If you need a window into United States and Trademark Office (USPTO) operations or have a question about when to expect USPTO actions (e.g., Office actions), I would visit the USPTO Data Visualization Center Patent Dashboard. Don't forget to scroll down this lengthy web page, it is packed full of information!
Copyright © 2013 Robert Moll. All rights reserved.
Saturday, January 26, 2013
Monday, January 21, 2013
U.S. Design Patents - Protecting Product Appearance
Patent attorneys tend to focus on utility patents rather than design patents. Utility patents issue for "any new and useful process, machine, manufacture, or composition of matter, or any new useful improvement thereof." Design patents issue for "any new, original and ornamental design for an article of manufacture." In short, a utility patent protects a product's function while a design patent protects a product's looks.
Why do design patents get little attention? Part of the problem is the common myth that a design patent's narrow protection translates into little value. Detractors ask don't they merely prevent exact copying of the invention shown in the drawings? When assessing patentability, aren't we limited to considering ornamental features, and not able to leverage functional features contributing to performance? Can't a defendant readily design around to avoid infringement? Yes, it is hard to argue in favor of design patents, but somehow companies like to copy products that look cool. How much is that copying worth? Sometimes a lot. For example, about $500 million in damages in Apple v. Samsung was due to infringement of design patents.
Why don't they command more respect? Some patent attorneys are to blame as they raise such questions. Most patent attorneys like technical and legal challenges. We want to write a detailed document that elucidates a complex technology so even a layperson understands it, admires it, and upholds it in court. And yes we like an undertaking that can justify our legal fees!
But a design patent -- what's the challenge? It's more work than a trademark application, but isn't a design application: (1) a design application transmittal form; (2) an inventor's declaration; (3) a title; (4) a brief specification with a statement what is claimed is shown in the drawings; and (5) the drawings? Even prosecution is simple compared to utility applications. Professor Dennis Crouch recently noted in Design Patents are Still Relatively Quick "the bulk of design patents are issued within 12-months of the filing date and only a handful take more than three years to issue. As I have written before, most design patents issue without substantive rejection or amendment."
They are also inexpensive to prepare (AIPLA Economic Survey 2011 says the median price is $1500 in 2010) and prosecute: we compare the design drawings to prior drawings during prosecution. And the PTO typically allows the design application or issues rejections that can be overcome by amendment. Of course you need to foreign file within six months of filing in the USPTO, and remember the patent term runs 14 years from the issue date, soon to be 15 years.
On the other hand, I don't think one can delegate the preparation of design patents entirely to an assistant, because the scope of the protection is a legal judgment. It relates to the content of the drawings. In fact, the content matters a great deal when it comes time to determine whether or not a design patent is infringed. A design drawing should not include any superfluous information (e.g., patent owner's name). Trust me the patent owner's name won't be anywhere on the accused product. Structures that are not part of the design can be shown by broken lines to avoid unduly narrow protection. Thus, the design patent may (should) cover only a part of the entire article. For example, if you seek to protect a computer icon with a design patent, showing other icons on the same desktop is a really bad idea! Because design patents are inexpensive, protect against exact copying, and can be surprisingly valuable when the patented product looks cool, I expect many to follow Apple to get design patents to protect the way a product looks.
Copyright © 2013 Robert Moll. All rights reserved.
Why do design patents get little attention? Part of the problem is the common myth that a design patent's narrow protection translates into little value. Detractors ask don't they merely prevent exact copying of the invention shown in the drawings? When assessing patentability, aren't we limited to considering ornamental features, and not able to leverage functional features contributing to performance? Can't a defendant readily design around to avoid infringement? Yes, it is hard to argue in favor of design patents, but somehow companies like to copy products that look cool. How much is that copying worth? Sometimes a lot. For example, about $500 million in damages in Apple v. Samsung was due to infringement of design patents.
Why don't they command more respect? Some patent attorneys are to blame as they raise such questions. Most patent attorneys like technical and legal challenges. We want to write a detailed document that elucidates a complex technology so even a layperson understands it, admires it, and upholds it in court. And yes we like an undertaking that can justify our legal fees!
But a design patent -- what's the challenge? It's more work than a trademark application, but isn't a design application: (1) a design application transmittal form; (2) an inventor's declaration; (3) a title; (4) a brief specification with a statement what is claimed is shown in the drawings; and (5) the drawings? Even prosecution is simple compared to utility applications. Professor Dennis Crouch recently noted in Design Patents are Still Relatively Quick "the bulk of design patents are issued within 12-months of the filing date and only a handful take more than three years to issue. As I have written before, most design patents issue without substantive rejection or amendment."
