Historically, the U.S. Patent and Trademark Office (PTO) has refused to register trademarks considered to be offensive in that they disparaged a particular person, group or institution.  Now the PTO cannot deny the registration of offensive marks on the ground that they conclude the marks to be disparaging.

On June 19, the Supreme Court unanimously held (8-0) that so called the disparagement clause of the federal trademark law (Section 2(a) of the Lanham Act), is an unconstitutional violation of the First Amendment’s Free Speech Clause.

The case arose out of the name of a Portland, Oregon, rock band “The Slants.”  All the members of the band, including the plaintiff and trademark applicant, Simon Tam, are of Asian decent.  Mr. Tam filed a trademark application to federally register the band’s name, “The Slants.”  The band chose the name to “take back” or reclaim a term historically derogatory of people of Asian descent.  The PTO refused to register the mark as “derogatory or offensive” based on the dictionary meaning of ‘slants’ or ‘slant-eyes’ and also because one of the band’s performances was purportedly canceled “because of the band’s moniker.”  Tam appealed the decision to the PTO’s Trademark Trial and Appeal Board (TTAB), but with no success.  The next appeal, to the Court of Appeals for the Federal Circuit, was successful.  The Federal Circuit, in an en banc opinion, overturned the TTAB’s decision and found that the disparagement clause is unconstitutional under the Free Speech Clause.  Then, the Supreme Court granted a request for review of the case filed by the PTO.

The disparagement clause reads as “No trademark … shall be refused for registration on the principal register … unless it (a) consists of or comprises … matter which may disparage … persons, living or dead, institutions, [or] beliefs … into contempt, or disrepute.”  The Court first clarified the meaning of the statute as being clear in its prohibition of registration of trademarks, which “disparage persons who share a common race or ethnicity.”

The Court then turned to the PTO’s arguments that federally registered trademarks are government speech as a form of government subsidy, and, the disparagement clause should be reviewed under the “government program” doctrine, which is outside of the protection of the First Amendment.  First, the Court confirmed that the PTO’s registration of a trademark does not make a trademark government speech describing the argument as “far-fetched.”  The Court further exemplified the PTO’s mischaracterization of government speech using several examples, such as “make.believe” by Sony or “JUST DO IT” by Nike.   The Court noted that trademarks are “dream[ed] up” and “edit[ed]” by applicants, and therefore, “have not traditionally been used to covey a Government message.”  The Court was particularly concerned that the PTO’s elimination of First Amendment protection to registered trademarks would similarly apply to copyright registration, which is inconsistent with copyright protection for free expression, and therefore, rejected the government speech argument.  The Court also rejected the PTO’s position that trademark registration is a government subsidy because applicants pay filing fees and maintenance fees to the PTO for registering a trademark and “every government service requires the expenditure of government funds.”  Finally, the Court denied the application of the “government program” doctrine, which provides a limited public forum for private speech based on the content or the speaker.  The Court noted that in this case, the PTO exercised “viewpoint discrimination” under the disparagement clause because, although the clause prohibited disparagement of “any person, group, or institution,” it only prohibited offensive wording – a “happy-talk clause” and went “much further than is necessary to serve the interest asserted.”  The Court found that the disparagement clause as “not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination.”  Thus, the Court concluded the disparagement clause violates the Free Speech Clause.

In this decision, Justice Alito emphasized the importance of trademarks, which express viewpoints and ideas, no matter how short the mark.  The government cannot censor such expressions based on viewpoint discrimination.

Notably, the decision is likely also a “win” for the Redskins football team, in its long-running Redskin trademark case, Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d 439 (E.D. Va 2015).  In addition, the PTO will need to follow the decision in its review of forthcoming trademark applications.  Importantly, this decision surely broadens the protection available for trademarks, although it may result in a somewhat less-wholesome and more shocking trademark registrations going forward.

The World Intellectual Property Office (WIPO)  has released its 2016 Uniform Dispute Resolution Proceedings (UDRP) statistics.  http://www.wipo.int/pressroom/en/articles/2017/article_0003.html. The overall number of new cases increased by 10 percent over the previous year. WIPO indicates that this surge of new cases relates to the new generic Top-Level Domains (gTLDs) that have come online during the year.

Trademark owners filed 3,036 disputes involving a total of 5,374 domain names. It appears that .XYZ (321 domain names disputed), .TOP (153 domain names disputed) were the most common of the new GTLDs to be involved. That number still pales in comparison to the number of domain names disputed in the .COM (3135 domain names disputed), .NET (272 domain names disputed) and .ORG (129 domain names disputed).

