QUESTIONS AND ANSWERS ON
QUESTIONS AND ANSWERS ON PATENTS THE BASICS
What is a patent? A patent is a legal document giving the owner, for a limited time, the right to prevent others from making, using, offering for sale, or importing the invention in the United States and its territories. As a patent owner, you also have the right to license others to make, use or sell your invention on agreed upon terms, or you may sell your patent. In the United States, a patent is issued by the U.S. Patent and Trademark Office (the “USPTO”). Foreign patents provide similar rights in their respective countries.
What are the different types of patents? Utility patents protect the functional aspects of inventions such as machines, manufactured articles, compositions of matter, and processes. Design patents protect the appearance and nonfunctional design of manufactured articles, such as furniture, computers, clothing, and vehicles. Plant patents protect distinct varieties of asexually reproduced fruits, vegetables and flowers. Utility patents—which make up the majority of existing patents—are the main subject of this booklet.
Why are patents important? There are many reasons why obtaining a patent may be a sound business decision. A patent can be used to exclude competitors in a particular market or industry, thereby achieving market share and increasing profits. A patent can generate revenue through its sale or through licensing or cross-license agreements. A small company with only one patent covering a core industry technology can compete with larger companies when securing financing. Foreign patents offer revenue opportunities overseas and broaden an invention’s market.
How long do patents last? Utility patents have a term of 20 years from the application priority date under most circumstances. Design patents are in force for 14 years from the patent issue date, and plant patents have a term of 20 years from the application filing date. A patent will expire if its owner fails to pay the required government maintenance fees or if the patent is declared invalid through some process such as a patent infringement lawsuit. Once expired, the underlying invention passes into the public domain and can be used by anyone—even to the extent of making further developments which might then be patentable.
What does “patent pending” and “patent applied for” mean? These terms may be used by a manufacturer or seller to inform the public that a particular product is the subject matter of a patent application. There are fines for improper use of these terms.
PATENT REQUIREMENTS What are the requirements for an invention to be patentable? The first hurdle for an invention is to qualify as “statutory subject matter”, meaning it must fit into one of the following categories: www.wolfgreenfield.com © 2002. Wolf, Greenfield & Sacks, P.C. All rights reserved.
• any new and useful process (example: new business method such as “one click”) • any new and useful machine (example: new type of wireless device) • any new and useful manufacture (example: new type of ski boot) • any new and useful composition of matter (example: new chemical formula) • any new and useful improvement of any of the above An invention must overcome additional hurdles before a patent is possible, and these vary for the different patent types. A utility patent, for example, must be useful, novel, and nonobvious.
What makes an invention “useful?” Usefulness is typically challenged by the USPTO only when the utility or effectiveness of an invention is questionable. This means patents may be granted even for humorous inventions—as long as they work.
What makes an invention “novel?” The invention must be different from whatever is already publicly known or available (this is called the “prior art”).
When is an invention considered “nonobvious?” The invention must not have been, at the time of the invention, obvious to a person of “ordinary skill” in the inventor’s field. The definition of nonobviousness is anything but straightforward. It is subjective and can be interpreted differently by different patent examiners (USPTO employees who review and accept/reject applications). In addition, an examiner must make this determination well after the date of the invention and may be unconsciously affected by intervening technology improvements. Most arguments presented by patent counsel on behalf of inventors before the USPTO concern this issue.
What should I do if I feel my invention is obvious? Keep in mind it is common for inventors to believe much of their work is obvious. However, an invention probably is not obvious if it solves a problem others attempted—but failed—to solve, or if the inventor’s work lay in the discovery of an unidentified problem, even if the solution was trivial once the problem was discovered. A good case for nonobviousness can be made if an invention yields surprising, unexpected results. Events occurring years after the invention was made can influence the determination of nonobviousness, such as commercial success of the invention or copying of the invention by others.
Are there inventions which are not patentable? Common examples of things you cannot patent include mathematical formulas or theoretical phenomena, laws of nature, naturally occurring substances in their naturally occurring environment, choreographed dance routines (or other processes provided by human motor coordination), and (as should be obvious) anything used for illegal purposes.
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Considerations Before Filing a Patent If I invent something, do I have to get a patent to make and sell it? No. A patent is not a prerequisite to the commercialization of an invention.
If I have never seen my invention before on the market, can I get a patent? Not necessarily. The patentability of an invention depends, among other things, on who is the first to invent and not whether the product has or has not been on the market.
If I see a product which I conceived years ago but never made, can I get a patent? Probably not. By delaying for a long time, your rights may be forfeited. For example, if the product was on sale for over a year, you could not file for a patent.
