U.S. patent laws specifically allow for the protection of inventions that are improvements upon the work of others. The law says: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. 101 (emphasis added). Indeed, virtually all inventions are improvements. It is quite rare to see a truly pioneering invention, which is one that is the first of its kind.
But how do you go about patenting an improvement? The first thing you must do is figure out what the advantages are over the prior art. You need to take a critical look at your own invention and identify that which distinguishes it over the prior art. You should absolutely focus on structure, not on the method of use. Differences in the method of use will only come into play if you are claiming a new and nonobvious method of using, which is typically not the case. In the overwhelming majority of cases you want to protect the device or apparatus, which makes use differences irrelevant.
Commissioner Focarino in her office at the USPTO on January 27, 2012.
On January 27, 2012, I had the privilege to interview Margaret Focarino, who is the new Commissioner for Patents at the United States Patent and Trademark Office. Focarino, known simply as “Peggy” throughout the Office, rises to the position of Commissioner for Patents after the departure of Bob Stoll. At the beginning of the Obama Administration, after the resignation of then Director Jon Dudas, Focarino became Acting Commissioner for Patents, a position she held until the appointment of Bob Stoll.
When I interviewed USPTO Director David Kappos in December I asked him about Focarino and the first words out of his mouth were: “What a wonderful leader.” Kappos went on to tell me:
Peggy’s the perfect next Commissioner for Patents. She’s got deep knowledge of the agency, extremely well respected in the IP community, rose up through the ranks, knows everything about patents and patent law and patent examination and works extraordinarily well with employees. She’s loved and she’s revered by the employees, not just respected. And if that weren’t enough, works terrifically well with the union. So Peggy’s the perfect package. She’s got tremendous judgment. She knows how to deal with people, she knows how to deal with issues, she’s very diplomatic and just a wonderful leader. I’ve been doing leadership for a long time. I’ve worked with and studied under some of the best leaders in the world and I know a good leader when I see one and Peggy is certainly one.
While that may seem to be unbelievable, lofty praise, it is consistent with what I have heard many times over the years. Indeed, I have only heard positive things about Focarino, and everyone expresses that she is not only a very nice person but a knowledgeable and respected leader within the Office. She is also someone that I personally respect and like.
From U.S. Patent No. 6,655,077, titled "Trap for a mouse."
The patent applicant is required to furnish at least one patent drawing (sometimes referred to as a patent illustration) of the invention whenever the invention is capable of illustration by way of a drawing. Said another way, whenever a drawing would assist in the understanding of an invention you need at least one patent drawing. Based on my experience I can say that a patent drawing is almost always required, or at the very least you would do well to understand the rule as a patent drawing is virtually always required.
The only time patent drawings are not required is when the invention relates to a chemical compound or composition. You can also get away without a drawing sometimes with method inventions, but I wouldn’t advise it. There is almost always at least some illustration that could assist the reader (and patent examiner) and the drawings are a part of the overall disclosure. For example, just take a look at the illustration below, taken from U.S. Patent No. 6,618,977, which relates to a method and device for harvesting earthworms.
The United States Patent Classification System is a system for organizing all U.S. patents into a smaller sub-collection of patents based on common subject matter. Each subject matter division includes a major component, which is called a class, and a minor component, which is called a subclass. Few classes draw as much attention as class 705. Class 705 is the generic class for innovations relating to the performing of data processing operations where the apparatus or method is uniquely designed for or utilized in the practice, administration, or management of an enterprise, or in the processing of financial data. Class 705 was created in 1997 from the business and cost/price sections of computer classes 395 and 364.
The mere designation of an arrangement as a “business machine” or a document as a “business form” or “business chart” without any particular business function will not cause classification within class 705. There must be significant claim recitation of the data processing system or of a calculating computer while at the same time having only nominal recitation of any external art environment within the claims. If the claim mentions a particular tangible apparatus in combination with performing data processing or calculation operations then the invention is categorized in the classification that most closely matches the tangible apparatus. In other words, class 705 relates to business method patents and the processing of financial data.
The goal of a patent application is to teach others how to make and use the invention. But why would an inventor want to describe their invention to the point where others could simply copy them? The simple reason is that the US patent laws require such a description. The more complete answer is that such a description is required because in order for the government to grant a patent Congress has said that you must describe your invention so that others will be able to benefit from it, learn from it and advance it moving forward. The only way to do this is by describing your invention with great care and detail.
When you file a patent application it is always necessary to file an application that completely and clearly describes the invention so that others would be able to understand the invention. For many, particularly new inventors, business executives and newbie patent attorneys or agents, it is difficult to understand the so-called description requirement to patentability. It seems easy enough to comprehend as a general matter, but it is overly simplistic to merely say that a patent application must describe the invention. Those who fall down with respect to this adequate description requirement do so because they do not have a full conceptualization of what it is that they have as a protectable invention.
In Part 1 of our interview we discussed Track 1 and the nuances of rulemaking that will delay a small entity and micro entity fee break until likely March 2013. We also discussed Requests for Continued Examination, or RCEs.
The beginning of Part 2 of my interview picks up where we left off, and may seem a little odd as a starting point. Despite my own best efforts to keep up with everything I was unaware that a small entity discount is available under Track 1. I had thought that everyone needed to pay the $4,800 fee, but Director Kappos explains that a small entity status discount is available, making the fee $2,400 for small entities. It is the micro-entity discount that will not be available until March 2013. Perhaps others caught onto this, but given the importance of getting patents quickly for some clients I wanted part 2 of the interview to start here and highlight that point.
