Frequently Asked Questions

No, a Patent Badge is issued by A Eye P, Inc. which is not associated with USPTO or any other government entity. However, the Patent Badge uses USPTO database to generate the information behind the Patent Badge authentication and ranking data.

Once the Patent Badge is issued it may be sent to a potential licensee to show that due diligence has been undertaken and the patent is "Live," that the patent has been ranked and a reasonable royalty rate has been established for a standard license agreement that has been generated and is ready to be executed.

No, a Patent Badge becomes part of an Alternative Dispute Resolution (ADR) process but the patent may be asserted in any other dispute forum. The use of a Patent Badge may be used at any time following issuance of a patent. For example, a party may send a Patent Badge to a potential licensee and then (when no productive negotiations occur) follow-up with the filing of a patent infringement lawsuit based on the same patent covered by the Patent Badge.

No, a Patent Badge can be issued for only a single patent. However, the data and biographic information for multiple Patent Badges may be similar. For example, a first Patent Badge may be issued for a first patent and a continuation patent may have a second Patent Badge issued that is nearly identical to the first Patent Badge. In such a case, we suggest only paying for the first Patent Badge and refrain from issuance of a second continuation Patent Badge.

The patent at issue is analyzed with respect to fifteen factors where each of the factors is weighted and those factors are added-up to provide a score/ranking 1 – 1000.

A reasonable royalty rate is obtained by analyzing actual executed license agreements covering comparable technologies and analyzing the licenses to extrapolate a comparable royalty rate.

Yes, by paying a fee and filing a Micro-appeal that includes proof of comparables.

Yes, a third party (e.g. law firm) may be engaged to file a Micro-appeal without disclosing the real party of interest. However, only 1 Micro-appeal may be filed per Patent Badge per party.

Yes, but the redactions must be submitted with certification of authenticity of the proof (e.g. comparable license agreement).

Yes, we use Application Programable Interfaces (API) that are updated daily in order to generate Patent Badges.

No. A party may have as many Patent Badges generated as it desires (and pays the fees).

Patent Badges use publicly available data and are open to the public, so a patentee cannot stop third parties from gaining access to Patent Badges.

If a third party is interested in obtaining a license under a particular patent, it would obtain a Patent Badge for that patent and consider whether it wanted to pay the royalty listed on the Patent Badge and execute the standard patent license generated with the Patent Badge.

A patentee generates a Patent Badge and has it posted on PCX which obligates the patentee to accept a patent license under the terms listed on the Patent Badge.

No.

Yes.

Patent License Contract Options Exchange.

PCX is a marketplace for trading and monetizing patents and patent licenses.

Not at this time. Now, only Patent Badges may be traded on PCX. In the future we may expand PCX to trade copyrights and trademarks.

Only those who have an interest in a particular Patent Badge and have paid a registration fee.

Yes. More than any other procedure, PCX "promotes the progress of science" by allowing for the streamlined and transparent trading of patent licenses in order to quickly distribute technology. Further, PCX helps secure for patentees the exclusive right to monetize their discoveries as provided under Article 1, Sec. 8, Clause 8 of US Constitution.

The stock market is proof that pricing must be publicly available, so that equities may be traded. PCX insures that patent license pricing data is publicly available, so that fair and reasonable royalty rates may be known in order to allow for streamlined trading or setting of patent license rates.

Yes, small businesses, large corporations and individual inventors may all benefit from the low transaction costs that PCX affords.

Royalty database providers can allow for analysis of database information but do not help patentees to monetize their patents. Today the main system in place for helping to distribute technology is patent litigation, which can run up outside attorney fees in millions of dollars. PCX can be handled without outside attorneys.

Yes. While PCX and Patent Badges were designed so that non-attorneys can understand them, patents and patent licenses can be complex documents and the help of an attorney can always be useful.

No, typically licenses are used to negotiate settlement of disputes over patents. A patent grants patentee the right to exclude others from practicing the technology claimed by such patent. But in order to settle most disputes over patents, parties frequently execute license agreements that allow both parties to continue using the patented technology in exchange for royalties that are paid by licensee to patentee. PCX streamlines such licensing negotiations by issuing a Patent Badge that attempts to bring the parties together on pricing and other terms.

