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Non-invasive Prenatal Genetic Testing Method Not Patent Eligible

NonInvasivePrenatalDiagnosisPatentToday test results from a pregnant mother’s blood can detect characteristics of the fetus, such as genetic defects or gender. The method of detecting such characteristics was found non patent eligible by the Court of Appeals in Ariosa Diagnostics v. Sequenom, Inc., Nos. 2014-1139, 2014-1144 (Fed. Cir. 2015).

In 1996, Drs. Dennis Lo and James Wainscoat discovered cell-free fetal DNA (“cffDNA”) in maternal plasma and serum. This plasma and serum was previously discarded as waste by researchers. cffDNA is non-cellular fetal DNA that circulates freely in the blood stream of a pregnant woman. Drs. Lo and Wainscoat used known laboratory techniques to detect the cffDNA and determine fetal characteristics, such as genetic defects or  gender. U.S. Patent 6,258,540, titled “Non-invasive prenatal diagnosis” was granted on this method. But the Court of Appeals determined that the claimed method was not patent eligible.

Claim 1 of the patent provides:

1. A method for detecting a paternally inherited
nucleic acid of fetal origin performed on a maternal
serum or plasma sample from a pregnant female,
which method comprises

amplifying a paternally inherited nucleic acid
from the serum or plasma sample and

detecting the presence of a paternally inherited
nucleic acid of fetal origin in the sample.

According to the Supreme Court in Mayo v. Prometheus,132 S.Ct. 1289 (2012) to determine whether a patent is directed to ineligible natural phenomena, (1) first its is determined whether the claims at issue are directed to a patent-inelibible concept, and (2) if so, it is determined whether the additional elements of the claim transform the nature of the claim into a patent-eligible application of the natural phenomena. The second step is the search for the inventive concept “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”

It was undisputed that the existence of cffDNA in maternal blood is a natural phenomenon. So the question under step two of the Mayo test was whether the additional steps transformed the claim into a patentable application of the natural phenomenon.

The court determined that amplifying and detecting the cffDNA were well-understood, routine, and conventional activities in 1997. Those activities simply were not previously applied to maternal blood. Since the steps of amplifying and detecting were well know the only new subject matter was the discovery of the presence of cffDNA in the maternal plasma or serum.

As a result, the method patent was found not patent eligible as a natural phenomena under 35 USC 101.

The court recognized that the testing method in U.S. Patent 6,258,540 was a positive and valuable contribution to science and medicine. But that alone was not sufficient to make the method patentable under the Supreme Court’s precedent, which provides “[g]roundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.”

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Speculating in Trademarks is Fruitless: Race to Grab iWatch Fails for Lack of Bona Fide Intent

iWatchThe iPhone was released on June 29, 2007. Six days later on July 5, 2007, watch maker M.Z. Berger & Co. filed a trademark application on iWatch for watches, clocks, and related accessories. Coincidence?

Was the plan to grab up the iWatch trademark and sell it to Apple later? Too bad Apple went with “Apple Watch” instead.

Its a common misconception that filing a trademark application grants rights in a trademark without actually using the trademark. Just file a trademark application and the trademark is yours! No.

Speculating in trademarks without actual use of the trademark is a fruitless endeavor.

Watch maker Swatch AG filed an opposition against the iWatch trademark application. The TTAB, and later the appeals court, sustained the opposition and prevented the registration of iWatch because the evidence showed that Berger did not have a bona fide intent to use the iWatch mark with watches, clocks, and related accessories at the time the application was filed. M.Z. Berger & Co., Inc. v. Swatch AG, No. 2014-1219 (Fed. Cir. June 4, 2015). Instead, Berger merely intended to reserve the trademark.

Trademark rights are only acquired by using the trademark in conjunction with the sale/providing of goods or services. An intent-to-use trademark application can be filed before a trademark is used with products or services, but only if there is a bona fide intent–at the time the application is filed–to use the trademark with the goods/services described in the application. This is where Berger failed with iWatch.

You Can’t File an Application to “Leave All Doors Open” 

Berger ‘s CEO admitted that Berger never intended to use the iWatch mark for anything other than watches, but the application included clocks and related accessories. The paralegal who filed the application for Berger said the the CEO instructed her to register the mark for only watches and clocks, but she included other related accessories to “leave all doors open.”

An application can’t be filed to leave all doors open, you need to have a present bona fide intent to use the mark on all of the goods listed in the trademark application.

So, Berger admitted it did not intend to use the mark on clocks and accessories at the time the application was filed.

Conflicting Stories Don’t Engender Belief

Berger witnesses had conflicting stories about the evidence. For example, Berger presented images depicting mockups of an iWatch. Some employees testified that the images were pictures of actual mockup watches and clocks. But the CEO testified that no mockups were ever made and the the images were generated for the purpose of advancing the trademark application.

Also, Berger’s VP testified that he discussed the iWatch mark with a buyer. But the CEO testified that the iWatch had not been discussed with anyone outside of the company.

The court concluded it was proper to consider all circumstances regarding the Berger’s alleged intent to use the mark, including those facts that would tend to disprove that Berger had the intent. The TTAB and the court ultimately concluded that Berger did not have a bona fide intent to use the iWatch mark on watches.

Keep Evidence of Intent

Berger did not present any physical or documentary evidence relating to the iWatch watch beyond the images submitted to the USPTO.

Further the CEO testified:

Q. Okay. And how did you come up with that mark?

A. I think that I came up with the mark because of the advent of technology and information gathering around the globe over the last I guess few years, I thought that if we decided to do a – either a technology watch or information watch or something that would have that type of characteristics that would be a good mark for it.

The “if we decided” language indicates that Berger did not have a present intent to use the iWatch mark because Berger had not made a definite decision yet to proceed with a technological watch.

Further, Berger employees testified that Berger had not previously made a watch with technological features and admitted that they never took any steps toward developing such features at the time of filing the application or in the 18 months that followed.

