How long does patent, trademark or copyright protection last?

A U.S. utility patent is granted for 20 years from the date the patent application is filed or 17 years from issuance whichever is longer. Periodic maintenance fees must be timely paid. U.S. trademarks can last forever, as long as the trademark is used in commerce, samples are provided to the Trademark Office every 5 years and the mark defended against infringement from competitor's.

For works created after January 1, 1978, copyrights last for 70 years after the death of their owner. For works made for hire, the copyright lasts for a term of 95 years from the year of its first publication or a term of 120 years from the year of its creation, whichever expires first.


How to Protect Proprietary Information.

Companies should audit themselves, or engage a firm/consultant like our office, to review the company's policies and practices with respect to protecting proprietary information. An intellectual property audit often reveals how company practices can be improved to maximize protection of intellectual property. For example, inquiries should be made including:

Do you have unambiguous written employment contracts with your employees and consultants? Consider written employment contracts for management, consultants, R & D personnel and other key employees. Consider confidentiality provisions, assignment of invention provisions, work for hire provisions, and Non-competition provisions.
Do you have policies in place to protect your intellectual property assets?
Do you regularly use confidentiality agreements with third parties?
Do you have appropriate physical and electronic security measures in place? Consider practices such as paper shredders, passwords and network security for computers, limited outsider access to premises, and employee policies covering clean desk policies, no removal of corporate property from premises, internet use, and moonlighting.

Are you using your confidentiality agreements correctly? Most standard agreements require marking files confidential when transmitted to third parties and sending written summary of oral discussions of confidential information.


Protecting Proprietary Software.

Computer software inventions are of particular interest to many businesses. Businesses often hire employees or consultants to write custom software applications to accommodate their business operations and provide a marketing, cost efficiency or other competitive advantage.

Potential protection available for software includes patent, copyright, trademark, trade secret, interference with prospective economic advantage, and breach of contract: employment or confidentiality agreement.

Software inventions have potentially patentable subject matter with business method patents for software algorithms. Software inventions also have potentially copyrightable material in the code expression of the algorithm. Software inventions may also have potentially trademark-able aspects including domain names, brand names for products, and insignia that has a source identifying function for the customer.

Software inventions may themselves be maintained as a trade secret, and may also contain trade secret data in their data bases. Although this is not intended to be an exhaustive list, trade secrets are things generally not available to the public such as unpatented algorithms, unregistered software code, customer lists, supplier lists, business plans, pricing and marketing information, and testing data.

In some cases, software inventions may enjoy potential tort protection under unfair competition law and interference with prospective economic advantage (inducing third party breach on contract or unfairly diverting anticipated market share).

In some cases, software inventions may enjoy potential contract protection in the way of confidentiality agreements, non-competition agreements, and employment agreements.

According to MSNBC, the United States Patent Office received 376,810 patent applications in 2004. According to the USPTO, about 65 percent of all patents submitted are approved. It usually takes about two and a half years for a patent to be processed.

We believe in the benefits of patent protection. However, it is important that clients are informed consumers. Armed with the knowledge about what options they may have, clients can make decisions about what protection strategies best meet their needs.

Inventors should appreciate that it may be easier to patent an invention than to market it. The world is not likely to beat a path to an inventor’s door offering bags of gold. Patents are just the first step in a long process to profit from an invention.


Can I file my own application?

Yes, however the USPTO strongly recommends that all prospective applicants retain the services of a registered patent attorney or patent agent to prepare and prosecute their applications. The preparation of an application for patent and the conducting of the proceedings in the USPTO to obtain the patent is an undertaking requiring the knowledge of patent law and rules, USPTO practice and procedures, as well as knowledge of the scientific or technical matters involved in the particular invention.


Patentability vs. Marketability.

Something might be marketable (desired by consumers when offered for sale) but not qualify for patent protection. Many companies make fortunes on sales of unpatented items. Something might be patentable (novel, useful and non-obvious) but not marketable to a mass of consumers.

As attorneys, we can help you assess and advocate before the United States Patent and Trademark Office that your invention is patentable. However, we do not have a crystal ball to determine if that patent will make a profit. Marketing involves many factors and you should seek, when appropriate, the advice of professional or expert consultants to assist you in this process.


What is the difference between my own patent search and a professional patent search?

In most cases, a self-search is limited to a free search of the United States Patent Office databases through the Patent Office website, freepatentsonline.com, Google Patents or another similar search engine platform. Other times it involves a search of the internet via Google, MSN, AltaVista or another search engine. In most cases, a self-search is performed by searching “key words” in the patent databases. It many cases, a professional search will yield a broader search result. This may benefit you in the decision making process as to whether to seek patent protection, what competitors you may unknowingly have, or in crafting a patent application with a greater likelihood of being issued as a patent.


What can I do with my patent?

•Assign it (sell or gift it away)
•License it ("rent" limited rights in it)
•Create a joint venture to exploit it
•Exclude others from making the product
•Exclude others from selling the product
•Exclude others from importing and distributing infringing goods
•Use it as security or collateral to obtain funding
•Bequeath your patent rights in your will
•Deter competitors and increase market share

Or, there are always these uses:
•Hang it on your wall and admire it
•Smile that you did not have to go on national television's American Inventor to obtain patent protection
•Drop it in conversation at the cocktail parties and social gatherings
•Use it to beef up your resume

After obtaining patent protection, inventors may need to form a business to develop or manufacture their product. We can assist with incorporating or forming limited liability companies. We can assist with licensing or assigning your invention to the new business entity; and counsel you in structuring the most suitable transfer for your situation.

In developing business ideas, inventors often need to retain consultants, hire employees, or meet with potential manufacturers or licensors. We can assist with protecting your inventions and proprietary business information with confidentiality agreements, work for hire agreements, employee policy provisions/agreements and related issues.

In developing an invention, inventors often work in collaboration with investors, other inventors and others. We can assist with joint venture agreements, co-inventor agreements and general counseling on these issues. After acquiring intellectual property rights, you may need to consider how to transfer these rights in the event of death. We can assist with will preparation that contemplates these unique issues.

After acquiring intellectual property rights, you may find it useful to leverage these assets for financing necessary to develop and manufacture your product. We can assist you with security instruments that pledge these assets or future revenue streams as collateral in these transactions.


