PLEASE READ THIS CAREFULLY. IN ADDITION, YOU SHOULD NOT DISCLOSE INVENTIONS PUBLICLY UNLESS A PATENT APPLICATION HAS ALREADY BEEN FILED. IDEAS AND CONCEPTS FOR NEW BUSINESSES SHOULD NOT BE DISCLOSED PUBLICLY UNLESS YOU HAVE A BUSINESS REASON TO DO SO AND YOU HAVE RULED OUT PATENT PROTECTION (NOTE: NEW BUSINESS METHODS, IF ENABLED BY COMPUTER SOFTWARE, CAN BE PATENTED IN THE UNITED STATES). FURTHER, SIGNIFICANT CHANGES TO US PATENT LAW HAVE GONE INTO EFFECT RECENTLY. THE MOST SIGNIFICANT OF THESE ARE PUBLICATION OF YOUR INVENTION AFTER 18 MONTHS FROM YOUR DECLARED PRIORITY DATE, UNLESS YOU FILE A DECLARATION THAT YOUR APPLICATION WILL NOT BE FILED IN ANY COUNTRY WHICH REQUIRES PUBLICATION OF YOUR APPLICATION. FURTHER, IT IS ALSO POSSIBLE TO OBTAIN DAMAGES AGAINST AN INFRINGER FOR INFRINGEMENT PRIOR TO THE ISSUANCE OF YOUR PATENT, UNDER CERTAIN CIRCUMSTANCES. NO REPRESENTATION IS MADE THAT THIS INFORMATION IS UP TO DATE.
Soon after you conceive of an invention which you believe has market potential, I strongly recommend that you consult with a registered patent practitioner (an attorney or agent). The initial consultation is often provided without charge, so you have little to lose. And because patent rights can be very fragile, you may have everything to gain from a visit– if you don’t know the law, you can lose your rights–it’s that simple!
Why are these rights fragile? The patent laws have provisions which require that you take action to secure your rights to patent protection in a timely manner. In Europe, for example, a properly prepared patent application must be filed in a Paris Convention country (the US, Europe, and most industrialized nations) BEFORE making information about the invention “available to the public” as defined in the European Patent Convention, Article 54. “Making available” includes providing information about an invention to a potential manufacturer or any one else, without it being understood that your disclosure is a confidential disclosure. Fortunately, if all you seek is a U.S. or Canadian patent, the patent laws of these nations may give you a one year period in which you can file the original patent application. In any case, the laws are complex and it is easy to misinterpret them. Therefore, again, you should see a professional patent practitioner as soon as possible!
Note: the remainder of this Patent FAQ deals exclusively with United States Patent Law, unless otherwise stated.
Under U.S. patent law, it is equally as important that you document your invention thoroughly. If you haven’t already done so, I suggest that at your next available opportunity you sketch the major elements of the invention in a notebook, as well as write a detailed description of its operation, followed by a discussion of its purposes and the advantages. A witness (two are better than one) should then sign your description. The witness should be (1) trustworthy, (2) willing to agree to keep your invention confidential, and (3) unbiased (e.g., not be related to you). If the invention is highly technical, it is important that your witnesses have a working knowledge of the technical field of your invention so that they will be able to understand its operation. Further, I suggest that you ask your witnesses to sign each drawing page, under a statement which reads somewhat like that shown below:
Witnessed and understood it. Date: _______________
____________________________
Witness’s Full Name
_____________________________
Witness’s Full Name
The witness may hand write the above statement in the margins of each page. Notarizing the drawings and written descriptions is not necessary–neither is sending a copy to yourself via registered mail. However, if you wish to do this, or you have already done so, it certainly cannot harm you.
NOTE HOWEVER THAT THIS DOES NOT PROTECT YOU AGAINST SOMEONE FILING A PATENT APPLICATION ON YOUR INVENTION IF INDEPENDENTLY DEVELOPED!
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“Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” may be patented. The invention must therefore be at least “new” (i.e., novel) and “useful”. (35 U.S.C. Section 101).
“Novel” means that others must not have known the invention or placed the invention in public use in the United States before you filed your patent application, and that others must not have already patented or described the invention in a printed publication anywhere in the world, prior to the filing of the patent application.
Also, the invention must not be “obvious.” This means that any changes or modifications you make over any prior products or published designs must not have been obvious to a person having ordinary skill in the industry or trade, at the time of the filing of your patent application.
“Useful” means simply that the invention has a useful purpose, actually works and is not frivolous or immoral.
New categories of products are capable of being patented. For example, computer programs and new business methods involving an innovative system, machine or process are generally patentable, if the above criteria are met.
Of course, the applicant/inventor must describe his or her invention in sufficient detail to enable someone of ordinary skill in the art to make and use the invention without undue experimentation.
Ask yourself this question: “what’s your ultimate goal?” It is probably one or more of those listed below:
Identifying your goals is critical to determining the most appropriate steps you should take to protect your invention. Your goals affect your entire strategy. Your goals directly affect costs as well. For example, if your primary goal is NOT to realize a financial return, but rather to disclose your technology to the public so that others may benefit from your efforts, one option is publishing a description of your invention. In this case, costs are significantly reduced.
