How Do I File for International Patent Protection (PCT Application)?

A PCT application is an international application that allows you to reserve your priority in most countries with a single filing. Once you have a PCT application on file, your application undergoes a form of “preliminary examination” in which the international search authority renders a patentability opinion.  With this opinion, you can choose to enter Patent Examination on a country-by-country basis – one-by-one, or all at once (Europe has a unified patent office for each member of the EU, while Asian countries have separate patent offices).  Any country that is member to the PCT (Patent Cooperation Treaty) must honor the patent priority established by your international patent application, but there is still an examination process.

If you are considering international protection, the PCT application is a good tool to lock down your priority in most of the world with a single filing. Having made this single filing, you will then have 30 months to decide in which countries you’d like to obtain a patent based on your PCT application.   Without a PCT application, you’d need to separately apply for a patent in each country with different rules and regulations, all within 12 months of whichever country you filed in first (assuming that the first-filing jurisdiction is recognized by the subsequent jurisdiction).

If you’re unsure about international patent protection, you can start out with a patent filing in the US.  As soon as you file a formal, non-provisional U.S. Patent Application, you have a period of one (1) year to decide if you want to pursue international patent protection (better known as a Patent Cooperation Treaty (PCT) application). This one year deadline is an important date to consider, as some foreign countries will not grant you patent rights if you’ve publicly disclosed your invention without first filing a patent application before your public disclosure.  Alternatively, you can file a PCT directly without having first made a US Filing.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Do I Need Multiple Patents on the Same Invention?

When submitting an utility patent for a certain use of, for example, optical sensors, can this certain use of the sensor be protected for ALL types of sensors in the same patent? Or would separate applications have to be filed for different types of sensors?

An experienced patent attorney would be able to protect your use of optical sensors without regard to the type of sensor in the same patent application. However, there would be two additional questions that would need to be answered.

Is the use of the optical sensors still novel and non-obvious if you don’t consider the sensor type?  In other words, does the type of sensor have an impact on the novelty of the invention?  If your invention is novel without regard to sensor type, then you can check this question off the list.

Next, does the invention change for different types of sensors?  Or does it stay the same, regardless of the sensor type?  In other words, are there any adaptations that you would need to make your invention for different sensor types?  If so, would one of ordinary skill in the field of your invention be able to determine how to make those adaptation without any inventive input?  If the answer to this last question is yes, then you would likely be able to secure your invention for all sensor types in the same patent application.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Manufacturing Abroad? International Patent Implications for the Early-Stage Company

Do I need international patent protection?

Though the location of manufacture is an important consideration for international patent protection, I would ask: “Where do you plan to sell your product?”  If your product is to be sold around the world, you should be considering international patent protection immediately for several reasons.

Let’s say you are manufacturing in Canada, and selling your product in the US and EU, with a patent-pending status in the US.  If you don’t have patent protection in Canada, or the EU, that means that your product is “fair game” for competitors to replicate and resell in those jurisdictions.  A US patent, if granted, will allow you to prevent competitors from importing and selling your patented invention in the USA, but it won’t give you the ability to enforce your US Patent rights in foreign countries.

If you plan to sell internationally, then you should consider an international patent application today and begin taking the right steps to ensure that your rights are preserved internationally.  If all your considering is manufacturing abroad, I wouldn’t press the issue too much at this stage.

Most importantly, if the international market IS within your future (near or far), there is a HIGH likelihood that you will end up forfeiting your patent rights in foreign jurisdictions if you don’t take the proper steps now under legal counsel.

For instance, while the US allows you to make public disclosures of your invention before filing for patent protection, most other countries will deny you any patent rights if you’ve made public disclosures of your invention before filing for patent protection.  In this scenario, you would need an international patent application on file (or a US application that can be converted to an international patent application within 12 months of its priority date) BEFORE making any public disclosures.

How does an international patent application work?

An international patent application (also known as a PCT application for the Patent Cooperation Treaty) is a standardized procedure of having your patent application examined across the countries that are members to the Patent Cooperation Treaty (that’s most of the economically developed countries in the world).

