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google-patent-search.jpgThe original creation of an inventor may be a remnant of an idea that was used previously by another individual. This is because numerous persons view items in the stores, online, through television and other media.

These images and video process in the mind and are remembered later when the person feels he or she has an original creation. Unfortunately, this is not always the case. When there is any possible creation that may be patented, it is imperative the inventor research if the idea is original or something never before seen through a standard item.

When attempting to apply for a patent, the individual must search through existing patented original works. This research may show that the idea is not original. However, there may be a new way of fashioning the creation into something similar but with a brand new purpose. That means the previous patent still applies, but a new one may be issued for the same product as long as certain factors are different. This process also depends on if the creation had a design patent over a utility patent. It is important to contact an intellectual property lawyer to assist in these matters.

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shaking figure upsidedown moneyIn the American legal system, the popular notion is that the courts should be equitable and fair to all parties, both plaintiffs and defendants, regardless of the issue at stake. This is reflected in our system’s handling of lawsuit legal fees, which typically keeps the costs of engaging in litigation with the party who contracted those costs during the legal process. Only in the most special of circumstances does the losing litigant have to pay the attorneys fees of the prevailing party in the United States. This has long been believed to be the best way to make sure that even those of modest means have meaningful access to seek redress in Court for wrongs suffered.

The American concept that each party should ordinarily pay for legal representation regardless of whether they win or lose has developed in sharp and direct contrast to legal fee rules in other countries. The two contrasting regimes are named for the two countries that most clearly represent these differing views: the United States and England. In recent days, the United States Congress, urged on by certain high-tech corporations, has considered legislation that would create new rules regarding fee shifting for patent lawsuits as a way to discourage so-called “patent trolls” from engaging in litigation. Unfortunately, the legislative proposals currently being considered are not at all narrowly tailored to address the patent troll problem, even assuming there is a patent troll problem, which the objectively available data calls into question in the first place.

Certainly, there is abusive litigation that occurs in the patent world. This abusive litigation does not, however, signal a problem with the patent system. Rather, the abusive litigation tactics leverage judicial inefficiencies to force litigants into paying exceptionally paltry sums rather than pay to fight a patent litigation that on average could cost $2 million to see through to the end. Those sending demand letters for $500 or $1,000 to small entities should be stopped. Those that sue large entities without care of whether there is infringement and settle for $25,000 or $35,000 should be stopped.

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globe earth arrows 335For better or for worse, there is no such thing as a world-wide patent. There is, however, something that approximates a world-wide patent application that can ultimately result in a patent being obtained in most countries around the world. This patent application is known as an International Patent Application, or simply an International Application. The international treaty that authorizes the filing of a single patent application to be treated as a patent application in countries around the world is the Patent Cooperation Treaty, most commonly referred to as the PCT. You can file an International Application pursuant to the rules of the PCT and that application will effectively act as a world-wide patent application, or at least a patent application in all of those countries that have ratified the PCT, which is virtually all of the countries where you would want a patent anyway.

So how is it possible that there is a single world-wide patent application but no world-wide patent? Patents are granted by individual countries, not by any international authority. Soon the European Union will change this by granting a Europe wide patent, but even then to obtain a patent around the world multiple jurisdictions will need to authorize the application and grant the rights.

The patent application process can be streamlined and uniform, as with the PCT process, but individual countries have different patent laws, which makes a uniform world-wide patent granting process impossible. For example, in some parts of the world living organisms are not patentable, but in the United States at least some living organisms are patentable if they are the product of human engineering. Similarly, in much of the world computer software is patentable, but computer software has become increasingly difficult to patent in the United States thanks to the Supreme Court’s decision in Alice v. CLS Bank and the way patent examiners have implemented that decision.

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patent definition 1During patent examination, pending patent claims are given the broadest reasonable interpretation that is consistent with the specification (i.e., the disclosure of the invention in the application other than the patent claims). This broadest reasonable interpretation of the claims is made as the claims would be understood by one of ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).
The broadest reasonable interpretation standard is frequently referred to simply as BRI within the industry. The Patent Office applies the broadest reasonable interpretation in virtually all circumstances.* Whether the Patent Trial and Appeal Board (PTAB) should be using the broadest reasonable interpretation when it reconsiders previously issued patents in post grant proceedings will soon be considered by the United States Supreme Court. Notwithstanding, the focus of this article is not specifically to evaluate the merits of the Cuozzo appeal, but rather to generally discuss the broadest reasonable interpretation standard and what it means from an analytical perspective.

