applies only to a particular patented article sold, in this case each genetically-modified soybean sold by Monsanto.¬† The doctrine allows the farmer to plant or eat soybeans purchased from Monsanto, to grow a crop and to sell the crop.¬† For soybeans that had the genetic trait and that Mr. Bowman purchased from the grain elevator, Mr. Bowman could re-sell those soybeans, feed the soybeans to animals or eat the soybeans.¬†¬† However, ‘patent exhaustion’ did not allow Mr. Bowman to make copies of the patented soybeans.¬† Otherwise, a patent for a seed could never be of any value.¬† The patent owner could sell the first seed, which would then be copied by infringers, using the self-replicating nature of the seed.¬† The Court expressly limited the ruling to the facts of the case, recognizing that other situations may arise with other self-replicating inventions, such as computer programs, that might require a different result.

The facts were favorable to Monsanto – Mr. Bowman acted to isolate and duplicate the patented Roundup Ready¬ģ soybeans and to take advantage of the herbicide-resistant genetic trait.¬† He treated his fields with glyphosate herbicide, ensuring that only soybean plants with the Monsanto-owned trait survived.¬† He also was familiar with the Roundup Ready¬ģ beans and used Monsanto-supplied beans for some of his needs.

The Monsanto patents address DNA having specific characteristics and seed and plants containing that DNA.¬† The Monsanto genetic modification now has been part of the environment for years and eventually will find its way as a contaminant into many, if not all, soybean crops.¬† The Court was silent on an issue raised in friend-of-the-court briefs; namely, what happens when an organic farmer who does not use herbicides saves seed contaminated with the Monsanto genetic modification.¬† Isn’t the organic farmer infringing Monsanto’s patent?¬† In a related question, how can any farmer ever grow any soybeans without being forced to buy Monsanto’s seed due to unintentional genetic contamination?¬† Those questions currently are in the courts in Organic Seed Growers & Trade Association v Monsanto.

To Be, or Not To Be..

Thursday, May 30th, 2013

Patent Illustration

Pardon the quote of the Bard, but there is one area of patent law that, indeed, ponders “that is the question.” Bear with us for a moment while we try to set the stage. To qualify for a patent, the patent law statute passed by Congress states that an invention must meet three criteria: it must be new, useful, and non-obvious. For our present purposes, we will set aside the useful and non-obvious qualifications. To be new, in essence an invention must not have been thought of (or at least, disclosed) by anyone else. Simple enough.

But the U.S. Supreme Court, as judge made law, has grafted onto patent law the concepts that one cannot obtain a patent on a law of nature, a natural phenomenon, or an abstract idea. For instance, Einstein’s famous equation E=MC2 is said to represent a law of nature and, therefore, be unpatentable. Devices utilizing the law, like the bomb, are patentable. The idea here is that laws of nature belong to everybody and cannot be the exclusive property of anyone, while new applications of the law are patentable. In concept, a pretty straight forward approach. However, recently in the biotechnology realm, the concept of a law of nature has become twisted, contorted, stretched, strained, and abused – but we’ll talk about that another time.

For today, we weill briefly delve into what is meant by “abstract” although we confess up front, that we cannot give you an unambiguous explanation. The meaning of “abstract” lies hidden under the murky waters of patent law involving much judicial semantic nonsense promulgated in major part by the U.S. Supreme Court. One interpretation is that a basic idea of an invention is abstract if it totally captures all possible uses of an idea. In this guise, patent examiners routinely reject applications that seem to have a mathematical expression at their core, especially computer and software implemented inventions. One court has recently expanded the¬† concept of what may be abstract to the analysis of a method for hedging risk in financial dealings between two parties. Lest you think that we are ducking a good explanation of abstract, another federal appellate court recently decided (CLS Bank Int’l v. Alice Corp.) such a hedging idea was abstract, but could not articulate a consistent interpretation of why. In fact, seven different opinions were filed including at least three different tests for evaluating patent eligibility. Like pornography, the courts seem to know “abstract” when they see it.


Which brings us full circle: To be (abstract) or not to be (abstract), that is the question.

To Disclose or Not to Disclose … That is the Question

Tuesday, April 30th, 2013

You have conceived of a wonderful new invention and you want tell everyone, but you are not ready for the expense of a patent application.  Should you open your mouth?

