LinkedIn

View James Drake's profile on LinkedIn

Monday, November 28, 2011

Full Body Teleportation Patent Application!

Now all we need is the research to make it work!

Here's the link - http://tiny.cc/4kdkz

Checking PAIR, it looks as though the application (filed September 29, 2004) was abandoned back in 2006.  But good luck getting around this prior art!  Of course, the Examiner took the easy route and rejected under Section 101, but he missed the opportunity to cite Star Trek and dozens of other science fiction sources as prior art!

Here's the full rejection for your approval:

10953212

Thursday, November 3, 2011

IP Espionage Report

From Reuters:


More grist for the mill as far as what kind of protection one can expect once IP is exported.  Instructive is not so much the cyberespionage aspect (pretty well understood), but the general mindset regarding foreign IP in these jurisdictions:
• Chinese actors are the world’s most active and persistent perpetrators of economic espionage. US private
sector firms and cybersecurity specialists have reported an onslaught of computer network intrusions that have
originated in China, but the IC cannot confirm who was responsible.
• Russia’s intelligence services are conducting a range of activities to collect economic information and
technology from US targets.
• Some US allies and partners use their broad access to US institutions to acquire sensitive US economic and
technology information, primarily through aggressive elicitation and other human intelligence (HUMINT)
tactics. Some of these states have advanced cyber capabilities.

You should consider whether ongoing training regarding IP security (laptops, mobile phones, etc.) would be useful for frequent travelers to these areas, e.g., tech services personnel.  Such training should definitely look to the best practices shown starting at page 24 of the report.  Keep in mind these important and ongoing cultural shifts:
• Over the next several years, the proliferation of portable devices that connect to the Internet and other
networks will continue to create new opportunities for malicious actors to conduct espionage. The trend in
both commercial and government organizations toward the pooling of information processing and storage will
present even greater challenges to preserving the security and integrity of sensitive information.
• The US workforce will experience a cultural shift that places greater value on access to information and less
emphasis on privacy or data protection. At the same time, deepening globalization of economic activities will
make national boundaries less of a deterrent to economic espionage than ever.
As stated in the State Department's Travel guidance for China:

Security personnel carefully watch foreign visitors and may place you under surveillance. Hotel rooms, offices, cars, taxis, telephones, internet usage, and fax machines may be monitored onsite or remotely, and personal possessions in hotel rooms, including computers, may be searched without your consent or knowledge. 

Here is a link to the report itself:






Monday, July 18, 2011

25 Words You Might Not Know Are Trademarked


1. You might think you’re riding around on a Jet Ski, but if it’s not made by Kawasaki Heavy Industries, it’s just a personal watercraft.

2. Bubble Wrap is probably the greatest contribution made to our society by Sealed Air Corporation, which they rightly trademarked.

3. The term Onesies, referring to infant bodysuits, is owned by Gerber Childrenswear. According to their website, the trademark is aggressively enforced. (Twosies and Funzies also belong to Gerber.)

4. Jacuzzi is not only brand of hot tubs and bathtubs; they also make mattresses and toilets.

5. The Crockpot, a brand name for the slow cooker, was originally developed as a beanery appliance.

6. Fluffernutter is a registered trademark of the makers of Marshmallow Fluff, Durkee-Mower, Inc.

7, 8 & 9. Frisbee is currently owned by WHAM-O, but a legal battle to make this word and several others generic is underway. In 2010, Manley Toys Ltd. challenged WHAM-O, arguing that the terms Frisbee, Hula Hoop and Slip’n Slide have already become generic in the public lexicon. Personally, I think Ultimate Flying Disc sounds cooler than Ultimate Frisbee anyway.

10. Chapstick is a brand name of lip balm produced by Pfizer. In the event that you find yourself enjoying this product too much, websites dedicated to helping Chapstick addicts are available.

11. The perfect time to remind a friend or family member that Kleenex is a brand name for a tissue is right when they are desperately begging you to hand them one.

