* Erik’s Legal List – Patent Strategy

Curated content on patent strategy.

* Patent Planning

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Hope is not a strategy. Good patent habits start with planning. Start here.

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* FILE BEFORE LAUNCH – The Single Most Important Concept For Startups – Turns Your Product Roadmap Into A Patent Roadmap (2022-10-17)
U.S. patent law changed significantly from 2011 to 2013 due to the America Invents Act (AIA) (http://en.wikipedia.org/wiki/Leahy-Smith_America_Invents_Act). The AIA made the U.S. a first-inventor-to-file country. The U.S. is also essentially an “absolute novelty” country (due to legal ambiguities introduced by the AIA). As such, you should file your patent application before you launch (where “launch” is defined as sale, offer for sale, publication, or public use) your product/service/improvement. This is the only certain way to protect both U.S. and foreign patent rights.

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* PRODUCT-BASED PATENTING – The Second Most Important Concept For Startups – Simplifies Patent Law Into Two Requirements (2022-09-17)
First, you must have a “product” (which we’ll define later) that is better/faster/stronger than the competition using features/benefits that you define. Second, one of those features must be unique to you, not just in your market but in all markets. Finally, let’s define “product.” A product is not necessarily something that you sell to a customer for money, it’s not necessarily something that is customer-facing. This is best explained by two examples, one old and one new. The first settlers of the American West took coffee beans with them, cooked them, ate them, threw away the liquid. That’s called not knowing what your product is. More recently, software engineers for Slack, a failed gaming company, created an internal communication tool for its game developers “over the weekend.” So we are always encouraging startups pursuing patents to “look for their coffee beans,” so to speak.

* Product-Based Patenting (2019-11-17)
The goal of a product-based patenting approach is to explain to the USPTO how your product is better/faster/stronger than the competition using features/benefits that you define, both in the present (i.e. the “prior art” section) and in the future (i.e. the “other embodiments” section).

* Infringement And Designing Around (2019-09-17)
In order for any invention to “infringe” a current patent, the invention must contain each element of the patent, or the invention must contain elements that perform substantially the same function in the same way to achieve the same result.

* Patent Marking – Piano Patents (2019-02-17)
The moral of this story is that you should tune your piano every six months. And you should do a good job marking your patented products with your actual patent numbers. Otherwise somebody will write an article like this one.

* Don’t Launch Your Product – Unless You Want To Nuke Your Patent Portfolio (2018-03-17)
File Before Launching. You should file your patent application before you launch (where “launch” is defined as sale, offer for sale, publication, or public use) your product/service/improvement.

* Your Odds Of Getting A Patent Are About 50/50 (2015-10-17)
But if you do things correctly, such as always doing a patent search and filing a solid first patent application (whether provisional or nonprovisional), then you can push the odds closer to 55/45.

* Don’t File A Napkin Provisional (2014-12-17)
The first patent that you file on your product is the foundation upon which your patent house is built. Don’t build your house on sand.

* Many Foreign Patents Are Not Worth It (2014-06-17)
Unless you have a foreign suitor or significant non-US business.

* The Who, What, Where, When, Why, And How Of Patents (2014-03-12)
Patent law in plain English. But not in that order. Why file patents? Because smart companies take advantage of patent laws. Where to file patents? In general, you should patent your product where your customers are. Who files the patent? The inventor: the one who came up with (i.e. conceived) the idea. Not the one who built it (i.e. reduced the idea to practice). What should be patented? If you have a product that cannot be reverse engineered by virtue of its having been launched (where “launch” is defined as sold, offered for sale, publicly used, or published), then you should consider keeping your product a trade secret rather than pursuing patents, but if you do have a product/service that can be reverse engineered, then patents may be a good fit. When to file patents? The ideal time to file a patent application is the day you can describe how to make and use your invention, and the ideal time to start the patent application process is two months before the day you can describe how to make and use your invention. How to file patents? You should budget one month for a patent search and a second month for writing and filing the patent application.

