Tech Dirt's article Patent Not Sufficiently Broad Or Generic? Cloem Will Help You By Automatically Generating Dozens Of Nearly Identical Patents has "news about two startups that could upend intellectual property laws: Qentis (copyright) and Cloem (patents)."
Tech Dirt claims "Cloem's business model seems a bit more grounded in reality" and notes VentureBeat describes Cloem as providing "software that ... appears to linguistically manipulate a seed set of a client’s patent claims by, for example, substituting in synonyms or reordering steps in a process, thereby generating tens of thousands of potentially patentable inventions."
"Cloem is a mixture of patent experts and computer linguistic specialists. The key element of its potentially-patentable variations lies within 'seed lists,' which draw from a variety of sources, including (according to Cloem) 70,000,000 patent documents. Its algorithms then brute force together lists of 'new' patent claims, which can then be filed and used offensively or defensively."
Tech Dirt concludes "Cloem's business model seems custom-built for patent trolls who will be able to "expand" their already-broad patents to nail down even more IP turf. Cloem's service also makes it easy for non-inventors to jam up patent offices with me-too "inventions" based on minor iterations of existing patents."
In my opinion, the business model has significant issues:
Inventorship - The software generated claims make murky who invented. Can we safely conclude the inventor of the seed claim invented the computer generated set of claims? I am doubting the authors of the software intend to be named as inventors, read any part of the application, or interact with the inventors of the seed claim. So how could this business model scale?
Reordering steps of a method - In general, the order the steps are recited in a method claim does not dictate a certain order. Yet the assumption is reordering the steps gets you different protection.
Lack of accounting for prior art - You must be aware of the prior art to draft a claim that maximizes the protection.
No value in filing dozen of nearly identical patents - Filing dozens of nearly identical patents will only trigger double patenting rejections and if not caught in examination will serve as a valid defense in court.
No perceived users - Cloem is not a startup, but the article doesn't identity a single patent troll that uses the software much less file dozens of nearly identical patents with thousands of claims using this software.
Copyright © 2015 Robert Moll. All rights reserved.
Showing posts with label inventorship. Show all posts
Showing posts with label inventorship. Show all posts
Thursday, March 26, 2015
Thursday, April 24, 2014
Professor Hricik - Patent Attorneys Become Inventors?
Tonight, I am reading Professor Hricik's article Save a Little Room For Me: The Necessity of Naming as Inventors Practioners Who Conceive of Claimed Subject Matter. My comments will be brief.
The article is worth reading if you are a patent attorney or agent preparing US patent applications. If nothing else it will increase awareness of the issue and give guidance on how to handle a practitioner's inventive contribution to a claim of an application.
As a matter of practice, I think it's better to conduct an inventor interview so you don't increase the possibility of contributing to the conception of an invention. Ask questions rather than suggest things and listen more than talk. However, if you have contributed inventive material, Professor Dolak's proposal appears to be right: (1) add your name as an inventor to the application to satisfy US requirements that all inventors be named, and (2) assign your entire ownership to the client to satisfy your fiduciary duty.
Copyright © 2014 Robert Moll. All rights reserved.
The article is worth reading if you are a patent attorney or agent preparing US patent applications. If nothing else it will increase awareness of the issue and give guidance on how to handle a practitioner's inventive contribution to a claim of an application.
As a matter of practice, I think it's better to conduct an inventor interview so you don't increase the possibility of contributing to the conception of an invention. Ask questions rather than suggest things and listen more than talk. However, if you have contributed inventive material, Professor Dolak's proposal appears to be right: (1) add your name as an inventor to the application to satisfy US requirements that all inventors be named, and (2) assign your entire ownership to the client to satisfy your fiduciary duty.
Copyright © 2014 Robert Moll. All rights reserved.
Sunday, April 20, 2014
Evan Schwartz - Juice the Creative Fuel That Drives World-Class Inventors
I have ordered books at Amazon.com way too often. They make it too easy with sneak-a-peek, reader reviews, one-click ordering, and free shipping with an order > $35. So I admit I have books on the shelf that I thought would be good, but never got around to reading.
Evan Schwartz's Juice the Creative Fuel That Drives World-Class Inventors is just such a book. Tonight, looking for something for the blog, I resumed reading it and I would say so far (not done yet) this is an excellent book on the process of invention. It is not a theoretical tome, but a series of stories how various people invented important technologies in the last 60 years or so.
I will give one example from Mr. Schwartz's book, because it shows invention happens despite corporate trappings. The inventor's name was Nick Holonyak, who by his own admission was not 100% smart, and got lucky to be the first graduate student of John Bardeen, who co-invented the transistor at Bell Labs.
