Insurance IP Bulletin
An Information Bulletin on Intellectual Property activities in the insurance industry

A Publication of - Tom Bakos Consulting, Inc. and Markets, Patents and Alliances, LLC
PRIOR ISSUES
Links

Premier Issue: June 15, 2004 - VOL:2004.1
Feature Article:
Which Came First: The Chicken or the Patent?
by Frank Cuypers, IP Head, Group Intellectual Property, Swiss Re, Zurich

Patent Watch:
Don't Count on Copying Your Competitor's Great New Product Ideas

The use of patents to protect intellectual property in the insurance industry is growing.

Patent Tech:
Sources of Information
Where to find information on patents and patent applications.

Patents in Action:
Story of a Reversionary Annuity
The story of patent #5,754,980.

Finding Innovation:
How Do You Know You've Invented Something?
Invention is a solution to a problem.

Second Issue: August 15, 2004 - VOL:2004.2

Feature Article :
Ignorance Will Be No Excuse
by Phil Hargrove, VP, Intellectual Asset Management, GE Employers Reinsurance Co., Kansas City, MO


Patent Watch:
AIG Joins the Patent Club

AIG gets their first internally generated patent issued.

Patent Tech:
Broad Thinking - Yes, But Will it Fly?
The Wright Bros. example.

Finding Innovation:
Can You Patent an Insurance Product?
Right now, you can't. Find out why.

  Third Issue: October 15, 2004 - VOL:2004.3
Feature Article :
The Impact of Intellectual Property Rights on Insurance Product Innovation
by Francois Gadenne, President and CEO, Retirement Engineering, Inc., Boston, MA and
Ben Williams, VP and Chief Technical Officer, Retirement Engineering, Inc. Boston, MA.

Patent Tech:
Why Does the Patent System Exist?
A comment from Charles Call, a patent agent from Yarmouth, MA.

Patent Watch:
Progressive Builds a Fortress of Patent Protection
Progressive Casualty Insurance Company's use of patents to protect its intellectual property.
 


Patents in Action:
Why Isn't the World Beating a Path to My Door?
Guidelines on how individual inventors can market their inventive new insurance ideas. 

Fourth Issue: December 15, 2004 - VOL:2004.4
Feature Article :
Barbarians at the Gate
by Tom Bakos, FSA, MAAA - President, Tom Bakos Consulting, Inc.
and
Mark Nowatarski, Patent Agent, - President, MPA LLC

Patent Tech:
USPTO Examination Process for Business Method Patent Applications
A briefing on how the patent office handles patent applications.

Patent Watch:
Stable Value Protected Life Insurance - Update of Bancorp Patent
How Bancorp has kept its patent application involving stable value funds alive.   

Fifth Issue: February 15, 2005 - VOL:2005.1
Feature Article :
Direct Insurance Patents Could Trigger a Boom
by Mark Clare - President, Knowledge Dynamics and Director, Parkview Health

Patent Futures:
Alternate Risk Transfer - Finite Risk Hits the Boundaries of Insurance
Finite insurance has brought attention to the insurance industry

Patent (Pending) In Action:
No Charge Auto Insurance
A patent application for free car insurance.

Sixth Issue: April 15, 2005 - VOL:2005.02
Feature Article :
Lessons from a First Time Patent Applicant
by Matt Schoen- President, MB Schoen & Associates, Inc.

Patent Tech:
What Do Computers Do?
The Specification of a patent requires a written description of the patent to be clear, concise, and exact.  

Patent Value:
What's a Patent Worth?
A patent's value is derived from the fact that a patent gives the inventorthe right to exclude others from making, using, or selling the invention.

Seventh Issue: June 15, 2005 - VOL:2005.3
Feature Article :
Patent Trolls
by Tom Bakos
A somewhat humorous look at what a "patent troll" is all about. 

Patent Q&A:
Improving the efficiency of patent examination
Addresses the situation of business method patent examination in the USPTO.
  

Patent Value:
Ignoring Patent Value
The monetizing of intellectual property, in general, and patents, in particular, has long been a subject of interest.  This article looks at the consequences of ignoring IP value.

Eighth Issue: August 15, 2005 - VOL:2005.4
Feature Article :
An Insurance Patent Experience
by Jerry Wilson, President, Washington Health Services
An early inventor's personal experience with patenting his Long Term Care insurance innovative benefit design approach. 

