We all make mistakes, but it seems that whenever the popular media writes about a patent matter they get it completely wrong. I wrote about how the Wall Street Journal gave bad patent advice the other day, and as it turns out the reporter didn’t even seek the advice of a patent attorney. Instead, the advice came from an inventor who was saying you really don’t need to go to a patent attorney, and then opined that you should just do something that would forfeit rights and ensure that inventors who followed the advice would not be taken seriously. Then yesterday, PC Mag republished a story about Amazon’s Kindle patent and not only were the facts wrong, but the entire point of the story was fiction. Call me crazy, but I prefer my news to be factual and my fiction to be imaginary.
Sometimes I almost feel like I am unnecessarily beating up on the media and reporters when I write about how the popular press gets patent news completely wrong. Then I think to myself — if the media gets things this wrong about things that I know and understand, what else are they getting wrong that I don’t know about? I would hardly be any kind of “watchdog” if I didn’t try and correct mistakes I become aware of, particularly given that inventors frequently rely on what appears to be authoritative information and only make their situation worse.
So what did PC Mag get wrong? Pretty much everything. The story was republished from GearLog, and explained that whenever you see “U.S. Patent Application” that means that a provisional patent application has been filed. Don’t believe me, see for yourself:
On Wednesday night, Amazon was awarded another design patent for the Kindle, which covered the general shape of the device. But deep inside the list of references for that patent and others is this:
“U.S. Appl. No. 11/277,893, filed Mar. 29, 2006, entitled “Handheld Electronic Book Reader Device Having Dual Displays,” Gregg Elliott Zehr, Symon J. Whitehorn. cited by other”. March 29 was the same day Zehr and Whitehorn applied for the other patents that the U.S. Patent Office later approved.
The “U.S. Appl No.” designation indicates what’s known as a provisional patent, which allows an inventor to get his or foot in the door without the need to file a formal patent application.
Where to start? Well, lets start with the patent application number. Those familiar with patent law know that when an application number starts with “11” it is not a provisional patent application. Utility patent applications filed between 2005 and 2007 will have as the number before the forward-slash the number “11.” Design patent applications filed since 1992 will have “29” as the first number, and provisional patent applications filed between 1995 and 2007 will have “60” as the first number. So the application referenced is NOT a provisional patent application, but rather a utility patent application. For more information on application numbers see Filing Years and Patent Serial Numbers Since 1882.
Next, it is important to understand that you do not need to start the patent process with a provisional patent application, although in many circumstances you can. A provisional patent application needs to be the first application you file because a provisional patent application cannot claim priority from another, previously filed application. Additionally, if you do not or cannot file a provisional patent application and instead file a nonprovisional utility patent application you will still have a patent application pending, and the pending patent application would be referred to by its application number.
The article goes on to say:
Here’s the catch, though: an inventor has one year after the provisional patent is filed to replace it with a formal, non-provisional filing. If he or she does not do so, the provisional filing expires.
From what I can see, Amazon didn’t pursue the dual-screen filing, which would mean that the provisional patent would have expired years ago. That either means that Amazon decided that the concept wouldn’t make a viable product, or that other dual-screen readers would pose too many legal challenges. Either way, though, it seems like Amazon’s Kindle roadmap won’t be headed in the dual-screen direction.
It is correct to say that a provisional patent application would expire 12 months after it is filed, but the application being discussed is not a provisional patent application, so it did not expire years ago. So, the entire point which the article leads up to is the conclusion that Amazon’s Kindle will not move in a dual-screen direction. While that may or may not be true, one can hardly conclude that is the case based on the information relied upon.
To be fair, this article did about as good a job as one can in explaining what the benefit of a provisional patent application is. Technically speaking, it was over-simplified, but the truth is that there is just no easy way to describe the benefit of a provisional patent application. It is correct to say that you can file an application without all the formalities required, and it is more or less conceptually correct to think of it as a placeholder in line. It is best to say that it provides a filing date with respect to whatever is disclosed at the time of filing. Getting the earliest possible filing date is always something you want to do whenever possible even though the U.S. is still a first to invent country. When you have that filing date in hand it is conclusive proof, and means that whatever follows in the field cannot be prior art. You can add more information to a nonprovisional when you file, but anything added is not entitled to the benefit of the provisional application filing date. I am a fan of provisionals, when done properly. Provisional patent applications done incorrectly, however, are WORSE than not filing anything because you may conclusively prove that you were not in possession of the invention at the time of filing, which is a nightmare scenario. I have written on provisionals quite a bit throughout IPWatchdog.com, and the USPTO has a primer available at Provisional Application for Patent.
The article also did properly explain that Amazon recently started accepting pre-orders for the Kindle DX, which will be available this summer. And the article properly acknowledged that the U.S. Patent Office awarded Amazon a design patent for the Kindle on Tuesday, May 5, 2009. The primary image from the patent is reproduced below.