Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[dmin45]

Is it possible to patent a graphic design technique/concept that is easily replicable by any graphic designer with access to design software? The technique is being patented - not the forthcoming designs resulting from applying the technique. Would this mean that any future designs created by any designer anywhere in the world that obtain similar results (through whatever technique - whether it's their 'patent pending' method or some other equally 'innovative' way), would be contestable by the patent applicant?

Also, would very technical language and diagrams to describe it afford any strength to the claim?

I hope I'm being clear enough without sharing more details as to the specific pending patent I'm referring to. Thanks!

[khazzah]

The [graphic design] technique is being patented - not the forthcoming designs resulting from applying the technique. Would this mean that any future designs...that obtain similar results (through whatever technique), would be contestable by the patent applicant?

You've stipulated that the patent covers the technique. Therefore, only results obtained by using the patented technique are infringing.

Also, would very technical language and diagrams to describe it afford any strength to the claim?

Not sure what "strength" means. Claims are usually described on a spectrum of broad->narrow. I suppose you could also describe a claim on a spectrum of as valid->invalid. [I'm thinking that claims that don't have much description at all are more likely invalid for enablement. See Ex parte Rodriguez, which I recently blogged about.]

created by any designer anywhere in the world

All patents have a geographic scope. To sue a designer practicing the patented technique in the US, you'd need a US patent. To sue a designer practicing in the UK, you'd need a UK patent. Etc. etc.

[dmin45]

Hi Karen

Thanks for the input - it's invaluable for me as someone who knows next to nothing about this whole world of patents.

In reading the patent pending in more detail, I realize it's not a technique but rather a style of representing something visually, or a process for altering a design element commonly used in graphic design. They use technical diagrams and lingo to break down something that's incredibly simple. I actually find that part to be amazing. I could explain it in 2-3 sentences - they take nine pages to say it.

Also, if I wanted to do something similar to the company who applied for a patent (but it was not awarded yet) could they have any legal ability to protest my doing a similar thing? It's not like no one else ever did the same thing (there have been isolated cases of designers who have applied this concept to their design) but no one has ever made a business of doing it as a unique design concept.

I'm hoping to offer these designs as a service, related to the area of graphic design that I'm involved with.

Am I sharing enough details?

Thanks for bearing with me!

[JimIvey]

Just a few thoughts....

A patent is a type of property.  Infringing a patent is like squatting on someone else's land without permission.  They can sue you for fair rent for the amount of time you spend on their property and evict you from the property.

A patent defines the bounds of the property in numbered sentences fragments at the end.  You only infringe a patent if you make, use, sell, or import something described in one of those claims.  For the most part, you can ignore anything that is "close" to something described in a claim.  If the claim says "square" and you use a circle, you don't have to worry about that claim.  (This is an over simplification, but it's mostly right.)  In the trespassing analogy, you can defend against eviction by proving, from county records, that the person suing really doesn't own the land you were occupying.

Now, you only need to infringe one of the claims to infringe the patent.  For those familiar with logic circuit design, it's AND logic within a claim and OR logic between claims.

A patent application is not a patent.  If you've applied for a mortgage and made an offer on a property, you don't own it yet.  Often times, the more broad claims in an application never make it out into the world in an issued patent.  However, there is some risk in doing something claimed in a published patent application in that the patent may issue with those claims.

I hope that helps.

Regards.

[dmin45]

Many thanks for you input on this, Jim. It's really great that people like yourself with the experience are willing to offer advice in this area.

In response to your point, "For the most part, you can ignore anything that is close to something described in a claim.": The applicant basically kept the description in general terms, using words like: 'contour', 'varying the length', 'rendered pattern', 'curving', 'distorting', 'extends'. In other words, this is to cover any eventuality of someone trying to do ANY design utilizing the core design element. They want to own any variation on altering this type of design element. (The core design element is something widely used in the design industry and they have no rights to this part.)

The application is dated with a publication date of mid-2006. It still does not seem to be been awarded. How long does it usually take? Is a delay any indication of issues or problems with the application?