12. Ping-Pong was trademarked in 1901 as a brand of table tennis products named for the sound the ball makes when it hits the table.

13. On their website, Microsoft suggests that unless you are using their software, your PowerPoint is a “presentation graphics program.”

14. When Q-tips were originally released, they were called Baby Gays. The name was changed to Q-tips—the “Q” standing for quality—in 1926. Although they have changed hands several times since then, Unilever owns the brand today.

15. Two hockey-player brothers designed Rollerblade inline skates from a pair of old roller skates in 1979. They were the only brand of inline skates until the mid-eighties, when several other companies emerged.

16. According to legend, Scotch tape earned its name when a frustrated customer told a 3M scientist to “take it back to your Scotch bosses and tell them to put more adhesive on it.” Today, Scotch tape is only manufactured in one place in the world: Hutchison, Minn.

17. The permanent marker was invented in 1956, but theSharpie wasn’t introduced until 1964. Today, the products are almost synonymous with one another.

18. In 1899, Pearle Wait sold his recipe for Jell-O to Orator Woodward for $450. In 1902, sales for the product were around $250,000. Today, the gelatin dessert is owned by Kraft.

19. Tupperware is a brand that got its name from its creator, Earle Silas Tupper.

20. George de Mastreal invented Velcro when he discovered that burrs stuck to matted dog fur. Today, it is the world’s most prominent brand of hook and loop fasteners.

21. Weed Eater is owned by Husqvarna Outdoor Products.

22. Don’t ask BIC what’s in their line of correction fluid. The exact ingredients of Wite-out are confidential.

23. Johnson & Johnson manufactured gauze and adhesive tape separately until Earle Dickinson had the idea to combine them to create Band-Aids for his accident-prone wife.

24. The Zamboni is an ice resurfacer named after its inventor, Frank Zamboni.

25. TASER is a trademark of TASER International, and shouldn’t technically be used as a verb. To be fair, “Don’t hit me with that electroshock weapon, bro!” is probably hard to shout under duress. Bonus fact: TASER is an acronym. It stands for “Thomas A. Swift’s Electric Rifle.”

Saturday, June 11, 2011

Official Signs and Emblems

Jane Lambert over at the NIPC Law Blog has an interesting post regarding the rejection of an attempted registration of a heraldic mark by a descendant of the House of Hanover.  Included is a nice overview of the origins of the House of Windsor:

Before I go into the facts of the case it is worth reading the Wikipedia articles on the House of Hanover and theHouse of Windsor for some background. It will be seen that the link with Hanover was broken when Queen Victoria acceded to the throne. The royal family changed its name from Saxe-Coburg and Gotha to Windsor at height of the First World War - just about the time of the Bolshevik revolution in Russia. The current head of the House of Hanover is Ernst August V, Prince of Hanover, the third husband of Princess Caroline of Monaco.
The mark that Monsieur August attempted to register looked like this:


Unfortunately, he ran afoul of Article 6ter of the Paris Convention, which protects:
armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view.
 Now this is interesting.  Armorial bearings and other heraldic emblems have been around for hundreds of years, and have likely changed appearance and/or ownership many times in the course of their history.  Article 6ter accounts for this by providing some exceptions to the blanket prohibition against registering such emblems as trademarks, but the vast history of these emblems seems to insure that some inadvertent registration attempts will be made.  I will, absent contrary evidence, assume that Monsieur August intentionally looked to register this mark since it was his family's ancestral coat of arms.

How does one avoid this problem?  Similar to conventional trademark registration, WIPO provides a searchable database of (at the time of this writing) 2831 documents detailing protected emblems.  Of those 2831 documents, the United Kingdom has 47 entries and the United States of America has 117, including the seals of each state.  WIPO publishes a quarterly circular of new additions to the list.  The most recent circular, published March 31, 2011 can be accessed here.  So, the next time you are looking to become the next Versace, it may behoove you to check these emblems and hallmarks first!  

