Home -> Law Blog Directory -> Intellectual Property Law Blogs -> Patent Arcade

Intellectual Property Law

: Patent Arcade

iSlate, iTablet, IP!

So here we are, on the eve of Apple?s next big announcement. Consensus is we?ll hear about a new ?iTablet? type of device. Something that, like the iPod and iPhone, will bring a wealth of slick new features that customers will adore and competitors will copy. Whatever the Next Great Thing From Cupertino turns out to be, I can bet I know what Apple?s IP counsel are doing right now: scrambling.

The scrambling is important, because public reveals like this can destroy valuable Intellectual Property rights. Today?s post will summarize why this scrambling occurs, what Apple (and really any company) ought to have done before products are publicly revealed, and what kind of scrambling is probably going on even as I type this.

Why is there a scramble? What?s the big deal about a public reveal? In many countries, such as those in Europe, an inventor has to apply for a patent before publicly revealing his/her invention. Failure to do so SURRENDERS the right to get a patent. In the U.S. and Canada, the inventor has one year to file an application once such a reveal occurs. Another twist in the U.S. is that a commercial use of the invention, even if it?s in secret, can also start that one-year clock (e.g., using a novel backend system to sell a new service to customers).

What did Apple need to do before the reveal? A few things. First of all, they needed to develop a general patent strategy. Are they international? Which geographic markets are their main ones? Who is the primary competition, and what product/feature areas are more likely to be copied/used by those competitors? How extensively do they want to invest in patents (e.g., only file for the really really interesting features that are core technologies, or go broader) ? what is the budget (e.g., only file 10 a year? a 100?).

Second of all, they needed to identify the potential inventions in this particular new product. Many times, a company creates a new product to offer a certain experience and user features that may position itself well in the marketplace, but doesn?t always know which of those features are INVENTIONS. On that front, the best thing is just to identify what makes the new product interesting, and a patent attorney can work with the developers to identify which ones of those might be eligible for patent protection. You might be surprised what can be patented. User interface processes, menu behaviors, aesthetic appearances (e.g., typeface fonts, the casing, button arrangement, user interface icons and fonts), and hardware features (e.g., new circuitry, memory architectures, button rocker switches, etc.) are all eligible for patent.

Third of all, they needed to actually get the application prepared and filed. A patent application needs to adequately describe the details of the invention, and needs to strategically do so to try and get the broadest possible patent coverage. Depending on the complexity of the concepts, a patent application can easily take several months to draft (with several drafts going back and forth between inventor and attorney). After it's drafted, you can also expect to need some lead time to get foreign applications translated, prepared and filed.

What?s the scrambling? As you can guess, any of the above can be part of the last-minute scramble. Usually, when the disclosure is just a few days away, a company has already developed its strategy, identified its potential inventions, and begun working with patent attorneys to get the application prepared and filed. The last details are usually getting final approval of the draft, and possibly getting inventor signatures on the formal papers that accompany a filing.

So there you go. To the inventors and attorneys working on those last-minute patents, keep up the good work. And to anyone else out there with a public reveal on the calendar, here?s hoping you?ve also got the patent plan in place.

Full post as published by Patent Arcade on January 25, 2010 (boomark / email).