It never hurts to return to basics. And as such, this blogger wishes to reiterate what are known as the two "bars" to patentability. These bars being "public disclosures" and "offers for sale."
Currently, the public disclosure bar closely follows long standing practice. Namely, if you publically disclose a potentially patentable idea, U.S. law allows you a one year grace period to file your application. If you fail to do so, the disclosed material enters the public domain. Meaning, your competitors are free to use the disclosed information.
Worse still, an "offer for sale" can be instantly fatal to patentability. Normally, no one year grace period exists under such scenarios. And offers for sale embrace a large swath of normal, entrepreneurial activities. Obviously, trying to sell a product/service incorporating your idea is an offer for sale. But traps for the unwary include, but are not limited to, offering online memberships for a website, click-on fees, click through fees, running banner ads on a website, etc.
So, a word to the wise: consult with a Patent Attorney before making any attempt to commercialize an idea. And, better yet, file at least a provisional patent application before taking such actions.
We at the Villhard Patent Group would be happy to speak with you regarding these issues. You can find more information about us at www.villhardpatents.com or you an call us at 512-897-0399. We look forward to hearing from you soon.
Entrepreneurs IP Blog
This blog serves the entrepreneur community by providing a forum in which to discuss general intellectual property (IP) issues affecting entrepreneurs. However, please note that the EDUCATIONAL INFORMATION PROVIDED ON THIS BLOG IS NOT LEGAL ADVICE. We invite entrepreneurs with specific IP related issues to discuss them with a patent attorney in private (not on this blog) at the Villhard Patent Group (www.villhardpatents.com). That being said, we welcome you to the discussion.
Wednesday, November 7, 2018
Friday, August 10, 2018
A Modest Proposal to Return Patent Eligibility Law to Sanity
Much has been written regarding the patent "eligibility" morass
that the courts created for software/business method patent claims. This
blogger wishes to advance a modest change in law that would straighten out much
of this mess.
As many of you might not now, the "abstract" exception to the broad mandate for patent eligibility is a purely court created creature. As such, the courts can overturn this law that allows anyone seeking to invalidate a software/business method patent application with an eligibility ambush. Congress can and should also step in. Indeed, Federal Circuit Court of Appeals Justices Lourie and Newman begged Congress to do exactly that in the Berkheimer cases (see the last posting).
But, what should be the patent eligibility-abstract-idea test? First of all, this Blogger recommends abandoning that particular exception and allowing novelty (or lack thereof) and obviousness to root out patent ineligible ideas.
Instead, if we must have some sort of "abstract" idea test for eligibility, it should be stated in terms of whether ideas of the type at issue have proved valuable in the past. So, while Apple's one-click patent, the JPEG patent etc. would likely be found abstract and ineligible under current U.S. law, they are undoubtedly valuable ideas. Indeed, they added much value to the companies that own them and society at large.
In the meantime, this test would not require that a particular claim have such value. Rather, this proposal would grant eligibility to ideas that fall in such potentially valuable areas. The reason for this proposed change: patents are supposed to protect potentially valuable ideas. The key word being "potentially" here. And this rule would return patent law to its intended function while lending a factual basis for determining whether a claim reflects an abstract idea or something potentially valuable.
We at the Villhard Patent group would enjoy discussing your ideas with you. You can find more information about us at www.villhardpatents. Or, you can contact us at contact@villhardpatents or at 512-897-0399. We look forward to hearing from you.
As many of you might not now, the "abstract" exception to the broad mandate for patent eligibility is a purely court created creature. As such, the courts can overturn this law that allows anyone seeking to invalidate a software/business method patent application with an eligibility ambush. Congress can and should also step in. Indeed, Federal Circuit Court of Appeals Justices Lourie and Newman begged Congress to do exactly that in the Berkheimer cases (see the last posting).
But, what should be the patent eligibility-abstract-idea test? First of all, this Blogger recommends abandoning that particular exception and allowing novelty (or lack thereof) and obviousness to root out patent ineligible ideas.
Instead, if we must have some sort of "abstract" idea test for eligibility, it should be stated in terms of whether ideas of the type at issue have proved valuable in the past. So, while Apple's one-click patent, the JPEG patent etc. would likely be found abstract and ineligible under current U.S. law, they are undoubtedly valuable ideas. Indeed, they added much value to the companies that own them and society at large.
In the meantime, this test would not require that a particular claim have such value. Rather, this proposal would grant eligibility to ideas that fall in such potentially valuable areas. The reason for this proposed change: patents are supposed to protect potentially valuable ideas. The key word being "potentially" here. And this rule would return patent law to its intended function while lending a factual basis for determining whether a claim reflects an abstract idea or something potentially valuable.
We at the Villhard Patent group would enjoy discussing your ideas with you. You can find more information about us at www.villhardpatents. Or, you can contact us at contact@villhardpatents or at 512-897-0399. We look forward to hearing from you.
