Just in time for Earth Day 2011:
General Motors announced last week in a press release that it "received more clean-energy patents last year than any other organization, according to the Clean Energy Patent Growth Index of U.S. patents. GM’s 135 patents represent nearly 14 percent of the total 1,881 received by 700 entities." Among these 135 patents are several that are directed to electrically operated vehicles. That's no surprise because, according to the press release, "GM believes electrically driven vehicles offer the most long-term benefits to customers around the world."Continue Reading...
Some patent applicants file a provisional patent application to defer filing a non-provisional patent application for up to a year. Yesterday, the United States Patent and Trademark Office (USPTO) announced a new pilot program to defer prosecution (and payment of some fees) for the non-provisional patent application by up to a second year.Continue Reading...
The USPTO today announced an expansion and extension to the "Green Technology Pilot Program." Under the program, patent applications pertaining to environmental quality, energy conservation, development of renewable energy resources, and greenhouse gas emission reduction can be accorded special status and prosecuted more quickly than other applications.
This pilot program will run until December 31, 2011, but the USPTO will accept only the first 3,000 grantable petitions to make special under the Green Technology Pilot Program.
The USPTO today proposed a three-track patent examination process. Further details will be announced in a notice to be published in the Federal Register tomorrow, but preliminary information is available at the USPTO web site:
- Track I: prioritized examination
- Track II: traditional examination under the current procedures
- Track III: for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination.
The USPTO believes that this will reduce pendency of applications.Continue Reading...
I've previously written about reducing risks when preparing patent applications abroad. What happens when inventors are located abroad? Such occurrences are happening increasingly frequently as research and development (R&D) transcends national boundaries. Many multinational corporations (or even just U.S. corporations with overseas R&D facilities) have teams that span two or more countries. When an invention was invented by inventors in multiple countries, employers need to be even more cautious about where and when to file patent applications.
In most cases, the law in each country needs to be considered. For example, India can impose stiff penalties (including fines and jail time) if a patent application is first filed in any country other than India when even one of the inventors was an Indian resident when the invention was made. It matters not if the other five inventors are American. The Indian law specifically says "resident." A U.S. citizen who is on temporary assignment to India and has lived and worked there for more than 6 months could be a resident. Unlike similar laws in some other countries, the law does not specify the content of patent applications that is subject to this restriction. However, my experience is that like other countries, India is concerned about the export of military and other sensitive technology. An alternative to filing a patent application in India (and waiting six weeks before filing the application in other countries) would be to request a foreign filing license, which is typically granted in a month or less.
Many other countries have requirements that vary slightly, including China, France, Russia, the UK, and others. It is generally best to seek the advice of patent attorneys in each of those countries (or an attorney experienced in both jurisdictions) before blindly filing an application in the U.S. or elsewhere when inventors are resident in different countries.
In the United States, people celebrate Thanksgiving on the fourth Thursday of every November. According to Wikipedia, the holiday marks a celebration to give thanks to God and to the Native Americans who taught the pilgrims how to harvest food to survive winters.
In modern times, Thanksgiving is often marked by shopping before the break of dawn and eating nothing but turkey for four consecutive days. Most of us have long forgotten how to harvest in any way except by purchasing prepackaged foods. Although every grocer and butcher is stocked with a seemingly endless supply of turkeys, whether ready-to-cook or pre-cooked, some people still prefer to shoot their own. If you are one of them, you may be interested in the many patents that are directed to turkey calls. There is even a design patent for a gun-mounted turkey call so that you won't have to fumble with your hands while on the hunt.
Patent attorneys often attempt to get the broadest possible coverage for a client's invention because that can usually make the patent quite lucrative. Patenting broad claims can be expensive during the patent procurement process because patent examiners are reluctant to let broad claims issue and so there may be multiple back-and-forth communications between the patent examiners and patent attorneys. However, patents with overbroad claims can be expensive to keep enforceable, e.g., when a third party requests the U.S. Patent & Trademark Office (USPTO) to reexamine an issued patent in view of prior art.
For example, the Electronic Frontier Foundation (EFF) has apparently requested the USPTO to reexamine U.S. Patent No. 7,568,213. According to the EFF, this patent is purportedly directed to "podcasting." When a patent is under reexamination, the patent holder must expend resources (e.g., patent attorney fees) to work with the USPTO to define the appropriate scope of the patent's claims in view of the newly identified asserted prior art.
