On March 16, 2013 the U.S. joined the rest of the world and transitioned from a first-to-invent patent system to a first-to-file system. If you wanted your patent application examined under the old first-to-invent rules, the deadline to submit your patent application was March 15, 2013. Because of the rule change, a huge influx of patent applications came in on that day, 13,888 to be exact. This number is second only to another last minute filing day, June 7, 1995, the day before the last major U.S. patent law change. Going forward, all new patent applications will be examined under the international standard first-to-file system. So what does it all mean, first-to-file versus first-to-invent? And why the mad rush to the Patent Office?
Under the old first-to-invent system, an inventor could have been the first to invent something and been beaten to the patent office by another who filed a patent application on the identical invention, but still be awarded the patent. This old system favored fairness because it granted the patent to the true, first inventor. But it also led to disputes at the U.S. Patent Office regarding who was the actual first inventor. The Patent Office used a procedure called an Interference Proceeding to determine the first inventor. An inventor could “swear behind” prior art references cited against him if he could prove that he had invented before the priority dates of the other inventors. These proceedings were costly and consumed a lot of the resources within the Patent Office. The first-to-invent system was also different from how most other countries determined who should receive a patent.
The new first-to-file system now lines up with what the rest of the world is doing, but while doing so, it sacrifices a measure of fairness in favor of efficiency. Under the new rules of first-to-file, the original inventor can invent something, but if he waits too long to file a patent application, he can be scooped by a rival inventor who files a patent application before him at the Patent Office. The system might not seem very American, but it should instill increased predictability in the process.
Patent attorneys rushed to file patent applications on March 15th so that their inventor clients would be entitled to swear behind prior art and prove that they were the true, first inventor. Patent applications received after March 15th are now reviewed under the new America Invents Act which established the first-to-file system. There are now only limited opportunities for an inventor to swear behind prior art so it is extremely important to timely file all patent applications to establish as early a priority date with the Patent Office as possible.
If you have an invention and would like to explore patent options, please contact the patent attorneys at Clegg Law. Our experienced patent attorneys can help you evaluate your options and assist in creating a patent strategy that will maximize your chances of receiving a strong patent to protect your valuable intellectual property.
Researchers at Oklahoma State University have filed a patent application on a previously unknown chunk of meat and a method for extracting it that can be used to produce a high-end, presumably delicious steak (click here to see the Vegas Strip Steak patent application). Although it may sound crazy that meat products are an “invention” and are eligible for patent protection, they can actually qualify under United States patent law, along with nearly every type of invention that you can think of.
The patent system was designed to reward inventors with a temporary monopoly on their invention and also encourage inventors to share their invention with the public to spur further research and development. Not everything is patentable though. Among other criteria, an invention must be novel, useful, and non-obvious to qualify for patent protection. The initial patent eligibility requirements are found in 35 U.S.C. 101. This section states:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title
Steak lovers everywhere would agree that discovering a new way to cut beef is a useful process and the steak itself could be considered a “composition of matter”. That is why Oklahoma State can apply for a patent on their extraction process and on the end product. But meeting these initial criteria is just the first hurdle. As Section 101 states, there are further conditions to obtaining a patent. These further conditions are the primary criteria during examination with the United States Patent and Trademark Office. The patent examiner assigned to the application will examine the “prior art” – basically all information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality – to see if the invention is novel and non-obvious enough to be granted patent protection.
If Oklahoma State is able to satisfy the United States Patent and Trademark Office that their new process and cut of steak meets all the criteria for patent protection, then they will be granted of exclusivity over the process and product described in the “claims” of their patent for a period of twenty years from the date of their original application. This would mean that Oklahoma State would be entitled to exclude everyone in the United States from making, using, selling, offering for sale, or importing their tasty steaks. But this probably won’t mean that if you want to try a Vegas Strip Steak, you have to go to Oklahoma State. Oklahoma State will most likely license their patent to various meat manufacturers and enjoy a potentially lucrative royalty on each cut of steak processed and sold by the manufacturers. If you have questions about what is and what isn’t patentable or have an invention of your own, please contact the patent attorneys at Clegg Law. The patent process can be very complex and having an experienced patent attorney can be invaluable. Clegg Law can provide you with the confidence knowing that your invention will be given the attention that it deserves.
Crowdfunding has become a popular process for matching up entrepreneurs seeking capital with the masses of people who would like to participate in a project or venture, but are not venture capitalists. Online donors commonly get something in exchange for their small donation like a prop from a movie they helped fund or one of the products developed from the funding. Donations may be as little as $5 and the largeness is only bounded by what a donor is willing to contribute. One of the biggest players on the crowdfunding arena is Kickstarter. According to its website, since its launch on April 28, 2009, over $636 million has been pledged by more than 4.2 million people, funding more than 42,000 creative projects. It’s pretty amazing that something that didn’t even exist 4 years ago can come into being and help generate over a half a billion dollars in funding in such a short period of time. So, does Kickstarter have any patents on crowdfunding? Probably not.
