Archive for December 2013

Inventor's Disclosure Affects Patent Costs and Patent Quality

Importance of Inventor’s Disclosure

The inventors’ disclosure dramatically affects both the quality and cost of the patent application.  Drafting a patent application involves translating technical information into a legal definition.  Translating new technology into a patentable invention relies on the inventor’s disclosure.  The inventor’s disclosure serves to convey information about the new technology to the patent professional.  The patent professional uses the inventor’s disclosure to draft patent claims.
Many systems exist for preparing a disclosure.  For example, many organizations (like universities) have invention disclosure forms.  These forms aim to collect relevant information from the inventor.  These forms can be structured as an “inventor questionnaire” having questions teasing out relevant information about the invention.

Benefits of Preparing a Good Invention Disclosure

Efficiently providing comprehensive, organized, useful information to the patent professional has two key benefits.  First, it dramatically improves the quality of the resulting patent application.  Second, it lowers patent application drafting costs by reducing the amount of attorney time spent collecting and organizing information about the invention.
Regardless of how the disclosure form is structured, the goal remains the same.  The inventor’s disclosure should present relevant information to the patent professional in a useful way.  With this goal in mind, I have listed some information that inventors could organize before contacting a patent professional.  Having this information prepared would make attorney time more productive.

Invention Disclosure: What is the Invention?

What is the invention?  This is the critical question.  Here are some other questions that cut towards defining the invention:

  • What words should an inventor use to describe the invention?
  • How would someone best perform a keyword search for the invention?
  • What alternative searches would also describe the invention?
  • How would you list the components of the invention?
  • How would you describe it in 5 words? 10 words? a paragraph?

Inventors often view the invention as their commercial embodiment.  The patent professional should work with the inventor to find words that accurately describe that commercial embodiment.  The patent professional should also work with the inventor to find words capturing the inventor’s broader contribution to the state of the art.  What are the far-reaching implications of the invention?  By considering the invention’s broader contribution, the patent professional should work to grow the invention.

Invention Disclosure: What is the State of the Art?

When defining an invention, it is useful to understand the prior art.  Understanding the prior art should help the patent professional define the invention more broadly.  Here are some prompts that attempt to unpack the state of the art when the invention was made:

  • What technology area does the invention fit into?  Many inventions fit into a variety of different technology areas.   List them all.  The United States Patent and Trademark Office (“USPTO“) organizes technology into Art Units, Classes, and Subclasses.  These are good examples of technology areas.
  • What was the state of that art when the invention was made?  (“When the invention was made” means when the inventor first conceived of the invention).
  • Without the benefit of your invention, what would someone in your field use as an alternative?  How many alternatives exist?  How would the results differ by using an alternative instead of using the invention?
  • What sort of person would ordinarily invent technology of this kind?  (Describe the skill of someone in this technology area).  What is the level of skill in this art?  Education?
  • What problem existed before the invention?
  • What need existed that made the invention beneficial?

Invention Disclosure: What are the Differences?

Understanding the differences between the invention and the prior art is critical to drafting the patent claims and arguing for patentability.  Here are some prompts for uncovering the differences:

  • What makes the invention different from the state of the art?
  • When the invention was made, how was it different from anything before it?  Here, I find it useful to create a Table of Differences.  That Table should list the most relevant technology existing at the time of invention.  For each reference, the inventor should describe how the invention differs.  These differences are ultimately important to the patentability of the invention when the claim is evaluated for obviousness.  Understanding all of the differences when drafting the claims allows the inventor to submit claims that define the invention by emphasizing its patentable features.

Invention Disclosure: Evidence of Patentability?

During patent prosecution, the patent examiner will most likely question the patentability of the claims.  (This will come in the form of a “rejection.”  The patent professional can often find good arguments to overcome the rejection by considering evidence of patentability.  Below, I have listed seven types of evidence that could help the inventor’s arguments for patentability.  This evidence of patentability should be provided in the inventor’s disclosure:

  1. Skepticism by Experts – When the invention was made, did experts in the field question whether it was workable?
  2. Teaching Away – Before making the invention, did members of the relevant art discourage pursuing the invention?
  3. Longfelt Unmet Need – Prior to making the invention was there a long felt need for it?
  4. Failure by others – Did other people in the art fail to make the invention prior to the inventor’s success?
  5. Copying – Since making the invention, has it been copied by others?
  6. Commercial Success – Was the invention a commercial success?
  7. Licensing – Have others contacted the inventor to license the invention?

