patent questions

[fareez]

Dear friends
please help  me with these questions because I can not afford lawyers cost.
1-Suppose that I added an extra wheel for  trolleys  : this extra wheel is great to prevent the trolley from rollover (overturning) but it can be added by many ways, mechanisms, materials and shapes so I can not claim all the ways, mechanisms, materials and shapes , how can I claim the idea itself ? otherwise the patent will be useless
2- can the person who claimed the original wheels prevent me form manufacturing ?
3- if the new wheel forming with the others an integrated design please answer #2 again.
4- I want an English friend to evaluate my English language , is it good enough to write a patent application ?
Thank you very much.
Fareez

[Brad]

Hi,

In response to your questions:

1.  What is special or unique about the wheel?  Is it the location?  Is it the number of wheels?  Is it the shape?   There must be something unique you can claim.
For example, if the standard trolley has 4 wheels your claim may be for a trolley that has a first, second, third, fourth, and fifth wheel positioned at location X.

2.  If the person has a patent on a trolley with 4 wheels and if that patent is still valid then yes then can be in violation of that patent by making a trolley with 4+ wheels.   Note that this is a very legal opinion and not something we can provide here (please check with a patent attorney).   Also, check out this link to see if their patent is still actually valid and has not yet expired:  https://patentfile.org/how-to-use-expired-or-abandoned-patents-instead-of-re-inventing/

3.    Perhaps.  Again, this is a very complex legal question that an attorney will have to answer for you.

4.  Your English seems fine to me.  Not sure if that is your question?

[fareez]

Thank you for your help. I think I could not explain what I mean by “The idea” so let me please try again
1-Each invention claims  begins with broad claims to save the main idea itself for example the first claim of the trolley patent  application :
.( A trolley comprising:...a frame and at least two wheels connected to it)
so by this claim the inventor prevents any other person from claiming any trolley comprising the same , am I right ?
2- Is there any exception for that ?
3- What If an inventor makes a similar trolley (or adds something)  but claims it as a useful wheel chair for patients ? Can the new inventor manufacture it as a wheel chair?
4-If the  broad claims save the main idea itself to be made by any way , why the inventors write narrower  claims for one way ? (for any idea there are thousands of ways to be made but I see in each patent application detailed claims for one way)

[Brad]

1.   Yes.  If someone had a patent on a trolley with a frame and at least 2 wheels then most likely your patent on a trolley with 3 wheels would be rejected.

2. Perhaps.  If your wheels were made out of some unique or new material or if your wheels here mounted using a new type of mount that may be enough of a different to get around that old patent.

3.  A wheel chair and a trolley are different so that should be enough of a difference to get a new patent.  However, if it was a similar device like a trolley vs. a train car than that may not be enough of a difference.

4.  Narrow claims are useful when trying to catch people for violating the patent.  Also, in some cases the patent office or the court system may get rid of claim #1 so it is a good idea to have other (more narrow claims) still in the patent to keep some level of protection.

[Sathish]

If the addition of wheel brings or yields a unexpected results then we can go ahead and say that it would not be deemed as obvious to the person skilled in the art as per section 35 USC 102(US patent)and Article 54(EU patent).

[Brad]

If the addition of wheel brings or yields a unexpected results then we can go ahead and say that it would not be deemed as obvious to the person skilled in the art as per section 35 USC 102(US patent)and Article 54(EU patent).

Perhaps but the results should be very unexpected and you may need to find an expert person in that field to submit documentation to the patent office that says these results are truely unexpected. 

[fareez]

Thanks but I did not understand Sathish reply and I think it is very important so please explain in details.

[Brad]

if the Examiner rejects your patent for being "odvious" then one of the arguments you can make as a patent filer is that your invention is not obvious because you have achieved "an unexpected result".

For example, if your extra wheel increases fuel efficiency that may be an "unexpected result" because one would expect adding an extra wheel and adding extra weight would decrease fuel efficiency. 

[Eric]

Hi Brad,
Sorry if this is the wrong place for this question.

We have developed a software based learning system that is partly similar to patent US 7984003 B2, US 20120322043 A1 and US 20130209983 A1. It is for learning and remembering 1000s of Chinese phrases (and other fundamental type of knowledge) for the purpose of getting good grades in school.
Looking at the above mentioned patents, mine would be similar to U.S. Classification 434/322, 156, 308 and 434/353.

