A Different Patent Law Proposal: U.S. Utility Models?

 

It is safe to say that the U.S. patent system is overburdened and in need of improvements, notwithstanding the self-congratulatory tone of the U.S. Patent Office’s 2008 Performance and Accountability Report. 

In view of the state of the U.S. patent system, a number of patent law commentators have been tossing about potential solutions.  For example, Gene Quinn at IP Watchdog has proposed a number of fixes, including requiring a search prior to filing an application, requiring examiners to examine applications based only on art submitted by applicants, and forcing patent holders to pay for a thorough and complete examination of the patent before the patent can be sued on in federal court.  Likewise, Professor Crouch at Patently-O has has recently commented on the proposal of Tim Wilson (Senior IP Counsel at SAS US) that the sheer number of patent applications being filed creates many problems, and that the solution is to raise patent fees – as high as $50,000 for large corporate applicants. 

Since the IP blogosphere is brainstorming on ways Congress should change the U.S. patent system, we’d like to propose a different strategy: namely, Congress should develop laws establishing U.S. utility models.  A utility model is a form of IP protection very similar to a patent, except that it covers what can best be termed “incremental inventions” for a comparatively shorter period of time (typically 6-10 years for a utility model instead of 20 years for a patent).  The utility model is sometimes called a “utility model patent”, “utility innovation”, “petty patent”, “innovation patent”, “minor patent”, or “small patent”.  Over seventy-five countries have utility model laws, including countries with well-developed patent systems such as Germany (a Gebrauchsmuster) and Japan.  Depending on the country, the utility model subject matter may be limited to inventions having a shape or structure, and may exclude plants, methods, materials, and chemicals. 

For sake of argument, we suggest that a U.S. utility model law allow applicants an opportunity to file a single application for both a utility patent and a utility model.  Applicants could be required to also submit a simple search report for the examiner’s consideration in determining if the invention meets the novelty requirements under U.S. law.  Upon a determination by the examiner that the invention is novel over the search report art and meets certain formal requirements, the application would be allowed for purposes of a utility model with, for example, a ten (10) year term (again, for sake of argument).  Applicants could then have the opportunity to pay for a more intensive search and substantive examination of the invention in relation to the obviousness requirements under U.S. law.  Should the examiner deem the invention non-obvious, Applicants would then receive an allowance for the utility patent with the conventional twenty (20) year term.  A utility model/patent owner would not be allowed to hold both a utility model and an utility patent for the same invention and, if successful in obtaining the utility patent, would be required to abandon either the utility model or the utility patent.

Examination under utility model standards would undoubtedly be less cumbersome on the U.S. Patent Office than examination under utility patent standards.  Many applicants who might otherwise try to slug it out for years in the U.S. Patent Office for a utility patent would be willing to instead take a more limited and less expensive utility model.  An invention covered by utility model, with possibility for conversion to a utility patent, should also be more marketable than a mere application to potential assignees or licensees of the invention.  Moreover, in light of the incredibly more stringent obviousness standard set forth in KSR v. Teleflex, a U.S. utility model would allow Congress to continue promoting “the progress of science and the useful arts”.  The addition of utility models to the U.S. patent system would encourage disclosure of both the conventional “flash of genius” inventions (an awful term, we know, but you get the point), and technological improvements that are, while incremental in scope, nonetheless commercially valuable.  Just because an invention may seem silly or amusing to some (see any of our TIW? features), does not mean that the invention is without commercial value.

Comments from our readers are encouraged.  Let us know your thoughts!

They Invented What? (No. 120)

U.S. Pat. No. 4,934,420: Gravy separating device.

JW Note:  Wishing you a Happy and Safe Thanksgiving holiday.