Here is how the PCT Works. A patent law firm would file a single PCT application for World-Wide (almost all of the developed countries who are member to the PCT) Preliminary Examination.  After Preliminary Examination is complete, the applicant will then have approximately 30 months from the applications priority date present the examined PCT application to the countries in which patent protection is desired. Because the PCT application has already gone through Preliminary Examination before filing, the corresponding time it takes to receive a granted patent in a selected country is reduced (sometimes, it’s faster to get a US patent going the PCT route!).

So, the PCT application is not a ‘world-wide patent’.  It is still up to the country’s Patent Office to grant you a patent on a PCT application, and there are obviously more expenses after the initial filing.  A PCT application simply the easiest way of having a SINGLE recognized application for most of the countries in the world, rather than having to recreate and refile a patent application in every country’s individual language/rules.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Virtual Patent Marking

What is Patent Marking?

Under 35 U.S.C. § 287, a patent owner can only collect monetary reward for the infringement of his patent rights if the patent owner provides adequate notice to the infringer of those patent rights. Failure to comply with the patent marking and notice requirements of US Patent law can be a costly oversight for patent owners.

Physical products may be marked with corresponding Patent Numbers that have been granted on the product.  But what if your product is a virtual product such as, for instance, a computer software, a web-app, a mobile app, or something similar?

In response to these questions, the Recent Patent Law changes permit a patentee to put the public on constructive notice via “virtual marking.”  A virtual marking may comprise a web-page listing a company’s products and their corresponding patents associated with those products.  The web-page must be accessible to a user of those products.

In response to these new laws, SmartUp(R) provides the latest product, such as the Patent Seal(TM), to meet the marking requirements.

(1) Constructive Notice vs. Actual Notice

Under 35 U.S.C. § 287, a patent owner can collect damages for an infringing product only if adequate notice is given of the patent(s) at issue. Adequate notice, as provided by the America Invents Act can come in two forms “constructive notice” and “actual notice”.

Actual notice occurs when an alleged infringer is notified by the patent holder that the infringer’s products infringe on the patent held by the owner.

Constructive notice is occurs when the products are physically labeled with a patent number corresponding to the product.  The AIA permits a patentee to put the public on constructive notice via “virtual marking.” This “virtual marking” is satisfied by the word “patent” or abbreviation “pat.” on the product followed by an internet address at which the patented article is associated to one or more patent numbers.

(2) Complying with the Marking Requirement

A product must be marked with all applicable patent numbers that the patent owner makes, sells, or licenses.  A patent owner must also take “reasonable steps” to ensure that any and all licensees of the patent are marking their covered products.

This includes demanding that any non-compliant licensee the patentee discovers properly mark its product(s). Nevertheless, maintaining 100% compliance by all licensees may not always be feasible. A failure by a licensee to properly mark is thus not necessarily fatal, so long as there is “substantial compliance” with the marking statute. That being said, the patent owner should consistently monitor its licensees’ activities to the extent practicable to ensure they comply with the marking requirements.

(3) Package Mark v. Product Mark

The law provides for alternative forms of marking if marking the product itself “cannot be done,” as stated in the text of the law itself.  Although it is best practice to always mark the product and provide a website with patent details corresponding to the patented product, patent owners may satisfy the marking requirements by marking the product packaging.  Sometimes, the size of the product itself renders marking unfeasible.  Other times, the expense in marking the product is disproportionate to the cost of the product itself.

The language of the statute is strict, stating that marking the packaging is acceptable only if marking the product “cannot be done.” A good way of assessing whether or not the product marking “cannot be done” is to look at third party products and see if those have been marked.  In one legal case, for example, a cable maker was not entitled to certain monetary recovery because it put the patent number on the cable packaging rather than on the cable itself.

(4) Complying with the Marking Requirement

A patent owner who makes and/or sells a product covered by a patent must mark that product with all applicable patent numbers.  A patent owner must also take “reasonable steps” to ensure that any and all licensees of the patent are marking their covered products.

