PHOSITA® ::: an intellectual property law blog!

May 11, 2004

SO YOU RECEIVED A PATENT - NOW WHERE IS THE DOUGH?

SO YOU RECEIVED A PATENT - NOW WHAT?

So, you received a patent and you can't wait for the royalty checks to roll in.  What you say?  You aren't receiving the checks in the mail?  Your patent attorney bill is looming?  What is an inventor to do?

Well, a small article in Fortune Small Business offers some suggestions:

• Create a working model -- doesn't have to be pretty.
  
• Research companies in the field of your invention -- target those companies that introduce new products.
  
• Target the right people within the companies -- find the decision maker and approach them directly.  Alternatively, approaching a salesperson could result in a win/win -- you get your product noticed and the salesperson looks "good" within the company.
  
• Negotiate in good faith and with reasonable expectations.

The last point is the one that most inventors have the most trouble with -- having a reasonable expectation.  Royalty rates are usually in the realm of 3-8% for a mechanical device and upfront payments are dependent upon the markets and the amount of risk involved.  Also, don't request a new Cadillac (actually happened) -- it will usually kill the deal. 

The issuance of the patent is only the beginning.  Now the fun begins.

Posted by Douglas Sorocco at 10:13 PM.
Permalink: SO YOU RECEIVED A PATENT - NOW WHERE IS THE DOUGH?

May 08, 2004

BABY GENDER SELECTION KIT PATENTED?

From CBS: A kit sold on the Internet by a company called GenSelect is reportedly making a difference in whether you paint the nursery pink or blue. GenSelect claims it can turn picking the sex of your baby from a crapshoot into a slam-dunk. "We've tallied up a 96 percent success rate," says Jill Sweazy, GenSelect's co-founder. 

Of course, GenSelect is being likened to PT Barnum: there is a sucker born every minute.  In response to such doubts, GenSelect's Sweazy points out that "Opinion's opinion. You can find someone contrary to antibiotics. We were just granted our United States patent, and they don't grant patents to wives' tales."  Well heck -- if it has a patent, it must work. Right? 

Not really -- it is a common misconception that patents are only issued to inventions that actually work.  If this was true, every ailment known to man would be cured (cancer, AIDS, hair loss).  In order to patentable, a disclosed invention only has to be novel (never done before), nonobvious, and useful.  If a patentee provides a use that is substantial and credible, the patent office must defer to the applicant.  Only in rare cases will patent applications be rejected by the Patent Office on the basis of failing to provide a substantial and credible utiltiy (perpetual motion machines, reincarnation, etc.)

So it isn't surprising that GenSeect may have received a patent on a gender selection kit.  Far more interesting, however, is what did GenSelect actually patent?  According to U.S. Patent No. 6,610,331 (the only patent listing the Sweazy's as inventors in this field) the Sweazy's claim:

1. A nutriceutical which improves the natural fertility process comprising:

(a) L-Arginine 50-500 mg;.
(b) L-Cysteine 10-100 mg;
(c) Selenium 10-400 mcg;
(d) Vitamin C 50-2000 mg;
(e) Vitamin E 100 iU-1000 iU;
(f) Zinc 10-100 mg;
(g) Astragalus;
(h) Pycnogenol 10-100 mg;
(i) Vitamin B-6 10-200 mg;
(j) Para-aminobenzoic acid (PABA) 50-300 mg;
(k) Vitamin A 1000-10,000 iU;
(l) Folic Acid 400-1000 mcg; and
(m) at least one phytoestrogen, wherein the at least one phytoestrogen is an isoflavone, coumestan, lignin, or any combination thereof.

So the '331 patent covers a "nutriceutical" (actually it is a neutraceutical) of several types of vitamins etc. The patented claims don't actually cover a gender selection kit -- more like a soup of various vitamins.  Is it scam?  Well, you have a 50/50 chance of the "gender kit" being right at any point in time.

Moral of the story: just because it says "patented" it isn't guaranteed to work and before assuming that the patent actually covers the product or "method" being sold, check out the actually claims first. Caveat emptor!

