Patents

• There are three “types” of United States patents: Utility patents, Design patents, and Plant patents. When most people refer to a patent, they are referring to a utility patent. There is no such thing as a Provisional patent (see What is a Provisional Patent Application? below).
• A “letters” patent is a grant of a set of rights from the United States government that is enforceable in our courts. The rights include the right to exclude others from making, selling, or using the patented item or process in the United States for the term of the patent.
• Note that the right granted by the government is not an affirmative right; in other words, it is not the right to make, sell or use the invention. Quite to the contrary, it is simply the right to keep others from making, selling or using the invention. While this might seem a distinction without a difference, it most assuredly is not. It is quite possible to have a patent on an invention and not be able to make, sell or use the invention. This happens most frequently when an earlier patent was granted on the basic invention. If the second inventor cannot practice his invention without using all of the patented elements of the first invention, the second inventor will infringe the first inventor’s patent.

• The standard answer: a patent allows you to exclude others from making, selling, or using the claimed invention. While this “monopoly” right is very powerful, you must enforce it yourself, typically by notifying the infringer, and potentially following up with a lawsuit.
• But, patents also perform important signaling functions that may increase sales or trust:
  • Patents warn potential competitors away from your market niche, particularly if the product is marked as patented.
  • Patents show potential investors that your technology is novel and protectable.
  • Patents tell buyers that your technology is new and unique.
• Surprisingly, patents may actually reduce development costs:
  • Patents can be used to secure loans and other funding at a reduced interest rate.
  • Patents are a medium of exchange between development partners. Not only do they allow partners to deal with each other, but they allow the partners to keep track of who is contributing what to the enterprise, and prevent unwanted technology transfer between partners. Patents allow joint ventures to occur, where otherwise the risks of co-development would exceed the cost benefits.
  • Similarly, patents allow co-inventors to keep track of contributions, and provide another method of compensation, besides stock and monetary compensation.
• Other benefits:
  • Patents provide a defense against other infringement suits. When the parties sell similar products, it is quite common to counter an infringement suit with an infringement suit, and the resolution is often a cross-license.
  • Patents provide an alternate source of income. Patents are property, and may be sold or licensed to others either outright or for a royalty.

• Generally, don’t patent until you’re informed about similar art and competitive products. In other words, have a novelty search done first. You will save prosecution costs if you determine some aspect of your invention is not novel. Also, even if your invention is novel, knowing the prior art will result in a more comprehensive patent. However, you may want to file quickly if you are under time constraints, particularly if you are planning to show the invention, offer it for sale, or file in a foreign country.
• Consider using trade secrets for certain technologies, particularly processes. Patents are published and teach the public how to make and use the invention. For example, if a patent teaches how to make a product using a novel process, but infringement is not detectable by examining the final product, then a trade secret may be more appropriate protection.
• Have an idea of how you plan to use your patent in your business before you patent. A startup company should have a development plan, marketing plan, and business plan in place before spending a lot of money on patenting. If you’re in a time crunch, a provisional application may be the way to proceed.
• Consider the lifetime of the invention before you proceed. This may not be the same thing as the lifetime of the product. Product lifetimes can be very short, but the invention may be reusable.

• Very briefly, either products or processes can be patented. Improvements to existing products are frequently patented, and business methods (including Internet business methods) are also patentable. Software is patentable, methods of making products are patentable, and plant varieties are patentable.

• No. You do not have to have any of the above to manufacture and sell your invention or even sell the rights to your invention, but you will not be able to prevent other people from doing the same thing.

• The Patent Act, passed in 1952, specifies that someone wishing to obtain a patent must satisfy specific requirements. Although you could attempt to patent an invention yourself, a good place to start is by contacting a patent attorney.

1. Make sure it qualifies as patentable subject matter.
2. Determine that there is a good chance that the Patent Office will find the invention to be new and novel. Typically, we conduct a novelty search to determine if the invention has already been patented, or it has any patentable qualities in light of all the previous patents issued. Most new inventions contain some patentable material.
3. Draft a patent application. Either do it yourself or hire a registered patent attorney or agent to do it for you. Unless you are skilled or you simply cannot or will not pay a professional to do it for you, you should hire a good patent attorney to draft and prosecute your patent application. If an invention is worth patenting, it is probably worth getting the job done right. The patent application must disclose how the invention works. The application must also describe in detail the patentable features of the invention. Patent “claims” distinguish your invention from the prior art in the field and assert how your invention is new, useful, and non-obvious.
4. File the patent application. Again, you can either do this yourself or hire a patent attorney to do it for you.
5. “Prosecute” the patent application by responding to any requests, objections, and/or rejections which the examiner raises. This often takes several communications with the examiner, spaced over several years. Most patent practitioners maintain a docketing system to insure that responses are timely, despite the long pauses in the communications with the PTO.

