Despite what you might have heard on late night television, it takes a great deal of devotion and effort to successfully develop and market an invention.  If inventing were that easy, everyone would be rich!  When you do come up with an idea that you think could be of value to others, it’s important that you take the right steps to protect that idea.  Today, I want to address the “poor man’s patent” myth.  According to this myth, one simply mails a description of their invention to themselves to prove that they invented something on a certain date.  The truth is that mailing your idea to yourself will do absolutely nothing to give you any protection against others coming up with the same idea.  In fact, mailing the idea to yourself and waiting too long might demonstrate to the patent office that you had a lack of diligence to protect your idea, or that you had abandoned the idea completely.

To establish your date of invention, there are various options.  Contact your local patent attorney for the best information given your individual situation.

The United States Patent and Trademark Office has issued the following United States Patents to South Dakota Inventors from November  9, 2011 to December 7, 2011.

1.       US Patent No. 8,055,557, issued November 8, 2011 with the title “Transfer account systems, computer program products, and associated computer-implemented methods”

Inventors: Trent Sorbe, Brookings, SD; Troy Larson, Brandon, SD                              

Assigned: Metabank, Sioux Falls, SD                               

Summary: This invention is for a system that provides prioritized payments from the proceeds of automatic or direct deposits.  Funds for preauthorized payments are withdrawn from automatic or direct deposits almost instantly.  The customer account can have a prepaid card to access net value of funds after the withdrawals.

2.       US Patent No. 8,055,481, issued November 8, 2011 with the title “Method for planning sheet pile wall sections”

Inventor: Roberto Wendt, Rapid City, SD                                      

Assigned: Pilepro, LLC, Austin, TX                    

Summary: This invention relates to a method for planning sheet pile wall sections using the Internet and a remote computer system.  The user enters construction parameters for the sheet pile wall sections via the internet, where they are relayed to the remote computer system.  The remote computer system then relays back a suitable layout.

3.       US Patent No. 8,054,174, issued November 8, 2011 with the title “Referee's wireless horn indicator system having sensor alerts”

Inventor: Randy S. Uehran, Brookings, SD                                    

Assigned: Daktronics, Inc., Brookings, SD     

Summary: Mr. Uehran has developed a wireless horn for a referee to use in officiating a sports event.  The horn includes a means for receiving signals from the official time clock, and is worn by the referee on the wrist.  For example, when time on the official time clock has expired, a signal is sent to the system and the system notifies the official of the expiration by vibrating or by making an audible noise. 

4.       US Patent No. 8,051,608, issued November 8, 2011 with the title "Wind tower transport cover ”

Inventor: Eric J. Koller, Yankton, SD                                                                                     

Assigned: Shorma Company, Springfield, SD                                            

Summary: Mr. Koller has invented a wind tower transport cover for covering an opening at the end of a wind tower section, such as the large wind tower sections we see traveling down the interstate.

5.       US Design Patent No. D648,803, issued November 15, 2011 with the title "Basketball stanchion display "

Inventors: Jay DeBlonk, Brookings, SD; Lane A. Munson, Brookings, SD; Douglas John Criddle, Brookings, SD; Tom Kreutner, Brookings, SD; Adam Howard, Brookings, SD

Assigned:  Daktronics, Inc., Brookings, SD

                Summary: Mr. DeBlonk and his co-inventors have invented an ornamental design for a display that rests on a horizontal stanchion of a freestanding basketball hoop.  The horizontal stanchion in question holds the basketball backboard and basket above the surface of the basketball floor.  The display is positioned so that viewers on either side of the freestanding hoop can view the display.

6.       US Patent No. 8,058,525, issued November 15, 2011 with the title "Maize variety inbred PH13H3"

Inventor: Todd Elliott Piper, Mankato, MN; Jay Robert Hotchkiss, Brookings, SD

Assigned: Pioneer Hi-Bred International, Inc., Johnston, IA

                Summary: Mr. Piper and Mr. Hotchkiss have invented a new variety of corn.

7.       US Patent No. 8,057,520, issued November 15, 2011 with the title "Calcaneal plate"

Inventors:  Dustin Ducharme, Stow, OH; Bryan D. Den Hartog, Rapid City, SD; Michael C. McGlamry, Marietta, GA, Bharat M. Desai, Golden, CO; David B. Kay, Akron, OH; Lee A. Strnad, Broadview Hts., OH

Assigned: Orthohelix Surgical Designs, Inc., Medina, OH

                Summary:  Mr. Hartog and his co-inventors have developed a calcaneal plate for use with the calcaneum bone of a human.  The calcaneun bone is often referred to as the heel bone.

8.       US Patent No. 8,056,919, issued November 15, 2011 with the title "Tow bar and leg latching mechanism therefor"

Inventors: James Huston, Yankton, SD; David Merchant, Lincoln, NE; Steven Goodman, Pender, NE; Leslie Roeber, Emerson, NE; Neil Wagner, Winsive, NE

Assigned: Automatic Equipment Manufacturing Company, Pender, NE

                Summary: Mr. Huston and his co-inventors have developed a tow bar system for connection to a towing vehicle.  The tow bar counteracts the tendency of the towed vehicle to wander or fishtail.

