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 $500 to $3,000, depending on the cost of the search and level of analysis you want. The search for a freedom to operate opinion would alone cost at least $3,000, and that would return dozens of references that a patent attorney must wade through in painstaking detail. Typically a freedom to operate opinion will cost at least $10,000, and sometimes substantially more. It is not at all uncommon for a freedom to operate opinion to cost $20,000 or $30,000, or 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.
If you are unaware that Massachusetts Republican Scott Brown was victorious last night via special election to fill the remaining term of the Senate seat held by the late Senator Ted Kennedy you must be living under a rock. Over the last month or so Brown has surged in the polls and took Massachusetts and the nation by storm, claiming a Senate seat long believed to be practically owned by Democrats. In a matter of days, perhaps weeks, the Democrats will no longer hold a filibuster proof majority in the Senate, which likely all but assures a death to health care legislation and a dramatic slow down in the Obama agenda. Already Senators and Representatives on the Democrat side of the aisle are talking about perhaps slowing down on health care, perhaps even starting over, and in the meantime focusing on jobs, which is after all what the overwhelming majority of Americans want Congress and the President to do. As a policy wonk and political observer I would love to get into a discussion about what this election means, and I have over at BlatantlyTrue.com, where I wrote MA Republican Scott Brown and his Truck Head to DC, but for the pages of IPWatchdog.com, general political discussion is a bit too much off topic. But one story that certainly is not off topic is patent reform, so allow me to ponder what this political tectonic shift may mean for the future of patent reform, which if done right could and should lead to job growth and economic prosperity.
Last week a US Patent Application No. 20100010893 published detailing an invention relating to digital advertising, and more particularly to creating video overlay advertisements suitable for use with digital videos. The owner is Google and the patent application was originally filed on July 9, 2008. It seems that the Internet giant and purveyor of the extraordinarily popular YouTube video sharing website, is attempting to make it easier to create multimedia advertisements. The screen shots in the patent application show that YouTube video is, in fact, what Google has in mind. Just what we need, more advertising! But advertising does pay the bills and allows individuals and businesses to create unique content for the Internet while making a living, thereby enabling for additional creation. This, after all, is the justification for intellectual property rights. Grant to businesses and individuals exclusive rights that they can monetize, if in fact there is a market. Through monetization they can, hopefully, make enough to engage in further original creation, and so goes the cycle.
It has been just over two months since the Supreme Court heard oral arguments in Bilski v. Kappos, and we likely have at least several more months to wait for a ruling. Notwithstanding, pundits and commentators are certainly trying to figure out what the Supreme Court will do, engaging in thought exercises and gazing into crystal balls. The crystal ball of preference is history, tied together with a healthy bit of speculation based on how similar cases and issues were previously addressed by the Court. No single case could be more telling with respect to how the Supreme Court may rule than a case in which they did not rule — Laboratory Corporation of America v. Metabolite Laboratories. In this case the United States Supreme Court decided not to issue a ruling, which may not seem noteworthy at first glance. After all, approximately 8,000 petitions are filed with the Supreme Court each year, and an additional 1,200 applications of various kinds are filed per year that can be acted upon by a single Justice. There is simply not enough time to consider each case where Supreme Court review is sought, so the Court has historically been very selective in choosing cases, normally only issuing full opinions in roughly 80 to 100 cases each year. But, as is frequently the situation with the Supreme Court, there is more than meets they eye with respect to Lab Corp.
Just last week I wrote an article about district courts being increasingly reluctant to order a stay of a pending patent infringement litigation even when the United States Patent Office has granted reexamination. To quote the words of Lee Corso of ESPN College Football fame, “not so fast my friend!” Courtesy of the Docket Report daily patent litigation newsletter, I recently stumbled across the Order of the United States Federal District Court for the Southern District of Georgia in E-Z-Go v. Club Car, Inc. On January 12, 2010, the Southern District of Georgia issued a stay even though the United States Patent and Trademark Office has not yet granted the request for inter partes reexamination of the patent in suit. Holy psychosis Batman! Obviously there is a wide difference of opinion among district court judges with respect to whether to stay pending patent litigation pending reexamination.