LoTempio Law Blog

Facebook files Counterclaims against Yahoo

Vincent LoTempio — Sun, 15 Apr 2012 14:30:09 -0500

The Facebook and Yahoo patent battle continues. Just last week Facebook answered the Yahoo complaint of patent infringement and issued the Facebook counterclaims.

Facebook claims that Yahoo is infringing on 10 patents that Facebook now owns.

Of course these counterclaims probably would never have been asserted had it not been for the fact that Yahoo sued Facebook. (Facebook Counterclaim filed PDF).

Facebook is about to go public and it logical to assume the Yahoo strategy of filing the law suit at this time would be to put pressure on Facebook to settle the Patent law suit quickly before the Facebook public offering.

But Facebook has not shown any inclination to settle and fired back with infringement claims of its own. These claims may be the leverage in settlement negotiation that will even the playing field. One doesn't get a great settlement if you fold your cards early in the game.

Amy Miller from Law Technology News reported that Facebook general counsel Theodore Ullyot said in an emailed statement:

"From the outset, we said we would defend ourselves vigorously against Yahoo's lawsuit, and today we filed our answer as well as counter-claims against Yahoo for infringing ten of Facebook's patents. "While we are asserting patent claims of our own, we do so in response to Yahoo's short-sighted decision to attack one of its partners and prioritize litigation over innovation."

Ten Facebook patents cited in the counterclaim:

6216133 Method for enabling a user to fetch a specific information item
6236978 System for dynamic profiling of users in one-to-one applications
6288717 Headline posting algorithm
6411949 Customizing database information for presentation w/media selections
7603331 Method for dynamic profiling of users in one-to-one applications
7827208 Generating a feed of stories personalized for members of a social network
7945653 Tagging digital media
8005896 System for controlled distribution of user profiles over a network
8150913 System for controlled distribution of user profiles over a network
8103611 Architectures, systems, apparatus, methods, and computer-readable medium for providing recommendations to users and applications using multidimensional data

Three of the Facebook patents were invented by Facebook engineers, and the patent for Tagging digital media was co-invented by Mark Zuckerberg.

The remaining patents were acquired from New York Univer sity, IPG Electronics, and Cheah IP LLC. The patent for "Sys tem for controlled distribution of user profiles over a network" is so new that it was only was assigned to Facebook in March and granted on April 3, 2012.

The counterclaims assert that specific pages on the Yahoo website infringe the above listed patents. Here are a few examples of uses of innovation by Yahoo that allegedly infringed patents now owned by Facebook:

Photostream,
Recent Activity and Groups Activity,
People in Photos feature on the Yahoo!
Flickr photo sharing service,
Yahoo! Home Page, and
ads displayed on My Yahoo!

Thanks to MaxVal for providing my daily litigation alert and the actual counterclaim filed by Facebook.

LXBN TV interview: Yahoo/Facebook patent case

Vincent LoTempio — Wed, 21 Mar 2012 12:06:50 -0500

I spoke with with Colin O'Keefe of LXBN TV about the patent infringement suit Yahoo recently filed against Facebook. In the interview, we discuss:

the numerous patents Facebook allegedly infringes upon,
why Yahoo chose to file suit now and
the current relationship between Yahoo and Facebook.

Funny how people want to ask is "Yahoo a patent troll?" As it turns out Facebook just purchased 750 patents from IBM.Bloomberg reported that Facebook purchased IBM patents and "the deal involved 750 patents for software, networking and other technologies."

I wonder if we are going to see Facebook going after other social networking sites in an attempt to make money. Or is Facebook going to useuse their new patent portfolio as defensive patents. Remember patents don't give you a right to make or use the invention it only gives you a right to stop others from using it.

Yahoo patent case against Facebook

Vincent LoTempio — Sun, 18 Mar 2012 14:38:18 -0500

Yahoo filed an infringement lawsuit against Facebook based upon 10 patents. Some of the patents have been around for a few years. What took them so long to make this claim?

Or is it just coincidence that Facebook is about to go public with huge IPO. Facebook filed for a $5 billion initial public offering which could be one of the largest technology IPOs ever.

Do you think Yahoo is thinking that a few shares of Facebook would be nice addition to their Stock portfolio?

The Yahoo complaint (PDF) lists 10 patents in which they argue Facebook has infringed. Barring a settlement it will be up to a jury to decide if the Yahoo claims are valid.

Yahoo released a statement that Yahoo has

“invested substantial resources in research and development through the years, which has resulted in numerous patented inventions of technology that other companies have licensed. These technologies are the foundation of our business that engages over 700 million monthly unique visitors and represent the spirit of innovation upon which Yahoo! is built. Unfortunately, the matter with Facebook remains unresolved, and we are compelled to seek redress in federal court. We are confident that we will prevail.”

Facebook and Yahoo have recently teamed to provide a SOCIAL BAR which allows Yahoo users to know what their Facebook friends are reading about on Yahoo.

Because of this new relationship Yahoo is benefited by the increased traffic to their website.

I remember when I was in law school and Prof. Fisher my Wills and Trust teacher said to us "money makes people funny".

The learned professor meant that just because a bequest is to a family member don't think that they're not going to fight over the assets when the estate is settled.

Even though Yahoo and Facebook have recently been playing nice together, I guess Yahoo just wants a little bit more money. In response, Facebook has released a press release stating:

“We’re disappointed that Yahoo, a longtime business partner of Facebook and a company that has substantially benefited from its association with Facebook, has decided to resort to litigation. Once again, we learned of Yahoo’s decision simultaneously with the media. We will defend ourselves vigorously against these puzzling actions.”

I was asked my opinion recently by reporter Rachelle Dragani of the E-Commerce Times about the case and wondered out loud "Is Yahoo a patent troll?"

What makes someone a patent troll?

I think patent trolls are nonpracticing entities (NPE) that file patent dubious patent infringement lawsuits for the sole purpose of squeezing money out of profitable businesses when there's just a mere possibility that there's an infringement. This seems obvious when there is no active business selling that product that needs protection. I guess if the complaint is valid and there is actual infringement taking place then the accuser is not a patent troll.

Even when there is no valid infringement the lawsuit takes a life of his own. Usually in these huge cases settlement is inevitable.This is so because it will cost more to fight and win than to just settle now.

I wonder if it's a good idea to upset a giant like Facebook? Lawsuits like these often cost millions of dollars and if you're suing somebody that has billions of dollars a few million dollars in a lawsuit isn't such a big deal. Can the giant Facebook brush aside the smaller Yahoo?

Or will the fact that the IPO is pending and the risk factor that those billions of dollars can be lost to Yahoo become a big enough incentive for Facebook to settle? It will be interesting to see what happens. But I believe Yahoo is playing with fire.

Trademark applicants beware

Vincent LoTempio — Wed, 07 Mar 2012 19:48:21 -0500

Recently the United States Patent and Trademark Office (USPTO) issued a warning to all trademark applicants regarding “Non-USPTO Solicitations that Resemble Official USPTO Communications.”

The USPTO warned that companies not affiliated with the USPTO were using the USPTO database to find and locate new trademark applicants and are sending out letters that resemble an official notice.

When a few of my trademark applicant clients called me and asked me if they should pay a "bill" they just received from the trademark office, I said "it was a scam solicitation" and my office provides any necessary services. I wonder how many people received a similar letter and paid it thinking they were paying an official bill.

I bet many big companies receive letters like this and it goes to their accounting department and gets paid. The companies sending out the scam letters must be making money off it otherwise they wouldn't continue to send these letters out.

Is what they are doing illegal? Probably not. Supposedly they are providing the services which they tout in the letter. Each one of those services are services that a trademark applicant could possibly use. However does every trademark applicant need those services?

The bottom line it's is a sleazy way to do business; sending out letters that confuse somebody to believe that it's an official government invoice.

Here's an example of letter that a trademark applicant received:The USPTO warning has examples of services which typical scam letters list, which so happen to coincide with the letter that I posted above:

for legal services;
for trademark monitoring services;
to record trademarks with U.S. Customs and Border Protection; and
to “register” trademarks in the company’s own private registry.

