Breaking News: US Supreme Court Rejects Isolated Gene Patents

supreme courtIn a unanimous decision yesterday, the United States Supreme Court held that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring.”

So what does this mean?

In his written opinion, Justice Clarence Thomas focused on the fact that Myriad did not create anything by isolating DNA sequences.  They merely discovered, and seek to patent, naturally occurring genetic information.

“Myr­iad’s claims are simply not expressed in terms of chemical composition, nor do they rely in any way on the chemi­cal changes that result from the isolation of a particular section of DNA. Instead, the claims understandably focus on the genetic information encoded in the BRCA1 and BRCA2 genes.”

Slip Opinion p. 14-15

It is a fundamental principal of patent law that “laws of nature, natural phenomena, and abstract ideas are basic tools of scientific and technological work that lie beyond the domain of patent protection.”  Because Myriad merely discovered the DNA sequence as it occurs in nature, that discovery is not accorded patent protection.

However, the news was not all bad for Myriad.

The Court made a distinction between unpatentable isolated DNA and patentable complementary DNA, or cDNA, synthetic versions of DNA that omit non-coding portions.

cDNA can be patented according to Justice Thomas’ Opinion because:

“the lab technician unquestionably creates something new when cDNA is made.  cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. As a result, cDNA is not a “product of nature” and is patent eligible under §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA.

Slip Opinion p. 16-17 (Emphasis added.)

It is important to note the exception spelled out at the end.  It appears that the Supreme Court is requiring a certain amount of human manipulation that results in significant changes to the DNA to put cDNA in a position for patent eligibility.

I for one am happy to see the US Supreme Court supports the idea that the human component of invention , the creating of something new, as opposed to discovering something as it exists in its natural state (like DNA, laws of physics, naturally occurring elements) is still an important part of patent eligibility.

Could you imagine the slippery slope that would be created if companies were allowed to own naturally occurring genes?  Imagine a world where one company owns the autism gene and another owns the gene for Parkinson’s disease.  This is an absurd notion.  How can someone own a gene that so many people share?  Do those that have the gene infringe the patent?

Discovery is important and expensive and I sympathize with Myriad, but they did not invent the BRCA1 and BRCA2 genes.  (If they did, that would be a completely different legal discussion.)  They found them.  And I’m glad there’s still a difference.

More Stupid Patent Reform Attempts Brought to You by POTUS

I don’t even know where to start on this one but here goes.

Yesterday President Obama announced that his Administration is going to take on patent trolls.  From the White House press release on the matter:

“The White House issued five executive actions and seven legislative recommendations designed to protect innovators from frivolous litigation and ensure the highest-quality patents in our system. Additionally, the National Economic Council and the Council of Economic Advisers released a report, Patent Assertion and U.S. Innovation, detailing the challenges posed and necessity for bold legislative action.” (emphasis added.)

How exactly does the Executive Branch intend to solve these perceived problems?

1.  By requiring updated patent ownership information at the USPTO (so you know who’s suing you);

2.  By reeducating patent examiners to think like the Administration thinks they should about functional claims;

3.  By creating a “You will know that you have been sued by a Patent Troll when…” page;

4.  By discussing and studying the problem with Academics; and

5.  By auditing the ITC and Customs.

So if I can extrapolate from this, here’s how the Obama Administration sees the issue.  Patent examiners don’t know how to examine “functional claims”.  This leads to bad patents that somehow only end up in the hands of patent trolls, and you’ll know you’re dealing with a bad patent when a troll is the assignee.  (I’m really not sure why the President dragged in the ITC and Customs.)

Really?  This is the best the President’s men can do?

Just when I thought the discussion couldn’t get any worse, I’m floored by the incompetence, or perhaps it’s willful blindness, that our President and his administration is showing when it comes to patents, patent litigation, and “trolls”.

Seriously, people, we are living in the story of Chicken Little, and the Obama Administration is playing the starring role.

chicken littleCan’t you just hear the refrain now…

“The sky is falling!  The sky is falling!”

