eBay STOLE MY PATENT PENDING IDEA

[Bmehmet]

eBay STOLE MY PATENT PENDING FEATURE

What is the name of your state? New York

It seems I'm not having any good luck lately. I own the website stocROOM.com, an eBay marketplace. As part of my site, I developed a feature called "stocREQUEST". It allows buyers to post requests for products from sellers. One month after I launched my site, eBay duplicated my idea and called it "Want It Now".

Here is where the infringement is: It concerns how an "Item Number" is utilized by the sellers to respond to the buyers requests. This is what is covered in my pending patent application.

I performed a patent review for prior art and found the following patents pertaining to classified advertisements:

1) 20020120506A1 8/29/02

2) 6,253,188 6/26/01

3) 5,283,731 2/01/94

These patents pertain to placing want ADs and sellers responding by utilizing an email feature or to a program that automatically selects the sellers items based on the buyers specifications in the request. Like a search tool. None allow a seller to utilize an "Item Number" to respond to the buyers requests.

I'm seeking an attorney to help me just write the "claim" section of it for the final patent application. I have a provisional filed. I'm willing to give an equity position. I qualify now to file for a speedy patent review due to eBay's infringement, which will take only 12 months for the review. Once the patent is approved, I have the law firm of Hunton & Williams who has agreed to litigate the case once we get the patent.

There will be two claims for this feature:

1) The utilization of an "Item Number" in responding to buyers requests.

2) The "process" that automatically matches the sellers products to the buyers request and sends it to the sellers first for "quality control". At which point, the sellers enter an item number to submit a response to the buyers requests.

You can read more about it here:

http://www.stocroom.com/webapp/stocROOM/StocRequest.jsp

 

[racer72]

Ideas can't be patented. And your idea is not new, I was involved in a website over 5 years ago which was basically the opposite of eBay, you place an ad for items you want and sellers browse the ads looking for folks to buy their wares. And you are going to need some serious cash if you want to take on eBay, good luck finding a lawyer that will even touch a case like this.

 

[divgradcurl]

I'm seeking an attorney to help me just write the "claim" section of it for the final patent application.

Any licensed patent attorney or agent can write up the patent claims for you -- go to the USPTO website, click "patents," and then click "search for a registered attorney or agent" -- you can search by location. Find an agent (cheaper) or an attorney, and get it done. It'll probably cost you a couple of thousand bucks.

Remember, you only have a year from the filing of the provisional to turn it into a nonprovisional (or use some other continuance procedure), so keep that in mind. Also, remember that 35 U.S.C. 102(b) requires that your provisional was filed within 12 months of the first public use of the invention.

Good luck.

 

[divgradcurl]

racer72,

Ideas can't be patented.

True, but this isn't simply an "idea" he has here -- this would fall under the heading of "business methods," which are perfectly acceptable patentable subject matter. See State Street v. Signature Financial.

And your idea is not new, I was involved in a website over 5 years ago which was basically the opposite of eBay, you place an ad for items you want and sellers browse the ads looking for folks to buy their wares.

If his idea is not new, then the patent office won't grant a patent -- and even if they do, it'll be found invalid in later litigation. But that shouldn't stop him from trying to obtain the patent if he really thinks its a novel invention.

Further, just because there were ad-based websites five years ago doesn't mean that the narrow "invention" he is claiming here -- the use of "item numbers" -- isn't novel and therefore patentable.

Besides, if you have actual evidence of use of his specific invention prior to the date his patent was filed, then when he goes to sue eBay for infringement, you can sell your knowledge to eBay for big bucks! There are even "patent bounty hunters" that will pay you for such information!

And you are going to need some serious cash if you want to take on eBay, good luck finding a lawyer that will even touch a case like this

It takes serious cash to fight ANYONE for patent infringement -- but it is MUCH more expensive and tougher for the defendant for the plaintiff -- if he gets a patent issued, the presumption that the patent is valid is tough to overcome in court. And besides, if you read his post, he already has a law firm willing to take on the litigation. And even if they don't, there are a few firms (Niro is a name that jumps to mind, out of Chicago) that will take plaintiff-side patent litigations on contingency -- so it's not a lost cause, if you've got a solid patent and some good evidence of infringing activity...