The USPTO indicates that the companies use names that resemble the USPTO name, including, for example, the terms "United States" or “U.S.”

The letter posted above clearly tries to confuse people by using the name "United States Trademark Registration Office."

The USPTO warning page further goes on to say:

Increasingly, some of the more unscrupulous companies attempt to make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation by emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records.

All official correspondence is from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.”

I tried a Google search using the words "United States Trademark Registration Office" and mostly legitimate sites, particularly the actual website for United States Patent and Trademark Office came up on the first page of the Google search.

Obviously the name is used to confuse the people who receive this letter; it actually confused a Google search. I did find one article recently published by David Lazarus in the Los Angeles Times where he reports about the USPTO notice and how these companies are "preying on the unwary with official looking letters."

I guess the bottom line is don't just pay official looking bills. Understand that once you file a trademark application and your application is posted on the USPTO website you'll be added to a mailing list and likely become a target of these solicitations. Before you pay anything to anyone: make sure you know what you are paying it for and who you are paying it to.

What entities sued for Patent Infringement in 2011?

Vincent LoTempio — Mon, 27 Feb 2012 22:16:30 -0500

Anoop Gopakumar and his group at MaxVal provide patent litigation alerts every day and today Anoop provided me with some interesting data on patent filings over the past year.

3963 patent litigation cases were filed 2011.

I've posted below a detailed chart analysis of who filed those patent lawsuits. The first chart below looks at the top-25 filers of patent infringement lawsuits during the past year.

Patent Group LLC, a non-practicing entity (NPE) filed the most patent lawsuits in 2011. The PricewaterhouseCoopers (PwC) group defines NPE as

“an NPE is an entity that does not have the capabilities to design, manufacture, or distribute products that have features protected by the patent.”

The second table breaks down the number of lawsuits filed by month.

If you want to get a free year of alerts you can follow this link and sign up and register for free alerts regarding patent litigation. It's free and you can also download the complaints that these companies filed to initiate the lawsuits and see the actual allegations of patent infringement and how the big-time law firms put together a complaint regarding patent infringement.

I just looked through some of the Maxval free patent tools that they provide. Clearly these free tools can certainly help analyzing patents with regard to infringement and otherwise. I like the USPTO widget that they provide which instantly displays bibliographic details, publication full text of the document as well as assignment details and maintenance fees that are owed. It certainly worked very well the time that I tried it.

I'm going to take part in this litigation alert and make an analysis over the next couple months as to who and what types of companies are filing patent litigation complaints and perhaps even take a look at the complaints and how they are making these allegations. So keep an eye out for blog posts in the future that will analyze patent litigation based upon the alerts that I receive from MaxVal.

Getting a piece of the social media pie

Vincent LoTempio — Sat, 25 Feb 2012 16:26:37 -0500

The Buffalo Law Journal asked me to write a guest column in their recent edition which featured a Special Report on Legal Technology/Social Media.

Here is the article:

Getting a piece of the social media pie

Through social media, the Internet is once again profoundly changing the world in which we live and how we operate.

The social networking avenues of the Internet - such as writing a blog, connecting with other professionals on LinkedIn, Facebook, Google+ and Twitter - give virtual access to millions of potential clients to anyone who wants to take advantage of it. Lawyers are inherently conservative and loath to try anything new. But it's hard to ignore what everyone else is doing on the Internet and it's not surprising that law firms want a piece of the social media pie.

Just because the world has gone virtual, the reality that lawyers get clients by word-of-mouth hasn't changed. Word-of-mouth is still the most powerful referral mechanism and the basic tenet of networking. What's different in the age of social media is "how" an attorney's word-of-mouth reputation develops. Social networking, whether on the Internet or in person, is and always will be a matter of connecting and building relationships with thought leaders and potential clients.

Lawyers who were struggling to learn to use computers just a few years ago now realize that it's not uncommon for people who have been using social networking for a while to be "followed" in some fashion by a significant audience. What's even more obvious is that clients make the decision to hire an attorney in a particular area of law based upon social media.

Getting noticed on the Internet is similar to the old-fashioned way of getting noticed in the community for doing the right things. Lawyers publish blogs to enhance their reputation, demonstrate professional capacity and grow the firm's business and their own practices. Blogging allows potential clients to distinguish one firm from another. Clients - whether small businesses, corporate executives or in-house counsel - hire lawyers they recognize as trusted and knowledgeable authorities in their field.

By researching issues in the law and by sharing what is learned through blogging, attorneys can quickly establish a widespread reputation as an expert in that area. In a short time, a lawyer's blog can accumulate a body of easily accessed, relevant commentary to be read by potential clients and the people who influence clients, such as the media. My law blog at LoTempiolaw.com got noticed by the editors of this publication and that's how I got the opportunity to write this guest column.

Among online networking sites, LinkedIn has emerged as the online "water cooler" for professionals to gather around. LinkedIn is now publicly traded and has grown to more than 135 million members in 200 countries. LinkedIn encourages users to "Change the way you communicate. Change the way you do business."

The profile you create for LinkedIn allows you to present yourself and your law firm to millions of people. For example, my 612 connections on LinkedIn link me directly to 4,888,511 LinkedIn members.

You can log in to LinkedIn and read the most recent high-profile stories in your industry. You can join groups and discuss topics that are unique to what you do. You can follow like-minded attorneys who are discussing trends and important legal cases. You can join the conversation and build relationships for free.

Social media vehicles such as Twitter, LinkedIn, Youtube and Facebook are used by lawyers to promote their firms' Web page and articles from their blog on a personal level. Social networking sites such as these employ advanced search engines that, combined, receive billions of search queries each day from their hundreds of millions of users.

It should be noted that instead of using the traditional "Google search," more and more potential clients are using the social network search engines.

Based upon this trend alone, law firms need to ask themselves: "What are we doing to move on from a Google search world to the social media world?" People looking for a lawyer turn to people they trust. Today, relationships of trust for many people are established via social networks.

When considering taking the social media plunge, the biggest question from attorneys is: "Where do I find the time to social network? And is all the effort worth the results?" A member wrote on a LinkedIn discussion board last week that he was "looking for volunteers at his Law Firm to write on the firm's blog." Yes, blogging and social networking at the various popular social media sites take some time, effort and there is a learning curve, but it is part of requisite business development if you are interested in becoming a successful lawyer.

Successful lawyers traditionally spend time on a weekly basis on practice development. That's not time talking to existing clients - it's time spent finding ways to get in front of and to communicate with new people. Social networking online is an opportunity to extend the scope of practice development efforts to an unlimited audience. The point of any networking campaign is to be accessible and relevant, which necessarily requires some work. There is a direct correlation between the effort put into social networking and the results obtained.

Using many social networking avenues on the Internet is the first step in getting a "piece of the social media pie." I wonder if, as the social media party becomes more widespread and more and more people join in, will it be harder to get noticed? Everything in life is ever changing and there is a constant learning curve in anything we do, but I believe that no matter how many people join in, establishing relationships online is the backbone of any social media campaign in your legal community. And the reality is that the community is now virtually the whole world.

Inventions "get on the shelf" at Walmart

Vincent LoTempio — Thu, 02 Feb 2012 21:54:24 -0500

As a patent attorney in Erie County I often get asked, "how can I get my products on the shelf in Walmart?" Shelf space is like real estate and every inch inside the store has to be accounted for and the product on that shelf must earn a profit equivalent to the cost to keep that shelf space available in the store.

An independent inventor has to be able to sell his idea to Walmart such that Walmart will remove other things currently in the store to make room for that product. This is a very difficult thing to do for an independent inventor.

Well this might have changed because right now, on the Walmart webpage they have a contest to "get on the shelf".

Even if you don't win the contest you certainly can get some exposure on their webpage which is visited by thousands of people while the contest is going on.

You can go to the Walmart webpage and enter your invention up until February 22, 2012. If you win the contest you will get your product on the shelf at all the Walmarts throughout the country.

You can get your friends and family to vote for you and hopefully your great idea will get on the shelf at Walmart and you can be on your way to becoming a successful profitable entrepreneur with a new invention.

I think it's a great opportunity for inventors to get out there with their great ideas. Hopefully you're the next new inventor and your product is sold at all the Walmart stores. Good luck.