And the President is here to save us.

With all due respect, the President is so far off the mark here.   It’s laughable.

I know there are technology executives from Silicon Valley whispering in his ear about the crimes that the evil patent trolls have committed against them.  And they’ll be handing him tons of cash over dinner soon.  But couldn’t the Administration just try to gain some perspective.

And I know perspective is hard to find in Washington, D.C. right now.  But try.

Can’t he smell the hypocrisy?

These technology companies (his donors) want to stop “frivolous” lawsuits while at the same time be able to sue whomever they want with whatever patent they have.

Because of course, their patents are valid and well examined.  It’s just the ones enforced by “trolls” that aren’t.

In fact, I think the President would be better served by just decreeing that if you’re a non-practicing entity, there is a presumption of invalidity.  (I know. I know.  He can’t but you know he’d like to.)  Because based on the recommendations of the Administration, it’s obvious that trolls couldn’t own an enforceable patent.

Does there need to be a discussion about abusive patent litigation? Yes.  But when the President is only talking to (and receiving big fat donation checks from) very bias actors who play a central role in the problem, the discussion isn’t really worth much.

As Gene Quinn of IPwatchdog.com said in his blog post of yesterday:

“Yes, tech giants get sued on terrible patents that are clearly invalid and which they don’t infringe anyway, but those same tech giants settled bad claims on crappy patents while at the same time they litigate to the death good, valid patents on important technologies that they do infringe. There are few “Snow White” players in the patent litigation space, and the constant vilification of patent trolls and claims that the patent system is broken are too broad to the point that they are misleading.”

Of course so much of the President’s remarks are simply rhetoric.  He can’t change the nature of patent litigation.  He has no power to change the patent laws.  We still have a Constitution and the Doctrine of Separation of Powers is still alive and well, so only Congress can do that.

And for that I am kind of grateful.  (But they did pass the AIA so I’m not totally confident that Congress won’t screw things up.)

7 Things American Companies Need to Know About the America Invents Act

patent-reformIt’s amazing how fast 18 months flies by.  It seems like just yesterday I was lamenting the passing of the America Invents Act, and now here we are mere days away from its final implementation.

If you haven’t heard, the United States will officially follow the herd and become a First-Inventor-to-File nation on Saturday, March 16.  In light of this new beginning, here are 5 things you should know about the AIA to ensure that your inventions are protected.

1.  First-Inventor-to-File Wins

Here’s the scenario.

Two competing companies are working to solve the same problem.  Both companies invent the same solution.  Each company files a patent application with the US Patent Office.  Who does the Patent Office award the patent to?

Under the First-to-Invent system, the patent would be awarded to the inventors who could show that they invented the invention first.

Under the First-to-File system, the patent would be awarded to the inventor who filed their application first.

To quote Tom Hanks’ character in Cast Away, “We live and die by the clock.”  You don’t have time to make everything perfect before you file a patent application.  Good enough will have to do.  (You might even have to settle for just OK.)

2.  You Will Spend More Money Earlier in the Process

Under the First-to-Invent rules, an inventor could tinker around with his invention, tweaking it until he turned his concept into a finished product.  At that point, he could file one patent application to cover the end result without fear that someone would step in and file their application before he was ready.

Those days are gone.

You no longer have the luxury of waiting.  An inventor will have to be on top of his patent game from the very beginning.  The new corporate patent process might look something like this: file at conception, file again, maybe multiple times, as the inventor works the concept into something that resembles a more complete product, and at the end when the final product finally reveals itself.

That’s a lot of money earlier in the process to ensure that you have won the race to the patent office.

3.  You Need a New Attitude

In order to make this adjustment successfully, your organization MUST adjust your thinking when it comes to patents.  You can’t file a patent as an afterthought in your New Product Development process.   You need a procedure to identify any and all patent issues as early in the process as possible.  If you don’t, you run the risk of losing your valuable business assets.

