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!

Intellectual Properties in Business

Virtually everything that gives your business a competitive edge is protected by the law.

Your supplier list is a trade secret. Your company/brand names are trademarks. You can (and you should) patent your new and unique business/product ideas to prevent copycats. For many start-up companies, intellectual properties are all they have.

Trademark and Patent

It wouldn’t be fair if others can misappropriate the fruits of your hard work. For instance, when you keep your business know-hows confidential and they give you a competitive edge, they are protected by the trade secret law.

Of course, there are steps you can take to protect your valuable IPs more securely. You often see “®” mark next to many trade and brand names. The “R” stands for “registered trademark“. Although registration is purely optional, it has become a standard practice for good reasons.

What about “patent pending”? It means there’s a current patent application. By filing a patent application, you disclose your invention to the public in exchange for a legally sanctioned monopoly for a limited time. In other words, people will learn everything about your invention, but for about twenty years or so, nobody other than you can use that invention.

The worst thing you can do is to do nothing.

For example, unless you register your business name, your right to the name is limited to your current market. (That doesn’t sound good for start-ups, right?) Also, there’s nothing legally wrong about your competitors reverse-engineering what you’re selling in the market. Once they figure it out, you can’t stop them from copying it.

US Trademark Backlog in the 1Q 2018?

There’s been reports about a huge number of applications, originating from China. See e.g. this WJ article at https://www.wsj.com/articles/flood-of-trademark-applications-fromchinaalarms-u-s-officials-1525521600.

Then, is there a backlog created by the increase of Chinese trademarks?

I had a chance to look at the dates of applications filed on behalf of my clients from 3Q to 4Q of ’17 and to figure out what’s going on.

Legal examination of a trademark application starts after about three months from the filing date, and depending on the assigned examiner and the result of the examination, it can take a month to many months. I felt in 3Q and 4Q of ’17, the examination process moved slower than before, comparing 1Q and 2Q of ’17, but it might’ve be just coincidental.

When an examination is completed, there’s a notification that sets forth the publication date in about 20 days. That waiting period for publication has been more or less consistent from 4Q of ’17 to 1Q of ’18.

After the application is published in the Official Gazette, If there’s no opposition during next 30 days, the application moves on to the process of being registered. This registration process usually took about 6 weeks in 4Q of 2017 and about the same time in 1Q of 2018.

So, what’s the conclusion? If there’s a backlog, it must be on the legal examination part of the process as you probably guessed. And unfortunately, the examination process is one of the trickiest part to tell how long it usually takes, rendering our survey inconclusive.

Eric Rogers, JD, PhD

We’re pleased to have Eric J. Rogers, JD, PhD as our member attorney.

Eric Rogers, Esq. studied molecular biology at the University of Texas Southwestern Medical Center earning his PhD in 2005. His scientific career highlights include post-doc at Harvard Medical School and research at Easton Laboratory.

He studied law at Chicago-Kent to embark his legal career in 2013, and since then he served as an IP director at Molecular Templates, Inc.

With his pharmaceutical background, he focuses on drug patent issues along with other regulatory issues related to the pharmaceutical industry.

If you have questions directed to Mr. Rogers, please contact admin@ipfever.com for assistance.

Avoiding (or Overcoming) an Obviousness Rejection – Patent Prosecution

Common questions:
obviousness-rejection

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.

Get it Done: Office Action - overcoming an obviousness rejection

Writing Specification of Your Patent Application

Common questions:
patent-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).

 

Talk to the lawyer who reviewed your claim(s).

Writing a Claim for Your Patent Application

Common questions:
patent-claim

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.

 

Is my claim(s) broad enough? Ask a Lawyer

We should ditch Avvo.

*For those of you who are not familiar with Avvo, it’s a website where lawyers give out free answers and, in return, get ranked higher in its proprietary lawyer directory.

Isn’t a lawyer just like a mechanic?

Observation: You walk into their places, and you aren’t quite sure what’s going on. And you pretty much pay what’s on the bill. Also, unfortunately you can’t quite live without them.

