Tag Archives: Patents

To search or not to search

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A post from our student blogger Nicole

Today I want to tell you about another funny teacher we have; our Patent Searching teacher.  For those of you that don’t know, Patent Searching is about in depth searching for prior patents that may be relevant to the patent you’re working on through multiple databases.  By relevant I mean any patent already published or filed that is similar, but not the same exact thing, to the patent you will be working on.  The teacher is quite funny.  It’s especially funny when he makes up his own lingo, for example, he told us the code on one of the databases was the cuckoo code.  He’s always cracking jokes in class and telling us about his awesome trips, for instance, his trip to Japan for a searching competition.  How awesome is that?  And what was even better was that he brought back a treat for everyone. Green tea kitkats!  It does sound a little strange but they were actually really good!

Now getting into the actual details of the class.  There are multiple databases used in this class to help you search for relevant patents to your capstone project.  All of these databases have their ups and downs, but you will learn what you prefer the most.  As for me and my mouse device, I’m having a bit of trouble searching for any relevant patents.  My biggest problem is the word mouse.  When you search it you get results for a computer mouse rather than lab mice.  This is a perfect example of how literal and difficult these databases can be.  But don’t let that intimidate you because you learn how to fix this problem with the help of this class.  That’s why this class is so important!  There is so much technique that goes into searching that I had no idea about.  It’s quit fascinating to learn about all the little tricks that go into searching.  They become very convenient when you work on your capstone project.  The homework assignments are a huge help as well and don’t be afraid to talk to the teachers because they are very willing to help out!

The teacher likes to end his lectures by asking if anyone has questions and when nobody raises their hand he says so everybody knows everything.  Just another way to make his class laugh.  Like he said a lecture is more memorable with a laugh.

Pedal to the Metal

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A post from our student blogger Roberto

As you likely know by now students in the MSPL have been working long and hard all year on their individual capstone projects.  These projects are writing patent applications on various technologies for researchers at Notre Dame.  At the conclusion of first semester the students each gave a lengthy presentation to a panel comprised of their inventors, Dr. Deak who is the director of the MSPL, and the representative from the Office of Technology Transfer at Notre Dame who is assigned to their technology.  In this first presentation the students worked to explain and demonstrate their understanding of the technology as well as presenting a preliminary set of claims they had forged to protect this technology.  This semester, students have worked with professional mentors to perfect their claims and round out many of the sections of the patent application document.  This document served as the MSPL thesis and was recently submitted by all the students who intend to graduate this coming May.  After submitting their thesis, students also have to give a second presentation to the same panel.  This time the students present on the work they did this semester and explain the bulk of the patent application they have crafted.  The second presentation wraps up all the work the student has done and allows the Office of Technology Transfer to take the project on from that point.

A few months ago I sat down and looked at my schedule and decided that I was going to take the USPTO patent bar exam at the end of March.  At the time, I wrote off the effect of the compounding thesis requirements on top of studying for the bar exam using the PLI review materials.  A few short days after turning in my thesis and giving my thesis defense I took and passed the patent bar exam.  It was a crazy but extremely rewarding feeling knowing that I had attained my three main academic goals for the semester and that now I could focus on finishing out my year strong and getting ready for my next challenges.  The MSPL program put me in a fantastic position to succeed on exam day and prepared me well for the variety of questions that were asked.  Our work in the MSPL gave me real life experience that was invaluable and made the entire process much easier.  That being said, the MSPL’s focus is not solely on preparing students for the patent bar and therefore it was necessary to fully exploit the wealth of PLI study materials we have access to.  After taking many practice tests I was ready to go and hit the ground running.