What if I know my idea isn’t patentable? I don’t need to be concerned about patents and I can make and sell all I want, right?

• Wrong. In the first place, it is probably a mistake to assume your invention is not patentable without at least conducting a patent novelty search.
• Just because the basic product has been on the market for years does not necessarily mean that you can’t get a patent on your version of the product. “Improvement” patents are issued all the time.
• More importantly, just because a device is not on the market does not necessarily mean that it hasn’t already been patented. Oftentimes, a previous inventor will have made poor business decisions or have other circumstances which result in an unsuccessful market penetration. The only way to determine if an invention has been patented before is to do a patent search.
• You are risking a great deal by not checking to see if anyone else has a patent on an item or process. You may be infringing on someone else’s patent without knowing it. Getting into and out of an infringement lawsuit is very expensive.

• The general standards for evaluating whether or not a particular invention is worthy of patent protection are:
  • that the structure of the invention be “novel”, i.e., new and unique, no one else has done it before; and
  • that the invention not be an obvious modification of whatever has been done before.
• These standards are set out in Sections 102 and 103 of Title 35 of the United States Code.
• There is no percentage rule as to how different an invention must be in order to be worthy of protection. Generally speaking, if an invention produces a non-obvious advantage or accomplishes a specific result in a non-obvious way, the invention is likely to be patentable.

• Yes, it is possible to sell the idea without having a patent or even a patent pending, however, it is difficult and risky. It is similar to trying to sell a car to which you do not have the title. Just how are you going to convince someone to pay you money for it? Why should they pay you anything for your idea when they can just take it? If someone does take your idea, now you are the one that must prove it was your idea and the other party knew you wanted money for it.
• A very useful tool for presenting your idea to potential buyers is called a non-disclosure or secrecy agreement. Consult an attorney to have a non-disclosure agreement drafted.
• As a manufacturer, do not even look at an inventor’s idea unless the inventor agrees in writing to hold you harmless if you already had the idea in research and development.
• Some manufacturers will not even talk to independent inventors unless the inventor’s invention has patent pending status. This is because they do not want to be sued by the inventor for stealing his idea if they had already thought of the same idea.

• To obtain patent protection in a particular country, you must have a foreign patent covering that country.
• There are two ways to file internationally. The first is to file on a country-by-country basis. The second route is under an international treaty called the Patent Cooperation Treaty (PCT). Typically, a U.S. patent application will be prepared and filed, with a PCT application spun off of the U.S. filing. Patent protection is possible in virtually every country in the world.
• Some things to remember: foreign utility patent applications must be filed within one year of your U.S. filing date, and selling your invention before you file a patent application may later bar your filing in foreign countries. Please consult with a patent attorney any time you plan to sell, offer for sale or make public your invention before you file a patent application.

• Again, there is not a percentage rule. A common myth is that all a competitor must do is change the invention by 10% to get around the patent. Nothing could be farther from the truth.
• The scope of protection which is afforded by a patent depends on the claim language. If someone is selling a similar item, device or process, which includes all of the elements, or their functional equivalents set forth in a particular patent claim, that action infringes the patent. On the other hand, if another person can accomplish the same result without using all of your elements or using elements which are not functionally equivalent, that action would not infringe upon your patent.

• A design patent is a grant from the government of the right to exclude others from making, selling or using the claimed ornamental design features of an invention for a period of fourteen (14) years.
• There are no maintenance fees for design patents.

• Basically, any new, original and ornamental design for an article of manufacture.
• Consider design patent protection for products which are different or distinctive from anything that has been done before. Good candidates for design patent protection are hand tools, vehicle designs, industrial equipment and designs or arrangements of equipment which are ergonomic and ornamental.
• These standards are set out in Section 171 of Title 35 of the United States Code (35 USC § 171)

• A utility patent is a grant from the government of the right to exclude others from making, selling, or using the claimed group of functional features of an invention for a period of 20 years from the date the patent application was filed. (See What qualifies for utility patent protection?)
• The owner of a utility patent must pay maintenance fees throughout the life of the utility patent in order to keep the patent enforceable. The first maintenance fee must be paid after the third year and prior to the expiration of the 3-1/2 year period from the issuance of the patent. The second fee must be paid after the seventh year and prior to the expiration of the 7-1/2 year period from the issuance of the patent. The third fee must be paid after the eleventh year and prior to the 11-1/2 year period from the issuance of the patent. There is a six-month grace period for each of these payments, with a penalty imposed, of course.