Every inventor feels the tension between the need to maintain secrecy and the need to  disclose the invention.  If you are a regular reader of this newsletter, then you are aware that your sale or offer of sale, public use, or written or verbal disclosure in public can terminate your patent rights forever, with some actions such as public use or sale terminating your rights immediately.  But to develop your invention, you cannot avoid having to disclose.  You have to present written proposals. You have to demonstrate the invention.   You have to consult with others Рdesigners, engineers, manufacturers, business consultants, lawyers, investors and lenders.  How do you talk to other people about your invention, including demonstrating your invention, without losing your patent rights?

You have two options: (a) bite the bullet and file a patent application, or (b) have the persons with whom you are consulting sign non-disclosure agreements.¬† A non-disclosure agreement is a written contract between you and the person to whom you disclose the invention.¬† In return for receiving information about your invention, the other person agrees to keep the information in confidence.¬† After signing, the other person is no longer a member of the public and owes you a duty of secrecy.¬† If you demonstrate the invention to that person, you are not using the invention ‘in public’ and do not immediately lose your patent rights.¬† If you disclose the invention to that person in writing, then your written description is not a ‘publication’ and so does not trigger the patent right termination deadlines.¬† If you describe the invention verbally to that person, then your verbal description does not make the invention ‘otherwise available to the public’ to trigger the running of the time to terminate your patent rights.

The other major advantage of a non-disclosure agreement is that it is immediately enforceable.  If the person who signed the non-disclosure agreement copies your product, you can file suit in court immediately. You do not have to wait the three years or so that it will take for your patent to issue.

There are weaknesses to non-disclosure agreements.  Beware selling or offering the invention for sale. Even if a person signs a non-disclosure agreement, offering to sell the invention to that person likely will terminate your U.S. patent rights instantly and forever.

There is also the problem of who signs the non-disclosure agreement.¬† If the other person is a corporation, the person signing the non-disclosure agreement on behalf of the corporation must have authority to sign, or at least ‘apparent authority.’¬† The company CEO has ‘apparent authority.’¬† The CEO’s secretary does not have ‘apparent authority.’¬† Without actual or apparent authority on the part of the person signing, the nondisclosure agreement will not protect you.¬† Demonstration of the invention likely will immediately terminate your patent rights.

There is also the problem of proving that your non-disclosure agreement applies to a particular disclosure.¬† If, for example, one of the corporation’s employees violates company policy and posts on his Facebook page: “I saw the coolest invention today” along with video of your invention, then it will very difficult to show that a similar invention in, say, a video from Kazakhstan was derived from your disclosure.¬† That Kazakh video likely will be prior art for your subsequent patent application and may prevent you from obtaining a patent.

Bottom line:  The safest approach is to file a patent application prior to disclosing the invention and certainly prior to demonstrating the invention or selling the product, coupled with non-disclosure agreements with the persons to whom you disclose.  You then have the best of both worlds Рyou avoid loss of patent rights because your patent application is already filed and you enjoy the ability to immediately enforce the non-disclosure agreement without waiting for that patent to issue.  We can help you with both your patent application and the non-disclosure agreements.

— Robert Yarbrough, Esq.

The Statutory Invention Registration (SIR) is No More

Tuesday, April 30th, 2013

USPTO Seal As of March 16, 2013 the PTO stopped accepting or reviewing applications for SIRs.  Before March 16, the SIR was a technique to notify the world of an invention that the invention owner did not wish to patent.  The effect of the SIR was to dedicate the invention to the public so that anyone could make, use and sell the invention and no one could file a new patent application for it.   SIRs became largely redundant when the U.S. moved to the system of publishing utility patent applications eighteen months after filing.

— Robert Yarbrough, Esq.

The Rush to Meet the March 16th Patent Deadline

Thursday, March 28th, 2013

USPTO Seal According to a chart released by the U.S. PTO, about 26,500 provisional and non-provisional patent applications were filed on March 15, up from the about 2,500 applications that are filed on a typical day.  The reason: inventors and their patent lawyers (including us) were racing to beat the March 16 deadline.

As we have said before in these newsletters, U.S. patent law changed on March 16.¬† Now, after March 16, patent rights are terminated and lost forever if (a) no patent application has been filed, and (b) there has been a sale or offer for sale of the invention, a public use of the invention, description of the invention in a printed publication, or the invention is ‘otherwise available to the public.’¬† If you have an invention and intend to take any of these actions, please contact us first so that you do not inadvertently lose your U.S. patent rights.

— Robert Yarbrough, Esq.