13 Dec

From “first to invent” to “first to file” (USPTO)

*Must read*

My friend Evin pointed me to a new ruling that goes into effect March of 2013. I wasn’t aware of this *very important* change to the US Patent and Trademark Office (USPTO) that changes our patent and trademark system “from first to invent” to “first inventor to file”:

“The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today published a proposal to amend the rules of practice in patent cases to implement the “first-inventor-to-file” provision of the Leahy-Smith America Invents Act (AIA).

The first-inventor-to-file provision converts the United States patent system from a “first to invent” system to a first inventor to file system. The first-inventor-to-file provision, which takes effect March 16, 2013, also alters the scope of available prior art to apply against a claimed invention in determining the novelty and obviousness of the claimed invention.

Don’t wait; file sooner rather than later. Consult your patent attorney.

Read the actual USPTO announcement: USPTO Publishes Proposed Rules Governing First-Inventor-to-File.

ceo

22 Dec

Where granted (very broad with prior-art) “Location-based services” patent

If you read my blog, you know that the USPTO granting patents that affect (mobile) innovation when they should not, is a pet peeve of mine.

Today I read about a new patent around location-based services. Good for Where. Not as good for the mobile community and innovators. To all mobile developers working on location-based apps, take note. Another example of USPTO granting broad and with prior-art patents.

Patent 7,848,765, filed on May 2005 has been granted to company Where. This patent:

  • Seems way broad. It seems to cover almost everything under the sky related to geofencing;
  • There already was prior-art when it comes to geofencing and a number of their claims.

Way too broad means new ideas and innovation related to the affected areas (in this case, such as geofencing) will or may experience obstacles and restrictions when brought to market by others. The issue is that there are many ways to accomplish the same thing; so Where’s specific method, not a super broad one, is what needed to be protected and defended. Broad patents hurt everyone and hurts innovation. And in addition, many of the their claims have prior art. Period.

[Geofencing using a browser, that allows a person to draw the perimeter, that transmitted information to a server, etc) was being done before 2005. Just do a search for geofencing on Google (or your favorite search engine). For example, some of the same claims were done back in 2003-4, on a product that I managed called Worktrack (Aligo, San Francisco) where we had location-based services that included the use of geofencing. Just do a quick search on Google for “geofencing + Aligo”; you will see references on from May 31, 04. And, there were (and still are) other companies as well working on geofencing, and marketing; not many in 2005, but some.]

From my perspective, this is just another example of the USPTO not doing proper research about what was *already* out in the wild.

ceo


Related to this:

16 Dec

Observations on US Patent Process and RunwayFinder vs. FlightPrep (Stenbock & Everson)

As a (mobile) SW developer and technologist, the state of the US Patent Office and its process has been and is a concern. In the past I’ve been vocal about this:

As (mobile) technologists we must be aware of and recognize the potential for harm when obvious/weak-patents are granted by the Patent Office. We should be able to trust the patent system, but the system is weak.

Yesterday I read about RunwayFinder vs. FlightPrep (Stenbock & Everson) and it caught my eye, thus decided to do a quick analysis.

I am no lawyer but when you align the facts, which is not a hard thing to do, you can start to see patterns, such as potential patent-trolling or using the USA patent program as currently implemented to allow for weak and/or obvious patents and prevent others from providing access to innovation.

RunwayFinder vs. FlightPrep (Stenbock & Everson) Timeline

0) There is a patent application 09919672 Filed on Jul. 2001 that is referred to by patent 7640098 (their only granted patent). The 672 patent has no “Patent Number” and no “Issue Date”. It is not clear that the 672 has been granted. The 672 I can’t find;

1) On September 28, 2005, “Stenbock & Everson” owners of FlightPrep filed 7640098 titled “Process for generating travel plans on the internet.” This is a divisional patent. The 098 patent has been granted. It makes reference to patent application number 09919672 (Jul 2001) that cannot be found;

2) Also on September 28, 2005, “Stenbock & Everson” filed 20060031006 titled “Process for generating computer flight plans on the internet”, and got revised on February 9, 2006. The 006 has not been not granted;

3) I tried to confirm if the patent 672 is granted or not. Searching for 09919672 on the granted patents DB returns NOTHING. But searching on the Patent Applications (that is, patents filed but not granted) returns ONE patent application: 20060031006 (and not 09919672). That is strange as the 006 makes no mention of the 672 within but are associated somehow;

4) November 10, 2009, patent 20100217520 is filed. Titled “Process For Generating Computer Flight Plans on the Internet” (see similar name); the 520 has not been granted at this point. Very likely 7640098 will be used as a precedent to get this one granted, while getting the opportunity to “fix” any weaknesses on the original patent applications;

5) Nov 3, 2010, an article/announcement on US Fed News Service is published “US Patent Issued to Stenbock & Everson on Dec. 29 for “Process for Generating Travel Plans on the Internet” (Oregon Inventors)”;

6) On Dec 9, 2010, some days later, “RunwayFinder is now offline”.

Observations

Now, I am not sure what claims and filing date is FlightPrep is using against RunwayFinder, but when you combine the facts above and the observations below some things come out as odd , in this particular case, it seems the US PTO process was exploited for patent-trolling purposes:

0) The idea of “Process for generating travel plans on the internet”, in 2005, may not be unique enough. Note RunwayFinder was started in 2005;

1) Seems “Stenbock & Everson” exploited the divisional patent as a loophole for 7640098 to leverage the priority and filing date of 09919672 of 2001. Can someone help verify this? Was the divisional “legit” or intended to workaround the system?

2) How quick it went from step #5 (announcement of patent granted) to #6 (forcing competitors out of business).

FlightPrep claims they offered RunWayFinder a temporary license while they negotiate things, but I understand RunWayFinder position of shutting down if threaten with a ~$3M lawsuit while “negotiating”.

You can read about RunwayFinder now offline (RunwayFinder blog)
-and-
Regarding RunwayFinder shutting down (FlightPrep website)


In the end, mainly the companies with deeper pockets are the major beneficiaries of the current US PTO patent process and the US PTO process can be exploited in ways it should not. Lets not forget where innovation and many of the jobs are coming from today — small tech startups. And patent trolling is evil.


“Stenbock & Everson” Patent History (USPTO) as of Dec 15, 2010

Granted:

7640098 Process for generating travel plans on the internet
Filed September 28, 2005 Revised: December 29, 2009
Divisional patent related to 09919672
09919672 | Jul., 2001 | No patent # | No issue Date
Primary Examiner: To; Tuan C
Attorney, Agent or Firm: Ipsolon LLP

Filed:

20100217520 Process For Generating Computer Flight Plans on the Internet
Filed: November 10, 2009 | Revised: August 26, 2010

20060031006 Process for generating computer flight plans on the internet
Filed: September 28, 2005 | Revised: February 9, 2006


Related to this see Runway Finder Is Going to Fight The FlightPrep Patent and Lawsuit (Aviation Blogs).


ceo