Patent Rights

Myth: a patent gives the patent owner the right to make a product.

Patenting an invention allows the inventor to prevent others from making, using or selling his invention throughout the United States without the inventor’s consent. This is distinguishable from the right of the inventor to make or use an invention. Conceivably, an inventor may obtain a valid patent and still not be free to manufacture and sell his invention without infringing on the rights of another valid patent or violating a law/regulation (FDA approval for example) or court injunction.

A competitor may hold a dominant claim and there may be no way to practice your invention without infringing the claims of the competitor. Your competitor's patent may preclude you from practicing your invention (i.e., no "right to use"). At the same time, your patent may be used to prevent your competitor from practicing your improvement (i.e., "right to exclude"). All is not lost, there may be cross-licensing opportunities for both parties. Most commonly, inventors benefit from patent rights by selling the patent rights, licensing the patent rights (exclusively or non-exclusively) or acting as the exclusive manufacturer of the product.

Patents are valuable business assets that may be used as collateral for financing or may be liened by a mortgagor securing a debt. In some cases, patents act as a deterrent to potential competitors and as a marketing edge to provide customers and investors with a sense of “cutting edge” technology or limited monopoly on a market segment.


Making Money from Patents

Patents can yield financial benefits in a number of ways. Owners might receive royalty checks from licensing agreements. A patent owner may prevail in a patent infringement suit against a would-be competitor. A patent owner may sell the patent rights for a lump sum. They may sell a business that holds the patent (or exclusive licensing rights) for a handsome profit because of its limited monopoly position in the marketplace. A patent owner may be able to raise prices on his own product because his limited monopoly and the ability to exclude competitors in the marketplace for that product. A patent owner may be able to reduce prices on his own product and increase his market share because his limited monopoly on a manufacturing process gives him a significant economic advantage and cost reduction.


Scope of Patent Protection: The Patent Claims

Patents are a form of property. Let’s compare them to something more familiar – real estate. A real estate deed might give claim to a few square feet of space, or hundreds of acres. In the same manner, a patent might give claim to a narrowly defined invention or a broad–ranging invention. Broader patents are desirable, but they are harder to defend and enforce. Narrow patents, on the other hand, may be easy to design around. The goal is to find some point in the spectrum between both extremes.

Myth: the patent protects everything described in the text of the specification and depicted in the drawings.

As a deed defines the metes and bounds of real property, the claims define the metes and bounds of this intangible property. Claims must be read in view of the specification, and as such, the detailed description of the invention, in combination with the drawings, acts as a dictionary of sorts in defining the terms used in the claims. An objective test is applied of what one of ordinary skill in the art would have understood the term to mean. While a disclosure may be written broadly, the claims may be drawn narrowly and thus will limit the scope of coverage to the claimed subject matter. As such, an alternative embodiment disclosed in the specification but not claimed cannot be the basis of an infringement claim.

The scope of the patent may also be limited by the enablement contained in the specification.

Let’s look at an example:



Description of a Preferred Embodiment

Figure 1 depicts a widget with a substantially triangular configuration comprising a first member 102, a second member 104 and a third member 106. First member 102 and third member 106 comprise a length of from about one inch to about 36 inches. Second member 104 comprises a length of from about one inch to about 12 inches.

Widget is desirably formed a plastic material. As used in this specification, plastic material shall mean a polyethylene composition.

I claim:

1. A widget comprising a first member, a second member and a third member wherein said first member comprises a length of about 8 inches, said second member comprises a length of about 8 inches, and said third member comprises a length of about 8 inches.

2. A widget as described in claim 1, wherein said widget comprises a plastic material.

Example 1

Potentially infringing product #1 is a three-sided widget made of polyethylene, each side being 12 inches long.

Simplified Analysis:

While the specification disclosed widgets with first and third sides ranging from about one inch to about 36 inches, the claim was directed to first and third members with lengths of “about 8 inches.” Similarly, while the specification disclosed widgets with a second side ranging from about one inch to about 12 inches, the claim was directed a second member with a length of “about 8 inches.” Thus, there is no literal infringement of the first claim.

Example 2

Potentially infringing product #2 is a three-sided widget made of polypropylene, each side being 8 inches long.

Simplified Analysis:

This time, we will find literal and direct infringement of claim 1. However, while plastics are commonly known in the art to include a wide range of compositions, and a plethora of treatises may be provided to describe a wide rage of plastic materials, the specification defined plastics very narrowly to include only polyethylene compositions. As such, the claim will not be read to include polypropylene compositions, and thus, there is no literal infringement of claim 2.


Patent Types

There are two main types of patents issued by the United States Patent & Trademark Office (USPTO) - utility and design. (There are also plant patents.) Utility patents may be submitted as provisional or non-provisional applications. Provisional patents may be followed by a non-provisional utility patent within one year of the filing date.

Provisional patents are often recommended for independent inventors early in the development process. There are several factors that make them a good option for some independent inventors. Since provisional patents do not require claims or formal drawings, they are less costly to prepare and file. However, as long as they are followed with a utility application within one year, they may claim priority to the earlier filing date of the provisional application. This allows the independent inventor to spread the patent application costs over the course of the year. Not surprisingly, this comes with a price. The examination of patent claims, and therefore issuance of an enforceable patent, is delayed by the same period.

During the year, inventors are encouraged to market or produce their invention with their patent pending. Many inventors discover that the invention is not the financial windfall they had envisioned and elect not to proceed with the utility application, thus having risked only a portion of the full utility application cost. Additionally, over the course of the year, many inventors continue to test and develop their invention. Modifications may be made after meetings with manufacturers or prototype developers. This additional data may be added to the utility application and be useful in preparing the claims, allowing the patent professional to focus claim coverage on the most likely commercial embodiments. It should be noted that any newly disclosed data may or may not be accorded the earlier filing date (depending on whether it was “enabled” in the original application), however, the originally disclosed material should be accorded the earlier filing date. In this case, there may be some claims in the applications with one priority date and other claims with a second priority date.

A utility patent protects the function of an invention. Currently, the term of a utility patent is 20 years from the date of filing or priority. For patents issued prior to June 8, 1995, the patent term is 17 years from date of issuance. Utility patents are usually more desirable than design patents because of the broader protection generally available to them.

