Bob Goozner's Solar Review

Old Presentations

Abuse of the Hatch-Waxman Act

Back in 2001 I gave a presentation about how the Hatch-Watchman Actcan be abused so as to prevent generic drugs from reaching the market:

Reasons For Allowance Can Limit The Claims

In 2003 the Biogen v. Berlex Case held that the Examiner's reaons for allowance can limit the claims:

Robert E. Goozner - April 1, 2009

Market Power

Antitrust considerations are always fascinating in respect to the issue of market power. Although I made this presentation a few years ago leading up to the Illinios Tool Works decision, it still leaves room for thought today. For Example, if the antitrust laws had real teeth we would not have the current situation of banks "too big to fail" that get government bailouts as if by divine right.

"Admitted" Prior Art

I used to get (and still do) rejections based upon the Examiner's contention that there has been an admission of prior art in the application. I have become quite successful at combatting this type of rejection, and I have given several presentations on the subject. Below please find a copy of my slides.

Robert E. Goozner - March 27, 2009

Effective Amendment Writing

I recently gave a lecture on effective amendment writing. Below please find a copy of my slides.

This is the first time I am putting slides up on the web. I have quite a backlog of old presentations, which I will be putting up as time goes on.

Robert E. Goozner - March 26, 2009

Google Patents

    If you're researching patents, a very good resource is Google's patent search engine. The results include a PDF file of the patent and a link to the patent at the USPTO.

    The down side of using Google's patent search engine is their failure to keep it up to date. Currently, you can search patents only up to January 1, 2008. Patents issued after this date are not on the database. So currently, Google is out of date by over 1 quarter. This is a great disadvantage for people researching fast moving fields like nanotechnology, alternative energy, etc.

    Google's search engine also does not include patent publications.

    As a result, Google's patent search engine could use some more effort to keep it up to date and to include publications.

    Robert E. Goozner - April 17, 2008

Subject Matter of a Patent

The Patent Act (35 USC 101) defines the subject matter of a patent as: “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.”

The word “process” is defined by the Patent Act as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the Patent Act is clear on its face. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.

However, there are more things that are patentable. These can include business methods, genetically engineered organisms, computer programs and algorithms and biotechnology (but not the “bare” gene sequences themselves).

There are also separate types of patents drawn specifically to designs and plants.

A design patent pertains to the visual ornamental characteristics embodied in, or applied to, an article of manufacture. A design is manifested in appearance, and the subject matter of a design patent may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design patent usually only has pictures and a single claim.

A plant patent is granted to an inventor who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber (such as a potato) or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of filing the application, protects the inventor's right to exclude others from asexually reproducing, selling, or using the plant so reproduced.

There are limits to the subject matter that can be patented. It has been held that the laws of nature, physical phenomena, and abstract ideas are not patentable subject matter.

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted for the new machine, manufacture, etc., and not for the idea or suggestion of the new machine. An adequate complete description of the actual machine or other subject matter for which a patent is sought is necessary.

Robert E. Goozner - February 14, 2008

What Is a Patent?

If you are considering getting a patent, the first question you should consider is: What is a patent?

The United States Patent and Trademark Office offers the following definition of a patent:

A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the US, US territories, and US possessions.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

You see, a patent is never referred to as a monopoly, except when a patent case is before the Supreme Court.

The property rights conferred by the patent are limited. For example, the patent rights are still restricted by antitrust laws. For example, if you patent a machine that processes salt, and you tie purchase of the machine to a requirement to buy the raw material salt from you, antitrust considerations may prevent this.

A patent only lasts for 20 years from filing, and you may also fall afoul of antitrust laws if you try to license so as to contractually extend the 20 year term.

Also, a patent does not imply any other type of government permit, such as by the FDA for a pharmaceutical.

One the other hand, the property rights conferred by a patent are tangible and similar to other property rights. Patents can be bought or sold, or be subject to exclusive or non-exclusive licenses. Patents can be used as collateral and surety.

A United States patent is valid only in the United States and offers no foreign protection. For that, you have to patent in foreign countries.

Robert E. Goozner - January 24, 2008

A Digression on Law

Since patents arise from an intersection of law and technology, it may be useful to explain the types of law and how they relate to patents.

There are four types of Federal law in the United States. They are (in general order of power) 1) constitutional law, 2) statutory law, 3 administrative law, and 4) common law.

Constitutional law is based on The United States Constitution. Regarding patents, trademarks, and copyrights, Section 8 of the United States Constitution states: “The Congress shall have Power 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.”