But Kickstarter is now up against something they probably didn’t anticipate when they began their matchmaking adventure. Kickstarter has recently been sued for patent infringement by 3D Systems. 3D Systems is a company that has developed 3D printing technology and is the owner of several patents in the 3D printing space. So if Kickstarter is a website that solely matches up entrepreneurs with people willing to fund projects, how could they have been guilty of infringing on 3D Systems 3D printing patents? Well, 3D Systems main target on this lawsuit is actually FormLabs, a company that used Kickstarter to raise nearly $3 million in funding to help develop its high definition 3D printer. 3D Systems alleges that FormLab’s Form 1 printer infringes on its patent and that Kickstarter helped to contribute to the infringement by allowing fundraising for the development of the printers to occur on its site. 3D Systems’ complaint filed in Federal District Court alleges that “Kickstarter knowingly or with willful blindness induced and continues to induce infringement and possessed specific intent to encourage another’s infringement by, or was willfully blind as to the ‘520 Patent.” The ‘520 patent is 3D Systems’ patent covering “improved methods of stereolithographically forming a three-dimensional object by forming cross-sectional layers of an object from a material capable of physical transformation upon exposure to synergistic stimulation.”
Whether or not Kickstarter knew about the possibility of FormLabs printer infringing 3D Systems patent will likely come up in litigation. Kickstarter may not have known much about the patent. But this case could still impact the behavior of crowdfunding sites in the future. Will there be a chilling effect on funding for projects that have patent infringement potential? Will crowdfunding sites require some sort of freedom to operate analysis before allowing projects on their site for fundraising? If crowdfunding sites are exposed to liability on suits like this one, it’s a good bet that patent infringement risk will be accounted for in some way.
Patents play a large role in entrepreneurship and business development in the United States and globally. If you have an invention that you would like to protect or you think that someone else is infringing on your patent rights, please contact the patent attorneys at Clegg Law.
Not getting enough caffeine out of your morning coffee, Red Bull, or 5-Hour Energy? Colgate may soon have another option for you. The company recently submitted a patent application to the United States Patent Office that covers, among other things, a toothbrush that delivers a release of caffeine. Maybe the fast pace of the modern world requires various injections of energy while we go throughout our daily routine. Caffeinated Chap Stick anyone?
Caffeine is just one of a plethora of possible chemical releases from Colgate’s new toothbrush. The caffeinated toothbrush patent application (which can be seen by clicking here) describes “[a]n oral care implement that includes a releasable sensory material that invokes a sensory response when in contact with tissues or surfaces of a mouth of a user.” The idea is to enhance the teeth cleaning experience by adding flavors that will provide tingle, spice, or energy. Among the chemical releases described are chamomile, capsaicin, Erythritol, Xylitol, and a variety of fruit flavors.
Sounds like an interesting idea and time will tell whether it is a commercial success, but Colgate’s patent attorneys still have work to do to get the patent application through the Patent Office. The application was initially rejected based on two existing patents that when combined together teach features similar to the ones described in Colgate’s application. Remember that for something to be patentable it must be novel and non-obvious. If the Patent Office finds any patents or printed publication that describe the features of the applied for invention or if a combination of references together make the elements of the invention obvious, the Patent Office can reject the application.
In order to overcome the Patent Office’s rejection, Colgate’s patent attorneys will need to offer counter arguments as to why the cited references do not render obvious Colgate’s sensory enhancing toothbrush invention. If Colgate’s patent attorneys can’t convince the Patent Office, they may face a decision to abandon the patent application or narrow the scope of the claims to work around the references cited by the patent examiner. If Colgate is eventually granted a patent on its sensory enhancing toothbrush, it may cover much less than was originally claimed in the initial application. It will be interesting to see what happens with this patent application, particularly if you are a caffeine junky.
If you have the next big idea in toothbrush technology or just want to know more about the patent process, please contact the patent attorneys at Clegg Law. They have the experience to help you get the most out of your invention.
Vernon Bowman, a 75 year old Indiana farmer, thought he had found a loophole in Monsanto’s patent covering Roundup® resistant soybeans. But the United States Supreme Court recently extinguished any hope Bowman had of getting around Monsanto’s patent rights. The Supreme Court rejected the Bowman’s argument that Monsanto’s patent protection was “exhausted” upon their initial sale of the seeds. If Bowman wants Roundup® resistant soybean plants in the future, he will be required to purchase his annual supply of soybeans from Monsanto just like every other soybean farmer.
You may not recognize the name Monsanto, but you probably recognize their product. Monsanto is the company that produces the popular weed killing spray Roundup®. Because of their familiarity with the weed killing mixture, they also developed and patented a type of soybean that is resistant to Roundup®. However, one problem exists when trying to enforce a patent covering a seed. If you sell a person one seed, she can plant that seed and produce more of the seed naturally, thus eliminating motivation to return to the patent holder for more seeds. The self-replicating nature of seeds would allow a farmer to buy the seeds one season and then obtain a whole new set of seeds from his crop for the next season, thus defeating the patent monopoly to which Monsanto is entitled. If every farmer did this, Monsanto would be limited to a few short years of exclusivity, after farmers would just produce their own seed.
