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Intellectual Property Patent Patent Application

Patent Obviousness Rejection Explained

Obviousness is a very common reason for rejection.

A grant of patent without a single rejection is quite uncommon. One of the reason is that most applicants want to claim broadest possible for the greatest protection of law.

Broadening the scope of claims.

To maximize the scope of your claim, you don’t want to include unnecessary details in your claim. Let’s take a look at an example (from a real patent). You don’t have to read it through, just scheme.

[an excerpt from US8143982B1, bold added]

Drawing-1
always easier to understand the claims with drawings

1. An accessory unit, comprising:

a hinge span, the hinge span including a first magnetic element suitable for magnetic attachment to a host unit having a display; and

a flap portion pivotally connected to the hinge span, the flap portion comprising:

a plurality of segments all but one of which are substantially the same size and wherein one segment is wider than the other segments, wherein each segment includes a pocket that is about the same size as the corresponding segment,

a rigid insert incorporated into each pocket, the rigid insert providing support for the associated segment, and

a folding region between each of the segments arranged to allow the plurality of segments to fold with respect to each other, wherein a first segment is located at a first end of the flap at the hinge span and includes a magnetically attractable element and wherein a second segment is located at a second end of the flap opposite the first end and includes a plurality of magnets, wherein in a first folded configuration the flap portion forms a triangular structure when the first and second segments are folded one atop the other such that at least one of the magnets in the second segment magnetically attract the magnetically attractable element in the first segment, wherein the first and second segments that are folded one atop the other and magnetically attached to each other form one side of the triangular structure that is about equal in width to a second side of the triangular structure each of which is narrower than a third side of the triangular structure.

[end of claim 1]

What’s claimed?

By looking only at highlighted words, you can figure out that it has two main components, a hinge span and a flap portion, and the flap portion has three sub-components, a plurality of segments, a rigid insert for each segment, and a folding region between each of the segments.

What do you make out of it? Well, it’s iPad Smart Cover by Apple.

Let’s look into the details.

A hinge span is described as follows: including a first magnetic element suitable for magnetic attachment to a host unit having a display.

It doesn’t say a magnet or a tablet PC. Instead, it says a magnetic element suitable for magnetic attachment and a unit having a display, respectively. If it said a magnet, someone can make a cover with a lodestone instead of a magnet and avoid infringement. The same thing goes to the tablet PC.

But, why not just an element suitable for attachment? I think that would be the track which leads to the obviousness trap. Granted it would expand the scope, it also eliminates an outstanding element from the invention. Every cover has some element for attachment.

On a side note,

what about a unit having a display? Why not a unit having a flat surface? Well, Apple is an electronics company, and it probably wouldn’t make a cover for your photo frame. In that sense, a display pretty much is everything that needs to be covered in Apple’s patent.

Infusing non-obvious elements into claims.

Skipping forward to the bulky section, a folding region, can you guess why in the world it is so long? Well, you guess it’s important, right?

This is the section that makes this cover distinct from any other cover design within people’s mind (at the time of invention, of course). It describes how the segments of a cover fold and magnetically bind together to form a rigid stand that can support a host unit. So, you have to describe it fully.

By the way, a cover that folds into a stand is not an invention by Apple. Search Google Patents “US8960421B1” and you will see a prior patent filed by Incase Designs Corp. that has almost identical folding functionality.

Let’s take a look at a claim by Incase Designs [excerpt from US8960421B1].

Drawing-2

1. A cover for an electronic device comprising:

a rectangular front cover comprising first, second, and third panels between a first edge and second edge of the front cover, wherein the first panel is closer to the second edge than the second and third panels, the second panel is between the first and third panels, and the third panel is adjacent the second panel,

between the first and second panels is a first hinge, and

between the second and third panels is a second hinge;

a back cover, coupled to the front cover, which will retain the electronic device in the case; and

[It goes on, but let’s stop here.]

So, a flap portion of Apple patent can’t overcome an obviousness rejection by itself despite the elaborated manner of how segments fold and get attracted together to form a stand; that’s where the magnetic element for attachment comes into play. This magnetic element obsolete a back cover, which is listed in the Incase Designs’ patent claim.

Here’s an important question: if Incase Designs knew a way to make a cover without a back cover, would its claim include the back cover element in the claims?

The fact that Incase Design included the back cover element in the claim supports the non-obviousness of replacing a back cover with a magnetic element.

You can read more about this in “Including an unnecessary element in the claims.” 

How to deal with an obviousness rejection.

After a careful thought and drafting an application, you can still get a rejection based on obviousness. In this case, you can try again, or get help from patent attorneys.

