Inventors are often too quick to want to apply for a patent. As a registered patent agent I can profit from their haste. But I feel inventors need to have some understanding of the real value of their potential patent claims as they are often not nearly as strong as people they are perceived. Inventors need to understand the strengths of claims to decide if a patent is even worth investing in. If inventors want to stop competition, but can’t get a strong patent, then maybe they should concentrating on developing a market presence before completion can enter the market. My goal for this newsletter is to give you insight into the written word of the patent claim so you can better analyze the information you receive from your patent agent or attorney.When Mr. Coffee came out, the first drip coffee maker, it had four or five patents. Yet despite those patents there were quickly four or five competitors on the market. How is this possible? Well for the most part it revolves around the concept of the doctrine of equivalents. This principle states that a patent is being infringed upon if a patentee can show that that there are no substantial differences between the potentially infringing device and the patented device. But there is a catch, the doctrine of equivalents through court rulings has been determined not to be for the invention itself, but for the elements of the invention. The elements are the various parts of the invention, for example for a knife, the elements might be the handle, the type of blade and the serrated edge. Now, understanding the application of doctrine of equivalents and its application to elements is difficult, and lawsuits involving them have an uncertain outcome and can be expensive to defend or prosecute. But to help you understand the wording of a patent claim I’ll take a look at Patent number 4,969,580. I’ve listed the patent’s major claim below with my comments in italics and what I feel are the major elements in bold type.What is claimed is:A hanger support apparatus for use in a shower with a bottle having a neck (neck is a vague element term which is good in a patent) at one end thereof, and one end having an end wall (end wall is also a vague element term) that that extends laterally at the side wide of such bottle (so far this is just a hanging device for a shampoo bottle), comprising a frame said hanger said frame being elongated on along a longitudinal axis and having a hook (hook is much more specific and specific terms are warning signs in a patent claim. Anything other than a hook would not infringe on the patent as a hook is an element in this patent) means for supporting the frame on end thereof and a support plate, (a support plate up to this point is a vague element term, so far so good) said support plate extending generally at right angles to the longitudinal axis of the frame (this language in the claim for the support plate element is very specific and it leaves plenty of opportunities for others to design around the patent by simply not having a horizontal support plate) the means for retaining the bottle on said frame comprising a strap (the term strap itself is not specific into the type of strap, it could be any type of strap, but calling out a strap rather than a more generic term like holding device is specific and limiting) that surrounds the frame with a method of adjustably securing said strap comprising a loop at one end (this now defines the strap very specifically and should be a warning flag for inventors as now competitors only need a strap that is not just like the one described) said strap having an aperture there through that is selected dimension measure in direction along the length of such strap and the opposite end portion if said strap having a plurality of individual raised ribs … (this patent describes the strap in such detail that I believe designing around this patent will relatively easy.)This is a patent for a product that holds a shampoo bottle. Now go into your closet and pull out a hanger. Push the sides together so you have a hanger hook on top and the rest of the hanger hanging straight down. Put your hand on the bottom of the hanger and bend it straight up. Now you have a shampoo bottle holder.Some general guidelines for looking at a patent claim are: 1) long individual patent claims are generally not desirable as the patent claim tends to be more and more specific as they get longer; 2) vague terms such as holding device are much better than more specific terms such as strap; and 3) the more clearly you define each element the easier your patent will be to design around.The question is then, why won’t attorneys avoid limiting statements in a patent. Your attorney would be happy to do that. The problem is that the patent office tries to limit the scope of patents and forces you and your attorney to be more specific in your claims. This is especially true in product areas where there has been a long list of patents, the patent office will try to approve only patents that have a great deal of specificity in them. If you put in a patent claim that is too broad in the patent office’s eyes, the patent office won’t approve it and then you either have to drop it or have your attorney narrow the claims, all of which costs money.As I said earlier in the article I am a patent agent and so obviously I believe strongly in patents and they are a valuable tool for inventors. But they are also expensive. And you don’t need a patent to introduce your idea. So be cautious in what you spend on a patent. Make sure you are getting a patent that will give you a significant market advantage.
A common question (or variation)I get asked is “I have an idea that is based on that is based on a product that was patented at one point, how can I tell if the product is still patented so I don’t infringe?”Start-ups ask this question to 1) try to limit their liability even if they are modifying a product, 2) if the start-up is modifying a product they may have to get a license for the assignee of the patent to make their product, and it would be a much cheaper process without having to pay the license fees.To answer this question, it is important to take a step back and understand the “life cycle” of a patent application. Upon filing an application, a patent is given an application number, these generally are in the form of XX/XXX,XXX. 18 months after the application is filed, the application will publish and be given a publication number in the form of XXXX/XXX,XXXX. Depending on what technology the invention is around 2-3 years after filing the application, the USPTO will look at the application and if the claimed invention is different than what is known a patent will be granted with a patent number in the form of USXXX,XXXX. If a patent has not granted for an invention, that start-up does not have any intellectual property which the can sue under.Applications that are granted as patents may give the holder protection for 20 years from the date the application was filed. Accordingly, if a start-up filed an application on Jan 1, 2000 they can have intellectual property protection up until Jan 1, 2020, when the patent will expire. However, patents and applications themselves can expire or be abandoned before their full term expires.Applications can become abandoned for various reasons. Typically, before an application becomes a granted patent, there will be several office actions (correspondences between the USPTO and an attorney). If the startup or attorney fails to respond to an office action, the application will become abandoned. Upon the patent office determining that a patent should be granted on a patent application, an “issue fee” must be paid. This issue fee is pretty steep $1,770 for large companies, $885 for small entities. Accordingly, after a 3-5 year period from initially filing the application, a startup may determine that the invention disclosed in the application is no longer profitable or may just not want to pay the fee. The application at this point will become abandoned without ever being granted.If the start-up pays the issue fee the application is granted. However, a patent term MAY be 20 years. Maintenance fees must be paid for the patent at the 3.5 year mark after the patent is granted ($1,150), 7.5 year mark after the patent is granted ($2,900) and 11.5 year mark after the patent is granted ($4,810). As a note, these fees are reduced in half for small entities. Essentially, if a patent is not profitable at these marks, a start-up may decide not to pay the maintenance fee and let the patent go abandoned before the 20 year term expires.So essentially the way to determine if a patent has expired is1) Determine if the patent was filed, or claims priority to a patent filed prior to 20 years before the date.2) Determine if the maintenance fees have been paid.A good way to find out the filing date for a patent is to search Google.com/patents, find the patent, and look on the cover page of the patent.To determine if the maintenance fees for a patent have been paid, inventors should go to the public pair portal at ( http://portal.uspto.gov/external/portal/pair/ ), type in the “captcha code.” Then, select the “patent number” field and type in the patent number. This will bring you to the USPTO’s transaction history of a patent (you can also look at this for other info about pending patent applications as well, and responses to the USPTO for the patents, so you can use this to look at Apple’s newest patent applications). In response to selecting the “transaction history” tab, you will be brought up to the history of the patent within the USPTO. If the maintenance fees have been paid then this will show up on the report, if they havnt been paid there should be an entry stating ‘Expire Patent” which indicates that the patent has expired.