During prosecution, patent attorneys, inventors, and anyone involved in a patent application have a duty to cite all pertinent prior art they are aware of. However, it is nearly impossible in most fields of human endeavor for the patent attorney, patent examiner, or even the inventor to be aware of all pertinent prior art. Thus, it is quite easy for overbroad patent claims to issue. Sometimes, the best prior art is not even found until the patent is asserted in an infringement lawsuit because the alleged infringer is motivated to prove that it is not infringing a valid patent.
Thus, smart patent attorneys attempt to patent claims of varying scope -- from broadly encompassing the subject matter of the invention without crossing into the known prior art down to narrowly encompassing a specific implementation that is reflective of the client's commercializable product.
The first claim in the published patent application, which names Steve Jobs as the first inventor, recites:
1. A computer-implemented method for operating a device, the method comprising:
disabling a function of an operating system in a device;
presenting an advertisement in the device while the function is disabled; and
enabling the function in response to the advertisement ending.
While most of us probably cringe at the thought of having to view advertisements every time we request an operating system to perform a function (e.g., view an ad about the latest printer before being able to print a document using an outdated printer or select another song on our handheld music player), some people could benefit from adoption of the technology. For example, many people in emerging markets cannot afford an Apple computer (or any other computer, for that matter) or an iPod. They may not mind being forced to acknowledge that they have viewed or heard advertisements in exchange for a free or cheap device.
Although its author may not realize it, the New York Times article provides some great examples of advertising-related prior art that Apple may face in obviousness rejections by the U.S. Patent and Trademark Office (USPTO). Other prior art that the USPTO may apply include Microsoft's technology in the Vista operating system that prevents something from happening without the user's approval. For example, when one application launches another application, Vista can prevent that operation unless the user first permits it.
Although the concept of advertising-based subsidies is not new and there is lots of prior art in this space, a clever patent attorney may still be able to obtain a patent for Apple, though with narrower patent claims than the broad claims presently published. This patent application has not yet been examined by a patent examiner.
This blog entry is directed at people who are not patent practitioners.
People who are not versed in patent law are often confused by terms that patent attorneys and the U.S. Patent and Trademark Office (USPTO) use, and the media is no exception. For example, a recent CNet article exclaims, "Apple patents headset MP3 player" and points to U.S. Patent Publication No. 20090268921. However Apple merely has a "patent pending."
In terms of assertable property rights, a patent publication is far from a patent. A patent publication is merely a publication of a patent application that the USPTO generally publishes 18 months after the earliest "priority date" or filing date of a patent application. It cannot be asserted against an alleged infringer. (For the sake of simplicity and to prevent further confusion, I will not discuss "provisional rights" which begin on the patent publication date, but cannot be asserted until the USPTO grants a patent.)
The USPTO grants an assertable patent only after the applicant successfully "prosecutes" the patent application, which requires a USPTO patent examiner to do a prior art search and examine the applicant's patent claims. This prosecution process may involve several communications between the patent examiner and the inventors or their representative, e.g., to narrow the scope of the claims. In complete contrast, a patent application often publishes as a patent application before it has been examined, as was the case in this Apple application.
Thus, while Apple may have filed a patent application directed to a headset MP3 player, Apple has not yet patented it.
I was a co-chair of a convention for attorneys that recently concluded. Some panels at the convention related to intellectual property issues, and several legal process outsourcing vendors attended. I asked one of the vendors what effect the guidance the USPTO published last year on the scope of foreign filing licenses had on the vendor's business. She informed me that while the USPTO's guidance confused some of her clients, her outsourcing business continues to flourish.
In these trying economic times, it is likely that many companies and their counsel are trying to reduce costs wherever possible, including by outsourcing some services to service providers with foreign operations. However, sending information overseas for preparing a patent application that is to be filed in the United States (or for other reasons) is not without risk.
In general, U.S. applicants must first receive a "foreign filing license" from the USPTO before filing a patent application outside the U.S. Sometimes, the applicant is ordered not to file the patent application abroad (this can occur, e.g., when the applicant's technology relates to military use.) When a patent application is filed abroad despite an order not to do so, the applicant can be barred from receiving a patent. (35 U.S.C. §§ 182 and 185.) Moreover, the applicant and anyone involved can be fined and/or imprisoned. (35 U.S.C. § 186.)