On Monday, July 19, 2010, I was granted behind the scenes access to the United States Patent and Trademark Office, and was allowed to follow USPTO Director David Kappos throughout the day as he went from meeting to meeting. Nearly 18 months has passed since, and we have just entered what could be the final year of the Obama Administration, so it seemed as if the timing was right to once again sit and chat with the Under Secretary of Commerce for Intellectual Property.
I requested an interview through proper channels and it was arranged to take place at the USPTO on the 10th floor of the Madison Building in Director Kappos’ office. The interview took place on Thursday, December 22, 2011. The title Kappos 2.0 is how I have referred to this follow-up series. In the initial series spawned three different articles; one about what I observed as a day in the life of Director Kappos, the interview with Director Kappos and an article about Kappos’ Senior Management Team. In addition to what will be a three-part interview with Director Kappos, the Kappos 2.0 series will also entail in depth interviews with some of Kappos’ Senior Management Team, so stay tuned through the first quarter of 2012 for more.
In what seems to be a continuing trend, the United States Court of Appeals for the Federal Circuit is continuing to show increasingly little tolerance for abusive patent litigation tactics. In the most recent pronouncement along these lines the Federal Circuit, per Judge O’Malley (with Judges Newman and Prost joining), ruled the district court appropriately awarded the defendant $3,873,865.01 in attorney fees and expenses under § 285, as well as $809,788.02 in expert fees. See MarcTec, LLC v. Johnson & Johnson (Jan. 3, 2012).
MarcTec originally filed suit in the Southern District of Illinois against Cordis Corporation and Johnson & Johnson, who is the parent company of Cordis Corporation, but not otherwise involved in making or selling the accused product. MarcTec alleged Cordis infringed U.S. Patent Nos. 7,128,753 and 7,217,290. After claim construction, the district court granted Cordis’s motion for summary judgment of noninfringement. On a prior appeal the Federal Circuit then affirmed the district court’s construction and the judgment of noninfringement based on that construction. See the non-precedential opinion in MarcTec v. Johnson & Johnson 2009-1457.
The Federal Trade Commission is seeking public comments on the issues raised at a recent FTC workshop exploring facial recognition technology and the privacy and security implications raised by its increasing use. The December 8, 2011, public workshop, “Face Facts: A Forum on Facial Recognition Technology,” focused on the current and future commercial applications of facial detection and recognition technologies, and discussed current uses of these technologies, possible future uses and benefits. Now the focus shifts to the potential harms, namely the numerous potential privacy and security concerns.
Facial detection and recognition technologies have been adopted in a variety of new contexts, ranging from online social networks to automobiles to Automatic Teller Machines and must more. Indeed, there are a variety of facial recognition innovations already patented and many with patent pending status. A search of the United States Patent and Trademark Office database for the term “facial recognition” within the Abstract of an issued patent or published patent application returns 181 results.
It is that time of the year where when we prepare to spend time with family and friends celebrating the holiday season. No other holiday is quite like Christmas in terms of the anticipation, not to mention the colossal magnitude of the commercialization of the holiday. In any event, last night children all over the world were “nestled all snug in their beds, while visions of sugar-plums danced in their heads.” As the kids were in bed many adults might have tried to catch a glimpse of “a miniature sleigh and eight tinny reindeer;” or perhaps nine if Rudolph was along for the trip!
As I contemplated Twas the Night Before Christmas it started getting me to think about sleighs and then I wondered what kind of patents I might find on various state-of-the-art sleigh technologies from Christmases past. So without further ado, and to celebrate the season, I present a look at a variety of sleigh related patents from the 1880s and 1890s.
My review of the state-of-the-art sleigh technologies shows that during the early 1880s more comfortable sleigh rides were on the minds of many an inventor, and by the mid to late 1890s improvements evolved to include additional features, such as removable seats, steps to assist one to enter and disembark from the sleigh and various steering mechanisms. Like virtually all reviews of patented technology, even such low tech inventions as sleighs, the ongoing evolution of improvement is apparent, which is the hallmark of innovation. Make things safer, faster, cheaper or stronger. Innovate to make operational improvements the users will greatly appreciate, such a smoother riding sleigh. Such a review of sleigh technology also gives us a glimpse into life of the day by showing us the problems that creative members of society were working to solve.
The holiday season is about having fun, spreading cheer and spending time with family and friends. So in that spirit we put together a few video Christmas cards for our readers. From our family to yours – Merry Christmas! Thank you for reading IPWatchdog.com!
A new report published by WIPO today shows that intellectual property filings worldwide rebounded strongly in 2010 after a considerable decline in 2009. In fact, the recovery in IP filings was stronger than the overall economic recovery. This is probably to have been expected given that patent filings in particular are a leading indicator of the introduction of new technologies into the marketplace. The question now is whether the patent systems of the world can actually process these increased patent filings in a releavant time frame so that entrepreneurs and small businesses, who are the engine of growth, can be the catalyst pushing toward economic recovery.
According to the World Intellectual Property Organization (WIPO), patent and trademark filings grew by 7.2% and 11.8% respectively in 2010 compared to growth of 5.1% in the global gross domestic product (GDP). Not surprisingly China and the United States accounted for the greatest share of the increased filings. With China you have a growing economy in a country with over 1.3 billion people. With the United States you have the largest economy in the world and the rights granted are undoubtedly very strong given the fact that, for the most part, the U.S. judiciary is not anti-patent. Not to be outdone, however, in Europe the growth of IP filings in France, Germany and the UK also far exceeded the GDP growth rate of these three European economies in 2010.