A bona fide intent to use a trademark requires more than a subjective belief/intent. It “requires objective evidence of intent.”

Therefore, you should keep evidence (documents, models, samples, prototypes, communications, etc.) to show that you had an intent to use the trademark on all of the goods listed in the application at the time the trademark is filed. You should also keep such evidence that develops after the time the application is filed to show your efforts at bring the product and/or service to production/market using the trademark.

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Use Your Trademark Consistently or It Will Be Weak: WD-40 in the Crosshair

Most damaging to Sorensen’s argument regarding this factor is his inconsistent use of the crosshair [trade]mark. – Seventh Circuit Court of Appeals.

Sorensen_v_WD-40_CrosshairIn 1997, Jeffery Sorensen founded a company and began selling rust preventive products under the trademark THE INHIBITOR. Sorensen claimed trademark rights in THE INHIBITOR mark and common law trademark rights in the Sorensen Crosshair provided on some of his products, shown to the right.

In 2011, the WD-40 Company, began selling WD-40 Specialist Long-Term Corrosion Inhibitor for a similar purpose. The WD-40 product contained the same volatile corrosion inhibitor as Sorensen’s product.

Sorensen sued WD-40 for infringing THE INHIBITOR and crosshair trademarks in the case of Sorensen v. WD-40 Company, No. 14-3067 (7th Cir. June 11, 2015). But he lost on all counts.

While its not the only reason that Sorensen lost on his claim that WD-40’s crosshair infringed Sorensen’s crosshair, one factor in the defeat was the fact that Sorensen did not use the crosshair consistently across his products and marketing.

The consistent use of a trademark is very important to maintaining its strength. Trademark strength is one factor in determining whether there is a likelihood of confusion between two marks and therefore infringement. If you have a weak trademark you will have a harder time asserting infringement against similar marks.

In the WD-40 case, the court stated:

Inconsistent use makes a symbol less helpful to consumers as a source indicator, and therefore a weaker mark.

The court noted that Sorensen’s products, shown in the image below, provided evidence of inconsistent use of the crosshair. The court stated, “Sorensen’s crosshair has been used since 1997, but inconsistently–sometimes the crosshair has symbols in each quadrant, sometimes the quadrants are empty, and many times there is no crosshair at all, but rather a bull’s eye.”

Sorensen_v_WD-40_InhibitorProductLine

The court concluded that the inconsistent use of the crosshair mark weighed in favor of WD-40. This, together with other factors, ultimately led the court to find the WD-40 did not infringe Sorensen’s crosshair trademark.

To strengthen your trademark rights ensure consistency in all usage of your trademark. It is best to use the same capitalization, the same font, and the same color scheme for a given trademark for maximum consistency.

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Do I Need a Patent to Sell My Product or Service?

No. You are not required to obtain a patent in order to sell a product or service embodying your invention. Many products and services are sold that are not patented.

A U.S. patent provides the right to stop others from making marketing, selling, or importing your invention in the United States. Therefore a patent may provide you a competitive edge against your competitors in the marketplace. But, a patent is not a grant of permission to make your product or provide your service. A patent will not protect you from claims of infringement by others.

For example, assume that your product is A+B and you obtain a patent on A+B. Then John who owned a prior patent on invention “A” sends you a letter alleging that your product A+B infringes his patent for A because your product includes “A.” You cannot use your patent on A+B as a defense. This is true because patents can be used offensively (to stop others from making, selling, etc. your invention) not defensively (to prevent others from claiming your product infringes their prior patent). However there may be other defenses that you could assert, such as that the patent on A is invalid.

In order to be sure that your product or service will not infringe another party’s prior patent, you need a clearance or freedom to operate opinion. In order to prevent others from copying and selling your invention you need a patent or you need to pursue other non-patent options. However, there is no requirement that you obtain a patent in order to sell a product or provide service. You may choose to proceed without a patent and compete in the marketplace.

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Illinois State Trademark Registration Does Not Grant Rights Throughout the State

Steak_and_Brew_trademarkSteak & Brew, Inc.’s predecessor owned an Illinois trademark registration on STEAK & BREW and operated a restaurant under the STEAK & BREW mark in Peoria, Illinois up to the fall of 1971. In April of 1971, Beef & Brew Restaurant, Inc. opened a restaurant under the name BEEF & BREW in Rock Island, Illinois.

Steak & Brew sued Beef & Brew alleging Beef & Brew infringed its Illinois State trademark registration, but lost in the case of Steak & Brew Inc. v. Beef & Brew Restaurant, Inc., 370 Supp. 1030 (S.D.Ill. 1974).

Steak & Brew lost not because the word “Steak” is different from the word “Beef” in the respective marks. But it lost because of the counter-intuitive principle that an Illinois state trademark registration does not grant the registration owner exclusive rights to use the trademark throughout the entire state of Illinois. This is in contrast to a federal trademark registration, which does create a presumption of exclusive rights throughout the nation.

Illinois State Trademark Registration Worthless Against a Federal Registration

Previously I discussed the case of Burger King of Florida Inc. v. Hoots, 403 F. 2d 904 (7th Cir. 1968), which demonstrated that an Illinois state trademark registrations is subordinate to a federal trademark registration. In the Burger King case, the Hoots were the first to use its Burger King mark in Illinois, but Hoots’ Illinois state trademark registration was essentially worthless against the Burger King of Florida’s federal trademark, even where that federal registration was obtained after Hoot’s started using the Burger King mark in Illinois.

The court refused to accept the argument that the Hoots’ Illinois trademark registration entitled them to rights throughout the state when they were only using the mark in and around Mattoon, IL.

The Illinois state registration will not insulate against claims of infringement made by the owner of a federal registration nor will it block third parties from moving into the state using your mark in areas of the state where you are not operating/selling.