Patent Law:
The Patent Act of 2005 - A Summary of Major Provisions
Introduced to Congress on June 8, 2005, this new law is intended to improve the quality of patnets and reduce the costs associated with their enforcement. These are the most significant changes to patent law since the 1952 Patent Act.
  

Patent Tech:
Prospects for Getting Insurance Patents in Europe
The monetizing of intellectual property, in general, and patents, in particular, has long been a subject of interest.  This article looks at the consequences of ignoring IP value.


Ninth Issue: October 15, 2005 - VOL:2005.5
Feature Article :
Will it Fly?
by Tom Bakos & Mark Nowotarski
Addresses the question of what it means for an insurance product to work. 

In Re Lundgren:
A major barrier to the possibility of directly patenting new insurance products in the U.S. has just been removed.  

Patent Q&A:
Who Gets the Patent?
Question: If I make an invention as part of my job, who owns the patent, me or my employer?

Tenth Issue: December 15, 2005 - VOL:2005.6
Feature Article :
A Better MouseTRAP 
by Tom Bakos
Have you invented a new insurance product - or, have you invented something else.  Innovating around insurancelaw and regulation. 

Patent Q&A:
'Swearing back' at the patent office
Question: If I write down my idea and have it notarized, does that protect me until I can get a patent application filed?

Eleventh Issue: February 15, 2006 - VOL:2006.1
Feature Article :
The Future of Patents 
by Mark Nowotarski, Patent Agent
A discussion of the ongoing judicial interpretation of patent laws in the U.S. 

Patent Regulation:
Proposed rule changes at the USPTO

Free Patent Help
Inventors Assistance Center
How the USPTO can help with your difficult patent questions.


Twelveth Issue: April 15, 2006 - VOL:2006.2
Feature Article :
Ka-Ching! 
by Tom Bakos, FSA, MAAA
The value of a patent is discussed. 

Patent Q&A:
Reexamination - a USPTO Do Over
Discusses what you can do if you think an obviously invalid patent has been issued.

Thirteenth Issue: June 15, 2006 - VOL:2006.3
Feature Article :
What's In a Name: Choosing An Effective Trademark
by Leora Herrmann, Esq., Partner, Kluger, Perez, Kaplan & Berlin
Discusses the nature of trademarks.

Patent Q&A:
Title: Accelerated Examination
Ways to speed up the process of getting a patent.

Basic Ed.:
Insurance is a Process of Processes - Contingent Events
A "contingent event" is at the heart of all insurance processes.

Fourteenth Issue: August 15, 2006 - VOL:2006.4

Feature Article :
Protecting the Look and Feel of Your Insurance Illustration with Design Patents 
by Mark Nowotarski, Patent Agent, MPA LLC
Design patents are another type of patent that can be used to protect intellectual property. 

Patent Q&A:
Publicizing Your Invention
Discusses making your invention after you have filed a patent application.

Basic Ed.:
Is it Insurance?
Determining where or even whther or not your "insurance" invention fits under insurance law and regulation.


Fifteenth Issue: October 15, 2006 - VOL:2006.5

Feature Article :
What's New? 
by Tom Bakos, FSA, MAAA and Mark Nowotarski, Patent Agent, MPA LLC
A dialog on the patentability of simple inventions.  

Patent Q&A:
Going, Goining, Gone
What it is like to sell your patent at auction - Ocean Tomo's auction..

In the News:
Tax Strategies?
The implementation of tax strategies for personal tax planning my expose you to patent infringement!

Sixteenth Issue: December 15, 2006 - VOL:2006.6

Feature Article :
In-House Intellectual Property Functions in the Insurance Industry - A New Corporate Paradigm? 
by Gerald L. DePardo, Partner at the firm of McCormick, Paulding & Huber in Hartford, CT.
Establishing a corporate IP function - best practices. 

Patent Q&A:
Filing an Appeal
Dealing with an examiner through the appeals process.

Patent Searches
Google has new patent search function in beta test

Seventeenth Issue: February 15, 2007 - VOL:2007.1

Feature Article :
Whose Work is it Anyway?  Intellectual property Engagement Letters, and the Code of professional Conduct for Actuaries
by Lauren Bloom, Elegant Solutions Consulting
Article addresses issues surrounding ownership of intellectual property in insurance companies. 