Friday, June 3, 2011

Inequitable Conduct Defense after Therasense

There have been many opinions expressed concerning the holding in last week's Therasense decision.

Patent Prospector believes that it eviscerates the duty of candor at the heart of Rule 56, entitling his opinion "Deep Six to Rule 56".

Dennis Crouch over at Patently-O is more circumspect and merely states that the Therasense decision "raises the bar" for proving inequitable conduct and, thus, invalidating a patent on which an infringement action is based.

****UPDATE: Jason Rantanen has a draft paper on the long-term fallout from Therasense here.

As a refresher, the inequitable conduct defense evolved from the doctrine of unclean hands.  As stated by the CAFC in Therasense:
As the inequitable conduct doctrine evolved from these unclean hands cases, it came to embrace a broader scope of misconduct, including not only egregious affirmative acts of misconduct intended to deceive both the PTO and the courts but also the mere nondisclosure of information to the PTO. Inequitable conduct also diverged from the doctrine of unclean hands by adopting a different and more potent remedy – unenforceability of the entire patent rather than mere dismissal of the instant suit.
In line with this wider scope and stronger remedy, inequitable conduct came to require a finding of both intent to deceive and materiality. Star Scientific Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1365 (Fed. Cir. 2008). To prevail on the defense of inequitable conduct, the accused infringer must prove that the applicant misrepresented or omitted material information with the specific intent to deceive the PTO. Id. The accused infringer must prove both elements—intent and materiality—by clear and convincing evidence. Id. If the accused infringer meets its burden, then the district court must weigh the equities to determine whether the applicant’s conduct before the PTO warrants rendering the entire patent unenforceable. Id.
The CAFC decided to use the Therasense decision to correct what it perceived as a fluctuation in the standards of intent to deceive and materiality.  Accordingly, the CAFC set forth a new, bright line standard as follows:

Intent: For the element of intent to deceive the USPTO, the Federal Circuit now demands evidence of a “deliberate decision” to deceive.  Focusing on the failure to submit material prior art, the court held that the intent element requires “clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it. Proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” When circumstantial evidence is used, intent to deceive must be the “most reasonable inference".

Materiality: For the element of materiality, the Federal Circuit now demands evidence of “but-for materiality.”  In other words, the court must find that, but for the deception, the PTO would not [should not] have allowed the claim.  “In making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction.”

Exceptions: As a major exception, the court here held that in cases involving affirmative egregious misconduct, but-for material need not be proven.

Unenforceable:  Even when material and intent are proven, the court held that a patent should only be rendered unenforceable due to inequitable conduct “where the patentee’s misconduct resulted in the unfair benefit of receiving an unwarranted claim.”  As in eBay v. MercExchange, this equitable analysis is intended to serve as a substantial requirement that limits the discretion of district courts.


The upshot of the Therasense decision is that the new rules for inequitable conduct practically ensure that only egregious and careless practitioners will be held accountable.

International Standards:


Europe - Note that EPC Rule 141 (amended January 1, 2011) requires that the applicant provide a copy of the results of any search that was carried out on a priority application when filing a convention European application or when entering the regional phase in Europe. (If the results are unavailable they must be filed “without delay after such results have been made available”.)  As a practical matter, there are likely no consequences to not filing.


Japan - The official rules can be found at JPO web site. However, the JPO system requirements are not widely recognized so that many applicants do not follow it. This is because negligence of the duty to disclose prior art in practice has no effect on the validity of the patent.

How does this affect your IP strategy?

1.  It is unlikely that this decision will affect how most firms file and prosecute patent applications.  However, it is possible/likely that less scrupulous competitors (and/or those who are not based in the U.S. and have no existing processes in place to provide complete disclosures of known prior art) will be able to issue patents for applications that do not meet patentability requirements without the threat of cancellation of the patent to worry about.  Sloppiness and negligence will be excusable.

