Defining Computer Related Inventions in a post-Alice World

By Gene Quinn
April 15, 2017

One of the things that makes protecting computer related inventions tricky is that first you have to distinctly identify the invention in exact terms. Defining any invention with the level of specificity required to satisfy U.S. patent laws is not something that is easy, but when the invention is a computer process or relates to software it is even more difficult. Sure, it is easy enough to define a list of desired functionality, and if you have some computer programming skills it is easy enough (after investing the requisite time, of course) to write the code that will enable that desired functionality, but that which can be protected via patent lies somewhere between the desired functionality and the code, making the defining of the invention rather elusive, particularly for those who are new to the business of inventing.

No patent application or issued patent must be a blueprint, but it must direct one of skill in the technical area or science so that they could be able to both make and use the invention without undue experimentation having only read the disclosure in the patent application or issued patent.  What this means is that you do not have to provide micro-level details, but rather you need to be able to describe how a computer programmer would be able to get from point A to point B, with point A being a list of desired functionality and point B being the code that enables the functionality.  So that which is patented is not found either at point A or at point B, but rather in between.  The exclusive rights that will flow from a patent that protects computer processes will describe the journey from point A to point B. Said another way, you essentially want any patent or patent application to function as the equivalent of a design document for the software project.

It has become increasingly difficult over the past several years to get patents that cover software related invention in at least some sectors of the Patent Office. Business method and e-commerce patents are perhaps the most difficult to obtain, but other software can and does create challenges. Frequently inventors will come up with a first of its kind platform or software suite that integrates a bunch of known, disparate functionalities into a single platform or software suite. The fact that these functionalities exist together and significantly streamline processes is, unfortunately, not likely going to be enough. There needs to be some innovative contribution that goes beyond tying everything together.

The chief hurdle that has created the difficulty obtaining patents in the software space is the Supreme Court’s decision in Alice v. CLS Bank, which has infused a great deal of uncertainty into the law of patent eligibility. The good news is that any patent application filed now covering a software related innovation will undoubtedly sit awaiting a First Office Action on the Merits from the Patent Office for at least two years, more likely three years. That means that the law that will be used to evaluate the software patent applications filed today has not yet been written by the courts, and over the last year the Federal Circuit has finally started loosening the death grip on these patents and is providing meaningful guidance to patent drafters.

The delay also means the draconian interpretations of the Supreme Court’s Alice decision should have largely subsided by then, perhaps we will also have Congressional action once and for all settling the matter of software patent eligibility. Of course, the delay in examination at the Patent Office also means that the standard used by patent examiners is one that cannot be known today with any level of certainty. For that reason it is absolutely critical that computer related inventions describe the technology to the greatest extent possible, focusing on as much that is tangible as possible. In fact, a recent study of allowed software patents shows that incorporation of tangible, physical devices is what leads to these patent claims ultimately being allowed. In short, the software patent application you file today is not your father’s software patent application.

Anyone who had written computer code will know that there are an infinite number of ways to actually write the code, and likely a list of computer languages that could be used to write the code.  The code itself and how it is written is protected via copyright, if at all, not through a patent.  So when you are trying to define the invention so that it can be described adequately (and now with the virtually required level of technical overkill) in a patent application you do not need to detail every language that could be used, and you do not need to provide an outline of the routines or subroutines, but what you do need to provide is enough information so that the computer programmer could translate your description into code. In other words you want to provide enough detail to allow the computer programmer to create the outline themselves, understanding that the actual approach employed by the computer programmer will be as unique as they are.  So you do not protect the creativity that will ultimately be expressed in code form, you protect that logic that underlies the journey from functionality to code.

Taking a step backwards, as an inventor of a computer process the first thing you want to do is figure out the desired functionality that will be provided.  That is the easy part and the exercise that virtually everyone focuses on to the exclusion of the next, far more important steps.  Next, you need to figure out all the various paths that could be followed as one navigates through a particular task.  Let me use a simple example.  Lets say that you have purchased a season pass to an amusement park.  Lets say that this amusement park issues passes that have a magnetic strip on the back of the pass to be read by an appropriate scanner at the park entrance.  So you have the pass and want to gain entry to the park.  You approach the entrance. What could happen?  You could swipe the card and the gate opens and you enter, but what if the card has become demagnetized?  You will be denied entry.  What happens next?  What process must be followed?  You paid for the pass so the fact that the card has somehow become deactivated should not prevent you from entering the park, but the employee at the park entrance is not going to let you in because your pass doesn’t work.  You have a problem.

Actually, you do not have a problem per se, but to get to the solution that everyone wants (i.e., a happy patron in the amusement park) additional task(s) are required.  So what you have encountered is a trigger.  If your pass were not demagnetized you would have entered, but because it was demagnetized you need to follow a slightly altered route to gain access to the park.  This is simple enough to understand, but this is the single largest problem I deal with when working with inventors who have a computer process related invention.  So many folks simply describe their process as A to B to C to D to E.  Software never has a linear path though.  There are always questions, calculations, verifications, authentications, etc.  To have any hope of obtaining a patent your software needs to take into account what occurs in the event that something doesn’t happen according to plan, and so too does the description of the invention. Indeed, patentability resides at the edge of Murphy’s law with software. Anything that can go wrong will go wrong, and your software needs to anticipate that and your description needs to explain it all with great technical detail. Generally speaking, the uniqueness of a computerized process will be with respect to how elegant solutions are crafted to handle and streamline those points of departure.

Not only do you need to take into account imperfection in the process, but frequently users will be allowed to enter different information that will then be reviewed and based on what information is collected you will take one path or the other.  A good example of this would be at the airport where if you are a First Class Elite member you show your ticket and then go to the front of the line, where as the rest of us just stand in a hopelessly long line wishing we were special enough to be First Class Elite members.

As far as I am concerned the thing that inventors need to figure out first is the flow chart.  With this in mind, take a look at U.S. Patent No. 4,862,357.  This is an old patent and one that for many reasons makes choices in the way the invention is described that would not be appropriate today for a variety of reasons. Nevertheless, I want to draw your attention to the flow charts.  Notice the multiple flow charts, the detail and the multiple paths that account for the various things that can happen.  This is what you need to focus on creating as you figure out the logic of the processes at play in your system.  Once you have the flow charts to demonstrate the logic of the software then you have everything you need to start writing. Of course, don’t be surprised if as you start writing you need to go back and add or amend your flow charts. And even when you get everything to the point where you think it is perfect, when you turn it over to someone who will do the coding, they will likely have dozens, if not hundreds, of questions. If the person doing the coding has questions that means your description wasn’t enough and needs to be supplemented.

First things first. Many inventors will come up with the logic and system architecture and will not be the ones who will write the code. That is why provisional patent applications are frequently a first step along a path to a software patent. Protect what you can describe to the greatest extent you can describe it today. File a provisional patent application and now you have a “patent pending.” Then as you work get the project coded a great deal more will be learned, which should go into either another provisional patent application or a nonprovisional patent application filed within 12 months of the original provisional patent application. But more of that patent strategy for another day.

