Restriction requirements can create headaches for applicants by limiting the ability to amend claims during prosecution. Applicants should also beware that other strings are attached to restriction requirements. For example, in the case of a species restriction:

“If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.” (MPEP 809.02(a))

That is, for the remainder of prosecution after a species has been elected, any added claims need an extra statement to indicate their species. An extra statement may seem small in the scheme of everything, but forgetting this little indication could give the Examiner an avenue to stall the application.  

Avoid getting tangled up in formalities and review the types of restriction elections that have been made before filing a response. If a species election has been made, remember that the impact extends beyond the amendments.

 McCoy Russell is a leading firm in the intellectual property space around robotics, with significant experience in areas ranging from autonomous vehicles to cobots.  John Russell, one of the firm’s partners, completed his Master’s at the University of Californa, Berkeley Robotics and Human Engineering Lab that was at the forefront of human-assisting robots using force feedback control. Understanding current research and development on cobots and how facilities are using them allows us to help our clients obtain important patent protection for their business.  Besides, cobots are fun. 

Though seemingly eclectic, this group shared the common goal of positioning Oregon to be a leader for next-generation mobility solutions. Conferences such as these are beneficial not only for uniting entities in a mission bigger than themselves but also to figure out what their niche is in the landscape as a whole. For example, from a business standpoint, technological redundancies can be avoided and companies can get a better sense of where technology is moving.

Moreover, by interfacing with others in this way, companies have the ability to anticipate where they will fit into that technological landscape in the future and coordinate their IP appropriately. In this way, companies not only get to contribute to innovative technology but also to protect intellectual investments along the way.

One interesting aspect of participating in an event such as the Autonomous Mobility Summit is that the technologies being presented and discussed are well established from an IP standpoint. Thus, the challenge is for companies to be forward thinking about how the technologies being discussed in the present will evolve in the short and long-term future.

From our standpoint, attending events such as these is an important investment. By being a part of these conversations, we are better able to serve our clients, as we are not only aware of where technology currently is at but also where it is going. Having an understanding of the way technology is developing, we are better equipped to increase the scope and value of each patent filing.

By: Kathryn Chi and Katie Tallman

Being a food science graduate and getting to work in food and beverage related patents, I was excited to learn about challenges for food and beverage businesses as they begin to grow. Discussion ranged from production to distribution to financing. No matter the topic, however, one of the central themes was finding partners that are the right fit for the various growth stages of your business.

These partners come in many forms, such as mentors, employees, co-packers, distributors, and financial institutions. And these partners can further include intellectual property (IP) counsel. Finding IP counsel that understands your business and how to serve your business as it grows is an invaluable asset. The right IP partners can help to protect your business in the early stages, maintain market share as it is growing, and help pave the way for future opportunities.

For example, at McCoy Russell LLP, we serve our clients through various growth stages by way of IP portfolio development, which takes a holistic point of view of our clients’ IP protection. In developing our clients’ IP portfolios, we work with our clients to understand the trajectory of their businesses. Then, with this understanding, we tailor their IP portfolio to support where their business is currently at, as well as the direction their business appears to be growing.

Bringing it home, scaling a business involves developing strong partnerships. Like any relationship, the best partnerships not only meet you where you are but help with where you are going.

Why can this be advantageous?

Patent drafting inevitably requires some amount of learning. Inventions are, by definition, new and anyone other than the inventors is not an expert. Traditional firms might think it is beneficial to assign these inventions only to attorneys and/or agents considered experts in a particular field that seems closest to the new invention. However, they bring their own preconceived notions and experiences in a narrow field which may result in a tunnel-view of the problem and technical solution of the invention. When I work with a team having diverse backgrounds to prepare a new patent application, past experiences are used to deepen and broaden the scope of an invention and the scope of the description, thereby setting up the application to enable a diverse range of arguments in support of patentability. Interdisciplinary review ensures that the traditional aspects of the invention are described while strengthening the patent application as different eyes with different backgrounds learn the invention and provide their own spin.

From a legal standpoint, USPTO guidelines are continuously changing, further requiring attorneys and agents to, again, learn and adapt. My experience working in a collaborative team-based environment helps understand these changes from different points of view. For example, by being included in monthly continued legal learning events which include analysis of recent cases, I can get a better feel for the direction the USPTO is going and then adapt drafting strategies today for the USPTO guidelines changes of tomorrow.

