EDITORIAL NOTE: The following article has been posted as an online petition you may sign by visiting IndependentInventorsofAmerica.org. On Friday the United States Senate held additional hearings and seem poised to act relatively quickly on the Senate version of patent reform. For information about how to directly contact your U.S. Senators please see Senators of the 113th Congress.
We represent independent inventors and small patent-based businesses across the country and we are against any patent legislation that includes provisions of the Innovation Act (H.R. 3309) and the many variations and additions under consideration in the Senate. This legislation will levy grave harm upon independent inventors and small patent-based businesses, as well as the investors we need to help commercialize new technologies and to protect our inventions.
The American patent system is a trade between an inventor and society. An inventor discloses an invention for all to see and build upon, and the government grants and protects for the inventor an exclusive right to the invention for a short period. The American patent system was intended to enable anyone, regardless of economic status, race or gender, to profit from the invention of something new and valuable. This system has worked as intended for over 200 years, fueling the creation of the greatest economy in the world.
Obtaining a patent can be the best decision you could possibly make, and may even be the best business move you could make. On other hand, the patent path may wind up costing you time, energy and a lot of money. The investment placed into getting a patent may be wise, but it is important to realize the no one is simply going to show up on your doorstep with a money dump truck and unload lottery like winnings onto your stoop. The road to riches in the invention world is hazardous, has many detours and seldom goes as planned. That is why the first question you absolutely must ask yourself before you rush off to your friendly neighborhood patent attorney is this: why do you want to get a patent?
The unfortunately reality is that most patents do not make inventors money. When I first started out in the business estimates were that perhaps 2% of patented innovations made money. That estimate has grown over the years to anywhere from 2% to 10%, but this increase isn’t due to the fact that inventors have gotten so much better, but rather is a function of the massive portfolio licensing that goes on at the top of the industry. It is extremely difficult to know which patent or patents out of a 1,000+ patent portfolio are the ones worth acquiring rights for, but you likely don’t have to spend time wondering because if you want to license the valuable patents you probably have to take a license to the entire portfolio. So even by the bloated estimates you might hear today the underlying reality has not changed. No more than 2% of patents individually would be considered viable moneymaking propositions.
When attempting to determine whether an invention can be patented it is necessary to go through the patentability requirements in an effort to see whether patent claims can likely be obtained. Ideally you want patent claims that are meaningfully broad and commercially relevant, but at a minimum you must have claims that embody patent eligible subject matter, demonstrate a useful invention, cover a novel invention and which are non-obvious in light of the prior art. Obviousness is typically the real hurdle to patentability, and unfortunately the law of obviousness can be quite subjective and difficult to understand. At times obviousness determinations almost seems arbitrary.
The basic obviousness inquiry was set forth by the United States Supreme Court in Graham v. John Deere nearly 50 years ago, and remains good law even today. In order to determine whether an invention is obvious one must work through this analytical framework: (1) Determine the scope and content of the prior art; (2) Ascertain the differences between the claimed invention and the prior art; (3) Resolve the level of ordinary skill in the pertinent art; and (4) Consider objective indicia of non-obviousness (i.e., are there secondary considerations of non-obviousness that suggest a patent should issue despite an invention seeming to be obvious). See Understanding Obviousness: John Deer and the Basics. While this seems easy enough, the application of these factors or considerations is exceptionally difficult.
Prior to the Supreme Court’s decision in KSR v. Teleflex obviousness was rather mechanical. With obviousness we are asking whether there is any combination of prior art references that when put together would be the invention in question. In other words, could an ordinary mechanic create your invention or was there some kind of non-obvious innovation. Defining the concept with using the concept is hardly illuminating, but that is the way the law of obviousness works. This is true because what is obvious to some large degree is in the eye of the beholder.
The United States Supreme Court is poised this term to decide CLS Bank v. Alice Corporation, which could make meaningful strides toward settling once and for all the patent eligibility of software. The Supreme Court is known to like to dodge the most important questions we all need answered, and that trend is almost certainly going to continue in any decision in CLS Bank. But the Supreme Court won’t be able to dodge the fundamental question about whether software is patent eligible. The will likely, and unfortunately, dodge the question about what specifically must be recited in patent claims in order to properly define a software, or computer implemented invention.