* How To Get And Defend A Patent Without Going Broke (2004-08-02)
It is possible for independent inventors and small businesses to acquire patents and protect their ideas without going broke in the process. 1. Consider trade secrets. 2. Consider doing it yourself. 3. Understand patent basics. 4. Consider hiring a patent agent. 5. Quiz your patent professional. 6. Ask good questions. 7. Do a patent search. 8. Consider filing a provisional patent application. 9. File at the right time. 10. Get insurance.

* Many Reasons To Get A Patent (2002-07-04)
You can use your patent offensively to request licenses from competitors or defensively to reject requests for licenses from competitors. Sometimes inventors apply for patents because they need to publicly disclose their idea. And sometimes inventors apply for patents to prevent their competition from getting patents.

* Patent Due Diligence, Litigation, & Valuation

* Patent Trolls And Intangible Inventions (2015-02-17)
A patent troll is like art (or perhaps the lack thereof): you know it when you see it.

* Patent Trolls (2012-12-12)
Patent Trolls Are Evil. I don’t believe that litigious patent trolls are consistent with the purpose of patent law.

* Patent Laws

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Patent law has changed more in the last 10 years than in the previous 100 years combined. Why? Good question. The previous (and better) lather/rinse/repeat patent law pattern had been cases/codify/repeat. Recent US patent law does not represent a codification of common law, it represents a codification of lobbying. So if we want better laws, then we need to elect better leaders.

* Re-forming Patent Law Is Not Patent Law Reform (2016-12-17)
Shame on the AIA. The Leahy–Smith America Invents Act (AIA) is the worst thing to happen to US patent law ever. I have no doubt that the AIA “re-formed” patent law, but I strongly disagree that it “reformed” it. China is the world’s most populous nation, yet we do not “harmonize” our civil rights laws with theirs. Why then, did we seek to “harmonize” US patent law (formerly the best in the world) with European patent law (a distant second)?

* Beware Of Patent Reform (2013-03-06)
Goodbye first-to-invent, hello first-inventor-to-file. The Leahy-Smith America Invents Act (“AIA” for short) was passed on 2011-09-16 and has been incrementally taking effect ever since. Friday 2013-03-15 is the final day to file patent applications under the old first-to-invent system, as the first-inventor-to-file system starts 2013-03-16.

* Men Of Great Genius: Venetian Senate, Patent Act of 1474 (2011-04-11)
All modern patent statutes are derived from the Venetian Patent Act of 1474. US patent law comes from 32 simple words in the Constitution, Article 1, Section 8, Clause 8: “The Congress shall have Power To … promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” These 32 words owe their existence to the Venetian Patent Statute of 1474, enacted 1474-03-19.

* Patent Law 101 (2011-01-26)
An introduction to patent law in plain English. Students associate “101” with “introductory,” and “101” has special meaning to patent practitioners. Many articles fit nicely into the Patent Law 101 category. Topics in this category include patent law itself, other areas of the law (e.g. contracts), life philosophy, good books, and role models and mentors (including my parents, Yaz, and others).

* A Mere Mortal’s Guide To Patents Post-Bilski (Or Why §101 Is A Red Herring) (2010-07-09)
It don’t mean a thing if it ain’t got that swing. On 2010-06-28, the Supreme Court of the United States decided Bilski v. Kappos., a case about what subject matter (including software and business method patents) is eligible for patent protection under US law. Unfortunately, the Supremes blew it. Here’s why.

* Will SCOTUS Break Patent Law With Bilski Case? (2010-04-01)
Patent law is broken. Patent law is currently broken. Especially software patent law. A pending Supreme Court case may fix it or may further break it. In short, you can expect to pay more for, wait longer for, and get less from your patents than you would have 5 or 10 years ago.