What records should I keep when developing my invention? When you first conceive of an invention, immediately describe it in a written document (with drawings if possible) which is witnessed, in confidence, by someone who can later corroborate it. After you’ve conceived your invention, keep careful, dated records of your activities in reducing the invention to a working prototype. This activity helps to establish the viability of your invention as well as the date of your invention, which may become important in any future dispute with someone else claiming the same invention.
What if I haven’t made a working prototype of my invention? If, for some reason, you cannot make a working model, promptly file a patent application because the act of filing is considered a constructive “reduction to practice.” Although there is no requirement of a working model to file for a patent, you still need to have enough information to describe a process, product or composition that can be made and will work. In “unpredictable” fields such as chemistry and biotechnology, it is often desirable to test your invention sufficiently to confirm its operability. Otherwise, the patent application may be found to be defective, and the value of the filing date may be lost.
When must I file a patent application on my invention? In the U.S., a patent application must be filed within one year of the date the invention was: • first disclosed to the public in enough detail to be reproduced (for example, via publication in a journal, presenta tion at a trade show, seminar or abstract publication) • first used publicly or commercially • first offered for sale in the U.S. (even if no sale took place) These activities, if carried out more than one year prior to filing, destroy the right to obtain a patent— whether they are carried out by the inventor or by someone else with or without knowledge of the inventor’s work. Outside the U.S., the rule is harsher. In many countries, the right to a patent is lost if anyone (including the inventor) has disclosed the essence of the invention to even a single individual anywhere in the world on a non-confidential basis prior to the effective filing date of the application.
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How do I determine if my invention is patentable? Usually, you would conduct a search. Your patent attorney will directly, or through an agent, investigate the available USPTO records to see whether or not the same, similar or related patents have issued or were published on your invention. The USPTO library may be used for this search because the patents are classified in a manner that facilitates searching. Other sources of information may also be used, such as various databases. Database searching is particularly useful for inventions other than mechanical devices. A report is ordinarily prepared evaluating the likelihood of obtaining a patent based upon the patent references that turn up in the search.
How reliable are searches? A careful search of USPTO records is a good—but not certain—test of patentability. Because a patent application may be rejected on any evidence the invention was old or obvious, it is always possible relevant information not available in the Patent Office exists in other sources of information.
Can I conduct my own search? Yes; however, they are not easy to conduct. You may perform a search in the Patent Search Room of the USPTO itself or in any of the Patent and Trademark Depository Libraries (PTDLs). PTDLs are local libraries which have been designated to maintain a patent and trademark classification system. This type of searching is particularly useful for inventions on products or mechanical devices. If you do not have access to these facilities, your search may not be adequate. Visit the USPTO web site (www.uspto.gov) for a complete list of PTDLs in the U.S.
What should I take to an initial interview with my patent attorney? You should have a complete written description of your invention, with drawings if appropriate. If you have made a model, bring it if convenient. A written description should be sufficiently complete to describe all aspects of your invention. If your invention is complex and the description involves a great deal of material, you may also prepare a summary for ease in explaining the general outline of your invention. Lastly, bring any information you have which identifies the prior art and the problem(s) you were intending to solve.
THE PATENT APPLICATION What is a patent application? A patent application is a detailed document describing your invention which is filed with the USPTO under strict procedural rules. The application consists of two major parts: • the “specification,” including the claims, which describes and defines the invention • the supporting drawings which illustrate each aspect of the invention and how it works (particularly if your invention is a structure or machine) The application must also be accompanied by a government filing fee and a written declaration from the inventor(s) attesting to their invention.
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What makes up the specification? The specification includes the following sections: • a title, which is brief but descriptive • information on the background of your invention which may include relevant prior inventions • a summary of what your invention can do and what problem it solves • a description of your invention’s structure and operation, sufficient that a person of ordinary skill in the field could follow it to make and use the invention • the patent “claim(s)”—numbered paragraphs defining the protection sought
Why are patent claims so important? A patent’s scope is defined by its claims, which are analogous to a deed of real estate in that they define the boundaries of an invention. As a property line defines a boundary across which others can be prevented from passing, a claim of a patent defines subject matter which others can be prevented from practicing (subject matter that would “infringe” the claim). A product or process infringes a claim only if each element of the claim, or its equivalent, is found in the product or process. Determination of the precise scope of a claim is frequently very difficult, and claims are subject to a great many rules developed through numerous cases over the years. Because of this, it is advisable to use a qualified patent attorney to ensure the patent application has the broadest claims possible.
Why do I need more than one patent claim? You may claim your invention broadly and narrowly. Additionally, different features of an invention may be separately protected. For example, a patent may have claims directed to a product, a method for making the product or the method of using it. It is a function of individual claims to provide that scope of protection.
