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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@earthlink.net
A Great Idea Comes Along Only So Often
“A great idea comes along only so often,” is not a sermon although is sounds like one. It is one of those phrases which has the particular meaning the person hearing the phrase, gives to it. It something like “free speech.” As a statement, it has all the attributes of ambiguity, as it provides no definitions for “idea,” or “great,” or “often.” If used in a courtroom as a question, prefaced by “isn’t it true, that a great . . . ,” , it immediately should provoke an evidentiary objection of “predicate,” a legal shorthand or code word which says the question is ambiguous for lack of definition, as stated above. If the objection was accepted, the court would then require the lawyer doing the questioning to establish as a predicate, the meanings for “great,” “idea,” and “often,” and only then, the judge and jury, would understand what the question means and more importantly, what the answer signifies.
It is a short step from the rules of evidence applied in a courtroom to the evidence of invention applied at the U.S. Patent and Trademark Office, although judging from some of the Office communications, expressing various individual examiner views on “invention,” I suggest each examiner lives in a separate dimension, but for a reason.
At the Patent Office, the inventor asks the question, “is my invention patent able?” The ambiguity arises in the inventor’s originally presented claims, stated in a manner broad enough to recite the “universe.” It is then the examiner who is asked to state the predicate, by presenting to the inventor or more likely, to the attorney, patents or published applications, or other publications, showing what has been done before and what, as a predicate, the invention cannot be. Faced with this evidence, the inventor or the attorney, then again describes the claimed invention in terms for which there is no predicate evidence of what has gone before. If successful, the examiner will accept the recited and amended claims to the invention and a patent will issue but with a narrowed claimed definition for the invention. Something like what former President Nixon would do in announcing new “firsts” for his administration, as in the “first president to ride a bicycle without brakes between the White House and the Patent Office during the AM rush hour.” (Apologies to our former President, now deceased) .
In years gone by, patent claims had to be written in strictly structural terms. No structure was allowed in method claims and no method or functionality was allowed in a device of system described by structure. That has changed and the change should have been expected. It started with electronics where analogue systems were more then a collection of parts but comprised instead, a system of interrelated components with each subsystem performing a function which served as a predicate to the function of another related system. These analogue devices operated by producing electronic signals which were critical for the internal system operation in the way cams, levers, gears and motors, were used in counterpart mechanical devices. These analogue devices became so sophisticated that prior art mechanical systems could be duplicated electronically with the analogue electronic signals serving in place of the mechanical cams, levers, gears and motors. Early computers were digital and analogue with the analogue devices producing electronic signals that duplicated the function of a mechanical device such as a cam, lever, gear, or motor. Over initial rejections of these electronic inventions as merely the electronic counterpart of a known mechanical device, the technology prevailed in part by showing the electronic signals, although acting in function like cams, gears, etc., were the parts of an analogue system functioning, not a mechanical system but electronically and with new and non-obvious functions, for the electronic analogue system, not shown in the prior art.
Now the examiner could no longer rely on known mechanical systems to reject electronic analogue devices. It was the new functions or programming of the known general analogue device that had to be examined, and which required the examiner to serve up examples of known analogue devices performing the same functions of the claimed invention, as a predicate for rejection. However, the analogue invention remained in the largely mysterious world of engineering where the internal workings of the analogue device were hidden from the view of the ordinary person and only the final result was revealed.
Now with the ubiquitous presence of the Internet, where communication is instant and the digital tele-communications connected computer makes everything possible, the internet facilitated process is revealed in a series of steps that takes the user through an ordinary business procedure, done faster and more efficiently by means of the known digital computer with new digital functions. These functions are the same as may have been known manual operations, but were not attempted because of the time and cost involved and because the technology was not available. An example is the money market sweep account where proceeds of a stock sale are transferred into a money market account by the timed operation of a digital computer. That could have been no more then the manual operation of an individual who observing cash deposited after a stock sale, has the foresight to promptly transfer it into a interest bearing money market account. Any one can do it and because of the available digital technology, it no longer takes a person able to invent technology to get a computer related patent. All that’s required is the conception of an idea to make a known business procedure more efficient or faster, then may have been done manually.
Enter the world of the business patent, something I have written about before, which opens the gates of invention to anyone with the idea for a new way of performing a known business process, just because it can it done over the Internet on a digital computer.
For the few remaining doubters, I give you two patents recently issued for “re-giving,” unwanted or white elephant gifts. No technology involved except the routine work of programming our well known to the art digital computer. The result is gifts ordered on line through the Internet, become virtual gifts or cyber space gifts, whose delivery is limited to an email notification. The email would include the options of “acceptance,” “return,” “exchange,” or (and this is the part that counts), “pass it along to someone else.” Under the I.R.S. tax code, the email is your right to possession and control and the gift is taxable if over $11,000. But however realistically the tax code treats it, you the recipient may consider its virtual qualities and transport the gift in cyberspace where it may wander endlessly subject to a computer programmed time limit or a limit imposed on the number of email deliveries. Think of it as a futures contract. If you buy July soybeans and don’t do something with it before August, you can expect to have it on your doorstep or driveway or front lawn.
While the business patent can cover a process we have performed manually without computer benefit, it is the programming of a known business process, into the automatic processing of a telecommunications digital computer, that makes the invention. The patent examiner must find the invention in the same or similar technology, to serve as a predicate for its rejection. Should the examiner be unable to establish that prior art predicate, our invention is “A Great Idea Comes Along Only So Often.”
Any one who would like a summary of acceptable types of business patents, may contact me for a listing.
Stay Tuned for Next Month's Article!
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@earthlink.net . |
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