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Shortcuts: Taking an Invention From Idea to the Store Shelf

August 23, 2013 by

EVERY once in a while, my family will toss around ideas for potential inventions. Like my son’s ultimate alarm clock, which wakes you up, tells you the weather and makes tea and toast.

None of us have ever gotten past the talking phase. But a lot of other people have.

Last year, the United States Patent and Trademark Office reported that 1.5 million patent applications were pending, compared with around 269,000 in 1992.

And the office issued around 270,000 patents in 2012, about 160,000 more than two decades before.

It’s very easy to believe that a multimillion-dollar invention is just a twist of a screwdriver away. Listen to the seductive radio and television ads that promise to help your invention fly off the shelves. Watch reality television shows like “Shark Tank,” where contestants vie to get businesses to invest in their idea.

While they all portray making millions off your invention as easy, it’s not, said Mark Reyland, executive director of the United Inventors Association of America, a nonprofit education organization. “It’s a business of failure.” That doesn’t mean you won’t be the next Thomas Edison, who was granted around a thousand United States patents. But just bring a little caution and a lot of skepticism to the table.

First, do some preliminary research. Google allows you to research patents at google.com/patents. You can also look at the United States Patent and Trademark Office site to see if your crazy idea has already been patented.

If it looks as if you have a unique product, file a provisional patent application with the patent office. That costs $65 to $260, depending on how many pages your patent needs, and is far simpler to do on your own than filing a formal patent claim.

A provisional patent application is good for one year and essentially protects you from someone else claiming your invention. So you have time to develop and see if there’s a market for it before going through the more onerous full patenting process.

That’s what Micaéla Birmingham of Brooklyn did when she came up with the idea of a sun shade for her baby’s stroller, fashioned out of a dish towel in her kitchen.

“That’s the great thing about a provisional patent,” said Ms. Birmingham, an urban planner. “It gives you a chance to get it off the ground.”

Filing a patent, including the necessary research, can easily run $4,000 to $10,000 — or more, said Michael Neustel, a patent lawyer in Fargo, N.D.

Do you need a lawyer? While you can make your way through the complicated and time-consuming process yourself, the patent office strongly suggests using one.

“This is not an area where people should do it themselves,” said Jonathan Putnam, a New York patent lawyer. “You need to understand prior patents and prior inventions. You need to explain how you’ve advanced the product. You need a dedicated adviser who has only your interest at heart.”

Patent agents are another option — they don’t have a law degree, but, like a patent lawyer, must pass an exam administered by the United State Patent and Trademark Office.

Ms. Birmingham said she used a friend who was a patent lawyer, spent about $5,000 on legal and filing fees and just recently received the patent for CityShade — two years after filing. The average wait between filing and receiving a patent is 29 months, according to the patent office.

While the patent was pending, she got her Web site, citymum.com, up and running and has sold 2,500 covers at $68 each ($78 for organic cotton).

The high cost of such lawyers is one reason companies advertise free or inexpensive invention help. But those services might just end up costing you more than you planned.

Nancy Tedeschi found that out. She came up with the idea of a snap-on screw to repair eyeglasses when the earpieces come off.

She filed a provisional patent application by herself and started manufacturing SnapIt Screw. But then she discovered that “the invention was the easy part,” she said. “Marketing and getting it out is horrible.”

E-mail: shortcuts@nytimes.com

Article source: http://www.nytimes.com/2013/08/24/your-money/taking-an-invention-from-idea-to-the-store-shelf.html?partner=rss&emc=rss

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Apple Violates Samsung Patent, U.S. Trade Panel Says

June 4, 2013 by Leave a Comment

But the ban is unlikely to have an immediate impact on sales of those devices in the United States.

The United States International Trade Commission said on Tuesday that it was issuing a ban for a handful of devices that work on ATT’s network, including the third- and fourth-generation iPhone, and the first-, second- and third-generation iPads that have a cellular connection.

President Obama has 60 days to review the order and can veto it.

Apple said it intended to appeal the decision, so it will be some time until the commission’s decision goes into effect, if at all.

“We are disappointed that the commission has overturned an earlier ruling and we plan to appeal,” said Steve Dowling, an Apple spokesman. “Today’s decision has no impact on the availability of Apple products in the United States.”