 

Why Patents Should Be Part Of Every Startup's Risk Mitigation Strategy

Post written by

Russell W. Binns, Jr

Russell is CEO of AST (Allied Security Trust), a member-based patent holding company

 

 

Founders who want to start a company face daunting odds. There are a lot of statistics, but the consensus is that 90% of startups fail within three to five years. See e.g. Ron Berman, et al., Startup Genome Report (March 2012). With odds like these, young companies need to do everything they can to mitigate risks they face in their early days. Most start-ups tend to spend nearly all their time thinking about how to make a great product and get people to buy it. That makes complete sense, but in my experience too many start-ups overlook the need to protect their intellectual property -- a costly and sometimes even fatal mistake. Startups sometimes refrain from pursuing patents and other intellectual property due to limited funds. Despite the costs, however, there’s a strong case that start-up companies and their legal counsels need to incorporate intellectual property into their risk mitigation strategy early on to avoid problems as they grow. Besides being able to monetize patents, they can potentially block others from negatively impacting your business, and investors often see patents as a valuable property right.

Here are some of the reasons why, as well as some tips on how start-ups should approach developing a patent strategy that protects their businesses over the long-term.

Patent Protection Can Reduce Litigation Exposure and Grow Value

Most companies have some innovation that needs protecting whether they’re in the fast-growing tech or mobile sectors or in more traditional sectors like manufacturing. Perhaps the biggest reason for a start-up to think early on about patent protection is the threat of patent litigation. Litigation is a potent weapon that some competitors use to halt the progress of fast growing companies, and in some cases, they become bet-the-company cases. Smaller companies are easy targets – they have limited resources and expertise – and they are not in a position to deal with large patent risk. And, as companies grow, they also become targets for non-practicing entities and what some refer to as “patent trolls,” who can tie companies up in often frivolous but very costly litigation. In fact, a staggering 60% of defendants in non-practicing entity patent suits target companies with less than $100 million in revenue. See RPX Broker Rundown (May 2016).

But there are a number of other good reasons for start-ups to think more proactively about patents. A strong patent strategy is often a competitive advantage; can help a start-up get funding; can enhance its reputation; can facilitate joint ventures and partnerships; help it go public or be acquired; and can lead to licensing and monetization opportunities. Investors and Wall Street often look at a startup’s patent portfolio in their decision to invest, as well as how much to invest.  Mary Juetten, Do Venture Capitalists Care About Intellectual Property?, Forbes (Aug. 11, 2015). Patents provide investors security and position a startup for long term growth. They add gravitas to reaching the initial public offering stage and are a factor in the longevity of a business after IPO. See Wagner & Cockburn, Patents and the Survival of Internet-Related IPOs, 39 Research Policy 214 (2010).

Some Thoughts for Software and Tech Companies

Perhaps somewhat surprisingly, companies in industries that are seeing some of the most rapid innovation -- like software and tech companies, particularly those focused on content delivery -- often ignore the problem and don’t focus on future risk mitigation until they have a problem, and the result can be costly. See Ozluturk, The Cost of Not Having Patent Protection, IP Watchdog (Oct. 21, 2014).

There’s a long history of software programmers not being very keen on patent protection, though this has been changing. One reason is that until 2000, most considered software unpatentable, and there are still many today who believe that all software should be free and remain unpatentable.  Although many people believe that the controversial Supreme Court case Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014) made software ineligible for patent protection, it isn’t true. Software companies can and should seek patent protection for their ideas. Those patent applications will receive more scrutiny and they need to be carefully drafted, but patent protection is still available.

The debate over whether software should be patented goes back to the beginning of software, but a good example is looking back to when Microsoft was a young company with almost no patents. Now they are one of the most prolific patent filers. That acceleration in patent filings is fairly recent over the past 15 years, as companies have increasingly recognized the importance of protecting their innovation with large patent portfolios. A more recent example is Twitter, which is known for stating that patents are unimportant, but at the same time has been quietly filing patents and accumulating patents through acquisitions. They even tout the importance of their patents in their filings with the Securities and Exchange Commission. The bottom line is that if Microsoft and Twitter recognize this need, small software and tech start-ups should, too.

How A Start-up Should Go About Developing a Patent Risk Mitigation Strategy

So how to begin? Here are a few patent tips that all young companies should put into practice:

  • File patent applications on your inventions and, where needed, acquire licenses to patents, or buy patents to fill gaps where you’re not protected organically.
  • You need to file and you need to file quickly because the U.S. is a first to file system, so you need to do this before you publicize an invention or you’ll lose your patent rights, even more so in non-U.S. countries.
  • It’s also important to file patents while you are developing your product on all the incremental improvements, different embodiments, new features and build up a core patent protection defense for your company.

 

In terms of developing a patent risk mitigation strategy, there are a number of ways start-up companies can approach the complex patent challenges they will likely face as they grow. Companies can choose solutions from for-profit and non-profit organizations that range from proactive and defensive to reactive (after an assertion takes place), from less costly to more costly. Some solutions focus on opportunities for operating companies to counter assert, and others on where there is not an opportunity to counter assert.

Ultimately it is up to each company to determine which solution or mix of solutions fits their business, as there is no one silver bullet to solve all patent problems, and which patent strategy gives them the best protection at their particular stage. But regardless of the solution, start-ups that focus on patents and put in place early risk mitigation strategies will be in a stronger position to achieve their business goals and increase value over the longer-term.

 

 

 

U.S Supreme Court Revisits Design Patent Damages

Wednesday, December 7, 2016

On December 6, 2016, the U.S. Supreme Court, in Samsung Electronics Co. Ltd., v. Apple Inc., 580 U.S. ____ (2016), unanimously ruled that in multicomponent products, the "article of manufacture" subject to an award of damages under 35 U.S.C. §289 is not required to be the end product sold to consumers but may only be a component of the product.

In 2007, when Apple launched the iPhone, it had secured several design patents in connection with the launch. When Samsung released a series of smartphones resembling the iPhone, Apple sued Samsung, alleging that the various Samsung smartphones infringed Apple's design patents. A jury found that several Samsung smartphones did infringe those patents. Apple was awarded $399 million in damages for Samsung’s design patent infringement, the entire profit Samsung made from its sales of the infringing smartphones. The Federal Circuit affirmed the damages award, rejecting Samsung’s argument that damages should be limited because the relevant articles of manufacture were the front face or screen rather than the entire smartphone.

The Supreme Court reversed and remanded the case back to the Federal Circuit. In its unanimous opinion, the Court reasoned that for purposes of a multicomponent product, the relevant "article of manufacture" for arriving at a damages award (based on 35 U.S.C. §289) need not be the end/finished product sold to the consumer but may be only a component of that product. The Court determined that "The Federal Circuit's narrower reading of the 'article of manufacture,'" limiting it to the end product, "cannot be squared with the text of §289." How to arrive at §289 damages? According to the Supreme Court, "Arriving at a damages award under §289 thus involves two steps. First, identify the 'article of manufacture' to which the infringed design has been applied. Second, calculate the infringer’s total profit made on that article of manufacture."

