Create, Consult, Control
News & commentary on intellectual property issues.
Jul072010 | Steve O'Donnell
What happens to patents when a company closes.
A couple days ago someone found this blog by searching for “what happens to a patent when a company goes out of business,” which is surprising, because I don’t recall posting on that. At least it’s less disturbing than the time this blog was found by someone searching for “how to seduce a swan” (I hope they were looking for this.
So, what happens to a business’ patents when the business closes? The answer is pretty close to what you’d hear if you asked “what happens to a business’ copy machine when the business closes?” Patents are property, intellectual property, and even though they differ from physical property in certain ways, in many ways they’re the same.
A closing business can do any number of things with a patent. It could assign or license it to someone, the patent could be part of the company’s assets in a bankruptcy reorganization or liquidation; it could auction it off or dedicate it to the public; the patent could also be left to expire on its own.
The “expiration” is probably what people mean when they ask what happens to patents when the owner goes out of business or dies. For a patent to remain in force, periodic maintenance fees need to be paid to the government. Whether this is for a laudable reason, such as prompting the early public dedication of unused patents or if it’s just another way that the government can extract money from people is a question you can mull over later.
Currently these fees are due at 3.5 years, 7.5 years, and 11.5 years after the patent issues. The cost of these fees increases with each payment. The first maintenance fee is $980, the second is $2480 and the third is $4110 for a large entity and half that for a small entity. I’ve never thought of it before, but those are some strange amounts. If anyone can explain them to me, please leave a comment.
If those fees aren’t paid, the patent expires prematurely. If they are paid, a utility patent will normally expire 20 years after its filing date.
So I guess the answer to the question is closer to that for “what happens to a business’ car when it closes?” Not unlike a car, a patent can be sold, transferred, etc. Also, if a patent is left to languish and isn’t maintained it can be irretrievably lost.
If you’re concerned about a patent, the best thing to do is to have a patent attorney research the patent’s file and determine the best course of action.
Jun292010 | Steve O'Donnell
Bilski didn’t change much except my dinner plans
I (and every patent lawyer) have been anxiously awaiting the Supreme Court’s decision in Bilski, which should have given us a handle on when business method and software patents were patentable. The decision came down yesterday, and the Court punted.
Most patent attorneys had expected J. Stevens to write the opinion and guessed that it would tamp down on the patentability of business method and software patents. J. Stevens didn’t write the majority, and the opinion didn’t really change anything, or leave us with a clear indication of when business methods or software were patentable or not.
For the last few months I had some thoughts on what this post should be, I expected some softer rule than what the Fed Cir had stated, but we didn’t get a rule, only a dodge.
I anticipated a flurry of analysis and writing today and planned on picking up dinner while coming home from getting my kids at daycare to free a few more minutes for drafting. Since the Court didn’t give me much to work with, I decided that rather than trying to expound on a narrow ruling that gives little or no guidance, I instead will just write about what I made for dinner last night since the Court was kind enough to free me from my expected burden. So, here it is, Green Curry Macaroni and Cheese:
This recipe was based on Alton Brown’s Baked Mac & Cheese and inspired by Roger Mooking’s Curried Mac & Cheese.
Baked Green Curry Macaroni and Cheese
ingredients
1/2 pound elbow macaroni
3 tablespoons butter
3 tablespoons flour
2 tablespoons green curry paste
3 cups milk
4 teaspoons coconut extract
1/2 cup yellow onion, finely diced
1 large egg
12 ounces provolone
1 teaspoon kosher salt
black pepper
fresh Cilantro
directions
1. Preheat oven to 350 degrees F.
2. In a large pot of boiling, salted water cook the pasta to al dente.
3. While the pasta is cooking, in a separate pot, melt the butter. Whisk in the flour and keep it moving for about five minutes. Make sure it's free of lumps. Stir in the milk, onion, and curry paste. Simmer for ten minutes.
4. Temper in the egg. Stir in cheese and heat till melted. Season with salt and pepper. Fold the macaroni into the mix and pour into a 2-quart casserole dish.