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Intellectual Property Patent Patent Application

How to Write a Patent Application: Specification

Patent Specification in your application is the body of your application.

Your patent claims will be read in the context of the specification. Therefore, the specification should include all the information necessary to figure out what you claimed in your patent claim(s).  Roughly speaking, it should be an all-inclusive manual for your invention.

It’s part of the deal you’re making with the public.

You’re disclosing  your invention to the public, and in exchange you’ll be granted a monopoly for a limited time. To ensure fairness in this deal, you’re required to fully and comprehensibly disclose your invention without hiding anything.

You should focus on making the invention available to the public. 

If you want to hide something from the public, you’re free to do so by opting out from disclosing it, in which case you shouldn’t claim it either. However, you shouldn’t attempt to hide even a minute detail of your claimed invention because it can invalidate your patent retrospectively.

For example, let’s say you know two ways to make your invention. You know one works better than the other, but you don’t want people know about the better one. If you disclose the other one only, the patent will be held invalid.

If you don’t claim it now, you may lose it forever.

You may be tempted to include everything you know in your patent application because it would make sure you disclose adequately. Be careful when you include something in your disclosure which are not claimed. Filing a patent application is considered a publication. If you publish something, you will have a year to file a patent application for it. After that, you can’t patent it.

There’s much more.

Although you can learn a lot from the patent applications you found during your clearance search, it’s still not a perfect guide for your specification. To understand your claim, one must read the specification. For this reason, asking an attorney who reviewed your claim(s) to review your specification could be a lot less time-consuming than you think. You don’t need to pay for the separate availability retainer in that case. Just talk to the lawyer who reviewed your claim(s).

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Intellectual Property Patent Patent Application

How to Write a Patent Application: Claims

Patent claim in your application defines your invention.

And it will determine the scope of your legal rights. In other words, it will tell the others what can be done and cannot be done without infringing your patent right.

Read the claims written by professionals.

By the time you start drafting your application, you probably read at least a number of patent applications. And if you did with care, you would’ve noticed the peculiar but consistent writing style.  In fact, you must follow a specific set of rules created by the USPTO when writing claims.

Pay attention to details including punctuation and spacing.

You shouldn’t worry about plagiarism. Use the wordings and grammar (including all formalities) that you see in the patent applications that are granted. Don’t be creative and get rejected.

What about the substance?

Patent applications often have multiple claims, and a claim likely has a multiple components.

The wordier the better?

No. If you include a non-essential component in your patent claim, your competitor can avoid infringement by making a product without the component.

Then, as little as possible?

That’s another no. If there is an alternative material or device which you left out, it could lead to an easy design-around for your competitor.

There’s much more.

To be honest, it is not an easy task to write a good claim. For example, patent law distinguishes “comprising” and “consisting.” If you say your fuel additive consists of chemical A and chemical B, you are telling that there’s no other chemical than A and B. “Comprising” is, on the other hand, open-ended.

Should you know all these technicalities? Well, if you want to become a patent practitioner. Otherwise, it’s more efficient to have a patent practitioner take a look at what you wrote. If your invention is not too complicated, the review shouldn’t take too long.

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Intellectual Property Patent U.S. Patent

Why getting patent so expensive?

It doesn’t have to be so expensive.

It’s just that the law firms, boutiques, or their likes practicing patent law are focused on serving bigger mostly corporate clients rather than individual inventors.

When it comes to an invention which is more about an idea and less about technology, you don’t need PhDs spending hours reviewing the art let alone attorneys.

In addition, firms charge more money per hour for small clients than those bigger corporate accounts that generate vast volumes. You can’t really blame them as that’s how business works, but it’s unfortunate that there are few options for individuals and small businesses.

There are alternative, smarter ways to work with attorneys thanks to the internet.

It won’t be easy to find them because the internet search usually shows heavily advertised service first, which can be cheap but not necessarily a better deal. At all times, make sure that you’re working with a patent attorney/agent who’s registered with the USPTO.

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Intellectual Property Patent U.S. Patent

Utility vs. Design Patent

Actually there are more than one type of patent.

There’s utility patent, which is basically what you think patent is. And there’s design patent, which is somewhat unpopular but got the attention when Apple sued Samsung for infringing its design patent.

These two types likely cover all your needs. If you want to protect the cosmetic features of your product, consider design patent. For all other cases, you’ll be thinking a utility patent.

To add, if your design feature has a utility in it (i.e. when your new design serves a function), then you will probably have to go with a utility patent.

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Intellectual Property Patent U.S. Patent

What can be patented?

You found nothing like yours in your Google Patents search, and you might feel ready to patent your new idea. It’s not that simple.

