WHAT IS A PATENT?
© 1994, 1995, 1996, 1997, 1998, 1999, 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2007, 2008, 2009, 2010, 2011 Bruce E. Burdick, JD
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SPECIFICATION (see below)
An essential feature of a patent is its limited life. A patent cannot be renewed.
As required by the Constitution. Congress only has the right to grant patents for "limited times" and Congress has set the maximum life of a patent at 20 years (subject to payments of large maintenance fees) from the date of filing of the application for the patent, at the end of which the patent right expires. Since it takes about 2-3 years to process a patent application, the patent owner gets about 17 years during which he/she has a right to prevent others from making, using or selling the patented invention or require payment of a reasonable royalty and thereafter the public gets free use of the invention.
The patent is not enforceable until it is issued. But, once issued it can be retroactively enforced (subject to exceptions) from the date the patent application is officially published by the Government, which is usually about 18 months after filing, which is normally before the date the patent is officially “issued.”
The patent is only issued after an examination by an “Examiner” at the United States Patent and Trademark Office in Alexandria, Virginia and other formalities which generally take about two to four years. By law, the Government must give the patentee an extension if the Government spends more than 3 years processing the application, unless the delay is due to the applicant’.
After the patent expires (full 20 year period ends) or earlier lapses (is not maintained by payment of one of the three maintenance fees), the patentee no longer has the right to exclude anyone from making, using or selling the invention of the patent and the public has the benefit of the disclosure in the patent. It is for the benefit of (a) having free use of this disclosure after expiration, and (b) having the benefit of the disclosure as soon as it is published for purposes of trying to improve on the disclosed invention that the Government makes the trade of giving the inventor the period of exclusivity. So, one of the things the Examiner checks is whether the disclosure “enables” someone of ordinary skill in the field of the invention to make and use the invention. The law also requires the inventor to disclose the “best mode” of the invention, but current law has gutted this provision by prohibiting a challenge to the validity of a patent on this ground. Accordingly, this is an argument that defense attorneys make in many patent infringement cases. The reason it is so important to have a patent attorney prepare the patent application is to satisfy all these requirements and obtain a patent that can be enforced against infringers. It is pointless to disclose your invention in a patent publication without getting good protection in return.
As noted, the public benefits from the grant of a patent because the inventor must make a description ENABLING the public to make and use the invention and must describe the BEST MODE of the invention (known to the inventor at the time of filing the application) in the patent specification and drawings and patents are open to all when granted. Once the patent issues the knowledge set forth in the patent is available to everyone to see, however the patentee has the right to exclude others from making, using or selling the invention defined in the patent claims of the patent during the term of the patent in the USA. So, the patent claims are what is covered and that may or may not be identical to what is described in the other portions of the patent. So, for analyzing for infringement, we look primarily to the patent claims alone.
Why are these documents called "patents?"
The word "patent" means open, exposed, or evident. Our concepts of patents came from England and were first enacted by many of the 13 colonies and then written into our Constitution in much the form that the colony of New York had previously enacted them. In England, long before the American revolution, it was an established practice and part of the law for the King or Queen to grant special exclusive privileges or monopolies (“mono” meaning one) to favored people or organizations by means of "Letters Patent," which were the documents open to public inspection setting forth such grants. Such "Letters Patent" were granted, among other things, for limited times to inventors as a reward and incentive for new inventions within the realm. With passage of time, the phrase "Letters Patent" became shortened to the term patent, but both mean the same thing
OTHER FEATURES OF PATENTS
A patent is far more than simply a legal document. It is also a technical publication and sometimes almost a sales brochure. It is a technical document that contains a written description of the patented invention so that everyone interested in the field to which the patent pertains may learn how to make and use the invention by reading the patent. Issued patents provide a wealth of technical information for the public, often unavailable elsewhere. A patent is analogous to a sales brochure because it describes what was known before, commonly referred to as the "prior art," and then sets forth how the present invention is an improvement over the known state of the art.
The original patent document (a fancy copy with the gold seal and blue ribbon and the patent grant on the front) goes to the patent attorney, if any, and the patent attorney will usually give that document to the patent owner. Both formal copies (with ribbon and seal and grant page) and informal printed copies (without ribbon, sea or grant page) of the patent are available from the U.S. Patent and Trademark Office, which is a part of the Commerce Department which is part of the Executive Branch of the US Government. The mailing address of the office is Commissioner of Patents, Washington, D.C., 20231, but the current physical location of the office is 2001 Jefferson Davis Highway, Arlington, Virginia, in the Crystal City office complex just a few minutes from Washington's National Airport. New patents are issued each Tuesday in a book called the Official Gazette. Printed copies of the Official Gazette and copies of all patents are available from the United States Patent and Trademark Office. Libraries in several major cities throughout the country have complete collections of U.S. patents.
Internet access to patents: The full text of all patents issued since 1976, and images of all US patents ever issued (since the first patent in 1790) are available over the Internet at the official United States Patent and Trademark Office website search page http://www.uspto.gov/patft/index.html , in a massive database of nearly 4 terabytes, one of the world's largest online databases and certainly one of the most important, which serves as an amazing and incredibly useful historical record of the technological progress of the most technically advanced country in the world, with an enabling disclosure of each step along the way. In addition, Google maintains a searchable database of all issued patents at http://www.google.com/patents
THE VALUE OF PATENTS
all of which were patented, to realize that an essential cornerstone of the American success story is the framework for innovation provided by the patent system. The inventor is rewarded with the grant of the power to exclude and thus is encouraged to come forth with new developments while the public benefits because, through patents, knowledge of inventions is made available to everyone. Thomas Edison obtained 1093 patents and these patents formed the exclusive position upon which the General Electric Company was based. Donald Weder of Highland, Illinois has over 1100 patents related to the floral supply industry, and nearly every floral product made in the world is made under license from his foundation. Jerome Lemelson was an independent inventor who came up with a concept of putting markings on packages and reading them to control machines in a process he called “machine vision”, and his foundation has received over a billion dollars in royalty from this invention that is more commonly known as “bar coding.”
But the patent is only worth what the invention is worth. It is the invention described and claimed in a patent and the market for the products or processes based on that invention that determine the value of the patent and not vice versa. The reward to the patent owner is usually determined by the commercial importance of the patented invention. An inventor gets rich from a patent only if the invention will sell for a profit.
The benefits to the public from the patent system can be enormous. Besides stimulating inventions, patents provide the exclusivity necessary to attract capital and effort to develop inventions into commercial products and services. Patents for pioneer inventions often provide the foundation for entire new industries, such as the television industry. Even patents covering minor improvements of a product or process may have significant value if the improvement results in a product or process either strongly preferred over competing products or one that is less expensive to make or use.
How To Evaluate An Invention
Normally, evaluation of an invention is rather speculative. One important start is to try to look at the invention as unemotionally as possible, keeping in mind other alternatives (and there are almost always alternatives) that may be available to solve the same need. A patent search by a professional searcher and an opinion by a registered patent attorney of the search results are useful to objectively evaluate the patentability of the invention and locate alternatives previously patented. This opinion can often dispel over-enthusiasm of the inventor who is naturally excited about having coming up with something the inventor thinks is new and great.
