Advanced Design Patent Application Strategies (part 2 of 2)

By James F. Hann of Haynes Beffel & Wolfeld LLP posted in patent law on Tuesday, July 11, 2017.

On behalf of Haynes Beffel & Wolfeld LLP by James F. Hann

In our last post, we covered what a design patent is, as well as “the basics” on how to protect it. This week, we are focused on advanced design patent application strategies. In some cases, you have a preferred design but you

Continue reading “Advanced Design Patent Application Strategies (part 2 of 2)”

The “WA” (和) of Patentable Subject Matter in Japan

While Alice v. CLS Bankcorp has touched off a firestorm of confusion in the patent community about what constitutes patent eligible software in the United States, our colleagues in Japan seem to be enjoying relative harmony () with their patent system.

Let’s take a look at the Japanese requirements for patent eligibility and see how computer software that implements business methods is viewed. 

In Japan, discussion concerning implementing patentability of business methods took place in 2000 and, as a result, the Patent Law of Japan was

revised to accommodate these types of inventions. Based on these revisions, the Japan Patent Office issued a guideline to Examiners to follow when using the new rules.

Our analysis begins with the main paragraph of Article 29(1) of the Patent Act, which states that any person who has made an inventionwhich is industrially applicable may obtain a patent. “Invention” is defined in Article 2(1) as “the highly advanced creation of technical ideas utilizing the laws of nature.” Here, the term “highly advanced” distinguishes inventions from the subject of registrable utility models. Moreover, Art 29(1) provides two requirements for the patentability of subject matter in Japan as:

  • A statutory “invention.” The subject matter must be a “creation of a technical idea utilizing a law of nature” in order to be patent eligible.
  • Industrial Applicability of the Invention. The subject matter must not be a method of surgery, therapy or medical diagnosis of humans; commercially inapplicable (e.g., method of petting my cat); and an impossible or impracticable invention (e.g., covering the earth’s surface with UV absorbing material to prevent global warming).

Subsection 2.2(1) specifically addresses the patent eligibility of business methods and provides that for business methods, games and mathematical formulae “where the invention is made having an intention of utilizing computer software (such as software used in doing business) in playing a game or in calculating a mathematical formula as a whole,” the Examiner must evaluate the subject matter from a viewpoint of computer software in order to determine whether the subject matter as a whole can be considered patent eligible as a “creation of a technical idea utilizing a law of nature.” Subsection 2.1 lists subject matter areas that are not considered the “creation of a technical idea utilizing a law of nature” and therefore are not patent eligible statutory inventions:

  • A law of nature as such (e.g., F=ma)
  • Mere discoveries and not creations (e.g., finding the Higgs Boson)
  • Those contrary to a law of nature (e.g., perpetual motion)
  • Those in which a law of nature is not utilized, such as any laws other than a law of nature (e.g., economic laws); arbitrary arrangements (e.g., a rule for playing a game as such); a mathematical formula; mental activities of humans; and those utilizing only methods for doing business as such
  • Those not regarded as technical ideas (e.g., personal skills, information compilations and aesthetic creations)
  • Those for which it is clearly impossible to solve the problem to be solved by any means presented in a claim (e.g., extinguishing a volcano by applying neutron absorbing Boron)

And… that’s it!

Compared to the ever growing litany of case decisions, USPTO guidelines and Director’s Letters, the above statutory scheme is a concise, self-contained and a well thought out roadmap for analyzing patent eligibility. But how will it work in practice when a Patent Examiner reviews an application?

A Patent Examiner in Japan is likely to look carefully at claims to computer software that implements any of the excluded factors of those referenced above. The guidelines indicate that the Examiner should evaluate the claim as a whole. Further, the Examiner must view the claim from the standpoint of being implemented by a computer executing software. But how would an Examiner proceed in the event that a claim includes one of the excluded factors, but also includes some technical content? Most likely, the Examiner will balance the technical aspects of the claim against the ineligible aspects of the claim in an attempt to effectuate the spirit of the submission.

So… the best guidance we can provide in determining whether a claim is directed to computer software implementing a business method patent eligible in Japan is to look at whether the claimed as a whole implements a technical idea that utilizes a law of nature.

¡ Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 U.S. Sup. Court (2014)

¡¡ “Examination Guidelines for Patent and Utility Model in Japan” English translation provided by Japan Patent Office, quoting “Eligibility for Patent and Industrial Applicability” Article 29(1) of the Patent Act.

Who was John Montegu and what can he teach us about who can be named as an Inventor on our patent application?

As company patent counsel, we are frequently called upon to determine who is properly named as an inventor on a patent application according to the US patent laws when we prepare a patent application. It may surprise you when we as patent counsel add or sometimes even delete persons to the named inventors on a disclosure when we prepare a patent application. This can occur when we uncover facts during the disclosure meeting that we conduct prior to preparing the patent application.