Geographic Scope of Illinois State Registration: Area of Use, Not Entire State

In the Steak & Brew case, the Illinois trademark registration owner operated in Peoria, Illinois and the defendant operated its restaurant 100 miles away in Rock Island, Illinois. The Steak & Brew court stated, “[The Plaintiff’s] registration of the ‘Steak & Brew’ mark simply does not bar the innocent adoption and use by the defendants of a somewhat similar name embracing the word ‘Brew’ in the Quad-Cities area where plaintiff’s mark has never been used.”

Therefore, the court stated that the Illinois trademark registration does not grant rights in geographic areas where you are not using the mark. This is counter-intuitive. One would think that an Illinois trademark registration would give the owner rights throughout the entire state, but it does not.

No Geographic Scope Beyond Common Law Rights

At common law, a business obtains rights in the trademark simply by being the first to use the trademark in the business to identify goods or services in a particular geographic area. An Illinois state trademark registration only gives you the geographic scope of trademark protection that you would already obtain under the common law by simply using the trademark without registration.

The trademark act effective in the Steak & Brew case is different from the current act in Illinois, but the result is the same. The current Illinois Trademark Registration and Protection Act (Illinois Trademark Act) provides a protection of common law rights: “Nothing in this Act shall adversely affect the rights or the enforcement of rights in marks acquired in good faith at any time at common law.” 765 ILCS 1036/80.

The “at any time” language must mean rights acquired under the common law either before or after an Illinois registration is granted.

Therefore, under the common law, the defendant Beef & Brew Restaurant would begin to build up rights in the BEEF & BREW mark simply by operating its restaurant under that name in Rock Island. As the plaintiff only operated far away in Peoria, its rights would not extend to Rock Island under the common law. This is true even though the plaintiff obtained its Illinois registration before the defendant began operating in Rock Island.

The plaintiff’s Illinois state trademark registration could not be used to stop others in remote geographic areas within the state from using the same or similar mark for the same or similar services.

Benefits of Illinois State Trademark Registration

The Illinois Trademark Act provides for an award of treble monetary damages in the case of willful trademark infringement, which is not available to unregistered marks under the federal Lanham Act. 765 ILCS 1036/70. However, it is often difficult to prove willfulness in a trademark infringement suit. And if litigation under the Illinois Trademark Act is similar to that under the Lanham Act, the statistical likelihood of obtaining an award of money damages at trial is low.

Federal Registration Generally Preferred

An Illinois state trademark registration is inexpensive but provides few benefits. The state registration does not grant exclusivity within Illinois. And the state registration is subordinate to federal trademark registrations. Therefore if you’re interested in broad protection of your trademark you should consider filing a federal trademark application if your circumstances allow.

 

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How to Patent Search

PatentSearchCan I patent this invention? One of the first steps in the patent process is to determine whether you can obtain a patent on the invention. The heavy lifting of this determination is a patentability search, also known as a patent novelty search. The purpose of the search is to give you information on whether your invention is new and therefore patentable. Can you do that search yourself?

Searching Yourself v. Professional Searching

Yes, but patent searching is an art that you get better at with repeated practice. Therefore, a professional patent searcher is likely to uncover results that you did not find given the professional searcher’s experience, access to search tools, and knowledge of searching techniques.

However, you may like to perform patent searching on your own because you could identify relevant prior art references, which if such references disclose all the features of your invention, would enable you to avoid the cost of hiring a professional patent searcher.

Yet, before concluding your invention is not patentable based on the results of your search, you should consult a patent attorney for advice as to whether you could obtain patent protection even in light of the prior art references you found. In some cases, results that appear to block your ability to obtain a patent can be overcome with the appropriate patent strategy and patent drafting approach.

Always Relevant Results

There is relevant prior art for almost every invention. Therefore, it is extremely unlikely (or impossible?) that a patent search will return no relevant prior art references. So when someone says they searched the patent office records and there is nothing like the invention, I know that there is more than nothing relevant. The issue is usually (1) that the search scope was not broad enough, or (2) the search simply did not locate the relevant results. In the first case, the search scope is usually not broad enough because the inventor/client does not realized the scope of relevant inventions. For example, if the invention is related to car horns, the search should not be limited to only car horns, but should extend to any vehicle horn, such as a truck horn, a boat/ship horn, tractor horns, motorcycle horns, possibly a bicycle horns or other non-motorized vehicles, possibly stationary horns, etc.

So, if your search uncovers nothing relevant, then you know you need to keep searching or hire a professional patent searcher.

To gain an understanding the search process we can look to the manual that the Patent Examiners follow when examining patent applications, which is titled, the Manual of Patent Examining Procedure (MPEP). The MPEP provides the high level search approach: “(A) identifying the field of search; (B) selecting the proper tool(s) to perform the search; and (C) determining the appropriate search strategy for each search tool selected.” MPEP 904.02.

Problems With Text-Only Searching

That sounds pretty straight forward.  The devil is in the details. Before getting to a more specific search strategy, let’s look at the warnings that the MPEP provides about text searching.

The MPEP warns against relying on text searching alone:

Text search can be powerful, especially where the art includes well-established terminology and the search need can be expressed with reasonable accuracy in textual terms. However, it is rare that a text search alone will constitute a thorough search of patent documents. Some combination of text search with other criteria, in particular classification, would be a normal expectation in most technologies.

[MPEP 904.02 (emphasis added)].

Text searching is keyword searching. Text searching is when you enter words into a search engine and the engine returns results having those words.

The problem with text searching is that a patent attorney can act as a lexicographer, that is the patent drafter can make up words, assign words meanings other than their normal meaning, and can use terms other than the common terms for a given part, component, or feature of the invention. This is what makes text-only searching problematic.

The MPEP discusses the difficulty in choosing the right textual terms to search for a given invention:

Examiners will recognize that it is sometimes difficult to express search needs accurately in textual terms. This occurs often, though not exclusively, in mechanical arts where, for example, spatial relationships or shapes of mechanical components constitute important aspects of the claimed invention. In such situations, text searching can still be useful by employing broader text terms, with or without classification parameters.