A few tests can be applied to an invention (patented or not) to determine whether to seriously pursue it further. Careful study should be given to the
So, to determine the potential value of a patent, it is necessary to make a comprehensive business evaluation of the resulting product. Both a thorough Marketing Evaluation of the invention and a Business Plan for the business to which the invention relates are usually very important to commercial success, and are almost always required by investors. There are organizations that specialize in making objective evaluations of the marketability of an invention. For example, the World Innovation Network (also known as the “Innovation Institute”) at www.innovationinstitute.com provides a computer-based marketability analysis (“invention evaluation”) with personal review by a University of Southwestern Missouri business professor, for $175 (as of Jan. 2002) using their PIES software (which has been in use for over a decade). PatentCafe (www.patentcafe.com ) sells a reusable marketability software program called “Invention Assessment Program” for $69.95. These are two good ones, but there are many others.
Although the value of a patent depends primarily on the commercial importance of the invention or discovery, there are other important considerations.
The credibility associated with a discovery is a primary factor in attracting investors. A successful inventor acquires credibility in the same fashion as a successful painter or writer. When Thomas Edison brought an invention to a company for potential licensing, the company took notice. If John Doe came with the same invention, he would be treated with lots less respect. Obtaining a patent gives some credibility. However, in the absence of prior success, an inventor must still build credibility by proving the likelihood of commercial success of the product of his invention or discovery. For example, a certain amount of credibility may result from the completion of an operating model, since that shows the invention at least works. Usually, more credibility is gained with a production prototype, since that shows that the product can be made in production. A manufacturing plan or production quotes from a reliable manufacturer give credibility, by showing that the invention can be made commercially and what commercial production costs might be. A favorable marketing plan gives additional credibility by showing that marketing experts consider the invention should be a market success. A favorable sales history for patented product is usually the best indicator of commercial value since it shows the product has already been selling well. In other words, any step that concretely bridges the gap between a conceived idea and actual commercial exploitation tends to build credibility and the closer the product is to a going commercial success, the more likely a buyer is to be in the rights to the invention.
Timing is another element that affects the value of an invention. The public may not be ready for the invention (bar coding was invented and a patent applied for in the 1950s but was not widely used until nearly 1980, although there the inventor, Jerome Lemelson, was able to delay issuance of patents for nearly 23 years and became rich from royalties.) The law has now changed to prevent that by making the term of a patent date from its filing rather than when it issues. The life of utility and plant patents in the United States is 20 years from filing of the application for the patent, and it is effective starting with the date of issuance, although once issued it may (if voluntarily published after Nov. 29, 2000) be enforceable back to an earlier date of official publication by the Patent Office. At the end of that 20 year period (or earlier if maintenance fees are not paid), patent rights in the invention end. Usually, the invention can thereafter be freely used or worked by anyone, unless covered by another patent or other rights. A variety of economic production, and management factors may come into play to take the period of patent protection away from the period when an invention is commercially important. For example, the marketing period for a faddish toy is often short-lived and may have passed even before a patent is granted. In those industries where change is expensive and time consuming, e.g., the pharmaceutical industry or assembly line productions, actual approvals for production, development of production lines and development of a sales network may take a period that is longer than the life of a patent. Thus, the value of a patent can be greatly influenced by the patterns for change that exist for specific products and industries.
Unfortunately, many inventors often grossly underestimate the cost and difficulty of commercializing their inventions and overestimate market size and the chances of purchaser acceptance.
WHAT A PATENT IS NOT
NOT AUTOMATIC (It must be applied for)
The Government issues patents. The Government does not know you have an invention until you tell it. The Government does not know you want a patent until you file a patent application. The Government has to protect the public by NOT granting patents to applicants for inventions that are in the public domain or that someone else made, and that requires the Government to examine patent applications thoroughly before issuing patents. So, patents do not come automatically. The inventor must apply for a patent and the inventor must prove to the Government that the inventor is entitled to a patent. And, starting March 16, 2013, the first inventor to file an application for the invention will be awarded the patent if the invention meets all other criteria for a patent, even if someone else invented it earlier. So filing quickly is important, and may be crucial to protecting the invention.
NOT A PERMIT OR LICENSE. (It is a right to stop others not a permission for you.)
A patent is like a fence around a lot, the lot being the "patented invention." Someone else could have a bigger fence surrounding your fence which prevents you from getting to your fenced lot or the Government could, under appropriate conditions, stop you from getting to your fenced lot or could tear your fence down. That is, someone else could have a broader patent that blocks a patentee from making, using or selling the patented invention. Or, there could be a regulation preventing its use. What is granted is strictly the negative legal right to exclude others, to keep them out. For example, new drugs are patented all the time, but FDA approval is required before these patented drugs can be marketed in the US.
NOT SELF-ENFORCING. (There are no “patent police”. You and your attorneys enforce it.)
The government will not take any positive action on behalf of the patent owner. A PATENT simply grants the right to exclude and leaves it to the patent owner to enforce the right- - - if he can. For this reason, a patent is sometimes called "a mere license to sue." The government's role in case of a suit is to allow the patent owner to use the federal judicial system where suits can be brought and judgments obtained and orders for enforcement made. People, including big and small companies, are often deterred by the existence of a patent and the potential for legal problems if they infringe a patent, but they may think they can design around the patent and achieve the same objectives as the patent. If the patent is written well, it will be a much better deterrent, so the extra price paid to hire a good patent attorney is generally a good investment. For more information on patent enforcement, see http://www.members.tripod.com/burdicklawfirm/websueme.htm .
NOT NECESSARILY WORTH ANYTHING. (We discussed that above.)
Since a patent simply grants the right to exclude, its value rests entirely upon the utility of the invention and the desire of others to use it or to be in possession of the right to exclude. That is, someone might want to buy the patent from its owner. A patent is simply a document and not an invention. The invention is that which is described and claimed in the patent. It is also important to note that a patent may describe an additional invention or inventions beyond what is covered by the claims of the patent. Inventions which are disclosed in a patent but not claimed are, by law, dedicated by the patent owner to the public, so the disclosure must be carefully written. For a patent worth assessment, one can check http://www.2xfr.com/patentvalue_about.asp .
NOT A TRADEMARK OR COPYRIGHT.
Patents relate to inventions, while trademarks relate to brand names and copyrights to artistic creations. The United States Patent and Trademark Office handles both patents applications and trademark applications. The Copyright Office (http://www.copyright.gov )handles copyright applications are handled by, which is a division of the Library of Congress. States can (and do) grant state trademark registrations, but only the Federal government can issue patents grants or copyright registrations.
Now, back to Patents....
