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Do the Evolution: Five Ways to Adapt Your Patent Strategy

Posted in Intellectual Property

CoyoteThe eastern coyote (or coywolf) is spreading across eastern North America. A study showed that coyote DNA dominates, but average eastern coyote DNA is about 10 percent dog (like Doberman Pinscher or German Shepherd) and 8-25 percent wolf. This interbreeding of coyotes, wolves, and dogs has resulted in an animal that is larger and faster than a coyote. It also has caused the resulting subspecies to overcome some weaknesses. For example, coyotes dislike hunting in forests, whereas an eastern coyote will hunt in open terrain (like a coyote) or wooded terrain (like a wolf). Wolves dislike humans and noise whereas an eastern coyote is more tolerant of people (like a dog). Eastern coyotes also have urbanized their diet and even have been observed looking both ways before crossing the street.

Adapting to changing situations isn’t just limited to animals. It’s something to consider for a patent strategy, too. Continue Reading

An Inventor Walks Into a Bar: Risks of Filing a “Bar Napkin” Provisional Patent Application

Posted in Intellectual Property

An inventor at a barInventors come up with ideas at the strangest moments. For example, an inventor in 1937 wrote down concepts for what is considered one of the first modern computers on the back of a cocktail napkin. After a bourbon, he came up with an electronically operated machine that used binary numbers, condensers for memory, a regenerative process to prevent memory loss, and direct logical action for computation. Hard to believe the fundamentals of the device used to type up this blog post (not to mention countless greentech inventions) were originally scribbled on a little paper square.

Provisional patent applications can help an inventor with only a proverbial bar napkin describing his or her invention. It serves as a way to establish an early filing date, mark your product as patent pending, and give the inventor twelve months to test feasibility or gauge interest. The provisional patent application needs to comply with U.S. Patent and Trademark Office requirements for providing a written description of the invention. However, a particular format is not required and no formal patent claim is needed.

Can your (proverbial or actual) bar napkin be filed as a provisional patent application? Continue Reading

Going Global: Tips on Building a Patent Portfolio Outside the United States

Posted in Intellectual Property

I occasionally hear an inventor or businessperson talk about how his or her company has a “global patent” or an “international patent.” Unfortunately, there is no such thing. While some companies have filed patent applications around the world (or at least in many corners of the industrialized world), most of the time these statements refer to filing a Patent Cooperation Treaty (PCT) application.

To clarify, a PCT application is neither a patent nor is it truly global/worldwide. PCT applications are a way to file a single patent application covering your invention in contracting states. Note that the PCT application is a vehicle for gaining patents in the future. It grants no patent rights in itself. A PCT application is, for lack of a better explanation, a placeholder. Further patent applications are needed subsequent to the PCT application to secure patent rights in various parts of the world.

That’s not to say that PCT applications don’t have benefits. Continue Reading

Using Utility Models to Protect your Intellectual Property in Taiwan

Posted in Intellectual Property

taiwanA new “green” attitude is pervading Taiwan. Besides ongoing environmental efforts, Taiwan is home to multiple green technology companies. While revenue results for some Taiwanese solar cell manufacturers declined this year, Taiwanese companies like Motech are still prominent in the green technology sector. Taiwan’s continuing presence in the green technology sector can be seen in the duties imposed by the U.S. Department of Commerce in early 2015 on solar cells imported from Taiwan.

Like China (which I previously wrote about here), Taiwan offers utility model coverage. Filing a utility model application in Taiwan can potentially speed growth of an international intellectual property portfolio. Continue Reading

New Email Alert System Allows for Patent Publication Monitoring

Posted in Intellectual Property

Monitoring email on digital tabletOn April 24, 2014, the United States Patent & Trademark Office (USPTO) announced the release of the Patent Application Alert Service (the Service).

The Service provides free, customized email alerts when U.S. patent applications are published. Additionally, the Service offers direct access to the published applications for convenient review.