[MPEP 904.02 (emphasis added)].

For example, U.S. Patent 5,185,953 is for a mouse trap. But the title of that patent is not “mouse trap,” but instead is “rodent extermination device.” Also, U.S. Patent 2,415,012 is for the Slinky toy. But that patent does not use the term “Slinky.” And, it’s title is “Toy and Process of Use.”

The MPEP provides one solution to the text-only search problem and that is a classification search:

The traditional method of browsing all patent documents in one or more classifications will continue to be an important part of the search strategy when it is difficult to express search needs in textual terms.

[MPEP 904.02 ].

That’s right, for some inventions, it may be necessary or advisable to browse (e.g. look at) all patents within one or more classes. Looking at each patent within a classification avoids the lexicographer problem explained above, because browsing the drawings or other content of a patent document can identify relevant patents that might not be found by text searching.

It can be tedious and time consuming to browse all patents within one or more classes. This is especially true if you don’t have access to search tools that allow quickly viewing each patent and moving to the next. Regardless, depending on the type of invention, classification searching is likely necessary.

Patent Searching Framework

While classification searching is often needed, it can be difficult for a novice to be as effective searching the classification system as a professional searcher that has searched the classification system numerous times and has a familiarity with it.

Therefore, we can start with text searching to find relevant classes to look to. Alternatively, you can browse or search the classification scheme for relevant classes (skipping to step 8).

I suggest the following framework for searching:

  1. Brainstorm keywords describing the invention
  2. Perform keyword searching to identify some relevant patents
  3. Identify new keywords in found relevant patents, search with new keywords
  4. Review backward looking cited references and forward looking references
  5. Note the classes of the relevant patents
  6. Review class definitions of noted classes
  7. Review adjacent classes to the noted classes
  8. Search and browse CPC scheme for additional relevant classes
  9. Perform classification searches
  10. Optionally narrow classification search by keyword
  11. Keep searching

I’ll explain each step in detail.

1. Brainstorm keywords describing the invention

Create a list of keywords that describe the invention, including important features of the invention. From those keywords, look up synonyms to each a thesaurus. The identify search groupings of keywords for search queries.

Here are questions suggested by the USPTO to assist in developing a list of relevant keywords:

  1. What does the invention do? (Essential function of the invention)
  2. What is the end result? (Essential Effect or basic product resulting from the invention)
  3. What is it made of? (Physical structure and components)
  4. What is it used for? (Intended use)

Let’s say you wanted to find patents directed to a method of purchasing a product from an online store with one click. Amazon obtained such a patent, U.S. Patent 5,960,411 (“the ‘411 patent”) is popularly known as the Amazon one-click patent. If you search Google patents for “one click order” the ‘411 patent will be the first result. However, this is likely only because this is a famous patent that received a lot of media attention.

If this patent was not famous, you probably would not find it by searching “one click order.” Why? because nowhere in the patent does it say “one click.”  Instead it provides, for example, “The client system … displays an indication of an action (e.g., a single action such as clicking a mouse button) that a purchaser is to perform to order the identified item.”

Synonyms for “click” in this circumstance include action, act, selection, process, motion, operation, movement, activity, etc. Synonyms for single include one, only one, etc.

2. Perform keyword searching to identify some relevant patents

Now you can take those search terms and combine them to perform various searches in the patent databases.

What are the patent databases? First are the USPTO Patent and Published Patent Application databases. You can perform word searching via the web in those databases. However, patents from 1790 to 1975 are not text searchable. So text searching will not show any results for this time period. This is likely not a problem for newer technologies. However, many inventions have relevant prior art from these time periods. You can review the search options at the USPTO help page.

Another search tool is Free Patents Online (FPO), which is relatively fast. The patent documents are hyperlinked so you can navigate from one patent to the next rather quickly.

The problem with FPO, and with the USPTO tools, is that you can not quickly view the drawings of a patent. FPO and the USPTO do not show you thumbnail images of the drawings when you first get to the detail page for a particular patent. In FPO you have to click on the view PDF link and wait for the PDF to load in your browser. The same is true for the USPTO databases.

Google Patents is better at quickly showing images of the patents. The result list shows thumbnail images of the first page of each patent. When you select the patent, the patent detail page shows thumbnails of all the drawings. When looking to browse images, Google Patents makes the job easier than the USPTO or FPO.

Some have noted that Google’s patent database has holes, in that its missing patents know to exist. So, you should not rely exclusively on Google Patents for all of your searching. In general, it is good to use a mix of tools when patent searching for completeness.

3. Identify new keywords in relevant patents, search with new keywords

When you find a relevant patent document, review it to see if it uses terms related to your invention that you did not think of initially. Add those new terms to your search keywords and preform additional searching with those new terms.

4. Review backward looking cited references and forward looking references

U.S. patents and published patent applications (and many foreign patent documents) cite to other prior patents, patent applications, and publications. These backward looking citations to patent documents (also know as “references cited”) are made by the patent applicant or the patent examiner during the patent application process. Either the patent applicant or the patent examiner believed that the references cited were related to some aspect of the invention. Therefore, if you find a relevant patent, you should look to the references cited, which may also be relevant. Sometimes these references cited will be more relevant to your invention.

Below is a excerpt of the references cited from the front page of the ‘411 patent.

ReferencesCited

If the ‘411 patent was a relevant patent, you’d want to look at some or all of these references cited. The USPTO, Google patents, and FPO provide hyperlinks to each of the US patent documents cited. However, the USPTO does not provide the title for each reference cited. The title can be helpful in determining whether the reference is relevant and worth investigating.