Claim what you disclose

Patent Office regulations require the patent claims to conform to the invention described elsewhere in the patent application, with the terms and phrases used in the claims finding support within the patent application so that the meaning of those terms in the patent claims may be understood by reference to the overall description. See 37 CFR 1.75(d)(1). Said another way, you cannot claim something that you have not disclosed elsewhere in a patent application.

Applying the broadest reasonable interpretation of patent claims during the patent examination process, which is referred to as patent prosecution, makes sense given the role the patent examiner plays in determining whether to issue a patent in the first place.

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capitol flag 335Conventional wisdom within much of the patent community is that patent reform is dead, at least for the 114th Congress. There is no way that patent reform, which famously stalled in 2015, could possibly restart and gain any momentum in 2016, right? After all, this is an election year, but not just any ordinary election year. This marks the final year of the Obama Administration, at least 14 major candidates are running for President, and the Republicans and Democrats couldn’t be farther apart on just about every issue. Patent reform is dead.
Not so fast!

Yes, President Obama is a lame duck and it will become increasingly difficult for anything of substance to be accomplished in Washington, DC. Unfortunately for the patent community, despite the hyper partisan times in which we live, patents, patent reform and innovation policy are not political issues. Patents and innovation policy will not drive voters to or away from the polls, and supporters seem not to care if a candidate takes positions they completely disagree with on patent matters. In short, patent and innovation policy presents no risk for politicians, but well-financed donors and lobbyists covet more reform, which makes for a dangerous combination.

Yes, there are a number of Constitutional conservatives, such as Republican Presidential Candidate and former U.S. Senator Rick Santorum and conservative commentator Ken Blackwell, both who have vocally made patents a property rights issue (see here and here). But so far even Republican Presidential Candidate Senator Ted Cruz (R-TX), a staunch Constitutional conservative, has yet to go on record equating patents to a Constitutional property rights issue, although he did vote against the PATENT Act in the Senate Judiciary Committee. Still further, some of the major proponents of additional patent reform are Republicans, including Senator Chuck Grassley (R-IA), Congressman Bob Goodlatte (R-VA) and Congressman Darrell Issa (R-CA), all of whom find themselves interestingly in alignment with the Obama Administration and the Obama Administration’s chief benefactor, the company formerly known as Google.

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patlogoAfter months of deliberation, India’s Patent Office has issued new guidelines that firmly maintain the country’s practice of not granting patents for software inventions. Issued February 19, 2016, the new Guidelines for Examination of Computer Related Inventions put to rest the country’s recent debate over whether software can be patentable if it has industrial applicability.

India’s patent law does not define or use the term “software,” but it does say that “a mathematical or business method or a computer programme per se or algorithms” are excluded from patentability, as is “a presentation of information.” However, during the past year, the Patent Office began to interpret this exclusion narrowly by stating that software could be patentable if it is applicable to a particular industry.

The new Guidelines reject that notion and direct examiners to apply a three-part test when examining claims for computer-related inventions:

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fair compassAfter much public comment and debate, new changes to rules for post-grant administrative trials before the Patent Trial and Appeal Board (PTAB) go into effect on May 2, 2016. These final rule changes, which are the second set of changes since the America Invents Act (AIA) went into effect, are the culmination of a series of PTAB listening tours and public comments to the rule change proposals published in August 2015. Among other things, the new PTAB rules are intended to address concerns that patent owners were at a disadvantage in responding to patent challenges, particularly during the pre-institution stage of a PTAB proceeding. The rule changes also introduce certification requirements for documents filed with the PTAB, confirm the broadest reasonable interpretation (BRI) standard, as well as exceptions to the BRI standard for expiring patents, and adopt an appellate-style word count limit for major briefs.

