Why software patents are not fixable

In my efforts to educate myself on the patent system, I’ve learned about the requirements for getting a patent, and what sorts of ideas are patentable. One of these requirements is novelty:

 An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application. A patent must also not be obvious to a person of ordinary skill in the field that the patent pertains:

 A patent may not be obtained though the invention … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. But as we’ve seen, time and time again, the U.S. Patent and Trademark Office enforces these (and other) rules extremely poorly, resulting in thousands of patents being issued that most people knowledgeable in their field would immediately recognize as invalid.

 And that’s not new. Bogus patents have been issued for decades. The USPTO has repeatedly shown that they cannot and will not do their job to prevent most invalid patents from being granted. In the field of software, their negligence seems especially egregious. With the rise of patent litigation due in no small part to the “we don’t sue people” Intellectual Ventures and their shell companies (that only sue people), the number of patent applications is likely to increase dramatically over time.

If the USPTO is granting bogus patents because they’re just slipping past overworked patent examiners, it’s only going to get worse. Invalid patents aren’t just funny government slip-ups. (“Oh look, someone patented toast and linked lists! Stupid patent office!”) Since the economics of civil lawsuits, especially patent lawsuits, prevent most cases against small defendants from ever getting near a court, the potential cost to society of issuing an invalid patent is massive.

 If someone threatens your small business with a patent lawsuit, it doesn’t matter whether the patent is valid. Because for you to prove that it’s invalid would take far more time and money than you probably have. The only sensible course of action, the path taken by almost everyone threatened by patent litigation, is to settle with the patent-holder as quickly as possible for whatever amount of money they demand.

Benefits of obtaining a patentability search prior to filing

Although not required by law, a patentability search is extremely helpful.  For about 25%-50% of the cost, this type of search can assist the client and practitioner in assessing the likelihood of obtaining a patent on their idea, and thus is a valuable and necessary step in the patent process.

When the USPTO Examiner receives a non-provisional patent application, the examiner will perform a patent search on the invention as described in the claims, to determine its novelty.  If the practitioner drafts the application without performing an initial search, there is no way to anticipate what is already in the public domain, or what the examiner will discover.

There are two main benefits to obtaining a patentability search prior to filing.  First, it allows the client to research information that is currently in the public domain prior to preparing, filing, and prosecuting a patent application on an invention.  If the information in the public domain completely anticipates the invention, then the patentability search will save the client thousands of dollars spent on drafting, filing, and prosecuting an application for which a patent would not likely be granted. The second benefit to obtaining a search is that it allows the practitioner to draft a stronger application for the client, thus increasing the chances of success in obtaining a patent.

Usually patentability searches are done by a reputable third party or possibly in house at larger firms.  A description of the novel (new) aspects of the invention are clearly described, and depending on the scope and depth of the search, patents, publications, and all other types of prior art are searched via the USPTO, web and many other databases.  Patentability searches can range from a basic knockout search to a comprehensive patentability search.   The basic knockout search is the least expensive and covers the federal databases for patents and printed publications.  The comprehensive search is more in depth (and expensive) and covers prior art references that either alone or in combination are material to the patentability of an invention. The comprehensive search results may include published applications and issued patents, both US and foreign, as well as non-patent literature such as scientific journals and papers.

Once the search results are received, the practitioner can review the information to determine whether the invention created by the client is actually new.  A patent will only be granted for a new invention.  Therefore, if an existing piece of prior art anticipates each and every aspect of the invention, patent protection will not be granted. A search will identify existing prior art in the field and help to determine if the invention is new.  If the patentability search results show that another piece of prior art completely anticipates the invention, then the client will avoid spending money for preparing, filing, and prosecuting the application.

If the search results reveal that not all of the aspects of the invention are known in the prior art references, then the results can assist the practitioner and client in determining the next step moving forward.  The results of the search can be analyzed to determine the scope of protection afforded to the idea and whether it would make financial sense to move forward with the drafting and filing of the patent.  If it is determined that it makes sense to file the patent, then the practitioner can use the results of the search to draft an even stronger application, in essence, reducing the chance of several expensive office actions and possible denial of the patent.

Provisional patents explained

A provisional patent application is a type of interim utility patent filed with the USPTO. You can file for a provisional patent without including any formal patent claims, oath or declaration, or any information disclosure (prior art) statement. The keyword in provisional patent application is "provisional". A provisional patent application only gives one year of protection.

