Wednesday, September 21, 2011
Thursday, September 15, 2011
America Invents Act - How do these recent US patent law amendments affect my business?
Recently, Congress and the Senate passed the America Invents Act, the first major revision of the patent laws since 1952. The amendments can be confusing, and there is of course uncertainty, even after the amendments are put into practice, as with any new law. After a brief run-down of the changes that are taking place, see how the amendments will affect your business and patenting strategy.
Moving to a "First-to-File" system: The US has, for a long time, been a "First-to-Invent" which means that the first person to invent is the rightful owner. Where two inventors claimed to be the rightful inventor, this would lead to expensive and convoluted interference proceedings, like a mini-trial requiring evidence and a hearing to determine who the rightful inventor was. The rest of the world has been operating on a First-to-File system, which reduces uncertainty but results in a race to the patent office, as the first person to file is the rightful owner. This change brings the US in line with the other patent systems around the world.
Post-Grant Review Proceedings: In the past, US Patents have been difficult to challenge on grant, short of litigation. When the law takes effect in approximately 1 year opponents of a patent will have new means to challenge the issue through post-grant review proceedings. Petitions for post-grant review must be filed within 9 months of the grant of a patent application, and can claim almost any ground of invalidity including prior disclosure or sale, indefiniteness of claims, and insufficiency of the specification. Review will be granted where the petition discloses unrebutted grounds where it is more likely than not that one or more claims is unpatentable.
Expanded Time Limits for Third-Party Submissions during Prosecution: Previously, submissions by third parties regarding the patentability of an application would have to be made within the earlier of two months of the publication of an application or prior to mailing a notice of allowance. Now the submissions may be made before the earlier of the date the Notice of Allowance is sent, or six months after publication.
Supplemental Examination: The patent owner can request reexamination of his or her application after issue of the application, to consider relevant information and correct the patent if appropriate.
Suffice to say, the amendments bring the US patent regime more in line with the rest of the world, which simplifies an international patent filing strategy. The America Invents Act makes challenging unissued and issued patents easier, through expanding the time for filing prior art during prosecution, and challenging the patent after issue with Post-Grant Review. Supplemental Examination will allow patent owners to voluntarily narrow the scope of their patent after having encountered documents that can impeach the patent. Overall, there are no changes that affect the patentability of business methods.
If you have any questions or comments, please let me know. You can reach me at engfield.ca.
Moving to a "First-to-File" system: The US has, for a long time, been a "First-to-Invent" which means that the first person to invent is the rightful owner. Where two inventors claimed to be the rightful inventor, this would lead to expensive and convoluted interference proceedings, like a mini-trial requiring evidence and a hearing to determine who the rightful inventor was. The rest of the world has been operating on a First-to-File system, which reduces uncertainty but results in a race to the patent office, as the first person to file is the rightful owner. This change brings the US in line with the other patent systems around the world.
Post-Grant Review Proceedings: In the past, US Patents have been difficult to challenge on grant, short of litigation. When the law takes effect in approximately 1 year opponents of a patent will have new means to challenge the issue through post-grant review proceedings. Petitions for post-grant review must be filed within 9 months of the grant of a patent application, and can claim almost any ground of invalidity including prior disclosure or sale, indefiniteness of claims, and insufficiency of the specification. Review will be granted where the petition discloses unrebutted grounds where it is more likely than not that one or more claims is unpatentable.
Expanded Time Limits for Third-Party Submissions during Prosecution: Previously, submissions by third parties regarding the patentability of an application would have to be made within the earlier of two months of the publication of an application or prior to mailing a notice of allowance. Now the submissions may be made before the earlier of the date the Notice of Allowance is sent, or six months after publication.
Supplemental Examination: The patent owner can request reexamination of his or her application after issue of the application, to consider relevant information and correct the patent if appropriate.