The structure and strategy of a collaborative approach enables technical team members and legal team members to maximize their individual skills and the resulting patent application is more of a melting pot of these ideas due to the collaborative approach.Collaboration occurs not only during the searching, evaluationand drafting phases, but is also carried through during prosecution affording not only more robust patent applications with a smorgasbord of concepts with varying scope, but better ideas for developing a range of options to respond to Office action rejections by the USPTO. Inclusion of these types of diverse strategies in each patent application increases a client’s stronghold around technology, and builds a s

Have you ever read an article about a new patent, or seen a patent number on a product, and thought to yourself, “You can patent that??”  After nearly eight years in the intellectual property field, I’ve read some patent applications that were real doozies, but rarely do the really “out-of-the-box” ideas make it all the way to being a granted patent.  Consider, for example, napkin folding.  Is napkin folding an area of intellectual property that is hotly sought after?  It turns out, yes it is, as highlighted by three inter partes reviews (IPRs) that were recently entered by the Patent Trial and Appeal Board (PTAB). 

In February, the PTAB entered three IPR decisions relating to three patents owned by Essity Hygiene and Health AB and all directed to folded napkins (8,597,761, 8,273,443, and 9,320,372).  Did you just ask yourself, “Someone got not one, not two, but three patents to folded napkins?”  Because I did.  But all  joking aside, not only did Essity own three folded napkin patents, but also one company (Cascades Canada LLC) thought that it was worth the costly and intensive effort to knock these patents down—highlighting that folded napkin patents are valuable.

            For example, claim 1 from 8,597,761 recites:

A stack of interfolded absorbent sheet products, comprising:

a plurality of absorbent sheets

wherein each sheet comprises a first fold that is offset from a line bisecting said sheet substantially parallel to said first fold, and an interfolding fold that is substantially perpendicular to said first fold,

wherein the first fold is unidirectionally peaked,

wherein panels defined by the first fold of each sheet directly contact each other, and

wherein at least one of the panels defined by the interfolding fold of each sheet is inserted between two panels defined by the interfolding fold of another sheet in the stack.

Unfortunately for Essity, the IPR decisions did not go their way, as all three of their patents “folded” under pressure from Cascades and the prior art cited in the petitions. On the upside, the prior art used to invalidate the three patents is owned mostly by Essity, so at least for the time being, Essity still maintains at least some share of the napkin IP landscape.

So what is the take-away? Well one lesson I learned from reading the patents and IPR decisions is that even mundane-sounding technology can be relevant and have value to multiple companies.  But the flip side is that it appears Essity had not innovated in its napkin technology over the last 10-20 years and had essentially tried to gain coverage for embodiments discussed but not claimed in their earlier filings, but without the benefit of continuations or other priority claims.  Such a strategy is obviously risky, and especially if your patents pose any market barrier to your competitors.

U.S. Patent No. 9,265,983, Exercise apparatus for assisting in strength exercises, or better known via its commercial name, The Sling Shot, is a resistance band that stretches across the user’s chest as the user is about to do a pressing motion.  The Sling Shot is designed to mitigate a load on the user’s shoulders as the user’s moves out of the fully eccentric position while maintaining proper form.  The Sling Shot is simple in design - the arm cuffs are elastic and the middle connecting portion is relatively inelastic, thereby preventing elbows from flaring out and providing a modicum of assistance in concentric direction.  Its primary use appears to act as a physical therapy aid while helping users increase their pressing motion loads with decreased forced being placed on their shoulders and elbows.  See Figures 3 and 4 from U.S. Patent No. 9,265,983 below which show a fully concentric position and a fully eccentric position, respectively. 

The inventor is Mark Bell, whose company is Super Training Products LLC.  The website selling the Sling Shot, https://markbellslingshot.com/, has many other products, including hip bands, elbow sleeves, knee sleeves, and other exercise apparel.  It may be that Mark Bell is not aggressively pursuing competitors copying his Sling Shot based on his social media and YouTube posts; so why get a patent?