(5) Virtual Marking

Virtual marking satisfies the “Constructive Notice” aspect of the law.  It also provides many benefits over traditional patent marking. The most significant benefit is in the patent owner’s avoidance of the expense and effort required to update and maintain patent information on its products.  It’s much easier to update a “virtual marking” website than it is to undergo the manufacturing process to mark patented products.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Can I Add to My Invention? Continuation Patent Application

What if you come up with ‘new subject matter’ for your invention after you’ve already filed a non-provisional?  No problem – the USPTO accounts for this and allows what is known as “continuation-in-part” (CIP) applications.  CIP applications allow you to expand the scope of your patent application while it’s still pending, without losing the patent priority date you have established for the subject matter of the original or “parent” patent application.  Typically, unless you’re adding a lot of new subject matter in the CIP, they are not as expensive as an originally filed patent application.

Take, for example, that you have two pending provisional applications.  One of the  If you are looking to save money, you can file just a single non-provisonal application that claims priority to both of those pending provisionals.  However, the ‘subject matter’ you enter into examination (known as “claiming”) should only be of one of the provisional applications.  By claiming priority to both the provisionals, you have the entire duration of the examination period (sometimes, up to 3-5 years) to enter into examination (or “claim”) the subject of the second provisional application.  This is a good way to extend the tendency of your applications until you enter development.

For example, as the Business Method patent will not likely change, I would recommend you start a non-provsional filing on the business method. Then, you will have an additional two years to enter the System Patent into examination.  This will give you plenty of time to develop, test, update, implement the system before the non-provisional filing for the system.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Apple’s Latest Patent – Docking Station

Our mission at SmartUp is to enable startups and entrepreneurs to grow and develop their patent portfolios.  That’s why we want to keep our members up-to-date on the most recent patent-filings by tech giants such as Apple, Microsoft and Google – who better to learn from than the best?  These innovators have the resources behind them to develop huge patent portfolios, even if they don’t intend on bringing all of their ideas to market – so don’t expect to see everything they patent to be coming to a store near you.

usd0680544-20130423-d00000Apple’s new Design Patent D680544, entitled “Docking Station,” looks to be focusing on a new docking station for their IPad and IPhone devices.  Based on the claimed figures, it will be a hard shell with a keyboard attached to it.  The accessory does not seem to be fold-able in any way which will probably limit its portability.   It has a power connector in the back to keep your device charged while you are docked.  There is also another connection point in the back that could possibly be used to connect to a monitor.

This design patent indicates that Apple may be trying to capture a market in need of utilizing their apple devices for their personal computing needs.  We saw this earlier when Motorola made a  laptop dock for its Atrix phone.

As our cellphones and tablets have their functionality migrate closer to the power of a personal computer, we are sure to see more products such as these.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Amazon’s New Patent Enhances E-books

E-books are about to be fully loaded with Amazon’s new Patent #8478662 entitled “Customized electronic books with supplemental content”, originally covered by Wired.

fig-5-227x300Their intent is to turn content from an e-book from being fixed for every reader into a system that has individualized supplemental content by using a match making system between readers and contributors.  Sort of like the extra features on a DVD, but, those features will be dependent on your preferences.

They will have both publisher and contributor supplemental content that will be distributed to the user.  The content that the user receives depends on the relationship between the user and the contributors.  Since by definition this means that different users will receive different content, will this take control of the content away from the author?

The threshold where the reader gets fed content from a contributor is based on a couple of factors:

  • Is the contributor considered an expert related to e-books (how this is determined is vague)
  • Is the contributor connected to the reader through social networking
  • Is the reputation of the contributor higher than the competing contributors
  • Does the interests and preferences of the reader match what the contributor has outlined in their profile
  • Ratings of previous content by the contributor
  • Previous consumption of the contributors writing from both the reader and members in the readers social network

The type of content we plan on seeing these contributors produce are alternative storylines, reference materials and annotations. This is going to be a great tool for fan fiction writers, however, it will force them to really take control of their social presence.

While the matchmaking system will make finding relevant content easier they are still leaps behind what some companies are doing to make reading more interactive.   For instance, Wasabi Productions is making a whole slew of interactive children’s books where the reader actually controls the content and not just gets fed something extra.

