The Puget Patent Blog

Why You Need A Patent Attorney (Part II)

Posted Friday, February 27, 2015.

As I wrote last time, technically anyone can represent themselves in obtaining a patent. For a variety of reasons, however, this is usually a bad idea. Nevertheless, I see a lot of documents written by individual inventors intended to serve as an application for a patent. And, in every single one I can identify vulnerabilities in the application which will either make it more difficult to persuade an examiner to issue the patent or limit the value of the patent which might eventually issue.

If you look at patents of yesteryear (and pro se inventors – those that attempt to obtain patents on their own – often use such patents as a template), you will often see a section titled “Background,” in which the pro se inventor discusses problems existing with a current product, for example. There may be a discussion of other attempts to solve the problems, and a list of shortcomings of each attempt as determined by the inventor. There are usually also a number of statements which read, “it is an object of the invention to…” followed by a description of an advantageous function of the invention disclosed by the patent application. In fact, the pro se inventor has a tendency to expound in great detail on the problems seen in prior inventions and provide numerous statements of the advantages of the new invention.

It is understandable that a pro se inventor is justifiably proud of the invention and wants to make a strong case to the patent office how much better the invention is than what came before it. That usually results in several paragraphs or pages with discussion of what the inventor labels “prior art” (which later becomes “Applicant-Admitted Prior Art” in prosecution), downsides to the “prior art,” and how the new invention solves the shortcomings. What many do not realize or account for is that such statements become a part of the public record, and are later used in courts during infringement proceedings.

If you write, “it is an object of the invention to …,” then courts are later going to limit use of your invention to exactly that and no more. Remember, the whole reason to have a patent is to be able to prevent others from using the invention while you hold the exclusive right. If a competitor comes out with a product similar to yours, and you want to prevent them from distributing it because you believe it infringes your patent, you will need to go to court to do so. Those statements of advantage you wrote in the patent application are now going to work against you. You can be certain that the accused infringing defendant is going to point to your statement of the object of the invention and twist their own invention to something outside of that.

This scenario played out just last week when the Court of Appeals for the Federal Circuit (CAFC), the appellate court tasked with hearing all patent appeals, issued its opinion in Pacing Technologies, LLC v. Garmin International, Inc. Patentee Pacing Technologies was attempting to assert its patent against Garmin fitness watches. The claims in question recited a system for “pacing a user” including a playback device. Garmin’s accused fitness watch is capable of displaying, for example, “100 steps per minute.”

Pacing Technologies’ patent made a whopping 19 statements of the “it is an object of the invention” variety, for example, “link[ing] the service to athletic training programs customized to meet users’ personal fitness goals,” or “determin[ing] information including, but not limited to, the distance traveled, speed, pace, stride length, and geographic location of the user.” However, none of the 19 statements of “object of the invention” expressly connected the display of the steps per minute with “pacing a user.” The CAFC called this omission a “clear and unmistakable disavowal” of that particular aspect as a part of the patent, and ruled that Garmin therefore did not infringe.

Pacing Tech v. Garmin is merely the latest in a series of cases in which courts have ruled that express statements of advantages in a patent application are admissions that any other advantages which may be present, but weren’t expressly disclosed, are not covered by the patent. One can see that in most instances (and not all – in rare circumstances I might in fact provide the description of prior art and statements of how the invention being disclosed is advantageous), statements like “it is an object of the invention to …” do not belong in the application and are going to cause trouble down the road.

Further, many patent attorneys today refrain from such statements because they provide an examiner the very justification needed to reject the invention as obvious. The most difficult rejection to overcome is an obviousness rejection, where the examiner says it would have been obvious to take previous invention A and combine it with previous invention B to arrive at the applicant’s invention. In writing such a rejection, when explaining why an inventor would have been motivated to combine A and B to solve the problem to which applicant’s invention is directed, the examiner has to look no further than the pro se applicant’s own application which explains the motivation in detail in the Background section.

So, can an inventor prepare an application for a patent and file it pro se? Yes, the patent office will receive it, and an examiner will review the application and contact the applicant with the results of the examination. But is it a good idea for an inventor to prepare the application? No, it’s not a good idea. The individual inventor, without the training and experience that comes from shepherding multiple applications through the patent office, is likely to make crippling admissions in the application which preclude the patent from issuing and/or substantially limit its value if it does issue.

