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A bit about Patents
by Charles Frederick Seyboldt.
1998 - 2004
The purpose of this article is to give a quick and basic overview of Intellectual Property, focusing on the procurement of a United States Patent. Often, the first question asked is whether the "item" in mind should be protected with a patent, a trademark, or a copyright.
There is another way of protecting Intellectual Property . . . keep it secret. This form of Intellectual Property is known as "Trade Secret" and is appropriate when the "item" is not disclosed by the goods that embody the item. The classic example of Trade Secret is the recipe for making Coca-Cola. A good internet resource for trade secret law is http://execpc.com/~mhallign/.
Generally, a patent is used to protect an invention or an inventive idea; a trademark is used to protect an identifier (name or logo) that the public associates with certain goods or services; and a copyright is used to protect a work of authorship or artistry. It is typical for a person with an invention to have a use for trademark and copyright protection too. For example, the trademark "Efficient Light" and copyrighted instructional materials might be used in conjunction with the marketing of a patented energy-efficient light-bulb.
Besides the fact that these different forms of protection (patent, trademark, and copyright) cover different types of "items", each of these forms of protection also comes into being in a different way, and has a different lifetime. Since this article is directed to United States Patent protection, it does not cover the creation, "perfection", enforcement, or other aspects of trademark or copyright protection.
Attributes of protection
I've used the word "protection" without describing what "protection" is. In simplest terms, the holder of an intellectual property right has the right to exclude others from using the intellectual property. That's worth pondering for a moment. The right to exclude is not the right to practice. Just because you patented a method of using nuclear radiation to generate electricity does not exempt you from the regulatory permitting process. The patent alone doesn't give you the right to practice your invention. However, the patent alone usually gives you the right to keep others from practicing your invention.
The right to exclude others does not mean that you must exclude others, or that you are the only person who may practice your invention. You can license others to produce, sell, use, or otherwise practice your invention.
The right to exclude others from making, using, or selling your patented invention extends even to those who later come up with the same idea you did, on their own. This is different from copyright protection, which only gives you the right to control who may "copy" your work. Copyright gives you no rights against somebody who creates a work of authorship or art who has never been exposed to your copyrighted work.
Patent protection is limited territorially. If you have a United States patent, you have the right to exclude all others from making, using, selling, offering for sale, or importing the patented invention into the United States. If the only patent you have is a United States patent, you cannot exclude others from making, using, or selling in Europe, Asia, South America, or even Canada; you only have the right to exclude others from activities that bring your invention into the United States.
The protection of a United States is also time limited. For a "Utility patent" or a "Plant patent," the term is up to 20 years from the date of filing the patent application; for a "Design patent," the term is 14 years from the date the patent issues.
Is this "thing" patentable?
The federal laws relating to patents are in Title 35 of the United States Code (35 U.S.C.). Patent attorneys and agents refer to certain parts of this law in "shorthand," by referring only to the section number. I do too, and when I say "section 101," it is shorthand for "35 U.S.C. 101."
There are three types of patent protection available in the United States; utility, plant, and design.
Section 101 defines the subject material patentable as a "Utility patent." It says, "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title."
Section 161 defines the subject material patentable as a "Plant patent". It says, "Whoever invents or discovers and asexually produces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuberpropogated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirement of this title."
Section 171 defines the subject material patentable as a "Design patent." It says, "Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title."
Design Patent or Utility Patent?
Most inventions that are worth patenting fall into the "Utility patent" category, as being "new and useful." The notion of "usefulness" or "utility" is not such that only "serious" items are considered patentable. Games and other items of a more frivolous nature may be worthy of Utility patent protection, and have been patented.
What is the difference between "Design" and "Utility" patents? If your idea is such that you can picture it being practiced in a variety of slightly different forms, then you have an inventive CONCEPT that is worthy of protection. You do NOT want to settle for a Design patent. The protection that a Design patent affords is for an ornamental design, a specific ornamental design, and only the specific ornamental design that is depicted on the patent itself.
