Patent Law Blog (Patently-O)

Patenting by Entrepreneurs: The Berkeley Patent Survey (Part III of III)

Guest Post by Robert Merges and Pamela Samuelson, UC Berkeley School of Law; Ted Sichelman, University of San Diego School of Law

In our previous post, we discussed some of the major findings from the Berkeley Patent Survey—the most comprehensive survey to date in the United States, probably worldwide, on how patents are used by and affect entrepreneurs, startups, and early-stage high technology companies. (For those interested in more information, a detailed discussion of the survey results is available here; a focused analysis on the drivers of startup patenting, here; and some background on the genesis of the survey, here.)

As we noted at the end of our last post, when asked about the role patents play in directly driving the innovation process, our respondents reported relatively weak effects. As Figure 1 below indicates, executives at biotechnology companies stated that, on average, patents provide slightly less than "moderate" incentives to invent, perform initial R & D, and commercialize products. For software companies, the responses fall to just below "slight" incentives.

Even when respondents are limited to those companies that hold at least one patent or application, the results do not change much. For these patent-holding companies, biotechnology companies report just slightly above moderate incentives and software companies report just above slight incentives for these same innovation-related activities.

Figure 1: The Role of Patents in the Innovation Process

These results are somewhat surprising for biotechnology companies, because anecdotal reports had indicated that biotech companies relied heavily on patenting to protect their investments in R & D. On the other hand, the results do generally accord with anecdotal reports from the software industry.

The authors of the 2008 Berkeley Patent Survey report are not all of one mind about how to interpret the incentive effect findings of our study. Some of us would discount these results in that they reflect the perceptions of executives about how patents work, and might not accord with economic reality. Specifically, while these executives may have understood our questions, they may not have fully comprehended the role patenting plays in the innovation process, which is often subtle. For instance, in an earlier post we noted important secondary effects of patents, such as attracting capital and enabling arm's-length transactions. These effects may contribute enough of a "plus factor" to make certain projects viable, even if executives do not think of patents in those terms. In other words, if patents are effective in garnering investment capital—which is then used to perform R & D—although executives might not view patents as the immediate cause of innovation, patents might still play an important role in the innovation process that is not fully reflected in our study results. Yet, others of us are more willing to give credence to the perception of entrepreneurs who report that patents provide weak to moderate incentives to invest in innovation. Who are we as scholars to say that they are incorrect in their assessment about the importance (or not) of patents?

We acknowledge that our analysis to date of the study results do not allow us to say one way or the other whether the views of the executives accurately reflect the economics of the patent system. Thus, it would be wrong to conclude, as one commentator has, that one of the key findings of our study is that patents "play essentially no role in fostering innovation among startup companies . . . outside biotech and other limited areas." In the same fashion, it may also be wrong to conclude that the executives taking the survey were not fully aware of the economics of patents, and the reality is that patents play a major role in promoting innovation. Rather, based on our study results, one can draw competing inferences that explain the results. As such, we come to no conclusions in this article regarding the actual role patents play in fostering startup innovation (or not).

To be sure, relying on other evidence, several of us have expressed views on the topic elsewhere. Unfortunately, even combining this additional evidence with our study data does not definitively answer the question. The data, however, present an interesting paradox: If executives believe that patents provide relatively weak incentives to innovate, why are so many startup firms seeking them? Our first post indicated that securing financing was a reason why many firms reported seeking patents.

Reinforcing that finding is another significant result. Our survey asked entrepreneurs to report their views on the importance of patents to potential funders, such as venture capitalists (VCs), angel investors, other firms, commercial banks, and friends and family. Our respondents indicate that many potential investors with whom they negotiated said that patents were important to their investment decisions. Of companies negotiating with VC firms, 67% report that these firms indicated that patents were an important factor in their investment decisions.

Interestingly, this result was not just driven by biotech and medical device firms. Broken down by industry, the figures were 60% for software companies, 73% for biotech, and 85% for medical devices. Respondents also report that substantial percentages of other types of investors, such as angels, investment banks, and other companies found patents important to their investment decisions.

In our view, this last finding may help to explain why many high tech startups seek patents, even though their executives report that patents provide relatively weak incentives to innovate. Raising money, rather than invention itself, may be the key.

Of course, this conclusion begs the question of why patents are important in the startup financing process in the first instance. Like the innovation incentives issue, the authors are not in full accord on the explanations here. One possible interpretation is that startup executives are generally unaware of the link between patents and success in the innovative process, which results in financial markets selecting those companies that patent more heavily. Another interpretation is that patents serve important functions not related to the innovation process, such as helping to prevent infringement lawsuits, providing leverage in cross-licensing negotiations, and acting as "signals" of firm competency, which drive investment. A third interpretation may be that investors want startups to patent so there will be some marketable assets if the companies fail in the market. And these interpretations are not mutually exclusive. Unfortunately, as we indicated earlier, our analysis cannot resolve this dilemma. We hope that further research by us and others ultimately will make progress in doing so. In the meantime, we believe our study offers one of the most important resources for understanding the effects and use of patents by entrepreneurs.

Patenting by Entrepreneurs: The Berkeley Patent Survey (Part II of III)

Guest Post by Robert Merges and Pamela Samuelson, UC Berkeley School of Law; Ted Sichelman, University of San Diego School of Law

In our previous post, we discussed three major findings from the Berkeley Patent Survey—the most comprehensive survey to date in the United States, probably worldwide, on how patents are used by and affect entrepreneurs, startups, and early-stage high technology companies. As we noted in that post, the survey collected responses from over 1,300 companies less than ten years old (hereinafter, "startups") in the biotechnology, medical device, software, and hardware/IT sectors. In this post, we discuss three additional major findings. (For those interested in more information, a detailed discussion of the survey results is available here; a focused analysis on the drivers of startup patenting, here; and some background on the genesis of the survey, here.)

Our fourth major result is that our respondents—particularly software companies—find the high costs of patenting and enforcing their patents deter them from filing for patents on their innovations (see Fig. 1 below). Given the reported importance of patents to startups not only in the financing process, but also for strategic reasons—especially for increasing bargaining power—these cost barriers are worrisome.

Another of our survey questions revealed that the average out-of-pocket cost for a respondent firm to acquire its most recent patent was over $38,000. This figure is significantly higher than the averages for patent prosecution reported in the literature, which vary from a low of $10,000 to a high of $30,000.

Our respondents also offer a variety of other reasons for not patenting, including the ease of competitors designing around a potential patent and the belief that the innovation was not patentable (both of which are more salient for software companies) as well as the reluctance to disclose information in a patent and a preferred reliance on trade secrecy (which are more salient for biotechnology companies).

Figure 1. "For your last innovation you did not patent, which if any of the following influenced your company's decision?"

A fifth major finding is that although many respondents report licensing in patents from others, most of them did so to acquire technology, with fewer seeking licenses to avoid a lawsuit. So, while we find that 15% of technology companies licensed in at least one patent, there are industry differences.

Specifically, among biotechnology companies, while 37% had licensed in at least one patent, for their last license, 81% did so to acquire technology, and only 30% to (sometimes also) avoid a lawsuit. Among software firms, only 8% report taking at least one patent license, with 79% taking such a license to (at least in part) gain information or know-how. In each sector, less than 10% of companies taking licenses report licensing only to avoid a law suit.

