Is Your Invention Too Obvious to Get a Patent?

Patent Law enacted by Congress in 1790 was one of the most significant factors in stimulating technology in the past two centuries. This law rewards inventors for their creation by giving them the right to exclude anyone from making, using, selling, offering to sell or importing their invention - unless licensed by the inventor. The downside of having such a law is that patents sometimes stifle progress when royalties demanded by inventors are too high. Thus, there is a fine line between awarding too many inventions and not enough. How is this difference between the public good and the interest of the inventor resolved? One solution is to deny awarding patents to concepts that are “obvious.”

Therefore, the question is“What is obviousness?”Courts have grappled with this issue over the years going back and forth in their rulings, sometimes being lenient in awarding patents and sometimes being strict. Recently a landmark case in front of the US Supreme court, KSR vs Teleflex, addressed the question. The court ruled that the factors determining obviousness and non-obviousness were outlined by the Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) and are commonly referred to as the "Graham factors".

To understand these factors it is helpful to make the analogy of attempting to drive in an ordinary car from a given location to a destination. In this analogy the starting location is the state of the art at the time the invention is conceived; the destination is the invention itself; and the ordinary car is a person having ordinary skill in the art of the invention.

To determine if the invention is “obvious” the US Supreme court held that the following factors should be considered:

Scope and content of the prior art (Where the starting location is situated)
The state of the prior art is determined in part by researching publications and patents which were filed before the invention was conceived by the inventor. Any publication anywhere in the world since the invention of the alphabet qualifies as prior art.

Level of ordinary skill in the art (Range of “ordinary” car)
This factor refers to the capability of an ordinary person versed in the technology of the invention.

Differences between invention and prior art (Distance between the starting location and the destination)
This factor refers to the size of the creative leap performed by the inventor.

According to the analogy, the invention is “obvious” if the destination is reachable by ordinary car: if the invention can be conceived by a person of ordinary skills. It is not “obvious” if the creative leap made by the inventor is so large that a person of ordinary skills cannot bridge it at the time the invention is made.

The KSR court ruling depends on three premises, two of which are solid because they are clearly described in writing: the state of the prior art and the invention as described in its application. The third premise, the person having ordinary skills in the art, is shaky: who is this mythical creature and how is it defined? The inherent ambiguity in this ruling has led to countless arguments and lawsuits.

In attempt to resolve this issue, courts have accepted additional objective evidence of “non-obviousness” such as:

Commercial success
An enthusiastic acceptance by the market of the invention, demonstrated for example, by skyrocketing sales, can provide its inventor with a resounding proof that the invention is not obvious.

Long-felt but unsolved needs
A long standing history of the problem solved by the invention can be proof that the invention is not evident.

Failure of others
Records showing unsuccessful attempts by other people at solving the problem addressed by the invention demonstrates that the invention is not obvious.

Often, given the current state of the art, an invention may not be “obvious” in a single creative leap. Patent examiners, however, string together prior art documents, in a multi-step technique, each step within the creative capability of an ordinary person. For example, an examiner may declare that an invention is not patentable because of a first prior art X, in view of a second prior art Y and in view of a third prior art Z. Bringing together X, Y and Z makes the invention “obvious.” In so doing, the examiners needs to show that a person of ordinary skill would have some reason for combining this prior art. This is called the Teaching-Suggestion-Motivation (TSM) test. To rebut such an examiner’s rejection, one must show that there is no teaching, suggestion or motivation for bringing the prior art together.

Happy New Year!

For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as legal advice. ©2010 by George Levy

Making the World a Better Place

The holiday season is upon us, and all inventors of good will are called on to make the world a better place. All inventions begin with the identification of a problem. And we have many problems: Religiously fanatic governments striving to build nuclear weapons; global warming accompanied by tornados, firestorms and rising sea levels; destruction of the biosphere by overlogging and overfishing; overexploitation of the planet’s resources; rising pollution destroying our health; economic downturn and high unemployment; an aging baby boomer population. Is the world coming to an end?