A design patent may protect a product manufacturer from “copycat” products that may have an inferior quality and detract from its reputation in the marketplace. Under 35 USC 171, a design patent protects the overall appearance of an invention and is granted for any new, original and ornamental design for an article of manufacture. The term of a design patent is 14 years from the date of issuance. A design patent should only be chosen if the appearance of the invention is important, otherwise utility patent protection should be sought.

Why patent a design?

“I have worked hard to develop a good reputation. Putting the products side by side, consumers might be confused as to which is mine. They might buy my competitor’s product thinking it is mine. I want to prevent copycat devices from usurping my market share.”


Patentable Subject Matter

Patent law statutes broadly defines a patentable invention as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements” to any of these types of inventions.

Establishing patentability is a legal art. An invention must be described in such a way that a meritorious argument can be maintained with the Examiner that the invention is novel and non-obvious. The Patent Examiner’s job is to locate prior art that can be used to establish that the invention is not novel, or is obvious in light of prior art. The skilled patent professional must describe features of the invention in ways that open the door to alternative basis for argument. For example, ranges of measurements (e.g. “side A comprises a length of from about 1 inch to about 12 inches”) are commonly used as well as relative measurements (e.g. “preferably, side A comprises a length of from about 50% to about 75% the length of side B and 10%-20% the length of side C”). Differentiation from the prior art is critical, requiring a combination of creativity and legal maneuvering based upon the disclosure. As such, highly creative, skilled practitioners have prosecuted patents to issuance (over frivolous application rules) for a method of covering a bald spot by combing hair over it and a method for swinging on a common swing set. Frivolous patents are not endorsed by this office, but the creativity of these practitioners is admired.

An inventor cannot receive a patent for perpetual motion devices, abstract ideas, laws of nature, or unmodified naturally occurring substances or living matter.

An inventor cannot receive a United States patent for an invention publicly disclosed, used in commerce or offered for sale more than 12 months ago. Public disclosure includes any sale, exhibit at trade show, or printed in a publication, with a few exceptions.

The term "process" is defined by law as a process, act or method, and primarily includes industrial and technical processes. Process and Business Methods will be discussed in greater detail later. The term "manufacture" refers to articles which are made, and includes all manufactured articles. The term "composition of matter" relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. Genetically-engineered microorganisms and computer software-based inventions are newly covered subject matter qualifying for patentability.





Conditions for Patentability

Myth: the inventor needs to make a prototype before he prepares a patent application.

Myth: the inventor needs to scientifically explain how or why his invention works.

The USPTO does not require the inventor to propose a theory, or even understand, how or why their invention works. The inventor is required to reduce his invention to practice. This may be accomplished by actual reduction to practice, that is, to construct a working prototype, to receive a patent. This may also be done by constructive reduction to practice. The inventor must only be able to describe the invention in sufficient detail so it is enabled, that is, so that one skilled in the art may make and practice the invention from the disclosure within the patent without undue experimentation.

For example, an inventor might accidentally mix two liquids together and observe that the combination has super properties. These super properties have a useful application. In preparing a patent application, the inventor is not required to explain the chemical basis for these super properties, nor even identify what they are. The inventor is merely required to disclose how to make and use the invention, that is, how much of each liquid to mix together and critical conditions that may be pertinent (temperature, flow rates, pressure, agitation methods, etc.) and how to apply it in its useful application. He can describe the result he observed without having to propose a theory for its mechanisms.


Novelty (35 USC 102)

In order to be patentable, an invention must be novel. The USPTO will reject an application under 35 USC 101 if the invention was:

•Already known or used by others in this country prior to the invention;
•Patented or described in a printed publication in another country prior to the invention or invention by applicant;
•In public use or on sale in this country more than one year prior to the date of the United States patent application;
•Abandoned by the inventor;
•Not invented by the applicant;
•Applicant (including legal representatives and assigns) applied for a patent or filed an inventor’s certificate in another country more than 12 months prior to application in the United States;
•Described in a United States published patent application by another prior to the invention or invention by applicant (PCT applications in English and designating the United States will be treated as United States national applications);
•Described in a United States patent application of a granted patent by another prior to the invention or invention by applicant (PCT applications, even when in English and designating the United States, will NOT be treated as United States national applications);
•Described in a United States patent filed by another prior to the invention;
•Described in another inventor’s United States patent application that was published prior to the invention; or
•During the course of an interference action, another inventor establishes that he or another inventor conceived of the invention in the United States prior to the applicant and did not abandon, suppress or conceal it and was diligent in reducing the invention to practice.


Non-obvious Subject Matter (35 USC 103(a))

An invention is un-patentable, if taken as a whole, and in light of the prior art, would have been obvious to a person having ordinary skill in the art to which the subject matter of the invention pertains.

For example, prior art widgets use a screw bolt assembly as a fastener. Inventor proposes to eliminate the bolt in favor of a threaded screw hole, citing advantages such as less parts, less manufacturing cost, a more functional “flush surface” at the location of the fastener and a more secure attachment of the respective parts. An Examiner might potentially raise an obviousness rejection, claiming that one of ordinary skill in the art would be aware of a variety of fastening mechanisms, particularly threaded screw holes, and it would have been obvious to substitute one in favor of the other. The inventor could rebut the Examiner’s position with a showing of “unexpected benefits” of the threaded screw holes.


Components of a Patent Application

The Manual of Patent Examination Procedure (MPEP) require an application for Letters Patent to contain:

•Title of the Invention
•Cross-reference to Related Applications, if any
•Reference to Microfiche Appendix, if any
•Brief Summary of the Invention
•Brief Description of the Drawings
•Detailed Description of Preferred Embodiment
•Claims
•Abstract of the Disclosure
•Signed Oath or Declaration
•Drawings

Customarily, most patent applications also contain a “Background of Invention” section with subdivisions for field of the invention and objects of the invention.


Specification

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. (35 USC Section 112.)

Thus, the statutory requirements of the specification are:

a. An adequate description (level of description varies by technology and desired breadth of claim scope)
b. Enablement (enough information for a skilled person in the art to make it/use it without undue experimentation)
c. Best Mode (also referred to as the preferred embodiment)
d. Claims

The patent professional will work with the inventor to develop the specification and drawings, determine the most critical features to describe and depict, broaden the scope of the invention where possible to enhance the strength of the patent, and develop aggressive claims that are not likely to be rejected but will provide the maximum patent protection possible.