Later Mr. Holonyak joined GE to improve semiconductors, and heard something odd that distracted him from his work. Semiconductors could produce invisible IR. He began testing (i.e., playing around) with various semiconductors and learned that gallium arsenide phosphide when "juiced" with electricity emitted a speck of red light.
Mr. Schwartz tells us Mr. Holonyak "created this opportunity in his mind. My colleagues thought I was a bit nutty." He had to "keep his secret from his boss" and "worked on the sly for two years" noting if management discovered him working on this, "I would have been in trouble and gotten fired."
It sounds a bit crazy, right? But I was told by another semiconductor pioneer Armen Sahagen that his company had tasked him, and his team to establish the "right conditions" so the semiconductor they were using would quit generating that annoying light! He laughed and laughed after he told me this story.
Mr. Holonyak is widely credited with inventing the light-emitting diodes-- the LED. Of course, today LEDs are in use everywhere. Why? They can last ten years or longer, are incredibly efficient, and produce little heat. Mr. Schwartz tells us there are "twelve LED-based products sold for every person on earth."
Thanks to Mr. Holonyak having the insight and guts to invent something that matters. Corporate management can "juice" innovation not by tightly "managing" the people, but giving them the support to really innovate.
Although I am still reading Mr. Schwartz book, I can recommend it because this story and others match what I have observed in over two decades of working with inventors. Most of the good ones are just like this. They "create opportunities in the mind," are a "little sly," and at times must shield their nascent work from skepticism and corporate objectives, while having the sense to "spring it on management" once it is ready.
Copyright © 2014 Robert Moll. All rights reserved.
Evan Schwartz's Juice the Creative Fuel That Drives World-Class Inventors is just such a book. Tonight, looking for something for the blog, I resumed reading it and I would say so far (not done yet) this is an excellent book on the process of invention. It is not a theoretical tome, but a series of stories how various people invented important technologies in the last 60 years or so.
I will give one example from Mr. Schwartz's book, because it shows invention happens despite corporate trappings. The inventor's name was Nick Holonyak, who by his own admission was not 100% smart, and got lucky to be the first graduate student of John Bardeen, who co-invented the transistor at Bell Labs.
Later Mr. Holonyak joined GE to improve semiconductors, and heard something odd that distracted him from his work. Semiconductors could produce invisible IR. He began testing (i.e., playing around) with various semiconductors and learned that gallium arsenide phosphide when "juiced" with electricity emitted a speck of red light.
Mr. Schwartz tells us Mr. Holonyak "created this opportunity in his mind. My colleagues thought I was a bit nutty." He had to "keep his secret from his boss" and "worked on the sly for two years" noting if management discovered him working on this, "I would have been in trouble and gotten fired."
It sounds a bit crazy, right? But I was told by another semiconductor pioneer Armen Sahagen that his company had tasked him, and his team to establish the "right conditions" so the semiconductor they were using would quit generating that annoying light! He laughed and laughed after he told me this story.
Mr. Holonyak is widely credited with inventing the light-emitting diodes-- the LED. Of course, today LEDs are in use everywhere. Why? They can last ten years or longer, are incredibly efficient, and produce little heat. Mr. Schwartz tells us there are "twelve LED-based products sold for every person on earth."
Thanks to Mr. Holonyak having the insight and guts to invent something that matters. Corporate management can "juice" innovation not by tightly "managing" the people, but giving them the support to really innovate.
Although I am still reading Mr. Schwartz book, I can recommend it because this story and others match what I have observed in over two decades of working with inventors. Most of the good ones are just like this. They "create opportunities in the mind," are a "little sly," and at times must shield their nascent work from skepticism and corporate objectives, while having the sense to "spring it on management" once it is ready.
Copyright © 2014 Robert Moll. All rights reserved.
Wednesday, March 12, 2014
Juniper Networks v. Palo Alto Network Patent Suit Ends in Mistrial
This week Juniper Networks failed to convince a jury that Palo Alto Network's PA-500, PA-2000, PA-4000 and PA-5000 Series Firewalls infringe US Patent No. 7,779,459, US Patent No. 7,650,634, and US Patent No. 7,302,700.