Top ten list of companies to get US patents in 2011

Vincent LoTempio — Wed, 11 Jan 2012 18:33:20 -0500

According to the United States Patent and Trademark Office “Performance and Accountability Report of Fiscal Year 2011” the USPTO granted an all-time high 244,430 United States utility patents in 2011.

Asian companies hold eight of the top 10 spots on the 2011 patent list and 25 or half of the top 50 U.S. patent-grant recipients with U.S. firms having17 spots. Asian countries represented in the top 50 include Japan, South Korea and Taiwan.

Most of the companies in the Top 50 were up from 2010, many shattering records and posting double-digit percentage gains.

IBM has held down the #1 patent rankings position for 19 consecutive years, with a record 6,180 patents in 2011, up from 5,896 in 2010. IBM was the first company to break 5,000-patent in a single year in 2010 and in 2011 the first to break the 6,000-patent mark in a single year.

IBM’s 2011 patent total was almost five times as many as Hewlett-Packard’s 1308 and exceeded the combined issuances of Microsoft, Hewlett-Packard, Oracle, EMC, Apple and Google.

More than 8,000 inventors residing in 46 different U.S. states and 36 countries generated the IBM's record-breaking 2011 patent tally. IBM inventors residing outside the United States were responsible for 26% of the company's 2011 patents.

Although in terms of patent grants, IBM has been No. 1 for the lat 19 years, Samsung's published applications eclipsed those of IBM in the last two years... so is the "writing on the wall" that the 19 year streak will end in the next couple years?

List of the top 10 company's to receive a US patent in 2011:

International Business Machines (US) 6180
Samsung (Korea) 4894
Canon K K (Japan) 2821
Panasonic Corp (Japan) 2559
Toshiba (Japan) 2483
Microsoft Corp Corporation (US) 2311
Sony Corporation (Japan) 2286
Seiko Epson Corp (Japan) 1533
Hon Hai Precision Industry Co. Ltd (Taiwan) 1514
Hitachi (Japan) 1465

Where are the most inventors with patents coming from in the U.S.? The inventors come from every state and all of the territories. In 2011, the top five states that led the list in numbers of patents were:

California 30,397
Texas 8,054
New York 8,026
Washington 5,227
Massachusetts 5,003

According to the "Performance and Accountability Report of 2011" of the 244,430 patents that were issued a little bit less than half (120,178) were issued to United States citizens. The remaining 124,252 issued patents went to citizens of a foreign country.

Interview with song writer Alan Gembola

Vincent LoTempio — Tue, 10 Jan 2012 10:47:33 -0500

As a Buffalo copyright attorney I meet many new authors. A childhood friend of mine recently published a book of songs he wrote and I asked him to share some of his thoughts about the publishing process with my LoTempio law blog readers.

Here is what Alan Gembola had to say:

Can you give us a little background about yourself and how you decided you wanted to be an author of a book?

I’ve always loved music and listening to the radio. In the early 70’s I heard the rock operas ‘Tommy’ & ‘Quadrophenia’ by The Who; at that point I wanted to write.

I eventually got some words down on paper (mostly trash) but kept trying. I was further motivated by Peter Gabriel’s (Genesis) ‘Lamb Lies Down on Broadway’ & bands like Roxy Music (plus a little encouragement from friends).

Eventually I just wrote because it was fun. Around 2001, I decided to make a serious attempt at writing a diverse collection of song lyrics; a unique collection that had a CD & perhaps author notes & illustrations, the seed for ‘Silver & Leather’ was planted.

Ten years later, and a lot of long writing & recording sessions, “Silver & Leather’ is in stock and ready to ship from Amazon and released on Christmas Day 2011.

How did you find a publisher?

I self-published Silver & Leather. Trying to find a publisher (for a first book author) – I felt – would have taken a lot of resources, with no guarantee of success. I decided to direct what limited resources I did have into creating, publishing, promoting, & distributing ‘Silver & Leather’.

What are some of things you learned about getting the book published?

Besides the numerous technical challenges I faced (with software, printing techniques, font conflicts, CD creation, laptops crashing, etc.) the biggest thing I’ve learned is once you do publish, the project isn’t over; the hard work of marketing and distribution is just beginning.

Can you put together a checklist of things a new writer should know and do?

Here are a few tips that helped me write & publish ‘Silver & Leather’:

I learned from lyric writing, a good first step is to have a title, theme, or concept.
Visualize, based on your title/theme/concept, what the finished product will be.
Start writing (and have fun doing it!) – try to do a little every day (if you’re waiting for “inspiration” to write, you will probably never publish your book).
Once you feel confident that you’re actually on-track to finish the book, publicly announce a release date – this was a critical step for me and forced me to push myself, to the point of exhaustion, to meet this date.
When your first draft is complete – edit, edit, edit, edit, edit!
It doesn’t cost too much to write a song lyric or book; but, publishing does cost. Expect to spend a little money along the way – printing fees, ISBN purchases, copyrights, software needs, giveaways, promotions, and in my case, CD labeling & creation/packaging costs, etc., etc...
Cut a pre-release (beta copy) and send it select individuals for feedback – this really helped me a lot!
Once you have the final, final, final version of your book – assign it an ISBN number & bar-code – you are now considered published and can copyright your book as such.

What were the most difficult things you had to overcome to write the book and get it published? What were the things you enjoyed the most about putting the book together?

Silver & Leather was over 9 years in the making; so, most of the actual song lyrics were already written (and many of the vocal tracks were recorded in 2006) – but – organizing them all into a standard format, making last minute corrections, and adding the author notes & CD created some challenges.

As far as the actual publishing, the most difficult obstacle was creating a master file for printing; any little changes can really confuse the printing process. What was enjoyable throughout all this was watching, slowly but surely, my original vision for ‘Silver & Leather’ coming to fruition in every detail.

What would you do differently if you had to do it over again?

Next time I’ll use a lot more outside people and resources. For ‘Silver & Leather’ I’ve done almost every job in the writing, publishing, & producing processes. I won’t for example, edit the book myself or manufacture and package the CD’s for the next project.

What were some of the administrative challenges?

90% of the lyrics were previously registered with the US Copyright Office in 3 different volumes as “unpublished” works (2004, 2005, & 2011). I also was going to copyright a sound recording (‘Silver & Leather The CD’) for the first time with a few new lyrics and other contributing artists.

Somehow, I wanted to combine the entire package into a single copyright for ‘Silver & Leather’ – including the CD. Now that ISBN numbers are assigned, I can proceed with the single copyright for the “published” collection.

What are some of the marketing techniques you use to get your book noticed?

I started with teasers about the release date and progress of the project on Facebook. I then issued a pre-release package of materials to select individuals encouraging them to provide feedback to info@gembolalyrics.com and to share the materials with family & friends.

I opened a website gembolalyrics.com (which by the way is the official publishing company of ‘Silver & Leather’) that provides a link to my exclusive Amazon distributor, Insight Media.

Finally, I created a special workbook edition of ‘Silver & Leather’ designed specifically for my #1 target audience – musical composers. My distributor & I have a lot of great marketing ideas and will have the 2012 plan in place by the end of January.

Who proofread and edited your book for you?

I did the editing myself – never again – a very time consuming and inefficient process that I’m sure didn’t catch all the details it needed to. As far as the research of names, dates, and events called out in the author notes and song lyrics, they were checked by the new internet research company www.onlythefactsman.com.

Are you considering writing a second book? How did you get on Amazon? How did you get an ISBN number?

I have plenty of ideas for a second project but will probably spend most of 2012 promoting ‘Silver & Leather”

I was very fortunate to partner with the well-established, highly rated, Amazon seller, insight_media, who is currently the exclusive distributor for ‘Silver & Leather’s’ hardcover edition, special workbook edition, and electronic edition; insight_media specializes in books and CD’s.

No book critic, retail or online book outlet, library, or school is going to recognize your work without an ISBN number (along with a bar-code, indicating the retail price) assigned to each edition; this serves to clearly identify the details (like binding & number of pages) of your book for the buyers’ information.