JPMorgan 'Bitcoin Killer' Patent Not Allowed (Yet)

JPMorgan Has No ‘Bitcoin Killer’ Patent

US Patent Publication Number 2013/0317984 as recently received some attention because of it's similarity to the Bitcoin concept.

US Patent Publication Number 2013/0317984 as recently received some attention because of it’s similarity to the Bitcoin concept.

CNN recently published a video post about Bitcoin.  The video featured Ron Paul, who suggested that alternative currencies become more attractive during times when the dollar is under attack.  Bitcoin has gained some recent popularity as one such alternative currency.  Some have suggested that Bitcoin could present a“new paradigm for effectuating electronic payments,” ultimately rivaling present-day services like Western Union, etc.
Recent media attention for Bitcoin suggests that JPMorgan Chase has patented rival technology seeking to compete with Bitcoin.  This is not true for a few reasons.
First, JPMorgan does NOT have a patent. JPMorgan has a pending patent application with claims that are potentially relevant to Bitcoin.
Second, the patent application of interest is old news.  The application dates back over a decade, which precedes the advent of Bitcoin.  This strongly undermines the notion that JPMorgan Chase is chasing Bitcoin’s technology.
Nevertheless, the current scenario raises the interesting question as to whether JPMorgan’s application could potentially cover Bitcoin’s technology when that application issues into a patent.

No Patent for JPMorgan— Only a Patent Application.

The news media appears to confusion a patent with a patent application.
The accompanying CNN article noted that JPMorgan Chase “has patented a digital payment system that could rival Bitcoin.”   CNN’s article continues to explain that the digital payment system “includes digital wallets, the ability to transfer money to anyone and anonymity too.”
The Telegraph also reported on the story.  The Telegraph ran the following headline: “JPMorgan files patent for ‘bitcoin killer’ currency.”  The Telegraph further explained: “The largest bank in the US, JPMorgan, has filed a patent for an electronic currency with many similarities to bitcoin.”
JPMorgan Chase does not have a patent.  They only have a patent application.  This is an important distinction.  Anyone can file a patent application for a new technology.  That application matures into a patent only after it is examined by a patent examiner during a multi-year process called patent prosecution.  During patent prosecution, the applicant and the examiner argue about the claims and eventually agree on a set of claims that defines a patentable invention.
JP Morgan’s Patent Application is only at the very beginning stages of patent prosecution.  It is waiting to be examined at the United States Patent and Trademark Office.  The application of interest is US Patent Application Number 13/958,881. This is not an issued patent.  CNN, the Telegraph, and other news organizations are probably reporting on the patent application because it published on Nov 28, 2013.  Apparently that makes it a current event in the eyes of the media.

JPMorgan’s ‘Bitcoin Killer’ Patent Application is Old News.

Notably, the application is old news–more than a decade old.  The “Bitcoin killer” application is actually a continuation of an early patent application that was filed on Feb. 3, 2000.  The application claims priority back to provisional patent applications filed as early as May 3, 1999.  Accordingly, it is highly unlikely that JP Morgan filed this application with any sort of motivation to rival then-non-existant Bitcoin.  However, this chronology gives rise to some interesting questions:
Could Bitcoin’s technology infringe on JPMorgan’s patent claims (when they issue)?
As discussed above, JPMorgan’s claims have not issued.  (They need to be examined before they issue).  However, what if the issued claims cover Bitcoin’s technology?  That scenario could be a Bitcoin Killer.

