this page:
About Patent Hawk
About Patents
History
Prosecution
Monetizing a Patent
Validity
Patent Utility & Value
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The Patent
Prospector
(patent weblog)
A patent grants only the ability to assert denial to others. - Patent Hawk
About Patent Hawk
Patent Hawk is a full-service patent
technical consultancy. We do it all: prior art search, prosecution,
valuation, and litigation technical/legal tasks: claim construction,
infringement and invalidity analyses (prior art and infringement claim
charts). Our client base is the full spectrum: inventors, patent
holders, and accused infringers. Our mainstay service is prior art
(invalidity) search for law firms representing defendants.
Platinum Patents, our sister service,
helps inventors get patents (prosecution). While not a law firm, we act
with the mores of a law firm.
About Patents
Patents are a
form of intellectual property. Copyrights and trademarks are other
forms of intellectual property. Copyrights protect original works of
authorship. Trademarks (and service marks) protect against misuse of a
name and/or symbol. Patents protect innovation.
There is a common misperception about patents - that a patent grants its
holder the right to practice an invention. Actually, a patent is a
negative grant: a right to prevent others from
practicing a claimed invention. In practice, since the Supreme Court
eBay decision, injunctions have become problematic. In most cases,
monetary compensation is awarded.
The
commonly known
patent type is a utility patent. A utility
patent is granted for a new and useful innovation that has practical
application. There are also design patents, for novel product designs.
A
utility patent has three main parts: drawings, a disclosure, and claims.
The drawings and disclosure together comprise a specification. Drawings depict the innovation for which claims
are being made. A
patent claim is a statement of a novel and useful developed process, apparatus,
machine, or
composition of matter: "anything under the sun made by man..." the
Supreme Court has
ruled. The value of a patent is in its granted claims.
A
disclosure outlines a problem that has previously defied solution, and
then explains the solution. Specifically, a disclosure describes the
drawings. Every major aspect of innovation in a patent application is
supposed to be illustrated. The text accompanies the drawings as
explanation.
The modern concept of patents dates to 1421, Florence, Italy, when the
city-state granted the first recorded patent to Filippo Brunelleschi,
for the design and use of a ship, the Badalone ("seagoing monster"). The
Badalone was intended to ferry supplies up the Arno river to the city
for the building of the Florentine cathedral dome, which Brunelleschi
was the designer of. Alas, the Badalone sank during delivery of a load
of white marble intended for use in constructing the dome.
The Venetian Senate passed the first
patent law in 1474, granting limited duration monopoly for original
devices. This law embodied the principles of patent protection as we
know them today.
In England in 1449,
King Henry IV granted that country's first patent for stained glass
manufacturing. In England during this time, a patent was a
government-granted monopoly, so could be as much a right to manufacture
or trade as well as the right to deny others to do so. Toward the end of
the 16th century, the Crown's corrupt abuse of granting monopolies was
causal in the evolution of the rule of law and judicial power at the
expense of the monarch, and set the country on the path to eventual
civil war.
In the United States, the governmental right to grant patents was
enshrined in the constitution in Article 1. The first U.S. patent act was in 1790.
Throughout U.S. history, the rigor of patent examination has varied
widely, from literally granting every patent applied for, to very strict
examination. Presently, examination is quite rigorous. Patents are more
difficult to obtain than just a few years ago.
Read about early U.S. patent history.
A registered agent, on behalf of an inventor, files an application for a claimed invention with the patent
office.
An inventor may file a patent pro se (solo), but getting a patent
without extensive experience is daunting, and ill-advised. A patent
filer becomes a patent applicant.
The process of getting a patent is known as prosecution. The
patent
prosecution
process begins by filing an application with the Patent Office,
which includes a specification, claims, and requisite PO forms, along
with a filing fee. An applicant prosecutes patent claims through an
examination process conducted by a Patent Office examiner. The subject
of potential contention are the patent claims, which state the invention.
The claims are the "business end" of a patent, so to speak.
The patent prosecution process typically consists of arguing in writing
with an examiner about claims: over prior art, technical details,
legal precedents, and claim language specifics.
One common problem is that the claims are invalid because of prior art. The
prudent course is to search prior art before filing a patent, to know the state of the art, and
thereby know that the drafted claims are novel and patentable. The
surest path to a patent is to be aware of prior art, and draft claims
that carefully avoid being construed as encompassing the prior art.