My feeling is this application is bordering on a violation of free expression. It's not like they are just saying their design library of the finished designs are trademarked, they are saying the idea of DOING anything attractive to the said design element (which is the basis on which they build their embellishment idea) no matter how unique, is under their patent.

Thanks for hearing this out! I am avidly watching this thread and appreciate all your input!!

[JimIvey]

Well, the language of the claims is interpreted in the context of the rest of the application, so the rest of it might provide definitions for some of those terms.  If you're confident that the claims describe things that have been done more than one year prior to the filing date of the application, then you can be equally confident that the claims shouldn't be allowed in an issued patent in that form.

Not sure what you mean by "core design element."  If you mean that they have some new nugget in there that you're hoping to use and the rest of the claim seems to cover any variation of that new nugget, then that new nugget might be what they're hoping to protect.

Patents can take decades to get.  Since they expire 20 years from the filing date, most try to expedite the process when possible, but you can never really be sure.

Oh, almost forgot.  You can check on the status of published applications.  http://portal.uspto.gov/external/portal/pair  From that link, you can see every paper the applicant filed and every paper sent out to the application by the Patent Office.  It's usually up-to-date (you can see papers filed/mailed the day before).

Patents are not allowed to cover things that came before (another over simplification, but aimed at the point of foreclosing anyone from doing anything) or any obvious variation of what came before.

Regards.

[dmin45]

Jim - your information was exactly what I needed!

I went to the link and searched their publication # on the application and found:
"Mail Abandonment for Failure to Respond to Office Action"

That was the last response to the applicant.

History shows the application got a final rejection, but after that it says 'Amendment after Final Rejection' and then 'Advisory Action (PTOL-303)', 'Mail Advisory Action (PTOL - 303)', 'Aband. for Failure to Respond to O. A.' before the last one 'Mail Abandonment for Failure to Respond to Office Action'. That was all in March of 09.

This looks promising, but I am unsure what the status is now. Does that mean that it's final? Could they attempt to revive it again, or does it seem they did try (by amending) but did not succeed in persuading the examiner? I'd love to know if it's 'safe' to pursue my idea in light of the above, or if there is still something they may be able to do.

Many, many thanks!

[DogDayPM 9er9er9er]

Does that mean that it's final? Could they attempt to revive it again, or does it seem they did try (by amending) but did not succeed in persuading the examiner? I'd love to know if it's 'safe' to pursue my idea in light of the above, or if there is still something they may be able to do.

Smart thinking. 

From your description it seems you're reading down the file's "Transaction History" of events rather than viewing the actual documents.  On the "Image File Wrapper" tab you can pull PDFs of the actual correspondence.  Read the Notice of Abandonment and any documents associated with it (same time frame, especially any "Interview" summaries) to see if there is any comment from the Examiner to the effect that s/he called the applicant asking if they intended to allow it to go abandoned. 

Many Examiners do this just prior to issuing the abandonment notice.  If there is a statement on the record to the effect that the applicant told the Examiner they did intend to allow it to go abandoned, then this simplifies things for you considerably.

The reason is - exactly as you asked - an applicant is permitted to pay fees and revive an abandoned application.  But only under 2 circumstances - (1) where the abandonment was "unavoidable" (very difficult to prove), and (2) where the abandonment was "unintentional" ("oops, I just screwed up, I didn't mean it, let me pay you a hefty fine and get it back on track").

But if the applicant or applicant's agent told the Examiner they intended to abandon it is extremely difficult to argue later that either revival scheme can be valid.

If no such statement is present in the record, you have less certainty.  An applicant can in good faith make a mistake and correct that mistake later.  The petitions office often applies a "reasonableness" standard when deciding to grant or deny a petition to revive, and the analysis is always very fact-specific.  But as more time goes by, the less reasonable it becomes to argue one didn't intend to abandon.  Unfortunately there's no bright line rule here.  I've seen pro se inventors get their application revived even 2+ years after the abandonment.  And I've seen corporations with in-house legal have petitions denied after just 6 months delay. 

