Invention promotion firms, sometimes referred to as invention promotion companies, have been widely criticized in numerous circles, including political circles in Washington, DC, for many years. The American Inventors Protection Act (AIPA) was enacted into law in 1999 and by its very name sought to address head on the problems faced by so many inventors. In truth, the title of the Act probably had more to do with selling the patent reform bill, which many individuals did not think would benefit independent inventors. Whatever your view of whether the AIPA was a net positive or net negative for independent inventors, it is clear that certain provisions of the Act, which are now law and codified at 35 USC 297, unequivocally attempted to provide important protections for inventors against those invention promotion firms who have such a checkered past.
In light of recent developments, namely IPWatchdog, Inc., me personally and my wife Renee personally being sued by an invention promotion company that didn’t like what we wrote about them, I thought it might not be a bad idea to take a stroll down memory lane, explain a bit about the Act, take a look at what US Senators Joseph Lieberman and Orrin Hatch had to say and made a part of the legislative history.
This case comes to light courtesy of the Docket Report daily e-mail newsletter.
On Tuesday, January 26, 2010, the United States Federal District Court for the Middle District of Florida, per Magistrate Pizzo, granted summary judgment against Solomon Technologies, Inc. and in favor of Toyota Motor Corporation relating to claims of infringement relative to U.S. Patent No. 5,067,932. The case already had an interesting history prior to this stage, having been pursued unsuccessfully by Solomon through the United States International Trade Commission and up to the United States Court of Appeals for the Federal Circuit. In fact, soon after initiating this action for damages and injunctive relief, Solomon lodged a complaint with the ITC pursuant to 337 of the Tariff Act of 1930, 19 U.S.C. § 1337(a)(1)(B), alleging that Toyota and its affiliates imported and sold hybrids that infringed its ‘932 patent. At the joint request of Solomon and Toyota, the Middle District of Florida stayed the federal court litigation pursuant to 28 U.S.C. § 1659(a) so that the administrative proceedings could run their course. After an extensive investigation, the ITC’s ruling against Solomon as to infringement, and an unsuccessful appeal to the Federal Circuit, Solomon renewed its claim of infringement with the Middle District. The Magistrate summarized the dispute by noting that the same parties were arguing about whether the same hybrid vehicles infringed the same claim in the same patent as they argued previously before both the ITC and the Federal Circuit.
So does this “safe harbor” apply if you file a divisional of a divisional? What if each of these divisionals has claims to more than one of the groups restricted in the original patent application? Those were the questions that confronted the Federal Circuit in Boehringer Ingelheim International GMBH v. Barr Laboratories, Inc. In responding to these questions, the entire Federal Circuit panel agreed that this “safe harbor” could apply to a divisional of a divisional. Where the majority (Judges Linn and Prost) and dissent (Judge Dyk) diverged was on whether each of these divisionals, and especially the subsequent second divisional, could have claims to more than one of the restricted groups and still receive the benefit of this “safe harbor.”
Below is a question that we received recently, which is one that many folks likely have. Thus, I thought it might make a good article, particularly given that there is no “right” answer.
Question (in edited form):
Should I file a patent application and obtain a patent before I submit my invention to a company like Lambert & Lambert for their review?
You ask an age old question, which is really the patent/invention equivalent of the chicken or the egg. Moving forward with a patent doesn’t make a lot of sense if the invention is not likely to be marketable. I always tell folks that the best invention to patent is one you will make money with regardless of having a patent, so I do believe there needs to be market considerations factored into the analysis. After all, the goal is to make money and investing in a business or to obtain a patent makes sense only if there is a reason to believe more money will be made than spent. Having said that, without a patent pending you have absolutely no protection, at least unless you obtain a signed confidentiality agreement and even then the protection will be applicable only to those who have signed the agreement.
Those who are readers of IPWatchdog.com on a regular basis are familiar with the jousting that goes on in the comments between myself and a core group of patent believers and those who are, shall we say skeptical of the value of patents and would prefer that patents simply not exist, or at least not exist in certain areas, such as software. Without getting into that debate directly here and now allow me to observe that if you are an independent inventor, start-up or small business one successful way to responsibly move forward is to pattern yourself on successful companies. There is no mileage in following the lead of a company in decline, so lessons can be learned by observing successful companies and weaving together a strategy that will lead to market success. Perhaps no other company today so aggressively pursues patents on core technologies and products than Apple, and they enjoy enormous success. So why not take a page from the Apple playbook? Innovate, patent, commercialize and dominate.
Apple, Inc., the tech giant that has revolutionized how we listen to music and the functionality of a cell phone, is now seeking to expand its extremely popular iPod and iPhone products into greener pastures. Specifically, in a US Patent Application No. 20100013309, which published earlier today, Apple is seeking a patent on a solar powered electronic device, such as an iPod or iPhone.
Every week Apple obtains patents and every week more pending patent applications are published where Apple is the assignee (i.e., owner). Apple aggressively pursues patent protection because quite frankly patents make good business sense. There is a reason that the iPod and iPhone dominate the market, and other alleged substitutes lag far behind. It is because Apple has a well developed and ever expanding patent portfolio that protects these core products and prevents competitors from getting too close.
Lately we have received a lot of inquiries from individuals who are interested in obtaining a patent search. Many people incorrectly assume that a patent search will accomplish two goals; namely that a patent search will inform them whether they can obtain a patent themselves and then also whether they would be infringing any patents if they were to move forward to make, use and/or sell the product. A patent search focuses only on whether you are likely to obtain a patent, and cannot ever be used to determine whether you are able to move forward without fear of being sued for infringement. If what you need to know is whether you are at risk for being sued for infringement what you are asking for is either called a freedom to operate opinion, or sometimes referred to as a patent clearance search. There is a dramatic difference in these two services in terms of cost. A patent search with a patentability opinion, which will determine if the patentability requirements can be satisfied, can range from $600 to $1,400, and a freedom to operate opinion would typically cost at least $10,000, and sometimes substantially more.
I have been asked to create a patent curriculum that will have at a minimum 24 credit hours of patent related legal education, perhaps more. As you might expect, I have some ideas about how to fill the curriculum, but thought I might open this up for discussion here to gain the collective thoughts, wisdom and insights of IPWatchdog.com readers.
While I know it is unrealistic to expect that even the best, most robust patent law school education will make it possible for new attorneys or patent agents to hit the ground running and able to accomplish all things, I do think that with the right mix of reading, lecture and practical exercises the learning curve can be substantially bent. Students should even be able to meaningfully provide assistance day one at a law firm assisting more senior attorneys, assuming of course they take their studies and exercises seriously. This being the case, I am interested in hearing from patent attorneys and patent agents with any level of experience.