Understandably of course, most of us are not interested in making gratuitous contributions to society, especially when the contribution costs us substantial time and money. We rightly believe that we deserve financial rewards and that others should compensate us fairly for our creative efforts. If this is the case, attaining our goal requires a different tact and procedure. This tact is likely to involve the filing of a patent application. Why? This is just the way Congress designed it.
True, having a practitioner prepare a “full-blown” patent application for you can be a very expensive prospect (we’ll talk about the expense later).
However, a somewhat less expensive option is to file a provisional patent application. This essentially buys you one year’s time before you must pay the regular filing fee and file a “full-blown” patent application. It can be somewhat expensive because the enabling and best mode requirements of a regular patent application apply. This means that the provisional application should be just as descriptive as a regular application. Claims need not be filed, but practitioners generally agree that the best practice to follow in drafting the specification is to draft the claims first. Therefore, the net result is that there is very little difference in the cost of preparing a thoroughly descriptive provisional application as compared to a complete regular application. Essentially, you realize a cost savings only if over the year’s time in which the provisional application is pending, you make substantial improvements in the design of the invention. If this is the case, if you draft and file a more up-to-date regular application you can protect these improvements while claiming an earlier filing date for the basic invention.
Yet another option is to keep your invention secret. This option is usually only a viable alternative to patent protection in cases where your invention is a process which cannot be reverse engineered through analysis of the resulting product. If this is the case, then your challenge is to keep the process secret. If you are successful, and no one is able to reverse engineer the process, the benefits of secrecy will help you maintain a competitive advantage. In addition, you will not be limited to protection for 20 years. Thirty five or more years of protection may be attainable. Maintaining secrecy will usually involve having employees and suppliers sign confidentiality agreements, and putting into operation a system which helps ensure that persons who have access to your secrets are aware that they are obligated to maintain secrecy. A risk though is that a competitor will file and obtain a patent which they may be able to enforce against you (the patent laws favor those who “disclose” as opposed to those who “conceal and supress” technical knowledge). You should consult with your local intellectual property attorney to find out whether this is a viable option for you in your particular state.
History and Purpose
The first Article of the U.S. Constitution, Section VIII, provides the basis for the U.S. patent system. [U.S. Constitution, Article I, Section 8, clause 8]. In this article, the Founding Fathers granted to Congress the power to form a system “to promote the progress of Science and useful arts by securing for limited terms to authors and inventors the exclusive right to their respective writings and discoveries.” [Id]. Almost a century after the Founding Fathers drafted the Constitution, Abraham Lincoln expressed his support for the patent system when he stated that “the patent system …. add[s] the fuel of interest to the fire of genius, in the discovery of new and useful things.”
Clearly, the purpose of the patent system, from its earliest beginnings was to provide inventors and their employers with the incentive to create and fund the development of new and useful technologies. The patent laws have accomplished this by providing the inventor or employer with some assurance that he will be able to recover the development costs associated with the technology and then receive some additional reward for his efforts as well. The incentive the Government chose to offer was the granting of an exclusive right to prevent others from making, using, or selling the invention for a period of years sufficient to enable the recovery of these costs and, if all goes well, to return a profit. In exchange for this exclusive grant of monopolistic rights, you, the inventor, must provide the public with a full written and graphical disclosure of your invention, sufficient to enable a person having ordinary skill in the field of the invention to make and use the invention.
Think of a patent as part of a bilateral agreement with the government, an agreement where both parties benefit if the terms are honored. If you do not honor the terms, this may result in a court declaring your patent invalid. Failing to disclose the “best mode” (the best configuration of your invention) at the time of the filing of your patent application is a violation of the terms of the agreement and, as such, can be objected to by the patent examiner.
The term ‘patent practitioner’ broadly refers to patent agents and patent attorneys. Patent practitioners have met the minimum legal, scientific, and technical requirements of the Patent Office, have passed a patent bar exam, and, in addition, have agreed to uphold a standard of professional conduct. In order to maintain his standing before the Patent Office, the patent practitioner has agreed to keep his client’s invention confidential, and not to take any personal benefit from his knowledge of his client’s invention, disclosing it to others only when necessary to effectively represent his client.
In addition to meeting the qualifications which the Patent Office requires of patent agents, the US patent attorney must have earned a law degree from an accredited university, and have passed an intensive state bar examination and an ethics examination. Further, the FBI must perform a background check on the attorney-candidate, and a state bar committee must approve the attorney-candidate’s application to practice law. Still further, the State Bar Association requires that the patent attorney continue his legal education through attending seminars and conferences on recent developments in the law. Only when the attorney-candidate has met all these requirements, does the attorney-candidate become a US patent attorney.