You don’t want to be in a position where you have spent significant time and money obtaining a patent, and then the cost associated with litigating your patent, only to find that the patent doesn’t give you the protection you need because a statement you made in the application left the patent vulnerable. Don’t take a chance with your valuable invention. You need a patent attorney.

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Why You Need A Patent Attorney (Part I)

Posted Sunday, February 22, 2015.

A patent is a legal right that is conferred by the U.S. government. It includes the ability to exclude anyone other than the owner of the patent from making, using, or selling the invention covered by the patent.

The process of obtaining a patent is called “patent prosecution,” which involves applying for the patent and persuading the patent office that the intellectual property right should be granted. Make no mistake about it: patent prosecution is a legal proceeding, akin to a lawsuit. You have to persuade a decision-maker (in this case, a patent examiner) that you should be granted the right. And as with any lawsuit, for the best possible outcome you need to hire an attorney to handle the matter on your behalf.

While it’s not a good idea, technically anyone can represent themselves in obtaining patents. If an individual prepares an application for a patent and files it at the United States Patent and Trademark Office without legal representation, a patent examiner will still examine the application and render a judgment as to patentability. However, without prior experience working in the patent field and without legal training, the individual inventor is almost certainly going to receive a less valuable patent than would otherwise be possible, if a patent is even obtained at all.

Recognize that having the exclusive right to a piece of intellectual property, just as with real estate, makes that property unavailable to everyone else. With a patent application, you are instituting a legal proceeding to obtain that property as if you were suing to claim rights to a piece of land you’d been using for decades. And the patent examiner is basically a judge, with a duty to every citizen of the U.S. other than the applicant to keep as much intellectual property for use by the rest of us as possible. In patent prosecution, you are going to be negotiating an end to the controversy that you initiated with the federal government. You’re either going to reach agreement on the location of the boundary lines for the intellectual property you want for yourself, or you are going to abandon the proceeding, walking away with nothing for your effort and money.

If you haven’t entered into such a negotiation previously and have no training in it, how are you going to know whether the property offered to you by the patent examiner is the best deal you could get? How are you going to know how to prepare the application in a manner which maximizes the amount of property you can obtain? How would you know if the patent examiner has made a procedural error in considering your application that impacts your right to the patent?

Also, don’t forget that the value of a patent comes from enforcing it after you get it. That is, you wield the patent to stop another party from using the invention and/or require the other party to license the invention from you. Your ability to enforce the patent is largely dictated by the skill of the person who prosecuted it. That’s why hiring a professional is a smart decision – in fact, it’s the only rational decision.

A trained and experienced patent attorney doesn’t just know how to conduct the negotiation and maximize the size of the property protected by the patent. The trained and experienced patent attorney also knows how to guard against easy design-arounds by would-be copiers. In addition, the trained and experienced patent attorney knows how to prevent crippling statements on the part of the inventor about the intended use of the invention from becoming a part of the public record. The trained and experienced patent attorney keeps up with changes to patent law and understands that what worked well in the patent applications of yesteryear can be fatal to a patent application today.

Without such care, a patent obtained by an individual inventor without the representation of a patent attorney may have no value, with no return whatsoever on the inventor’s valuable time and/or the costs paid to the USPTO for examination and issuance of the patent.

You may not realize it, but even purchases of real property, where there is little controversy associated with the purchase of a home or land, involve legal professionals. In a real estate transaction, which probably seems simple, a price is set, boundary lines are surveyed, title is assured, documents are signed to close the transaction, and then someone takes ownership and someone disposes of the property. The legal rights of the parties with respect to the property are therefore adjusted. Consequently, in some states only a lawyer may close the transaction because legal rights are being adjusted. (In the State of Washington, Limited Practice Officers (LPOs), who are licensed by the same governing authority that licenses attorneys after formal training and licensing examinations, close real estate transactions.)

States mandate that someone who is licensed to practice law handle real property transactions to protect their citizens against flaws or vulnerabilities in the property rights which are transferred. An attorney (or a legal professional licensed by a state’s law board) is intimately involved to ensure that the buyer and seller don’t have surprise legal problems with the property down the road. Yet real property transactions are relatively simple. An intellectual property transaction, such as obtaining the exclusive right to an invention from the United States by way of a patent, is infinitely more complicated than a real property transaction.