How the Service Works

An account must be created in order to use the Service. Like most websites, creating an account requires an email address and a password. The Service only sends alert emails to the provided email address. Continue Reading

Discovery Orders May Threaten Traditional Notions of Trade Secret Protection

Posted in Intellectual Property

combination lockHistorically, confidential and proprietary information, such as the formulas for Coca-Cola and Pepsi, is trade secret information that will not be made available to the public during litigation. While Coke and Pepsi are probably the two most famous examples of protectable trade secrets, many companies in varying industries rely on trade secret protection for financial success and competitive advantage. For example, manufacturing, pharmaceutical, and chemical companies often choose trade secret protection over patent protection either because a trade secret may enjoy a lifetime of protection, as opposed to twenty years, or simply because the trade secret formula or chemical composition does not rise to the level of non-obvious invention required for patent protection.

Regardless of the technological or business reason for choosing to protect your confidential and proprietary information as a trade secret as opposed to patent, that protection should not be threatened by discovery orders in a litigation that your company is not even a party to. However, recently a Pennsylvania state court decision highlights risk to trade secret protection for certain hydrofracturing fluid manufacturers in the oil and gas industry. Continue Reading

Teamwork Can Benefit Your Company’s Research, but Verify Inventors on any Resulting Patent Application

Posted in Intellectual Property

Laboratory glasswareMuch of today’s innovation is a collaborative process. In the past few weeks, stories were in the news about breakthroughs involving groups of researchers working on aluminum batteries, carbon electrodes for lithium-ion batteries, wearable power generation, and wireless power transmission. The prevalence of collaboration in research is reflected in U.S. intellectual property trends. A study in 2009 showed that, over the past four decades, the average number of inventors per patent increased. A study in 2013 showed that the number of patents with solo inventors fell between 2005-2013.

While collaboration has benefits, it can cause problems when it comes time to file a patent application. Not all work done by members of a project team may be sufficient to qualify everyone as joint inventors under U.S. patent law. The proper list of inventors on a patent application may not include all the project team members because each joint inventor must contribute in some significant manner to the formation of a definite and permanent idea for at least one claim of the invention. Thus, each joint inventor must conceive of something in the claims. Continue Reading

Video Interview: Discussing Lisa Jackson’s Resignation as EPA Administrator with LXBN TV

Posted in Renewable Energy

Following up on my post on the subject, I had the chance to chat with Colin O’Keefe of LXBN regarding Lisa Jackson’s resignation as EPA Administrator. In the brief interview, I offer my thoughts on her legacy and the recent controversy around the Agency’s use of email aliases to avoid the FOIA.


Michael Hecker is a senior associate in the Environment & Energy Practice at Hodgson Russ LLP. You can reach him at MHecker@hodgsonruss.com.

Patenting Your Basement Fusion Reactor: Utility Requirements Under U.S. Patent Law

Posted in Intellectual Property

lightbulbMultiple projects are currently underway to demonstrate feasibility of fusion energy. The goal of the ITER multinational project in southern France (of which the United States is a participant) is to deliver ten times the power that is consumed during operation. Back in the United States, Lockheed Martin’s Skunk Works is working on a more compact nuclear fusion reactor. However, if you ask certain inventors, fusion energy has already been demonstrated in labs, garages, and workshops. Some of them even filed patent applications, such as U.S. Pub. No. 20110044419 or U.S. Pub. No. 20040137289, to protect these valuable discoveries. But why haven’t more patent applications covering cold fusion matured into patents that can be licensed or shared for the benefit of mankind?

To be patentable, an invention needs to be useful, novel, and nonobvious. Continue Reading

Speeding Construction of Your Company’s ‘Great Wall’: Protecting Green Technology in China with Utility Models

Posted in Intellectual Property

Great Wall of ChinaThe Economist recently reported on a World Intellectual Property Organization study that the number of Chinese patents filed abroad is rising. China’s patent office was the busiest in the world in 2012. Coupled with this growth of IP, China is now the world’s largest economy, has a growing solar industry, and is leading the world in renewable investment. With China’s economic and IP growth, protecting your green technology in China is becoming more important. However, IP protection in China needs to be balanced against questions regarding the Chinese market, long-term plans for your green technology, or costs.

Chinese utility models provide a cheaper, faster alternative to a “regular” Chinese invention patent if your invention meets statutory requirements. Only shapes, structures, electrical circuits, or network diagrams can be protected by Chinese utility models. The claims cannot include methods or functional language. There are four main advantages for a Chinese utility model. Continue Reading