Drawings

Drawings will be required for most inventions. In process claims or software patents, these drawings may consist of standard industry flowcharts describing the steps. Formal drawings meeting patent guidelines will be required for utility and design patent applications to issue. Informal drawings may be used for provisional applications and in some cases, in the early stages of utility applications.

Patent drawings should illustrate the novel concepts and significant features of the invention.


Oath or Declaration

A utility or design patent application requires an oath or declaration from each inventor.


Fee

Fees depend, in part, upon the size of the entity with an ownership interest in the application. The United Sates PTO recognizes two classes of patent applicants: small entity and "other than small entity." In order to encourage inventions and the progress of science, the United States PTO generally charges only one-half of its fee to small entities. While this is an overstated generalization of the fee structure, it is a good rule of thumb for most filings.

Small entities include individual inventors, not-for-profit organizations and companies with less than 500 employees. (There are other restrictions, but these are the most defining elements.) Currently, a basic utility patent containing less than a total of 100 pages, 20 claims, 3 independent claims and no multiple dependent claims for a small entity pays a basic filing fee of $500. Additional fees will be incurred for lengthy applications, additional claims and other conditions. The current fee schedule is available on the USPTO official website. A basic provisional patent will incur a filing fee of $100 and a design patent will incur a basic filing fee of $205.


Who is an Inventor?

Myth: The overseeing department manager may be listed on the patent as an inventor even he did not directly contribute to the invention.

Myth: The business owner may be listed on the patent as an inventor if the inventor’s work was (1) done in the course of his employment, (2) while earning salary paid by the business owner, (3) at the facilities and with the materials and equipment owned or supplied by the business owner, and (4) the business owner pays all patent costs.

Inventors are those who conceived of the idea that is the invention. Those who merely helped reduce the idea to practice are NOT inventors (unless they contributed to conception of the invention in some way). Inventors do not need to work together on the invention at the same time, nor are they required to contribute the same amount or type of contribution.

Inventors must have contributed to at least one claim in the patent application in a substantial way. Thus, a skilled patent practitioner can selectively add or omit claims to tune the inventors to the desire of the client. The skilled patent practitioner can also craft the patent claim to include or omit various elements that affect inventorship with respect to each claim.

Someone who merely assists in reducing an invention to practice is a person who merely carries out the inventor’s inventive concept. For example, an inventor conceives of combining part A and part B. Inventor goes to Technician to help him configure the combination, determine the best fastening means, and to determine the most cost-effective materials. The Technician would most likely be found to be reducing the inventor’s concept to practice rather than as a co-conceiving inventor.

If an inventor is mistakenly named or omitted from the application, he may be later added or removed. Failure to name true inventors that rises to a fraud on the patent office in the procurement of a patent may be a ground for invalidating a patent.

Where a joint inventor does not apply, others may apply for a patent on his behalf. A person who has a proprietary interest in patent rights, or has been assigned such patent rights, may apply for a patent as an agent of the inventor upon a showing that inaction would cause irreparable damage. The PTO will issue the patent in the name of the inventor, not the applicant. Similarly, in a case where an inventor dies or is incapacitated, the inventor’s legal representative may apply for a patent on behalf of the deceased.

In theory, patents are developed and owned by individuals. Unlike other countries, corporations may not be inventors. In order to transfer patent rights to corporate entities, inventors must assign their patent rights to the corporation. Assignments, in certain circumstances, may limit future involvement of the inventor in the prosecution of the patent and any “child” cases.




To protect corporate assets, it is common practice for employees to sign an employment agreement at the time of their employment stating that all inventions (both patentable inventions and inventions that are not patentable but may qualify as trade secrets) and proprietary information related to the business of corporation and all inventions made with corporate time, materials or facilities, belong to the corporation. Even with no obligation to assign, an employer may be entitled to “shop rights” in inventions.

With limited exceptions, a patent application may only be filed by the inventor. Thus, someone who sees the invention of another would be precluded from filing a patent application based upon that invention. However, modifying and improving upon the “borrowed” inventive concept may establish inventorship and qualify for patent application filing.


Who owns the Patent? Some key points about Patent Ownership

Under the patent laws, an inventor owns the patent. Co-inventors have an undivided interest in the whole patent and may exploit it without consent or accounting to the other inventors. Inventor agreements may be entered to set forth the rights of co-inventors vis-à-vis one another.

Patents have the legal attributes of personal property. The inventors are the statutory patent owners and may assign the patent rights by an assignment to others. Notarization is recommended, but not required, for valid assignments. If all of the inventors assign all right title and interest in the patent to another, the title to the patent rights belongs to the assignee. If only one inventor assigns his rights, there may be a partial assignment. Prosecution proceeds with all partial assignees and inventors who have not assigned their rights.

Contractual covenants may impose obligations to transfer ownership from the inventor to another person or entity. This is common with employee inventors and their employers. (Businesses may not apply for patents, only individuals). The employment agreements for R&D personnel, technical professionals, and executives often obligate the employee to assign patent rights to the employer. A “garage inventor” or “independent inventor” may be contractually obligated to assign patent rights to a manufacturer for his new product in a technology transfer or sale transaction. Graduate students are often required to assign inventions to an educational institution sponsoring the research. (Notably, if research is funded by a government agency, the government may have right to the invention even in the absence of a formal assignment.)

Assignments of patents must be recorded with the United States Patent and Trademark Office within 3 months of execution or they will be void as against bona fide subsequent purchasers. (There may, of course, still be liability as between assignor and assignee under state law.) An original or a certified true copy may be recorded. Assignments not in English will not be recorded unless accompanied by a signed translation. Conditional assignments will be regarded by the United States Patent and Trademark Office as absolute. The recording of the assignment has no bearing on the determination of its validity or title to a patent or patent application.

As intangible property, patents may also be the subject of a security interest such as liens or pledged as collateral in financing transactions. Complex issues arise in foreclosure and bankruptcy proceedings.

Patent applications, even codified non-patented technical know-how (assignment not recorded at USPTO in this case), can be the subject of assignment. The patents do not need to be issued to be assigned. In fact, they may be assigned even before they are written. Future rights evolving from patent applications may also be assigned. These may include foreign patent filings, improvements on the invention, reissues and patent terms adjustments to name a few common inclusions in the bundle of rights assigned.