The ban already faces challenges because of executive orders issued by Mr. Obama on Tuesday to tighten regulations at the Patent and Trademark Office. One order, labeled “Strengthen Enforcement Process of Exclusion Orders,” called for a strict review of the procedures that the commission uses to enforce exclusion orders.

The order noted that enforcement of a ban would be difficult when the ban involves “a technologically sophisticated product such as a smartphone” because customs officials would have trouble telling the difference between a redesigned product, which would not be banned, and an older model that has been banned.

Samsung, which in August lost the patent case and was told to pay Apple more than $599 million in damages, endorsed the commission’s ruling.

“We believe the I.T.C.’s final determination has confirmed Apple’s history of free-riding on Samsung’s technological innovations,” Samsung said in a statement.

Carolina Milanesi, vice president of Gartner Research, who tracks the smartphone industry, said that even if the ban went through, it would not have a huge impact on Apple. She said the majority of iPhones sold today are the iPhone 4S and iPhone 5 models, which are not included in the ban. When the next iPhone comes out, the iPhone 4 model will be even less relevant to Apple’s bottom line, she said.

“It has more to do with counting the blows between the two parties, and this is one for Samsung, but materially there is not going to be a huge impact,” Ms. Milanesi said.

Mr. Dowling said Samsung’s actions had not held up in courts outside the United States. He added: “Samsung is using a strategy which has been rejected by courts and regulators around the world.”

Article source: http://www.nytimes.com/2013/06/05/technology/apple-violates-samsung-patent-us-trade-panel-says.html?partner=rss&emc=rss

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Revolution in Resale of Digital Books and Music

March 8, 2013 by Leave a Comment

The retailer’s button might say “buy now,” but you are in effect only renting an e-book — or an iTunes song — and your rights are severely limited. That has been the bedrock distinction between physical and electronic works since digital goods became widely available a decade ago.

That distinction is now under attack, both in the courts and the marketplace, and it could shake up the already beleaguered book and music industries. Amazon and Apple, the two biggest forces in electronic goods, are once again at the center of the turmoil.

In late January, Amazon received a patent to set up an exchange for all sorts of digital material. The retailer would presumably earn a commission on each transaction, and consumers would surely see lower prices.

But a shudder went through publishers and media companies. Those who produce content might see their work devalued, just as they did when Amazon began selling secondhand books 13 years ago. The price on the Internet for many used books these days is a penny.

On Thursday, the United States Patent and Trademark Office published Apple’s application for its own patent for a digital marketplace. Apple’s application outlines a system for allowing users to sell or give e-books, music, movies and software to each other by transferring files rather than reproducing them. Such a system would permit only one user to have a copy at any one time.

Meanwhile, a New York court is poised to rule on whether a start-up that created a way for people to buy and sell iTunes songs is breaking copyright law. A victory for the company would mean that consumers would not need either Apple’s or Amazon’s exchange to resell their digital items. Electronic bazaars would spring up instantly.

“The technology to allow the resale of digital goods is now in place, and it will cause a dramatic upheaval,” said Bill Rosenblatt, president of GiantSteps, a technology consulting firm. “In the short term, it’s great for consumers. Over the long term, however, it could seriously reduce creators’ incentive to create.”

Scott Turow, the best-selling novelist and president of the Authors Guild, sees immediate peril in the prospect of a secondhand digital thrift shop. “The resale of e-books would send the price of new books crashing,” he said. “Who would want to be the sucker who buys the book at full price when a week later everyone else can buy it for a penny?”

He acknowledged it would be good for consumers — “until there were no more authors anymore.”

Libraries, though, welcome the possibility of loosened restrictions on digital material.

“The vast majority of e-books are not available in your public library,” said Brandon Butler, director of public policy initiatives for the Association of Research Libraries. “That’s pathetic.”

He said that 60 percent of what the association’s 125 members buy was electronic, which meant sharp restrictions on use. Libraries cannot buy from Apple’s iTunes, he said. And so, for example, Pixar’s Oscar-winning soundtrack for the movie “Up” is not available in any public collection. An Apple spokesman confirmed this.

“If these things can’t be owned, who is going to make sure they exist going forward?” Mr. Butler asked. “Without substantial changes, we can’t do what libraries have always done, which is lend and preserve.”