Posted by Douglas Sorocco at 01:20 PM.
Permalink: BABY GENDER SELECTION KIT PATENTED?
| Comments (2)

May 05, 2004

DEFENSIVE PATENTING AS BEST OFFENSE

The Chubb Group of Insurance Companies has published a new Intellectual Property, Privacy and Communications Risk Management Handbook, "designed to assist companies of any size in evaluating and managing their risk, focusing on copyrighted content, trademarks, trade secrets, patents, privacy and defamation."

According to the Chubb press release announcing the book:

"Intellectual property is no longer just a concern for the large, multinational companies," says Reed. "Today, any company can become the accused in an intellectual property lawsuit. Small- to mid-size firms that find themselves embroiled in lawsuits with larger, more financially strong adversaries may be especially disadvantaged. The best defense is a good offense. That?s why establishing a strong risk management program is critical for all companies in today?s market. Chubb?s new handbook can help management better understand the strategic implications of intellectual property and privacy to the overall business enterprise."

Among the steps management and risk managers can take:

• Identify the dynamics of the company's particular market. What are the litigation trends in the industry and what is the potential impact on the company?
  
• Determine the company?s risk quotient. How much legal, regulatory and operational risk can the company manage?
  
• Mitigate the risk. Look for better ways to recognize and manage the company?s intellectual property exposures. Know the strengths and weaknesses of the competition's intellectual property assets. Educate and train employees, vendors and contractors on proper procedures for handling intellectual property.
  
• Check the company's insurance protection. Don?t assume that its insurance program automatically protects against intellectual property, privacy and communications risk. Insurance may be scattered among errors & omissions, general liability and directors & officers policies and may only offer limited protection. 

In order to obtain a copy of the handbook, you must contact one of Chubb's agents or brokers through their Find An Agent site.

With respect to the "best defense is good offense" point -- this is eerily similar to a recent article in Eweek describing Microsoft's recent patenting activities relating to its next OS codenamed "Longhorn".  According to the writer, Microsft's elevated patent activities for Longhorn indicate a desire to make interoperability with open source platforms a non-starter.

But is Microsoft's strategy so Machiavellian?  According to the Chris Pratley, a Microsoft employee who blogs here, Microsoft's new patenting stragetgy is a necessary defensive move:

At Microsoft, we used to pay little attention to patents - we would just make new things, and that would be it. Then we started getting worried - other big competitors (much bigger than we were at the time) had been patenting their inventions for some years, and it made us vulnerable. One of these big companies could dig through their patent portfolio, find something close to what we had done, then sue us, and we would have to go through an elaborate defense and possibly lose. So Microsoft did what most big companies do, which is start to build what is called a "defensive" patent portfolio. So if a big company tried to sue us, we could find something in our portfolio they were afoul of, and counter-sue. In the cold war days, this strategy was called "mutual assured destruction", and since it was intolerable for all parties to engage, it resulted in a state called "detente", or "standoff". This is what you see today for the most part in lots of industries.  [thanks to Patently Obvious for the pointer & link]

Posted by Douglas Sorocco at 01:06 PM.
Permalink: DEFENSIVE PATENTING AS BEST OFFENSE

May 04, 2004

E-DATA SUES CORBIS AND GETTY OVER FREENY PATENT INFRINGEMENT

E-Data, the owner of the infamous "Freeny Patent" (U.S. Patent No. 4,528,643), announced that it is seeking damages from Getty Images and Corbis in the United States District Court, Western District of Texas (Docket: A 04 CA 230LY), for having infringed upon "the Freeny patent," prior to its U.S. expiration in January 2003. This action is in addition to the company's pending litigation against Getty Images and Corbis in both the Netherlands (Docket: KG 04/88 and KG 04/140) and the United Kingdom (Docket: Pat04007 and Pat04008) for infringing upon its European patent EP 0 195 098 B-1. PHOSITA has previously posted about the Freeny Patent European saga against Corbis & Getty here.

According to Bert Brodsky, chairman of E-Data Corporation:

"By enabling consumers to download photographs over the Internet, Getty Images and Corbis have egregiously violated our patents. Based on our favorable decision by the Court of Appeals in the U.S., we are confident in the scope of our patents. Moreover, given our encouraging track record in Europe, we have renewed and expanded our litigation, in both the United States and globally. Accordingly, we are working with two of the leading intellectual property law firms in North America and Europe, who are committed to ensuring that our patents are fully protected and enforced."

