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
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.
Answer: Yes, and sometimes the artistic nature can be more important than the invention itself.
Details: With the move to more public participation in patent examination, such as Peer to Patent, the importance of the “artistry” of patents will grow. The public needs to be inspired to read a patent application and devote time and effort to providing useful input not only in its examination, but in the development of the idea itself. That’s what artistry does.
Most patents (as opposed to the inventions themselves), however, are long on legalese and short on inspiration. I wondered, however, if there might be a few artistic examples out there.
Creating Client Value with
Mark Nowotarski (co-editor) will be conducting a Workshop for Optimizing Patent Strategies at Patent Forum 2009 on February 25 – 26, 2009 in San Francisco, CA.
The workshop will explore a powerful new tool for creating value for patent clients called Peer-to-Patent and how to use this new tool to potentially:
· increase licensing / investor interest in a pending patent application,
· identify and solve technical hurdles in an early stage invention, and
· increase consumer interest in a new invention.
The workshop will explore these goals through a fundamental redesign of patents which fully meet USPTO requirements made possible by the technology of Peer-to-Patent. Real life examples will be examined and participants will participate in patent drafting exercises based on peer-to-patent principles.
Peer-to-Patent is a joint program between New York Law School and the USPTO to provide “open” patent examination. Applicants volunteer to have their patent applications posted on the Peer-to-Patent website. Members of the public may then upload prior art and commentary. The prior art and commentary is passed on to a USPTO examiner and the applications are examined right away.
Lincoln National Life Insurance Company now has three patents covering the methods and processes used in providing Guaranteed Minimum Withdrawal Benefits (GMWBs) for variable annuities. Two additional patent applications remain pending.
Lincoln is asserting its patent rights through patent infringement lawsuits against three competitors who offer GMWBs: Transamerica Life Insurance Company, Jackson National Life Insurance Company, and Sun Life Assurance Company. Claims in one patent are now the subject of a USPTO reexamination.
GMWBs have been credited with saving the variable annuity industry and are commonly offered by many of the 25+ insurers currently selling variable annuity products. Lincoln National’s claim of protected patent ownership of the GMWB benefit is a threat to competitors offering GMWBs in the variable annuity market.
Tom Bakos (co-editor of the Insurance IP Bulletin) has prepared a comprehensive Intellectual Property Analysis of the Lincoln National GMWB family of IP. This analysis (over 200 pages of printed detail plus supporting documents on CD) represents well over 200 hours of review, analysis, and dissection of the specifications and claimed inventions. It describes prior art (believed to be relevant) either not disclosed or not considered by the USPTO on examination. It addresses the quality of the claims made.
For more information regarding this Analysis and how to acquire it, please go to: Intellectual Property Analysis (http://www.BakosEnterprises.com/IPA).
An Update on Current Patent Activity
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.).
15 new patents have been issued between 8/12 and 10/30/2008 for a total of 79 in class 705/4 during the first 10 months of 2008 – almost 8 new patents issued each month.
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 patents.
43 new patent applications have been published between 8/14 and 10/30/08 for a total of 170 during the first 10 months of 2008 in class 705/4 continuing the pace of the prior two months and indicating a stable level of patent activity in the insurance industry in 2008 (about 17 new patent applications per month).The Resources section provides a link to a detailed list of these newly published patent applications.
Again, a reminder -
Patent applications have been published 18
months after their filing date only since March 15, 2001. Therefore, there are many pending
applications that are not yet published. A conservative estimate would be that
there are, currently, close to 250 new patent applications filed every
18 months in class 705/4.
The published patent applications included in the table above are not reduced when applications are issued as patents, rejected, or abandoned. Therefore, the table only gives an indication of the number of patent applications currently pending.
Recently published issued U.S. Patents and U.S. Patent Applications with claims in class 705/4.
The following are links to web sites which contain information helpful to understanding intellectual property.
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
Patent Law and Regulation - http://www.uspto.gov/web/patents/legis.htm
Here is how to call the USPTO Inventors Assistance Center:
Mark Nowotarski - Patent Agent services – http://www.marketsandpatents.com/
Tom Bakos, FSA, MAAA - Actuarial services – http://www.BakosEnterprises.com
Happy New Year!
The Statistics section updates the current status of
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 culture.
Tom Bakos & Mark Nowotarski
An Experiment in Better Patent ExaminationBy: Tom Bakos, FSA, MAAA and Mark Nowotarski, Patent Agent
Co-Editors, Insurance IP Bulletin
There is a critical need to improve the
speed, efficiency, and thoroughness of business method patent
examinations. Towards, that
end, we have initiated a two pronged experiment to see if modern
technology combined with good old fashioned customer focus can help in
achieving that improvement.
Peer-to-Patent Patent Applications Customized for You, the Reviewer
Our first prong is to evaluate new formats for
patent applications specifically tailored to meet the needs of
Peer-to-Patent reviewers. That could be
Towards that end, Tom has developed a
rather intriguing invention which we have submitted for Peer-to-Patent
review as a “test case”. The USPTO has indicated that
publication will occur sometime in February, with posting on
Peer-to-Patent shortly thereafter.
The Examiner Advocate
Prong II of our experiment is something
we call “The Examiner Advocate”  . The basic
idea behind the Examiner Advocate is that we will team a technical expert
with a licensed patent practitioner to examine a published patent
application before a patent examiner looks at it. This technical expert – patent
expert team will then post a “Proposed Office Action” and an “Expert Opinion” right on the web as an educational
resource for the patent examiner.
The patent examiner will be free to use what we post in any way
that he or she feels is appropriate.
The technical expert – patent expert team will stay with the
application all the way through the process with commentary posted after
each correspondence between the patent applicant and the
The Next Generation of Business Method Patents
It’s time for a breakthrough in how business method patents are written and examined. We hope our modest experiments through Peer-to-Patent and The Examiner Advocate will at the very least inspire others to make even bolder explorations into the next generation of business method patents.
 Patent pending
 An “office action” is a letter from a patent examiner to an inventor which tells the inventor whether or not he or she will be granted a patent. The inventor gets to respond. The examiner gets to respond to the response, and so on until agreement is reached or the patent application is abandoned. After two rounds of office actions, the inventor has to pay more fees to get more examination.
 These will be formal “132 declarations” that the Examiner can rely on as evidence.
USPTO Efforts to Bring in Expertise
On July 22/08 Tom Bakos
wrote a letter to the patent office making suggestions on how the patent
examination process relative to business method patents might be
improved. A response from the USPTO indicated
that the patent office was working with the Office of Personnel Management
· Hire qualified candidates in areas such as actuarial science and finance for the business methods areas, and
· Create a Chief Scientist position.