This decision could have potential impact on future design patent infringement cases, especially when calculating infringement damages. It remains to be seen, what kind of guidance the Federal Circuit will provide in addressing the scope of the "article of manufacture" for multicomponent products.

© 2016 Vedder Price

Computers should be named on patents as inventors, for creativity to flourish

Date: October 17, 2016

Source: University of Surrey

New research published by the University of Surrey in Boston College Law Review is calling for inventions by computers to be legally granted patents. The research states that the rapid increase in computer power is posing new challenges when it comes to patenting an invention. Artificial intelligence is playing an ever larger role in innovation -- with major players such as IBM, Pfizer and Google investing heavily in creative computing -- but current patent law does not recognise computers as inventors.

Without a change in the law, the findings warn that there will be less innovation, caused by uncertainty, which would prevent industry from capitalising on the huge potential of creative computers. We are also likely to see disputes over inventorship, with individuals taking credit for inventions that are not genuinely theirs.

Ryan Abbott, Professor of Law and Health Sciences at the University of Surrey's School of Law proposes that non-humans should be allowed to be named as inventors on patents as this would incentivise the creation of intellectual property by encouraging the development of creative computers. By assigning ownership of a computer's invention to a computer's owner, he argues, it would be possible to reward inventive activity which happens before the invention itself.

Professor Abbott commented, "While some patent prosecutors say the ability of machines to create patentable inventions on their own is well off in the future, artificial intelligence has actually been generating inventive ideas for decades. In just one example, an artificial intelligence system named 'The Creativity Machine' invented the first cross-bristled toothbrush design.

"Soon computers will be routinely inventing, and it may only be a matter of time until computers are responsible for most innovation. To optimise innovation -- and the positive impact this will have on our economies -- it is critical that we extend the laws around inventorship to include computers."

The article also examines the implications of computer inventorship for other areas of patent law -- for example whether computers should replace the 'skilled person' conventionally used to judge a patent's inventiveness, since a computer would have an unlimited knowledge of the particular field in question.

Story Source:

Materials provided by University of Surrey. Original written by Peter La. Note: Content may be edited for style and length.

Journal Reference:

  1. Ryan Abbott. I Think, Therefore I Invent: Creative Computers and the Future of Patent Law. Boston College Law Review, 57 B.C.L. Rev. 1079 (2016) [link]

Cite This Page:

University of Surrey. "Computers should be named on patents as inventors, for creativity to flourish." ScienceDaily. ScienceDaily, 17 October 2016. <www.sciencedaily.com/releases/2016/10/161017083925.htm>.

At Federal Circuit, Death of Software Patents Exaggerated

Scott Graham, Law.com

June 28, 2016

The U.S. Court of Appeals for the Federal Circuit continues to carve out a sliver of room for software patents.

A three-judge panel on Monday found that a Texas federal judge jumped the gun when she ruled that software designed to filter internet content was ineligible for patent protection under the Supreme Court’s Alice decision.

Judge Raymond Chen acknowledged that the patent claimed an abstract idea and that the claim limitations, taken individually, recite generic computer, network and internet components.

But taken as “an ordered combination,” those same limitations were sufficiently specific that they did not preempt the entire field of internet content filtering, Chen concluded “on this limited record.”

“The claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or to perform it on a set of generic computer components,” Chen wrote. “Nor do the claims preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content.”

The ruling is a win for a Susman Godfrey team led by partner Arun Subramanian. Partner Daniel Shih and Associate Jordan Connors also helped on the case for Bascom Global Internet Services Inc.

Reed Smith patent partner John Bovich, who is not involved in the case, said Bascom Global v. AT&T is “one of the more detailed discussions on how consideration of the ordered combination might yield a different result than just consideration of the individual elements.”

Bascom holds a 1990s vintage patent on filtering content for objectionable language or images. The company markets its own filter to schools and libraries. The company’s 5,987,606 patent places the filter at the ISP server, rather than on local computers where they’re more vulnerable to hacking. The filters also can be customized for individual users. Bascom, for example, promotes that its filters can be adjusted to allow YouTube videos for classroom instruction.

Bascom sued AOL in 2008 and won a $10 million verdict. But that was before the Supreme Court began expanding its interpretation of Section 101 of the Patent Act, making more abstract ideas ineligible for patent protection. Six years later, it targeted AT&T.

U.S. District Judge Barbara M.G. Lynn of the Northern District of Texas ruled for AT&T last May on an early motion to dismiss. She seemed on pretty safe ground, since the Federal Circuit didn’t overturn a Section 101 invalidation once in 2015 or during the first four months of this year.

Last month, Judge Todd Hughes declared for a unanimous panel in Enfish v. Microsoft that the Supreme Court could not have intended to invalidate all software patents. Narrowly drawn claims that improve the functioning of computers or other technological fields are not abstract, he wrote.

Chen, meanwhile, agreed “with the district court that filtering content is an abstract idea because it is a long-standing, well-known method of organizing human behavior, similar to concepts previously found to be abstract,” Chen wrote.

Unlike Alice, when it came to implementing the idea, the patent did not simply say, “Do it on a computer.”

“As is the case here,” Chen wrote, “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

Judges Pauline Newman and Kathleen O’Malley concurred. Newman wrote separately to suggest the district courts decide patent eligibility and other, more traditional concepts of patentability at the same time.

AT&T was represented by Baker Botts and Johnson Kuriakose Kuncheria.

Monday’s ruling probably won’t be the last from the Federal Circuit this year to strike down Section 101 rulings. Some judges made noise at oral argument last fall about doing likewise in at least three other cases.

This story originally appeared on Law.com.

Federal Circuit says software patent claims not abstract, are patent eligible

Yesterday, the United States Court of Appeals for the Federal Circuit issued an important decision on software patent eligibility in Enfish LLC v. Microsoft. The opinion by Judge Hughes, who was joined by Judge Moore and Judge Taranto, doubles the total of Federal Circuit decisions where claims in a software patent were deemed to be patent eligible because they are not abstract. In other words, DDR Holdings is no longer the only point of hope for innovators and patent owners in the software space.

This case stared when Enfish sued Microsoft for patent infringement. The patents at issue were U.S. Patent No. 6,151,604 and U.S. Patent No. 6,163,775, both issued in late 2000 and both claiming priority to the same application filed in March 1995. The ’604 and ’775 patents are directed to an innovative logical model for a computer database. A logical model is a model of data for a computer database explaining how the various elements of information are related to one another. Contrary to conventional logical models, the patented logical model includes all data entities in a single table, with column definitions provided by rows in that same table. The patents describe this as the “self-referential” property of the database.

The patents explain that the claimed invention is an improvement, which the Federal Circuit would make a great deal about in their patent eligibility analysis.

The patents teach that multiple benefits flow from this design. First, the patents disclose an indexing technique that allows for faster searching of data than would be possible with the relational model. Second, the patents teach that the self-referential model allows for more effective storage of data other than structured text, such as images and unstructured text. Finally, the patents teach that the self-referential model allows more flexibility in configuring the database.

