FAQs on the subject of Patents
- The Inventor’s First Steps to Protecting His Invention
- What is a U.S. Patent?
- What is a Patentable Invention?
- Is a Patent Necessary?
- The Patent Process
- Patent Practitioners: Attorneys and Agents
- What are the Inventor’s Chances of Obtaining Patent Protection?
- Patent Fees and Costs
- How Long does it take to get a Patent?
- Invention Promotion Organizations
- Defensive Driving for the Inventor
- Minimizing Legal Costs
1. THE INVENTOR’S FIRST STEPS TO PROTECTING HIS INVENTION
Soon after you conceive of an invention which you believe has market potential, I strongly recommend that you consult with a registered patent practitioner (an attorney or agent). The initial consultation is often provided without charge, so you may have little to lose. And because patent rights can be very fragile, you may have everything to gain from a visit- if you don’t know the law, you can lose your rights! Why are these rights fragile? The patent laws have provisions which require that you take action to secure your rights to patent protection in a timely manner. In Europe, for example, a properly written patent application must be filed BEFORE making information about the invention “available to the public” as defined in the European Patent Convention, Article 54. “Making available” includes providing information about an invention to a potential manufacturer or any one else, without it being understood that your disclosure is a confidential disclosure. Fortunately, if all you seek is a U.S. or Canadian patent, the patent laws of these nations give you a one year period in which you can file the original patent application. In any case, the laws are complex and it is easy to misinterpret them. Therefore, again, you should see a professional patent practitioner as soon as possible!
Note: the remainder of this Patent FAQ deals exclusively with United States Patent Law, unless otherwise stated.
Under U.S. patent law, it is equally as important that you document your invention thoroughly. If you haven’t already done so, I suggest that at your next available opportunity you sketch the major elements of the invention in a notebook, as well as write a detailed description of its operation, followed by a discussion of its purposes and the advantages. At least two individuals should then sign your description. These individuals should be (1) trustworthy, (2) willing to agree to keep your invention confidential, and (3) unbiased (e.g., not be related to you). If the invention is highly technical, it is important that your witnesses have a working knowledge of the technical field of your invention so that they will be able to understand its operation. Further, I suggest that you ask your witnesses to sign each drawing page, under a statement which reads somewhat like that shown below:
Witnessed and understood it. Date: _______________, 200__:
Witness’s Full Name
Witness’s Full Name
The witness may hand write the above statement in the margins of each page. Notarizing the drawings and written descriptions is not necessary-neither is sending a copy to yourself via registered mail. However, if you wish to do this, or you have already done so, it certainly cannot harm you. I suggest that it is better that you mail copies of your description to the Assistant Commissioner for Patents of the United States for archiving under the Disclosure Document Program. For a $10 fee, the Commissioner will store your description under lock and key for a period of two years. If you refer to it in a subsequently filed patent application, he will store it indefinitely. Be sure to include a letter with your description, addressed to the Commissioner, asking him to store the documents under the Disclosure Document Program. Send the description, the letter, and the check to: Box DD; The Assistant Commissioner for Patents; Washington, D.C., 20231. U.S.A.
Provide the Commissioner with two copies so that he may stamp and return one confirmation copy to you. No document may be larger than 21.6 x 28.0 cm. Feel free to use the following sample in preparing your cover letter, whether you reside in the U.S. or abroad (the Patent Office will mail a confirmation to you, wherever you might reside):
Assistant Commissioner for Patents
Washington, D.C. 20231
Re: Disclosure Document Program
Please receive the enclosed papers into the Disclosure Document Program. I have also attached a check/money order written for $10 fee under 37 C.F.R. 1.21(c). I understand that you will store these papers for me for a period of two years, and, if I refer to this deposit in a U.S. patent application which I file in the next two years, then you will store this information indefinitely. I ask that you send the filing receipt to the below address:
[your name and address here]
Very truly yours,
I have attached _______ pages of disclosure and _____ drawing sheets.
Although this procedure is simple and inexpensive, it is worthless unless you are sufficiently thorough and clear in your description of your invention. In its publication called “General Information Concerning Patents”, the Patent Office states that…:
the benefits afforded by the Disclosure Document will depend directly on the adequacy of the disclosure. Therefore, it is strongly urged that the document contain a clear and complete explanation of the manner and process of making and using the invention in sufficient detail to enable a person having ordinary knowledge in the field of the invention to make and use the invention. When the nature of the invention permits, a drawing or sketch should be included. The use or utility of the invention should be [clearly] described, especially in chemical inventions.
In addition, the Patent Office warns that the Disclosure Document Program “should not be considered a grace period during which [you] can wait to file a patent application without possible loss of benefits.” The Patent Office warns that you must show diligence for the period of time after filing the disclosure document up until the time you build a working model or file a patent application; otherwise you may not be able to show that you have “priority of inventorship” over a competing inventor. “Priority of inventorship” is a term of art which identifies the winner in a challenge between two inventors claiming to have invented the same invention. Priority equals the sum of: (1) the earliest date of conception of the invention, plus (2) diligence, plus (3) building a working model or filing a patent application on the invention. Therefore, under the patent laws, you don’t win by simply showing you were the first to conceive the invention.
2. WHAT IS A U.S. PATENT?
A U.S. patent is essentially a right which the government grants to the inventor permitting him “to exclude others from making, using, or selling the invention” within the U.S., its territories and possessions. You may obtain a patent on any “new, useful process, machine, or composition of matter, or any new and useful improvement thereof.” However, contrary to a common misconception, a U.S. patent does not grant the inventor a right to make or use the invention himself-he may do so only if he does not infringe someone else’s unexpired patent.