Sometimes, a design patent is appropriate, but it is important to know that there is such a thing as a "Design patent" and that it is very different from a "Utility patent." A well written Utility patent protects an entire inventive CONCEPT, but a well written Design patent protects only a specific ornamental design. Occasionally, an invention will be better protected with both, a Utility and a Design patent.
While you are shopping for a Patent attorney or agent, be sure to ask what sort of patent they will pursue for you. Some unscrupulous operators will promise the inventor a patent, and will deliver a patent. But the patent that they deliver is a Design patent, which does NOT provide the patent owner with the right to exclude others from an inventive CONCEPT. The Federal Trade Commission's July 1997 Project Mousetrap press release gives good cautionary advice about so-called "Invention Promotion" operations.
You have an invention!
You have decided that your "item" is not suitable for trade secret, trademark, or copyright protection, and that patent protection is under consideration. The next question is whether or not your invention is patentable.
Although it is not a pre-requisite to filing a United States patent application, some inventors decide to perform a patentability search to determine the likelihood of securing a patent. This entails looking at issued patents (both United States and foreign) and other printed publications. The object of the search is to see whether or not you are the first person to "invent" your invention. If the results of the less costly search indicate that the invention is not patentable, the inventor has saved the price of the more costly patent application. But, more often, the present invention IS patentably distinct from prior art and the inventor has just spent extra money for a search.
With the emergence of the internet, many inventors are drawn to online searches. An online search may lead to a false sense of security, because the online search engines
do not look back to all of history. In other words, there may be "prior art," either predating the information in the online databases, or something other than an issued United States or European patent that anticipates the invention. A patent examiner looks at a much larger database for "prior art" than a free online search does.
Many inventors decide not to pursue a patent application if the search turns up "prior art" that resembles their invention. It would be a mistake to decide to skip the application process merely because the prior art is addressed to the same subject, or resembles the present invention. Often, in these cases, the inventor has at least an improvement over an existing patent. Improvements are specifically named in section 101 as proper subject material for a Utility patent.
A skilled patent attorney or agent will be able to tell you which aspects of your invention are patentably distinct from the prior art that he is aware of. He will make it clear to you that, for United States Patents, the ultimate arbiter of patentability is the United States Patent and Trademark Office, and also that potentially invalidating prior art may be held in confidence by the Patent Office, in the form of patent applications by others.
How to lose your right to patent
Actions by others can lead to an invention being rendered unpatentable. For example, if somebody else invented and used in the United States before you invented, they may be entitled to a United States patent, but you are not.
The inventor can make his invention unpatentable in the United States by his own actions. One way to do this is to offer the invention for sale, and then wait more than one year before filing a United States patent application. Another way an inventor can lose his right to patentability is to describe his invention in a publication (such as at a trade show with a limited audience, or in an educational thesis that is cataloged in a library) and then wait more than one year before filing a United States patent application.
If you have made your invention public, even in a "slight" way, you have started the clock ticking on United States patentability, and you have probably lost your right to patent in many foreign countries. There are other ways that you can forfeit your right to patent, but the above are the easiest to commit.
Section 102 specifies these, and other ways that a loss of right to patent can occur.
There are other reasons why "time is of the essence" in making an application for patent. If more than one inventor has an application pending in the Patent Office at the same time, the first party to apply gets the patent 95% of the time. Even if you are the first party to file, if the second party decides to assert that it was first to invent, you will have to spend the time and money to show that you were the first to invent. This is called an "interference" proceeding and it is an expensive matter. Section 135 is the statutory basis for "interference," and Subpart E of the Rules "governs the procedure in patent interferences in the Patent and Trademark Office."
Securing a United States Patent
The life of a United States Patent has several phases, and each phase has costs. The first phase is Application. This phase includes the preparation of the patent application itself, including any required drawings and all supporting documents. When all of the necessary application documents have been submitted to the United States Patent and Trademark Office, along with the Official Filing Fee, the Application phase is over.
The second phase is Prosecution. In this phase a patent examiner looks for prior art, and other reasons to deny the grant of a patent to the applicant. The patent examiner details his objections and grounds for rejecting the patent application in "reports", called Office Actions. The inventor (or his agent/attorney) must make substantive, written responses to all Office Actions, or the application will become abandoned. Generally, the examiner will argue that the invention is NOT patentable, and the inventor will argue that it is. When the inventor prevails, the third phase is Issuance and Maintenance.
