Laying claim
The system created to help innovation ends in headaches, paperwork nightmares
By Monica Worsley
Ryan Grace wanted to propose to Ellie Colyer in a unique way. So he wrote a step-by-step plan for the marriage proposal in the form of a patent titled “Method and Instrument for Proposing Marriage to an Individual.” The patent application was actually the proposal. Grace asked Colyer. She said “yes.” Together, they mailed the proposal plan to the United States Patent and Trademark Office (USPTO) on March 3, 2003. He got the girl. Not surprisingly, he didn’t get the patent.
“I didn’t actually get a patent because I realized that I wasn’t going to be able to unless I appealed it,” said Grace, founding partner of Advent LLC, an intellectual property law practice in Omaha. To appeal the patent, Grace would have to have gone through months of legal wrangling with the USPTO, proving such claims that his “invention” provides both a method “by which a proposer’s clever proposal coaxes an individual into marrying the proposer [sic]” and one where “the proposer [sic] can righteously tout the uniqueness of the proposal.”
“At the time, I was just out of law school and had just started with a firm,” Grace said. “I didn’t have a ton of money to go about appealing it.”
Grace’s idea was one of 366,043 submitted to the USPTO in 2003. If he had won the patent, he could’ve sued anyone for patent infringement who used a government document — including a patent application — as a marriage proposal. He would have owned institutionalized love.
Making a Claim
Every year thousands of people submit patent applications. The reason: Patents are property rights granted by the United States government, meant to prevent individuals from claiming ownership of another person’s innovation. It protects the inventor, the hobbyist and the garage genius as much as it does the corporate giant. If you own the patent, you own the idea — at least for the 14 to 20 years the patent is good.
But the patent system has morphed from a method to protect innovators into an intellectual arms race in the last decade. Patent holders can sell their rights to the highest bidder, and there are plenty of buyers.
Corporations regularly purchase start-ups — not just for their businesses, but for the patents they hold. In turn, they use those patents to sue other businesses over patent infringements. The most notorious: Apple and Samsung’s continual fight over touch-screen devices. Patent trolls — individuals or companies who make a living by suing others for patent infringement — do the same thing, using vague patents to squeeze money out of true innovators.
“As we’ve moved away from a manufacturing economy to an information economy, the value of intellectual property has really gone up,” said Bob Fish, partner at Fish & Tsang LLP in Orange County, Calif. “As a result there are lots and lots of litigation and patents.”
The only protection is making sure your idea is truly unique. That isn’t easy, though. As of May 2012, there are roughly 2.1 million enforceable patents — i.e. those that haven’t come to term. That’s a lot of big ideas. Dave Sun, founder of SunBlock Systems, works with attorneys as a digital forensic expert and patent analyst. His job is to figure out if your big idea was already someone else’s big idea — or if there’s room for those ideas to co-exist. He said there is a strategy in determining what to include in a patent.
“If you view the patent universe as a bowl and it’s full of marbles, the marbles being patents, you want to be like water in the bowl,” Sun said. “You make your reach as big as possible and when necessary, you make specific exclusions to avoid infringing on other patents that are out there.”
The USPTO sifts through the sea of intellectual property claims — from the unique and innovative to simple design changes. It weighs the merits of each and decides which ideas deserve protection. The accepted patents become other marbles in the bowl.
But getting marble status takes a serious investment of time and energy. The process of getting a patent in the United States takes an average of 28.1 months, according to USPTO estimates. Fish said the lengthy process is characterized by the back-and-forth between inventors and the USPTO.
“You write it up and send it off to the patent office,” Fish said. “They examine it, and then they reject it. And then you have to argue back and forth until you figure out what the proper scope of claims is.”
Implications for Innovators
The patent system is complicated by imprecise innovation stipulations. As of February, a backlog of 604,692 unexamined patents awaited review by the 7,966 patent examiners.
“The issue with patents is that to get one issued it needs to be new, useable and non-obvious,” Fish said. “It’s the non-obvious that’s difficult. The courts have tried for centuries to define what is non-obvious because you don’t want to give a patent for a mere design choice.”
The inexactness of regulations leaves room for subjectivity. Patents passed in one year may be viewed as non-obvious or too similar to a pre-existing idea in another. According to U.S. Code, an idea is deemed obvious if it “would have been obvious at the time the invention was originally made by a person having ordinary skills,.” The United States Supreme Court, which presides over cases of potential patent infringement, determines the selectiveness of the USPTO.
Fish said that since the early 1990s it was “easier and easier to get patents, especially in the software field” until a few years ago. The reason: you only needed to have an idea, not necessarily prove that the idea would work. If you thought it would be cool to have a self-guided basketball you could get a patent; you didn’t actually have to build the thing. And because of this, vague patents like No. 6,671,714, “Method, apparatus and business system for online communications with online and offline recipients,” were issued. That particular patent was used in a 2004 lawsuit that claimed the patent owner basically owned the entire Internet.
“But the Supreme Court has started to reign in the scope of patents,” Fish said, “so the pendulum is starting to swing back the other way after 20 to 25 years in the direction of broader and broader patents.”
The biggest test of this will be when the Court rules on CLS Bank International vs. Alice Corp. in the coming months. The decision is expected to impact patents for software and business methods.
“And depending on how they decide, they could basically just wipe out all software patents,” Fish said. “That’s if they go to the extreme — most people don’t think they’ll do that. There’s an awful lot hanging in the balance with that.”
Until then, patents are still going to be used as a means of protection for big ideas — though, evidently, not for popping the big question. Until Grace decides to resubmit his 2003 patent, you can still use any government document you want as a marriage proposal. Chalk one up for institutionalized love.
Photo courtesy of Ryan Grace
People apply for patents for a variety of ideas — some good, some bad. Despite the costs of obtaining a patent and the stress it places on an already overloaded office some “stupid” patents have made it through. Some to take note of include:
1. Big Balls — For the golfers that need extra help with their swing. These balls are used to help isolate parts of the body to improve a golfer’s game.
2. Squatting Deer — Imagine a mechanized, lawn ornament deer. This deer decoy can be made to look like it is going to the bathroom in order to attract the real thing.
3. Kissing Shield — This is a romantic germ-a-phobe’s best friend. The shield is shaped like a heart and allows for a peck without actually touching lips.
4. Keg Head — Don’t spend the night standing and waiting for the keg — wear it! This beverage carrying and dispensing headgear allows users to take drinks with them and/or share with friends.
5. Dad Saddle — This invention makes piggy-back-rides seem lame. When strapped around a father’s waist and an eager kiddo puts his feet through the stirrups, the saddle is a new way to transport children.
Also on Think
Better Cities, Better Lives
Three Midwestern cities are making strides toward becoming premier, ideal locations
There’s no blueprint. No step-by-step how-to. No clear set of guidelines. An ideal city is undefined, but city leaders across the U.S. are striving to define ‘ideal’ in their own ways…
Tell us what you think