For details see Juniper Networks not giving up firewall patent fight vs. Palo Alto Networks and Juniper vs. Palo Alto Networks: Firewall court battle set to begin
For details see Juniper Networks not giving up firewall patent fight vs. Palo Alto Networks and Juniper vs. Palo Alto Networks: Firewall court battle set to begin
Juniper claims Palo Alto firewalls are based on intellectual property (IP) that Juniper obtained when it paid $4 billion for Netscreen in 2004. Juniper claims Palo Alto knew all about this infringement given Nir Zuk now at Palo Alto, developed the firewalls with Yuming Mao, when they worked at Netscreen.
Juniper says Mr. Zuk was a key developer of the IP in question, so it's curious he is not a named inventor of the '459 patent or the '700 patent given US law requires naming all inventors, but the articles don't say much more to support an improper inventorship defense. Juniper might argue assignor estoppel bars that invalidity challenge, but Palo Alto should be able to file a petition for inter partes review to sidestep assignor estoppel.
Juniper immediately promised to refile this lawsuit, but what's the likelihood the jury will rule in favor of Juniper after a mistrial? It reminds me of a boxer immediately claiming a punch that landed didn't hurt. The larger the protest, the more it hurt. Not to say we know the mistrial stung Juniper, but its insistence it wants to keep go another round may suggest a bluffing boxer on the way out.
Copyright © 2014 Robert Moll. All rights reserved.
Wednesday, September 12, 2012
America Invents Act - USPTO Final Rules for Derivation
The USPTO published final rules to implement the America Invents Act (AIA) derivation proceedings.
Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos stated: 'This derivation proceeding will ensure that under a first-inventor-to-file system, the inventor is always the one who obtains the patent. We’re pleased to release this final rule to the public months in advance of its implementation, to allow stakeholders greater time to prepare."
The USPTO Patent Trial and Appeal Board will conduct derivation proceedings to enable a true inventor to challenge the right of the first person to file by proving the first application filed was derived from the true inventor.
The final rules will be effective on March 16, 2013.
Here are a few sources of additional information on derivation:
Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos stated: 'This derivation proceeding will ensure that under a first-inventor-to-file system, the inventor is always the one who obtains the patent. We’re pleased to release this final rule to the public months in advance of its implementation, to allow stakeholders greater time to prepare."
The USPTO Patent Trial and Appeal Board will conduct derivation proceedings to enable a true inventor to challenge the right of the first person to file by proving the first application filed was derived from the true inventor.
The final rules will be effective on March 16, 2013.
Here are a few sources of additional information on derivation:
- The USPTO's 116-page document: Changes to Implement Derivation Proceedings
- Eight AIA roadshows in September 2012
- Lead Administrative Patent Judge, Sally G. Lane; Administrative Patent Judge, Sally C. Medley; Administrative Patent Judge, Richard Torczon; and Joni Y. Chang, Administrative Patent Judge, Board of Patent Appeals and Interferences by telephone at (571) 272-9797
Monday, January 23, 2012
Twist in Kodak's Bankruptcy - Apple Claims Ownership of Kodak Patents
On January 19, 2012, Apple filed papers claiming ownership of Kodak's digital imaging patents, including US Patent No. 6,292,218. Apple argues Kodak can't attach an interest on a patent it doesn't own, and Kodak misappropriated and filed patent(s) based on confidential information Apple gave Kodak in the early 1990's.
Mr. Macari's article has details: Apple claims ownership in key Kodak patents on digital camera
Of course, ownership turns on which companies employees are inventors. I expect it will be difficult to establish only Apple inventors (and not Kodak inventors!) should be named on the '218 patent by clear and convincing evidence. It's asking too much of the Kodak employees, don't you think? However, sole ownership may not be necessary. Apple only needs to prove its employee(s) made a small inventive contribution (e.g., 1%) and may allow so generously that Kodak inventors did the rest (e.g., 99%)! This situation would result in equal ownership, allowing Apple freedom of operation with respect to the patent as well as the ability to license the patent to anyone wanting better terms than those offered by Kodak.
Copyright © 2012 Robert Moll. All rights reserved.
Mr. Macari's article has details: Apple claims ownership in key Kodak patents on digital camera
Of course, ownership turns on which companies employees are inventors. I expect it will be difficult to establish only Apple inventors (and not Kodak inventors!) should be named on the '218 patent by clear and convincing evidence. It's asking too much of the Kodak employees, don't you think? However, sole ownership may not be necessary. Apple only needs to prove its employee(s) made a small inventive contribution (e.g., 1%) and may allow so generously that Kodak inventors did the rest (e.g., 99%)! This situation would result in equal ownership, allowing Apple freedom of operation with respect to the patent as well as the ability to license the patent to anyone wanting better terms than those offered by Kodak.
Copyright © 2012 Robert Moll. All rights reserved.
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