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Inventor Update

Jill Gilbert Welytok is the managing attorney for Absolute Technology Law Group LLC, which is a team of Registered Patent, Trademark and Transactional attorneys.

Overcoming Obviousness

patent, inventor, invention, technology

Announcement: Inventors' Forum
Next Meeting: March 3, 2010 at 5:30PM
To be held at: Marquette University High School
Room 127, Conference Center
3306 W. Michigan Street, Milwaukee
Topic: Funding Strategies for New Inventions
Mark Fuchs: Launching Products in a Global Marketplace
Dave Linz: Getting Government Funding
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Overcoming Obviousness

In addition to proving that your invention is novel, you also have to convince a patent examiner that it is “nonobvious.” This means that at the time you came up with your invention, it could not have been evident, without much thought or experimentation, to people who are “ordinarily skilled in the art” to do the same thing.

In particular, patent examiners are on the lookout for patent applications that appear to claim a combination of things that are already known in the art. For example, e-mail programs are well known and so are digital music files. A device combining an e-mail server and digital music files would be obvious. Similarly, a cell phone with a holographic image that corresponds to a ring tone to create a “theme phone” is probably not a patentable concept because holographic images are known in the art of telephony and so are cell phones and ring tones. Even in the best of moods, most patent examiners would probably reject the theme phone as an obvious combination of existing elements.

Of course, any invention taken in hindsight is arguably obvious. It now seems quite normal to stick a metal rod in the air to divert lightening; but no one was rushing out in the rain to do it in Benjamin Franklin’s day (except Ben, of course).
Similarly, Thomas Edison’s patent for a light bulb (U.S. Patent No. 223,898) consisted of a combination of known elements (thin carbon filaments, glass bulbs, platinum wires, et cetera) and predictable interactions. There was also an abundance of light-emitting objects, so it might seem obvious to channel a predictable result for an activity commonly engaged in by consumers these days. At the time, however, few people questioned whether Edison deserved a patent.

Today there are many arguments you can make to a patent examiner to overcome an obviousness rejection. One position you can take is that your invention solves a problem that the competition did not solve and that commercial success has proven the value of your inventive contribution. Your patent may still be pending by the time you take your product to market and any commercial success of your invention may be often cited by courts as evidence that an invention is nonobvious.

In May 2006, as mentioned, the U.S. Supreme Court released its decision in KSR International Inc v. Telefex, an important case on the matter of obviousness that addresses which ideas are entitled to protection under the U.S. patent system. It’s safe to say this landmark case makes it harder for individual inventors to prove that their inventions are not obvious. Simply adding a part to an existing invention is an obvious change. In the KSR case, the Court ruled that “[g]ranting patent protection to an advance that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.”

Needless to say, obviousness remains a subjective determination and a hotly debated issue within both the USPTO and the court system.


BHD:Design Patents and Their Downsides

Design patents, as compared with utility patents, were introduced in 1842 to protect original and ornamental designs for articles of manufacture. They are generally more limited, and a blur the line between copyright law (which has traditionally protected artistic expression) and patent law (which has traditionally been used to protect functional ideas). A well-known example of a design patent is for the Statue of Liberty, patent number D11,023, awarded to August Bartholdi in 1879.

Design patents have, in recent years, been abused by many of the fly-by-night “invention promotion” companies about which the USPTO warns inventors. These companies take advantage of inventors by offering cheaply prepared design patents and charging top dollar for them, when the inventors really should have been filing for utility patents. Design patents are the simpler and cheaper ones to prosecute in the USPTO, because they contain only one claim: for the exact ornamental design and appearance of the product shown in a picture included with the patent. If your competitor makes even a minor modification to the appearance of the product, it may be very difficult (or impossible) to enforce your patent in the marketplace. This is not to say that design patents provide no protection or have no value. If your invention has an iconic look to it that others would want to copy, then a design patent is useful. Also, the use of a design patent with a utility patent provides greater protection to inventors, enabling them to protect the function and look of the product. The Apple iPod, for example has become one of the hottest-selling personal electronic devices of all time. Apple’s intellectual property includes utility patents (such as the click wheel) as well as a design patent on the iconic look of the product. While there are many other MP3 players available, none can legally function and look like the iPod.