They are also inexpensive to prepare (AIPLA Economic Survey 2011 says the median price is $1500 in 2010) and prosecute: we compare the design drawings to prior drawings during prosecution. And the PTO typically allows the design application or issues rejections that can be overcome by amendment. Of course you need to foreign file within six months of filing in the USPTO, and remember the patent term runs 14 years from the issue date, soon to be 15 years.
On the other hand, I don't think one can delegate the preparation of design patents entirely to an assistant, because the scope of the protection is a legal judgment. It relates to the content of the drawings. In fact, the content matters a great deal when it comes time to determine whether or not a design patent is infringed. A design drawing should not include any superfluous information (e.g., patent owner's name). Trust me the patent owner's name won't be anywhere on the accused product. Structures that are not part of the design can be shown by broken lines to avoid unduly narrow protection. Thus, the design patent may (should) cover only a part of the entire article. For example, if you seek to protect a computer icon with a design patent, showing other icons on the same desktop is a really bad idea! Because design patents are inexpensive, protect against exact copying, and can be surprisingly valuable when the patented product looks cool, I expect many to follow Apple to get design patents to protect the way a product looks.
Copyright © 2013 Robert Moll. All rights reserved.
Saturday, January 19, 2013
USPTO Sets or Adjusts Patent Fees 2013
On January 18, 2013, the Federal Register published the USPTO patent fees as authorized by the America Invents Act. Many of the PTO fees will become effective on March 19, 2013.
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Thursday, January 17, 2013
Solutions to the Software Patent Problem - Conference Materials
On November 16, 2012, Santa Clara University staged a conference Solutions to the Software Patent Problem. After attending I posted: Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012.
Today, SCU emailed the conference materials:
View the videos
Where applicable, we’ve posted the speakers’ slides as separately downloadable files. Videos synced with presentation slides and just videos (for those that do not use Microsoft products)
Speaker essays. Also check out the related series of essays published in Wired.com Opinion
Media coverage of the event
Results of the audience polls about which solutions they liked best
Other conference resources
The conference page provides a one-stop inventory of all of these resources.
View High Tech Law Institute blog: http://law.scu.edu/blog/hightech/
Copyright © 2013 Robert Moll. All rights reserved.
Today, SCU emailed the conference materials:
View the videos
Where applicable, we’ve posted the speakers’ slides as separately downloadable files. Videos synced with presentation slides and just videos (for those that do not use Microsoft products)
Speaker essays. Also check out the related series of essays published in Wired.com Opinion
Media coverage of the event
Results of the audience polls about which solutions they liked best
Other conference resources
The conference page provides a one-stop inventory of all of these resources.
View High Tech Law Institute blog: http://law.scu.edu/blog/hightech/
Copyright © 2013 Robert Moll. All rights reserved.
Tuesday, January 15, 2013
America Invents Act - USPTO's AIA Blog - Guidance on Patent Prosecution
If you want guidance on the nuts and bolts of patent prosecution under the America Invents Act (AIA), you should visit the AIA Blog of the United States Patent and Trademark Office.
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Sunday, January 13, 2013
IBM Chief Patent Counsel Manny Schecter's Why Patents Matter
Because IBM has received more US patents than any company for 20 consecutive years, it is worth understanding its viewpoint. Manny Schecter IBM's Chief Patent Counsel, leading IBM's patent effort for decades, wrote an article: Why patents matter that may reflect IBM's viewpoint. He believes the critics of the U.S. patent system are overreacting, don't understand the system, the America Invents Act is just coming into play, and the smartphone patent war merely repeats other disruptive periods in America's history. Sure vocal critics would not like being tagged as "overreacting" and "ignorant" of how the system works. But what may be even harder for them is Mr. Schecter's views may represent the "silent majority."
Copyright © 2013 Robert Moll. All rights reserved.
Copyright © 2013 Robert Moll. All rights reserved.
