Wired Wiki Post

Here is some text I prepared for the Wired.com “Patent an Invention” Wiki :

Unfortunately, the patent system, both in the US and worldwide, is quite complex and it is surprisingly easy to accidentally invalidate an otherwise valuable patent portfolio. Bearing this in mind here are some initial tips:

1. Do not disclose your idea to the public before consulting with a patent expert. “Disclosing” may involve detailing your idea on a blog, sending a design to 3rd party manufacturers or selling a product. Most patent experts or attorneys offer free initial consultations. While there are certain safety nets under US patent law, these do not apply worldwide – if you wish to sell your product or idea in London, Delhi or Shanghai its best to err on the side of caution.

2. The patent system has several built in time-limits which must be observed. For example, from an initial patent filing you have 12 months in which to file related applications in different countries worldwide. If you miss these time limits you may be stuck with a US or Estonian patent when actually your service has really taken off in Mexico. Again, this requires you to do some research or obtain an expert/attorney opinion.

3. Obtaining your own patent and potentially infringing someone else’s patent are the two different sides to the patent game. Each will need to be considered when releasing a new product or service. In most cases they can be considered independently.

4. Infringing someone else’s patent is not the end of the world. You can ask for consent to use the claimed technology (for free or for a licensing fee). Many companies bundle licenses and technical help together as one service, implementing someone else’s technology as part of a bigger (and in its own right patentable) solution can be cheaper and easier than recreating the technology from scratch (why reinvent the wheel when designing an electric car?).

EPO finally decides on President!

The Administrative Council of the European Patent Organisation, meeting in Munich on 1 March 2010 under the chairmanship of Jesper Kongstad (DK), has elected Benoît Battistelli (FR) to succeed Alison Brimelow (GB) as President of the European Patent Office (EPO). Currently Mr Battistelli is Director General of the French National Institute of Industrial Property. His five-year term as President of the EPO will begin on 1 July 2010.

http://www.epo.org/topics/news/2010/20100301.html

Google “location-based” advertising patent

Another day, another fluster online about a US patent granted to a well-known company.

This time the company is Google and the patent (7,668,832) is directed towards “controlling serving of an ad using its relevancy to a request” using “geolocation information“.

How NOT to interpret a recently granted patent (as demonstrated by most web-related news sites):

  1. Don’t refer to the claims of the patent in the news article, even though these define the scope of legal protection.
  2. Perhaps instead quote a section from the “Field of Invention” or “Background of Invention” sections (these sections respectively locating the patent subject-matter in a technology field and broadly describing what has been before – neither section gets to the heart of the invention).  Quoting from the “Background of Invention” is particularly favoured as this section is typically drafted broadly and typically is of the least relevance to the claimed invention.
  3. If you do locate the claims of the patent, summarise their subject-matter in a single sentence (even though they may in practice comprise several paragraphs of essential features), e.g. “patent on location-based ads” – wherein the independent claims actually require at least: –
  4. A computer-implemented method for controlling serving of an ad using its relevancy to a request, the method comprising: a) accepting, by a computer system including at least one computer, geolocation information associated with the request; b) comparing, by the computer system, the accepted geolocation information associated with the request with geolocation targeting information associated with the ad to generate a comparison result; c) determining, by the computer system, the relevancy of the ad using at least the comparison result; d) controlling, by the computer system, the serving of the ad, for rendering on a client device, using the determined relevancy of the ad; e) determining, by the computer system, whether the ad has geolocation price information corresponding to the geolocation information accepted; and f) if it is determined that the ad has geolocation price information corresponding to the geolocation information accepted, then determining, by the computer system, a score using at least the geolocation price information, otherwise determining, by the computer system, the score using at least general price information of the ad, wherein the act of controlling the serving of the ad further uses the score of the ad, and wherein the geolocation targeting information associated with the ad corresponds to an area defined by at least one geographic reference point.
  5. (In the present case, the latter features concerning a “score” appear to restrict the scope of the patent. This presents the possibility of a design-around.  However, the claims are sufficiently broad to require careful consideration if working in this area.)
  6. Gain lots of comments from Internet users about how “patents destroy creativity” and allow “big corporations to shut-out hard-working all-[insert country] inventors / start-ups” (even though it is nigh-on impossible to obtain a granted patent with a scope as broad as that insinuated in the article and you can equally argue patents allow “hard-working all-[insert country] inventors / start-ups” to compete on an equal footing with “big corporations ).
  7. Ignore all possibility of licensing; even if company X did obtain a broad patent to Y, if you were a small start-up you could still request a reasonable licence from X. Whether they would be willing to grant such a licence is another issue but several countries allow compulsory licensing where a reasonable licence is unobtainable.

Facebook “news feed” Patent

There has been a bit of a stir in the online community on hearing the news that the Facebook team (Zuckerberg et al.) have been granted a patent (US 7,669,123).  The patent has claims directed to “displaying a news feed in a social network environment”.

