what patent holders should do to defend their patents.

Validity search –

The validity search is a specific type of patent novelty search. The former is conducted to make sure that the patent was validly granted to the patent holder. This process can be extremely complicated and is not as simple as placing keywords in a patent search engine box and then getting an answer to pop out. Since it is a process, there are vital steps to consider along the way. Here are some of the steps you must look into with this patent related search that usually comes sometime after a novelty search has been performed.

First, you have to prove that your product is patentable. This is where the role of novelty search comes in. In this process, there are three prerequisites to consider. You have to prove that the product is novel or original and also that it has not been sold or published in the market for over a year. In line with this, you have to assert that your product is useful enough to carry its functions and to serve its purpose for the end users. Finally you have to show that your invention is not an obvious improvement over an existing product or invention To prove all these points, a patent novelty search will also be necessary.

A validity search should support the decision made in a novelty search. To be able to do that, this search should be conducted regardless of how certain you are with the patentability of your soon-to-be launched product or service. By doing so, you will be able to strengthen your invention at the same time get a less complicated patent application process. This will also help you get rid of possible litigation attacks and validity questions as to your product or service.

If someone else questions the validity of your patent claim, the validity search will also serve its purpose. If another party claims invalidity of the patent granted to you, they will do everything to prove that your patent is really invalid. This may then result in issues that will lead to a court trial and patent investigation needing to be performed. On your part as the patent holder, you should disprove these claims as your opponents assert their invalidity issues on your patented technology. Be ready to defend yourself by hiring assistance from IP attorneys or paralegals.

In cases when your patent is copied by another party, you may use the validity search to support your patent infringement claims. This will be crucial for you to prove that the plaintiff indeed copied your patented technology. Remember that the patent search may also be used by someone who is seeking a patent license from your existing product. This is for these future patentees to lower down the minimal royalty payments you require from them. Therefore, you have to make your necessary steps to contest these future problems.

A validity search therefore is not just done in order to support a novelty search. It can be used in a number of ways by you as patent holders. This patent-related search is crucial for you to disprove invalidity claims made by other persons who want to claim the patent license already granted to you. At some points, you may also make use of it in support for patent infringement searches. If you want to receive royalty payments due to you from those whom you are granting your patent’s license, this type of search also be of great help.
Looking for people who will help you through a novelty search and validity search? Get help from our team of experts and have all your patenting concerns addressed.

This entry was posted on Sunday, May 16th, 2010 at 4:43 pm and is filed under Uncategorized. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.

Software Theft Remains Significant Issue Around the World

The rate of global software piracy climbed to 43 percent in 2009. This increase was fueled in large part by expanding PC sales in fast-growing, high-piracy countries and increasing sales to consumers — two market segments that traditionally have higher incidents of software theft. In 2009, for every $100 worth of legitimate software sold, an additional $75 worth of unlicensed software made its way onto the market. There was some progress in 2009 — software rates actually dropped in almost half of the countries examined in this year’s study.

Given the global recession, the software piracy picture could have taken a dramatic turn for the worse. But progress is being outstripped by the overall increases in piracy globally — and highlights the need for governments, law enforcement and industry to work together to address this vital economic issue.

Below are key findings from this year’s study:

• Commercial value of software theft exceeds $50 billion: the commercial value of unlicensed software put into the market in 2009 totalled $51.4 billion.

• Progress on piracy held through the recession: the rate of PC software piracy dropped in nearly half (49%) of the 111 economies studied, remained the same in 34% and rose in 17%.

• Piracy continues to rise on a global basis: the worldwide piracy rate increased from 41% in 2008 to 43% in 2009; largely a result of exponential growth in the PC and software markets in higher piracy, fast growing markets such as Brazil, India and China.

http://portal.bsa.org/globalpiracy2009/index.html

The Provisional Patent Application: Myths, Realities… and new deadlines!

Inventors often wonder what path they should follow when it comes to filing a patent application. Most small companies with limited cash and unproven technologies are naturally attracted by the apparent cost deferral (but not necessarily cost savings) of filing a “provisional” application, as opposed to filing for the permanent application on day one. They also like the one year period the provisional application allows them before having to file their final application while deciding whether to commercialize their invention and invest further (or preferably find others do so).

