USPTO Launches Trademark Dashboard

As we mentioned in an earlier post, the US Patent and Trademark Office (USPTO) launched its Patent Dashboard showing vital statisitcs for the Patent Office, such as patent pendency (currently 25.9 months) and number of cases waiting a first action (currently 178,392).  Now the USPTO has launched a Trademark Dashboard, similar in concept, but covering trademarks.

Compared with patents, trademarks are processed much faster.  Trademark pendancy has reached historically low levels as measured by the time from filing to first action (within 2.5 and 3.5 months).  Total disposals are about 12.5 months.

Of course,  patent examination is far more difficult, and requires more resources, so it would  be inappropriate to compare the two.

Disney Withdraws Trademark for “SEAL Team 6″

As reported in the Wall Street Journal, Walt Disney announced today that it would pull a controversial trademark application for “SEAL Team 6″ “out of defference to the Navy”, a spokesman stated. Seal Team 6 was reportedly the team that killed Osama bin Laden. However, officially, the Navy does not admit that the team exists. Shortly after Disney filed for “SEAL Team 6″, the Navy had filed its own marks for “SEAL Team” and “Navy SEALs”.

Patent Attorney Sings with Paul Simon

According to an article in the Washington Post, rock legend Paul Simon was giving a concert at Constitution Hall (Washington DC) and was having difficulty remembering the words to the song “Gomboots”. When a fan in the front row shouted out the lines to the song, Simon invited him on stage.

As the below video shows, the man gave an inspired performance. It turns out that the fan was patent attorney Paul Fournier, and has long been a fan of Simon’s music. That the person was an attorney is hardly surprising, though, given that the Washington DC area has the largest concentration of lawyers in the country.

24,583 Bit Torrent Users Targeted for Copyright Infringement

Voltage Picture, the producers of the film Hurt Locker, have retained the law firm of Dunlap, Grubb and Weaver to target 24,583 BitTorrent users who allegedly downloaded pirated copes of the film. BitTorrent offers software that allowws for peer-to-peer transfer of files, particularly videos and audio. However, users of this software who violate copyright laws may be liable. The way it usually works, in practice, is that the copyright owner asks / subpoenas the user’s ISP for the user’s IP address, then sends a “settlement offer” to the user. If the person does not “settle”, then the company may file a lawsuit in federal court. Many of these cases wind up being thrown out  for various reasons including lack of personal jurisdiction over the defendant. A list of the IP addresses cited in the law suit is shown below.

ipaddresses

2 Millionth PCT Application Filed

The World Intellectual Property Organization (WIPO) announced that it recently received the 2 millionth filing under the Patent Cooperation Treaty (PCT). The filing was made by US-based Qualcomm. The PCT system was established in 1978 and provides a way for applicants to obtain the benefit of one international filing date which is recognized in the 142 member countries.

The top 20 PCT filers are:

1. Panasonic Corporation (Japan)

2. Philips Electronics N.V. (Netherlands)

3. Huawei Technologies Co. (China)

4. Robert Bosch GmbH (Germany)

5. Siemens Aktiengesellschaft (Germany)

6. Qualcomm Incorporated (USA)

7. Toyota (Japan)

8. LG Electronics Inc. (Republic of Korea)

9. Ericsson (Sweden)

10.Sharp (Japan)

11. Nokia (Finland)

12. NEC Corporation (Japan)

13. BASF Aktiengesellschaft (Germany)

14. Fujitsu Limited (Japan)

15. 3M Innovative Properties Company (USA)

16. ZTE Corporation (China), Motorola Inc. (USA)

17. Motorola Inc. (USA)

18. Microsoft Corporation (USA)

19. Mitsubishi Electric Corporation (Japan)

20. Samsung Electronics Co., Ltd. (Republic of Korea).

Why the America Invents Act is Wrong for America

As I have written previously, I strongly support the current first-to-invent patent system, and oppose the ill-named “America Invents Act” (S. 23 & H.R. 1249), which would switch us over to a first-to-file patent system.

This video by Randy Landreneau, an inventor and the former President of the Tampa Bay Inventors Council, offers a cogent explanation as to why the America Invents Act should be defeated in Congress.

Mr. Landreneau is now with a company that makes plastic prototypes.  For more information see his website: PlasticPrototypes.net.

Apparatus or Business Method?