Coming up we will probably see an ecosystem of contributing writers in a similar fashion to what Amazon does with their third party sellers’ platform.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

Apple’s New Patents and What It Means For Travel

Apple was granted 37 patents recently according to a report from Patently Apple.  Out of the series of granted patents, Patently focuses specifically on the IWallet patents.  Upon examination, we discovered that most of the patents granted today focused more on communication between one mobile device and others.  This includes patents on peer to peer communication and making a single mobile device a hub to send information to the different spokes.  What interested us the most was US patent No. 8,463,286 entitled “Systems and methods for accessing travel services on a portable device” and how it will affect new marketing strategies.

The most important claims in this patent were:

  • A method where the device recognizes when you are leaving and arriving on your trip by pulling data from your calendar.
  • A method for sending notifications when the user arrives either through email, text, voice mail or push notification.
  • A method for determining when the user is travelling by analyzing both the calendar data and when the user turns on and off their phone.
  • A method for a third party or travel service provider to push offers as the user arrives  or departs.

Based on the claims, this patent was likely filed to cover air travel.  Essentially, this will allow for your phone to automatically send a message or notification to your family (or whoever you decide) when you arrive.  While this will save a phone call to your parents when you travel, it also has a marketing play.

Apple specifically points out methods for your travel service provider to send offers or upgrades during your traveling process.  Examples of this could be an upgrade during departure or cab coupons when you land.  This is a natural fit to Passbook which can leverage your travel information. 

Google and Uber have already started building a partnership taking advantage of events marketing.  Released at Google’s I/O conference was information on how they are leveraging your flight information from emails and connecting it with Uber to push discounts pre and post flight.

Just look at the different plays Apple envisions for  in the diagram on the right taken straight from the patent application. Travel providers, restaurants and third parties who target a person getting off and on a plane should start preparing to take advantage of pushing their product on this platform.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

USPTO Issues 700,000th Design Patent

The USPTO recently did a press release about the issuance of the 700,000th design patent.  The patent for the ornamental design for a “Hand-Held Learning Apparatus” was issued to Jason Avery of Berkeley, California and is currently assigned to Emeryville, California-based LeapFrog Enterprises, Inc. (NYSE: LF).

In case you did not already know a design patent protects the physical appearance of a product, including software graphics such as user interfaces and icons.  To determine what is protected in a design patent, you would look at the drawings.  The drawings will contain three types of lines: solid lines, dashed lines, and shading lines.  The solid lines indicate the part of the design that is protected by the patent, the dashed lines indicate ‘optional’ parts of the design that aren’t protected by the design patent, and the shading lines indicate the surface and its texture.

You can find all this information by using the USPTO patent search tool.  Just type “US D700000 S1” in the search field, this will lead you to a plethora of information including drawings and patent claims and methods.

This milestone is significant because it shows the size to which our patent office has grown.  Our Intellectual property system is a catalyst grow growth in innovation. “The design area has increased from twenty five and a half thousand applications in 2009 to just over thirty five thousand filings in 2013” said Deputy Director of the USPTO Michelle Lee .

 TLDR

Leapfrog got issued the 700,000th design patent.  Rate of growth for patent issuance has increased by over 30% in the past 5 years.

About Design Patent Number 700,000
The LeapsterGS™, delivers more than 40 different learning and play experiences for children ages four to nine, and features a hi-res finger-touch screen, and Flash and 3D graphics. The device is ergonomically designed with small children in mind, yet is simple, with bold and fun design features. It stores information about a child’s progress and adjusts game and activity challenges in real-time, for learning adventures that keep kids going on their own path, at their own pace. And select titles also let players customize the curriculum, selecting their own spelling words or mathematics skill sets to load into games, effectively “doing their homework” as they play.

 

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal

What Can a Company Do with Patents?

You assigned the Patent rights to your idea to an entity. What can the entity, as the new owner, do with them? Who in the entity makes the decisions about what happens to your patent and your idea?

The answers to those two questions can vary depending on the surrounding circumstances. To make the differences clear, we can break down the basic and typical scenarios like this

1.Inventor assigns Intellectual Property (IP) rights to an existing employer;
2.Inventor forms an entity and assigns IP rights to it;
3.Inventor contributes IP rights as value to a new or existing entity (such as a new startup), in exchange for equity, where other equity holders are also present.