If a lawyer or LPO is mandated to handle a simple sale of a house, then a patent attorney is absolutely essential in obtaining a patent for property which is significantly more abstract than a house. Without a patent professional, an individual might even be able to pry a patent out of the USPTO, but a surprise likely awaits upon attempting to enforce that patent.

It would be disastrous to find that the home you had purchased had a flawed title resulting from a bad real estate transaction and you didn’t own it free and clear. Likewise, upon attempting to enforce your patent, you would hate to find out that the flawed patent resulting from prosecuting it yourself didn’t adequately encompass your intellectual property such that others could legally encroach upon it by selling copies of your invention despite your patent.

Don’t take a chance with your valuable invention. You need a patent attorney.

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Upcoming Design Patent Law Changes

Posted Sunday, February 22, 2015.

As an alternative to the utility patent with which many are familiar, a U.S. design patent may be obtained. The design patent protects ornamental aspects of an article. Design patents have some advantages in that they are generally cheaper and easier to obtain, and no maintenance fees are required to keep them in effect during the term of the patent.

On May 13, 2015, some changes are coming to U.S. design patent law. The changes are as a result of the 2012 Patent Law Treaties Implementation Act. With the change, U.S. design patent law will be harmonized with laws relating to “industrial design” registrations of other treaty signatory countries.

Under the new law, U.S. design patents will have a term of 15 years instead of the 14 now granted. In addition, design patent applications who wish to protect ornamental designs in countries outside the United States may file a single international design application. Such an application may be used to obtain exclusive rights to the design in up to 62 countries, with more countries considering signing on to the treaty.

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Supreme Court Alters Standard of Review for Patent Appeals

Posted Thursday, January 22, 2015.

Before I went to law school, I had only a simplified understanding of how an appeal from an adverse trial decision worked. I knew that, if you lost the trial, you could appeal the verdict. And, if you lost your appeal, you could appeal again all the way to the Supreme Court. There is, of course, much more to it than that. I did not know, for example, that only certain aspects of the trial can be reviewed during an appeal.

During trial deliberations, a jury will consider evidence, including testimony, to decide upon a version of the facts that were presented during the trial. Those findings of fact, when combined with the law, lead to a verdict. Rules called “standards of review” dictate which trial content – facts or law – may be reviewed during an appeal. The general idea is that the appellate court ordinarily reviews only those aspects which can be determined directly from the written record of the trial that the appellate court received. Questions of law, often embodied in written texts like statutes or contracts, are normally reviewable on appeal. Questions of fact arising from physical evidence or oral testimony, however, are usually not.

To understand why questions of fact aren’t normally reviewable, consider that a question of fact is resolved by a jury in consideration of the evidence presented. The evidence might include, for example, in-person witness testimony. Because the judges of the appellate court were not present at trial to personally view the in-person witness testimony or any trial exhibits (physical evidence, e.g.), they are not in any position to override the findings of the jury members who experienced the evidence first-hand. A question of fact may be reversed on appeal if and only if there was clear error, as in no reasonable jury could have possibly reached the factual conclusion that it did. Accordingly, on appeal the appellate panel will give a high degree of deference to the factual findings at trial and not tinker with them.

On the other hand, legal issues arising from the trial may be reviewed at will by the appellate court. The appellate court has the discretion to determine that at trial, a statute (and therefore its application to the facts at hand) was misinterpreted. Written instruments such as contracts may also implicate legal findings by a judge, and such contract interpretation may be reviewed on appeal. This standard of review is called “de novo.” Questions of law are considered anew by an appellate court. On appeal, if the appellate judges find that the law was misapplied at trial, it may reverse or vacate all or part of the trial rulings.

In a patent case, where a plaintiff accuses a defendant of infringing one or more claims of a patent owned by the plaintiff, the outcome is likely to turn on the exact meaning of the patent claims. Recall that the patent claims are the legal description of the intellectual property protected by the patent. Claims are akin to the legal description of a piece of real property, and describe the boundaries inside of which the property is owned. The words used in a legal description of a piece of property don’t vary much, and for those who need to understand such legal descriptions (realtors, county recording offices, mortgage companies, assessors, etc.) the meaning of the words is clearly understood. The words used in a patent claim vary widely from one patent to the next, however, and the same word or phrase may have different meanings in different patents. That’s why the outcome of a patent case can hinge almost entirely on “claim construction,” which is the determination of the precise meaning of the words in a patent claim.

