IPfever

Atlanta law firm for global business

Category: Patent

Patent Infringement: Clearance Search Explained

Patent clearance search is called a Freedom-To-Operate opinion because it reveals others’ patents that are blocking your way. It requires searching and analyzing patent documents in the country where you do business.

Even if you invent something new, it is often based on other’s previous works.

For example, you get a patent on a new cap design for plastic bottles, which reduces the cost of production. Even though you have rights to the new cap design, someone else might have patent rights to the bottle’s body design. Without the body, you won’t be making a good use of the cap. Furthermore, even if you design an entirely new bottle (both the cap and the body), the method of making bottles out of plastic might have been patented. These are blocking patents because without infringing them you can’t practice your right.

You can search through patent documents via Google Patents (a free service by Google at https://patents.google.com).

Once you identify a potentially blocking patent, the scope of the patent needs to be analyzed.

1. Claims determine the scope.

Patent applicants are required to stipulate in the Claims what exactly their invention is about. All other parts of patent application help you understand the claim.

2. The scope will be construed by the courts.

What the patent owner believes does not matter. Nor does what you or your attorney think matter. When there’s a patent lawsuit, the court may side with either your attorney or your opponent’s attorney.

However, a legal opinion formed by a qualified attorney in your favor is helpful. For example, let’s say someone sued you for patent infringement and is being awarded for damages. If you can prove that you relied on your attorney’s advice that there’s no infringement, you may shield yourself from the penalties for willful infringement (i.e. knowingly violating someone else’s right). The penalties can increase the damages up to three times.

3. Patents do expire, so you should check the dates.

Most patents expire after 20 years from the filing date. So, if you find an old blocking patent, that might be actually a good news. Once the patent expires, you know for sure that’s in the public domain.

Blocking patents bar you from not only selling but also importing.

Often you rely on production facilities overseas and feel that blocking patents are not your problem. But if foreign products infringe U.S. patents, they can’t be imported into the U.S. Of course, the other way around is true.

You can design around, get license, or challenge the patent’s validity.

When there’s a blocking patent, there are still things you can do. You can design around, meaning you find other ways to achieve the same outcome; you can get a license if the patent owner is willing to let you use the invention for a reasonable loyalty; or you can argue before the court that the patent is not valid.

November 23, 2019
Patent: what is it?

Patent is an expensive but smart way to protect your business.

Getting a patent is not a quick and easy process. It usually takes years of prosecution (though you can claim “patent pending” from the moment you file the application) and thousands of dollars. However, the reward is a government sanctioned monopoly. Yes, MONOPOLY.

Patent is a deal you make with the public.

You discloses something other people don’t know, and in exchange other people can’t use it for a limited time period (about twenty years) unless you allow them. It’s a win-win. You don’t have to worry about someone else stealing your idea, and the others can learn and improve your invention.

It’s not a contract.

Although the exchange of knowledge and a monopoly right is between you and the rest of the society, there’s no contractual relationship between you and the society. Instead, the United States Patent and Trademark Office (“USPTO”) issues a patent to applicants who discloses their knowledge in patent applications which meet certain requirements. Moreover, if someone infringes your patent rights, you don’t go to the USPTO (nor to a law enforcement agency) but to courts.

November 23, 2019
How to Deal with Cease and Desist Letter (Patent or Trademark Infringement Allegation)

When you run a business, there is a chance that one day you receive a letter claiming that you are infringing someone else’s trademark or patent rights. It’s commonly called a “Cease and Desist Letter.”

Sending a Cease and Desist Letter (“C&D letter”) is a legitimate practice of enforcing one’s intellectual property (“IP”) rights. When you have an IP right, you should actively enforce it. It is a common practice to send a C&D letter to give a notice to related parties about possible infringement, and it also serves as a means to establish a communication channel between parties.

What to do when someone claims you’re violating their IP rights?

1. Not all C&D letters are the same.

It usually starts with a strong language about your wrongdoing, penalties, and of course they always say they have a solid case against you. They often set a deadline in their terms and threaten you with a lawsuit.

Sometimes they do complete a comprehensive analysis before sending out a letter, but they could simply rely on nothing more than a hunch. That’s why they are often written in vague and generalized terms. They can draft one and start sending to everyone they know.

On the other hand, the recipients often panic because they get this out of the blue. You’d be surprised by how many entities are only seeking settlements. They can’t risk going to a trial because it might set a bad precedent. In other words, they know they’d lose if they go to trial.

2. You should consult with people around you.

Getting a lawyer for defending against a sham assertion of infringement sounds very expensive. Also, when you go to a lawyer, he or she might simply say “Oh, I can help you settle this case.”

That’s, in many cases, the safest, simplest, and most cost-effective thing to do. But that’s not always true.