 

[Bmehmet]

Thanks for the advise. I contacted Niro.

As for the patent possibility. I'm looking at either a "Business Method" or "Process Claim". There seems to be a slight confusion in the industry about these two.

1) The utilization of an "Item Number" in responding to buyers requests. This is valuable because without it, sellers would have to re-write the description of their items each time they respond to buyers requests. Prior art never took this into account. No prior art applied this type of system to "auction" type sites where "item numbers" could be utilized to respond to buyers requests. Actually, there is no patent that utilizes "item numbers" in responding to buyers requests.

2) The "process" that automatically matches the sellers products to the buyers request and sends it to the sellers first for "quality control". At which point, the sellers enter an item number to submit a response to the buyers requests.This process is very important. If you were to try and fully automate this process, the program would pull irrelevant items and send it to the buyers in response to their request. For example, if a buyer is looking to a "table", they would not just get tables as a response, they would also get "lamps" that are placed on tables. Simply because the sellers described the "lamps" as being on top of a "table". The simple word "table" in a seller's product description would pull irrelevant products. My system would automatically pull the products and then send it to the seller who does "quality control" to ensure that the products automatically pulled by the system match exactly to the buyers request. Then the seller can submit the products to the buyer by entering an "item number", which will send a detailed response to the buyer's request.

 

[Bmehmet]

I just uncovered that by Federal Law, Claim examiners can write your claim for you based on your application description. It maybe a good idea to get a good lawyer to be sure your claims are broad enough but when your limited in money, the claim examiner is better than you writing it yourself and having the patent denied. Besides, the person approving your patent will be the one writing your claims.

 

[divgradcurl]

just uncovered that by Federal Law, Claim examiners can write your claim for you based on your application description.

That is correct.

It maybe a good idea to get a good lawyer to be sure your claims are broad enough but when your limited in money, the claim examiner is better than you writing it yourself and having the patent denied.

Maybe, maybe not. What's the value in having a patent that can't really be enforced? If you have the patent examiner write the claims for you, they will certainly be allowed, but guaranteed the claims will be narrower than what you would be able to get allowed if you had an agent or an attorney do it.

This is how it works: You submit a set of claims, the examiner rejects some or all of them based on prior art, etc., you either rebut the examiner's arguments (and get the claims allowed) or redraft the claims to get around the examiner's reasons for rejection (usually it's a combination of both), examiner either allows or rejects, repeat as necessary. A patent is never denied based on the original claim language, unless the applicant simply gives up after the first office action -- the fact is, very few, if any, patents can get through examination to issuance without having at least SOME of their original claims amended or rejected.

The value that an attorney or agent adds to the equation is being able to use their knowledge of the patent system, the examining procedures, and relevant caselaw to craft claims that simultaneously cover your invention while being broad enough to keep people from easily working around your invention. The problem with claims that are drafted by the examiners (or drafted by inexperienced inventors or agents\attorneys) is that, while the invention itself may be covered, virtually no other space is, and it is usually pretty easy to "design around" a narrow patent.

I've seen some patents issued where you would have to be a patent attorney just to figure out HOW to infringe on the patent; I've also seen some very well written patents that have turned out to be quite enforceable against a broad range of infringers.

Especially if you are planning on going after eBay, or another large organization that can hire top-notch attorneys to figure out how to best defend against a claim of infringement, you need to make your patent as broad as possible to try and ensure that what eBay does actually infringes on your patent. Make your claims too narrow, and you'll find that their lawyers will likely be able to dance away from your claim coverage.

If all you want is a patent to hang on your wall, have the examiner draft your claims. If you want something that really protects your invention, and that you can enforce against someone else, you really need the help of an experienced patent attorney or agent.

Besides, the person approving your patent will be the one writing your claims.