What is a “provisional” patent application? A provisional application does not require claims or signatory documents, and carries a reduced government filing fee. It is automatically abandoned at the end of one year, by which time a “regular” application that “claims priority” (claims the benefit of the provisional application’s filing date) must be filed. A provisional application must meet all of the statutory requirements of a patent application, including an adequate disclosure of the invention. The intended purpose of a provisional application, therefore, is to provide a faster, less expensive way to secure an initial filing date. A provisional application does not initiate the 20 year patent term, so it may effectively extend the patent term one year while it delays examination (and associated expense). This may be particularly beneficial in the biotechnology and chemistry fields. However, if you need to obtain a patent as quickly as possible, a regular application, rather than a provisional, should be filed. It is a general perception that quickly filing a provisional application is a good idea where there is insufficient time to prepare a formal application (for example, the day before the one-year anniversary of the first offer for sale of the invention). However, caution should be exercised. If a provisional application is not written carefully enough to support the claims ultimately desired, its filing date cannot be relied upon as the effective date for those claims. Thus, it may merely give a false sense of security. The decision to file a provisional application should be made only after careful consultation with patent counsel.
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PATENT PROSECUTION What is “patent prosecution”? In the patent world, the term “prosecution” refers to the entire process from the drafting of the patent application until it is accepted and issued, or finally rejected, by the USPTO. You may hear someone refer to the fact he/she is “prosecuting a patent before the USPTO.”
What are the steps in getting a patent? Typically, a patent attorney works closely with the inventor to define the invention, make sure it meets the requirements for patentability, and determine the best mode for practicing the invention. The attorney then conducts a prior art search and prepares the application in the required USPTO format and language. After a patent application is submitted to the USPTO, it is issued a serial number and assigned to a patent examiner for review. The examiner examines the claims of the application in light of the prior art, and issues a first “Office Action” (examination report), usually between six and eighteen months from the date of filing. The Office Action invariably contains rejections of some or all claims based on the examiner’s view of the prior art (it is extremely rare for an application to be approved as filed). What typically follows is several months to two or more years of responses to and negotiations with the USPTO until an agreement is reached about what the patent will cover. The USPTO will consider a limited number of responses and may or may not modify its position. If it does modify its position, and allows some or all of the claims made, a patent will likely issue around three to nine months later, after payment of the appropriate fees. If the USPTO issues a final rejection, the decision can be appealed to the Patent Office Board of Appeals, a three-member board that reviews the examiner’s decision and considers arguments in favor of patentability. If the Board of Appeals decision is adverse, the decision can be appealed to the Court of Appeals for the Federal Circuit (the federal appeals court which exclusively hears intellectual property cases) or to a U.S. District Court. After a final rejection from the USPTO, an applicant can also elect to continue prosecution, with the payment of a fee, rather than appealing the decision.
If the USPTO examiner allows some of my claims, am I foreclosed from pursuing others, or do I have to take what is given to me? You will always have the opportunity of getting a patent on some claims allowed in your pending application while pursuing other non allowed claims in a related application.
What is the “priority date” of a patent application? Usually, the priority date is the date on which the patent application was filed with the USPTO; however, there are certain circumstances in which a patent application will enjoy an earlier priority date. The priority date is significant for many reasons, not the least of which is that it is the date used to establish what prior art is considered in determining an invention’s patentability.
If I pursue an application for a patent and abandon it before it issues, can I reinstate the application at a later time? Not ordinarily. Once you have abandoned an application intentionally, your application and the invention www.wolfgreenfield.com © 2002. Wolf, Greenfield & Sacks, P.C. All rights reserved.
which is the subject matter of it are normally considered abandoned and cannot be resurrected.
Who is an inventor? An inventor is someone who contributes to the conception of an invention, and this contribution must be more than routine engineering skills or supervision. Someone who merely defines an end result to be achieved is not an inventor, nor is someone who only assembles or conducts routine experimentation as the invention is refined. Because the misnaming of inventors may render a patent unenforceable, the question of whether someone is an inventor should be resolved in consultation with patent counsel.
Who owns a patent? A U.S. patent application must be filed in the name of the inventor, and a patent is granted to the inventor unless a written assignment of the application to another is recorded in the USPTO. To determine whether, for example, an inventor or his/her employer owns an invention, state law and particular employment circumstances must be considered, as they may impose a default “agreement.”
If there is more than one inventor, who gets the patent? If an invention is properly a joint invention, the USPTO will issue a patent in the name of two or more inventors. Each inventor has full rights in the invention—regardless of relative contribution—with the exception that no one inventor can grant an exclusive right to another. Because a number of problems can arise with co-owners, it is advisable to have an ownership agreement prepared prior to any collaborative effort between inventors, especially between inventors working for different businesses.
Does the USPTO keep my patent application secret while it is pending? All utility patent applications filed after November 29, 2000 are published 18 months after the priority date (or in some cases earlier) unless the inventors agree not to file any foreign applications, and the appropriate paperwork is filed with the USPTO at the time of filing of the application. Once an application is published, the full application is available to the public on request. Non-published patent applications are maintained in the strictest confidence until the patent issues.