There is a good chance that someone you know has received the same letter before, or they at least know someone who has. Ask them how it went. The infringement analysis is almost always more intricate than what the C&D letter says.

3. Find experts next.

Ultimately, you have to find someone who knows what’s going on to really understand what’s going on. IP professionals can tell you how much you are in trouble, what are your chances to be served with a summon, how you can avoid further infringement, and so on.

If it’s patent related issues, you should find a patent attorney. Patent attorneys are licensed attorneys who are registered with the United States Patent and Trademark Office. They passed a state bar (so they are presumably competent to represent you in legal matters) and a separate examination administered by the USPTO about the patent law (so they know the patent law). There are patent agents, non-lawyers who are registered with the USPTO, but they are more focused on helping you get a patent.

For trademark issues, there is no certification or license. In theory, any lawyer can represent you in trademark law matters. However, not all lawyers are equally competent. So, here’s a litmus test I suggest. If they simply say, “I can draft a reply or get a settlement offer for you”, then you might want to find another lawyer. You want someone who can tell you what’s really going on before even considering those options.

July 16, 2019
Protect Your Products with Patent
While there’s innovative product like iPhone, most new products are improved versions of old products.

Patent protects both.

It really doesn’t matter whether your invention makes people’s lives better or not.

For example, there is a famous case of a “fake juice dispenser”. The dispenser by its appearance has a tank that contains liquid juice. But inside, the dispenser has a water tank and a juice powder container as well as a mixing mechanism, all hidden from the plain view. The design enables the juice seller to use powdered juice concentrate that has a longer shelf life while appealing to customers who like the freshness of liquid juice.

Long story short, the dispenser got patent protection.

Patent is often the only way to curb competition.

Patent is a strong legal right. It grants you government-sanctioned monopoly, though for a limited time, over a thing or a way to do something. And moreover it can raise a high bar blocking others from encroaching on your market.

Let’s say you invented a method in which you make a sandwich while wearing a thimble, and this way, you can make your sandwich miraculously delicious.

Now, if there is no known method or record in which you make a sandwich using a thimble, you can probably get that method patented. I know it’s far-fetched; someone probably made a sandwich or two while wearing a thimble in the past. Nonetheless, if nobody did, this invention is quite innovative, right? It’s certainly not an improvement of traditional sandwich recipes.

Now, for 20 years, nobody can make sandwich with a thimble without your permission. How does this work in a real life? Well, as soon as people learn about this (getting a patent means your method is no longer a secret), they will start making sandwiches with a thimble at home, and there is no way you can monitor everyone’s kitchen to enforce your right. Nonetheless, if it’s a sandwich shop, you can probably do something about it. And more importantly, you will have monopoly on thimbles for sandwich-making because anyone who markets a thimble for sandwich-making will indirectly infringe your patent.

Then, competitors will try to design around your method. If the thimbles work because of certain physical attributes, there could be other ways to achieve similar effect. That involves reverse-engineering and some research effort. After all, they might come up with a better way.

To prevent this, you want to keep inventing or improving your method. By keep inventing, I mean you should try to patent new ways to make sandwiches. On the other hand, if there is improvement, you should consider patenting the improvement as well. When you have so many ways to make sandwiches patented, then your competitors will feel like it’s easier to just pay you licensing fees or just leave the market. Improvement on your old invention makes other alternatives less efficient and thus less appealing.

Two lessons from the above hypothetical.
1. Your invention needs not be new. A thimble? I definitely remember seeing my grandma using it. There’s always a way to patent (and thus protect) your thing.
2. You need to keep inventing or improving. Stay forward-looking. Unless you keep working on it, others will find a way to circumvent it.
May 1, 2019
The Hidden Strength of Walmart

Although Amazon is reigning in the online retail market, if you compare the annual retail sales figures of 2016, Walmart’s $363 billion in annual revenue overshadowed Amazon’s $77 billion. This is a meaningful success in the offline retail market where many retail giants are fiercely competing.

What in the earth makes Walmart to score such a high annual sales revenue which is more than twice the combined number of (a) $70 billion by Target, a discount store like Walmart and (b) $86 billion by Costco, a membership store like Sam’s Club by Walmart?

Walmart is well known for its rigorous standard for choosing suppliers, efficient logistics and store management, and a simple but effective business principle of serving the customers with a lower price, among others, that are all contributing to the success of Walmart.
Surprisingly, it is a less known fact that Walmart played a major role in the retail adoption of barcode technology.