When we restrict our focus to only venture-backed companies, inbound licensing is much more prevalent, with 37% of all companies licensing in a patent. However, there is once more wide variation from one industry to another. While 89% of venture-backed biotechnology companies licensed in at least one patent, only 12% of similarly-funded software companies had reported as much. Also, while only 3% of these biotech companies that had licensed at least one patent reported licensing in their last patent only to avoid a lawsuit, 22% of such software companies reported as much.

Last, we asked how much of a role patents play in the steps of the innovation process, from invention to R & D to the commercialization of products and processes. Somewhat surprisingly, the responses on the whole are rather tepid. For instance, biotechnology companies report that patents provide closer to a "moderate" than a "strong" incentive to engage in the innovation process. Among software companies, the results are even more striking, with them reporting that patents provide less than a "slight" incentive. These findings raise questions about the importance of patents to innovation for entrepreneurs and startups. Indeed, the results have spurred some vigorous debate in the blogosphere of late, and we devote our entire next post on Patently-O to discussing them in detail.

Patenting by Entrepreneurs: The Berkeley Patent Survey (Part I of III)

Guest Post by Robert Merges and Pamela Samuelson, UC Berkeley School of Law; Ted Sichelman, University of San Diego School of Law

Why do entrepreneurs and startup companies file for patents? Why not? How often do startups acquire patents from others? How important are patents in fostering innovation at startups? In helping them raise financing? In providing leverage in cross-licensing negotiations? Are entrepreneurs and startups subject to patent thickets?

These and many related questions were the subject of the Berkeley Patent Survey—the most comprehensive survey to date in the United States, probably worldwide, on how patents are used by and affect entrepreneurs, startups, and early-stage high technology companies. Funded by the Ewing Marion Kauffman Foundation—and conducted by us, along with Robert Barr (Executive Director of the Berkeley Center for Law & Tech and former VP of IP at Cisco) and Stuart Graham (then a professor at Georgia Tech's College of Management, and currently Chief Economist of the USPTO)—the survey collected responses from over 1,300 companies less than ten years old (hereinafter, "startups") in the biotechnology, medical device, software, and hardware/IT sectors.

In this first post of three, we briefly review three major findings from our initial analysis of the survey about the frequency of patenting among high-tech startups, why startups seek patents, and how they rate patents and other strategies for attaining competitive advantage. In the next post, we'll discuss some reasons startups give for not seeking patents and why they sometimes license-in patents from other companies. In the last post, we'll specifically address startup perceptions about the incentives that patents provide for engaging in innovation as well as the perceived importance of patents in securing outside investments. The investment incentive role of patents has been not only a subject of enduring interest in the patent field generally, but also an important topic of interest of late at the Department of Commerce and PTO. (For those interested in more information, a detailed discussion of the survey results is available here; a focused analysis on the drivers of startup patenting, here; and some background on the genesis of the survey, here.)

First, startups hold many more patents and applications than previously believed. Instead of asking companies how many patents and applications they actually hold—like we did—earlier studies solely used the PTO databases to determine portfolio size. Unfortunately, these databases are unreliable, because the assignee records—particularly for patents acquired from founders and third parties—are incomplete. Our more complete data shows that about 40% of our respondents hold patents or applications, with the figure rising to about 80% for startups funded by venture capital firms.

As expected, this figure varies widely by industry—for example, 97% of venture-backed biotechnology companies hold patents or applications, while only 67% of venture-backed software startups do. And among the general population of software startups responding, the rate was only about 25%. In terms of raw numbers, among biotechnology companies, those with patents and applications have about 13 on hand, with the number rising to about 20 for medical device companies, and falling to about 7 for software companies. In sum, many startups are filing for patents and hold greater numbers than previously believed, though most software companies have never filed for patents.

Second, startups report that they primarily file for patents to prevent against copying of their innovative products and services (see Fig. 1 below). This holds true across all industries and by a variety of other company characteristics, such as age and revenues.

Respondents also note that filing for patents to improve their chances of securing investment and generating a liquidity event (such as an IPO or being acquired) are between moderately and very important reasons to file. In addition, the respondents state that a moderately important reason to file patents is for strategic reasons, such as defending against and preventing patent lawsuits as well as increasing negotiating leverage.

Figure 1: Reasons to File for Patents

Our third major finding concerns startup executives' perceptions of the effectiveness of patents and other methods of providing competitive advantage. Interestingly, responses vary widely (see Fig. 2 below). Biotechnology companies rate patents as the most effective means of capturing competitive advantage, more effective than first-mover advantage (though the differences are not statistically significant), trade secrecy, reverse engineering, copyright, and other means. Software companies, on the other hand, rank patenting dead last in providing competitive advantage.

Figure 2: Measures of Capturing "Competitive Advantage" from Inventions

In sum, the 2008 Berkeley Patent Survey has found that startups are patenting more than previous studies have suggested; that patents are being sought for a variety of reasons, the most prominent of which is to prevent copying of the innovation; and that there are considerable differences among startups in the perceived significance of patents for attaining competitive advantage, with biotech companies rating them as the most important strategy and software companies rating them least important.

Our next post will delve into reasons high tech entrepreneurs gave for not seeking patents for recent innovations and for licensing of patents from other companies.

Independent Inventors: Five Ways to Reduce the Cost of Patenting and Get a Better Patent Application

Patent Attorney Mark Bergner provided the following five points that may help independent inventors control the cost of their patent application.   

Many small inventors contact me for preparing a patent application and asking that costs be kept to an absolute minimum. Recognizing that most such inventors do not have a great deal of money, I usually offer the following advice:

1) Provide me with the best write-up that you can up front with some illustrative (even hand-sketched) diagrams, along with any design documents you may have.

Often, inventors will provide a one-page summary or a sales brochure of their invention that leaves out a significant amount of detail. It is going to drive up costs if I have to drag each and every relevant aspect of the invention out. Additionally, there may be ample design documents that are provided to me after a significant amount of work has already been done. It will take much more effort for me to integrate this newly added information with a nearly complete draft specification than it would have taken if all information had been provided up front.

2) Try to do as much of the work as you can yourself.

I tell clients that I am knowledgeable in patent prosecution, but generally not knowledgeable about the subject matter of the invention. It will cost considerably more if I am required to do extensive research in the field of the invention in order to fill in a sparse invention disclosure. I will often point inventors to a patent in their general field and suggest that the detailed description and figures shown in the patent provide roughly the level of detail needed for their patent application. While I am not expecting draftsman-quality drawings and use of the words "wherein" and "said" in their description, I am expecting something more than a 3-block single figure illustrating a complex client-server architecture.

Also, there are many inventors who are wonderful technical people, but simply cannot communicate well in writing (that's why they majored in physics and not journalism). It might be a good idea for such an inventor to work with someone (under a confidentiality agreement) who can write well to prepare an initial description. I had an inventor who enlisted the support of a graduate student at a significantly lower hourly rate than I charge. Although I can get all of the relevant information by talking with the inventor in person and over the telephone, if that is the sole means that I have of obtaining descriptive information, it is going to cost more. If the inventor has difficulty in communicating ideas and concepts both in writing and orally, it is going to be a very expensive patent application--no two ways about it.

