Patently-O Tidbits

  • Lemley (Stanford) & Myhrvold (IntVen) have released a short article on “how to make a patent market.” They suggest that an information gap is one problem creating friction in licensing negations. The solution — require publication of patent assignments and license terms. [LINK]
  • Over the past few weeks, we have directed some focus on the protection of industrial designs. Why? (1) the law surrounding protection of industrial designs is in disarray; (2) I expect that protection of industrial designs will become more important as utility patent protection becomes more difficult and more costly; and (3) if well protected, industrial designs & fashion rights may well be worth more than the value of all non-pharmaceutical utility patents.
  • New Patent Law Job Postings:

20 thoughts on “Patently-O Tidbits

  1. 20

    Who do you think is generally the best person at a company to approach if you have a patent that you want to license or sell to the company? Anybodyhave any thoughts about how best to approach them?

  2. 19

    I find it highly curious that Myrvold (IntVen) is pushing publication, when IV is likely the most secretive, I mean discreet, of course, patent trolls around, in addition to perhaps being the largest. They are structured in a myriad of smaller companies, such that business partners often are not aware that they are dealing with an entity wholly owned by IV.

    But hey, I would go work for them in a second. Their IPO will be long spoken of… :^)

  3. 18

    “So I think You’re OK. :)”

    (You’re ok t% 😉

    Thanks for the help — please wish me luck.

  4. 17

    Just an Ordinary Inventor (TM): You asked, “Is there anything I should know before filing my second provisional?” I realize you are “just an ordinary inventor” so you don’t know what that question sounds like to a patent attorney. Allow me to retranslate your question from an attorney’s mind back into English: “Would you please, enter into an attorney-client relationship and accept liability for giving me bad advice, and tell if there is anything I should know before filing a provisional patent application that I don’t already know, bearing in mind that you don’t know what I already know and what I do already know?”

    Rather than answer that question, I’ll answer a different one, bearing in mind that this is hypothetical for purposes of discussion and without any intention to enter into an attorney-client relationship: As far as I know off the top of my head and without performing any research as would be necessary to identify specific recommendations relating to a factually specific scenario, and aside from considerations of changes in patent filing strategies stemming from the new 5/25 claim limit and continuations limit, I would say that requirements for filing a provisional application post 9/21 or 11/1 hasn’t changed from requirements for filing provisional applications prior to 9/21 or 11/1. So I think You’re OK. 🙂

  5. 16

    Defector has worked as a utility patents examiner in arts where a great many inventions’ only function was to be aesthetically pleasing. The difference is that the aesthetics themselves is not what made the inventions patentable, but how the thing functioned to obtain that aesthetic result. If the only thing that distinguishes the invention from prior art is its aesthetic, then it would get an “obvious design choice” rejection, since changing the shape or ornamentation of something (or rearrangement of parts) is a matter of obvious design choice. However, if the invention has structural differences that functionally enable a specific aesthetic result, e.g., a Christmas ornament with a unique optical coating or illumination device, then it would be patentable.

  6. 15


    You brought up video games, I did not. I was just attempting to educate you.

    Which clause are you referring to when you say the second clause? If you mean when I said aesthetic reasons have nothing to do with a game’s utility I am absolutely correct. I went into detail trying to explain the difference above. I admit I am no educator, so if what I wrote was unclear, I can attempt to elucidate further.

  7. 14

    “With video games, you are focused on the fact they are played for aesthetic reasons, but that has notthing to do with their utility”

    I’m not focused on video games (you are). Also, your second clause is false. Backwards, in fact.

  8. 13


    I believe you are confusing utility with functionality.
    Utility is a negligible hurdle in the predictable arts. As long as my steps accomplish the method I characterize in my preamble or my elements sufficiently describe the product characterized in my preamble, I am good to go. No actually useful result need occur. With video games, you are focused on the fact they are played for aesthetic reasons, but that has notthing to do with their utility. If I can reduce the happenings in a game to a set of algorithms – voila, I have patentable subject matter.

    Functionality refers to “does it actually affect in any way, shape, or form, the working of the invention?” If I claim a microwave oven, for example, the external surface pattern, non-informational images thereon, etc., do not contribute to the usability or functionality of the microwave. Therefore, they should not be in a claim in a utility patent. However, all those things may make a microwave more attractive to a buyer and therefore the design elements could be protected by a design patent.