Posted by Douglas Sorocco at 05:58 PM.
Permalink: E-DATA SUES CORBIS AND GETTY OVER FREENY PATENT INFRINGEMENT

May 03, 2004

CAN-SPAM LEGAL WEBSITE LAUNCHED

CAN-SPAM LAWSUIT CENTRAL

Great resource for Internet law: Interested in learning the ins-and-outs of the CAN-SPAM law of 2003?  Gigalaw.com has started a website devoted to the legislation, its implementation and interpretation. 

5/4/04 Update:  The folks over at Church of the Customer weblog have posted an amusing take on one groups dismay with the CAN-SPAM act:  entitled "A special seat in customer hell for: realtors" which points out that realtors are actually spamming the FTC about the CAN-SPAM act.  CoC's wickedly inspired conclusions:

In effect, the realtors who spammed this form letter to the FTC are saying:

* We must purchase email lists and spam people because it's too hard to build up our own in-house lists
* We have to ask permission to send email? No way, we're realtors -- we don't ask for permission!
* We can't be 100% sure that unsubscribers never want to hear from us again, so we must keep bothering them indefinitely until they threaten us with lawsuits or bodily harm
* Suppression lists could fall into the hands of terrorists 

The CAN-SPAM act should be a lot of fun in the near future.  Who's next: A special seat in hell for: ? ....  

CoC better be careful, though, as the term Realtor(R) is a registered trademark of the National Association of Realtors who aggressively pursues individuals and organizations that make infringing uses of their mark.  Indeed, the Trademark Trial and Appeals Board recently held that the mark "REALTOR" was not generic and was entitled to trademark protection.

 

Posted by Douglas Sorocco at 02:26 PM.
Permalink: CAN-SPAM LEGAL WEBSITE LAUNCHED

PATENT OFFICE REVISED FEE CHART

PTO FEE INCREASE SUMMARY

Since it appears that the PTO funding and anti-fee diversion bill (H.R. 1561) is likely to pass, Patently Obvious put together a small chart explaining the changes in Patent Office fees.

Posted by Douglas Sorocco at 02:08 PM.
Permalink: PATENT OFFICE REVISED FEE CHART

May 01, 2004

CONGRESS AS ARBITERS OF COPYRIGHT DISPUTES?

In 2002 Steven Spielberg, Martin Scorsese, Steven Soderbergh and other members of the Direcors Guild of American filed suit in Colorado's 10th District Court against the Utah based ClearPlay on the grounds of copyright infringement.  The basis of the suit in 2002 was ClearPlay's filtering software that allowed consumers to program their DVD players to skip violence, swearing, nudity and other potentially objectionable content in DVD films being played.  The issues in the suit are even more pressing now since ClearPlay has announced that they will begin selling prepackaged DVD players that incorporate their software at Walmart.  Accoding to oneClearPlay executve:

"I think the American public is concerned and is looking for a solution, '' said Bill Aho, chief executive officer of ClearPlay Inc.

One Congresmen has even gotten in on the dispute, House Judiciary Committee Chairman F. James Sensenbrenner Jr. has urged the committee's copyright panel to look into the dispute, with a mid-May target for a hearing.

From the Big News Network:

Chairman Sensenbrenner would prefer the parties to reach agreement to thereby eliminate the need for Congress to act on this issue, but nonetheless the chairman is prepared to have a hearing on it and is obviously closely monitoring the situation, he said.

If the company and the directors can't settle their differences, then Sensenbrenner plans to introduce legislation that, if passed, would end the dispute, said The Hollywood Reporter.

Introduce legislation?  Hmmm.... is it really needed at this juncture?  The case is still pending before the District Court and copyright infringement disputes are typically handled by the Courts and not Congress -- is it wise to jump in and introduce legislation to correct a problem that may not even be a problem?  The basis for the copyright infringement claims is that the process of stripping out the "offensive matter" creates a derivative work and/or the persons/software that strips out the offensive material is contributing to the infringement of a copyright.  The counter argument is that the "re-editing" is fair use of the material. 

Berkeley held an interesting roundtable discussion on this issue in 2003 and an audio transcript is available.  This case raises some interesting questions concerning the right of individuals to refrain from being "exposed" to a director's offensive material. 
  

Posted by Douglas Sorocco at 12:56 PM.
Permalink: CONGRESS AS ARBITERS OF COPYRIGHT DISPUTES?