In the Details

REPRINT | Inventors' Notebook - December 2011

Thu, 22 Dec 2011 07:49:00 -0800

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 Funds for preauthorized payments are withdrawn from automatic or direct deposits almost instantly.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.”

Permalink | Leave a comment »

REPRINT | Inventors' Notebook - November 2011

Thu, 22 Dec 2011 07:48:00 -0800

Did you know that when there are multiple inventors on a particular patent, and that patent hasn’t been assigned (e.g., sold) to anyone else, that each inventor has 100% control over what to do with the invention? That means any one inventor can sell the entire invention to a third party, essentially cutting out the other inventors from any profit they may have otherwise realized. It’s relatively easy to prevent this kind of “patent heist” from happening, by having a business entity own the patent with some or all of the inventors owning a share in the business. That way, the inventors have to agree, according to their chosen business practices, in order to sell the patent, give an exclusive license to the patent or enforce the patent on an infringer, for example. For more information on assigning a patent to a business entity or for general questions about patents, please contact a qualified patent attorney.

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.

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.”

Permalink | Leave a comment »

REPRINT | Inventors' Notebook - October 2011

Thu, 22 Dec 2011 07:44:00 -0800

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

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

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

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

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

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

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.”

Permalink | Leave a comment »

ARTICLE | The America Invents Act

Thu, 15 Sep 2011 11:58:00 -0700

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.

Permalink | Leave a comment »

ARTICLE | Patent Hot Topics

Wed, 01 Jun 2011 12:11:00 -0700

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.

Permalink | Leave a comment »

ARTICLE | Patents: Quality versus Quantity (and what about China?)

Wed, 18 May 2011 09:07:00 -0700

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.

Permalink | Leave a comment »

ARTICLE | Five Common Patent Myths

Tue, 03 May 2011 19:24:00 -0700

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.

Permalink | Leave a comment »

ARTICLE | Celebrity Patents: Charlie Sheen?

Tue, 19 Apr 2011 18:53:00 -0700

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.

Permalink | Leave a comment »

ARTICLE | Hot Topic: Inducing Patent Infringement

Wed, 06 Apr 2011 14:21:00 -0700

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.

Permalink | Leave a comment »

ARTICLE | Powerful Patent Weapon: Contributory Infringement

Tue, 22 Mar 2011 10:23:00 -0700

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.

Permalink | Leave a comment »

ARTICLE | Think Your Patent has been Infringed?

Tue, 08 Mar 2011 13:39:00 -0800

At Cutler law firm, we know that you work long and hard to develop your products. And then you go through the rigorous process of patenting them so that you can receive the compensation you deserve for your work. But your efforts cannot stop there; you must enforce your patents to receive just compensation.

Here is some basic information that will help you to determine whether your patent has been infringed and what you should do if you believe that it has been infringed:

Types of patent infringement

Direct Infringement

A single actor infringes a patent. The single actor performs “each and every element” of the asserted claim.

Induced Infringement

Under an agency-like doctrine, a direct infringement includes all acts of a single actor and all those controlled by that same actor. In other words, the single actor controls others, who in conjunction with one another infringe a patent.

Indirect Infringement

Indirect infringement occurs when a party supplies a product that can only be used to create a patented product.

Why you need to take action now if your patent has been infringed

Doctrine of Laches

If you do not seek help immediately upon discovery of patent infringement, your claim may be barred by the doctrine of laches. The equitable defense of “laches” is based upon the premise that you “slept on your rights” and therefore aren’t entitled to recover compensation for any alleged patent infringement.

The “infringing” party may assert that it relied on your lack of action and is in a worse place because of your failure to act. In other words, they invested more time and money is their product because you didn’t object to the alleged infringement. Therefore, you are barred from being awarded damages that you might have received had you brought your case in a timely manner.

The Statute of Limitations

There is a specific time period set by law in which any legal claim must be filed or be forever barred. This is called the statute of limitation. If you fail to bring your claim within the applicable statute of limitation, you will never be able to file your claim.

If you allow the statute of limitations to pass before filing your claim, you will receive no compensation for any patent infringement.