The U.S. government grants patents for a term of 20 years from the filing date (14 years from issue date for design patents). Congress may extend the term only in special circumstances. After the term expires, you lose your exclusive right to the invention. Everyone is now free to exploit the product which you disclosed in the patent. In addition, failure to pay maintenance fees will result in the patent prematurely expiring.
3. WHAT IS A PATENTABLE INVENTION?
“Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” may be patented. The invention must therefore be at least “new” (i.e., novel) and “useful”. (35 U.S.C. Section 101).
“Novel” means that others must not have known the invention or placed the invention in public use in the United States before you invented it, and that others must not have already patented or described the invention in a printed publication anywhere in the world, more than one year prior to the filing of the patent application.
Also, the invention must not be “obvious.” This means that any changes or modifications you make over any prior products or published designs must not have been obvious to a person having ordinary skill in the industry or trade, at the time of your invention.
“Useful” means simply that the invention has a useful purpose, actually works and is not frivolous or immoral.
New categories of products are capable of being patented. For example, computer programs and new business methods involving a machine or process (e.g., implementation on a computer) are now generally patentable, if the above criteria are met.
Of course, the applicant/inventor must describe his or her invention in sufficient detail to enable someone of ordinary skill in the art to make and use the invention without undue experimentation.
4. IS A PATENT NECESSARY?
Ask yourself this question: “what’s your ultimate goal?” It is probably one or more of those listed below:
- To prevent others from being able to patent or use your invention.
- To profit from your invention through licensing the technology.
- To preserve your rights to obtain patent protection while you develop the invention for financial gain.
- To create a visible example of your contributions to society’s body of technical knowledge.
- To protect the outward ornamental appearance of your work of industrial art.
- To make the invention publicly available so that others can freely benefit from your invention.
- To maintain an advantage over your competition.
Identifying your goals is critical to determining the most appropriate steps you should take to protect your invention. Your goals affect your entire strategy. Your goals directly affect costs as well. For example, if your primary goal is NOT to realize a financial return, but rather to disclose your technology to the public so that others may benefit from your efforts, one option is the filing of a Statutory Invention Registration application. In this case, costs are significantly reduced. The Statutory Invention Registration (S.I.R.) allows you to obtain a visible record of your contribution to society’s storehouse of technical knowledge-the Patent Office publishes the S.I.R. much like a patent in the Official Gazette of the U.S. Patent Office, except that anyone may now make, use, or sell your invention without first obtaining your permission.
Understandably of course, most of us are not interested in making gratuitous contributions to society, especially when the contribution costs us substantial time and money. We rightly believe that we deserve financial rewards and that others should compensate us fairly for our creative efforts. If this is the case, attaining our goal requires a different tact and procedure. This tact is likely to involve the filing of a patent application. Why? This is just the way Congress designed it.
True, having a practitioner prepare a “full-blown” patent application for you can be a very expensive prospect (we’ll talk about the expense later). However, one somewhat risky, short term alternative is available in the United States. Your diligent development of the invention beginning at conception and continuing until filing your patent application or the “reduction of your invention to practice” (building a working prototype) preserves your rights to a U.S. patent. Provided that you do not subsequently “intentionally suppress or conceal” the invention, the government considers the date on which you build and successfully test a working prototype the date on which you “reduced your invention to practice”. This serves as your “priority date,” the earliest date which you may claim as being the inventor as of that date, should another inventor file for a patent on the same invention at about the same time as you do. I stress that this does not eliminate the necessity of your filing a patent application within one year of the date someone else sells, uses, offers for sale, or publicly disclosures the invention in this country, or publishes or patents the invention anywhere in the world, as discussed below. Nevertheless, unless you file a patent application within one year of the date a rival inventor patents the invention, you will be unable to establish your patent rights, or may incur costly litigation expenses in an effort to establish your patent rights. Therefore, this approach can be very risky. You should discuss this limited option with a patent practitioner before relying on it for protection!
A second, less risky but somewhat expensive option is to file a provisional patent application. This is a relatively new option which essentially buys you one year’s time before you must pay the regular filing fee and file a “full-blown” patent application. It can be somewhat expensive because the enabling and best mode requirements of a regular patent application apply. This means that the provisional application should be just as descriptive as a regular application. Claims need not be filed, but practitioners generally agree that the best practice to follow in drafting the specification is to draft the claims first. Therefore, the net result is that there is very little difference in the cost of preparing a thoroughly descriptive provisional application as compared to a complete regular application. Essentially, you realize a cost savings only if over the year’s time in which the provisional application is pending, you make substantial improvements in the design of the invention. If this is the case, it is wise to draft and file a more up-to-date regular application. This saves you the cost of a second filing fee while, at the same time, securing for you an earlier effective filing date.
Yet another option is to keep your invention secret. This option is usually only a viable alternative to patent protection in cases where your invention is a process that cannot be reverse engineered through analysis of the resulting product. If this is the case, then your challenge is to keep the process secret. If you are successful, and no one is able to reverse engineer the process, the benefits of secrecy will help you maintain a competitive advantage. In addition, you will not be limited to protection for 20 years. Thirty five or more years of protection may be attainable. Maintaining secrecy will usually involve having employees and suppliers sign confidentiality agreements, and putting into operation a system which helps ensure that persons who have access to your secrets are aware that they are obligated to maintain secrecy. A risk though is that a competitor will file and obtain a patent which they may be able to enforce against you (the patent laws favor those who “disclose” as opposed to those who “conceal and supress” technical knowledge). You should consult with your local intellectual property attorney to find out whether this is a viable option for you in your particular state.