After that you must file for a non-provisional patent or abandon your patent. The USPTO created provisional patent applications as a means to establish an early effective filing date for a non-provisional patent application, which helped balance American patent law with the patent laws of other countries. It also allows the term "Patent Pending" to be used.

There is a great misunderstanding among many inventors and entrepreneurs regarding what many simply refer to as a “provisional patent.” The first thing that needs to be said is that there is no such thing as a “provisional patent.” Instead, what you file is called a provisional patent application. Like any other patent application, a provisional patent application is effective to stop the clock relative to so-called statutory bars and immediately upon filing a provisional patent application you can say you have a “patent pending.”

Why provisional patent applications a good idea One reason I like to suggest starting with a provisional patent application as a way to initiate the patent process is because they are cheaper to prepare (because there are no formal requirements) and the filing fee due to the United States Patent Office at the time of filing is only $130 for small entities (i.e., individuals, universities and companies with 500 or fewer employees), which saves you several hundreds of dollars compared to the filing fees for a non-provisional patent application. Indeed, the filing fee is even less — just $65 — if you qualify as a small entity.

Many patent attorneys and patent agents will question whether you can really prepare a provisional patent application while spending less time than preparing a nonprovisional patent application. I am here to tell you that it is not only possible but I do it all the time and so do other attorneys at my firm and many other attorneys that I know at other firms. Describe whatever you can, file a provisional patent application and work toward perfecting the invention and seeing if there is a market.

Essential Elements of Patentability

Usually whenever an inventor discusses his invention with patent attorney, the most important elements looked up or analyzed by attorney for determining patentability involves

1. Novelty

2. Inventive step or non-obviousness

3. Capable of industrial application or utility

Along with the above parameters the invention should also be falling under the patentable subject matter and should not form a part of "Invention which are not patentable"

1. Novelty

Novelty (etymologically means either novice/new) is the quality of being new and hence it should not form part of state of art or prior art. It means that the invention should not be anticipated/disclosed in any publication, prior claimed in any invention, used anywhere in the world before the date of filling or the date of priority.

The state of art comprises all matter (published document, prior claims, and use of invention in certain part of world) available to the public before the date of priority. And during evaluation of anticipation by publication, the degree of dissemination is not taken into concern so a single published document or its distribution to a single personnel constitute part of state of art/ prior art.

The test for anticipation from prior art documents is a litmus test for determination of novelty and is also a rigorous one, which involve that prior art document must be entirely contained in a single document & hence cumulative effect of all prior art references available at the date of priority is not allowed.

2. Inventive step or non- obviousness

Once novelty is confirmed, an invention is evaluated for non-obviousness, which involves that the inventive step of an invention should not be obvious to a person skilled in the art, wherein skilled person is an ordinary practitioner aware of common general knowledge in art and has access to everything in state of art.

Inventive step have been dealt in detail in section 2 (1)(ja) of Indian patent act, which set forth that in order to prove inventive step either the invention should be having technical advancement as compared to the existing knowledge available or it should have economic significance as compared to the prior art available.

So an invention is said to be obvious if the prior art provides motivation for invention and by combining the teachings of different prior art available on the date of priority it would lead to the formation of inventive step in claimed invention which is obvious to the person skilled in the art.

Obviousness is a significant hurdle and is highly fact based and the patent office employs numerous indicators in order to access inventive step which comprises of:

1. Complexity of work normally not carried out by research personnel.

2. Invention claim to satisfy a long felt need in the industry.

3. Failure of others to find a solution to the problem in hand.

4. Cheaper & more economical product.

3. Capable of Industrial application or utility

Capable of Industrial application is a common notation for European & Indian patent law, whereas utility is normally considered by patent examiner of USA. Industrial applicability means that the invention is capable of being made or used in an industry, where industry is something which involves any useful or practical activity as distinct from intellectual or aesthetic activity.

On the other hand for determining credibility of a utility patent, application must express a specific, credible and substantial utility.

And in considering the requirement of utility for patents, there are three main factors to review:

1. Operability of the invention;

2. Beneficial use of the invention;

3. Practical use of the invention;

These elements for patentability are essentially the same across all major patent law unions, convention countries and form an important component in determining the fate of an invention during prosecution.

Should you file your patent or not?

Two great tools for inventors that won't break your bank account: provisional patent applications and trademarks.