The United States accounted for 895 cases being instituted with a corresponding 680 cases where a US entity was the Respondent. France came in second, with 466 cases being brought by a French entity. China took the honors of being the second most likely source of Respondents to actions, with 473 cases.

So, what does this mean? It appears that the original gTLD’s, in particular .COM is still the most contested (and sought after) domain address. That doesn’t appear to be going away anytime soon. It also means that with the increase of the new gTLD’s, trademark owners should consider monitoring their trademarks in the .XYZ and .TOP gTLDs in addition to the .COM gTLD. While it would be great to watch trademarks in all of the new domains, it can be financially prohibitive. Choose your battles, win the big wars.

Open Access is one of the publishing models that arose with the ease of internet distribution. Before the internet, publishing was governed largely by a scarcity or “closed” model of distribution. Since the internet, the distribution models fill a wide spectrum between “open” and “closed” models with many in between the two opposites. “Open Access” is a specific phrase relating to publishing, especially focusing in the scientific and medical research fields. Open Access removes price barriers (subscriptions, licensing fees, pay-per-view fees) and permission barriers (most copyright and licensing restrictions). The Open Access shorthand definition is “free availability and unrestricted use” — succinctly captures both elements. There is considerable disquiet in the research community about the extent to which monopoly prices are charged for material that many believe ought to be feely and widely accessible as it expedites research and reduces redundant research.

The Gates Foundation is on the brink of implementing an Open Access policy that is the purest in the world. Under the Gates Foundation policy, “information sharing and transparency is promoted by unrestricted access and reuse of all peer-reviewed published research funded, in whole or in part, by the foundation, including any underlying data sets.” The radical aspect of the Gates Foundation Open Access policy is that no embargoes, no waivers and no exceptions are allowed.

This is not a sudden policy implementation. Three years ago, the Gates Foundation announced and implemented a modified form of this policy. The date of rigorous implementation without embargoes, waivers or exceptions was explicitly detailed as taking effect on January 1, 2017.

With less than two weeks to go before January 1, 2017, the University of Michigan and the Gates Foundation published this op-ed piece discussing the goals and benefits of Open Access, entitled: “Let’s speed up science by embracing open access publishing.”

For ease of access, that op-ed piece is complete below, reprinted with permission of the authors.


Let’s speed up science by embracing open access publishing


By Richard Wilder and Melissa Levine
December 19, 2016

Six years ago, Harvard scientist Jay Bradner discovered something unusual. His laboratory had isolated a molecule in mice, named JQ1, that appeared to reverse the effects of a serious cancer. But what he did with JQ1 was even more unusual: Rather than submit the findings to a prestigious journal, Bradner openly distributed the structure of the molecule — free and reusable for anyone.

Bradner’s goal was to disseminate his lab’s finding as widely as possible to encourage and expedite collaborations. And although the original concept for JQ1 fell through, he and others ultimately succeeded on different fronts: JQ1 now has broad usage in treatments for HIV infection, heart disease, pancreatic cancer, and more.

Despite this success story, most scientific research today is not published openly — meaning freely, to everyone, without delay from the time of publication. Instead, it lives behind time embargoes and paywalls, costing as much as $35 per article to access. Even when scientific information is free to read, it is subject to copyright restrictions that prevent it from being recast quickly in new ways.

A growing movement for open access seeks to change this because limitations on the use of scientific discoveries hinder the efficiency of research, increase costs, and ultimately delay even impede scientific progress. The possibilities of open access could be transformative.

Open Peer Review

It’s time to overhaul the secretive peer review process.

If published research and data were freely accessible and reusable by researchers of diverse interests, urgently needed solutions could be greatly accelerated. Scientists could quickly cross-check important studies, catching potentially consequential mistakes. Medical providers could access the latest technical guidance, improving patient care. And students around the world could build on each other’s work. With openness, good ideas could truly come from anyone, anywhere.

Some early open access efforts — like the Human Genome Project, one of the world’s most ambitious programs undertaken to sequence the complete set of DNA in a human body — illustrate just how significant the impact of open access could be. The Human Genome Project shared each of the body’s three billion DNA letters freely and rapidly online, leading to the discovery of more than 1,800 disease genes and generating over $1 trillion in economic impact across a diversity of sectors, including health care, energy and agriculture. Critical to this was enabling all uses of the data by anyone for any purpose — academic or commercial.

This is the future envisioned by a growing number of institutions and universities that sponsor research and development. In the last few years, NASA, Research Councils UK, and Wellcome, as well as the Massachusetts Institute of Technology and the University of California system have all implemented open access policies.