Fisker Thunderbolt (top) and Aston Martin One-77 (Bottom) (Photo courtesy of Car and Driver)

Fisker Thunderbolt (top) and Aston Martin One-77 (Bottom) (Photo courtesy of Car and Driver)

Now, for the fun part of this post.  One thing you probably don’t know about me is that I love cars.  When I’m at home it’s hard to find a weekend where I don’t find myself tearing something apart or putting something back together.  For example, over Easter break my father and I replaced the radiator on a car and schemed as to the next parts we were going to buy and install.  This past week there were some major developments in the auto industry that had intellectual property undertones.  First, one of the most acclaimed contemporary automobile designers, Henrik Fisker, has been accused of copying a design of his former employer, Aston Martin.  Fisker, who now is a founding partner and executive chairman of Fisker Automobiles, recently debuted a “design study” named the Thunderbolt which shares a striking resemblance to the infamous Aston Martin One-77.  Initially, Fisker approached Aston Martin about producing the Thunderbolt and received staunch resistance but he decided to continue on his intended path regardless.  Aston has said that after this initial approach, the conversation had left them believing that Fisker would drop the Thunderbolt concept in an effort to avoid any potential issues.  That all changed when Fisker himself showed up at the Amelia Island Concours d’Elegance, which is the premier automobile charity event in the world, in the none other but the Thunderbolt.  The response from Aston was swift and a legal team soon filed a lawsuit against Fisker in California on multiple counts of trademark infringement.  In particular, Aston alleges that the Thunderbolt contains confusingly similar grille and side vent designs compared to its trademarked designs. Most people believe this to be an attempt by the fledgling Fisker to make off with the high class brand and image Aston Martin has worked so hard to establish.

Lincoln Continental Concept (Top) and Bentley Flying Spur (Bottom) (Photo courtesy of Autonews)

Lincoln Continental Concept (Top) and Bentley Flying Spur (Bottom) (Photo courtesy of Autonews)

In a strikingly similar case, Bentley finds itself contemplating potential legal action after the 2016 Lincoln Continental concept was unveiled at the New York auto show.  Much like the Aston-Fisker case, Bentley is upset because Lincoln is attempting to unfairly profit from the brand image Bentley has worked hard to attain.  As you can see from the images, several key aspects of the Bentley are present in the Lincoln and serve to confuse the buyer as to the product they are actually viewing.  By most estimates, the 2016 Lincoln Continental, should it become a production car, would retail in the $60,000 range which is only a fraction of the over $200,000 base price of the 2014 Bentley Flying Spur.  Perhaps the most fascinating aspect of this case is the reaction of Bentley head designer Luc Donckerwolke (who is also the man responsible for the stunning Lamborghini Murciélago) who said; “Somebody asked me if I wanted to sue. I said, ‘No! I don’t want to sue. I don’t care about that. My issue is about respect for the car-design process.’ If we start copying each other, then this is a negative for the design culture.”  In today’s global rip-off culture it is refreshing to hear such a prominent figure speaking out against acts which are all too often considered common place.  It will be interesting to see how Bentley proceeds and if they take notes during the pending legal case between Aston Martin and Fisker.  It is often said that imitation is the sincerest form of flattery but I’d be willing to bet that recent events have left Bentley and Aston Martin less than impressed.

Patent trolls

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Just your friendly neighborhood patent troll. Beautiful image courtesy of WIPO illustrator, Bob MacNeil

Just your friendly neighborhood patent troll. Beautiful image courtesy of WIPO illustrator, Bob MacNeil

A post from our student blogger Roberto

Staying up to date on intellectual property news is tough.  In a field centered on the advancement of technology it’s no surprise that there are things always going on.  Doing a quick search on Google for “Intellectual Property” returned more than 15,500,000 results in the “news” category alone.  Lately, one of the most trendy and talked about topics is “patent trolls”, which are also known as “non-practicing entities” (NPEs) because of their tendency to never actually produce a product covered by the patent, and “patent assertion entities” (PAEs).  The term “troll” is pretty descriptive and, even without any further understanding of the concept, one immediately conjures up a negative image in their head.  For instance, some may imagine a mammoth forest green creature with warts the size of golf balls covering them from head to toe whom is wielding a massive sand barbaric wooden club.  Taken in a patent law context, that creature with warts is often a corporation swinging around the weight of its potentially damaging patent portfolio.  In many instances, patent trolls are corporations that acquire and own patents simply for the purpose of chasing down potential “infringers” and doing all they can to get the most money possible out of them.  At first, many of these trolls send the infringing entity a letter asking for a reasonable royalty to continue doing whatever it is the troll believes is infringing their patent.  Now, either the “infringing” company gives in to the troll’s demands or they do nothing and wait for the troll to potentially file a lawsuit against them.  Often times after not getting their royalty, the trolls file lawsuits which, in the end, cost companies on average around $2M.  While some large corporations can easily absorb that cost many small startups cannot and are permanently crippled as a result.