 

What is claimed is:

1. A device for separating liquids having different specific gravities, comprising:
          a funnel-like separating member having a funnel section, an opening in an upper end of said funnel section and conduit means coupled to and extending down from a lower end of said funnel section for supplying liquid from said funnel section;
          said separating member being at least partially transparent to permit viewing of liquids therein;
stop cock means positioned in said conduit means for selectively permitting passage of liquid through said conduit means;
          a container having an open upper end;
cover means removably mounted on said container in covering relation to the open upper end of said container, said cover means having an opening therein for receiving said conduit means so as to support said separating member thereon, said conduit means being separable from said cover means; and
          wherein said conduit means includes an upper tube portion having a first dimension and a contiguous lower tube portion in fluid communication with said upper tube portion, said lower tube portion having a second, lesser dimension, such that a shoulder is provided between said upper and lower tube portions, said shoulder, said upper tube portion and said lower tube portion having dimensions such that said lower tube portion fits within said opening in said cover means and said shoulder sits on an upper surface of said cover means to support said conduit means and said separating member thereon.

They Invented What? (No. 119)

U.S. Pat. No. 5,320,571:  Dummy for use as sham passenger in car.

 

What is claimed is:

1. A dummy for use as a sham passenger in a car, comprising: a head, limbs, and a trunk; wherein said trunk comprises a neck containing therein a retaining disk provided with a serrated portion, a V-shaped connection rod having a support rod attached thereto in a manner such that said support rod passes freely through the retaining disk and is substantially perpendicular to an underside of said retaining disk, said connection rod having two ends, each of which is fastened to one end of a biasing means having another end that is fastened to a fastening ring which is attached to the retaining disk, said serrated portion of said retaining disk being so arranged as to mesh with a pinion having a shaft coupled with a rotating piece extending into a chest of said trunk of said dummy, said chest further containing a motor with a fan attached thereto and with a power switch connected thereto; wherein said retaining disk extends into said head and rotation of said retaining disk causes said head to move; and wherein said head, said limbs and said trunk are of an appropriate color to represent a person.

Annual maintenance fee for USPTO patent practitioners.

Via the Promote the Progess blog (with hat tip to Filewrapper.com):

The United States Patent and Trademark Office today published a Final Rule in the Federal Register that levies a ‘practitioner maintenance fee’ on attorneys and agents recognized to practice before it in patent cases. The new rule requires all registered patent practitioners to pay an annual fee to maintain their professional association with the agency.

You can view and/or download a .pdf of the rule here.

The rule will become effective on December 17, 2008. The Office will provide “adequate notice” to practitioners in advance of the due date. The fee for maintaining active status is, currently, $118. The fee for voluntary, inactive status (for “practitioners who have retired or are unable to continue their practice, but still desire to maintain a recognized professional association with the USPTO”) is, currently, $25.

Intellectual Property Colloquium – In re Bilski Podcast.

 

Professor Rob Merges (Berkeley), Professor John Duffy (George Washington), and Professor Doug Lichtman (UCLA), recently recorded a one-hour audio podcast about the In re Bilski decision.  The participants are prominent patent academics and have interesting perspectives on the case.  Indeed, Professor Duffy was one of the four lawyers invited to present oral argument in Bilski.  The podcast is freely available on the Internet here.

The podcast is available at a new website called the Intellectual Property Colloquium, and is part of an on-going series of intellectual property podcasts that Professor Lichtman will be creating with senior academic and industry guests.  At the website is an archive and a list of future programs.  Of particular interest to our attorney readers, the podcasts appear to be eligible for CLE credit (watch out for those verification words!) in New York and California — and Professor Lichtman expects the podcasts to be able to be eligible for CLE in Ohio, Illinois, Texas, Delaware, and Washington in the near future.

They Invented What? (No. 118)

U.S. Pat. No. 5,508,049: Pizza pie with concentric rings of crust.

 

What is claimed is:

1. A pizza pie, comprising:

          a substantially flat piece of cooked pizza dough having a predetermined peripheral configuration,
          said piece of cooked pizza dough having a surface which includes a plurality of concentric raised ridges of crust formed at predetermined distances from a linear geometric axis which passes through a center of the pizza dough in a direction which is substantially perpendicular to the substantially flat piece of cooked pizza dough, with one of said concentric raised ridges of crust being adjacent a peripheral outer edge of the pizza pie.