Patent Q&A:
Buying a Patent Application
Is it possible to buy an inventor's pending patent application before it issues?

Eighteenth Issue: April 15, 2007 - VOL:2007.2

Feature Article :
Getting to First Base
by Tom Bakos, FSA, MAAA & Mark Nowotarski, Patent Agent
A dialog between Mark & Tom on how to sell an invention. 

Patent Q&A:
Building on Prior Art
Addresses problems which may or may not be created by incorporating prior art into an invention.

Nineteenth Issue: June 15, 2007 - VOL:2007.3

Feature Article :
Practical Patenting in the Financial Services Industries
by Tom Bakos, FSA, MAAA & Mark Nowotarski, Patent Agent
A primer on the use of patents to protect intellectual property.

Patent Q&A:
Effect of KSR v. Telefles U.S. Supreme Court Decision on Business Method Patents
A discussion of the recent U.S. Supreme Court decision on the meaning of "obvious".

Patent Reform Act of 2007
Highlights the provisions of proposed new patent legislation.

20th Issue: August 15, 2007 - VOL:2007.4

Feature Article :
Employee Inventor Compensation in Europe
by Jeremy Morton, Simmons & Simmons
Discusses differences in inventor compensation Europe vs. U.S.

Patent Q&A:
Effect of Patent Rule Changes on the Patent Application Process
The impact of proposed rule changes on getting a patent.

Patent Reform Act of 2007 - Repeat  
Highlights the provisions of proposed new patent legislation.

21st Issue: October 15, 2007 - VOL:2007.5

Feature Article :
Peer to Patent: Community Patent Review
by Manny Schecter, Associate General Counsel, Intellectual Proerty Law, IBM &
Susan Murray, Counsel, Intellectual Property Law, IBM

Insights into the new USPTO process called Peer to Patent which enables public input to the USPTO as part of their patent review process.

Patent Q&A:
Peer to Patent Availability for Insurance Patents
Addresses question about when Peer to Patent might be available for Insurance patent applications.

22nd Issue: December 15, 2007 - VOL:2007.6

Feature Article :
Designing Around  Threatening Patent (or, How I learned to stop worrying and love the SOGRAT patent)
by Mark Nowotarski

Discussion of how one might address a new patent that seems to threaten a business activity.

Patent Q&A:
Patent reform Act of 2007
An update on whats current regarding this new legislation.

23rd Issue: February 15, 2008 - VOL:2008.1

Feature Article :
Duh! Finding the Obvious in a Patent Application 
by Tom Bakos

A discussion of the guidelines used by the USPTO on examination to judge obviousness in a patent application.

Patent Q&A:
How Long Will it Take to get my Patent reviewed?
A study on patent pendancy in the USPTO. 

24th Issue: April 15, 2008 - VOL:2008.2
Feature Article :
Enablement 
by Tom Bakos

A discussion of the enablement requirement.

Patent Q&A:
The End of Insurance Patents?
The effect of the Bilski case on the future of patents.

25th Issue: June 15, 2008 - VOL:2008.3

Feature Article :
Best Mode 
by Tom Bakos & Mark Nowotarski

About the need to disclose the best mode for making and using an invention in a patent application.

Patent Q&A:
The Patent Office Allowed That!?
A question about what you can do if you think something obvious has just received a patent.

26th Issue: August 2008 - VOL:2008.4

Feature Article :
Sparky 
by Tom Bakos & Mark Nowotarski

A discussion of inventorship and its importance to patents.

Patent Q&A:
Peer to Patent
How the peer to Patent can now help if you have a business method patent.

27th Issue: October 2008 - VOL:2008.5

Feature Article :
Lincoln Reexam: Where are the Experts? 
by Tom Bakos & Mark Nowotarski

A discussion of an ongoing re-examination of Lincoln National Life's patent #7,089,201 which claims invention of certain aspects of Guaranteed Minimum Withdrawal Benefits (GMWBs).

Patent Q&A:
The Effect of In Re: Bilski on Business method patents
How this Court of Appeals for the Federal Circuit (CAFC) decision might affect business method patents.  The importance of technology.

28th Issue: December 2008 - VOL:2008.6

Feature Article :
An Experiment in Better Patent Examination 
by Tom Bakos & Mark Nowotarski

The co-editors introduce their Examinaer Advocate project - a process to improve the examineation of all paent applications but particularly business method applications. 

