PROTECT YOUR IDEAS
FREQUENTLY ASKED QUESTIONS ABOUT PATENTS
TABLE OF CONTENTS
What is a patent?
A patent is a right granted by the federal government to prevent
others making, using, selling, or importing the patented invention
throughout the United States.There are three kinds of U.S. patents:
utility, design, and plant patents.
What is a utility patent?
Utility patents cover processes,machines, articles of manufacture,
compositions of matter, or improvements thereof. Methods of doing
business are generally not patentable unless they involve a process
of handling some material or pieces of information. In order for
an idea to be patentable it must be:
- Novel as defined by the U.S. patent laws (U.S. Code, Title
35).
- Useful.
- Unobvious; that is, it would not have been obvious to a person
having ordinary skill in the art at the time the invention was
made.
- Not known or used by others in this country, or patented or
described in a printed publication in any country prior to the
invention.and
- Not have been patented or described in a printed publication
in any country, or in public use or on sale in this country more
than one year prior to the filing date of the patent application.
What is a design patent?
Patents which cover the ornamental appearance of articles, that
is, the aesthetic features of utilitarian articles. Design patents
can not used to protect a concept or a method of production These
rights are solely protectable by utility patents. The design that
is sought to be protect must be visible to the user of the product.
Design patents can not be used to protect features which are functional
in nature.To qualify for protection the design must be:
- New.
- Unobvious to a designer with ordinary skill in the art.
- Original.
- An ornamental design for an article of manufacture.
- Not have been patented or described in a printed publication
in any country, or in public use or on sale in this country more
than one year prior to the filing date of the patent application.
What is the main difference between patents and trademarks?
Before getting into the details of patents, trademarks and copyrights,
a brief explanation of the basic differences is needed. If you
don't work with each of them on a day to day basis, it easy to
become confused., as you should be. There is a definite a blurring
of the edges between the rights to each of them. In fact, it is
possible to simultaneously obtain rights under patent, trademark
and copyright laws for the same product. But these rights are
granted for entirely different reasons and stem from entirely
different basis. Knowing why these rights are granted is absolutely
essential in understanding what things you should be doing even
before see an patent attorney.
Origins:
Patents and copyrights have the same origin, they were both expressly
provided for in our Constitution "... to promote the progress
of science and the useful arts, by securing for limited times
to authors and inventors, the exclusive right to their respective
writings and discoveries." This phrase has translated into
several important differences. Patents and copyrights are governed
solely by federal law. Over the years, Congress and the Patent
Office have established a set of rules and regulations, which
when met by an applicant, will result in the award of an exclusive
right in the form of a monopoly for limited period of time.
Trademark rights, unlike rights to a patent or a copyright, do
not stem from the federal government, but from the consuming public.
The theory that the buying public has a right to rely on the mark
under which a product is sold. The rights in a particular trademark
must be earned. It is through the simple use of a mark that the
owner establishes its fundamental rights. There is no right to
a mark without usage. This is because the right comes from the
association by the public of a product coming from a certain manufacturer
that is the critical factor. It has nothing to do with governmental
sanctions or awards.
Who may apply for
a patent on an idea?
Only the true inventor can apply for a patent for an idea which
he developed. In the simplist of situtations, there is only a
sole inventor, working independently. Sometimes two or more persons
combine their ideas to make a complete invention. In this case
all of the inventors must apply together for the patent and each
of them has the same ownership in the issued patent, even though
they did not all contribute equally. In a work situation an employee
has a right to patent and own his ideas unless he was hired to
invent something in the same general area. In the event the inventor
was hired to invent or had made an agreement to assign all rights
to his employer, the right to apply for and ownership of the issued
patent belong to the employer. The employer will also obtain a
nonªexclusive paid-up personal license in an invention of
an employee who worked on the idea on company time, used company
equipment and resouces.
When does invention take place?
Invention is actually the combination of two events. First, the
ideas or concept which will become the essence of the patent must
be conceived. When this idea is put into a working model or reduced
to practice, invention occurs. The inventor is not required to
file an application at that time. He may file at some later time
and still obtain a patent, provided he did not create any statutory
bars for himself or one else creates such a bar to obtaining a
patent. See Statutory Bars, below.
If two different persons claim the same
invention, how does the government determine who was first to
invent?