I suggest you spend some time contemplating what you might invent to help your fellow man or improve the world. And who knows? This good action could also make you rich! President Obama has identified three top priority fields that need improvements: Energy, Health and Education. In addition to these I have listed a few other topics below that you could focus on. Some of them require hi-tech solutions; other can be solved by simple low-tech approaches.

1) Energy. Invent new methods of generating energy or devices that improve mechanical efficiency and conservation without spewing out global warming gases such as CO₂. The impending change to electrically powered cars offers the opportunity to invent new automotive accessories to fit this new market.

2) Health. Find new treatments for diseases such as HIV/AIDS, cancer, malaria, and back pain. Discover new antibiotics to fight newly evolved antibiotic resistant bacteria. Find new methods to deliver a better quality and less expensive health care.

3) Education. Teaching methods have hardly evolved for the past 2000 years. The age of the computer should provide ample opportunities to improve the quality of education as well as to reduce its cost. On-line education on a national or even global scale is coming and brings with it countless invention opportunities.

4) Transportation. Our dependence on our gas guzzling automobiles to carry people and goods around has damaged our environment and weakened our political and economic standing among nations. We need to break our addiction to oil. Inventors can make this change possible.

5) Fresh Water. Increased agriculture and farming is consuming more fresh water than ever. Increased water consumption together with global warming may convert our planet into a vast desert. There is a need for water conservation techniques, in the home, in the yard, on the farm, in industry. There is also a need for producing fresh water by efficient and inexpensive desalination techniques.

6) Foods. While a large number of human beings are starving, another large number are obese. Find ways to feed the increasing human population on the planet, without overexploiting the land and the sea, and without polluting the biosphere with pesticides. Find methods to reduce or eliminate obesity.

7) Natural Resources. Our industry depends on non-renewable natural resources such as Copper, (used in electrical circuits), Indium (used in liquid crystal displays), and Platinum (used in catalytic converters). The challenge for inventors is to find green and renewable alternatives to these scarce natural resources.

8) Quality of Life. Improve the life of the disabled including the blind, the deaf, the lame and the old. For the indigent, often the simplest actions such as tying a shoelace or handling a spoon and a fork are impossibly difficult. Put yourself in their situations and feel what they feel. Then come up with a solution to their problem.

9) The Environment. The growing human population is putting larger and larger demands on our environment. The depleted biosphere in turn is losing its capacity to support a life, including human life. If inventors are to solve this problem, they need to provide green solutions which are in harmony with the nature.

10) Political Freedom. Recent world events have shown the power of the Internet’s social networking tools such as Facebook, MySpace, YouTube and Twitter, to effect political changes and help disseminate democratic ideals. What can you do as an inventor to enhance these Internet services in the service of democracy?

Happy Holidays to all!

For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as legal advice. ©2009 by George Levy

Patent Trolls and the not Invented here Dragon

An inventor, long on imagination but short of capital, patents a wonderful invention. He approaches several companies to help him fund, manufacture and market his idea but is repeatedly turned away. Eventually, exhausted, he gives up on his invention. A few years later, he buys a product manufactured by one of these companies and, lo and behold, this product embodies his invention to the letter. The inventor offers to license the patent to the company but is turned away. He then files a lawsuit against the infringing company.

The lawsuit process is tough. The company lawyers use all the tricks in the book, but the claims of his inventions have been expertly written. The inventor scores a court victory and eventually the company must settle. Frustrated, one of the company executives calls the inventor a patent troll, implying that the company should get all the credit for bringing the invention to market and that he did not do any productive work, likening him to those unpleasant creatures who hide under bridges and exact a toll from unlucky travelers.

This lawsuit took place in 2006. The company was Intel. The inventor was represented by TechSearch, a company engaged in the business of purchasing, licensing and enforcing patents. Are you surprised?

The news media ran with the troll story: American Lawyer publication had an article beginning with “In the sleepy village of Santa Clara, there lived a very wealthy but very frightened giant named Intel. Intel was plagued by a fearsome band of evil trolls – patent trolls to be exact – who wanted a glittering pot of gold in exchange for doing absolutely nothing. They were very powerful because they said they owned the patent on some of the magic Intel used to become rich.”