* Patent Reform Turns Patent Attorneys Into Patent Pending Attorneys (2007-11-29)
Expect to pay more for, wait longer for, and get less from your patent application. New USPTO rules are designed to reduce the patent backlog. Ironically, by limiting the number of claims and continuing applications, the new rules will result in more patent applications being filed, which will only increase the patent backlog.

* Festo – The Supreme Court’s Latest On Patent Law (2002-07-04)
The Supreme Court affirmed that inventors have the rights versions of their inventions that use ‘equivalent’ elements. What does Festo mean for inventors? The so-called “Doctrine of Equivalents” (DOE) that the Festo decision upholds is, in some respects, a line of last defense (or offense, as the case may be) in a patent dispute. It would be better not to have to rely on the DOE at all.

* Patent Prosecution

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“Prosecution” refers to the process of taking an invention from initial filing (patent pending) to an issued patent (patent grant). “Patent prosecution” is what patent attorneys (and patent agents) do for a living. Patent prosecution can be done pro se. (i.e. by the applicant without the assistance of counsel), but we don’t recommend it.

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* Timeline For Filing A Patent (2012-08-06)
Phase one is the patent search, which takes about one month. Phase two is writing and filing the patent application, which takes about one month. Phase three is waiting. For most flavors of patent applications, you can count on multiple years of “patent pending” before the U.S. Patent Office replies.

* Patent Office Actions (2012-12-12)
The USPTO’s reply to a patent application is called an “Office Action.” In the first Office Action, the USPTO typically rejects most – if not all – of the claims in a patent application in its first Office Action, essentially challenging you to prove that your invention is patentable.

* Patent Renewals (2012-12-12)
Patent renewal fees (also called “maintenance fees”) are due at 3.5, 7.5, and 11.5 years from the patent’s issue date.

* Patents Should Be Easy To Infringe (2006-12-05)
It does a company no good to own a patent that does not clearly describe, in plain English, how to make and use the invention, because nobody can tell if it is being infringed! The more likely your patent is to be infringed, the more potentially valuable it is.

* Patent Search

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* Why Startups Should Always Do Patent Searches (2014-05-23)
The USPTO will never require patent searching. But it should. The large patent bar review companies cater to large companies and their large law firms. Collectively, the advice given by the large bar is not to do a patent search. While it is true that the less one discloses to the USPTO, the more likely it is that a patent will issue, this head-in-the-sand approach produces poor quality patents and puts the products based on those patents at risk. And while it is also true that found patents can put a company at risk for triple damages (if they are later found to have willfully infringed a found patent), the only companies that are “worth” suing for patent infringement are large deep-pocketed companies. For most startups, the calculus is quite different.

* Should I Do A Patent Search? (2006-12-05)
To search or not to search: that is the (pretty simple) question. Many large firms (and corporations) discourage inventors from conducting a patent search. Their theory is that the less you disclose to the USPTO, the more likely it is that your patent will issue. While this may be true, it does an inventor little good to get a patent by pretending that prior art doesn’t exist.

* Patent Strategy For Visual Thinkers

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* Drawing That Explains The Value Of Startup Patent Spending (2019-03-17)
It is very easy for startups to underspend on patent protection. It is very easy for startups to overspend on patent protection. To maximize your return on investment (ROI), you have to spend the right amount.

* Chart That Explains Patent Novelty And Statutory Bars (2011-05-09)
35 USC 102: Patent Decoder. I made this chart for my patent law students. It is not perfect. Then again, neither is patent law.

* Drawing That Explains Patent Costs (2007-08-17)
How to control the cost of filing a patent. This drawing of patent costs vs. disclosure is an inverted bell curve with a nonzero minimum. The length of the disclosure (i.e. the details of the invention) is the biggest factor in the cost of a patent application.