Sometimes a Picture is Not Enough: Limitations of Design Patents

 One brilliant engineer, we’ll call him Dave Smith, learned the difference between design and utility patents all too well and, ultimately, too late. Smith showed a company representative the type of airplane propeller he had developed, and based on several discussions and a viewing of the prototype, the company was eager to license the invention. It functioned differently from anything out there. The prospective licensor asked to see his patent, and when they found it was a design patent, regretfully had to back out of the deal. The design patent didn’t give the inventor any rights valuable enough to license the product—anyone (including the company’s own engineers) could make a trivial modification to the design and avoid patent prosecution. Smith, in all likelihood, could have obtained a utility patent on the functionality of his invention.

Provisional patent applications are one of the best bargains available for individual inventors who need to protect their inventions quickly and have a limited legal budget. However, a great deal of misunderstanding surrounds them.

For starters, there is no such thing as a “provisional patent.” A provisional patent application is a detailed description of your invention that contains all the information that will form the basis of the claims in your patent. However, the provisional application need not contain any actual claims.

Provisional applications are documents that you file with the USPTO before you’re ready to file a regular utility-patent application. A provisional application will never be examined by a patent examiner, but rather will be kept on file for a one-year period. By the end of that period you must file a regular (nonprovisional) patent application, which contains specific and detailed claim language, and which will ultimately be examined by the USPTO to determine the patentability of your claims.

Since the provisional application contains no claims and isn’t examined, it is a lot less costly than applying for a patent. It gives you a year to test the market and refine your invention before having to pay a lawyer to draft detailed legal claim language. This could be a very useful way to test the market and determine whether the investment in moving forward is likely to yield a meaningful return. It also gives you the ability to “shop the idea around” to prospective licensees while having legal protection. It establishes your filing date and protects your rights (both domestic and foreign) in the event that you make an enabling disclosure. It is a much stronger type of protection for your patent rights than a nondisclosure agreement is. An even bigger advantage is that once the provisional patent application is filed, you are allowed to use the “patent pending” designation on your invention to warn the competition.

The downside of a provisional patent application is that it delays the start of the patent examination process for up to a year. You will also lose the benefit of your provisional application if you don’t file the nonprovisional application within one year of the date on which you filed the provisional application. There are no extensions and no exceptions to this rule. 


Ten Tips for Independent Inventors:

  1. View patents as a tool to protect something that is marketable and therefore potentially valuable, not a piece of paper that’s going to make you rich.
  2. If you know you are going to file for patent protection, do so sooner rather than later to protect your rights.
  3. Use provisional patent applications before you have tested the market and fully developed your invention.
  4. View patents as legal documents that define important rights; don’t file one without consulting a registered patent attorney.
  5. If you begin marketing your invention, and later make changes that will add value in the marketplace, amend your pending application or file additional patents to protect those innovations.
  6. Visit the USPTO website at and become familiar with the free resources that are available for individual inventors.
  7. Read your patent application before your attorney files it. You, as the inventor, should fully understand every word in the claims and be able to assist your attorney in identifying possible additional embodiments of your invention that should be covered in your claims.
  8. If anyone has contributed to the development of your invention, they must be named as a coinventor. Ask your attorney about having any coinventors assign their rights to you before filing the patent application.
  9. Stay involved in the patent prosecution. In the event of an “office action” with a USPTO examiner, you have the opportunity to talk with the examiner and meet in person to help structure the allowable claims.

Ask your lawyer for a checklist of things you need to do after your patent issues, such as paying maintenance fees to the USPTO at 3½, 7½ and 11½ years. Abandoned patents open the door to hungry competitors.

Jerome Lemelson, the Most Controversial Inventor 

 Jerome Lemelson ranks just behind Thomas Alva Edison as the most prolific patent holder of all time. Lemelson, who was born in 1923 and educated as an engineer, acquired more than 550 patents during his life, approximately one patent a month during his forty-five year career. Critics say that Lemelson built a career on shrewdly predicting the trend of emerging technology and acquiring a patent directly in its path. He amassed millions of dollars asserting, litigating, and settling patent disputes.

1. He obtained patents on a dazzling array of technologies and products that seemed to encompass every aspect of American life: crying baby dolls, bar-code readers, cordless telephones, cassette players, camcorders, fax machines, robotics, personal computers and peripherals, and manufacturing processes spanning dozens of industries in which no one had ever known him to be personally involved. He managed to do all this without the backing of major research institutions or big corporations.