Statutory law is based upon laws passed by Congress. The law concerning patents (sometimes referred to as the "Patent Act") can be found in Title 35 of the United States Code.

Once the law is passed, the administrative agency (The United States Patent and Trademark Office) administers the law by setting rules. The rules concerning patents are found in Title 37 of the Code of Federal Regulations.

Finally, the patent laws, patent rules and the constitution are considered by the Federal courts during litigation. The resulting decisions are referred to a common law. One fairly recent important case was decided by the United States Supreme Court in KSR v. Teleflex.

Of course, most people who aren’t patent lawyers will find this overwhelming. However, as we proceed to cover the process of filing for and obtaining a patent, it is informative to know that these four types of laws exist and how they interact to form the patent process.

Robert E. Goozner - January 17, 2008

The Laboratory Notebook

As a technical person, it is very important that you keep a laboratory notebook. The laboratory notebook develops and records your work.

From a patent perspective, the United States uses a first to invent system that utilizes two factors: 1) date of conception, and 2) reduction to practice. Also, diligence in reduction to practice must be shown. A laboratory notebook is necessary to demonstrate these factors.

If you are going the trade secret route, it is also necessary to document your trade secret technology. So the laboratory notebook is still necessary.

I have seen many unfortunate occurrences that have arisen from a failure to keep an adequate laboratory notebook. For example, writing something down on a piece of paper and stuffing it into a file cabinet is insufficient to demonstrate a date of invention to the USPTO. Neither are overheads nor PowerPoint presentations.

The laboratory notebook should be a permanent book without loose leaf or tear out pages. A marble composition book with sewn in pages should be sufficient. Laboratory notebooks are available commercially, for example, at Thomas Scientific.

When writing the laboratory notebook, the following guidelines should be followed:

It should be kept in ink.

All pages should be consecutively numbered.

Each page should be signed and dated. Important events should be witnessed.

No erasures, cross through mistakes such that they are still visible (you may want that information later).

Blank areas should be crossed through.

Be coherent and legible.

Remember, what you put in is what you get out.

For a more detailed description of the laboratory notebook and how it is kept, see these discussions from Swarthmore or from Rod Beavon.

The American Chemical Society has published a very good guide to writing the laboratory notebook called Writing The Laboratory Notebook.

Robert E. Goozner - January 14, 2008

ASSIGNMENT

    I have worked up a relatively simple sample assignment, which can be viewed by clicking here.

    Despite all the legalese, it only contains 6 components: 1) conveying parties, 2) identification of property, 3) receiving party, 4) consideration, 5) conveying language, and 6) signature lines.

    This assigment transfers all of the property rights of the inventors (Joyce et al.) to Big Corporation.

  Robert E. Goozner - January 9, 2008

WHO OWNS A PATENT?

    When a patent application is filed, the inventors own the patent absent any assignment of their rights. All the inventors listed in the patent have equal "100%" rights in what is legally called a joint tenancy.

    A joint tenancy gives each inventor full control over the property rights of a patent. For example, each inventor can independently license the patent without conferring with the other inventors.

    The comedic possibilities of joint tenancy were explored in a movie called The Goodbye Girl starring Marsha Mason and Richard Dreyfuss, in which Mason's former boyfriend and joint tenant owner of their apartment rents the apartment to Richard Dreyfuss without bothering to inform Marsha Mason.

However, having the inventors independently assigning rights in a patent may have less than comedic results.

    In most patent applications the inventors assign the rights to a third party, usually their employer. In fact, most R&D and engineering people sign an agreement to assign all rights. This agreement is usually found in the stack of papers a new employee is given to sign on the first day of work. Employment agreements are veering into a different topic, which will be covered separately. But please note that R&D people are supposed to be producing intellectual property as part of their job, and the obligation to assign may be implicit in their job descriptions.

    I looked through my notes for a good example of an assignment agreement, but they were so larded with legalese as to be, at least to a layman, somewhat confusing. In short, an assignment is basically a fairly simple contract.

    An assignment will have the following elements:

    1.    An identification of each conveying party, i.e., each inventor.

    2.    An identification of the intellectual property being conveyed, e.g., application no., patent no., attorney serial no. or other identifying number, title of the application, etc..

    3.    An identification of the receiving party.

    4.     Consideration. Non-legal people frequently refer to "consideration" as "money." The consideration is usually a nominal amount such as $10.00.

    5.    Conveying language. This is language usually transferring all of the property rights to the receiving party.

    6. A signing line for signing and dating by each inventor.

Once signed, the assignment is recorded in the USPTO by attaching a form which can be found here.