4.  The Strategic Use of Provisional Patent Applications

Make sure you and your patent attorney understand how to use provisional patent applications.  When money is tight and time is of the essence, these informal, non-examined patent applications may just be the answer.

5.  Amending Claims Can Change the Rules

It all seemed so simple.

Applications filed before March 16, 2013 will continue to be subject to the old First-to-Invent rules.  Applications filed on or after March 16, 2013 will be governed under the new First-to-File rules.

But nothing is ever as simple as it seems under the AIA.

What if you amend or add claims in your first-to-invent patent application after the March 16, 2013 date?

Even though you had filed your patent application prior to March 16, 2013, certain changes you make to the claims may pull your application into the First-to-File rules, and you may not get the full protection of the First-to-Invent rules you thought you had.

6.  Change to the Grace Period Rules

Like the First-to-Invent system itself, America had another somewhat unique feature in its patent system.  The United States offers what is known as a Grace Period.

In the United States, inventors were given 12 months to file a patent application after the date the invention was first disclosed to the public no matter who disclosed the invention.  That was a benefit of the first-to-invent system.

Now, the grace period only applies to disclosures made by the inventor.  Public disclosure by anyone else anywhere in the world prior to you having a patent application on file means you lose your patent rights.

(Think about how this could impact heavily competitive industries with multiple companies working to solve the same problems.)

7.  Prepare for the Unexpected

Just when you think you understand the AIA things are bound to change.  Like any new law, what the various provisions and terms of the AIA really mean will be decided by the Courts.  Over the next decade (or longer) IP practitioners will closely watch as cases wind their way through the Federal court system.  There is already talk that a Constitutional challenge will be waged against the America Invents Act itself.

Don’t be fooled.  The America Invents Act brings significant change to American business.  In 10 days, we enter into a brave new world, America.  Good luck and God speed.

America Invents Act: Hurting Startups, Helping No One

patent-reformWell, we’re almost there.  Next month the United States will implement the last phase of the America Invents Act (AIA), and the First-to-File rules will go into effect.

It’s amazing how fast 18 months passes, and how the sentiment remains the same.

Foreign commentators think it’s a move in the right direction.  It creates a ‘certainty of outcome’ is what they tell us.  Try it.  You’ll like it.  Just like we do.  The rest of the world can’t be wrong.  (Really?  What’s the latest and greatest technology to come out of your entrepreneurship communities, France?   Seriously, should I be taking my lead from a country that bans the words “tweet” and “email”?)

Despite the idea that we will be one, happy, first-to-file world, Americans still aren’t feeling the love.

Most US patent attorneys I talk to don’t like the AIA.  In fact, I haven’t talked to one that does.  There is a general feeling that the law doesn’t solve the real problems in the system, and creates a whole slew of new ones.  Some of which (like the meaning of inconsistent language) we will only start to deal with years down the road as legal cases wind their way through the US courts.  (Certainty of outcome my ass!)

Why the difference of opinion?

Well your opinion of the Act might depend on what you see as the problem.

So I asked myself, what problem(s) does the AIA solve?  How does turning the US patent system on its head help US inventors, business, and the economy as a whole? (With the short answer being:  It doesn’t.)

The AIA solves a foreign policy problem.

As intellectual property and the related issues take center stage in trade discussions, the meat of the Act, the first inventor to file provisions, harmonizes our patent laws with those of the rest of the world.  Our leaders talk about certainty of outcome and how US law will be just like their laws, and it makes our trading partners feel good.

The AIA doesn’t make American small business owners feel good. 

It doesn’t make patent attorneys feel good either.  Even large American companies don’t like it.  And this is a problem.

Large companies have an advantage.

The only certainty of outcome small business owners see is that big business have the money to play by the new rules.  Small business can’t keep up.

Last week I was asked to give a talk at an entrepreneurship event at a local university.  I told them about the changes in US patent law.  I gave them the typical advice that is emanating from patent attorneys everywhere, “File early.  File often.”   I told them what other attorneys are saying about the problems with provisional patent applications, and what all of these changes really mean for business.

