However, sometimes it is difficult to locate one or more of the inventors, and sometimes one or more of the inventors refuses to sign. When this happens, it is often still possible to proceed with an application.

None of the Inventors are Available

If none of the inventors can be found or are willing to sign, an application can still be filed by someone who has been assigned the patent rights or to whom the inventor has agreed to assign the patent rights or who otherwise has a proprietary interest in the invention (35 U.S.C. §118).

Typically, this would be an employer, to whom the inventor has either already signed an assignment giving it the patent rights to the invention in question or to whom the inventor has agreed, often in an employment agreement, to assign the invention. A standard employment agreement in technology industries requires assignment of all inventions developed during the course of employment to the employer.

In this case, the assignee or otherwise interested party must (MPEP 409.03(b)):

1. Execute the oath or declaration on behalf of the inventor(s);
2. State the relationship between it and the inventor(s);
3. Submit proof that the inventor(s) cannot be found or reached after a diligent effort or refuse to execute the application papers;
4. Submit the last known address of the inventor(s);
5. Show that it has a proprietary interest in the invention (MPEP §409.03(f));
6. Show that the filing of the application is necessary to preserve the rights of the parties or to prevent irreparable damage; and
7. Pay the petition fee under §1.17(g).

Most of these elements can usually be satisfied by statements or affidavits on the part of the assignee or other interested party, along with relevant assignment documents.

One or More Inventors Are Available

When at least one inventor is available and willing to sign the oath or declaration, the available inventor(s) can sign and submit the application on behalf of all the inventors. In this case, the application must include proof that the nonsigning inventor(s) cannot be reached or refuse to execute the application papers and the last known address of the nonsigning joint inventor(s) (MPEP §409.03(a)). See MPEP § 409.03(d).

Rights of Nonsigning Inventors

These procedures do not terminate the rights of nonsigning inventors. The nonsigning inventors retain the same rights they would have had if they had signed. A nonsigning inventor who becomes aware of the application and wishes to participate may join the application by submitting a signed oath or declaration. A nonsigning inventor cannot revoke or grant a power of attorney without agreement of the signing applicant. MPEP §409.03(i).

Note that where all the inventors have assigned the rights to their invention, it is the assignee who has the patent rights and the inventors, signed or unsigned, have few rights beyond having their names listed on the patent as inventors.

• The Patent Reform Act of 2010 receives a favorable opinion and thorough analysis on Patent Baristas. Stephen Albainy-Jenei notes a number of critical features of the proposed bill, including authorization for the USPTO to set its own fees, a move to first-to-file, raising the bar for findings of inequitable conduct and willful infringement, elimination of the best mode requirement, new pre- and post-grant review procedures, and more. In my mind it is a mix of really good changes and not-so-good changes- of course odds are good we will end up with the status quo as usual. Fortunately Kappos seems to be doing a good job internally.

• Gene Quinn at IPWatchdog discusses the new USPTO proposal allowing the extension of provisional patent application pendency from 12 to 24 months. Quinn approves, although he comments regarding the use of late-filing procedures: “I really hope that as patent reform moves forward in Congress someone can add a simple amendment to the bill that would change ‘12 months’  and ‘12-month period’ in 111(b)(5) to ‘24 months’ and ‘24-month period’ respectively. That would be cleaner for sure.“ I personally dislike that this has been billed as examination deferral when in reality it seems more of a trap for the unwary.

• Just N Examiner reports and discusses the recent change to patent examiner hoteling rules. Experienced examiners have been allowed to work at home for years now, reducing the amount of office space needed on the PTO campus in Alexandria. However, prior to the rules change Examiners had to check in at the PTO twice every biweek. Is this change a step towards a nation-wide examining corps?

• IP Kat discusses the interplay of trademarks and brands and the difficulty of defining and analyzing brands in a business context.

• Duets Blog illustrates how direct navigation allows cybersquatters to profit from your business.

Any thoughts or questions on the latest Patent Reform Act or the PTO’s new proposal for provisional patent applications?

What is inducement of patent infringement?

Inducement of patent infringement is (sparingly) defined by statute in 35 U.S.C. §271(b). Affirmatively and intentionally causing, encouraging, or aiding the direct infringement of another constitutes inducement. As with all indirect patent infringement, it requires that you knew or should have known of the infringed patent.

What is contributory patent infringement?

Contributory infringement is defined by statute in 35 U.S.C. §271(c). It is contributory infringement to offer for sale or import a part of a patented invention, knowing that it is specially adapted for infringing the patent, where the part has no substantial non-infringing uses.