I would like to file a provisional patent (to prevent people from copying my system when I launch the service next month).

Eventhough the product/service is delivered using software, our method is key and different from the method of the above mentioned patents and existing software (language learning apps like Duolingo, Rosetta Stone, Anki).

Can I patent it as a method to learn Chinese and other fundamental knowledge instead of a software patent?

Best regards,
Eric

[Brad]

Good question.

If you remove the software part than it would most likely make your idea even more "abstract" and as such even more "unpatentable".   My best advice I can give you is to look at the examples on the USPTO website about what is and is not considered patentable material and try to write your application using the key terms used in the USPTO examples:
http://www.uspto.gov/patent/laws-and-regulations/examination-policy/past-subject-matter-eligibility-guidance-and-training

[Eric]

Hi Brad,
Thanks for your reply.

"The Court determined that Alice Corp.'s claims to methods were ineligible because "the claims at issue amount to 'nothing significantly more' than an instruction to apply the abstract idca of intermediated settlement using some unspecified, generic computer." Alice Corp.'s claims to computer systems and computer-readable storage media were held ineligible for substantially
the same reasons, e.g., that the generically-recited computers in the claims add nothing of substance to the underlying abstract idea. Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods."

Wiki explains...
The court stated that a method “directed to an abstract idea of employing an intermediary to facilitate simultaneous exchange of obligations in order to minimize risk” is a “basic business or financial concept,” and that a “computer system merely ‘configured’ to implement an abstract method is no more patentable than an abstract method that is simply ‘electronically’ implemented.”

After running through the link you have given me http://www.uspto.gov/video/cbt/OPLA-esme/index.htm, the above case sounds like the lack of novelty to me and has nothing to do with software patent eligibility.

The key point is that my method/process (that happened to be delivered through software) have to include step(s) that are currently not practiced in the industry right?

Thanks,
Eric

[Brad]

..........
The key point is that my method/process (that happened to be delivered through software) have to include step(s) that are currently not practiced in the industry right?

Thanks,
Eric

Hi,

There are at least two hurdles you will have to overcome to get your patent approved:

1. The idea must be novel and non-odvious (the patent office will do a search to see if other people in your industry have done this), and
2. The idea must qualify as something that can be patented (i.e. it cannot be an abstract idea).   From what I have seen, most methods such as methods of teaching or methods or learning are considered to be abstract and therefore not patentable.  If you can somehow tie them to a machines such as a computer than in the past that may have been enough to make them "not abstract" and therefore patentable.   However, as you noted above the courts and the USPTO have caught onto this little trick and are now saying that simply tying a previously abstract (unpatentable) idea to a computer is not enough to make it eligible for a patent. 

See this new post I wrote on this here where you can see that less than 5% of software related patents are now being allowed:    https://patentfile.org/the-slow-death-of-software-patents/


Now, I don't meant to stop anyone from filing a patent.  For all I know they could change the rules next month and everything will be allowable again.  My point is to just warn people that there is a good risk that what you file as a patent may eventually get rejected (or may be allowed).  We don't know.....

[Eric]

Hi Brad,
Thanks for your very fast reply.

"In my personal opinion this means that if your invention is software (including a mobile app) that has anything to do with online shopping, online banking, online dating, or e-commerce in general the chances of you getting a patent allowed is very low. If however you are a technical software developer say working on software methods in robotics or software methods in image processing than those very technical type software patents may still be allowable."

Let's use Google Pay-Per-Click as an example. Before Google started Pay-Per-Click, the whole dotcom was using fixed price banner advertisement which doesn't care if you get zero click while paying USD5000/mth.
So if I was Google, I would patent Pay-Per-Click method of charging advertising before launching PPC on Google.com and it will be enforceable in court right?

Thanks,
Eric

[Brad]

In my non-legal opinion if Google tried to file a patent on pay-per-click today there is a 95% (or more) chance their patent would get rejected based on the recent batch of data coming out of this area. 

[Eric]

Hi Brad,
So is it correct to say that any patent that has to do with software programming code, software methods or processes will have a 95% chance of rejection except for "software methods in robotics or software methods in image processing than those very technical type software patents may still be allowable"?
Thanks,
Eric