And guess what?  They were angry.

No one saw these changes as helping American businesses succeed.  All they saw was a scenario where they would have to file more patents sooner in the process.

As they informed me, the biggest barrier to entry for filing patents is the cost of drafting and prosecuting a patent application.  If a bigger percentage of their limited funds have to go toward legal expenses, there’s less money to actually get a product to market.

This mean Entrepreneurs are more likely to go without patents in favor of getting a product to market.

Is this the end-result our lawmakers were hoping for?

Of course, the concerns of these startups weren’t news to me.  It’s just confirmation that the AIA doesn’t help the US and its economy, especially when the backbone of that economy is small business.  Right now, they’re the ones creating the jobs and the technology of the future.

Entrepreneurship thrives in America like nowhere else in the world.  Part of that is because of our unique patent system.  Believe it or not, the US patent system was designed to help inventors, and inventors have thrived in the US.  When we implement a patent system that’s stacked against them, what are we hoping to accomplish?

Step Into the Arena and Be Prepared to Get Dirty

 

VS

 

 

 

Intellectual property is a full-contact sport.

Yes, you read that right.

I mean full-contact, complete with trash talking, gloves come off, smack-down contact.

Punches are thrown.  Combatants get bloodied and bruised.  There are winners and losers.

Don’t believe me?  Just check out the ruckus surrounding Samsung and Apple in their battle for smart phone supremacy.

Unfortunately, there are those in the media who don’t understand this simple concept.

An ill-informed media pretend that they understand the intricacies of patent law after an interview or 2 with a disgruntled company and a few hours of research.  They twist words, spew fiction as fact, and completely misrepresent the law.  Then these reporters refer to patent lawsuits as “WAR” as if U.S. lawmakers never intended for companies to sue over patent rights.

They would have you believe that IP is like golf.  That it’s a gentleman’s game where nobody gets hurt.  No one sues anybody.  Everyone gets a license with great terms if they want one, and companies that choose litigation over licensing aren’t playing by the rules.  They point to an increase in the number of patent contests as a sign that the system is broken.

But anyone who knows a thing or two about patent litigation knows that’s not true, and never has been true.

Patents first and foremost are offensive weapons.

Patents aren’t magic amulets that protect your product or your business from infringers.

They are the means by which companies assert their rights to their government-granted monopoly.  And guess what?  Lawsuits are, and have always been, the intended method of asserting those rights.

In fact, patent lawsuits have been around for a very long time.

So why is there so much criticism now?

What has changed (and brought a massive amount of exposure to patent litigation) is the number of prominent participants, especially Apple, as well as the huge amounts of money at stake.

A few high-profile technology giants decided to up the ante in patent litigation.  For the first time in decades, some of the biggest patent owners in the US turned to their patent portfolios to protect their market share.  And Apple’s involvement in serious patent litigation brought massive amounts of attention to something that no one in the mainstream media ever cared about before.

For years, most people, including journalists, never thought twice about patent litigation.  Suddenly, Steve Jobs says that Apple will go thermonuclear on Google, and people demand to know what’s going on.  A big verdict and a few billion dollar+ patent auctions later and the world as they understand it has been turned upside down.

However, the world of patent litigation, as most people understand it today, never existed.

IP has always been about how you use it to protect your market share.  It’s meant to stop anyone who would intrude on your property.  It’s is not passive or defensive.

So it’s time to stop pointing to the “Smart Phone Wars” as an example of what’s wrong with the system.

THERE’S NOTHING WRONG WITH THE PATENT SYSTEM.

In fact, this is exactly how the system was designed to operate.  You just didn’t know that.

I’m sorry if you don’t like it.  I’m sorry if this type of aggressive action somehow offends you.

Apple, Microsoft, Samsung, Google…they all know what they are doing.  It’s the risk they decided to take when they put their products out into the marketplace fully aware that there could be patents out there that could impact their business.