9.       US Patent No. 8,065,187, issued November 22, 2011 with the title "System, program product, and associated methods to autodraw for micro-credit attached to a prepaid card"

Inventors: Rebecca Ahlers, Cincinnati, OH; Andrew B. Crowe, Omaha, NE; Scott H. Galit, New York, NY; Trent Sorbe, Brookings, SD

Assigned: Metabank, Sioux Falls, SD

                Summary: Mr. Sorbe and his co-inventors have developed a system whereby prequalified consumers access a line of credit by using a prepaid card.  A lending institution makes available draws to the line of credit for a proposed purchase using the prepaid card as payment.

10.   US Patent No. 8,061,082, issued November 22, 2011 with the title "Window latch"

Inventors: Ray Garries, Fox Island, WA; Gary Brunold, Klamath Falls, OR; Tim Laurance, Klamath Falls, OR; Nick Strahm, Klamath Falls, OR; James Ripley, Canton, SD; Steve Piltingsrud, Sioux Falls, SD; Scott Meunier, Sioux Falls, SD

Assgined: JELD-WEN, Inc., Klamath Falls, OR

                Summary: The inventors have developed a window latch system for a wind having a bottom sash.

11.   US Patent No. 8,060,958, issued November 22, 2011 with the title "Powered person lift and transport apparatus"

Inventor: Randall Hough, Lily, SD

Assigned: None reported.

                Summary: Mr. Hough has developed a powered lift apparatus for lifting and transporting a human body above a ground surface.  The apparatus features a crane that can pivot and move with respect to a base.

12.   US Design Patent No. D649,620, issued November 29, 2011 with the title "Fishing lure "

Inventor:  Larry Donovan, Rapid City, SD

Assigned: None reported.

                Summary: Mr. Donovan developed an ornamental design for a fishing lure.  

13.   US Patent No. 8,069,085, issued November 29, 2011 with the title "System, program product, and associated methods to autodraw for micro-credit attached to a prepaid card"

Inventors: Rebecca Ahlers, Cincinnati, OH;   Andrew B. Crowe, Omaha, NE; Scott H. Galit, New York, NY; Trent Sorbe, Brookings, SD

Assigned: Metabank, Sioux Falls, South Dakota

                Summary: This system is very similar to the previously described Patent No. 8,065,187.

14.   US Patent No. 8,066,831, issued November 29, 2011 with the title "Shock wave and power generation using on-chip nanoenergetic material"

Inventors: Shubhra Gangopadhyay, Columbia, MO; Steven Apperson, Columbia, MO; Keshab Gangopadhyay, Columbia, MO; Andrey Bezmelnitsyn, Columbia, MO; Rajagopalan Thiruvengadathan, Columbia, MO; Michael Kraus, Columbia, MO; Rajesh Shende, Rapid City, SD; Maruf Hossain, Columbia, MO; Senthil Subramanian, Poway, CA; Shantanu Bhattacharya, Columbia, MO; Yuangang Gao, Boulder, CO

Assigned: The Curators of the University of Missouri, Columbia, MO

                Summary: Mr. Shende and his co-inventors have developed a method of generating power using a nanoenergetic material. Explosive materials are usually not thought to be useful in the production of electricity because of the byproduct of uncontrolled thermal and mechanical force. This patent shows how nanomaterials can generate electricity by producing smaller, controllable explosive reactions.

15.   US Patent No. 8,065,926, issued November 29, 2011 with the title "Crankset based bicycle power measurement"

Inventor: James Isaac Meyer, Spearfish, SD

Assigned: SRAM, LLC, Chicago, IL

                Summary: Mr. Meyer has developed a device that measures input torque on the drive train of a bicycle.

16.   US Patent No. 8,065,856, issued November 29, 2011 with the title "Marker system with marker and installation apparatus" 

Inventor: Paul M. Carrette, Garretson, SD

Assigned: Flagshooter, LLC, Garretson, SD

                Summary: Mr. Carrette has developed a system for installing flags into a ground surface.  Presently, flags are individually inserted into the ground to mark the presence of buried underground utility lines.  With Mr. Carrette’s invention, flags can be inserted using a tool that does not require the operator to bend over, enabling safer and quicker marking.

For information on patents and other intellectual property, or to discuss securing protection for your idea, contact Jared Clark of Cutler & Donahoe, LLP at jared@cutlerlawfirm.com.  Reach him by phone at (605) 335-4950.  

Data Source: United States Patent and Trademark Office. For more information on any of the patents listed in this column, visit http://www.uspto.gov and select “search patents.”

The United States Patent and Trademark Office has issued the following United States Patents to South Dakota Inventors from October 11, 2011 to November 1, 2011.

1.       US Patent No. 8,035,735, issued October 11, 2011 with the title “Camera with weather cover”

Inventor: Larry Holmberg, Harrisburg, SD                                      

Assigned: Not listed                                               

Summary: Mr. Holmberg has invented a camera having a camera body, a video camera recorder, a battery compartment and a weather cover.  The weather cover has special threads for mating with threads at a rear end of the camera body, to attach the weather cover to the camera and cover the video camera recorder and the battery compartment.