5. THE U.S. PATENT PROCESS
History and Purpose…
The first Article of the U.S. Constitution, Section VIII, provides the basis for the U.S. patent system. [U.S. Constitution, Article I, Section 8, clause 8]. In this article, the Founding Fathers granted to Congress the power to form a system “to promote the progress of Science and useful arts by securing for limited terms to authors and inventors the exclusive right to their respective writings and discoveries.” [Id]. Almost a century after the Founding Fathers drafted the Constitution, Abraham Lincoln expressed his support for the patent system when he stated that “the patent system …. add[s] the fuel of interest to the fire of genius, in the discovery of new and useful things.”
Clearly, the purpose of the patent system, from its earliest beginnings was to provide inventors and their employers with the incentive to create and fund the development of new and useful technologies. The patent laws have accomplished this by providing the inventor or employer with some assurance that he will be able to recover the development costs associated with the technology and then receive some additional reward for his efforts as well. The incentive the Government chose to offer was the granting of an exclusive right to prevent others from making, using, or selling the invention for a period of years sufficient to enable the recovery of these costs and, if all goes well, to return a profit. In exchange for this exclusive grant of monopolistic rights, you, the inventor, must provide the public with a full written and graphical disclosure of your invention, sufficient to enable a person having ordinary skill in the field of the invention to make and use the invention.
Think of a patent as part of a bilateral agreement with the government, an agreement where both parties benefit if the terms are honored. If you do not honor the terms, this may result in a court declaring your patent invalid. Failing to disclose the “best mode” (the best configuration of your invention) at the time of the filing of your patent application is a violation of the terms of the agreement and, as such, places your patent in jeopardy.
Who may Obtain a Patent?
The Patent Laws permit the Patent Office to award patents only to the true inventor or inventors. If you are an investor, you cannot file a patent application as the inventor unless you are also the inventor or co-inventor of the invention (as the drafter of the patent application defined the invention it in at least one claim of the patent application). In addition, you cannot get a patent on a mere idea, concept, or suggestion. Therefore, even if you, as an investor, provide the basic idea or identify the need which the invention is to fill, and subsequently fund the development of the invention by others, the Patent Laws do not entitle you to be named as an inventor. You, the investor, however, may retain full ownership of the patent rights through an assignment, and thus benefit from the future income of the patent to the exclusion of the true inventors.
Bars to Obtaining Patent Protection:
The following occurrences disqualify you from being able to receive a U.S. patent on your invention:
- when the public knows about or the invention has been publicly used in the United States, earlier than one year prior to your filing of a U.S. patent application;
- when a foreign government grants you a foreign patent on an application covering the same invention which you filed more than one year prior to filing your U.S. patent application;
- when anyone publishes any article anywhere in the world disclosing the features of the invention more than one year prior to filing your patent application;
- when another publishes, patents, or invents the same invention prior to the earliest date on which you reduced your invention to practice (Note that if someone invents the invention before you, but later “abandons” the invention, you may still be entitled to a patent on the invention);
- when you have abandoned the invention, or you “supress or conceal it” and
- when you did not yourself invent the subject matter for which you seek a patent.
Many foreign countries bar the issuance of a patent if anyone publicly used or disclosed the invention any length of time before the filing of a patent application in that foreign country. In other words, most foreign countries do not provide a one year grace period, as does the U.S. patent system. However, if you file for a U.S. patent before you do anything which might bar your obtaining a patent in foreign countries, then, under certain international treaties, foreign countries will consider your U.S. filing date as if it were your foreign filing date, thus allowing you to “antedate” (i.e., predate) activities which otherwise would constitute a bar. [See the Paris Convention for the Protection of Industrial Property].
The Patent Search:
You should search prior patents and publications at the earliest possible opportunity. Practitioners refer to this as a “novelty” search. The primary reason for this is to avoid the futility and cost of filing a patent application on an invention that someone else has already patented. In addition, a search decreases the chances that you will inadvertently infringe someone else’s patent (note that a”novelty” search is not an infringement search-an infringement search is something completely different, costing anywhere from several hundred to tens of thousands of dollars). Still another reason for the search is to obtain information about the state of the art of the technical field of the invention which you may use to improve the invention and increase it’s marketability (provided, of course, that you do not infringe someone else’s patent)!
If you work for a company involved in an intensive research and development project, this search can save time and money by avoiding a wasted effort at “reinventing the wheel.” There are countless examples of situations in which companies could have saved millions of dollars in unnecessary research and development costs, simply by taking advantage of one of the patent system’s primary purposes, that of being a resource of relatively up-to-date technical knowledge.
In addition, you may be able to use some of the information in the prior art patents found during your patent search to help locate companies interested in licensing your patent. [The term “prior art” simply means the relevant technology as it existed apart from your invention, just prior to your filing for patent protection]. On the first page of the published patent, directly beneath the names of the inventors, the Patent Office prints the names and addresses of companies to whom inventors have licensed their patents.
You may elect to perform the preliminary patent search yourself, or, you may hire a patent practitioner or search professional to perform the search for you. Should you elect to attempt a search yourself, a system of patent depository libraries are available in many cities throughout the country. In the Houston area, there is only one such library-Fondren Library at Rice University. At these patent depository libraries, you may examine any issued U.S. patent. In addition, the Patent Office provides a database of patent summaries. I suggest that you search the Internet summaries first, and then visit the local patent depository library where you can perform a more in-depth search.
Even though I recommend that you hire a professional to perform the patent search, I also recommend that you do a patent “survey” search yourself. A survey search is a preliminary and inexpensive patent search which you perform before your first meeting with a patent practitioner. If the results are in your favor, this will give you the confidence that your $600 to $1200 investment in a professional search and patentability opinion will be worthwhile. In addition, a survey search will help educate you about the state of the art in the field of your invention (more on this later).