Patent licenses include the following terms: Parties affected, patents covered, geographical scope, exclusivity, term of coverage, termination, audit rights, patent marking, licensing fee and description of technology licensed. But the most important term is ROYALTY RATE.

Typically licenses can have either a unit rate or a royalty rate. A royalty example is 5% of net sales or a unit rate 1$ for each widget.

Approximately 30,000 per month.

CEO is David Newman who is an experienced licensed patent attorney; having drafted and prosecuted hundreds of patents and litigated many lawsuits involving technologies and products from optoelectronic transceiver modules to butterfly cages. David received a BS from the Ohio State University and his JD from DePaul College of Law. David has multiple patents of his own, including US Patent no. 8,005,748 (that has been dedicated to the public), entitled Intellectual Property Distribution System and Method for Distributing Licenses.

David has been recognized by the American Law Journal and by USPTO Director Michelle Lee for his contributions in educating PTAB judges and executives on legal issues that are expected to impact patent policies. He has been honored as an Illinois Super Lawyer in the area of IP law. David has authored and co-authored many books and publications on patent law and dispute resolution. He has been an honored lecturer at DePaul University Kellstadt School of Business and the World Intellectual Property Organization.

David is admitted to practice before the US Supreme Court, the Court of Appeals for the Federal Circuit and District Court for the Northern District of Illinois. He is registered to practice before the US Patent and Trademark Office.

PCX was architected and developed by Mach Five Tech, led by CTOs Nick Krause and Scott Krause (of Mach Five Group).

Glossary

Applicant

The party applying for a patent, trademark or domain name. An applicant may be a person or a business.

Brand name

A name used to identify a product or service. A brand name may be a trademark or a domain name. A brand name may refer to both a trademark and domain name. In some cases, such brand names will not be identical. For example, the domain name of "OwnYourBrandName.com" would be presented as the trademark "Own Your Brand Name."

Licensee

A party that is granted permission by a licensor to practice its patent, trademark or copyright.

Licensor

A party that grants permission for a licensee to practice its patent, trademark or copyright.

Logo

Is a graphical symbol or artwork meant to act as a brand name.

Mark

A trademark prior to it being registered by the US Patent and Trademark Office (USPTO). Includes a word mark or design mark (logo).

Patentee

A patent owner.

Intellectual Property (IP)

Intellectual property (IP) refers to creations of the mind – including inventions, artistic works, names and designs – that are legally protected. Common types of intellectual property include patents, copyrights, trademarks and trade secrets.

Utility Patent

A patent which protects any new invention or functional improvements on an existing invention.

Design Patent

A patent granted on the ornamental design, configuration, improved decorative appearance, or shape of a functional item; not on the structure or improvement of the item (examples: ornamental designs of jewelry, furniture, beverage containers, computer icons, and computer fonts).

USPTO

United States Patent and Trademark Office. Federal agency for granting U.S. patents and registering trademarks.

Patent Application (non-provisional)

Application for a non-provisional patent, must include background of the invention (including a description of prior art), specification with accompanying figures, and claims.

Provisional Patent Application

A preliminary patent application upon which a complete (non-provisional) application may be based. Provisional application must include a specification and figures (if applicable), but need not contain claims. The priority date for all material covered in a provisional application is the filing date of the provisional application. A provisional application lapses 1 year after the filing date. During this 1 year period, a non-provisional application claiming the benefit of the provisional application may be filed by the applicant. Provisional patent applications are not examined by the PTO. Patent term for all claims in a non-provisional application begins on the filing date of the non-provisional application.

Divisional Application

In some patent applications, the examiner determines that there is more than one distinct claimed invention contained within the application. For example, an application may contain one set of claims describing a novel structure for a device and another set of claims describing novel methods for fabricating the device. In these cases, the examiner issues a restriction requirement, which requires the applicant to choose between the sets of claims as to which set the examiner will search and examine in the originally filed application, and the non-elected claims that are not examined and considered in the application. The applicant has the option to file divisional applications for each group of non-elected claims. The divisional application has the same priority date and specification as the original application, but contains a group of non-elected claims from the original application. If prosecution of the original and divisional applications is successful, separate patents will issue --one for the original application and one for each divisional application.