The patent for the Sling Shot serves a variety of purposes outside of the traditional legal protection.  Similar to the Scrub Daddy patents, it could help Mark Bell secure an investment.  The other benefit of the Sling Shot patent is it provides a form of legitimacy.  The patent demonstrates to the consumer that he was the first to come up with the idea, which may further demonstrate a greater understanding of the problem being solved.  Further, when so many products are purchased online, the patent may give his product a “realness” compared to other products without a patent that a consumer may believe to be cheap and poorly constructed and fake.  Very likely, the patent in combination with his social status are sufficient to differentiate him from the competitors copying his product. 

Furthermore, the Sling Shot patent may function as an umbrella, with Mark Bell’s other lines of products viewed under the same shadow.  Thus, a customer visiting his site and realizing they have no need for the Sling Shot may still be inclined to purchase his hip band or other products, despite his products being more expensive.  Why? Because the patent may elicit a feeling of trustworthiness; Bell researched and developed the Sling Shot and likely took a similar approach with his other products.  Thus, even if his hip band is more expensive or identical to other hip bands, the customer may believe Mark Bell’s hip band is better than other due to his Sling Shot patent.  In this way, Mark Bell may be using the Sling Shot patent as a marketing tool, allowing him to differentiate his Sling Shot and other fitness products from competitors without using the legal protections afforded to him via the patent. 

MasterCraft and Malibu Boats may have finally settled their long-running feud over wake-surfing patents, but there is still a lot of interesting information to be had in looking into the patent cases related to the action.

The first aspect to note in the feud is that Malibu Boats did not have just a single patent at issue, but rather Malibu Boats was working on a portfolio. As sophisticated IP players know, the real goods are a well developed patent portfolio as it significantly increases one’s leverage against a competitor.

Today we review one aspect of Malibu’s strategy in the case to drive settlement - the idea of a pending application. One might think a pending application is useless as it cannot be asserted in litigation (since the patent has not yet issued). But of course the value in a pending application is not whether it can be asserted immediately, but rather that it has the ability to change and can be asserted at some unknown point in the future. One of Malibu’s pending applications (14/075,978) finally reached a decision after the case settled, and likely provided leverage to Malibu as MasterCraft was faced with the idea that even if they won the current lawsuit, they would still face the possibility of another patent lawsuit down the road. And since up to 6 years of past damages can be had, that risk would have been a significant motivator to settle.

Turning now to the pending application, the appeal was finally heard in November of 2018. Here is a link to the oral hearing. Patent practitioners will probably enjoy reading through the transcript as it gives insight as to how various issues play out before the appeal judges at the USPTO.

In the end, Malibu was successful with its appeal and so I suspect MasterCraft was smart to settle when they did.

Large animal veterinarian, Arlan Smith, realized that animal husbandry costs may be reduced by providing a treadmill shaped to accommodate a cow. He claims that a variety of bovine problems may be preempted, such as lame cow syndrome, calving problems, digestive upsets, misplaced abomasum, infertility, and short lifespans.

The patent, US7654229B2, comprises a variety of features that are purportedly non-obvious with relation to human treadmills.  For example, it teaches an identification system coupled to a database of workout durations and frequencies.  It includes a trough, which may hold food or water, to prompt the cow to continue walking on the treadmill.  Most importantly, the treadmill has a plurality of rigid plates, that may fall away from end rollers of the treadmill - the rigid plates may both wear down the hoof, as well as sweep fecal matter away from inner componentry of the treadmill.  The poop may be further swept away from the plates via a flushing system, which injects water at spaces between adjacent plates. 

The concept of the application is quite interesting as animal husbandry becomes a larger issue in the discussion of global warming.  Methane produced from cow flatulence aside, animal husbandry is often knocked for its excessive use of land, which results in deforestation.  With the introduction of the cow treadmill, land use for dairy and other types of farming may be reduced, thereby decreasing an environmental impact of the farm while also decreasing operational costs and increasing cow health. 

Operation space with regard to this concept is open, as the application was abandoned due to nonpayment of maintenance fees. Further improvements may yield interesting IP. One idea includes designing the platform to include an endless track that include a grass-like surface, which may trick the cow into thinking it is still walking the pasture.Additionally, the treadmill may be modified to include arms configured to massage the cow as it strolls on the treadmill.Lastly, to promote socializing between cows, a treadmill may include more than one track so that cows may walk next to one another and discuss their plans for the day.