Manufacturers and marketers of products often use the terms “patent pending” and “patent applied for” to inform the public that an application for a patent on that product is on file in the Patent Office. [The law imposes a fine on those who use these terms falsely]. For the period of time during which your patent is pending, the Patent Office holds your patent application in strict secrecy. What may surprise you though is that having a patent pending provides no formal protection against infringement. Nevertheless, when a patent is pending, because the potential for its grant exists at the same time that the content of the application is held secret, this makes it more difficult for a competitor to effectively design around your patent. In some cases, the mere threat that your application may grant may be sufficient to deter a would-be competitor from manufacturing the invention, because if your patent issues and a court rules that your competitor infringes your patent, he may have to completely shut down production of his product-a death sentence where his primary source of revenue is derived from manufacturing the infringing product.
Obtaining “patent pending” status is quite easy. All you need do is file a provisional patent application and pay a filing fee of about $75.00 (for a small entity).
The Special Problems of Joint Inventorship and Assignments
When assignments, employment agreements, joint inventors, or possible joint inventors are involved, you should bring this to your patent practitioner’s attention immediately. If you omit an inventor that you should have recognized as a joint inventor, then the joint inventor can protest your patent application. If the protestor can prove bad faith in your omission, he could invalidate your patent.
Please understand that just because you should list someone else as a joint inventor in your patent application, this does not mean that the patent laws require that this person share in the future income from your patent. In fact, a joint inventor can contractually assign away all of his rights in the invention. However, if he retains any ownership interest at all, even as little as one percent, he has a right to protect that interest by entering into license agreements with manufacturers, or by exploiting the invention himself. In fact, unless otherwise stated in a contract, he may enter into such license agreements without your permission. However, if he does so, he must share with you any income or royalty he earns from any such license agreement.
If you have signed an employment agreement in which you pre-assign ed to your employer all rights in job-related inventions, you may not have any rights in the invention at all. In such cases, you should first obtain a written waiver or release from your employer before you spend any money on a patent application.
Types of Patents
There are three different types of patents: utility patents, design patents, and plant patents.
The Patent Office grants utility patents to “anyone who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The term “process” means a process or method; you may patent new industrial or technical processes or methods. The term “manufacture” refers to manufactured articles. “Composition of matter” relates to chemical compositions, and may include mixtures of ingredients as well as chemical compounds.
The Patent Office grants design patents to anyone who invents a new, original, and ornamental design for an article of manufacture. The patent laws protect the appearance of the article, not its function (for this reason, seek design patent protection only when the ornamental features of your invention are unique and commercially valuable).
The Patent Office grants plant patents to any person who has invented or discovered and asexually reproduced any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.
Design Patents vs. Utility Patents:
Design patents, under certain circumstances, may be more effective than utility patents in protecting your intellectual property. Because the patent laws base design patent protection on the ornamental appearance of the invention, design patents are almost always easier to obtain than utility patents. Provided that the appearance of your “article of manufacture” is not solely dictated by its function, the patent laws consider that its appearance is ornamental and therefore patentable, provided that the article of manufacture is useful, and the ornamental aspect is novel and not obvious to the designer of ordinary skill in the art. In addition, compared to utility patents, design patents are significantly less expensive to obtain and to maintain in force. The cost for filing a design patent application begins at about $800. Unlike utility patents, the patent laws do not require you to pay maintenance fees.
The right to file and maintain an action for patent infringement is the essence of patent protection. With design patents, the criteria for judging infringement is more subjective than in utility patent cases. This uncertainty often favors the patent owner. In addition, the design patent holder may elect to recover total profits. The recovery of total profits is not available in a utility patent infringement case. The potential for such a recovery adds to the effectiveness of a design patent as a deterrent to infringement. For example, a court ordered Waring, the blender company, to pay Braun more than $1,000,000 for its infringement of a Braun design patent for a tapered household blender design. Braun v. Dynamics Corp of America, 975 F.2d 815 (Fed. Cir 1992). On the other hand, because utility patent claims cover a wide variety of designs, regardless of the ornamental appearance of any particular design, utility patents are generally broader than design patents. Therefore, a utility patent is generally the most desirable type of patent.
Patent Protection in Foreign Countries
A U.S. patent gives you the right to sue anyone who makes, uses, or sells your invention within the United States, its territories, and possessions. If you desire protection in foreign countries, you must file patent applications in those countries. However, many foreign patent laws bar the grant of a patent if, before you filed in the foreign country, you displayed, sold to the public, or described your invention in a printed publication anywhere in the world. Therefore, early in the patent process, you should decide whether or not to seek foreign patent protection so that you can avoid doing anything that might prevent your obtaining foreign patent protection .
In addition, the exclusive right to exclude others from selling your invention, which your U.S. patent grants, can sometimes deter a potential overseas competitor from entering the overseas market. This indirect benefit of a U.S. patent depends on the economies of scale in the world market, and the relative proportion of the U.S. market. If the U.S. market for the invention is a substantial proportion of the world market for the invention, and if a potential competitor must make a significant investment in overhead and fixed costs in order to produce the product at a competitive price, the foreign demand alone may not be sufficient to justify the products overseas manufacture. Further, the sale of a product in the U.S., which an overseas manufacturer manufactured using a process covered by a U.S. patent, infringes the U.S. patent. [35 U.S.C. A7 271(g)]. This illustrates a special advantage of a process patent over other, more common, utility patents.
6. PATENT PRACTITIONERS: AGENTS AND ATTORNEYS
The term ‘patent practitioner’ broadly refers to patent agents and patent attorneys. Patent practitioners have met the minimum legal, scientific, and technical requirements of the Patent Office, have passed a patent bar exam, and, in addition, have agreed to uphold a standard of professional conduct. In order to maintain his standing before the Patent Office, the patent practitioner has agreed to keep his client’s invention confidential, and not to take any personal benefit from his knowledge of his client’s invention, disclosing it to others only when necessary to effectively represent his client.