5. Top with cilantro for service.
Notes: the curry paste container says to use 4T per can of coconut milk. . . which would translate to about 6T for this recipe. I find that to be waaayyy to hot, so I went with a third of that (and it's still pretty spicy, and I'm a guy that drenches pizza with hot sauce). I considered using coconut milk instead of milk+extract but I was concerned that the recipe needed the protein in the milk. . . plus, coconut milk is pretty fatty and there's already a bunch of fat from the cheese. I went with provolone because it’s a mild cheese and wouldn’t compete with the curry paste. The mix is very wet before it goes into the oven, but firms up nicely during the bake. When it was still hot from the oven, the curry spiciness was stronger than I anticipated, but as the dish sat, the spiciness mellowed yet was still very flavorful.
And no, this recipe isn’t patented.
Apr072010 | Steve O'Donnell
You probably don't want a provisional patent application
A number of “inventor assistance” services tout a provisional patent as a low-cost way of obtaining some degree of patent protection. Although a provisional is a little cheaper at the start, many people will wind up paying more in the long run than if they instead focused on a non-provisional application.
As I said before, I usually think of patents as consisting of two parts: the claims and everything else. A provisional patent is the “everything else.”
When I draft a patent, I start with what I consider the two hardest sections: the claims and the summary. The claims are tricky because they define the covered invention in as precise language as possible; the summary is tricky because it’s the “quick read,” plain language summary of the claims.
The claims are written for an intended audience of other patent lawyers and federal judges; the summary is written for potential infringers to read and hopefully come to the conclusion that a license makes better business sense than defending a lawsuit.
The rest of a patent is the foundation for the claims to stand on, and just like how like the visible portion of a building isn’t going to last without a solid foundation, patent claims will collapse if they’re not supported.
To carry that analogy a bit further, just as it doesn’t make sense to build a house without first considering the foundation, it doesn’t make sense to build a foundation without knowing what you’re going to build on it. For that reason, it doesn’t make sense to draft a provisional patent application without knowing what the claims are going to eventually look like.
If one does opt to file a provisional application there is likely going to be some degree of work duplication when, a year after the application is filed, a patent attorney has to refresh his memory on the subject matter of the application and then move to drafting claims. There are also going to be filing fees associated with the process that could be avoided by not first filing a provisional application.
Certainly there are reasons to file a provisional application, sometimes the initial few hundred dollar savings in filing fees demands the course. Other times there can be a looming statutory deadline that requires an application to go out the door before someone can sit down and draft a polished application. In other situations, it might make strategic sense to have a broad provisional on file for a year before deciding what aspect(s) of the invention should be patented. Whether a provisional application is the best route for you is something to discuss with your attorney, just don’t get attached to the idea, because odds are that it isn’t.
Dec082009 | Steve O'Donnell
Using a non-disclosure agreement to protect your ideas
Non-disclosure agreements are contracts between parties that need to share certain secret information in order to do business together. An NDA solemnizes a confidential relationship and protects the party sharing their secrets.
The content of an NDA is fairly standard; it defines what information is to be kept secret, what exclusions might exist and what the receiving party needs to do to keep the secrets. Exclusions allow the receiving party to forgo the NDA in cases when the information becomes publicly known or if it was already known. For example, if I get a company to sign an NDA and the secret I share is something they’ve already been working on, the NDA won’t prevent them from cutting me out when they take the item to market.
Obviously, if you are an inventor you will want an NDA in place before you share your invention with manufacturing partners or investors. Whether or not they will is another issue.
By asking someone to sign an NDA you are requesting them to accept a heavy obligation before finding out if your idea is any good or if it’s something they’d even be interested in. Not many investors are willing to sign your NDA without having a good idea of what you have. On the other hand, if you need to have your invention manufactured for testing, the machinist is more likely to sign an NDA to get the job.
Often, to get your foot in the door, you need to either have a track record of marketable ideas or share a trusted intermediary that can set up a meeting. More often than not, that isn’t the case. To coax investors to listen to my clients, I draft a non-confidential disclosure, discussing the invention or idea, without giving away any secrets. If there is a bite, then we know the other side is interested in the technology and likely willing to sign an NDA to learn more.