A patent cannot be kept secret, but a patent application or "patent pending" is kept confidential by the United States Patent and Trademark Office for at least 18 months after it is first filed. An essential aspect of obtaining a patent is that a full and complete "enabling" disclosure of the "best mode" of the invention is made so that others may practice the invention when the patent expires (absent some superior right in others). The only secrecy in the patent system is that, by law, the application for patent is maintained in secrecy by the Patent and Trademark Office for 18 months following the date it is first filed as a patent application. Remember, the word “patent” means open to public view. The day the patent issues, copies are made available to anyone who wants them (paper copies for a modest price and electronic copies for free). So a patented invention cannot be suppressed or kept secret and any contrary belief is simply a misconception. There are situations where the Department of Defense, which has the option of reviewing new patent applications and placing a “secrecy order” on them preventing publication of the application or issuance of a patent, but those are very rare and any inventor receiving a secrecy order should immediately contact a patent attorney experienced in handling military classified patent applications, as the inventor is generally entitled to compensation from the Government. The most a patent owner can do in keeping the invention off the market is fail to commercialize the invention himself or refuse to allow others to do it by refusing to grant licenses and by patent infringement actions against any infringers. Thus an inventor comes to a legal fork in the road and must either choose to keep the invention secret and NOT patent it or to patent it knowing that it will be publicly disclosed in the patent. In other words, inventions, may be suppressed by keeping them out of use and secret, but patents are public documents that can neither be kept secret nor suppressed.
A patent cannot be enforced outside the country or region that granted it. A U.S. patent can only be enforced in the US, including U.S. territories and possessions. A U.S. patent is not a Canadian patent, a Japanese patent, or a European patent, so it cannot be enforced in Canada, Japan, Europe or in any other foreign country. To do that patents must be obtained in those countries or regions, and this is often done by use of an “International Patent Application” (under the Patent Cooperation Treaty, which virtually all countries follow.). However, the importation of products from abroad which infringe a U. S. patent may be stopped (the US Customs Service will even help) and the infringer may be sued here and any US seller may be sued here. But, a US patent can be the basis for a foreign patent if timely foreign application is filed. The United States has ratified several teaties which provide significant advantages for those wishing to seek foreign patent protection, based on a patent application filed in this country. The details and provisions of such treaties are beyond the scope of this brochure but can be explained by a registered patent lawyer. Suffice it to say that securing foreign patent protection can be very expensive. Even so, foreign patent protection must be considered early since foreign patent laws generally place much more emphasis on early filing. Due to the expense, foreign patent protection may not be worthwhile unless a market for the patented invention abroad is important to the patent owner. Note:There is an "international patent" which can be obtained through a special application filed at the US Patent Office and which can be made effective in both the US and nearly all major countries under the Patent Cooperation Treaty or "PCT." A registered patent attorney should be consulted before attempting to file a PCT application so that it is done properly, as otherwise all rights could be lost world-wide, leaving absolutely no protection anywhere.
The grant of a patent does not provide any assurance that practice of the patented invention will not infringe a patent owned by another.
Example: Mary invents and patents the wheel. John invents and patents a special wheel for a cart, a cartwheel. Who can make the cartwheel. John can't, even though he invented the cartwheel, because a cartwheel is a wheel and Mary has a patent on the wheel. Mary can't because John has a patent on cartwheels. (The solution is a "patent license" from one or both to the other or for one to sell a patent to the other or for them to join forces.) So…if this is true…why get a patent? Suppose John never patented the cartwheel. Now he can't do cartwheels because of Mary's wheel patent. But, Mary can do cartwheels because John did not protect cartwheels with a patent and thus has no right to stop her. Mary does cartwheels and John cries because he did not get a patent.
WHAT IS PATENTABLE?
Not every invention is patentable in the United States.
First the invention must be of proper subject matter. Generally “anything under the sun made by a person” is proper subject for a patent. More precisely, an invention must fall within one or more of the following categories. Patents are granted for new, non-obvious, useful inventions or discoveries of:
I . Processes,
3 . Manufactures,
4. Compositions of matter,
S. New uses of known processes, machines, manufactures or compositions of matter,
6. Improvements in any of the above,
7. Asexually reproduced plants, and
8. Designs (Design patents last 14 years and are for ornamental designs for an article of manufacture.)
In general, the Patent and Trademark Office is liberal in the subject matter of patents and in claim terminology it will accept, provided the invention is man-made, is of commercial value and the claims are presented in a definite fashion so that readers of the patent can tell what infringes and what does not infringe a given claim. For example, over the years patents have been granted on: automobile parking structures, drive-in theaters, slot machines, a host of computer applications, useful gene fragments, genetically altered organisms and recently even methods of doing business. The Supreme Court has even said that "anything under the sun created by man" is proper subject matter for a patent.
Perhaps a better notion is to list the things that are not patentable. Unpatentable subject matter includes: business forms, perpetual motion machines, promotional advertising schemes, intended results or desired goals, functions (without aPUPAratus), nebulous concepts or ideas, mathematical formulas, and laws of nature (as distinguished from applications of such laws). Basically, desired functions or problems are not patentable. It is the specific thing that solves the problem or the specific method that performs the function that can be patented, not the goal or result.
Regardless of the type of invention for which a patent is sought, there are three general requirements for patentability which are critically important. A patentable invention must be new, useful and UNOBVIOUS. The new and useful requirements are easily understood and fairly easily met. An invention does not have to be better to be useful, it simply needs to have a use. New just means it is not identical to something done before. However, the non-obviousness requirement is more difficult. The section of the statute involved (35 U.S. C. § 103) states it this way:
"A patent may not be obtained ... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
To determine the "obviousness" of a discovery, one must first identify the prior art. Locating the most pertinent prior art is not easy in view of widespread technological activity around the world. The increasing publication of patents on the internet has made it much easier for the public to access this information, but as a practical matter, one can still never be positively certain of having located the most pertinent prior art in view of the abundance of technical knowledge and publications. However, any determination of patentability must be based upon some known prior art garnered from whatever sources the determiner uses. With the known prior art in mind, patentability is determined by asking whether or not the invention would have been obvious to a person of ordinary skill in the field, who is aware of that prior art. To be patentable, an invention must differ from the prior art in a way that is not just an obvious change or addition. In considering the question, people may disagree on the abilities expected of the fictitious "PHOSITRA” (Person Having Ordinary Skill In The Relevant Art) or on the content of the prior art, or on the conclusion that the imaginary PHOSITRA would reach. Any such disagreement is likely to result in a disagreement on the patentability of the invention in question. It remains an open question until decided by the court of last resort and, even then, if new prior art is found to be closer than the previously considered prior art a settled conclusion of nonbviousness may become unsettled.
Other general requirements for patentability are that the invention must not be frivolous or contrary to public policy or to the public welfare. This is, in the first case, to deter inventors from filing for patents just to get a patent certificate on something so silly or petty as to not be worth the effort the Patent Office must spend to examine and process it, although every doubt will be resolved in favor of the inventor as an invention's worth is often so speculative anyway. In the second case, the Patent Office is a branch of public Government and thus sometimes will refuse to issue a patent that is contrary to public policy (for example, an improved aPUPAratus used only for snorting cocaine or a device useful only to prevent being caught when committing rape.)