Successfully licensing an invention or taking a product to market requires research and the ability to talk to people about your invention. It is impossible for a manufacturer or retail buyer to commit to a product without seeing it.

For good reason, many inventors are reluctant to share their invention with people they don't know. Further, once an invention is shared publicly, international patent rights can be lost, and the one-year timeline within which a U.S. patent application must be filed generally has begun to tick. For this reason, many inventors rush out and file a full-blown, utility patent application. That addresses the uncertainties and also enables inventors to alert people that their invention is "patent pending."

However, this approach has several downsides. First, utility patents and even patent applications can cost many thousands of dollars. In the end, an inventor may find that the expense outweighs the benefit. Second, in the early stages, most invention designs are still evolving. Filing a patent too early could mean that it doesn't actually reflect the most evolved designs and drawings. Third--and most important, in my opinion--this investment has been made before an inventor has conducted real market research to validate marketability of the product.

Two solutions that many inventors--myself included--use are to file provisional patent applications and trademark applications for the invention and product name or logo.

These applications provide the best of both worlds. At a fraction of the cost of a utility patent application, a provisional patent application is not actually a patent. It never will convert to a patent or become public, unless further action is taken. A provisional patent application is a like a place holder. In essence, you are laying claim to the filing date of the provisional patent application if and when you elect to file for a full utility patent up to one year from the time you file your provisional patent application. So if you choose to file a provisional patent application on March 1, 2010, and you then choose to file a utility patent application eleven months later on February 1, 2011, the priority date for your utility patent application would be considered to be March 1, 2010, for all material substantively disclosed and enabled in your provisional application.

What does this mean?

From the date you file your provisional patent application, you have the legal right to write "patent pending" on your prototype and show it to whomever you wish. In the process, you will not lose your international patent rights and can still elect to file your utility patent application. But it gives you one year to develop your product and gain market information before you actually must make the final decision on whether to file utility and/or international patent applications.

So, how do you do this?

While technically you can write and file this application yourself, I recommend that you do it with some guidance and, at the least, a review by a registered patent attorney or agent.

There are three things to be careful about when writing a provisional patent application, according to intellectual property attorney Stuart West, founding partner of West & Associates :

Ensure that the application meets the written description and enablement requirements of 35 U.S.C. 112, by adequately describing not only the components of your invention and their connections, but also the operation of the invention.

Avoid using limiting or restrictive language in your written description , such as "must," "necessary," "essential" or other similar phrases.

Be accurate but broad with your descriptions. For example, if a nail is holding together two pieces of wood, an accurate but broader description of the nail would be a "fastener," or you may simply state that one piece of wood is coupled with the second piece of wood.

The second best--and still underutilized--legal tool for inventors, in my opinion, is the federal and various state trademark registration systems. Here's why:

Every product has a name, or it should. Once you begin using the name with prospective licensees and customers, the invention actually becomes synonymous with the name. I have seen this happen over and over. And there are only so many names an item could take that meet the criteria of being both catchy and able to be registered.

So give as much thought to names for your product as possible, and include questions about the name in your market research. Once you settle on your preferred name, trademark the name. Then when you speak with prospective licensees, use the name. (Note: I did not say you should tell them you are hooked on the name). But if they become accustomed to your product's name, they will see your trademark as another valuable asset you are bringing to the table. Plus it may further limit potential encroachment from likely competitors or knockoff products.

West says there are two things to understand about trademark use:

The underpinnings of trademark law are founded on the principle of first in use, first in right. Filing of a trademark application typically constitutes use, but so does simply using the trademark. In fact, in some states you must use the trademark publicly before filing a trademark application, and in the federal trademark system, a trademark must be used in interstate commerce before it can register. Therefore, use your trademark.

Once you've settled on and adopted your trademark you should identify it as a trademark by using either ™ or ® as appropriate. Check your local state laws regarding the use of ™.

In most states, trademark rights can be asserted regionally for free, simply by applying the T to a product (done by typing the letters "t" and "m" between two parentheses. The writing program automatically shrinks and raises it to have the T appearance.)

Second, a trademark can be registered with the U.S. Patent and Trademark office and overseas. This is a faster process, taking only 10 to 14 months. Once it is registered as a U.S. federally registered trademark, use the ® (also typed by inserting the "r" between parentheses).

