Create, Consult, Control
News & commentary on intellectual property issues.
Oct072011 | Steve O'Donnell
Steve Jobs, 1955-2011
I mourn the loss of Steve Jobs.
If it wasn’t for him, well, I’m not sure if we’d still be using DOS, but I think it’s safe to say that technology wouldn’t be where it is now.
If he retired with the stack of money he had following his ouster from Apple in the mid-80s, I doubt we’d be at the point where I can hand a device to my 4-year old or to my mom, and have both people intuitively know how to use it without a long explanatory demonstration. Also, without his influence, technology would still be ugly. He realized there wasn’t a good reason tech had to be beige and that it could form the aesthetic centerpiece of a desk, office, or even living room.
Steve Jobs was also a prolific inventor and realized that patents were vital to business, especially to a company whose strength lies in innovation. He is listed as an inventor on 317 patents that range from computers and peripherals to OS innovations, and even to staircases. I’m not going to list them all, especially since the New York Times already has here. Take a few minutes to look through their list to get an appreciation of the depth of Steve’s influence.
The Times list, of course, doesn’t contain applications that haven’t yet issued as patents. I don’t know how many of those are pending, but I know we’ll be seeing Steve Jobs’ influence for years to come.
Oct272010 | Steve O'Donnell
Can typefaces be copyrighted?
In short: No. In long: Noooo.
37 C.F.R. 202.1(e) states that a “typeface as typeface” is not material that is subject to copyright.
It would have been nice if Congress could have used slightly less circular language than “typeface as typeface,” but in their wisdom didn’t think that was needed.
What that means, and how it’s been interpreted by the courts is that a “typeface is an industrial design in which the design cannot exist independently and separately as a work of art.” In other words, if the artistic expression in a typeface design can’t be separated form the utilitarian use of the typeface, then copyright is not applicable.
This doesn’t necessarily mean typefaces are completely foreclosed from protection. Design patents can be used to protect the design of a font such as in patents USD289422, USD340738, or USD266006. Also, a design that incorporates a non-copyrightable font, may still be copyrighted. Further, if some computer code is used to dynamically scale or manipulate a font, that underlying code can be copyrightable.
Copyright law is a morass and navigating it really requires someone familiar with its particularities. Call or E-mail me to get together and go through any specific questions you have.
Sep102010 | Steve O'Donnell
Reverse settlements still ok for now.
In a reverse settlement, at least in the pharmaceutical context, a patent owner agrees to license the patent or pays off a generic company to drop their patent challenge.
There are regulatory issues that make pharmaceutical patent litigation different than other cases. If a generic company wants to enter the market for a patented drug it needs to file a certification with the FDA regarding the patent, one such common certification is under “paragraph IV.” With a paragraph IV certification, the generic is alleging that the patent is unenforceable. When they do that, the patent holder has a chance to file a lawsuit for a technical act of patent infringement (meaning it’s really not an infringement yet, but the statute says it is). If they do that, then the FDA puts everything on hold until either the case ends, or 30 months, whichever comes first.
If this litigation goes to it’s conclusion and the generic company wins, then the patent holder potentially loses years of patent exclusivity and the huge stacks of cash that comes with a patented drug. The generic victor in this situation will have the 180 days of exclusivity as I noted, but then a flood of other generics is virtually guaranteed, which will erode profits.
With the billions of dollars at stake, it’s hard to imagine that someone wouldn’t come up with a clever innovation. You know, necessity being the mother of all invention, or something like that.
Increasingly we’re seeing reverse settlements. In these settlements, the generic company agrees to drop the lawsuit, typically in exchange for the ability to enter the market under a license. In that way, the patent holder is happy because they get to hold onto their exclusivity and the generic is happy because they’re guaranteed entry into the market, often for a longer time then the 180 days marketing exclusivity that they could have received from the FDA.
The FTC and the class action plaintiff’s bar has been arguing that these settlements are anticompetitive, and I have to agree with them. The drug companies argue that the settlements are pro-competitive because they ensure that a generic will enter the market. However, even if a generic enters the market, it’s still not an open marketplace, it’s an oligopoly (a market controlled by a small number of businesses). Accordingly, the generic keeps its price fairly close to the brand name drug, after all, there is no real competition to drive the price lower.
This battle between the FTC/lawmakers and the pharmaceutical industry has been going on for a couple years and the pharmaceutical industry appears to be winning. Just the other day, the 2nd Circuit refused a full rehearing of a case concerning one such settlement.
What do you think should happen? Should these settlements be barred? If so, doesn’t that go against the strong bias we have towards equitable settlements? I think it’s clear that the settlements are anti-competitive, but patents themselves are anti-competitive and most recognize that they’re generally beneficial. Maybe the statute should incentivize a second generic challenging after a reverse settlement. Right now the 180 day generic exclusivity is only available to the first challenger, maybe changing that would mitigate the impact of reverse settlements. I’m not sure what the answer is, but I’d love to hear some ideas.
Sep062010 | Steve O'Donnell
Turning an invention into money
Although there are some people that want patents just to fill up their résumé, most want their invention to become a money making machine, many inventions don’t. How does someone turn an invention into money?
First things first, if you don’t have some sort of protection for your invention or you’re just asking to be ripped off. Patents would be the most obvious route to protect an invention, but copyright, trademark, and trade secrets might also be relevant. This is the time to contact an intellectual property attorney and get an opinion on structuring a protection scheme.
When people call me, one of the first things I ask is what they’re going to do with a patent. Patent’s aren’t cheap or easy to get, and before someone starts throwing money at me I want to have at least some indication that they’re planning ahead and have a shot at recouping their investment. I lose more clients that way than I can care to think about.
First, many people seem to think that once they have a patent that companies will find it and search them out with a briefcase full of cash. I guess that could happen, but it sure doesn’t happen often.
There are basically three or four ways of turning an invention into money. Each has their strengths and weaknesses and which is the best will depend on the specific facts of the invention and the inventor: do it all yourself, license or sell the invention, or troll.
Most first time inventors want to do it all themselves. In other words, they want to start cranking out their widget in their basement, or pay a manufacturer to make it for them, and promote/sell it themselves. There are huge benefits to that. Obviously, all the profit goes to the inventor. However, if the inventor does not have the background or bankroll to commercialize a new product, the chances of success aren’t the best.
Another route is to either assign or license the inventor to an established company. The advantage are that the other company already has the infrastructure to commercialize the invention; on the downside, the inventor will likely only get a small fraction of profits.
If those fail to excite you, trolling has become popular. In a nutshell, what you do is get a patent and sit on it while waiting for someone to infringe it. If that happens, you wait until their product has taken off and then you sue them. It’s not a particularly popular option, and there are grumblings about how Congress might make that a less attractive option economically, but it is still an option.
What makes the most sense for a particular invention and a particular inventor is going to depend on a lot of factors, and it’s never too early in the process to think about these issues.
Call or email me for an individualized analysis of your intellectual property and your options.
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.
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