So to everyone who wants to be in business today…

  1. Ignore your intellectual property at your own peril.  If you’re the second inventor or you file your patent application late, you are probably out of luck.  That great thing you “invented”.  You may not own the rights to it.  Not everyone is guaranteed a trophy in this contest.
  2. Ignore another company’s intellectual property at your peril.  You aren’t guaranteed a license.  In fact, assume you won’t get one.
  3. If the only thing you’re willing to do is get a patent, you are wasting your money.   I know I said it before, but it needs to be repeated, patents aren’t magic amulets that protect you from patent infringement.   It’s a business tool that can help you achieve great success, but only if you use it!
  4. If you aren’t prepared to step into the arena, walk up to your opponent, and throw that patent around, what are you going to do with it?  And please don’t say frame it and hang it on the wall in the lobby.

If you want your intellectual property to work for you, you have to be prepared to fight for your rights.

Don’t Get Your Legal Advice on Twitter

What do you believe to be true about intellectual property?

Are your beliefs based on truth, myth or falsehoods?

You might be surprised to find out that a lot of the ‘truths’ about IP that you believe are actually falsehoods perpetuated by the ignorance and half-truths of the media, the internet, other well-meaning entrepreneurs, and even IP practitioners themselves.

In fact, the information you have learned somewhere along your journey could be hurting the quality, quantity, and value of your intellectual property.

How do I know this?

Let’s look at a twitter exchange that I had last weekend.

Tweet from a successful entrepreneur:

“Founders: when starting out, in most cases, don’t worry about getting patents because you probably don’t have the money to enforce them.”

To which I replied:

“Naive advice. It takes 3+ years to get patent, so can’t enforce for years. You may have $$ and need to enforce in 5 years.”

Our exchange was seen by an entrepreneur from Canada who inquired:

“I’ve also been thinking this way too.. It’s a toughy. Is it worth $3,000 to apply provisional with fee to start?”

To which I responded (because originator of the conversation surely did not know how to answer the question):

“My first question would be why are you spending $3000. The fee is only $125.”

(EXPLANATION: The filing fee for a provisional patent Application in the United States is $125.  With a little bit of information, and following the instructions on the form, you don’t need a lawyer to file a provisional application.)

The Canadian entrepreneur replied:

“Ah, I found it. But typical utility, sm entity + lawyer fee is usually $1500+ no?” (with a link the USPTO website.)

At this point, I had to wonder, where was he getting these numbers?   Utility patents typically cost about $6000 on the low end, and up to $15,000+ on the higher end.  Depending on the technology involved that price could be a lot higher.

This is what I mean by truths, myths, and falsehoods.  Obviously, what this entrepreneur believes to be true about the costs of patents is actually false, and his misinformation will influence the decisions that he will make about whether or not to file for patent protection.

What else when it comes to patents does he believe to be true?

As an IP practitioner, I know this whole twitter exchange is a microcosm of a larger problem.  I know entrepreneurs everywhere don’t understand all of the intricacies of intellectual property law, but it doesn’t prevent them from making blanket statements that circulate as truth.

I know that when cash-strapped entrepreneurs see what looks like free, credible advice, they take it.  In fact, they seek out advice like this.  First, it’s free.  Second, it comes from a successful entrepreneur.   When they see a successful entrepreneur who seems to have some experience in this area say that they can ignore something, they tend to listen.  Why?  They are looking for an excuse NOT to spend their scarce money, time, or effort on it.

So, here is what you can take away from this exchange.

1.  Be careful who you take legal advice from.  If you get your legal advice in 140 character sound bites to save a few bucks, please don’t.  You know better than that, so please, before you act on someone’s free advice (a.k.a. his opinion), think twice.

2.  Be careful who you take legal advice from (Part 2.)  Even tweets from attorneys should be taken with caution.  The successful entrepreneur was not entirely wrong in his original tweet.  Not everyone needs expensive patents for their business.  However, some companies do.  So my tweet was not necessarily meant to cover every situation either.  It was merely to point out that the advice is limited, and for some people, it is absolutely the wrong advice.

