Continuing our discussion of Kelly Slater’s Four Year Rough Ride To A Patent…
When you are competing in surfing contests (something the author did during with 1980’s with considerably less success, to put it diplomatically, than the lead inventor in this case), you want to do everything possible to make sure that the judges are watching your rides as you compete. So, before you enter the water, all the contestants in that heat meet at a staging area, put on colored jerseys to identify themselves out in the water, and paddle out before the start of the heat. That way, once the horn sounds and the green flag goes up, everyone knows that the judges only have to focus on the contestants.
Imagine how difficult it would be to compete in a surfing competition if during your heat the judges were constantly worrying that some people who should be in the contest were missing. You’d be catching a great wave and pulling into a tube, and when you came out you’d see no one in the judge’s stand, as they were up on the street looking for missing competitors. In that case, you’d be better off finding all the competitors and notifying the judges of where they were, so that you could compete with the judges’ full attention.
When filing a patent application, you turn in an IDS, or Information Disclosure Statement, which lists all the “prior art” you know about at the time you submit the IDS. Indeed, patent applicants are under a duty to inform the USPTO of any patent, published patent application, book, magazine article, journal, newspaper article, etc. that they believe may be relevant to the patentability of their invention. Failure to disclose such information may later lead to any resulting patent being held to be unenforceable.
So, just like make sure that all the competitors that should be in a heat have been found before the heat, and IDS makes sure that the USPTO is focusing clearly on your ride and those of the other competitors in your heat (since you’ve already pointed them out to the USPTO judges), and not spending a lot of time worrying about whether they have all the contestants in the water at one time.
In Kelly’s case, their IDS contained a number of patents and published patent applications that they had found and believed were relevant to whether Kelly’s invention was patentable. They also went out of their way to make sure that the USPTO knew about two other applications, filed in Australia, by sending in complete copies of those published applications attached to the IDS.read more
Kelly Slater’s Rough Ride: Part 1
Kelly Slater is best known for being an 11-time World Surfing Champion to date, but he is also the first listed inventor on a patent application, 12/274,321, SURFACE GRAVITY WAVE GENERATOR AND WAVE POOL, published on May 20, 2010, as publication number 20100124459, soon to become a patent, on a wave pool device that generates surfing waves. The application and patent prosecution process is an interesting one, and provides some common sense knowledge for the novice inventor. Everything in this article was obtained through a public record search of the United States Patent & Trademark search engine.
Why use this as an example? Well, first, surfing technology is interesting to me. Second, any invention relating to generating surfing waves in artificial environments is of particular interest to me, as my wife and I have small resort on an island in Thailand which is so blocked from the Indian Ocean that a big day of surf is 6 inches (don’t believe me? Just go to www.Thai-West.com and look at the pictures – trust me, we need any wave machine technology we could get).
So, let’s go through the patent application and prosecution process and see how Kelly ended up with a patent nearly four years after first taking off on the wave.
Step 1. Invent something, get patent application filed.
In November of 2008, Kelly’s application was filed. It included separate documents for the abstract (150-word or less summary of the invention), specification (written portion), drawings (black and white illustrations showing the key parts of the invention and how it works), and claims (the most important part of a patent, where his patent attorney set forth the key parts of the invention he hoped to protect). His application also included an oath, where Kelly and his co-inventor swore that they with the “first and true inventors” of this device. In it, Kelly and his co-inventor, Adam Fincham, also claimed “small entity status”, which allows them to pay half the usual fees for patent application filing.
Small Entity Status: The United States Patent & Trademark Office has a program under which small entity inventors, generally considered those with fewer than 500 employees, qualify for a 50% reduction in fees, as compared with large businesses with over 500 employees. So, Kelly and Adam are two guys – not Microsoft – so they filed as a small entity. Small entity status can actually get a bit tricky, as you can lose small entity status if you enter in a number of business transactions, including licensing, with a large entity.
….to be continuedread more
Patent Reform Act: A Brief Guide for the Small Business Inventor
The Smith-Leahy Act was passed by Congress and signed into law by President Obama on September 16, 2011, but since then there has been a lot of confusion over how it will impact the solo inventor and small businesses. While no piece of Congressional legislation can be fully and accurately assessed for several years after its passage – during which numerous lawsuits will be appealed to higher courts which will determine in published opinions what the various parts of the new law “really mean” – there are some quick takeaways that are becoming apparent from the “America Invents Act” or “AIA”.
Will changing from a “first to invent” to a “first to file” allow “big companies” to rip-off small inventors?
This is a concern I hear frequently (from small inventors). I don’t think it will change things much. Under the old system, there were ways that “first” inventors who could prove that they invented a particular invention before a “second” person, where the second person filed a patent application on the invention first, and could be awarded the patent even though they were the second to file. This system appears not to have worked well, with very few of the cases brought under this law resolved in favor of the person who claimed to be the first to invent and yet was second to file a patent application.
I don’t think the new law will have that much of an impact. First, even under the old law very few “first to invent but second to file” applicants won their cases. Second, with provisional patent applications there is really not much of an excuse for small inventors to not file for provisional protection before they pitch their product to the big company they fear will rip them off.
As an aside, I think that inventors all over the world benefit from harmonized patent laws. Most of the rest of the world, or at least the important countries in terms of patent protection, work under a “first to file” law, so I see a general improvement in everyone working under the same set of rules.
“First to File” officially goes into effect on March 16, 2013.
What about the “Micro-Inventor”?
This is a provision that will, in the future, allow some solo inventors, universities, and inventors who have to assign their patent rights to universitiesto get a further discount below the already low fees for “small entities”. However, the qualifications to file as a micro-entity are fairly complicated, and considering that you can lose your patent in some cases if you claim a “smaller” status that you should, it will be safer to file as a small entity if you have any doubts.