Microsoft filed a motion for summary judgment arguing that the claims were invalid as ineligible under 35 U.S.C. § 101. The district court agreed. The district court also ruled that some claims invalid as anticipated under 35 U.S.C. § 102, and one claim was not infringed. Enfish appealed. The Federal Circuit did not even find it necessary to reach the second step of the Mayo/Alice framework, instead finding that the claims at issue were not directed to an abstract idea. The Federal Circuit also found that the prior art did not anticipate the “self- referential” feature of the claims and, therefore, vacated the summary judgment based on § 102. The Federal Circuit found no error in the district court’s determination on non-infringement and affirmed the summary judgment of non-infringement.

 

 

 

 

Patent Eligibility

The major issue in this decision relates to patent eligibility under § 101.

So many in the patent community who represent innovators seeking patents, and innovators themselves, have long complained that the Supreme Court has never given a definition of what constitutes an “abstract idea.” Of course, that has not stopped the Supreme Court, or other courts or tribunals, from liberally applying the so-called abstract idea exception, which is a judicially created exception to patent eligibility. The Federal Circuit recognized that the Supreme Court has never defined the critical term, even expressly saying that such a definition is unnecessary because all that is required is comparison to other inventions that have either been deemed patent eligible or patent ineligible and then working backwards.

Judge Hughes wrote:

The Supreme Court has not established a definitive rule to determine what constitutes an “abstract idea” sufficient to satisfy the first step of the Mayo/Alice inquiry. Rather, both this court and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases.

Hughes would go on to cite the language from Alice where the Supreme Court explained that laboring to define what is an abstract idea is not necessary. To me this seemed to be a bit of a poke in the eye to the Supreme Court. Essentially, it seems the Federal Circuit is saying that if the Supreme Court doesn’t have to define the critical term then neither do we. What is good for the goose is good for the gander, which apparently makes patent eligibility of computer implemented inventions best understood by the familiar “I know it when I see it” test that the Supreme Court uses to define obscenity.

The Federal Circuit would go on to explain that the Supreme Court suggested in Alice that claims that improve the functioning of a computer might not succumb to the abstract idea exception.

From there the Federal Circuit said:

We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.

The Federal Circuit explained that the claims at issue plainly focus on improvements to computer functionality. This led the panel to unanimously conclude, “the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.” That being the case, it was not necessary for the Federal Circuit to address the second step of Mayo/Alice, which asks whether there is substantially more than an abstract idea being claimed.

The Federal Circuit also explicitly put a nail in the coffin of the ridiculous argument that software shouldn’t be patent eligible if it could run on a general-purpose computer. The Federal Circuit explained: “We are not persuaded that the invention’s ability to run on a general-purpose computer dooms the claims.” Some jurists have long claimed that if software can run on a general-purpose computer it cannot be patented, which is utterly asinine given that software is most useful when it can run regardless of the platform selected. This statement, as correct as it is profound, will no doubt lead those in the anti-patent community to fly into an apoplectic fit.

The Federal Circuit also explained that physical elements are not a prerequisite for a claim to be patent eligible. The Court explained:

Similarly, that the improvement is not defined by reference to “physical” components does not doom the claims. To hold otherwise risks resurrecting a bright-line ma- chine-or-transformation testMuch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes. We do not see in Bilski or Alice, or our cases, an exclusion to patenting this large field of technological progress.

There will no doubt be much more written about this case in the coming days and weeks. If I had to guess I’d say I expect Microsoft with file a petition for en banc rehearing, and ultimately will probably file a petition for certiorari to the United States Supreme Court. In the meantime, however, this case will bring cheer to the heart of those who have been long frustrated by what had seemingly become a de facto rule that software was not patent eligible in the United States.

For now, however, one more item is deserving of comment. The passage from this case relating to software being as capable of offering an improvement as hardware is at least somewhat ironic. It is, of course, absolutely truthful to acknowledge software can make improvements just as hardware can make improvements. In fact, the choice whether to implement a solution in software or hardware is a design choice. David Kappos has made this exact point in the past. So too has Microsoft’s own Chief Patent Counsel, Micky Minhas. While I do expect Microsoft will be inclined to seek en banc rehearing and perhaps file a petition for certiorari, like so many big tech companies there are two faces to Microsoft’s patent policy. On the one side Microsoft is one of the largest patent accumulators because they are one of the largest innovators in the world. On the other side Microsoft is frequently the target of other patent owners who believe their patent rights are being infringed. Microsoft will need to walk a careful line here. This decision is very good for their patent holding, pending applications and future innovation, but far less than ideal from the standpoint of litigation.

Apple owes $626 million in damages after losing huge patent case

A jury has ordered Apple to pay $626 million in damages after finding that iMessage, FaceTime and other Apple software infringed on another company's patents.

by David Goldman

In a case that has been bouncing around the court system since 2012, VirnetX accused Apple of violating four of its patents, which mostly involve methods for real-time communications over the Internet.

VirnetX (VHC) has been labeled a "patent troll" because it is a patent holding company and sells just a single product. It has just 14 employees and rents office space for $5,000 a month. The company makes money by licensing patents to other firms -- and by suing businesses that it believes has infringed on its intellectual property. 

VirnetX owns about 80 patents, including the four that were the basis of the Apple suit. VirnetX had previously purchased them from a company called Science Applications International Corporation. 

In 2012, a jury had found Apple guilty of violating the same patents, and ordered the company to pay VirnetX $368 million. Apple appealed and won on a technicality after VirnetX failed to prove that consumers were buying iPads and other gadgets because of the software that violated VirnetX's patents.

The appeals court vacated the damages, and sent the case back down to the East Texas District Court for a retrial. 

But Apple (AAPLTech30) didn't exactly get what it had hoped for. The new jury found Wednesday that Apple owed even more to VirnetX because it "willfully" violated the company's patents. 

Shares of VirnetX doubled in premarket trading. 

Apple has since revised its iMessage, FaceTime and VPN software so that it avoids anything covered by VirnetX's patents. 

VirnetX has had mixed success in its past patent cases. It settled out of court with Microsoft for $200 million in 2010 and filed another lawsuit against the company in 2015. But it lost a patent case it brought against Cisco last year.

What is IP Strategy?

By Ralph Eckardt

“Over the last 10 years, it has become imperative for CEOs to have not just a general understanding of the intellectual property issues facing their business and their industry, but to have quite a refined expertise relating to those issues… It is no longer simply the legal department’s problem. CEOs must now be able to formulate strategies that capitalize on and maximize the value of their company’s intellectual property assets to drive growth, innovation and cooperative relationships with other companies”
Microsoft Chairman, Bill Gates 2004 i

In recent years, intellectual property has come to play an increasingly important role in the world economy and has risen up to take its place on the agenda of senior executives across a wide variety of companies and in every industry sector. In short, intellectual property has become increasingly strategic. The rising importance of these ‘assets of the mind’ raises questions about how to best employ them to achieve the objectives of the corporations that create, and control them. As the quotation from Mr. Gates above suggests, it has become “imperative” that companies are “able to formulate strategies that capitalize on and maximize the value of their company’s intellectual property assets.”