Software is now and will remain patentable in the United States even after the Supreme Court’s decision in CLS Bank. The Patent Act is replete with references to software and computer implemented inventions. In fact, in 2011 Congress essentially said that tax strategies could not be patented in and of themselves, but this exclusion relating to tax strategies does not render an otherwise patent eligible software program patent ineligible. Thus, Congress has spoken, and on this particular issue Congress will be the final word because there is no chance the Supreme Court will rule software patents unconstitutional. That issue is not even before the Court.
Congress clearly has stated that at least some software is patent eligible, and so will the Supreme Court. That being said, the real question is how do you describe a software related invention to satisfy the patent requirements? The short answer is that it takes quite a bit more disclosure than you might otherwise think. Long gone are the days of cheap, easy software patents.
The unfortunate truth is that many inventors and entrepreneurs have had their share of difficulty with the various invention promotion companies out there. You have probably seen them advertised on television, usually in the extreme late night or extreme early morning hours. They promise free information, and tell you that they will help you patent your idea, make your invention and/or market your product. Many inventors and entrepreneurs have learned the hard way that some of these companies talk big and perform little. Unfortunately, a lot of times even for those that offer few results the cost will be quite high.
I have had some people contact with what I can only characterize as horror stories. One particular inventor told me that he was interested in a design patent and was quoted $12,500. I don’t know the particulars around the quote, maybe there was a lot of product design work associated with this quote, but what I can tell you is that $12,500 for a design patent is outrageous — nearly 4 times what it would likely cost from start to finish.
It is true that inventing and pursuing a patent can be expensive, and usually is if you do it properly from start to finish, but inventors need to be particularly careful when there are those in the industry that price gouge. There is no substitute for arming yourself with information and being cautious. Finding valuable, legitimate services isn’t all that easy and unless you are dealing with a patent attorney or patent agent directly the invention services market is largely unregulated.
I’ve struggled to figure out how to handle this column, but think that moving forward what I will do is keep a list of interesting items worth knowing and publish once I have a critical mass, which means that the length of this section will vary depending upon the urgency of the items contained.
EFS-WEB and Private PAIR: Unable to Authenticate
Starting January 15, 2014, some EFS-Web and Private PAIR users experienced issues when authenticating to the system.
It is suggested that users upgrade to Java 7 update 51. If authentication issues continue after the installation of Java 7 updated 51, the Patent Office suggests that you contact the Patent Electronic Business Center for assistance. The Patent Electronic Business Center is available between 6:00 am to 12:00 midnight (Eastern Time) Monday through Friday. They can be reached via toll-free phone at 1-866-217-9197 or via e-mail at EBC@USPTO.GOV.
Image taken from US Patent No. 6,655,077 titled “Trap for a mouse”
To paraphrase the famous quote of Ralph Waldo Emerson, if you build a better mouse-trap the world will make a path to your door.
If only it were that easy!
Inventors and entrepreneurs frequently take this mouse-trap quote all too literally, thinking that if they make a better product it will sell and make them rich beyond their wildest dreams. Although inventors hate hearing this, the truth is that the invention is the easy part of the process because it is the only part of the entire cycle from idea to commercial success that is completely controlled by the inventor. Once you invent something market forces and the reality of life takes over. There are any number of reasons why an invention won’t make money even if it truly is unique and superior to available alternative solutions.
I am frequently told by inventors that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art to be found. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art. Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art, you just haven’t found it.
Prior art is probably best understood as information that can be used by the patent examiner to reject claims in a patent application. This information is most commonly prior publications, such as technical articles, issued patents or published patent applications. It is also possible for prior art to consist of actions, such as a sale or public use prior to a patent application being file. But for the sake of this article let’s assume that the prior art we are talking about are issued patents and published patent applications.
It is absolutely critical to understand that a reference, such as an issued patent or published patent application, does not need to be identical to an invention in order for the reference to qualify as prior art. A reference can be used as prior art for whatever the reference explains. For example, if you design 5-wheel transportation device you are going to have to distinguish all other wheeled transportation devices, regardless of whether they are identical. So if a patent examiner finds a 4-wheeled transportation device that will be used against you as prior art. It will be up to you to explain why your 5-wheel device is not obvious in light of the 4-wheel device. The critical question will be this: Why wouldn’t it have simply been obvious to simply add another wheel?