While patent trolls have existed for a long time, by some accounts since the turn of the 20th century, there has been a recent push to reform current laws to combat patent trolls.  On March 18, 2015, there was a Senate Judiciary Committee hearing on patent reform titled The Impact of Abusive Patent Litigation Practices on the American Economy.  At this hearing a large amount of focus was placed on finding ways to eliminate trolls from existence.  The troll destroyers, as I have termed them, argue that patent trolls have cost American businesses a lot of money.  Further, many fear that patent trolls could attack vulnerable small startups and force them out of business when they don’t have the funds to enter into a lawsuit or pay the royalties demanded by the trolls.  It is no surprise that over the past four years ten bills that attempt to combat patent trolls have appeared before Congress without any of them getting through.  These bills have not only met a tough audience, much of congress is not particularly well versed in patent law or related issues, but also has met a battalion of resilient and powerful patent troll lobbyists.  Many of these past reforms focused on increasing the penalties on trolls for losing patent infringement lawsuits and the same plan of attack is still being pursued by some Senators today.

Given all of the hatred on the patent trolls, by people like the troll destroyers, it makes sense to ask yourself how anyone could possibly be in favor of patent trolls.  Well take a journey with me as I transform you into just that, a patent troll abolitionist and war chief.  Imagine yourself coming up with a great idea for a brand new windshield for your car.  This windshield is amazing, it’s hydrophobic causing rain and water bead up and roll off it, it’s internally heated by invisible resistance heating elements that melt snow on contact and prevent ice from forming on it, it has an integrated and invisible photovoltaic cell array that charges the car’s battery, and it attaches to the cars computer to regulate the temperature of the glass so that it never gets fogged up.  After developing the product and working with your friendly neighborhood patent agent you are granted a patent on your awesome new windshield.  You call all your family members and friends and ask them to pitch in money to help you get a company started.  After investing all that time and money you finally get your first sale.  Sales over the next few months are slow, and you decide to approach Ford about licensing the windshield from you for use in future vehicles.  Much to your surprise, it is almost impossible to figure out who to talk to and how to get them to listen.  After pitching your idea to several “VPs” they tell you that they aren’t interested and send you on your way.  Discouraged, you decide to continue to try and sell it on your own, figuring that your awesome product would catch on and people would buy them once they saw how great they are.  One weekend you are sitting at home watching the commercials during the Packers game when you see it.  A commercial for the brand new Ford Raptor, a truck that has a never-before-seen windshield that has all the same features as your prized creation.  You are in an utter state of shock.  You run to the computer and do a quick online search.  You immediately notice that the windshield is identical to yours and it is getting all kinds of publicity causing orders for the new truck to go through the roof.

This is almost identical (minus the awesome windshield idea I came up with) to the stories of many inventors, including a U.S. veteran named Fred Sawyer, whose amazing story can be read here.

What do you do?  You could try to bring legal action, but that takes funding you simply don’t have. You would need to have the funding to compete with a mega-corporation that plans to simply out spend you.  What is most likely to happen is that you lose out and go out of business.  Today, inventors can turn to patent trolls to team up and go after that big corporation using the funding the patent trolls have.  Without someone like the patent trolls the small inventors would have no chance at competing in arena where the price of entry is north of $2M.   Without trolls there would be no way to practically enforce patent rights because of these financial realities.  Still, inventors pay a heavy price for partnering with the trolls, often forfeiting 95% of their patents value after winning a patent infringement case.  Even if the inventors decide to go to battle alone the act of waging war on an all-powerful corporation often earns them the title of “patent troll” as well.