2.  This should instigate a discussion of your competitive intelligence processes and how competitive prior art is communicated within the organization.  For example, it is typical within many businesses to do an in-depth prior art search in advance of even putting together an invention disclosure.  This typically generates a large number of references that are then cited in the patent application.  Many references are included to avoid an allegation of failing to cite material prior art.  Application of the "but-for" standard may allow for the citation of fewer, more targeted references that require less discussion in order to distinguish the new application over the prior art.

3.  Where a firm is a defendant in an infringement action, assessments regarding the strength of one's litigation position should place less weight on the value of an inequitable conduct defense.  In turn, this will put a greater premium on finding references that invalidate all references, since the "nuclear" threat of complete patent invalidation is now highly unlikely.

4.  Reexaminations may become a more useful offensive tool for both litigants and the courts.  One can envision District Court judges ordering litigants to have an undisclosed reference go through a "Therasense hearing" similar to the Markman hearings for claim construction, before ruling on whether the "but-for" standard is met.

Supreme Court Sets High Bar for Finding Induced Infringement

Hot on the tail of the Therasense decision and its rewriting of Rule 56, comes the Supreme Court in Global-Tech Appliances, inc. v. SEB S.A., No. 10-6, May 31, 2011.  Unlike Therasense, this ruling relates to the knowledge requirement in induced infringement under 35 U.S.C. 271.

Global Tech, a Hong Kong appliance maker, sold a deep fryer to 3rd parties that was an alleged copy of one patented by SEB.  SEB subsequently sued Global Tech for actively inducing purchasers of the fryers to sell or offer to sell them in violation of SEB’s patent rights. The jury found for SEB on the induced infringement theory, and the District Court entered judgment for SEB. On appeal, the Fed. Cir. affirmed, ruling that inducement to infringe may be established without actual knowledge of the patent through a showing of a "deliberate indifference" to a risk that the patent does in fact exist.

The Court determined that induced infringement under 271(b) requires knowledge of the patent that is infringed, and "deliberate indifference" (or recklessness) to the existence of the patent is insufficient to confer liability.  However, defendants cannot escape liability if they engage in "willful blindness" towards the patent. In explaining this standard, the Court looked to criminal law culpability standards, in stating:

While the Courts of Appeals articulate the doctrine of willful blindness in slightly different ways, all appear to agree on two basic requirements: (1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact.  We think these requirements give willful blindness an appropriately limited scope that surpasses recklessness and negligence. Under this formulation, a willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts. See G. Williams, Criminal Law §57, p. 159 (2d ed. 1961) ("A court can properly find wilful blindness only where it can almost be said that the defendant actually knew"). By contrast, a reckless defendant is one who merely knows of a substantial and unjustified risk of such wrongdoing, see ALI, Model Penal Code §2.02(2)(c) (1985), and a negligent defendant is one who should have known of a similar risk but, in fact, did not, see §2.02(2)(d).

In remanding to the CAFC for a finding under the proper standard, the Court summarized its findings regarding the error of the lower court as follows:

The test applied by the Federal Circuit in this case departs from the proper willful blindness standard in two important respects. First, it permits a finding of knowledge when there is merely a "known risk" that the induced acts are infringing. Second, in demanding only "deliberate indifference" to that risk, the Federal Circuit's test does not require active efforts by an inducer to avoid knowing about the infringing nature of the activities.

Sunday, May 29, 2011

Disney Withdraws Trademark Application for "Seal Team Six"

Too bad, I would love to have seen the smackdown of Disney v. U.S.A., especially since

"Navy spokeswoman Amanda Greenberg said the Navy is "fully committed" to protecting its trademark rights."