Robert E. Goozner - January 4, 2008

PROVISIONAL PATENT APPLICATIONS

A provisional patent application is a relatively inexpensive way to buy time when considering the options of patent versus trade secret. A provisional patent also stakes out your intellectual property rights at an earlier date, i.e., has an effect of adding a year. A provisional patent will also give you a right to claim “Patent Pending” and stamp it on the side of your product or claim "Patent Pending" in your proposal.

A provisional patent application will provide a priority date for the invention. Once the provisional patent application is filed, you will have one year in which to file a patent application claiming priority of the provisional patent application or, alternately, to convert the provisional application to a conventional “utility” application.

On the other hand, during the year that the provisional application is pending, you might decide to keep the disclosure as a trade secret. Then you can allow the provisional patent application to expire and, when expired, there is no publication or public access to the provisional patent that may endanger your trade secret.

Another advantage to a provisional patent application is that it stakes a claim to your technology, i.e., demonstrates what intellectual property you actually possess, so that an outside party will be more willing to consider your technology without “poisoning the well.” Poisoning the well occurs when a company is approached by an outside party with an idea that parallels aspects of R&D that is already occurring inside the company. This “poisoning the well” occurs such that the outside party then stakes a claim to the company’s internal R&D. As a result, many companies will not entertain any outside ideas from fear of losing their own intellectual property.

However, with a provisional patent (as with a utility patent) the outside party has clearly delineated the scope of their idea, and the company will be more likely to listen.

The elements of a provisional patent are relatively simple, they are:

1. A specification (written description), and

2. A drawing (when the subject matter is amenable to a drawing).

The provisional patent is to be filed in the name of the inventor(s).

It is always advisable to include at least one claim in a provisional patent because some foreign countries may not give the provisional patent application full weight if there are no claims. At the least, there should be an omnibus claim such as: “The invention as shown and described.”

The provisional patent is filed in the United States Patent and Trademark Office (USPTO) by attaching a cover sheet. See here.

The fees to the USPTO are relatively inexpensive, $210 for a large entity or $105 for a small entity (including single inventors and universities).

There are a number of situations when you should consider a provisional patent application:

1. When submitting a research paper.

2. When submitting an idea or research proposal to an outside party.

3. When you desire more time to decide whether to go patent or trade secret route.

4. When you want more time to let the research mature.

5. When you have a lesser invention that you are not sure is worth patenting.

6. You don’t have the money (which could run up to $10,000 or more) to file a utility patent.

One advantage of provisional patent applications is that several applications can be combined into one utility patent application. When the first provisional application is filed a one year clock starts to toll. Within that year supplemental provisional applications can be filed as the R&D develops. At the end of the year, priority of all the provisional applications can be claimed in the utility patent.

Also, it is relatively simple to file a provisional patent when submitting a paper or a research proposal, such as an SBIR proposal. All you need to do is to attach the filled out form to the papers and file it with the appropriate fee. This can even be done without an attorney or with minimal input from the attorney.

However, what you put into the provisional patent is what you get out.

Regarding Trade secrets, an interesting case of trade secret leakage as a result of an employee layoff occurred to Daystar Solar. See Here.

Robert E. Goozner - January 2, 2008

December 28, 2007

Patents and Trade Secrets (continued)

When resorting to trade secrets there is always the danger of losing them, particularly through an employee revealing them.

An interesting example of this in the solar energy world recently happened with a disgruntled former employee of DayStar, which can be read here.

Another option to consider when mulling the patent versus trade secret option is to file a provisional patent application, which will give you a year to let the technology mature. I will be writing more about provisional patent applications shortly.

Robert E. Goozner - December 28, 2007

November 16, 2007

Patent or Trade Secret? - Part 3

The best approach to protecting your intellectual property is to have a mixture of both patents and trade secrets. In this case, you still have your patent protection if all your trade secrets become compromised. On the other hand, if your patents expire or are declared invalid in litigation, you still have trade secret protection.

This approached is espoused by one of the main proponents of trade secrets, Professor Karl F. Jorda of Franklin Pierce Law center.

Professor Jorda has developed a system for evaluating a technology to determine if should be maintained as a trade secret or if a patent should be applied for, in his chapter in the Handbook of Best Practices. Professor Jorda evaluates a range of criteria to which points are assigned. In this system, a low score indicates patent and a high score indicates a trade secret. Although this is a chapter in a book more appropriate to biological science, I believe that Professor Jorda’s system can be directly applied to solar energy and semiconductor inventions.