Continuation Application

A patent application based on an earlier filed patent application where there is no new disclosure, but which may contain different claims. Priority date is that of the earlier filed (original) application. A continuation is typically filed when the original application is finally rejected.

Continuation-in-Part (CIP) Application

CIP applications are used in cases where a new improvement to an invention is conceived or developed after the original application is filed. A CIP consists of a specification and claims. The specification must describe the originally filed invention and the newly disclosed portion of the invention, and the claims correspond to the newly disclosed material. The originally filed material has a priority date corresponding to the date of filing of the original application, but the newly disclosed material has a priority date that corresponds to the date of filing of the CIP.

PCT

Patent Cooperation Treaty (PCT) is an international patent law treaty providing a unified procedure for filing patent applications to protect inventions in each of its contracting countries and regions. A patent application filed under the PCT is called an international application or PCT application. A PCT application does not eventually result in an international or PCT patent. A PCT simply streamlines the process for filing applications in individual Contracting States and Regions.

PAIR

Patent Application Information Retrieval, USPTO's online patent prosecution database, for retrieval of complete filing and prosecution history of a patent application.

Specification

Also know as the disclosure, it is a written description of the invention. It includes the title, background information (including a description of prior art), a summary of the claims, a description of all figures included in the application, and a detailed description of the invention, as well as a few other sections.

Claims

Claims are the legal description of the elements and methods which are covered or protected by the patent. Most patents have 20 claims (appended to the last pages of a US patent document). Claims define the extent of coverage which is conferred by the patent. Each claim consists of a single sentence describing an object, apparatus, or method which is covered by the patent. There are two basic types of claims: independent claims and dependent claims. An independent claim is a stand-alone claim, while a dependent claim follows or depends from one or more claims and narrows the scope of any claims from which it depends.

Prior Art

Body of public knowledge. Validity (novelty and non-obviousness) of an invention are judged against everything publicly known before the invention, as shown in prior patents and other published material.

IDS

Information Disclosure Statement. Statement submitted along with (non-provisional) patent application disclosing all prior art relevant to the claimed invention that the applicant is aware of.

Artisan

One skilled in the art.

Filing Date

The date when a patent application is first filed at a patent office.

Priority Date

The date used to establish the novelty and/or obviousness of a particular invention relative to other art.

Patent Term

Period of time during which patent can be enforced. Patents filed after June 8, 1995 have a term beginning on the filing date and lasting 20 years for a utility patent or 14 years for a design patent.

Patent Prosecution History

Patent prosecution refers to the complete process of applying for a patent, including filing of the application, examination by a patent office, and all filings and interactions between the applicant and the patent office. Also known as the "file wrapper."

Patent Litigation

Lawsuits or other legal action related to or resulting from infringement of one or more patents.

Inventor

An individual or group of individuals who conceive(s) of a non-obvious claimed invention in a patent application.

Assignee

The individual or entity to which a patent is assigned. Also known as a Patentee. For example, an employee who comes up with an invention as part of their work for a company may be contractually obligated to have the patent assigned to the company. The company typically pays all the filing and prosecution costs for the patent, and the employee is listed as an inventor, but all of the rights granted by the patent are assigned to the company, even if the inventor leaves the company.

Trade Secret

Trade secrets are information that companies keep secret to give them an advantage over their competitors. Trade secrets can include formulas, methods of practice, designs, processes, instrumentation, or compilations of information which are not generally known or reasonably ascertainable, and by which a company can obtain an economic advantage over competitors.

Trademark

A federally registered mark issued by the USPTO and issued with a registration number. A trademark goes through an examination, a publication period and then registration; a process that may take 5 – 14 months to complete. Once a trademark is registered it may be designated using (R).

Tradename

A mark that is not registered as a trademark.