Ignoring the possibility of having your idea stolen, discussing your invention before starting the patenting process and without an NDA may likely be considered a public use by the patent office and could prevent you from ever obtaining a patent.
The safest thing that you can do to protect your idea is to talk to an intellectual property attorney before you talk to potential investors or partners.
Cartoon licensened under a Creative Commons Attribution, NoDeris 2.0 License.
Nov032009 | Steve O'Donnell
What exactly does *this* patent cover?
You might think that it would be easy to tell exactly what a patent covers, but that is far from the case.
Patents can be divided into a number of sections, but I think the most meaningful division is between “claims” and “everything else.” The claims are found at the end of a patent (or at the beginning, depending on where you’re viewing them online) and start with something like “we claim. . .” and then follow with one or more numbered paragraphs. A patent only covers what is claimed, but figuring out what is claimed can be a task in itself.
The rest of the patent is a support system for the claims. If a claim says something like “means for attachment of a first edge of a first panel and a second edge of a second panel” then somewhere in the rest of the patent has to be some explanation of what that means; claims typically make no sense on their own. That was the first draft of a clause claiming a zipper, and probably didn’t tell you much of anything on its own. If legalese is the confusing ramble that often flows from a lawyer, then patent claims can be some sort of steroid and espresso fueled legalese
If you have any question about whether something is patented or if you’re infringing a patent you really need to have a patent attorney analyze the patent and draft an opinion letter for you. Unfortunately, you can never be 100% sure what a patent covers until a court tells you what the terms mean, but an opinion letter from your attorney can go a long way in keeping you in the clear.
Jul302009 | Steve O'Donnell
Scary podcast patent not that scary
Last Tuesday the patent office issued a patent to Volomedia for a “Method for providing episodic media content.” By Wednesday, the tubes were filled with commentary ranging from “the patent system is broken” to “Oh nos [sic], they're going to sue podcasters.” Most of those comments mentioned Adam Curry in some way.
I can't fault the media (I'm including bloggers of all ilk in that term) for getting up in arms. Patents are rather specialized and there is a reason why registration with the US Patent Office requires a separate bar exam. Analyzing a patent to determine exactly what it covers can take days or weeks, and then you're still not exactly sure what it means until a Judge issues a claim construction.
First things first, Volomedia's patent does not cover making, uploading, downloading or listening to podcasts. It covers a method to distributing them, so the iTunes store or Podcast Alley would be possible targets if Volomedia tried to enforce their patent against a current distributor, not a typical podcaster or a listener. Whether or not they would try to enforce against someone, or what would happen if they did is anyone's guess.
It might not make economic sense to go after a provider. Even if Volomedia won at a Motion to Dismiss, what would they get? Most podcasts are distributed for free, and the damages period would begin when the patent was first in force (since Tuesday). So, right at this minute, damages are probably pretty small. Volomedia could instead ask for a reasonable royalty, but because of the free nature of most podcasts, this probably also wouldn't be a huge award. Of course, maybe they would want to shut down all current podcast services and be the exclusive provider of all that podcast content, one can never guess exactly what lurks in a business' heart.
There are some questions about whether the current most common content dissemination schemes infringe the patent, but even if they do, they can probably be quickly redesigned to avoid the patent.
The patent contains nine claims, 8 eight of those are dependent, meaning they build off the single independent claim. I'm going to give a cursory look at part of claim 1 to point out what I think might be a couple issues for Volomedia if they would try to enforce this patent against something like Podcast Alley. This is in no way even approaching what would be required for a claim construction and shouldn't be relied on my anyone for anything. This is just for fun. Yea! Grab the patent and play along!
The first claim, which I've roughly diagrammed here reads:
1. A method for providing episodic media,
(a)the method comprising:
i.providing a user with access to a channel dedicated to episodic media,
A.wherein the episodic media provided over the channel is pre-defined into one or more episodes by a remote publisher of the episodic media;
ii.receiving a subscription request to the channel dedicated to the episodic media from the user;
iii.automatically downloading updated episodic media associated with the channel dedicated to the episodic media to a computing device associated with the user in accordance with the subscription request upon availability of the updated episodic media,
A.the automatic download occurring without further user interaction;
iv.and providing the user with:
A.an indication of a maximum available channel depth,
B.the channel depth indicating a size of episodic media yet to be downloaded from the channel and
C.size of episodic media already downloaded from the channel,
the channel depth being specified in playtime or storage resources, and
D.the ability to modify the channel depth by deleting selected episodic media content, thereby overriding the previously configured channel depth.
