Print

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

[PHInventor]

Let's say I invent a new golf club with a unique grip and unique bend in the shaft. Both of these structures are claimed as inventions. Most users will try to use the invented golf club in a conventional manner, but doing so will not produce great results. For great results, users must employ a novel knee-squat method. It's a simple method. However, since users' first instinct is to use the golf club conventionally, I argue that the knee-squat method is not obvious.

1. In general, how successful are knee-squat method types of utility claims?

2. If you had $1,000 to spend on protecting all potentially patentable material (grip, shaft, and method) how much of that $1,000 would you spend on the method?

3. Would a copyright on the instructions of the knee-squat-method provide good protection, or would a competitor simply be able to rephrase the method and work around the copyright?

[Oh, Crud]

Let's say I invent a new golf club with a unique grip and unique bend in the shaft. Both of these structures are claimed as inventions. Most users will try to use the invented golf club in a conventional manner, but doing so will not produce great results. For great results, users must employ a novel knee-squat method. It's a simple method. However, since users' first instinct is to use the golf club conventionally, I argue that the knee-squat method is not obvious.

1. In general, how successful are knee-squat method types of utility claims?

2. If you had $1,000 to spend on protecting all potentially patentable material (grip, shaft, and method) how much of that $1,000 would you spend on the method?

3. Would a copyright on the instructions of the knee-squat-method provide good protection, or would a competitor simply be able to rephrase the method and work around the copyright?

While I'm tempted to say your method probably isn't worth squat... uh... 

Okay, here goes for real.  Your method can only be directly infringed by your customers.  Suing customers is always a bad thing.  This reduces value for such method claims.  And my distinct bias is that article claims are much better than method claims, just on general principle, so I tend to value method claims low even as a starting point.

I can't quite tell based on your description, but if the new grip and shaft are really only useful using your method (that is, if they actually produce crappy results with a normal stance/swing), then if you only ended up with the method claims, you can still use those facts to argue inducement/contribution of infringement of the method on the part of any manufacturer who makes your grip/shaft.  I.e., the club sucks for normal use, so the maker knows he's selling to people using your patented method.

So let's say you decide to have written for you a patent app with all 3 aspects claimed (grip/shaft/method of swinging).  If I was going to try to parse attorney hours spent by relative value to me of the aspects claimed, I might rest this decision on an assessment of the relative patentability of each aspect.  For example, you do a quick search on golf clubs and find that in 1908, Bagger Vance had a very similar grip made up.  And in 1933, similar shafts were made to save materials during the depression.  Then some whack examiner imagines some benefit that PHOSITA would dream up to combine the two.  But hey, the method of swinging is completely unrelated to these, and those claims sail through... ...and are all you're left with.

(And then in court, the defendant finds Tim Conway's "Dorf On Golf" VHS series and the court invalidates your knee squat method as anticipated by Dorf...)

Happy Friday! 

(Just sayin')

[khazzah]

Your method can only be directly infringed by your customers.  Suing customers is always a bad thing. 

Maybe I'm missing something, because I'm not a litigator ... but have to Disagree. Your method can be directly infringed by someone else's customers. And you can sue that someone else -- a competing manufacturer or seller usually -- for indirect infringement. You have to have evidence of direct infringement. And yeah, maybe that's hard to get, expensive to gather, and annoys the customers. But having a patented method of use doesn't mean you literally sue anybody's customer, much less your own customers.

Right?

This reduces value for such method claims. 

Makes sense to me that method-of-use claims are less valuable because of the need to show indirect infringement.

[Oh, Crud]

Your method can only be directly infringed by your customers.  Suing customers is always a bad thing. 

Maybe I'm missing something, because I'm not a litigator ... but have to Disagree. Your method can be directly infringed by someone else's customers. ...
Right?

Sorry Karen, it's not that you missed anything, it's that I used what you might call an "in-house mentality" shortcut and so was not clear.  What I meant by "customers" was that I view consuming end-users as all being my (potential) customers.   So I should have written, "can only be directly infringed by the consuming public, who are your potential customers, who you do not want to be known for suing". 

[khazzah]

I used what you might call an "in-house mentality" shortcut and so was not clear.  What I meant by "customers" was that I view consuming end-users as all being my (potential) customers.   

Gotcha. And its useful to have the inhouse perspective represented here. You guys definitely have a different mindset.

[Blutarsky]

The best argument would be to go after the manufacturer for inducement to infringe the method claim under 271(b).  One can assume that the only way to properly convey how to use this unconventional golf club would be to explain to the customer how to use the device.  Additionally, it would also be reasonable to think that one would have to have read your patent to combine this novel device with its novel method of use.  The biggest hurdle is proving either actual knowledge of the patent or willful blindness.  I am not sure that you want to go down the path of indirect infringement because the requirements are (1) an agency relationship; or (2) contractual obligation.

[khazzah]

The best argument would be to go after the manufacturer for inducement to infringe the method claim under 271(b)

I am not sure that you want to go down the path of indirect infringement because the requirements are (1) an agency relationship; or (2) contractual obligation.

Yeah, induced was my thinking too. But I see I didn't convey that well by using the term "indirect" infringement. When I said "indirect" I meant: contributory infringement or induced infringement. I think the term does mean this -- but I think the term also has another meaning, which Blutasky alluded too, namely

[ChrisWhewell]

2. If you had $1,000 to spend on protecting all potentially patentable material (grip, shaft, and method) how much of that $1,000 would you spend on the method?

Unfortunately the issue and publication fees for a utility patent to a small entity exceed $1000, not to mention the filing fees.  I'd figure about $10 - $15k spread out over about 3 years with about half up front.   Possibly a little less.    But you believe persons of ordinary skill in the art would tend to golf one certain way, and that is only opinion.   If you could somehow turn that into a provable fact, it could be to advantage during prosecution.

Golf is one of the tougher fields of IP, its been around a while and there's only so much you can do with a ball and club.   Then again, there's tons of patents to balls, cuz there's so many possible polymers and combinations.

I went to a sports store and saw the putter's they're pushing.   My gawd, I was flabbergasted at the various configurations of putter heads companies now put out to attract customers.   "Back in the day" things were much simpler. 

Were I an inventor, I'd try to find the best combination of elastic modulus for the putter head and the ball, and also for the irons/driver and the ball and make it so that customers had to buy my balls if they wanted optimal results from the clubs.  I'd create a machine to test for distance travelled vs. the impulsive force applied to the ball and try crazy composite materials for the club face, such as the material ceramic brake pads for autos are made from, and vary the composition including tiny domains of EP rubber or a similar substance at small levels on the order of 1%.  Then claim the club in terms of physical properties,   and also include some functional language in the claims.   The redneck version of my putter consists of a section of a bamboo fishing pole, a brand new brake shoe from a 98 Buick, and a means for fastening the brake pad to the pole that includes, of course, silver-colored duct tape.

[NJ Patent1]

Karen: “When I said "indirect" I meant: contributory infringement or induced infringement. I think the term does mean this -- but I think the term also has another meaning, which Blutasky alluded too, namely”  As far as I am aware, the statute only address the two instances of “indirect infringement” you mentioned.  CCPA / CAFC decisions admit that it can be difficult to keep the two straight (and IMO it is).  The only other statutory “class” of infringement of which I am aware is infringement in the “ANDA” (abbreviated new drug application w/ allegation of non-infringement or invalidity, called a para iv cert) context.  It is, IMO erroneously, usually referred to as “artificial infringement”.  IMO “administrative infringement” would be a better label.  But I’m not a fed judge (yet   )