The metaphor of patent trolls was used by large corporations such as Intel and Microsoft to spur Congress to change the patent system and adopt the patent reform act possibly more appropriately dubbed “the anti-patent reform act.” The Texas congressman stated: “I think patent trolls are abusing the system.” The aim of this act was to introduce changes that would reduce the rights of the small inventors. This bill which favors infringers and large companies at the expense of the small inventor is currently before Congress. It includes:

1) Provisions that will give defendants additional ways to combat infringement allegations and limit damages.

2) A “first to file” system to replace the “first to conceive” system. This will favor large companies with readily available attorneys at the expense of individual inventors.

Large companies are the biggest trolls of all. They use their large patent lawyer teams to eliminate competitors using methods such as:

1) the ‘’Shotgun’’ strategy: obtaining as many patents as possible in a particular area of technology;

2) the “Blanketing” and “flooding” strategy: turning an area into a minefield of patents, for example by systematically covering with patents every step in a manufacturing process;

3) the “Picket Fence” strategy: erecting a patent fence against competitors to block them from making any improvement to their products;

4) the “Surrounding” strategy: walling in an important patent with lesser patents to block the effective commercial use of the central patent, even after its expiration; and

5) the “Scarecrow” strategy: filing patents to discourage competitors from investing in a technical area to be protected. More information about patent strategies are available on the Web

Calling small inventors trolls and changing the patent system to reduce their rights will only weaken our innovation strength and our competitive advantage in the world.

We are living in the age of the Internet and have the tools to make the patent marketplace readily available. We ought to encourage the flow and sharing of information including the availability and marketability of patents. There is no excuse for a large company to deny funding to a small inventor of a good idea simply because he does not have the means to defend himself in court.

If small inventors behave as patent trolls it is because too often they are faced with the “Not Invented Here” Dragon. Instead of chasing the troll, let’s slay this dragon by making sure that the patent marketplace is open for all to see.

Happy Thanksgiving to all!

For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as legal advice. ©2009 by George Levy

Getting a Piece of the Stimulus Package Pie

As part of the stimulus package the US government has boosted the funding for Small Business Innovation Research (SBIR) and Small Technology Transfer Research (STTR). If you have an idea in a high priority field such as Energy or Education the federal government may provide you with the initial funding for your invention.

SBIR targets the entrepreneurial sector because that is where most innovation and innovators thrive. However, the risk and expense of conducting serious R&D efforts are often beyond the means of many small businesses. By reserving a specific percentage of federal R&D funds for small business, SBIR protects the small business and enables it to compete on the same level as larger businesses. SBIR funds the critical startup and development stages and it encourages the commercialization of the technology, product, or service, which, in turn, stimulates the U.S. economy.

The first step in writing an SBIR proposal is to go to SBIR.gov and study solicitations published by different government agencies.

Many government agencies have SBIR programs. The agencies with the earliest deadline include the National Science Foundation (NSF) and the National Institute of Health. (NIH)

The NSF announced the release of its 2010 SBIR Phase I solicitation. $45,000,000 will be available for 200-300 awards. These competitive research awards will be capped at $150,000 per award. Companies must outline how they will utilize these funds to conduct a 6-month feasibility study. Companies must prepare proposals that will address subtopics found under each of these main topics:

Biotechnology and Chemical Technologies

Education Applications

Information and Communication Technology

Nanotechnology and Advanced Materials

Successful proposals cover R&D on projects that provide evidence of a commercially viable product, process, device, or system AND/OR meet an important social or economic need. All projects should have High potential commercial payback and High-risk efforts.

For more details and proposal preparation instructions, refer to the NSF solicitation.

All proposals for the NSF SBIR programs are due before 5:00 PM on Thursday, December 3rd (the registration process, necessary before you submit your proposal, might take a few weeks--Start early!).

The NIH is another government agency with open solicitations. The deadline for submission is November 9, 2009. Research topics can be found at the NIH SBIR site.