Ownership of a patent becomes important when enforcing the patent. All owners must join in an enforcement action. Hold-out partial owners may make unreasonable demands, and if not met, may license or assign their rights to the alleged infringer, impeding the ability to bring an enforcement action. It is prudent to have contractual obligations not only to assign, but also to require cooperation with enforcement or defense litigation.

Myth: a company owns the patents for inventions of its employees during the course of their employment

It is not uncommon for employers to not have assignment covenants in place. In some circumstances, courts can impose shop rights- essentially a personal, limited, non-exclusive, nontransferable, irrevocable, royalty-free license for an employer to use an invention developed by an employee in the course of employment or with business assets.

Patent ownership may be discovered, in most cases, with a review of the United States Patent and Trademark Office records and National Archives and Records Administration (NARA) (pre-1957 patent assignments). Assignments of pending, unpublished or abandoned applications can only be obtained (1) with written authority from the applicant, assignee, an attorney representing either party, (2) upon a showing of a bona fide prospective or actual purchaser, mortgagee or licensee, or (3) if referenced in another publicly available patent. However, since not all inventors, businesses and general practice attorneys know about the United States Patent and Trademark Office recordation of assignments, it may be wise to also check the County Clerk or state recording offices for assignments and security instruments. This has the added benefit of uncovering unknown encumbrances on the patent assets.

The law of assignments is state law, and thus, should be handled in transactions as would be done with other assignments. For example, the unrecorded assignment is always a risk for attorneys to consider in transactions. First, a patent assignment is valid if filed with the United States Patent and Trademark Office within 90 days of execution. Appropriate warranties are recommended for this window of potentially valid assignments. While bona fide purchasers will not be affected by an unrecorded patent assignment, there may be contractual implications (breach) for the parties in cases of unrecorded assignments involving key business personal or inventor family members that may not be deemed bona fide purchasers.

One last issue for legal practitioners that arises with respect to patent ownership is the concept of defining the client. While the inventor is a key contact at the patent application preparation stage, in many circumstances the client is the assignee of the patent application. There are potential conflicts between the interests of assignor and assignee, or licensor and licensee, that must be considered in the course of working with the parties.

Myth: Co-owners of a patent share equally in the royalties or profits

Joint inventors have an undivided interest in the whole patent and may exercise patent rights without the consent of other joint owners. Additionally, there is no obligation to account to the other joint patent owners. Of course, contractual agreements between the joint inventors can limit these rights.


Duty of Disclosure

Patent law requires that any person substantively involved in the preparation or prosecution of a patent application and who is associated with the inventor or the inventor’s assignee has a duty to provide all material information that might be pertinent to a rejection of the application. This duty extends to each named inventor, each attorney or agent preparing or prosecuting the application, and those substantively involved in the preparation or prosecution process. The duty applies to individuals, not to their organization or company. The duty is owed to the United States PTO as long as the application is unissued and the claims to which the material information applies have not been cancelled or withdrawn. The duty requires disclosure of all information material adverse to patentability such as prior art, prior public sales and uses, offers to sell, prior invention by another and inventorship conflicts. There is no duty to disclose information favorable to patentability. Patent procedural rules impose an even broader duty of candor and good faith. Material information is that which is not cumulative to information already in the record. It is also information that is inconsistent with applicant’s assertions. Individuals subject to the duty must disclose all material prior art or other information they are aware of at the time the application is filed or they become aware of during its prosecution. This includes co-pending applications by the applicant. Disclosure by a pro se inventor, agent or attorney is made in writing to the United States PTO. Other individuals may satisfy their duty by disclosing the required information to the inventor, agent or attorney who in turn will disclose it to the United States PTO.

Manual of Patent Examining Procedure rule 2004 lists procedures to aid in compliance and disclosure. These are suggestions, not requirements. With all of that said, the United States PTO does NOT investigate, comment upon, reissue or reject applications based on disclosure problems. A court is the best forum to consider disclosure problems and fashion an equitable remedy to fit the facts of the case. Error without deceptive intent, if averred in a reissue oath or declaration, may be corrected by the United States PTO.


Do I have to publish my non-provisional utility patent application?

An applicant may request that the application not be published, but only if the invention has not been and will not be the subject of an application filed in a foreign country that requires publication 18 months after filing (or earlier claimed priority date) or under the Patent Cooperation Treaty. Publication occurs after the expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application. Provisional and design applications are not published.


After I apply for a patent, does the world know about my invention?

Not until your application is published or issued. Patent applications are confidential at the early stages. Following publication (or referenced in another published patent or patent application), the application for patent is no longer held in confidence by the USPTO and any member of the public may request access to the entire file history of the application. To maintain secrecy, we encourage the use of confidentiality agreements. Should your patent application not publish or be issued as a patent, the technology may qualify as a trade secret.


What is a patent?

It is a property right for an invention granted by a government to the inventor. A United States patent gives inventors the right “to exclude others from making, using, offering for sale, or selling their invention throughout the United States or importing their invention into the United States” for a limited time. In exchange for public disclosure of the invention when the patent is granted and for fees paid to the United States.


What can be patented?

Utility patents protect inventions that are a novel, nonobvious, and useful:
•Process
•Machine
•Article of manufacture
•Composition of matter
•Or an improvement of any of the above items. Most patents are for incremental improvements in known technology; the innovation is evolution rather than revolution.

Design patents are for the new ornamental design of an article of manufacture. One example is the look of an athletic shoe. All Star Wars characters were protected by design patents. Plant patents provide patent protection for asexually reproduced any distinct and new variety of plant.

Meaning of Novel, Nonobvious, and Useful
•New and Novel: For a United States patent the invention must never have been made public in any way, anywhere in the world, a year before the date on which an application for a patent is filed. In other countries, you have no one year grace period and require absolute novelty.
•Original and Nonobvious: An invention involves an inventive step if, when compared with what is already known, it would not be obvious to someone with a good knowledge and experience of the subject, for example, if you just make cosmetic changes that is obvious.
•Useful: This means that the invention must take the practical form of an apparatus or device, it has to do something.



What cannot be patented?


•Laws of nature
•Physical phenomena
•Abstract ideas
•Literary, dramatic, musical, and artistic works. These can be Copyright protected.
•Inventions which are considered not useful or possible by the USPTO for example perpetual motion machines; or offensive to public morality.



