An Information Bulletin on Intellectual Property activities in the insurance industry
A Publication of - Tom Bakos Consulting, Inc. and Markets, Patents and Alliances, LLC
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Tom Bakos Consulting, Inc.
Tom Bakos: (970) 626-3049
Markets, Patents and Alliances, LLC
Mark Nowotarski: (203) 975-7678
Patent Q & A
Question: Can improvements on patented insurance processes be patented and used without infringing the original patent?
Disclaimer: The answer below is a discussion of typical practices and is not to be construed as legal advice of any kind. Readers are encouraged to consult with qualified counsel to answer their personal legal questions.
(From Tom Bakos) Maybe
An earlier, related patent may provide a basis for an obviousness rejection which might not have otherwise existed. Invariably, a comparison between the two will be made. The entirety of the differences between the two cannot be obvious to a person of ordinary skill in the art. A simple example: if the original invention (not yours) involved a step to calculate an average value, your improvement based on the calculation of a weighted average value may be considered obvious and, therefore, not patentable. However, if you were the original inventor of a patent issued less than one year prior which disclosed an average step, then your improvement to use a weighted average cannot have your prior invention cited against you as prior art.
Improvements to a process may add steps which improve an existing patented process or substitute a better process which does not rely on any or all of the steps of the original invention.
So, for example, if the original patent describes steps A, B, & C, an improvement may add a step D so the improved invention is A, B, C, & D. The improvement step D may be patentable if new, useful, and not obvious. However, a patent does not grant a right to practice an invention. A patent provides a right to exclude others from making or using your invention. The owner of the original patent A, B, & C could prevent the patent D owner from practicing A, B, C, & D without licensing the original patent. Similarly, if D received a patent, it could not be practiced by the owner of A, B, & C without a license from the owner of D.
However, if the improvement substitutes improved, not obvious steps then it may not rely on the original patent and won't infringe it if practiced in its entirety. An example is an improvement involving steps A, D, & E replacing the original steps A, B, & C. Since the new, improved invention does not perform all of steps A, B, & C, it does not infringe the original patent.
Of course, this response can only address the surface issues and the concept of improvements in a general way. The patentability of an improvement or whether or not its use would infringe an original patent must be based of the particulars of each situation.
An Update on Current Patent Activity
The table below
provides the latest statistics in overall class
705 and subclass 4. The data shows issued
patents and published patent applications for
this class and subclass.
Class 705 is defined as: DATA PROCESSING: FINANCIAL, BUSINESS PRACTICE, MANAGEMENT, OR COST/PRICE DETERMINATION.
Subclass 4 is used to identify
claims in class 705 which are related to:
Insurance (e.g., computer implemented system
or method for writing insurance policy,
processing insurance claim, etc.).
Note also, that because the USPTO reclassifies patents and patent applications from time to time, the numbers for prior years or months may change.
Patents are categorized based on their claims. Some of these newly issued patents, therefore, may have only a slight link to insurance based on only one or a small number of the claims therein.
The Resources section provides a link to a
detailed list of these newly issued
The Resources section provides a link to a detailed list of these newly published patent applications.
The following are links to
web sites which contain information helpful to
United States Patent and Trademark Office (USPTO) : Homepage - http://www.uspto.gov/
United States Patent and Trademark Office (USPTO):Patent Application Information Retrieval - http://portal.uspto.gov/external/portal/pair
Free Patents Online-http://www.freepatentsonline.com/
US Patent Search - http://www.us-patent-search.com/
World Intellectual Property Organization (WIPO) - http://www.wipo.org/pct/en
Patent Law and Regulation - http://www.uspto.gov/web/patents/legis.htm
Here is how to call the USPTO Inventors Assistance Center:
The following links will take you to the authors' websites.
Mark Nowotarski - Patent Agent services - http://www.marketsandpatents.com/Tom Bakos, FSA, MAAA - Actuarial services- http://www.BakosEnterprises.com
In this issueMark points out the importance of Invalidity Searching in resolving patent disputes in: Patent Invalidity Search .
In our Patent Q/A Tom provides an answer to a question on improvement patents.
The Statistics section updates the current status of issued US patents and published patent applications in the insurance class (i.e. 705/004). We also provide a link to the Insurance IP Supplement with more detailed information on recently published patent applications and issued patents.
Our mission is to provide our
readers with useful information on how
intellectual property in the insurance industry
can be and is being protected - primarily
through the use of patents. We will
provide a forum in which insurance IP leaders
can share the challenges they have faced and
the solutions they have developed for
incorporating patents into their corporate
Please use the FEEDBACK link to provide us with your comments or suggestions. Use QUESTIONS for any inquiries. To be added to the Insurance IP Bulletin e-mail distribution list, click on ADD ME. To be removed from our distribution list, click on REMOVE ME.
Thanks,Tom Bakos & Mark
Patent Invalidity Search
By: Mark Nowotarski, Markets, Patents & Alliances LLC - co-editor, Insurance IP Bulletin
There's a lot of suing going on these days related to insurance patents. Whether its auto insurance or annuities, insurance companies are taking a strong stance on enforcing their patent rights. An essential element in resolving these disputes is an "invalidity search". An invalidity search will help both parties realize just how strong or weak a patent is. Settlement is then much more likely, as uncertainty about the validity or invalidity of a patent is reduced.
An invalidity search is a very thorough prior art search. It is a search to find anything published anywhere in the world in any language that might make the claims of a patent either anticipated or obvious. The US patent office does a very effective search when it examines a patent. That search, however, represents several hundred dollars' worth of time and effort. An invalidity search performed by expert searchers in support of a litigated patent can run thousands, if not tens of thousands of dollars. That is not unreasonable. Several million dollars or more may be at stake in the litigation.
There are a number of tools and resources used in invalidity searching that are especially effective in finding previously uncited prior art. They include:
Invalidity searching is an important part of the process for resolving patent disputes. The more thorough the search, the less uncertainty there will be about the validity or invalidity of the claims.
Patents are not guaranteed to be valid simply because the patent office issues one. They can always be questioned and often are when big money is involved - for one side or the other. Neither the patent office nor an inventor can afford to do as extensive a search as is implied by an invalidity search for every patent applied for. Therefore, some chances are, taken and may be reasonable given the fact that an inventor, experienced in the art, may come close to being a subject matter expert and, if discussed with associates, may have already put the invention through some crowdsourcing. However, when validity is up for formal review, a more formal and more expensive invalidity search may be in order.
Mark Nowotarski is a registered patent agent in addition to being a co-editor. For more information on this subject please contact him at: Mnowotarski@MarketsandPatents.com