Monday, August 6, 2018
Patent Eligibility for Software/Business Methods: A Potential Trail Through Death Valley
The courts have made a complete mess out of the doctrine of
patent eligibility. So if this post seems a bit muddled, that wouldn't surprise this Blogger because, so is the law. That being said,
the courts have taken the “abstract” idea exception to patent eligibility to
such an absurd extreme that almost nothing can survive the “Alice” test for eligibility.
It’s an “exception that ate the rule.”
Before Alice “anything made by man under the sun” was “eligible.” Now, potentially nothing is. Currently, the first step in determining eligibility
requires determining whether a claim is directed to an abstract idea. But
every idea is abstract.
Take fire for instance. Fire is
nothing more than some ephemeral gases, glowing in the prehistoric dark. And, hence abstract and ineligible.
The next step for fire, having failed the abstractedness test, is to
determine whether that idea is well understood, routine, and conventional. According to a recent precedential case
(Berkheimer v HP), this step requires more than just prior art. It requires evidence that the idea was well
understood. Theoretically, if pushed, the Examiner must produce evidence that
the idea was well understood and -- that evidence must go beyond lack of
novelty. But as currently used by the Patent Office, a lightening-triggered fire on the African savannah would render fire patent ineligible -- because prehistoric humans "understood" it at some level. Notwithstanding the fact that they knew nothing about how to create it manually.
At least a part of the abstractness
inquiry now fits within a prior art framework.
First, if the claimed idea is found to be abstract, the Examiner must
find prior art to show that the claim
lacks novelty. Then, the Examiner must
find evidence that the claimed idea was well understood. Then, the inquiry goes
on to obviousness.
Of course, the courts and the Patent Office have the cart
before the horse. They first determine
patent eligibility, then go on to (lack of) novelty and/or obviousness. But, at least, there seems to be a trail
emerging to get software/business method claims across the Death Valley of eligibility.
We at the Villhard Patent Goup would be happy to discuss
your ideas with you. You can find more
information on us at www.villhardpatents.com. And you can contact us at 512-897-0399 or at contact@villhardpatents.com. We look forward to hearing from you.
Monday, March 26, 2018
The Worth of a Patent (Application): Well Drafted Verse Self-Written
It bears repeating that technology-based Entrepreneurs usually
need a well-written patent application. This Blogger has
inherited applications that were written by talent-challenged
drafters. And we almost always hit a train wreck at some point.
First, the Patent Office will perform an "initial examination." During this phase, they will look for everything from trivial grammatical errors up to more serious issues such as confused writing and hopelessly drafted claims. All of these issues will likely occur in Inventor-written applications. Straightening these issues out, if possible, can cost thousands of dollars.
Eventually the Patent Office will perform a substantive examination. At that time, the claims and written description come under severe scrutiny. If the claims do not measure up (even seasoned Patent Attorneys have issues with claim drafting) they will be rejected as being unclear or missing the point(s) disclosed in the application.
Of course, prior art will raise its ugly head at this point. And the best defense against prior art is having a detailed, thorough application. Otherwise, no recourse might exist to argue around close prior art.
First, the Patent Office will perform an "initial examination." During this phase, they will look for everything from trivial grammatical errors up to more serious issues such as confused writing and hopelessly drafted claims. All of these issues will likely occur in Inventor-written applications. Straightening these issues out, if possible, can cost thousands of dollars.
Eventually the Patent Office will perform a substantive examination. At that time, the claims and written description come under severe scrutiny. If the claims do not measure up (even seasoned Patent Attorneys have issues with claim drafting) they will be rejected as being unclear or missing the point(s) disclosed in the application.
Of course, prior art will raise its ugly head at this point. And the best defense against prior art is having a detailed, thorough application. Otherwise, no recourse might exist to argue around close prior art.
Assuming that the
application issues as a patent, its worth will largely be determined
by the strength of the claims and the backing those claims have in
the description. Poorly written claims can be designed around
leaving the patent virtually worthless. This Blogger performed one
analysis in which all we had to do was not use a “coil spring” to
actuate a particular device leaving us free to move ahead with a
competing product.
Lack of a good
description in the application can also render a patent subject to
collateral attack. And that is doubly true in this age of post-grant
reviews of various sorts at the Patent Office. In short, a
non-Patent Agent/Attorney has very little chance of drafting a
well-written patent application.
We at the Villhard
Patent Group would welcome the opportunity to discuss your
Intellectual Property. You can find more information about us at
www.villhardpatents. Or you can contact us at 512-897-0399. We look
forward to hearing from you.
Wednesday, March 21, 2018
HOPE SPRINGS ETERNAL: SOFTWARE AND BUSINESS METHOD PATENTS
Recent decisions
indicate that the Federal Circuit Court of Appeals (the court that
counts for Patent Law) may be moving toward a “technical arts”
test for determining whether software (and business) methods are
patent “eligible.”