2.       US Patent No. 8,039,847, issued October 18, 2011 with the title “Printable semiconductor structures and related methods of making and assembling”

Inventors: Ralph G. Nuzzo, Champaign, IL; John A. Rogers, Champaign, IL; Etienne Menard, Durham, NC; Keon Jae Lee, Tokyo, Japan; Dahl-Young Khang, Urbana, IL; Yugang Sun, Westmont, IL; Matthew Meitl, Raleigh, NC; Zhengtao Zhu, Rapid City, SD; Heung Cho Ko, Urbana, IL; Shawn Mack, Goleta, CA           

Assigned: The Board of Trustees of the University of Illinois, Urbana, IL 

Summary: Mr. Zhu and his co-inventors have invented a method of making a printable semiconductor from low cost bulk materials.

3.       US Patent No. 8,044,278, issued October 25, 2011 with the title “Maize variety inbred PH13JD”

Inventors: Todd Elliott Piper, Mankato, MN; Jay Robert Hotchkiss, Brookings, SD                              

Assigned: Pioneer Hi-Bred International, Inc., Johnston, IA               

Summary: Mr. Hotchkiss and his co-inventor have developed a variety of maize by crossing one variety of maize with another variety.

4.       US Patent No. 8,043,644, issued October 25, 2011 with the title “Method for exposing comminuted foodstuffs to a processing fluid”

Inventors: Eldon Roth, Dakota Dunes, SD                                                                                                            

Assigned: Freezing Machines, Inc., Dakota Dunes, SD                          

Summary: Mr. Roth has developed a method that includes producing a flowing sheet of comminuted (e.g., consisting of very small particles) foodstuff and then exposing the flowing sheet to a processing fluid for further foodstuff processing .

5.       US Patent No. 8,042,940, issued October 25, 2011 with the title “Opthalmic lenses having reduced base out prism”

Inventors: Jeffrey P. Krall, Mitchell, SD, USA; Hugh McLoughlin, Randalstown Co. Antrim, UK; Trevor Steele, Dromara Co. Down, UK; Andrew Whale, Craigavon, UK                 

Assigned: Crossbows Optical Limited, Ireland                                                     

Summary: With normal vision, an individual is able to change focus for different distances. Ideally, an individual is able to focus on distant objects, referred to as distance vision, and on near objects, referred to as near vision. Dr. Krall and his co-inventors have invented a new progressive lens that allows the wearer to see items at different distances.

6.       US Patent No. 8,042,227, issued October 25, 2011 with the title “Block and tackle window balance with bottom guide roller”

Inventors: Gary Roger Newman, Valley Springs, SD                                                                         

Assigned: Amesbury Group, Inc., Amesbury, MA                                  

Summary: Mr. Newman invented a block and tackle window balance to be incorporated in single and double hung window assemblies.  According to one example of the invention, a roller is secured within a bottom guide of a window to increase the range of travel of the window sash.

7.       US Design Patent No. 647,814, issued November 1, 2011 with the title “Wearable article with an arrangement of apertures”

Inventors: Robert J. Marking, Brookings, SD                                                                            

Assigned: None listed.                                          

Summary: Mr. Marking invented a wearable article having a dog tag shape.

8.       US Patent No. 8,042,227, issued November 1, 2011 with the title “Method of attaching device to weapon”

Inventor: Larry Holmberg, Harrisburg, SD                                                                                  

Assigned: None listed.                                          

Summary: Mr. Holmberg invented a mount for mounting a device to a firearm.

9.       US Patent No. 8,042,227, issued November 1, 2011 with the title “Electronic sign with multiple direction positionable rear access doors”

Inventors: Kory D. Kludt, Brookings, SD; Jonathan Tremblay, St-Roch de l'Achigan, Canada

Assigned: Daktronics, Inc., Brookings, SD     

Summary: Mr. Kludt and his co-inventor have invented an electronic sign with multiple direction, positionable rear access doors.  The doors are designed to allow access to the inner regions of the electronic sign while maintaining a thin profile.

For information on patents and other intellectual property, or to discuss securing protection for your idea, contact Jared Clark of Cutler & Donahoe, LLP at jared@cutlerlawfirm.com.  Reach him by phone at (605) 335-4950.  

Data Source: United States Patent and Trademark Office. For more information on any of the patents listed in this column, visit http://www.uspto.gov and select “search patents.”

Why get a patent?  A US patent enables the holder to prevent others from copying their idea.  Technically, a patent prevents making, using, selling, offering for sale or importing of an invention.  If you are in a situation where you or your business has a product you can’t have copied, then patent protection may be for you.  In addition to putting a stop to the copying your invention, a patent can be useful for attracting investors, licensing your ideas for royalties, or selling your idea.  Contact a patent attorney with any other questions you might have—they are best equipped to provide sound advice.

The United States Patent and Trademark Office has issued the following United States Patents to South Dakota Inventors from August 30, 2011 to October 4, 2011.