Tuesday, May 17, 2011

Pilot Pre-Examination Interview Program Expanded to All Art Units

Read the full story at Patently-O.  Key points:

1.  The pilot program will run for one year from May 16th, presumably with re-evaluation at that time.

2.  To be eligible, the pending application must not have more than three independent and twenty total claims all directed to a single invention (i.e., not subject to a restriction requirement).  


3.  To participate, an applicant must electronically file a request for a first action interview at least one day before an Office action is entered into PAIR.  An application that does not originally fit within the requirements can become eligible through a preliminary amendment.


The big enticement?  A better shot at a first action allowance and a drastically foreshortened prosecution time.

Tuesday, April 26, 2011

Fast Track Sidetracked

In case you were planning on petitioning for so-called "Track One" examination on May 4th, hold on for a while.

The first bullet point:


  • Track One of the Three-Track program, which offers expedited patent examination and was scheduled to go into effect on May 4, 2011, is postponed.


Monday, March 14, 2011

Hide Your Embarrassing Love of Comics from a First Date

Microsoft knows that women won't just date you because of that mint condition New Mutants #98 in your closet!

Here is the best quote:

Furthermore, this unfortunate situation can arise even though Ashley and Ross are colleagues or otherwise familiar with one another, but have previously never broached the subject of comic books for the very same (or similar) reasons why they may not detail this information in a profile about themselves. It is further quite likely that, given the knowledge of the existence of a shared affinity for comic books, either or both Ashley or Ross might be willing to share certain information (e.g., the affinity or one's identity in connection with the affinity) with the other that would otherwise not be shared publicly or with other parties.

Sunday, February 13, 2011

How do I patent a good idea and develop it into a sellable product?

First, congratulations on your new idea!  Patents are designed to protect new ideas or “intangible property”.  It’s intangible, because unlike a car or real estate or just about anything else, you cannot touch it.  Initially, it is merely a neural spark or “flash of genius”.  As much effort as you may have put into coming up with that idea, answering the question of what to do with it is even harder.

We need to begin by splitting up the question.  Contrary to what late night infomercials would have you believe, patenting a good idea and creating a sellable product are two entirely different processes which, at the best of times, only partially overlap. 

Make sure that a patent is even the right protection for what you have conceived.  Other protections are available, such as trademarks (which may include words, slogans and logos), trade secret (like the formula for making Coca-Cola) and copyright (for works of authorship like sculptures, plays, books, movies, paintings, etc.).  In addition, there are sub-categories of patents, including plant patents (surprisingly, these protect plants!) and design patents (to protect the unique appearance of an object). 

Maybe no protection at all is needed.  The book, Don’t File a Patent by John D. Smith discusses this proposition at length.  The key question is what does a patent do and how do you plan to use it.  Keep in mind that a patent is an “exclusive right”.  This means that it gives you the ability to exclude others from doing things, which mostly amounts to preventing them from copying your claimed invention. 

Just as importantly, a patent does not give you the right to do anything!  Just because you patent a new idea doesn’t mean that your practice of the invention does not infringe the rights of other patent holders.  Most likely, your idea is an improvement on earlier work and that work may still be covered by patent protection.  This is important in determining whether you or the company you license or sell your idea to has “freedom to operate” the invention.

Most likely, what you will be seeking to obtain is a utility patent, which protects ideas for a term of 20 years from the filing date in the United States and most other jurisdictions. 

Did I mention that you have to issue a separate patent application in every country where you want to protect your idea?  The costs for covering an idea are staggering and would be overwhelming for most individual inventors, running into the hundreds of thousands of dollars if you were to issue a patent in every country in the world. 

This is where having a filing strategy prior to putting together an application is important.  Consideration of where your customers live, where your competitors are, relative protections offered by patents in various countries and similar market research will inform the decision of where you will ultimately patent your idea.

Fortunately, there is a way to hedge your bets if you are just starting out and do not yet know whether this will be a big hit.  The Patent Cooperation Treaty (PCT) allows you to use a single filing to establish priority worldwide.  The cost of filing a PCT application is about the same as a normal filing in the United States alone and will give you about a year to decide on which specific countries you want to pursue for patent protection.

