Getting a good patent depends both on what is in the patent application and also how it is written. Getting the what right might be obvious, but getting the how right can save not only headaches, but huge amounts of time and money. So this space, which over the coming months will be devoted to suggestions and strategies for US patenting, will sometimes be devoted to the what (e.g. patentability, invention disclosure, etc.) and sometimes to the how (e.g. USPTO formal requirements, initiatives, etc.). But before we dive into the 'whats' and 'hows' of US patent practice, I'd like to ask other, even more basic, questions: Why do you want to get a US patent? Can your type of technology be patented in 2017? So do you still want a US patent? Then come along, and together we can hopefully answer the 'what' and 'how' questions, and make your patenting experience more successful, and less difficult.
Patents are an invention of society . It goes like this: you have new technology, the public wants it, and to get you to tell us about it, society (through enacting laws) invented a time-limited monopoly that we call a patent. It sounds simple, except here's the catch: because patents are society's invention, society gets to decide which inventions it wants and considers to be deserving of a patent. This is known as "patent-eligibility". In the US, the issue of eligibility has developed over the last few years into a critical problem for technologies in certain fields. But is this something you need to worry about? Maybe... So what should you do? If your technology is in a potentially problematic field, including software (including mobile apps), business methods, isolated biological materials, or medical diagnostic methods, then... 1. Recognize that a problem exists. 2. Talk to your US patent attorney - early! 3. Be flexible. Be open to a range of IP strategies. Finally, don't forget that patents are not the only types of IP relevant to your business! Trade secrets, trademarks and designs are all ways to gain market advantage and keep value for you and your investors.
Do you own your patent? It might seem obvious, but this is not a trivial question. And I know there are far more interesting things to think about (believe me - there are more interesting things to write about!), but like the fine print in a contract, the most boring thing can lead to big problems if you don't pay attention to it. Listen: I can write the best patent application in the world for you. I can help you obtain such broad claims that your competitors will be shut out from your technology space for years to come. But if you don't actually own the patent, then none of that will be worth anything to you or your company. So I'll ask again: Do you own your patent? In this article, we will cover the following: Doesn't a company already own its patents? After all, it paid for them in the first place! How can you make sure your company owns its patents? Ownership by Employment or Service Contract Ownership by Assignment When should the Contracts and Assignments be signed?
A US provisional patent application (PPA) is cheap and easy to file, and isn't required to have claims. If you are a patent attorney, or if you have ever spent more than ten minutes discussing an invention with us, your natural response to this "benefit" of not needing claims should be: "Excuse me? No claims?!" Because a patent is all about the claims. You might think: "the law doesn't require a PPA to have claims, and besides, my PPA won't be examined, so why should it matter that there are no claims?" Well, it matters a lot. Let us tell you why..
When I was a kid growing up in New York, I was fascinated by the pop-up timer that came in the turkeys we would cook for holiday meals. Based on the simplest of principles, this little invention is supposed take the guesswork out of cooking by indicating when the turkey has cooked enough and is ready to come out of the oven. It’s fallen a bit out of favor over the years, but the idea remains appealing: up it pops and the cooking’s done! If only it could be as easy to determine when an invention is ready for patenting and not half-baked, So when is an invention ready for patenting?
When I was just starting out in patent law, I had the great pleasure of taking my children to a museum exhibit showing full-scale models of inventions from Leonardo DaVinci’s notebooks. Walking through the ingenious creations on display left me no less open-mouthed in wonder than my kids. But then the naïve patent attorney part of me reacted in horror: how could any mechanical device be patentable after DaVinci?! The next day I told one of my mentors about the experience, and he wisely remarked that “the invention is in the details!” For biotech, chemistry, and pharma patent applications, I would add: the invention is in the experimental data.
Inventors are an intrinsically optimistic lot. Most people when faced with a problem will either make do, or will come up with a temporary solution that allows us to get on with our day. But inventors know that progress is not achieved by just making do, and that the world can be improved, even incrementally, through that nearly undefinable creature known as innovation, and through practical applications of scientific discovery.
I think that patent attorneys share some of this optimism. Don’t laugh! I really do believe that for us to zealously represent our clients before the seemingly arbitrary bureaucracies of the world, we have to be optimistic. When faced with rejections by patent examiners, we persist because we have a deep-rooted belief that there is nearly always some way around the obstacles set before us.
This sense of possibility is why in the first year or so after the rather grim U.S. Supreme Court decision in Mayo v. Prometheus, I counseled my clients that although Mayo had changed the U.S. patenting landscape for medical diagnostic methods, and indeed made things more challenging, the sky had not fallen, and we could and would find a way forward.
It’s been four years now, and I’m going to be blunt: Mayo did bring down the sky on certain diagnostic method claims.
But like I said, I’m an optimist.
This is the first in a series of articles dealing with Intellectual property health, and the first leading up to the IVC conference in Tel Aviv on 9-2-2016 on doing business in the US.
We live in a health-obsessed society, and particularly this week more than ever, as we turn the page on our calendars to 2016. If there are any doubts, you need look no further than the briefest of internet searches. A recent search of “health” AND “New Year’s Resolution” produced over seven million hits. And I’m not even going to bother looking at the results from substituting “fitness” in place of “health!”
With all those pixels (and even ink) being spilled about “how to be healthy in 2016,” one would think that there is a piece of critical, and before now unknown, information that must be cast to the four corners of our information ecosystem if we are to have a chance of making it to 2017. But you and I know that while the rules haven’t changed, we are all human, and so need at least a yearly reminder of some common wisdom: eat moderately, don’t drink too much alcohol (though feel free to enjoy that coffee or tea!), get enough sleep, get some exercise, and stop to smell the roses with someone you care about more than every once in a while.
If only the IP world was as straightforward as our personal health! In some ways, the guidelines for the IP health of a business in 2016 are simple and are well-known, even if a gentle reminder is worthwhile. But in other respects, it could be a grave error to relate to intellectual property in 2016 as if nothing has changed in recent years.
Just over a year ago, I was entrusted with directing the US operations of JMB Davis Ben-David. However, as our firm is based in Israel, I was to do this from my desk in Jerusalem, some 7,000 miles away from the US. Given the way intellectual property law is traditionally practiced globally, this was not an immediately obvious service for our firm to provide. After all, how can an IP firm located outside the US represent a client before the USPTO?!
In retrospect, this decision was highly logical and helpful, both to our domestic clients and to many of our overseas clients. Our experienced team includes several US-licensed patent attorneys and agents, some of whom worked at US law firms before moving to Israel; and our clients are continually seeking to decrease costs, and increase speed and efficiency. But still, did it really make sense for clients to use an Israel-based firm to represent them or their clients before the USPTO?!