3.  Get an informed opinion.  When you have a question about intellectual property (or business formation or partnerships or licensing or any of the 100s of other issues that you are facing), call an attorney and get a couple of hours of his/her time.  It’s worth the money to get the right advice for your unique situation.  Short money up front could save your business.

4.  There is a lot more to protecting your innovation than just getting patents.  Many start-ups and entrepreneurs believe that getting the patent is their only IP concern.  So if they don’t have to get patents, they falsely believe there is nothing else for them to worry about.

Oh, contraire.

The real patent issue may not be what you need to get, but what others have received.  Competitive intelligence, prior art searches, freedom-to-operate opinions, etc. may be even more important to your business than getting patents.

JUST BE CAREFUL WHOSE ADVICE YOU DECIDE TO FOLLOW.  IT COULD MAKE OR BREAK YOUR BUSINESS IN WAYS THAT YOU WON’T KNOW ABOUT UNTIL IT IS TOO LATE.

If you believe that you might be under the spell of some IP myths or falsehoods that you’ve learned over the years, I can help you identify fact from fiction.  Call me at 508-878-3590 or email me at kelli@ipinfocus.com to set-up an appointment to discuss your intellectual property issues and how I can help you solve them.

Be Prepared (It Applies to Your Intellectual Property Too!)

“By failing to prepare, you are preparing to fail.”
― Benjamin Franklin

Disaster preparedness seems to be on everyone’s mind this week.

With the effects of Hurricane Sandy lingering up and down the East Coast, the news media has been speaking out about the importance of being prepared when a disaster strikes.  I know that my family, along with millions of others, spent much of last weekend putting away lawn furniture, checking flashlights, and shopping for batteries, water, and non-perishable food.

Employees and business owners alike have spent countless hours trying to ensure that their companies can still operate in the wake of flooding and power outages.

One such story in particular struck me.  It’s the story of a data center, Peer 1, based in NYC.  The power went out, the flood waters came, and they’re keeping their servers running with the help of a generator.  A generator located on the roof of the building.

To keep that generator going, the employees (and their customers!) are carrying 5 gallon buckets of diesel fuel up 17 flights of stairs.

If that generator goes down, it will impact hundreds of customers, as thousands of websites will go down with it.  (As a lawyer, I hope they have a really good Force Majeure clause in their customer agreements.)

That’s a lot of pressure, but it seems like they were prepared.  They had the generator in place and made sure they had fuel on hand.  They even found help when they needed it.

Peer 1 had one more thing on their side, warning.  Hurricanes don’t show up unexpectedly, so they had time to plan and mitigate any damage.

But often times catastrophe strikes without warning.  If that happened, would you be able to make a “bucket brigade”, or its equivalent, to save your business?  Would your customers come to your rescue?

All of this got me thinking about intellectual property.

Companies are faced with intellectual property disasters every day.  Disasters they never anticipated and are ill prepared to handle.

What is an IP disaster you might ask?  Well, here are a few examples:

-  You receive a cease & desist letter (or worse, you get sued outright for patent infringement.)

-  You discover that a competitor is about to launch a product that looks an awful lot like yours.

-  You find counterfeit goods are being sold in the marketplace.

-  You stumble upon your artwork or photos on Pinterest, someone’s website, or printed onto t-shirts without your permission.

Any and all of these events happen to unsuspecting businesses everyday in the United States, and most small or medium-sized companies are not prepared for them, especially when it comes to patent litigation.

One patent lawsuit could wipe out your business more completely than any hurricane.

The number of IP related lawsuits in general, and patent suits in particular, are increasing.  Companies are doing everything they can to ensure they protect their market share. If that means, suing somebody for patent infringement, then so be it.  Are you prepared to weather a patent litigation or protracted licensing negotiations?

Very few companies ever think they will sue someone, and they falsely believe they will never be sued, because they are small.

The idea that patents are the weapons for big business only is a myth.