Lastly, what happens if you are practicing a trade secret and someone patents it, which is a hazard of trade secrets? Will the patent holder be able to stop you from using your own (former) trade secret? Professor Jorda thinks not. See Karl. F. Jorda, Journal of the Patent Office Society, 61, 10, p. 593 (1979). (not available on the internet, but can be found in any good law library).

Robert E. Goozner - November 16, 2007

Patent or Trade Secret? - Part 2

Patents and trade secrets each have pros and cons that should be evaluated when considering different options for protecting your technology.

The legal protection provided by patents is based in the United States Constitution and is codified in United States law in Title 35 of the United States Code in accordance with rules set forth in Title 37 of the Code of Federal Regulations. Reading these documents will give you a headache, but they provide a strong basis for patent protection.

On the other hand, trade secret protection arises from common law, and each state has its own trade secret statute. Trade secrets are generally governed by the Uniform Trade Secrets Act, which has been adopted by 45 states.

More pros and cons of patents and trade secrets are as follows:

A trade secret has the potential to be kept forever. A patent only lasts for 20 years from the date of filing the patent.

A trade secret can be “reverse engineered” by a competitor. A patent provides protection from reverse engineering. However, a patent can be “designed around.”

Precautions must be taken to keep a trade secret from being disclosed to the public. A patent is already disclosed to the public, and no secrecy precautions are necessary.

A patent is more expensive to obtain and maintain. More often than not, obtaining a patent will require attorney fees in the range of $15,000-$20,000 or greater.

A patent is easier to license. That is, many companies are afraid to look at trade secrets or “ideas” for fear that some of the technology might match some of the company’s current research. This is referred to as “poisoning the well.” To evaluate the trade secret the entity being offered the technology must build a “firewall” to protect their own R&D efforts. Also, there will also probably be some type of initial evaluation agreement before the trade secret is looked at.

On the other hand, there is no controversy over who owns a patent (or a patent application). If you have a patent, it is much easier to approach a potential licensee.

Triple damages are available for willful infringement of a patent, it is written into the statute. There is no statutory basis for triple damages for misappropriation of a trade secret.

These are some of the factors that should be considered when choosing between a patent and a trade secret. The evaluation can be performed using weighting factors, which will be discussed later.

Robert E. Goozner - November 9, 2007

Patent or Trade Secret? - Part 1

Protection of your technical intellectual property assets points to two possible routes: the trade secret route or the patent route. Each route has its advantages and disadvantages. But first, let's define what these are.
A patent is a legal right to exclude others from making or using your technology. A patent is never referred to as a monopoly except when it is being litigated before the United States Supreme Court; then a patent is invariably referred to as a monopoly.
The United States Patent and Trademark Office gives a long winded definition of a patent:

A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under certain circumstances, patent term extensions or adjustments may be available.

A trade secret is a formula, practice, process, design, instrument, pattern, or compilation of information used by a business to obtain an advantage over competitors or customers. In some jurisdictions, such secrets are referred to as "confidential information". a trade secret is some sort of information that: 1) is not generally known to the relevant portion of the public, 2) confers some sort of economic benefit on its holder (where this benefit must derive specifically from its not being generally known, not just from the value of the information itself), and 3) is the subject of reasonable efforts to maintain its secrecy.
Patents and trade secrets have different strengths and weaknesses, which will be discussed later. However, the first step in deciding between the two is a subject matter analysis - some subject matter cannot be patented and other subject matter is not tenable as a trade secret because it cannot be kept secret.
Examples of things that cannot be patented (but make very good trade secrets) include:

customer lists,
supplier lists,
financial information,
market analysis reports,
business plans, etc.

On the other hand, many things cannot be maintained by a trade secret (and should be patented) by being in public use.
An example of a non-tenable trade secret would be an electrode pattern of a photovoltaic cell. Since the photovoltaic cell is on public display, anyone can see the electrode pattern. So if the electrode pattern is novel and valuable, the only way to protect your intellectual property would be to apply for a patent before the produce hits the market or is in public use.
Another example would be the crystal structure of the PV material of a solar cell, even if it is microscopic and is not visible to the human eye. A competitor can put your product under a microscope (reverse engineering goes on all the time) and discover the advantageous crystal structure. As a result, the publicly used technology should be patented.
Accordingly, the first step is a subject matter analysis to make sure that one of the two choices is not excluded by subject matter.
However, if both routes (patent or trade secret) are possible, the strengths and weakness of both routes as applied to the specific technology should be evaluated.
This will be discussed in the next part.
Robert E. Goozner - November 4, 2007