WHO MAY OBTAIN A PATENT?
Until March 16, 2013, only the first and original inventors (or those asserting such an inventor's rights) can properly obtain a U.S. patent. A person who merely recognizes the commercial merits of an existing product, or who discovers it in an ancient document or in a foreign country may not properly receive a patent; he must have invented it himself. Until March 16, 2013, a corporation or business organization may not pursue patent protection on a development independently of the inventor. However, it is common practice for employed inventors to assign patent rights to their employers. Many employers make assignment a condition of employment. After March 16, 2013, a company having such an assignment can file an application on the invention even if the inventor refuses to sign or participate in the patent application.
The law provides for joint inventors if two or more inventors together made the invention. Problems may arise in this situation but the problems can usually be solved. Specifically, unless there is an agreement or assignment of the patent to one of the inventors or to a third party, in the US, each inventor has the right to exploit the invention with no duty to account to the other inventor or inventors for his actions. (Note: This is not true in many foreign countries.) In the US this is true regardless of the percentage of the patent any one joint inventor may own. Moreover, none of the joint inventors has the right to exclude the others from practicing the patented invention due to the power of the other joint inventor or inventors to use the invention and grant licenses to others. Clearly then, the rights and obligations of joint inventors should be defined by an agreement or the patent should be assigned to a single entity.
Who's on first, What's on second? Occasionally, it happens that two or more independent inventors come up with the same invention at about the same time. So, who gets the patent? In foreign countries the first one to apply for the patent gets the patent. Starting March 16, 2012, the US will adopt that approach. Until then, however, in the US, it is more complex. The Patent and Trademark Office has two mechanisms to resolve the issue, one of which is a very expensive and complex administrative proceeding at the US Patent and Trademark Office called an "interference" proceeding. These proceedings are best handled by patent attorneys experienced in such proceedings. In such a proceeding the question of who is the first, true and original inventor is determined, for only that inventor (or group of inventors) may obtain the patent. In the US, only until March 16, 2013, it is not necessarily the inventor who first filed a patent application who obtains the patent. (It should be noted here that in all foreign countries, the first inventor(s) to file DO get the patent. The USA was the last country to allow later filers to prove they are the first inventor, and will no longer do so after March 16, 2013.) While the first applicant has a distinct advantage in these complex interference proceedings, he may lose out to another inventor who has records that prove him to be the earlier inventor, diligent in his development effort. Determining the winner of an interference involves resolution of complex factual and legal issues. For present purposes, suffice it to say that witnessed records covering the development of an invention are important, as is diligent activity and an early filing date for the patent application. After March 16, 2013, it will still be possible to show that an earlier filer derived the invention from a later filer and get the patent removed from the earlier filer and awarded to the actual inventor instead. This will be an equally complex and expensive proceeding and will require thorough records showing the derivation, which may not usually be available. This brings up the importance of timing in obtaining a patent, particularly if foreign coverage will be desired.
WHEN MAY ONE APPLY FOR A PATENT?
Time is important both as it relates to the activities of the inventor and the discoveries of others. Considering the possible history in the discovery of the wheel and cart may help explain some of the time limits for patentability.
Initially, the first inventor of the wheel may have merely recognized the problems associated with moving large loads on rolling logs (the prior art). With only the recognition of the need for a better structure, a patent application would not yet be timely; a patentable invention had not yet been made.
A patent application is not proper until a working form of an invention has been fully conceived.
At a time when the complete invention is mentally pictured, that is, fully thought of in an operative form, the inventor may properly pursue patent protection. It is only then that a patent application can be filed with an enabling disclosure as required by law.
Until March 16, 2013, a US patent application must be filed within one year after the invention first is described in any publication, placed on sale, sold, or used publicly. Starting March 16, 2013 tha application must be filed before any third party disclosure of the invention and within one year of any disclosure by the applicant herself.
Continuing with the wheel and cart example, quite independently of any effort to obtain patent protection on the wheel, the inventor Mary might have published a description of her invention or she may have built a wheeled wagon and gone into the moving business. Such activities would raise another question of timing. The US rule is based on the philosophy that the inventor abandons his patent rights if he does not file a proper patent application within one year from (or, starting March 16, 2013, before) disclosure or commercial activity with respect to the invention or discovery. Typical of most areas of law, there are exceptions to the rule, as in the case of legitimate experimental use to perfect or develop the invention.
Any publication or public use of an invention that takes place before the filing of an application in the United States may block the inventor from obtaining a valid patent in foreign countries (and starting 3/16/2013 in the US).
Most foreign countries do not provide the one-year period of grace we have in the United States. Starting 3/16/2013 that grace period in the US will only apply to disclosures by the applicant (or someone who derived the invention from the applicant) and NOT to disclosures by anyone else independent of the applicant.
An inventor may keep his invention secret for a long time and still obtain a patent. However, a long delay in applying for a patent may result in the loss of all patent rights, which may go to a second independent inventor who acts more promptly, and this will be even more true after 3/16/2003 when the US switches to the “first to file” system.
An invention that is suppressed or concealed will not be prior art against a later applicant, unless that invention is used commercially. The system is designed to encourage use and disclosure and thus punishes a non-using concealer as against a later discloser. A careful record of use of an undisclosed invention and an inventor's efforts to prepare an invention for disclosure will certainly help avoid a finding that the inventor abandoned, suppressed or concealed the invention.
So, it generally is wise to keep careful records of the invention and its development and use, and efforts to prepare it for public disclosure which should be signed by a witness, and to file an application for a patent at the earliest practical time, preferably before any public description, or commercial development or public use of the invention. The relatively new "provisional patent application" makes it easier to complete a prompt filing.
HOW TO OBTAIN A PATENT
The steps involved in obtaining a patent normally include:
The inventor may, if very lucky, obtain a "patent" without the assistance of a patent lawyer or agent if she wishes. However, this is almost invariably an unwise course of action. Patent law and procedure are complex and valuable legal rights can easily be lost if the patent application and prosecution of that application are not handled carefully and precisely by one skilled in such matters. The law does not prevent an inventor from being foolish and trying to cut corners and patent it yourself. There is even a book out by the name “Patent-It-Yourself”, although that book strongly recommends you use a patent attorney. Companies that file lots of patent applications use patent attorneys for a reason. The reason is similar to the reason you go to a specialized surgeon if you need specialized surgery. You almost certainly will get a better patent if it is done by a patent attorney experienced in the preparation of good patent applications. It is also helpful if the patent attorney has experience in litigating patents to know what things Courts and juries like to see in a patent application when considering whether to enforce it or not.
The inventor should be very, very leery of invention promotion companies who are not patent attorneys, as these are quite often scam artists who prey on under informed inventors. There are lists available of those companies that have been indicted, forced into settlements, barred from doing business, or otherwise been found by inventor protection groups to be of questionable integrity. One such list is available over the internet at the InventorEd.org site. Inventors want to hear how great their invention is, when often what they most need to hear is a voice of reason calmly relaying the sobering truth about the invention's shortcomings. Also, most large companies know of the scam invention promoters and think much less of an inventor and an invention that is associated with a scam invention promoter. If the invention promoter cannot be honest with the inventor, there is generally no logical reason for a company official to trust the promoter to be honest with the company, so the company will usually just ignore any invention presented to it by a known or suspected scam promoter..
