itemscope="" itemscope=""

2 Millionth PCT Application Filed

May 23, 2011 By

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

May 9, 2011 By

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?

May 6, 2011 By

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?

May 1, 2011 By

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).

Discuss the MPEP

April 29, 2011 By

Recently, the Patent Office provided an online forum to discuss the Manual of Patent Examining Procedure (MPEP). The MPEP is the key reference manual issued by the Patent Office that provides examining guidelines, practices, and procedures. So far, most of the comments are thoughtful. Here is a sampling of comments relaing to disclosure of prior art:

Submission of videos

“As new forms of prior art proliferate, we have to develop some way to submit them to the PTO. For example – web video clips. It seems reasonable that EFS should be enhanced to accept this kind of submission for an IDS. Do people have ideas on this concept? What other types of media have people come across as prior art? This comment is intended as a discussion starter.”

“Dateless” prior art references

“What can an examiner do with a publication with no date?”

Web Site Printouts

“Please offer some examples on proper ways to [cite non-patent literature] printed from websites.”

To read or add your own comments about the MPEP, go to this web site.

Motorola Sued for Trademark Infringement Over Use of “Xoom” Tablet

April 25, 2011 By

On the eve of launching its new Xoom tablet computer, Motorola was hit with a trademark infringement lawsuit by Xoom Corporation, a San Francisco-based global money transfer company. Xoom is not a particularly large company and it appears that it will be hurt financially by use of the the Xoom mark by Motorola. For  example, as the complaint notes, when the term “Xoom” is put in the Google search engine, most of the search results come back for the Motorola tablet, not Xoom’s money transfer, as was the case before Motorola named their tablet the Xoom. That said, trademark infringement will be difficult to prove in this case. Is a tablet computer and a money transfer service both with the same name confusingly similar to the relevant buying public? That is the issue to be decided by the court.

Xoom v Motorola – Complaint

European Patent Office Reports Filings Up 11%

April 23, 2011 By

According to statistics released by the European Patent Office (EPO), patent filings in the EPO have markedly increased since 2009. Last year, the EPO received about 235,000 patent applicaions, up 11% from 2009, making it the the highest number in the EPO’s history. About 40% of the filings came from member states, with Germany leading with 14% of the applications filed.

Of the top 50 applicants, 21 were from Europe. In terms of applications filed, the top 10 companies were:

1.  Siemens (2,135)

2.  Philips (1,765)

3.  BASF (1,707)

4.  Samsung (1,691)

5.  Qualcomm (1,682)

6.  Panasonic (1,400)

7.  Robert Bosch (1,400)

8.  SONY (1,286)

9.  LG (1,263)

10.  Bayer (1,123)

Among non-European countries, the US (26%) and Japan (18%) led in number of filings. South Korea accounted for 5%. The fastest growth in applications came from South Korea (+21%) and China (+54%).

Miscelaneous IP Nuggets #4

April 22, 2011 By

A few items of interest to the IP community.

1. As everyone knows by now… the federal government (and the US Patent and Trademark Office) did not shut down. Everyone is breathing a sigh of relief. And the cherry blossom festival went on as planned.

 2. As reported in today’s Patently-O blog, appropriation for the Patent Office until the end of the fiscal year (September 30,2011) will be cut by $100 million. According to an internal memo from Director Kappos, overtime will not be allowed for examiners and a hiring freeze will be put in place. Moreover, the Detroit Patent Office satellite office is indefinitely postponed.

3. There is some interesting commentary (from the examiner point of view) over on the Just-n-Examiner blog about the Clearing the Oldest Patent Applications (COPA) program which has as its goal that all applications filed before June 7, 2009 be given a first action before end of the fiscal year. The main concern voiced is in regard to some of the applications being examined by examiners in unrelated art groups to reduce the backlog.

What about trade dress?

April 20, 2011 By

Apple iPhone

Samsung Galaxy

Samsung’s Galaxy smart phone sure looks a lot like the Apple iPhone. But can the way a product looks be legally protected?  The answer is that in many cases, it can. This week, Apple filed suit against Samsung for a variety of alleged intellectual property infringements.  While the media largely focused on the patent dispute, scant attention was paid to the fact that Apple also sued Samsung for trade dress infringement. In this post we look at the concept of trade dress.

Under the Lanham Act (the same legislation protecting trademarks), a product’s trade dress can be legally protected. Trade dress refers to the visual appearance of products and packaging. For example, the shape, color, or materials used for a product. Other examples include the design of a magazine cover or a greeting card.

Even the way in which a service is provided may be protectable under trade dress.  For example, in the Two Pesos (112 US 2753) case, the US Supreme Court ruled that the decor of a Mexican restaurant could be protected. In its trade dress registration, the restaurant described the decor as follows: “a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.”

In its complaint, Apple claimes that Samsung infringed on the following elements of the Apple iPhone trade dress:

a rectangular product shape with all four corners uniformly rounded;

the front surface of the product dominated by a screen surface with black borders;

substantial black borders above and below the screen having roughly equal width and narrower black borders on either side of the screen having roughly equal width;

a metallic surround framing the perimeter of the top surface;

a display of a grid of colorful square icons with uniformly rounded corners; and

a bottom row of square icons (the “Springboard”) set off from the other icons and that do not change as the other pages of the user interface are viewed.

The lawsuit cited several of Apple’s trade dress registrations (U.S. Registration Nos. 3,470,983, 3,457,218, 3,475,327).

For entrepreneurs, the takeaway is to make sure that you consider trade dress protection for the various products and services you offer.

USPTO Prepares for Possible Government Shutdown

April 8, 2011 By

What does the National Cherry Blossom Festival and the U.S. Patent and Trademark Office have in common?

Answer: They both would be affected by the federal government shutting down.

However, both would be partly operational. As reported here, the Cherry Blossom Festival parade would go ahead as scheduled but would avoid federal property (not easy to do in Washington DC). Meanwhile, the Patent Office has issued the following press release, noting that it would be open as usual for six business days, then non-essential employees would be sent home. According to the press release, the Electronic Filing System (EFS) would be operation during a shut down.

In the event of a government shutdown on April 9, 2011, the United States Patent and Trademark Office will remain open and continue to operate as usual for a period of six business days – through Monday, April 18, 2011 — because the USPTO has enough available reserves, not linked to the current fiscal year, to remain in operation until then. Should a shutdown occur and continue longer than the six-day period, we anticipate that limited staff will be able to continue to work to accept new electronic applications and maintain IT infrastructure, among other functions.  More information will be posted on this website as it becomes available. Thank you.
« Previous Page
Next Page »