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 are patent attorneys will recommend that you should first file a patent application, and it is not surprising that those who are business coaches or licensing executives may recommend a different first step on the path to what will hopefully be success.
I do not begrudge anyone their point of view, or suggest that there is but one right way to successfully get from point A where you have an idea or invention to point B where you dreams of commercial success are coming true, but with every choice there are associated risks. Unfortunately, many inventors still have not received the message about the importance of filing a patent application as quickly as possible. I know this to be true because every week I am contacted by inventors who either have already started selling or using their invention, or who are within a few days or weeks of the same. With the United States being a first to file system, a change that became effective March 16 ,2013, this can be a fatal mistake.
Generally speaking, an invention can be patented if it is new and non-obvious. What obviousness means these days is just about as clear as mud, thanks to the US Supreme Court decision in KSR v. Teleflex. Indeed, what is obvious is largely in the eye of the beholder, although the Patent Office has tried to articulate an objective standard reflected in the so-called KSR rationales. For now lets take a leap of faith and just pretend that there is a consensus with respect to what is and what is not obvious. At least in the first instance when determining whether an invention is patentable that is the way to proceed, because if your invention is not new we never have to ask whether it is obvious. For those interested in getting into the weeds with respect to obviousness I recommend Understanding Obviousness: John Deere and the Basics,Obviousness When All Elements are Not Present in the Prior Art, andWhen is an Invention Obvious.
Last week the United States Patent and Trademark Office announced that they will be holding a roundtable event on April 10, 2014, to discuss President Obama’s desire to find ways to allow the public to provide the Patent Office with prior art.
The patent laws already allow the public to submit prior art, and the public has hardly noticed. In fact, the America Invents Act (AIA) ushered in a new era of so-called crowdsourcing of prior art with the institution of third-party preissuance submissions. Despite how sexy this initiative seemed at the time or may seem in a social media, crowdsourcing conscious public, the reality is that during the first 15 months one could make a third-party preissuance submission there were only 1,228 such submissions filed, During this same time there were never fewer than 584,998 applications at the Patent Office awaiting first action.
The number of applications third party submissions could be filed in during this time would be much, much higher since a third-party submission can be filed prior to the earlier of: (1) The date a notice of allowance; OR (2) The later of: (i) 6 months after the date on which the application is first published by the USPTO, or (ii) The date of the first rejection of any claim by the examiner. But even if we conservatively assume that 584,998 application were available for such a filing that means that a minimum of 99.8% of applications have received no third-party preissuance submission. So much for the popularity of crowdsourcing prior art, at least prior to patent issuance.
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?
As the dust settles after the storm caused by the conversion of the United States patent system from a first-to-invent system to a “modified” first-to-file system through implementation of the America Invents Act (AIA) on March 16, 2013, it is essential that companies and inventors avoid inadvertent disclosures of the company’s or inventor’s inventions on social media networks and the company’s website.
Social media websites such as Facebook, LinkedIn and Twitter, have changed the manner that businesses communicate and market their products and innovations. Although these tools may be beneficial by creating market “buzz” for new products through rapid information sharing, they may also be detrimental to a company’s patenting practices for the same reason. If disclosures of up and coming products are made on social media websites without the company first filing for patent protection, and the disclosures are then copied by a second party who then files an application based on the company’s social media disclosures, before the company does, then the first-to-file law could bar the company from patenting the invention, whereas the second party could then obtain patent rights to the invention disclosed on the social media site.
President Obama signs the AIA on Sept. 16, 2011, setting the stage for first to file.
The America Invents Act (AIA) was signed by President Barack Obama on September 16, 2011. The most significant changes to U.S. patent law did not go into effect right away. Rather, there were waves or phases of implementation. The second phase of AIA implementation was ushered in on September 16, 2012, which brought with it a host of new post-grant procedures, supplemental examination, changes to the oath or declaration requirement, and other various items. By any objective measure phase two ushered in massive changes to patent law and procedure.