I have always said that intellectual property, patents, trademarks and copyrights are just tools in your inventing tool box. Using the right tool can be extremely valuable. The nicest thing about a provisional patent application is that it can buy you time to figure out which other tools may be necessary. Likewise, trademarks are a valuable tool inventors overlook.

Patent searching DIY for you

Step 1: Brainstorming Keywords

The first stage of the patent search is the keyword discovery stage.  In this stage, brainstorm various keywords that might be contained in prior art documents that disclose your invention.

When brainstorming keywords, include industry specific terms as well as generic terms.  The search function at the Patent Office website cannot distinguish between the two.  Moreover, the search function does not include synonyms.  Try to be inclusive in this stage.

You may have found, if you have already attempted a patent search, that the search result contains numerous irrelevant references.  The reason is that certain words might have different meanings in different industries.  The search function does not place words into context.  It is a pure text string search.

Step 2: Class and subclass look up

The second stage attempts to limit extraneous or irrelevant search results by searching within one or more classes or subclasses.  The USPTO classifies each patent document within one or more of 450 different classes.  Within each class, there are multiple subclasses – literally hundreds or thousands of subclasses per class.  As a result, the subclasses are detailed subdivisions and categorize different aspects of the class at the granular level.

If a search is made within the right class and subclass, then irrelevant references are less likely to show up in the search results.  The downside is that the all of the right classes and subclasses must be searched.  To ensure that all of the right classes and subclasses are found, the search process must be treated as an iterative process.  After relevant references are found, the classes and subclasses of those references are checked to determine whether all relevant references have been found.

Step 3: Search patent and published application databases

The USPTO maintains two different online databases, namely, a database of issued patents and a database of published patent applications. Both databases must be searched because although there is an overlap, they both have their own unique set of references.  Not all patent applications mature into a patent.  Hence, published patent applications that have not matured into a patent will not be found in the issued patents database.  Also, not all issued patents were published as a patent application.  The inventors could have submitted a request for non publication.  These patents will not be found in the published patent applications database.  Another way to streamline this step is to conduct the search on a third party site such as www.freepatentsonline.com.  Utilize the advanced search and be sure to check the boxes for patents and patent applications.  This should reduce your work in half.

While a review of the references found through the search process is made, you will find additional keywords and other potential class/subclass for further search and consideration.  The above process is repeated for those additional keywords and classes and subclasses.

Then again, you can use automated tools like XLPAT for searching patents from over 100 jurisdictions, 32 full text patents available. To contact us for any IP related services, please fill the form here.

Intellectual Property for SME’s

According to this news article on Business Standard, thousands of SME’s lose out huge revenues just because they are either unable to afford IP services or are unaware of them. This article highlights the problems associated with IP service handling for SME’s and their solutions.

Challenges that most SMEs face in acquiring IP protection include the following:

• inadequate manpower to undertake the necessary groundwork needed for IP acquisition, for example, initial searches and other pre-filing procedures;

• high costs involved, particularly, in the patenting process which may go hand in hand with expenses for the translation of documents and fees for IP agents or attorneys;

• Inadequate “in-house” knowledge of IP rights and procedures for their protection.

 Before seeking IP protection for your SME in a particular country, you are advised to study the country’s legal system that governs IP issues. There are various sources of information on IP legislation. Probably the best place to start would be the national or regional IP office or copyright office to obtain the details of IP protection in your country. It is often advisable to seek guidance from an IP agent or attorney particularly when the relevant IP laws require that an applicant who is not residing in the country be represented by an agent or attorney entitled to practice in that country. The IP office or IP agent/attorney should be able to advise you as to whether special incentives, in terms of reduced fees, are available to SMEs for IP acquisition and maintenance.

 To some extent, the burdens associated with IP acquisition may be diminished if you have a greater understanding of how the IP system can be used effectively. SMEs may also reduce the workload and costs of acquiring IP by applying for IP protection through regional or international arrangements when seeking IP protection abroad (see “Protecting the IP Rights of Your SME Abroad”), making use of special incentives offered to SMEs, wherever available, or opting for lower levels of protection as in the case of utility model protection, where the legislation of the country or countries in question allow such forms of protection.

Alternatively, you can choose to hire an IP firm that specializes in SME’s to do all the legal work for you without putting too much of a burden on your economical resources. TT Consultants is one such firm which has helped clients globally in their IP endeavors with excellent results. With 8 years of experience in this field, they are one of the top most IP firms dealing with SME’s. To contact them, please use the form here.