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 Patent – Part 2: A little chop while taking the drop.
The first response from the USPTO was a Notice to File Corrected Papers. This is usually no big deal, as the USPTO just needs a few minor changes before they will accept the patent application and give it a filing number, or serial number as it is called. In this case, they didn’t like the original drawings, and, because the application contained 4 independent claims, they had to pay an additional $110. With patent applications, you get 3 independent claims and 20 total claims as part of the package deal for paying the application fee. If you go over 3 independent claims and/or 20 total claims, you have to pay additional money because it will take more time for the USPTO examiner to review the additional claims and decide whether they are patentable or not patentable.
Looking at his application, USPTO was correct and he owed another $110, which he paid promptly. USPTO was also correct in rejecting the initial drawings, as a couple of them violated USPTO drawing requirements. In particular, Figure 1 appeared to be a screen capture or scan of an oceanography diagram showing how waves form and break. Figure 2 looks similarly fuzzy. Figures 3 and 4, however, are excellent examples of what “good drawings” should look like. The lines are clear, there are no borders around the figures, the reference numbers are clear and the arrows clearly indicate what each reference number points to. Looking ahead to Figures 5 and 6, you can see that the invention here is a circular wave pool with a bottom configured such that an endless wave could be created.
It is also quite common to submit “informal” drawings with an initial application. Sometimes the inventor wants to file before the patent illustrator has time to finish the drawings. In any case, the USPTO gives you at least one chance to submit corrected drawings, and they even spell out in their Notice what changes need to be made.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