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. Cutler law firm’s attorney Jared R. Clark focuses his 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.

Permalink | Leave a comment »

ARTICLE | How to Stop the Poaching

Wed, 23 Feb 2011 12:44:00 -0800

What You Need to Know Now about Protecting

Your Company’s Trademark on the Internet

Internet marketing, specifically, search engine marketing, is growing exponentially. And, growing with it is the potential for trademark “infringement.” The term, “infringement” is in quotes because poaching, the usage of a competitor’s trademark on the internet, is perfectly legal, thus far.

How the poaching works

A company buys the use of its competitor’s trademark from a company such as Google Adwords. For example Widget Company A, purchases the trademark for its competitor, Widget Company B.

When a prospective client enters “Widget Company B” is a search engine, an ad for Widget Company A will be returned in the search results.

Yes, poaching is legal in America

If you’re like most people, you’ll find this surprising.

American courts have thus far found that such use of a competitor’s trademark does not constitute trademark infringement.

In addition, it violates no other intellectual property laws.

Poaching may not be legal in other countries

Foreign countries have different trademark laws, and use of a competitor’s trademark may constitute trademark infringement.

Countries with stricter trademark infringement laws include:

· Australia

· Brazil

· China

· Hong Kong

· Macau

· New Zealand

· North Korea

· South Korea

· Taiwan

Hidden trademark use (incognito poaching)

These countries, listed immediately above, even outlaw the hidden use trademarks. Meta tags are hidden words place on a company’s website.

Often companies will use Meta tags with their competitor’s trademarks on their own company’s website.

So, when a prospect enters the competitor’s name in a search engine, the company’s own website will appear in the search results.

For example, a prospect enters “Widget Company B” in his favorite search engine. Widget Company A has used placed “Widget Company B” in its Meta tags and therefore, its own website is listed in the search results.

Outright poaching: visible trademark use

Visible trademark use is obvious to the reader. The competitor’s trademark is used in visible text.

For example, “Widget Company A is better, smarter, faster, and cheaper than Widget Company B.”

Where to get help to stop the poachers

The American justice system won’t help you, but Google might. Plea your case to Google.

If your company’s trademark is used in a domain name or visible in a competitor’s website, Google is likely to investigate and have it removed.

However, if your trademark is used in Meta data, Google is neither likely to investigate nor help you.

However, you may be able to gain Google’s cooperation if there is an infringement in the above listed countries wherein use of your trademark is actual and legal trademark infringement.

How you can stop the poachers

Like Nancy Drew or Magnum P.I., you must be a private investigator.

· Google your company’s name and brand names once a week.

· Subscribe to an RSS feed with your company’s name and brand names. You’ll be notified if these names are used on the internet.

· If you see an infraction, write the offending company immediately to ask them to cease and desist using your company trademark

· If the offending company fails to respond appropriately, consult with a qualified intellectual property attorney immediately. If you do not act in a timely fashion, your claim may be barred.

If you have any questions or concerns about trademarks or your competitor’s use of your trademark, consult with a qualified patent attorney.

Permalink | Leave a comment »

ARTICLE | Patent Marking Lawsuits on the Rise

Tue, 01 Feb 2011 14:23:00 -0800

In just over a year, more than 700 patent marking cases have been filed. This is the fallout from a 2009 federal court decision incentivizing third party plaintiffs to file suit for false patent markings. On December 28, 2009, the federal court held §292 of the Patent Act (35 U.S.C. §292 ) requires a per article fine of up to $500. Third parties are rushing to file qui tam suits and reaping the financial benefits.

The federal court ruled in Forest Group, Inc v. Bon Tool Co. No. 09-1044 (Fed. Cir. Dec. 28, 2009), that the false marking of each item manufactured is a violation of 35 U.S.C. §292 (False Marking – Patent Law.) In addition, it was also held that the fine per item can range from a fraction of a penny up to $500, at the total discretion of the court. Plaintiffs are highly motivated to file suit because they share in the fines, 50/50 with the government.