After being notified that the application is in condition for allowance, the payment of an Official Issue Fee is required in order to receive the patent grant. Further, periodic payments called Maintenance Fees are necessary to keep a Utility patent in an enforceable condition. Maintenance fees are due at three and a half, seven and a half, and eleven and a half years after the issue date of the patent.
Phase One - Application
A patent application is not a simple document, it is a complicated and technical legal drafting exercise. The preparation of a patent application is mentally demanding, technically difficult and time consuming. The necessary contents of a United States patent application are described in sections 111 through 115. More detailed suggestions are contained in The Code of Federal Regulations and in the Manual of Patent Examining Procedure. The Code of Federal Regulations relating to Patent matters is 37 C.F.R. and "Rule 77" is a shorthand expression for the rule located at 37 C.F.R. 1.77. Rule 77 suggests the following order for the arrangement of Application Elements:
Taken as a whole, the application must enable any person skilled in the art to make and use the invention. The inventor is also under an obligation not to "sandbag" the public, and is required to disclose the best mode of practicing the invention that the inventor contemplates at the time the application is filed.
For example, if your invention was an incandescent light bulb, and you knew that a tungsten filament was better than an iron filament, then you are obliged to disclose the tungsten filament, even if the invention works with an iron filament. The disclosure of the iron filament would satisfy the "enablement" requirement, but the inventor in this example would have failed to meet the "best mode" requirement.
A well written Utility patent will give its owner the right to exclude others from practicing the inventive CONCEPT, not just from practicing a single detailed embodiment. The most important and practical aspect to patent protection is played out in the composition of patent "claims." The CLAIMS define the "metes and bounds" of the inventor's intellectual property rights. When the claims are not thoughtfully written, the inventor may secure a patent with no practical value.
Reflect back to the discussion of the nature of "protection" as being the right to exclude. In order to enforce this right, the patent owner must use the power of the legal system, by threatening or bringing a legal action for infringement.
If your patented invention is a novel way to gift wrap presents, using ordinary wrapping paper and adhesive tape, how would you learn who is practicing your invention? You would probably not be willing or able to sue each one in order to enforce your right to exclude. But, if the practice of your invention is made easy by using a specialized tool, then you could patent the tool concept, and thereby be able to exclude others from selling the tool useful only for the practice of your invention. If the invention includes a certain shape, cut into the wrapping paper, you would want to be able to exclude others from selling precut paper helpful to the practice of your invention.
The wording in the claims, as interpreted by a court of law, determines what you may exclude others from practicing. If your patent only claims the use of ordinary scissors, paper and tape to make a novel wrapping, you have no practical means to use a patent to enforce your right to exclude. You should think of other ways to capitalize on that novel idea.
The claims are the heart of a patent. It is well worth the money spent to have the claims to YOUR invention drafted by a person who understands the reality of patent enforcement.
Miscellaneous "Application" Papers
In addition to the application itself, the inventor will be required to sign an oath, stating "that he believes himself to be the original and first inventor. . .." If the applicant wishes to be represented by an attorney or agent in proceedings before the United States Patent and Trademark Office, the applicant will need to sign a Power of Attorney.
Sub-section 41(h) provides that some of the official fees shall be reduced by fifty percent, for "small business concerns," independent inventors and certain nonprofit organizations. If you are a "small business concern," as delineated in Rule 27, you need to assert this fact in the initial filing.
An inventor that has no intention of filing in a country other than the United States should file a Non Publication Request with the application. Otherwise, a publication fee will be assessed at the time the Notice of Allowance is sent, and the Issue Fee is due.
An inventor who is at least 65 years of age can have the Patent APplication "treated special," which means taken to the head of the line. In order to obtain this advantage, a PEtition to Make Special must be filed. The is no Official Fee for a Petition to Make Special on account of age.
In order to avoid surcharges, the Official Filing Fee should be submitted with the rest of the application.
