VMarked adds licensing feature to its virtual patent marking service

VMarked AnnouncementThe patent marks that put your competitors on notice have been hiding some untapped potential.

VMarked (VMarked, LLC), an online provider of virtual patent marking solutions, is now giving its customers a new way to use their patent marks to tap into the licensing potential of their patent portfolios, enabling these patent-holders to realize a greater return in their intellectual property investment.

VMarked announced the news about the feature, referred to as a Licensable Patent Indicator, in a blog post this week.

The system allows users to designate patents as being licensable. These patents will appear with an icon indicating that a license is available. When a visitor to the site clicks on the icon, they are presented with information about the license: basic license terms, who to contact for the license, and how to contact them.

This feature allows VMarked’s customers to reach potential licensees who are most likely to have an interest in taking a license.

In a typical scenario, a VMarked customer sells a virtually-marked product, meaning that the product is marked with “patent” and a URL instead of a list of patent numbers. A third party discovers the product and the virtual patent marking and visits the URL to learn more about how the product is patented. This third party is likely doing so because they plan to launch a product with similar features and they are assessing their risk. Before now, when the third party would see that the product is covered by a patent of particular concern, they would likely begin to consider options such as trying to design around or invalidate the patent. However, with VMarked’s new Licensable Patent Indicator in place, they now immediately know that they have the option of licensing the patent because they can readily see that a license is available and they can see the standard license terms. This eases the path to taking a license rather than investing resources in trying to avoid or invalidate the patent.

It’s true that not all patent holders are open to licensing their patents. VMarked makes the Licensable Patent Indicator optional for each individual patent, so customers can decide on a patent-by-patent basis whether they would be willing to agree to a license. They also have the option of designating a patent as licensable without presenting any of the license terms. For many companies that have been looking for new, low-risk ways to reach out to potential licensees, this new Licensable Patent Indicator feature is a welcome innovation.

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Patents 101: How to figure out if a patent has expired – Part I

So you’ve got a U.S. patent in your hands, and you’d like to know if it has already expired. You may have heard that U.S. patents have a 17 or 20 year term. Not sure which is correct? Well, the answer is – it depends. You need to know the earliest filing date to know which term applies.

But first things first. It’s always a good idea to consult with an experienced patent attorney or patent agent if you want to be sure of a patent’s status.

Also, this part of the article is focused on U.S. utility patents. I’ll touch on design patents in a future part of this article.

How do you know if the patent that you’re looking at is a U.S. utility patent? Well, the top of the first page should look something like this:

patent header

Note that it says “Patent” and not “Application Publication.” If your document says “Application Publication,” then it’s not an issued patent. It’s just a published copy of a patent application that may or may not have issued as a patent.

Also note that the number is only preceded by a US. If you patent number starts with a D, P, or RE, then you have a design, plant, or reissue patent, and this article will not apply. (Well, for the reissue it may be very similar, but consult an attorney or agent to be sure.)

Once you’re confident that you are looking at a U.S. utility patent, here are some steps you can follow to help you determine whether the patent is expired or still enforceable.

1. Determine the Earliest Filing Date

Again, sounds simple, right? Well, again: it can be rather complicated. But here are some basics that should get you through most cases.

The face of the patent will show a filing date. However, that’s not the whole story. You will also need to look at the first page of the patent for any mention of related applications and/or PCT applications. If you find information about related applications and/or PCT applications, then you should take into consideration the filing dates of these related/PCT applications as well.

For example, here is a portion of the face of an issued patent that has a related application:

related application

The blue rectangle indicates the date that the application itself was filed. However, there is a related application, as noted in the red rectangle, so that needs to also be considered. In this case, the patent’s application was filed on Aug. 6, 2009, but the related application was filed earlier on September 8, 2006. So the September 8, 2006 date is the earliest filing date.