I’ve seen many patents that make use of RFID tags for various identification purposes. But one of the most intriguing is described in this business method patent application from a company called Linen Technology Tracking, LLC. The invention involves inserting water-proof RFID tags into hotel towels. Each of the RFIDs emit a coded signal when the towel passes through various hotel checkpoints. A tracking log is kept of everywhere the towel was taken. If the towel is stolen (as thousands of hotel towels are each year), then the hotel staff is notified. According to the press release:

In the hospitality industry one of the largest expenses of room occupancy is the growing cost of linen supplies; however, hotels nationwide are operating with limited inventory information, control and knowledge of the true costs of these assets. The linentracker solution powered by Fluensee gives hotels the ability to manage thousands of RFID-enabled towels, sheets, bathrobes and other associated assets throughout hotel properties and laundry service providers. Tagged with Linen Technology Tracking’s patented RFID SMARTtags, each asset is scanned and monitored to and from the laundry, in and out of linen closets, at various check-in/out stations, down laundry chutes and even at pool and beach kiosks. AssetTrack’s comprehensive ability to capture these processes in real time combined with a powerful reporting and analytics engine gives hotel operators the unique ability to efficiently manage their investment in these otherwise difficult-to-manage assets.

In the patent application,  a series of method claims were fashioned to cover tracking towel locations.  For example, claim 1 recites,

1. A method of tracking hotel linen, comprising the steps of:

(a) communicatively linking a plurality of identification tags with a tracking control in a wireless connection manner, wherein each of said identification tags contains a unique code preset by said tracking control;

(b) permanently affixing said identification tags at a plurality of hotel linen products respectively;

(c) setting a plurality of check points at different key locations in a hotel respectively to communicatively link with said tracking control, wherein when each of said hotel linen products is moved to one of said checkpoints, said corresponding identification tag is registered thereat; and

(d) generating a tracking record for said hotel linen products in responsive to each of said checkpoints to monitor and manage said hotel linen products so as to greatly improve linen utilization in said hotel.

The takeaway from this is to think about your invention as more than just a device or apparatus.  How will it be used? Is the way in which it will be used itself novel. If so, consider applying for a business method patent.

How Much is My Patent Worth?

This is a frequent question but not one with an easy answer. Before we deal with it, though, let’s try to answer another, related question: Can a pending patent application have value?

Although a pending patent application provides no enforceable legal rights, it may still have value as an asset.  The value of a pending application relates to the expectation as to whether the patent will issue and how broad the issued claims will be, if it does. Also, there may be some value in marking a product with the term “patent pending” .

So, how does one value an intangible asset such as a patent or a pending patent application?

There are three main approaches:

Market Approach

This is similar to how one values real estate. The real estate appraiser looks at sales of similar houses in the neighborhood, and then comes up with an estimate. In the case of intellectual property, the appraiser looks at licensing agreements / sales for similar intellectual properties. For instance, in the toy industry, it may be very common for toys to be licensed for 5% royalty of gross sales.  If that’s the case, the “value” for a license for a baby doll will be deemed “5% of gross sales”.

Cost Approach

In the cost approach, the value of the asset is determined by the amount it would cost to replace the item. This is an approach that is used in high tech industries, where the value of the asset is (at least in part) determined on the basis of R&D cost.

Income Approach

This approach looks at the income-producing capability of the asset. The value of the asset is determined based on the future income stream over its lifetime, discounted to the net present value.  Of course, the income amount used will be an estimate.

In practice, if the item has a clearly defined income-stream, then the income approach will most likely be used. However, many times, it will be difficult to estimate future income from a product.  On the other hand, if the industry has a well defined set of royalty rates, then these will probably be used to determine the asset’s value.  Often a “hybrid” approach will be used.

It is also worth noting that there may be fundamental differences of opinion as to how much an asset is worth.  An inventor may believe that his or her invention is worth far more than the appraised value, based on a different set of assumptions as to future sales, for example.

Ultimately, the actual value of a patent (or other asset) (sale or license) will be whatever the parties agree on.

For more information, see:

From Assets to Profits: Competing for IP Value and Return (Intellectual Property-General, Law, Accounting & Finance, Management, Licensing, Special Topics) by Bruce Berman (John Wiley and Sons, Inc. 2008).

 

Fundamentals of Intellectual Property Valuation: A Primer for Identifying and Determining Value by Wes Anson and Donna Suchy (American Bar Association 2005).