New PTAB Rules Allow Owners to Submit Testimonial Evidence

To date, the PTAB has received over 4,600 petitions, which by the USPTO’s own account is more than three times the number of petitions expected at the outset of the program. Initially, the rate of institution for petitions for post-grant administrative trials was quite high. As the practice has evolved, the parties have increased their focus on the early pre-institution filings. Petitioners submit thorough expert declarations in support of their petitions and patent owners submit carefully crafted preliminary responses in an attempt to avoid institution, or at least limit institution to only certain claims and prior art references. Recently, patent owners are proving more successful in avoiding or limiting institution, as shown by a declining institution rate.

Many practitioners, however, have expressed frustration at the imbalance of allowable pre-institution evidence. In particular, until now, patent owners have not been permitted to submit testimonial evidence with their preliminary responses, meaning that decisions on institution are often based on unrebutted expert testimony in favor of the petitioners.

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b2ap3_thumbnail_NoSoftwarePatents.jpgSoftware patents have been the subject of much debate – not only in the US, but also in Europe. This has been a thorny issue for many years and the future of software patents still remains unknown. At the outset, a breakdown of the differences between patents and copyrights will highlight why the patent is the form of intellectual property which is proving to be the most problematic with regards to software.


Patents v. Copyright

Copyright protects the expression of an idea, such as a literary work. Patent protects the invention and therefore the idea itself. Copyright can prevent the total duplication of a software program, but it will not prevent the formation of a program that utilizes the same concepts as an existing program. This is where most issues arise. In order for an invention to be eligible for a patent, certain essential requisites must be satisfied. There must be an “inventive step” and the invention must be novel. It must also be industrially applicable; hence there must be a business scope to it.
In the US, software patents have been in existence since the early 1970s, but courts have recently started to reject software patents. The courts have ruled that simply “doing something on a computer” does not enable one to obtain a software patent on the matter. After hundreds of thousands of patents being issued, it became clear that there needed to be more restriction and the courts have recently been invalidating patents that were already granted. In 2014, in the landmark Alice Corp judgment, the courts stated “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent eligible invention.” Thus the US is now retreating from its original position of granting software patents somewhat liberally.

Can software be patented in the EU?

The 1978 guidelines published by the EPO made it crystal clear that software is not patentable. However, this line was blurred in 1985, wherein the EPO stated that it was not important whether the invention is produced on a computer for such invention to be considered patentable, but focused instead on the effect it produced. The European Patent Office decided that the term “software” is too ambiguous and thus introduced the concept of a “computer implemented invention”. In the 1998 IBM case, the EPO’s Technical Board of Appeal stated:

"A computer program product is not excluded from patentability under Article 52(2) and (3) if, when it is run on a computer, it produces a further technical effect which goes beyond the "normal" physical interactions between program (software) and computer (hardware)".

Therefore, there needed to be a physical object which would benefit from this “technical effect”. 

In 2003, the EU proposal for a directive on the patentability of software patents intended to harmonize national legislation and practices with regards to the granting of software patents. However, it was rejected in 2005 by an astounding 648 votes with only 14 votes in favour during its second reading in Parliament. 

Article 52 of the European Patent Convention enlists programs for computers as one of the exclusions from patentability. However, the following paragraph states that such exclusion is “only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such”. This convoluted proviso has understandably confused many lawyers and jurists due to the addition of the words “as such”. This cast a lot of doubt as to whether software is actually patentable or not. However, the EPO has been known to grant software patents, provided that there is the “technical effect” laid down in the IBM case. In reality, the EPO has granted tens of thousands of software patents, even though this goes directly against what the drafters of the Convention had in mind.

Does this mean that such patents are not legally valid? It could be said that the EU will be following in the footsteps of the US – that is, invalidating patents that have been granted already, which effectively means that there has been a colossal waste of energy and resources. This is unfair on applicants and is not analogous to the idea of software patents to begin with – a patent implies ownership, which should not be capable of being bestowed and then swiftly taken away. The EPO has since felt a need to come up with a more efficient service where a patent will have a universal effect throughout the EU.

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b2ap3_thumbnail_portoflio-22.jpgRegistering a patent can be complex, expensive and can take many years. Below we evaluate what you should be considering before applying to register a patent.


Before registering a patent you should always evaluate whether there are alternative options that could be pursued to secure protection of your intellectual property rights. 

The alternative options could include registering a design in accordance with the registered design framework or protecting the documentation via copyright protection or alternatively by using the law of confidence.