So, now that you have seen both sides of the coin, what are we to make of patent trolls as a whole?  I believe the term “patent troll” is misleading and that the trolls are actually divided into two camps.  One camp that wants to pillage every possible piece of intellectual property and make as much money as possible through downright exploitation of the system, these are the trolls that (almost) everyone agrees we need to address in some way.  The other is the camp of trolls that exist to provide balance and security for the small inventors against the big corporations that they otherwise would have no chance against (included in this camp are the single inventor “trolls” going at it on their own).  Any potential patent reform needs to be wary of these two distinct camps and the effects any legislation would have on this precarious balance of power.  Take away too much of the troll’s power and with it goes the security of the single inventor.  Figuring out an answer that protects inventors while combating wasteful litigation will be difficult but is necessary to preserve the integrity of our patent system.

The intellectual property story of Legos

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Figure 1: Comparison of Mega Bloks (Top) and Legos (Bottom). (Courtesy of Wikipedia)

Figure 1: Comparison of Mega Bloks (Top) and Legos (Bottom). (Courtesy of Wikipedia)

A post from our student blogger Roberto

As a kid, I could usually be found playing ball in the yard with my brother until the sun went down.  When we were forced to be inside, either by the lack of sunlight or good weather, my brother and I would always find something fun to do.  Many times I would find myself with screwdriver and hammer in hand, plotting how to take something apart in order to figure out how it worked.  As you may be able to guess, this led to the absolute destruction of many valuable items, including a watch which was my mother’s wedding gift to my father.  Shockingly, my parents were in desperate need of a new way for me to get my early engineering fix and began investing in Legos.  Like any aspiring engineer, I spent days on end constructing the coolest hydrogen-powered intergalactic star destroyers and subterranean exploratory vehicles.  Pretty soon I was bringing my creations to family gatherings showing them off like blue ribbon cattle at the state fair.  Before long my amazing family contributed to the cause by routinely giving me Legos on birthdays and at Christmases.  I remember one year getting a set of Mega Bloks and initially not even realizing the difference.  For those who do not know, Mega Bloks are a direct competitor to Lego’s interlocking brick platform and often times can even be used interchangeably with Legos.  After using these new Mega Bloks with my old Legos I soon realized the truth; the Mega Bloks were simply not as nice as the Legos I had come to know and love.  These Mega Bloks looked and worked like Legos but were not made to the same quality.  Rather than precisely locking together like Legos, Mega Bloks were flimsy and never really fit well together often leading to weak structures that fell apart.  In contrast, my Lego creations were so rigid that they needed to be pried apart and often doubled as formidable defense measures against an unexpected onslaught by my brother.

So why am I spending all this time talking about Legos?  Well, while reminiscing about my childhood over our recent spring break I remembered my love for the little plastic blocks.  After I thought about them for a while I asked myself two things.  First, where the heck were they, I needed to find them and relive all these awesome memories.  And second, I wondered what kind of crazy intellectual property issues Legos ran into.  After doing some research I found out that the Danish company started selling toys in 1932 and introduced the first of their famous bricks in 1958.  As you may be able to guess, many of Lego’s patents have since expired with the last major one expiring in 1978.

Mega Bloks first entered direct competition with Legos in 1991 and has been involved in about a dozen lawsuits with Lego since then, many of which are still active.  The natural question now is, how did Mega Bloks’ activity after Lego’s patent expirations result in a lawsuit?  Well, after running out of patent protection Lego’s savvy legal team turned to copyright and trademark protection.  In particular, Lego has tried to protect the visual appearance of its standard brick with eight studs through trademark protection.  In 2005, Lego sued Mega Bloks for trademark violation in Canada and lost and after that, Lego brought a similar suit against Mega Bloks in Europe and lost again.  As it stands right now, Lego is currently grasping at straws to protect its intellectual property and facing the possibility of little real protection.