1.       US Patent No. 8,035,735, issued October 11, 2011 with the title “Camera with weather cover”

Inventor: Larry Holmberg, Harrisburg, SD                                      

Assigned: Not listed                                               

Summary: Mr. Holmberg has invented a camera having a camera body, a video camera recorder, a battery compartment and a weather cover.  The weather cover has special threads for mating with threads at a rear end of the camera body, to attach the weather cover to the camera and cover the video camera recorder and the battery compartment.

2.       US Patent No. 8,039,847, issued October 18, 2011 with the title “Printable semiconductor structures and related methods of making and assembling”

Inventors: Ralph G. Nuzzo, Champaign, IL; John A. Rogers, Champaign, IL; Etienne Menard, Durham, NC; Keon Jae Lee, Tokyo, Japan; Dahl-Young Khang, Urbana, IL; Yugang Sun, Westmont, IL; Matthew Meitl, Raleigh, NC; Zhengtao Zhu, Rapid City, SD; Heung Cho Ko, Urbana, IL; Shawn Mack, Goleta, CA           

Assigned: The Board of Trustees of the University of Illinois, Urbana, IL 

Summary: Mr. Zhu and his co-inventors have invented a method of making a printable semiconductor from low cost bulk materials.

3.       US Patent No. 8,044,278, issued October 25, 2011 with the title “Maize variety inbred PH13JD”

Inventors: Todd Elliott Piper, Mankato, MN; Jay Robert Hotchkiss, Brookings, SD                              

Assigned: Pioneer Hi-Bred International, Inc., Johnston, IA               

Summary: Mr. Hotchkiss and his co-inventor have developed a variety of maize by crossing one variety of maize with another variety.

4.       US Patent No. 8,043,644, issued October 25, 2011 with the title “Method for exposing comminuted foodstuffs to a processing fluid”

Inventors: Eldon Roth, Dakota Dunes, SD                                                                                                            

Assigned: Freezing Machines, Inc., Dakota Dunes, SD                          

Summary: Mr. Roth has developed a method that includes producing a flowing sheet of comminuted (e.g., consisting of very small particles) foodstuff and then exposing the flowing sheet to a processing fluid for further foodstuff processing .

5.       US Patent No. 8,042,940, issued October 25, 2011 with the title “Opthalmic lenses having reduced base out prism”

Inventors: Larry Holmberg, Harrisburg, SD                                    

Assigned: Jeffrey P. Krall, Mitchell, SD, USA; Hugh McLoughlin, Randalstown Co. Antrim, UK; Trevor Steele, Dromara Co. Down, UK; Andrew Whale, Craigavon, UK                       

Summary: With normal vision, an individual is able to change focus for different distances. Ideally, an individual is able to focus on distant objects, referred to as distance vision, and on near objects, referred to as near vision. Dr. Krall and his co-inventors have invented a new progressive lens that allows the wearer to see items at different distances.

6.       US Patent No. 8,042,227, issued October 25, 2011 with the title “Block and tackle window balance with bottom guide roller”

Inventors: Gary Roger Newman, Valley Springs, SD                                                                         

Assigned: Amesbury Group, Inc., Amesbury, MA                                  

Summary: Mr. Newman invented a block and tackle window balance to be incorporated in single and double hung window assemblies.  According to one example of the invention, a roller is secured within a bottom guide of a window to increase the range of travel of the window sash.

7.       US Design Patent No. 647,814, issued November 1, 2011 with the title “Wearable article with an arrangement of apertures”

Inventors: Robert J. Marking, Brookings, SD                                                                            

Assigned: None listed.                                          

Summary: Mr. Marking invented a wearable article having a dog tag shape.

8.       US Patent No. 8,042,227, issued November 1, 2011 with the title “Method of attaching device to weapon”

Inventor: Larry Holmberg, Harrisburg, SD                                                                                  

Assigned: None listed.                                          

Summary: Mr. Holmberg invented a mount for mounting a device to a firearm.

9.       US Patent No. 8,042,227, issued November 1, 2011 with the title “Electronic sign with multiple direction positionable rear access doors”

Inventors: Kory D. Kludt, Brookings, SD; Jonathan Tremblay, St-Roch de l'Achigan, Canada

Assigned: Daktronics, Inc., Brookings, SD     

Summary: Mr. Kludt and his co-inventor have invented an electronic sign with multiple direction, positionable rear access doors.  The doors are designed to allow access to the inner regions of the electronic sign while maintaining a thin profile.

For information on patents and other intellectual property, or to discuss securing protection for your idea, contact Jared Clark of Cutler & Donahoe, LLP at jared@cutlerlawfirm.com.  Reach him by phone at (605) 335-4950.  

Data Source: United States Patent and Trademark Office. For more information on any of the patents listed in this column, visit http://www.uspto.gov and select “search patents.”

First Patent System Overhaul in Nearly 60 Years, Awaits Obama’s Signature

On Thursday, September 8, 2011, Congress sent patent system overhaul legislation to the President for his signature.  Today’s patent examination system was created first, in 1836.  The last time major changes were made to the patent system, it was 1952, nearly 60 years ago.  Herein, we’ll summarize the America Invents Act, explaining the good, the bad, and the ugly.  If you have questions or concerns about how this new law may affect you, individually, please feel free to telephone our office for a consultation.