Here is a portion of the cited references from Google’s webpage for the ‘411 patent:

GoogleReferencesCited

Here is a portion of the cited references from USPTO’s webpage for the ‘411 patent:

USPTOCitedReferences

Not only can you find backward looking references cited, but you can also find forward looking references. Forward looking references are later patent documents that cite back to the patent, e.g. back to the ‘411 patent. A references is a forward looking reference in that it is a reference to a later patent document. The printed patent will not show forward looking reference because they are unknown at the time that the patent is granted. Forward looking references occur overtime as later patents cite back to an issued patent or a published patent application. The USPTO and Google provide forward looking citations, but presently FPO does not.

The forward looking references are accessible at the USPTO website by going to the patent’s webpage and clicking on the “[Referenced By]” link (shown in the screenshot above).  The forward looking references are provided in the “REFERENCED BY” section of Google’s webpage for the ‘411 patent.

The backward looking references cited in the patent and the forward looking references that cite back to the patent document from later patent documents are important sources for finding other relevant patent documents.

5. Note the classes of the relevant patents

The USPTO has a subject matter classification system, where the USPTO classifies patents based on the subject matter of the patent. The classification system is an arrangement of hierarchical categories used to organize patents and patent applications by their characteristic. Therefore you can browse or search patent and published patent applications within a particular subject matter classification. The patent examiner specifies one and usually more than one class that the subject matter of the patent document pertains to.

This is the classification section of the ‘411 patent:

Patent_Classificiation

The international class is specified at G06F 17/60. G06F is the Electrical Digital Data Processing class. However, classes change over time, so at the time of this post the 17/60 subclass no longer exists. To find the current class that corresponds to the 17/60 class you can goto the USPTO webpage for the ‘411 patent. At the time of this writing, the USPTO webpage for the ‘411 patent shows the following current classifications:

USTPO_Web_Classification_US5960411

The current international class for the ‘411 patent is G06Q 10/00.

There are at least three classification schemes (1) the US patent classification scheme, (2) the international patent classification scheme, and (3) the cooperative patent classification scheme.

The USPTO switched from using the US classification scheme to cooperative patent classification (CPC) scheme. In 2015, the USPTO stopped classifying patents in the US Classification system.

This post will focus on CPC based searching. The current CPC class of the ‘411 patent is G06Q (Data Processing Systems or Methods) and the subclass is 10/087 (Inventory or stock management, e.g. order filling, procurement, balancing against orders).

6. Review class definitions of noted classes

Beyond the primary class/subclass of G06Q 10/087 of the ‘411 patent, you should browse the class/subclass titles and definitions for each of the CPC classes listed. You can find the class/subclass titles and definitions at the Classification search page.

Not only does a one-click purchase involve “order filling” in subclass 10/087, but as noted above it may involve the following additional subclasses:

  • G06Q 20/04 – Payment circuits
  • G06Q 20/12 – Payment Architectures specially adapted for electronic shopping systems
  • G06Q 30/04 – Billing or invoicing
  • G06Q 30/06 – Buying, selling or leasing transactions
  • G06Q 30/0633 – Buying, selling or leasing transactions, electronic shopping: lists, e.g. purchase orders, compilation or processing
  • G06Q 30/0635 – Buying, selling or leasing transactions, electronic shopping: Processing of requisition or of purchase orders
  • G06Q 30/0635 – Buying, selling or leasing transactions, electronic shopping: Shopping interfaces
  • Y10 715/962 – Data processing: presentation processing of document, operator interface processing, and screen saver display processing: Operator interface for marketing or sales

Additionally the patent office considered relevant the class G07F 11/00 for “Coin-freed [payment activated] apparatus for dispensing, or the like, discrete articles:where the dispenser is part of a centrally controlled network of dispensers.” You might not immediately think of dispensing devices as relevant to a search for one-click online purchases, but they are related in that it is possible that a purchaser could receive a product with one action in both cases.

Class G07F 11/00 is an example of a class that you might not have thought of unless you reviewed the classes listed on relevant patents you find in your search.

You should make a list of relevant classes for classification searching. This list will be expanded and refined in steps 7 and 8 below.

7. Review adjacent classes to the noted classes

Looking to the CPC schedule/scheme you can view the classes that are adjacent to those you have identified in the prior steps. It is possible that adjacent classes will be as relevant or more relevant than the classes you have already identified. This is an excerpt of the class scheme adjacent G06Q 10/087.

AdjacentPatentClasses

 

8. Search and browse CPC scheme for additional relevant classes

Next, to be sure that you find all the the potentially relevant classes you should keyword search the CPC Scheme and browse the CPC Scheme.

To search the CPC scheme, goto www.uspto.gov and enter keywords into the search box in the upper right corner. This is what the search box currently looks like:

CPC_Keyword_SearchingStart each search with “CPC scheme” followed by your search terms, in this case “online purchasing.” The G06Q class is the first class in the result list, which matches the class G06Q that we found in the ‘411 patent. However, do not stop there, search with other keywords and combinations of keywords to find relevant classes.

9. Perform classification searches

Goto the patent search engines and search for patents and patent applications in the classes that you identified above.

At the USPTO you can search for all patents in class G06Q 10/087 by typing “cpc/G06Q10/087” on the advanced patent search page and all published patent applications in that class by performing the same search on the manual patent application search page. The search syntax is CPC/ followed by the class and subclass without any spaces.

Google Patents advanced search page provides a field for Cooperative Classification searching where you can enter the class/subclass without any spaces “G06Q10/087”. At the time of this writing, it does not appear that FPO has a field for searching the CPC.

10. Optionally narrow classification searches by keywords

At the time of this post, USPTO records show 5,046 patents in class G06Q10/087. In some cases, you may have to browse each and every one of those patents. In some cases, you may be able to refine your search by adding keywords to search within that class to the reduce result set. However, narrowing the search results by keyword runs into the keyword searching problem explained above.

11. Keep searching

One of the the hardest things about patent searching is knowing when you are done. Is it that no problematic patent document exists related to your invention or does it exist and you failed to find it?

There’s no universal answer to the question. Knowing whether a search is complete is usually a product of knowledge that you’ve covered all the relevant patent classes combined with knowledge borne by experience based knowledge of where you should be searching.