3) Provide me with a nearly completed concept of the invention.

Nothing drives up costs more than to have the inventor continue to invent as the application is being drafted. One common issue: if a patent attorney does a good job with the subject matter, the draft of the patent application may be the first time the inventor has ever seen his idea expressed in such a clear and organized manner. This may spawn the inventor to come up with alternate embodiments or to provide other features that might prevent a design-around. While I generally expect some minor refinement of an inventive concept during the course of preparing the application, the addition of completely new or different embodiments will substantially increase costs.

4) Answer any questions provided in a draft clearly and completely.

Often I will prepare a draft application with a number of questions or comments, requesting clarification or additional detail. Some questions are intended to solicit lengthy responses, but only a bare minimum is provided or, worse, the information provided is completely non-responsive. Example: "You indicated that a series of messages flow between the client and server in order to implement the invention, but you have not provided any description as to what these messages are or what they contain. Can you please provide me with a detailed description of these, possibly with a table or diagram?" The entire reply received back: "The messages contain information that allows the server to act on client requests." Very often I have an inventor who promises to do most of the work themselves, only to put forth a minimal effort when asked to provide additional information.

5) The costs of obtaining a patent, even a relatively complex one, pale in comparison to the costs you will encounter in trying to commercialize your product.

I know I'm in trouble with an inventor if I throw out a fair cost estimate for preparing an application and the inventor breaks out in a cold sweat and starts suggesting a cost that is 50% of the estimate. It's one thing for an experienced business professional to haggle for lower costs, but in most situations involving the individual inventor, there is a significant lack of appreciation for what it will cost to do prototyping or pilot production runs, legal costs associated with non-disclosure agreements, trademarks, production and supply agreements, Underwriters Laboratories certification, FDA approval, etc. In the vast majority of cases, it is very expensive to bring an inventive idea to the marketplace, and the patent costs are typically a minimal part of those costs. If the inventor is not prepared for the entire undertaking, he is probably not going to willingly and cheerfully pay the bills, regardless of the quality and efficiency of the work done.

Dear Patently-O: How Do You React to the Following Letter

Dear Mr. Crouch:

I am a solo physician and inventor. I am wondering if you can point me in the generally right direction to resolve this issue.

I went to a large, well-respected, nationally-known firm to file a patent application for an invention. The invention is not that complicated. It's mechanical rather than electrical or chemical; in fact, I can make prototypes in my kitchen fairly quickly. The invention mostly relies on a new combination of existing devices/technology.

My attorney knew from the start that I am a solo inventor and under a tight budget. The final fees were astronomical. I paid them at the time because the lawyer had obviously worked hard and I had agreed to pay the hourly rate she had quoted. However, I recently discovered that the application is much, much longer than patents of similar complexity, and the fees I paid are much higher than for similar patents.

To give you a comparison, based on a word count, my patent application was literally twice as long as Dean Kamen's patent for an early Segway device in 1994. My fees were three times as high as another firm (Cooley Godward) says to expect for fees for most routine patents (other than for complex patents such as biologics, pharmaceuticals, etc.).

My current plan is to go back to this attorney and have a frank discussion with her, and to ask for a partial refund. If she refuses, I plan to go to the state bar and file a complaint.

Is this the right way to go about this? Are there any precedents for recovering fees in this sort of situation in a way that won't tie me up in further legal fees?

Many thanks,

____ ____ M.D. (anonymized at the author's request)

Co-Inventors Contribution Must Be “More Than The Exercise of Ordinary Skill”

Oren Tavory v. NTP (Fed. Cir. 2008)(nonprecedential)

In March 2006, RIM settled its patent dispute with NTP for $600 million+. In the wake of that settlement, Tavory filed an inventorship claim against NTP arguing that he was a co-inventor of at least one of the NTP patents. The district court dismissed the case – finding that Tavory did not provide "sufficient independent evidence to corroborate his inventorship allegations." On appeal, the Federal Circuit affirmed in NTP's favor.

Back in the late 1980's and early 1990's Tavory worked with Tom Campana as a computer programmer for Telefind. While there, Tavory developed a computer program to facilitate an e-mail-to-pager system. He was also part of a team that created the pager-to-laptop e-mail system. Telefind ran out of money in 1991 and Tavory left for greener pastures. When Don Stout later filed Campana's patent applications, he appended a copy of the code that Tavory had co-authored. During the RIM trial, Tavory testified for NTP. At that time, he did not claim inventorship.

Correcting Inventorship: An issued patent is presumed to name the correct inventors. Thus, an inventorship challenge must bring "clear and convincing evidence" that the newly surfaced inventor "contributed to the conception of the claimed invention." "Simply reducing to practice that which has been conceived by others is insufficient for co-inventorship." Under the clear and convincing standard, the inventorship challenge "must be corroborated by independent evidence."

Contribution Must Be "More Than The Exercise of Ordinary Skill": Tavory suggested that his contribution was the claimed "interface switch." However, the Federal Circuit rejected that claim because (1) Tavory did not prove that the "interface switch itself was not in the prior art"; and (2) Tavory likewise did not prove that "his alleged contribution to the claimed invention—the interface switch—was the result of anything more than the exercise of ordinary skill in the art." Consequently, "he has failed to establish co-inventorship."

Judge Newman concurred with this result, but would have decided the case on laches (based on the long delay in making the claim) and estoppel (based on Tavory's silence during the NTP trial).

 

Federal Circuit Affirms that Lucent’s $1.5B Patent Victory is Gone

Lucent v. Gateway, Dell, & Microsoft (Fed. Cir. 2008)

Lucent's two patents cover a compression method for MP3 digital audio files. The case originally resulted in a $1.5 billion jury award for Lucent. The district court, however set aside the jury verdict. That decision is affirmed here on appeal. Lucent's problems stem from (1) joint ownership of its '080 patent and (2) failure to provide even one specific instance when the Microsoft's encoder actually infringed the '457 patent.

"Lucent has failed to provide sufficient evidence to establish that the High Quality encoder actually runs on Windows Media Player and thus it would be too speculative to conclude that Windows Media Player necessarily infringes the '457 patent."

This case provides important lessons for both inventorship and proving infringement. More to come.

Cornell wins $184 Million in Damages for Past Infringement by HP

Federal Circuit Judge Randall Rader has been sitting by designation as a district court judge in the Northern District of New York.  His case is an epic patent battle between Cornell University and Hewlett-Packard (HP), and the jury trial recently concluded with an $184 million calculated as 0.8% of HP’s $23 Billion in sales.

The patent — No. 4,807,115 — issued in 1989 and expired during the seven years of litigation. It is directed toward an internal computer messaging mechanism that boosts the function of multi-processor computers.

Interestingly, Cornell and HP had discussed a licensing agreement as early as 1988 (even before the patent issued). In 1997, Intel licensed the ‘115 patent for use in its Pentium Pro chips.

Unpublished Thesis: In a pre-trial decision, Judge Rader denied Cornell’s motion in limine and allowed HP to show the jury an unpublished masters degree thesis as 102(b) prior art.  The court found the thesis publicly accessible because the thesis had been cited in a later article that was in the same area of technology as the issued patent (analogous art.).