If an invention is worth protecting, it is normally worth protecting right, and that is best done by a registered patent attorney or patent agent, since they are required to pass an examination given by the United States Patent and Trademark Office demonstrating their knowledge of patent law and procedures. The United States Patent and Trademark Office exams patent agents and patent attorneys due to the high importance the Government places on new ideas and on the need to try to assure that inventors have competent help available to try to secure the best protection for inventions. Patent lawyers and patent agents who are registered to practice before the U.S. Patent and Trademark Office may prepare, file and prosecute patent applications. Patent agents are not lawyers and cannot provide legal advice and assistance beyond preparing and prosecuting patent applications. In order to be registered, patent lawyers and agents must take and pass a special separate "Patent Bar Examination" given by the United States Patent and Trademark Office. Patent attorneys have the extra capability of negotiating for license, of litigating infringement claims, of preparing and advising on contracts and of preparing trademark applications related to the brand names used in association with any patented invention, and thus often can give more complete advice and representation. It is generally better to go to a patent attorney to prepare your patent application, because you then have someone available who is familiar with your invention and thus in a better position to help you enforce the claims of the patent against infringement.
A roster of patent lawyers and agents registered to practice before the U.S. Patent and Trademark Office, listing the individuals alphabetically, is available at a nominal cost from the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402 or via the Internet at http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html#attorney_agent_search .
The major cost of obtaining a patent is the lawyer's charges in preparing it properly and convincing the patent examiner to allow meaningful coverage. For a list of typical US patent attorney fees, see the typical fee schedule at http://www.members.tripod.com/burdicklawfirm/usipfees.htm .
Ordinarily attorney fees will be based upon the amount of lawyer time involved in preparing and in prosecuting the application. Different patent lawyers charge different fees. Some lawyers may consent to preparing a patent application for a flat fee after they sufficiently understand what the invention is and basically how much time and effort and expertise the preparation of the application will entail. In any case, an inventor should not be hesitant about asking the lawyer what the total fees in obtaining the patent are likely to be if the patent is prosecuted through the Patent and Trademark Office in a fairly routine way. The patent attorney will also advise the inventor of problems that could arise in the Patent and Trademark Office prosecution which could necessitate significantly greater costs, such as an responses to rejection, appeal or an interference. The inventor should keep in mind that there is a significant issue fee (about $700) payable once the application is allowed and before it will be granted, that fee basically covering the Government’s cost in printing hundreds of copies of the patent, posting it on the internet, and entering it in all the various official lists of patents. Also, once the patent issues, there are three increasingly large “maintenance fees” to pay 3.5 years(about $500), 7.5 years(about $1000) and 11.5 years (about $1500), respectively after the patent issues. The patent attorney will charge a modest amount to process the payment of those fees.
SUGGESTED STEPS FOR INVENTORS TO TAKE IN PROTECTING THEIR INVENTION
STEP 1: PREPARE A DISCLOSURE OF THE INVENTION
Lawyers charge for their time, except sometimes for initial consultations when the lawyers are determining whether to take your case, and patent lawyers are no exception. Therefore, an inventor can save a great deal of time and money by making the lawyer's job easier. A few hours spent by the inventor at the start may result in hundreds of dollars of savings and a better application in the end.
It is relatively easy for the typical inventor to organize the inventor's materials, and the inventor can help the patent lawyer by preparing a written description, drawings, and perhaps a model, if practical. At a minimum, the disclosure should include a description of the problem that the invention solves, previous ways of solving the same problem (if any), all known relevant prior art inventions, a description of how the invention solves the problem and a detailed description of the best mode of practicing the invention. If there are some likely alternative embodiments of the invention, those should be described also. The inventor does not have to detail each and every remotely possible embodiment, but describing alternatives or modifications helps the lawyer to draft claims more broadly to provide better protection for the invention.
The disclosure should be clear.
It is not necessary that it be typewritten or that there be drawings, but both certainly help. A legible, carefully handwritten disclosure is adequate. Sketches or drawings are quite useful and can reduce the amount of description needed.
A good disclosure is not necessarily long.
If the inventor isn't sure whether something should be included in the disclosure, the inventor should put it in and let the patent lawyer decide whether or not to make it part of the patent application. If the inventor has relevant prior art documents, copies of these should be provided to the patent lawyer along with a description of their possible relevance to the new invention. Drawings prepared by the inventor should be clear and sufficiently detailed.
It is good practice for the inventor to number the various parts of the invention in the drawings and to refer to those numbers in the written disclosure.
This is what will be ultimately required in the patent application, so by doing this the inventor may reduce the time the attorney needs to do the reference numbers in the application. It will also minimize the time the attorney needs to figure out what parts are what. If alternative embodiments of the invention are described in the disclosure, then drawings should be submitted illustrating them. One good clear method of numbering is to start with 100-199 as the items in Fig.1, 200-299 as the number of any new items in Fig.2, 300-399 for any new items in Fig. 3, etc. so that by looking at any reference number the reader can determine which Figure to check to see where that item was first shown. The same part should keep the same number throughout the drawings Another method in common use is to use even numbers starting with a number higher than the number of Figures (to avoid confusion with Figure numbers) and to allow room to add odd numbers if additional numbers are needed later.
Above all, conceal nothing from your lawyer.
You can only lose by keeping secrets from your patent attorney, who is required by law to keep everything you tell him secret. Your lawyer is very, very unlikely to even consider stealing your invention. That would likely end the lawyer's lucrative career and chance getting the lawyer disbarred. Attorneys are not going to risk their career to steal your invention, even in the unlikely event they think it is the greatest thing they have ever seen. Concealing facts from your lawyer may get you both in trouble and may result in your patent attorney unknowingly getting you an invalid or unenforceable patent at your expense. How can the patent attorney disclose the “best mode” if you hide it from him or her? If a model of the invention exists, it should be shown to the patent lawyer. If prior art is known, you MUST tell your lawyer about it and your lawyer MUST tell the United States Patent and Trademark Office. Anything less is a fraud that, if serious enough, could invalidate your entire patent. If you did not invent the invention yourself, tell your patent lawyer so he can determine what, if anything, you did invent and whether negotiations are needed with a co-inventor. If no drawings exist, photographs may sometimes be used, and your patent lawyer will normally have a patent draftsman available to make drawings according to the special standards required by the United States Patent and Trademark Office.
STEP 2. - CONDUCT A PATENTABILITY SEARCH
A professional patent search will almost always save the inventor more money than it costs. What does a patentability search cost? A cost of $600-$1,500 is typical for a professional patentability search and opinion. For most individual inventors with fairly simple inventions, the cost of a professional search with opinion is around $600.00, of which about half is for the search and half for legal work associated with reviewing the invention and advising on the likely scope of coverage. If a formal opinion is not required, the cost can sometimes be lowered by about 1/3 to $400-1000. For more details, see my article on Patent Searching at http://burdlaw.com/patsrch.htm .