• Section 101 of Title 35 of the United States Code states that “any new and useful process, machine, or composition of matter, or any new and useful improvement thereof” can be the subject of a patent. This can include new devices, new methods or processes, improvements in existing devices or methods, methods of doing business, software, new uses of existing technology, Internet methods of doing business, recipes, formulas and systems.
• Section 100 of Title 35 of the United States Code defines the word “process” as meaning a process (leave it to Congress to define “a process” as “a process”), art or method, and includes a new use for a known invention.
• Things which do not qualify for patent protection include: scientific principles, mathematical processes, mental steps, printed matter, naturally occurring articles, mere aggregations of unrelated parts (a pencil with an eraser at one end is considered such an aggregation), and “any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon.” (42 USC § 2181(a)).

• A plant patent is a grant from the government of the right to exclude others from making, selling or using the claimed asexually reproduced plant for a period of twenty (20) years from the filing date of the application.
• There are no maintenance fees for plant patents.

• The “provisional” patent application system was created after the GATT treaty was signed in 1995. A provisional application may be filed without claims, is not examined or even read by anyone at the Patent Office, and, as the “provisional” name implies, is temporary. A provisional patent application expires exactly one year after filing and unless you file a utility application before the end of that one year period, you may be found to have abandoned your invention to the public domain.
• The three main reasons to file a provisional application are: (1) in an emergency situation where a filing date is needed to protect rights while a utility patent application is prepared (for instance, getting something on file the day before you show your invention at a trade show), (2) where the inventor needs to limit costs while trying to determine if the invention would be commercially profitable, and (3) where the invention is expected to have a long market life span (the provisional application could, theoretically, add an additional year to the term of the patent.
• Because provisional applications are not examined, they can never mature into an issued patent. There is no such thing as a provisional patent.
• It is important enough to bear repeating: a utility patent application must be written and filed based upon the provisional patent application within one year (the life span of the provisional application).
• A provisional patent application cannot claim priority from another application, foreign or domestic.
• While provisional patent applications were intended by Congress to make filing easier for inventors, these same applications often become a trap for unprepared inventors. The main traps are: (1) missing the one year date (when a provisional application is abandoned, it is gone forever), and (2) inadequate disclosure (if the disclosure is not clear and detailed, the resulting problems may completely void the application altogether). Provisional patent applications also draw out the patent prosecution process, making it longer until you have an issued patent in hand (your competitors can only “infringe” your patent after it issues).
• Preparation and filing of a provisional patent application typically costs 1/3 to 2/3 of the cost of preparing and filing a utility application. Then within one year, the inventor must also pay to have a utility application prepared and filed based on the provisional application. This can result in increasing total patent costs at least 1/3 to 2/3 over only filing a utility application in the first place. Many inventors would rather spend this additional money on advertising, marketing and manufacturing the invention.

• Patent pending means that the person or manufacturer is giving notice that some kind of patent application has been filed for some portion of the object on which the words appear.
• It is illegal to mark a product or invention as patented if it has not been patented, or as patent pending if no patent application is on file with the Patent and Trademark Office.
• Patent pending affords you no legal rights. However, most reputable businesses and people will not infringe upon an item which has a patent pending. They know in the long run that it is probably cheaper to either buy the rights from you or to wait to determine what patent rights will be awarded, if any. This de facto coverage can provide a significant competitive advantage for new products.
• The patent pending period is one of the most marketable times for the rights to an invention. Manufacturers can utilize the period of patent pending to get a jump on their competitors. This is possible because the applications are held in secrecy. (However, in the future, the Patent Office may start publishing patent applications after they have been on file for 18 months). No one else can know what kind of patent you’ve applied for, or how broad the protection you will receive, if any at all.
• By way of analogy, claiming patent pending is like posting no trespassing signs on a lot you are in the process of buying, but do not own yet. Most people will stay off the lot, but if someone does challenge you, you must wait until you own it before having legal grounds for excluding them. If the sale falls through, of course, you don’t have any right to exclude.

• The Patent Office assumes that the first person to file an application was the first to invent. However, ultimately the first to “invent” an item has the senior rights, unless they have abandoned, suppressed, or concealed their invention.
• Invention is broken down into 3 steps.
  • Conception
  • Reduction to practice
  • Filing of a patent application (constructive reduction to practice).
• Generally, conception is the moment when the inventor formulates the complete means for solving a problem. It involves not only the perception of producing a certain result, it also involves the perception of the means by which the result can be produced.
• Generally, reduction to practice is the moment when the invention is proven to work. Reduction to practice sometimes involves the physical construction of the invention and testing the physical device to determine whether it will perform as contemplated. Reduction to practice can also be met without building a test model or prototype–if the invention can be described in the patent so that one skilled in the art to which it relates can construct the invention from the written description, then the invention is considered reduced to practice by the written description.
• However, for an individual inventor, the use of proof-of-prior-conception to “trump” the patent rights of another person who filed an earlier patent is very rare. Using proof-of-conception to obtain a patent when another has filed before you is more practical in a large corporate setting in which many ideas are conceived and recorded and where another corporation may have a team working on the same idea. In that case, proof-of-conception could prove which firm thought of the idea first, and the firms would have the resources to litigate over a major idea, such as the invention of the laser, the spreadsheet, etc.
• If the three events, CONCEPTION, REDUCTION TO PRACTICE, and FILING OF THE APPLICATION are not connected by due diligence, then proof of the date of conception is worthless. In general, proof of the date of conception for individual inventors is worthless. The only way to ensure protection of an invention is by filing a patent application and obtaining an issued patent.