The above differences in qualifications between patent attorneys and patent agents are significant. From a practical standpoint, patent attorneys-at-law are familiar with courtroom procedure, case law, and tactics used to enforce your patent after it issues. The patent attorney may represent you in law suits against infringers, or in drafting license agreements with manufacturers. In contrast, the state bar rules and federal law prohibit a patent agent from providing many of the services which patent attorneys routinely provide (such as those discussed above). The patent agent may, however, do anything which the Patent Office considers necessary to obtain a patent for you. In addition, he may provide general advice concerning copyrights, trademarks, and license agreements. [A patent agent may provide advice on copyrights and trademarks only to the extent necessary for his client to determine whether the client should seek patent protection]. Therefore, if merely obtaining a patent is all you seek, hiring a patent agent may be significantly less expensive than hiring a patent attorney. In addition, hiring a patent agent is almost always a better choice than trying to write, file, and prosecute a patent application yourself. However, if you seek an enforceable patent, then using a patent attorney is almost always the best choice. The patent attorney is aware of some of the common pitfalls of the court system. He or she is generally much more capable of structuring your patent application to avoid these pitfalls. In addition, a patent application is both a legal and a technical document. As such, a patent application is difficult to write properly. Because a patent attorney is trained in both technical and legal writing, he or she is better equipped to write these difficult legal documents.
[FN: Although they have a right to refer to themselves using the English word “attorney”, European Patent Attorneys are patent agents and not attorneys-at-law. This does not mean they are generally not well trained — they are. It’s just that they do not have the formal legal education required to be an attorney-at-law. Therefore it may be best to have European patent litigation managed by a European attorney-at-law, while the technical aspects be handled by your European patent agent (mandataire or patentanwalt)]
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In order for your invention to be patentable, it must be novel, nonobvious, and useful. Generally speaking, a patent practitioner finds that only about fifty percent of inventions appear to be patentable over prior art which he or she uncovers in the typical novelty search. Of these inventions, only about twenty-five percent issue as patents. Therefore, before you do a patent search, think about the fact that you only have about a twelve percent probability that you will receive a patent, unless you resort to more costly procedures (I discuss these below). On the other hand, the more thoroughly familiar you are with the state of the art in the technical field of your invention, the more likely it is that you will receive a patent (I will discuss this in more detail later).
After an initial review process, if the Patent Office rejects your patent application, you may appeal the rejection to the Board of Patent Appeals and Interferences, file a Request for continual Examination or file a continuation or a continuation-in-part (‘CIP’) application. A continuation application is essentially a refiling of the original application but while retaining your priority date. The Patent Office permits no more than editorial changes. A CIP application is a application that adds new inventive disclosure to the prior-filed application, in order to further distinguish it from the prior art. The filing of a continuation or a CIP application increases the costs of obtaining a patent. However, these filings also increase the probability that you will receive a patent. The prior art is more clearly defined at this point; for this reason, describing improvements which are novel is much easier with a CIP.
If you are seeking only design patent protection, you will be happy to learn that obtaining a design patent is considerably easier than obtaining a utility patent. Approximately 80% of the design patent applications filed ultimately issue as design patents.
When it takes less than an hour of their time, many patent attorneys do not charge for the initial office visit. The first real expense then is the patent search and patentability opinion, costing from $1200 to $4000. The patent practitioner performs the patent search himself, or hires a professional searcher to perform the search. He or she then carefully reviews the results of the search, and prepares a letter stating why he does or does not believe the filing of a patent application would likely result in the issuance of a patent. The search criteria he uses is often highly subjective, and the search files are not 100% complete. Therefore, the Patent Examiner, the Patent Office employee which the Patent Office charges with the responsibility of determining whether your invention warrants patent protection, often finds prior art that the practitioner, or the private searcher, did not uncover.
When the practitioner completes his assessment, you have the opportunity to review the results, and to decide whether or not to ask the practitioner to write the patent application. Depending on the complexity of the invention, the practitioner’s fees for preparing and filing a patent application vary from about $7000 to over $15,000. In addition, you must pay the government filing fees at the time you file the patent application. The filing fee varies from just under $500 to over $1000, depending on whether you are (1) an individual or a small business; or (2) a large corporation. The practitioner may file formal drawings with the application. Formal drawings usually cost about $100 per page of drawings. Most patent draftsmen use CAD software to generate drawings. CAD software allows quick and inexpensive modification of the drawings. For the typical application, a thorough description of the invention usually requires four to eight drawings. However, the Patent Office does not require that you file the formal drawings with the application. Therefore, this is one expense which you may postpone until the Patent Office indicates that you will receive a patent.
While the patent application is pending, you must pay additional government fees and practitioner’s fees. The government fees are usually for filing petitions, and for printing the patent application once the Patent Office has decided that the application will issue as a patent. The practitioner’s fees are usually for writing and filing amendments and petitions on your behalf. If the Examiner’s repeated rejection of your patent application requires extensive amendments of the application, or an appeal to higher authority, the additional fees you may pay can exceed the initial cost of preparing the application. Even after you pay these additional fees, the practitioner cannot guarantee that the Patent Office will ultimately grant you a patent.
Unfortunately, the government fees don’t stop once the patent issues. You must pay maintenance fees in order to prevent your patent from expiring. Fortunately, in the US, you need only pay a relatively small fee every 3-4 years after grant.
The period of time which the Patent Office usually requires to review and grant a patent varies from about 2.5 to 5 years. In special circumstances, you can accelerate the process. Your age and health, as well as the importance of your invention to society, are factors which the government will consider if you ask it to accelerate your application’s review. This is known as the period during which your patent application is “pending”. During this period, you can expect to spend on average anywhere from two hundred to six hundred dollars per month for patent-related fees. However, each month’s fees almost never hit the average, and may vary from nothing to more than $1500.