And that presents a conflict-of-interest. Patent examiners get "rated" on how many patents they move through the system. If an examiner writes the claims for you, well, it makes it easy to move your patent along through the system, and makes it easy on the examiner, but, like I said above, what you want is not just an issued patent -- you want an issued patent with the broadest protections possible. An examiner isn't going to spend the time required to figure out how best to draft your claims -- he's going to write up allowable claims, and that's it.

If money is tight, try and find a patent agent in your area -- they can write claims as well as (and in many cases better than) a patent attorney, and they are almost always cheaper than an attorney. It will still be expensive, but if you go with the examiner, you'll get what you pay for.

NOTE: I'm not trying to slam the examiners or anything -- they are typically quite overworked, and have a tough job to do. But the fact is, they work for the government, not you, and the only way YOU will get the best for YOU is to have someone who is working for YOU -- your own attorney or agent. I am registered to practice before the USPTO, so I have some experience with this stuff...

 

[Bmehmet]

Very good advice. As this discussion continues, the idea on how to proceed will become more organized and gain more strength.

Especially if you are planning on going after eBay, or another large organization that can hire top-notch attorneys to figure out how to best defend against a claim of infringement, you need to make your patent as broad as possible to try and ensure that what eBay does actually infringes on your patent. Make your claims too narrow, and you'll find that their lawyers will likely be able to dance away from your claim coverage.

If all you want is a patent to hang on your wall, have the examiner draft your claims. If you want something that really protects your invention, and that you can enforce against someone else, you really need the help of an experienced patent attorney or agent.

The best method to employ is a strategy of “hindsight” with the writing of the claims and the infringement with eBay.

CLAIMS

Just because the claim examiner writes your claim doesn’t mean you have to accept it. In fact, youactually have to “amend” your application to include the examiners claims. Section 707.07 (j) Manual of Patent Examining Procedure http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r2_0700_508.pdf . At this point, you can then take the examiners written claims to an experienced patent attorney who can revise the claims to make them “broad”. This will be less expensive and you will be secure in knowing that you will get a patent and if not, you will still have recourse.

(a) Recourse

This gives you more protection against “legal malpractice”. The theory is that the attorney was presented with claims that were approved by the patent office and if he drafts claims that are too broad and gets your patent denied, you have a claim of legal malpractice against the attorney. Which his insurance will cover. The fact that the patent office drafted and was willing to approve those claims but for the attorney’s negligence, your patent application was denied. You have established ”liability”. The issue to resolve will be “damages”. This case will settle. Good reason why attorneys won’t let you know about this “hindsight” strategy. Another good reason why you should learn about the law yourself on issues your currently dealing with or having an attorney work on.


eBay’s INFRINGEMENT

First, you must look at eBay’s infringement as a good thing not bad. By infringing on your idea, eBay gave your idea legitimacy, value and actually became your partner and is currently implementing your idea in a venue that is creating “commercial success”. You can use this in your patent application. eBay’s “Commercial Success” of your idea allows you to present that as evidence to overcome an objection of “obviousness”. Section 716.03 “commercial success”.
In addition, eBay’s infringement qualifies you to apply for expedited review of your patent application, which will cause the patent office to take your patent out of line and review it within a 12 month period instead of a 18 to 24 month period: Section 708.02 “Petition to Make Special”. Which costs only $130.00. Well worth it when your talking about a million dollar idea. Estimated by the fact that eBay’s duplication of your idea has generated over 150,000 requests for products to date, and it’s still growing.

Further, eBay’s infringement should be looked at with hindsight as you draft your claims. As a guide. You now know how eBay is infringing. You can now draft claims that will cover such infringement knowing that you are the original inventor. eBay may not escape its current infringement of your idea and be subjected to damages but it is how your claims are drafted that will dictate if eBay will have to “license” your idea from you or if they can just work around your patent claims to avoid future infringement. This is a risk that companies take when duplicating other inventor’s work. eBay’s duplication of your idea was not a very intelligent one. By the simple fact that in the United States, inventors have 12 months to file a patent application once their idea is published (However, they give up foreign patent rights). Thus, at the minimum, eBay should have known that with such a new methodology in implementing an existing concept, Want Ads, there could be a strong issue of “infringement”. eBay has already lost the infringement suit over the “Buy It Now” feature for over $30 Million (In fact, Hunton & Williams were the attorneys for the Plaintiff). It will be a joke if they get sued again on a feature called “Want It Now”. The big joke will be that eBay shouldn’t want anything now and should just settle for whatever they get later since that hasn’t been working for them. Also, very bad publicity since the person they infringed upon was one of their licensed developers. This will discourage developers from entering into licensing agreements in fear that eBay would take their ideas for their own use as they have done in this case (eBay requires developers to disclose privileged information about their projects before being granted a license).