How much does a patent cost? The costs vary widely with the nature of the invention and the type of patent being sought. As a rule of thumb, searching even a simple invention will ordinarily involve expenses of at least $2,000, and filing a conventional patent application on a simple invention can cost at least $8,000-$10,000. More complex cases may cost a great deal more. The cost of pursuing an application through the examination process in the USPTO will also involve a substantial expense. Since these expenses are determined on a case-by-case basis, and are directly related to the nature of the invention, specifics estimates should be obtained separately for each invention under consideration.
Why does it cost so much to get a patent? Patent applications are technical documents which must meet demanding legal standards and also must fully www.wolfgreenfield.com © 2002. Wolf, Greenfield & Sacks, P.C. All rights reserved.
disclose the invention for which a patent is sought. Costs include searching costs, attorney’s fees, government filing costs, and the expenses related to preparing drawings. Other special costs may also be incurred, depending on the particular situation with the invention.
FOREIGN PATENT PROTECTION Does a U.S. patent cover my invention in other countries? No. Most other countries have statutes and regulations addressing the protection of intellectual property including patents. In fact, the scope and term of patent protection may vary from country to country. Your U.S. patent controls only the manufacture, use and sale of products within the United States. However, if a product is made in a foreign country and exported to the U.S., your U.S. patent will apply to the product once it is in the U.S. Similarly, if your patent covers a method for making a product, the use or sale of a product made by that method in the U.S. is covered.
Should I protect my invention in foreign countries? Foreign patent protection is complicated and expensive and should only be sought in those countries in which a patent makes commercial sense and for inventions that are commercially significant. Since the circumstances for each invention vary considerably, counsel should be consulted.
What are some considerations when filing for foreign patents? The laws in foreign countries vary but, in general—and unlike the U.S.—you must file a patent application before any public use or sale of your invention. The U.S. is referred to as a “first to invent” country; all other countries are known as “first to file.” Two international treaties play important roles in foreign patents. Under the first treaty—the Paris Convention—a patent application filed in a member country is treated as if filed on the same date as the applicant’s first application in any other member country, so long as the later-filed application is filed within one year of the first-filed application. The U.S. and most industrialized countries are members of this convention. This treaty is extremely useful to a United States applicant who can file an application in the U.S. before disclosing the invention, and then has one year from the U.S. filing date to file internationally. Another treaty, known as the Patent Cooperation Treaty (or “PCT”), allows for streamlined filing of a single, international application covering about 100 countries. The PCT provides international prior art searching and examination, and delays the time in which decisions must be made (and major costs incurred) as to whether to file directly in each specific country. In essence, this means an option to file abroad is purchased for a fraction of the ultimate cost of filing in each foreign country and, in the meantime, an examiner renders an opinion as to the patentability of the invention. The bulk of expense can thereby be deferred until after some indication has been received on the patentability—and perhaps commercial success—of the invention.
AFTER THE PATENT ISSUES How can I make money from my invention once it is patented? Certainly, one way is to make and sell your invention yourself as long as, by doing so, you are not infringing www.wolfgreenfield.com © 2002. Wolf, Greenfield & Sacks, P.C. All rights reserved.
another’s patent. On the other hand, you may decide to enter into an agreement (or “license”) with another individual or company who will develop and market your invention, while paying you a royalty. You may also choose to sell your patent outright for a lump sum. There are, in fact, web sites devoted to the sale of patented technology.
What types of licenses are typically used? Each type of license has its advantages and disadvantages. An “exclusive” license can be used when only one manufacturer is—or ever would be—licensed to develop your invention. A “non-exclusive” license is used when you will be licensing to more than one licensee.
What is “patent infringement”? Someone is violating (or “infringing”) your patent when the elements of their device or process match your patent’s claims. In fact, if any one claim is infringed, the patent as a whole is infringed. To literally infringe a claim, each and every limitation of the claim must be met. The analysis proceeds word-by-word or clause-by-clause to see if each is met in an accused device or process. Even without an exact match between the claims in your patent and the infringing device, you may still get to a finding of infringement by employing the “doctrine of equivalents,” which applies when the patented invention and the allegedly infringing device or process are sufficiently equivalent in what they do.
What can I do if someone is infringing my patent? There are a number of actions you can and should take, but these will depend on a variety of factors unique to your particular situation. Be aware that the wrong actions could ultimately jeopardize your ability to bring suit and your chances for winning, so patent litigation counsel should be sought. For a more in depth discussion on this topic, please request a copy of our publication, Questions and Answers on IP Litigation.
CONCLUSION These questions and answers cover many—but certainly not all—areas of patent protection. A number of additional resources are available from the USPTO (www.uspto.gov).
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