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Patent Law Basics What
is Intellectual Property Law? Intellectual property law is a specialized area of law. Patent law, Trademark law and Copyright law are branches of Intellectual Property Law. Patent law covers protection of inventions comprising new and useful process, machine, manufacture, or composition of matter and original and ornamental design. Patent law is designed to encourage inventors to contribute their creative ideas to the society in exchange for “patent rights”. The “patent rights” give inventors several years of monopoly in the market place so that nobody can legally sell, use or manufacture the invention without the inventors’ permission. Patent laws, often loosely referred as protection of “inventions” are expressly delegated to the federal government by Article 1, Section 8 of the United States Constitution. Patents, Trademarks and Copyrights are some of the well known areas of Intellectual Property Law. What is a Patent Lawyer? The Patent and Trademark Office has its own examination and requirements for admission to patent practice and draws a distinction between “Patent Attorney” and “Patent agent.” The solicitation or prosecution of patent applications before the patent examining divisions of the Patent and Trademark Office are undertaken by those admitted to practice before the Patent and Trademark Office, either a patent attorney or the patent agent. Why should I consult an attorney concerning my invention? The inventor’s own description of their invention is not acceptable by the United States Patent and Trademark Office. The preparation of a patent application and the conducting of the proceedings in the United States Patent and Trademark Office to obtain the Patent requires the knowledge of Patent Laws and Rules in addition to Patent and Trademark Office practice and procedures. This branch of law is known as intellectual property law. A patent attorney specially trained in this field is able to secure patent protection for an inventor. Furthermore, Application documents submitted to the United States Patent and Trademark Office must conform to the prescribed format. Accordingly, it is prudent for an inventor to seek the services of a registered patent attorney. Where is my Patent Application filed? United States Patents are filed in United States Patent and Trademark Office in Arlington, Virginia. Registered Patent lawyers and Patents Agents are licensed to practice before the United States Patent and Trademark Office. To promote the progress of science and arts, the law gives inventors who file patents the exclusive right to their respective discoveries for a designated period. What is the purpose of filing for a Patent? No matter how good an invention may be, a patent right naturally cannot be obtained unless it is applied for. If you were to get a patent, you would have the right to exclude others from legally making, selling or using the invention without your permission and if desired, payment. Therefore, getting a Patent may enable you to make money from your invention in the U.S. and around the world. If my idea is an improvement of an existing product can I file for a Patent? To qualify for patent protection, your invention does not have to be totally new. It may be an improvement on existing items or processes, including business methods. Even a little functional or decorative improvement may qualify for a patent. Who can file for a patent? Only the inventor may legally apply for a patent, with certain rare exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. A person who makes a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. Where two or more persons make an invention jointly and they apply for a patent as joint inventors, each is required to execute the patent application on the invention. Problems concerning the identity of all the inventors often arise. Failure to properly identify the actual inventors may result in the loss of patent rights. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor. Thus, where issues of the inventor’s identity arise, a Patent Attorney should be consulted. What kinds of inventions qualify for a Patent? A patent may be obtained for a new or improved and useful machine, article of manufacture, chemical composition, process, computer software or business method, an e-commerce business model or enabling technology for the Internet. Patents covering these classes are known as Utility Patents. Original and ornamental articles of manufacture also qualify for protection under Design Patents. A patent allows you to prevent anyone from producing, using or selling your invention without your permission. You as a patent owner would request payment from anyone seeking to use your invention. A patent would enable you to make money from your invention. What can a Patent do for me? When you apply for a patent you will legally own the invention for a determined number of years and you may money from it. Nobody will be able to legally make, sell or use the invention unless you give your permission and if you desire, get paid for disclosing you invention. Patent rights may enable you to profit from your invention in the U.S. and, if desired, around the world. To qualify for patent protection, an invention need not be totally new. It may be an improvement on existing items or methods. Even a small functional or decorative improvement may be patentable. An improved decorative appearance to a product is protected by a design patent, which lasts for 14 years. A utility patent protects functional improvements to a product or process and lasts for 20 years. How long does a Patent last before it expires? Once issued, utility patents last 20 years from the filing date of the patent application. Design patents last 14 years from the filing date of the