Like so many things in life, Intellectual Property Strategy is easy to say, but very hard to do. Part of what makes it hard to “do IP strategy” is the lack of clarity about what we mean by IP strategy. In some ways, IP strategy is akin to pornographyit’s hard to define, even though we know it when we see it.ii But this inability to properly articulate what we mean by IP strategy is a problem for its practitioners since it thwarts our ability to properly embed it into the corporate agenda where it rightly belongs.

Having spent a lot of time thinking about and discussing these issues with senior executives in my consulting work over the years, I’ve been forced on numerous occasions to articulate what I mean by IP strategy. Over the next few pages, I’ll describe how I’ve come to think about IP strategy, and perhaps these reflections will provide a useful starting point for other practitioners as they seek to articulate what it is that IP strategists do.

The Objective of IP Strategy

In any discussion of IP strategy, the first thing that we must do is to recognize that IP strategy is a part of corporate strategy.iii To understand the objective of IP strategy then, it is helpful to first discuss the objective of corporate strategy.

As with IP strategists, there is no clear consensus among corporate strategists about the objectives of corporate strategy. That said, most corporate strategists would include among their objectives the phrase “sustainable competitive advantage” or other words that mean approximately the same thing. Whatever words you would use to describe your company’s strategic objectives, we can be pretty confident that they have something to do with sustainability, competition, and advantage.

Stated another way, corporate strategy is the development of a course of actions that will enable the company to generate a sustainable stream of profits. A successful strategy will allow the company to achieve ongoing profits that are greater than their competitors’ profits.

Consider for a moment the basic formula for profit:

π=(P X Q)- C

In words, this reads: Profit (π) equals revenue (Price times Quantity) minus Costs.

Corporate strategy then is the development of a course of actions that enables a company to sustainably realize higher prices than competitors (P), increase its market share (Q) and/or maintain lower costs (C) than the competition. As a contributor to corporate strategy, IP strategy must pursue the same objectives. A successful IP strategy must make a meaningful contribution to corporate profit generation.sustainably realize higher prices than competitors (P), increase its market share (Q) and/or maintain lower costs (C) than the competition. As a contributor to corporate strategy, IP strategy must pursue the same objectives. A successful IP strategy must make a meaningful contribution to corporate profit generation.

Stated formally:

IP strategy is the development of a course of actions that utilizes intellectual property to enable a company to sustainably realize higher prices, increase market share, and/or maintain lower costs than the competition.sustainably realize higher prices, increase market share, and/or maintain lower costs than the competition.

Realizing higher prices:

One of the hallmarks of a successful IP strategy is the realization of higher prices than the competition. An obvious example comes from the pharmaceutical industry where drugs command adramatic price premium during the time when they are patent protected. When drugs go “off patent”, prices routinely drop by 60-80% or more.adramatic price premium during the time when they are patent protected. When drugs go “off patent”, prices routinely drop by 60-80% or more.

In other markets, products compete on features and performance. Consider the difference in price realization between a fully featured Sony television and one produced by a lesser brand like Vizio. A big part of the difference in price realization is due to differences in performance (clarity, refresh rate, etc.) and features (3D, web enabled, etc.), and many of the technologies underlying the performance and feature differences may be patent protected. By precluding its competitors from adopting its patented technologies, Sony is able to command sustainably higher price realization for its TVs than its competitors.

It will probably have occurred to you that there is another important factor that plays into Sony’s ability to realize higher prices for its TVs than Vizio, and that is brand. Branding is yet another way that intellectual property contributes to higher price realization. Consider the difference in prices between Coke or Pepsi and a generic cola. The contents of the bottle are essentially the same, but consumers are willing to pay a much higher price for branded sodas because those companies have spent many millions of dollars building up the value of their brand and associating it with their name and trademarks.

Capturing market share:

Another important way that IP strategy can contribute to corporate profitability is by enabling the company to maintain and grow its market share. In the section above, we discussed how performance, features, and branding can enable companies to realize higher prices. Those same elements can also help companies to maintain and grow their market share.

When given a choice, customers choose products that deliver the combination of price, features, and performance that meet their needs. Companies that are able to differentiate their products in ways that are important to their customers and difficult or impossible to replicate by their competitors are likely to capture a disproportionate share of the market.

Consider two brief examples, Gillette and Apple. Gillette maintains more than a 70% share of the cartridge razor blade market through constant ongoing innovation, patent protection, and investment in branding. Apple’s iPhone and iPad products maintain ~30% and 50% of the US market for smartphones and tablets respectively. Apple has been extremely aggressive in enforcing its IP rights to maintain its lead in features that it considers to be important to consumers. It also maintains a strong and continuous branding campaign to reinforce its market position.

Maintaining lower costs:

The last way that IP strategy can contribute to corporate profitability is by helping the company to maintain lower costs than its competitors. This can be achieved in two main ways. First, companies can achieve lower costs through production or service delivery technologies that are protected fromthe competition through intellectual property. In some cases, trade secret protection is appropriate, while in others, patent protection is the best strategy.

There are many industries where competition is based on minimizing costs, but it is particularly true in commodity industries where the product is relatively undifferentiated from the competitor’s offering. In these circumstances, product performance, features, and branding tend to be less important in the customers purchase decision. As a result, there is little or no justification to command higher prices, and attempts to do so lead directly to a loss in market share. In these industries, whoever has the lowest cost production or service delivery system will have the highest profit margins. From this advantaged position, the low cost producer can lower price and take market share at will. The proper use of IP strategy can help companies achieve a sustainable cost advantage and contribute directly to corporate profitability.

The second way that IP strategy can lead to lower costs is by maintaining a lower cost of technology than the competition. In many markets, the cost of technology makes up a significant and increasing portion of the total cost of goods sold (COGS). In markets with complex technology, a company’s products inevitably embody both self developed technology and technology borrowed from others. In these instances, companies are forced to trade technology in order to bring their product to market. Access to required technology is obtained through licensing and cross-licensing arrangements. In some industries like consumer electronics, the total cost of technology access (including patent royalties) can make up 20-30% of the selling price of the product, and in some categories like smart-phones it can be even higher. Companies that are able to achieve the lowest ‘cost of technology’ by obtaining a favorable royalty balance of payments can sustain higher profit margins than their competitors. This balance of technology payments includes not only the cost of accessing competitor’s technology, but also technology owned by non-producers. Companies that are best able to manage licensing from NPEs can sustain higher margins and profits as well.

IP strategy should contribute directly to the company’s ability to achieve and sustain competitive advantage and capture superior returns for shareholders. I often hear IP professionals complain that IP doesn’t get the attention it deserves from senior management. But I rarely hear IP professionals articulate how IP contributes to the company’s bottom line. In my experience, the amount of attention given to IP and IP strategy in the senior executive suite is directly related to the impact that IP is having on the company’s profitability. If you want IP to be taken seriously by the CEO and Board of Directors, then demonstrate how IP can help the company achieve sustainable competitive advantage.

