Posts Tagged: "utility patents"

Bloomberg recently published an article providing data analysis on Chinese patent applications to claim that, while China receives more patent applications than any country, “most are worthless.” If you were trying to usher in a culture change, moving from no patent system just a few decades ago to a thriving and high functioning patent system, you would look to incentivize your own citizens and corporations to file patent applications. That is precisely what China has done and is continuing to do. Thus, the mantra about Chinese patent applications being worthless, or nothing of a concern because they are overwhelmingly only filed in China, completely misses the enormity of the change taking place in China, and why it bodes well for the Chinese moving forward.

Intellectual property probably isn’t high on the to-do list for most new nonprofits and business start-ups. There’s plenty enough to do with setting up an organization, paying bills, and serving customers and clients. However, intellectual property is important and shouldn’t be overlooked. Companies and organizations that don’t protect their IP can risk losing hard-earned work and concepts. Also, companies can risk liability if they violate the IP rights of others, even unknowingly or by accident. Patents provide inventors the right to exclude others from using the technologies covered by the patent for a limited time.  In exchange for exclusivity, inventors must disclose how to make and use the invention.  An inventor can apply for a patent with the United States Patent and Trademark Office (PTO), as well as other intellectual property offices around the world.

Dallas, TX-based online dating app developer Match Group filed a suit in the Western District of Texas alleging claims of utility and design patent infringement, trademark infringement, and trade secret misappropriation against Austin, TX-based dating app provider Bumble. Match alleges that Bumble, which was founded by former employees of Match’s Tinder dating service, copied major elements of the interface from Match’s app including swiping elements used to identify potential matches.

A utility patent is one of three separate types of patents the U.S. Patent and Trademark Office (USPTO) can award inventors to protect their inventions. Generally speaking, a utility patent will have a term that begins on the date the patent issues and ends on the date that is twenty years from the date the application for the utility patent was filed in the United States. To obtain a utility patent a utility patent application must be filed at the U.S. Patent Office. Many inventors will choose to start the process toward obtaining a utility patent by filing a provisional patent application first and then within 12 months filing a non-provisional utility patent application.

First, every patent claim needs a preamble, which is the introductory phrase in a claim… Second, every patent claim needs a transition. The most common transitions are: “comprising” and “consisting of” … Third, the first time you introduce a limitation you MUST introduce it with either “a” or “an”, as is grammatically appropriate… Below in an example of an independent claim that applies the above stated three simple rules, which is taken from U.S. Patent No. 6,009,555, titled Multiple component headgear system.

A patent is a proprietary right granted by the Federal government pursuant to laws passed by Congress. The Congressional power to authorize patents is found in Article I, Section 8, Clause 8, of the United States Constitution. exclusive rights are provided for a limited time as an incentive to inventors, entrepreneurs and corporations to engage in research and development, to spend the time, energy and capital resources necessary to create useful inventions; which will hopefully have a positive effect on society through the introduction of new products and processes of manufacture into the economy, including life saving treatments and cures. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974).

Design patents are, in my opinion, an unfortunately overlooked patent. While a single design patent is a weak form of protection, they can be obtained quickly, rather inexpensively, and you can market the product using the terms “patented design” once a design patent has been obtained. Therefore, inventors and their representatives would do well to consider whether one or more design patents would be useful to supplement protection sought by a utility patent in order to facilitate a larger business strategy.

Fees for patent attorneys are going to vary quite significantly depending upon the geographical market and the attorney’s level experience. Based on 2011 economic data, the national average for a partner level attorney is $441 per hour, the national median is $410.00 per hour, the 25th percentile is $325.00 per hour and the 75th percentile is $535.00 per hour. Cities like Boston, New York and San Francisco tend to be the most expensive (where the average is $555 to $570 per hour). Texas, Chicago and Washington, D.C. also tend to be more expensive than most other parts of the country, but not as significantly so when compared to Boston, New York and San Francisco.

Estimating US patent costs is a difficult matter because so much depends on the technology involved, but answering “it depends” is not particularly insightful or helpful. What follows are some general ballpark estimates, which should give at least some guidance when trying to budget for the filing of a patent application at the United States Patent and Trademark Office.

A non-provisional patent application is a domestic U.S. patent application that has the possibility to mature into an issued U.S. patent if after examination the patent examiner is satisfied that the patentability requirements have been met. So you can get a plant patent, a design patent or a utility patent. Obviously, plant patents come from plant patent applications and design patents come from either design patent applications or design patent continued prosecution applications. Utility patents, however, can come from a non-provisional utility patent application, a divisional application, continuation, continuation-in-part and/or a reissue application.

In order to obtain a utility patent one must file what is referred to as a non-provisional application or a non-provisional utility application. It is called “non-provisional” to distinguish it from a provisional patent applications . . . When you file a non-provisional application your application will be preliminarily reviewed by a Patent Office employee to see if all of the parts of the application, including the filing fee, are present. In order to file a non-provisional application you must fill out a number of forms, such as a Utility Transmittal Form, which really acts as a checklist to make sure you are including everything you need to file. Of course, you also must create the patent document itself. There are no forms for the patent document, which makes it challenging . . .

Licensing is relatively easy and potentially less risk financially and less time consuming, but licensing also has its negatives. So I went to Surf Expo with my wife to help us decide what to do… At the tradeshow, we found that the President of the Water Sports Industry Association loved our product, but he warned us that if we were to license this product into the existing market that what we would find was two-fold: one, they wouldn’t do it with the same heart, they wouldn’t have the same passion as the inventors and the team that created it and, two, they wouldn’t potentially invest the right amount of money into it and in some cases they may actually bury the product concept and prevent it from coming into the market, because they may see our product as competition to their market. It could have a potentially negative impact on say kneeboards. I was warned to stay away from licensing, in this particular case, and if we really wanted to see it grow, to go full-time into it. So I asked my two friends if they really wanted to take this on and I would be their mentor as they go through the process of beginning a company. So that took the stress off of me. I gave them equity in the new venture, which owned a full utility patent. They showed what they were made of and created a very successful business with a simple concept, “to help lots of people enjoy their time on the water!”

The Zup™ is perhaps the most cool and innovative wake board you have ever seen. There are a number of other patent applications pending, trademark applications pending and ongoing research and development for future products. The Zup™ is special because literally anyone can ride the board and participate in the fun. I knew that Glen was onto something when he showed me a video of an early prototype in use years ago. There was a giant fellow — 6’8″ and easily 290 pounds — who managed to get up on the board with ease. I thought to myself, “that shouldn’t happen!” Being a big guy myself I understand how difficult, if not nearly impossible, it is to get up on a traditional wake board. In that same video I also saw an elderly grandmother get up on the board. Neither size nor upper body strength mattered. It was then I knew Glen had something special.