“After weighing all the circumstances of accessibility, this court views as vitally important the citation of this scholarly work in the Tjaden-Flynn article.”

Inventor Rewards: Unlike most companies, universities generally offer a percentage royalty cut for its employee-inventors. Professor Torng, the inventor of the ‘115 patent, will reportedly receive 25% of the award (if it is ever paid). Torng has announced that he’ll only keep a few million and donate the rest (perhaps over $30 million) to charity.

The post-trial decisions and eventual appeal should be interesting.

• [Reuters][Patent Hawk]

Patent Reform and the Ethos of the American Inventor

Although I understand the reality that most patent prosecution is handled on behalf of corporate assignees, I still hold a special place in my heart for the maverick American inventor.  Some might understand the slight pangs I felt when reading the inventorship section of the Senate report on patent reform.  The report suggests eliminating from the law “the antiquated notion that it is the inventor who files the application, not the company-assignee.” Perhaps it is time my thoughts of the American inventor to go the way of the Wild West and horse drawn carriages.

The Bill (S.1145) is intended to fix an understandable problem — that of inventors who fail to fulfill their contractual obligation to assign patent rights to the Corporate owner.  This is a serious problem as shown by the current issue of IPToday which includes a full-length article describing the complex set of hoops currently required to overcome these so called “problem inventors.” [LINK]

Beyond the sound-bites, the specific reform provisions are not so bad. The revised statute would allow an “obligated assignee” to file the patent application on its own behalf. An inventor’s oath is still required unless the “obligated inventor” is either unable or unwilling to sign. Under the provision, a patent cannot be challenged as invalid or unenforceable based on a corporations mistaken claim that the inventor had an obligation to assign.  The savings clause appears to also include protection against mistakes in correctly naming inventors in the application.

Priority to Foreign Application Requires "Inventor's Knowledge or Consent" at the Time the Foreign Application was Filed

Boston Scientific SciMed v. Medtronic Vascular (Fed. Cir. 2007).

SciMed’s patent application was originally filed by a European company (MinTec) in February 1994 as an European Patent Application. At that time, however, the inventors (Cragg & Dake) had not yet assigned rights to MinTec. Cragg assigned his rights a few months later. Dake did not assign his rights until 1996.

Medtronic has a US priority filing date of June 1994 on the same invention. In the interference, the question is whether a US patent applicant claim priority to a foreign application filed by an entity that was not acting on behalf of the US applicant at the time of filing? CAFC Answer: No priority unless foreign application was filed on behalf of the US applicant.

Under the court’s ruling here, 35 USC 119(a) provides a personal right to the inventor. Consequently, there must be a “nexus…between the inventor and the foreign applicant at the time the foreign application was filed.” That nexus requires at least “knowledge or consent” of the inventor.

“Indeed, as a matter of pure logic, an entity could not have filed a foreign application “on behalf of” an inventor without the inventor’s knowledge or consent; that the foreign application may have been filed in accordance with the laws of the country in which it was filed has no bearing here.”

Holding:

“[A] foreign application may only form the basis for priority under section 119(a) if that application was filed by either the U.S. applicant himself, or by someone acting on his behalf at the time the foreign application was filed.” (emphasis in original)

Notes:

• This decision [LINK]: Scimed Life Sys., Inc. v. Medtronic Vascular, Inc., — F.3d — (Fed. Cir. 2007).
• Final BPAI Decision: Patent Interference No. 104,192, Paper No. 187, 2001 WL 1339890 (B.P.A.I. July 21, 2001).
• Trial Court Decision: Scimed Life Sys., Inc. v. Medtronic Vascular, Inc., 486 F. Supp. 2d 60 (D.D.C. 2006).

 

Women as Patentees

Patents are intended to lure potential inventors into the business of innovation.  The truth is, however, that very little is known about how patents really drive innovation.

Historically, only a very small number of women have obtained patents. Data from historic studies:

• 1790 – 1895: About 1% were granted to women;
• 1905 – 1921: About 1.4% were granted to women;
• 1954: 1.5% of issued patents included women inventors;
• 1977: 2.6% listed one or more women as inventors;
• 1996: 9.2% listed one or more women as inventors.

Since patentees do not list their sex, all of these studies rely upon segregating inventors according to traditional first-names.

2006: In my own recent study, I looked at a sample of 150,000+ patents issued between 1999 and 2006.  I then made a list-ranking of first-names of first-listed inventors. Can anyone guess how many of of the top-100 inventor-names were traditionally female names???

Patently-O TidBits -- King of the Submarine.

Bill Friedman filed his patent application on October 23, 1936 on a new cryptographic system. The patent finally issued some 64 years later as U.S. Patent No. 6,130,946. Can you find any currently viable patent with an earlier filing date?

 

* This tidbit came from the great discussion ongoing at the Patent Information User's Group about record-holding patents (longest pending, most claims, etc.). 

UPDATE: A reader found Patent No. 6,097812 by the same inventor.  It is still viable, but the filing date was July 25, 1933!

President's Day Patent

Abraham Lincoln is the only U.S. President to have received a patent.  His invention involved inflatable air chambers on a boat to help float the boat through low water or over sandbars.

PTO Requests Model of Warp Drive Invention

The Worsley-Twist warp drive does not depend upon traditional emissions of matter to create thrust.  Rather, the drive creates a change in the curvature of the space-time continuum — thus allowing travel by warping space-time.  Worsley & Twist patent application recently suffered another setback. The Examiner has now requested a working model:

Applicant is required to furnish a model of the instant invention. 35 U.S.C. 114. See Also 37 C.F.R. 1.91.

Among other rejections, the Examiner has asserted a rejection under 35 U.S.C. 101 for lack of utility — finding that the invention is inoperable.

Links:

• U.S. Pub. No. 2003–0114313;
• Earlier Discussion on Patently-O;
• Prosecution File History (25 MB).

More Interesting Patent Applications (From Keith Nagel)

• U.S. Pub. No. / Title
• 2005-110500 DEVICE FOR EXCHANGING TRANSMISSION AND RECEPTION OF FUTURE INFORMATION OF MULTI-WORLD IN-BETWEEN PAST
• 2005-102494 GRAVITY CONTROL TIME MACHINE UTILIZING ACCELERATED MOTION TO WHICH GENERAL THEORY OF RELATIVITY IS APPLIED
• 2005-101509 ULSI COMPRISING BINARY-NOTATION-SYSTEM ELEMENT FOR RETURNING ELEMENTARY PARTICLE OR ATOM TO PAST
• 2004-197727 GENERATOR USING CASIMIR POWER SUCH THAT TWO METAL PLATES PARALLELLY PLACED IN SLIGHTLY SPACED RELATION IN VACUUM ATTRACT EACH OTHER
• 2004-135253 APPARATUS FOR IRRADIATING EXCESS DIMENSION WITH GRAVITATIONAL WAVE USING BRANEWORLD THEORY IN BINARY NUMBER SYSTEM, TRANSMITTING-RECEIVING AND DECODING INFORMATION THEREFROM
• 2004-080981 APPARATUS FOR RAPIDLY ROTATING SMALL-SIZED ROD WITH ACCELERATOR TO FORM SINGULAR POINT, TO GENERATE CTL, TO PLACE FUTURE INFORMATION OBJECT THEREON AND TO SEND IT TO PAST
• 2004-032821 TRANSMITTER/RECEIVER TO PAST BY BINARY NOTATION SCALE OF FUTURE INFORMATION USING QUANTUM MECHANICS FOR RETURNING ELEMENTAL PARTICLE TO THE PAST
• 2003-198642 DEVICE FOR TRANSMITTING FUTURE INFORMATION TO PAST BY INTEGRATING LEFT ELECTRON INTO MORSE SIGNAL SYSTEM BY USING INFORMATION TRANSMITTING SPEED ZERO SECOND OF SPIN OF ELECTRON BLEW OFF RIGHT AND LEFT
• 2001-326969 FUTURE INFORMATION PAST TRANSMISSION/RECEPTION DOCUMENTING MACHINE UTILIZING LASER PULSE