Balance between a patentable idea and market viability can be difficult to navigate.  Market demand may simply not exist for an idea, no matter how novel or ingenious.  On the other hand, simple modifications to well-known ideas can be very lucrative, while narrow in patent scope or not patentable at all.

Enter the bike washing machine, which from its name can be one of two things: a washing machine for bikes (akin to a car wash) or a washing machine for clothes combined with a bike.  The bike washing machine is the latter, and features a drum located where a front wheel of a bike would ordinarily be.  The drum comprises water hook ups for admitting and expelling water.  The patent KR 2011/0003822A, can be found here. 

Even more interesting, based on the fact that such patents even exist, are the references used during prosecution.  Two patents of interest include a “Combined bodybuilding energy-saving washing machine” (CN106498655A) and a “Bodybuilding bicycle with dewatering drum” (CN104958868A).  Each is somewhat related to the bike washing machine, however, their designs are quite different.

The water hookups and other features associated with the bike washing machine helped it overcome these cited references.  The application was allowed, however, the applicant failed to pay the issue fee.  Good news! Patent space is available in the bike laundry market.  The bike washing machine patent failed to describe any routines, such as reversing a spin direction within the drum, which is common to traditional washing machines, despite a fixed rotational direction of the pedals of the bike.  It also did not address adjusting a spin speed of the drum, which could be done with traditional bike gears.  Other patentable ideas may include coaching in relation to laundry completion.  Many bike trainers include coaching based on terrain, however, these coaching features are not readily translated to a bike washing machine (e.g., “Your clothes are really soiled; bike harder!” or “Don’t give up on your journey to cleaner clothes!”).  There are many patent roads one can travel with the bike washing machine, however, its viability in the marketplace remains to be seen. 

 However, current U.S. law limits when a preissuance submission can be filed, and thus the owner of the subject patent application is free to work with the U.S. examiner to overcome any submitted references, and the third party cannot participate in the ongoing prosecution.

Regardless, third-party submissions can be useful in disrupting the prosecution of competitors’ patents.

In regards to filing the submission, the submission must be made in any non-provisional, design, or plant application before the earlier of:

1.      The date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or

2.      The later of:

2.1.   Six months after the date on which the application is first published under 35 U.S.C. 122 by the USPTO, or

2.2.   The date of the first rejection under 35 U.S.C. 132 of any claim by the examiner during the examination of the application.

The third party should ideally file the submission electronically through EFS-Web, though submissions can also be submitted in paper via first-class mail, or by hand delivery, but not via facsimile.

The following forms should be included in the submission:

1.      Form PTO/SB/429 (or equivalent document list), identifying the publications, or portions of publications, being submitted;

2.      A concise description of the relevance of each item listed in the document;

3.      A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;

4.      An English translation of any non-English language item identified in the document list;

5.      Statements by the party making the submission that:

5.1.   The party is not an individual who has a duty to disclose information regarding the application under section 1.56; and

5.2.   The submission complies with the requirements of 35 U.S.C. 122(e) and section 1.290; and

6.      Any required fee, or the statement that the fee exemption applies to the submission.

The USPTO issued a very handy guide for third-party submissions that can be found here:

https://www.uspto.gov/sites/default/files/documents/Quick%20Start%20Guide%20Third%20Party%20Preissuance_06-03-2015.pdf   

In regards to the fee, a fee is incurred for every ten documents listed or fraction thereof, unless the third party is submitting three or fewer documents, provided the submission is the first for the party, and a “first and only” statement is filed.

If the submission is found to be non-compliant, it won’t be entered into the image file wrapper of the application or considered by an examiner, and the fee will not be refunded. However, the third party can make another submission, provided that the statutory time period for filing a submission has not closed.

If the submission is entered into the image file wrapper, the applicant will be notified of the entry if the applicant participates in the USPTO’s e-Office Action program. Otherwise, the contents of the submission will be made available in the application’s image file wrapper.