In addition to meeting the qualifications which the Patent Office requires of patent agents, the patent attorney must have earned a law degree from an accredited college or university, and have passed an intensive state bar examination and an ethics examination. Further, the FBI must perform a background check on the attorney-candidate, and a state bar committee must approve the attorney-candidate’s application to practice law. Still further, the State Bar Association requires that the patent attorney continue his legal education through attending seminars and conferences on recent developments in the law. Only when the attorney-candidate has met all these requirements, does the attorney-candidate become a patent attorney.
The above differences in qualifications between patent attorneys and patent agents are significant. From a practical standpoint, patent attorneys are familiar with courtroom procedure, case law, and tactics used to enforce your patent after it issues. The patent attorney may represent you in law suits against infringers, or in drafting license agreements with manufacturers. In contrast, the state bar rules and federal law prohibit a patent agent from providing many of the services which patent attorneys routinely provide (such as those discussed above). The patent agent may, however, do anything which the Patent Office considers necessary to obtain a patent for you. In addition, he may provide general advice concerning copyrights, trademarks, and license agreements. [A patent agent may provide advice on copyrights and trademarks only to the extent necessary for his client to determine whether the client should seek patent protection]. Therefore, if merely obtaining a patent is all you seek, hiring a patent agent may be significantly less expensive than hiring a patent attorney. In addition, hiring a patent agent is almost always a better choice than trying to write, file, and prosecute a patent application yourself. However, if you seek an enforceable patent, then using a patent attorney is almost always the best choice. The patent attorney is aware of some of the common pitfalls of the court system. He or she is generally much more capable of structuring your patent application to avoid these pitfalls. In addition, a patent application is both a legal and a technical document. As such, a patent application is difficult to write properly. Because a patent attorney is trained in both technical and legal writing, he or she is better equipped to write these difficult legal documents.
7. WHAT ARE YOUR CHANCES OF OBTAINING A PATENT?
In order for your invention to be patentable, it must be novel, nonobvious, and useful. Generally speaking, a patent practitioner finds that only about fifty percent of inventions appear to be patentable over prior art which he or she uncovers in the typical novelty search. Of these inventions, only about twenty-five percent issue as patents. Therefore, before you do a patent search, think about the fact that you only have about a twelve percent probability that you will receive a patent, unless you resort to more costly procedures (I discuss these below). On the other hand, the more thoroughly familiar you are with the state of the art in the technical field of your invention, the more likely it is that you will receive a patent (I will discuss this in more detail later).
After an initial review process, if the Patent Office rejects your patent application, you may appeal the rejection to the Board of Patent Appeals and Interferences, or file a continuation or a continuation-in-part (‘CIP’) application. A continuation application is essentially a refiling of the original application-the Patent Office permits no more than editorial changes. A CIP application is a application that adds new inventive disclosure to the prior-filed application, in order to further distinguish it from the prior art. The filing of a continuation or a CIP application increases the costs of obtaining a patent. However, these filings also increase the probability that you will receive a patent. The prior art is more clearly defined at this point; for this reason, describing improvements which are novel is much easier with a CIP.
If you are seeking only design patent protection, you will be happy to learn that obtaining a design patent is considerably easier than obtaining a utility patent. Approximately 80% of the design patent applications filed ultimately issue as design patents.
8. PATENT FEES UTILITY PATENTS
When it takes less than an hour of their time, many patent attorneys do not charge for the initial office visit. The first real expense then is the patent search and patentability opinion, costing from $600 to $1200. The patent practitioner performs the patent search himself, or hires a professional searcher to perform the search. He or she then carefully reviews the results of the search, and prepares a letter stating why he does or does not believe the filing of a patent application would likely result in the issuance of a patent. The search criteria he uses is often highly subjective, and the search files are not 100% complete. Therefore, the Patent Examiner, the Patent Office employee which the Patent Office charges with the responsibility of determining whether your invention warrants patent protection, often finds prior art that the practitioner, or the private searcher, did not uncover.
When the practitioner completes his assessment, you have the opportunity to review the results, and to decide whether or not to ask the practitioner to write the patent application. Depending on the complexity of the invention, the practitioner’s fees for preparing and filing a patent application vary from about $4000 to over $10,000. In addition, you must pay the government filing fees at the time you file the patent application. The filing fee varies from just under $400 to over $700, depending on whether you are (1) an individual or a small business; or (2) a large corporation. The practitioner may file formal drawings with the application. Formal drawings usually cost about $100 per page of drawings. Most patent draftsmen use CAD software to generate drawings. CAD software allows quick and inexpensive modification of the drawings. For the typical application, a thorough description of the invention usually requires four to eight drawings. However, the Patent Office does not require that you file the formal drawings with the application. Therefore, this is one expense which you may postpone until the Patent Office indicates that you will receive a patent.
While the patent application is pending, you must pay additional government fees and practitioner’s fees. The government fees are usually for filing petitions, and for printing the patent application once the Patent Office has decided that the application will issue as a patent. The practitioner’s fees are usually for writing and filing amendments and petitions on your behalf. If the Examiner’s repeated rejection of your patent application requires extensive amendments of the application, or an appeal to higher authority, the additional fees you may pay can exceed the initial cost of preparing the application. Even after you pay these additional fees, the practitioner cannot guarantee that the Patent Office will ultimately grant you a patent.
Unfortunately, the government fees don’t stop once the patent issues. You must pay maintenance fees in order to prevent your patent from expiring.
9. HOW LONG DOES IT TAKE TO GET A PATENT?
The period of time which the Patent Office usually requires to review and grant a patent varies from about 1.5 to 2.5 years. In special circumstances, you can accelerate the process. Your age and health, as well as the importance of your invention to society, are factors which the government will consider if you ask it to accelerate your application’s review. This is known as the period during which your patent application is “pending”. During this period, you can expect to spend on average anywhere from two hundred to six hundred dollars per month for patent-related fees. However, each month’s fees almost never hit the average, and may vary from nothing to more than $1500.