Thus, contributory infringement can be thought of as a type of inducement, in which the intent to cause direct infringement can be inferred from the fact that the product offered for sale is suitable only for patent infringement (“When a manufacturer includes in its product a component that can only infringe, the inference that infringement is intended is unavoidable.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1337 (Fed. Cir. 2008)).

As with all indirect patent infringement, prerequisites for a finding of contributory patent infringement include some direct infringement and that the indirect infringer knew or should have known of the infringed patent (otherwise the indirect infringer could not know the product was specially adapted for infringement).

Future posts will explain each type of indirect infringement in greater detail. Let me know if you have any questions.

What is Direct Patent Infringement?

Direct patent infringement is a fairly straightforward concept. Look at the claims of the patent concerned, go through the elements of each claim and ask yourself, does my product have each of these elements or an equivalent?

If your product arguably has all of the elements of any claim, you might be in trouble. Uncertainty arises mainly in the proper interpretation of the claim elements. Indirect infringement on the other hand is generally not understood as well.

What is Indirect Patent Infringement?

Indirect infringement is the facilitation of direct infringement by others. Although now established by statute, it originally arose under the theory of joint tortfeasors (a tortfeasor is a civil, as opposed to criminal, wrongdoer). Under the theory of joint tortfeasors, one who intentionally causes or aids the commission of a tort by another (e.g. an indirect infringer) is just as responsible as the primary tortfeasor (e.g. direct infringer) and so the full amount of the plaintiff’s damages can be collected from either.

Thus, indirect infringement cannot exist in the absence of direct infringement, however the indirect infringer is responsible for the full amount of damages caused by the direct infringers.

Requirements for Finding Indirect Patent Infringement

Two key requirements for a finding of indirect patent infringement are that another party directly infringed the patent at issue and that the indirect infringer knew or should have known about the patent that was infringed. Without either of these elements, there can be no indirect infringement.

Relevance of Indirect Patent Infringement to Business Owners

Alleging indirect patent infringement has become a popular litigation strategy that allows patent holders to sue producers, vendors, importers, and others for selling products which either enable or require the end user to infringe the patent in question, without themselves directly infringing upon the patent. Therefore, businesses need to have an understanding of indirect infringement.

Modern patent law defines two types of indirect patent infringement: contributory patent infringement and inducement of patent infringement. My next post will summarize what constitutes contributory infringement and inducement and what you should be aware of when bringing new products to market.

However, few think about the flip side of this coin: how to ensure they are not violating the patent rights of others. Any business or entrepreneur coming out with a new product needs to be aware of the fact that you can infringe patent rights without copying a patented device, and in fact without even knowing about the patent you are violating.

The only way to be reasonably confident that you are not infringing on the patent rights of others is to have a state-of-the-art/clearance search performed to find out what relevant patents are out there. If you find anything close, it may be necessary to have a full infringement opinion prepared, advising you as to whether your new product will infringe the patent in question and if necessary advising you on ways to avoid infringement.

The typical strategy for avoiding patent infringement, once it appears infringement is a possibility, is to design around the patent in question. This is done by ensuring that the new product has features that place it outside of the scope of the identified patent. Having a favorable infringement opinion in hand will protect you from any later accusations of willful (deliberate) infringement, which carries elevated damages.

I will be discussing infringement more in subsequent posts. Please leave your questions in the comments.

Steps for Getting A Patent – Part 2 from Legal River on Vimeo.

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Steps For Getting A Patent – Part I from Legal River on Vimeo.

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This is Terrible Advice

No Fortune 500 companies are going to read Seth Godin’s blog, see the light, and decide that those cease & desist letters really were not worth it after all, and maybe they should stop sending them out. To the extent that Godin’s readership consists of people who actually might seek intellectual property (IP) protection, I imagine they are primarily entrepreneurs and small business owners. Godin’s article will encourage them not to seek out such protection.

These people do not need anyone to convince them NOT to protect their IP. Not protecting your IP is easy-just don’t do anything! Lots of people do that because they are not aware of the importance IP can have to the success of their business. Not protecting your IP because Coca-Cola or MGM is sending out 10 cease and desist letters today is a mistake of monumental proportions and it is irresponsible to encourage entrepreneurs to make that mistake.

What Entrepreneurs Need to Know About IP Protection

Entrepreneurs need to know up front what IP protections are available and what their costs and benefits are. And there are benefits- potentially enormous benefits. Recent estimates place the total value of patents in the U.S. at $200 Billion. Brand value (integrally tied to trademarks) makes up a third of the total value of fortune 500 companies (that’s well over $1 trillion folks).