First, your invention should be new in a sense that people don’t know it yet.

Even if nobody really patented an idea, the idea might be known to many as a common sense or to a small number of people known as experts or scholars. It doesn’t matter how many people know it.

When you go into detailed analysis, it gets more complicated. Let’s say your company is the first to sell a mouse pad made of bamboo and you want to patent it.

  1. The bamboo is obviously not a new material; it’s not even a man-made material. Clearly, it’s not something you can consider an invention.
  2. Similarly, a mouse pad is not a new thing. It’s been made of many different materials and widely used in personal computing.
  3. Now, a mouse pad made of bamboo? Let’s further assume nobody on the planet Earth ever made or used a mouse pad made of bamboo. Is it new then?

Unfortunately, it’s not. The law will not only look at the things that already exist but also guess what can be done with existing technology and skills. I mean bamboo is a sturdy and hard material that can be easily shaped into a small plate. The law will likely say that your new idea of making a mouse pad with a bamboo was obvious. Basically it’s saying that “we don’t need an inventor to do that.”

Second, you have to fit your idea into certain categories that can be patented.

The law provides a short list: process, machine, manufacture, or composition of matter. If you think about it, it’s pretty broad. In the above example, we discussed a bamboo mouse pad as a manufacture, which we concluded not patentable.

However, you may have a ground-breaking manufacturing method to process a raw bamboo tree into a large plate that can be easily cut into any shape of mouse pads. Well, that might be a patentable “process”.

We can go further. If you designed and made a machine for the processing of raw bamboo trees, you may patent the machine as long as it satisfies other requirements. As you can guess, inventors often patent a manufacture, the process of making it, and the machine that performs the process at the same time.

Lastly, your idea has to have a purpose.

This is usually not a concern because the law doesn’t ask for a good one. If you can find a single use for your invention, that’ll be fine. The use doesn’t have to be new or better than others. In fact, even if your method of processing bamboo turned out to be too expensive to make economic sense, it still has a utility in the eye of the law.

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Intellectual Property Patent U.S. Patent

Patent Infringement: Clearance Search Explained

Patent clearance search is called a Freedom-To-Operate opinion because it reveals others’ patents that are blocking your way. It requires searching and analyzing patent documents in the country where you do business.

Even if you invent something new, it is often based on other’s previous works.

For example, you get a patent on a new cap design for plastic bottles, which reduces the cost of production. Even though you have rights to the new cap design, someone else might have patent rights to the bottle’s body design. Without the body, you won’t be making  a good use of the cap. Furthermore, even if you design an entirely new bottle (both the cap and the body), the method of making bottles out of plastic might have been patented. These are blocking patents because without infringing them you can’t practice your right.

You can search through patent documents via Google Patents (a free service by Google at https://patents.google.com).

Once you identify a potentially blocking patent, the scope of the patent needs to be analyzed.

1. Claims determine the scope.

Patent applicants are required to stipulate in the Claims what exactly their invention is about. All other parts of patent application help you understand the claim.

2. The scope will be construed by the courts.

What the patent owner believes does not matter. Nor does what you or your attorney think matter. When there’s a patent lawsuit, the court may side with either your attorney or your opponent’s attorney.

However, a legal opinion formed by a qualified attorney in your favor is helpful. For example, let’s say someone sued you for patent infringement and is being awarded for damages. If you can prove that you relied on your attorney’s advice that there’s no infringement, you may shield yourself from the penalties for willful infringement (i.e. knowingly violating someone else’s right). The penalties can increase the damages up to three times.

3. Patents do expire, so you should check the dates.

Most patents expire after 20 years from the filing date. So, if you find an old blocking patent, that might be actually a good news. Once the patent expires, you know for sure that’s in the public domain.

Blocking patents bar you from not only selling but also importing.

Often you rely on production facilities overseas and feel that blocking patents are not your problem. But if foreign products infringe U.S. patents, they can’t be imported into the U.S.  Of course, the other way around is true.

You can design around, get license, or challenge the patent’s validity.

When there’s a blocking patent, there are still things you can do. You can design around, meaning you find other ways to achieve the same outcome; you can get a license if the patent owner is willing to let you use the invention for a reasonable loyalty; or you can argue before the court that the patent is not valid.

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Intellectual Property Patent U.S. Patent

Patent: what is it?

Patent is an expensive but smart way to protect your business.

Getting a patent is not a quick and easy process. It usually takes years of prosecution (though you can claim “patent pending” from the moment you file the application) and thousands of dollars. However, the reward is a government sanctioned monopoly. Yes, MONOPOLY.