An invention is actually the combination of two steps. First,
the idea itself must be conceived by all of the claiming inventors
(each must contribution something, but not necessarily to the
same degree and second, the idea must be realized by making of
a working model (reduced to practice). Invention takes place on
the date that the working model is functional. If there is a contest
between two inventors as to the first to invent, each of them
will be called upon to produce evidence as to the date of their
reduction to practice or invention. The government will also consider
evidence of which person conceived of the idea first and was diligent
in eventually reducing the idea to practice. This person may be
deemed the first inventor and receive the right to the patent.
This is one of the reasons that professional engineers and inventors
maintain a daily log book of their efforts.
Are there any alternatives to making a working model?
Yes, there is. In fact the Patent Office does not require
the filing of a model, but only a wriiten description, sufficient
enought to teach someone who is already familiar with the area
involved to use the invention. If someone does not reduce the
idea to prace by making a working model, they may simply file
the descripition. This is called a constructive reduction to practice
and can be used in place of an actual reduction to practce.
Are there any problems with just filing an application?
There can be and it is not recommended. The effect of the
rule is to make the date of invention the date of filing. If there
is a contest as to first inventorship, the inventor who relys
solely on the rule cannot prove any earlier date. Even more important,
an inventor will often learn some startling information about
his original idea by trying to make an invention function. This
usually causes a complete revamping of idea. The result can nullify
all of the efforts of the patent attorney from the search of the
idea to the already filed patent application. Once an application
is on file there are almost no changes allowed in the application.
Any revisions would have to filed in a separate application and
they will receive a new filing date.
Are there times some inventors should just file an application?
Yes. A professional, who works in the field of the invention
full-time follows the work of competitors very closely, can usually
produce a full description of an invention that is accurate and
will not be be subject to later revisions. They, however, are
reluctant to use the rule because of first inventorship issues.
But there are times, such as when it is financially or technologically
impossible to wait or the competitive climate will not allow time
for reduction to practice. There is also situations where an inventor
must file because of a statutory bar date, such as the publication
of the idea in trade journal, nearly one year earlier. It is in
these types of situations that a patent attornet is the most valuable.
Only a professional can prepare and file an application on very
short notice.
Also note that while the U.S. has a one year grace period,
many foreign countries have none at all. Once the subject matter
of an invention is published, the foreign rights are compromised
forever.
If I am employed, who owns my invention?
Inventors generally own their inventions, even if they are
employed by a company. The exceptions (although state laws often
limit these rules) are:
- If prior to the date of invention the employee entered into
an employment agreement providing for the assignment of all of
his inventions, made during the term of employment
- The employee was specifically hired to invent the particular
invention or make developments in the general area of the invention.
- Even if there was not an employment agreement, the employer
may be entitled to a shop right (that is a non-exclusive paid-up
license to practice the invention). This is based on fairness
in situations where the employee made the invention on company
time with company equipment or resources.
How long is a patent good for?
A utility patent has a life of 20 years from the date of filing.
This, however, includes all of the time that the application is
in the Patent Office. Whatever time it takes comes out of the
life of the patent.
Why is "patent pending" important?
The right to use the words"Patent Pending" and the
like is the exclusive right granted only to persons who currently
have a patent application pending before the Patent Office. This
can be an extremely valuable tool to use in a competitve enviroment.
It puts potential competitors on notice that they enter your market
at their own risk. Although a competitor is free to use the invention
while the patent is in the application stage, if the patent should
issue, he would be forced to take license under the patent or
else to abandon the product along with his investment.
Why must you mark the product with a patent number?
While a U.S. patent is in effect, the owner of the patent should
give notice to the public that his product is patented by placing
on the product the word patented or pat. together with the United
States patent number. Not to do so would not invalidate the patent
but it may prevent the recovery of any damages or lost profits
from any infringer. The reason is that the absence of the number
does not give an innocent infringer fair warning of your rights.
The marking of the product with the number prevents the infringer
from claiming that he was innocent. In these cases the courts
generally rule that the infringement was willful and the owner
should recover damages and possibly attorney fees.
How can you lose your invention?
Under the Patent Code there are several events that can prevent
an inventor from receiving a patent on his invention. They are
generally based on the principles that there can be only one true
inventor and that the United States has a one year grace period
from the day that the public learns of the invention. It should
be noted that a patent issued anywhere to anyone, even the inventor
applying in the U.S., is a printed publication which begins the
clock running. It must also be noted that in European countries
and elsewhere the is no grace period. A printed publication anywhere
will prevent anyone from ever filing for a patent. Also these
countries generally don't recognize first inventorship rules,
but the first to file rule. The first applicant will get the patent,
despite others who could have proven earlier invention.
- Public use by anyone earlier than one year prior to the filing
of a U.S. patent application by the inventor.