Inventors often ask me this question: “Once I file a patent application, should I wait until the Patent Office grants my patent before I attempt to market and sell my invention?” Usually, the answer to this question is “no”. However, the quality and type of patent application which you filed are significant factors in a determination of whether you are free to market and sell your invention. If the patent application which you filed was thoroughly descriptive of your invention, and you do not anticipate major improvements, you may be free to market and sell. However, someone else may hold a patent on an aspect of your invention, and can therefore prevent you from making, using, or selling your invention. Therefore, I recommend that you hire a practitioner to perform a “right-to-use” search before you begin manufacturing, marketing, or selling products based on your invention.
10. INVENTION PROMOTION ORGANIZATIONS
The Patent Office recommends that you check on the reputation of so-called “invention promotion organizations” before making any commitments to them. You may do this by calling the Better Business Bureau responsible for maintaining records for businesses in the same telephone area code as that of the invention promotion organization. If other inventors have filed complaints against the organization, this is a good indication that the organization is not reputable. On the other hand, you should give no weight at all to the fact that no one has filed a complaint with the Better Business Bureau, unless the organization has operated out of the same location for more than four years. This is because, for their first few years of operation, invention promotion organizations are able to avoid formal complaints by telling their clients that they should not expect any concrete results for a period of three or four years. When this period expires, and clients begin to file complaints, the invention marketing company changes its name and moves to another state. Another source of information about such organizations is the “Bad Guys” inventor web page. I do not share the opinions and statements made on this page with the authors. Without doubt there are some companies listed that are reputable, so please verify any negative or positive comments on the Bad Guys page through your own research.
The Patent Office also recommends that you ask your patent practitioner about invention promotion organizations. I have found that almost none of them are reputable. In my opinion, if the Patent Office were to award patents to these organizations for each of their novel methods of extracting money from the pockets of independent inventors, these organizations would dominate the field! For example, when you ask the typical invention marketing organization to provide a quote for their services, this company quotes a basic fee which covers the cost of a patent search, a patentability opinion, and the preparation of a “handsome”, bound, and engraved document which emphasizes the total value of the market in which your invention might be sold. The basic fee for these services is not excessive. However, despite the fact that a patent practitioner may supervise the work involved in their preparation, I question the validity of both the search and the opinion. The patent practitioner writes these opinions in light of the fact that the invention promotion organization is his client-not the inventor.
Under these circumstances, most case law supports the proposition that the attorney owes no legal duty to you-rather, his sole duty is to his client. Therefore, the invention promotion organization, as the practitioner’s client, may instruct the practitioner to limit the scope of the patent search. In this case, the organization invariably asks the attorney to provide a written opinion as to whether or not you may obtain any type of patent at all (design or utility patent) on the invention. Both the organization and the practitioner know that the answer to this question will almost always be “yes”, because, as I have already stated, design patents grant on about 80% of the applications which practitioners file. However, the practitioner provides his opinion because he needs the money more than he needs a good reputation. The invention promotion organization pays for the opinion because it is sure to result in “good news” for you. [Be careful. If you ask the organization to review several inventions, they may attempt to disappoint you using one or two of your inventions, in order to set you up for the “good news” which they expect to deliver on another invention].
Once you receive (1) the bound search results, (2) a favorable patentability opinion which an attorney has prepared, and (3) market research emphasizing a very large potential market, everything appears to be legitimate, and you are beginning to see dollar signs next to six, seven, or eight figures! The invention promotion organization convinces you that they can sell or license your invention to a manufacturer. All you need to do is hire them, and, eventually, the checks will start rolling in. You are vulnerable at this point. Because the invention promotion organization knows this, they offer you a deal you cannot resist. For a fee of from $12,000 to $30,000, the organization will have a patent application prepared and filed for you. In addition, the organization agrees to market your invention for you, and help you get that million-dollar royalty contract which you surely deserve! In order to draw you away from your money, the organization tries to make you believe that they think your invention is a “sure hit”. To “prove” this, they’re willing to (1) accept a share of the future royalty earnings of the invention in lieu of a portion of their fee (the reduction is anywhere from $6,000 to $18,000), and (2) guarantee that if the Patent Office does not grant a patent to you, the organization will refund 100% of the fees you’ve paid them. In addition, if you don’t have the cash, the organization will finance the fee for you. [Although the organization finances the fee, the organization sells the loan to a third party bank which is not associated with the organization. In this case, the banking laws obligate you to pay the loan back in full, even when you can show that the organization committed a fraud against you]. By now, the organization has thoroughly convinced you that your invention will earn millions. When you run the math, it makes no sense to give the organization a portion of your future millions, just to save a few thousand dollars today. Therefore, you agree to the original fee. Unfortunately, you have played right into their hands.
What does the invention promotion organization really do for you? First, their fee (a minimum of about $6000) includes only the cost of preparing a design patent. By filing a design patent application, the organization can afford to guarantee that a patent will grant, because, as you will recall, design patents grant on about 80% of the applications which inventors file. This might be OK, if the design patent that grants appropriately protects your invention. However, design patents are appropriate for only about ten percent of inventions. Therefore, if you were to randomly file design patents on inventions, chances are about 90% that you’ll get a nearly worthless patent. In many cases in which organizations automatically file only design patent applications, the patent that eventually grants can actually harm you, when it becomes prior art which prevents you from obtaining a utility patent.
