Apollo 50: The role of intellectual property in space commerce

The U.S. Patent and Trademark Office (USPTO) will be hosting an event to commemorate the 50th anniversary of the moon landing on July 23, 2019, from 2 pm to 4:30 pm (ET) at the USPTO headquarters, in Alexandria, VA. The event will also focus on space innovation, technology transfer from the Apollo missions, and an overview of the current administration’s policy on space exploration and space commerce.

Information regarding the event can be found here. Those interested in registering for the event, can do so here. There will be a live Facebook event here.

Quirky- such a great idea, why did they fail?

By Debby Winters

In my Feb. 9, 2015 post I talked about a company that I had been introduced to over the holidays, Quirky. It was such a great idea to provide a platform where new inventions could be sold. Today I found out that on Sept 22, 2015 Quirky filed for Chapter 11 bankruptcy protection. With this Chapter 11, the company will reorganize. It hopes to find “a new home for the Quirky community.”

For a detailed analysis of what one person thinks was the reason Quirky failed, see these explanations from Ben Einstein, a founder and partner at Bolt. Bolt is a seed stage venture capital firm that invests at the intersection of hardware and software.

Let’s hope Quirky, or something similar, can re-emerge to give inventors a platform for selling their goods.

The Keurig…Part II

By Debby Winters

It isn’t often that the day after I post a blog that I see two very relevant articles to update my blog from the day before, but that happened today.

I opened my local newspaper and saw an article entitled “Keurig coffee-pod disputes percolate.” My immediate reaction was to the title. I wished I had thought of something that clever for my blog yesterday. I went on-line to find the original Associated Press article entitled “In Battle for Coffee Pod Market, It’s Keurig v. Recyclables” by Ellen Knickmeyer. This article references the same youtube.com video and gives the same statistics that I listed in my blog. Ms. Knickmeyer says Keurig’s response to this environmental controversy is “Keurig says the fight boils down to how to make the best cup of coffee, and the company has pledged to come up with a fully recyclable pod of its own by 2020. The throw-away containers, both by Keurig and its competitors, allow coffee drinkers to get a quick cup without messy grounds.” At least Keurig is trying to make things better. And at least their main concern is making the best cup of coffee.

Well, this is the main concern for inventor Alan Adler as well! At the age of 75 he invented the AeroPress or the Aerobie. His invention is the “$30 single-serving plastic device that looks like a hand pump and, in the opinion of some of the world’s leading coffee snobs, outperforms thousand-dollar espresso machines.” Before his quest for the perfect cup of coffee, he invented and patented “a portable lamp, which had a circuit which converted three-volt battery power into high voltage to power a fluorescent bulb. But it never got into production.” He is also credited for designing and improving toys that he licensed to Wham-O, including a toy much like the slinky. That’s not the only toy he invented that I’m sure you’ve seen. He invented the Skyros that Parker Brothers sold by the millions. It is an “improved” frisbee with an open center.  If you are as much into inventor’s stories as I am, you’ll delight at reading this interview of 76 year old Alan Adler- ” The Invention of the Perfect Cup of Coffee.” There’s a picture of Adler as an extra bonus. I guess the moral of his story is- It is never too late to invent!


Vote for Quirkies Inventor/Invention

By: Debby Winters

Quirky.com presents and sells inventions you may not have heard about. These are often from independent inventors.  Since Wednesday February 11 is National Inventors’ Day, Quirky is giving out some awards, called The Quirkies, to honor the wacky, underrated, and truly game-changing inventors. You can vote for your favorite in several categories.  Place your votes now.


Premature Disclosures of Inventions on Social Media Websites

By Debby Winters

As social media becomes increasingly more popular, it is essential that companies and inventors avoid inadvertent disclosures of their inventions on social media networks and the company’s website. I have a client who realized this a bit too late. The company posted a Youtube video on the invention to spark interest and promptly filed a provisional patent application. However, we were not ready to file the utility application within the years’ time and had to file a new provisional patent application. This means more than one year lapsed between posting the video and the subsequent provisional patent application filing. We are now working to find a solution to this problem.

