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by William A. Loginov Loginov & Associates, PLLC 10 Water Street Concord, NH 03301 603-336-3026 firstname.lastname@example.org 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 from making, using or selling the patented subject matter. The following is a general discussion, in question and answer format of some typical client questions and misconceptions 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 related to machines, electronic devices, chemical compositions, software procedures, business methods, biological and biomedical products, ornamental designs for objects, and nonnaturally occurring plant varieties. There are certain unique and inventive developments that cannot legally be patented. Any natural principle, such as a basic mathematical formula, equation or algorithm, any pure physical theory or a naturally occurring substance, 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 very rare 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 can legally use this designation and the patent must generally cover the item or process so marked. I want to get a patent filed as quickly and cheaply as possible. Can I just write up a description 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 early filing date for the protection of the invention, but it must conform to the stringent rules regarding 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 the solution provided by the invention. Also, the provisional only remains in force for one year, and must be followed-up by a full utility patent to perfect the right. The utility filing is definitely a job for the attorney and he or she may have to later justify in Court why 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 and may mature into a granted patent, a provisional is basically a place-holder that allows an inventor 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 on more 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 system and a counterpart of the U.S. application must be filed within one year of the U.S. filing under 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 definite international 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, public use, or public showing in the U.S. or publication anywhere, in any form, of the subject matter 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 before a first patent filing. Note that a well-drafted non-disclosure agreement (NDA) can help avoid starting the 1year 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 is important to avoid discussions of sales terms or pricing in such discussions because these almost always trigger the 1-year clock for the “on-sale” bar to patentability of the invention. 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 are examined 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 must
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”) to the claims. The term used for the process in which the attorney works with the Patent Office 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 protected invention—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 the invention and how it works and typically annotated drawings that help explain the invention 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 the more-expensive utility application? The “claim” of a design patent is basically a set of drawings of certain ornamental features of an object or other visual item. This kind of patent only protects the decorative and otherwise non-functional aspects of the item. If the device or procedure contains functional parts, then a utility patent is the way to go. If it’s a good-looking design that is likely to be copied, a design patent is a definite option. Some products carry both utility and design protection. Should I get involved with one of those invention submission companies I saw on television? I cannot speak for every company, but my short answer is No. Most of these companies charge a very high fee with the promise that they will perform a patent search, promote your 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 called for. 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 discuss costs for U.S. filing below. The promotion process offered by these folks rarely results in a 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 promotion company 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 sole driver 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.
What is the cost of a patent? That will depend on the type of patent (design or utility) pursued, and the complexity of the subject matter. Every patent is by definition unique, and before beginning the draft of the application, the attorney must first gain an understanding of the inventive concept, its theory of operation, the state of the prior art and any alternative implementations of that concept. Typically, the cost for a small to mid-size firm to prepare and file a utility patent in the electrical, mechanical, medical device and computer software arts ranges from $5,000 to nearly $20,000, depending largely upon complexity and number of different embodiments or variations on the concept. Follow-on costs of approximately $2,000 to $4,000 occur one to two years afterward if and when a response to a Patent Office rejection of the patent application occurs. While further responses may be required, in most cases, the first response often leads to an allowance of the application at which time Patent Office issue fees and formal drawing preparation fees are due. This adds another $1500 to $2,500 in most cases. The cost of design patents is mainly in the (up-front) preparation of high quality drawings by a qualified patent draftsman under direction of the patent attorney. The key to a good design patent is in knowing which features to show and which to omit. The more that is shown, the narrower the design claim. The cost to prepare and file a single-embodiment design patent is approximately $2500 to $3500 in most cases. Follow-on costs are proportionally less than those noted above for a utility application. And now my opinion: not all patent attorneys are skilled design patent drafters—it’s a true art form. Should I obtain a patent search before proceeding, and what are the costs? Unless the subject matter is particularly difficult to search, or the client is a sophisticated entity with intimate knowledge of developments in its industry and technology, a basic screening search is always a good idea. For between about $800 and $2,000 the client will have a much better idea if, and to what extent, the concept is patentable. Searching is more art than science and no search will locate all possible prior art, but the screening search will typically yield most art that will be readily available to the patent examiner, and may be good insurance before undertaking an expensive patent filing that may not have been worthwhile. Now that my patent application has been filed and is pending, should I wait for it to grant before commercializing a product? In almost no instance should commercialization wait until the patent is granted. This could delay development by several years and the technology will almost certainly have moved on. If the only interest is in licensing technology, some potential licensees may wish to see a granted patent first, but most will perform due diligence, including undertaking their own patentability search and opinion, to determine if a pending application will have value, and will decide whether to take a license while the patent is still pending. In fact, some will even say that a patent may be more valuable while still pending because there is still time to mold the claims to effect better coverage.
