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From Slashdot: Amazon gets a patent on "Social Networking System"

By Timothy J. Maier on June 17, 2010 4:23 PM | No Comments | No TrackBacks

Amazon has recently been awarded U.S. Patent No. 7,739,139 for a "Social Networking System."  Friendster has previously patented a very similar social networking method and actually has 7 patents in total related to social networking that cover similar matter.  It is unclear exactly what overlap there is, but it seems like there could be some.

If you read the claims of the Amazon patent, it reads an awful lot like Facebook.  For instance, in claim 1:

"providing a user interface for users to establish contact relationships with other users of the service such that each user can have one or more contacts, said user interface enabling a user to identify other users of the service, and to selectively initiate the generation of requests to establish contact relationships with the identified users"

"Generation of requests to establish contact relationships" = "Friending someone" ?

Claim 9:

"9. The method of claim 1, wherein the method comprises providing functionality for the first user to grant different permission levels to different contacts of the first user, such that some contacts of the first user are provided access to different types of personal data of the first user than others contacts of the first user."

Adjustable Facebook privacy settings?

Also, claim 12:

12. The method of claim 1, wherein the personal data of the first user comprises an identification of a school attended by the first user and an associated date range of attendance, and the method further comprises the server computer system using said personal data to identify, and inform the first user of, other users of the service who attended said school in said date range.

"Identification by school with associated date range of attendance" sounds essentially the same as sorting people by college and graduating year.

The whole situation has a sort of "cold war" feel to it.  This is clearly a posturing by Amazon, but it is unclear what they have in mind.  It will be interesting to see where Amazon goes with the patent.  The patent also comes right when Bilski might be on deck, which could invalidate the entire thing altogether.

Amazon.com's 1-Click patent confirmed upon ex parte reexamination

By Timothy J. Maier on March 12, 2010 1:18 PM | No Comments | No TrackBacks
The online retailer Amazon.com obtained Patent #5,960,411 for its 1-Click online ordering system in September 1999. The patent is directed towards a method of placing a purchase order online, wherein the customer enters account information once so that subsequent purchases on the website may be made by a single click on a button. Amazon subsequently licensed the patent to Apple and sued competing bookseller Barnes and Noble to keep them from using a similar purchasing method on their own site. However, in 2006, ex parte reexamination proceedings commenced, and the USPTO rejected all but five of Amazon's claims.

In 2007, Amazon made amendments to the claims of the patent that limited the claim scope to a "shopping cart model." The claim limitations overcame the prior art references according to the U.S. Patent and Trademark Office, and four years after reexamination began, the USPTO issued a notice of intent to issue a reexamination certificate for the '411 patent. Yet, as some consider the patent to still be overly broad and the shopping cart limitation to be trivial, the confirmation of Amazon's patent may serve as a catalyst for reform to post-grant opposition procedures.

USPTO proposes change to examiner count system

By Timothy J. Maier on October 5, 2009 3:05 PM | No Comments | No TrackBacks
As part of the United States Patent Office's plans to improve pendency, decrease rework, and rebalance incentives for examiners, the USPTO has proposed changes to its count system.

Under the proposed changes, first actions on the merits will receive 1.25 counts, more than an RCE presently receives, while Requests for Continued Examination will receive fewer counts than at present. Subsequent RCEs will receive even fewer counts, while a Final Office Action will receive 0.25 counts. By favoring counts earlier in the prosecution, such a count system will incentivize compact prosecution and reduce pendency to a first action. Click through to read the USPTO's entire proposal (PDF). 


For more information, please visit www.maierandmaier.com.

Accelerated Examination petitions rise in 2008-2009

By Christopher J. Maier on October 1, 2009 11:57 AM | No Comments | No TrackBacks
In response to the backlog at the United States Patent Office, increased numbers of corporations and patent law firms are opting for accelerated examination when filing a patent application. The average number of accelerated examination petitions filed per month between May 2008 and May 2009 rose 61% compared to the previous 12 months, peaking at 241 in August 2008. 

Some more statistics from the USPTO, as of May 2009: 

  • Fastest patent issued under an accelerated application in 2008 was completed in 76 days (US Patent No. 7408364) 
  • Average time from filing to completed prosecution: 197 days; Minimum time: 18 days 
  • Average number of days from filing to issue: 296 
  • Applications allowed since the program started in Aug 2006: 914+
  • Allowance rate in FY09: 80.3%; FY08: 69.7% (an increase of over 10%)

David Kappos outlines objectives and challenges for the USPTO in 2010 and beyond

By Timothy J. Maier on September 22, 2009 3:09 PM | No Comments | No TrackBacks

On September 14, 2009, USPTO Director David Kappos delivered the opening remarks to the patent attorneys and others attending the IPO Annual Conference. Mr. Kappos outlined several initiatives presently underway at the Patent and Trademark Office, as well as the challenges facing the Office.


Among the initiatives mentioned by Mr. Kappos were several programs to cut pendency, such as one allowing applicants to advance an application in the examining queue in exchange for withdrawing an application from the queue, thereby allowing applicants and examiners to focus on the applications that are important to applicants. Another initiative involved reexamining the current count system and achieving a system that would minimize the amount of Requests for Continued Examination in the patent prosecution process. Mr. Kappos also stated a commitment to increasing participation in worksharing projects such as the Patent Prosecution Highway as well as active participation in patent reform discussions in Congress. 