Because social media websites such as Facebook, LinkedIn and Twitter, have changed the manner that businesses communicate and market their products and innovations, we must adapt in our thinking about public disclosures.  Although these tools may be beneficial by creating market “buzz” for new products through rapid information sharing, they may also be detrimental to a company’s patenting practices for the same reason.  If disclosures of up and coming products are made on social media websites without the company first filing for patent protection, and the disclosures are then copied by a second party who then files an application based on the company’s social media disclosures, before the company does, then the first-to-file law could bar the company from patenting the invention, whereas the second party could then obtain patent rights to the invention disclosed on the social media site.

While there are no cases deciding whether Youtube videos constituting a public disclosure, US Patent and Trademark Office Examiner training videos suggest that the provision covering this includes “YouTube videos, Website, and other on-line material”.  Accordingly, if an inventor discusses a new invention on a social media website or even on the company’s website, and that invention is copied by a second person (the deriver), who then files a patent application based on that invention disclosed on the web, the original inventor may lose the rights to any subsequent patent that is issued based on the deriver’s filed application.

However, all may not be lost for the original inventor.  The rights of the original inventor may be protected thanks to an exception.  The exception is what we term the one year rule. This rule gives the inventor one year from the disclosure to file a US application. A glaring issue with the “exception” is what exactly constitutes a “disclosure.”  For example, if the company simply makes a broad announcement of the invention, without any detailed discussions or descriptions, would that “disclosure” be sufficient to allow one of ordinary skill in the art to develop that invention?  In the current environment where much innovation and improvement is centered on facilitating a user’s interface with an electronic device, it is possible that disclosure of minor contemplated ‘tweaks’ to an interface would be sufficient disclosure to enable one skilled in the art to craft and file a complete patent application on the improvement.  Some of the lack of clarity lies in the fact that the granting clause refers to “descriptions” of the invention, whereas the exceptions conferring a grace period refer to “disclosures.”    Until these questions are answered by inevitable litigation proceedings, companies would be wise to revisit their social media and website policies and ensure their IP rights remain protected from the outset.

Perhaps for information that is for an “up and coming” product, companies or individuals can request additional information before such information will be made available on the web.  Some safeguards should be in place to take advantage of the marketing benefits of web disclosure while preventing a deemed public disclosure. Without any precautions, if an inventor or unauthorized employee of a company inadvertently discloses an invention on social media networks, and does not file an application based on that disclosure within a year, a second inventor, or deriver, who obtains that disclosure may file an application based on that disclosure, or may modify the disclosure and file an application based on the modified disclosure.  The filed application would then be considered prior art against a subsequent application filed by the original inventor. Or if the original inventor does not file within one year of the inadvertent disclosure, the original inventor may lose all of its rights.

Inventors and companies ideally should file patent applications prior to making any disclosures on social media websites or on the company’s website.  This protects both U.S. patent rights and patent rights in foreign jurisdictions.  At a minimum, a detailed and enabling provisional application should be filed outlining the basic aspects of the invention, and should be followed up by filing a non-provisional application within a year of the filing of the provisional application.  This is particularly important in instances where the company intends to obtain patent protection in foreign jurisdictions.

It is imperative that companies regularly and carefully examine their technology portfolios and ascertain the importance of each invention.  Detailed provisional applications should be filed quickly for inventions that are of great importance to the company, and applications for which foreign patent protection would be sought.  The company has to ensure that a non-provisional application is filed at the U.S.P.T.O. within one-year of the provisional application.

For less important inventions, and for inventions that will not be pursued in foreign jurisdictions, disclosures may be made as a defensive maneuver.  In other words, a company may decide to disclose particular inventions to preempt protection of a similar invention by a competing company.

Companies should also ensure that employees and investors are aware of the detrimental effects that may result from the inadvertent disclosures of company innovations on social media networks.  In addition to having their employees and investors sign confidentially agreements, extra vigilance should be taken for casual disclosures via social media, the privacy of which cannot be guaranteed.


National Inventors Hall of Fame Inductees

By Debby Winters

Seems like there is a Hall of Fame for everybody…even an Inventors Hall of Fame. The USPTO just announced the 2013 list of inductees. See if you recognize any of the names or inventions. I bet you’ll recognize some of the inventions, even if you’ve never heard of the inventor.

