Let’s talk patents. If you want to be successful in the areas of invention and innovation, you must first have a great patent attorney. They’ll know the ins and outs of the USPTO process, explain the process of what exactly goes into a patent, and most importantly, what claims to make in support of your patent application. Sounds quick and easy, right? Wrong on both counts. For now, I’ll give you an oversimplified version of 5 things one has to prove in order to get a patent approved. They include patentable subject matter, utility, novelty, non-obviousness, and disclosure.
Proving these 5 elements in a patent application is no small feat. On average, a patent application will take 2 to 3 years to be process, and that’s not included an appeal process if your application is rejected. Apple Inc. is finding this out the hard way. The patent in question concerns a method for streaming videos on portable devices (like the iPhone and iPad) which rely on various finger touches and swipes. The USPTO rejected the patent claims on the ground of being obvious. This sounds reasonable at first glance, doesn’t it? Everyone in the tech industry knows how to do this, right?
Apple didn’t seem to think so, and appealed this decision to a Federal Circuit, who reversed the judgment and held for Apple. The USPTO argued that these claims of previewing media over the internet and information on portable devices were already taught in the industry by Cook and Saarinen, and therefore could not be patented by Apple because they failed to establish the element of being non-obvious to those in the industry.
Now, I’ll keep this simple so it’s easy to understand why the Federal Circuit found these arguments from the USPTO unpersuasive. Basically, the USPTO made statements about what the teachings in the industry include regarding lists of video streaming and portable device software, and the Federal Circuit corrected them, demonstrated what they were arguing regarding the subject matter of the teachings is incorrect. The claims Apple was putting forth were not actually included in these teachings on public record, and therefore should not fail the test for non-obviousness.
So, Apple wins this battle, and will probably continue to make lots of noise in the media over its patents. Over the summer, Apple caused a ruckus when the public found out that they were patenting software that would disable the iPhone camera during live music performances. What’s next? Museums? No-Camera Zones? We’ll be sure to keep you updated. Stay Tuned.
Author, Chuck Coulter, is a second year student at Pace Law School, where he specializes in corporate law and intellectual property. Chuck is an avid video gamer, golfer, entertainment guru, and bona-fide geek. When he’s not busy at work for Morrison/Lee, you can find him on Twitter @Coulter_Legal.