Let’s say that you are still considering hiring an invention promotion organization, and that you believe, despite all that I’ve said, that the organization you have found is legitimate. However, you are willing to test them. In this case, I suggest that you call them and demand that they provide utility patent search results and a utility patentability opinion. Insist that you talk to the patent attorney directly. Tell the attorney that you want his opinion to address the likelihood that the Patent Office will grant you a utility patent. Tell the organization that, in any quotation for services they provide, you expect the fee to include the cost of preparing, filing, and prosecuting a utility patent application. Demand that the organization provide all their guarantees in writing. If the organization is willing to guarantee that you will receive a patent, be sure that they guarantee that you will receive a utility patent, not just any patent. If you do all these things, you will increase your chances of getting something of value for your money. If the organization refuses to provide written guarantees or to follow your specific instructions, demand your money back. If they refuse to do this, immediately report them to the Better Business Bureau and the consumer protection division of your Attorney General’s office!
In summary, you should be wary of doing business with professional service providers who have no ethical obligation to seek your best interest. Seek the advice of the Patent Office and of your patent attorney-these are the most reliable sources of information.
11. DEFENSIVE DRIVING FOR THE INVENTOR
A. Defensive Tactics – Record-Keeping and Diligence Practice
The least expensive, yet most important, precaution that you can take to protect your invention is to document its development. Proper documentation involves maintaining detailed records of your invention’s development. I discussed this earlier, in the section which I entitled “Your First Steps in Protecting Your Invention”. I also mentioned the Disclosure Document Program and its benefits. Now I will discuss, in more detail, keeping records.
Many inventors begin to document their progress only when they feel that they have fully fleshed-out their concept. This is a mistake. At your first opportunity, you should record a description of your concept or invention on audio tape, or, preferably, in a bound record book. The pages of the record book should have printed or stamped, consecutively numbered pages. Anything you do to make it more difficult for anyone (including yourself) to tamper with your records helps ensure that your notes and sketches will constitute credible evidence, should someone challenge your patent’s validity in future litigation. In your description, you should spell out the manner and process of making and using your invention, in such full, clear, concise and exact terms that any person skilled in the art to which the invention pertains would be able to build a functioning prototype. (Title 35 U.S.C.A7112). The initial spark of inspiration, when you have properly documented it and combined it with diligence, can represent your earliest date of invention. The earlier your date of invention, the more likely it is that you will maintain your rights in the invention.
Remember, not all inventions are patentable. If you are serious about inventing, you’re wise to have an alternative concept on record which is worth pursuing, should your first choice turn out to be either unpatentable, or so similar to another’s patented invention that production of your invention may infringe an already existing patent.
You should record the time expended on the invention as well. This time record, together with an adequate description, can help you prove diligence in the event of an interference action or a validity challenge in court. (An interference action takes place within the patent office, and is the means by which rights to the invention are determined between at least two competing inventors. A validity challenge is the legal action taken by an alleged, or potential, infringer in an attempt to have the patent judged invalid). In addition, routinely recording time can provide you with the documentation necessary to support certain tax deductions against any future income from your invention. (Don’t take my word for this-discuss this with your accountant).
The Importance of Building a Working Prototype:
When you build a working prototype, you have reduced your invention to practice. ‘Reduction to practice’ gives you a similar claim to the invention as filing a patent application (however, this does not excuse you from the bars which we discussed in Section VI, above). Therefore, in an interference action, you would likely prevail against someone who files a patent application on the same invention before you did, provided that (1) you had not abandoned the invention, and (2) the other inventor had not yet conceived of the invention at the time you built the working prototype.
A nondisclosure agreement is a special agreement between someone willing to provide confidential information, and a willing recipient of information. The recipient agrees to keep certain information confidential in exchange for some benefit (e.g., to evaluate new technology for its potential benefits). The provider of the information hopes to interest the recipient in purchasing or licensing the information. If you’re dealing with a patent practitioner, especially a patent attorney, the practitioner is bound by a professional code of conduct which requires him to keep such information confidential, whether or not he signs such an agreement. Other professional service providers, or any individuals wishing to sell something to you, are usually happy to sign such an agreement if it is necessary to get your business.
On the other hand, in instances in which a company manufactures, markets, and sells its own products, it is much less likely to be willing to sign such an agreement. In fact, most large manufacturer-distributors simply refuse to sign such agreements, as a matter of corporate policy. These companies evaluate many different inventions which are developed both internally and by independent inventors. Sometimes they find that an invention submitted from the outside is similar or identical to one which they have developed internally. Understandably, these companies do not want to be sued by an irate independent inventor, should they coincidentally have been planning to manufacture and sell a product similar to that disclosed by this inventor. Neither do they want to be subject to a lawsuit, if, in their opinion, the invention is an obvious improvement over the prior art.
Therefore, if you wish to have larger manufacturer-distributors consider your invention, you will probably not be able to rely on the protection of a non-disclosure agreement. In this case, probably the only effective way to protect yourself is to first file a thoroughly descriptive patent application. By doing this, if the manufacturer refuses to become a licensee under your patent, yet goes ahead and manufactures your invention, you will be able to sue him for infringement, once the patent application matures into a patent.
Even if you have filed a patent application, some manufacturers will refuse to evaluate your invention until your patent grants (e.g., Tupperware Corporation). If this is the case, you have little choice but to wait for your patent to grant, or to pursue a license agreement with other companies who do not have such a requirement.
Unfortunately, there are always those companies which refuse to consider all outside inventions whatsoever. This mentality is commonly known as the “Not-Invented-Here” syndrome. These companies prefer to hire the inventors, and to develop inventions in-house. They are willing to forego the opportunity of reviewing outside inventions, in order to reduce the risk that they will be sued for misappropriating some independent inventor’s idea. Therefore, don’t be discouraged when such companies send you the ‘Thanks, but No Thanks’ letter.
