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Archive for the ‘Non-provisionals’ Category
The PCT application is one tool to preserve your options affordably. Over 140 countries have signed a treaty to cooperate with each other on patent filings and make it easier for their citizens to protect inventions abroad. Applications filed in accordance with the treaty are known as Patent Cooperation Treaty Applications (“PCT apps”). If you live in one of those 140 countries (which you probably do, since they include most of North and South America, most of Europe, Australia, and most of the Asias), you have one year from the date on which you file an application in your home country to file a PCT application, which gives you 18 more months to decide in which of those 140 other countries you’re going to file your application. At the time that you file an application in your home country, and even a year later, it’s often way too early to know whether the product or feature incorporating the invention is going to be successful enough to warrant international patent protection. Therefore, most companies decide to file the PCT application and preserve the option to file internationally.
At 30 months from the original filing, you have to make your final decision about where to file – no extensions. At this point, look to revenue, client base, and competitor locations to make your filing decisions. Got a huge client base in Europe, 90% of revenue coming from Singapore, an Australian investor that wants you to expand in Southeast Asia, or a big competitor in Canada? Those are all signs that you may need to invest in filing patents in those countries or regions. On the other hand, if you’re still boot-strapping the company, haven’t got much revenue anywhere outside your home country, or have an extremely country-specific technology, you might decide against making the investment. As with most patent-related decisions, look to your business objectives for guidance, consult with your attorney, and make the best decision possible given the resources available.
We’ve previously looked at the anatomy of different types of patent claims. But, like the claims, the application itself is also not as intuitive to read as we might wish. So let’s take a look at the anatomy of a typical software patent application.
Few patents have inspired as much confusion, horror or even revulsion as the infamous Amazon “1-click” patent. This patent covers the ability to send a purchaser identifier and a request to order an item to a server, in response to only a single action being performed by a client. I often hear about how ridiculous it is to allow a patent on buying something with one click and how offensive it is that Amazon actually enforced the patent. While there are plenty of ridiculous patents, and plenty of companies taking advantage of the system in truly lamentable ways, there are two big reasons why the 1-click patent is actually proof of our patent system doing the right thing.
Do you remember the Internet in the fall of 1997? We’d barely had search engines for two years, Google hadn’t yet incorporated, and we were just starting to learn about MP3s. This was an era before dancing hamsters and rickrolling, and only a minority of companies had any web presence to speak of. If you approach the idea of 1-click from the perspective of someone trying to shop on-line via dial-up back in ’97, it starts to sound pretty revolutionary. Most sites required many steps to complete a transaction, intentionally modeled after brick and mortar stores with shopping cart interfaces mimicking real-world shopping experiences. So Amazon’s approach passes a litmus test of patentable material – that the patented idea was truly new.
Secondly, Amazon used their patent in a very innovation-friendly manner. Throughout history, patents have played a vital role in helping a new innovator gain a toehold against established ways of doing business. The Amazon patent issued in September 1999; e-commerce was just starting to gain traction, competition amongst e-retailers was intense, and Christmas was coming. In October 1999, Amazon sued Barnes & Noble and overcame B&N’s arguments to convince a court that there was a real question about infringement that B&N had to remove or modify their “Express Lane” feature. Regardless of how the case would go, Amazon was able to keep B&N from capturing all those holiday shoppers who were just starting to figure out they could do their shopping on-line. This is a case where a patent gave a forward thinking, innovative “David” a fighting chance against a “Goliath” – a Goliath doing everything it could to imitate, not innovate.
There’s no denying that there’s a lot to fix about the patent system – the Patent Office needs funding to hire and retain better-trained Examiners and to eliminate the current backlog; the patent term for software patents could stand to be shortened significantly. But just as important as the nay-saying is to focus on the times when the system does exactly what it’s supposed to do – promote progress.
There are some pretty unusual patents out there – even patent lovers have to admit it! Today we’ll look at what ought to be Exhibit A in a Patents Hall of Shame: The Salad on a Stick.
This 1974 patent was the subject of my favorite law school examination. It’s directed to a food storing and serving device made up of a stick (“an elongated member”) shrink-wrapped and attached to a dressing container at the end (“temporarily principally enclosed within a combination container and lid”). The stick is “constructed to pierce a series of meat and/or vegetable items” and includes a hollow interior serving as a conduit for the passage of a liquid flavoring medium (e.g., salad dressing).
As we discussed last time, claims are the moral equivalent to the property description and plot plan in a real estate transaction that specify the boundaries of a parcel of land – to truly understand what intellectual property is actually covered in an issued patent, you must look to the claims.
In a patent, the claims define what that patent actually protects. Claims are the moral equivalent to the property description and plot plan in a real estate transaction that specify the boundaries of a parcel of land – to truly understand what intellectual property is actually covered in an issued patent, you must look to the claims.
To the uninitiated, many patents in the same subject area look and feel the same, and it can be difficult to tell what exactly a patent covers and what it doesn’t cover. Whether you’re a start-up founder, a business lawyer working at a tech company, a software engineer, or really anyone working in an innovative area of technology, reading a patent can be a frustrating experience. However, understanding the layout of a typical claim can help make reading them more manageable.
The first thing to know is that the claims are found in the very back of the patent. Anything you read in the abstract or in the main body of the patent may or may not actually be a protected part of the patent. This main body, also called the specification, is supposed to inform the reader about the subject matter and provide details about making or using the overall invention. So the first thing to do when reading a patent is to flip to the very last few pages where the numbered claims are listed.
Patent-ese is like a computer programming language. And, as with most programming languages, it looks weird or just plain wrong if you’re trying to read it as if it was actually English. Let’s take a look at the anatomy of a method claim, a common type of claim:
Next time, we’ll look another common type of claim, the system claim.
Once you have filed a first non-provisional patent application and until that first application issues or is abandoned, you can file additional applications “related” to that first one. No matter when you actually file one of these “continuing” applications, everyone will treat the application as if you filed it on the same day as the very first application. The downside is that these applications have short life spans because they also expire at the same time as that first application. So why file one?
Smart use of continuations can save a company money. For example, you might file an extremely detailed first application that would support claims to a number of different aspects of your invention. You might choose to file the application with a small subset of the claims – perhaps the ones most relevant to your company at the time of filing – and then you only have to pay for the PTO to examine that focused subset of claims (and for you/your lawyer to respond to the PTO’s initial rejections). Once you get a patent allowed you’re 4-7 years out from time of filing and in a different place as a company, both from a funding perspective and from a business perspective. Maybe you’ve long since moved on to another venture – no need to have spent money on those other aspects of the invention. Or maybe the focus of your company has changed to one of those other aspects and you’re thrilled that you can now protect the methods / products that have become relevant to your business. Either way, you’ve bought yourself the time you need to make more informed decisions.
Additionally, filing continuations can be useful when licensing the technology. If you have continuations that are each directed to different aspects or implementations of the invention, you have much more granular control over what rights you license out. Say you have a patent that supports X, Y, and Z, where Z is the least relevant to your business model. You may want to license out Z to a company that is going to be able to use Z and send you substantial royalty fees – but you may not want to enable them to compete with you in areas X and Y. Continuations can help you do that.