26 November 2012

Kappos on Software Patents

Here's an excellent speech by David Kappos, the Director of the USPTO.

I particularly liked this excerpt: "Software patents, like all patents, are a form of innovation currency. They are also ecosystem enablers, and job creators. The innovation protected by software patents is highly integrated with hardware. All of it must remain eligible for protection. The current software patent “war” is hardly the first patent war—and unlikely to be the last in our nation’s patent history. Whenever breakthrough technologies come onto the scene, market players find themselves joined in the marketplace by new entrants. The first instinct of the breakthrough innovators is to bring patents into play. This is not only understandable, it is appropriate. Those who invest in breakthrough innovation have a right to expect others to respect their resultant IP. However, in the end, as history has shown time and time again, the players ultimately end up agreeing to pro-consumer solutions via licenses, cross-licenses or joint development agreements allowing core technologies to be shared."

Indeed. Of course I'm biased. But the fact remains that without at least one patent application (preferably more) in play, you're not going to get far in generating serious commercial interest in your new software product. And it remains baffling to me why Europe and the other software naysayers don't get on board with this. The future is software and preventing innovators from protecting it adequately by way of patents is short-sighted.

So why the pic? Don't forget that without some meaty algorithms you're going to have troubles...

22 November 2012

Inventor? - Write it Down

In all my years of practice, a consistent frustration has been engaging with inventors that are reluctant to write down their thoughts and ideas. It is very important to understand that the scope of protection afforded by a patent can only be found within that patent itself. In other words, neither a patent examiner nor a court is interested in material that is not within the specification, as filed, when attempting to interpret the patent.

Of course, in some jurisdictions, such as the US, a court may very well consider actions taken during the prosecution of a patent application as narrowing the scope of protection. However, those actions are reflected in documents filed during prosecution.

Patent attorneys can spend hours mulling over documents provided to them by inventors in an attempt to draft a decent patent specification. You don't want to have them mulling over hastily written telephone messages and trying to recall things that you may have told them during a meeting. You should be able to write down everything that you need to tell your patent attorney. You can then hand that material to him or her so that there is no misunderstanding as to what should appear in the patent specification. Apart from ensuring that your thoughts and ideas are properly described, your patent attorney’s time can be more efficiently spent and this can save you money.

It is far more effective for you to spend an hour crafting an email to your patent attorney then it is for you to phone and to ramble on for half an hour while he or she tries to scribble down bits and pieces of what you're saying. Invariably, half of it is lost and another quarter is misunderstood. The same applies to meetings. Don't arrive with just the ideas in your head, expecting to convey all of them to your patent attorney over the boardroom table. Rather spend a day or two putting together some decent written material, including sketches and photographs, if necessary. Also, remember that we can't file your prototype. Drawings and photographs are far better than prototypes. Personally, the first thing I do when I receive a prototype is to take photographs. If these are taken on a white background and altered into black and white images, they can be quite effectively used for a provisional patent application.

Remember that simple notes and sketches will often suffice provided they represent all the information that you have. Sketches can be very important especially when annotated. There's a lot of truth in that old saying "a picture tells a thousand words".

When preparing your notes and your sketches, you should try to think of other uses that your product might have. Also, think of possible variations in materials, dimensions and other characteristics. For example, you don't want to be limited to a particular material that might be replaced in a few years’ time. Of course, unless it's absolutely necessary, your patent attorney should not limit you in this way. However, in many jurisdictions, you might find it difficult to enforce your patent against an alleged infringer that is making use of characteristics not specifically described in the specification.

The world of patents revolves about information and how it is presented. Your likelihood of success is inextricably tied to your ability to communicate your invention in writing.