The Bill & Melinda Gates Foundation will usher in 2017 by making all published research funded by its grants available on full open access terms. It will base its open access policy on a robust legal framework that supports full reuse rights — the Creative Commons Attribution-Only license, also known as CC BY.  This license, which is also applied to all materials authored by librarians and staff of the University of Michigan Library, lets anyone distribute and build upon a work’s underlying data as long as they credit the original creation.

CC BY facilitates processes such as text-mining, helping researchers understand patterns in large datasets. It also promotes innovation, unlocking the ability of people across sectors and geographies to build on one another’s work. Unlike its counterpart, the CC BY-NC license, CC BY permits commercial reuse, meaning it directly enables the kinds of public-private partnerships that are so essential to scientific innovation.

That’s why, in part, the Gates Foundation adopted it — because it permits the widest range of actors to do their best work on the widest set of problems.

To be clear: free and open reuse does not mean misuse. Under CC BY, researchers and publishers do not give up the value of their name. The license includes significant mechanisms to guard against academic misrepresentation, and protects the logos that journals use to brand their reprints and products.

CC BY is a growing license of choice among open publishers, including the Lancet and Cell Reports. It is the top choice for researchers. In 2015, the Nature Publishing Group reported that 96 percent of researchers publishing open access selected the CC BY license.

Changing the status quo is tough, but it is made possible when people come together to reconsider outdated assumptions and practices. With the support of researchers, publishers, and the academic community more broadly, legal frameworks like CC BY can expand the interconnected web of human knowledge and facilitate its use by everyone.

In a fast-changing world, making these adjustments will advance what’s best about the scientific process: the ability of humans to generate new and life-changing ideas by building on the work of the past in a world where sharing and using data in medicine, public health, and the environment is the norm rather than the exception.

Richard Wilder is the associate general counsel at the Bill & Melinda Gates Foundation. Melissa Levine is the lead copyright officer at University of Michigan Library and ex officio member of the library’s open access committee. (Reprinted with permission of the authors.)

In a World Intellectual Property Office (WIPO) domain name decision, WIPO has ordered the cancellation of 175 domain names that include the famous Range Rover, Land Rover and Jaguar trademarks. The domains were registered in the .au ccTLD by the Trustee for the Trivett Family Trust (Trivett). Representative samples of the domains include rangeroverservicecentre.com.au., jaguarhybrid.com.au and landrover.net.au. Jaguar Land Rover (JLR) submitted its complaint in August. The decision was rendered on October 10, 2016. The ownership of the Jaguar, Land Rover and Range Rover marks was not in dispute. Trivett submitted that the domains were acquired by Trivett for the purposes of developing a proposed “Maintain My” web platform that would connect consumers to a range of service providers, including manufacturers of both genuine and non-genuine automotive spare parts.

JLR submitted that the use of well-known trademarks together with geographic or descriptive terms creates a domain name that is confusingly similar to the well-known trademark. Furthermore, JLR did not license or permit Trivett to use the trademarks, nor was the proposed use of the trademarks tantamount to a bona fide offering of goods and services. Trivett relied upon the test set out in the Oki-Data Americas, Inc. v ASD decision that sets out four minimum factors used to help decide whether there was a bona fide use of the domain name. Those factors include:

  1. The respondent must actually be offering the goods or services (Trivett had said that it was going to use the names starting in 2017 as part of its “Maintain My” platform);
  2. Only genuine trademarked goods could be sold on the website;
  3. The site must accurately disclose the relationship between the registrant and the trademark owner, and may not falsely suggest that the registrant is the trademark owner or is an official site; and
  4. The respondent must not try to corner the market in all domain names (175!) depriving the trademark owner of its own use of the mark.

The WIPO panel discussed that the decision may have been different had Trivett been able to show development of its “Maintain My” mark and if they could show that they actually sold JLR vehicles and they had not registered 175 domains.

The result: Oki-Data is still a reasonable test for the bona fide intent. It just so happened that Trivett did not qualify for any of the prongs of the test.

A recent case out of the Second Circuit says “Yes. Third parties have standing to assert the defense that a copyright owner’s claim of ownership is erroneously based on Work Made for Hire (WMFH).”

Urbont v. Sony Music held that the defendant did have standing to challenge the validity of the WMFH ownership claim. Sony claimed that they owned music by virtue of WMFH; and Jack Urbont, defendant, challenged that WMFH status of ownership. This is noteworthy because it was Marvel, not Sony, who was the copyright claimant under a theory of WMFH.  The music at issue was the theme song to the movie “IronMan.” Marvel was an unrelated party to Sony at the time that the work was created.