The Practice of IP Strategy

In the previous section we defined IP strategy and discussed its objectives. But how is IP strategy developed? How can IP strategists select a course of action that will lead to increased and sustainable profitability? To understand how IP strategy is developed, it is helpful to understand how corporate strategy is (or should be) developed.

Corporate strategists have long understood that strategy development is not a one time or periodic activity, but a continuous process of decision making. Perhaps the best description of this strategy development comes from a military strategist named Colonel John Boyd who developed what he called the OODA Loop to describe how fighter pilots continuously develop and adjust their strategies to an ever-changing situation in the air.iv
“OODA” is an acronym which stands for Observe, Orient, Decide, and Act. Strategy development is a continuous process whereby the strategist observes what is happening in the environment, orients herself to the most critical facts and circumstances, decides on a course of action, and acts upon that decision. The results of those actions are then observed, and the strategist goes through the OODA loop again.

The concept of the OODA loop translates directly to the continuous process of IP strategy development as the diagram below demonstrates.

 

Observe:

The development of IP strategy starts with observation of the internal and external environment. Knowledge about what’s going on in the external environment includes information about the technology environment, customer needs, competitor activity, the partner ecosystem, and the legal environment. Internally, observation implies monitoring the performance of the IP organization to stay informed about the results of the various actions it takes.

Orient:

Perhaps the most important step in the IP strategy development process and one that is often overlooked is the process of orienting the organization to the information observed in the environment. Orienting involves filtering, analysis and dissemination of relevant and timely information to those in the organization who need to know it. Choosing what information is most important, who needs that information, and how best to present it is a big part of what it means to be a competent IP strategist.

Decide:

With a clear understanding of the environment and proper orientation of the organization, decisions can be made about a course of action that the organization will take with regard to IP. Decision making is at the heart of IP strategy, but decisions can’t happen in a vacuum. They must be properly informed through observation and orientation, and followed by actions in order to have an effect on the organization. Furthermore, they must be properly aligned with the overall strategy set by the corporation. The output of the decision process may be a formal or informal strategic plan, but at a minimum, it should set the priorities and objectives that will guide the actions of the IP organization.

Act:

The actions taken to execute an IP strategy include the full range of activity that occurs in an IP department, from the creation of IP-protectable innovation, to the creation of IP assets through formal IP protection mechanisms, to the leveraging of those assets in the marketplace. A full recitation of the range of actions that are part of IP strategy execution are far beyond the scope of this short paper, but a close examination of the diagram above should suggest the kind of actions that are possible.

With the rising importance of intellectual property, the importance of IP strategy is being recognized in an increasing number of industries and companies. IP strategy has the potential to make significant contributions to the competitive advantage of the companies in which we all operate. It is the role of the IP strategist to convert these valuable assets into advantage.

i    This quotation appeared in an email from Microsoft Chairman Bill Gates to Chief Executive Magazine published in 2004.
ii   In a 1964 U.S. Supreme Court case on public obscenity, Justice Potter Stewart’s opinion included what has become one of the most famous phrases in the history of The Court; “I shall not today attempt further to define the kinds of materials I understand to be embraced within that shorthand description, [pornography]…But I know it when I see it…”
iiiIn some instances, IP strategy may be so critical that a company’s IP strategy is in effect the same as its corporate strategy, but this is the exception rather than the rule.
ivThe OODA Loop was developed by Colonel John Boyd as part of his work for the U.S. Air Force during the 1960s and 1970s. It has since been adopted by many military, governmental, and corporate strategists as a useful tool to guide strategy development across a wide variety of contexts.

CLONING - HAVE THE SAME DOG YOUR ENTIRE LIFE? SOUTH KOREAN FIRM HAS CREATED 550 CLONED DOGS

China ‘cloning factory’ to produce cattle, racehorses and pets 

World’s largest cloning facility in China aims to produce a million cattle a year, along with other animals 

Interest in agricultural biotechnology has been rapidly increasing in China, where farmers are battling to provide enough beef for the country’s growing middle classes Photo: Bloomberg

By Neil Connor, Beijing

10:49AM GMT 24 Nov 2015

The world’s biggest animal “cloning factory” is due to open in China, producing one million calves a year, sniffer dogs and even genetic copies of the family pet.

“The mortality rate remains equally high. Many of the animals which are born alive die in the first few weeks, and they die painfully. Should we allow that?" 

Renate Sommer, European Parliament’s environment committee co-rapporteur 

The £21 million “commercial” facility will edge the controversial science “closer to mainstream acceptance”, Chinese media said, following the development of a technique which began when Dolly the sheep became the first cloned mammal when she was born in Scotland in 1996. 

The centre may cause alarm in Europe, where the cloning of animals for farming was banned in September due to animal welfare considerations. 

But Xu Xiaochun, chairman of Chinese biotechnology company BoyaLife that is backing the facility, dismissed such concerns. 

“Let me ask one question. Was this ban based on scientific rationale or ethical rationale or political agenda?” Mr Xu told The Telegraph. 

“Legislation is always behind science. But in the area of cloning, I think we are going the wrong way and starting to kill the technology.” 

The £21 million centre in being built in Tianjin  Photo: Robert Wallwork / Alamy Stock Photo

Interest in agricultural biotechnology has been rapidly increasing in China, where farmers are struggling to provide enough beef for the country’s growing middle classes. Prices of the meat are said to have tripled from 2000 to 2013. 

Mr Xu said his new facility will clone racehorses and a handful of dogs for people with “emotional ties” to their pets, but its main focus was producing cattle. 

However, he appeared to be more excited about its ability to churn out sniffer dogs. 

“The dog has to be smart and obedient, strong, sensitive," he said. "That's one in one hundred. You would normally have to look at a large number of dogs to find this one." 

Dolly the sheep became the first cloned mammal when she was born in Scotland in 1996  Photo: Rex Features

The factory, which will include a 15,000 square metre laboratory, an animal centre, a gene bank and an exhibition hall, is currently being built in the port city of Tianjin, near Beijing, and is due to open in the first half of next year. 

BoyaLife will operate the facility with its South Korean partner, Sooam Biotech, that runs a centre that can clone dogs for customers willing to pay $100,000 (£66,000), and has already produced more than 550 puppies. 

Company head Hwang Woo-Suk was considered a national hero when he pioneered the world’s first cloned dog in 2005, but his research into creating human stem cells was found in 2006 to have been faked. 

The two partners last year produced three pure-blood Tibetan mastiff puppies replicas, which was considered a major breakthrough for China, which has cloned sheep, cattle and pigs over the past 15 years. 

The new facility will initially produce 100,000 cattle embryos a year, eventually increasing to one million. 

The European Parliament’s environment committee co-rapporteur, Renate Sommer, has criticised the technique of cloning as not being “fully mature” as members voted on the ban in September. 

“In fact, no further progress has been made with it,” Ms Sommer said at the time. “The mortality rate remains equally high. Many of the animals which are born alive die in the first few weeks, and they die painfully. Should we allow that?" 