As a corollary, it is possible that a patent that issues from an application prepared abroad based on information sent by a U.S.-based applicant without first receiving permission from the Department of Commerce could similarly be invalid, and may even subject the patent applicant and anyone involved to fines and imprisonment. (Because offshoring patent work is a relatively recent activity, there is scant authoritative information on point.)
Some applicants may nevertheless feel that rewards deriving from the use of foreign labor are worthwhile. One way to mitigate the concomitant risks may be to first request and receive permission from the Department of Commerce before transmitting information overseas, as the USPTO's guidance suggests.
Deloitte recently published a report on venture investment trends after surveying venture capitalists (VCs) worldwide. According to the report, more VCs anticipate growing their investments in Asia than in the United States. For example, 50% of VCs anticipate increasing their investments in Asia whereas only 17% of VCs anticipate increasing their investments in North America. Thus, it appears likely that as we emerge from the global recession, research and development (R&D) will continue to increase outside the United States, and especially so in China and India.
Savvy patent applicants already take advantage of the Patent Cooperation Treaty (PCT) to protect their inventions outside the U.S., including in China and India. However, some companies are understandably reluctant to do so because of the potential costs involved. One way to control these costs is to limit the countries in which patent protection is sought, such as to countries in which a market and/or competitors are likely to exist.
A question clients often ask is what the point is in filing patent applications in countries such as China, India, and Russia, where intellectual property rights can be difficult to enforce. China and India are both members of the World Trade Organization (WTO), and the Russian Federation is an "Observer government." According to the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), governments are required to ensure that intellectual property rights can be enforced under their laws, and that the penalties for infringement are tough enough to deter further violations. Over the last few years, these countries have made strides in improving their intellectual property enforcement activities. Moreover, as their domestic industries mature, these countries are even more likely to enforce the laws because domestic and foreign pressures to do so will mount.
To remain competitive, U.S. companies will need to seriously consider increasing not only their R&D expenditures, but also their patenting activity -- both in the U.S. and abroad. As I wrote in this blog approximately a month ago, a majority of patent applications filed last year were by inventors located abroad. If American companies fail to protect their inventions, they could lose both domestically and internationally.
A company that is threatened by a potential patent infringement lawsuit can file a declaratory judgment action in a federal district court that has jurisdiction. Generally, the threatened company can seek to have the action heard by a court that may be more friendly towards the company than the patent holder. For a court to hear the action, the patent holder must have some minimal contacts in that court's area of jurisdiction.
Many foreign entities will generally not have the minimal contacts needed. For example, the Federal Circuit Court of Appeals decided in Autogenomics v. Oxford Gene Technology that the foreign patent holder did not have sufficient contacts in California and so the threatened company must file its action in the Federal District Court for the District of Columbia.
The USPTO publishes a report that identifies where the first-named inventor of each patent resides. When the inventor resides outside the United States, it is a reasonable indicator that the patent is owned by a foreign entity. In 2008, 50.3% of the patents fell in this category whereas in 1977, only 35.5% of patents did. This makes sense because an increasing amount of R&D and manufacturing funds are spent overseas. (When I completed my MBA in the early '90s, we were trying to make sense of the service-based economy.)
If the trend in patent ownership continues, the District Court of DC court may see an increasing number of declaratory judgment actions in patent cases.
"Green energy" is a hot topic in the energy sector and many companies in that sector are filing patent applications to stake claims to their piece of that green pasture. Google recently received a patent of its own.
U.S. Patent No. 7,525,207 issued on April 28, 2009. It is directed to "[a] system [that] includes a floating platform-mounted computer data center comprising a plurality of computing units, a sea-based electrical generator in electrical connection with the plurality of computing units, and one or more sea-water cooling units for providing cooling to the plurality of computing units," and issued with a couple of quite broad claims:
1. A system, comprising:
- a computer data center proximate to a body of water comprising a plurality of computing units;
- a sea-based electrical generator in electrical connection with the plurality of computing units; and
- one or more sea-water cooling units for providing cooling to the plurality of computing units
16. A method of maintaining a computer data center, comprising:
- generating electrical power using the wave, tidal, or current motion of water adjacent a data center;
- providing the generated electrical power to the data center; and
- circulating the water adjacent the data center through a heat exchanger to produce cooling for the data center equipment.