For over a century, the ability of consumers, secondhand bookstores and libraries to do whatever they wanted with a physical book has been enshrined in law. The crucial 1908 case involved a publisher that issued a novel with a warning that no one was allowed to sell it for less than $1. When Macy’s offered the book for 89 cents, the publisher sued.

That led to a landmark Supreme Court ruling limiting the copyright owner’s control to the first sale. After that, it was a free market.

Sales of digital material are considered licenses, which give consumers little or no ability to lend the item. The worry is that without such constraints digital goods could be infinitely reproduced while still in the possession of the original owner.

Article source: http://www.nytimes.com/2013/03/08/technology/revolution-in-the-resale-of-digital-books-and-music.html?partner=rss&emc=rss

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The Caucus: Fee Dispute Is Last Hurdle for Patent Overhaul Bill

September 7, 2011 by Leave a Comment

A bill to overhaul the operations of the United States Patent and Trademark Office is speeding toward a conclusion, but one significant speed bump remains.

Senator Tom Coburn, Republican of Oklahoma, is planning to offer an amendment on how the Patent Office uses the fees it collects. If the amendment passes, which even Mr. Coburn’s staff admits is less than certain, the House and the Senate will have to reconcile competing version of the bill.

The Senate previously voted 95-to-5 to approve Senate Bill 23, which included Mr. Coburn’s language that would allow the patent office to keep all the money it raises from fees for its own operations. The House, however, passed a different bill, HR 1249, which would put excess funds – those above the patent office’s annual budget – into a sort of lockbox that could be used only with Congressional approval. Now, the Senate is taking up the House bill.

The bill would also change the patent system to a “first to file” priority system from its current “first to invent” system and overhaul ways that interested parties can challenge patents.

Currently, all of the excess revenues from patent fees go into the general fund and are used for projects far removed from patents. Leaders in both parties have supported passing a patent bill, and many of them have said the fee diversion is a major contributor to the three-year backlog in patent applications and to the decrepit state of the patent system’s computer networks.

Mr. Coburn’s prediction is that members of Congress will find some way to pilfer the patent-fee lockbox, despite their vows not to. “He thinks it will be a lock box with a hidden door,” said John Hart, a spokesman for Mr. Coburn.

So while a majority of senators might in theory support Mr. Coburn’s change, there is also a strong feeling that it would be better to get the bill finished and onto President Obama’s desk. The alternative – a continuing fight with House Appropriations Committee members and perhaps a conference committee to resolve the differences – would keep the patent issue on Congress’s plate for several more weeks.

With Mr. Obama already regularly highlighting the patent bill as something that Congress can do “right now” to help create jobs, few in Congress see the need to spend more time on the matter.

Democrats are likely to bring the patent bill to the floor for debate on Wednesday. Mr. Hart said that Mr. Coburn realized “it’s an uphill battle at this stage” because “there is a desire to get the bill done.”

If enough Senate Republicans do not back an effort to change the funding language, it is unlikely that a majority of Democrats would go against their leadership’s desire to pass the bill and move on. So brief though it may be, the debate on the Coburn amendment could be a heated one.

Article source: http://feeds.nytimes.com/click.phdo?i=7bb8c077630774b3889725ae820289c1

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Gene Patent in Cancer Test Upheld by Appeals Panel

July 29, 2011 by Leave a Comment

The Court of Appeals for the Federal Circuit, which specializes in patent cases, said that Myriad Genetics was entitled to patents on two human genes used to predict if women have an increased risk of getting breast and ovarian cancer.

The court ruled that DNA isolated from the body was eligible for patents because it was “markedly different” in its chemical structure from DNA that exists in the body. As a result, the isolated DNA is not simply a product of nature, which would not be eligible for a patent.

The 2-to-1 decision on the gene patenting issue was also a rejection of arguments made by the Obama administration, which had filed a friend of the court brief arguing that isolated DNA should not be patented. That brief went against the long-standing policy of the United States Patent and Trademark Office to grant such patents.

The appeals court ruled against Myriad in another part of the case, however. The court said that Myriad’s patent claims on the process of analyzing whether a patient’s genes had mutations that raised the risk of cancer was not patentable because it involved only “patent-ineligible abstract mental steps.”

The case may come before the Supreme Court, which has already agreed to hear another case related to the patentability of diagnostics based on chemical changes in the human body.