Bowman thought he had found a loophole by purchasing a mix of soybean seeds from a grain elevator that was typically used for animal feed. This mix was much less expensive than purchasing from Monsanto. Bowman banked on the fact that most of the seeds were likely to be Roundup® resistant. He then planted the animal stock mix and proved his bet was correct. Most of the subsequent soybean crop was Roundup® resistant just like the patented seeds from Monsanto. Bowman thought his clever trick would allow him to circumvent Monsanto’s patent protection requiring farmers to annually purchase their patented seeds. Bowman figured he had games the system and would be able to use his secondary seed source.
Unfortunately for Bowman, Monsanto found about it and sued Bowman for patent infringement. In court, Bowman’s attorney attempted to raise a counter argument using the “patent exhaustion” doctrine. The patent exhaustion doctrine says that once an unrestricted, authorized sale of a patented article occurs, the patent holder’s exclusive rights to control the use and sale of that article are exhausted, and the purchaser is free to use or resell that article without further restraint. The U.S. Supreme Court rejected this application of the exhaustion doctrine stating, “The exhaustion doctrine does not enable Bowman to make additional patented soybeans without Monsanto’s permission (either express or implied).”
Part of the policy behind the patent system is to encourage research and development that might not otherwise occur. The period of exclusivity provided by a patent is the reward for undertaking such expense. If farmers like Bowman could just buy the patented seeds once and then reproduce their own, Monsanto would not be able to recover the millions of dollars they invested in developing these special soybeans. The Court took this policy into consideration in determining the outcome of this case.
Whether you are a farmer looking for freedom to operate without fear of patent infringement or you have invented the next super soybean, please contact the experienced patent attorneys at Clegg Law.
Myriad Genetics, a Salt Lake City based company, was the first group to isolate the gene sequences known as BRCA 1 and BRCA 2 that indicate whether a woman has a high risk of developing breast or ovarian cancer. Myriad then used these sequences to develop a diagnostic test that screens a woman’s genome and identifies whether she has the gene or not. The US Patent and Trademark Office granted Myriad patents on their test and the isolated DNA sequences, which effectively provided them a monopoly on determining whether a woman was at risk of developing either type of cancer. After conflicting decisions in the U.S. Federal District Court and the U.S. Court of Appeals for the Federal Circuit, these patents are now being challenged in the U.S. Supreme Court by breast cancer patients and cancer researchers whose patent litigation attorneys argue that these gene patents cover naturally occurring products and should not be granted patent protection. They also argue that the patents stymie further research and allow Myriad to control the price of the test without threat of competition, denying the test to those who cannot afford it.
On the other side of the debate, Myriad’s patent attorneys respond that if a gene patent is not granted in situations like this, the research necessary to make these types of advancements will not take place because of the significant investment in time, effort, and dollars required. Moreover, Myriad is not the first company to patent a genetic sequence. Gene patents have long been allowed by the U.S. Patent and Trademark Office. Other proponents of gene patents, including other biotech and agricultural companies, agree that without a patent at the end of the process, the financial incentive is lost and there aren’t enough altruistic scientists out there who will explore important issues like these just out of the sheer advancement and pursuit of knowledge.
Patent attorneys on both sides seem to make valid points and the situation illustrates just one of several challenges that the patent system is currently facing. The U.S. patent system has recently come under attack for its inability to appropriately handle the rapid development of emerging areas of science and technology. One of the rationales for the patent system is to encourage the development and growth of science by striking a bargain between the inventor and the government/public. Article I, Section 8, Clause 8 of the U.S. Constitution empowers Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The inventor is granted a temporary monopoly to exclude others from practicing their new invention in exchange for providing society the benefit of the invention by disclosing the invention to the public. The inventor is able to profit from his or her invention for a limited time while the public is educated about the nature of the invention expanding the knowledge base of science and technology.
Both society and the inventor are intended to benefit from this system. The Myriad case highlights the tension that often exists between providing the inventor exclusivity and society’s desire to benefit from the progress of science now. The tension is particularly heightened in cases where benefit of the invention is saving lives, and society wants to inexpensively save lives now.
The Supreme Court heard oral arguments from both sides in the Myriad case on April 15th and will likely decide the outcome of the case in June.
Understanding the current state of patent law and how you can protect your company’s intellectual investments can be the key to your business’s success. Trust the patent attorneys at Clegg Law with your patent needs.
Perry Clegg was recently named among Utah’s top intellectual property attorneys by Utah Business Magazine. In February, 2013, Utah Business announced its Legal Elite, which, according to Utah Business Magazine, are Utah’s best-of-the-best attorneys as determined by a survey of other Utah attorneys. This is the sixth year that the Legal Elite honor has been bestowed on Mr. Clegg, a Utah patent attorney. The results of the Legal Elite survey were published in Utah Business’s Legal Resource Guide, which was published as a sort of directory of best Utah attorneys.