Patent is a deal you make with the public.

You discloses something other people don’t know, and in exchange other people can’t use it for a limited time period (about twenty years) unless you allow them. It’s a win-win. You don’t have to worry about someone else stealing your idea, and the others can learn and improve your invention.

It’s not a contract.

Although the exchange of knowledge and a monopoly right is between you and the rest of the society, there’s no contractual relationship between you and the society. Instead, the United States Patent and Trademark Office (“USPTO”) issues a patent to applicants who discloses their knowledge in patent applications which meet certain requirements. Moreover, if someone infringes your patent rights, you don’t go to the USPTO (nor to a law enforcement agency) but to courts.

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Intellectual Property Patent patent utilization Trademark

How to Deal with Cease and Desist Letter (Patent or Trademark Infringement Allegation)

When you run a business, there is a chance that one day you receive a letter claiming that you are infringing someone else’s trademark or patent rights. It’s commonly called a “Cease and Desist Letter.”

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Intellectual Property Patent U.S. Patent

Protect Your Products with Patent

While there’s innovative product like iPhone, most new products are improved versions of old products.

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Intellectual Property Patent

Patent Basics

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Intellectual Property Patent

Patent Outline

Learn how patent works:

Learn how to get patent:

Learn how to make use of patent:

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Intellectual Property Patent patent utilization

The Hidden Strength of Walmart

Although Amazon is reigning in the online retail market, if you compare the annual retail sales figures of 2016, Walmart’s $363 billion in annual revenue overshadowed Amazon’s $77 billion. This is a meaningful success in the offline retail market where many retail giants are fiercely competing.

What in the earth makes Walmart to score such a high annual sales revenue which is more than twice the combined number of (a) $70 billion by Target, a discount store like Walmart and (b) $86 billion by Costco, a membership store like Sam’s Club by Walmart?

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Intellectual Property Patent U.S. Patent

What is Patent?

Patent is an exclusive right to appropriate an invention.

Patent is often considered a luxury to a small and midsize business. More often than not, you find out about the importance of patents after someone accuses you of a patent infringement. It could be a cease and desist letter or a service of process.

Without an understanding of how patent works, you will never know if you are safe from patent lawsuits.

The problem with a patent lawsuit is that it’s so expensive that most small businesses can’t afford it. What happens then? You enter into a settlement agreement to avoid going to the courthouse. In fact, this can be cheaper than winning the lawsuit after costly legal proceedings.

Even worse, it could happen that:

  • you actually came up with the idea yourself, but didn’t apply for a patent;
  • you have no idea what are the infringing activities that the patent owner claims, or
  • the patent is just bogus (e.g. it’s a standard technique in your industry).

Read more and avoid expensive mistakes for your business!

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Intellectual Property Patent U.S. Patent

How to get a patent without costing a fortune?

How can IPfever reduce the cost of patent? We set up simple rules: (1) you do your own homework; (2) attorneys work online; and (3) we make sure the attorneys fees are proportional to what you get.

First, you do your own homework.

If you just ignore an issue because it’s too much to deal with yourself, nothing ever changes. Most small businesses don’t have a legal counsel of their own, meaning you probably need to spend extra money to work on IP issues. This is a mishap that can be avoided by educating yourself. In fact, basics of patent law can be understood within a reasonable time as long as you know where to look.

Second, attorneys work online.

This is an overly simple statement of what actually needs to be done. We’re talking about reducing unnecessary cost on lawyer’s part. Why do you need a fancy office space in downtown when the government agency you’re dealing with is not even in town?

When a patent research is virtually all about online databases, you don’t want to pay law firm’s researchers, administrative clerks and paralegals for an initial review of your company’s patent portfolio. It is an instant impression of your attorney that you want the most when you ask a lawyer if your business needs a patent. Unfortunately, a lawyer’s typical hourly charge include every help listed above.

Lastly, IPfever makes sure you get what you paid for.

It is unfortunate that the most businesses and individuals can’t afford a lawyer. What about a free initial consultation? We all know free stuff can be poisonous. When an attorney greets a free client, what would be first in his or her mind? He or she wants your business! A need for legal service will be emphasized, and a quick and easy solution is disfavored over conservative and costly measures.

IPfever wants to solve this problem with fairness in mind. If you hard press lawyers to give out more free stuff, it might good in the beginning but won’t last long. Nonetheless, it’s plausible that you can set up a fair ground where you pay for actual value of lawyer’s service. This is awesome not only for clients but also for lawyers who has a good legal mind but lacks marketing skills.

A fair ground starts with a better understanding.