Ok, that's a mouthful. The first thing that one should understand is that to infringe a claim, one has to infringe all the elements of that claim. In other words, a claim to a “four-door, red car” has three elements, “four-door,” “red” and “car.” If you avoid any of of those elements, you don't infringe the claim. The second thing to realize is that just as there are a number of shades of red, each word in a patent claim is open to interpretation. That interpretation, or claim construction, during litigation is going to define how the infringement analysis will go.
The first questions that would need to be nailed down are “what is a channel” and “when is a channel dedicated to a type of media?” 1(a)(i) Is subscribing to a podcast the same as subscribing to a channel dedicated to episodic media? Looking at the rest of the patent, Channels are defined, in part, as a unit of media content organization that specify media that can be selected for immediate play. Could it be an issue if the play isn't immediate, but first requires a download? It very well could be, it could stop an infringement action in its tracks.
Next, the clause at 1(a)(ii) requires receiving a subscription request from the user. What if the user's request goes through a third-party proxy? At first blush, that would seem to get around the whole claim.
Clause 1(a)(iii) requires automatic downloads upon availability of the episode. One interpretation of that would be that it requires a “push” technology and not a “pull” like iTunes uses. The next subclause requires that the download occurs without further user interaction. Would that cover a podcast downloading program that required the user to specify when to check for new podcasts, even if that specification only need to be made once per podcast subscription? After all, it does require a user interaction separate from subscribing.
In short, you can't jump to conclusions about what a patent actually means based on it's title or what a press release says. . . they almost always demand a lot more work to analyze. I might not think the claim reads on the iTunes store, but ultimately, if it gets litigated, that's for a judge to decide. If it does get litigated, come back and we'll play with the prior art cited by the defendant.
I'm not trying to suggest that my take on the claims is what a court should adapt or that the drafters erred in prosecuting the patent. Not at all. I think the claims are quite good and this patent could be an important piece of IP for Volomedia. I don't think, as others have suggested, that this will kill podcasting as we know it.
Jul282009 | Steve O'Donnell
Open Source Chili
When I'm not managing my law office, writing or playing Wii Sports, I like to cook. As a patent attorney and cook, one of the most common questions I get is “can I copyright/trademark/patent my recipes?” The answer is a qualified “no.” but you can protect them as trade secrets.
Copyright protects artistic expression, so it can protect a story or narrative attached to a recipe, but won't give any protection to the recipe itself. There is an argument that cooking is an art so such artistic expression should be copyrighted, but that won't work. A particular dish may be art, delicious art, but its recipe is at least partially useful in that it instructs a reader how to make the dish. In cases where the artistic elements of a piece cannot be separated from the useful elements then the usefulness trumps and copyright will not protect it. Useful items can be protected by patents, but probably not recipes.
Unlike copyrights, patents undergo a ridged examination proceeding and must satisfy a number of requirements. For recipes, the big issues are probably going to be novelty and obviousness. That muffin recipe might be great, it might be the best muffin I've ever tasted, but based on all muffin recipes to have ever existed isn't there some prior art that teaches the same thing? Or maybe two or three other recipes that teach certain aspects of the recipe? It seems to be a very difficult requirement for a recipe to meet. Another requirement that could be a problem is utility, patents will only issue for useful goods. Although the level of usefulness needed is very low, I'm not sure that “delicious” would cover it. On the other hand, some recipes are patentable, such as this one for savory baking chips and this one for treating chest pain with lime juice. Granted, the lime juice patent is not much of a recipe, but it's one of my favorite patents and I wanted to use it. It has expired because the patentee didn't pay a maintenance fee, so if you feel a touch of angina coming on and want to try sucking a lime, go ahead. Let me know how that works out for you.