Phase Two - Prosecution
Some time after the application is filed, the Patent Office will respond with a Filing Receipt, and probably with a Foreign Filing License. This time varies from two to seven months. The Foreign Filing License is required if the applicant wishes to file a patent application in a foreign country, prior to six months after filing the United States patent application.
The patent application will be assigned to a patent examiner who will read it, search for prior art and prepare an Office Action. The Patent Office will try to address every formal and substantive issue that stands between the applicant and the issue of a patent. In discussions with your patent attorney or agent, you might hear more shorthand, examples being "102 rejection," "103 rejection," and "112 rejection." Each of these rejection terms refers to a section of Title 35 of the United States Code.
A "102 rejection" indicates that the examiner believes that a single prior art reference "anticipates" the subject of the present application. The legal meaning of the term "anticipates" is that a single prior art reference "describes" the same invention. In this event, the applicant must argue that his claimed invention is patentably distinct from the single reference, or amend the rejected claims so that they are narrower, and not anticipated by the reference. If the applicant is successful in overcoming the rejection, the scope of the applicant's claims are narrowed by whatever concessions he makes to the reference.
A "103 rejection" means that the examiner believes that the present invention would be obvious to a person having ordinary skill in the art of the present invention. Usually, the examiner will combine two or more prior art references to bolster his assertion that the present invention is "obvious." To overcome this rejection, the applicant must argue that his invention is not obvious, and must explain why it would not be obvious to a person having ordinary skill in the art.
A "112 rejection" usually means that the claims as written are not in "full, clear, concise, and exact terms." Typically, this is a grammatical flaw that can be corrected, and will not require that the scope of the claims be narrowed in order to overcome the rejection.
Usually, the Patent Office allows the applicant three months time to prepare and file a response to the Office Action. This time can be extended, by paying fees, up to the statutory maximum six month time prescribed by section 133. If a response is not made within six months, the application is deemed abandoned, and it cannot be revived. An inventor loses his right to patent by abandoning his application. If the applicant is to secure a patent, he MUST respond to Office Actions, or forever lose his right to patent on that invention.
Phase Three - Issuance and Maintenance
Once the Patent Office decides that the applicant has "invented or discovered any new and useful process, machine, manufacture, of composition of matter, or any new and useful improvement thereof," the Patent Office will advise the applicant that the application is in "Allowable" condition. This is a signal that the mere payment of a fee will result in the grant of a Patent. The resulting Utility Patent will be enforceable for 4 years. The term of enforceability can be extended through he payment of a Maintenance fee. Maintenance fee payments are NOT required to get the full 14 year term of a Design patent.
How much will this cost?
It depends. It should depend. Some inventions are easier to describe and claim than others. So, please be understanding of the wide range of legal fees cited here. The richness of the inventive spirit is a bigger variable than the range of patent attorneys' hourly fees.
Your patent attorney (or agent), while an artist with words and law, may not be a draftsman. In any case, you should be prepared to pay for any necessary drawings that conform to the Patent Office rules. Generally, engineering drawings are NOT suitable to serve as patent drawings. The disclosure of an inventive CONCEPT is much different from detailing an embodiment.
The table below shows a range of legal and Official fees related to "uncomplicated" Utility patents. The Official fees noted change annually, and are applicable to a LARGE entity. An asterisk indicates an official fee that is reduced by half for an independent inventor, small business concern, or nonprofit organization.
It is not reasonable for you to expect somebody to work for you for free. Your patent attorney or agent may require a Services Fee to cover his time and effort in the payment of an Official Fee. Ask your attorney or agent about their fee policy for responding to Office Actions, and for making Issue and Maintenance fee payments. There is so much variation in policy and practice that it behooves an inventor to ask, up front, to avoid surprizes later on.