Claim construction occurs during a phase of a patent trial called a “Markman hearing,” which is a proceeding unique to patent trials. At a Markman hearing, each side submits a proposed definition for patent claim terms (their “claim constructions”). Expert testimony may be heard as to the meaning of claim terms during a Markman hearing. Afterwards, the trial judge will issue a ruling on how the claims will be understood during the remainder of the trial based on the party’s proposed constructions and other evidence taken at the hearing. At that point, a jury may be seated and the remainder of the trial can begin.

When a verdict is rendered in a patent case, an appeal may be taken to the United States Court of Appeals for the Federal Circuit (CAFC). Federal cases are normally appealed to an appellate circuit covering the geographic area of the trial court. In the Seattle area, a federal case would normally be appealed to the Court of Appeals for the Ninth Circuit. However, some time ago Congress decided that a single appellate court for patent appeals from all over the country would be a good idea, so all appeals of patent cases are heard by the CAFC.

That brings us back to the standard of review. The CAFC is like any other appellate court, in that findings of fact are usually undisturbed unless they are clearly erroneous, but findings of law can be considered anew. And in 1995 the CAFC decided, in the case of Markman v. Westview Instruments (the case that gave the name to the Markman hearing), that claim construction was a matter of law, which meant that it could be reviewed in its entirety during an appeal. That CAFC decision was subsequently unanimously upheld by the Supreme Court in 1996, which was itself later noted by the CAFC in Cybor v. FAS reaffirming their own right to review claim construction “de novo” (i.e. to determine claim construction again from scratch).

The Markman holding was interesting. Claim construction involved the taking of evidence, which could include in-person expert testimony (which is commonly used to understand highly scientific or technical language of patent claims), and evidentiary findings are normally questions of fact undisturbed on appeal. The CAFC’s ruling that claim construction was actually a matter of law meant that it had the power to reverse a claim construction from the trial court even without the benefit of the evidence on a first-hand basis. The Court noted that the Supreme Court had previously considered claim construction to be a matter of law, but also noted that a patent is a written instrument. It was almost as if a patent claim is a statute, and since the application of statutes is fully reviewable on appeal, so should patent claims be.

The effect was that the CAFC became almost a second trial court for patent cases. Since the outcome of the patent case is normally highly dependent on the meaning of the claims, and since the meaning of the claims was reviewable by the CAFC, there was almost no downside (other than expense) for the loser of a patent case to ask the CAFC to take another look. I have heard that some U.S. District Judges privately complained that they didn’t know why they should even bother with patent cases since the majority of it would be re-heard on appeal anyway. And of course, the possibility of virtually every patent case being appealed meant that patent litigation itself could be very expensive. From a practical standpoint, patent litigants could almost expect to have to fund two trials.

Which brings us to this past Tuesday, when the Supreme Court altered the standard of review for patent cases in its holding in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. Justice Breyer, writing for a 7-2 majority, found that while claim construction is a matter of law reviewable de novo on appeal, factual findings taken from extrinsic evidence heard at trial which lead to the claim construction are not normally reviewable on appeal, except in cases of clear error.

“Extrinsic evidence” refers to evidence such as expert testimony that is outside the patent document itself. “Intrinsic evidence” means the patent itself, where the detailed description offers its own documentation of the meaning of the claims, as well as the record of the proceedings at the patent office which led to issuance of the patent. So, intrinsic evidence in a patent, which is all in writing and easily able to be placed in the record at trial, and its subsequent impact on claim construction, may still be considered de novo. However, the aforementioned extrinsic evidence is no longer set aside on appeal (except in cases of clear error, as mentioned above).

For example, in Teva v. Sandoz, the trial judge listened to expert testimony about what the claim terms meant. Each side presented their own expert, who provided an account of what the claim terms would mean to an ordinary person with skill in pharmaceuticals who was reading the claim. The trial judge chose a claim construction consistent with Teva’s expert witness testimony, rejecting the testimony of the expert witness from Sandoz. On appeal, the CAFC re-construed the claims, and this time rejected the testimony of the Teva expert witness, offering no deference to the trial judge’s finding in regards to the Teva expert’s testimony.