Although opinions diverge among professionals as to its pros and cons, it remains true that a provisional patent application can usually be prepared quickly and for less money. Hence, it can be most useful where the applicant is so cash strapped that it cannot afford paying for the full application immediately, or when it is on the verge of a tradeshow, a conference or meeting with potential investors (who rarely will sign a NDA), all scenarios that can trigger a “public disclosure”. Note that this is mostly relevant if the inventor intends to seek protection outside of the US (since the disclosure would negate international rights), as the US still allows for a one year grace period to file domestically after such disclosure. Finally, it may impress those same early investors who tend to look for unique and –eventually- enforceable IP as an indicator of future commercial success.

But taking this route is not risk free; the final application will be limited to the patentable subject matter disclosed initially in the provisional, no more. So features or improvements not clearly described initially will not be covered. Hence, anything done too hastily or to save some money upfront may later feel penny wise pound foolish. Also, because the patent attorney will have to get reacquainted with the case a year later, the total cost of taking a two step process is likely to be higher at the end than filing just once in the beginning.

Regardless, provisional applications have become increasingly popular in this economy. And a recent announcement by the USPTO may skew the balance even further in this direction. Indeed, a few weeks ago, the US agency published a proposal by which it would offer an additional 12 month “extension” to the current 12 month patent provisional application period. Under the current rule, the applicant must convert their provisional filing to a full utility patent within 12 months thereof in order to retain their priority filing date and avoid their application being deemed abandoned. Under the proposed rule, the one year delay would still be in force (only Congress can change it), but the USPTO would “look the other way” for an additional year before sending a notice of “missing parts”, in fact giving the applicant up to 24 months to make a final decision regarding their application.

It should be noted however that this change would not affect foreign filings, which must still be filed within 12 months after the filing date of a provisional application in accordance with the Paris Convention. This means that the new proposed rule would not at all benefit applicants who wish to secure patent protection beyond the US territory, a common strategy nowadays as a result of globalization. Also, by exploiting the delayed payment, an applicant would forego their right to opt not to have the patent application published at 18 months from the provisional patent application filing date.

Many have argued that the USPTO’s proposal is primarily self-serving in a feeble attempt to mask its terrible backlog by leaving provisional applications “off the books” for a few more months and hoping more people will abandon their application. Furthermore, by encouraging delayed filings, the cash starved agency is poised to reap more of those extra fees required for late filing. Nevertheless, this proposed change wouldn’t really impact those who don’t want to take advantage of it and it is likely to provide added flexibility to the small entities for whom buying time and deferring patent related costs by a few months are paramount to their business strategy or very survival.

http://us1.campaign-archive.com/?u=75d5302469ff470b1cab68545&id=a476fdd9e2

Will USPTO use Section 112 more often in rejections of software patents claims?

USPTO Director David Kappos recently commented on the March 22, 2010 Federal Circuit en banc decision Ariad Pharmaceuticals v. Eli Lilly and concluded that the written description requirement remains alive and well and is an essential “backstop” against overclaiming. In the case, the Federal Circuit held that Section 112 of the Patent Act has a written description requirement that is separate and apart from the enablement requirement.

The Ariad decision is considered important for the USPTO because written description is a critical tool for ensuring that an applicant does not claim more than he is entitled to claim. The Office recently conducted a survey of 6,865 final rejections issued over a 4.5 year period between 2005 and 2010. A written description rejection was made in about 9.7 percent of all applications during this time period. This data shows that the written description doctrine is essential to the Office’s ability to perform its basic examination function.

Now, Jim Singer concludes in his recent IP Spotlight post that this may be a signal that the USPTO intends to apply Section 112 more aggressively to software claims, since Mr Kappos explains:

[T]he written description doctrine is particularly useful in examining claims that employ functional language, or that merely set forth a desired result without any indication of what achieves that result. . . . Thus, when confronted with functional claims, as with results obtained claims, I encourage examiners to carefully consider whether such claims — amended or original — are adequately supported by the specification.

And, since it's not a secret that patent claims relating to software often use functional language, as the function of the software is typically what separates it from the prior art, Mr Kappos strongly supports the USPTO examiners using the written description requirement to prevent issuance of such vastly overbroad recitations. Unless an applicant has devised every solution to a problem, the applicant is not entitled to patent every solution.

http://www.visaepatentes.com/2010/05/uspto-director-david-kappos-recently.html

Patents and Stock Market

Here is another classic example of the Intellectual Property impacting the Share prices. The recent the long-running TiVo patent litigation against DISH and sister company Echostar (SATS) alleging violation of TiVO’s DVR patents by Dish DVRs.