Suffice to say, the amendments bring the US patent regime more in line with the rest of the world, which simplifies an international patent filing strategy. The America Invents Act makes challenging unissued and issued patents easier, through expanding the time for filing prior art during prosecution, and challenging the patent after issue with Post-Grant Review. Supplemental Examination will allow patent owners to voluntarily narrow the scope of their patent after having encountered documents that can impeach the patent. Overall, there are no changes that affect the patentability of business methods.
If you have any questions or comments, please let me know. You can reach me at engfield.ca.
Monday, August 29, 2011
Start-up company value enhanced by patents - How patents add value and how to delay patenting costs
Often in creating a start-up company., particularly in technology, the owners are looking for an eventual buy-out by a larger company (Google, Facebook), and even if they are not, the company must have value in order to receive investment. Value is gained by a competitive advantage, and one of the most power competitive advantages is to exclude others from being able to reproduce your idea (at least not without royalties to you).
A family of patents covering the idea is the best approach to protecting your competitive space and adding value to the company. The patents can later be sold as part of the company, and often the lion's share of the value of a company is the intellectual property. Patents can also stand as collateral and guarantee for any investor, such as a VC or angel, who is providing funds. When a technology is no longer being pursued by the company, the patents can be licensed to provide a stream of revenue, or sold off to provide capital back to the company.
While a patent filing strategy can be expensive, with the right patent attorney the patenting costs can be delayed until the company is profitable or pending sale. The start-up will benefit from the value of the patents, without having to dispense limited funding at the outset.
Feel free to contact me for more information.
A family of patents covering the idea is the best approach to protecting your competitive space and adding value to the company. The patents can later be sold as part of the company, and often the lion's share of the value of a company is the intellectual property. Patents can also stand as collateral and guarantee for any investor, such as a VC or angel, who is providing funds. When a technology is no longer being pursued by the company, the patents can be licensed to provide a stream of revenue, or sold off to provide capital back to the company.
While a patent filing strategy can be expensive, with the right patent attorney the patenting costs can be delayed until the company is profitable or pending sale. The start-up will benefit from the value of the patents, without having to dispense limited funding at the outset.
Feel free to contact me for more information.
Friday, August 26, 2011
How to write patent claims. How to draft claims for a patent application
Claims drafting is as much art as science. There is a body of law that has built up over the past 300 or so years in which patents have been granted in North America, which dictates to some degree how claims must be drafted. Within that framework, however, there are many interpretations of how best to encapsulate an invention in words, and the ultimate arbiter of any patent claim is the Court.
As an overview, a claim is made up of three parts: the preamble, the transitional phase and the body. In discussing claims construction, let's use an example, perhaps the original velocipede patented by Pierre Lallement:
The velocipede consists of a frame having a pivoting fork, two wheels, of which the front wheel pivots within the fork and has pedals, a seat and a handlebar also attached to the pivoting fork. So an example claim might read:
A two-wheeled velocipede for transportation (preamble), comprising (transition):
a frame for receiving a rear wheel, the frame having a seat mounted thereon;
a fork pivotally mounted within said frame, having a handlebar extending from its top, the fork for receiving a front wheel;
a rear wheel rotatably mounted within said frame;
a front wheel rotatably mounted within said fork, the front wheel having two pedals mounted opposite to one another
wherein the pedals are pushed to provide motive force to the front wheel, and the handlebars may be turned so that the front wheel pivots (body).
The preamble describes the invention using normal words (as velocipede was back in the day), and the transition set up the components. The word "comprising" means minimally including, so that more elements may be present than are listed here. If a list of components is exhaustive, in that any more components would prevent the invention from working, for example, As you can see, the bulk of the claim is the body which describes components, describes how they fit together, and then usually a "wherein" clause describes how the invention operates. In choosing the components to describe, what you are looking for is the minimal elements that are required to make the invention perform. Anything bonus or not strictly necessary should be left out
The entire claim language must correspond with the language used for the same components in the description. Also, elements must be introduced by an indefinite article ("a"), and thereafter referred to by a definite article ("the"). Punctuation is important - the claim is one big sentence separated by semicolons or commas; a period only appears at the end.
