Interesting assertions; but, there has been a lot of activity in the “DRM” space which arguably relates to your filing in the sense that you are patenting subject matter to protect intangibles. Namely, DRM > copyrighted material. One issue that is raised is reasonable interpretation. Can a claim really be valid if prevention of copying is not possible as most DRM patents claim? Is the claim invalid because it did not actually prevent any copying?

Similarly, a lot of cryptography-related filings look more and more like business methods with little if any novel or nonobvious claim elements. Suggest you look at the following, a personal favorite because of the history of the filing & its relationship to arguments concerning “robots” & “Turing machines” being “inventors” though said robots and Turing machines cannot pass the Turing test! This is also a pet peeve with regards to first to file versus first to “invent”.

Bao Q. Tran Systems and methods for generating intellectual property 20010049707 Filed Dec 6, 2001 (though there is plenty of related art: broadly speaking, crypto is about as protecting value. Kerckhoff’s Principles are well-known primitives.)

if the link below works …

http://appft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=1&f=G&l=50&co1=AND&d=PG01&s1=20010049707&OS=20010049707&RS=20010049707

Just pure common sense. If they don’t purchase the patent that is fine, I will sue them. Obviously the further down the road I get the more valuable the right gets, so the decision to not acquire the rights or license the rights or do business in good faith under our previous contractual arrangements will eventually be looked back upon as extremely naive.

I also had talks with Patent Express (Raj Abhyanker) regarding acquiring or licensing my rights. He told me he was not interested and then set out to copy my invention. When I discovered this I contacted him and told him that as soon as the patent issued I would sue him. He said that after the claims issued we could talk about a license, to which I replied that at that point talking will long since have passed. He called that immature. I suppose we will see who was immature or unreasonable in a couple years.

It is, of course, your prerogative to believe I am acting unreasonably. I disagree 100%. LegalZoom is a major corporation with a lot of money. Everyone in the patent field knows that even a weak patent in the hands of an owner with a large amount of funding can be extraordinarily strong. The fear of being sued by a party with resources and funding has an extreme deterrent effect. LegalZoom has never really understood intellectual property rights, as evidenced by the incorrect information they tell clients. On top of that, they have a long history of entering partnership negotiations without first securing confidentiality agreements and non-compete agreements. In one situation they laid their entire model out on the table without any agreements in place and the party they disclosed to simply started competing with them. With respect to me, they never once during our relationship acquired any intellectual property rights or acquired a license, choosing to believe that because they coded the invention they owned the invention. LegalZoom’s Board of Directors also authorized the purchase of IPWatchdog.com back in the Fall of 2007, but the General Counsel never wrote up the terms and I ultimately withdrew my offer to sell. Originally the deal was to purchase IPWatchdog.com for 6 figures, then the GC wanted to purchase all assets, but would never actually talk to me about the deal. One has to wonder who is running LegalZoom, and why investors are not upset with their repeated poor business decisions. I understand from those inside LegalZoom that the Board was quite upset when I pulled my offer to sell. I guess I was supposed to just sit tight. I waited 9 months and was ignored all along the way. LegalZoom has left in its wake a lot of vendors, constantly moving to the lowest bidder, which is no doubt why they make so many mistakes.

What I say with respect to LegalZoom is what I would counsel any client. If there is a dominant patent portfolio that covers what you are doing and which can be acquired on the cheap, which you can then mine for patents for years, the decision is really easy from a business perspective. You acquire the portfolio. Of course, when the Board authorizes the purchase of assets the General Counsel has to follow through.

If you look around, since my patent application published there have been a number of companies that have gotten into this market, and they are siphoning market share from LegalZoom. For me, it just gives me more targets to sue ultimately, which I will do. If LegalZoom owned the portfolio we both know that these other companies likely would not have entered the market. Just because others refuse to operate in an appropriate and wise business manner does not me I am the one who is being unreasonable.

In the meantime, should anyone want to have a club to dangle over LegalZoom or any of the others, I am always willing to listen to offers.

I’ve been a long time reader and admirer of your website. Your articles are interesting and informative. Yet, I am somewhat disillusioned at your post above. I think you have lost sight of the woods for the trees. It’s a difficult role to play both attorney and inventor successfully. You write this blog as an attorney but I think the inventor must have taken hold of your last post.

Is this attorney speak or that of the lone inventor:

“If I were an investor I would want LegalZoom to acquire the patent rights.”

This will be the last post of yours that will ever be posted. I know who you are and your personal grudge against me will not get air time on my site. So how is the weather in New Hampshire. Those were the days!

I never thought you were an attorney or knowledgeable about patent law, but went along until it became clear that you were not just taking an alternative view, but rather that you had an agenda. I am sure that you realize that “free speech” rules and laws apply only to the government. You do not have an opportunity to be heard on channels owned privately. The First Amendment says that the government cannot infringe upon free speech. I am not the government, and I do not tolerate profanity or personal attacks. I also do not tolerate posts that incorrectly characterize the law.

It is humorous to hear you talk about “gonads” as you put it. I am putting myself out here every day, with my name and contact information. You, on the other hand, are hiding behind a fictitious name and a fictitious e-mail address. Even though I know your true identity I am not going to violate my own ethics and reveal you. Nevertheless, I have no patience for one who throws personal attacks, uses profanity and makes misstatements about the law when they also seek to hide behind a cloak of complete anonymity. A lot is tolerated in terms of heated debate and differing viewpoints, but those who do not have the courage to use a real e-mail address receive absolutely no latitude.