Mr. Kappos described funding as the largest challenge to the operations of the USPTO. Following the economic downturn, the Patent and Trademark Office experienced a $200M shortfall due to a decrease in filings, issuances and maintenance payments. Consequently, the USPTO has suspended hiring for fiscal year 2010. In order to implement improvements to the funding process, the USPTO has established certain objectives, including: first action pendency to 10 months and overall pendency to 20 months; decreasing the backlog to ~300,000 cases; reducing appeals pendency to 3 months; and reducing reexamination pendency to 1 year. Other objectives included improving PCT processing and implementing a robust IT system for fully electronic processing of applications.


The full text of Mr. Kappos's speech is available on the USPTO website.

Should you foreign file your patent application?

By Christopher J. Maier on April 1, 2009 4:42 PM | No Comments | No TrackBacks
In another installment of our intellectual property video series, Timothy Maier discusses the time and cost considerations that inventors should consider when trying to protect their invention or patent in foreign countries. Additionally, Timothy Maier discusses the differences between Patent Cooperation Treaty applications and Paris Convention filings, and offers some tips for delaying major foreign filing costs for about two and half years.

Top Ten Pitfalls Inventors and Small Companies Should Avoid When Protecting Their Intellectual Property

By Christopher J. Maier on March 31, 2009 4:23 PM | No Comments | No TrackBacks

Eret C. McNichols
Maier & Maier, PLLC

Real World v. Patent World

Legend has it that long ago King Hiero II was given a golden crown that was made by a local goldsmith. The King was leery of the goldsmith's honesty and tasked Archimedes to determine the authenticity of the golden crown. Archimedes had to accomplish this task without damaging the crown in any way. He was fraught with anxiety on how to determine the authenticity with out damaging the King's new gift. To ease his nerves one night, Archimedes took a hot bath. As he stepped into the tub he noticed the water level rise, spilling some on the floor. Instantly, he realized that the water rose by an amount that was equal to the volume of his body. Archimedes knew that without damaging the crown he could use the volume and the weight of the crown to determine what whether it was a fake and made of mere silver or authentic and made of pure gold. He was so excited he ran through the streets, dripping wet and naked, shouting "Eureka!" which means "I have found it!"

This anecdote teaches us that conception is the foundation of innovation. Nearly every free thinking person that has both an imagination and an inquisitive mind has conceived of at least one idea. Conception is that "eureka moment" when the solution to a problem becomes instantly clear.

As any inventor knows, the real world and the patent world are mutually exclusive. For example, an inventor may invent a widget that does something or makes a task easier. That inventor may build and use the widget to improve her own way of life. In such an example, her widget is so useful that her neighbors want one for themselves, so being the good neighbor she builds each of them one. As the idea catches on and the orders come in, our inventor realizes that she could sell these widgets to offset her time spent building them, which she does. But a person in the next county begins building the widgets at a faster pace and selling them for a lower price. Naturally, our inventor cries "no fair."

The moment an inventor desires to profit off of their idea or prevent others from making it, they enter the patent world. This is a world full of mundane details, antiquated language and strict timelines. The line between an inventor maintaining their rights in their invention and losing them is as this as a knife's edge.

There are many important steps that inventors and small companies must know to successfully maintain their rights in their invention. Below is a Top Ten Pitfalls list of the most common mistakes every inventor or small company should avoid during the patent process.

Continue reading Top Ten Pitfalls Inventors and Small Companies Should Avoid When Protecting Their Intellectual Property.

The Pitfalls of Provisional Patent Applications

By Christopher J. Maier on March 18, 2009 4:09 PM | No Comments | No TrackBacks
In another episode of our ongoing intellectual property and patent law video series, Timothy Maier describes the differences between provisional and non-provisional patent applications,  and how the applicant can protect him or herself from the risks and pitfalls of provisional applications.

Ex parte Chuang: DNA anticipates protein

By Christopher J. Maier on February 5, 2009 12:55 PM | No Comments | No TrackBacks
In a recent non-precedential opinion, the Board of Patent Appeals and Interferences rejected claims directed towards an isolated protein based on prior art references directed towards mouse cDNA sequences. The prior art disclosed the amino acid sequence encoded by the cDNA; however, it did not produce the resulting protein nor identify it's biological function.

The Board stated: "While we recognize that the prior art did not physically create the claimed proteins, the Federal Circuit in Donohue addressed this issue, noting "[it is not, however, necessary that an invention disclosed in a publication shall have actually been made in order to satisfy the enablement requirement." In re Donohue, 766 F.2d 53 1, 533 (Fed. Cir. 1985). See Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001) ("[Anticipation does not require actual performance of suggestions in a disclosure. Rather, anticipation only requires that those suggestions be enabling to one of skill in the art"). *** The burden rests with the Appellants to establish that the prior art is not enabling." For further developments, stay tuned to www.maierandmaier.com

Petition for certiorari filed in Bilski case

By Christopher J. Maier on February 2, 2009 11:58 AM | No Comments | No TrackBacks
A petition for a writ of certiorari has recently been filed with the Supreme Court regarding the Federal Circuit's decision in In re Bilski. The petition presents the questions of whether the Federal Circuit erred in holding that a process must be tied to a particular machine or apparatus or transform an article into a different state or thing, and whether that "machine-or-transformation" test contradicts Congressional intent that patents protect methods of doing business. Further briefs, including amici briefs are expected in the coming months. There is a modest chance that certiorari will be granted; if so the case would be heard during the next Term of Court. For further developments, stay tuned to maierandmaier.com
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