Current thoughts on patent strategy, patent-related news, and other interesting intellectual property topics from Mason Boswell of Boswell IP Law.

Mason Boswell has been named a 2014 Rising Star by Washington Super Lawyers Magazine. Mason has now been selected as a Rising Star four times in 2009, 2012, 2013, and 2014.

Each year, Washington Super Lawyers Magazine asks Washington's best lawyers to select among their peers the 2.5% that are the brightest and most promising.

Mason Boswell has been named a 2012 Rising Star by Washington Law and Politics magazine.

Each year, Washington Law and Politics magazine asks Washington's best lawyers to select among their peers the 2.5% that are the brightest and most promising.

The 2011 Leahy-Smith America Invents Act is scheduled to be signed into law today (9/16/2011) by President Obama. My initial take on it is that my large clients will find some things to like in the changes while my small to mid-size clients will find the changes largely tilt the odds against them. Overall I’m not a fan of the changes, and according to a recent survey by patent blog Patently-O, I am in good company. Here’s a rundown of some of the provisions of the new law that stand out to me.

New clients sometimes ask me how to choose a patent attorney. The field is specialized enough that from the outside all patent attorneys may look the same. Factors that may seem important to someone first approaching the field are often not the ones that turn out to be important later. The patent process is long, and your patent attorney is someone you will end up working with for several years or more.

Two years ago a European judge devised a list of four questions related to software patentability in Europe. Under the European Patent Convention (EPC), a question can be referred to an Enlarged Board of Appeals when a judge perceives a conflict in previous cases that affects the current case. I have been following this closely since many of my clients seek patent protection in Europe and I wrote part of the response submitted as an amicus brief by the American Intellectual Property Law Association (AIPLA).

My wife and I attended a Mariners game tonight (Seattle's local baseball team) and ended up taking a cab home. On the way back, it occurred to me how great of a metaphor a cab is for exactly what I dislike about legal services that are billed by the hour.

Patently-O has some great analysis of the initial rejection rates of patent applications that ultimately issued as a patent (click for link). This is great analysis and puts some real data behind what most of us have experienced in the field many times over. No matter how great an application is, it is very likely going to be initially rejected.

John Cook of TechFlash asked the question over the weekend, "could laid off Microsoft workers spark a new innovation wave?". I can confirm that exactly that is happening.

The Senate Committee on Commerce, Science, and Transportation has approved the nomination of Gary Locke as Secretary of Commerce in the Obama Administration. Locke now goes to the full Senate for confirmation. Among other duties of the Secretary of Commerce is selecting the leadership of the U.S. Patent and Trademark Office.

The two-year old appeal of the United States Patent and Trademark Office's (USPTO) new rules regarding continuation applications, requests for continued examination (RCEs), and applications with a high number of claims (greater than 5 independent, 25 total claims) has finally been decided today.

Did you know that founding a company in a recessionary period puts you in good company? Genentech, Microsoft, Southwest Airlines, and Genzyme were all founded in downturns and many well-known names were founded during the Great Depression, including Morgan Stanley, Allstate, Krispy Kreme, and Knoll. The following study from the Kauffman Foundation is interesting and includes some preliminary analysis on starting a company in a downturn: Kauffman Research Paper.

There was a great post yesterday with a gallery of patent images from video game patents all the way back to the 60's. Here's the article: Technologizer Slide Show.

I am proud to have been named a 2009 Rising Star by Washington Law and Politics magazine! Thanks to all of my peers who nominated me for this unexpected recognition. Full Press Release: Mason Boswell Named 2009 Rising Star.

There was a great article today in the Boston Business Journal about another firm charging flat fees for all of their services. Here's one quote:

Just a quick note of reaction to the long-awaited Bilski case that came out today. If you have a software invention this really only affects how the claims are drafted. Most patent attorneys changed their practice some time ago from claiming simply "a method" to claiming a "computer-implemented method," and after this decision it will be interesting to see if the Patent Office treats that as enough or if more is needed such as tying each step to system components.

Under U.S. patent law, you cannot file an application for an invention that has been in public use or on sale in the U.S. for more than a year (35 U.S.C. 102(b)). A common question is whether a software invention that has been in beta testing for more than a year can be patented. A case decided August 19, 2008, In re Cygnus Telecom., seems to say no.

The following is some information about early patent strategy that I often provide as a good primer for any company starting out with little or no knowledge of patents.


In the U.S. you cannot file for patent protection more than one year from the date the invention was first patented or described in a printed publication in this or a foreign country or in public use or on sale in this country. This includes disclosures you make as well as disclosures someone else who independently invents the same invention makes. For foreign rights you generally must file an application before ever publicly disclosing the invention.

This article (click here) discusses Microsoft head of Research Rick Rashid's comments that the key to a technology company's survival is research. The article provides some great examples of how Microsoft is finding new areas of revenue through their research.

Rick's comments go right along with a message about the importance of patents to protect the research and development a company is doing. In my experience, I have met three types of companies:

It is an unsettled question whether the first-sale doctrine of copyright law applies to software, and today the U.S. District Court in Seattle said no. The first-sale doctrine says that once you legally buy a copy of a copyrighted work, you have the right to sell or give away your copy after that as you please (but you still cannot make additional copies). It has been debated for years whether a copyright owner that distributes software is giving the purchaser a license or selling a copy of the software.

By Mason Boswell

Mason Boswell - Seattle Software Patent Attorney

Mason Boswell is a patent attorney in Seattle that focuses his practice on software, semiconductor, and game companies. In this patent advice blog, you will find current thoughts on patent strategy, patent-related news, and other interesting intellectual property topics.