If a search reveals that the invention is not patentable, then the cost of filing an application will be saved. If the search reveals that the invention may be patentable, the search results allow the patent attorney to prepare a more effective application and that will usually save money during the examination process at the patent office. Finally, the search will usually tell how other inventors have attempted to solve the same problem and may give ideas for making a more competitive product.
For many years, the most accessible and complete library of prior art has been housed in the U.S. Patent and Trademark Office. The public is admitted to this library or "search room"; however, it is used primarily by professionals such as professional searcher. Patent lawyers not in the Washington, D.C. area invariably have Washington, D.C. associates who make various types of patent searches and who obtain other types of information from the Patent and Trademark Office. Increasingly, databases are becoming available by computer that are becoming better and better at locating prior art. The Patent Examiners who will examine your patent application will use computer searching using very sophisticated databases and software and computers with dual monitors and other special features rather than hard copy searching. Increasingly, computerized searching is improving and is now to the point that in the hands of a skilled patent searcher, it is nearly as good as hard copy searching.
The full images of all pages of all patents ever issued by the United States of America since the first one in 1790 are now available on-line at www.google.com/patents. The inventor can and should do a quick search using the Google patent search tool as a preliminary screening step. If the inventor locates the invention or a commercially equivalent invention patented by someone else it may be a waste of time to pursue the invention further, and doing so may result in infringement. A patent attorney can advise on these matters.
NOTE: Before proceeding to step 3, the inventor should discuss the search results with a patent attorney to determine if there is sufficient patentability to proceed to step 3. The inventor should prepare a business plan to see if the sale of this item is really feasible before committing to a major expense like the preparation of a good patent application. The Small Business Administration has materials that are very useful to inventors in helping prepare such a business plan. See the information at http://www.sba.gov/starting/indexbusplans.html . A Provisional Patent Application may decrease up-front costs, and should be considered. See the discussion below in this article. The services of a patent attorney are usually critical to success.
STEP 3. - DRAFT AND FILE THE PATENT APPLICATION
USE A PATENT ATTORNEY , as this is the critical step in your process and is not the place to cut corners.
A patent application is the document filed in the Patent and Trademark Office for the purpose of obtaining a patent. It is sometimes said to be the single most difficult legal instrument to write, since it requires both technical expertise and extremely specialized legal knowledge to write a top-notch patent application, and often a single word in the application can be the difference between a valid and invalid patent and between broad coverage and narrow coverage. Just as one telling example, if a do-it-yourself applicant uses the word “consisting” instead of the word “comprising” the scope of the patent coverage will be much less, but the difference in those two words is one that even a newly registered patent attorney will understand. Likewise, knowing the difference between the use of “in the invention” and “in an exemplary embodiment” in the description and the significance of the terms and when to use them is extremely important to obtaining broad scope. Knowing the legal significance of the words “means for”, which have been heavily litigated is often critical to obtaining the broadest protection. Knowing the holdings of recent Federal Circuit and Supreme Courts on claim terminology and claim interpretations is very important. Knowing how patent drawings need to appear and what needs to be in them and what should not be in them is very important and making sure they do not conflict with anything in the written description and have consistent and proper numbering of parts and terminology can be crucial. Knowing the significance of the “written description” requirements, the difference between “elements” and “limitations”, the difference between “abstract” and “summary”, and many similar nuances that are critical to success is something few inventors know. Since there are significant limitations on making changes in the application after it is filed in the Patent and Trademark Office (for example, there is a strict rule against "new matter") it should be prepared with utmost care. Both the inventor and attorney have legal obligations to insure that the various parts of the application are correct and, to the best of their knowledge, are not misleading. This is like brain surgery where you would not think of doing it yourself but would look to a brain surgeon, and here to a patent attorney to protect the product of your brain.
It is not necessary to construct a working model.
Since the application must describe the invention in such a complete way that one of ordinary skill in the relevant technical field would be able to make and use the invention, models are no longer required or even desired by the United States Patent and Trademark Office. There are nearly 400,000 patent applications filed each year and there is simply no way that so many patent models could be stored.
The description must be "enabling."
Because of this, effective preparation of that document is a demanding project requiring full knowledge of a completely conceived invention. It is not enough to describe a problem, since that does not describe the solution. The solution must be described and will be what the patent, if properly written, seeks to broadly cover. The description must be at the same time both very detailed and yet not limiting. Doing that takes experience.
The patent application must disclose the best mode contemplated by the inventor for practicing the invention.
Concealing the best mode may invalidate the claims of the patent, and yet is something inventors sometimes foolishly attempt to do. Although the use of a failure to disclose the “best mode” as grounds to invalidate a patent has been prohibited by the current patent law, this provision of the new law has not been tested in the Courts and there are many, including the author of this article, that think such a provision may be held unconstitutional and be repealed.
There is a duty to disclose all knowledge of pertinent prior art.
Concealing known prior art relevant to the claimed invention may be considered fraud on the United States Patent and Trademark Office if disclosure would have invalidated the affected patent claims. That is because, as part of the application, the inventor must sign an oath or declaration stating he has revealed all known pertinent information as required by Rule 56 of the Patent Office Rules of Procedure.
NOTE: The patent application provides the foundation for defining the proper scope of patent protection that is to be granted. If it is not written well, the patent coverage may be of narrow scope and little value.
The main parts of an application are:
Usually, the most effective patent application results from a joint effort between an inventor and his patent lawyer.
It is possible for a person to prepare and file a patent application on his own without a lawyer, just as it is possible for an accused murderer to try to defend himself in a capital murder case. Both are extremely foolish to do. When a lawyer working with the inventor prepares an application, there should be total communication. Specifically, it is important that the inventor give the lawyer all the relevant information for the job. The preparation of a patent application compares to making a cake. Considerable assistance can be given to a cook by premeasuring the ingredients, laying out the tools, and preparing the oven; but usually it is best for the cook to mix the ingredients, check the oven and place the proper decorations. Somewhat similarly, in the preparation of a patent application, the inventor should provide the information but allow the lawyer to compose and draft the complex document. Drawings, photographs, written material, and oral discussions all may be helpful to educate the lawyer, depending on individual circumstances. Patent applications on complex subject matter normally should include at least one meeting between inventor and lawyer. After a draft of the application is prepared, the lawyer requests the inventor to review it carefully to determine if there are corrections or changes to be made before it is placed in its final form for execution and filing in the Patent and Trademark Office.
The formal papers (petition, oath or declaration, power of attorney) are prepared for the inventor's signature, or execution.
The complete application signed by the inventor is then sent or delivered to the Patent and Trademark Office along with the appropriate filing fee. Once the application is on file, the invention, if marketed, may be marked with the notice "patent pending, " although the right to prohibit use of the invention by others does not mature until the patent is granted. Use of that notice before filing is illegal.