Patent Q&A:
Patents as Art?
The question: Are Patents Art? draws a response from one of our readers.

29th Issue: February 2009 - VOL:2009.1

Feature Article :
Reacting to Interest in Your IP 
by Tom Bakos & Mark Nowotarski

Suggestions on how to react to inquiries relative to your intellectual property.

Patent Q&A:
What is a "reasonable royalty"?
A discussion of what might be considered a reasonable royalty using the Lincoln National infringement case as an example.

Update
Lincoln National Wins Jury Verdict in Patent Infringement Lawsuit
Summarizes the recent Lincoln National judgement and points to other Lincoln National infringement lawsuits which are pending.

30th Issue: April 2009 - VOL:2009.2

Feature Article :
Canaries in a Coal Mine
by Tom Bakos & Mark Nowotarski

The editors describe their patents which have been exposed for review on Peer to Patent and their Examiner Advocate project.

Patent Q&A:
What is prior art?
The purpose of Peer to Patent is to reveal prior art - so, un understanding of just what prior art is is important.

    31st Issue: June 2009 - VOL:2009.3

Feature Article :
The Next Insurance Frontier: Social Networks
by Tom Bakos & Mark Nowotarski

A description of some interesting new inventions in this area.

Patent Q&A:
New Director - USPTO
An introduction to the newly appointed USPTO Director - David Kappos.
 

32nd Issue: August 2009 - VOL:2009.4

Feature Article :
Bernard Bilski and the Cost to America of a Failed Patent Examination
by Mark Nowotarski

The financial cost of the failure to resolve the Bilski patent application.

Patent Q&A:
Pendency Rates in Class 705 - Bussiness Methods

They are probably longer than you think.

33rd Issue: October 2009 - VOL:2009.5

Feature Article :
A Short History of private patent Examination
by Tom Bakos & Mark Nowotarski

How private enterprise has aided the patent examination process in the past.

Patent Q&A:
Strategies in Drafting Claim Language

Considerations in addition to simply describing the invention

34th Issue: December 2009 - VOL:2009.6

Feature Article :
Writing an Effective Patent Application
by Tom Bakos & Mark Nowotarski

We provide guidance on how to write a patent application that will be better understood by the patent examiner.

Patent Q&A:
Finding a Qualified Patent Prationer

How to find a patent agent or attorney that understands insurance.

35th Issue: February 2010 - VOL:2010.1

Feature Article :
Non-Statutory Subject Matter - Huh?
by Tom Bakos & Mark Nowotarski

We discuss the importance of laying the groundwork for a computer or machine component in the invention description.

Patent Q&A:
What are Today's 101 Standards?

A discussion of the categories of patentable subject matter.

36th Issue: April 2010 - VOL:2010.2

Feature Article :
Patenting Genes
by Tom Bakos

 We provide some insight into exactly what is being patented when genes are involved.

Patent Q&A:
The Cost of Maintaining a Patent

Filing fees are not the end of costs.  There are aslo maintenace fees which must be attended to if you want your patent to stay in force.

37th Issue: June 2010 - VOL:2010.3

Feature Article :
The No Fuss, No Bother Guide to Handling Assertion Letters
by Eric D. Kirsch, Esq.

 How to handle a letter asserting you or your company may be infringing a patent.

Patent Q&A:
Bilski Supreme Court Decision
What impact might this recent decision have on insurance patents.

The Term of a Patent
Addresses what a patent term adjustment is and how it is calculated.


38th Issue: August 2010 - VOL:2010.4

Feature Article :
Reducing Patent Costs Using Patent Office "PAIR" Data
by Mark Nowotarski

 Discussion of a data resource, "USPTO "PAIR", which can be used to \make patent prosecution more efficient.

Patent Q&A:
More Insurance Patents Issued Than Applied For?
An indication that the patent office is effectively cleaning up the patent application backlog.

39th Issue: October 2010 - VOL:2010.5

Feature Article :
Speculation, Breakthroughs, and Abandonment
by Mark Nowotarski

A look at statistical information drawn from the Patent Information and Retrieval System (PAIR) in order to classify patents and as a way to estimate potential comercial value. 

Patent Q&A:
Declaritory Judgments
How declarity judgments may help to relieve some uncertainty that may exist regarding potential patent infringement.