Finally, if you have a concept for a new business, be warned! Such ideas are generally not patentable. (Business methods which require hardware (e.g., a computer and a database) to implement, may be patentable). If you disclose such concepts without having first entered into a nondisclosure or consulting agreement, you are at risk of virtually giving your concept away. In cases in which a company has signed a nondisclosure agreement, certain ideas and concepts, even for new business ventures, may be protectable, provided that you can prove that your concept is novel. However, litigation is more likely in these cases.
B. Strengthening the Patent and Decreasing the Likelihood of Circumvention
1. Maximize the Long Term Benefits of Patent Protection Through Brainstorming
In order to properly develop your invention, you must consider the prior art and other technologies which might compete with or enhance your invention. Most of us would claim we do something like this before we make a decision to buy a product. After we have decided that we need a product to meet a specific need, we first consider the competing products: how well they function; and how much they cost; right? We should do the same thing in the product development process because, ultimately, we want consumers to buy our products and not someone else’s.
I have found that the best way to develop inventions is to brainstorm.
Your goal in brainstorming is to mature the design of the invention, and to identify shortcomings in the original design which otherwise might, in the future, be the subject of a rival inventor’s patent application. Remember, if someone else gets a patent on improvements to your invention, you will not be able to use those improvements to enhance products based on your invention without first obtaining a license from the owner of the patent for the improvements. In addition, the more you have refined your design by the time you file your patent application, the higher the probability that the patent, once it grants, will be enforceable.
Further development of the invention produces a better understanding of the greatest potential breadth of the intellectual property. This enables the patent practitioner to draft claims in the patent application which, if the examiner allows them, will result in broader patent protection. Broad patent protection means that the patent should be difficult for a competitor to circumvent. In an attempt to uncover any weaknesses in the patent which might enable in-house engineers to design around it, the competition’s legal and engineering departments will subject a valuable patent to intense scrutiny. To help prevent a negative result from such scrutiny, you and your patent practitioner can play the part of a typical competitor so that you can better forecast how the competitor might respond to your patented invention. With this forecast, you can then review and modify the patent application to preclude some of these possible design-arounds. I sometimes refer to these sessions as “defensive driving sessions because you are trying to prevent an in-court collision with your competition by anticipating his moves.
‘Defensive driving’ is essentially brainstorming the technology in order to consider every conceivable alternative design which could do what your invention does, without infringing the claims of your draft patent application. In order to have an effective brainstorming session, it is important that at least one of the participants in this session be familiar with a variety of technologies and with design engineering practice. You or your patent practitioner may have this experience. If your patent practitioner is a registered professional engineer, he is probably qualified, although many non-professional engineers are also qualified. If neither of you has this experience, you may be able to find a consultant to fill this role. If you hire a consultant, I have a couple of words of caution. You should make it very clear that what you discuss in these sessions is confidential. In addition, you should have the non-attorney participants sign a consulting agreement in which they agree to assign to you any patentable concepts which they might suggest during the session.
Of course, if you create some sort of a record of the sessions, this will help provide documentation of your diligence in developing your invention. Again, in the event of an interference action, this may come in handy to prove that you did not abandon the invention.
2. Taking Advantage of the Results of a Patent Search:
You can glean valuable information from a patent search. For example, you may use the information from the search to expand the disclosure in the specification of your patent application in order to bring it up to the state of the art. That is, by describing the most obvious modifications to your invention in your patent specification, you can prevent a subsequent inventor from obtaining an enforceable patent on these improvements.
In addition, the patent search should indicate how many other inventors have made claims in the field of the invention. You should also be able to learn whether subtleties distinguish the patents, or whether there are major differences. These facts will give you and your patent practitioner a general feel for the level of patent protection that the Patent Office may be willing to grant to you.
You can glean still more information from the prior art patents which you discover during the patent search. For example, if many of the inventors in the field have assigned their patent rights prior to the time their patents were granted, this indicates either a field which corporate inventors dominate, or that many independent inventors were able to license their technology before their patents issued. (Look to the first page of the prior art patent, just below the name of the inventor. If you find the heading ‘Assignee,’ then the inventor assigned the patent to a company prior to the time the patent granted). If either is the case, you are inventing in an active technical field. On the other hand, the fact that the inventors of most of the patents have assigned their patents may indicate that the industry is closed to outside inventors. In order to distinguish between the two possibilities, you will have to use your common sense, and consider other factors such as the relative size of the licensees, the nature of the industry, and so on.
12. MINIMIZING YOUR LEGAL COSTS:
Research the Market:
First you should research the market thoroughly! Doing so helps establish whether your invention is worth the time and considerable amount of money you will be investing in it. Readily available sources of technological and market information include the following:
- yellow pages (for retailers, distributors, and local manufacturers)
- Thomas Register (for manufacturers on a national and international level)
- the Infotrac and ProQuest CD ROM Systems at your local public or university library (for magazine articles which feature similar products or which discuss the particular problems that the invention seeks to solve)
- the Reader’s Guide to Periodical Literature (for magazine articles)
- Annual Survey of Manufacturers (for national sales figures by product type. Look here to get an indication of how big the market might be for your invention)
- catalogs and brochures of retailers or suppliers carrying similar products (here you may find patent numbers which you can use as a starting point for your patent survey search. You should also find information about potential competitors or licensees).
Inventors often overlook one method that is sometimes very effective in obtaining information about competing products. A phone call to the local distributor of products similar to the invention can be a gold mine of information. If you indicate your interest in purchasing a solution to your problem (the same problem which your invention solves), a knowledgeable and service-oriented salesman should be able to tell you what products are currently available that would help solve the problem. When you are a potential consumer, the salesman will usually be happy to supply you with brochures on the various alternatives.
Note: The article above may not contain up-to-date information.