Goals

Stated America Invests Act goals include inspiring innovation; stimulating the economy; creating jobs; increasing the quality of patents; streamlining the patent process; decreasing costly legal battles; and funding the Patent Trademark Office, to speed processing.

Summary

·         New First-to-File Patent System 

This legislation transforms the United States into a first-to-file patent system; it’s currently a first-to-invent system.  Both systems are used to determine which inventor has the right to have a patent issued for his invention; in other words, the systems are used to determine when enforceable legal rights attach.  When this Act is signed into law by the President, the United States will join many other countries that also use the first-to-file patent system. The United States has stood alone.

·         In a first-to-file patent system, the inventor who actually files a patent application earns “first place,” and the right to have a patent issued to protect his or her innovation.  The date of the filing is the date of the invention.

·         In the current “first-to-invent” system, personal records and documentation are used to determine who gets “first place” and the right to the patent for that particular innovation.  The date of the original innovation conception is considered to be the date of the invention, so long as the innovator diligently reduced the invention to practice.

·         New “Derivation” Proceeding

The Act also creates a “derivation” proceeding, applying to the first-inventor-to-file patent applications and patents.  Derivation proceedings protect against the theft and the subsequent patent filings of inventions by making an exception to the “first-to-invent” system if an individual or company got the subject matter of a patent from the inventor, without authorization, within one year before the patent filing. 

·         Inter Partes Review and Post-Grant Review 

In partes review replaces “optional inter partes reexamination,” allowing third parties to challenge a patent before the Patent Trial and Appeal Board after the time allowance for post-grant reviews has lapsed.  Review by the Board will be granted upon the showing of a likelihood that the petitioner will prevail on at least one of the challenges. 

Post-grant review before the Patent Trial and Appeal Board is established in the Act, permitting review of the validity of patents within the first 9 months of issuance.  Any patentability issue, other than best mode, may be challenged. 

The Good, the Bad, and the Ugly 

Whether the America Invents Act is good, bad, or ugly depends on who you are.  If you’re a big company, you’ll love it as the first to file system and other provisions, such as the fee structure and allowable patent validity challenges, seem to give preference to big companies at the expense of individual innovators, universities, and small companies.  This is what happened in Canada when their patent system made a similar transition.

·         Higher Quality Patents, a Better Economy, and More Jobs?

And, while proponents of the Act tout that higher quality patents will result, aiding our troubled economy and flailing job market, opponents predict a rush of low quality, immature…”get it filed now”…patents, because inventors’, perhaps, not quite finished innovations, are protected in the first to file system.

·         Increased Patent Trademark Office Effectiveness

A rush to file patent applications will likely cause a back log of patent applications, causing further delays in the approval process.  While increased priority fees, which are significant, could be used to increase the productivity of the Patent Trademark Office, general revenue in excess of the office’s annual budget funds other governmental programs (i.e. “fee diversion”.)

There are concerns that big companies will be able to afford the additional $4,800 priority fee ($2,400 for small companies and individuals) and 15% surcharges of fees, and individuals, universities, and small companies won’t; so, their applications will be at the bottom of the stack for an extended period of time. 

·         Reduce Litigation

The Patent Trademark Office issues patents; patents evidence an enforceable legal right; however, you, as the patent holder, are solely responsible for enforcing your patents.  Under current law, patent holders could group alleged patent infringers together in a class action lawsuit, saving attorney fees, time, and effort.

Under the new Act, there will be no class actions unless the alleged patent infringers worked jointly to infringe the patent; it will no longer be enough that they both infringed the same patent. 

In anticipation of the new legislation, a rush of litigation has resulted, just in the last week as patent holders seek to enforce their rights without further obstacles of the law.  When the Act is signed into law and becomes effective, alleged infringers will be harder to sue and patent holders will have to spend more money, time, and effort enforcing their rights.

When the New Act Becomes Law

It is anticipated that President Obama will sign the America Invents Act into law; the date is yet unknown, but will likely be soon.  Many of the provisions are not effective for one year from the signing date, but some are sooner.  If you have questions or concerns about how this new law may affect you, individually, please feel free to telephone our office for a consultation at 605-335-4950.

As technology is dynamic, changing exponentially, patent law has exploded into the headlines. Below, we briefly highlight current patent hot topics.  If you have questions, concerns, or need patent law and intellectual property advice, be sure to call (605-335-4950) or email our office for a confidential consultation.

Induced Infringement U.S. Supreme Court decision May 31, 2011

The Supreme Court declares, “(1) Induced infringement under 35 U.S.C. §271(b) requires knowledge that the induced acts constitute patent infringement; and (2) that deliberate indifference to a known risk that a patent exists does not satisfy the knowledge required by Section 271(b).”

“Actual knowledge” remains the legal standard for induced infringement cases.

Quality Versus Quantity

“HP is seeking broad patents that relate directly to its main businesses, avoiding the costs of filing patents that may relate to more specific processes....HP seems to be keeping secret certain innovations, especially in its services division, rather than filing patents,” Kevin Light, a deputy general counsel and vice president for intellectual property at Hewlett-Packard as quoted in the Wall Street Journal.”

Finding a uniquely qualified patent attorney is essential to filing a quality patent.