* Drawing That Explains Provisional Patent Applications (2007-08-06)
Provisional patent applications are rarely the best solution for startups. The claims and the specification are the yin and yang of a good patent application. Some patent practitioners insist that you have to write patent claims before writing the patent specification. Others insist that you have to write the specification before the claims. In my opinion, it does not matter whether you write claims first or the specification first. Patent drafting is an iterative process. You must review the specification to make sure that you have fully claimed the invention. And you must review the claims to make sure that they are fully supported by the specification.

* Drawing That Explains Patent Disputes (2007-07-24)
And what’s wrong with law school education. There are millions of business agreements that proceed without dispute. A small percentage of business agreements (let’s say fewer than 1%) end up as business disputes. A small percentage of business disputes result in law suits being filed in district courts. A small percentage of district court rulings are appealed to appeals courts. And a small percentage of appellate cases make it to the Supreme Court of the U.S. (or “SCOTUS” for short). Unfortunately, what law students (at least in the U.S.) study is mostly Supreme Court (and appellate court) decisions.

* Drawing That Explains Patent Laws (2007-07-19)
From Chief Justice to the patent examiner. At the top of the pyramid is the United States Constitution. Next in the pyramid (working top to bottom) is the Patent Act. Next in the pyramid is the Patent Rules (also called patent regulations). The bottom of the pyramid is the Manual of Patent Examining Procedure (MPEP).

* Patent Types

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* Design Patents vs. Utility Patents (2022-05-17)
In general terms, a utility patent protects the way an article is used and works (35 U.S.C. 101), while a design patent protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if the invention resides both in its utility and ornamental appearance (MPEP 1502.01).

* Provisional Patents (2012-12-12)
Provisional Patent Applications. Provisional patent applications are helpful for deferring costs, but filing a provisional now then filing a nonprovisional in a year ends up costing more than simply filing a nonprovisional now. Provisional applications are best for products (such as software) that are still evolving over the first year. In this case, it makes sense to file multiple provisional patent applications over the first year and then roll all of them up into one nonprovisional application.

* Business Method Patents (2012-12-12)
Patenting Business Methods. The Patent Act does not define “business method” and no court has offered a definition.

* Design Patents (2012-12-12)
Design Patent Applications. Design patents cover the nonfunctional ornamental aspects of an object (like the look of an iPod or a pair of Nike sneakers).

* Foreign Patents (2012-12-12)
International Patents. There is really no such thing as an “international patent.” But based on certain treaties, when an inventor files a patent application in one country, they can file a patent application (usually within a year) in another country.

* PCT Patents (2012-12-12)
International Patents. Foreign patent applications must be filed within one year of your earliest filing date. You can file foreign patent applications in individual countries (or jurisdictions such as the European Patent Office (EPO)) or you can file under the Patent Cooperation Treaty (PCT).

* Utility Patents (2012-12-12)
Utility Patent Applications. Another name for a utility patent application is a nonprovisional patent application (sometimes called a regular patent application).

* Patents vs. Trade Secrets

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* Patents vs. Trade Secrets (2002-02-05)
The advantages and disadvantages of protecting business ideas with patents and trade secrets. In a perfect world, businesses would be able to plan whether to protect their best ideas[1] with patents or with trade secrets. But businesses do not operate in a perfect world. They operate in the real world. And in the real world, businesses often have to make difficult decisions based on their circumstances. This article discusses the advantages and disadvantages of protecting business ideas with patents and trade secrets. And also provides some real-world strategies for those companies that have to make decisions under less than ideal business circumstances.

* Trade Secret Protection (2012-12-12)
Protect Ideas With Trade Secrets. Companies should have clear policies with their employees regarding keeping secret information secret, should avoid exposing nonemployees to trade secrets, and should require nonemployees to sign nondisclosure agreements for the secrets to which they are exposed.

* When Trade Secret Protection Is Better Than Patent Protection (2002-03-02)
Consider Coke’s secret formula, which Coke has never patented but has instead protected by keeping it secret.