Inventors often ask me this question: “Once I file a patent application, should I wait until the Patent Office grants my patent before I attempt to market and sell my invention?” Usually, the answer to this question is “no”. However, the quality and type of patent application which you filed are significant factors in a determination of whether you are free to market and sell your invention. If the patent application which you filed was thoroughly descriptive of your invention, and you do not anticipate major improvements, you may be free to market and sell. However, someone else may hold a patent on an aspect of your invention, and can therefore prevent you from making, using, or selling your invention. Therefore, I recommend that you hire a practitioner to perform a “right-to-use” search before you begin manufacturing, marketing, or selling products based on your invention.
The Patent Office recommends that you check on the reputation of so-called “invention promotion organizations” or “invention marketing companies” before making any commitments to them. You may do this by calling the Better Business Bureau responsible for maintaining records for businesses in the same telephone area code as that of the invention promotion organization. If other inventors have filed complaints against the organization, this is a good indication that the organization is not reputable. On the other hand, you should give no weight at all to the fact that no one has filed a complaint with the Better Business Bureau, unless the organization has operated out of the same location for more than four years. This is because, for their first few years of operation, invention promotion organizations are able to avoid formal complaints by telling their clients that they should not expect any concrete results for a period of three or four years. When this period expires, and clients begin to file complaints, the invention promotion organization changes its name and moves to another state.
The Patent Office also recommends that you ask your patent practitioner about invention promotion organizations. I have found that almost none of them are reputable. In my opinion, if the Patent Office were to award patents to these organizations for each of their novel methods of extracting money from the pockets of independent inventors, these organizations would dominate the field! For example, when you ask the typical invention promotion organization to provide a quote for their services, this company quotes a basic fee which covers the cost of a patent search, a patentability opinion, and the preparation of a “handsome”, bound, and engraved document which emphasizes the total value of the market in which your invention might be sold. The basic fee for these services is not excessive. However, despite the fact that a patent practitioner may supervise the work involved in their preparation, I question the validity of both the search and the opinion. The patent practitioner writes these opinions in light of the fact that the invention promotion organization is his client–not the inventor. Under these circumstances, most case law supports the proposition that the attorney owes no legal duty to you–rather, his sole duty is to his client, the invention promotion organization. Therefore, the invention promotion organization, as the practitioner’s client, may instruct the practitioner to limit the scope of the patent search or to file only a design patent application or to file a utility patent application with claims so narrow as to assure obtaining a patent. In this case, the organization invariably asks the attorney to provide a written opinion as to whether or not you may obtain any type of patent at all (design or utility patent) on the invention. Both the organization and the practitioner know that the answer to this question will almost always be “yes”, because, as I have already stated, design patents grant on about 80% of the applications which practitioners file and a narrow patent claim in a utility application is easy to obtain. However, the practitioner provides his opinion because he needs the money more than he needs a good reputation. The invention promotion organization pays for the opinion because it is sure to result in “good news” for you. [Be careful. If you ask the organization to review several inventions, they may attempt to disappoint you using one or two of your inventions, in order to set you up for the “good news” which they expect to deliver on another invention].
Once you receive (1) the bound search results, (2) a favorable patentability opinion which an attorney has prepared, and (3) market research emphasizing a very large potential market, everything appears to be legitimate, and you are beginning to see dollar signs next to six, seven, or eight figures! The invention promotion organization convinces you that they can sell or license your invention to a manufacturer. All you need to do is hire them, and, eventually, the checks will start rolling in. You are vulnerable at this point. Because the invention promotion organization knows this, they offer you a deal you cannot resist. For a fee of from $12,000 to $30,000, the organization will have a patent application prepared and filed for you. In addition, the organization agrees to market your invention for you, and help you get that million-dollar royalty contract which you surely deserve! In order to draw you away from your money, the organization tries to make you believe that they think your invention is a “sure hit”. To “prove” this, they’re willing to (1) accept a share of the future royalty earnings of the invention in lieu of a portion of their fee (the reduction is anywhere from $6,000 to $18,000), and (2) guarantee that if the Patent Office does not grant a patent to you, the organization will refund 100% of the fees you’ve paid them. In addition, if you don’t have the cash, the organization will finance the fee for you. [Although the organization finances the fee, the organization sells the loan to a third party bank which is not associated with the organization. In this case, the law obligates you to pay the loan back in full, even when you can show that the organization committed a fraud against you]. By now, the organization has thoroughly convinced you that your invention will earn millions. When you run the math, it makes no sense to give the organization a portion of your future millions, just to save a few thousand dollars today. Therefore, you agree to the original fee. Unfortunately, you have played right into their hands.
What does the invention promotion organization really do for you? First, their fee (a minimum of about $6000) includes only the cost of preparing a design patent or a utility patent with very narrow claims. By filing a design patent application or a narrow utility patent application, the organization can afford to guarantee that a patent will grant, because, as you will recall, design patents grant on about 80% of the applications which inventors file and it’s quite easy to get a utility patent with a narrow claim. This might be OK, if the patent that grants appropriately protects your invention. However, design patents are appropriate for only about ten percent of inventions and a utility patent with an excessively narrow claim is useless. In the case of design patents, if you were to randomly file design patent applications on inventions, chances are about 90% that you’ll get a nearly worthless patent. In many cases in which organizations automatically file only design patent applications, the patent that eventually grants can actually harm you, when it becomes prior art which prevents you from obtaining the appropriate protection of a utility patent.