Trademarks also don't fit the bill. Trademarks identify the source of some goods, even if you printed an entire recipe on a t-shirt and tried called that your trademark, that wouldn't stop someone from taking your recipe and using it. It might stop them from being able to sell their own t-shirts marked with the same recipe, but why anyone would want to do that is beyond me.
What one is left with is trade secrets. As the name implies, trade secrets are secrets. They have served Coca-Cola and KFC quite well over the years. As an aside, I once knew someone that did some engineering work for KFC. He was able to automate 10 of the 11 secret herbs and spices, but the last one was added manually by a guy that would come out with an unmarked brown sack containing the most secret of the secret ingredients. Trade secrets won't help you at all if someone figures out your recipe, just look at how many copycat recipes one can find, so some extraordinary measures are taken to keep these secrets.
So, the bottom line is, if you don't want people to know your recipe, don't tell them.
Now, on to my non-patented, non-trademarked, non-copyrighted chili recipe:
Open Source Chili
from Steve O'Donnell (http://www.3cpatents.com)
time 4 hours
yield 6 servings
ingredients:
3 cans beans
1 t dried thyme
1 t dried oregano
1 t dried coriander
1 t dried red pepper flakes
4 t cumin powder
3 garlic cloves minced
1lb beef chopped
2 beef bouillon cubes
4 slices bacon chopped
1 red pepper chopped
1 onion chopped
4 oz mushrooms chopped
1.5 cup ketchup
1 tomato chopped
3 c water
2 oz corn chips
directions
1. Throw everything into a crockpot and cook on low about 4 hours or until done.
2. I trim the beef, usually a tip steak or something on sale and add it raw to utilize the rendered fat, lean hamburger can also be used, or any other protein you like. The bacon also goes in raw.
3. The corn chips are the “secret.” They disintegrate and add body and flavor. Without them, or masa powder, you get chili-soup instead of chili. I prefer Fritos, because if you buy a bigger bag you can make Frito Pie.
Chile pepper image from Forest and Kim Starr
Jun172009 | Steve O'Donnell
Patenting illusions II
Do you have an illusion that could be patented? If so, should you patent it?
Magic inventions probably fall into one of two categories, gaffs and methods. Both may be patentable. The first thing to consider is whether your new illusion is really new. A new Topit design might be patentable, but stringing together an old card force with an old billet trick, even though no one has ever thought to do it in that way before, is probably not patentable. That doesn't mean that a patent for a card force is necessarily impossible, but it may be difficult to convince the patent examiner of that. On the other hand, since much of magic is not widely known, it might be difficult for an examiner to find prior art that would kill an application. Keep in mind that hiding information from the patent office may result in a patent that is ultimately unenforceable and expose you to civil liability if you try to enforce it.
If you do get a patent on your trick, what do you do with it? There are a few ways of making money from a patent. One would be if it was such a great trick that people would pay to see you perform that one trick. I have a hard time imagining an act that is one trick long, although shady mentalists have been bilking money out of people with little more for centuries. Another way of making money would be to either license the patent or to sell it outright. Licensing is really similar to what is done already under the Magician's Code model. A person would buy a packet trick and get a license to perform it. Unlike the Magician's Code model though, someone that learns the secret without paying for it may be liable for patent infringement damages and the person that shares the secret could be liable for indirect infringement.
Discovering that someone is infringing a patent is a different issue. A patent covering a intricate gaff is going to be much easier than discovering that someone is infringing a patent covering a method of performing an illusion. The first case likely would involve one of a fairly short list of companies, while the second could be someone performing at a birthday party.
Other than the money that could directly be made from a patent, there might also be a secondary value to a patent on an illusion if it increases the inventor's visibility and reputation in the community. An instructional DVD, seminar, or performance poster will likely get more attention if it rightly declares that the inventor is such a creative innovator that the US has granted a patent to his illusion(s).
Whether or not it makes financial sense to invest in obtaining a patent for an illusion is something that needs to be determined on a case-by-case basis. In addition to getting a patentability opinion from a patent lawyer, the inventor might also want to discuss the plan with a business manager.
I would love to work on magic patents. If you think you have something novel, please let me know and I'll see what I can do for you.