Hamlet, on filing a response with the USPTO

Angela Horne is a patent agent at Quine IP Law Group.  As can be seen from her prose below, she is also a talented Shakespearean.  In this Scene, young Hamlet is debating his next course of action:

To file, or not to file (today): that is the question
Whether 'tis easier on the budget to file
The current draft without further extension;
Or instead, to take more time to review,
And by reviewing, further revise the arguments...
To file, to wait for the Examiner to review
At last; and by calling before two months is up, forestall
The heart-ache and the thousand muttered curses
That a Final Office Action is heir to. 'Tis a consummation
Devoutly to be wish'd.
To file the response, to follow up with a call;
To call, perchance to get the case allowed: aye, there's the rub;
For in that Notice of Allowance, what claims to next pursue
When we have the current claim set allowed, 
Must give us pause...

Ms. Horne’s prose also reminds me of the Roach Trap patent application that was filed in the mid 1800’s by D. Breed of Washington DC.

To all those whom it may concern:
By this description, you may learn
That I, D. Breed, a District man,
Have made invention of a plan,
Both new and useful, of a trap
For catching roaches while you nap.

In setting forth my new invention,
Of first importance I would mention
My trap's a novel earthen cup
Outside of which the roach creeps up
And, jumping in to eat molasses,
The well glazed mouth he ne'er repasses.

In drawings, figures one and two
Show simple forms, yet something new;
The first has rough outside or way;
The next, an inclined path at A.
The central stem (in dots you see),
Is crowned with bowl like half a pea,

To hold molasses, say a drop,
And smoothly glazed from base to top.
But this is no essential thing:
Without it, the roaches spring.
If in the bottom of the cup
You place the sweet whereon they sup.

The figure three shows a form unique
Of which in highest praise I speak;
'Tis glaze on in and outer sides,
Except between the handle strides
Where creep the roachies up a track
Without fear of sliding back.

In figure four, at B, a spout
Is made, to wash dead roaches out;
This form is glazed entire within,
also the mouth up to the brim
but on the outer side, all round,
No trace of glazing can be found.

In five and six, a septum, C,
Cuts full two thirds the cup from three,
The smaller part has open door
At letter D, close to the floor,
And inclined way to top of cup
Where Mr. Roach with cane walked up;

Nor needs his wife or child his hand
To reach the highest brink and stand,
A little trip is balance hung
May o'er the mouth of cup be swung;
But that, an almost useless thing,
To save expense, away I fling.

Of varied traps, with spiral walk
And sundry forms, I yet might talk --
Of clay or other mortar made
To suit the fancy or the trade:
Forms now conceived, yet not revealed,
That sleeping lie to fancy's field.

From this description,you may make
Whatever form you choose to take,
From figure one to six, made part
Of this to aid the potter's art,
I recommend said figure three
Of porcelain, like cup for tea.

Claim

As manufacture new, I claim
Said pottery trap, or porcelain.

 

A day of thanks

I hope that everyone has a happy Thanksgiving. Even if you are not in the U.S., I suggest that you take the day off to celebrate.  Although I love turkey, I hope that you don't deep-fry yours.

The U.S. Patent and Trademark Office Joins in the Celebration of Thanksgiving
Recognizes patents and trademarks related to Thanksgiving

The Department of Commerce's United States Patent and Trademark Office joins in the celebration of Thanksgiving by recognizing some patents and trademarks associated with this festive holiday.

Food often takes center stage at Thanksgiving, and there are many well-known Thanksgiving-related products protected by patents and trademarks. One way to spend more time with family and less in the kitchen cleaning up is by using a disposable cooking pan (patent #5,628,427) or a cooking jacket (patent #4,942,809) for the turkey, ham or roast. One non-traditional, but increasingly popular, way to cook a turkey is deep-frying, and one type of equipment used in this preparation is protected by patent # 5,758,569.

Some well-known trademarks associated with turkey and dressing, must-haves at many Thanksgiving tables, are Butterball (registration #1151836) for turkey products and Stove Top (registration #0949459) for stuffing. What holiday feast would be complete without cranberry sauce such as Ocean Spray (registration #2150919)? Desserts are always the final complement to a Thanksgiving feast. For those that do not bake their own, Sara Lee's slogan for its pies and cakes, "Nobody Doesn't Like Sara Lee," is protected by trademark registration #1885156.

These patents and trademarks, as well as the more than six million patents issued since the first in 1790 and the 2.3 million trademarks registered since 1870, can be seen on the Department of Commerce's U.S. Patent and Trademark Office web site at www.uspto.gov.

Patentable Subject Matter?

If you are already looking for a Christmas present, you might find a good one for your brother in U.S. Patent No. 6,966,840. The patent is titled “Amusement device that senses odorous gases in a bathroom.”

With all this question of patentable subject matter — perhaps this would have been a candidate for rejection. . . . Proposed revision to Diamond v. Diehr: “anything under the sun made by man [excluding bathroom related novelty devices].”

 

Patent Glossary

Learning the Law: The patent law firm of Brown & Michaels has created a nice, short patent glossary that covers many of the terms of art that patent attorneys use on a daily basis.  The patent glossary is a great place to start if you are a new lawyer, agent, or paralegal trying to learn the trade. 

Link:

• Brown & Michaels Patent Glossary
• JOM Patentese
• USPTO Glossary of Terms

Branding-Energy of the Volkswagen Beetle

I have been planning a post about U.S. published application No. 2005–0055221 for ages, but I just could not find any words to describe my emotions.

The abstract reads:

A branding-energy amplifier for amplifying the branding-energy of the Volkswagen Beetle. Branding-Energy Amplifier established upon the principle of Node Plurality.

As explained in the specification:

If you were to see a singular Marilyn Monroe walking down the street, you probably would notice.  If, however, you were to see 88 Identical Marilyn Monroes's single filing fashionably in parade-dress parade, you would likely stop whatever you were doing and stare in exasperated amazement wondering all the while what in the world was going on. . . . By extension then, a Volkswagen beetle limousine with 88 humps, does not look the same, does not function the same, and is, in fact, not the same, as a Volkswagen beetle with 1 hump because they do not share identical Automotive DNA.

View the patent: DOWNLOAD.  The warp-drive has nothing on this one.