If you are retaining an attorney because you don’t know a thing about the law, then you’re like asking a mechanic to take care of your car with a promise to pay whatever is done.

Read more posts written by professionals.

Go back to see other topics in the Patent Basics.

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Intellectual Property Patent U.S. Patent

How Does Patent Work for Small to Mid-size Business?

Patent is an intellectual property right, which is not aimed to boost the economy but intended to advance science and technology. So, many business-minded people will struggle with the basic concept of patent and how it should be used for their business.

On the other hand, patent is recognized as the most reliable and strong intellectual property right in business. You probably heard about its importance even if you really don’t know much.

The hurdle for small businesses in developing a strong patent portfolio is the expense. Does it have to be prohibitively expensive? Well, it doesn’t have to be. The more you know about the patent, the more likely you will find a solution for your business yourself.

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Intellectual Property Patent patent utilization

Value of a patent: the cost-benefit analysis

Will your patent justify your time and money?

This is where you can benefit from a consultation to a patent attorney who understands your technology and has your best interest in mind.

The truth is virtually anything can be patented … if you don’t mind what is claimed in the patent.

In other words, you sufficiently narrow the scope of your claims to meet the requirements of the patent issuance, and the grant of patent is granted. Unfortunately, this is what you likely get from a cheap flat-fee patent prosecution services.

The quality of patent matters.

When the scope of patent claims is too narrow, you won’t get much from the patent. Let’s say you “discovered” a new chemical. When this chemical is added to a fuel, the efficiency of any internal combustion engine can be increased by more than 50 percent. Now, you’ve got to patent it.

You can patent a fuel additive containing the chemical.

Well, that is too narrow because it would not prevent others from selling fuels (not a fuel additive) containing the chemical. It seems you simply handed over the technology to the energy companies as no one would buy your patented fuel additive.

Then, should you claim the chemical itself?

Not really. When the chemical is not artificial, which is the case here because we assumed that it was “discovered” (not synthesized), it is not a patentable subject.

Let’s talk about the cost.

The government fees can start from a couple hundreds (as you might get discount for being a small business) to thousands of dollars. In fact, it depends on various factors like the number of claims and the length of the application.

Now the patent practitioner’s fees

I don’t recommend a flat fee arrangement unless you know what you’re doing. In other words, you should have sufficient knowledge to meaningfully get involved in the prosecution. Hourly charges vary widely (i.e. from hundreds to more than a thousand), and also the time. Therefore, you should find one you can trust and talk about the cost in advance.

What good comes with the patent application?

In the past, the customers were intrigued by the mere fact that it’s “patent pending,” but I don’t think that still works.

  1. You will thwart competitors from copying your invention although they can be quick to design around your invention (like selling fuels instead of additives).
  2. You will also prevent others from patenting the same technology.
  3. As you do a preliminary work (like clearance search), you will better understand the technology and the market.
  4. Don’t forget the value of intellectual property as an asset. When you’re selling your business, a mere know-how isn’t exactly same as the patent, which is a property right.
  5. If others are interested in licensing your tech, you can also expect a royalty.
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Intellectual Property Patent U.S. Patent

Why you need a patent?

Getting a patent is not like having a trademark registered.

If you started using a name, logo, image, or even a sequence of musical notes as a symbol that stands for your product or service, you already have a trademark. Trademark registration is a way to give an affirmative notice to the public that you are using the mark. The registration offers some perks, which are very helpful for your business, but the intellectual property right is not created by it.

On the other hand, a patent right is created when the government issue you a patent because your creative work doesn’t itself create a property right. If you invented something, you have a choice. You can disclose the ins and outs of the invention in exchange for an intellectual property right or just keep it under your sleeve.

You should wisely decide whether you apply for a patent or not.

A patent application usually discloses something you want to hide from the public as the law requires that (usually after 18 months from the application date) your application be published. In other words, everyone in the world will be able to access the disclosed information in the patent application.

If you have a technology that is immune to reverse-engineering and you are confident that you can keep the secret, getting a patent is probably more of a public service than a business move. Of course, there are instances that you want to open your technology to make it an industry standard. In this case, you patent the technology so people can learn about it, and you promise that you won’t withhold this patented technology unfairly (like demanding unreasonable license fees to discriminate your competitors).

On the other hand, if your technology is not immune to reverse-engineering or you know others will soon catch up your progress, you likely need a patent protection. It will deter copycats and protect your business from an instance where someone else is issued a patent for the same technology and sues you. This situation can be also prevented by disclosing your work to the public in advance because the means for disclosure doesn’t have to be a patent application. Though, in this case you’re simply giving up your rights to the invention.