- The granting of a foreign patent on an application to the
inventor covering the same invention, the application having been
filed more than one year prior to the filing of the U.S. patent
application.
- Publication of any article anywhere in the world by anyone
disclosing the features of the invention more than one year prior
to the filing of the patent application.
- The publication or patenting of the same technology by another
prior to the invention by the inventor.
- The inventor has abandoned the invention.
- The inventor did not himself invent the subject matter sought
to be patented.
You don't. You can file you own patent application and make your
own responses to the Patent Office. In this way you avoid having
to trust a patent attorney and you can avoid paying his fee. This
is the natural inclination of most independent inventors which
I have noted over time. They tend to be self-reliant and suspicious
of anyone who might learn of their idea before it is on file.
There also plenty of self-help guides on the market that will
make it a piece of cake. By using other patents as a model, you
can file a an acceptable looking application. If it is this easy
why don't successful inventors, corporations or universities follow
this route?
First, the application which you file needs to only meet very
loose standards, particularity when filed by an individual. The
PTO will bend over backwards to find some way to accept an inventor
drafted application. This, however, can be the worse thing that
can happen to an inventor. The language of the application, the
abstract, and the drawings are set in stone at the time of filing.
These things cannot be changed by the inventor. When the Patent
Office has rendered its opinion about the patentability of the
invention, the inventor must find some way to avoid the problems
that are raised. If the claims are going to be changed the inventor
is limited to what is on file. Patent attorneys anticipate this
problem by building in fallback positions that allow for later
changes. This, and other techniques in knowing how to frame an
argument, sets up the inventor to achieve the maximum patent that
the examiner will finally allow. It usually takes an patent attorney
from three to five years to master these tecniques. They are very
difficult to learn and can only be learned through experience.
An inventor who does get a filing date but has not crafted a document
that has such flexibility will not be successful. Even if the
patent should issue, it would not survive in a court of law where
the most severe tests of a patent take place. Another problem
that the patent attorney must anticipate is that it is a document
that will be under the most severe attack in a court of law. The
inventor's competitor might try to invalidate the patent by finding
a problem in the claims, the specification or the drawings. The
competitor may also attack the patent for the inventor's disclosures,
or non disclosures, or statements made to the Patent Office at
the time of filing of the application or later. Such matters are
often second guessed by is not so much a technical document as
it is a legal document.
Another problem that the patent attorney must anticipate is that
it is a document that will be under the most severe attack in
a court of law. The inventor's competitor might try to invalidatey
the patent by finding a problem in the claims, the specification
or the drawings. The competitor may also attack the patent for
the inventor's disclosures, or non disclosures, or statements
made to the Patent Office at the time of filing of the application
or later. Such matters are oftentimes "second guessed"
by your competitor's attorney. Only by diligent preparation for
the filing of an application can fatal misstakes be avoided. This
preparation coupled with an expertly prepared application will
yield a strong patent that will survive a court challenge, or
close scrunity by a potential licensee. Even the inclusion of
an unnecessary limitation in the description of the invention
can spoil the potiental of a tremedous idea. <P>
Remember once the application is filed nothing other than the
claims can be changed. Even if a patent attorney is asked to take
over the application to bring a lawsuit against an infringer or
to answer the examiner's objections, his hands are tied. He is
limited to the original disclosures. Most times the application
must be abandoned and a new application filed, thereby losing
the original filing date and fees.
My best advise is this: If your objectives to save money and to
become involved in the preparation of your application there are
things that you can do.
First, document everything that you are doing in preparing
your working prototype.
Second, try to learn all that you can about the field of your
invention. See what is on the market and learn about the products
limitations.
Third, conduct your own search of patents through the internet
search firms like Micropat.
Fourth, prepare a description of the products that were or
are currently being sold and describe the problems of each of
them. Then describe how your invention solves each of these problems.
Draw a simple concept diagram as possible of your invention, showing
only those elements that are absolutely necessary to make your
invention work. Finally, describe in detail how to make your invention
with very detailed drawings ( almost production drawings). Include
in the details the name and description of any products or materials
that were used. If quantites are critical they must be included.
Also suggest other materials or brands which might be used.
Fifth, interview at least several patent attorneys until you
find one that you feel that you can trust and who will include
you in the process. Explain your need for limiting costs and your
need to be kept informed. With the right preparation and careful
selection of the right attorney your costs will be minimized and
the you will get the best results.
If you have a question regarding patents, please E-mail it to John Sicotte, patentlaw@earthlink.net or call (818) 783-0990.