The defendant rested its claim on the premise that Marvel had no employees who were composers; and that music does not qualify for WMFH  status under the nine categories of work.

The Second Circuit ruled that whether the work was indeed a WMFH was a relevant issue; and that defendants were entitled to raise the defense; and such a defense rested on facts that precluded summary judgment.

The opinion came down on July 29 of this year. Discussing it before now seemed premature as it wasn’t clear whether Sony was going to appeal. This week, Urbont is reported to be the prevailing party. Urbont v. Sony settled on confidential terms. There will be no further appeal.

Pro-tip take away:  An assignment would have solved the problem.  The nine narrow categories of WMFH applying to non-employees is increasingly being read narrowly.  “Audio-visual works” are covered in one of the nine categories, but not just audio alone (namely music). To refresh your recollection, the nine categories listed in Section 101 of Title 17 of the copyright statute are:

  1. A contribution to a collective work (like a piece for a magazine, anthology or encyclopedia);
  2. A part of a motion picture or other audiovisual work;
  3. A translation;
  4. A supplementary work (like a foreword, afterword, bibliography, appendix, index or editorial notes);
  5. A compilation (like an anthology, database or anything that qualifies as a “collective work” from category 1 above);
  6. An instructional text (generally, any text that could go in a textbook);
  7. A test;
  8. Answer material for a test; and
  9. An atlas.

And even if your work falls into one of these nine categories, the statute states that there must also be a written agreement stating that it’s a “Work Made For Hire.” To be safe, the agreement should be signed before the work is created and signed by both parties.

Urbont v. Sony Music Entertainment Inc., Second Circuit July 29, 2016,  15-1778

Rarely does one think of copyright issues surrounding how research is conducted for feature films that are based on real life events, but 54 Sudanese refugees are forging that new connection between research and copyright in one lawsuit pending in the U.S. District Court of Georgia sitting in Atlanta. 

Those refugees, who survived starvation, disease and the militia attacks in Darfur, arrived in the U.S. and then sat down with film producer Robert Newmyer and screenwriter Margaret Nagle back in 2003 where they shared their life stories in a series of recorded interviews. The court found the 54 refugees to be joint authors of the script for the 2014 “The Good Lie” film starring Reese Witherspoon. The refugees created original expression in their oral telling of their stories that were fixed in tangible medium in the recorded interviews. “While some common elements of the Lost Boys’ story were publicly available, Newmyer and Nagle wanted to create a movie with real, personal and emotional details otherwise unavailable to the public at large,” says the lawsuit. “Newmyer and Nagle needed the details from the Lost Boys’ personal stories and permission to use those details in a screenplay and subsequent film. The title of The Good Lie, for instance, is said to refer to a lie once told by one of the refugees on the taped interview to would-be-captors that saved his life.

The defendants argued that the 54 refugees’ answers in the interview do not possess the modicum of creativity to constitute an original work of authorship under copyright law.  U.S. District Judge Leigh Martin May found otherwise in her recent 54-page ruling:

“The Interviews, however, did not consist merely of ‘ideas, facts and opinion made during a conversation,’ like the interviews by journalists in the cases Defendants cite,” responds May. “Rather, the Interviews were a creative process designed to create material for a screenplay and film. All that an ‘original work’ must possess is ‘some minimal degree of creativity’ … even a slight amount will suffice. Plaintiffs’ telling of their personal stories in response to questions designed to elicit material to create a fictional script for a feature film likely includes enough creativity to render the Interviews an original work of authorship.”

A major flaw in the case arose when it was shown that the 54 refugees do not have U. S. Copyright registrations of the taped interviews. The defendants argued that the case must be dismissed for the plaintiffs’ failure to obtain the requisite registrations; however, the court held that the failure to register was solely due to the defendants’ refusal to provide the 54 refugees with copies of the interviews. The defendants were found to have been the sole obstacle to the plaintiff having the tape recordings to satisfy the U.S. Copyright Office requirement that the tapes be submitted as specimens of the work at issue.

The court found that the umbrella organization, the Foundation for Lost Boys and Girls of Sudan, and the 54 refugees’ lawsuit may proceed based on copyright infringement, breach of the joint venture agreement, breach of fiduciary duty, conversion of plaintiffs’ ideas, breach of the covenant of good faith and fair dealing, unjust enrichment, promissory estoppel and other claims. The complaint alleges that Robert Newmyer and others orally promised the 54 refugees that the Foundation  would be one of the joint  members of the movie venture; and, that the Foundation would be the sole beneficiary of any fundraising efforts associated with the movie. The court held in its March 2016 opinion both that a jointly authored copyright arose in the recorded interviews; and also that an oral promise to be joint participants in the venture is enforceable notwithstanding Newmyer’s untimely death in 2005.