PROVISIONAL UTILITY PATENT APPLICATIONS
In 1995, the patent laws were changed to provide for the filing of a special simpler, lower cost, TEMPORARY form of patent application called a "provisional patent application." Provisional patent applications must have a specification but do not have to have claims , are not published, and are not examined for obviousness over the prior art.
A provisional utility patent application (PUPA) lasts only one year, is not published, is not examined, does not count as part of the 20 year term of a patent and cannot be infringed. A PUPA allows use of the designation “patent pending” in association with the invention disclosed in the PUPA. A PUPA can be, but never is, converted into a regular patent application. Instead, a PUPA provides a patent disclosure having a filing date upon which a formal patent application (a “regular” or “utility” patent application) can be based. The PUPA preserves an applicant’s filing date for purposes of priority but do not begin the 20 year term of life.. This form of patent application was intended to offset an advantage foreign inventors previously enjoyed due to the simpler forms of patent application required in foreign countries, the absolute novelty requirements in most foreign countries and the rule in most foreign countries that the first inventor to file a patent application is, as a matter of law, the “first” inventor. In view of the high level of the written description required in US patent applications, foreign applicants had what was perceived to be an unfair advantage, and the PUPA was enacted to give a shorter, easier, quicker way to file a patent application and obtain a filing date. There are advantages and risks in using provisional patent applications, particularly in regard to foreign rights and adequacy of disclosure. If one does not fully understand both provisional patent applications and utility patent applications (since the PUPA will be the basis for a UPA), it is best to consult a patent attorney before filing a PUPA.
STEP 4. - PROSECUTION OF THE PATENT APPLICATION
Receipt by the United States Patent and Trademark Office.
Patent applications filed in the Patent and Trademark Office are given serial numbers in chronological sequence. The filing date is also part of the identification for an application. That date is very important, since the filing date of a Provisional or Utility Patent Application determines priority of invention as against prior art and as against other applicants. The filing date of a Utility Patent Application determines the start 20 year life of the patent and will be considered the date of invention unless otherwise proven..
Assigned to a Patent Examiner.
Within the United States Patent and Trademark Office , patent applications are assigned to examiners with specialized technical expertise. The examination of applications normally occurs in the order in which they are received by the examiner, although specialized processing may be obtained under special circumstances, such as an inventor that is over a certain age or where there is active infringement occuring. Every effort is made by the Office to attain a uniform and fair treatment of patent applications; however, communications with the Office must meet certain standards and formalities. Since November 2000, the United States Patent and Trademark Office has time deadlines under which it must act and the patent term is adjusted to reflect any failure of the United States Patent and Trademark Office to meet such deadlines.
US Patent Examiners follow a MANUAL OF PATENT EXAMINING PROCEDURE. In a typical case, the patent examiner first reviews the patent application for compliance with formal requirements. Then he considers the invention as claimed. With an understanding of the claimed invention, the Patent Examiner researches earlier patents and publications (the prior art) to determine whether the claims of the patent application define subject matter that is patentable over the prior art. Traditionally, examiners are conservative, if not skeptical, in recognizing patentable subject matter. After determining his position, the examiner prepares a report or Examiner's Action, stating his position for communication to the patent applicant. The law specifies that this action is to be provided within 14 months of the filing date of the Utility Patent Application. Usually, few if any claims are allowed in the first Office Action.
If the applicant has a patent lawyer, the Office Action is mailed directly, and only, to the lawyer. The patent attorney will then have 3 months to respond to the examiner's position and will invariably contact the inventor to discuss whether a response is to be made and arrange for payment of any fees for such preparation. For example, the inventor may be asked to review the prior art cited by the examiner and express his resulting opinions. The applicant is given a time period for responding to the Office Action. The response might take the form of an argument seeking to change the examiner's position, with or with out an amendment modifying the claims of the patent application. Recent Court cases make any “narrowing” of the claims very dangerous to future enforceability of the patent. If the inventor did not use a patent attorney, this will usually be the point where the foolishness of that decision will become all too real and apparent to the inventor. Unless the inventor has a great deal of experience with patents, there is just no way the inventor can adequately prepare a response to an Official rejection from the United States Patent and Trademark Office, and any inventor who represents himself at this stage normally has a fool for a client.
After receiving the applicant’s response to her Office Action, the examiner again considers the case and reviews her position. Although the matter may not be concluded at that stage, there are usually no more than two or three actions and responses before the question of patentability of the claims is resolved. The second Office Action is usually made “final”, which means the applicant must either comply with any requirements made by the Examiner or in the next response convince the Examiner she is wrong. The examiner may determine that the application simply is not directed to a patentable invention. Alternatively, she may recognize the existence of a patentable invention and agree with the form and scope of the claims. A greater possibility is that the examiner concedes the invention to be patentable but disagrees with the lawyer on the scope of the claims that should be granted. Failing an agreement, an administrative appeal can be pursued before a Board of Patent Appeals and Interferences comprised of 3 experienced patent examiners called Administrative Judges. However, frequently agreement is reached between the examiner and the attorney, whereupon the patent application is ready to mature into, or "issue," as a patent. A "notice of allowance" results setting a deadline for paying an “issue fee” and putting the application, particularly drawings, in final form for publication.
STEP 5. – PRE-GRANT PUBLICATION OF THE PATENT APPLICATION
Patent applications filed after November 19, 2000 are published 18 months after their filing date unless a request for non-publication stating the application has not been and will not be filed outside the USA is submitted in a timely manner. This pre-grant publication (“PGPUB”) is important notice to the public of the existence of the claim of the inventor for protection under the patent laws and the potential for liability for any infringement after that time. The PGPUB allows the patentee, upon the issuance of the patent, the retroactive right to collect a reasonable royalty from an infringer as of the date of the PGPUB of any claim of the patent that would also infringe a claim of the published patent application. This minimizes surprise to the public from delayed issuance of a patent application (so-called “submarine patents”) and helps protect the inventor against use of the invention between the date of publication and issuance. The publication is of the application as filed unless certain unusual steps are taken. For more detailed information on PGPUB see http://www.uspto.gov/web/offices/pac/pgpub.htm.
STEP 6. - ISSUANCE OF THE PATENT
After the "notice of allowance" is issued, an "issue fee" must be paid. About three or four months after payment of the final fee, the patent issues. From filing to issue, the average time a patent application is pending is about 2-3 years.
By long tradition, patents are always issued on a Tuesday. Also on Tuesday of each week, the Office publishes the 0fficial Gazette abstracting all of the patents issued on that day, and on the following Thursday the patents are posted on the United States Patent and Trademark Office website http://www.uspto.gov/patft/index.html along with the other 6,300,000 plus patents already issued since 1790. Patents are issued in numerical order, currently at the rate of about 2200 utility patents per week.
The original of the patent will be sent to the lawyer who then either forwards it to the inventor or his assignee or who keeps it in safe storage for the inventor. Additional copies of the patent may be obtained from the Office for a fee, but the original patent is an important document that should be kept with other valuable papers.