If registering a patent might be appropriate for you and your business then you will need to determine whether your idea or invention can be patented. To be patented an invention must:
1. Be novel.
2. Involve an inventive step.
3. Be capable of industrial application.
4. Be sufficient described in the patent.
5. Not be within the scope of a statutory exclusion.
You can’t patent:
1. Literary, dramatic, musical or artistic works.
2. A way of doing business, playing a game or thinking.
3. A method of medical treatment or diagnosis.
4. A discovery, scientific theory or mathematical method.
5. New types of plants, seeds or animals.
6. The way information is presented.
7. Some computer programs.

If you believe that your invention satisfies the criteria for patentability then the next stage is to conduct a prior art search of the patent register to see whether your invention has already been registered and/ or is the subject of a patent application. You can undertake a prior art search using the online search facility at the Intellectual Property Office website. The IPO website also has the Espacenet search function which allows you to search worldwide published patent applications and registered patents.

You should also check and search internet and trade publications to see if your invention is already in the public domain. It might be the case that your invention has not been registered as a patent but is already in use and/ or in the public domain. 

Once you have reviewed and interpreted the search results you can then make an informed decision as to whether you wish to proceed with submitting a patent application.

The application process is:

1. complicated – approximately only 1 in 20 applicants get a patent without professional help
2. expensive - with professional help, applications typically cost in the region of £4,000
3. long - it usually takes 5 years

You should also note that if you get a patent, you will also have to pay to renew it each year, and there could be significant legal costs if legal action is required to defend the patent.
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Posted by on in PATENTS

b2ap3_thumbnail_Google-Patents-san-jose.jpgIn an effort to foil the innumerable attempts of patent trolls to create havoc in the IP world, Google has taken steps to curb their enthusiasm. They have created the Patent Purchase Promotion, a marketplace wherein anyone, companies or individual inventors, can sell their patents to Google at their own stipulated price .Avoiding patent trolls has never been easy. This experimental program has been launched by Google as a way to "remove friction from the patent market”, in their words. 

Google is hoping to offer inventors an alternative to patent trolls or NPE’s (non practicing entities.) that exist for the sole purpose of purchasing patents but do not actually create a product. Patent sellers usually have few options and hence they end up negotiating with patent trolls, who misuse patents as a business strategy to launch lawsuits against infringing companies. This has cost innovators $500 billion in lost wealth and created a very large disincentive to innovate.

Google has reassured that all the patents that will make the final sale will be an integral part of the large patent portfolio that Google owns and will be put to use to create products. Their efforts to snag them as valuable assets lets them find out what patents are on the market today. Being Google, the number of submissions that are likely to be submitted for the experimental purchase program will exceed expectations. The entire process will be a formal one with submission, evaluation, contracting, diligence, and payment – within three months. It will be faster and easier. Patent holders who sell their inventions to Google will be able to license the patent back from the company so they can continue to produce their inventions, which is a dream come true.  These efforts are geared towards Google’s commitment to reform. Purchases will be finalised by August.

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uspto-office.jpgThe coming few months of 2015 will witness the presence of a new west coast USPTO office in the Silicon Valley to assist in creation and protection of innovation in the valley.  This big step towards the improvement in the USPTO’s services and infrastructure will not only benefit as a regional resource center by hiring local talent in intellectual property and technical fields but also provide an enhanced pace of  U.S. innovation. Silicon Valley alone accounted for 12 % of all patents registered nationwide in 2010. The same year also saw California accounting for 30,080 patents granted, which amounts to nearly 25 % of the U.S. total.

Michelle K. Lee, the newly appointed director of the U.S. Patent and Trademark Office, opines that the expansion of the office beyond Washington for the first time in two centuries, will make the patent process quicker and better and may even yield to higher quality patents and less patent litigation. She further states that this would lead to balancing speed with precision while processing the patents.  The office will help entrepreneurs market their products quickly and provide resources tailored to local start-ups. Dividing the work between many patent offices may also hasten the process to approve a patent thus improving the ‘total pendency’ average of the patents.

The Patent Office, to be located in San Jose at City Hall will start recruiting patent examiners next month. This will lead to several practical benefits for IP lawyers in the region, starting from cost savings from reduced travel, speedier resolution of patent disputes to a pool of patent office employees’ knee deep in the tech culture in the most entrepreneurial communities in the country. Once the office is in full swing, both patent examiners and judges will be able to hear disputes closer to where stakeholders live. 