The Supreme Court now says this method of review is wrong, and that the CAFC must give deference to factual findings stemming from extrinsic evidence (for example, which expert witness testimony taken during a Markman hearing is correct) even when they inform the claim construction, which is still a question of law. The CAFC may still reinterpret the intrinsic evidence (the patent’s own detailed description, for example) leading to the claim construction and/or reverse the trial judge’s ultimate construction of the claim. However, going forward the CAFC must give full credit to the trial judge’s findings of fact regarding the extrinsic evidence such as resolution of conflicting expert testimony presented about the meaning of the claims. The only way for the CAFC to ignore such evidentiary findings informing a claim construction is if they are in clear error.

Pulling some issues for review on appeal off the table, as the Supreme Court did in Teva v. Sandoz on Tuesday, will lessen the possibility of a patent trial being heard once at the trial level, and then again in its entirety at the appellate level. Patent litigation costs may drop over time as a result.

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2014 Washington City and State Patent Issuance Statistics

Posted Saturday, January 10, 2015.

2014 was a record year for issuance of patents by the United States Patent and Trademark Office. In calendar year 2014, the USPTO issued a total of 324,372 utility and design patents.

The top ten cites in Washington in terms of number of patents issued in 2014 naming at least one inventor from that city were as follows:

Seattle 3752

Redmond 2295

Bellevue 2085

Kirkland 1165

Sammamish 1029

Issaquah 600

Woodinville 510

Bothell 490

Mercer Island 359

Renton 313

The percentage of all patents issued in 2014 which name at least one Bellevue resident as an inventor was 0.64%. Put another way, one out of every 156 patents issued includes a Bellevue inventor. Redmond and Seattle also fare well in this metric, as one out of every 141 patents issued in 2014 includes a Redmond inventor, and one out of every 86 patents issued in 2014 includes a Seattle inventor.

Washington as a whole is well-represented in the total number of patents issued. 8,783 of the patents issued in 2014 named at least one inventor residing in Washington. Expressed differently, 2.7% of all patents (one in every 37) named at least one Washington inventor. When compared with Washington’s share of the overall U.S. population (2.2%), we see that the citizens of Washington produce more patentable inventions than those in other states.

For comparison, California represents 12% of the total US population and nearly 16% of patents named at least one California inventor. California is the only state among the top five most populous states which exceeded Washington’s patentable invention production per capita.

Comparing the individual Washington city totals with their share of the overall U.S. population, the production of patentable inventions per capita becomes even more apparent. For example, Bellevue’s share of the U.S. population is 0.04%, yet a Bellevue inventor is named on 0.64% of the patents.

The Washington city with the best ratio of number of patents issued in 2014 including an inventor from that city to percent of overall U.S. population is Woodinville. Woodinville accounts for 0.0035% of the U.S. population, but 0.16% of the patents issued in 2014 included a Woodinville resident. The top ten Washington cities in this particular metric are:

  1. Woodinville
  2. Redmond
  3. Medina
  4. Sammamish
  5. Issaquah
  6. Bellevue
  7. Mercer Island
  8. Kirkland
  9. Clyde Hill
  10. Bothell

Other area cities that had a higher share of patents than their share of the U.S. population included Federal Way, Kent, Everett, Shoreline, Renton, Seattle, Kenmore, Beaux Arts, Hunts Point, Newcastle, and Yarrow Point.

The property rights in many of the patents issued to Washington inventors were transferred to area companies. Microsoft, for example, owned the rights to 2693 of the patents issued to Washington inventors. Amazon received 600, while Boeing received 543. Bellevue’s Invention Science Fund received 222. The University of Washington received 47 patents that were issued naming a Washington inventor, while T-Mobile received 50 and Paccar received 10.

All population data utilized in the above statistics were taken from either the U.S. Census Bureau state population estimates as of 7/1/14 or the Washington Office of Financial Management city population estimates as of 4/1/14. The issued patent totals above include utility and design patents, but do not include plant patents, reissue patents, statutory invention registrations, or defensive publications.

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