Wednesday, February 15, 2017

Glaciers and Patents



Entrepreneurs often move at light speed.  A typical patent application would lose a race to a glacier.  Why is that the case?

First, the government is involved.  Need I say more?  Your Patent Attorney will file your application with a gigantic government agency (the Patent Office) that spans 6 large office buildings.  It has its own zip code.  And that’s just HQ – not counting regional facilities or the Examiners who work from home.  It takes time for anything that large to move.  

In addition, the Patent Office is notoriously underfunded.  Indeed, for a long time, the federal government drew money out of patent filing fees to fund other operations.  That means that the Examiners tend to be buried underneath an avalanche of applications.  That’s not to defend them, mind you.  But, the law requires that they take up applications in the order in which they are filed.  Unless, of course, you want to pay a lot more to skate ahead.  

Patent law also involves many intricate inquiries.  To ask the Examiner to move through these crevices quickly risks forcing a rejection rather than smooth sledding.  And that applies to your Patent Attorney too.  If you want to glide down the bunny path rather than taking the diamond trail, your Patent Attorney needs time to point your skis in the right direction – and without a ready-made map of the ski resort.  

So the point this author is trying to make is that you can expect 2-3 years before anything of substance usually happens to your patent application.  Then, when things do “move” any single movement usually takes months.  Patience is not only required.  It is a virtue.  Rushing things will only cost the typical Entrepreneur money and perhaps lots of it.

We at the Villhard Patent Group would welcome the opportunity to discuss your patent application’s likely schedule with you.  You can find more information about us at www.villhardpatents.com.  You can contact us at contact@villhardpatents.com or at 512-897-0399.  We look forward to hearing from you.

Wednesday, September 14, 2016

Patent Eligibility for Software and Business Method Patent Applications




This blog recently expressed a hope that the courts would re-visit business method patent eligibility following the infamous Supreme Court “Alice” decision which eventually opened the door for most business method applications to be held ineligible.  Fortunately, the Federal Circuit Court of Appeals on May 12, 2016 issued the Enfish decision which resurrected business methods – briefly.  

Since then, 3-Justice panels of the Federal Circuit have issued a series of conflicting opinions concerning business method eligibility.  Legally speaking, the issue turns on whether an invention happens to be directed to a mere “abstract” idea.  Practically speaking after reviewing the post-Enfish decisions, the key factor appears to be which group of 3 Federal Circuit Justices makes the determination.  

Our experience before the Patent Office, reflects the same chaos.  Whether an application’s claims are patent eligible depends on which Examiner examines the application.  If this sounds “arbitrary and capricious” it ought to.  Unfortunately, potentially valuable intellectual property (IP) rights should not turn on a flip of the coin.  

So, the question arises, what should business method-based Entrepreneurs do in this unpredictable environment?  For those already a “little bit pregnant” with a pending application, we usually recommend staying the course and fighting the issue while hoping that the full Federal Circuit will straighten out the mess.  For those without a pending application yet, we usually recommend filing a provisional patent application at some point and praying for the same clarifying decision in the meantime.  

For there is one thing that can be predicted with certainty, if you do not file an application (or instead let one go abandoned) you will not get a patent.  Everything else is, unfortunately and with regard to business method patent eligibility, a crap shoot.  

But, do not be too discouraged for in my humble opinion, this situation cries out for a clarifying decision.  If not, many otherwise worthy patent applications are going to fall prey to Enfish.

We at the Villhard Patent Group would welcome an opportunity to discuss the patent eligibility of your business (and/or software) method ideas.  Please see www.villhardpatents.com for more information about us or call (512) 897-0399 to arrange a complimentary initial consultation.