Federal Circuit Judge Admits that Family Member is Infringing PBJ Claims

IP Law Bulletin has a nice follow-up article on Smuckers’ Peanut Butter & Jelly patent appeal at the Federal Circuit.  According to their report, the judges on the panel were somewhat hostile to the applicant:

Judge Arthur Gajarsa noted that his wife often squeezes together the sides of their child's peanut butter and jelly sandwiches to keep the filling from oozing out. "I'm afraid she might be infringing on your patent!" he said.

Smuckers is appealing the USPTO’s rejection of its patent application on its crustless sandwich making process.  Smuckers already holds one patent on the technology, but is hoping to capture a broader claim-set with this appeal.

A decision is expected within about four months.

Links:

• CBS Evening News: scroll down to ‘Peanut Butter Politics.’ (Thanks to Jonathan Krit at Emrich & Dithmar).
• WSJ Article.  (Thanks to Kevin Heller at www.TechLawAdvisor.com).

Welcome to April!

A Mr. G. Aharonian holds the patent on a holiday boardgame that includes the fine American holidays of April Fool’s Day, Tax Day and Arbor Day. (U.S. Patent No. 4,915,391).

Abstract: A board game whose gameboard design is composed of an endless path of purchasable blocks representing the major national American holidays. . .

I wonder if the inventor has any relation to the famous G. Aharonian?

In other April First news, the IPO, as expected, has called for “more patents and fewer courts.”  From the press release:

Today IPO announced its 2005 legislative program. Key objectives are to quadruple the number of U.S. patents granted each year and to automatically enforce all patents without costly litigation. To this end, IPO called for eliminating the jobs of the 5,000 patent examiners at the USPTO and abolishing all federal courts that have offended IPO members by denying or refusing to enforce patents. Money saved by cutting these unnecessary government jobs can be used to create a federal program to subsidize businesses known at "patent trolls," in order to increase patent licensing income and strengthen the U.S. economy.  (IPO April 1 Special Report).

Just to be clear — this press release is a joke.

Patents, String Theory, Anti-Aging, and the Warp Drive

I was discussing string theory with a buddy on the way to work this morning.  It turns out that the practical applications of string theory have not yet been fully realized — at least as far as patented technology is concerned.  Only eight issued patents and eight published applications refer to string theory in any way.  Of these, the two most interesting include Jerry Jacobson’s patented method for ameliorating the aging process by using electro-magnetic energy.  (U.S. Patent No. 6,004,257).

Although not yet issued, UK scientists Andrew Worsley and Peter Twist have applied for their patent on specifications for warp drive technology based on the theoretical underpinnings of both general relativity and string theory. (U.S. Pub. No. 2003–0114313). The Worsley-Twist warp drive does not depend upon traditional emissions of matter to create thrust.  Rather, the drive creates a change in the curvature of the space-time continuum — thus allowing travel by warping space-time.  Worsley & Twist recently responded to a rejection under Section 101 of the patent act.  The patent examiner raised concerns over the possibility of the claimed terms “graviton” and “warp drive.”  In their response, the applicants pointed out that the warp drive does not necessarily require superluminal (faster than light) travel.

 

Trial Lawyers Beware: The Mock Jury Has Been Patented

To put everyone on notice: The method of conducting a mock trial has been patented.  The patent, No. 6,607,389, claims priority to a 2001 provisional filing date.  The novel portion of the claim appears to be that both the stricken and not-stricken members of the jury pool hear the case.  Claim 1 reads as follows: 

1. A method of conducting a mock trial exercise . . . comprising:

• assembling an initial pool of potential mock jurors;
• questioning members of the initial pool . . .;
• striking members of the initial pool for cause . . .;
• permitting the attorney[s]to make a number of peremptory strikes of members of the initial pool . . .;
• assembling a probable jury comprising members of the initial pool not struck;
• assembling a stricken jury comprising members of the initial pool struck;
• presenting [at least a summary of the case] to both the probable jury and the stricken jury.

The patent was awarded to Dr. Louis Genevie, founder of Litigation Strategies, a New York jury research and consulting firm.  Thanks to Dan Ravicher at PubPat for showing me this one. 

You don't see drawings like this anymore

IP Funny is written by a group of anonymous intellectual property attorneys.  In a recent post, they uncovered Nelson Waterbury's 1968 patent on a bulletproof buoyant combat uniform.  I have no idea whether the invention was valuable, but the drawings are great!

Links:

• IP Funny Post
• Download US 3,398,406-A1.pdf

USPTO Issues Design Patent Number 500,000 for Chrysler Convertible

The USPTO announced a ceremony to commemortate issuance of design patent number 500,000.  The patent, issued to DaimlerChrysler(R) for the design of the Chrysler Crossfire(R) will be awarded by the new Secretary of Commerce Carlos M. Gutierrez and Under Secretary of Commerce for Intellectual Property Jon Dudas.

Design patents are granted for new, original, ornamental designs for articles of manufacture. The first design patent was issued in 1842 to George Bruce of New York City for printing types. Design patents provide exclusive rights to their owners for a term of 14 years from the date of issuance. [LINK]

Long out of favor, design patents are seeing a rebirth.  Earlier this week in Junker v. Eddings, the Federal Circuit upheld an $800,000 verdict in a design patent case.  According to Philip Mann, unlike in prior cases, "the Federal Circuit did not go out of its way to find the design patent invalid and/or not infringed."

Logistics:

Friday, February 11, 2005, 11:00 a.m.
Lobby, U.S. Department of Commerce
Main Entrance, 14th Street, N.W.
NOTE: I just received word from the PTO that the ceremony is NOT open to the public.

Patent TRIVIA CONTEST: Fluid-Filled Lens (WINNER FOUND)

The trivia contest posted last week generated lots of interest.  Thanks for everyone who tried their hand at searching.  The contest goal was to find a seminal U.S. patent that teaches a fluid lens.  The question included the clues that the lens was patented prior to WWII, had no cited prior art, 14 independent claims, and no dependent claims. A small non-monetary prize was promised to the winner.

However -- there will be no prize, because the winner is one of our fine USPTO Patent Examiners (Examiner-H) who was able to find U.S. Patent No. 2,062,468.  Ethical rules bar us from sending him a prize, and Examiner-H would prefer to remain anonymous.  Greg Aharonian would be proud.

About the patent: This "optical device" was patented by Charles H. Matz in 1936 teaches a "fluid lens." The strength of the lens can be altered by varying the curvature of the surface of the liquid.  Interestingly, Matz introduces the concept of varying the surface curvature (surface tension) by varying the voltage across the fluid lens.

NOTES:

• Download The Patent
• We're making the contest a bi-annual event (every 6 months). Feel free to send me suggestions for contest. (patent law blogger -- Dennis Crouch).
• LINK: Paul Schwander from the EPO regularly provides a similar quiz in the IPR-helpdesk newsletter to help searchers build up their skills. FYI: IPR = Intellectual Property Rights.

Patent TRIVIA CONTEST: Fluid-Filled Lens

One of our loyal readers sent in a TRIVIA question about camera lens technology.  Before going to law school, I spent some time as a consultant for a major lens manufacturer, so this topic is also of interest to me.