The U.S. Appeals Court for the Federal Circuit has granted a request by DISH and SATS for a rehearing en banc - meaning a hearing by all the judges of the circuit, and just the smaller panel that heard the original appeal - of a previous appeals court ruling that had been highly favorable to TiVo. The court today vacated a March 4 Appeals Court ruling which had upheld a district court decision that had found SATS and DISH in contempt of court of a previous ruling that found DISH had violated TiVo’s DVR patents.

The four-page ruling by the court asks the two sides to file new briefs on four issues:

* “Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?”

* “How does ‘fair ground of doubt as to the wrongfulness of the defendant’s conduct’ compare with the ‘more than colorable differences’ or ’substantial open issues of infringement’ tests in evaluating the newly accused device against the adjudged infringing device?”

* “Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes and (2) what weight should be given to the infringer’s efforts to design around the patent and its reasonable and good faith belief of non-infringement by the new device, for a finding of contempt?”

* “Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?”

http://blogs.barrons.com/techtraderdaily/2010/05/14/dish-spikes-tivo-sinks-court-to-hear-appeal-in-patent-case/

Land Mark case in IP(patent) infringement

Imagine a world in which Microsoft wasn’t allowed to sell windows or word, no one could use a Blackberry, Intel’s chips were taken off the market and every company that wanted to deploy Linux had to pay an exorbitant fee to an obscure software vendor.

That world doesn’t, exist, of course. But each of those scenarios could have been realized if the outcome of five major patent lawsuits had been different. It easy to dismiss the recent lawsuit by Apple against HTC, the maker of Google’s Nexus One smart phone, as something that only lawyers need to care about. Indeed, most landmark patent suits are settled often at great expense without causing an upheaval in the technology industry.

Even so, patent litigation has become more than a cottage industry in Silicon valley. On the one hand, it protects intellectual property developed by independent entrepreneurs and industry giants alike. But it also wastes untold millions of dollars a year that could be better spent on innovation, says Charlene Morrow, who heads the patent litigation practice of Fenwick & West. “When startup valuations were very high, and a new company got a round of funding, you could absolutely count on a non-practicing entity to file a patent suit.

Non-Practicing entity? That’s a polite term for what others call “Patent Troll”, a company that purchases a patent, often from a bankrupt firm, and then sues another company by claiming that one of its products infringes on the purchased patent. Patent trolls typically have no actual technology or products on the market.

We are providing the most sensational patent cases ever to roil the technology industry.

1. Who invented the GUI?
Although it seems like relic of the distant past, it’s only been 30 years since Microsoft launched Windows 3.0, Its first successful operating system to sport a graphical user interface. It was a great ides, but whose ides was it anyway?

According to Apple founder Stev jobs, it wasn’t Microsoft’s; it was apple’s. or was it ? Legend has it that jobs actually got the idea when he took a tour of the famed Xerox PARC and saw an early version of a windowed operating system, recalls long-time semiconductor analyst Brook wood of insight.

Whether that’s true or not, Apple claimed that the “look and feel” of the Macintosh operating system, taken as a whole, was protected by copyright, and sued Microsoft in federal court in 1988. Not to be outdone, Xerox jumped into the fray before the original action was resolved and sued Apple for stealing its ideas.

After six years of litigation and appeals that went all the up to the United supreme Court, both suits were dismissed; Apple’s because it couldn’t prove its claim, Xerox’s because it had waited too long.


2. Is it Linux or UNIX?
In early 2003, an obscure software company called SCO, which had come into existence via a Byzantine series of mergers and technology sales, shocked Silicon Valley by announcing that part of its UNIX system code had found its way into Linux. SCO, which hadn’t invested the code, refused to identify the specific segment of the software, claiming that it was a secret which they would reveal only to the court.

A flurry of lawsuits followed, including a $1 billion action against IBM, and suits against Novell, Red Hat and Daimler Chrysler. For a while, there was a fear that third party customers who used Linux could be liable for huge damages to SCO. There were allegations that Microsoft, in a truly Machiavellian move, had funneled money to SCO to help fund a lawsuit that would damage its competitors. Ultimately, though, the cases fell apart.