What is the difference - provisional or non-provisional patent application?

The non-provisional application establishes the filing date of your patent application and begins the examination process. Your patent application will be examined by the USPTO.

A provisional application only establishes your filing date and expires automatically after one year. You may file a provisional application when you are not ready to enter your application into the regular examination process.

A provisional application establishes a filing date at a lower cost for a first patent application filing in the United States.

A provisional application allows the term "Patent Pending" to be applied to your invention.

How long does patent protection last? (As of year 2005)

Utility and plant patents are granted for a term which begins with the date of the grant and usually ends 20 years from the date the applications were filed. You must make the timely payment of the appropriate maintenance fees.

Design patents last 14 years from the date you are granted the patent. No maintenance fees are required for design patents.

How do I know if my idea is patentable?


•First, check to see if your idea qualifies.
•Second, learn the basics of the patenting process.
•Next, do a search for of all previous public disclosures that concern your invention. These public disclosures are called prior art.

Prior art includes any patents related to your invention, any published articles about your invention, and any public demonstrations. This determines if your idea has been patented before or publicly disclosed making it unpatentable.

A registered patent attorney or agent can be hired to do a patentability search for prior art, and a big part of that is searching for U.S. and foreign patents that compete with your invention. After an application is filed, the USPTO will conduct their own patentability search as part of the official examination process.

Conducting a thorough patent search is difficult, particularly for the novice. Patent searching is a learned skill. A novice in the United States could contact the nearest Patent and Trademark Depository Library (PTDL) and seek out search experts to help in setting up a search strategy. If you are in the Washington, D.C. area, the USPTO provides public access to collections of patents, trademarks, and other documents at its Search Facilities located in Arlington, Virginia.

It is possible, however difficult, for you to conduct your own patent search.

You should not assume that your idea has not been patented even if you find no evidence of it being publicly disclosed. It is important to remember that a thorough examination at the USPTO may uncover U.S. and foreign patents as well as non-patent literature.

What is the difference between a copyright, trademark and patent?

A copyright protects original works that fall under the categories of literature, dramatic, musical, artistic, and intellectual. These works may be published or unpublished, and the Copyright Act of 1976 gives the owner exclusive rights to reproduce his or her work in any medium. A copyright protects a form of expression, but not the subject matter of the work. For example, if someone wrote an article about a new car on the market, the text would be copyrighted, preventing someone else from using that particular material. A copyright does not prevent others from writing their own original article about this new car, however, or from using or making the car themselves.

A trademark is used to protect a word, symbol, device, or name that is used for the purpose of trading goods. The trademark indicates the source of goods and distinguishes them from the goods of others. A trademark may also be used to prevent others from using a mark that might be confused with another; trademarks, however, do not prevent other people or businesses from producing the same product or services under a different mark.

In the US, trademarks can be registered with the United States Patent and Trademark Office (USPTO). The filing fee is more substantial than it is for a copyright, and it usually takes a longer time to obtain registration, since the Patent and Trademark Office conducts a substantive review of any potentially conflicting marks, or marks that might be confused with others.

A patent for an invention grants a property right to the inventor that will prevent anyone else from making, using, or selling an invention. A patent lasts for a limited amount of time, usually 20 years from the date the application was filed, and is only effective in the country in which it was filed. The application for a patent must include a detailed description of how the invention works. Since a patent is considered "property," it may be bought, sold, mortgaged, or licensed by the owner.

Who can apply for a patent?

A patent must be applied for only in the name(s) of the actual inventor(s). However, the inventor can sell or assign the patent to someone else.

What types of patents are there?

There are utilty, design, and plant patents. Utilty patents are the most common.

Who owns a patent?

Patents are granted only in the name or names of the actual inventors. An inventor may sell, will, transfer or give all or any percentage of the rights to a patent to anyone. This is called patent assignment. Patents can also be licensed exclusively or non-exclusively.

When does a patent application have to be filed?

A patent application should be filed as soon as possible after the completion date of the invention. The inventor must also be ready to provide a description of his/her invention that would let someone trained in the same field as the invention to understand the description of the invention and then be able to make and use the same invention.

By law, a patent application must be filed within one year of the date your invention is fist publicly disclosed. That means your invention is pubicly known of, or used by others, or offered for sale.

Is my United States patent valid internationaly?

A United States patent protects your invention in the United States only.


Patent Prosecution

The process of “arguing” the merits of your application is referred to as “prosecuting” the patent application. This process typically takes from one to three years and is often similar to a negotiation with the patent office. A balance is reached between the limited scope of patent protection offered by the Examiner and the broader scope of patent protection sought by the inventor. This discussion is not intended to cover the full scope of patent prosecution practice, but to familiarize a non-patent professional with a typical prosecution scenario. It should be understood that additional and other actions may be taken by the United States PTO.



After filing a patent application, an Office Action from the United States PTO will usually be received within 18 to 36 months. (Some art units are so overwhelmed with applications that it may even be 40-44 months.) Typically, the first review of the application by the United States PTO Examiner is sent to the applicant in the First Office Action. This may be final or non-final.

In some cases, the First Office Action on the merits is preceded by a Restriction Requirement from the Examiner. The Examiner may break the claims into distinct inventions and ask the inventor to elect one such invention for prosecution. The remaining claims may be immediately prosecuted by the inventor via a continuation application, or held in abeyance until the first application is allowed and prosecuted via a divisional application. Of course, the inventor may elect not to prosecute on the non-elected claims.

Typically, in the First Office Action, the Examiner will reject some or all of the claims of the patent under 35 USC 103 when the Examiner believes it would have been obvious to create your invention in view of the prior art located by the Examiner or disclosed by the applicant. Other typical grounds for rejecting an application include 35 USC 102 rejections for lack of novelty.

It is then necessary for the patent professional to argue that your invention is patentable based upon specified differences between the invention and the prior art cited by the Examiner. Prior art may generally include other domestic and foreign patents (both published and unpublished), articles, thesis, conference papers, and other literature. Legal arguments and case law may be used to refute the Examiner's position. A telephone or in-person interview with the Examiner may also be arranged to find agreement on any issues of dispute.