    With regard to utility and software, I can claim any valueless piece of crap and as long as the combination of claim elements is new and nonobvious, the claim will survive a 101 rejection. Yes, software can have the added burden of requiring a tangible result, although this is easily satisfied by adding some trivial limiation such as “using the result to …”

    I have not reviewed any patents in question, but it seems to me that gane patents are probably all directed toward processes, which almost always be patentable subject matter under 101. However, identifying the contours or other patterns on a surface, for example, is not functional.

  9. 12

    May I change the subject for a minute?

    I’ve been too upset with all that’s going on to focus on all the changes afoot.

    But I have an urgent question:
    I filed a provisional last March (my first) using PTO form “PTO/SB/16 (02-07)” (without claims). I plan to file another as early as tomorrow using form number “PTO/SB/16 (07-07)” (also without claims). The 2/07 and 7/07 forms seem to be identical.

    Is there anything I should know before filing my second provisional?

  10. 11

    I’m with Malcolm on this one. I’ve never figured out the statutory utility of “A method for playing an interactive game,” to quote one patent. Sure, its a process. But, there is no useful, concrete, and tangible result produced from the method of playing a game. But, then again, there is a patent on just thinking that a test shows a Vitamin B deficiency.

    PS: Game patents pre-date the computer era.

  11. 10

    “I think the law is pretty clear on the point. The game is patented on a computer readable medium as a general rule, not for its ability to entertain.”

    I don’t get it. It’s a utility issue, not a question of “subject matter.” The utility of a game is to please the player, whether it’s a card game, a board game, or even a game played without tangible, concrete pieces. The function is ultimately subjective and aesthetic, exactly like a design.

  12. 9


    I think the law is pretty clear on the point. The game is patented on a computer readable medium as a general rule, not for its ability to entertain.

    Many patents can entertain, if you are a chemist who really likes industrial style mixing of crap.

  13. 8

    “More pleasing to the eye is not considered a functional advantage.”

    Why not? Games are patentable and many of them have no utility except to “entertain.”

  14. 6


    There are certainly cases on the border where designs are questionably functional, but generally aesthetic advantages are not considered. More pleasing to the eye is not considered a functional advantage.

    There are limitations to the ornamental features that can be patented. The feature or combination of features has to be novel or nonobvious. Someone cannot obtain a design patent for a common or standard design of something.

    Designs that tend to be (1) more difficult or (2) more expensive to make tend to be easier to patent.

  15. 5

    defector writes

    “Design patents protect shape and ornamentation, whereas utility protects functionality.”

    This is where I get confused. Surely there is a function to the shape and ornamentation of objects. It’s to entertain the eye or enable viewers to more easily distinguish the objects from other objects.

    Here’s another bone to chew on: can the shape of a signal be covered in a design patent?

  16. 4

    Requiring disclosure of licensing terms would produce a nice database for comparative valuation of patents, but would be extremely unamerican, IMHO. While it would be nice to know what *other* people are paying/receiving for patent licenses, I can’t imagine a company wanting to disclose the terms under which *they* license their patents, either as licensee or licensor. Requiring the same would be an unacceptable intrusion by the government into the private affairs of individuals and companies. I have nothing against establishing an open market, just don’t make it mandatory.

    With regard to design patents, I respectfully disagree with the notion that design patents are going to take on a greater role of protecting inventions with the increased difficulty of obtaining utility patents. The two vehicles are both important, but protect completely different, mutually exclusive, aspects of an invention. Design patents protect shape and ornamentation, whereas utility protects functionality. One type of patent cannot supplant the other by any measure, IMHO.

  17. 3

    Universities, in particular, seem to think everything they do creates alot more value than it actually does. I don’t thinklicense terms will ever be public, but I sure wish they were!

  18. 2

    Publication of Assignments already happens. You can search the PTO Database. Two criteria must be met. First, the application must be published. the assignment must be recorded with the PTO.

    RE: publishing license terms. I understand financial terms, but in some instances there are other terms relating to cost-sharing, expenses, etc. that go directly to corporate operations that shoudl remain confidential. Are they advocating publishing that type of info.?

  19. 1

    Lemley and Myhrvold’s “insight” is not at all new. People who are actually making patent markets have been calling for this sort of thing for years. In fact, Jame Hatton has been working to increase public awareness of biotech license terms for a while now, see link to The reference in the piece to mortgage backed securities is ironic given what’s happening in the credit markets these days.

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