Because of all of the above, as well as the nearly impenetrable prosecution process (“prosecution process” is not nearly as ominous as it seems – it is simply the process of obtaining a patent) discussed below, it is often prudent to employ a registered patent agent or patent attorney to represent you.  The few thousand dollars charged by these professionals up front can potentially save you millions down the road.

However, let’s assume you don’t’ have the scratch to hire a patent professional.  There are a number of guides available to walk you through the patenting process.  One of the best is Patent It Yourself by David Pressman. 

In order to patent an idea, it must be “patentable subject matter”.  Don’t be put off by the legalese, this only means that you cannot patent laws of nature, perpetual motion and the like.  The statutory language can be found in Title 35 of the U.S. Code, a copy of which can be found here.  Start with section 101 as a roadmap for the general patenting process.

Assuming that your idea is, indeed, patentable subject matter, you must now show that it is useful and nonobvious in light of what has been done in the past.  No reinventing the wheel! 

In addition, the invention may not be publicly disclosed before you file the application.  In the United States, you have a one year grace period from the time when you disclose an invention until you have to file your application, but this does not apply to most of the rest of the world. 

With the exception of Taiwan and several smaller jurisdictions, most of the world operates under the “absolute novelty” standard, which means that once you publicly disclose your idea, you may no longer patent it.  This is where the PCT filing discussed above becomes important.  By filing with the PCT, you essentially are filing an application in every country of the world (with minor exceptions for the few countries that have not signed the treaty). 

You should always file a patent application before making a public disclosure.  Since there is no hard and fast definition of what a “public” disclosure is, it is always better to file an application before any offer for sale, sampling or similar communication with a third party.

Once you get your patent application on file, you can start on developing it into a sellable product.  There are many books and courses that can teach how to test and develop a new product, so I will limit this discussion to how patents can help with this process.

It is important to realize that most companies have a strict policy against accepting unsolicited ideas.  Sending a letter with your idea to the VP of marketing will normally result in receiving in return a letter from his in-house attorney stating that the idea was unread and that the company does not accept unsolicited offers.  This protects you and the company, since you do not want your idea stolen and they do not want to be accused of stealing, especially if they already are working on a similar project.

Many of the infomercial “invent it yourself” companies try to get around this by providing you with a form secrecy agreement.  These are often one-sided and will not be signed by any company or individual within the company, especially if you hand it to them right before your pitch.

A better approach is to identify a company that produces products similar to what you have invented and arrange to discuss your idea once you get a patent on file.  After the patent has been filed, you can refer to your idea as “patent pending”.  A filed patent application gives you the ability to then contact others and discuss your claimed invention without the need for a secrecy agreement or similar protection.  It also establishes your seriousness and sophistication when it comes to protecting intellectual property. 

From here, you can begin to discuss the nuts and bolts of a commercial agreement that will take your sellable idea to market.  There are myriad ways in which you can accomplish this, including using a third party manufacturer to make your product and then marketing it yourself or selling your idea to others.  Often the former approach will yield the greater financial reward in the long run, but if you do not have the resources to pursue that avenue, you may sell your idea to another company by selling or renting your patent and related know-how.

Selling your patent is called an “assignment” and the inventor is usually paid a lump sum up front and then walks away from the process.  Renting the patent is called a “license” and is typically composed of a lump sum, ongoing royalty payments based on how muc product is sold or a combination of the two.  Negotiations for patent licenses and assignments can be very lengthy especially if the buyer wants to complete his or her “due diligence”.  You can think of due diligence as similar to a home inspection and this will often include a reexamination of the state of the art to assure freedom to operate, as well as checking to see whether you have full ownership rights to the patent.  Like obtaining a patent, negotiating a patent assignment or license is tricky and you should consider retaining an attorney to help you at this stage.