Let’s say that you are still considering hiring an invention promotion organization, and that you believe, despite all that I’ve said, that the organization you have found is legitimate. However, you are willing to test them. In this case, I suggest that you call them and demand that they provide utility patent search results and a utility patentability opinion. Insist that you talk to the patent attorney directly and that he agrees he will represent you personally and not the invention promotion organization. Tell the attorney that you want his opinion to address the likelihood that the Patent Office will grant you a utility patent with claims of potential commercial value. Tell the organization that, in any quotation for services they provide, you expect the fee to include the cost of preparing, filing, and prosecuting a utility patent application. Demand that the organization provide all their guarantees in writing. If the organization is willing to guarantee that you will receive a patent, be sure that they guarantee that you will receive a utility patent having claims of potential commercial value, not just any patent. If you do all these things, you will increase your chances of getting something of value for your money. If the organization refuses to provide written guarantees or to follow your specific instructions, demand your money back. If they refuse to do this, immediately report them to the Better Business Bureau and the consumer protection division of your Attorney General’s office!
In summary, you should be wary of doing business with professional service providers who have no ethical obligation to seek your best interest. Seek the advice of the Patent Office and of your patent attorney–these are the most reliable sources of information.
Nondisclosure Agreement
A nondisclosure agreement is a special agreement between someone willing to provide confidential information, and a willing recipient of information. The recipient agrees to keep certain information confidential in exchange for some benefit (e.g., to evaluate new technology for its potential benefits). The provider of the information hopes to interest the recipient in purchasing or licensing the information. If you’re dealing with a patent practitioner, especially a patent attorney, the practitioner is bound by a professional code of conduct which requires him to keep such information confidential, whether or not he signs such an agreement. Other professional service providers, or any individuals wishing to sell something to you, are usually happy to sign such an agreement if it is necessary to get your business.
On the other hand, in instances in which a company manufactures, markets, and sells its own products, it is much less likely to be willing to sign such an agreement. In fact, most large manufacturer-distributors simply refuse to sign such agreements, as a matter of corporate policy. These companies evaluate many different inventions which are developed both internally and by independent inventors. Sometimes they find that an invention submitted from the outside is similar or identical to one which they have developed internally. Understandably, these companies do not want to be sued by an irate independent inventor, should they coincidentally have been planning to manufacture and sell a product similar to that disclosed by this inventor. Neither do they want to be subject to a lawsuit, if, in their opinion, the invention is an obvious improvement over the prior art.
Therefore, if you wish to have larger manufacturer-distributors consider your invention, you will probably not be able to rely on the protection of a non-disclosure agreement. In this case, probably the only effective way to protect yourself is to first file a thoroughly descriptive patent application. By doing this, if the manufacturer refuses to become a licensee under your patent, yet goes ahead and manufactures your invention, you will be able to sue him for infringement, once the patent application matures into a patent.
Even if you have filed a patent application, some manufacturers will refuse to evaluate your invention until your patent grants (e.g., Tupperware Corporation). If this is the case, you have little choice but to wait for your patent to grant, or to pursue a license agreement with other companies who do not have such a requirement.
Unfortunately, there are always those companies which refuse to consider all outside inventions whatsoever. This mentality is commonly known as the “Not-Invented-Here” syndrome. These companies prefer to hire the inventors, and to develop inventions in-house. They are willing to forego the opportunity of reviewing outside inventions, in order to reduce the risk that they will be sued for misappropriating some independent inventor’s idea. Therefore, don’t be discouraged when such companies send you the ‘Thanks, but No Thanks’ letter.
Finally, if you have a concept for a new business, be warned! Such ideas are generally not patentable. (Business methods which require hardware (e.g., a computer and a database) to implement, may be patentable). If you disclose such concepts without having first entered into a nondisclosure or consulting agreement, you are at risk of virtually giving your concept away. In cases in which a company has signed a nondisclosure agreement, certain ideas and concepts, even for new business ventures, may be protectable, provided that you can prove that your concept is novel. However, litigation is more likely in these cases.
In order to properly develop your invention, you must consider the prior art and other technologies which might compete with or enhance your invention. Most of us would claim we do something like this before we make a decision to buy a product. After we have decided that we need a product to meet a specific need, we first consider the competing products: how well they function; and how much they cost; right? We should do the same thing in the product development process because, ultimately, we want consumers to buy our products and not someone else’s. I have found that the best way to develop inventions is to brainstorm.
Your goal in brainstorming is to mature the design of the invention, and to identify shortcomings in the original design which otherwise might, in the future, be the subject of a rival inventor’s patent application. Remember, if someone else gets a patent on improvements to your invention, you will not be able to use those improvements to enhance products based on your invention without first obtaining a license from the owner of the patent for the improvements. In addition, the more you have refined your design by the time you file your patent application, the higher the probability that the patent, once it grants, will be enforceable.