Once my patent is granted, what happens then? Utility patents have a term of 20 years from the original filing date regardless of when they grant (subject to minor time adjustments). The U.S. Patent Office charges periodic maintenance fees ranging from several hundred to several thousand dollars to keep a patent in force. These fees are due around the 4th, 8th and 12th year anniversary of the grant. Design patents have a term of 14 years from the date of grant and no maintenance fees. Should I be concerned about my concept infringing other people’s patents? This is a difficult question to answer. In highly competitive industries where large investments in product development are made, such as pharmaceuticals or certain medical devices, infringement or “freedom-to-operate” studies by the patent attorney may be appropriate prior to engaging in commercial activities or major research and development. These infringement studies can be very expensive and time consuming. In most cases, the basic patentability (prior art) search discussed above will reveal relatively close patents that may still be in force. A quick reading of the claims in these closely related prior art patents is always a good idea, since the client is now on notice of these patents. And if infringement by the client’s activities of any patent is suspected, it may be appropriate to obtain a non-infringement opinion from a patent attorney and/or undertake appropriate design-around steps to avoid a potential charge of willful infringement of another party’s patent. Knowing or willful infringement of another’s patent can subject the infringer to significant punitive (treble) damages and a judgment of attorney’s fees in any patent litigation. Does my patent give me an exclusive right to practice my invention? No, this is a common misconception. As stated in the introduction above, the patent system affords inventors the right to exclude others from making, using or selling their patented subject matter. This leads to the basic, and often misunderstood, proposition that a patentee can prevent others from practicing their patent’s claims, but the patentee may itself be prevented from practicing its own patented invention by another patentee’s broader, prior patent that is still in force. This is why many large companies engage in cross-licenses with major competitors so that each company will not infringe the other’s competing patents on similar technology. Who owns the patent? By default a patent is owned by its inventors, who must be completely and accurately named on the filed document, and must swear that they are true inventors. Naming of proper inventors is critical and the identification of inventors is a legal determination which (when in doubt) should be accomplished with the help of a patent attorney. Failure to name the proper inventors may result in an invalid patent and other sanctions. Note
that it does not matter whether inventors are from differing business entities (in the case of a joint development, for example), proper inventors must be named. By default, each inventor owns the entire patent, and it can be difficult to make deals with potential licensees or other parties on the patent where all inventors are not acting in concert. Companies and other business entities typically require their employees and agents who are inventors to assign rights in the invention. An assignment of rights in the patent to the entity is typically prepared when the application is filed and signed by all named inventors. This document is perfected by recording it in the Assignment Branch of the U.S. Patent Office. In the rare case, where an underlying employee relationship and/or agreement exists, and an inventor refuses to sign the application and/or the assignment, appropriate petitions can be entered to permit the patent application to proceed Why not just call my concept a trade secret and not bother with a patent? A trade secret must be, and remain, a secret to be afforded protection. It is unusual today that a process or device will remain secret for long due to advanced reverse engineering techniques. In addition, if the secret is improperly divulged, remedies against the bad actor are generally limited, and the damage cannot be undone--as the information is now public. In some cases a trade secret may be appropriate where a concept is difficult to protect by patent, is available to only a few trusted individuals and not readily subject to reverse engineering. An example may be a software process that is used for internal operations only, or a closely guarded production process. Otherwise, a patent should be the preferred vehicle for maximizing the value of a development and the underlying business entity that owns it. Where a problem may arise is when the client wishes to maintain secrecy in some part of an otherwise patented concept. If the secret part is necessary to support the operation of the patent claims or reveals the best mode that the inventor knows for carrying out the claimed invention, then that secret MUST be disclosed in the patent application as full disclosure. This full disclosure is part of the deal the inventor makes with the government in return for his or her 20-year monopoly on the invention. By the way, what does “obvious” mean? It takes me a couple of years to get a new attorney to fully understand this term. Worse yet, the Supreme Court has just rewritten the definition a bit. The short answer is that if a person of ordinary skill in the art of the invention (e.g. a regular working engineer, technician, software developer) were to look at all the art currently available to him or her, would they have a motivation to combine bits and pieces of that art to create the same invention as in the patent claim. If so, then the patent claim is not patentable— rather it’s obvious. This is one of the biggest legal battlegrounds both during the prosecution of a pending patent before the Patent Office and in litigation over a granted patent.
So, in summary, if I am developing and/or have developed a new product, process or other patentable concept, what should I do? 1. MOST IMPORTANT! Be mindful of any upcoming public disclosure, offer for sale, publication or other non-restricted dissemination of the invention that may lead to a bar date and require anyone involved to sign an NDA before discussing the concept. Consult an attorney regarding an NDA. And if a public disclosure, or other bar-date trigger, has already occurred, then consult a patent attorney as soon as possible. 2. Keep an inventor’s notebook of concepts developed and sign, date and have a witness sign and date each notebook page. This is the best way to protect the concept as the date of conception is often the deciding factor in who gets a patent under the U.S. system. 3. Identify any co-inventors—even those outside the company/entity—and make sure that they are legally bound to assign rights to the appropriate entity. If not, then consult an attorney about ownership rights in the concept, and how to divide and/or secure them. 4. When the concept is sufficiently well-understood and developed that it can be practiced by a person of ordinary skill in the art upon appropriate explanation, contact a patent attorney on how to proceed. He or she may recommend a patentability search and other actions to appropriately secure rights in the invention. The more complete the write-up and supporting documentation (drawings, for example), generally the easier and lower-cost the project will be. Try to have the information well-organized before the meeting.
© 2007 by William A. Loginov All rights reserved