But who is an inventor? Let’s look at the (unconfirmed) story of John Montagu, the 4th Earl of Sandwich:

As the story goes, Lord Sandwich was up late gambling with his friends one night. Not wanting to take a break from the gaming table, Lord Sandwich instructed his valet to bring him some meat tucked between two pieces of bread so that he could continue to hold his playing cards while eating.

Concerned about improving investment in technology in his realm, as well as paying some gambling debts, Lord Sandwich decides to commercialize his invention. He summons a patent attorney. But, who is properly named as an inventor on the patent application?

Under current US patent law, Lord Sandwich would be the sole inventor of the sandwich given these facts. He came up with ideas for solving the problem confronting him and he reduced his ideas to practice by giving his valet specific instructions describing how to make the object of his creation. The valet’s actions are simply that of an implementer.

Our cheeky example aside, the US patent laws take proper inventorship seriously. Incorrect inventors listed on a patent can be grounds for invalidating the patent altogether – a complete loss of the investment of time and resources in creating it! Inventors who are named on the declaration and assignment documents are each required to sign under the penalties of perjury.

For next time, consider:

1. Change the facts – what if the valet, while constructing the sandwich, noticed that it tended to fall apart. Wanting to please the Lord, he inserted a toothpick into the bread and meat to hold it together. What result?

Answer – If the patent attorney describes the sandwich with the toothpick in the patent application and writes a claim to both, the valet as well as the Lord are co-inventors at least of the claim that names both toothpick and sandwich.

2. Change the facts again – what if the valet, wanting to improve on the boring taste of the sandwich mixed up some pickles and vinegar and added this “pickled relish” to the sandwich. But, it turns out the relish improved the flavor of just about everything Lord had in his kitchen, so it was useful even without the sandwich.

What result?

Answer – Here the valet has made a second invention, since pickled relish could be useful on its own without the sandwich. If independently patentable, the patent attorney could prepare a second patent application directed to pickled relish and name only the valet as inventor. (Lord Sandwich had no creative input to the pickled relish concept, even though he may have played a pivotal role in product test).

Client News: Clean Tech Company Climeon Endorsed by Sir Richard Branson

HBW clean tech client Climeon was recently featured in a YouTube video that discusses how Climeon and Sir Richard Branson aim to change the way electricity is produced on cruise ships.

Climeon makes 100% clean electricity from waste heat, and recently announced its partnership with Richard Branson’s new cruise line, Virgin Voyages. Virgin Voyages will have six Climeon Ocean machines on each vessel (3 ships in total). The resulting environmental impact will be an estimated 5,400 tons of carbon dioxide savings annually per ship – an amount that would take 180,000 trees 30 years to absorb.

Climeon Founder & CEO Thomas Ostrom states: “I love working towards goals others believe are impossible. I know that this is only achievable by working together with extraordinary talents that share my vision of a better future for our planet. We at Climeon are extremely proud of enabling green business.”

HBW Managing Partner Ernie Beffel has represented Swedish company, Climeon, since its inception. He notes, “… it is exciting to represent cutting-edge alternative energy companies and their owners and inventors.” He continued, “… we at HBW appreciate the support of inventors who strike out on their own and change the way we think about and use energy on a global scale.”

When is an Invention Ready for Patenting?

Can I just file patent applications based on my ideas… like Company X’s water-cooled power generators that sit in the ocean? You know, the ideas that our company will likely never build. But can I still get patented anyway?

U.S. patent laws consider an invention ready for patenting only when the invention includes both: 1) an idea, and 2) a reduction to practice.

An idea becomes an invention when reduced to practice. This means that someone has either built a working model or described how to build a working unit in sufficient enough detail to enable another person – who is reasonably skilled in the art, such as a fellow programmer not otherwise familiar with the invention but who is knowledgeable about the programming environment, language(s) and the like – to build a working unit.

The second method is termed a constructive reduction to practice. In many companies, inventions are typically reduced to practice when the inventor drafts detailed functional and technical specifications, or the inventor creates a working demo or prototype.

Applying this rule to your question, the issue becomes whether the invention is merely an idea (such as generators at the bottom of the ocean) or has been reduced to practice – meaning that there working models, demos, specification documents or presentation materials describing it. If these things exist, then the invention is ready to file as a patent application even if your company has not implemented the invention yet, may not implement the invention in the next year, or may never implement the invention at all.

Of course, since patents represent a significant investment of time and money, there is also the issue of whether protecting your invention, even when reduced to practice, makes financial sense. But that’s a topic for another day.

Technological Innovation: What should my company consider valuable enough to patent?