This lawsuit is noteworthy even beyond the allegations of the Hollywood exploitation of Sudanese refugees as it is an ambitious attempt at a declaratory judgment over authorship predicated upon tape recorded interviews. This is a case to watch.


Static timing analysis (STA) is a simulation method of computing the expected timing of a digital circuit without requiring a simulation of the full circuit. This complicated area of measuring effective timing and power characterization flows in asynchronous circuits is often the basis of patent applications. The code of these complicated analytical tools also forms the basis of copyrights and copyright applications.

The Northern California jury’s award yesterday to Synopsys of $30 million against ATopTech was not on the basis of a patent infringement but for copyright infringement. The software of ATopTech’s product “Aprisa” infringes the Synopsys product “Prime Time”; and the jury awarded the damages allowed under the Copyright Act of the summation of the profits that ATopTech generated ($22 million) plus the lost profits that Synopsys failed to accrue by reason of the infringement ($8.2 million) for a total exceeding $30 million.

This case represents a trend in the intellectual property world post-Alice. Since June of 2014 when the Supreme Court struck down the patents in Alice for “abstractness”, the successful enforcement of patents has proven unpredictable. Over 70 percent of the patents in inter partes disputes have been found invalid — a new low water mark for patent enforceability in the U.S. As a consequence, intellectual property portfolio owners have moved the basis of their enforcement actions from patents (where the result is less certain) to copyrights where the result, as seen today in the Synopsys case, is more predictable and for sizable awards.

In a recent February 15 decision by the World Intellectual Property Organization (WIPO), approximately 40 domain names were ordered transferred from their registrants to Yahoo! (WIPO Case D2015-2323). The domains included yahoopasswordreset.com, yahootechnicalsupport.net, yahootechsupport.net, yahoosupportnumber.com, yahoo-customerservice.com, yahoomailcustomersupport.com, yahoo-tech-support.com, etc. The domain names were registered by multiple parties, however, Yahoo! was able to identify common management and control of the parties. Yahoo! alleged that the registrants sought to obtain remote access to users’ computers through a phishing scheme that compromised users’ personal and sensitive information for financial gain by “spoofing (Yahoo!’s) technical support.” This common control was established through the use of the same MSN email account, the same IP address and the same physical address in the registration details. There were also similar patterns of operation that were established.  Yahoo! filed extensive documentation to identify the patterns and the WIPO panel was convinced.

Only two of the registrants sent communications in response to the WIPO notices. The first originally claimed that they were doing nothing wrong, and then subsequently denied any connection to the website. The other merely stated that they were no longer associated with the domains.

The WIPO panel had little trouble establishing the three prongs of the test:

1.  The disputed names are identical or confusingly similar to a trade mark or service mark owned by Yahoo!.

2.  The registrants have no rights or legitimate interest to the domains:

The panel stated that “Phishing” is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user Ids, passwords, etc. A fake website or email address is created that is similar to that of a legitimate organization and this is used for identity theft and other predatory activities. See, e.g., Halifax plc. v. Sontaja Sunduci, WIPO Case No. D2004-0237. The domains in question resolve to websites that give the impression of being customer support or are used for email accounts.

3.  The disputed domain names have been registered and are being used in bad faith:

The panel believes that establishing a phishing website is a strong example of bad faith. “Such conduct is squarely of the type that the Policy is designed to prevent.”

While the common control may not have been immediately evident, the WIPO panelist was quite willing to determine the common control. When dealing with multiple entities, it would pay dividends to have as much evidence gathered at the time of filing and to be prepared to go back and identify other linking factors. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) process can move quickly. Yahoo! filed its initial action in late December 2015, and a decision was issued on February 15, 2016.

There are several advantages to pursing protection for a key innovation in the form of a “family”[1] of patents and pending patent applications. These include the possibility of obtaining protection in the form of claims[2] covering different aspects of an invention, and different infringing actions (of a user, maker or seller of an invention) as those actions would be described from different perspectives (e.g., server-side, client-side, internally, externally, etc.).

It is important to note that some of those uses or perspectives may not be apparent when the application is filed, and may depend upon the business environment, business models being pursued, or technologies that are developed to solve problems that arise in the industry. Each of these aspects of a business may change over time in response to economic developments or efforts made by competitors.

A family of patents and applications may also provide the option of having a choice of which among multiple claim sets is asserted or licensed; this may (in some cases) enable the assertion of claims in some patents without putting claims in the un-asserted patents at immediate risk.[3] A family of patents also increases the likelihood that a targeted party will have to expend resources to fight an assertion or an aggressive licensing effort.