On January 1, 2019, for the first time in over 20 years, works published in the United States will fall into the public domain due to copyright term expiration.  After the passage of the 1998 Copyright Term Extension Act (CTEA), copyright on works published before January 1, 1978 was granted a 20-year extension, increasing the term of copyright from 75 to 95 years.  Though all works published in the United States prior to December 31, 1922 were already in the public domain, those scheduled to be admitted on January 1, 1999 (i.e., all U.S. works published in 1923) were to remain bound by copyright protections for another 20 years.

            The CTEA generated controversy during its development, as major media conglomerates, most memorably The Walt Disney Company, had been lobbying for nearly a decade to extend copyright protections.  As a result, the CTEA was derisively referred to as the “Mickey Mouse Protection Act” by opponents of the legislation.  Indeed, a major motivation for Disney’s intervention was to extend protections for its earliest cartoons.  A particularly defining moment in the company’s history was the release of Steamboat Willie, a short cartoon with synchronized sound which introduced one of the most well-known popular culture icons of modern times, Mickey Mouse.  Notably, the CTEA represented the third extension of copyright of Steamboat Willie since its publication in 1928, a term which was originally set to expire in 1956.

            Trademarks stemming directly from early films are rarities.  By and large, the nascent 1920s film industry had yet to capitalize on the potential for extensive marketing campaigns.  Films in this era were often viewed as one-off experiences likened to symphonies or plays, though with less artistic standing.  Mickey Mouse stands as perhaps the most notable anomaly, a character that became a trademarked symbol of one of the largest mass media organizations on the planet.  It is precisely as a trademarked symbol under which Mickey Mouse will retain extensive legal protection.

            As a result, marketing of footage of Mickey Mouse, even footage which may have unambiguously passed into the public domain, may not be so straightforward.  Perhaps an enterprising person, looking to capitalize or build upon Disney’s intellectual property, will be able to produce a DVD of Steamboat Willie – but can they feature Mickey Mouse on its cover?  Even as a still from the film?  It is highly likely that any attempt to do so would result in litigation.  Disney is notoriously protective of intellectual property.  In one of the most highly publicized cases, in 1989, Disney threatened legal action against daycare centers which had painted Mickey Mouse on their walls.

            Any precedent that may result as a consequence of similar legal action will not be decided upon for some time, as Steamboat Willie is not set to enter the public domain for another five years.  Yet the case of Mickey Mouse is only one legal issue among many which may arise from the reopening of the public domain.  As such, the complex interplay of creators and the market in which they commoditize their creations is sure to fall under renewed scrutiny.

Somabar® and other companies are seeking to change that. In the age of instant and facile domestic comfort led by smart home technologies, one patentable space remains sparse – the automated home cocktail maker. As can be surmised by anyone who has been to a novelty robot bar, automated cocktail making is known. For example, Smart Bar USA claims to market “the world’s first patented touch-screen bar and automated cocktail dispenser” (see U.S. Patent No. 8,584,900, wherein the inventors recognize “a lack of the ability to provide mixed alcohol drinks” via the beverage dispensing systems in the prior art).

However, Somabar® seeks to push through U.S. Patent Application Publication No. 2016/0039653 by linking the size of the invention to specific applications. The primary argument is based upon similar inventions in the prior art being six feet in height or taller, whereas a housing of the drink vending apparatus of the ‘653 application is “less than two feet in height.” The invention is therefore “small enough to fit on a standard kitchen counter and underneath standard kitchen cabinets,” as supported in the specification.

FIG. 1 below provides one embodiment of the drink vending apparatus of the ‘653 application. Liquor cartridges may be placed on the manifolds 128 to provide ingredients for a mixed drink. A glass may then be placed on dispensing tray 203 to receive the mixed drink as prepared by the apparatus. Tying the invention further to the smart home paradigm are its wireless capabilities; a mobile phone or tablet can operate the apparatus, from which a user can request specific drinks via an associated mobile phone application.

Bloomberg prices the Somabar® at $2000, which may be a little steep for the cocktail-curious. For now, at least, most amateur mixologists will have to suffice with their martinis shaken, not automatically dispensed.