How do I know whether my work should be protected by patenting? How does my company use a patent on my work?

Think of product development as a race between you and your competitors. In this context, how will you win the prize? In other words, if there are equally able-bodied competitors in the race, who will win the customer?

A number of ways exists that help support a win, such as strong branding and better financing, among others. However, in the technology competition context, you should strive to add functionality that none of your competitors has and cannot develop anytime soon.

Your success depends upon your ability to identify the technical problems facing consumers of your technology, address these problems with creative or cutting-edge solutions, and then vigorously protect these innovations. It is critical that you seek patents directed to protecting these innovations vis-à-vis competitors and other non-competitor patent aggressors.

To execute on this, factor the identify-innovate-protect paradigm into your product development process. Develop a milestone such as “Pre-announce Patent Review” and set it at a point in time that gives you and your patent counsel sufficient time to collect information about your innovations, and then prepare your patent applications prior to disclosing your product to the public. In short, look for “technical solutions to technical problems” and patent these.

No Need to Have an Office within Walking Distance of the PTO to Fully Engage with Examiners

Believe in interviews, early interviews and desktop sharing interviews? The Patent and Trademark Office (PTO) does not care whether you believe, as long as you use interviews, because interviews get us to “yes” in less time… and more productively. The PTO has proven that it’s worth your while to interview.

Patent examiners do not sit behind desks in Alexandria as they once did. Many of them “hotel” (that is, work from home). Even Supervising Patent Examiners (SPEs) are free to work from home at least one day a week. Beginning in Detroit and spreading, many examiners are home-based in satellite offices. It may soon be difficult to line up a series of interview trips to Alexandria, because that may not be where the examiners are.

A while back and during Under Secretary Kappos’ term, the PTO upgraded its infrastructure to accommodate hoteling. All of the examiners received standard laptops that enable them to work as easily from home as in the office. Rules on hoteling changed to reduce the need for examiners to schedule regular face time in Alexandria. VPNs were set up and phones made to ring at home offices. Patent attorneys can now benefit from this improved technology.

The PTO built a WebEx portal for examiners and patent attorneys to use that integrates voice, video and desktop sharing. A demonstration of this capability is posted on YouTube, on the HBWIP channel. With video and desktop sharing, you can be more effective in a WebEx interview than a face-to-face interview. You don’t need to have an office within walking distance of the PTO to fully engage with examiners.

Source: Paperless Workflow, Office Action Analysis and Patent Examiner Interviews in the Era of Hoteling, WebEx and Videoconferencing.

Korea Aligns Patent Law with International Community, Effective March 1, 2017

ALERT: Korea Aligns Patent Laws with International Community, Effective March 1, 2017

Korea recently aligned its patent laws to be more in line with the international community. A variety of changes to the law in Korea are now in effect as of March 1, 2017, including:

  • The period for filing a request for an examination is shortened to 3 years.
  • Korean law has introduced the use of a patent cancellation proceeding.
  • The law includes an introduction of an ex officio reexamination.
  • It also includes revisions to the ex officio amendment.
  • The law covers what constitutes the period of request for correction of claims and withdrawal of claims in a patent invalidation proceeding.
  • The law also covers the submission of examination results from foreign countries.

We see the new Korean law as implementing changes that, in our opinion, will result in greater conformity of the Korean Patent Law with the patent laws of other countries in the international patent community. We also believe this change will result in additional focus on the integrity of patents being registered in Korea by providing increased ability to other parties to challenge potentially invalid patents under the new patent cancellation procedure. We think these changes will achieve the following desired goals:

  • Shortening the time period to request examination will bring Korean practice into conformity with other countries’ practices.
  • The provisions granting ex officio powers of reexamination are based on prior art grounds only, and will alleviate the problem of patents being  granted when the examiner has uncovered new art after issuing a Notice of  Allowancebut prior to payment of the issue fee by the applicant.
  • The new procedure to challenge validity of a granted patent before the patent office is similar to the ex parte reexamination in the United States and, if used in place of court proceedings, presents an avenue for third parties to subject a granted patent to reexamination before the patent office.
  •  Finally, submission of examination results for a foreign filed counterpart  application from which priority of the Korean application is derived provides  to the examiner disclosure of any art and arguments made during  prosecuting the counterpart application.

We are less confident about the new provision granting ex officio rights to examiners to correct a patent application. In the U.S., by contrast, the examiner can raise objections or rejections for lack of enablement or written description, but amendment of the application’s specification, drawings or claims requires concurrence by the applicant.

For more information on this topic, visit a recent posting entitled the “Revision of the Korean Patent Act & Trade Mark Act” at the International Federation of Intellectual Property Attorneys. Korea Aligns Patent Law with International Community, Effective March 1, 2017