Sorry there's not a better answer here but this is an issue for all of us who have to advise businesses, which is why I love it if the Examiner writes a phone interview summary saying the applicant intends to abandon. 

One thing you can say with certainty no matter what you find in the file wrapper is that if the only relevant patent application you know of went abandoned 9 months ago, then if you decide to proceed, you are clearly proceeding in good faith that you are not infringing anyone's rights.

Last thought - EVEN IF they told the Examiner they intended to abandon, I'd try to find out if they filed what is called a continuation ("child") application.  This filing can be done at any time prior to actual abandonment of the case you are looking at.  Back on the PAIR record, look for a tab called "Continuity Data".  These data run backward to any "parent" applications (preceding the application you're looking at) and forward to any "child" applications such as a continuation or divisional application filed from the application you're looking at.

Any child application should normally have published within about 6 months of filing (i.e., not much more than about 6 months after the parent abandoned), so if a child application exists, it should be linked under the Continuity Data tab.  If the Continuity Data tab is missing that means no related applications are filed.  (Or - and I think this would be very rare but just to cover the bases - none that are public information.  In yet another twist (sorry!), I believe an applicant can file a "non-publication" request even for a child of a published parent.  Although I have not heard of this actually occurring.)

[dmin45]

Thank you very much for all the information - I eventually found the follow up documentation.

I didn't see any 'child' or 'parent' applications.

Two other questions:
- I discovered a graphic designer in the mid 80's - early 90's was doing the same thing that this patent applicant in question is trying to patent. Does this weaken their claim any further?
- If they still lay claim to 'patent pending' technology (trust, me there is no 'technology' involved, but that's besides the point) on their website, are they liable for putting forth a misleading statement re- their patent status? After all, the application was rejected and then in spite of an amendment, abandoned.

I have to admit, I am finding this investigating very fascinating! Many thanks again for engaging in this conversation.

[DogDayPM 9er9er9er]

Thank you very much for all the information - I eventually found the follow up documentation.

I didn't see any 'child' or 'parent' applications.

Two other questions:
- I discovered a graphic designer in the mid 80's - early 90's was doing the same thing that this patent applicant in question is trying to patent. Does this weaken their claim any further?
- If they still lay claim to 'patent pending' technology (trust, me there is no 'technology' involved, but that's besides the point) on their website, are they liable for putting forth a misleading statement re- their patent status? After all, the application was rejected and then in spite of an amendment, abandoned.

I have to admit, I am finding this investigating very fascinating! Many thanks again for engaging in this conversation.

(1) is "Yes, But".  When you or I look at published information showing that another person was doing "the same thing" previously, we have to be careful not to over-generalize.  A later person can still patent non-obvious tweaks on the old stuff.   I often have a strong/gut reaction to published applications - "that's the same thing so-and-so published 20 years ago!" - but on a closer look sometimes find the applicant at least added some improvements and is trying to claim the improved widget.  But in your specific case, it looks like the guy in question has abandoned his application anyway.

(2) goes to what is reasonable in business.  Generally speaking, I doubt a court would find liability because of a certain amount of not-unreasonable inertia.  What I mean is, I don't think the courts will say a patent applicant has an immediate duty to scrub "patent pending" off their literature, packaging, website etc. as soon as their application goes abandoned.  Same thing for expired patents - you don't have to immediately convert packaging or product labeling when a patent expires, although this Solo Cup case seems to say you do need to attend to it eventually (blog linked below has a write up on this).  And with a vague statement on the website in question that doesn't specify what they mean by "patent pending technology", possibly they've filed some other patent applications?  (Probably not, just saying you can't necessarily jump to conclusions).

http://www.patentlyo.com/patent/2009/07/false-marking-case-dismissed.html

[dmin45]

Wow - thanks again. Your input is very, very helpful! I appreciate the thoroughness and time you've taken to answer my vague questions (sorry for the lack of specifics - it's more that the web is eternally searchable than any lack of trust on my part).

You and Jim really gave me a lot of tools to help me move forward with a sensible approach.

Happy holidays!!!!