Thursday, April 19, 2007

Will Patent Reform Occur This Year?

Yesterday, Wednesday, April 18th, 2007, the Senate and House both introduced "new" bills to overhaul the patent system. However, these bill aren't "new". This legislation looks like the same bills that have been introduced in years past. In one corner you have "Big Business" supporting the legislation and in the other corner you have "Individual Inventor" against the legislation. These sides are evidenced by a recent quote from Emery Simon, counsel to the Business Soware Alliance, an organization that apparently recieves funding from Microsoft, Apple, and HP. Mr. Simon is quoted as saying "The object of the patent law is to promote innovation and we think the balance has been tipped away from that and has created too much incentive for... litigation."

Well, this seems like an appropriate statement from an attorney who is representing the interests of Microsoft, who just happened to have lost a $1.52 billion patent infringement case in February 2007. If I were Microsoft, I'd sure as doo-doo try and change the patent law too. I'd want to make sure that the next time I was caught stealing patented ideas I wouldn't have to pay as much. The unfortunate reality is that if this legislation goes through, which is likely this time around because the Dems are in control (& the Repubs are against the legislation because they are well-funded by the drug companies, who are against this type of bill since it would allow easier creation of generic drugs), we all lose in the long run.

With this bill, innovation would only controled by the big guys as VC's would be less likely to invest in companies based on patent protected products and services as the patents they hold will be less valuable. This is just one of the MANY problems with this legislation. Do your civic duty and contact your Senators and House Representative & tell them why they need to vote AGAINST this bill. Like many governmental systems, the patent system is not perfect. But it's better for everyone if we don't let Microsoft & the other "big boys" write the laws for us.

You can find Leyendecker & Lemire on the web at


Sunday, April 15, 2007


This past Friday was our blog's second birthday! Sure, it is still referred to as "Our New Blog" on our aging website site of which much of its content is over 5 years old. Alas, the new site is coming, although not nearly fast enough for me anyway.

Anyhow to be nostolgic, here is our very first post:

Why a Blog? That is a question I am asking myself as I type away. Ultimately, Leyendecker Lemire and Daley, LLC is about providing information to our clients and prospective clients. And a Blog is a way to do this.

Hopefully, prospective clients will get a sense of who we are from this Blog. Lets face it, legal services can be expensive and you deserve to have attorneys on your side that you are comfortable with. I have no doubt many of you will appreciate and welcome our open, approachable and up front manner while others of you may prefer more traditional button-up attorneys. We just want you to make the choice that is best for you.

What can you expect from this Blog? Well as the Categories indicate you can expect our pontifications on legal matters relating to intellectual property and business. Perhaps, on occasion one of us might philosophize about something else altogether. And on yet other occasions one or more of us may provide a little insight in to our lives outside of the office. All I can say is tune in and see.

Now, if our Blog is a bit boggy in the beginning, please forgive us. After all, we are attorneys, not web masters. Of course, if you have any questions don’t hesitate to contact us.

Kurt Leyendecker, Esq

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A Denver Colorado Patent Attorney Answers FAQs: Part 6


We continue our popular Patent FAQ series below. Portions of this series can be found on our website. Also, check out our Trademark FAQ series, which, until our new and improved website is launched, can be found only in this BLOG. And if you have not already, click the link above or below and go to our website and add it to your favorites. The new and improved site with about 75% more useful content is nearing completion and should be available within the next month or two. It will be an indispensable resource for entrepreneurs, small companies and individual inventors alike.

6. What are Claims and why are they so important?

Simply, claims are one-sentence descriptions of what the inventor considers his invention. The claims legally define the scope of an invention and inventor’s right to exclude others from making, using or selling his invention. Without question, the claims are the most important part of the patent application and subsequent patent.

The claims are also the most misunderstood part of a patent application. They are often written in patent attorney legalese and are very difficult for someone not trained in patent law to read and properly interpret. The typical inventor is unable to judge the quality of the claims provided in a patent application and if the patent attorney has not done a good job, the scope of protection of any resulting patent may be severely limited to the point where the patent has little or no value in preventing other from copying your invention. It is an unfortunate reality that many patent agents and attorneys are also not very adept at writing good legally defensible claims, whether that is because writing good claims would take too long or because of simple ignorance concerning the rapidly changing state of patent law. On the other hand, a good patent claim may provide you with a scope of protection that is greater than you contemplated before you went to see your patent attorney. Accordingly, the choice of quality patent counsel is of the utmost importance.

To give you a better understanding of claims, there are basically two types: independent claims and dependent claims. An independent claim is a complete description of the invention in and of itself. It comprises a set of elements (or limitations) that when taken together in combination defines a novel and nonobvious invention. A dependent claim is a claim that includes additional limitations that further define and limit an independent claim. Consider the example of a pencil with an eraser as provided below:

1. A writing device comprising:
(i) an elongated core comprised of a first material, the first material having a property of exfoliating when frictionally engaged with and moved across a surface;
(ii) an elongated shell comprised of a second material substantially surrounding the elongated core, the elongated shell having a first end; and
(iii) an eraser, the eraser being attached to the first end.

