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COMMON CLIENT MISCONCEPTIONS AND FREQUENTLYASKED QUESTIONS ABOUT PATENTS AND THE PATENTSYSTEM

byWilliam A. LoginovLoginov & Associates, PLLC10 Water StreetConcord, NH 03301603-336-3026

wloginov@loginovlaw.com

The patent system affords inventors of new and useful devices, methods, compositions of matter, ornamental design, and new plant varieties the

right to exclude others

frommaking, using or selling the patented subject matter. The following is a generaldiscussion, in question and answer format of some typical client questions andmisconceptions regarding the U.S and international patent system.

What can I patent?

It has been said that patents may be had on “anything under the sun, made by man.”More realistically, patents can be filed upon new, useful and unobvious concepts relatedto machines, electronic devices, chemical compositions, software procedures, businessmethods, biological and biomedical products, ornamental designs for objects, and non-naturally occurring plant varieties. There are certain unique and inventive developmentsthat cannot legally be patented. Any

natural

principle, such as a basic mathematicalformula, equation or algorithm, any pure physical theory or a naturally occurringsubstance, such as a non-man-made element or mineral is not subject to patent protection.However, useable devices or processes that are based around these natural items may be patentable. Concepts that are morally inappropriate or against public policy are (in veryrare cases) deemed unpatentable. Interestingly, the U.S. government also specifically prohibits the patenting of any nuclear weapons technology by non-governmental entities,ostensibly for national security reasons.

I have a concept and I intend to file a patent, can I call it “Patent Pending?”

No, a patent application (provisional, design or full utility) must be on file before one canlegally use this designation and the patent must generally cover the item or process somarked.

I want to get a patent filed as quickly and cheaply as possible. Can I just write up adescription and file it in the U.S. Patent Office myself as a provisional application?

Yes,

and

No. A provisional patent application is a great vehicle for securing an earlyfiling date for the protection of the invention, but it must conform to the stringent rulesregarding a full written description of the invention. Inexperienced inventors often omit

important data, or don’t always properly frame the problem to be solved, and/or thesolution provided by the invention. Also, the provisional only remains in force for oneyear, and must be followed-up by a full utility patent to perfect the right. The utilityfiling is definitely a job for the attorney and he or she may have to later justify in Courtwhy the more-polished utility application was so different from the original provisional— leading to a

weaker

initial filing that can possibly be attacked by an opposing lawyer. just to clarify, the

utility

is a formal patent application that actually gets examined andmay mature into a granted patent, a provisional is basically a

place-holder

that allows aninventor to preserve an early filing date for one year and never itself grants into a patent.In any case, it never hurts to get a patent attorney involved at the beginning to guide the preparation filing, even if a limited budget exists and the client must initially take onmore responsibility in the preparation and filing of the application.

Will my patent cover me around the world?

No. Every country or region (Europe is generally a “region”) has its own patent systemand a counterpart of the U.S. application must be filed within one year of the U.S. filingunder applicable treaties. Each foreign filing will cost anywhere between $5,000 and$10,000 to start. It’s a process undertaken only for promising innovations with definiteinternational aspects and sufficient funding in place to pursue foreign patent rights.There are ways to delay big costs, such as the Patent Cooperation Treaty (PCT) process, but eventually, foreign filing results in a large cash outlay that continues for some time.

When do I have to file a patent application?

U.S. law currently gives an inventor one year from the date of a first offer for sale, publicuse, or public showing in the U.S. or publication anywhere, in any form, of the subjectmatter sought to be patented. This one year grace period is called the “bar date” to patentability. This is

the most critical

inquiry to make of a client. It is quite common for a client to refrain from consulting patent counsel until some time after information or products have become public—and the 1-year bar date clock is now running. For foreign protection the standard is more stringent: the concept cannot be publicly divulged beforea first patent filing. Note that a well-drafted non-disclosure agreement (NDA) can help avoid starting the 1-year bar-date clock (or loss of foreign rights) when dealing with outside vendors or other entities where the inventive concept must be discussed. Even with an NDA, it isimportant to avoid discussions of sales terms or pricing in such discussions because thesealmost always trigger the 1-year clock for the “on-sale” bar to patentability of theinvention.

How long does a patent take to be granted?

Most patents will take between 1 ½ and 3 years to grant, if at all. All patents areexamined by a Patent Examiner who searches for similar prior art—often earlier granted patents that may render the application not new or obvious. The patent attorney must2

respond to rejections by the Examiner of the patent claims, and argue why the examiner was incorrect or overreaching. This may involve changes (known as “amendments”) tothe claims. The term used for the process in which the attorney works with the PatentOffice to attempt to get a filed application granted is “patent prosecution.”

What are claims?

Claims are the statements in a utility patent that set forth the boundaries of the protectedinvention—like the boundaries of land in a deed. They are part of the overall teaching of the patent document which also includes a background section on the technical field of the invention and problem that needs to be solved. There is a detailed description of theinvention and how it works and typically annotated drawings that help explain theinvention and are narrated by the description.

I’ve been told that a design patent is cheaper, should I file for one of these instead of themore-expensive utility application?

The “claim” of a design patent is basically a set of drawings of certain ornamentalfeatures of an object or other visual item. This kind of patent only protects the decorativeand otherwise non-functional aspects of the item. If the device or procedure containsfunctional parts, then a

utility

patent is the way to go. If it’s a good-looking design that islikely to be copied, a design patent is a definite option. Some products carry both utilityand design protection.

Should I get involved with one of those invention submission companies I saw ontelevision?

I cannot speak for every company, but my short answer is No. Most of these companiescharge a very high fee with the promise that they will perform a patent search, promoteyour product to industry and even write the patent. In many cases the “patent protection”has been inappropriately used design patent protection where a utility was really calledfor. That’s because most inventors using the service are unschooled in the patent system,and a design patent is much cheaper and easier to obtain in most cases. We will discusscosts for U.S. filing below. The promotion process offered by these folks rarely results ina license to industry, and a diligent inventor could hire his or her own independent promoter (for example, a couple of college students) for much less that the promotioncompany charges. For guidance, a client should log onto the U.S. Patent Office Web Site

www.USPTO.gov

and search for any complaints lodged against the particular company.It will be an eye-opener in most cases.But this raises a bigger point. A patent is a business tool like a printer or lathe. It provides value, but it is rarely (an exception would be pioneering technology) the soledriver of a successful business. An inventor should diligently pursue a business plan,investment capital and other steps necessary to build a business. The patent is part of this bigger picture. Never assume that

if you patent it—they will come