Are Device Claims Next in the US Patent Eligibility Trainwreck? Yu v. Apple (CAFC 2021)
By Chaim Levitz For several years, the issue of patent
By Chaim Levitz For several years, the issue of patent
by Miriam Samis, Israel Patent Attorney and US Patent Agent,
Getting a good patent depends both on what is in the patent application and also how it is written. Getting the what right might be obvious, but getting the how right can save not only headaches, but huge amounts of time and money. So this space, which over the coming months will be devoted to suggestions and strategies for US patenting, will sometimes be devoted to the what (e.g. patentability, invention disclosure, etc.) and sometimes to the how (e.g. USPTO formal requirements, initiatives, etc.). But before we dive into the 'whats' and 'hows' of US patent practice, I'd like to ask other, even more basic, questions: Why do you want to get a US patent? Can your type of technology be patented in 2017? So do you still want a US patent? Then come along, and together we can hopefully answer the 'what' and 'how' questions, and make your patenting experience more successful, and less difficult.
Patents are an invention of society . It goes like this: you have new technology, the public wants it, and to get you to tell us about it, society (through enacting laws) invented a time-limited monopoly that we call a patent. It sounds simple, except here's the catch: because patents are society's invention, society gets to decide which inventions it wants and considers to be deserving of a patent. This is known as "patent-eligibility". In the US, the issue of eligibility has developed over the last few years into a critical problem for technologies in certain fields. But is this something you need to worry about? Maybe... So what should you do? If your technology is in a potentially problematic field, including software (including mobile apps), business methods, isolated biological materials, or medical diagnostic methods, then... 1. Recognize that a problem exists. 2. Talk to your US patent attorney - early! 3. Be flexible. Be open to a range of IP strategies. Finally, don't forget that patents are not the only types of IP relevant to your business! Trade secrets, trademarks and designs are all ways to gain market advantage and keep value for you and your investors.
Do you own your patent? It might seem obvious, but this is not a trivial question. And I know there are far more interesting things to think about (believe me - there are more interesting things to write about!), but like the fine print in a contract, the most boring thing can lead to big problems if you don't pay attention to it. Listen: I can write the best patent application in the world for you. I can help you obtain such broad claims that your competitors will be shut out from your technology space for years to come. But if you don't actually own the patent, then none of that will be worth anything to you or your company. So I'll ask again: Do you own your patent? In this article, we will cover the following: Doesn't a company already own its patents? After all, it paid for them in the first place! How can you make sure your company owns its patents? Ownership by Employment or Service Contract Ownership by Assignment When should the Contracts and Assignments be signed?
A US provisional patent application (PPA) is cheap and easy to file, and isn't required to have claims. If you are a patent attorney, or if you have ever spent more than ten minutes discussing an invention with us, your natural response to this "benefit" of not needing claims should be: "Excuse me? No claims?!" Because a patent is all about the claims. You might think: "the law doesn't require a PPA to have claims, and besides, my PPA won't be examined, so why should it matter that there are no claims?" Well, it matters a lot. Let us tell you why..
When I was a kid growing up in New York, I was fascinated by the pop-up timer that came in the turkeys we would cook for holiday meals. Based on the simplest of principles, this little invention is supposed take the guesswork out of cooking by indicating when the turkey has cooked enough and is ready to come out of the oven. It’s fallen a bit out of favor over the years, but the idea remains appealing: up it pops and the cooking’s done! If only it could be as easy to determine when an invention is ready for patenting and not half-baked, So when is an invention ready for patenting?
When meeting with inventors, one question that they often ask is "what will I have to disclose to the Patent Office?" This type of disclosure is not what is required for describing an invention in a patent application. It is often ignored until later stages of the examination of a US patent application, but it can be critical even at the initial stages of preparing a patent application. What does "Disclosure” mean?? Under US patent law, all information in the possession of the inventor, applicant and their representatives that is "material to patentability" must be disclosed to the US Patent Office (USPTO). Material to patentability means that the information might affect the patentability of a claimed invention. All information!? What information has to be disclosed? When does this information need to be disclosed to the USPTO? Honesty is the Best and Only Policy! As a final note, always remember that honesty is the best and only policy for avoiding running afoul of the disclosure requirement and for avoiding problems related to this issue during future litigation.
When I was just starting out in patent law, I had the great pleasure of taking my children to a museum exhibit showing full-scale models of inventions from Leonardo DaVinci’s notebooks. Walking through the ingenious creations on display left me no less open-mouthed in wonder than my kids. But then the naïve patent attorney part of me reacted in horror: how could any mechanical device be patentable after DaVinci?! The next day I told one of my mentors about the experience, and he wisely remarked that “the invention is in the details!” For biotech, chemistry, and pharma patent applications, I would add: the invention is in the experimental data.