40th Issue: December 2010 - VOL:2010.6

Feature Article :
Protecting Intellectual Property - Patent or Trade Secret
by Tom Bakos, FSA, MAAA

Two ways of protecting intellectual property are compared. 

Patent Q&A:
Tracking Lawsuits
We answer a question about how to stay informed regarding pending patent infringment lawsuits.

41st Issue: February 2011 - VOL:2011.1

Feature Article :
The Patent Reform Act of 2005 ... 2007 ... 2009 ... 2011 ...
by Tom Bakos, FSA, MAAA and Mark Nowotarski

The U.S. Senate initiates another attempt at patent reform. 

A Patent Expert (Mark) and an Insurance Expert (Tom) Converse
On prior art and its application to new patent applications
We discuss what the proposed patent reform act will add to the process of evaluating prior art in a patent examination.

42nd Issue: April 2011 - VOL:2011.2

Feature Article :
Doubling Patent Allowance Rates by Qualifying for a More Technological Patent Class
by Mark Nowotarski, President - Markets, Patents & Alliances LLC - co-editor, Insurance IP Bulletin; Arleen Zank and Mike Bowman - Coronado Group, Ltd.

A discussion on the impact that patent classification can have on allowance rates. 

43rd Issue: June 2011 - VOL:2011.3

Feature Articles:
Preparing for Patent License Negotiations 
by Mark Nowotarski, President - Markets, Patents & Alliances LLC - co-editor, Insurance IP Bulletin

Provides advice on how one ought to be prepared and what support is useful in patent license negotiations. 

Dealing with Insurance Companies 
by Tom Bakos, FSA, MAAA, President - Tom Bakos Consulting, Inc.- co-editor, Insurance IP Bulletin

Points out characteristics of insurance companies important to know in approaching an insurer regarding a patent.

44th Issue: August 2011 - VOL:2011.4

Feature Article:
Patent Watch
by Tom Bakos, FSA, MAAA, President - Tom Bakos Consulting, Inc.- co-editor, Insurance IP Bulletin

We highlight the importance of being aware of what competitors are doing in their patent programs. Their behavior can change suddenly and with little notice. Keeping an ongoing patent watch helps detect these sudden changes early.

Patent Q&A:
USAA Patents - Creating a Patent Thicket
We show how one major insurer has indeed made a sudden step change in their patent activity to create what appears to be a “patent thicket” around their critical programs.

45th Issue: October 2011 - VOL:2011.5

Feature Articles:
Patent Reform Act of 2011
by Tom Bakos, FSA, MAAA, President - Tom Bakos Consulting, Inc.- co-editor, Insurance IP Bulletin

We refresh readers on the finally passed Patent Reform Act (called the America Invents Act).

First-to-File and the Speed of Insurance Innovation
Mark Nowotarski, Markets, Patents and Alliances, LLC – co-editor, Insurance IP Bulletin

We address how the first-inventor-to-file provision may affect patent application filing.

46th Issue: December 2011 - VOL:2011.6

Feature Article:
Anticipate Rejection in a Patent Application
by Tom Bakos, FSA, MAAA, President - Tom Bakos Consulting, Inc.- co-editor, Insurance IP Bulletin

It would be highly unusual for the first correspondence from the patent office to be allowance of all your claims.

Patent Q&A:
Why Bother Obsessing Over Initial Claims?
Well, becasue it sets the tone for the rest of the examination.

47th Issue: February 2012 - VOL:2012.1

Feature Article:
Becoming Special
by Tom Bakos, FSA, MAAA, President - Tom Bakos Consulting, Inc.- co-editor, Insurance IP Bulletin

How to improve the speed of the patent examination process.

Patent Q&A:
How do I search the USPTO patent data bases?
Mark provides some guidance on how to searh the USPTO patent data bases.

48th Issue: April 2012 - VOL:2012.2

Feature Article:
Getting a Loan with Your Patents
by by Mark Nowotarski, President - Markets, Patents & Alliances LLC - co-editor, Insurance IP Bulletin

Mark points out that patents and patent applications may have value that can be used to collateralize a business loan.

Patent Q&A:
In what product areas is new insurance IP being established?

Tom provides a summary of the prevalent subject matter areas in which new insurance (i.e., class 705/4) innovation is being established.