The decision on the patentability of genes and DNA cheered much, though not all, of the biotechnology industry. Thousands of human genes have been patented, and biotechnology executives say such patents are essential for encouraging innovation, particularly development of diagnostic tests.

Critics have said it is unethical to patent something that is part of the human body or the natural world. Some critics have also said that the patents can impede patient care. Myriad’s full test for breast cancer risk costs more than $3,000 since the gene patents give the company a monopoly on such testing.

A lawsuit challenging the patents on the breast cancer risk genes was filed by the American Civil Liberties Union and the Public Patent Foundation, acting as the lawyers for various cancer patients, medical researchers and medical societies.

In an opinion issued in March 2010, United States District Judge Robert W. Sweet in Manhattan ruled the patents were invalid. The importance of DNA, he said, was the information content it carried in terms of how proteins should be made. In that aspect, he said, the isolated DNA was not really different from the DNA in the body. The claim that isolating the DNA made it different, he said, was just “a lawyer’s trick.”

But the appellate decision rejected that argument, saying that since DNA is a chemical, the chemical structure is what matters and that “informational content is irrelevant to that fact.”

“We conclude that the challenged claims are drawn to patentable subject matter because the claims cover molecules that are markedly different — have a distinctive chemical identity and nature — from molecules that exist in nature,” Judge Alan D. Lourie wrote for the court.

He said that isolating DNA was not simply a matter of purifying it, like extracting a mineral from the earth.

Judge Kimberly A. Moore wrote a separate opinion, agreeing that the breast cancer risk genes were patentable but citing somewhat different reasoning, including that only Congress should change Patent Office policy to grant such patents.

“Judicial restraint is particularly important here because an entire industry developed in the decades since the Patent Office first granted patents to isolated DNA,” Judge Moore wrote. “Disturbing the biotechnology industry’s expectation now risks impeding, not promoting, innovation.”

But the third judge on the panel, William C. Bryson, dissented, saying that the genes should not be patented just because they were isolated from the body. In some respects, he wrote, “extracting a gene is akin to snapping a leaf from a tree.”

Judge Bryson argued that upholding the patents could impede the movement in diagnostics toward whole-genome sequencing. In a few years, experts say, it should be possible for a person to have his or her entire DNA sequenced for less than Myriad charges for just two genes. But separate patents held on many individual genes could make that cumbersome.

Article source: http://feeds.nytimes.com/click.phdo?i=8ebd8eb5b32931f3a6c2aeda09c1c2aa

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Microsoft Loses Appeal in Patent Case

June 9, 2011 by Leave a Comment

The justices unanimously upheld an appeals court’s ruling that went against the world’s largest software company in its legal battle with Toronto-based i4i Limited Partnership. The smaller company had argued that Microsoft Word had infringed its method for editing documents. Microsoft contended that i4i’s patent was invalid.

The high court rejected Microsoft’s argument that it should adopt a lower legal standard to replace the long-standing requirement that a defendant in a patent infringement case prove by “clear and convincing evidence” that a plaintiff’s patent is invalid.

“We consider whether” a section of the Patent Act of 1952 “requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does,” Justice Sonia Sotomayor wrote in the court’s 20-page opinion.

Microsoft argued that a lower standard of proof involving a “preponderance of the evidence” would make some patents more vulnerable to legal challenge while promoting innovation and competition.

The Obama administration and i4i opposed Microsoft’s position and said Congress has accepted the standard in effect for at least the past 28 years, that it was correct, and that it should be upheld by the Supreme Court.

I4i said Microsoft sought a radical change in patent law and that any change should come instead from Congress, which has been considering patent legislation.

The legal battle began in 2007 when i4i sued Microsoft. A federal jury awarded $290 million to i4i after finding that Microsoft had infringed its patent relating to text manipulation software in 2003 and 2007 versions of Word, Microsoft’s word processing application.

A federal appeals court upheld the award and the Patent and Trademark Office upheld the validity of the i4i patent. Microsoft continued to dispute those decisions, but removed the contested features from its current software.

In appealing to the Supreme Court, Microsoft said it wanted a new trial. But the justices ruled that the appeals court was correct.

Article source: http://feeds.nytimes.com/click.phdo?i=2ab69f4d58a35ee28829616109de37d1

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