Anyone who remembers the days when barcodes did not exist would easily appreciate how much the barcode technology saves time and effort in sales of goods. Without the Universal Product Code (“UPC”) which was introduced to the retail business by Walmart, barcode could have been just a type of machine-readable code for a proprietary computer system.
In parallel, Walmart recently began to require all suppliers to use radio frequency identification (“RFID”) smart tags to display product information on their shipment. Smart tags convey product information over the air more efficiently than barcodes and allegedly improves the flow of the logistics as well as the inventory management in the retail stores.
Of course, barcode is not invented by Walmart. Just like smart tags, Walmart is on the side of adopting and utilizing the technology developed by a third party. That is not a surprise considering that standardization leads to cost savings for the entire retail industry and that an exclusive technology developed and adopted by a retailer would not likely benefit the entity in the market competition.

Nevertheless, Walmart is allocating a lot of resources in procuring patents, which is unprecedented in its 50 years of history.

Based on the publication date of patent applications, Walmart applied for only 26 patents for the two-year period from 2012 to 2013 whereas it already applied for 201 patents from 2016 to date. Simply put, patent is a legal right to an exclusive use of a technology invented independently, so the sudden increase goes against the very idea of standardization.

The phenomenon can be understood by taking a closer look at Walmart’s patents. For an example, one of the Walmart’s patents issued in 2017, the U.S. Patent No. 9,470,532, claims an exclusive right to a navigation system that help customers to find goods in a store.

This navigation system provides an assistance to shoppers by (1) allowing customers to input product information they are searching via mobile devices; (2) displaying the location of the product on a store map; and (3) marking locations of comparable or associated goods on their route.
Once this technology is commercialized, Walmart could make up for its shortage in the staff on the retail floor, improving shopping experience significantly. That is not to say that this kind of service requires an investment in advanced technology as it only requires common smartphones and inventory management applications readily available to small and midsize businesses. Notwithstanding, for about 20 years, any business who wants to adopt the navigation system in their store would have to obtain license from Walmart or just sit and wait till the patent expires.

There are other examples such as a mobile app validating the age of purchasers of age-restricted items (U.S. Pat. No. 9,665,896) and a system delivering shopping carts upon the request by shoppers via a mobile app (U.S. Pat. Application No. 6,619,546). In sum, Walmart patents of recent involve not the profound principles of science but ideas for a better shopping experience.

These ideas could have been the technology of the future, but with the internet and personal mobile devices, you can bring them to life without dedicated devices or extra infrastructure. Walmart is now expanding its patent portfolio to exclude others from using some of them.

In fact, from a design or packaging idea to a unique placement of goods in retail spaces and a promotional or loyalty program ideas, if it is noble, it has a potential to be patented. Once patented, you can have an edge in retail services and prevent others from misappropriating your own idea.

Often an amazing and groundbreaking idea becomes a mundane thing because everybody is copying it so fast. When you come up with a great idea, you should (1) determine whether the idea can develop into an effective and financially valuable patent, (2) find a way to protect the idea appropriately, and (3) acquire a legal right that can ensure a lasting success.

October 15, 2018
What is a provisional application in patent?

A provisional patent application does not become an issued patent. It actually just sit in the USPTO without being examined for potential issuance. Then, what a provisional patent application do?
It basically earns time to decide whether you should go forward with obtaining patent for an invention.

How it goes?

You basically disclose your invention in writing, send the document to the USPTO where it will be time-stamped, and your priority date for establishing “who invented first” is valid for a year.

If you file a non-provisional application within the year, your application will undergo examination and eventually can get issued to become a patent.

Why it matters?

Well, you usually don’t know if your invention is going to be something you can and want to profit from at the time you come up with your invention. Provisional applications require lower cost to prepare (by lawyers) and file with the USPTO compared to non-provisionals. Hence, you save money while preventing others from taking your idea away.

In practice,

It could be a routine practice to file a provisional first, followed by a non-provisional in an almost full year. It just makes sense to be cautious before incurring a significant financial burden. However, in some cases, an inventor may intentionally delay the examination of the patent by filing provisionals because they believe the application has very low likelihood to become an issued patent.

Lastly,

As soon as you file a provisional application, your invention is “Patent Pending” just like non-provisional applications. It usually means that you can start disclosing and selling your invention without worries about someone running to the USPTO to steal your idea!

June 25, 2018
What is Patent?
Patent is an exclusive right to appropriate an invention.

Patent is often considered a luxury to a small and midsize business. More often than not, you find out about the importance of patents after someone accuses you of a patent infringement. It could be a cease and desist letter or a service of process.

Without an understanding of how patent works, you will never know if you are safe from patent lawsuits.

The problem with a patent lawsuit is that it’s so expensive that most small businesses can’t afford it. What happens then? You enter into a settlement agreement to avoid going to the courthouse. In fact, this can be cheaper than winning the lawsuit after costly legal proceedings.

Even worse, it could happen that:
- you actually came up with the idea yourself, but didn’t apply for a patent;
- you have no idea what are the infringing activities that the patent owner claims, or
- the patent is just bogus (e.g. it’s a standard technique in your industry).
Read more and avoid expensive mistakes for your business!
June 3, 2018
How to get a patent without costing a fortune?