JPMorgan’s Pending Claims

JPMorgan’s current patent application has three independent claims.  One example is reproduced below in blue.  The other claims (along with the description) can be accessed by following the link to JP Morgan’s Patent Application.
Example Claim:
155. A computer-implemented method of providing an anonymous payment from a mobile device to a payee device to enable an electronic payment between a payer and a payee without provision of an account number or name from the payer, the method comprising:
storing, in a computer memory at a host server, payer information and instructions; and
accessing the computer memory using a computer processor to retrieve the payer information and instructions and executing the instructions to perform steps including:
receiving at the host server, a bill payment message from the payee, the bill payment message including a transaction ID;
transmitting the transaction ID to the payer, the transaction ID permitting the payer to initiate transmission of a payment amount;
generating a payment authorization message from the payer, the payment authorization message including a payment amount to be tendered to the payee and the transaction ID, the transaction ID allowing identification of the payment, thereby enabling redemption of the payment amount after the payee receives the transaction ID; and
transferring the payment amount from an account associated with the payer to an account associated with the payee.

Better Technology is Probably Patentable

Better Things are Patentable

In a previous article, we fielded the perpetual question of what can I patent?  Although there are a variety of technical legal tests for patentability, a simple test simply asks whether the inventor made something better.  A better mousetrap is probably patentable.
Patent law allows an inventor to patent “anything under the sun made by man.”  But, the invention must be new and not obvious.  Understanding what makes an invention “new” is relatively straightforward:  An invention is “new” when it differs (in any way) from the existing technology.  However, the inventor only gets one year to file a patent application after disclosing the invention. If you ever need new technology for your business, then consider using this business sms service to really improve workflow. 
The most important hurdle to getting a patent is showing that it was not obvious at the time it was invented.  This area of patent law is probably the most confusing.  The legal test for nonobviousness comes from a 1966 Supreme Court case.  See Graham.  In short that test requires using all available evidence to step inside the inventor’s mind at the moment of invention.  Practically speaking, accurately elucidating a person’s thoughts years after the invention is difficult.
Courts, patent professionals, and legal scholars have always struggled with the obviousness doctrine.  Supreme Court Justice Scalia has called the doctrine “gobbledygook.”  Countless others have expressed difficulty with consistently applying the “test” for obviousness.

Something Better was probably Not Obvious.

Asking whether an invention was better provides a useful back-of-the-envelope test for patentability.  Was the technology better when it was invented?  If it was better, it is probably patentable.  Here’s why:

  • A better technology implies that it is somehow different from the existing technology.  (Only different things can be better.  Otherwise they would be the same).
  • A truly better technology is unlikely to be “obvious.”  If it were obvious, why didn’t someone already do it?  In today’s world of rapid communication and innovation, better technology rarely lies dormant.  If someone invents a better mousetrap or a better website, that improved technology is quickly exploited.

Although the Better Test does not hold any legal significance, it does provide a simple framework for understanding patentability. (For the legal test see Graham).
For an inventor new to the patent system, the Better Test test should avoid contacting a patent attorney prematurely.  Generally speaking, it’s not worthwhile to pursue patenting something not better than the prior art.  Additionally, focussing on the points that makes an invention better will facilitate communication between the inventor and the patent professional.  (I often ask clients to list the most similar technology with a brief explanation of what their invention is different and better).  See Table of Differences.  Focusing on these points of innovation helps to draft strong claims that are allowed by the patent office.

Cooking with Science in Wired Magazine

Cover of Wired Magazine's October 2013 issue, featuring the Science of Cooking.

Cover of Wired Magazine’s October 2013 issue, featuring the Science of Cooking.

Cooking with Science

Wired Magazine’s October 2013 Issue featured the topic “Cooking with Science.”  This issue jumped out at me because of our recent articles on patenting food, flavors, and beer.  In those articles, we noted that relatively few foods or beverages are patented.
The lack of food patents seems somewhat surprising in view of two things: (1) the food & beverage industry is immensely important; and (2) food & beverage products fall squarely within the “composition of matter” category of patentable subject matter.  Furthermore, new methods for making food and culinary equipment would give rise to patentable inventions.