Typically, the Examiner responds to the inventor’s Reply to First Office Action with a Second Office Action. While this may be final or non-final, it typically is final. The examiner may reject all of claims a second time, indicating that the inventor’s arguments were not persuasive. The examiner may set forth conditions (in the nature of required changes) upon which a patent would be allowed for some of the claimed subject matter. The inventor may make the “suggested” changes and request the patent to be issued in accordance with the Second Office Action. Alternatively, the inventor may request continued examination and another opportunity to address the Examiner’s rejections. The inventor may also make improvements or revisions in his invention, addressing the issues raised by the Examiner, and file a continuation-in-part application requesting priority to the parent application. The new subject matter will not be granted priority if not enabled in the parent case and the application may have some claims with one prior art date and other claims with a second prior art date.

Once put in condition for allowance, the United States PTO will issue a Notice of Allowance. Upon payment of an issue fee (you have 3 months to pay) and attention to any formalities raised by the patent office, a patent will normally be published and issued within 3 months. These formalities typically include replacement of pending patent application or published patent application references with the issued patent numbers for any such patents that issued during the pendency of prosecution.


How to Protect an Idea during the Early Stages – Nondisclosure Agreements or Provisional Patent Applications

Nondisclosure agreements create a state law contractual obligation, and thus, contractual damages for breach. These fact-specific enforcement actions are often expensive and lengthy endeavors. The strength of a nondisclosure agreement is proportional to the specificity of the confidential information covered by the agreement. Whereas nondisclosure agreements are written fairly broadly, used alone, they may not offer the best protection to an inventor’s proprietary technology. In many cases, it is preferable to base a nondisclosure agreement on a previously filed patent application, including a provisional application. This creates a firm scope of the technology being disclosed, as well as potential federal causes of action for infringement on a patent that issues from such patent application or the utility application claiming priority to a provisional application.

Nondisclosure agreements are often used when a new concept is brought to a third party for manufacturability/marketability analysis or assistance in reducing it to practice. These meetings often become collaborative “think tank” sessions and it may become difficult to sort out which technology was brought in and which technology evolved as a consequence of the collaboration. Inventorship issues arise as well as disputes over ownership of the technology. A simple nondisclosure with broadly listed subject matter may not effectively assist in resolving these fact-specific conflicts. On the other hand, a filed patent application would be extremely helpful in establishing the bounds of the concept or invention prior to any collaboration or improvement.

It is important to remember that even “patent pending” indicates that an application has been made seeking a patent; it is not a guaranty of a patent being issued by the Patent Office. Additionally, provisional patent applications have no enforceable claims and may provide only limited protection if they are not converted to utility applications within one year. Thus, if a patent never issues as a result of an unpublished application (provisional applications, design applications, and utility applications with non-publication requests and applications abandoned prior to publication), it may still be a trade secret. Once the “cat is out of the bag” without an NDA, it may be difficult to maintain it was a trade secret. Conservative practice would include the use of both provisional patents AND confidentiality agreements.


What is a provisional patent application?

A provisional application, which was designed to provide a lower cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants. Provisional application provides the means to establish an early effective filing date in a patent application and permits the term "Patent Pending" to be applied in connection with the invention. Provisional applications may not be filed for design inventions. The applicant would then have up to 12 months to file a non-provisional application for patent. The claimed subject matter in the later-filed non-provisional application is entitled to the benefit of the filing date of the provisional application if it has support in the provisional application.


What is PCT?

The Patent Cooperation Treaty (PCT) enables the U.S. applicant to file one application, "an international application," in a standardized format in English in the U.S. Receiving Office (the U.S. Patent and Trademark Office), and have that application acknowledged as a regular national or regional filing in any State or region that is party to the PCT.


Foreign Patent Protection

Most countries have patent laws, and a person desiring a patent in a particular country must make an application for patent in that country, in accordance with the requirements of that country. The laws of many countries differ in various respects from the patent law of the United States. In most foreign countries, publication of the invention before the date of the application will bar the right to a patent (In the

United States, a patent may be obtained if applied for within one year of publication). Most foreign countries require that the patented invention must be manufactured in that country after a certain period, usually three years. If there is no manufacture within this period, the patent may be void or subject to grant of compulsory licenses.

The Patent Cooperation Treaty (PCT) provides centralized filing procedures and a standardized application format for patents in its 124 member countries. Timely PCT application provides an international filing date in each country which is designated in the international application and provides a report of search of the invention. It also delays the time period for filing the national applications providing up to 30 months from the original U.S. filing date to file in any of the 124 member countries.

U.S. law requires that inventors with inventions made in the United States obtain a license from the USPTO before applying for a patent in a foreign country. Such a license is required if the foreign application is to be filed before an application is filed in the United States or before the expiration of six months from the filing of an application in the United States unless a filing receipt with a license grant issued earlier. Any denial of a foreign filing license is indicated in the filing receipt mailed to each applicant. This may be the case for example in circumstances where the inventor involved technology necessary for national defense purposes. The USPTO may order that an invention be kept secret. If the invention has been ordered to be kept secret, the consent to the filing abroad must be obtained from the Director of the USPTO during the period the order of secrecy is in effect.


Confidentiality Agreements

There are many “standard form” confidentiality agreements available. In general, these forms may “do the trick,” however, be sure that the recitals set forth the circumstances surrounding the disclosure and consideration is expressly set forth. Broad, inclusive definitions of confidential information are desirable, however, always be specific where possible, especially by referencing trade names, trademarks, service marks and patents. Consider including a provision that no license or joint venture is implied. Consider a provision discussing which employees have access and how employees of a business will be required to maintain confidentiality in handling confidential information.

Many standard agreements require oral conversations to be summarized in writing and notice of confidentiality to be sent to the receiving party. This creates a presumption that anything not put in the writing is not confidential. In working with independent inventors, my experience has been that this can be burdensome, is usually not done (or done adequately) and causes unintended waivers of confidentiality. Independent inventors believe that the signing of the confidentiality agreement is enough to protect them, despite all of the warnings and instructions you may offer during counseling. Even when an attempt is made to comply with the writing requirement for oral conversations, the writing may create litigation issues as to whether the written summary accurately reflects the conversation content. Consider a Presumption of Confidentiality provision:

The parties further acknowledge and agree that all information disclosed …shall be presumed by the parties to be the Disclosing Party’s Confidential Information …

Another issue I encounter is that survivability clauses in most standard agreements are ambiguous. It may be difficult to determine how long the parties are obligated to keep things confidential. Consider expressly defining the period, for example, with language requiring continued obligations:

•during the period of the business relationship
•two years after the termination of all business relationships
•until the Confidential Information no longer qualifies as a trade secret
•written notice that no longer must be kept confidential

Lastly, many standard forms to not contain language about equitable remedies for breach. This may make it more difficult to obtain a restraining order to prevent the other party from improperly using confidential information.