ISBN numbers and bar-codes are sold to publishers. In my case I self-published (Gembolalyrics.com) and purchased a block of 10 ISBN numbers and three bar-codes from Bowker (an authorized broker company); as far as I know, this is the only place you can get an ISBN in the United States. If you have a publisher, they will probably have a number & barcode for you.

Is there anything that you would like to share that I didn't ask regarding the process of writing a book and getting it published for sale?

I just want to say thank you to LoTempioLaw.com for the interview and suggest we get together again in a year to see how the marketing plans have worked out.

Facebook Infringed Leader Patent

Vincent LoTempio — Wed, 21 Dec 2011 21:08:25 -0500

Even though a jury ruled that the software that runs the famous Facebook site infringed on the patent of Leader Technologies, Facebook still won the case. The reply appeal brief was just filed last month.

I think the issues in this case are relevant for all inventors. Inventors should be aware that disclosure of their invention prior to filing a patent application could invalidate the patent after it is allowed.

If you are an inventor and you have an idea and you want to "get it out there" into the market, you better file a patent application less than one year after you offer it for sale, publish it anywhere or use it in public.

On November 19, 2008, Leader filed a patent infringement suit against Facebook alleging infringement of United States Patent No. 7,139,761 (Leader Technologies, Inc. v. Facebook, Inc., (D.Del. 2008). Fed. Cir. Case No. 2011-1366). On July 28, 2010, the jury rendered a verdict that Facebook infringed all of the asserted patent claims and that the claims were neither anticipated nor obvious in light of the prior art. But the jury also ruled that even though Facebook directly and literally infringed on the patent...the patent was invalid because of 102(b) disclosures.

A patent is invalid under 35 U.S.C. § 102(b) if the patentee publicly used or offered for sale a product that embodied the patented invention more than one year before filing the patent application.

The jury found the patent invalid on the theory that Leader had publicly used the patented invention and offered it for sale more than one year before filing the patent application.

Leader Technologies is an innovative software company based in Columbus, Ohio. Chairman and founder Michael McKibben created Leader in 1997 with the goal of using "the internet as a platform for doing large scale communications and collaboration."

At that time, the internet was in its infancy, with the number of users measured in the mere millions. Leader recognized the untapped potential of the internet-"an unclaimed market space"-and moved to enter that marketplace.

Leader won the part of the trial that most people would think would be the most important: Leader won on "literal infringement" of 11 of 11 patent claims and no published prior art regarding Leader's U.S. Patent No. 7,139,761 (PDF).

In other words, the engine running Facebook is Leader's invention. But Facebook won because of a statutory bar called "on sale bar and public disclosure."

The case is now on appeal to the Federal Circuit Court of Appeals in Washington, D.C. The appeal briefs have been filed and a date for oral argument is going to be set. The Leader brief (PDF) argues that Facebook had no evidence of sale/public disclosure and confused the jury with court room theatrics. The Facebook brief (PDF) argues their evidence was "substantial."

It is pretty unbelievable that this case has not gotten more publicity.

The case raises many questions:

Could Mark Zuckerberg have invented Facebook in "one or two weeks" while studying for finals?
Is it just a coincidence that Leader inventor's son Max was in the dorm next to Zuck?
Could Zuckerberg have hacked into the inventor's son's Harvard email account that described McKibben's invention which Zuck just mimicked and launched a month later?
Is there evidence that Facebook had to wait until the Leader patent published in the summer of 2004 to add the "groups functionality" in Facebook because they couldn't figure out how to do it without the patent?

But none of the questions of who invented really matter now because of the statutory bar. Perhaps Leader can overturn the jury's decision. The blog "Origin of Facebook's Technology?" breaks down the appeal briefs and points out all the weaknesses in the Facebook arguments. Perhaps the blog is a little one-sided, I wonder what the agenda is? But who knows what's going happen in this case.

The lesson every inventor should take away from this case is: file your patent application as soon as possible.

Inventors Hall of Fame: Robert N. Noyce

Vincent LoTempio — Thu, 15 Dec 2011 10:56:51 -0500

Inventor Robert N. Noyce

Born Dec 12 1927 - Died Jun 3 1990

Invention: Semiconductor Device-and-Lead Structure Integrated Circuit
Patent Number 2,981,877 (PDF)

Inducted into National Inventors Hall of Fame™ in 1983

Often referred to as the Mayor of Silicone Valley, Robert Norton Noyce developed the integrated circuit chip, or the microchip, that makes personal computers and other everyday technologies that we take for granted possible.

Noyce not only left a legacy through his inventions, but also through mentoring fellow Silicone Valley entrepreneurs among the ranks of Steve Jobs.

This past week on the anniversary of his birthday, Google honored Noyce, making their Google doodle resemble an integrated circuit.

Invention Impact

Noyce was truly a visionary, revolutionizing the world of electronics; today, integrated circuits are used in almost all electrical equipment.

The invention was a major improvement over the manual assembly of electric circuits, and mass production made electronic devices cheaper and more common.

Now the integrated circuit is broken into many more categories based on what the chip does. For example, the microprocessor is an integrated circuit that processes all the information in a computer.

One of the most mind-boggling characteristics of these microchips is the evolution of the integrated circuit has continued in respect to the size; the most advanced circuits contain several hundreds of millions of circuit components on an area no larger than a fingernail!

The former Apple Inc. CEO told Leslie Berlin, author of "The Man Behind the Microchip",

"Bob Noyce took me under his wing. I was young, in my twenties. He was in his early fifties. He tried to give me the lay of the land, give me a perspective that I could only partially understand." The late Jobs continued, "You can't really understand what is going on now unless you understand what came before."

Inventor Bio

An Iowa native, he received degrees in Physics and Mathematics from Grinnell College (Iowa) in 1949 and a Ph.D. in physical electronics from the Massachusetts Institute of Technology in 1953. He studied the first transistors, developed at Bell Laboratories, in a Grinnell College classroom.

Up until 1956, he did research at Philco Corporation. After leaving Philco he joined Shockley Semiconductor Laboratory in Palo Alto, California, to work with transistor technology.

As research director of Fairchild Semiconductor, he was behind initial development of the firm's silicon mesa and planar transistor product lines.

In 1957 Noyce co-founded the Fairchild Semiconductor Corporation in Mountain View, California where he also served as research director until early 1959 when he became vice president and general manager.

In July 1968 he co-founded Intel Corp. another co-founder of Fairchild Semiconductor and a member of the Shockley laboratory staff. Noyce served as president of Intel until 1975 and chairman of the board from 1975 to 1979.

Noyce held 16 patents for semiconductor devices, methods, and structures.

After suffering a heart attack in his home, Noyce died on June 3, 1990.

Posted with the permission of the National Inventors Hall of Fame™

Inventors file record number of patent applications

Vincent LoTempio — Sun, 04 Dec 2011 21:02:35 -0500

The United States Patent and Trademark Office released its "Performance and Accountability Report" and one thing is obvious from the report is that the number of patent applications filed in the United States is going up.

Record numbers of United States inventors and businesses find it more important than ever to protect their intellectual property by filing a patent application.

Here's a table from the report that shows the number of patent applications that were filed every year since 2007 has gone up.

So, over 500,000 new patent applications were filed in 2011. As much as the patent office wants to become more efficient the number of patents filed each year keeps the 6,664 patent examiners very busy.

With this great number of applications filed, the patent office discusses its goals and difficulties in trying to achieve a more efficient way to keep up with the huge numbers of patents filed every day in the United States.

In the report it is stated that the patent office has

"undertaken a series of initiatives to improve the speed and quality of patent processing in an ongoing effort to further strengthen the examination capacity of the USPTO."

For the first time in several years, the number of patent applications awaiting first action has fallen below 700,000. Even so doesn't a backlog of 671,409 seem like a pretty big number to you? Well it is, and even if the number of pending applications is much lower than it has been in the past, it still takes over two years for a new patent application to be looked at for the first time.

2012 Patent Calendar

Vincent LoTempio — Sat, 19 Nov 2011 15:25:29 -0500

Last year I interviewed professional patent searcher Martin E. Keller after he sent me his 2011 patent calendar. Each month on the calendar is accompanied by a drawing of a funny device described in a US patent.