* Software Patents

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* Software Patents (2012-12-12)
US Software Patents. Yes, Virginia, software can be patented. The bottom line is that software has been patentable for over a generation and remains patentable today.

* Whether Or Not To “Allow” Software Patents (2014-08-17)
With any product, such as a razor, the value is in the intangible method (i.e. the method of making the razor) not the tangible thing (the razor).

* Software Patents Epilogue (Part 9) (2003-07-16)
The 2003 Law and Technology Conference at the Technology Law Center of the University of Maine School of Law was the most fun I’ve had at a conference in years. One of the best arguments against software patents is that software patents give large companies a marketing advantage and differ from patents in general in that the software invention process is generally less expensive than invention processes in general. Therefore, one of the reasons for patent protection, namely providing some sort of ROI for inventors for their R&D expenditures, does not apply for most software inventions. And so the model itself is fundamentally flawed.

* Software Patents: Final HERTS (Hypotheticals, Examples, Rants, Thoughts, And Stats) (Part 8) (2003-06-16)
Using open source software is a bit like reading Entertainment Weekly. Lots of people do it but few admit it. Plus other observations that didn’t fit anywhere else. Microsoft often comes up in discussions of software patent and open source, but I believe the real problem with Microsoft is something else. See also the MIT Technology Review cover story from the Jul/Aug 2002 issue entitled “Why Software Is So Bad” (https://www.technologyreview.com/s/401594/why-software-is-so-bad/).

* Software Patents: W3C Standards (Part 7) (2003-06-16)
The open source community has generally viewed the W3C’s decision on patents in standards as a victory. The open source community, in general, appears to be more pleased with the W3C’s patent policy than with the IETF’s. The IETF plods along and generates good Standards that include patent technology when it makes sense to do so. The W3C’s faster-is-better approach excludes patents and is consistent with the reasons the W3C was created in the first place. It should come as no surprise that the IETF’s policies include patents and the W3C’s do not.

* Software Patents: IETF Standards (Part 6) (2003-06-15)
For now, the IETF has not changed its policy about using patented technologies in the standards process. The tension between the IETF and the open source community will likely increase as open source software continues to grow in popularity.

* Software Patents: Copyright Law Expansion And Lessig’s Software Patent Non Sequitur (Part 5) (2003-06-15)
Lessig argues convincingly for limiting the extension of copyright terms but argues unconvincingly against software patents. If copyright term extensions are bad, then it does not logically follow that software patents are bad.

* Software Patents: Examples Of Principled Arguments (Part 4) (2003-06-15)
The two most fascinating principles on which software patent proponents base their arguments are that 1) open source software is better than proprietary software and 2) free software is better than open source software. You might be wondering why a patent attorney is discussing both sides of this issue. Because one of my principles is that dialog with disagreement is good. Similarly, I believe in pursuing the correct patent strategy for my clients (which is sometimes no patent strategy).

* Software Patents: Examples Of Unprincipled Arguments (Part 3) (2003-06-15)
Many educated people are opposed to software patents, but few make principled arguments to support their positions. A bad argument is easy to spot. Simply substitute “automobile” for “software.” If the argument makes the same amount of sense, or the same amount of nonsense, one can only conclude that the author is against all patents and/or has made no real effort to differentiate between software patents and patents in general.

* Software Patents: Principled Dialog (Part 2) (2003-06-15)
Whatever your position on software patents, or on patents in general, one thing is clear. Principled arguments are more interesting than unprincipled arguments.

* Software Patents: Good Or Evil? (Part 1) (2003-06-15)
This week, I am speaking at the fourth annual Law and Technology Conference at the Technology Law Center of the University of Maine School of Law. I am taking a non-standard approach to this presentation. Rather than preparing PowerPoint slides (or the like), I will be posting a series of notes on my website. This year’s conference is entitled “Information Technology Ownership.” My presentation is entitled “Software, E-commerce, and Web Standards Patents: Good or Evil?”



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