This post should give you a framework for patent searching. Then you can take those results to a patent professional for an opinion on how they impact your ability to obtain a patent.

The goal of a do-it-yourself patent search is to find patent documents that could present an obstacle to your effort to obtain a patent. If you do identify a potentially problematic patent document and a patent attorney confirms it is a substantial obstacle to obtaining a patent, you might  save money by doing your own patent search.

However, as you can see above patent searching is not easy. The ability to perform a complete patent search is a product of experience, which there is no first-time DIY substitute for. Therefore, in the case you do not find any patent documents that are close to your invention, your next step is to have a professional patent search performed.

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Is the Invention before Its Time? What iPods, Biology, and Computers Teach about Inventing in the Adjacent Possible

WhereGoodIdeasComeFromIn 1979, Kane Kramer invented a portable digital music player. He sought patents in numerous countries, including the United States where he was granted US Patent No. 4,667,088.

The Kramer portable digital music player used memory cards, the size of a standard credit card, which were each capable of holding 3.5 minutes of music (i.e. one song).  A record shop could store blank cards and load those cards on-demand from a digital music data store in the music shop at the time of sale.

A media outlet asserts that Kramer was the “inventor behind the iPod.” That statement probably goes too far in characterizing a reference that Apple made to Kramer’s patent and invention as prior art in a patent lawsuit.

Regardless, Kramer’s device was an early portable digital music player. The problem for Kramer was that his device did not become a commercial success. And later his patents lapsed because he was unable to pay the patent maintenance fees.

While we don’t know why Kramer’s device was not a commercial success, it might be that in 1979 the Internet did not exist that made electronic distribution of music easy–you don’t have to go to the physical music store. It might be that the electronic storage capacity of the memory card for the device could only hold one song. It might be that the elements helpful for commercial success did not exist in the 1980s when Kramer attempted to commercialize the invention.

Maybe Kramer’s music player was not within “the adjacent possible.” Stated another way, maybe it was before its time.

Steven Johnson discusses “the adjacent possible” in his book, Where Good Ideas Come From. The adjacent possible provides an outer boundary to how advanced your invention can be from the current state of the art. It is one factor to consider when evaluating the possible commercial success of your invention.

The Adjacent Possible from Evolutionary Biology

Johnson notes that scientist Stuart Kauffman coined the term “the adjacent possible” to describe the set of first-order combinations of molecules that were possible given the composition of the earth’s environment before life emerged:

The lifeless earth was dominated by a handful of basic molecules: ammonia, methane, water, carbon dioxide, a smattering of amino acids and other simple organic compounds… Think of all those initial molecules, and then imagine all the potential new combinations that they could form spontaneously… trigger all those combinations [and] you would end up with most of the building blocks of life: the proteins that form the boundaries of cells; sugar molecules crucial to the nucleic acids of our DNA.

…

But you would not be able to trigger chemical reactions that would build a mosquito, or a sunflower, or a human brain… The atomic elements that make up a sunflower are the very same ones available on earth before the emergency of life, but you can’t spontaneously create a sunflower in that environment, because it relies on a whole series of subsequent innovations that wouldn’t evolve on earth for billions of years: chloroplasts to capture the sun’s energy, vascular tissues to circulate resources though the plant, DNA molecules to pass on sunflower building instructions to the next generation.”

On the pre-life earth formaldehyde was within the adjacent possible but more complex organisms were not. The more complex organisms required intermediate building blocks that had not yet come into existence.

The Difference Engine and The Analytical Engine

The adjacent possible is not only applicable within evolutionary biology, but applies to human-made inventions.

Johnson notes two inventions of Charles Babbage–the Difference Engine and the Analytical Engine–to show when an invention is within the adjacent possible and when it is not. Babbage was a nineteenth-century British inventor, now known as the father of modern computing.

The Difference Engine was advanced mechanical calculator described as a very complex “fifteen-ton contraption, with over 25,000 mechanical parts, designed to calculate polynomial functions that were essential to creating the trigonometric tables crucial to navigation.” While Babbage did not build the Difference Engine during his lifetime, the Difference Engine was within the adjacent possible of the Victorian technology. Many improvements occurred within the field mechanical calculation during that time based on Babbage’s architecture, according to Johnson.

On the other hand, Babbage’s Analytical Engine was not within the adjacent possible. On paper, the Analytical Engine was the world’s first programmable computer. But it was so complicated most of it never got past the blueprint stage:

Babbage’s design for the engine computer anticipated the basic structure of all contemporary computers: “programs” were to be inputted via punch cards…; instructions and data were captured in a “store,” the equivalent of what were now call random access memory, or RAM; and calculations were executed via a system that Babbage called “the mill.” uniting industrial-era language to describe what were now call the central processing unit, or CPU.

Babbage had most of the system sketched out by 1837, but the first true computer to use this programmable architecture didn’t appear for more that a hundred years. While the Difference Engine engendered an immediate series of refinements and practical applications, the Analytical Engine effectively disappeared from the map. Many of the pioneering insights that Babbage had hit upon in 1830s had to be independently rediscovered by the visionaries of the World War II-era computer science.

Implementing the Analytical Engine with mechanical gears and switches would have been extremely complex and difficult to maintenance according to Johnson. On top of that it would have been slow. For the Analytical Engine to work or work well, the logic needed to be implemented with electronics and not mechanical gears. Therefore, the Analytical  Engine was not within the adjacent possible in the 1837.

YouTube

Johnson leaves us with one more modern example: Youtube. Johnson notes that if Youtube was created 10 years earlier in 1995 it would have failed. This is because in 1995 most web users were on slow dial-up connections and it could take an hour to download a standard Youtube clip. In 1995, Youtube’s innovation was not within the adjacent possible, but ten years later, with broadband Internet and Adobe’s Flash technology, it was.

Invention Evaluation Factor: Is it Within the Adjacent Possible?