As an overview, a claim is made up of three parts: the preamble, the transitional phase and the body. In discussing claims construction, let's use an example, perhaps the original velocipede patented by Pierre Lallement:
The velocipede consists of a frame having a pivoting fork, two wheels, of which the front wheel pivots within the fork and has pedals, a seat and a handlebar also attached to the pivoting fork. So an example claim might read:
A two-wheeled velocipede for transportation (preamble), comprising (transition):
a frame for receiving a rear wheel, the frame having a seat mounted thereon;
a fork pivotally mounted within said frame, having a handlebar extending from its top, the fork for receiving a front wheel;
a rear wheel rotatably mounted within said frame;
a front wheel rotatably mounted within said fork, the front wheel having two pedals mounted opposite to one another
wherein the pedals are pushed to provide motive force to the front wheel, and the handlebars may be turned so that the front wheel pivots (body).
The preamble describes the invention using normal words (as velocipede was back in the day), and the transition set up the components. The word "comprising" means minimally including, so that more elements may be present than are listed here. If a list of components is exhaustive, in that any more components would prevent the invention from working, for example, As you can see, the bulk of the claim is the body which describes components, describes how they fit together, and then usually a "wherein" clause describes how the invention operates. In choosing the components to describe, what you are looking for is the minimal elements that are required to make the invention perform. Anything bonus or not strictly necessary should be left out
The entire claim language must correspond with the language used for the same components in the description. Also, elements must be introduced by an indefinite article ("a"), and thereafter referred to by a definite article ("the"). Punctuation is important - the claim is one big sentence separated by semicolons or commas; a period only appears at the end.
Wednesday, August 24, 2011
Why Patent? Benefits of Patents
Why Patent?
A patent gives an inventor a 20 year monopoly over exploiting an invention; after that, the invention is in the public domain, for all to use. Preparing and filing a patent application takes time and money, however - wouldn't it be great if you could automatically receive protection on creation of the invention, like copyright? And copyright lasts for 50 years (70 in the US)!
The only protection that lasts forever, or at least an indefinite period, is a trade secret. If you can keep the invention secret, and it can't be reverse-engineered, then this would be the way to go ,especially as it's free.
Benefits of Patents
A granted patent (and ungranted in certain circumstances) gives enforcement rights to the owner against infringers, which an owner (or licensee) can use to stop the infringing behavior and claim damages. Patents can therefore be valuable property, which can be bought and sold like any other property. We recently saw the patent portfolio of Nortel sold to a conglomerate including Apple and Microsoft for $4.5 billion. As a property, patents can also support investment in businesses - after all a patent gives a competitive advantage. Producing this kind of value, a patent encourages innovation and rewards invention.
A patent gives an inventor a 20 year monopoly over exploiting an invention; after that, the invention is in the public domain, for all to use. Preparing and filing a patent application takes time and money, however - wouldn't it be great if you could automatically receive protection on creation of the invention, like copyright? And copyright lasts for 50 years (70 in the US)!
The only protection that lasts forever, or at least an indefinite period, is a trade secret. If you can keep the invention secret, and it can't be reverse-engineered, then this would be the way to go ,especially as it's free.
Benefits of Patents
A granted patent (and ungranted in certain circumstances) gives enforcement rights to the owner against infringers, which an owner (or licensee) can use to stop the infringing behavior and claim damages. Patents can therefore be valuable property, which can be bought and sold like any other property. We recently saw the patent portfolio of Nortel sold to a conglomerate including Apple and Microsoft for $4.5 billion. As a property, patents can also support investment in businesses - after all a patent gives a competitive advantage. Producing this kind of value, a patent encourages innovation and rewards invention.