Patent Marking Suits

In patent marking suits, third parties bring suit against companies who inappropriately mark protects as patented when they have not been afforded patent protection or the patent protection has expired.  Third parties have interest because they are entitled to an equal share (with the U.S. government) in all fines levied. 

Banks are the focus of patent marking suits in 2011.  Earlier this year, Main Hastings LLC of Texas sued Citigroup, J.P. Morgan Chase, HSBC USA in District Court, accusing each of having expired patents (regarding telephone technology) listed on their website. 

In 2009, it was ruled that each patent marking offense is punishable by a fine of up to $500. 

It will be interesting to see how the court rules in this case and how it measures the number of offenses by offending website.

Ashton Kutcher Replaces Charlie Sheen

2011 headlines have been filled with news of Charlie Sheen and, now, news of his replacement on the popular television series, Two and a Half Men, Ashton Kutcher.

What in the world does this have to do with patent law?

Charlie Sheen has his own patent!  Charlie Sheen (also known as Carlos Irwin Estevez) and Rodger D. Thomason hold patent number US 6,283,658 with an issue date of September 4, 2001. 

Where to get good advice and patent law services

We are closely watching current issues in patent law for the benefit of our clients.  If your patent has been infringed or if you have an innovative invention that you want to protect, hire an attorney who focuses his or her practice on patent law. 

At Cutler & Donahoe, LLP, we focus our practice on representing people just like you.  Not only do we help you to obtain your patents for your inventions, we help you protect your patents and get the compensation that you deserve. 

If you have questions about patents and patent hot topics, call our offices now at 605-335-4950 or email us.

Although company shareholders may not agree, the United States Patent Trademark Office (PTO) has indicated that the quality of the patents granted is more important than quantity of patents granted. 

To encourage higher quality patents, the PTO discontinued publishing its annual top ten patent holder list, "emphasizing quality over quality by discouraging any perception that we believe more is better." 

This is an important about face in the field of intellectual property.  Now, inventors, companies, patent attorneys, and patent law firms can be judged on the quality of the work, not quantity. 

In the past, rankings (inventors, companies, patent attorneys, and patent law firms) were based solely in the number of patents produced with no consideration of quality, innovation, contribution to society, or profit.

So, should we be concerned about China?

Probably.

There is much in the headlines about China’s economic growth.  In fact, Thomson Reuters’ intellectual property analysis indicates that China’s 2011 patent volume will exceed both the United States and Japan in patents.

This projection is certainly reason for further analysis, but should it cause alarm based upon the number of patents alone?   Is the U.S. finally getting “it” and focusing on quality or are we falling short?

The Thomson Reuters analysis indicates that U.S. patent growth was 5.5% from 2003-2009; whereas, China’s patent growth was 26.1% from 2003-2009.   That’s just shear quantity.

But, other factors were observed as well, including patent quality versus quantity, composition of patents, patent technology areas, and government/policy implications. 

Other observations about China’s patents include:

·         China has greatly expanded its intellectual property protection overseas.  For example, China’s patents in the United States increased 14.1% from 2007 to 2008.  During that same time period, in Europe, China’s patents increased 33.5%; in Japan, their patents increased 15.9%

·         The Chinese government is encouraging patent development and innovation with tax deductions, a government dedicated to innovation, and the development of unique patent protection.

·         China offers “utility patents” with 10 years of protection that are easier to obtain than “invention” patents

·         In 2009, one – half of all Chinese patents were utility patents

·         China’s high tech patents are growing exponentially

·         Agricultural related patents are slowing reflecting a significant change in their society

·         China’s quality of patents appears to be improving based upon analysis of the ratio of applications to full invention patents granted.

What’s this mean for the United States?

Innovation.  Innovation.  Innovation. 

If you have been thinking of developing a product or have a product and haven’t yet moved forward with your patent application, get going!  It’s your time.  You’re not alone. 

Where to get help

If you have questions about what it takes to develop a quality patent, hire a qualified attorney who focuses his or her practice on patent law. 

We, at Cutler law firm, focus on our practice on representing people just like you.  Not only do we help you to obtain your patents for your inventions, we help you protect your patents and get the compensation that you deserve. 

If you have questions about patents and patent infringement or need help, our offices can be reached at 605-335-4950 or through email.

As in any area of law, patent law has its share of common patent myths.  To ensure that your inventions are protected and that you are not mislead by such myths, we explore 5 of them below.  If you have heard any of these myths, you are not alone.  They confuse many inventors.

MYTH:  There are special “international” patents to protect your invention all over the world.

FACT:  In fact, there are no “international” patents.  U.S. patents can only be enforced nationally. 

This common myth stems from the existence of the Patent Cooperation Treaty.  The Patent Cooperation Treaty includes 142 countries world-wide.  This means, that through this treaty, your patent can be enforced in these 142 countries if you have a patent from one of these countries such as the United States.

Products that violate a patent are not admitted to any of these 142 countries.  It is part of the customs and trades offices of each country to keep violating products out.  If a product violates your patent and is missed by the customs and trade offices of a country, you can sue the importer and the seller.

You, as the inventor are responsible for enforcing your own patent, both nationally and internationally.