17 November 2012

Differing Examination Practices

One of the biggest challenges faced by a practitioner is to prepare founding patent documents that are suitable for applications filed in a number of different countries. For example, the rules concerning amendments of patent specifications can vary between major jurisdictions. European law sets out that an amendment must remain strictly within the scope of the specification as filed. This means that even a departure from the wording of the specification as filed can result in an application for amendment being rejected. Both Australia and the United States are more lenient. As a result, we have to prepare patent specifications with a view to what might happen during prosecution. That means we have to do our best to provide enough information in the specification in case we need to make an amendment. A typical response to an objection to a patent application by an examiner would involve some form of amendment of the claims, for example, to narrow the scope to avoid prior art. The strict application of the European patent office (EPO) to the exclusion of "new matter" is also followed by the Chinese patent office (SIPO). Inadequate disclosure could result in an application being ultimately rejected.

Another difference is the approach taken to divisional applications. In some cases, an applicant might wish to seek protection for a different aspect of the invention to that covered by the pending application. In a number of jurisdictions, including that of Europe, the United States and Australia, it is possible to file what we call a divisional application (in the US, a "continuation application"). However, again in Europe, the specification for the divisional must be contained wholly within the specification as filed in support of the pending application. The exclusion rule is as strict as that for amendment. In the United States and in Australia, it is possible to file divisional applications that introduce new matter. If that new matter is covered by one or more claims then those claims will have a priority date that is the date of filing the divisional applications. In the United States, such an application is referred to as a "continuation-in-part application".

It is important to bear in mind that an international application is effectively an application in all the countries automatically designated by the international application. It follows that the specification filed with the international application should, as far as possible, comply with the "best practice" requirements of those countries that take the strictest approach. Here is a link to a list of countries that are members of the Patent Cooperation Treaty (PCT) in terms of which an international application is filed: http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf.

So the lesson is to provide your patent attorney with as much information as possible as early as possible. You must always bear in mind the golden rule that it is possible to remove material after the application is filed but it is not possible to add material of any significance after filing in the major jurisdictions.

15 November 2012

More Moves Towards the Elusive Harmonization

For those of you who wonder why we can't just file an application for a worldwide patent, I guess the time will eventually come. Here's a snippet from the European Patent Office: http://www.epo.org/news-issues/news/2012/20121108a.html. As you can see, the wheel is turning slowly.
This will of course change the landscape significantly for us patent practitioners. Personally, however, I am happy to continue working with my local clients. I doubt that it will ever be possible to automate the drafting of an effective patent specification. That said, given Europe's other problems, don't hold your breath waiting for the world patent.

11 November 2012

What to take to the meeting?

You have finally decided to visit a patent attorney. But what should you take to the meeting?

It's important that you do your best to explain the state of the art. You should have been doing quite a bit of research yourself. If not, here's a link to a post with some searching tips.

This is important, because it can help your patent attorney to distinguish your invention properly. Not only that, but the advice that you receive should be directed to the unique features of your invention. Investigate novelty searching with your patent attorney. The more you know about the prior art before embarking, the better.

You need to bear in mind that patent attorneys need to define and describe the invention in a document consisting of A4 pages. It can be very useful to have a set of drawings as a starting point. The drawings don't need to be technical. They can simply be hand sketches. The patent documents must contain a description of the invention that is sufficient for a person of ordinary skill in the field to understand how to replicate an example of the invention. Drawings are a good place to start.

The golden rule is to put as much information as possible into the specification. It is generally not possible to add material at a later stage. So you will need to make sure that your patent attorney is given all the information that you have at your disposal. Rather prepare too much material as opposed to too little. Let your patent attorney decide what to omit or include.

You need to make sure that the inventor(s) is correctly identified. This is not a matter of choice. The identity of the inventor is a question of fact. Failure to identify the inventor(s) can be a ground for revoking a granted patent. So it's important that you provide the patent attorney with accurate details of the inventor. It is better to be conservative here. Anyone who has contributed to the invention in some material way should be named as an inventor. You should make sure that there is an agreement as to the identity of the person or legal entity that is to own the intellectual property associated with the invention if the owner(s) is not the inventor(s). In such a case, your patent attorney will need the inventor(s) to execute an assignment form.

The question of ownership can create real problems, especially once the invention starts to generate cash flow. I strongly recommend that a company be formed when there are two or more inventors involved. The inventors can then assign their rights as inventors to the company and can hold shares in the company.

And, finally, never forget the importance of confidentiality until such time as the patent application has actually been filed.