Here’s an example with a PCT in the application’s history:

PCT application

The above example has several dates being shown. There’s a PCT Filed date of Jan. 14, 2008 (blue rectangle). There’s also a 371 date of Nov. 13, 2009 (red rectangle). Without going into an explanation of the what’s and how’s of PCT’s, just know that it’s the PCT filing date that matters here.

You may also be wondering about the Foreign Application in the green rectangle. In short – you can ignore it when you’re determining a patent’s expiration date.

You can also ignore related applications that are “provisional” applications, such as in the blue rectangle in the example shown below:

provisional application

In the example above, you can see the application’s filing date of March 18, 2011 (red rectangle). You can also see that there are several related U.S. applications (green and blue rectangles) this time. There are three continuation-type related applications (green rectangle), and two provisional applications (blue rectangle).

In short, ignore the provisionals and look for the earliest continuation (or divisional or continuation-in-part) in the list. Here, the earliest filing date is March 17, 2004.

In summary…

The earliest filing date is the earliest of (1) the date the application was filed, (2) the PCT filing date, and (3) the date a related U.S. continuation, division, or continuation-in-part type of related application was filed.

Ignore filing dates of related provisional applications and foreign applications.

Next Steps

Once you’re confident that you have established the earliest filing date, you can figure out whether your patent has a 17 or 20 year term, and in the latter case, when the 20 year term will come to an end.

But that’s only the beginning of the story….

You’ll also need to take into consideration several other issues, such as whether maintenance fees have been paid, and whether there is a terminal disclaimer or patent term extension. And then there’s also the issue of whether the patent’s been the subject of litigation, re-examination, etc. I’ll explain how you can work through at least some of these issues in Part II.

 

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European Patent Applications: How to Check the Status

If you’re a U.S. patent practitioner like me, you may occasionally have European counterpart patent applications that are handled by foreign counsel. Sometimes I need to check the status of an EP patent application. The European patent attorneys that I’ve been fortunate enough to work with are usually very responsive. However, when I have a client on the phone who is asking for a status on the spot, it’s nice to be able to immediately check the status.

The European Patent Register

register.epo.orgYou can check the status of European patent applications that have been published using the European Patent Register at https://register.epo.org. Being a frequent user of the USPTO’s systems, I think of the European Patent Register as the EPO equivalent of the USPTO Public PAIR system.

Once you arrive at the EP register home page, you should see the EP “Smart Search” query field. If you’ve used Espacenet to search their worldwide patent database, then the Smart Search will be familiar to you. You also have the option to do a “Quick search” or an “Advanced search” by selecting one of these options on the menu bar:

EP Register Menu

 

 

I prefer to use the Quick search option. The Quick search form allows you to enter a publication number or an application number. I prefer this method because the system will  usually take me immediately to my application without the need to sift through a list of search results. The smart search is nicely flexible, but with the flexibility comes a greater likelihood that multiple applications will match my search query.

If you are having trouble locating your EP application, you have many other search options on the Advanced search page, including Applicant(s) name, inventor(s) name, keywords, etc. It’s also important to note that your EP application will not appear unless it’s been open to the public.

Once you’ve located your EP application, you can click on the title and be taken to a set of pages containing extensive information about the application. You can navigate the pages using the sidebar menu, shown below.

EPReg_menu2

On the “About this file” page, you can see quite a bit of information about the application, including current status and most recent event. You can also check the bibliographic information for accuracy, look at related applications, see the list of designated states, and much more.

You can view and download the documents in the patent application file wrapper by navigating to the “All documents” page. If you’re familiar with PAIR, this is the equivalent to the image file wrapper. You can select to download individual documents or several at a time. This is very useful if you need to take a look at an examination report or grab a copy of a recently filed amendment, for example. There’s also a handy link at the top of the page to open the application in Espacenet, where you can then view and download the published application.

All in all, the European Patent Register is a handy tool that can be very useful when you need to quickly check the status of a publically-available European patent application.

If you have any tips for using the European Patent Register that you’d like to share, please let me know about them in the comments.

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