Both Philips Electronics and Varioptic have patents on fluid-filled camera lenses. The IP dispute between these two companies will likely become quite hot in the near future. [link, link].

However, neither company has made any public reference to a seminal U.S. Patent that teaches a fluid lens that was patented before World War II (WWII).  This patent has no prior art cited against it, has 14 independent claims and no dependent claims. 

Contest: Can you find that seminal patent? A quite small non-monetary prize for the first correct answer.

eBay infringement decision expected

There is an interesting article in the Post (free subscription) about Thomas Woolston, creator of the MercExchange and Patently-O Reader.  Woolston won a $35 million patent infringement suit against eBay that is now on appeal.  According to the article he and I have the same schedule:

Every morning at 11, Woolston stops whatever he's doing, sits at his computer and clicks "refresh" on the Federal Circuit Court of Appeals Web site.

Woolston checks the Federal Circuit's website because the court is expected to release its decision in the eBay case within the next few weeks.  I check the website so that I can provide the most up-to-date news on patent cases.

Happy New Year!

Here's to a happy new year! I'll be back at work on Monday morning, and you should see a return of quality posts at that time.

We usually shoot fireworks at new-years. Jake's Fireworks is the big dealer in my childhood hometown of Pittsburg Kansas. Their latest patent is on a new way to package fireworks. (U.S. Design Patent No. D-499,638).

Election 2004: Paper Ballots Still Recieve A Majority of Votes

Chicago still uses punch-cards for voting. Despite the risk of hanging chads or dimpled marks, the benefit of this system is the paper trail. Many voters, including myself, are reassured by the paper trail. Patent No. 4,445,731 (shown above) was invented by John Ahmann in the early 1980's. The patent covers the type of portable voting booths used in my precinct. Ahmann is still recognized as an expert in voting technology and testified in the Bush v. Gore controversy of 2000. According to the BBC, about 30% of U.S. voters will use electronic voting (e-voting) machines in today's election.

Problems and praise Opponents highlight the problems that have already occurred with the machines - pointing for instance to a congressional race in Ohio in which votes were incorrectly registered due to a problem with the memory cartridges.

At the same time however, Georgia's entirely electronic system appears to have few naysayers after two years in operation - although it is widely accepted that the presidential election will prove the greatest test.

The principal criticism remains the lack of paper audit trails. Nevada is the only state using machines which will provide voters with the kind of receipt which would, if necessary, allow for a manual recount.

But in order to accommodate some of the concerns, a number of states - including California - will give voters the opportunity to vote using electronic machines or a paper ballot form.

Here is a picture of my neighbor and senate hopeful Barack Obama and his daughter casting his vote.

iPod Receives Design Patent

Apple has received a design patent on its 3G iPod. The application was filed just days before the public release of the new iPods, and issued as a new patent on October 26. (U.S. Patent No. D497,618). Apple Insider and Steve Nipper have more information.

What is a Design Patent?
A design patent covers ornamental, non-functional characteristics of an article of manufacture. The Patent Act provides that a design patent should be issued for any new, original and ornamental design for an article of manufacture. As such, a design patent only protects the appearance of an article and not any structural or utilitarian elements. A design patent has a term of 14 years from the date of issuance.

LINK: The patent laws provide for the granting of design patents to any person who has invented any new and nonobvious ornamental design for an article of manufacture. The design patent protects only the appearance of an article, but not its structural or functional features. The proceedings relating to granting of design patents are the same as those relating to other patents with a few differences. See current fee schedule for the filing fee for a design application. A design patent has a term of 14 years from grant, and no fees are necessary to maintain a design patent in force. If on examination it is determined that an applicant is entitled to a design patent under the law, a notice of allowance will be sent to the applicant or applicant’s attorney, or agent, calling for the payment of an issue fee. The drawing of the design patent conforms to the same rules as other drawings, but no reference characters are allowed and the drawing should clearly depict the appearance, since the drawing defines the scope of patent protection. The specification of a design application is short and ordinarily follows a set form. Only one claim is permitted, following a set form.

BEvERage dispenser

You will not be surprised to learn that Randy Flann, the inventor of Patent No. 5,966,743 is from Milwaukee, Wisconsin.  In fact, you can buy real gear from Randy at his website www.rofoheadgear.com. The working old world barrel headgear runs just under $30.

Thanks to Mark Chael for the link.

The object of the invention is to create inventions

If only it were this easy to create inventions that actually work: The Prior-Art-O-Matic.

Patents for sale (not babies)

The Patent Offices publishes the Official Gazette (OG) in an online version every Tuesday. One section of the OG includes patents that are available for license or sale. Patentees can list patents they have available in a high-tech garage sale.

This week's patents for sale include a Caulking Gun (U.S. Patent 6,435,373), A credit card for apartment renters (the card always had enough credit in reserve to pay the monthly rental fee) (U.S. Patent 6,738,751), and a diaper restraint system. (U.S. Patent 6,755,198).  Contact information for the inventors is is available here.

Question: Is this type of listing ever successful? E-mail your story.

North Carolina Inventor Helps Eliminate Bug Problems

A few months ago, David Nelson of Asheville, North Carolina received a patent on his device for capturing insects.  (U.S. Patent No. 6,651,379).  Essentially, David has created a stack of extra sticky pads -- like Post-It® notes on steroids -- that can be used to capture flies and other bugs.

Each sheet has a region is coated with a mild compression adhesive material capable of trapping of an insect in response to the physical manipulation by a human being.... For increasing the maneuverability of the device, the device can be attached to an elongated rod such as a fly swatter's handle.  

LaundraPak Success

In another solo-inventor success story, fellow tiger Jeremy Kestler has turned his invention into a successful business. The LaundraPak hangs over a door and can be carried on your back to the laundry room. (U.S. Patent No. 6,729,519). As students are returning to college and law school, I’m sure that sales will be booming. Jeremy has a 6-minute time-slot on QVC to get his message out. (Between 6:30 and 7:00 on Tuesday, August 31, CTD).

Method of Buying a House

Brian Hastings recently received a patent for his real estate business method that would push the real-estate agent's commission to the home buyer. (U.S. Patent No. 6,751,596). His story is covered in this NYTimes article.

Online Inventor's Forum

The USPTO has released a transcript from its on-line chat.  Here are some Excerpts:

Inventor 
Can I use an invention promotion company to help me with my invention

USPTO Expert
Yes, however you should do a thorough search of what they offer including their costs and their success rate. Be sure and get references to ensure you are working with a reputable business. Also, registered patent practitioners are available to help you. For a list of questions to ask an invention promotion company go to our independent inventor link at our website.  http://www.uspto.gov/web/offices/com/iip/data.htm

Inventor
can drawings be revised after the original non-provisional application?

USPTO Expert
Drawings can be revised as long as no new matter (additional information supported by the original specification) is added by the revision. Revision of drawings is accomplished by filing replacement drawings.

Inventor
Is there a difference in preference/priority between individual patent applicants verses corporation applicants?

USPTO Expert
Although there are reduced fees for independent inventors and small businesses, the USPTO treats all applications in the same manner regardless of the fee paid.

Inventor
Can I market my provisional patent, after I mailed the application? If not, when?