In many ways this
represents good news. For one thing, those of us advising Entrepreneurs can at last give a reasonably good forecast as to
whether certain software methods will hit the patent eligibility road
block. And if that trend continues (an “if” admittedly) it also
tells those of us helping entrepreneurs what to focus the
applications on (the technical merits of the idea).
The emerging
(perhaps?) trend also lends Entrepreneurs a hand in determining
whether to move forward with a patent application for their ideas.
And, on a similar note, it helps them identify what to focus on in
their discussions with their Patent Attorney. In particular, both
the Entrepreneur and Patent Attorney should focus on how the idea
helps a computer work better. Better, of course, can be defined in
terms of faster, more efficiently, more reliably, and/or doing some
other technical feat not previously possible.
The first three
points should be self-explanatory. But, perhaps, the latter point
needs a little elaboration. In one case, the Fed Circuit found a
“self-referential” database to be patent eligible. In short,
this new technology included a feature in the software that allowed a
database to include a link to itself – self referential. And that
was a enough to get that application over the eligibility threshold.
Thus, for now, we at
the Villhard Patent Group continue to recommend moving forward with
(at least provisional) patent applications for software/business
methods. Of course, as we have written in other posts, Entrepreneurs
in the software/business methods arena should be aware that patent
eligibility will be an issue with their applications.
We at the Villhard
Patent Group would welcome an opportunity to discuss this issue with
you with regard to your idea. We can be reached at 512-897-0399 or
contact@villhardpatents.com.
For more information about us please see www.villhard patents.com.
We look forward to hearing from you soon.
Friday, September 8, 2017
Software/E-Commerce Patent Eligibility: A Ray of Hope At Last
The category 5 patent eligibility hurricane might at last be abating.
As readers of this blog know,
the last 2-3 years have seen an adverse series of precedential court cases
declaring most (if not all) e-commerce ideas and many software-related ideas as
being patent ineligible “abstract” ideas.
Fortunately, President Trump has nominated a potential
software patent champion to be the Director of the Patent and Trademark
Office. Andrei Lancu, the Appointee, is
widely reputed to be a strong supporter of software patents. While this support might/might not extend
across the whole scope of software and e-commerce ideas, it is certainly a ray
of hope. For Mr. Lancu will be in a
position to immediately modify (or maybe eliminate) the knee-jerk rejection of
patent applications dealing with such subject matter.
He will also be in a position to influence policy in a
number of ways. Congress will likely
give his input weight. And he will be in
a position to file amicus briefs (“friend of the court” briefs) in pertinent
court cases and related appeals. Accordingly,
the sea change that this Blog Author has long hoped for might be in the
forecast. Be sure to check this blog for
forecast updates.
In the meantime, we at the Villhard Patent Group would be
happy to discuss your ideas and their potential patentability with you. For more information about us, please see www.villhardpatents.com or call us at
512-897-0399. We look forward to hearing
from you.
Wednesday, May 17, 2017
Cleaning Up The Patent Eligibility Muck: A Welcome Proposal by The AIPLA
On Friday the American Intellectual Property Law Association
(AIPLA) released a much needed legislative proposal to hopefully clean up the
muck currently polluting patent (in) eligibility inquiries. Under current U.S. “law”, the courts have
made a muddled mess of patent eligibility (under the relevant statute 35 USC š
101). And, in so doing, they have cast doubt over the patentability of most e-commerce and/or software
inventions.
In short, the Courts have created an “abstract” idea
exception to patent eligibility that is so broad, so subjective that few
inventions could survive it. And the
courts (and Patent Office) have long since disappeared into that un-navigable swamp. We welcome the AIPLA
proposal to clean up this court-created mess.
See: http://www.aipla.org/resources2/reports/2017AIPLADirect/Documents/AIPLA%20Report%20on%20101%20Reform-5-12-17.pdf.
This Blogger supports the proposed eligibility
exception which states that a claimed invention would be ineligible “…only if
the claimed invention as a whole exists in nature independent of and prior to
any human activity.” Restricting ineligibility
inquiries to inventions that exist independently of AND (CAPS Intentional) prior
to human activity seem like good ideas. The
proposed prohibition against courts (and the Patent Office) mucking about in
prior art and drafting-related inquiries (under 35 USC šš 102, 103, and 112) should
further limit the reach of the courts during eligibility examinations. And the strongly restrictive term “only” ought to serves as a long overdue
admonition against the courts dragging potentially worthy ideas through the "abstract" idea mud.
We shall see.
The only improvement to the proposal that this Blogger would like to see is a safe
haven for applications that were pending when (in hindsight) this court-created
mess became intolerable. While such a
safe haven would be unusual, so too has been the resulting whole scale destruction
of IP rights under the current so-called law.
We at the Villhard Patent Group would welcome a chance to
discuss your idea. You can find more
information about us at www.villhard
patents.com or you can call us at (512) 897-0399. We look forward to hearing from you.
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