People often ask me whether their idea is patentable. It’s a fair question, but not one any patent attorney can answer reliably. An invention is patentable if we can describe and claim it in a way that convinces a patent examiner. The two big variables are the claims and the examiner.
Some of my new inventors have trouble grokking how patent claims work. This is an analogy that I’ve found to be useful.
The claims are the critical part of a patent. You have to get them right, and getting them right is the main reason for hiring a professional patent attorney.
After ten years writing patents for other inventors, I got one myself! It’s US8,862,289, Protocol for Controlling Access to Encryption Keys. It describes the key part of a secure online storage system I developed with my business partner, Janice Hazel. There’s a continuation of that application still going, and we also have some business-method claims in a separate application.
It’s a great feeling to get claims allowed by the USPTO. Next step is to look for licensees or investors for the real-life implementation of the patented method.
The U.S. Patent Office has a years-long backlog of applications in many technologies, and they’re not generally allowed to examine applications out of order. There are a couple of programs under which an inventor can get faster service (often with payment of higher fees), but one I’ve found to work surprisingly well, for free, is the “petition to make special on the basis of the applicant’s age.”
New Patentees Bill Tanner & Marc Weissfloch
US8,755,114 for Microscope Alignment Light
Bill Tanner & Marc Weissfloch of Orled, a division of Computer Power Supply Inc. in Oregon, were recently granted U.S. Patent No. 8,755,114 for a microscope right light with subject targeting features. They’re wrapping up final manufacturing details now, and their patented light should be available soon. Further U.S. and international patents are pending.
I’m often called in to do Intellectual Property lectures for local college engineering classes. The young men & women frequently have general questions about how the law works, even outside the realm of patents, trademarks and copyrights. One analogy that seems to resonate with these engineers is that legal work is like pattern matching.
In engineering (both in school and in practice), one can improve and tackle larger, more complicated projects, by figuring out ways to break a problem down into smaller chunks, and by recognizing chunks that have been solved before. For those chunks, you can copy the previous solution, or at least use it as a starting point while you get the rest of the project off the ground.
When you work this way, you’re matching a known problem with a known solution, and you leverage what people have learned about both of them, so you have more time to spend on the parts you haven’t seen before.
This is a quick overview of the things that occur between coming up with an invention and getting a patent for the invention. Click the links for more details about any of the steps.
- Conception: thinking of the invention.
- Reduction to practice: working out all the bugs and learning as much as you can about the invention.
- Preparing the patent application: describe the invention in enough detail that one of skill in the art can make or use it themselves. A critically-important part of the application is the claims.
- Filing the application: this is an important date!
- Waiting — the USPTO is backed up, so it may be a year (or three or five) before anything else happens.
- Non-Final Office Action — the Examiner took a look at your claims …
Perhaps you’ve never used a lawyer, or your only experience with one was in trying times: death, divorce or dog-bite. If you’re just getting your business underway, it’s a good time to think about how a lawyer might be able to help you succeed.
First off, remember that most lawyers are themselves small business owners — we know many of the challenges you face, and have had to figure out ways of dealing with them that work in practice, not just in principle. In addition, lawyers who focus on advising small businesses … see a lot of small businesses. We see what works and what doesn’t, and notice common features among disparate enterprises. That makes us a repository for knowledge that is applicable across business types, and that can be valuable to you. You can learn about your business from your competitors, but you can learn about Business from your lawyer.
The Health Insurance Portability and Accountability Act (HIPAA) isn’t exactly new (it was created by Congress in 1996), but it was revised in January of this year to extend its reach well beyond the healthcare industry. Specifically, the HIPAA regulations that set standards for the storage, transmission and privacy of personal medical data now apply to the “business associates” of “covered entities”. This extension of HIPAA’s privacy and security rules is frequently referred to as “HITECH,” an acronym for the Health Information Technology for Economic and Clinical Health Act. The primary goal of HITECH legislation was to encourage and fund the general use of Electronic Health Records (EHR) by the healthcare industry, but it also expanded and elevated the compliance obligations of “Business Associates” under HIPAA to a level equal with that of Covered Entities.
Some useful HIPAA/HITECH terms to be familiar with:
Jim Williams, Inventor of U.S. 8,539,651
Jim Williams got his second patent recently, and it was a delight working on his case. The USPTO gives examination priority to inventors over 65, so we were able to file, prosecute and obtain his patent in just under nine months. That’s the fastest turnaround I’ve seen on an otherwise normal case — we didn’t pay extra fees or participate in any other accelerated-prosecution program. We survived a proper rejection and ended up with claims that Jim should be able to license profitably. This was a great result all around.