Patent litigation doesn’t just happen to the likes of Apple, Google, or Microsoft, and if you aren’t prepared, one litigation could put you out of business.

I also anticipate that the number of IP disasters will rise sharply with the implementation of the First-Inventor-to-File Rules in March, 2013.

If you aren’t ready to file early and file smart before March 16, 2013, then you could lose valuable patent rights.

Many companies will not fully understand all of the implications of this change and how it impacts their business.  Unfortunately, they will be the first victims of the new system.

How your business handles unexpected intellectual property events will depend on how well prepared you are.

The best way to prepare for a possible IP disaster is to identify the intellectual property in your business early, protect it when appropriate, and monitor the marketplace for signs of impending doom.

Over the next several weeks, and in this month’s IP made simple Newsletter, I will be talking a lot about being prepared.  If you haven’t signed up for the monthly newsletter, you sign up here.

I hope you join me for the discussion.

If there are any issues that I don’t address and that interest you, please let me know so that we can talk about them in future posts.

How a Provisional Patent Application Could Save your Business

You invent something on May 1, 2012.

You are still in the conceptual stages, so you put off filing for patent protection.

On October 15, 2012, you are given the opportunity to give a presentation on your invention at a local conference.  You jump at the chance, and present your invention to the assembly of attendees.

You have now disclosed your invention to the public without the benefit of having a patent application on file.  Fortunately, you know about the 12 month grace period in the United States.  You know that if you file a patent application on or prior to October 15, 2013, you won’t lose your patent rights.

Time flies when you are busy working on your invention, your business plan, and your Kickstarter campaign.  You finally file your patent application on August 1, 2013, but that’s OK.  You filed well before your October 15, 2013 deadline.

What you don’t know is that one of the conference attendees really liked your idea.  In fact, he liked it so much that he decided to file a US patent application on it on April 1, 2013.

Two patent applications and the same invention…who gets the patent?

What you will painfully discover is that you don’t have the patent rights you think you do.

The final implementation of the America Invents Act goes into effect on March 16, 2013, and as of that date, the old rules no longer apply.

When you disclosed your invention at the October, 2012 conference, the United States was under a First-to-Invent system.  If there were two inventors claiming to have invented the same invention, the court would award the patent to the inventor who invented the invention first.  In our scenario, you would be awarded the patent.

This system gave the original inventors time to tinker with their inventions without having to file for patent protection.  This removed any fear that he would lose his patent rights if someone filed a patent application on the same invention before them, as is the case in the above scenario.

Unfortunately for you, the First-to-Invent rules end in March, 2013.  Patent applications filed on or after March 16, 2013 will be subject to a different set of rules.  As part of the America Invents Act, the United States will implement a First-to-File system.

Under the new system, if there are two inventors claiming to have invented the same invention, the court will award the patent to the inventor who filed the patent application first.

In the example above, the patent would be awarded to the conference attendee because he filed first on April 1, 2013 under the new rules.  And the kicker in all of this is…if you continue with your plans to make, use or sell that invention, you probably infringe his patent.

In order to get the benefit of a grace period and the old rules, you should have filed your patent application before March 16, 2013.  By waiting until after this date, you run the risk of someone filing a patent application on your invention before you.

The lesson in this story is the quicker you get your application on file, the better.  There will no longer be safety in delaying your patent application filing.

Filing a simple, inexpensive provisional patent application would have saved you a lot of heartache.  Having a provisional patent application on file prior to your disclosure would have ensured that you had the benefit of a full 12 month period before you had to file your non-provisional application.  The early filing date of your provisional application would have trumped the conference attendee’s later filing.

Don’t fall into this trap.  The rules are changing.  You need to understand those changes and how they impact your business.

If you must publicly disclose your invention, think seriously about filing a provisional patent application.  It could save your business.

Are You Making a Bad Investment?

Do you know what you are going to do with your patent?

 

Yesterday morning I sent the following tweet.

“All I hear is how expensive IP is.  Maybe you don’t understand its value; its purpose.  If you knew how to use it, you might spend more.”