Further development of the invention produces a better understanding of the greatest potential breadth of the intellectual property. This enables the patent practitioner to draft claims in the patent application which, if the examiner allows them, will result in broader patent protection. Broad patent protection means that the patent should be difficult for a competitor to circumvent. In an attempt to uncover any weaknesses in the patent which might enable in-house engineers to design around it, the competition’s legal and engineering departments will subject a valuable patent to intense scrutiny. To help prevent a negative result from such scrutiny, you and your patent practitioner can play the part of a typical competitor so that you can better forecast how the competitor might respond to your patented invention. With this forecast, you can then review and modify the patent application to preclude some of these possible design-arounds. I sometimes refer to these sessions as “defensive driving sessions” because you are trying to prevent an in-court collision with your competition by anticipating his moves.
‘Defensive driving’ is essentially brainstorming the technology in order to consider every conceivable alternative design which could do what your invention does, without infringing the claims of your draft patent application. In order to have an effective brainstorming session, it is important that at least one of the participants in this session be familiar with a variety of technologies and with design engineering practice. You or your patent practitioner may have this experience. If neither of you has this experience, you may be able to find a consultant to fill this role. If you hire a consultant, I have a couple of words of caution. You should make it very clear that what you discuss in these sessions is confidential. In addition, you should have the non-attorney participants sign a consulting agreement in which they agree to assign to you any patentable concepts which they might suggest during the session.
Taking Advantage of the Results of a Patent Search
You can glean valuable information from a patent search. For example, you may use the information from the search to expand the disclosure in the specification of your patent application in order to bring it up to the state of the art. That is, by describing the most obvious modifications to your invention in your patent specification, you can prevent a subsequent inventor from obtaining an enforceable patent on these improvements.
In addition, the patent search should indicate how many other inventors have made claims in the field of the invention. You should also be able to learn whether subtleties distinguish the patents, or whether there are major differences. These facts will give you and your patent practitioner a general feel for the level of patent protection that the Patent Office may be willing to grant to you.
You can glean still more information from the prior art patents which you discover during the patent search. For example, if many of the inventors in the field have assigned their patent rights prior to the time their patents were granted, this indicates either a field which corporate inventors dominate, or that many independent inventors were able to license their technology before their patents issued. (Look to the first page of the prior art patent, just below the name of the inventor. If you find the heading ‘Assignee,’ then the inventor assigned the patent to a company prior to the time the patent granted). If either is the case, you are inventing in an active technical field. On the other hand, the fact that the inventors of most of the patents have assigned their patents may indicate that the industry is closed to outside inventors. In order to distinguish between the two possibilities, you will have to use your common sense, and consider other factors such as the relative size of the licensees, the nature of the industry, and so on.
Research the Market:
First you should research the market thoroughly! Doing so helps establish whether your invention is worth the time and considerable amount of money you will be investing in it. Readily available sources of technological and market information include the following:
Inventors often overlook one method that is sometimes very effective in obtaining information about competing products. A phone call to the local distributor of products similar to the invention can be a gold mine of information. If you indicate your interest in purchasing a solution to your problem (the same problem which your invention solves), a knowledgeable and service-oriented salesman should be able to tell you what products are currently available that would help solve the problem. When you are a potential consumer, the salesman will usually be happy to supply you with brochures on the various alternatives.
Although market research bears upon whether or not an invention is patentable, it is not within the scope of a typical patent search. A patent search is just that–a search of patents, and nothing else. Therefore, despite the fact that the results of a patent search may indicate that your invention is patentable, the invention will nonetheless be unpatentable if anyone offered the same invention for sale, published an article about the invention, or disclosed it publicly prior to the filing of your patent application. Unfortunately, just because someone else didn’t try to patent a certain invention, this does not guarantee you the right to patent the same invention.
You Should Perform Your Own Patent “Survey” Search:
Unfortunately, you cannot significantly reduce the likelihood that someone else has patented your invention merely by checking the Sears catalog, researching the market, and browsing through shops at a mall. However, doing this, in conjunction with performing a patent “survey” search, will enable you to more confidently invest your hard-earned money in a formal, professional search.
The primary advantage of your performing your own patent search is saving money so that you can afford to pursue this hobby even if your first effort fails. Inventors rarely ever just come up with one invention, and that one invention succeeds. Successful inventors are constantly inventing; they have made a long-term commitment to it. One major problem though–it is an expensive hobby. Patent attorneys are some of the highest paid professionals. As I already mentioned, of the inventions for which a patent practitioner performs a patent search and writes a patentability opinion, about half are not patentable. Assuming that you will pay a patent professional $1500 or more for each “dry-hole”, it is clear that if you are a prolific, although not-yet-successful inventor, you have much to gain by increasing the probability that the search will return favorable results. You can increase the probability significantly by pre-screening your inventions through the performance of your own patent survey search. If you do this, you’ll be doing the patent practitioner a favor as well; I do not know any patent attorney who likes being the bearer of bad news, much less when the bad news comes with a $1000 plus price tag!