patent application. Plant patents last 20 years from the filing date of the patent application. What does the term "patent pending" mean? It is a term often used to inform the public that a patent application for the invention has already been filed in the U.S. Patent and Trademark Office. Federal law imposes a severe fine on those who use this term when no application for a patent has been filed with the U.S. Patent and Trademark Office. Can I use my own sketches/drawings to file for a patent? The Patent Application in addition to other required parts includes formal detailed drawings of the invention. The formal drawings are drawings that conform to the United States Patent and Trademark Office standards. The drawings should contain several views to completely disclose the invention. The drawing should contain appropriate surface shading showing clearly the character and contour of all surfaces of the invention. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Lack of appropriate surface shading in the drawing may result in the shape and contour of the design being found insufficient under U.S patent laws. Where the shape of the invention is not evident from the drawings as filed, addition of surface shading after filing may be viewed as new matter. Also, if broken lines are used, they should not intrude upon or cross the showing of the claimed design and should not be of heavier weight than the lines used in depicting the claimed design. Since changes to these drawings after the application has been filed, may introduce “new matter, which is not permitted by law, it is in inventor’s best interest to submit clear and complete drawings at the time the patent application is first submitted. Therefore, it is essential to use drawings of the highest quality conforming to the required rules and standards by utilizing a professional draftsman. When should I look for potential investors? In the U.S. public exposure of more than one year before you file a patent application means that your invention is barred from being patented. This law is strictly enforced by the United States Patent and Trademark Office. In many foreign countries, if any public exposure occurs prior to the filing of the patent application, you lose the right to file for a patent. This results in essentially making your invention free for anyone anywhere to copy, use, manufacture and make money without your permission. It’s best not to tell others about your idea until you have at the very least achieved "patent pending" status by filing a patent application. Filing a atent application provides "patent pending" status but the invention is not fully "protected" until a patent is issued. The single most common mistake that inventors make is failing protect their invention in a timely manner. If you are an inventor with a new or improved and useful invention, or an original and ornamental design, consult a Patent Attorney soon. Failure to promptly protect your invention may result in loss of your legal rights. Consequently, your invention would become available for anyone to use free of charge. What is the deadline for filing a United States patent application? Every inventor has exactly one year from the time of first public exposure of the invention to file for a patent. In United States a Patent cannot issue on an invention if, more than one year before the filing of the application for patent, the invention was disclosed in a printed publication in any country in the world, or was on sale or in non-experimental public use or commercial use in the United States. If you have used your invention in public and have not filed for a patent, time is of the essence and the time clock is ticking - you should discuss the circumstances of your use of the invention with your patent attorney quickly. It cannot be reiterated enough that since a patent application must be filed in the United States within one year of the time that the invention was first publicly used or sold, it is highly recommended that you file the application before making the invention public to assure yourself complete protection. What is the "Date of Invention"? The Date of Invention is not necessarily the patent filing date. The "Date of Invention" can be the earliest of the following dates: The Date the invention was conceived, built or tested( also known as "Reduction To Practice") in the US or a country that is a member of the North American Free Trade Association ( NAFTA) or the World Trade Organization (WTO). To claim this date, the inventor must have proper written documentation to prove his or her case. The date an inventor filed the Patent Application ( Provisional or Non-Provisional Patent) An Inventor who maintains proper records and was diligent in filing for a Patent is able to use the date of conception which is earlier than the filing date. For more information how to record proper invention documentation please contact us. What common mistakes should I avoid? Keep your invention confidential. You should be careful about revealing your idea to others before obtaining patent. Patent Attorneys are legally obligated to keep your invention confidential, in accordance with the attorney-client privilege Rules. Avoid disclosing the invention to anyone other than Patent Attorney or Patent Agents until at the very least “patent pending” status is obtained. The invention is not fully "protected" until a patent is issued. File your Patent Application promptly. In the US, any public exposure of your invention before filing for a patent will jeopardize your likelihood of obtaining “Patent Rights”. The rule is the inventor has exactly one year to file for a patent from the first date of public exposure. This one year rule cannot be extended and if no patent has been filed after one year of public exposure, the invention will be