Can anyone address the issue of “NOVEL” as pertaining to this application?

 

[divgradcurl]

This gives you more protection against “legal malpractice”. The theory is that the attorney was presented with claims that were approved by the patent office and if he drafts claims that are too broad and gets your patent denied, you have a claim of legal malpractice against the attorney. Which his insurance will cover. The fact that the patent office drafted and was willing to approve those claims but for the attorney’s negligence, your patent application was denied. You have established ”liability”. The issue to resolve will be “damages”. This case will settle. Good reason why attorneys won’t let you know about this “hindsight” strategy. Another good reason why you should learn about the law yourself on issues your currently dealing with or having an attorney work on.

Where did you get this stuff? I don't even know where to begin to respond to this.

You either need to just have the examiner write your claims, or you need to go see an agent or an attorney. I don't even know what you are talking about here, nor where you got this information.

If you actually believe that it is a good strategy to get the examiner tell you what is "allowable" and then try to use that as leverage against a patent attorney (who is acting in YOUR best interests to get the most for YOU as YOUR advocate), then please, I hope you never consider bringing your business to the firm I work at...

I'm guessing you got this from a law firm that specializes in suing eBay -- if they know so much about how to "get" eBay, why don't you just have them write your patent for you? Or are THEY afraid of you using "hindsight" to establish liability against them?

Oh, and one last thing -- the patent office eventually issues about 97% or so of all applications that come through the office, or some absurd number like that -- generally, you can keep amending claims until either the client decides to stop spending money or the patent office allows the claims. If you think that by "giving up" you can establish "malpractice," you are probably fooling yourself -- the bar for establishing malpractice is higher than that, and the fact that the client makes a decision that turns out badly doesn't establish malpractice on the lawyer's part.

Good luck.

 

[Bmehmet]

The issue here is not about "legal malpractice", it's about the right strategy to employ in obtaining a patent with safe guards when you just can't afford it. A law firm like Hunton & Williams will start at $15,000 and bill you $300 by the hour for phone calls. If there are two attorneys on a conference call with you, your looking at $600 hours.

I appologize if I offended you. The statement of "legal malpractice" was a straight and forward statement, and very practical for protection against an unexperienced attorney. Especially after an inventor works so hard on their invention.

Should an inventor suffer the lose of his patent because of malpractice. I have worked in the legal industry for over 10 years as a paralegal and I have seen my share of malpractice from the practicing attorneys. Such malpractice always being hidden from their clients. The reason why you tend to hear more about medical malpractice instead of legal malpractice in the news is because in legal malpractice no one dies on the operating table and clients don't realize that it just occured. For example, the loss of a summary motion due to the attorneys failure to provide available evidence of "probative" value. Yet billing the client for the summary motion after its dismissal and then continuing by filing a motion for "reagument" that will fail. How in the world is a client who doesn't understand the law going to know what is happening. There are no legs or arms dropping off here but people are being injured. Many without their knowledge. Because a client would need another attorney to uncover the malpractice, many of these incidents would stay under wraps. Not to mention the fact that attorneys don't like suing attorneys.

Nevertheless, this was only one paragraph, which was not a part of a scheme to entrap an attorney but to safe guard an inventor from malpractice.

Anyway, why would an attorney worry about this if he's following the law and competently drafting legal documents?

Anyway, I appologize if I offended you. That wasn't the purpose.

However, I would like to thank you for the information of repeated submission of claims. I will look up the law for that now.. This is the purpose of this chat board. To be guided properly. I'm learning more and more as I study this matter to be able to make an educated decision.