Tuesday, August 23, 2011
How to file your patent with the patent office (Canadian Patent Office CIPO)
Once you have completed the patent specification, you will want to file the application with a single patent office as a priority application. Then you have one year in which to file the same patent application in all other countries in which you are seeking protection, while claiming priority to the earlier application. If you do not file in other countries by the one-year mark, you will lose rights to the invention in those countries.
To get a filing date in the Canadian Patent Office (CIPO), you will need to provide, at the time of filing:
Please note that with a small entity fee, you must also file a statement that you believe yourself to be a small entity under the Patent Rules. Here's some boilerplate:
"The applicant believes that in accordance with the Patent Rules they are entitled to pay fees at the small entity level in respect of this application and in respect of any patent issued on the basis of this application."
This is true for applications first filed in Canada, Convention Priority applications filed in Canada, originating in the US for example, and PCT National Phase entries in Canada. For completion of the application, you must also file:
The petition contains some further requirements:
To get a filing date in the Canadian Patent Office (CIPO), you will need to provide, at the time of filing:
- a request for a patent grant
- the name and address of the applicant
- the specification, and
- the appropriate filing fee ($400 for standard entity or $200 for small entity)
Please note that with a small entity fee, you must also file a statement that you believe yourself to be a small entity under the Patent Rules. Here's some boilerplate:
"The applicant believes that in accordance with the Patent Rules they are entitled to pay fees at the small entity level in respect of this application and in respect of any patent issued on the basis of this application."
This is true for applications first filed in Canada, Convention Priority applications filed in Canada, originating in the US for example, and PCT National Phase entries in Canada. For completion of the application, you must also file:
- a petition (a form can be found here)
- an abstract
- a set of claims
The petition contains some further requirements:
- a declaration that the applicant is the legal representative of the inventor, or that the applicant is the inventor,
- the small entity declaration discussed above, and
- an appointment of agent
so it's recommended that the petition is filed with the application.
That's about it. Once you have filed the specification, petition and fee, then you should receive a Filing Certificate in 4 - 8 weeks. If it's a National Phase application from a PCT, then it's helpful to include a copy of the first page of the PCT. If the format does not meet the requirements, you'll receive a request to amend the specification to comply.
Monday, August 22, 2011
How to write a patent - the patent specification and claims
A patent specification describes your invention in technical detail, using drawings, so that a skilled technician in the field would be able to reproduce the invention from the specification alone. Meaning there must be enough technical detail so that all the inventive parts could be made with reference to the specification alone without reference to any external documents.
You only need to describe the inventive aspects in detail - anything that is common knowledge does not need to be described in detail and can be merely referred to. For example, if you have invented a new suspension for a car, you will need to describe in detail how the suspension system is organized and operates, however you can merely refer to an "engine" for the car, without describing the whole engine, if the engine is not part of your invention.
A specification requires several elements, described below. Once assembled, these will create a document that can be filed with Patent Offices around the world.
Title
The title is a concise description of the invention, for example "Infrared Toaster" or "Improved Vehicle Suspension System"
Abstract
The abstract summarizes the invention in 150 words or less. If you look at existing patent specifications at the USPTO for example, this is the description that typically appears on the first page.
Summary
The Summary is a longer summary of the invention. For reasons related to the validity and support of the claims language, the summary consists generally of the final claims language, in an English sentence structure.
Description of Figures (or Figure Reference)
This is a description, figure-by-figure, of what the viewer is seeing in each of the figures. For example, "Fig. 1 is an elevation view of the invention; Fig. 2 is a detail view of the widget of the invention".
Detailed Description
This portion is written in conjunction with the Figures. Basically, it will refer to the Figures and describe, element-by-element what the Figures show. The elements are identified on the Figures with numbers and arrows. For example, "With reference to Fig. 2, light socket 100 contains a positive terminal 102 at its base 103 and a threaded negative terminal 104 around its circumference 105." Describe what the parts are, and what shape or features they have in order to better perform their task.