This year I received a PDF version of the calendar which I share with you here. It is entitled "The 2012 Keller Patents Top Twelve Calendar." Martin indicates in his calendar he has

"conducted a few thousand patent searches in (his) career, starting in the “paper only” days - all the way up to the present EAST system. Everything from simple mechanical and electrical novelty searches to validity and infringement studies.

In the 2012 calendar Keller shares some fun patents with us. Here are a couple drawings I pulled off the patent calendar that you might find interesting.

One patent describes how to save the lives of airplane passengers in a disabled airplane by separating the passenger compartment from the fuselage of the airplane. It's kind of like the idea of the saucer section of the Starship Enterprise separating in an emergency.

I'm sure it would have been valuable in the 911 terrorist attacks. But who would decide when to deploy the parachute's? The captain or the stewardess.

And if there were hijackers aboard and have taken over the captain's cabin should the stewardesses be able to do it on their own? And I'm sure it would not be the best ride in the world.

What about these wheels on this guy's feet. This invention was from the 1980s. I am an ice skater but I I wonder if I could wear these. Of course the prototype probably has a lot of kinks to work out of it.

How about this motorized traveling case scooter. It appears that it's probably so heavy it needs to be wheeled. But this was made in 1967. Before anybody used suitcases with wheels.

Too bad for him he didn't try to sell the suitcase with wheels.

He might have been much more successful. You remember that in 1967 a suitcase didn't have wheels. Now you can't find a suitcase without wheels.

What about this gasoline powered blender PDF? There's a Nissan commercial that leads a new ad campaign that asks "What if everything ran on gas?" This guy certainly wasn't thinking green.

How about this bicycle fan from 1890. Seems like a good idea to me. Wouldn't you want this on a hot summer day? I wonder why some of these inventions never took off?

Download "The 2012 Keller Patents Top Twelve Calendar (PDF) and take a look at all the rest of the interesting patents that Martin found for our enjoyment.

Thanks Martin for the calendar. Here's Martin's contact information:

Martin E. Keller
Professional Patent Searcher
1940 Duke St., Suite 200
Alexandria, VA 22314
T:703-624-0310
F:703-636-7700
e-mail: kellerpatents@gmail.com

The Process of Writing and Publishing a Book

Vincent LoTempio — Tue, 25 Oct 2011 21:20:58 -0500

As a Buffalo patent attorney I often get asked questions from would-be authors about publishing and copyright. Dave Kocak tennis pro at the Miller Tennis Center wrote a book called "Tennis for the Rest of Us" and I asked him to share some of his thoughts about the process of writing and publishing a book.

Here is what Dave Kocak had to say:

I've been a tennis pro for about 30 years. I've taught in many venues, resorts, private clubs, country clubs and public clubs. I've worked with nationally ranked juniors, beginning juniors and adults at all levels.

While I've enjoyed teaching them all my favorite groups are beginning and lower level adults. Over 30 years I think I've learned a lot about how to teach adults and I have tried to narrow down the essentials to rapidly becoming the best tennis player you can be.

Believe me when I say "rapidly" I only mean as fast as you can. Unfortunately, there is usually nothing rapid about it.

Most books on tennis tend to be focused on young players with an eye to them becoming outstanding players competing at a high level.

The difference between that individual and a 40 year old woman who has never played a sport in her life is huge. I think those books set up someone like that to fail by creating unrealistic expectations or overwhelming them with information.

I had never seen a book designed for beginners covering all aspects of the game.

My book gives them the essentials of proper technique, simple advice on equipment, leagues, clubs, strategy, advice on selecting pros, getting your kids involved and some of the things to be avoided.

While I think I covered just about everything, I did it in 140 (my readers say humorous, easy to read pages) and not some manual that no one ever reads.

I knew exactly the book I wanted to write because I knew my audience so well. I thought I could self-publish without too much expense and I was right. Going through a conventional publisher seemed either overwhelming (no one likes rejection) or too time consuming.

I'd waited 30 years to write, I wanted to get it out there NOW! There are lots of sites that can help you self-publish, from cover preparation to editing to promoting.

10 Tips About the Process of Writing a Book:

You can do it. If I can, anyone can. I took all of the pictures in my book with a cheap digital camera and I've never owned a camera in my life. I've never written anything longer than two typed pages before either.
If you tell everyone you are writing a book, pretty soon you have to actually write it.
Don't be afraid to let other people read it (not the spouse). Your friends won't want to hurt your feelings but that doesn't mean they won't give you some honest criticism. Listen to their advice, but remember it is your book.
If you do not have pictures that are important to the book, Print-on-demand is the only way to go. At least in the beginning, and at least for your first book. You can get as many copies as you like for a few dollars apiece for your own sales and Amazon and Barnes & Noble will carry it online with a very attractive royalty structure.
I got 1,000 copies printed because it wasn't much more than getting 500. The difference is that I have an extra 10 boxes of books in my attic attesting to the fact that I don't know how to market. Keep that in mind.
My layout was done by a university student who worked on the school magazine and my proofreading was done by a college business writing teacher. Both were excellent but even college kids are kids.
If you are writing fiction a lot of this may not apply. I don't know anything about writing fiction.
Don't write it if you are not passionate about it. Even then, it's work. second book doesn't have the same internal imperative that the first one had (I HAD to write that one) and consequently is going a little slower.
To get a book on Amazon or anywhere else you need an ISBN number. The one or two main companies that handle them sell them in groups of 10 (everyone is likely to write 10 books?) for about $250. You can get individual ones for less than $100. check out the self-publishing sites. There are many that sell them now.
An excellent guide to getting self-published is the "The self publishing manual" by Dan Poynter.

Orange Crush Trademark Infringement

Vincent LoTempio — Fri, 14 Oct 2011 12:31:35 -0500

A synthetic cannabis called Cush produced by "Sky Hi Blends" in Arizona is now sold at some delis and convenience stores in Buffalo, New York. Buffalo city officials want it off the shelves.

The Dr. Pepper Snapple Group own Orange Crush and think it is trademark infringement. They demand that the name and logo is removed from the labels of the Cannabis product.

"Needless to say, we had nothing to do with this product. We did not authorize the marketing and sale of it. We're angry that our trademark is being infringed and associated with a product like this and we're pursuing all legal alternatives to get it off the streets," said Chris Barnes, spokesman for Dr. Pepper Snapple Group.

Ryan Burgess of YNN News reported this story and as a buffalo attorney that practices IP law I appear in this video clip to provide general information regarding trademark infringement.

I was quoted as saying "The question is whether it's going to confuse the public. Confusingly similar marks. It doesn't have to be the exact same thing.

It could be a phonetic equivalent, something close. And if it's close enough to confuse the public, then it's going to be an infringement of the trademark"

I also found on line a product called Orange Krush. The product is advertised as a "a hybrid all natural bud smoke that grows wild in the peruvian jungles and several tropical islands."

I wonder what the Dr. Pepper Snapple Group thinks about the label on Orange Krush buds? Do you think the drops of orange liquid around the letters are "confusingly similar" to the Orange Crush trademark? Does changing the "C" to a "K" make a difference when infringement questions are raised?

An interesting side note to this story:

I performed a search on the United States Patent and Trademark Office search page I noticed that the trademarks registrations for Orange Crush are listed as DEAD. They have one pending application 85218189 for registration that is live. The registration 3721289 that is live is owned by Starbuzz Tobacco, Inc for tobacco products.

I am curious as to why they did not maintain their trademarks in Orange Crush. And I wonder how hard Sky Hi Blends is willing to push on fact that the registrations expired. If registrations expire there still are common law rights but the benefits of registration are lost.

Here are some of the benefits of owning a federal trademark registration on the Principal Register registration:

Public notice of your claim of ownership of the mark;
A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
The ability to bring an action concerning the mark in federal court;
The use of the U.S. registration as a basis to obtain registration in foreign countries;
The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
The right to use the federal registration symbol ®; and
Listing in the United States Patent and Trademark Office’s online databases.