In order to obtain the benefits of pursing protection for an invention in the form of a family of patents and applications, it is necessary that the initially filed description (termed “the specification”) and figures be sufficient to support the other perspectives, uses cases or implementations, and that they do so in a way that satisfies the enablement and written description requirements of the patent law.[4] Enablement requires that the sum of the information disclosed in the description and figures contain enough information to “enable” one of ordinary skill in the art at the time the invention was made to implement the invention without encountering significant obstacles that would require further inventive efforts to overcome. In some sense, an enabling disclosure in the hands of one of ordinary skill is one sufficient to allow that person to produce the invention using standard engineering techniques and abilities. The “written description” requirement has been interpreted to mean that the sum of the description and the figures are sufficient to indicate that the inventor was in possession (i.e., they recognized the implementation approach and/or use case) of the form of the invention that is represented by the claims being asserted.

However, drafting a patent application in a way that can provide the proper support is a non-trivial exercise. One way to accomplish this goal is to follow a process that attempts to preserve the possibility that the application may be used to support claims directed to other likely use cases and implementation methods. This may be done (in part) by considering alternate industries in which the solution represented by the invention might have value and alternate ways in which a function or operation that is part of the invention could reasonably be implemented.[5]

In some sense the task is to develop a specific tool that can be used to obtain leverage in order to assist in gaining or maintaining a competitive advantage. However, certain constraints apply: (1) the tool will not be available for at least 2 to 3 years, but it must be described in detail at present; (2) the possible situations in which the tool will be needed are only generally known at present, and the ways in which it is desired to use the tool may change between now and when the tool becomes available; and (3) the specific form of the tool that will be needed is only known in a general sense at this time (e.g., the tool may need to be capable of being implemented in one of several ways, all of which must be properly supported).

Given the practical considerations and constraints, how does one prepare a patent application in a way that ensures a greater likelihood that it contains adequate support when filed for claims that are intended to protect against uses that may not be known or fully understood until years later? One way is to craft patent applications that not only describe an invention and its use by the company itself, but also provide support for claims covering a generic implementation of the solution represented by the invention, where that solution may be relevant to multiple use cases, operating environments and industries. Using this approach, the patent application is not simply a description of a single product feature or process, but instead represents a description of a solution to a problem or class of problems, with the solution being expressed in varying levels of detail and in terms of being applicable to multiple operating environments.

An important part of the process is deciding how to characterize an innovation; in order to do this, it is helpful to consider a new product feature or service from a different perspective than it might typically be considered. Instead of viewing a feature or service as providing a new option for a user, it should be viewed as providing a solution to a specific technical and/or business problem. This is easier said than done, as it requires an engineer or patent attorney to figuratively “step back” and formulate a “generic description” of a higher-level problem that is being solved, rather than focus on the details of an implementation that produces the new feature or service.

Such a generic description will typically be based on a number of considerations, including (a) the context in which the feature or service is used (using general, non-limiting terms to describe the operating environment for the feature or service); and (b) what does the feature or service enable a user to do? Based on the answers to (a) and (b), it may be possible to formulate a statement that, at a high level, describes the technical or business problem for which the innovation provides a solution.

Next, it is necessary to determine other possible use cases or situations in which the invention may be applicable and hence other entities for which such a patent would have value. In order to do this, it is helpful to consider other contexts in which the same or a similar problem arises (where this is based to some degree on the generic description of the invention developed previously). For example, if the problem being solved relates to how to optimally allocate bandwidth among multiple content delivery channels given a certain constraint, then it may be helpful to consider other industries in which a similar constraint arises or in which multiple streams of “product” are delivered via different delivery channels (where, for example, those “channels” may be communications channels, different networks or different physical delivery paths, and the “products” may be email messages, downloaded content or physical packages).

One of the keys to describing an innovation in a way that can support multiple use cases and implementations is a technique I refer to as “functional deconstruction.”   This is an organized way to identify information needed to prepare an effective application and to structure that information into a description of the innovation that provides value to a company by creating a useful business asset.

Functional deconstruction is a form of system analysis, where instead of focusing on the details of a specific implementation of an invention, the operative elements or process steps are generalized and expressed as broader concepts. These broader concepts may be classes of elements or groups of processes that operate to perform a similar function (e.g., sorting, ordering, scaling, selecting, estimating, filtering, comparing, generating a type of output, etc.).