As with many reports concerning patents, there has been a lot of misinterpretation (“Facebook patents news-feed”) of the facts. Hence, I will try to remedy some of that below:

  • A patent appears only to have been granted in the US.
  • When analysing a granted patent the first place to start is the independent claims that set out the scope of legal protection.  In this case the independent claims are 1, 16 and 24.  They are directed to the standard set of “method”, “system” and “computer readable medium”.  Each independent claim has a similar feature-set.
  • Claim 1 specifies:
  • 1. A method for displaying a news feed in a social network environment, the method comprising:
  • monitoring a plurality of activities in a social network environment; storing the plurality of activities in a database;
    generating a plurality of news items regarding one or more of the activities, wherein one or more of the news items is for presentation to one or more viewing users and relates to an activity that was performed by another user; attaching a link associated with at least one of the activities of another user to at least one of the plurality of news items where the link enables a viewing user to participate in the same activity as the another user;
    limiting access to the plurality of news items to a set of viewing users; and displaying a news feed comprising two or more of the plurality of news items to at least one viewing user of the predetermined set of viewing users.

  • As you can see, this requires several steps over-and-above simply “providing a news feed”.  However, at first glance, the claim seems pretty broad; I can foresee several “news feeds” implemented by parties other than Facebook falling within the claim.
  • The filing date is 11 August 2006.  It appears that a fair few documents were cited as prior art.  However, the US Examiner was convinced of patentability.  If the online community is concerned they could possibly locate relevant art pre-dating the filing date.  I can see arguments brewing over the precise meaning of “in a social networking environment”; does this cover project management or calendar applications?
  • It will be interesting to see whether Facebook decide to enforce the patent against anyone.  My gut feeling is that there could be relevant prior art out there that was not presented to the US Examiner.

Changes to UKIPO Fees

The UKIPO, in typical “under-the-radar” mode, have released a press release setting out fee changes from 6 April 2010.

As expected the required information is spread over several pages and tables:
http://www.ipo.gov.uk/about/press/press-release/press-release-2010/press-release-20100112.htm
http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-law-guidance/p-law-newfees.htm
http://www.opsi.gov.uk/si/si2010/uksi_20100033_en_1

As well as changes to fee amounts, a number of new fees are introduced:
PF4 – £350 – Continuation of patent proceedings before the Comptroller
PF21 – £50 – Recording assignments, licences and security interests
PCT Application – £150 – Request for restoration of a right to claim priority
Reductions for filing forms PF9A and PF10 online increase from £10 to £20.

In the press-release you’ll be pleased to see my Tottenham neighbour Dave get his mandatory soundbite.

EPO Updates – Extension State Grace Period & Changes in EP-PCT Fees

Extension State Grace Period:

Where the deadline for paying designation/extension fees (i.e. the “normal period”) expires on or after 1 January 2010:

If the fee for an extension state has not been paid within the normal period, the applicant can pay the extension fee in combination with a 50% surcharge:

a) within two months of expiry of the basic period (“re-introduced grace period”) or

b) within two months of notification of a communication of loss of rights with regard to the omitted payment of a designation fee (applies at present).

[see http://www.epo.org/patents/law/legal-texts/journal/informationEPO/archive/20091102.html ]


Changes in EP-PCT Fees

From 1 January 2010, there are minor changes to the International Fee and E-Filing reductions for PCT applications filed at the EPO:
International filing fee: from EUR 848 to EUR 878
Fee per sheet in excess of 30: EUR 10 (unchanged)
Reductions:
* Electronic filing (the request being in character coded format) from EUR 128 to EUR 132
* Electronic filing (in character coded format) from EUR 191 to EUR 198
Handling fee: from EUR 121 to EUR 132

Early Advent Present from the EPO

The EPO has released a draft version of the Guidelines for Examination that will come into force in April 2010:

http://www.epo.org/patents/law/legal-texts/guidelines-2010.html

Lest we forget that these Guidelines are not in force, and may change in whole or part, “DRAFT” is helpfully watermarked across each page.

My favourite sections (of the Complete PDF) so far include:
– pages 84 to 88 discussing the new divisional rules
– pages 121/122 and 385-387 on the Rule 161 changes
– page 182 on Internet Searches
– pages 211 to 216 on changes to Search Procedure
– pages 250/251 on the response to the Search Opinion
– pages 290/291/307 on R.43(2) communication
– pages 335 to 340 on Disclosure (incl. Internet and “non-traditional”)
– pages 354/355 on Inventive Step
– pages 403 to 406 on R.137(4) communication

More EPO Activity

There are some changes regarding international supplementary searches, fees and foreign searches for priority applications coming into force 2010/2011 you may like to be aware of:

International Supplementary Searches:
http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/20091106.html?update=law
– fee for an international supplementary search from 1 July 2010.

R.161 is amended yet again before even coming into force:
http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/2009109c.html?update=law
– now refers to international supplementary searches performed by the EPO; in force 1 April 2010.

http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/20091106c.html?update=law
– refund for international supplementary search based on Nordic etc. search; in force 1 July 2010.

http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/20091106b.html?update=law
– need for a supplementary European search dispensed with under A.153(7) where EPO has performed international supplementary search; in force from 1 July 2010.

Fee Changes:
http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/20091109b.html?update=law
-appear to be simply increases in all fees from 1 April 2010.

Compulsory supply of search results for priority applications (R.141):
http://www.epo.org/patents/law/legal-texts/journal/decisions/archive/20091109.html?update=law
– R.70b sets a two month period in which to supply on invitation from the EPO; in force 1 Jan 2011.