Inventions of Steve Jobs Define Us

Vincent LoTempio — Tue, 11 Oct 2011 20:25:16 -0500

Steve Jobs revolutionized our world through his inventions. There are very few inventors in the world that give us devices that change the way we live. There are not many households in the world that don't have some form of technology created by Apple.

My house is littered with almost every generation of iPod, the iPad I and II, Apple TV and a couple laptops made by Apple. I remember my first computer was a Mac in the early 1980s.

Steve Jobs co-founder of Apple passed away at the young age of 56. It makes me consider my mortality. You can have everything in the world but you can't control your time here.

We all live on the edge of life and death every minute but no one ever considers that death is going to take them away right now. So I try to remind myself to live my life now.

Inventors attempt to come up with ideas to change the world but there are very few people that actually do it.

Steve jobs and Apple revolutionized our world through the electronic devices he and his company invented.

The personal computer. In 1976 the Apple I was one of the first rudimentary computers made available for computer enthusiasts at the cost of $666.66.

Throughout the next 40 years the Apple personal computer evolved to a point where everyone could interact with the computer in our own language in a seamless iconic way.

The iPod forever changed the way we listen to music. It's iconic commercials of a young person listening to music with the earphone buds and long wire swinging to the music changed the music industry.

The iPad forever changed the way we interact with apps and the endless store of information on the Internet.

I would guess this is just the precursor of screens attached to walls and other devices that we swipe and tap with our fingers to manipulate the electronic images and music and remote control of virtually all electronic devices.

The iPhone the most popular smart phone in the world forever changed the way we communicate with each other.

Steve Jobs has been compared to Edison, da Vinci and all the great inventors of all time and I agree he certainly deserves to go down in history as an iconic figure that changed the world forever.

Inventors Hall of Fame: Wilson Greatbatch

Vincent LoTempio — Sun, 02 Oct 2011 13:14:05 -0500

Wilson Greatbatch was an inventor from Buffalo who I met twice in my life. As a Buffalo, New York patent attorney I am a member of the Niagara Frontier Intellectual Property Law Association (NFIPLA) and he was an attendee at the annual dinner which honors the inventor of the year. He was the first person honored with the award and he attended many of the annual NFIPLA Awards Dinners.

At the award dinner they also award the prize for the best idea from the local grammar schools. I remember a young girl won the award and Wilson Greatbatch let her wear the medal that he received from the Inventors Hall of Fame throughout the evening.

The second time I met him was at a laboratory he created in an old barn in Clarence, New York. I forget who invited me there, but he spoke about the many experiments he was conducting and how he was attempting to come up with new ways to make our world a better place.

There was a formal presentation in which he discussed ways he envisioned harvesting helium-3 found on the moon and using it as the basis of generating nuclear-power through fusion to propel a rocket to Mars or use it as a clean source of energy on earth to replace fossil fuels.

Throughout his life and up until his death he wanted to create and come up with new ways of doing things to help humanity. I'm glad I've had the opportunity to meet such a great man and I was greatly saddened to hear of his death last week.

Wilson Greatbatch
Born Sep 6, 1919 died September 27, 2011

Medical Cardiac Pacemaker
Implantable Pacemaker
Patent Number 3,057,356 (PDF)

Inducted into the National Inventors Hall of Fame in 1986.

Wilson Greatbatch received more than 350 national and international patents including one for inventing the cardiac pacemaker, an innovation selected in 1983 by the National Society of Professional Engineers as one of the two major engineering contributions to society during the previous 50 years.

The pacemaker invention is an example of Louis Pasteur’s reflection that “chance favors the prepared mind.” While at the University at Buffalo, New York state, in 1956, Greatbatch accidentally fitted a device for recording heart rhythms with the wrong resistor which resulted in a device which created intermittent electrical impulses.

He was looking for a way to build a device small enough to produce electrical stimulation that could compensate for a failing heart and this was the beginning of the long history of discovering and ever improving the implantable pacemaker. The American Heart Association reports that more 500,000 pacemakers are implanted every year.

"I stared at the thing in disbelief and then realized that this was exactly what was needed to drive a heart," he wrote in his 2000 memoir "The Making of the Pacemaker."

Greatbatch has established a series of companies to manufacture or license his inventions, including Greatbatch Enterprises, which produces most of the world's pacemaker batteries.

"Nine things out of 10 won't work, The 10th will pay for the other nine."

Wilson Greatbatch

Invention Impact

His original pacemaker patent resulted in the first practicable implantable cardiac pacemaker, which has led to heart patient survival rates comparable to that of a healthy population of similar age. Implantable cardiac pacemaker have saved and improved countless lives.

Inventor Bio

Born in Buffalo, New York, Greatbatch received his preliminary education at public schools in West Seneca, New York. In 1936 he entered military service and served in the Atlantic and Pacific theaters during World War II. He was honorably discharged with the rating of aviation chief radioman in 1945.

He attended Cornell University and graduated with a B.E.E. in electrical engineering in 1950.

Greatbatch received a master's from the State University of New York at Buffalo in 1957 after which he became manager of the electronics division of the Taber Instrument Corporation in Buffalo. Because Taber was unwilling to take on the risk of his pacemaker implant experiments, he began his life as an independent inventor and entrepreneur. He started with a mere $2000 and work independently out of his family home with his wife and children in Clarence, New York. Greatbatch died a wealthy man but at this time he needed to grow his own food to support his family.

He was awarded an honorary doctor's degrees from Houghton College in 1970 and State University of New York at Buffalo in 1984.

In 1979 was awarded the "Dean's Award for Engineering Achievement" at the State University of New York at Buffalo (UB) School of Engineering and Applied Sciences.

Although trained as an electrical engineer, Greatbatch primarily studied interdisciplinary areas combining engineering with medical electronics, agricultural genetics, the electrochemistry of pacemaker batteries, and the electrochemical polarization of physiological electrodes.

In 1996, at age 76, he received a lifetime achievement award from the Lemelson-MIT Prize board.

Posted with the permission of the National Inventors Hall of Fame™

Obama Makes the "America Invents Act" Law

Vincent LoTempio — Sat, 17 Sep 2011 16:58:27 -0500

The Patent Reform Bill that everybody has been waiting for has been signed into law. President Obama visited Thomas Jefferson High School For Science and Technology in Alexandria, Virginia, and signed the American Invents Act into law.

This bill changes the United States patent system from a "first to invent" system with a "first inventor to file" system. So now the race is on to the patent office.

In addition the new law enables the patent office to retain the necessary funds to employ a staff of patent examiners that can reduce the backlog of patents in the patent office.

Currently close to 1.2 million patent applications are pending in the United States Patent and Trademark Office and 700,000 of those have yet to even been looked at, and there are only about 6,000 patent examiners.

Because of this backlog a patent application can take up to 3 years from the time that it is filed to be approved. It is believed that if the patents were granted sooner the technology could generate more jobs and create more products that can help society in general.

Whether or not granting a patent sooner will translate into jobs and a better America only time will tell. President Obama thinks It will and when he signed the bill into law he said:

"Somewhere in that stack of applications could be the next technological breakthrough, the next miracle drug," "We should be making it easier and faster to turn new ideas into jobs."

President Barack Obama

Here is a video of the president actually signing the bill into law at Thomas Jefferson high school:

Patent Reform: "America Invents Act" Almost Law

Vincent LoTempio — Sun, 11 Sep 2011 11:43:06 -0500

The Leahy-Smith "America Invents Act" H.R. 1249, was passed by the U.S. Senate on September 8, 2011 and because the House of Representatives passed identical legislation on June 23, the bill will go directly to President Barack Obama to be signed into law.

Senator Patrick Leahy (D-Vt.),Chairman, Senate Judiciary Committee, commented on the final passage of "The Leahy-Smith America Invents Act",

“The America Invents Act is a true jobs bill at a time when we need it the most. After six long years of debate spanning three Congresses and two administrations, it is finally set to become law. This is bipartisan, commonsense legislation that will spur the innovation that drives the American economy.”

Prior to the final vote, the Senate voted to reject or table all amendments, avoiding the need to send the bill back to the House for consideration. This vote means that the final text of the new law is that found in H.R. 1249 as passed by the House on June 23, 2011.