Consider including provisions acknowledging the injunctive remedy and provisions to recover attorneys fees if you have to enforce the confidentiality agreement.

There are some general exceptions to what is deemed confidential information:

It is also important to note that these assets are also subject to other statutory transfers:
•Corporate dissolution (to shareholders)
•Bankruptcy (to trustee)
•Perfected security interest (to secured creditor)
•Credit judgments (to judgment creditor)


Some key points about Patent Licenses and Assignments

It is the document’s substance, not the document label, that defines the difference between an assignment and a license. A transfer of the entire ownership interest is an assignment while transfer of less than the entire bundle of rights is a license. Issues frequently arise with respect to reservations of rights, take-back provisions, field of use restrictions and the like.

Patent applications may be assigned. An assignment of a patent application carries with it the rights to common subject matter in future divisional or continuation “child” applications as well. Continuations and divisionals are patent applications filed on the same disclosure and contain no new subject matter, but contain new claims. However, the Patent Office records may not reveal such assignment if no one files a request for recordation of the assignment in the “parent” application in the file of the “child” application until issuance or post-issuance. Thus, it is prudent to assess the procedural history of a patent or pending application as well as its subject matter in determining the scope of assignment rights.

Contrarily, substitute or continuation-in-part applications are “child” applications that do not benefit from the assignment of the “parent” applications and require a new assignment to be executed and filed. Continuation in part (“CIP”) applications are patent applications that contain some or all of the disclosure of the “parent” application as well as new subject matter. (These CIP applications often draw claims to improvements or refinements of an invention during the pendency of the “parent” application.)

Provisional applications follow the same legal theory – the assignment of a provisional application carries with it ownership rights to common subject matter, but a new assignment is required for utility applications that contain subject matter that is not common to both.


Patent Pending Status

While an application is pending at the United States Patent and Trademark Office, it is considered “patent pending.” It will be pending until it is abandoned by the applicant, receives a final rejection that is not responded to within the 3 or 6 month time period permitted, or is issued as a patent. It is important to note that the right to exclude does not attach until a patent is issued. However, a product may be marked “patent pending” to deter other competitors from investing in competing devices. In some cases, provisional rights may be granted before issuance of the patent.


Should I test market before I invest in a patent?

It is not recommended. Patent protection may be forfeited one year after the first public disclosure or offer for sale in the US, and immediately forfeited in some foreign countries.


Can’t I just sell my idea?

Maybe, but it is likely to be an uphill battle. Why pay for an unprotected idea that anyone else can copy?

Protecting your idea with a patent creates value for a potential purchaser. If a company purchases patent rights, they are buying an exclusive monopoly on the inventive concept for the term of the patent. They are the only entity that can make, sell, use or import a product embodying the inventive concept. Money the company invests in developing the product and bringing it to market can be recovered when the product has no competitors in the marketplace.

Inventors reap what they sow…the more they invest in developing and protecting the invention, the more value it has in the marketplace.


How do I tell if it is worth pursuing a patent on my idea?



a. Identify if your idea is unique. Is there a similar product in the marketplace? You may search in stores, product catalogues, or US patents on USPTO.gov, Freepatentsonline.com or Google Patents.
b. Assess potential patentability challenges. Make note of the closest products you discover and determine how your product differs, drawbacks of existing products, drawbacks of existing products, and benefits or improvements of your invention. Are these differences obvious when you consider existing products and technology?
c. Consider a professional patent search (cost around $500).
d. Determine the potential market for your product. How much profit do you estimate? Is it cost justified to protect that market? What will be your return on investment?
e. Under nondisclosure agreement, “pitch” your invention to potential companies.


Design Patents and Other Intellectual Property Protection

Design patents may be available to protect surface ornamentation of an article of manufacture. They may also be available to protect the configuration or shape of an article of manufacture. (Of course, a combination of the two may be protected by design patent as well.) The focus is on protecting the pleasing aesthetic appearance of the article where such design is not dictated by functional considerations. To qualify for design patent protection, the design must be definite and reproducible, novel/original and non-obvious.

The same substantive and procedural rules apply to design patents. Full disclosure and definiteness is provided through the drawings. The drawings that accompany the specification typically include at least 7 drawings: each side of a cube and one of the article in use.

Infringement of a design patent occurs when another article of manufacture resembles the patented design so as “to deceive the ordinary observer who gives as much attention as a purchaser usually gives.”

Design patent protection may be available for portions of an article of manufacture. For example, design patents have been granted for the shank portion of a drill. For example, consumers may recognize and desire a unique design in an entire line of tool products. A confusingly similar design might detract from their identification of the desired product and cause them to select an inferior quality copycat design.

When we think of ornamental design, we generally thing of things of beauty. However, design patents are available for mechanical devices that “eliminate the unsightly repulsiveness that characterizes many machines and mechanical devices which have a tendency to depress rather than excite the esthetic sense.” For example, concrete mixers have received design protection on this basis.

In some circumstances, design protection might be a viable alternative in cases where utility protection is not available because of novelty or obviousness reasons.

Things not eligible for design patent protection include things not intended to be visible in actual use, offensive designs and functional designs. The first factor has been the subject of litigation and the test that evolved was whether in some point of commercial life, design is a matter of concern. (Take for example, lingerie, garment hangers, tent pegs, inner sole for shoes and prosthetic bone implants – all things that are hidden from view during use.) In assessing functionality, it is critical to understand that it is the functionality of the design, not the article of manufacture itself. A key inquiry is whether there are several ways to achieve the function of the article.

Design patent protection may complement and bolster trademark protection, unfair competition and trade dress protection. They involve similar concepts in the tests for infringement, but provide very different protection and enforcement means for the inventor. An inventor should seek the counsel of his attorney to evaluate the several options available and determine a strategy for protecting these property assets. An inventor must elect between copyright and design patent protection because of the different terms of protection, different penalties for infringement, and different procedures for procuring protection.