Posts Tagged: "patent application"

In order to have a patentable business method it is necessary for the invention to accomplish some practical application. In other words, in order for a business method to be patentable it must produce a “useful, concrete and tangible result.” Although the United States Supreme Court did away with that test when it issued its decision in Bilski v. Kappos, it is still nevertheless illustrative and the best test that is out there. If you really understand what Judge Rich meant by “useful, concrete and tangible result” you come to the inescapable conclusion that it is the appropriate test and if you really target the description of the invention to satisfy the test you will have something that is patentable under the Supreme Court Bilski v. Kappos test and the USPTO guidelines that have followed.

I am frequently asked if it is a good idea for inventors to file their own patent applications, and every time I am asked that question I suspect the person doing the asking already knows the answer, but is hoping that they might find someone who will tell them what they want to hear. You have probably seen the commercial where the guy is sitting at his kitchen table and is on the phone with the surgeon who is telling him where to cut to take out his appendix while using a butter knife. The guy asks: “shouldn’t you be doing this?” Well, writing your own patent application is a little like taking out your own appendix.

When embarking on a software development project it is critical to understand that in order to maximize the chance of obtaining a patent you need to approach the task with an engineering mind set, as well as a healthy familiarity with Murphy’s Law. Anything that can go wrong will go wrong, and once you release the process to end users a human element will complicate what should otherwise be a predictable, linear, machine driven response. Embrace the uncertainty and challenges because the fact that software rarely, if ever, works like it should is what makes a working process patentable.

The last thing you want to do is spend a lot of money preparing and filing an application when there is easy to find prior art that will prevent a patent, or at the very least make any patent that is obtained extremely narrow. Careful review of the patent search report, any opinion or assessment provided by a patent attorney and thoughtful consideration of the patents that are found is critical. Unfortunately, a lot of inventors only give a cursory review of the patents found, thereby missing a great.

I’m sure some patent litigators will blanch at what I’m suggesting about telling the “story” behind the invention in a patent application because of all the supposed “admissions” that will be made. But most patent litigators haven’t had to endure the frustration we patent prosecutors experience when try to get a “silk purse patent” based on a “sow’s ear description” because there’s no “story” told in the patent application about why the invention is patentable. Also, drafting a “litigation-proof” patent application (if one exists) is meaningless if you can’t get that patent application allowed because the “story” told doesn’t sell the patentability of the invention.

Last week a patent application on an energy efficient device that provides enhanced copyright protections was published, not surprisingly with Apple, Inc. as the assignee. On Thursday, February 4, 2010, US Patent Application 20100030928 published, titled Media processing method and device. Certainly not the most sexy title possible, but the thrust of the invention is a device that allows the…

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…

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…

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…

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,…

Just about 24 hours ago I posted an article relating to my changing position with respect to first to file, and already there is something of a firestorm.  I understand there are those who feel I have abandoned them and adopted a naive view of the world. But excuse me for recognizing the new tone and identifiable actions taking place…

Everyone views the world through a prism, and the prism I look through is different than the prism others look through.  That should hardly come as a surprise given that we each find ourselves at any point in time being where we are as a result of the journey we have taken.  It is, therefore, not surprising that those who…

Dmitry Brant, a DC patent attorney at a top patent law firm, recently launched a new software product aimed at the patent market named Patent ClaimMaster.  Patent ClaimMaster is a Microsoft Word plugin that helps you improve the quality of your patent documents while reducing costs. With Patent ClaimMaster you can turn cumbersome and time consuming tasks into simple tasks…

One month ago today David Kappos was confirmed at the Undersecretary of Commerce for Intellectual Property and the Director of the Patent and Trademark Office, and days later he was sworn in by Commerce Secretary Gary Locke.  Since Kappos took control of the USPTO the outward appearance of things has been slow, save his nomination of Robert (“Bob”) Stoll to…

As is the case with all recessions or economic downturns, more and more people are turning to inventing.  This is not at all surprising, and is in fact exactly what you would expect.  When finances are difficult people look to themselves for assistance, and to figure out how they can make a better tomorrow without relying on anyone else.  This…