Patent marking cases are being taken seriously with stiff consequences because the markings indicate the status of a product. It is not an invitation to seek further information. It serves as actual notice to possible infringers; and, patent holders can only sue to enforce their patents if their products are properly marked. A patent marking is fact. False markings curtail fair business practices, competition, and even scientific development.

A false marking can occur in four ways:

1. A product is marked with an expired or otherwise non-existent patent

2. A product is marked with a current patent but doesn’t meet the requirements of the patent

3. A product is marked with “patent pending” when no such application has been made

4. Advertising materials indicate that the product is patented

Under current law, it is unclear how the penalties for false advertising materials will be assessed. For instance, if a website indicates falsely that a product is patented, is that one violation with a fine of up to $500? Or, and more likely, is it a violation for every view of the site with the potential of millions of views times up to $500?

Banks, clothing manufacturers, and video game companies are just some of the defendants of patent marking cases. So for Brooks Brothers, that’s up to $500 for each bow tie sold with the markings of an expired patent. Any company or individual that marks a product or advertises a product as patented or that a patent is pending is subject to patent marking laws and the resulting litigation.

It is imperative that your products and advertising materials be properly marked. Marking carries responsibilities and because patents, by their very nature are time limited, you must police your markings on a regular basis. If you have any questions or concerns about patent marking or patents themselves, consult with a qualified patent attorney.

Permalink | Leave a comment »

ARTICLE | The National Inventors Hall of Fame

Mon, 24 Jan 2011 13:17:00 -0800

Have you or someone you admire invented something? The National Inventors Hall of Fame (circa 1973) sits on the campus of the U.S. Patent and Trademark Office in Alexandria, Virginia. It was founded by the U.S. Patent & Trademark Office and the National Council of Intellectual Property Law Association to inspire future generations of inventors. You can nominate either yourself or another inventor you admire for the Hall of Fame.

The Inventors Hall of Fame describes its mission:

“The Hall of Fame honors the men and women responsible for the great technological advances that make human, social and economic progress possible. The organization seeks to give these outstanding individuals the recognition they so rightly deserve as well as inspire future generations of innovators through the light of their examples.”

The Inventors Hall of Fame Nominee Requirements:

· Nominee must hold U.S. patent for the invention, free of litigation and controversy

· Invention must have history of contributing to the nation's welfare

· Invention must have contributed to the progress of science and useful arts

The Inventors Hall of Fame 2010 Inductees:

Ralph Baer: Television Gaming and Training Apparatus
Patent #: 3,728,480
Yvonne C. Brill: Dual Thrust Level Monopropellant Spacecraft Propulsion System
Patent #: 3,807,657
Francis P. Bundy: Diamond Synthesis
Patent #: 2,947,611
Jacques-Yves Cousteau: Diving Unit
Patent #: 2,485,039
Roger Easton: Satellite Navigation System
Patent #: 3,789,409
M. Judah Folkman: Angiogenesis Inhibition
Patent #: 4,164,560
Arthur Fry: Post-It® Notes
Patent #: 5,194,299
Emile Gagnan: Aqualung Diving Equipment
Patent #: 2,485,039
Tracy Hall: Synthetic Diamond
Patent #: 2,947,610
W. Lincoln Hawkins: Polymer Cable Sheath
Patent #: 2,967,845
Vincent Lanza: Polymer Cable Sheath
Patent #: 2,967,845
Spencer Silver: Post-It® Notes
Patent #: 3,691,140
S. Donald Stookey: Glass Ceramics
Patent #: 2,920,971
Herbert Strong: Synthetic Diamond
Patent #: 2,947,610
Robert Wentorf, Jr.: Synthetic Diamond
Patent #: 2,947,610
Field Winslow: Polymer Cable Sheath
Patent #: 2,967,845

The Hall of Fame is open to the public Monday through Friday 9am to 5pm and Saturdays 12pm to 5pm (closed Sundays and public holidays.) Admission is FREE. www.invent.org

Hall of Fame nominees must already hold a patent. To find out if your idea can be patented and how to go about it, contact an attorney who specializes in patent law. Patent attorneys limit their practice receiving and protecting patents. They are well equipped to guide you through the legal process so your ideas are protected and you receive all of the compensation you deserve.

