Patent Publication Versus Patent

Posted on October 29, 2009 by Rajiv Sarathy

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.

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Small Can Be Big in Patent Law

Posted on May 15, 2009 by Rajiv Sarathy

Most people who are familiar with patents know that the fewer words a claim has, the broader its scope.   New clients who are not familiar with patents sometimes mistakenly think that the more features a patent's claim recites, the "broader" the claim is.  They quickly learn the truth.

Even when they have few words in their claims, many patents have quite long specifications.  For example, a patent a client is thinking of asserting is huge by any stretch of the imagination.  Its specification is scores of pages long.  An advantage to a long specification is that it probably describes multiple "embodiments" of the claimed inventions.  That can become important during licensing negotiations.

On the other hand, I've also seen some very short patents asserted.  For example, CNET reports that a company called Tune Hunter is asserting a patent that is 6 1/2 pages long (including 3 figures, about 3/4 page for 2 claims, the cover bibliographic page, and a short description) against some huge companies:  Samsung, Apple, Motorola, Amazon, Verizon Wireless, LG Electronics, AT&T Mobility, and others.  The patented technology "provides the listener with convenient means to record a segment of the music in which he/she is interested. The recorded music segment is played back into an apparatus which can identify the song based on the play back and provide the user with information on the identified song such as title, singer or artist, composer, producer, etc., and provide related purchasing information. "  (U.S. Patent No. 6,941,275, Abstract.)  Apparently Tune Hunter's iPhone application is quite popular. 

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