Chef David Chang Discusses the Science of Cooking

In the October 2013 print issue of Wired, the authors discuss cooking with science on pages 136-150.  The most comprehensive piece is written by David Chang, Chef and Founder of the Momofuku Restaurant Group.  Here’s what Mr. Chang had to say about cooking with science:

I’ve also noticed a growing disconnect between the role of food science and today’s food culture. Cooking is a scientific process, after all, but calling food “processed” has become a slur. It’s almost as if we are expected to hide the science that goes into our food. This wasn’t always true: If you look at advertisements from the 1940s and ’50s, they celebrated that the latest chewing gum used artificial sweeteners and flavoring agents, because that was the hot thing. Today, though, everything is supposed to be “natural,” simple, old-fashioned. We’ve been brainwashed to believe that science is scary.

I think Mr. Chang has a point.  Somehow society has developed a mental block about viewing food as chemistry.  People are horrified about having “chemicals” in their food.  But, technically speaking, the food we eat is made 100% of “chemicals.”  Pick any food.  That food can be analyzed as a chemical composition.  The term “chemical” simply  means very small.  Chemistry refers to the way things look at the molecular level.  It refers to the atoms and molecules that bond together to make up the macroscopic world that we see and touch.

The Food—Technology Disconnect in Patent Law

Much like the consumer’s boundary between cooking and chemistry, the food industry imposes a similar boundary when it comes to patenting the technology.  Very few food innovations are patented whereas other chemical disciplines frequently utilize the patent system.  (For example, the materials and pharmaceutical industries make a habit of filing patent applications).
I expect that new advances in food will soon be viewed appropriately as “technology.”  Notably, Wired Magazine has already displayed some forward thinking by placing “cooking” in the same sentence as “science.” That intellectual leap will lead to tremendous opportunities as people in the industry make the transition from just cooking to inventing.
Patenting a new food technology would give the inventor the exclusive right to make, use, or sell the innovative food.  Patenting a food would allow the inventor to demand royalties from copyists who wish to utilize the invention.

Unmet Need Illustrated by Fast Company's Article on Pikarski

Unmet Need Indicates Patentability

Showing that an invention satisfies an unmet need bolsters an inventor’s case that the invention is patentable.  To be patentable, an invention must be both new and not obvious.  To be “new,” the invention must differ from anything done before.  This test for “new” is fairly simple—any difference makes the invention new.  The test for non-obviousness is less straightforward.  To be “not obvious,” the invention must provide a nontrivial advance beyond the prior art.
Evidence that an invention satisfies an unmet need support the position that the invention is patentable.  Solving an unmet need indicates that an invention provides a significant contribution to a technology space.  Accordingly, showing that the invention fulfilled an unmet indicates that it was not obvious.  Think about it: Existing needs do not linger long in an age where people seek to develop profitable solutions to those problems.  If the solution were obvious, someone would sell it.

Chaim Pikarski Satisfies Unmet Needs

Recently Fast Company Magazine published article about Chaim Pikarski.  In short, Mr. Pikarski and his team scour for evidence of any unmet need.  According to Fast Company, Mr. Pikarski “has an entire team of people who read reviews on Amazon, looking for moments when people say ‘I wish this speaker were rechargeable.'”  This entire team searches for “features people wish a product had” then they design and make the desired version.
Mr. Pikarski’s genius lies in his recognition that commercial sites like Amazon are “actually giant laboratories.”  Within the virtual walls of these laboratories, Mr. Pikarski “figures out what features consumers want, and then produces them.”  His spirt for making new, better products rings true in his exclamation: “Hey, wait a minute, we’re producing all these products—let’s innovate! Let’s design!”
Unfortunately, Mr. Pikarski’s genius does not yet appear to extend to appreciating the patentability of his innovations.

Satisfying and Unmet Need = Inventing Patentable New Stuff

According to Fast Company Magazine, “Pikarski often talks of his products as if they’re hilariously obvious.”  Mr. Pikarski’s genus is exceeded only by his modesty: “There’s nothing innovative about it,” he says.
Nothing innovative about it?  To the contrary, satisfying unmet needs is about as close to the definition of “innovative” as a person can get.  In the months that follow, I hope that I can find Mr. Pikarski and help him make some more money by using the patent system to protect his inventions.  He should claim these inventions so that he can own the products that he creates.