In order to practice this approach, the first step is to isolate each of the elements of a system or process that can be used to implement a generic example of the invention. In some ways, this step is similar to that of generating the “problem statement” referred to previously.   The goal is to identify the primary functional elements or components of a generic implementation of the invention, and to do so using high-level and nonspecific language where feasible. For example, this might be accomplished by generating a high-level, functional block diagram of a system for implementing a generic example of the invention.

The result of this approach will be a set of elements, steps or functional components that are needed to implement a generic version of the invention. For example, there may be an element that permits a user to input data, an element that processes the input(s) to extract a specific characteristic, an element that compares that characteristic to determine a relationship between what the user entered and what the system has previously stored, and an element that transforms one form of input into a different one having a certain characteristic. It is important to make sure that the set of elements, steps or functional components includes those needed to perform what are believed to be the novel steps or functions of the innovative device, process or method.

After identifying the set of elements, steps or functional components, it is necessary to generate a list of the values or types that each element can take and still be capable of implementing the invention. This is a form of listing the “variations on the theme” for each element. The variations may be different devices that can be used, different data processing techniques (though all produce an equivalent output for purposes of the invention), different filters, different transforms, different ingredients (though all have a common characteristic), or different physical structures that can perform a function that is equivalent for purposes of the invention.   Communications with the inventor may be needed at this point to isolate those “variations” that are practical in a business sense and/or technically feasible, or at least to remove those that are not. In addition to listing these variations, it may also be helpful to include several similar, but arguably different ways of describing each function or step of an innovative method, or each function or operation of the elements of a system or device (these might be termed “substantially functionally equivalent synonyms” for the purposes of implementing the invention).

Next, it is possible to generate various combinations of the possible values or types for each functional element and from those to construct a set of possible implementations of the invention. These possible implementations should be constrained in that only those combinations that are practical in both a business and technical sense should be part of the set.

Given the above information, a patent application can (in theory) properly support claims directed to one or more of the following:

(a) the embodiment of the invention implemented by the inventor (which is typically the product feature the inventor developed);

(b) possible uses of the invention to solve a similar problem that arises in different operating environments (and certain modifications to the implementation that are necessitated by the different environment); and

(c) multiple possible ways of implementing each of the primary functional steps or elements of the invention (which may be applicable to the original and/or to other environments).

In theory, the developed information enables the patent application to satisfy the written description and enablement requirements in so far as supporting a wide range of claims. This permits the introduction of claims that specifically address different operating environments and different implementations of the conceptual basis of the invention. As a result, the application can be “tuned” in response to recognizing a suitable strategic value proposition (such as a situation in which having leverage or a stake would be beneficial). Thus, by thinking in advance about how to describe and generalize an innovation and focusing on the underlying conceptual foundation for the invention, the value of a patent application directed to that innovation can be increased substantially. As a result, it can be used to generate one or more patents or applications that are part of a family and function as business assets.


[1] A family of patents and/or applications refers to two or more patents or pending applications that are related by virtue of having a common priority date and common source of the initial description of the invention (such as a provisional patent application that includes a sufficient amount of detail to provide an enabling disclosure). While similar in some ways (such as having basically the same description and figures), there are commonly differences between members of a family in that different patents or applications contain claims that focus on different elements, different potential infringers (e.g., end-users, service providers, makers or sellers), or different perspectives of how an invention may be practiced or used (e.g., from a server-side perspective, a client-side perspective or other perspective for a system of cooperating elements, etc.). Further, in some cases, a continuation-in-part (CIP) application may be filed that describes an invention having a priority date and basic description in common with other applications, but also adds additional information which is not entitled to the same priority date.

Note that although many of the process steps described herein are most applicable to software implemented inventions, they also are relevant to electronic and hardware structures used to implement inventive processes.

[2] The claims of a patent define the legally enforceable aspects of what a patent describes as an invention.

[3] Note that an entity may be a direct infringer of a claim in a first application and also be a direct or contributory infringer of a claim in another application, where both applications claim priority from the same original application. This is because the claims in different patent applications, even related ones, do not necessarily cover mutually exclusive inventions.

[4] 35 U.S.C. §112(a) – The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

[5] A more detailed description of the process discussed in this article may be found in my article entitled “A Key Obstacle to Implementing a Patent Strategy and One Way to Overcome It.”

In the interest of full disclosure, “yes,” this particular blog post is a marketing piece. But, it is also intended to be educational and inform prospective clients why it matters who they select to work with to identify innovations, draft patent applications and strategically manage their company’s patent portfolio. This brings up two related questions: why should it matter; and assuming it does matter, how do I identify the right person?

Why Does It Matter?