Figure 2: Image of "Lego Friends" Comparison (Courtesy of Cato).

Figure 2: Image of “Lego Friends” Comparison (Courtesy of Cato).

While many of the cases surrounding Lego’s trademark of a block with studs have been settled Lego is now going after competitors for making products similar to their new “Lego Friends” products.  Lego has recently filed a complaint to the U.S. International Trade Commission (ITC) against several companies to bar importation of several products similar to their “Lego Friends” products on the basis of copyright infringement.  The ITC’s intellectual property powers originate from their responsibility to protect domestic industries from “unfair competition”.  The key issue here is that Lego is a Danish company which manufactures its products in Europe and Mexico.  This may disqualify them from standing as a “domestic industry” and therefore they may not subject to the ITC’s protection.

What presents an even more interesting situation for Lego is the advent of 3D-printing technology.  As you may know, 3D-printers are becoming less expensive and are beginning to offer more capabilities.  In the coming years as 3D-printers become common place it will be impossible for Lego to prevent others from printing their own bricks.  In fact, a professor at Carnegie Mellon University recently created an online library of pieces which can be printed by anyone with a 3D-printer.  It is not out of the realm of possibility that 3D printers will dramatically impact sales of products like Legos which are largely uniform and easy to print.  As the cost of 3D-printers and supplies continue to decrease, at what point will Legos become simply too costly?  These issues are surely being considered by the company and it will be exciting to see how they adapt.  Before long Legos may no longer be bought at the store, but downloaded online and printed at your desk.

Chicago, Chicago – it’s a wonderful town!!

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On Friday, October 26, 2012, the MS in Patent Law students went to Chicago to hear from Wade Green and Ashley Romano about what it’s like to work in a University’s Office of Technology Transfer.

We arrived a bit early, so the students could have an opportunity to explore the city. They saw the Bean (properly, “Cloudgate”).

photo by MSPL student Beau Horner

Students also went exploring the culinary scene, and found a great pastry shop.

photo by MSPL student Sarah Goodman

photo by MSPL student Sarah Goodman

After the careers presentation, we headed to Chinatown for dinner. We shared hot-pot, and everyone had bubble tea! The floor of the restaurant had a “river” built into it, with real koi.

photo by MSPL student Sarah Goodman

 

Look for a post soon about what the students learned about careers for patent agents in Universities!

Are Patents Romantic?

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We may typically like to think of our great American inventors as rogue loners toiling away in their humble garages, only to emerge with the next personal computer, or the equally revolutionary light bulb. But apparently that is a myth ready for busting. It may not be romantic, but the real hotbed of invention is in professionally-staffed, fully-funded laboratories.

This misconception is unfortunate, says Eric Issacs at Slate.com, because it “has a real impact on the way this nation views the importance of the knowledge enterprise and the scientific infrastructure that supports it.” And since patent/legal departments fall under this scientific infrastructure, the argument seems a relevant one.

Issacs issues examples from then and now. Even Thomas Edison, arguably the progenitor of the “isolated-genius-inventor” conception, actually headed up the largest scientific laboratory of the times, with a staff of 40 in New Jersey.

And the garage of William Hewlett and David Packard in Palo Alto? The one that now has a plaque that says “Birthplace of Silicon Valley?” Who knows if that honor could have been bestowed if not for the duo’s access to the electrical engineering resources of Stanford University?

The problem, says Issacs, is that if the public doesn’t recognize the role that institutions play in nurturing ideas and facilitating experimentation, support for those institutions may falter and the real engine of innovation (the un-romantic) could be undermined.

Can we say the same for the patent process? Patents do provide inventors with exclusive rights to market their inventions, though in a similar manner to the inventor-myth above, the “inventors” who own the patents are often corporate conglomerates. Still, it’s the revenue from that period of exclusivity that fund further large-scale laboratory research, and profits that pay the men and women researching behind the scenes—regardless of whether they have a garage or not.