USPTO Expert
Yes, you may market your invention at any time after your file the provisional. But you could lose your patent rights if you sell or offer to sell your invention more than one year before the effective filing date of your invention. The filing date of the provisional will be the effective filing date of a subsequent non-provisional as long as the disclosure of the provisional provides sufficient disclosure for the claims of the non-provisional, but you must file a non-provisional application in order to obtain a patent.

Inventor
What should I do if the (patent) examiner misunderstands the descriptions and benefits of the invention and compares it to prior art that has nothing to do with it?

USPTO Expert
In response to feedback from previous chat sessions, this month we have decided to answer more technical questions off-line in the written transcript of this chat which will be available in about a week on our website.  You can request an interview with the examiner. This interview can be in person or over the telephone. Give the examiner some advance notice of your request so that you both can agree on a convenient time. The interview could assist you in preparing your written response to the office action. An examiner has a burden to establish a basis for a conclusion of non-patentability. Section 2100 of the Manual of Patent Examining Procedure (MPEP) offers requirements to the examiner on developing a rejection. Probably MPEP 2111+ would be appropriate to your situation. From the MPEP sections, determine what rationale the examiner was required to use when drafting the rejection. If you can develop sound arguments why the examiner’s rejection failed to follow the MPEP guidance, then you may be successful in convincing the examiner to withdraw the rejection. http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r2_2100_508.pdf

Inventor
I just want to say that the PTO is providing an excellent service to the public.

 

X-Patents

The U.S. Patent Office has almost seven million sequentially numbered patents electronically available through its online web interface. You might be surprised, however, that Patent Number 1 (Traction wheels for a locomotive) was not the first patent. The first 10,000 patents issued between 1790-1836 were not originally numbered and all records of them were lost in a fire at the patent office.

No copies of the patent descriptions and drawings were kept anywhere else, and only a copy of the official patent certificate was sent to the inventor. Patents were not numbered then; they were referred to only by name and issue date.

The patents that were recovered have been renumbered as x-patents. Thus, Samuel Hopkins' 1790 patent for potash manufacturing is U.S. Patent No. X-1. In today's NYTimes, Teresa Riordan has a nice article about the ongoing search for the lost patent documents.

Update: PHOSITA has a great post with more history on the Patent Office fire.

Patent Trivia

On this date in 1790, the very first U.S. patent was granted to Samuel Hopkins on a process for manufacturing potash. Potash can be any material containing potassium. However, potash is most commonly potassium carbonate derived from wood ashes. The term arises from the process of extracting lye from wood ashes in iron pots. Potash can be used in glass making:

Glass made with potash becomes rigid more quickly and becomes harder and more brilliant than soda glass.

www.guadalupeglass.com/Glossary.html

Segway Inventor to speak at Inventors Conference

The USPTO has announced that

Dean Kamen, one of the world’s best known and most successful inventors, will be the keynote speaker at the opening session of the USPTO’s annual Independent Inventors Conference in Concord, N.H. on Friday, August 20.

Dean Kamen is Chairman of Segway LLC, an inventor and a physicist. "His inventions include a portable dialysis machine and the Segway™ Human Transporter."

Registration is available online.

Wheelchair Transfer Device

Harry and Kathleen Cerne of Pittburg Kansas have recently been awarded a patent for their wheelchair transfer device. The device is designed to be secured to the wheelchair at more than one location in order to minimize the risk of slippage during use. In addition, the transfer device is operable with many different types of wheelchairs and is fairly inexpensive to construct. (U.S. Patent 6,748,612)

Post Office to honor R. Buckminster Fuller

50 years ago, Buckminster Fuller patented the geodesic dome (or spherical icosahedron). Now, the post office has issued a stamp in his honor.

Bocce Weekend Update

In 1966 J.M. Boulanger patented the rolling-ball game shown above. (U.S. Patent 3,231,278). Boulanger's game is very similar to Bocce. According to the rules:

Bocce originated in Italy and is one of the oldest of all lawn bowling games. It is now gaining popularity in the United States since it can be played by people of all ages and on a great variety of surfaces. Bocce is played between two players or two teams of up to four players on a team. Bocce is played with 8 large balls, 4 of one color, 4 of another color and one small target ball called the "Jack," or "Pallino." Players seek to place their Bocce Balls nearer to the target jack than their opponent or displace the opponent's Bocce Ball and so improve the position of their Bocce Ball in relation to the Jack, (Pallino). Bocce can be played in a variety of ways using various rules. LINK.

New Patent: Bicycle Passenger Seat

Freddie Guynn of Laramie, Wyoming has patented a new type of child bicycle seat. (U.S. Patent 6,010,140). According to the Laramie Boomerang:

The bike seat sits on the bar directly behind the handlebars of the bike. Foot pegs are set above the brake and the child’s feet rest away from the spokes.

Ride safely!

Disc Golf Patents

In 1977 Ed Headrick patented this basket-target for disc (Frisbee) golf. (U.S. Patent 4,039,189) (PDF). After the patent had expired, Headrick's company (DGA) sued Champion Disc for trade dress infringement. The district court threw out the case, finding that the patented design was functional and thus could not retain trade dress protection. The holding was affirmed by Disc Golf Assoc., Inc. v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998).

In addition to this patent, "Steady" Ed invented the modern Frisbee and the game of disc golf! Before he died in 2002, he made this remark.

"I felt the Frisbee had some kind of a spirit involved. It’s not just like playing catch with a ball. It’s the beautiful flight."

Find courses in your area. (Unfortunately for me, there are no courses in the city of Chicago).

Transcript of on line PTO help session

The USPTO has begun to hold regular on line "chat" sessions where independent inventors can ask questions. Sample Q&A:

Independent Inventor: In a utility patent, are you only granted protection for your claims?

USPTO Expert: Claims define your legal protection.

Independent Inventor: Is there such a thing as a Business Method Patent?

USPTO Expert: It is a utility patent. Utility patent applications may be filed for business methods. For additional information go here

Independent Inventor: Can applicants call in a speak with the examiner directly?

USPTO Expert: Yes, this is called an "interview" and is generally conducted after the first Office action has been mailed. Please see MPEP 713 for a detailed explanation of interview practice look here.

(Session Transcript)

EHarmony.com matchmaker patent

What's love but a coupling satisfaction predictor? Eharmony recently received a patent on its matchmaking methodology. (U.S. Patent No. 6,735,568).

Claim 1 of the patent deacribes a method with four steps:

(i) generating, from empirical data, a number of factors ... relevant to relationship satisfaction;
(ii) approximating the satisfaction that a user ... has in the relationships that the user forms with others;
(iii) identifying ... candidates for a relationship with the user by [using] the approximated satisfaction and one or more of the factors; and
(iv) approximating the satisfaction that the user will have in a relationship with a particular candidate.

(Related AP Story by Rachel Konrad).

Even more American than Apple Pie

Pamela and Kevin Piston of Australia have patented this shape for a pastry. (U.S. Patent No. D467,404).

Independent Inventors Conference

USPTO Announcement:

The United States Patent and Trademark Office (USPTO) and the National Inventors Hall of Fame will hold the annual Independent Inventors Conference at the Franklin Pierce Law Center in Concord, New Hampshire August 20-21.