Once all the components and how they assembled are described, the Detailed Description should describe their function and how they operate when the invention is working. In particular, you will want to highlight how each component works, and how everything works together to arrive at the invention.
Figures
The figures should show all the inventive and non-obvious aspects of the invention, and show all the elements together so the viewer can appreciate how the invention works. Again, all features are numbered with arrows to match with the description. Drawings must be clear and it is advisable that the drawings be professionally done and labelled to reduce any objections by the Examiner. Patent drawings can be made directly from photographs if a prototype is available.
Claims
Claims define the legal right that the inventor thinks he or she is entitled to. Usually the invention (the inventive aspect of the whole) is claimed within the item in which it appears. It is advisable to have a patent attorney help with the claims because these are the whole point of the patent - they will give the value to the patent. If the claims are too narrow and detailed, then a competitor will be able to work around the claims by modifying some small thing. If the claims are too broad, then the claims may be invalid and will face challenges during examination. A patent attorney will have experience in finding the right breadth for the claims. And make sure your patent professional is a lawyer - they will have legal enforcement in mind when preparing the claims.
Formatting
Make sure you number pages and paragraphs (and lines too for some countries). Each section should start on a new page. Depending on the country in which you file, there may be other formalities to watch for. However, you'll typically receive a first office action on these formalities, giving you a chance to correct them, if your specification does not meet the local requirements. If you hire local counsel then you will be able to avoid this, as they will know what is required in advance and can modify the specification before it's filed.
You only need to describe the inventive aspects in detail - anything that is common knowledge does not need to be described in detail and can be merely referred to. For example, if you have invented a new suspension for a car, you will need to describe in detail how the suspension system is organized and operates, however you can merely refer to an "engine" for the car, without describing the whole engine, if the engine is not part of your invention.
A specification requires several elements, described below. Once assembled, these will create a document that can be filed with Patent Offices around the world.
Title
The title is a concise description of the invention, for example "Infrared Toaster" or "Improved Vehicle Suspension System"
Abstract
The abstract summarizes the invention in 150 words or less. If you look at existing patent specifications at the USPTO for example, this is the description that typically appears on the first page.
Summary
The Summary is a longer summary of the invention. For reasons related to the validity and support of the claims language, the summary consists generally of the final claims language, in an English sentence structure.
Description of Figures (or Figure Reference)
This is a description, figure-by-figure, of what the viewer is seeing in each of the figures. For example, "Fig. 1 is an elevation view of the invention; Fig. 2 is a detail view of the widget of the invention".
Detailed Description
This portion is written in conjunction with the Figures. Basically, it will refer to the Figures and describe, element-by-element what the Figures show. The elements are identified on the Figures with numbers and arrows. For example, "With reference to Fig. 2, light socket 100 contains a positive terminal 102 at its base 103 and a threaded negative terminal 104 around its circumference 105." Describe what the parts are, and what shape or features they have in order to better perform their task.
Once all the components and how they assembled are described, the Detailed Description should describe their function and how they operate when the invention is working. In particular, you will want to highlight how each component works, and how everything works together to arrive at the invention.
Figures
The figures should show all the inventive and non-obvious aspects of the invention, and show all the elements together so the viewer can appreciate how the invention works. Again, all features are numbered with arrows to match with the description. Drawings must be clear and it is advisable that the drawings be professionally done and labelled to reduce any objections by the Examiner. Patent drawings can be made directly from photographs if a prototype is available.
Claims
Claims define the legal right that the inventor thinks he or she is entitled to. Usually the invention (the inventive aspect of the whole) is claimed within the item in which it appears. It is advisable to have a patent attorney help with the claims because these are the whole point of the patent - they will give the value to the patent. If the claims are too narrow and detailed, then a competitor will be able to work around the claims by modifying some small thing. If the claims are too broad, then the claims may be invalid and will face challenges during examination. A patent attorney will have experience in finding the right breadth for the claims. And make sure your patent professional is a lawyer - they will have legal enforcement in mind when preparing the claims.