The Leahy-Smith America Invents Act makes the most sweeping changes to U.S. patent law in many decades. Here is a checklist of a few key changes:

Establishing a first-to-file system,
Eliminating the ability for anyone to file False marking lawsuit;
Filing by other than inventor for corporations to file Oath and declaration;
Eliminating the Best mode requirement;
Eliminating interference proceedings,
Expanding prior user rights as a defense to infringement, and
Creating new USPTO proceedings for post-grant review.

While many provisions of the law will not take effect for at least one year after the date of enactment, several key provisions have an immediate effect:

Immediate Provisions of the Leahy-Smith America Invents Act

The effective date of the law will be at the end of the 1-year period beginning on the date of the enactment of the Act (once President Obama signs the bill ) and shall apply to any patent issued on or after that date, however the following provisions will take immediate effect and are applicable to pending proceedings:

False Marking

Changes to 35 U.S.C. § 292 will eliminate qui tam actions for false marking suits. Under the new law, only the U.S. government can sue for statutory damages, although persons who have suffered a "competitive injury" from false marking can bring a civil action for damages "adequate to compensate for the injury."

The new law also provides that marking with an expired patent is not a violation of the statute. This means that virtually all pending false marking suits will need to be dismissed once the law is enacted.

Defense to infringement

A defense can be raised in a patent infringement case based on prior commercial use if the commercial use that would otherwise infringe a claimed invention occurred one year before the filing date of the application of the patent. This will only apply to new patents from the date of the enactment. 35 U.S.C. § 273

Joinder of Defendant

The new law will limit the circumstances for joinder of defendants in patent infringement cases.35 U.S.C. § 299

Best mode no longer a Defense

A failure to describe the "best mode" to make or use the invention in a patent application will not be a basis for invalidating a patent or ruling a patent unenforceable. 35 U.S.C. 282(3). This will be applicable to new cases only.

Reexamination

For new requests for reexamination, the standard for reexamination will change from "a substantial new question of patentability" to "a reasonable likelihood that the requestor would prevail" with respect to at least one of the challenged claims

For pending or subsequent Board appeal in an ex parte reexamination proceeding, such Board decisions may be appealed only to the Federal Circuit, not a district court.

Patent Application

For pending applications, patents will not be granted to "tax strategy patents" or to claims encompassing human organisms.

Effective 10 days after enactment:

Fees raised: a 15-percent surcharge will be added to all patent-related fees, including patent maintenance fees.
The USPTO will be authorized to proceed with its "Track I" program for fee-based prioritized examination, and to charge a $4,800 fee for large entities ($2,400 for small entities).

Effective in 1 year after enactment:

New Post-Grant Review Procedures

The Act creates two different procedures for third-party initiated post-grant review:

Post-Grant Review:

Under a new Chapter 32 (35 U.S.C. § 321. Post-grant review), there will be a nine-month window for challenging a patent on any ground, including 35 U.S.C. § 112. Chapter 32 takes effect in one year.

Inter Partes Review:

Under a new Chapter 31, patents can be challenged on the basis of patents or printed publications only, after the window for post-grant review has passed. Chapter 31 takes effect in one year. Review may be granted upon a showing that the petitioner has a reasonable likelihood in prevailing that at least one of the challenged claims is patentable.

First-to-File Provisions

Changes to 35 U.S.C. § 102 is the attempt to bring the United States closer to the rest of the world and a first-to-file system. It makes it more important to file an application as soon as possible.

As the law exists now there is a one-year grace period for any publication, sale or use in public of the product. But the new law will only retain a limited one-year grace period for filing an application after a public disclosure made by the inventor or somehow through the inventor. If the disclosure was made from somebody other than the inventor then the inventor will not be able to get a patent. The new version of § 102 will apply to applications with priority claims that fall 18 months after the date of enactment.

Derivation Proceedings

Changes to 35 U.S.C. § 135 will add derivation proceedings to replace current interference proceedings. Derivation proceedings determine whether the inventor named in an earlier-filed application derived the claimed invention from the inventor named in a later-filed application without authorization.

A Derivation petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim.

Derivation proceedings will apply to applications with priority claims that fall 18 months after the date of enactment. Interference proceedings will continue to be available to earlier applications under the "old" version of § 135.

USPTO practice changes

Fee Setting Authority.

The USPTO has authority to adjust fees to "in the aggregate" recover the estimated costs of its activities.

Prioritized examination.

Prioritized examination of a nonprovisional application for an original utility or plant patent can be obtained for technologies important to American competitiveness. This has a hefty $4800 fee.

Additional USPTO facilities.

Establishes additional USPTO satellite offices.

Third-party submission of prior art.

Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application.

Pro Bono Program

The Director shall work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.

Interview with "Invention Guru" Ronald Docie

Vincent LoTempio — Mon, 05 Sep 2011 14:15:57 -0500

Ronald L. Docie Sr is the president of Docie Development, LLC, an international company that provides services for inventors and corporations. His inventions are featured in Wal-Mart, Kmart and thousands of other distribution channels.

As an agent for inventors, Docie has negotiated license deals with many companies including General Motors, and he’s a consultant to Johnson & Johnson on idea submission.

When I first started blogging about two years ago I wrote a book review for the book "The Inventor's" Bible by Ronald L. Docie Sr. and a couple of months ago Ron found me on the Internet and contacted and thanked me for writing the book review.

When I spoke with him I found out what a gentleman he was and he agreed to answer some questions for this interview. And here are the questions and answers:

Ron can you tell me a little bit about yourself?

I am involved in four different entities, all which help inventors:

Docie Marketing,
Docie Development,
DIMWIT - Self Help for Inventors, and i
nventorinsider.com.

Docie Marketing performs market research for inventors to help them identify markets, potential licensees, manufacturers, and the market potential for their invention. This is a fee based service.

Docie Development is a commission based service and it works with inventors to seek potential licensing agreements from manufacturers.

What type of company is DIMWIT?

DIMWIT - Self Help for Inventors, has a lot of free information for inventors about how to go through the patent process, the confidential disclosure process and lots of articles and tips for inventors to help them throughout the commercialization process.

How does your company help inventors help themselves?

Inventorinsider.com has a free downloadable e-book that I created to help inventors better understand the invention commercialization process from start to finish. More importantly, it helps inventors to understand the difference between scam artists that are trying to rip off inventors, and legitimate invention companies.

The precursor to this work is from a grant that I received from the US Department of Energy, Inventors Initiative Program to help inventors understand the difference between the good guys and the bad guys with respect to invention service providers. Sadly, there are still more bad guys out there taking money from inventors than there are good and this is a situation that will probably remain. Therefore, it is very important to understand the lay of the land before dumping lots of money into your invention.

Do you have a checklist of things an inventor needs to do once they've come up with an idea?

The Inventor’s Bible; How to Market and License Your Brilliant Ideas, is in its third edition and is a book that I wrote that is a complete how-to get through the invention commercialization process and is available at Amazon, Barnes and Noble, local bookstores, and all three editions are in the reference section of every US Patent Office, Patent Depository Library in the US and its possessions.

There is also a Kindle edition that’s the third edition of the Inventor’s Bible along with a workbook that take an inventor step by step through the process of finding and prequalifying appropriate manufacturers and potential licensees.

Contained in these writings are a checklist of things that inventors should do and the order that they should do them in. This checklist is in the appendix of all three editions of the Inventor’s Bible.

What are the most important things an inventor needs to know?

The most important thing an inventor needs to know is that the world has existed this long without their invention and will continue to exist for quite sometime without it. Most inventions are incremental improvements and not life necessities. Therefore, they fall within a pecking order of millions of other inventions, all which are trying to get the attention of the buying consumer. Obviously only a choice few of these are going to make it to the retail shelf.

Those that make it are not necessarily the most beneficial for mankind, however, they are the products that the consumer wishes to purchase. As such, there is not necessarily a direct relationship between the invention’s benefit to mankind, and its ability to create sales.

This is a very frustrating phenomenon because most of my clients know that they have invented something of great benefit to mankind, and yet while their invention collects dust, they see plastic crap selling like hotcakes.

How does your company compare with a “Patent/invention Submission” company? What knowledge have you gained based upon your first-hand experience with these types of companies?