As for your substantive comments, we will see who laughs last. Everyone can see that there is plenty of allowable material in the specification. I am sure it never crossed your mind that someone would file extremely broad claims so as to keep others guessing what might actually issue, particularly when there is such a long pendency period in this field. Those who are engaged in this market should worry. They can see the support in the spec, and should clearly understand that from this application alone there will be patents issued, not to mention from my other pending applications. Starting and expanding a business when there are patent applications pending that will cover what you are doing is reckless, and I will shut those down who are infringing once patents have been issued. At that point in time they will have so much invested in their business model it will be painful, but that is the choice these folks have made.

Cheers.

-Gene

He says that he does “not allow comments that provide inappropriate adivce” — presumably as a reason for deleting the first post, but he doesn’t delete any of the others. Looks hypocritical to me. As I asked you in my second (deleted) post, why don’t you delete all of my other posts. They provide the same “inappropriate advice.”

Once you went down the path of deleting posts — just because I had very harsh criticism of your patent (and on very valid legal issues), you’ve lost a lot of crediblity. There is no such thing as “free speech” on a message board, but people still value the concept behind the phrase “free speech.” You put a spotlight on your patent application when you posted it on this board for all the world to see — so you shouldn’t be surprised if that spotlights highlights its warts.

If you had a set of gonads, you return my other two posts. If you did that, I would provide you an e-mail address so you can bitch and moan to me personally.

However, I don’t expect that’ll happen. Instead, I expect this post to also get deleted. However, those that follow this board will know that and know how you were afraid to deal with criticism.

It is not interesting at all. Your comments were deleted for several reasons. First, the comment you are complaining was deleted was insulting and used profanity. Vigorous debate is fine, insults are not fine. Profanity is never acceptable either. Second, if you care to provide a real e-mail address and/or a real identity then you can say almost whatever you want, provided it is not insulting or profane. Hiding behind a bogus e-mail address and name, while at the same time obviously proving that you do not understand patent law is not going to allow you to post on my site. While differing points of view are allowed, I do not allow comments that provide inappropriate advice, are wrong or simply ignore facts and reality.

E-mail address are not published, so there is no fear in providing a real e-mail address, unless you are trying to hide something. If that is your M.O., then I am not interested in providing you the opportunity to comment on my site. I never reveal e-mail addresses, and I never reveal names or sources. The only time I require a real e-mail or a real name is when it is clear someone has an agenda and/or is offering bad advice and/or saying things that clearly demonstrate a failure to understand the law.

-Gene

The truth hurts …..

Can you explain why you think that you are the only one who read Bilski?

My application clearly talks about a semi-automated process that can be carried out over a computer network, using e-mail and electronic transmission of information and the utilization of word processing programs, such as Word, the insertion of comments and suggestions into a document using footnote, end notes and comments. One illustration shows a word document. If you want to mislead that is your choice, but lets try and be honest here for one minute. You can say whatever you want about my application and my claims, but it doesn’t change the reality that you are ignoring what is clearly disclosed.

Why do you think your opinion is so valid when you have admitted in this chain that you are having difficulty getting these types of patents issued to your clients, and that adopting recommendations of examiners to get patents issued is not wise?

It amazes me how you could be unfamiliar with the concept of writing new claims based on what is in the specification.

It also amazes me that you, or any attorney, would be at all worried about Festo or the doctrine of equivalents. The doctrine is completely dead and shouldn’t even be considered or worried about. Thanks to the brilliance of the Supreme Court to be entitled to an equivalent you have to provably demonstrate that it was unforeseeable that a claim could be written to cover the equivalent, which means you have to demonstrate that you were not in possession of the equivalent at the time of filing, which means your specification could not possibly support the equivalent. So to be entitled to the equivalent you must demonstrate you didn’t invent and your application does not cover. The doctrine of equivalents is dead.

Taking what is offered is always the best way to proceed, and then file a continuation. Just because you take what is offered doesn’t mean you are giving up ground, it means you want a patent and why look a gift horse in the mouth. If you don’t take what is offered to get your clients rights that make their entire portfolio more valuable then you are not very business savvy, and doing them a real disservice.

As for inviting a final action, you should know that you have to have a first action in order to invite a final action, and presumably you are also aware that preliminary amendments can be filed at any time prior to a first action. You do know that, right?

You can rip up the claims if you want, that is fine. That is your prerogative, but that would be a jerk move, not to mention a stupid move. So let me get this straight, back in 2005 and 2006 you would have written claims with an eye toward Bilski which issued as a decision in October 2008? You must be psychic!

Since I’m being a PITA, I’ll move on to somebody else ….

Why doesn’t anybody ever read the case law. The relevant passage in Bilski (which I reproduced above) states that the requirement is for a “particular machine or apparatus.” In my book, a computer (of any flavor), is a specific machine or apparatus. It isn’t windshield wiper. It isn’t a lamp. It isn’t a stapler. Additionally, many types of computers are incapable of being used to perform the steps described by Gene. The computer in your automobile is unlikely unable to perform those steps. The computer in Apple’s Nano is likely not capable of performing those steps. My guess is that there are far more computers incapable of performing those steps than are. When people say “computer,” the masses think about the PC (or Mac if you swing that way). However, that is just a tiny subset of the many types of computers that exist, many of which are incapable of performing those steps.

I’ve seen the BPAI get worked up over the distinction between a “general purpose computer” and a special purpose computer. However, these distinctions are legal fictions made up by the BPAI. Every computer has a special purpose.

Also, even if the compter performing the method could be considered a “general purpose computer,” it would have to be programmed to perform the method. The majority in In re Alappat stated the following:

We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. In re Freeman, 573 F.2d 1237, 1247 n.11, 197 USPQ 464, 472 n.11 (CCPA 1978); In re Noll, 545 F.2d 141, 148, 191 USPQ 721, 726 (CCPA 1976); In re Prater, 415 F.2d at 1403 n.29, 162 USPQ at 549 n.29.

This is why many claims pass muster by just reciting “computer-implemented.”