Formatting
Make sure you number pages and paragraphs (and lines too for some countries). Each section should start on a new page. Depending on the country in which you file, there may be other formalities to watch for. However, you'll typically receive a first office action on these formalities, giving you a chance to correct them, if your specification does not meet the local requirements. If you hire local counsel then you will be able to avoid this, as they will know what is required in advance and can modify the specification before it's filed.
What is a Patent? When do I file for patent protection?
You have an invention that you'd like to patent. It may be the killer app that changes the way business is done, an exercise machine that will make people healthier, or a new kitchen gadget that will make preparing food more efficient. In any event, you want to protect it from others. Time to think about filing a patent!
What is a patent?
Patents encourage invention by giving an inventor a monopoly over his or her invention for 20 years. The quid pro quo is that the invention passes into the public domain after the expiration of the twenty years. You must file for a patent application in each country in which you would like to protect your invention, and you have one year from filing the first application in which to do this. For example, you file in the U.S. on June 1, 2011. By June 1, 2012 you will have filed in other countries you want to protect, such as Canada and the United Kingdom. In all other countries, your rights will evaporate and people will be free to use your invention.
Bars to Filing
Most importantly, make sure that the invention is not already out there, as this is a bar to filing. Secondly, keep the idea close to your vest before you file - a public disclosure is a bar to filing a patent in Europe and many other countries. In Canada and the U.S., you have one year from an inventor's disclosure to file for a patent.
Other Considerations
Before filing for a patent, it is helpful to reduce the invention to a practical form, so you have already encountered the hurdles in the design before you file, and can include everything in the patent application. A patent protects the functional features of an invention only; aesthetic features are protected by industrial designs or design patents.
Trade Secrets
Whatever it is, the idea is one that can be taken by a competitor, whether merely by looking at the device or through a process of reverse-engineering. If the invention cannot be reverse-engineered, it may be better protected by being held as a trade secret, which has a potentially unlimited lifespan. It costs nothing - all that you need to do is keep it a secret, and make sure all those who encounter it know that it is to be kept a secret. Not an easy task! However, the Google search algorithm and the Coca-cola cola recipe are both trade secrets, and have been kept safe for years.
Have any questions or comments? Visit our website.
What is a patent?
Patents encourage invention by giving an inventor a monopoly over his or her invention for 20 years. The quid pro quo is that the invention passes into the public domain after the expiration of the twenty years. You must file for a patent application in each country in which you would like to protect your invention, and you have one year from filing the first application in which to do this. For example, you file in the U.S. on June 1, 2011. By June 1, 2012 you will have filed in other countries you want to protect, such as Canada and the United Kingdom. In all other countries, your rights will evaporate and people will be free to use your invention.
Bars to Filing
Most importantly, make sure that the invention is not already out there, as this is a bar to filing. Secondly, keep the idea close to your vest before you file - a public disclosure is a bar to filing a patent in Europe and many other countries. In Canada and the U.S., you have one year from an inventor's disclosure to file for a patent.
Other Considerations
Before filing for a patent, it is helpful to reduce the invention to a practical form, so you have already encountered the hurdles in the design before you file, and can include everything in the patent application. A patent protects the functional features of an invention only; aesthetic features are protected by industrial designs or design patents.
Trade Secrets
Whatever it is, the idea is one that can be taken by a competitor, whether merely by looking at the device or through a process of reverse-engineering. If the invention cannot be reverse-engineered, it may be better protected by being held as a trade secret, which has a potentially unlimited lifespan. It costs nothing - all that you need to do is keep it a secret, and make sure all those who encounter it know that it is to be kept a secret. Not an easy task! However, the Google search algorithm and the Coca-cola cola recipe are both trade secrets, and have been kept safe for years.
Have any questions or comments? Visit our website.
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