Application proper . . . . . $2,000 to $12,000 (Legal Fees) Preparation of Drawings . . . $200 to $ 2,000 (Draftsman Fees) Filing fee . . . . . . . . . . . . . . . $ 770 *
Office Action Response . . . . $500 to $ 3,000+ (Legal Fees) Delay in Response . . . . . . . . up to $ 950 * Interference . . . . . . . . . $10,000 or more (Legal Fees) Interference . . . . . . . . . Plus Official Petition Fees
Issue Fee . . . . . . . . . . . $ 0 to . $500 (Legal Fees) Issue Fee . . . . . . . . . . . . . . . $1,330 * 4 year Maintenance fee . . . . $ 0 to . $500 (Legal Fees) 4 year Maintenance fee . . . . . . . . $910 * 8 year Maintenance fee . . . . $ 0 to . $500 (Legal Fees) 8 year Maintenance fee . . . . . . . . $2,090 * 11 year Maintenance fee . . . . $ 0 to . $500 (Legal Fees) 11 year Maintenance fee . . . . . . . . $3,220 *
* if you qualify for small business concern status, reduce these Patent Office Official Fees by half. These fees are effective as of October 1, 2003, and are subject to change, usually on October 1. The most up-to-date fee amounts and information are maintained at the US Patent and Trademark Office web site.
Choosing an Attorney
This is more difficult than shopping for a car. At least you know what a car is, and how to spot a bad one. The best advice I can give to a person shopping for a patent attorney is to keep your hogwash detector on "sensitive" and to ask the questions suggested by this article.
Patents are complex and they operate on different levels - the purely technical level of describing the invention; the legal level of interpreting the words of the claims; the practical level of having enforceable claims; and the level of seeing commercialization details and possibilities. You should seek a patent attorney who is quick to grasp the level and needs of his audience.
Frequently Asked Questions
This article probably leaves many questions unanswered. You can help the process of making this document more useful. I welcome all questions, corrections, and criticisms.
If you email me a question, I'll do my best to answer it. The results will be incorporated into the Frequently Asked Question section.
Q. What does "Patent pending" mean?
A. Just what is says. That a patent application is pending before the United States Patent and Trademark Office. You have this status as soon as you have a filing date, for a "regular" application, or a "provisional" application.
Q. What use is "Patent pending" status??
A. When you put a "Patent Pending" mark on your goods, it has an effect on would-be infringers. It makes them pause before investing to produce the invention. "Patent pending" status is not enough to support an infringement lawsuit.
Q. I've heard about "provisional" applications. How does this work? Tell me about provisional applications.
A. My opinion at this time is that an inventor has better options than a provisional application, and that any advantage is illusory. A provisional application provides no disadvantage either, other than illusory confidence, an unhealthy tendency to delay the preparation and filing of a "regular" application, and an additional, unnecessary cost in the life of a successful patentable product.
Q. I've heard about PCT (Patent Cooperation Treaty) applications. How does this work? Tell me about international PCT applications.
A. If you have enough money to wonder about foreign patents, I want to talk to you personally. Email, phone or write me. This is a complex area, and I suggest that you seek out some of the other fine "internet authors" for their summary of the PCT process. I do have a rather cryptic summary of international patent law, which was prepared as a course outline.
Q. You refer to "uncomplicated" applications. What is a "complicated" application?
A. Examples of complicated applications are: where the Official Filing Fee check bounces; where an inventor is unavailable or unwilling to sign the oath; where the application fails to correctly identify all of the inventors; and where there is an interference.
This section contains some links that I found helpful, illuminating, and that give what I consider to be generally good advice. Not all internet links do that!
This Manual of Patent Examining Procedure (MPEP), is a hypertext version of rules and statutes relating to the Preparation, Filing, and Prosecution of a United States Patent Application. It is the same book that patent examiners and patent agents and attorneys refer to, and the hypertext form is quite handy. (http://www.uspto.gov/web/offices/pac/mpep/index.html).
Oppedahl & Larson LLP have prepared an exceptionally informative website.
The Maine Patent Program is another useful resource. In their own words, "Our mission is to support economic development by helping Maine inventors and small businesses understand how to identify and protect their intellectual property. We are a resource for information and education on the patent process and other means of intellectual property protection. ..."
Copyright (c) 1998 - 2003
Charles Frederick Seyboldt
Registered Patent Agent
Permission is granted to copy this article freely for non-commercial purposes, provided it is copied in its entirety, including the author's name and this notice.