To answer the first question — a properly constructed patent portfolio is more than a collection of government-issued property rights. Because it is a set of property rights backed by the judicial power of the U.S. government, it is a business asset. A patent application (which is really a misnomer, as a patent application is closer to a 30-50 page report) uses text and images to describe a use of one or more technologies or structures in a specific way to solve a problem. Each report must be prepared and expressed in terms that satisfy very specific requirements, as expressed by law and court decisions. Further, the author of each report may choose to include or exclude certain language or concepts to accomplish their goal, where that goal is more than to obtain a patent; it is to obtain a patent with a certain set of enforceable definitions of the property right (termed “the claims”). This is why the contents of a patent application matters, and also why it is so important to select the “right” person to draft a patent application. This is particularly true if the application is directed to a complex technology and/or is expected to protect a fundamental aspect of the product, service or business model.

The patent application, if allowed, will be issued as a U.S. patent. This enables the owner (who is not necessarily the same as the inventors, if they have assigned their rights in the invention to another party) to use U.S. law and courts to prevent others from doing certain things. These include making, using, selling, offering to sell or importing the claimed invention. But an important (and often overlooked) aspect of owning a patent or patents is that an owner of a patent can obtain both tangible and intangible benefits without having to sue someone if they view a patent as a business asset that can be helpful in achieving certain business goals.

In one sense, a patent application is a tool to convert an idea into a business asset. Because this asset may have multiple uses or potential uses (some of which may not be fully understood when the application is filed), ideally the tool should be capable of being adapted so that it may be used in those multiple ways. These use cases may include:

  • Reducing the likelihood of being sued by creating the threat of a counter-suit (where this may involve submitting a new set of claims in an application in an attempt to cover a competitor’s product or service);
  • Increasing the likelihood of being able to offer something of value to a company that the owner wishes to engage with in a business relationship;
  • Enabling the execution of a patent cross-license with another party, with an accompanying payment to (or lesser payment from) the patent owner;
  • Protecting its own market or at least erecting a barrier to entry of a close competitor; or
  • Increasing the likelihood of obtaining additional capital by serving as collateral for a loan, demonstrating inventiveness or providing an exit strategy for investors via licensing or sale.

A properly constructed patent portfolio is one that increases the chances of having leverage over (or providing something of value to) another party in a business relationship. Any situation in which a claim or claims arguably cover a product or service of another party, a product or service in that party’s product development pipeline, a product or service of a competitor of that party, or even a product or service of the competitor’s competitor may provide value to the patent owner. The variety of possible uses, along with the importance of (and requirements on) how concepts are described in a patent application is why it matters who a company selects to prepare its applications. This is because the language and concepts described in a patent application are much more than simply a translation of what an inventor said into “legalese;” companies that do not understand this difference have often been disappointed by the value of their patent portfolio.

How Do I Identify the Right Person?

Because of the complexities of preparing a patent application that can be used to support claims of varying scope and contexts, it is best to look for a patent attorney or patent agent who has indications of being able to handle the technologies and business models that are most relevant to a company. These indications typically include at least some (if not all) of the following:

  • A technical degree (preferably an advanced degree or an undergraduate degree) and several years of experience as an engineer, researcher, scientist, etc. in the most relevant mathematical or scientific discipline (applied math, physics, electrical engineering, biology, chemistry, chemical engineering, biochemistry, software engineering, computer science, fluid mechanics, mechanical engineering, etc.);
  • Experience in protecting innovations in the same general category as those expected to be developed by the company (this is a bit nebulous, but examples might include eCommerce platforms, SaaS, web or cloud-based services, authentication methods, virtual reality systems, artificial intelligence methods, machine learning, data mining, telecommunications, semiconductor processing, signal processing, etc.) — this enables the patent attorney or agent and the inventors to have a larger common knowledge base, and as a result, to be much more likely to communicate effectively when it comes to identifying and describing the protectable aspects of the product or service;
  • At least five years’ experience, but preferably 10, in which the person has focused almost exclusively on patent prosecution and has also had significant experience with either patent licensing or patent litigation support;
  • Experience as an in-house patent counsel as well as in a law firm; this enables the person to have a better understanding of the business issues that may be involved and to present issues in terms of business decisions (in some cases this may be gained from working in a law firm with someone who has served as an in-house counsel); and
  • If in a law firm, experience serving as a virtual patent counsel for a company of the same relative size or stage of development as the company that wishes to hire them — this ensures that the patent attorney has had experience interacting with senior business, legal and technical executives (such as founders, CTO, GC, etc.) and understands their concerns regarding budget, market developments, investors, etc.

For additional information regarding the uses and ways of developing an effective patent portfolio, see the following publications: