Timelines in a Patent that Claims a Method

A picture is worth a thousand words.  Various figures may be included in a patent application for aiding the  description of the invention.  In a patent application claiming a control system method or process, a flow chart showing the steps of the method is usually necessary.  In addition to the flow chart, it may be beneficial to include a timeline figure illustrating the operation of the actuators and/or sensors, and the change in parameters when implementing the method. 

Though there may be some overlap of coverage between the flow chart and the timeline, the two figures are complimentary to each other, and may be utilized during prosecution to aid the application from different perspectives.  For example, the flow chart may emphasize the actions, such as the action of opening a valve, turning on a component, or reading a sensor, while the timeline may emphasize the other aspects of the action, such as increased air flow responsive to the opened valve.  The flow chart may emphasize the sequence of the steps, while the timeline may emphasize of the timing of the steps.  The flow chart may be used to delineate various embodiments of the method, while the timeline may be used to show a specific embodiment that can achieve certain advantages.   

When drawing a timeline, it is important that each axis of the timeline is defined as complete as possible.  If possible, information such as the range of the values, zero value, and the trend of changes (increasing or decreasing) should be clearly marked on the axis. This information may become important to overcome some unforeseen prior art or rejections constructed based on the broad interpretations by patent examiners or defendants in litigation.  For example, when claiming closing the valve positioned in a coolant passage, an Examiner may interpret the valve to be either completely closed with no coolant flow through, or partially closed with decreased coolant flow rate.  If timelines showing the value of coolant flow rate and the valve position are included in the application, the claim may be amended and clarified based on the timeline. 

So, when preparing your patent application, consider including timelines of system methods and operation as they might make the difference in the end.

 

 

 

 

ICE, ICE GENIE OR WIZARD OR…?

A previous post described the strategic importance of pursuing patent protection. Therein, the Scrub Daddy served as an excellent example, where Aaron Krause pursued a design patent application during the infancy of his business likely due to money being diverted to the marketing and manufacture of his sponge.  This decision allowed him to secure a $200,000 offer on Shark Tank and grow his business into a multi-million dollar company. 

            Herein, we provide an example of an ice maker which goes by a variety of names, including Ice Genie and Ice Wizard.  While both names are magical, the landscape in which they are selling these ice makers is not.  Searching Ice Genie in Amazon reveals many similar looking products providing the same features.  Not to mention, Ice Genie and Ice Wizard do not appear to be owned by the same company, while the product offered is the same. 

            The Ice Genie is a clever design that provides a double barreled ice maker forming ice between walls of the two barrels.  The walls have features that allow the water to freeze in half-dome shapes.  The Ice Genie touts that it can replace up to 12 traditional ice cube trays.  While this is in number and not in volume, the Ice Genie does provide other features.  The double barrel design further serves as a drink holder, allowing the ice formed therein to cool a drink. 

            While differences between the Ice Genie and the Scrub Daddy may be due to brand recognition as a result of marketing, the origin of these differences may likely be a result of patent protection.  Scrub Daddy’s patent likely deterred competitors enough to prevent copycats and allowed the company to grow and build brand recognition freely.  This is especially evident when searching for Scrub Daddy on Amazon (you will only see Scrub Daddy products on the first page).  Unfortunately for the Ice Genie, it appears as though they did not pursue patent protection and thus there were no consequences for mimicking their design.  Even if someone knew about the Ice Genie, they wouldn’t know which product to select after searching on Amazon.  Ice Genie is another example of why it can be extremely beneficial for a company, even when money is tight, to file patent applications early to afford the company protection of their product while marketing and growing their brand. 

The Importance of Pursuing Patents, even when money is tight

            Household staples are often overlooked as materials which can be improved upon.  Consumers typically use their dish racks, knife blocks, mops, and dish rags without further consideration.  However, Aaron Krause, founder of Scrub Daddy, created a multi-million dollar company by hand-washing his dishes and adding a smile to the sponge.

            Scrub Daddy has burgeoned into a wildly successful company, which may be in large part to Krause’s patent pursuits.  His first patent pursuit included a design patent (USD671515S1) filed in 2007, five years before he appeared on Shark Tank.  The benefits of the design patent include its lower cost compared to a utility patent but potentially shorter shelf-life (15 years).  In hindsight, this was a brilliant way for Krause to affordably protect the Scrub Daddy while suiting potential investors.  Krause received a $200,000 offer on Shark Tank, which is a great rate of return when compared to the cost of a design patent.  The filing fee for Krause was likely $330 (not including attorney fees and drawing fees, due to his micro-entity status).

            Since 2007, Krause has staggered his patent filings, affording him extended patent protection while minimizing his patent costs.  In total, Krause has filed two utility patents (U.S. 2014/0075699 which was a continuation-in-part of U.S. 2016/0213221 (pending)), both filed in 2012, and three design patents, the most recent filed in 2016 (USD801081S1).  Interestingly, U.S. 2014/0075699 was abandoned and U.S. 2016/0213221 includes only one claim, which has been rejected in the most current Office action.  Nonetheless, the Scrub Daddy and its affiliated products are potentially covered until 2031. 

            Regardless of Scrub Daddy’s utility patent issues, which may have been avoided had focus been shifted to a size of the eyes and smile, along with the ridges or “hair” of the sponge, Krause has otherwise played a beautiful patent game and is a great example for other new entrepreneurs.  With money likely being tight and with a focus on expanding your business as quickly as possible, design patents can be a cost-effective way to protect your product while legitimizing your company to potential investors. 

Food and Beverage IP Still Highly Competitive Part II

There are many cases where a company may choose to file continuation applications. For example, in the food and beverage industry, a parent application may be directed towards a system for packaging food, and then a continuation application may have coverage on a method for packaging the food. This approach may have advantages for obtaining patent coverage on various aspects of an invention, while maintaining the benefit of an earlier filing date.

            As shown in the recent Nestle USA, INC. v. STEUBEN FOODS, INC. case, it is important to keep in mind that continuation applications may be subject to similar interpretation as related patent applications.

            In particular, a decision was recently rendered in favor of Nestlé with regards to an aseptic food packaging patent to Steuben Foods, Inc. (U.S. Pat. No. 6,481,468 B1).

            One of the main points that won the recent ‘468 case for Nestlé was an assertion that the Board erroneously relitigated the term “aseptic”. Specifically, the ‘468 Steuben Foods, Inc. patent is related to another Steuben Foods, Inc. patent (U.S. Pat. No. 6,945,013 B2) which Nestlé previously appealed.

            In the related ‘013 case, Nestlé had already submitted arguments during appeal against construction of the term “aseptic” in the ‘013 patent, and the issue was decided against Steuben Foods, Inc.

            Then, during prosecution of the later ‘468 Steuben Foods, Inc. patent, the term “aseptic” was interpreted differently than decided in the ‘013 patent. Thus, Nestlé won an appeal of the ‘468 patent based on arguments that collateral estoppel should have precluded relitigatation of the term “aseptic”.

            So, it goes to show that it is important to consider both current and related patent prosecution history when filing continuation applications. When patents are all in the same family, there is a chance that similar arguments and interpretations will apply.