Intellectual Property Directions

If you’ve ever watched a patent application flow through the USPTO examination process and said “What the heck is going on? I know of some prior art that should wipe that application out ASAP.” Well, your time is coming. But be careful what you wish for!

Under the new America Invents Act, third parties – outsiders like you – get several new chances to muck up someone else’s patent and/or application. Of course, you may actually end up making that inventor’s patent stronger, so think twice before acting. There are actually three opportunities for non-inventors to interject themselves:

First, you can submit information to the patent office during the examination process. This new, pre-issuance submission process is limited to printed materials such as patents, published patent applications and other printed publications. What is new is that these submissions are accompanied by “concise” descriptions of their relevancy. Thus, rather than just dump prior art on the examiner and hope s/he will read and understand their significance, under this program you get to point out why they should block your competitor’s pending application.

• Can be anonymous
• Must be submitted within 6 month of application publication (as a practical matter)
• Effective 16-Sept-12 BUT applies to any pending application.

I have never liked so-called business methods patents (in fact, I dislike a majority of “methods” patents). Today the Supreme Court hand down its ruling on the Bilski case, upholding the USPTO’s rejection of Bilski’s patent application on “101″ grounds. That is, the PTO rejected the application because the claimed invention did not address a patentable subject. Specifically the Court ruled that Bilski’s application was an attempt to patent an abstract idea – a catagory that has long been ruled not subject to patenting.

Many people, myself included, had been hoping that the Supreme Court would address the patentablity of software and business methods at a broader level since there has been much huffing and puffing on the topic of should business methods as a class and should software as a class be patent eligible. Unfortunately we will have to wait until, perhaps, the Congress acts since the Court explicitly said it:

… declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected underour precedents on the unpatentability of abstract ideas.The Court, therefore, need not define further what constitutes a patentable “process”…

In effect, the Court said that if Congress didn’t like the way the PTO was defining a patentable process then Congress can amend the patent statutes.

Last week I spoke to a potential client who essentially asked me the question posed in the title: Now that I’ve invented something, what do I do next to protect my invention. Unfortunately, I needed to explain that, no, she didn’t have an invention, she had an idea. An idea that, perhaps, with a bunch of development effort, might become an invention – in which case we could evaluate the pros and cons of filing a patent application.

We’ve all noticed problems in our daily lives and said something to the effect of “what is needed is a [fill in the blank] that would do [fill in the blank]. The difference between an idea and an invention is the difference between observing a need and filling that need. I wish my garden were lush and beautiful, but without a lot of sweat it will remain a weedy patch.

Previously, most people quickly passed from the idea stage to the “forget about it” stage as they realized A) they didn’t know anything about how to implement their idea and B) they had no reason to think their idea would be a commercial success. More recently (this millennium), however, the very public, huge successes of certain ideas (think Google, Facebook, UTube), aided and abetted by television entertainment shows (“American Inventor” reality show, Good Morning America’s “Mothers of Invention” contest) have changed people’s perception of what they have. Novelty be damned, obviousness – what’s that, let’s patent this and make a bundle!

This desire to turn every idea into an invention is not limited to “amateurs”. Often clever engineers get an ah ha moment and want to rush to the patent office. But again, without the usually hard effort of working through the details they often don’t yet have an invention.