Additional reporting by Ailin Tang

Graphene Patents - Looking to Invent?

Patents

TitleDate

Graphene 3D Lab Files Full Patent on Graphene Manufacturing ProcessSeptember 30, 2015

Graphenea granted patent on graphene transferFebruary 9, 2015

Samsung files patent for graphene-based touch screenMarch 7, 2014

Apple patents point to slimmer battery techJune 4, 2013

HEAD graphene racket no longer secretApril 15, 2013

Making LCDs more flat with grapheneMarch 29, 2013

Kimberly-Clark patents glass anti-fog coating based on grapheneMarch 21, 2013

Kia and Hyundai file patent for graphene in fuel cellsMarch 14, 2013

Samsung patents graphene networks for touch screensMarch 5, 2013

Saab to de-ice airplanes with grapheneFebruary 21, 2013

US Department of Energy files patent for efficient Tesla coils with grapheneFebruary 1, 2013

US Navy patents high-quality thin films on grapheneJanuary 23, 2013

The original graphene patent and the rift between industry and academiaJanuary 15, 2013

IBM files patent for advanced graphene transistorJanuary 2, 2013

Samsung files patent for moisture-resistant graphene electronicsDecember 19, 2012

Inflatable slides and rafts to be made of grapheneDecember 17, 2012

Samsung protects graphene antidot spin valvesDecember 11, 2012

Graphene helps air batteries breathe easier in a Toyota patentDecember 8, 2012

Angstron earns patent for next-step exfoliation methodDecember 7, 2012

IBM applies to patent 3D graphene electronicsNovember 22, 2012

Xerox to cut printing costs by using grapheneNovember 20, 2012

Sony applies for patent to use graphene for drug deliveryNovember 19, 2012

Graphene to treat epilepsyNovember 16, 2012

Honda applies for patent for graphene-based gas sensorsNovember 12, 2012

Angstron Materials patents lubricant based on grapheneNovember 8, 2012

AMD patents graphene for 3D electronicsNovember 7, 2012

Vorbeck applies for patent to make graphene stickierNovember 2, 2012

IBM to patent graphene for DNA sequencingOctober 25, 2012

IBM patents graphene for solar cellsOctober 25, 2012

Samsung patents graphene-based flexible displayOctober 24, 2012

Polimeri Europa patents thermal insulation with grapheneOctober 18, 2012

Samsung files patent for graphene-lithium batteriesOctober 15, 2012

Bayer files patent for producing grapheneOctober 12, 2012

Hon Hai (Foxconn) patents graphene loudspeakerOctober 7, 2012

Vorbeck patents printed electronicsOctober 2, 2012

Patent filed to use graphene for oil and gas exploitationSeptember 27, 2012

Graphene-polymer fiber patent submitted in KoreaSeptember 21, 2012

IBM files patent for using nitrides in graphene transistorsSeptember 20, 2012

Vorbeck partners with Kordsa to patent graphene for tiresSeptember 20, 2012

Micron Technology Inc applies for patent to use graphene in integrated circuitsSeptember 18, 2012

Nokia files patent to use graphene as acoustic transducerSeptember 14, 2012

Biggest Patent Mistakes

1. Sold the Invention

In the United States you have 12 months from the time the invention was first sold within which to file either a provisional patent application or a nonprovisional patent application.  If you wait longer than 12 months then you have forever forfeited the right to obtain a patent in the US. Still, as mentioned above, in the new first to file era for U.S. patent law you should never sell your invention or offer your invention for sale without having first filed a patent application.

Even if you are aware of this rule and you do not sell or offer your invention for sale before you file a patent application there can still be traps that await you. For example, if you file a patent application that fails to adequately disclose your invention and then you start selling you may find out later that the application you filed did nothing to establish priority. That could mean you need to start over fresh with a new application done properly. The trouble now is that you have been selling the invention thinking you were safe, but then learn that the application you initially filed was so defective that it was as if you filed nothing.

 

2. Publicly used the invention

Public use of an invention can create the same problems as a sale or offer for sale.  If you use an invention publicly you have 12 months from the first public use to apply for a patent. If you miss this 12 month window you will not be able to obtain a patent on that which you used publicly. Of course, if you want foreign rights you need to apply first before you use the invention publicly because in many countries there is no grace period of any kind. Remember also that the better advice is simply not to publicly use your invention before you file a patent application that adequately describes your invention.

3. Terrible provisional patent applications

A provisional patent application is a great tool when it is used properly, and devastating when it is not use properly.  A provisional application is extremely easy to file because all you have to do is complete a cover sheet and then attach a description of your invention.  There are no requirements that the description be in a particular format, and the truth is the Patent Office does not even look at the provisional application.  This has lead to many non-lawyers and non-law firm vendors offering provisional patent application services for just a few hundred dollars.

Unfortunately for the unwitting inventor who uses a bargain basement, deep discount service provider, the law requires that a provisional patent application describe the invention with the same level of detail as is required of a nonprovisional patent application.  This means that while you can easily get a provisional patent application on file and have a “patent pending” if you do not describe the invention with the level of detail and sophistication required by the patent laws your provisional application is worthless.

Even worse, because you had a patent application pending you may have done things, such as using or selling your invention, as mentioned above.  This is a nightmare because if you filed a provisional application that was not specific enough and then used or sold your invention you have forever forfeited foreign rights, and the application you filed may not be able to be used later to support a filing date.  Worse yet, a badly done provisional patent application could even conclusively prove that as of the time that you filed the application you did not have a completed invention. Even worse, if you first start using or selling your invention and then you file a provisional patent application you may think you are safe. But if the disclosure in the provisional patent application is so poor it won’t help. By the time you get around to filing a nonprovisional patent application it is now more than 12 months since your first use or offer for sale, which means you could be forever prevented from obtaining rights even in the United States.

The morale of the story is that a bad provisional patent application not only does not help you, but it could significantly and severly hurt you.

4. No professional patent search

I hear all the time from inventors who have done their own patent search and have found nothing similar to their invention.  This is the first warning.  With well over 9,000,000 US patents and counting, and many millions of published application that have never been patented, it is virtually impossible to do a patent search and not find something relevant.  Patent searching is an art more than anything and if you are not intimately familiar with how the Patent Office classifies inventions and how attorneys characterize things then you would never find what you are looking for even if there is a patent out there that covers exactly what you invented.

Obtaining a patent is an expensive undertaking, and saving a few hundred, or even a few thousand dollars by doing your own patent search is just silly.  Sure, look for yourself first.  I even have an article explaining how to do your own search (see Patent Searching 101 and Patent Searching 102: Using Public PAIR).  If you find something then you save the money you would have otherwise paid, but just because you do not find anything does not mean that there is nothing to be found.  Why spend many thousands of dollars seeking a patent when a professional patent search would have shown you that a patent would likely not be awarded?