A sometime defect in patents is a
deficient specification
that a prosecutor has to defend. A claimed invention
must be clearly stated, and adequately described in the specification. Once filed, a
specification cannot be substantively changed without losing the benefit
of the original filing date.
Patent examiners are under production
pressure, and so are not particularly careful. Even under the present
strict examination regime, pathetic patents are granted. There is no
substitute for having a skilled prosecutor.
Platinum Patents is the prosecution
branch of Patent Hawk. If you are an inventor, please
see the Platinum Patents site.
Monetizing a
Patent
A granted patent has a nominal life of 20 years from the time of filing. During the life of a patent, a patent holder may sell the patent, license it, or enforce granted patents rights.
Enforcement typically begins with a lawsuit. Enforcement aims to stop infringement, and collect damages resulting from infringement. It used to be that one could write an agreeable notification letter with the prospect of entering negotiations for a license, but a recent Supreme Court ruling made that civilized process risky for a patent holder. It should not be surprising that the Supreme Court encourages business, that is, litigation.
The first logical step for a law firm preparing a litigation complaint, preceding an enforcement action, is claim construction, getting a sense of how a court may interpret the patent claims. The second step is infringement analysis, determining, in light of the claim construction, whether infringement is actually taking place, by examining whether a product or service infringes each limitation of a patent claim.
Licensing is granting someone the right of not having the patent enforced against them. Because a patent is an abstract commodity, it may be licensed in creative ways.
Patent disputes in court are expensive, often to the tune of millions of dollars in legal fees on each side. Most often, a patent dispute settles out of court, after filing a complaint, but before trial. This is because one of the parties becomes realistic about the prospect of prevailing in court.
Read more about patent enforcement.
Read more about patent defense.
Ultimately, patent value hinges on two things: whether the patent is valid, and how useful the patented technology is.
Most crucial is a patent’s validity. Even under the current strict examination regime, the Patent Office makes mistakes and grants patents that should not have been granted because of prior art. Finding prior art to a patent is often time consuming, and requires considerable expertise. Considering the value that a patent may have, or the expenses incurred enforcing a patent, hiring a professional prior art searcher to investigate a patent's validity is wise.
A prior art searcher should be able to properly interpret, both legally and technically, the language of the claims, and find sufficiently convincing prior art. Prior art includes patents, books and periodicals, and products. The courts consider as prior art practically anything publicly accessible, even an abandoned drawing filed in a foreign patent office.
There are legal rules for the timeframes constituting prior art (35 U.S.C. §102-103), as well as court rulings that dictate how prior art may be interpreted. In 2007, the Supreme Court, in its KSR decision, made prior art more powerful for showing patents as obvious, and thus invalid.
A professional prior art searcher is a technology history researcher with a background in patent law. Good prior art searchers restrict themselves to technology areas which they know and can quickly learn the technical specifics associated with a particular patent. Ideally, a prior art searcher is also experienced both in the patent prosecution process and patent litigation.
There are two defenses to patent assertion: invalidity and non-infringement. Defendants in patent lawsuits always have a prior art search performed to try to invalidate any patent which they are accused of infringing. Patent holders prudently have a prior art search done by an outside searcher before pursuing enforcement, to make sure that the target patent will withstand litigation as valid over prior art.
Read more about prior art search.
Patent Utility & Value
A patent is a commodity of monopoly, albeit an unusual type, in that a license only confers protection as a form of insurance against enforcement litigation and consequential penalties.
A patent’s value reflects its utility. Sometimes small patentable differences make for substantial improvement.
A useful technology may be a better solution, but can be worked around. A breakthrough technology paves a better path others will want to follow - adoption is inevitable. For a breakthrough technology patent holder, a key issue is whether its adoption occurs during the life of the patent.
Hedy Lamarr, a Hollywood actress, and George Antheil, a music composer, were granted a patent on spread spectrum wireless communication in 1942. The patent never earned a dime - its commercial adoption came decades after the patent expired. Spread spectrum is the basis for GPS (the satellite-based global positioning system).
The market value of a patent is ultimately a measure related to the potential sale of products or services that use the technology which the patent claims. As patents often represent advancements, rather than a whole new product type, patent value is properly estimated by revenue enhancement potential. In litigation, reasonable royalty is the typical basis for assessing damages, though a competitor may also seek lost profits.
© 2011 Patent Hawk LLC