• The record of the invention should be sufficiently detailed to allow a person who is of average skill in the art to read it and understand the entire invention. Always relate critical details, such as specific frequencies, dimensions, etc. Include sketches, photos, blueprints, printouts, data plots, and other pertinent information.
• Make sure that these things are integrated into a notebook and organized.
• Make the disclosure clear, definite and well organized. It should be easy to read and follow.
• The record should be made contemporaneously with the activities being recorded.
• Use a bound notebook with numbered pages, always write in ink, strike mistakes out with a single line, do not leave blank pages, and store the notebook in a safe, dry place. Keep your notebook away from food, drinks and your dog.
• Include records of failures as well as successes. Explain why you think you failed, as well as why you think you succeeded.
• Have your records read by two other people who are not co-inventors and preferably who do not have an interest in the invention. Each person should state, in writing, that they have read and understood the foregoing disclosure, then sign and date their statements.
• The general format of the notebook should include a statement of the problem which you are trying to solve, your proposed solution, all problems encountered, your final solution, possible uses, possible modifications, other possible solutions, and any other areas of interest or significance.
• Avoid statements such as “I thought the obvious solution was to try X, so that’s why we did.” What you think of as being obvious or simply applying a well known solution in a slightly different manner may not be obvious in the eyes of the patent law. Such a statement might possibly be used to defeat any patent which is subsequently granted.
• Specific guidelines:
  • Include descriptions of all equipment used;
  • Include results, photos, printouts, charts, plots, etc.;
  • Include conclusions, problems encountered, possible modifications and potential applications;
  • State when and where the experiment was carried out;
  • State the names of all people present and all who contributed and participated; and
  • Include test data sufficient to demonstrate that the invention worked.

• You have one year from the earliest date of public display, public use or a sale of the invention in which to file for a patent application in the United States. If you do not file within that year, you have forever lost your right to obtain a patent on that invention in the United States.
• Most foreign countries do not even allow one year. These countries require “absolute novelty,” meaning you may not do anything to place your invention in the public domain prior to filing a patent application.
• The United States has reciprocal agreements with most countries in the world which allow you to claim the earlier U.S. filing date to establish priority in that particular country, providing you file the foreign application within one year of the U.S. filing date.
• If you think that there is a possibility that you, your firm, or whomever buys the rights to the invention will market the invention anywhere outside the United States, do not do anything to risk placing the invention in the public domain until after you have a U.S. patent application on file, and be prepared to file foreign patent applications within one year of the U.S. filing date.

• Inventorship is a complex legal issue which should not be taken lightly. In order to qualify as an inventor, the person must contribute to the conception of the invention in a material way. If you have any doubts, you should obtain a legal opinion from a patent attorney or agent.
• It is critical that all the true inventors and only the true inventors are listed on the patent application as inventors. If you would like to give someone an interest in the invention who is not an inventor, you may do this using an assignment agreement, not by listing them as an inventor. Listing less than all the true inventors, or listing false inventors, is one way to have the patent held to be invalid if the patent is ever litigated.
• Every individual who is associated with the filing of the patent application has a duty to act in good faith and candor before the Patent and Trademark Office. These individuals include each inventor, each attorney who prepares of prosecutes the application, and everyone else who is associated with the inventor(s), with the assignee or with anyone to whom there is an obligation to assign the patent application. If any of these individuals lie, withhold information or otherwise deceive the Patent Office in any way, that individual places any patent which might issue on that particular invention in danger of being invalidated. Each individual has a duty to tell the patent examiner about everything known of which applies or is similar to your invention.

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• As an employer, you should consider developing technology audits, written agreements regarding patents and ownership, and procedures for protecting all of your intellectual property and products. For more information on conducting technology audits, contact Burdick Patents.

• A patent attorney can represent you in a court of law; a patent agent cannot.
• A patent attorney is a member of the state bar, as well as being registered with the “patent bar,” while a patent agent is not a member of a state bar.
• A patent agent can do everything within the Patent and Trademark Office that a patent attorney can do.
• Either a patent attorney or a patent agent can represent you in the Patent Office, or you can represent yourself. An individual representing himself is known as a “pro se” applicant.