How can IPfever reduce the cost of patent? We set up simple rules: (1) you do your own homework; (2) attorneys work online; and (3) we make sure the attorneys fees are proportional to what you get.

First, you do your own homework.

If you just ignore an issue because it’s too much to deal with yourself, nothing ever changes. Most small businesses don’t have a legal counsel of their own, meaning you probably need to spend extra money to work on IP issues. This is a mishap that can be avoided by educating yourself. In fact, basics of patent law can be understood within a reasonable time as long as you know where to look.

Second, attorneys work online.

This is an overly simple statement of what actually needs to be done. We’re talking about reducing unnecessary cost on lawyer’s part. Why do you need a fancy office space in downtown when the government agency you’re dealing with is not even in town?

When a patent research is virtually all about online databases, you don’t want to pay law firm’s researchers, administrative clerks and paralegals for an initial review of your company’s patent portfolio. It is an instant impression of your attorney that you want the most when you ask a lawyer if your business needs a patent. Unfortunately, a lawyer’s typical hourly charge include every help listed above.

Lastly, IPfever makes sure you get what you paid for.

It is unfortunate that the most businesses and individuals can’t afford a lawyer. What about a free initial consultation? We all know free stuff can be poisonous. When an attorney greets a free client, what would be first in his or her mind? He or she wants your business! A need for legal service will be emphasized, and a quick and easy solution is disfavored over conservative and costly measures.

IPfever wants to solve this problem with fairness in mind. If you hard press lawyers to give out more free stuff, it might good in the beginning but won’t last long. Nonetheless, it’s plausible that you can set up a fair ground where you pay for actual value of lawyer’s service. This is awesome not only for clients but also for lawyers who has a good legal mind but lacks marketing skills.

A fair ground starts with a better understanding.

If you are retaining an attorney because you don’t know a thing about the law, then you’re like asking a mechanic to take care of your car with a promise to pay whatever is done.

February 26, 2017
How Does Patent Work for Small to Mid-size Business?

Patent is an intellectual property right, which is not aimed to boost the economy but intended to advance science and technology. So, many business-minded people will struggle with the basic concept of patent and how it should be used for their business.

On the other hand, patent is recognized as the most reliable and strong intellectual property right in business. You probably heard about its importance even if you really don’t know much.

The hurdle for small businesses in developing a strong patent portfolio is the expense. Does it have to be prohibitively expensive? Well, it doesn’t have to be. The more you know about the patent, the more likely you will find a solution for your business yourself.

February 26, 2017
Value of a patent: the cost-benefit analysis
Will your patent justify your time and money?

This is where you can benefit from a consultation to a patent attorney who understands your technology and has your best interest in mind.

The truth is virtually anything can be patented … if you don’t mind what is claimed in the patent.

In other words, you sufficiently narrow the scope of your claims to meet the requirements of the patent issuance, and the grant of patent is granted. Unfortunately, this is what you likely get from a cheap flat-fee patent prosecution services.

The quality of patent matters.

When the scope of patent claims is too narrow, you won’t get much from the patent. Let’s say you “discovered” a new chemical. When this chemical is added to a fuel, the efficiency of any internal combustion engine can be increased by more than 50 percent. Now, you’ve got to patent it.

You can patent a fuel additive containing the chemical.

Well, that is too narrow because it would not prevent others from selling fuels (not a fuel additive) containing the chemical. It seems you simply handed over the technology to the energy companies as no one would buy your patented fuel additive.

Then, should you claim the chemical itself?

Not really. When the chemical is not artificial, which is the case here because we assumed that it was “discovered” (not synthesized), it is not a patentable subject.

Let’s talk about the cost.

The government fees can start from a couple hundreds (as you might get discount for being a small business) to thousands of dollars. In fact, it depends on various factors like the number of claims and the length of the application.

Now the patent practitioner’s fees

I don’t recommend a flat fee arrangement unless you know what you’re doing. In other words, you should have sufficient knowledge to meaningfully get involved in the prosecution. Hourly charges vary widely (i.e. from hundreds to more than a thousand), and also the time. Therefore, you should find one you can trust and talk about the cost in advance.

What good comes with the patent application?

In the past, the customers were intrigued by the mere fact that it’s “patent pending,” but I don’t think that still works.
1. You will thwart competitors from copying your invention although they can be quick to design around your invention (like selling fuels instead of additives).
2. You will also prevent others from patenting the same technology.
3. As you do a preliminary work (like clearance search), you will better understand the technology and the market.
4. Don’t forget the value of intellectual property as an asset. When you’re selling your business, a mere know-how isn’t exactly same as the patent, which is a property right.
5. If others are interested in licensing your tech, you can also expect a royalty.
February 23, 2017