Can anyone address the issue of "NOVELTY" as it pertains to this application?

 

[divgradcurl]

The issue here is not about "legal malpractice", it's about the right strategy to employ in obtaining a patent with safe guards when you just can't afford it. A law firm like Hunton & Williams will start at $15,000 and bill you $300 by the hour for phone calls. If there are two attorneys on a conference call with you, your looking at $600 hours.

But if they are so sure that you are going to be able to "get" eBay with this patent, then why weouldn't they be willing to draft the patent for you on contingency, or for a piece of the patent?

Anyway, I appologize if I offended you. That wasn't the purpose.

I'm not offended, I just don't think you really understand how the patent process works. That, and I believe that most individual inventors have a pretty optimistic view of how important and patentable their inventions are -- I'm not trying to offend you, but that's how this kind of comes across.

Can anyone address the issue of "NOVELTY" as it pertains to this application?

What exactly do you want to know about novelty?

 

[Bmehmet]

But if they are so sure that you are going to be able to "get" eBay with this patent, then why weouldn't they be willing to draft the patent for you on contingency, or for a piece of the patent?

A. There is no guarantee that a patent will be awarded. There could be applications filed for review now that will commence an "Interference Hearing".

I'm not offended, I just don't think you really understand how the patent process works. That, and I believe that most individual inventors have a pretty optimistic view of how important and patentable their inventions are --

A. I didn't understand the patent process very well that's why I came to these boards for help. To learn what I didn't know. I've been learning so much in the last few days. Right now, I have a good grasp of the process and the law. I understand the areas of law that I have to satisfy to obtain a patent. I now understand how to overcome objections. I understand now how I should draft the patent application as it applies to each legal requirement and to give it the best chance of being approved by making it very clear in understanding. I know how to make a "Declaration" as to the publication of the invention, and to file an application for expedited review. I will respectfully request that the examiner write the claims. Then I will take that application to Hunton & Williams who will revise the claims to make the board and submit them to the patent office. After that, Hunton & Williams will contact eBay.

This is the plan I came up with so far. Do you see any holes?

What exactly do you want to know about novelty?

A. I just found that information. Novelty is based on "Prior Art" that a patent and publication search can help to determine but is not a guarantee because of pending patents within the patent office.

 

[divgradcurl]

A. I just found that information. Novelty is based on "Prior Art" that a patent and publication search can help to determine but is not a guarantee because of pending patents within the patent office.

Read 35 USC 102, 103 and 112, or MPEP sections 700 - 712 (or approximately that range), that'll give you some idea of how novelty works.

 

[Bmehmet]

Thanks. I studied those sections. Its very clear now that I have a stronge case for the patent. Due to the fact that 1) my idea relates to a new system and method for "responding" to Electronic Want Ads, 2) Traditionally, "item numbers" have been used to "search for items" not to "respond to item requests", 3) I have not come up with any prior art that utilizes item numbers to "respond" to "item requests", and 4) eBay's commercial success of the idea adds proof to its "nonobviousness". Basically, if it was so obvious, why didn't anyone think of it before. Why did eBay implement it now after they saw it on my site. Anyone would have implemented an idea that works so well, so why now. Simple question, because utilizing "item numbers" to respond to item requests was not "obvious".

Why wasn't it obvious until now? Because everyone was taking real world "classified Ad" methodology and applying it to traditional real world setting over the Internet that made sense to them. For example, news and employment websites.

If they applied it to "auction websites", the idea may have been uncovered. For example, Sotherbys Auction House wouldn't create a real world classified paper so that the average person could submit product requests that Sotherbys sellers would respond to. It just doesn't work. Inventors took this traditional thinking of real world classified Ads and applied it to the Internet and every time they would look at applying it to on-line auction website, it didn't make any sense to them. It wasn't obvious. Until now. When we disclosed a new utility for "item numbers" did eBay come along and duplicate it and so far it has facilitated and generated thousands of "responses" to buyer's posted product requests. That's why as soon as eBay saw the greater utility for the "item numbers", they created and launched that feature within a one month period.