One question you should answer when evaluating your invention is whether the invention is within the adjacent possible.

It is not enough to consider whether it is technically possible to create your invention. The Kramer portable digital music player was technically possible to create at the time. But the underlying infrastructure–the lack of the Internet–and the memory storage capacity available at the time could have constrained its ability to be a commercial success.

At least for human-made inventions, practical application of the adjacent possible principle must consider not only whether it is technically possible to manufacture/make, but whether the infrastructure and other elements helpful for commercial success exist at the time.

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How to Broaden Design Patent Protection with Broken Lines: Apple v Samsung

ApplePatentD593087_SamsungGalaxyS4G

The Samsung Galaxy S 4G smartphone on the right has a different back shape and lacks a circular home button on the front as compared to the iPhone in Figures 19 and 24 of U.S. Patent No. D593087 (“the ‘087 patent”), shown on the left. But a jury determined that the Galaxy infringed the ‘087 patent in the case of Apple v. Samsung, No. 200-cv-01846 (N.D. Cal. 2011). Did the jury ignore those different elements of the Galaxy phone?

Yes. And they were right to ignore them.

Apple drafted the ‘087 patent in a way that requires that the differences in the back shape and the home button be ignored. Apple did that by providing those features in broken lines.

The solid lines indicate the part of design of the iPhone that Apple claimed, which include rounded rectangular bezel and the phone speaker opening on the front face.

Design Patent Infringement

If Apple would have shown all sides and all features of the iPhone in solid lines in the ‘087 patent, then it is possible that the jury would have determined that the Galaxy did not infringe the ‘087 patent.

The ordinary observer test is used to determine design patent infringement. As explained in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), the ordinary observer test provides:

“[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

If Apple provided all sides and all features of the iPhone in solid lines in the ‘087 patent, could the jury have found the differences in the Galaxy phone, including the back shape and the lack of a home button, were enough to prevent the ordinary observer being deceived to purchase the Galaxy supposing it was the iPhone? Maybe so. Even if not, it would have made Apple’s case harder to prove.

Determining Important Features

Before drafting design patent drawings, first determine which features are important and which features are not important or are less important.

In figure 19 of the ‘087 patent, Apple determined the unique and important features to protect were the rounded rectangular bezel and the phone speaker opening on the front face. Apple provided the other features, the back/side shape and the home button, in broken lines.

It is common for the back or bottom of a product to be less important, especially if the back or bottom is not regularly seen by customers or users. Less important or unimportant features can be shown in broken lines so that those features do not limit your design patent rights.

The strategic use of broken lines for unimportant or less important features in a design patent  can allow you to focus the patent protection on the important portions of your product. By focusing on those important portions, you can achieve broader design patent protection.

Broader design patent protection will protect against competitors introducing designs that copy your important features but modify unimportant features to avoid your design patent. In the Apple case, Samsung was unable to avoid the ‘087 patent by making changes to the shape of the back, while providing a similar front bezel and flat face.

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Lapse of Trademark Registration is Not Abandonment of All Trademark Rights

CrashDummiesYou search the trademark database at the USPTO and find that your competitor’s trademark registration was canceled because the competitor did not file renewal documents and fees. You jump at the chance to grab their trademark by filing your own trademark application on their mark. Did you succeed in grabbing up rights in their trademark? Not necessarily.

Common law trademark rights can be obtained by use of the trademark in business/commerce alone without a federal registration. Therefore lapse of a trademark registration does not automatically result in a loss of all trademark rights.

This principle is demonstrated in the case of Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387 (Fed. Cir. 2010).

Crash Dummies Fight

Mattel owned a trademark registration on CRASH DUMMIES for toys. Mattel acquired rights in the CRASH DUMMIES trademark when it acquired Tyco in 1997. In December of 2000, the USPTO cancelled Mattel’s registration on CRASH DUMMIES because Mattel did not file the required trademark renewal documents and fees.

On March 31, 2003, The Crash Dummy Movie, LLC (“CDM”) filed an intent-to-use trademark application on CRASH DUMMIES for games and playthings.

Mattel filed an opposition against the CDM’s trademark application based on Mattel’s common law rights in the mark CRASH DUMMIES. CDM claimed that Mattel abandoned its trademark rights in the mark.

Registration Lapse is not Abandonment

The Court stated, “Although Mattel later allowed its trademark registrations to lapse, cancellation of a trademark registration does not necessarily translate into abandonment of common law trademark rights.”

As explained in prior abandonment posts here and here, a trademark is abandoned if (1) its use in commerce has been discontinued (2) with no intent to resume use. The Lanham Act provides “[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment….” 15 U.S.C. § 1127. This means that after three years of nonuse there is a presumption that the mark has been abandoned.  But, the trademark owner can rebut that presumption by presenting evidence that during the three years the owner formulated an intent to resume use of the trademark in commerce.

Presumption of Abandonment and Rebuttal Evidence

Abandonment depends on trademark use and owner intent and not on registration alone. In the Crash Dummy Movie case, the presumption of abandonment attached because Mattel did not use the CRASH DUMMIES mark for more than three years beginning in December 1995 and ending in December 2003 (8 years) when Mattel made a shipment of CRASH DUMMIES toys.

But Mattel was able to rebut the presumption of abandonment and maintain its ownership of the mark by presenting evidence that Mattel intended to resume use of the mark during the first three years of non-use. That evidence included: (1) Mattel’s discussion with KB Toys in 1998 about them being the exclusive retailer of CRASH DUMMIES toys, (2) Mattel recorded trademark assignment in 1998 transferring ownership of the CRASH DUMMIES mark from Tyco to Mattel, and (3) research and development activities by Mattel from 2000 to 2003 regarding CRASH DUMMIES toys.

Looking at the Trademark Database is Not Enough

The Crash Dummy Movie case demonstrates that the failure to renew a trademark registration does not automatically result in abandonment of all the owner’s trademark rights. The trademark owner may still have common law trademark rights based on their ongoing use or intent to resume use of the mark.