Precision farming is at the cross-roads of numerous engineering disciplines, including artificial intelligence, e-commerce, mechanical engineering, genetic engineering, control systems, drones, and more. Farms are a business and rely on technology for everything from improved seeds to determining how and when to harvest to pest control.

Many of the recent patent filings in this field of technology originate from China. Given that so many Chinese inventors have recognized the value in this field, it may be fertile ground for start-ups if they can get their concepts on file at the patent offices in time.

The burgeoning marijuana industry is witnessing incredible growth as the previously forbidden fruit becomes legal in an increasing number of states.  While the public is quick to adopt its legalization, other sectors are slow to adapt and the USPTO is no exception.  

            Early internet patents predicting various ways in which the internet would be used are now viewed as overly broad and the USPTO has swung the pendulum in the opposite direction (hello Section 101 rejections). Marijuana patents appear to be in a similar phase; it’s hard to say what is overly broad for a new product.  However, unlike the internet, marijuana has been known and tested, with many experiments occurring in the last century.  This presents an interesting issue - companies may patent previously known compositions, strands, and the like with little consequence, for now, as documentation of marijuana experimentation was minimal and possibly incriminating. 

            One example of such a case is going through the courts.  United Cannabis Corp is accusing Pure Hemp Collective Inc. of infringing a patent covering a liquid formulation with a high concentration of CBD.  People in the industry believe that the United Cannabis Corp patent, if maintained, could apply to most of the CBD products on the market, despite the fact that highly concentrated CBD formulations have been known before this millennium. 

            The marijuana industry is expected to reach about $75 billion by 2030, and patents will play a large part in who the big players in the industry will be, meaning that patents may dictate who gets to compete for those billions.  It will be fascinating to see how the patent side of a laid-back, laissez-faire culture shapes.  Will there be enough documentation from decades of marijuana research to limit new marijuana patents?  With so much money at stake, it is safe to say patenting early and often should be high on the priority list for all marijuana companies. 

Inventions are often born out of a desire to improve upon current market products. If this is the case with your invention, clearly pointing out prior art that your invention has improvements over is useful information to include in a patent application.

One example of a patent application that includes discussion of prior art is for the “Nut Wizard” (U.S. Pat. No. 6,460,249 B1), a rolling basket with a handle that is used to pick nuts and fruit off of the ground.

The patent application for the “Nut Wizard” does a great job of emphasizing improvements made over other devices in the same space. For example, the “Nut Wizard” application points out how U.S. Pat. Nos. 3,215,293 and 3,604,190 includes axles that run through a basket, which may be difficult and expensive to produce. Then, to clearly contrast this prior art, the “Nut Wizard” application explains features that make it simple and inexpensive to construct.   

Pointing out disadvantages in prior art and how your invention addresses these disadvantages is a strategy that may improve prosecution efficiency. For example, it is less likely that you will need to re-explain improvements over this prior art through an Office action response.

Learning from the “Nut Wizard”, do not be shy to point out disadvantages with previous approaches. Your patent application is a chance to point out all the great features of your invention and why these features are improvements over other products out there. Getting specific with the prior art that your invention has improvements over not only highlights advantages of your invention but also can make patent prosecution go more smoothly.

One possible source that fits with this wording is degradation of an SCR catalyst using reductant injection. Another, previous, Volvo Press Release touted the advantages of such as system:

So we looked to see if Volvo has any patents describing such as system and found US 9,097,159, related to a method for detecting urea deposits in an exhaust line of an automotive vehicle, a method for eliminating urea deposits and an automotive vehicle adapted to such methods. The abstract explains the method is for detecting urea deposits in an exhaust line of an automotive vehicle and includes determination if an exhaust gas's temperature is reached, if the result of determination is positive, stoppage of urea injection, and determination of the quantity of NOx in the exhaust gases on the outlet of the selective catalytic reduction system. A comparison is performed between the quantity of NOx determined on the outlet of the selective catalytic reduction system and a theoretical quantity or a measured quantity of NOx produced by the internal combustion engine. If the comparison shows that the quantities are different, it is considered that urea deposits are present in the exhaust line.

Volvo may have discovered their in-use problem via a diagnostic approach just like the one above. The question now is - what can they do to solve the issue. No doubt, whatever the solution, it may generate important IP that other competitors may not even realize they need.