By comparison, however, the second phase of AIA implementation pales in comparison to the third phase of AIA implementation. Effective on Saturday, March 16, 2013, the United States is now a first to file country, abandoning the first to invent laws that were long the hallmark of U.S. patent law and practice. The oddity, however, is that what has been adopted is not really a first to file system. There are some exceptions whereby a person who files second can still prevail, but those exceptions are infinitesimally insignificant, and the law surrounding the parameters of the exceptions is non-existent and unfortunately rather ill defined by the USPTO at this point.
It is also critical to understand that the new law contains traps and loopholes. For those who have not spent adequate time considering the many nuances of the law you will be surprised to learn what it really means. For example, did you know that long held and previously unpatentable trade secrets can now be patented? It seems unthinkable, but then again it is also unthinkable that the law will allow for the re-patenting of inventions, but it does that as well.
The pending litigation between Grant Street Group and Realauction.com finally appears to be headed for trial. A trial date for Grant Street Group v. Realauction.com, LLC has been set for June 3, 2013, with jury selection commencing a few days prior on May 29, 2013. Grant Street Group is currently the world’s largest Internet auctioneer and according to its website was founded in 1997 in Pittsburg, Pennsylvania. Realauction while a bit smaller, was founded in 2004 in Ft. Lauderdale, Florida. This lawsuit has been pending since 2009.
The trial will take place in District Court for the Western District of Pennsylvania, and Grant Street Group is currently suing Realauction for patent infringement of U.S. Patent No. 7,523,063 (‘063 patent). The patent in question surrounds the process and apparatus for conducting auctions over electronic networks.
In 2009, I wrote for IPWatchdog about the case of In re Lister where the patent applicant barely avoided a potentially fatal “printed publication” bar based on his own copyrighted manuscript that was searchable in two commercial databases, but only after the critical “bar date.” See CAFC Rules Patent Applicant’s Own Copyrighted Manuscript Not Publicly Accessible. That was followed by a much more comprehensive article that I wrote which was published in 2011 on applying the “printed publication” bar to electronically posted documents. See Guttag, Applying the Printed Publication Bar in the Internet Age: Is It as Simple as Googling for Prior Art. That 2011 article included a discussion of the Lister case, but focused primarily on the 2008 case of SRI International, Inc. v. Internet Security Systems, Inc. where a majority of the Federal Circuit panel ruled that there were “genuine issues of material fact” sufficient to preclude a grant of summary judgment that an electronic document temporarily posted (but freely accessible) on the FTP server of the patentee (SRI International) was a “printed publication” bar.
One of the “revelations” I discovered in researching and writing that 2011 article is that the “printed publication” bar is really two distinct and parallel doctrines that the Federal Circuit has all too often unfortunately commingled together. The first, more active form is the “dissemination” doctrine. The second, more passive form is the “publicly accessible” doctrine (sometimes referred to as “constructive publication”).
The recent case of Voter Verified, Inc. v. Premier Election Solutions, Inc. (Nov. 5, 2012) is the latest example of the Federal Circuit being oblivious to the parallel existence of these two doctrines (and especially the requirements for each of these distinct doctrines) for applying the “printed publication” bar.
Looking for prior art can be a little like looking for a needle in the proverbial haystack. You set out looking for the closest references, which typically comprise patents and various printed publications. But where are you going to look? There are plenty of databases one can access, but each database comes with inherent limitations. You can only find what is within that particular database. While you can string databases together to do a more comprehensive search, no patent search is ever going to be able to search for each and every reference known to exist.
When you are doing a patent search to determine whether it makes sense to spend the time, money and energy to move forward with a patent application you expend an amount of money that is a fraction of the amount you will likely spend on the overall pursuit of the patent. For example, when we do patent searches for software related inventions we charge $2,500, which is roughly 10% of the overall cost of obtaining a software patent from start to finish. Can you find everything for $2,500? No, but you can get a very good sense of what else is out there and whether there is any realistic likelihood that a patent could be obtained.