Patent Deadlines in the Shadow of COVID-19
For the past few days, I have been discussing urgent deadlines with my clients. One client had planned to file his US provisional abroad in a few countries and had given me instructions and payment in December for an early April deadline. A second client had a national phase filing from his Patent Cooperation Treaty (PCT) application. And a third client had a Chapter II demand in his PCT application. All of them were working towards their deadlines, amending the application w
Why Patent Applications are Hard to Write
In my last post, Why Patent Applications are Hard to Read, I gave half the story. The other half is that patents are hard to read because they are hard to write. When a writer’s thoughts don’t flow smoothly, the resultant text doesn’t flow smoothly either. A good patent attorney must use the inventor’s explanation to understand both the idea and what is inventive about it. This requires understanding the technology of the invention and also the ‘prior art’. Many inventors don
Why Patent Applications are Hard to Read
When you want to learn about a new subject, where do you go? To a journal article? To the Wikipedia? Which source provides the clearest explanation of the subject? The Wikipedia often gives a good overall explanation of a subject while a journal article will flesh out details or supply a more academic discussion. These are the two most common sources for information. But did you know that the patent databases are also supposed to “further the state of the art”? This is one re
Secrets of a Patent Attorney
We patent attorneys meet inventors and tell them if we think their idea is “patentable”. But how do we know? How do we figure out what is inventive? Our job is to listen to an inventor’s description and, from it, to grasp the essence of the invention. We summarize the inventive aspects of the invention by defining the difference between the invention and the prior art. Where do we get the analytical mindset? From many places, but mostly from academic studies. In the Mechanica
Mobile Apps – an answer to the software patentability question?
Have you ever played Pokemon Go? It’s an exciting game – you see Pokemon characters superimposed on your mobile phone’s view of the world around you! The characters look as if they really exist in the world. A real-world game with virtual characters brilliantly integrates the various smartphone capabilities. The game is very successful, but is it a patentable invention? Pokemon Go is an application for a smartphone (a software program which runs on the operating system of the
Provisional Patent Applications
A potential client came to me with her provisional patent application. She had written it herself and then filed it via another patent agent. The document was a pleasant read and I understood her invention well. However, the provisional filing could have been improved. For one thing, it should have had a claim in it. US patent law defines a patent application as having certain elements, one of which is at least one claim. However, many provisional patent applications don’t ha
3D Printing and its Effect on Intellectual Property
3D printing has become popular. The digital files describing mechanical products can now be easily shared, such that ordinary individuals can now create mechanical products. This significantly changes the economics of mechanical products. I grew up in the 1970s, when cassette tapes first became popular. I recall its effect on the music industry as individuals began taping radio shows and copying records. The industry had no way to control the distribution of the music it own
A StartUp and its Intellectual Property – A Timeline
* Published in the Jerusalem Post, 28Sep15 Amir and Yossi have a new idea for an interesting mobile app, one they think will go viral within a few months of its launch. They are very excited about it and they corral a few friends into helping them write their demo and prepare their business plan. After a few exciting months of late nights (after regular work hours) and many ups and downs, they finally have a working demo which they can show to a few initial customers. The fir
Registering Patent Ownership
You’d think that ownership of Intellectual Property is the business of lawyers. After all, they handle the contractual relationships between the parties. However, as a patent attorney, I find myself dealing with all sorts of legal questions which come as an adjunct to my work and, surprisingly, take up a lot of my time. My law firm has tax, corporate, employment and capital markets departments helping Israeli firms and I find that I have dealings with most of them. I also dea
Should You Patent Your Invention, Part 2
In a previous post, I talked about the importance of filing a patent application if you have an innovative product. But what should you do if your product isn't innovative? Or if you have a short term product for which patenting makes less sense? Should you just not look for IP protection? How do you protect your and your investors' investment? Well, patents aren't the only IP protection and many times they aren't appropriate. Other forms of IP are available to protect your