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I Have Something that Is New, Nonobvious, and Useful - Can I Get a Patent?

You can patent pretty much anything under the sun that is made by man except laws of nature, physical phenomena, and abstract ideas. These categories are excluded subject matter from the scope of patents.   

Why Can't I Patent a Discovery I Made?

Even if you make a new and useful scientific discovery that no one else has ever thought of, you cannot get a patent on it because you did not actually create the fact you discovered. That fact was always in existence, you were just the first to notice it.  However, if you can come up with an invention that makes use of that fact, you can patent the invention.  

What Is Physical Phenomena?

Patent law classifies physical phenomena as products of nature.  Thus, if your invention occurs in nature, it is a physical phenomenon and cannot be patented.   

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The Comic Book Attorney

The attorney who represents comic book creators and publishers must be experienced in intellectual property matters, specifically copyright and trademark law, contracts, entertainment law including music, film, television, and interactive games, app development, mobile gaming, publicity rights, business law, litigation, advertising law, marketing, endorsement deals, internet law, business entity formation, tax law and e-commerce.

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Most trademark cases involve competitors trying to entice customers into making the consumer believe that their products are made with the same good reputation and high standing as that of their competitor in an attempt to benefit from their brand. This makes consumers in the market confused. The law examines whether the goods and services are highly similar.  In the end, it’s up to the trademark office, as well as the courts, to evaluate the actual facts of the case before determining if there is a trademark infringement. It is also relevant to note that two companies can have similar marks and similar services and may both have rights, but in the end, the consumer needs to be given the said clarification between the two similar products.   

Some of the recent leading cases have been:

Zillow filed a complaint claiming that LoanZilla, a   mortgage brokerage, had infringed on its trademark for “Zillow.” After detailed analysis of each service and other companies that use the “-Zilla” suffix, the USPTO ruled against Zillow.  Although both their lines of business were similar, regulators   did not find enough evidence to prove that LoanZilla infringed on any trademarks owned by Zillow. Inspite of an overlap between the customer classes and channels of trade, the parties’ marks were extremely different in overall commercial impression, further emphasized by the number and nature of marks incorporating the -ZILLA suffix in use by third parties.  Hence it was concluded that LoanZilla’s mark would not likely to give rise to confusion, mistake or deception of services.

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The Patent Reform Bill in the US Senate designed to attack the  patent trolls, which are firms that don’t build products, but exist with the sole purpose of extracting license fees or legal judgments from other companies, got shelved from Senate consideration as  lawmakers were unable to reach an agreement. The bill would have increased transparency in patent ownership, allowed patent infringement cases to be stayed while the suits are litigated, and stopped frivolous suits being filed for compensations.

In the past few days, ZeniMax Media has filed a case against Oculus, the company recently acquired by Facebook for $2 billion, for misappropriation of trade secrets relating to virtual reality technology, thus infringing ZeniMax copyrights and trademarks, and breaching its contract with the company. Oculus has of course denied all such claims,

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Patent Wars:

The year has been marked by the Apple - Samsung smartphone patent infringement cases worth billions of dollars between them, going on since 2011 in the US, Japan, Seoul & European countries. The 1st trial, involving the “look and feel of the devices “got Apple a favorable amount of $290 million from Samsung, down from almost a billion dollars of the fine. A ban on the sale of Samsung devices was denied. An appeal got filed few weeks ago against the said decision. The 2nd trial, wherein Apple has made patent infringement claims on software patents like the Siri voice and slide-to-unlock features against Samsung, amongst others, Samsung is contending that all those software patents rely on the Android OS for performance and are therefore conform to uniqueness and not copying as slated by Apple in its claims. The Android OS is owned by Google and hence Google is a direct defendant in the matter. It’s apparent that the Android OS is different from the Apple OS and therefore there can be no software patent infringement claims at all by Apple against Samsung. In light of these facts, Samsung is highlighting evidence to the effect that Apple is actually targeting Google’s Android OS (its main rival) to seek damages against Google. Apple is seeking $2 billion although their claims have been evaluated at $38 million. The final arguments just finished and the jury still remains undecided in the trial face off as i write.

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