The issuance of a U.S. patent puts the inventor in the company of Edison, Ford, and the Wright brothers, and other inventors who have held U.S. patents for their inventions and is an occasion that rightfully brings respect and admiration to the inventor. At the same time, the public benefits by having the inventor's disclosure of his new and useful discovery.
Most importantly, however, the issuance of the patent makes the claims immediately effective in the USA. Patent applications filed after November 19,2000 are published 18 months after their filing date unless a request for non-publication stating the application has not been and will not be filed outside the USA is submitted in a timely manner. If publication has occurred prior to issuance, the issuance allows the patentee the right to collect a reasonable royalty from an infringer of any claim of the patent which would also infringe a claim of the published patent application.
EXPLOITATION OF PATENTS
"The need for creativity does not end with the issuance of a patent".
Whether the inventor seeks to license his development or directly market the resulting product, success usually requires an innovative and intense effort. The process is likely to be difficult and chances for success are statistically poor.
This is true for the established businessman as well as the unknown independent inventor. The mere availability of the basis for a new product, even an exciting one, may not stimulate much interest from serious investors or purchasers. Develop credibility, use imagination, and make the effort. Thousands have been successful, but rarely without initial setbacks and disappointments.
INVENTION PROMOTERS AND BROKERS – WATCH OUT!
Because of the difficulties and expense in marketing new inventions, independent inventors have sometimes turned to promoters for help. These promoters have variously identified themselves, for example, as invention submitters, invention developers, idea brokers, inventor assistance companies, invention technology companies, global development companies, and technology or marketing consultants. Unfortunately, many invention promoters offering services to independent inventors have preyed on the unwary, making promises that they are incapable of keeping, then charging exorbitant fees. Financial loss and heartbreak have taught many inventors, dealing with unscrupulous promoters, the lesson of caution. Useful information on how to avoid being scammed can be obtained at http://burdlaw.com/inventor.htm . A valuable Cautionary List is available at http://www.inventored.org/caution/list/ The United Inventors Association provides a list of warning signs at http://www.uiausa.com/Redflag.htm. Check with the closest Patent Depository Library (listed at http://www.uspto.gov/go/ptdl/ ) for more guidance on avoiding scams or locate a local inventors' club.
Patent licensing offers a variety of possibilities. A license can be limited to a single company (exclusive) or nonexclusive licenses can be granted to several companies. Other aspects of licensing include the responsibility for enforcement, conditions of termination, foreign rights, related trade secrets, know-how, and the very important royalty payment. Licenses are common which provide for either:
1. a single lump-sum royalty payment;
2. a royalty of a specified amount for each product produced under the license; or
3. a royalty in the form of a percentage of the receipts from the sale of the licensed subject matter.
Although royalty percentage rates are the most common form of license payments, the rates vary widely from fractional percentages to double-digit percent figures, depending on the nature of the industry, production costs, the significance of the invention, and so on.
There are prohibitions on licensing, violation of which can amount to patent misuse or antitrust violations. For example, a licensor should not fix prices, require the purchase of unpatented products, regulate the use of the patented product, or require royalty payments beyond the life of the patent. Again, the law in this area is complex so the objective here is merely to indicate the possibility of danger. Similarly, a patent holder should be aware that the details of a license can have profound consequences on the tax aspects of royalty payments.
For further information on patent licensing, we suggest you view our licensing page at http://www.burdlaw.com/Linkpages/weblicns.htm. There is an outstanding trade association for licensing executives, the Licensing Executive Society (http://www.usa-canada.les.org/ ) that can provide all the information you might desire and contacts with many reputable licensing companies, and membership is about $160 per year,.
Patents may also be sold outright.
ENFORCEMENT OF PATENTS
Many conflicts involving patents are settled by negotiation.
The patent owner will often take the initial steps at negotiation when a possible infringement is found. However, it is normally best to consult with a patent lawyer who has experience in patent litigation, so that the infringer knows the patent owner means business. Not doing so risks the infringer ignoring demands as not really being serious.
Failing the settlement of a conflict, suit may be brought
GET A GOOD LAWYER. Since patents are issued by the Federal Government under Federal law, suit for patent infringement is a federal right and must begin in a federal district court located where the infringer resides or where infringement occurs and the infringer is subject to personal jurisdiction. The objectives are (a) an injunction against further infringement and (b) damages (as from loss of sales or royalties). A litigation attorney, preferably experienced in patents and in the technology involved, will be needed to have reasonable prospects of success. This is VERY expensive and a good solid patent, well drafted is crucial for the patentee. On the defensive side, this is where a wrongly accused infringer can be legally declared not to infringe a patent, and a good patent litigator is important to obtain that finding of non-infringement.
It is also possible for an alleged infringer to initiate legal action to attack a patent without waiting to be sued by the patentee.
After the patent owner has charged someone with infringement, the accused infringer may file what is called a Declaratory Judgment ("DJ") action seeking to have a court say the accused infringer does not infringer. The claims of the patent in dispute are reviewed for possible invalidity and, if not found invalid, a determination is made whether or not the accused infringer is proven not to infringe.
A major infringement or DJ suit is a very involved and expensive proceeding that may take several years.
Pretrial procedures are liberal in allowing the parties to obtain very detailed information from each other. A very high percentage of patent infringement cases are settled. Alternate Dispute Resolution procedures are sometimes useful for patent disputes, as the disputants often want to keep a relationship while settling the patent dispute.
ALTERNATIVES TO PATENT PROTECTION
Some inventions can be commercially exploited while being kept secret.
For example, a product may not reveal a chemical process that is used to make the product. Also, in some instances, agreements for secrecy have been used successfully, as in the protection of computer software. However, outside these possibilities, trade secrets (like all secrets) are difficult to keep. In general, one who learns a trade secret without wrongdoing (as by his own discovery or analysis) is legally free to use the knowledge.
The Patent and Trademark Office will accept and preserve for a limited time an informal description of an invention known as a "Disclosure Document," which was referred to previously. Such a document can be prepared and filed by an inventor, but it does not provide any significant form of legal protection. It simply provides evidence of the date of conception of the invention disclosed, which can be done as simply in many other ways. The Disclosure Document will be destroyed after two years unless it is referred to in a separate letter in a related patent application within the two years. I strongly advise against use of this program and encourage use instead of provisional patent applications as discussed above.
Trademark and copyright protection
Trademarks and copyrights simply do not cover inventions, as was explained earlier. Ultimately, a trademark (such as KODAK or COCA-COLA) may have immense value that far exceeds any value of any patent, but at the initial stages, when the trademark does not yet have great reputation, a patent provides its owner with a unique package of rights that cannot be duplicated by any other means. Only a utility patent can stop others who have copied the utilitarian (functional) aspects of an invention or have done their work independently of those making, using, or selling the patented invention.
PATENTS DO NOT GUARANTEE SUCCESS, BUT MOST SUCCESSFUL BUSINESSES ARE BASED IN PART ON PATENTS.
©1994-2011 Bruce E. Burdick