MYTH:  Patent illustrations are protected under your product’s patent.

FACT:  The fact is that the only the language in the patent claim section affords patent protection.

You can seek copyright protection for the graphics that you submit with your patent application.

In addition, you can apply for a separate design patent (and gain 14 years of patent protection) for a specific design such as for the design for Star Wars’ characters, designer eye glasses, and the original Coca-Cola bottle.

MYTH:  There are provisional patents which protect inventions.

FACT:  In fact, there is no such thing as a “provisional patent.”  

The confusion stems from the fact that there is a provisional patent application. 

When you see the term “patent pending,” a provisional patent application has been filed.  It contains much less detail and does NOT provide patent protection rights.  It does however establish the patent filing date.

Patent pending status is valid for 12 months only.  The actual patent application must then be filed before the 12 months expires.

Often inventors use the 12 month period to put the final touches on a product or to test the market for their product.

 MYTH:  Your patent will be enforced by the United States Patent Trademark Office.

FACT:  You, as the patent holder, have the sole authority and responsibility for enforcing your patents. 

The patent issued by the United States Patent and Trademark Office merely serves as evidence of patent violation in a court of law. 

MYTH:  Within the biopharmaceutical market, there is a patent cliff. 

FACT:  Even as biopharmaceutical patents expire and generics enter the market, there are no patent cliffs.

Instead the experts describe a patent “plateau” as pharmaceutical companies’ revenues rise and fall each year or over a five year period due to patent expiration and the issuance of new patents.  

If you’re like most people, you’ve heard of the infamous celebrity playboy, Charlie Sheen.  You may have even heard that Sheen is seeking to trademark 22 catch phrases such as “Duh, Winning” and “Rock Star from Mars.”   But, did you know that Charlie Sheen has his own patent?

Ironically, playboy Charlie Sheen owns the patent for a lip balm dispenser!  This is Sheen’s invention below.

Charlie Sheen (also known as Carlos Irwin Estevez) and Rodger D. Thomason hold patent number US 6,283,658 with an issue date of September 4, 2001.  The lip balm (or Chapstick) dispenser “provides convenient use and asymmetrical, tactile geometry, aiding manual determination of the disposition of the device.”

Charlie Sheen is not alone.  Prince (or the Artist Formerly Known as Prince), Michael Jackson, George Lucas, and Eddie Van Halen hold patents as well.  Not what you think of when you think Hollywood is it?  Why doesn’t Star Magazine cover this stuff?

·         Prince patented his electronic keyboard

·         Michael Jackson patented his anti-gravity shoes

·         George Lucas patented a Droid figure and the “Droid” name

·         Eddie Van Halen patented musical instrument support

 Prince Rogers Nelson’s electronic keyboard is patent number US D349127, which was issued July 26, 1994.  The keyboard holds a trademarked name of “Purpleaxxe.” 

Michael Jackson’s anti-gravity shoes are patent number US 5,255,452, which was issued October 26, 1993.  Thus explains the almost magical Jackson dance moves, leaning past his center of gravity! 

George Lucas’ Droid figure and name are patent number US D265, 330, which was issued July 6, 1982.  So Lucas is raking in another stream of income from Verizon’s Droid phone.  He licensed the name to Verizon.

Lucas actually holds many patents for Star Wars toy figurines such as his little green friend, Yoda.

Eddie Van Halen (also known as Edward L. Van Halen) owns a patent for his musical instrument support.  It is patent number US 4,656,917 and was issued April 14, 1987.  The musical instrument support holds string instruments (i.e. guitars, mandolins, and banjos) so that both hands are free to play “thus allowing the player to create new techniques and sounds previously unknown to any player.”

Other celebrity patents include:

·         Zeppo Marx (Actor & Comedian):  Cardiac Pulse Rate Monitor (US 3,473,526)

·         Harry Connick, Jr. (Musician):  System and method for coordinating music display among players in an orchestra (US 6,348,648)

·         Penn Jillette (Magician):  Hydro-Therapeutic Stimulator (US 5,920,923)

·         Abraham Lincoln (President):  Method of buoying vessels over shoals (US 6,469)

·         Marlon Brando (Actor):  Drumhead Tension Device (US 6,812,392)

·         Lawrence Welk (Entertainer):  Welk Ash Tray (US D170,898)

·         Jamie Lee Curtis (Actress):  Infant Garmet (US 4,753,647)

·         Mark Twain (Author):  Improvement in Scrapbooks (US 140,245)

·         Harry Houdini (Magician):  Diver’s Suit (US 1,370,316)

·         Gary Burghoff also known as “Radar” (Actor):  Enhanced Fish Attractor Device (US 5,235,774)

·         Paul Winchell (Ventriloquist):  Artificial Heart (US 3,097,366)

·         Danny Kaye (Singer/Actor):  Blowout Toy (US D166,807)

Celebrity patents don’t get the attention of the press and Star Magazine, but they certainly help to see celebrities in a different light.  After all, they are all “Rock Stars from Mars” if you ask Charlie Sheen.