This sparked a short twitter conversation with @ManagingIP about what aspect of IP is seen as expensive: protection, enforcement, or defense,  and whether IP spend is seen as a tax or an investment.

I think most companies see IP spend as a tax, and that the grumbles about IP being expensive are around protection, especially patent protection.  Maybe it’s because I’m listening to a lot of start-ups lately, and they’re short on money.

Or, maybe it’s because I’ve been doing this long enough to know that, even though IP enforcement and defense are expensive, the average company doesn’t really think about that aspect of IP protection.  The main event is protecting the invention or the brand, with little thought given to what they’re actually going to do with it once they get the patent.  (If I had a dollar for every time I heard, “You mean I have to enforce my patent?”)

The way I see it, many organizations in general view IP as a necessary evil.

Based on my 12+ years as an intellectual property attorney, I am under the firm belief that most companies protect their intellectual property out of habit.  They really don’t know why they want that patent.  They just do it.  And if these same companies just knew why they were protecting their IP and plan for its future use, they’d see a greater return-on-investment sparking more, and dare I say better, investment.  (Hence yesterday’s tweet.)

All of this got me wondering…

Why is the ‘getting’ so important?  I can’t think of any other business asset that people stockpile like patents.  Of course, I do understand that to use patents, organizations typically have to wait for a future event to happen, like an infringer comes along, counterfeit goods are being sold into your market, or someone wants to license your technology.  So, the stockpiling does make sense because you have to get it early for use later.

But what if you know that you will NEVER sue anybody for patent infringement?   Why do those companies still spend lots of money protecting their IP?

Is the amount of money companies spend on intellectual property worth it?

At what point is intellectual property protection a good (or bad) investment?  (And how do you know?)

If intellectual property is a business asset, that asset should bring the company value.  How do you measure the value IP brings to any given company?

Is it the amount of money the asset brings to the bottom-line?  If so, we’re most-likely talking about companies that engage in expensive licensing and litigation practices.  I would argue (based on the low number of patents that ever go to litigation) that’s not the average IP owner.

Or is the value in the portfolio size?  That strategy works for Japanese companies.

There is also value that is intangible, just like the asset itself.

There are a lot of factors that enter into answering these questions, like industry, type of technology involved, size of company, country of origin, risk tolerance, and 100 other factors I haven’t even thought about.

I have to admit that I’m not really sure how to answer these questions right now.

If you have thoughts, dear Readers, on what makes IP a good or bad investment, please let me know in the comments.

Websites, Webinars and Workshops. Oh My!

The Summer of 2012 has been the busiest on record for me and my business.  The new website is up-and-running, my first Workshop is scheduled for the end of September, and a FREE 4 part webinar series on IP basics will kick-off next Wednesday with a primer on trademarks.

I encourage you to explore the new website.  If you like what you see, sign up for the free webinar.  If you like what you hear, and want to learn more, please come to the IP made simple Workshop.

All the details are below:

My FREE 4 Part Webinar Series, Intellectual Property Essentials for Every Business, starts next Wednesday, August 29, 2012 at 11am EST with Trademarks 101: Protecting Your Reputation.  You can sign up for this free event at  http://www.anymeeting.com/PIID=E056DC85844F .

The rest of the series will take place as follows:

  • Wednesday, Sept. 5, 2012 at 11am EST, Copyrights 101: Protecting your Creative Works
  • Wednesday, Sept. 12, 2012 at 11am EST, Patents 101: Protecting your Innovation
  • Wednesday, Sept. 19, 2012 at 11am EST, Trade Secrets 101: Protecting your Know-How

 

The first IP made simple Workshop will be held on Thursday, September 27, 2012.

Time: 5 – 8pm

Location: The Accidental Gallery

300 Summer Street, #14

Boston, MA  02210

Cost: $297

You can check out details about the Workshop at my new website www.ipmadesimple.com.

Sign-ups for the Workshop are at www.ipmadesimple.eventbrite.com.