1. Inventor assigns IP rights to an existing employer

What can the employer do with the IP you assigned to the employer?
1.Use the IP to develop something of value that the company can use or sell.
2.Sell or license the IP rights to a third-party.
3.Hold the IP rights but do nothing with them.

Who can make decisions about what the company can do with the IP you assigned?
•In short: Your boss. Or his boss. Ultimately, if the IP is very important and valuable to the business, the CEO of the company or even the Board of Directors will make the decision.

Typically, an inventor would assign IP rights to his employer simply because he is forced to do so by an employment agreement. Many companies, large and small, who invest in Research and Development (R&D) draft employment agreements to force all IP procured by an employee, in the scope of employment, to be assigned to the company.

This may seem harsh, but consider the employer’s perspective. If an employee uses the resources of his employer (including time paid for, equipment used, and knowledge gained) to develop an idea, the employer may have a legitimate claim in benefitting from such investment. So, if you have an employment agreement with the company you work for, read it carefully and know what it says about your personal IP rights.

Some companies provide bonus compensation for employees when patents are filed on the employees’ behalf. In certain countries, this bonus compensation is mandatory. In the United States, it is not.

2. Inventor forms an entity (with the Inventor as the sole owner) and assigns IP rights to it

What can the entity do with the IP you assigned?
•Anything the inventor wants to do with it. Since the Inventor is the sole owner of the entity, the Inventor can dictate what the entity does or does not do with the IP it owns.

Who can make decisions about what the company can do with the IP you assigned?
•Again, the Inventor, as the sole owner of the entity.

However, if the Inventor hires managers and/or employees to work for the entity he owns, the managers and/or employees can take actions involving the IP that they are authorized to do by the Inventor.

The typical scenario here is that the inventor creates an idea and then forms an entity in the hopes of developing the idea into a functioning business or simply to license the IP rights. The Inventor then patents the idea and assigns the IP rights to the entity that he solely owns and controls.

3. Inventor contributes IP rights as value to a new or existing entity (such as a new startup), in exchange for equity, where other equity holders are also present.

What can the entity do with the IP you assigned?

Just as with the employer example, this entity can also:
1.Use the IP to develop something of value that the company can use or sell.
2.Sell or license the IP rights to a third-party.
3.Hold the IP rights but do nothing with them.

Who can make decisions about what the company can do with the IP you assigned?

Here, the decision about what the entity does with the IP may depend on:
1.A written agreement involving the Inventor, the entity, and the other shareholders. This can be part of the Shareholder/Member/Partner Agreement between the equity holders, or just a separate written contract between these parties. The agreement spells out who makes the decision.
2.The overall ownership percentages that each equity holder owns. The majority of the entity owners decide what the entity does. This can be augmented by the By-Laws for the entity, which dictates how large a majority is required to make a decision involving IP rights (ie. 51%; 75%; Unanimous Consent, etc.)
3.Delegation of Authority. If the entity has a governing Board of Directors that the shareholders or members elect, then the Board would typically decide what to do with the entity’s IP rights. Additionally, the Board or sometimes the entity owners can give authority to single person, such as a company officer to make the decision as well.

In this scenario, it is fairly common for an Inventor to start a business together with other people. Often, the Inventor contributes the idea or even a patent, while others contribute money and/or their personal services.

Such a business can be structured in many different ways. To protect his interests, he Inventor should know how the entity is structured; read and understand the documents involved; and make sure that all agreements and rights are outlined in writing.

In subsequent articles, we will address assigning rights to specific entity types; the decision-making processes typically found in those entities; and the significance of various types of contracts.

If you are interested in more detail related to your situation it is best to speak with an attorney.

Yuri Eliezer heads the intellectual property practice group at Founders Legal. As an entrepreneur who saw the importance of early-stage patent protection, Yuri founded SmartUp®. Clients he has served include Microsoft, Cisco, Cox, AT&T, General Electric, the Georgia Institute of Technology, and Coca-Cola.

yuri

Source: Smartup Legal