Eventually, toward the later years of his career, Lemelson spent the majority of his time defending his patents in court. In 1998 he began sending letters to customers of two companies that manufactured and sold bar-code scanners and related products, accusing the manufacturers of patent infringement. Both companies sued to have Lemelson’s bar-code-related patents declared invalid. The patents in question were initially filed in the 1950s and were pending for decades. On appeal, the court declared Lemelson’s patents unenforceable on the basis of unreasonable delay (Lemelson had legally manipulated the patent system so that the applications had been pending, but were not prosecuted, for a period of more than thirty years).

2.Lemelson became most famous for perfecting a legal maneuver called the “submarine patent.” Using this strategy, he positioned himself to extract large settlements from hardworking inventors by rushing to file patent applications for technologies such as the bar-code scanner or the crying baby doll. Lemelson would keep his pending patent applications secret (like a submarine under water) until the inventions were commercially successful. He would then produce his patent and threaten to sue for infringement, negotiating large amounts of money to settle the case.

In 1996 Lemelson was diagnosed with liver cancer. He submitted nearly forty patent applications during the last year of his life, including several for improved medical devices and cancer treatments. Prior to his death, he established the Lemelson Foundation, which has donated more than $50 million to helping individual inventors.

Lemelson is a critical figure in U.S. patent history. His strategies inspired Congress to pass laws requiring inventors to publish their patent applications within 18 months of filing to discourage Lemelson copycats.



Should You Patent Your Software?

Software patents, which were relatively obscure a decade ago, are becoming more integral to the survival and growth of large and small software companies. Software enhancements and innovations that address a specific, previously unsolved problem often have the requisite level of novelty to qualify for patent protection. If you are a software developer, or if your invention involves software, here are a few reasons you might want to consider pursuing patent protection.

Copyright protection is helpful in situations of outright piracy, but it is not well suited to deter an aggressive competitor. Copyright protects only against literal copying of your code. It does not prevent your competitors from creating functionally equivalent code through reverse engineering, black box testing, or other methods.

Patents carry more valuable and expansive rights than do copyrights. They make it more difficult for a competitor to encroach on the market you’ve established. Only a patent can confer a monopoly type of protection against competition from reverse engineering and functional equivalents.

A well-drafted patent can give you a monopoly with respect to the innovative, functional elements of your software. It allows you to prohibit a competitor from marketing a program that performs the same innovative tasks as your patented product, even if that competitor has not copied any of your code.

With a patent, there’s no need to prove that a third party has actually copied key elements of your work; only that they’ve infringed your patent by selling a program that falls within the scope of what you’ve claimed in your patent.

Do you feel that there is a market for your software because it fills a need for increased efficiency or offers a new and useful solution to a problem? If so, it’s likely that at least some aspects of your software may be considered novel enough to patent.

Section 101 of the U.S. Patent Act states:

2. Most New Software Contains Some Protectable Elements
1. Patent Protection Is a Broader Form of Protection
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof, may obtain a patent, subject to the conditions and requirements of this title.

The “one-click” technology was patentable because it contained novel features in addition to relying on previous e-commerce technology. Software patents cover a range of algorithms and methods for performing calculations and processing numerical and financial data. Examples include insurance application processing, loan application processing, stock/bond trading and management, health-care information management, reservation systems, auction systems, and so on. Your attorney can help you identify the elements of your software that are sufficiently novel to warrant patent protection.

3. Provisional Applications Can Make Patent Protection Economical for Small Software Developers and Start-up Businesses

A provisional application is a simplified patent application and is less costly to file than a standard application. Consider filing a provisional application in order to establish the earliest possible filing date for your patent while you continue to perfect and establish a market for your new software.

In a provisional application, you must sufficiently identify your invention, but your attorney need not draft the detailed claims defining the parameters of your invention that are required in a standard application. Filing a provisional application entitles you to use the “patent pending” designation on your software. On or before the expiration of one year, you must file a standard application with the usual detailed claims (which will, if approved, will ultimately give you protection twenty years from filing). Your patent is given the earlier filing date of your provisional application.

Simply put, you have one year from the date that you disclose your invention or offer your invention for sale. Within that one year period, you can file for a provisional application which, in essence, gives you up to one additional year in which to file a non-provisional application.

Most importantly, don’t be overwhelmed. No one expects you to do this all by yourself. For consulting a patent attorney to help protect your idea, visit the USPTO’s website at

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