Arthur Ashkin

Optical Trapping – At Bell Labs, Ashkin invented optical trapping, also called optical tweezing, a process that traps molecules and macroscopic particles by using laser light. The technique utilizes radiation pressure, when light or other forms of radiation exert force on an object. The process has allowed for the study of small particles in many fields.

Donald Bitzer, Robert Willson, Gene Slottow (1921-1989)

Plasma Display – In the mid-1960s, Don Bitzer and Gene Slottow, faculty at the University of Illinois at Urbana-Champaign, and graduate student Robert Willson, worked together to create the first plasma display. A new display was needed for the PLATO computerized learning system that had been created by Bitzer because traditional displays had no inherent memory, lacked high brightness and contrast, and flickered.

Garrett Brown

Steadicam® camera stabilizer – Brown invented the Steadicam camera stabilizer, ushering in new technology that enhanced movie and television production by allowing directors to obtain shots that were previously thought impossible. His invention is a body-mounted stabilization device so camera operators can move freely while filming remains smooth. Among other inventions, Brown also created the Skycam system that changed how sporting events are filmed by allowing moving aerial views.

John Daugman, Leonard Flom, Aran Safir (1926-2007)

Iris Recognition – Flom and Safir patented their idea for an iris identification system in 1987, basing their work on the fact that every iris, including in identical twins, is unique. Daugman then went on to invent the iris recognition biometric algorithms used in the identification of people using the iris. Today, iris recognition is considered the most accurate in the field of biometric identification based on physical or behavioral characteristics.

Irwin Jacobs, Andrew Viterbi

CDMA Technology – Jacobs and Viterbi, two of Qualcomm’s co-founders, were major contributors to code division multiple access (CDMA) technology that is used in cellular telephone networks. CDMA now supports over 1.6 billion subscribers in developing and developed countries with voice and high speed Internet access. It was standardized for North America in 1993.

Joseph Lechleider

Digital Subscriber Line (DSL) – While working at Bellcore, Lechleider was the first person who demonstrated the feasibility of sending broadband signals over copper. His work turned the existing copper wire phone network into a high-speed broadband delivery instrument, allowing for transmission of data at equal rates in both directions. He also suggested that larger amounts of data could be sent in one direction and smaller amounts in the other, which came to be called asymmetric DSL, or ADSL, the standard used today in much of the world’s DSL connections.

Samuel Alderson (1914-2005)

Crash Test Dummy – Alderson was a pioneer in developing the crash-test dummy, a full-scale anthropomorphic test device. The crash-test dummy has provided automotive engineers with valuable information, enabling them to design more effective safety features including seat belts and air bags. From its beginnings of use in the automotive industry, dummies have gone on to provide valuable data in all kinds of development and testing, from aircraft to medical technology.

John Birden (1918-2011), Ken Jordan (1929-2008)

Radioisotope Thermoelectric Generator (RTG) – Birden and Jordan were working at Monsanto’s Mound Laboratory when they developed the RTG, a self-contained power source that obtains its power from radioactive decay. RTGs have powered most of the exploration vehicles the United States has launched into deep space, where the sun’s intensity is not sufficient to generate electricity with solar cells and steady, reliable power is needed in unmanned situations.

Alfred Loomis (1887-1975)

Long Range Navigation System (LORAN) – Among Loomis’s many innovations, his LORAN radio navigation system for marine and flight navigators is probably the best known. LORAN used fixed land beacons that allowed navigators to determine a vessel’s location, and it remained an essential tool until the introduction of the Global Positioning System in the 1990s.

Robert Moog (1934-2005)

Moog Synthesizer – In 1964, Moog introduced the first complete voltage controlled modular synthesizer, an instrument capable of producing a wide variety of electronic sounds. His synthesizer helped revolutionize the face of music, giving artists and composers the capability to create a brand new palette of sounds.

Grote Reber (1911-2002)

Radio telescope – Reber, a pioneering radio astronomer, built the first substantial radio telescope dedicated to astronomy. Radio astronomy allows for the detection of objects and phenomena not possible with optical astronomy, utilizing a radio receiver that can amplify faint cosmic signals, making the waves strong enough to be recorded and charted.

Congrats to all!