Registering a trademark is not about suing everyone who says the words “thank you”, it is about protecting your brand from competitors and avoiding costly legal conflicts. Patenting an invention allows you to lock your competitors out of the marketplace for a period of 20 years, and if you can get a patent for a valuable invention you came up with in the shower, more power to you.

An initial patent search and provisional application are essential to any entrepreneur planning to start a business around an innovative new product. They cost a lot less than “tens of thousands of dollars” (try ~$2,000) and without them potential investors and partners will not even talk to you. Without a search, you do not even know if your invention has any value. These protections are just part of the cost of entering that kind of business, and they are far from the largest cost involved (try prototyping or manufacturing an initial run).

So don’t dismiss IP protection out of hand. Figure out the costs involved and the likely benefits and do a cost/benefit analysis.

Should I Spread My “Ideas” Around as Godin Suggests?

Not if they have value to you. If, considering the risks involved, the cost of trying to protect your idea is greater than its benefit to you, then sure you should find something else to do with it. Maybe, as Godin suggests, telling everyone about it will build your reputation and be beneficial to you.

But for a company to spread its brand around freely or spread its new, heavily researched product around to its competitors in order to “Build a reputation as someone who creates great ideas” would be destroying enormous value- and insane. In this digital age, IP protection matters more than ever.

There are two types of reexaminations, ex parte reexamination and inter partes reexamination.  In an ex parte examination, the only input allowed from the a third party is in the initial stages when a reexamination is requested.  After that, the reexam is conducted by the examiner and the patent owner, without any further input from a third party.

In contrast, inter partes proceedings are adversarial and similar to a trial, with third-party input throughout the process.  Inter partes reexaminations are (exceedingly) rarely requested, due to the fact that they are expensive and can lead to a loss of rights if the parties end up in litigation.

Therefore, this article addresses the ex parte reexamination procedure.

Request for Ex Parte Reexamination: Fees

A request for ex parte reexamination carries a government fee of $2,520 and is typically a lengthy and complex document requiring quite a bit of work by a lawyer.  You can expect total costs to range from$10,000 up.  Nevertheless, this is a bargain compared to litigation.

Request for Ex Parte Reexamination: Requirements

A request for reexamination may be filed by any person (including the patent owner) at any time during the enforceability of a patent.  Besides the fee mentioned above, such a request must include (37 CFR 1.510):

1. A statement pointing out substantial new questions of patentability based on prior patents and printed publications;
2. An identification of the claims for which reexamination is requested and an explanation of the relevance of the cited prior art to every such claim;
3. A copy of every patent and/printed publication relied upon;
4. A copy of the entire patent to be reexamined; and
5. A certification that a copy of the request was served on the patent owner, or a duplicate copy of the request if service was not possible.

Note that, in accordance with requirement 1, the request must be based on prior art- not informalities such as a lack of written description- and must raise substantial new issues of patentability.

An issue of patentability is new if it has not previously been considered by an examiner.  An issue of patentability may be new even if it is raised by prior art that was considered by the examiner, as long as the examiner has not addressed that exact issue (e.g., a particular way of combining the references).

Request for Ex Parte Reexamination: Decision and Subsequent Procedures

A proper request for ex parte examination will be decided within three months.  If the examiner finds that a substantial new issue of patentability has been raised, an order for reexamination will be issued (35 U.S.C. 304, 37 CFR 1.525).

If not, the Request will be denied. A requester has one month from this denial to petition the PTO Director to reverse this decision (37 CFR 1.515).  If such petition is not granted, the decision is final and cannot be appealed.

If reexamination is ordered, the patent owner may make a formal statement in response within two months (37 CFR 1.530).  If the patent owner formally responds, a third-party requester has two months to reply (37 CFR 1.535).  If no formal statement is made, no reply may be entered.

The Examiner then proceeds with the reexamination, rejecting or allowing claims essentially as in a normal examination.  The requester plays no further role.

Any questions?  Leave them in the comments below.  I will discuss the reexamination procedure in greater detail in the future.

In that vein, I recently came across a set of informational videos available at the World Intellectual Property Organization (WIPO) website here.  These Flash videos are geared towards small and medium-sized entities (SMEs) and address all the different types of intellectual property and their importance to the success of a business.

They have some really great practical information that just about any business owner or manager would benefit from reviewing.  My only complaint is that they seem to run somewhat slowly at times, perhaps due to the Flash implementation.

Take a look and let me know what you think about the videos in the comments.