5. No Internet search

Over the years I have preached to inventors over and over again about the importance of doing a patent search.  Earlier in my career I would hear from inventors who would say that they searched the Internet thoroughly and could not find the invention so they want to move forward.  Wait a minute!  There are any number of reasons why a product might be patented and not available for purchase.  For example, independent inventors will many times obtain a patent and then not follow the project through, run out of money, lose interest or simply not succeed despite best efforts.  Then when someone else has the same or similar idea/invention (which will ALWAYS happen) a search is done, the prior art is found and the decision is made that it isn’t worthwhile to commercialize if a patent cannot be obtained.  There are many gadgets not on the market because no patent protection could be obtained because it was patented many years earlier.

Over time, however, I have come in contact with a variety of inventors who do their own patent search, then they have a professional patent search done in the responsible manner.  Everything looks clear and then out of no where the inventor finds the exact thing is available for sale on the Internet.  How can that happen?

A patent search is just that.  A search of patents and published patent applications.  You hire trained professionals to do a patent search, but the patent search does not typically include a product search online.  That is the responsibility of the inventor.  So for goodness sakes, if you come up with an invention the very first thing you should do is see whether it exists and can be purchased online or in stores.  If it can be then you shouldn’t move forward.  If you can’t find it online don’t celebrate and rush off to hire a patent attorney.  Do your own patent search.  Then once you confirm that you can’t find it on the Internet and you can’t find a patent reference, then proceed to a professional patent search with an opinion.

Knowing the pitfalls that lie ahead of you will help you stay on the straight and narrow path toward success. You can do it!  The invention to patent to commercialization cycle just takes determination, and of course some funds to get things off the ground.

Of course, this article has only focused on certain aspects of getting started.  For more basic information on patent basics, inventing, setting a budget, executing the plan and more please see:

Bill Gates Seeks Patent on Hurricane Prevention

William H. Gates, III, of Redmond, Washington (US) is known to most throughout the world as Bill Gates, the genius behind Microsoft Corporation.  Gates is presently the Chairman of Microsoft, having transitioned out of the day-to-day leadership role on June 27, 2008, a role that allows him an opportunity to spend more time on health and education work sponsored by the Bill & Melinda Gates Foundation.  Prior to stepping away from the daily grind, however, Gates managed to find time on January 3, 2008, to file some five patent applications directed to methods and systems for altering the temperature of surface water.  The goal of these inventions is to prevent or at least lessen the force of hurricanes, the fierce storms that form as a result of warm water (among other things) and gain strength from warm water.  While there are many ideas and associated solutions in the various patent applications, the primary thrust of the patent application seems to be the churning of cold water from deep below the surface to mix with warmer surface water.  The process is carried out by one or more vessels, and the hope is that using cold water from the depths of the sea hurricane intensity could be minimized, potentially saving millions (or billions) of dollars and lives.

The various patent applications, all filed on January 3, 2008, by Bill Gates and a team of other inventors, which includes Intellectual Ventures founder Nathan Myhrvold, include:

  1. US Patent Application No. 20090177569, titled: “Water alteration structure risk management or ecological alteration management systems and methods”
  2. US Patent Application No. 20090175685, titled: “Water alteration structure movement method and system”
  3. US Patent Application No. 20090173801, titled: “Water alteration structure and system having below surface valves or wave reflectors”
  4. US Patent Application No. 20090173404, titled: “Water alteration structure and system”
  5. US Patent Application No. 20090173386, titled: “Water alteration structure applications and methods”

These patent applications will no doubt be held up to ridicule in some corners.  The magnitude of effort that would be necessary to alter the surface temperature enough to make a difference would be staggering, given the sheer size of hurricanes, which can be as large as 600 miles across, and the volume of water involved with such an undertaking.  Yet, hurricanes do billions of dollars of damage every year, so it is indeed understandable why inventors, including Bill Gates, are keenly interested in controlling these powerful storms.

According to these patent applications, which all seem to share a common specification but boast different claims:

It is well known that a hurricane’s primary energy source is the release of the heat of condensation of water vapor condensing at high altitudes, with solar-derived heat being the initial source for evaporation. Therefore, a hurricane may be seen as a giant vertical heat engine, albeit one dependent upon mass supplied by largely horizontal flows. Water condensation leads to higher wind speeds, as a fraction of the released energy is converted immediately into thermal energy and thence into mechanical energy, the faster winds and lower pressures associated with them in turn cause increased surface evaporation and thus even more subsequent condensation. Much of the released energy drives updrafts that increase the height of speeding up condensation. This gives rise to factors that provide the system with enough energy to be self-sustaining, and result in a positive feedback loop that continues as long as the tropical cyclone can draw energy from a thermal reservoir and isn’t excessively sheared along its vertical extent. In this case, the heat source is the warm water at the surface of the ocean. Without this thermal reservoir to support it a hurricane or other similar storm will not commence, will be weaker, or will die out as the positive feedback loop diminishes to sub-threshold levels or never gets above them.

 

According to National Aeronautics and Space Administration (NASA), low sea surface temperatures can spell death for a hurricane, as happened in 1998 when the cold water Hurricane Bonnie left in its wake caused Hurricane Danielle, which was following close behind, to dissipate.  See What Lies Beneath a Hurricane.  Thus, there is reason to suspect that a significant amount of cold water could cause a hurricane to dissipate.  Therefore, it seems logical to attempt to create a man-made wake of cold water.

There seems to be two primary methods discussed in the patent applications.  First, the lower depths of the ocean may be used as a huge heat/energy sink.  In this method warm ocean surface water is pushed in a downward direction to exit into the cold ocean depths, operating in a continuous cycle.  Second, while the primary conduit pushes water down, in an alternative version a secondary conduit may be used to bring cold water to the surface to aid in cooling the warm surface water regions by mixing of subsurface water with surface water.

The patent applications also explain that due to the wind and waves the temperature of ocean water may be relatively uniform up to several hundred feet below the surface, but below that the temperature begins to drop rapidly.

In most circumstances, most of the sunlight impinging on the ocean surface is absorbed in the surface layer. The surface layer therefore heats up. Wind and waves move water in this surface layer which distributes heat within it. The temperature may therefore be reasonably uniform to depths extending a few hundred feet down from the ocean surface. Below this mixed layer, however, the temperature decreases rapidly with depth, for example, as much as 20 degrees Celsius with an additional 150 m (500 ft) of depth. This area of rapid transition is called the thermocline. Below it, the temperature continues to decrease with depth, but far more gradually. In the Earth’s oceans, approximately 90% of the mass of water is below the thermocline. This deep ocean consists of layers of substantially equal density, being poorly mixed, and may be as cold as ?2 to 3° C.

While the magnitude of the effort might be considerable, perhaps even to the point that it may never become feasible, the physics involved are plausible, and looking at the heat graph above showing how Danielle never materialized it does not seem as if there is a large temperature difference required.  Perhaps it is unrealistic to think that anything man made could dissipate a hurricane, but perhaps lessening hurricanes is far more possible.  Given the harm caused by hurricanes, there will no doubt be some who continue to follow this and other paths in an effort to control their deadly and damaging affects.