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Effective Filing Date – NPE’s Best Friend

dan-pierronBy: Dan Pierron

Infringement suits filed by Non-Practicing Entities/Patent Trolls are old news.  In reading articles and comment boards on such suits, it seems the criticisms of the NPE tend to fall into one of two categories: that those who do not participate in the marketplace should not be able to benefit from patent suits; and that the patent is invalid, and is being asserted against a technology that everyone know, uses, and certainly was not “invented” by the inventor of the patent.

An excellent example of this situation is the ongoing litigation instigated by Personal Audio, LLC.  They are suing a number of content producers that utilize podcasting, including Adam Carolla,  for infringing their patent.  The patent issued February 7, 2012.  To those unfamiliar with the patent process, it may seem surprising that any element of podcasting would be patentable at such a later date.

Podcasting over 56k - not happening

Podcasting over 56k – not happening

However, it is important to remember that it is the effective filing date of a patent application that determines what prior art the application must overcome to be determined to be patentable.  The patent in this suit.  The filing date of the patent in this suit is March 4, 2009, while certainly earlier than 2009, was certainly not preceding the general usage of podcasting.  However, the filing date of the particular application is not the effective filing date.  Because the application claimed the benefit of earlier-filed applications, the effective filing date went all the way back to October 2, 1996.  With podcasting being at least a decade off, this filing date certainly predates any media mention of podcasting, and apparently the Examiner for the application didn’t have any luck digging something up.

However, due to the early effective filing date of this patent, Personal Audio only has patent protection until October 2, 2016, the 20-year anniversary of the effective filing date, for the claimed invention.  As such, it is not surprising they have acted with relative speed in filing suit.  We can thank Mr. Lemelson for making sure the patent in this instance won’t be assertable for much longer.

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