Friday, January 11, 2013
InterDigital v. ITC and Nokia - Patent Licensing Satisfies Domestic Industry Required for ITC Relief
Yesterday, in InterDigital v. ITC and Nokia, the Federal Circuit held that non-practicing entity InterDigital's patent licensing alone met the domestic industry requirement of Section 337 of the Tarriff Act of 1930, 19 USC 1337(a)(2) and 1337(a)(3). The Federal Circuit also stated the statute does not require physical articles be made in the USA. This decision poses an obstacle to the effort to reduce the impact of non-practicing entity (NPE) lawsuits in the ITC. For more detail on the lobbying, see an earlier post: Lobbying to Block ITC from Hearing Non-practicing Entities
So I expect NPEs will continue to file lawsuits at the ITC seeking injunctive relief apart from EBay considerations until (1) the domestic industry requirement is rewritten, or (2) the SCOTUS reverses the InterDigital interpretation of the domestic industry requirement. But I don't expect many NPEs to successfully assert SEPs in the ITC given the ITC only grants exclusion orders.
Copyright © 2013 Robert Moll. All rights reserved.
So I expect NPEs will continue to file lawsuits at the ITC seeking injunctive relief apart from EBay considerations until (1) the domestic industry requirement is rewritten, or (2) the SCOTUS reverses the InterDigital interpretation of the domestic industry requirement. But I don't expect many NPEs to successfully assert SEPs in the ITC given the ITC only grants exclusion orders.
Copyright © 2013 Robert Moll. All rights reserved.
Thursday, January 10, 2013
Mobile Computing Patent War Drives US Patent Grants & 50 Top Companies in 2012
The mobile computing patent war appears to be playing a role in US patent grants in 2012: IBM #1, Samsung #2, Microsoft #6, Google #21, and Apple #22.
See IFI CLAIMS® Service reports: 2012 Top 50 US Patent Assignees
See New York Times: The 2012 Patent Rankings: IBM on Top (Again), Google and Apple Surging
Also see The Boston Consulting Group: The Most Innovative Companies 2012
Copyright © 2013 Robert Moll. All rights reserved.
See IFI CLAIMS® Service reports: 2012 Top 50 US Patent Assignees
See New York Times: The 2012 Patent Rankings: IBM on Top (Again), Google and Apple Surging
Also see The Boston Consulting Group: The Most Innovative Companies 2012
Copyright © 2013 Robert Moll. All rights reserved.
Tuesday, January 8, 2013
DOJ & USPTO Policy Statement on Remedies for Standards-Essential Patents Subject to FRAND
The FTC and DOJ/USPTO have different opinions on what should trigger an injunction for infringement of a standard essential patent (SEP).
See the FTC press release: Google Agrees to Change Its Business Practices to Resolve FTC Competition Concerns In the Markets for Devices Like Smart Phones, Games and Tablets, and in Online Search.
See U.S. Department of Justice, Antitrust Division (DOJ) and the U.S. Patent and Trademark Office (USPTO) Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments.
Also see McDonnell Boehnen Hulbert & Berghoff LLP's article: FRAND and Injunctive Relief: Exploring a Standard-Essential Patent Owners Right to Injunctive Relief
Copyright © 2013 Robert Moll. All rights reserved.
See the FTC press release: Google Agrees to Change Its Business Practices to Resolve FTC Competition Concerns In the Markets for Devices Like Smart Phones, Games and Tablets, and in Online Search.
See U.S. Department of Justice, Antitrust Division (DOJ) and the U.S. Patent and Trademark Office (USPTO) Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments.
Also see McDonnell Boehnen Hulbert & Berghoff LLP's article: FRAND and Injunctive Relief: Exploring a Standard-Essential Patent Owners Right to Injunctive Relief
Copyright © 2013 Robert Moll. All rights reserved.
Sunday, January 6, 2013
America Invents Act - USPTO Final Rules for Micro Entity Provisions
On December 19, 2012, the USPTO published its final rules to implement micro entity provisions of the America Invents Act (AIA).
If you are a startup or an individual inventor, it is worth becoming familiar with these rules as a micro entity can save 75% on certain PTO fees in the future.
So what is a micro entity? 35 U.S.C. 123(a) provides a "micro entity" is an applicant who can certify it (1) qualifies as a small entity as defined 37 CFR 1.27; (2) has not been named an inventor on four previously filed U.S. nonprovisional patent applications; (3) did not, in the calendar year preceding the calendar year in which the application fee is being paid, have a gross income, as defined by 26 U.S.C. 61(a), exceeding three times the median household income for that preceding year (or as reported to the Census Bureau). So if you paid the fee in 2013 you would look at U.S. median household incomes in 2012.
I found a NYT article U.S. Income Gap Rose, Sign of Uneven Recovery stating the US median household income was $50,054 in 2011. Since US median household income has slightly decreased in recent years, it suggests falling under $150,000 may suffice. Note this is just a guess and if you have a link to official data for 2012, please email it so I can give a more accurate income number.