3. No Crackberry for you
Hardly anyone had heard of a tiny Virginia-based company called NTP. That changed in a hurry when NTP, which held a basketful of wireless patents, brought suit against RIM, the inventor of the wildly popular Blackberry. A jury agreed that the patents were valid and RIM was hit for $53 million in damages.

Had it ended there, it would have been just another expensive lawsuit. But a judge then ruled that RIM was continuing to violate NTP patents by operating the black Berry data network. He could have issued an injunction to shut down the service. Panic ensued as everyone from Wall Street traders to senior advisers at the white house faced the loss of their favorite electronic gadget. Ultimately RIM settled for $615 million, one of the largest ever settlements in a technology patent case.
The NTP suit soarked outrage in many quarters at the perceived unfairness of the patent system. However, in a more recent patent case known as eBay vs MercExchange, the U.S Supreme Court issued a ruling making it less likely that a patent holder could win an injunction to shut down the business of a patent violator, says Michael Sacksteder, a patent attorney with Fenwick & West.

4.Chips Ahoy
Intel and a workstation maker called Integraph tangled in a complex series of patent lawsuits beginning in 1997. Integraph claimed that Intel, the worlds larger microprocessor maker, had stolen key features of its Clipper chip. One settlement, which that involved memory design, cost Intel about $3000 million. A second alleged infringement involving a microprocessor instruction set known as VLIW was settled for $225 million. Brookwood notes that the settlement was more money than anyone ever made bringing that technology to market. At $ 525 million, the integraph litigation resulted in the largest set of damages ever won against Intel.

Making matters even more complicated, computer makers, including Hewlett-Packard, become involved because they had purchased chips from Intel that included memory features claimed by Intergraph. Ultimately, those claims were settled as well.

5. A Gold Medal for the Canadians
It would be hard to find a product that has a larger user base than Microsoft Word, or an application that makes more money for its inventors. So when a tiny Canadian Company called i4i won an injunction preventing Microsoft from selling word, the world noticed.
The 30-employee company claimed that Microsoft had infringed on a patent for the use of an XML feature. Microsoft never stopped selling word, but it has removed the featured from word 2007 and the upcoming Office 2010 and paid $290 million in damages.
It’s worth nothing that i4i filed its case in the small East Texas town of Tyler, a venue considered the friendliest in the United States for claims brought by patent trolls.

One other bit of tech patent history: It appears that the term patent troll was first used by Chuck Mulloy, a veteran tech industry public relations man who has fought on both sides of the Intel-AMD chip wars. As Mulloy recounts, Intel was defending a patent case brought against it by a company called TechSearch. In an interview with reporter Dean Takahashi of the wall Street Journal, the normally affable Mulloy let his irritation show and he referred to TechSearch as a “patent extortionist.”

TechSearch’s lawyer’s quickly added a liable case to their suit. After a huddle with corporate attorneys, Mulloy retracted “patent extortionist,” and substituted the milder “patent troll.” “It’s like the troll that lives under the bridge, but doesn’t own it, and charges a toll on everyone who crosses,” he said recently.

HTC SUES APPLE FOR PATENT INFRINGEMENT

HTC Corporation (HTC) is one of the fastest growing companies in the mobile phone industry. By putting people at the center of everything it does, HTC creates innovative smartphones that better serve the lives and needs of individuals.

HTC Corporation today took legal action against Apple Inc., filing a complaint with the United States International Trade Commission (ITC) to halt the importation and sale of the iPhone, iPad and iPod in the United States.

HTC’s commitment to innovation has continued for more than a decade as it has focused on building a portfolio of the world’s most advanced smartphones that are inspired by consumers and provide them with a variety of choices in software, design, form-factor, price and wireless carrier. Today, consumers in the United States can choose between 12 HTC smartphones with the national wireless carriers. HTC has continuously strived to bring innovative smartphone choices to consumers, like the recently unveiled HTC EVO 4G with Sprint, DROID Incredible by HTC with Verizon Wireless and the HTC HD2 with T-Mobile.

http://www.htc.com/www/press.aspx?id=129616&lang=1033