If you are a member of the Magic Cafe [http://www.themagiccafe.com] these is a great list there of magic patents in Secret Sessions, search for “Magic Patents - a list.” You'll need 50 valid posts, I think, to access that forum. . . which if you've read this far probably isn't a problem.
Jun162009 | Steve O'Donnell
Patenting illusions
Remember that “Masked Magician” that showed how a number of illusions were done during a series of specials on Fox a few years ago? He upset a lot of magicians by doing that. Could patenting illusions stop such exposure? Can illusions be patented?
When I was in grade school I had a Marshall Brodine magic kit that I studied tirelessly but eventually lost interest in. Years later, I picked up the magic habit again, and again put it down to chase all the other things that teenage boys chase. Then in graduate school I picked it up again. It was around this time that the Masked Magician made his debut. Fast forward a few years and the time constraints of the practice of law and having two kids has made me put down the hobby again although I do pull out the odd Tenkai palm or card force once in a while.
That aside, are patents a good way of protecting illusions? That depends. A few years ago I probably would have said no for most, but I think that has changed and more magicians should seriously consider patenting their original illusions.
The obvious argument against patenting illusions is that patents are public. That's the deal, you teach the public how to do something and in exchange, you get a temporary monopoly on it. Generally, magicians don't want to share their knowledge with the public at large (at least not until someone buys their instructional DVD). Patent applications are published 18 months after they are filed, so by that time, the cat would be out of the bag. In an attempt to avoid large scale exposure, many simply try to live by or enforce the “Magician's Code,” whereby one doesn't get to freely give away secrets and still be part of the fraternity. Of course, that only works if everyone agrees not to share the information they've obtained from someone else.
The Magician's Code worked fairly well for hundreds of years. Even having books at the public library that freely gave away secrets did not erode the public's general ignorance of how illusions are performed. If anything, it encouraged interested people to join the fraternity and support innovators by buying instructional materials and gaffs.
The internet has changed the game for many industries including the business of magic. Instructional books and DVDs can be found on P2P sites or by downloading a torrent file. This itself is one problem, but a bigger problem might be that it's too easy to find a secret these days. If you can describe a trick, you can probably find an explanation online. If not, one of your Facebook friends or twitter followers will probably tell you how it's done.
A patent won't change that, but the disclosure required to get a patent doesn't matter anymore since the information is going to be available online shortly after the trick is first sold if not earlier.
How would patent protection work? That's for tomorrow.
Jun112009 | Steve O'Donnell
Keeping records of your invention
Hopefully you'll never have to prove when you really invented the thing you're trying to patent, but if you do, you better hope you have good records to back you up.
The patent office assumes that the actual date of invention is the date the application was filed. Unless the inventor thought of the widget in the morning, worked through breakfast and lunch to get the invention ready for patenting and then able to get a patent application drafted and submitted by midnight, this isn't going to be the case. Many inventions take years to go from conception to the patent office.
For illustration, we'll say that Inventor A has an idea in January, has it ready for patenting in June and files the application in December. In the mean time, Inventor B has the same idea in February, has the invention ready for patenting in July, but files that application in in November. Who gets the patent?
What should happen is that Inventor A proves that he was the first to have the invention ready to go and so he gets the patent. But, if Inventor A didn't keep notes or kept sloppy notes he might be out of luck if Inventor B kept an organized notebook.
Those notes can also be needed if there is prior art that is published between the time of invention and the time the application is filed or if the invention goes on sale within the year long grace period allowed under 35 U.S.C. § 102(b).
Ideally, counsel will assist in designing and implementing a record keeping system, but that isn't realistic for many first time inventors. However, anyone can keep useful records with a notebook and a pen.
Recent Posts
- Does downloading really hurt DVD sales?
- What happens to patents when a company closes.
- Bilski didn’t change much except my dinner plans
- When the "little guy's" copyright is infringed
- Is there a better way to police a trademark?
- Chick-Fil-A only wants you to eat more chicken.
- What I learned at the 2010 Launch Music Conference
- You probably don't want a provisional patent application
- Avoiding Trademark issues when naming your band
- Two trademark cautionary tales
Comments