Also my practice is to pay the larger amount on PTO fees unless the applicant is clearly qualified. It may appear to be waste, but courts have been quite harsh to applicants who paid small entity fees improperly. I imagine similar scenarios for a micro entity that makes that type of mistake.
Can you take advantage of the micro entity fee reduction today? Unfortunately, not yet. The micro entity rules will be effective on March 19, 2013, and the micro entity fee schedule is expected in Spring 2013.
Copyright © 2013 Robert Moll. All rights reserved.
If you are a startup or an individual inventor, it is worth becoming familiar with these rules as a micro entity can save 75% on certain PTO fees in the future.
So what is a micro entity? 35 U.S.C. 123(a) provides a "micro entity" is an applicant who can certify it (1) qualifies as a small entity as defined 37 CFR 1.27; (2) has not been named an inventor on four previously filed U.S. nonprovisional patent applications; (3) did not, in the calendar year preceding the calendar year in which the application fee is being paid, have a gross income, as defined by 26 U.S.C. 61(a), exceeding three times the median household income for that preceding year (or as reported to the Census Bureau). So if you paid the fee in 2013 you would look at U.S. median household incomes in 2012.
I found a NYT article U.S. Income Gap Rose, Sign of Uneven Recovery stating the US median household income was $50,054 in 2011. Since US median household income has slightly decreased in recent years, it suggests falling under $150,000 may suffice. Note this is just a guess and if you have a link to official data for 2012, please email it so I can give a more accurate income number.
Also my practice is to pay the larger amount on PTO fees unless the applicant is clearly qualified. It may appear to be waste, but courts have been quite harsh to applicants who paid small entity fees improperly. I imagine similar scenarios for a micro entity that makes that type of mistake.
Can you take advantage of the micro entity fee reduction today? Unfortunately, not yet. The micro entity rules will be effective on March 19, 2013, and the micro entity fee schedule is expected in Spring 2013.
Copyright © 2013 Robert Moll. All rights reserved.
Friday, January 4, 2013
USPTO Seeks Software Community's Input on Software Patents
On January 3, the United States Patent and Trademark Office (USPTO) published a notice in the Federal Register that it "seeks to form a partnership with the software community to enhance the quality of software-related patents ..." and bring the stakeholders together through a series of roundtable discussions. The first roundtable will cover three topics:
Topic 1: Establishing Clear Boundaries for Claims That Use Functional Language
Topic 2: Future Discussion Topics for the Software Partnership
Topic 3: Oral Presentations on Preparation of Patent Applications
The roundtable discussion will be at Stanford University 9 am - noon PST, February 12, 2013, and at NYU 9 am - noon EST, February 27, 2013. See Federal Register Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software-Related Patents for details and requirements to register and submit comments.
Copyright © 2013 Robert Moll. All rights reserved.
Topic 1: Establishing Clear Boundaries for Claims That Use Functional Language
Topic 2: Future Discussion Topics for the Software Partnership
Topic 3: Oral Presentations on Preparation of Patent Applications
The roundtable discussion will be at Stanford University 9 am - noon PST, February 12, 2013, and at NYU 9 am - noon EST, February 27, 2013. See Federal Register Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software-Related Patents for details and requirements to register and submit comments.
Copyright © 2013 Robert Moll. All rights reserved.
Thursday, January 3, 2013
Google Agrees to Change Business Practices to Resolve FTC's Concerns
On January 3, 2013, the FTC announced it has reached an agreement with Google to change some business practices. The agreement, reached after 19 months of investigation, grants competitors the ability to license Google's standard-essential patents (e.g., obtained from the Motorola Mobility acquisition) at fair, reasonable, and non-discriminatory (FRAND) terms. Google cannot seek injunctions of the SEP unless the infringer is unwilling to license the SEP under FRAND and follows certain procedures. The FTC's concern was granting injunctions based on SEPs would be used to hold up competitors in an industry where interoperability is required to compete. The agreement also gives advertisers greater flexibility to use rival search engines.
The FTC's press release Google Agrees to Change Its Business Practices to Resolve FTC Competition Concerns In the Markets for Devices Like Smart Phones, Games and Tablets, and in Online Search has the details and links to the related papers.
Copyright © 2013 Robert Moll. All rights reserved.
The FTC's press release Google Agrees to Change Its Business Practices to Resolve FTC Competition Concerns In the Markets for Devices Like Smart Phones, Games and Tablets, and in Online Search has the details and links to the related papers.
Copyright © 2013 Robert Moll. All rights reserved.
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