Why, then, there’s no Avvo for mechanics? Wait a minute, there’s a whole bunch!  Youtube is full of DIY videos on how-to-fix this and that, and there are numerous websites like ask-your-mechanic.com (not a real website).

They are not the same.

Car-fix videos and websites may be in part trying to promote business, but if you think about it, a very small number of the viewers will be located in the author’s geographical area. Further, the videos more often than not wholeheartedly say “don’t waste your money, you can do it yourself.”

Many lawyers reluctantly participate in Avvo just to gain publicity.

Here’s why we should ditch Avvo.

Mechanics sell their labor, meaning what they charge for is not the solution but the work performed to implement the solution.

Simply put, DIY videos may provide a solution, but they never fix your problem. If you do it yourself, you can probably save a trip to a local mechanic. But it’s not really free because you’ll be spending your own time and resources to get the job done.

Lawyers are different.

What lawyers sell is often the solution and nothing more. To elaborate, let’s say an attorney researched an issue and found that the law and facts strongly favor the client. Now, what the attorney needs to do is filing a complaint with the court.

Scenario 1: The attorney goes to the client and say “I’ve come up with a great plan to solve the problem, so you should pay $900 for it,” and add that “If you want, I will draft a complaint according to the plan for $100.”

Scenario 2: The attorney says to the client “To solve your problem, you need to file a complaint with the court; it will cost you $1,000 in total.”


These two scenarios are essentially the same as to the effect. However, the latter sounds much more reasonable and convincing to the client.

Scenario 2 works perfectly unless there’s an alternative that involves no lawsuit.

Let’s say there is a no-lawsuit plan that will cost the client $100 less because there’s no need to file a complaint but does the exactly same job. Now, would the client be happy with the $900 plan because it’s cheaper than the the original $1000 plan requiring a lawsuit? Or be appalled at the $900 fee for the all talk and no action plan? In many cases, it’s the latter.

The attorney will be inclined to keep the client happy and earn extra money  by promising justice in the name of a lawsuit. It sounds rather reasonable, but the attorney just tossed out a cheaper but equally effective option. I think lawyers shouldn’t rationalize something like this by saying that’s how it works.

Telling clients what they want to hear is never good in law practice.

I think what Avvo is doing is effectively eliminating the first $900.

Let’s say an Avvo user acquired a great advice that includes filing a complaint. The advice was given free, but can the client walk into another attorney’s office and pay $100 for filing a lawsuit? Probably not.

The lawyer who was later retained to file a lawsuit might charge less than $1,000 for it, but it all depends on how much the advice can reduce the time and cost to draft the complaint. In all fairness, no plan is like an instruction you can mindlessly follow; the fee could be less than $1,000 but never $100.

Let’s say you stick to the first attorney who masterminded the plan. Here, the lawyer just performed a $900 worth work for free, and … wait a minute. $900 out of $1,000? Is this a rate of discount a seller can afford?

The pitfall of Avvo.

A service provider can’t give out free answers when those answers are actually the essence of their service. Avvo might argue that it’s making legal service more accessible, but I say it’s going into the wrong direction.

A smart way to work with attorneys.

It starts with educating clients. When clients understand what’s going on, billing is just a formality facilitating the exchange of resources. Also, when clients are in control of what’s on the bill, they won’t complain much. Easier said than done, right?

I’m developing a platform where anyone can access a crash course on how to deal with a legal issue and work with attorneys as if they are experienced managers of their attorneys. You can check out IPfever.com where I’m working on trademark and patent related services.

For a starter, I’m writing step-by-step instructions for trademark and patent prosecution and on the side listed each step as a stand-alone product. One can follow the steps and meanwhile get help for certain steps that turn out to be troubling.

If you’re interested in IPfever, please keep reading.

IPfever is not another marketplace for legal services. For one, there’s no transaction fees for attorneys or clients. Also, any verified professional can sell their services, and there is no subscription required to access web contents or purchase legal services online.

In the future, IPfever may also include paid services like online tools and resources for law practitioners and office administrators, from which revenue can be generated. However, those services won’t unfairly compete against third-party equivalents. Otherwise, it would follow the footsteps of Avvo, leading legal industry into destructive competition.

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.

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.