2009 Fall National SBIR Conference, Reno, NV, November 2-5, 2009. The conference will bring together federal program administrators from all of the SBIR participating agencies, venture capital and angel investors, large companies, secondary market and traditional lenders, university and federal laboratory representatives and other experts who provide assistance or are interested in doing business with early-stage ventures. Participants will also hear presentations by SBIR award winners who have successfully commercialized their research, and learn about opportunities while networking with peers involved in innovation. For more information visit the conference website at http://www.unr.edu/sbir-sttr2009 .

If you plan to apply for an SBIR grant you will need to have a Duns and Bradstreet number and an Employer Identification Number (EIN) from the IRS, Obtaining these numbers may be time consuming processes and it is a good idea to get them several weeks before the proposal deadline.

SBIR grants usually target state of the art technical fields. To provide more credibility to the SBIR reviewers, you should try to associate yourself with people very knowledgeable in the field of your proposal, for example academics or people who are well known through their publications.

For archived newsletters and information resources for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as any form of legal advice. ©2009 by George Levy

You Snooze, You Lose

Have you ever had an idea for a product and later found it sold in a store or advertised on the Web? It has happened to many of my acquaintances who now kick themselves for not being more proactive in protecting their idea. In this column I shall discuss two inventions, the telephone and television, the conception of which was mired in controversy.

The Telephone
A few hours made all the difference at the US Patent office, on February 14 1876. That day, two inventors, Alexander Graham Bell and Elisha Gray both submitted patent applications for the invention of the telephone. What actually happened depends on which account you believe: according to Gray's account, he filed a patent caveat (equivalent, in those days, to a provisional application) in the morning, soon after the patent office opened. Bell's application was filed a few hours afterwards, shortly before noon by Bell's lawyer. The attorney, who may have been privy to Gray’s filing, took steps to expedite the processing of Bell’s applications. He requested that the filing fee be recorded immediately and that the application be taken to the examiner immediately. Later that afternoon, the fee for Gray's application was entered. Gray’s application remained in the in-basket until the following day when it was taken to the examiner.

This race at the Patent Office led to an expensive lawsuit. Eventually Gray abandoned his caveat, thus allowing Bell to be granted U.S. Patent 174,465 for the telephone on 7 March 1876.

Television
Another invention with a controversial conception is television. Two inventors were competing for the title of inventor of television: Vladimir Kosma Zworykin, a Russian-born American inventor who was working for Westinghouse, and Philo Taylor Farnsworth, a farm boy from the state of Utah who was backed by private capital.

Zworykin patented his idea first in 1923 and is therefore credited for being the father of television. However his iconoscope was essentially a primitive television camera; he could not get it to work until 1934 and his patent was not issued until 1938. Thus, at the time of filing, Zworykin’s description of his invention was not fully adequate because it could not enable a “person having ordinary skills in the art” to build and use his invention.

Farnsworth was the first to successfully demonstrate on September 7 1927 the transmission of television signals. He used a scanning tube of his own design for which he received a patent in 1930.

In the late 1930’s, RCA had hired Zworykin and tried to assert its right to television. The president of RCA wanted to control television in the same fashion as it controlled radio. He vowed that, “RCA earns royalties, it does not pay them.” A 50 million dollar legal battle subsequently ensued.

During the course of the trial, it became clear that Farnsworth held the priority patent in the technology. Even though Zworykin had filed an earlier patent, his patent was not enabling. In addition, Farnsworth was able to prove that he had conceived of the idea first: his high school science teacher was subpoenaed to testify that, as a 14 year old, Farnsworth had shared his ideas of his television scanning tube with him.

Having lost the law suit to Farnsworth, RCA for the first time in its history began paying royalties for television in 1939.

Moral of the story
If you think you have a good idea don’t let it go to waste. You must act immediately before someone else beats you to it. You need to do the following:

1) Make sure the idea has money-making potential. A well thought out business plan is an excellent first step.

2) Check that the idea has not been invented before. Perform a search on Google; if you don’t find anything ask a professional to repeat the search to make sure that you haven’t missed anything. A thorough search may save you a lot of wasted time, money and effort later.

3) Test your idea to make certain that it works. You can do this by constructing a simple proof of principle prototype and/or perform some calculations to make sure your idea is sound.

4) Protect your idea by filing a patent.

For archived newsletters and information resources for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as being legal advice. ©2009 by George Levy