Tag Archives | patents

How to Control Inventions and Patents Resulting from Joint Development

“…each coowner [of a patent] is ‘at the mercy’ of its other co-owners.” – Federal Circuit Court of Appeals.

STC.UNM (the licensing arm of University of New Mexico) was at the mercy of Sandia Corp. regarding STC’s patent.

STC sued Intel Corporation for infringement of U.S. Patent No. 6,042,998 (the ‘998 patent) in the case of STC.UNM v. Intel Corp., No. 2013-1241 (Fed. Cir. 2014). STC and Sandia co-owned the ‘998 patent.

But, Sandia refused to join the lawsuit against Intel, “prefer[ring] to take a neutral position with respect to this matter.” This led the court to dismiss the infringement suit against Intel.

STC was at the mercy of Sandia’s refusal to join the lawsuit. Maybe this lawsuit against Intel could have resulted a large money judgement for STC. But, …

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They Have a Patent, Or Do They? Granted Patents & Published Applications

Published patent applications look similar to granted patents. So it is not unusual for a published patent application to be mistaken for a granted patent.

Not every patent application results in a granted patent. So even if a patent application publication exists, it doesn’t necessarily mean that the application will result in a patent.

In this post I’ll point out the differences between a patent application publication in a granted utility patent.

The following image is an excerpt from the front page of granted US Patent No. 8,000,000 (the ‘000 patent):

GrantedPatent

The following image is an excerpt of the front page of the Patent Application Publication No. US 2008/0262568 (the ‘568 application), which later became the granted patent above.

PatentApplicationPublication

The patent application publication is not a granted patent. The patent …

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How to be a Disruptive Inventor: Lessons from Alexander Bell

TheMasterSwitch_TimWu[the inventor’s] significance is enormous…The inventors we remember are significant not so much as inventors, but as founders of “disruptive” industries, ones that shake up the technological status quo. Through circumstance or luck, they are exactly at the right distance both to imagine the future and to create an independent industry to exploit it.

On the same day in 1876 that Alexander Bell’s patent application on the telephone was filed, a patent application by Elisha Gray was filed on the same invention. Sixteen years before this, Johann Philip Reis of Germany presented a primitive telephone to a scientific group. And, Daniel Drawbaugh, a Pennsylvania electrician, claimed that by 1869 he had a working telephone in his house.

The story of the invention of the telephone is similar to other invention stories …

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Childhood Hands-on Play an Indicator of Furture Creativity

Play_StuartBrown“Unlike their elders, the young engineers couldn’t spot the key flaw in one of the complex systems they were working on, toss the problem around, break it down, pick it apart, tease out its critical elements, and rearrange them in innovative ways that led to a solution.”

Scientists and engineers at Cal Tech’s Jet Propulsion Laboratory (JPL) have over the years invented and designed major components of manned and unmanned space missions. In the 1990’s, JPL began replacing retiring engineers and scientist that started in the 1960’s. However, while the new hires came from top engineering schools, the new hires were not very good at certain types of problems solving that involved taking theory to practice. What were the new engineers missing?

Stuart Brown’s book Play: How it Shapes the

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Fending Off Competitors with Barriers to Entry: Hard Problems and Networks

BarriersToEntry_HardProblems“If you can develop technology that’s simply too hard for competitors to duplicate, you don’t need to rely on other defenses. Start by picking a hard problem, and then at every decision point, take the harder choice.” – Paul Graham

Patents are not the only barriers to entry. Sometimes the technology can’t be patented, sometimes patent deadlines are missed, sometimes there’s not yet enough money to pursue a patent, sometimes you’re not sufficiently certain whether the invention will be the next big thing so as to justify pursuing a patent. Sometimes your looking for protection instead of or in addition to patents and you already explored the legal alternatives to patenting. What other barriers are there?

Barriers to entry provide a competitive advantage in the market …

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Inventor of Pay-Per-Click and Ad Auction Fails to Patent, Google Profits

InThePlex

We were ready to go public and we’re on fire, revenues going through the roof and all that, and were getting our IP portfolio together for the bankers, and everybody was like, ‘What patents do we have?’ And we didn’t have too many. … All we could do was patent everything else we could think of, a bunch of obscure things like the way we accept bids. These were silly patents, but the real patents would have been worth billions. … we learned our lessons about patent protection.”

said Bill Gross, founder of GoTo, who developed the concept of pay-per-click online advertising and real time auctions for pay-per-click ads before Google. These two concepts were used by Google in its search engine and made Google one of the most profitable …

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Risks of Waiting: Independent Invention & Google PageRank

InThePlexQuestions often arise about the risks of waiting. Waiting to get started, waiting to file a patent application, waiting to launch a product or service, etc. The risk is that someone else is independently working on the same problem or the same idea and beat you to the market or the patent office or both. What’s the chance of someone independently inventing in your space?  It is impossible to know for a particular circumstance, but we do know that independent invention around the same time happens. According to In The Plex: How Google Thinks, Works, and Shapes Our Lives, Larry Page of Google was not the only person in 1996 to recognized that the link structure of the internet was the basis for a powerful way to find information on the …

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Eric Waltmire Presenting on IP for Dupage’s REV3 Innovation Center

Rev3On March 11, 2014 at 6:30pm, REV3 Innovation Center of Dupage is hosting me for a presentation on Strategies for Protecting Intellectual Property: Innovation and Branding. Intellectual property plays a role in adding value to most businesses, whether through invention, branding, or the use of other creative works.

My presentation will help business owners, entrepreneurs, and inventors understand how patents and trademarks can be used to protect innovation and business branding. It will provide strategies for protecting intellectual property rights under various scenarios and funding circumstances. Sign up here to attend.

Particularly the presentation will cover the following.

Patents and Invention Protection:

  • What is patentable
  • Patent Searching
  • The U.S. Patent Application Process
  • When to maintain secrecy and when to publicize
  • Seeking Foreign Patent Protection
  • When not to seek
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Mercedes Successful Invalidating Driver Sleepiness Detection Patent

USPat6313749_Fig1The case of Ibormeith IP LLC v. Mercedes-Benz USA, LLC, Dkt. No. 2013-1007 (Fed. Cir. Oct. 22, 2013) is another case where means-plus-function claims were found invalid for lack of an adequate algorithm/structure disclosed in the description of the patent.

Ibormeith sued Mercedes alleging that Mercedes vehicles having an Attention Assist feature infringed U.S. Patent No. 6,313,749. The ‘749 patent is titled, “Sleepiness Detection for Vehicle Driver or Machine Operator.” The ‘749 patent is directed to monitoring conditions affecting or behavior reflecting a vehicle driver’s sleepiness. Then issuing a warning to the driver before driving is unduly impaired.

Sleepiness Warning
The patent discloses monitoring that takes into account sleepiness factors including, as summarized by the court, “natural body-clock (circadian rhythm), the magnitude and number of corrective steering action the …

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Problems with Requiring an NDA Before Pitching Your Invention

At the outset of product / service development there is often a tension between the desire to keep the invention confidential and the desire to know whether there will be sufficient interest in the invention from customers or those who might make and sell it to customers. Therefore the issue arises as to how to protect an invention early in the product development, partnering, or sale process.

There are three ways of proceeding: (1) first file a patent application before any disclosures to third parties, (2) disclose to a third party only after obtaining a signed nondisclosure agreement (NDA), (3) disclose without an NDA or application filed and hope for the best. The first is the most preferred and the last approach is not recommended.

Difficulties with NDAs Before

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