Once you begin your search, I recommend that you follow through with it even after you find a patent very similar to your invention. Then, when you think you’ve found all relevant patents, pick up the most similar patent and look at its “References Cited” section. The Publications Division of the Patent and Trademark Office places this section on the first page of the patent, and lists all patents which the examiner or the applicant cited during the prosecution of the patent application (see Appendix, exhibits A or B). Now make copies of the most relevant patents, and examine them closely. [You will have to use the microfilm copier, so bring plenty of dimes with you]. If you already found most of the patents in the “References Cited” listing, you probably did a good job with the search. On the other hand, if you find that you failed to uncover several relevant patents, you should probably start your search again.
In rare instances, it may not be worth your time to perform a patent survey search. This may be the case if you are familiar with the technological field of the invention, the field is less than two or three years old, and there are no similar products currently on the market. These facts may justify your making a request that your patent practitioner not do a patent search. You are incurring a risk here (as always), but the risk may be small enough to justify going forward with a patent application. Confer with your patent practitioner and go with his advice.
Be Prepared for the First Meeting
Although the first meeting with your patent practitioner may be free, it is up to you to make it productive–one that is more than just a personal introduction. To this end, I recommend that, prior to your first meeting, you complete the “Invention Disclosure to Attorney” (the “IDA”) found in the Appendix (Exhibit C), and give it to the attorney during your first meeting. The IDA asks questions which the patent practitioner typically asks in this first meeting. In addition, provide the practitioner with patent search results. Doing this should increase the meeting’s productivity, and earn the patent practitioner’s respect. Better still, mail the IDA and the search results to the practitioner well in advance of the meeting. If you do, attach a cover letter that includes a statement acknowledging your awareness and appreciation that the first meeting is without cost, and that you are supplying the enclosed information for the practitioner’s benefit, should he care to review it prior to the first meeting. If the practitioner has not reviewed the information at the time of your first meeting, nothing is lost. If, on the other hand, he has reviewed the information, you will then have a more productive meeting at no additional cost. In addition, his reviewing the information prior to the meeting indicates that the practitioner places a significant value on your time. This is an important indication that the practitioner believes his purpose is to serve you, the inventor, and not vice versa.
Provide the Patent Practitioner with a Rough Draft of the Patent Application:
If the search results yield patents similar to your invention, you may use one or more as examples to guide you in preparing the patent specification. Your example patent should be one which a patent practitioner has written. The Patent Office allows inventors to recognize their patent practitioner by allowing the practitioner’s name to be printed on the first page of the patent, just above the section with the title “Abstract” (See Appendix, exhibit A). Therefore, choose an example patent on which the Patent Office has printed the name of an attorney or agent.
I recommend that you refer to a how-to reference manual, such as “Patent It Yourself”, for step-by-step instructions on how to write a draft patent specification. Your draft should contain descriptions of all practical configurations which you envision your invention may take.
You should prepare the draft of the specification, including the claims, on a word processor, and then copy it onto a datastick.
Once you give the patent practitioner your draft patent application, you should ask him not to prepare or submit formal drawings with the application. For filing purposes, the Patent Office accepts informal drawings (i.e., clean and descriptive sketches). The Patent Office does not require formal drawings until the Patent Office indicates that your invention warrants patent protection.
You May Prepare, File and Prosecute the Application Yourself
In the short term, the least costly way to prepare and file a patent application is for you to do this yourself. However, today’s cost savings may become tomorrow’s expense. The Patent Office maintains that “while it is possible for a layman to successfully prepare and prosecute a patent application, it has found that the complexity of the laws, regulations and formal application requirements are often misunderstood or misinterpreted by the persons who are untrained and unfamiliar with the patent process. The misunderstandings or misinterpretations often lead to errors which are costly, if not impossible to rectify”(emphasis added). Because of this, the Patent Office “strongly advises prospective applicants to engage the services of a patent attorney or agent” (Basic Facts about Patents, Government Printing Office).
If you absolutely cannot afford to hire a patent practitioner, then your only choice may be to prepare and file the application yourself. If this is the case, I strongly recommend that you purchase a recently published reference book written by a patent attorney. An example of such a book is “Patent It Yourself” by David Pressman. Patent It Yourself is relatively thorough. As such, it can be intimidating. However, if you want to do a passable job on your own application, you must use a good reference, and follow its directions carefully.
If you have any other questions whatsoever, please do not hesitate to call me. You can reach me at +41 71 230 1000. Thanks again. I hope you found the Patent FAQ worthwhile.
General Information Concerning Patents
PATENT PUBLICATIONS:
General Information Concerning Patents
Send written order to:
Superintendent of Documents
Government Printing Office
Washington, D.C. 20402
(Ask for document # 003-004-626-9, and include a check for $2.50, written to the Superintendent of Documents)
David Pressman, Esq., “Patent It Yourself”
Nolo Press
WRITE OR CALL THE FOLLOWING, FOR ANSWERS TO QUESTIONS . . .
regarding the Patent process:
Public Service Center
Patent and Trademark Office
Washington, D.C. 20231, or call (703) 557-INFO;
FOR REGIONAL NON-PROFIT INVENTOR ORGANIZATIONS, CONTACT:
The California Invention Center
at Cal State University
(510) 885-3805;
The Florida Product Innovation Center
2622 N.W. 43rd Street, Suite B-3
Gainsville, FL 32606
(904) 334-1682;
University of Houston Small Business Development Center
Attn: Mike Young
1100 Louisiana Suite 500
Houston, Texas 77502-5211
(713) 752-8400; Fax (713) 756-1515
fyoung@uh.edu; or
If you would like more information about organizations in other regions of the country, contact Ray Watts, at (509) 372-4274.