On March 3, 2011, the Supreme Court of the United States of America heard oral arguments regarding the issue of intent in an inducing patent infringement case.  Traditionally, actual knowledge of patent infringement has been a requirement to prove the requisite intent in patent infringement inducement. 

New legal standard on horizon?

The “actual knowledge” standard may no longer be law.  The US Supreme Court will decide the issue of intent when it releases its opinion in the case of Global-Tech Appliances, Inc. v. SEB S. A. 

In this case, the defendant copied a product; and, had their attorney research to determine whether there was a patent violation without telling him that they had indeed copied the product.  The attorney issued a freedom-to-operate opinion and production proceeded.

What is inducing patent infringement?

To nutshell patent infringement inducement:  Under 35 U.S.C. § 271(b), "[w]hoever actively induces infringement of a patent shall be liable as an infringer."  So, if an entity produces a product that they know a customer will use in a certain way, violating a patent, that entity is inducing patent infringement by a third party.

Actual knowledge versus deliberate indifference

In other words, an entity which sells a product, knowing the end use of that product is a patent infringement is guilty of inducing patent infringement.  Traditionally, it has been held that the inducer must have had actual knowledge of the patent’s existence and the subsequent violation. 

This may no longer be true and entities which demonstrate “deliberate indifference” to potential patent infringement satisfy the knowledge requirement for infringement according to the U.S. Court of Appeals for the Federal Circuit (February 5, 2010) in the Global-Tech Appliances, Inc. v. SEB S.A.

Why this case is so important

This case is highly important because it will provide guidance to how much research must be done before importing goods into the United States as well as by sellers of components of finished products.

SEB S.A. argues that party could be held liable for inducing infringement merely by failing to conduct a patent search and/or securing a non-infringement opinion.

Can this case be distinguished?

Will other manufacturers be able to distinguish themselves from the Global-Tech Appliances, Inc. v. SEB S. A. case?  In Global-Tech, the federal court found “deliberate disregard” for the existence of a patent because of three facts:

1.  Global-Tech bought and copied a deep fryer that was on the market.

2.  Global-Tech failed to tell their attorney that they copied the product when they hired him to research and issue a freedom-to-operate opinion.

3.  The president of Global-Tech had studied patent law.

Where to get help if your patent has been infringed or if you want to be sure that your work is not an infringement

We are watching current issues in patent law and the Global-Tech Appliances, Inc. v. SEB S. A. case closely.

If your patent has been infringed or if you have an invention and want to be sure that you are not infringing someone else’s patent, hire an attorney who focuses his or her practice on patent law.  We at Cutler Law Firm focus on our practice on representing people just like you.  Not only do we help you to obtain your patents for your inventions, we help you protect your patents and get the compensation that you deserve. 

If you have questions about patents and patent infringement or need help, call our offices now at 605-335-4950 or email us.

For 140 years, patent holders have been able to protect their patents via the doctrine of “contributory infringement.”  This doctrine, codified into law at 35 U. S. S 271(c), protects against patent infringement by a third party. 

What’s the contributory infringement law?

"Whoever imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial non-infringing use, shall be liable as a contributory infringer."

What does this mean?

Contributory infringement occurs when a party sells a component that he knows can only be used in conjunction with another component or collection of components and if such were sold together would constitute patent infringement.

What would be an example of contributory infringement?

Party A sells a cell phone that will only work with Party B’s special component.  Sold alone, Party A’s cell phone does not violate any patents because it has less elements than patented cell phones.

Party B’s special component can only be used with Party A’s cell phone.  It has no other use.

If Party A’s cell phone and Party B’s special component were sold together, it would constitute patent infringement.

What do I need to prove to recover for contributory infringement?

There are three elements that must be shown to recover for contributory infringement:

1.      Sale

2.      of material component of a patented invention

3.      knowledge that such component has been especially made for use in the infringement of a patented invention

How do I prove “knowledge?”

Courts will infer knowledge if there is no other commercial use for the component.

What are the defenses to contributory infringement?

Infringers will attempt to show that their component has substantial non-infringing use and are “staples of commerce.”  In other words, infringers will attempt to show that their components have lots of non-infringing uses.

Special note:  third party requirement

To prove contributory infringement, you must show that direct infringement occurred.  In other words, action by a third party was, in fact, direct infringement.

You don’t actually have to bring a lawsuit for direct infringement, but you must show that it occurred. 

In other words, contributory infringement is not a stand-alone infringement.  If you do not have direct patent infringement, you do not have contributory patent infringement.

What is inducement of patent infringement?

Inducement of patent infringement is the act of instructing, directing, or advising a third party as to how to infringe a patent.

In our example, if Party B sells a special component with instructions on how to use it with Party A’s cell phone, inducement of infringement has occurred.

Where to get help if your patent has been infringed or if you want to be sure that your work is not an infringement

If your patent has been infringed or if you have an invention and want to be sure that you are not infringing someone else’s patent, hire an attorney who focuses his or her practice on patent law.  We, at Cutler & Donahoe, LLP, focus on our practice on representing people just like you.  Not only do we help you to obtain your patents for your inventions, we help you protect your patents and get the compensation that you deserve. 

If you have questions about patents and patent infringement or need help, call our offices now at 605-335-4950 or email us.