My company operates under the philosophy that an inventor should spend no more time or money than is necessary to find out that the invention is not worth pursuing. Since we know that 1 in 100 or 1 in 1000 inventions ever succeed commercially, the remaining 99 or 999 would be remiss to not realize sooner, rather than later, that they are indeed part of the majority.

For this reason, I have designed a tiered-risk program that takes inventors through the step by step process in a manner where they lay out the least amount of money initially and if the invention continues to make it through the various stages, then all the ingredients are there to also have it be a commercial success. Therefore, the process is a win win regardless of which the direction takes.

How bad are the odds stacked against an independent inventor?

How bad are the odds stacked against an independent inventor? Pretty damn bad.

Do you have any ideas for patent reform that could help the independent inventor?

I really have no ideas regarding patent reform that could help the independent inventor. The patent office is a big animal and is probably doing as well as it can under the circumstances.

Can an inventor get a license for a new product without Patent protection?

An inventor certainly can receive money from their invention without patent protection. In certain fields such as housewares and others, designers are paid royalties not unlike an inventor would be paid a royalty. Instead, the designer is being paid for the ornamental design feature that may even be covered under a copyright, trade dress or simply a design patent.

I have received royalties based on my design improvements because those designs were favored more by the consumer and I realized this through doing independent market research that no one else had done. This was of sufficient value to the companies that they agreed to pay for these design improvements. I happened to have a patent to cover a part of that invention; however the patent did not cover my design improvements so the patent really didn’t totally enter into the equation.

Patents are a tool and you have to look at them as such. Most people think they have patent “protection” when in fact they do not because very few patents are so tight that they cannot be designed around by someone who would come out with a similar product without infringing your patent.

Rarely do you have a slam dunk patent where a person can simply rely on their patent rights and everyone flocks to their door. The odds of this are probably more like 1 in 100,000 or more. Even so, the patent may be of value because it may help to influence a company to pay you to use its rights. These situations vary drastically depending on the product category, the companies involved, and your individual situation.

Can you work a deal with a nondisclosure agreement?

Deals can be negotiated with only a non-disclosure agreement in place, and I have used non-disclosure agreements, or confidential disclosure agreements, to help control circumstances so that I could influence companies to pay a royalty or commission when they otherwise may not.

There are several factors that need to be taken into consideration, however, such as whether the non-disclosure agreement also contains a non-compete clause so it can survive after the public disclosure of the invention and other technical issues to numerous to cover here. However, in today’s world of consolidation of big box retail stores and the consolidation of manufacturers, inventors largely do not have choice with respect to the signing of a non-disclosure agreement.

Many, if not most, Fortune 100 companies will demand that you sign their disclosure agreement which is a non-confidential disclosure agreement, or rely strictly on your US patent rights in order to even submit the invention to them. I am seeing a trend towards this.

On the flip side, there is also a growing number of companies who are so disenchanted about the patent process that they simply invite inventors to submit the invention, and if they use the invention they will pay the inventor a royalty such as 3% or 5% with a standard royalty agreement.

They typically will not sign any type of disclosure or confidentiality agreement, period. This is because these companies find that many inventions last for just a short time on the market, less than the amount of time it would take to have a patent issued. Therefore, they don’t even bother with the patenting expense.

Also, these companies realize that with the average cost per side in a patent infringement case being over a million dollars, many small to medium size companies have products that would even justify pursuing any type of legal action. In most cases it would be more cost effective to simply drop the item from the line and keep on going with the other thousand or ten thousand items that they may have in their product line. An inventor needs to keep these things in perspective when they are getting too overly concerned about disclosure agreements and patents.

Further, some of the companies that are willing to sign disclosure agreements for inventors have a record of not working with outside inventors at all. They simply take whatever information they can glean from your invention submission and use it to the extent they want to without infringing the patent.

Then you have these other companies that will not sign disclosure agreements what-so-ever, and yet they have a rich, positive track record of paying outside inventors. Therefore, using a disclosure agreement as a means of qualifying a company is not always the best indicator.

What type of industries are the hardest/easiest for inventors to break into?

The ability for an inventor to break into an industry is different from industry to industry. I think industries that involve retail consumer products tend to be a bit easier because the proof is on the retailer’s shelf and there is a well-oiled machine for getting product there. It is a matter of just selecting the right company to help get you there.

There are also plenty of companies that are willing to pay inventors in the retail industry. In those industries involving medical products, industrial products, and others that require a great deal of initial time and investment,

I believe there is more chance for a ‘slip between the cup and lip’, and as such it may be harder for the inventor to navigate in those industries, especially since more upfront investment is required before any company knows whether the product will be commercially successful.

Yet, with that being said, if an inventor is knowledgeable in their industry and has conceived a unique product or technology that is desired by those in the industry, it would not be uncommon for a company to pick up that invention and run with it. This would be a very streamline path for the inventor. So, there are exceptions to every rule.

Can you help a small or medium sized companies with new innovation?

The process of helping inventors, or helping companies to commercialize innovative products, particularly through licensing, is a very similar process regardless of the size of the company or the type of customer. The way licensing departments operate in Fortune 100 companies is, in principle, not unlike the way I operate for independent inventors.

If a large company wants to license out the technology or intellectual property t another company, it must go through steps to identify those companies that hold the market position for the part category, they need to determine the potential value of an invention, and they need develop the terms of a licensing agreement. The terms and principles are similar, the number of zeros behind the final figure changes.

I noticed on your website that you advertise the Patent Wizard, are you associated with that company?

I don’t make any money from the Patent Wizard software that is advertised on my website and I am not associated with that company. Michael Neustel, a patent attorney from Fargo, ND, created Patent Wizard as easy and convenient software for inventors to use to file a provisional patent application at very low cost.

Even then, I always suggest that the inventor have a patent attorney review the final patent application before submitting it to the patent office. I normally suggest that inventors work with a patent attorney or patent agent as they go through this process.

Knowing when to use patent attorneys and for which service is part of the key to making no more expenditures than are necessary at any given step. Docie Marketing helps inventors to understand which steps to take and when. The DIMWIT- Self Help for Inventors website also provides information about this, as does the Inventor’s Bible. The free ebook on www.inventorinsider.com is also a compendium of advice regarding steps to take.

Do you refer inventors to patent attorneys like myself?

I do refer inventors to patent attorneys all the time, however I try to avoid advising about specific patent attorneys because I think eventually the inventor needs to have the right chemistry with the patent attorney that they end up working with and this is something they need to determine for themselves.

Do you advise inventors to file a provisional patent application?

I am not an attorney and I do not give legal advice, nor do I give advice regarding patenting. However, I do give business advice as it relates to the patent strategy and how one might go about affecting such a strategy.

For example, lets say it is determined that an inventor wants to elect to not publish their patent after 18 months and keep their patent application secret for as long as possible while they go through development and pre-commercialization. In this case, they could potentially keep their invention a trade secret for five years or more.

In this case, they may want to extend the patent prosecution process as much as possible by not responding to the patent office until the last minute for every deadline that must be meant, filing a provisional application in anticipation of the utility application, filing continuations-in-part and any number of other strategic ploys that may be condoned by the clients patent attorney.

Therefore I work in concert with my clients patent attorneys to help develop a strategy that incorporates the best from both the business perspective and the patenting and legal perspective in order to have a wholistic strategic plan to provide the greatest and most secure benefit for the client. It takes very little extra effort and very little extra cash expenditure on behalf of the inventor in order to do it the right way, versus doing it the wrong way.

The bottom line is, with appropriate knowledge, all inventors can minimize their risk and increase opportunity for financial gain from their invention. Certainly it is best to obtain a wealth of knowledge from those people who have a depth of experience and effective results in this field.

That certainly is what the inventor should be seeking out, and not listening to the numerous flimflam artists who are only stroking the inventor’s ego in one breath and holding their hand out for heavy financial outlay at the next moment.

It is necessary for inventors to spend money at certain junctures whether it be for patent attorneys, invention brokers, prototype makers or any other number of legitimate services that the inventor should hire. The inventor just needs to be prudent in this process and not spend too much, too soon, and for the wrong things.