2. The writing device of claim 1, wherein the first material comprises graphite.

3. The writing device of claim 2, wherein the second material comprises wood.

Claim 1 is an independent claim. Claim 2 is a dependent claim that includes all of the elements of claim 1 plus the additional requirement that the first material be graphite. Accordingly, if these claims issued in a patent and a person made a wood pencil with a lead core, he would be infringing claim 1 while not infringing claim 2, because claim 2 requires that in addition to all the elements of claim 1 that the core be made of graphite. Claim 3 is dependent on claim 2 and accordingly includes all the limitations of claim 2 and claim 1 from which claim 2 depends as well as the additional limitation that the second material comprises wood. Accordingly, if a person made a mechanical pencil with a graphite core material and a plastic shell he would still be infringing claim 1 and claim 2, but he would not be infringing claim 3.

How does an inventor know if the claims that a patent attorney wrote for his invention are any good? We do not have an answer for you. Our basic response would be to question your patent attorney before you hire him. Listen to his responses. Does the attorney seem like he takes the claims portion of a patent application seriously. Ask him/her how much time it takes to draft a set of claims. If he/she indicates it can be done in a couple of hours, you can rest assured that the claims will probably not be very good. If you prospective patent attorney says he can draft an entire application for $3000 and his hourly rate is $225 or more, you can be confident he is not going to spend more than a few hours on the claims. In our opinion to draft three really good sets of claims (you can have up to three independent claims in your application for the basic filing fee) takes around 5-8 hours. And incidentally, the shorter the length of the claims, the better they are likely to be. Long claims with a lot of additional language are almost always too narrow!


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Wednesday, April 04, 2007

A Denver Colorado Patent Attorney Answers FAQs: Part 5


5. What is the Difference between a Design Patent and a Utility Patent?

A utility patent is typically what comes to the mind of most people when they think of a patent. Utility patents can be obtained for new and useful processes, machines, articles of manufacture or compositions of matter. Utility patents may not be obtained for: printed matter (usually protected with a copyright); naturally occurring articles; scientific principles, mathematical laws; and “inoperative” inventions, such as perpetual motion machines that are incapable of achieving a useful result.

Unless otherwise stated, throughout this web site when we use the term “patent” and “patent application”, we are referring to a utility patent and utility patent application respectively.

Art is generally not within the purview of utility patents. Sculpture, paintings, and music are not considered to possess utility (or usefulness) and are, accordingly, not patentable. Creative works are typically protected through copyright. Patent law does overlap with copyright concerning design patents. To learn more about copyright law, click here.

Design patents protect the novel, nonobvious ornamental designs of articles of manufacture. In other words, the design patent protects the way an article looks. Unlike utility patents, there is no requirement that the ornamental design be useful. Rather, a design patent cannot protect the features of an article of manufacture that are dictated wholly by functionality. It is not uncommon to apply for and receive both a utility patent and a design patent for the same article provided the novelty and nonobviousness of the article resides in both its utility and its ornamental appearance.

As mentioned above, sculpture is protectable through copyright, but since it is an article of manufacture, it is also protectable through a design patent. Because registered copyrights are inexpensive to obtain when compared to design patents (typically about $300 versus about $1000-2000) and considering the much shorter term of a design patent (14 years), it is rarely prudent for a sculptor to apply for and obtain a design patent when a copyright will provide adequate protection. Furthermore, since copyright protection actually applies to a creative work immediately upon its creation, the sculptor need not even apply for a registered copyright, although by registering the copyright, the sculptor does gain certain additional avenues of legal recourse against those who copy his work.

Copyrights are not available, however, for articles of manufacture that are primarily functional unless the nonfunctional portion can be conceptually or actually separated from the functional elements of the article. For example, a 1.5-foot high sculpture of a person is protectable through copyright whether the sculpture stands alone or serves as the base of a table lamp. Interestingly, the lamp's design (i.e. the sculpture) would also be protectable for use in a lamp using a design patent. There is a degree of overlap between copyright and design patent protection but in general, design patents are most useful to protect the ornamental and non-functional features of an article of manufacture that possesses functionality.

Generally, a design patent by itself without an accompanying utility patent is of little use to the independent inventor. Some unscrupulous invention companies have in the past used the design patent as a way to inexpensively (for them) obtain a patent for their customers. They, however, often failed to inform the customer that the design patent only pertains to the look of the device and that a competitor could produce a similar device that has the same functionality without infringing the design patent. And if the competitor cannot produce a device having similar functionality as the design-patented device without copying the look of the device, than the design patent is probably invalid because the look of the product is not wholly ornamental but is at least partially dictated by function.

We do recommend that an inventor or company consider obtaining design protection when they intend to produce an article of manufacture themselves and the design is unique enough in their opinion that there is a concern about someone copying it. Often a design patent is a good companion to the utility patent as it further protects a particular product.


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