considered part of public domain. Public domain information is generally free for anyone to use. Consequently, the invention, once considered part of public domain will be available free for anyone to use. Therefore, it is highly recommended that you seek legal counsel as soon as possible to arrange for protection of your invention. Public exposure will jeopardize your potential “Patent Rights”. Selling your product to the public, publication of the invention anywhere, or offering your product for sale even if no actual sale of the invention takes place such as trade shows, website ads, radio ads etc is "public exposure". The term “Public Exposure” is strictly construed and may involve activities that some inventors would NOT consider as public exposure. Many inventors are surprised to find out that they have forfeited their “Patent Rights” while engaging some activities. This rule is even more harsh in some foreign countries where “Patent Rights” cannot be obtained if an invention is disclosed even one day before filing a patent. Avoid these extremely harsh penalties by planning ahead and filing your patent application promptly. The rule of thumb for every inventor to remember is that ANY public disclosure of the invention prior to obtaining a patent is likely to jeopardize the inventor’s potential “Patent Right”. Contact an Attorney, a specialist possessing skills needed to represent inventors. The best time to consult a Patent Attorney is while the invention is still in development. Document the invention and the date that the invention was conceived. It is prudent for the inventor to document the invention and the date the invention was conceived. One approach would be for the inventor to submit a disclosure to a Registered Patent Attorney describing and illustrating with pertinent diagrams, the invention for a fee. The Patent Attorney confirms and acknowledges the date of receipt of the disclosure. If it is needed at a later stage the date of conception is issue, the Patent Attorney can confirm the date to protect the inventor’s rights. How can I find out if my idea can be patented? The first step for patent application process is the search process. A search of many records is conducted to determine whether the invention is the same as, or is an obvious modification of, prior inventions. Generally, the search should at least include a review of prior U.S. patents, Internet searches, publications, news reports, and any other form of public information. Because U.S. Patent Examiners usually cite both U.S. and foreign patent documents, foreign patents should be considered in the search as well. Internet searches are helpful, but not enough to make a complete search. The Internet search may not include consideration of all of the information necessary to determine if an invention is eligible for patent protection. For instance, foreign patents available to the Patent Examiners should be considered in the search. All of the text and drawings that should also be considered. Furthermore, Registered Patent Attorney is able evaluate the results of the search from a legal point of view. What does the term “prior art” mean? A utility, design or plant invention may be patentable if different from prior, similar inventions. The difference between the prior invention and your invention must be "non-obvious" to a person with average skill in the same field of technology. An invention is non-obvious if it produces new and unexpected result. Inventions that are older and similar to yours are known as "prior art." If the prior art is very similar to your invention, patent protection for your invention is not available. Prior art may come from a variety of sources such as patent, publications, news reports, and any other form of public information. The most convenient way to uncover prior art is to do a professional patent search. However, it should be noted that patent searches are not infallible since it is difficult to uncover all prior art anywhere in the world What should I do now to get started? You need to contact us for a professional patent search and legal evaluation by a registered patent attorney at least during the development process of your invention and definitely before disclosing your invention to the public. The search should be promptly followed by a patent application by a patent attorney where a patent application is appropriate and feasible. What is the Application Process? Generally the inventor’s own description of their invention is not acceptable by the United States Patent and Trademark Office. The application is a formal and detailed document that is best prepared by a patent attorney. For instance using the word “consist” instead of the word “comprising” may jeopardize a patent application. Therefore, hiring a patent attorney is highly recommended to prepare your patent application. To begin the application process, we need a complete description of the actual machine or other subject matter for which a patent is being sought. You must provide us with detailed information about your invention, such as sketches, photographs, and/or a written description, and copies of any relevant inventions known by the inventor. We can mail or fax you a confidentiality agreement first if you wish. We will review your invention and prepare a written breakdown of the fees for preparing and filing a patent application for your perusal. Once we get your approval, we will then require 50% of the attorney fees before any work commences. 100% of the due fees must be paid before we file your application with the United States Patent and Trademark Office. Typically, your Patent application will include the following features in addition to other features:
The attorney receives copies of the references cited in the Office Action and analyses them in preparation for filing a response. Copies of the office action references are also forwarded to you for comments. Your comments, as the inventor are essential because you are in a unique position to help the attorney understand the drawbacks of the devices disclosed in the prior art references. The response to the examiner’s office action must point out key differences between the invention and previous inventions, make legal arguments, and make changes to get around the rejections. In responding to the office action, it may be necessary to obtain your signature on additional papers. Accordingly, it is important that you provide us with current address and telephone number at all times. If you move and we cannot reach you to discuss the references cited by the Examiner, or if you cannot be found to sign essential documents, costly delays and loss of patent rights may result. If you desire to prosecute the application further, the attorney prepares a document to amend your invention to better distinguish your invention over the references cited by the Examiner. It may be advisable to amend the application to comply with the Examiner's request. This generally includes a discussion of the differences between the references cited by the Examiner and the applicant's invention. In many cases it includes a legal argument setting forth the law as to why this particular application should be allowed. It is possible to overcome the issues raised by the examiner. The time period set for response to the Office Action is usually three months. Extensions of time to file the response can be obtained by paying time extension fees to the Patent Office. In no case, however, can a response be filed later than six months from the date of the Office Action. The attorney and the Examiner continue to communicate back and forth between each other and may conduct oral conferences, until the application is either allowed or "finally rejected". The total prosecution of the application after the filing of the original application requires, on an average, about two years, although the time may range anywhere from one to three years or more. Most of that time lapse is spent awaiting actions by the Patent and Trademark Office. Once all the application issues have been timely and properly been provided to the examiner and the invention is clearly patentable over previous inventions, the examiner will allow (approve) the application by issuing a "Notice of Allowance and Issue Fee Due." This Notice indicates that the prosecution phase of the application is finished, and that the patent will issue soon if certain fees are paid to the Patent and Trademark Office. An inventor has exactly three months in which to pay the issue fee after a Notice of Allowance is issued. If the inventor does not pay the issue fee, the Patent Office will close the file on the case, the patent will not issue, and you may lose any rights he has in the invention. Therefore, it is important that you, as the inventor give prompt attention to the Notice of Allowance and Issue Fee Due without delay. After the patent issues, PTO maintenance fees are due at 3.5 years, at 7.5 years, and at 11.5 years. You may choose not to pay the maintenance fees, but your patent will expire. If the invention fails to overcome the examiner’s questions or is clearly unpatentable over prior inventions, the application will be finally rejected and no patent will be allowed. How do I market my invention? You may manufacture and distribute your invention yourself, or you may license it to a manufacturer in return for royalties. Most inventors prefer licensing because it is generally easier. Many inventions provide improved features or additional benefits to existing products. Therefore, the companies that already sell similar products are the best prospects. Look in stores, catalogs, popular magazines, or trade magazines for these products. The manufacturers' names and addresses are often printed on product packaging and advertisements. Manufacturer listings, such as Thomas Register, and Dunn's Million Dollar Directory, are available in the reference section of most libraries. File a patent application first before submitting your invention to the manufacturer. It should be noted that your invention is not fully protected until the patent is issued or granted. Nevertheless, although not recommended, some inventors start marketing their inventions before the patent is granted. Seek legal counsel on this issue. If you wish to submit your invention to manufacturers without filing a patent application, try to get them to sign a Non-Disclosure (confidentiality) Agreement first but this will be at your own risk and is not recommended unless you know that a manufacturer is absolutely ethical. It is best to at the very least file a patent application before submitting your invention to the manufacturer. Great caution is required if you submit your invention to any third party before filing a patent application. Many companies require inventors to sign a waiver, sometimes called an "Invention Submission Agreement", before reviewing their inventions. A typical waiver states that the company not be required to keep the invention secret, that it may do with the invention as it wishes, and that the inventor must rely solely on the patent laws for protection. You must carefully weigh the risk of signing such waivers. It is highly recommended that you seek legal counsel if you plan on taking this route. "Invention marketing companies" are organizations that offer to help inventors sell or market their inventions. Typically, they will first send you a free "Inventor's Kit" that includes a disclosure form for you to provide a description of your invention. Very Great Caution is required here. Seek legal counsel before submitting or disclosing any part of your invention to such a company. |