Permalink | Leave a comment »

ARTICLE | What can be Patented?

Tue, 11 Jan 2011 09:05:00 -0800

If you’re like most people, you have a lot of good ideas and sometimes wonder, “Could I patent this invention? What can be patented?” There are three main types of patents: utility, design, and plant.

The utility patent is also known as the “patent for invention” and is likely what you’re thinking of. They are the most common patent, making up about 90% of all the patents issued by the U.S. Patent Trademark Office (PTO).

The utility patent is granted for new inventions and improvements on existing inventions. Most patents are improvements not brand new unique innovations. Indeed the invention must be novel, not obvious, and useful.

The protected inventions may be a useful process, machine, manufacture, or composition of matter. The protection lasts 20 years from the date of filing the patent application, so long as maintenance fees are paid to the PTO.

Examples of a utility patent would be OLED technology (improvement of LED technology), the microwave oven, genetically engineered bacteria to clean up oil spills, and computerized methods for electronic postage and cash.

The design patent is granted for new, original, and ornamental design, configuration, improved decorative appearance, or shape for a manufactured item. Basically, the function of an item is not being improved, just its appearance.

The protection lasts 14 years from the date of filing and there are no maintenance fees. This protection is only for the appearance of an article. It does not protect the function or structure of the article.

Examples of a design patent would be the look of all Star Wars characters as well as the specific look of the original Coca-Cola bottle, sneakers, designer eyeglasses, vacuum cleaner, door knobs, or chairs. Remember, it is only the appearance that is protected with a design patent.

The plant patent is granted for new and distinct, invented or discovered asexually reproduced plants. The protection lasts 20 years from the date of filing the patent application and there are no maintenance fees.

Examples of a plant patent would be any new variety of a plant or tree such as the new & distinct cultivator of African violet (#5383).

To find out if your idea can be patented and how to go about it, contact an attorney who specializes in patent law. Patent attorneys limit their practice receiving and protecting patents. They are well equipped to guide you through the legal process so your ideas are protected and you receive all of the compensation you deserve.

To learn more about protecting proprietary information in the workplace, or for information on whether your idea can be patented, contact Jared Clark of Cutler & Donahoe, LLP by calling 605.335.4950. Jared Clark is a registered patent attorney with an office in Sioux Falls, SD. He is admitted to practice in South Dakota and the U.S. District Court for the District of South Dakota. Cutler & Donahoe, LLP has attorneys licensed to practice before the United States Patent and Trademark Office as well as various U.S. States.

This blog post is intended to provide only general information. It does not represent a legal opinion or advice regarding any particular case or issue. Transmission of the information is not intended to create, and receipt of the information does not constitute, an attorney-client relationship. For legal advice on a specific matter, please seek the advice of counsel.

Permalink | Leave a comment »

ARTICLE | When Predictions Go Only So Far

Wed, 29 Dec 2010 09:10:00 -0800

Enjoy this article on Dell's mucked up dance with price forecasting: http://bit.ly/go8k84. Courtesy of MIT's Technology Review.

Permalink | Leave a comment »

ARTICLE | Are 'Patent Trolls' the Secret Heroes of the Tech World?

Sun, 07 Nov 2010 06:17:00 -0800

Check out http://www.technologyreview.com/blog/mimssbits/25953/?ref=rss for an interesting perspective.

Permalink | Leave a comment »

THOUGHTS | Balancing Risk and Innovation

Thu, 21 Oct 2010 12:12:00 -0700

"I am always doing that which I cannot do, in order that I may learn how to do it." – Pablo Picasso

Balancing risk and innovation is a necessary skill in today's economy, where the phrase "risk management" can mean so many things. Minimizing the amount of risk in a known competitive landscape used to be possible without disclosing things to competitors and the public through patents, but technology and the people using it have gotten smarter—and it is becoming easier to reverse engineer a design, or analyze the components in a composition of matter. While "keeping a secret" still has its benefits, "spreading the word" is far too easy with our internet-based, global community. With only one small leak—take a disgruntled client or customer, for example—you'll find the blueprints for your company's next ten years of profitability spread across the internet, and your bottom line around your knees.