Therefore, simply looking at the status of a registration in the USPTO trademark database will not tell you conclusively whether a trademark owner has abandoned all rights in the trademark. You will need to perform due diligence to gain reasonable assurance that the trademark owner has (1) stopped using the mark in business/commerce and (2) does not intend to resume use.

Determining the trademark owner’s intent is often not easy. So grabbing up an apparently dead trademark of another will likely carry some risk that the trademark owner has not abandoned all of its trademark rights.

8 Years of Non-Use Not Too Long

The risk that the owner has not abandoned all rights may reduce as the period of non-use grows over time. However, Mattel did not use its CRASH DUMMIES mark for 8 years from 1995 to 2003 and still retained its trademark rights based on its activities showing intent to resume use as explained above.

Risks If Trademark Rights Not Abandoned

If the original trademark owner has not abandoned all of its trademark rights, the owner might be able to sue you for trademark infringement based on your use of the mark and/or may oppose your registration of the mark as Mattel successfully did in the Crash Dummy Movie case.

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Reviving Dead Brands of Others: Trademark Windfalls

DURAFLAMEKingsford-Clorox owned the trademark Duraflame for artificial firelogs. Kingsford-Clorox decided to get out of the firelog business and wanted to write off the goodwill associated with the Duraflame mark for accounting purposes. So it published a notice in the Wall Street Journal announcing the abandonment of the Duraflame trademark effective on the date of publication.

Two companies scrabbled to grab the Duraflame trademark, which resulted in the case of California Cedar Products Co. v. Pine Mountain Corp., 724 F.2d 827 (9th Cir.  1984). California Cedar won rights in the Duraflame mark because it was the first to use the Duraflame trademark after the mark was abandoned.

WindFall of Goodwill in Picking Up an Abandoned Trademark

When one company abandons a trademark, any other person or entity can grab the abandoned trademark through use or by filing an intent to use trademark application. The new person or entity picking up the trademark will receive a windfall of goodwill associated with that trademark.

Assuming the trademark is associated with a favorable reputation, the new trademark owner will gain that goodwill for essentially no cost, other than the cost of using the mark to make a sale or render service.

California Cedar acquired a windfall of goodwill associated with the Duraflame brand simply by being the first to use the mark after it was abandoned.

Problems in Reviving Abandoned Marks: You Don’t Know Its Abandoned

Why not go around grabbing up abandoned brands? You can, but the difficulty is knowing for certain that trademark is abandoned.

A trademark is abandoned if (1) its use in commerce has been discontinued (2) with no intent to resume use. The Lanham act provides “[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment….” 15 U.S.C. § 1127. This means that after three years of nonuse there is a presumption that the mark has been abandoned.  But, the trademark owner can rebut that presumption by presenting evidence that during the three years the owner formulated an intent to resume use of the trademark in commerce.

Determining whether the the trademark owner has an intent to resume using the mark is difficult. This is why it is possible, but often risky, to attempt to resurrect a trademark mark that appears to no longer be in use.

California Cedar Products Co. represents the easy case is where the trademark owner publicly announces the abandonment of the mark. However, this rarely happens.

It is more common for a company or entity to stop taking action publicly, e.g. stop selling in retail, stop updating a website, stop attending tradeshows, etc. These things may indicate that the company has stopped using the mark. But you can’t be sure. These things do not tell you (1) whether the company has in fact stopped selling, maybe the company is still using the mark to serve at least one customer, or (2) whether the the owner has an intent to resume using the mark if the owner has actually stopped using the mark.

Out of Business

Even when a company goes out of business or looks like it is out of business this is no guarantee that its trademarks are abandoned.

If the trademark owner goes out of business, it is possible that the trademark owner could transfer its assets, including the trademark, to another company. That receiving company would then have rights in the mark as long as the gap in trademark use is not too long.

Abandonment uncertainty is illustrated by the case of Specht v. Google, 758 F.Supp.2d 570 (N.D. Ill. 2010), aff’d, 747 F.3d 929 (7th Cir. 2014). As discussed in my prior post, Specht and his companies ADC and ADI abandoned the trademark rights in ANDRIOD DATA after ADI/ADC stopped using the Android Data mark in 2002 when ADI lost all of its customers and essentially went out of business. Google then picked up rights in ANDRIOD when it launched its mobile operating system in 2007.

Google’s rollout of ANDROID in 2007 was somewhat risky because at the time ADI owned a federal registration over the mark ANDROID DATA, and ADI/ADC maintained a website at androiddata.com. The website did not offer any price information about the Android Data software and was mostly purposeless. These uses were not enough to keep ADC/ADI’s trademark rights alive.

While Google was ultimately successful, Google did not know for sure that Specht and his companies had abandoned the ANDRIOD DATA trademark until Google obtained internal documents and information from Specht during the lawsuit.

Bankruptcy

If the trademark owner goes into bankruptcy, the trademark and associated goodwill can be sold off to satisfy debts of the owner. The entity receiving the trademark as a result of bankruptcy will then have rights in the mark as long as the gap in use of the mark was not too long.

Conclusion

You can gain a windfall of trademark goodwill by adopting an abandoned trademark. The problem is that it is usually difficult to determine whether the trademark is actually abandoned. A long passage of time may give an increased assurance of abandonment.

However, to be sure the mark is abandoned, it is best to have an express statement of abandonment, as happened with the Duraflame trademark. Yet, this rarely happens.

If an express statement of abandonment is not provided, then extensive due diligence is necessary to gain reasonable assurance of abandonment. As the abandonment standard considers the trademark owner’s intent to resume use of a trademark, reviving another’s trademark will likely carry some risk that abandonment has not occurred unless an express statement of abandonment is available.

While picking up an abandoned mark can provide a windfall to the new trademark owner, the uncertainty of abandonment is a risk that may offset some of the windfall benefit.