US Patent Applications
16. Exhibit A: Copy of front page of Airborn patent
Below is a text extraction from a patent. An actual patent will look somewhat different.
United States Patent [19]
Fitzsimmons et al.
[11] Patent Number: 5,203,813
[45] Date of Patent: Apr. 20, 1993
[54] LOW ENTRY FORCE CONNECTOR SOCKET METHOD OF MANUFACTURE
[75] Inventors:
Peter Fitzsimmons, Allen, Tex.; Mark S. Glasmeire, Moorpack, Calif.; John L. Grant, Sherborn, Mass.; Jean L. Meek, Lindale, Tex.; William J. Merritt, Moorpack, Calif.. . .
[73] Assignee: Airborn, Inc., Addison, Tex.
[21] Appl. No.: 740,927
[22] Filed: Aug. 6, 1991
[51] Int. Cl.5…………..H01R 43/20
[52] U.S. Cl. …………..29/876; 439/843; 439/847
[58] Field of Search ………439/840, 841, 842, 843, 439/851, 847; 29/874, 876, 877, 878, 879, DIG. 8
[56] References Cited
U.S. PATENT DOCUMENTS
3,023,789 3/1962 Bonhomme .
3,107,966 10/1963 Bonhomme .
3,381,262 4/1968 Jeanrenaud .
3,470,527 9/1969 Bonhomme .
3,557,428 1/1971 Bonhomme .
3,858,962 1/1975 Bonhomme .
4,087,152 5/1978 Kolm ……………. 439/843
4,203,647 5/1980 Bonhomme .
4,572,606 2/1986 Neaumann et al. .
4,614,029 9/1986 Neaumann et al. .
4,867,709 9/1989 Monitor et al. ……………. 439/843
FOREIGN PATENT DOCUMENTS
113023 8/1961 Fed. Rep. of Germany …. 439/842
Primary Examiner – David L. Pirlot
Attorney, Agent, or Firm – H. Dale Langley, Jr.
[56] ABSTRACT
Disclosed is a low entry force connector socket having a cage with a wire basket formed within it by contact wires which are fixed to the cage in notches on the end rims thereof, and which wires are rotationally offset within the cage to form the wire basket for engaging a connector pin. The wires are mounted in the cage by being hooked on notches provided in the end rims of the cage, and are moved to their rotationally offset orientation in a series of stages, following which they are fixed in position and the external portions of the socket are mounted to enclose the cage while a tool pin is positioned in the wire basket to establish the desired connecting force of the socket.
9 Claims, 4 Drawing Sheets
US Patent Applications
17. Exhibit B: Copy of “Dustcan” Patent
Copy of “Dustcan” Patent
United States Patent [19]
Smith
[11] Patent Number: 5,172,823
[45] Date of Patent: Dec. 22, 1992
[54] COMBINATION DUSTPAN AND TRAPDOOR RECEPTACLE CLOSURE
[76] Inventor: John B. Smith, 11524 Royalshire Dr., Dallas, Tex. 75230
[21] Appl. No.: 635,272
[22] Filed: Dec. 28, 1990
[51] Int. Cl.5…………..B65D 90/00
[52] U.S. Cl. …………..220/334; 220/908; 15/257.3
[58] Field of Search ………220/334, 908, 85 D; 15/257.1, 257.2, 257.4, 257.3
[56] References Cited
U.S. PATENT DOCUMENTS
509,689 11/1893 Sarchet …………… 15/257.3
1,984,228 12/1934 Morhous ………….. 220/334 X
2,237,836 4/1941 Macaluso ………….. 15/257.4
3,056,992 10/1962 Clough ……………. 15/257.3
3,072,245 1/1963 Faltin ……………. 206/19.5
3,156,941 11/1964 Tomaiuolo …………. 15/257.1
3,306,486 2/1967 Martino et. al. …… 220/334 X
3,382,523 5/1968 Parsisson …………. 15/257.2
3,390,804 7/1968 Morgan …………… 220/908 X
3,408,681 11/1968 Isakson …………… 15/257.2
4,600,113 7/1986 DeMars …………… 220/908 X
FOREIGN PATENT DOCUMENTS
682465 3/1968 Canada ……………. 220/908
Primary Examiner – Steven M Pollard
[57] ABSTRACT
A combination dustpan and trapdoor receptacle closure having a handle and hinge means to allow pivotal mounting on the receptacle such that removal of the closure from the receptacle isn’t necessary in order to deposit refuse in the receptacle and such that the hands need not come into direct contact with the possibly soiled closure surface in order to access the inside of the receptacle, said closure further characterized by a spade-like edge to aid in the movement of refuse toward the central area of the closure when said closure is removed from the receptacle and used as a dustpan.
5 Claims, 4 Drawing Sheets
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