Protecting intellectual property with the right tools can still mitigate the risk, and there are ways to use those tools to balance disclosure with secrecy. A good intellectual property program encompasses more than just patents. It seeks to establish solid internal trade secret practices, to gain control of joint development agreements and to establish policies and procedures for guests, visitors and employees that respect a company's level of comfort with the risk of technology disclosure. Without an established trade secret practice, even the best non-disclosure clauses in employment agreements become mediocre at best. How does an employee know what and what not to keep secret?

To learn more about balancing risk and innovation in the workplace, contact Jared Clark of Cutler & Donahoe, LLP by calling 605.335.4950. Jared Clark is a registered patent attorney with an office in Sioux Falls, SD. He is admitted to practice in South Dakota and the U.S. District Court for the District of South Dakota. Cutler & Donahoe, LLP has attorneys licensed to practice before the United States Patent and Trademark Office as well as various U.S. States.

Permalink | Leave a comment »

CONCEPT | Transforming Opportunities into Assets

Thu, 21 Oct 2010 11:53:00 -0700

"It's easy to come up with new ideas; the hard part is letting go of what worked for you two years ago, but will soon be out of date."

— Roger von Oech

It's easier to say than to do: transforming opportunities into assets. Some think it's impossible, but by developing a culture of innovation within your workforce, the concept just works on its own.

IBM performed a recent study, asking 1,500 CEOs across the globe what they thought was the most important component of a leader. The answer they found—creativity (read: innovation). Eighty percent of these CEOs agree that today's business environment is complex, and growing more so, that they believe it demands new ways of thinking. Unfortunately, fifty percent of these CEOs didn't believe their companies were ready to deal with this growing complexity.

So how do you move your company from "not ready" to "ready" for the coming economy? Try some of these strategies.

The Model

Find success in your organization and duplicate it.

The Players

Find that passionate employee who always seem at the top of his game—and deconstruct the way he works. From this, develop a draft set of metrics by which to measure employees, and hold them to these. Help your workforce meet the metrics by removing distractions and preoccupations. How? Ask. Ask your employees about the challenges they face in your organization—the unmet needs, the way they are expected to work versus how they work best, the distractions. Ask what they need to be their best, and try to eliminate roadblocks so your employees come to work with more mental focus, physical energy and excitement about their job.

The Passion

Putting people in roles that don't intrigue or excite them is certainly one way to smother creativity. Think of a child's development, and how those children who are encouraged to follow their passions acquire a deeper knowledge, are more dedicated, and are less defeated when they run headfirst into a setback. Try to give all employees the opportunity to be themselves and follow their interests, encouraging them to truly express the genius they have locked up inside.

The Time

Thinking creatively requires time. Uninterrupted time. Unfortunately, uninterrupted time is a closely guarded asset; one that is overbudgeted and hard to come by. Promote the creativity that leads to innovation by providing time for creative thinking. Slowing down, in this model, will help you get ahead.

Overview: Creativity Casting Assets from Intangeables

When employees are truly plugged-in to their work, their workplace, and their peers, great things happy. This synergistic combination propels the workforce to develop solutions to a level of greatness not otherwise possible. By systematically developing a work environment that nurtures this synergy, a company can go from "out of date" and "out of touch" to an industry leader, with the latest solutions to society's latest problems. Companies can hang on to a particular product for only so long before society designs something better. Systematic efforts to out-design or out-invent the competitor can result in new product lines, business expansion, and a bottom line to be proud of. The challenge is starting. The best strategy is to start now.

Permalink | Leave a comment »

OP-ED: Inventing Jobs

Sun, 08 Aug 2010 13:29:00 -0700

This piece takes an innovative look at joblessness (pun intended).

Inventing Our Way Out of Joblessness

By PAUL R. MICHEL and HENRY R. NOTHHAFT

Published: August 5, 2010

http://www.nytimes.com/2010/08/06/opinion/06nothhaft.html?_r=1

Permalink | Leave a comment »