PatentUpdate

A patent is an official document that confers rights to the inventor of a new and useful invention. A patent is also a contract between an inventor and the granting government, which provides an inventor with a limited monopoly for a period of years in consideration for the inventor disclosing a new invention to the public through a published patent. The limited monopoly granted by a patent is the right to exclude others from making, using, selling, and offering for sale the invention covered by the patent and importing the patented invention into the United States. Without a patent, anyone can make, use, and sell your invention without your knowledge, without your permission, and without paying you any money.

Three basic types of patents are available to inventors: (1)utility patents, (2)design patents, and (3)plant patents. A utility patent protects the structure and function of a device and methods and processes, a design patent protects the ornamental features of an article of manufacture and a plant patent protects new species of asexually reproduced plants. In the United States the current term of a utility patent is 20 years from the date it was filed with the United States Patent and Trademark Office. A design patent in the United States enjoys a term of 14 years from issuance, and plant patents last for 17 years from issuance.

2. How do I read a patent?

In this section, we provide a roadmap of U.S. Patent No. 6,871,616 with explanatory text of the purpose and goals of each section. The U.S. patent is used as a model because of its well-ordered structure and because its format is similar to patents in other major jurisdictions (e.g., Europe).

See the complete text of U.S. Patent 6,871,616).

A patent is comprised of four main sections which will be discussed in our turtorial on How to Read a Patent.

3. What makes an invention patentable?

There are three major requirements for patentability: The invention must be novel, useful and not obvious.

4. What can be patented?

To be patentable an invention must be a new, nonobvious, and useful process, machine, article of manufacture, composition of matter, or an improvement to any of the foregoing. In addition to utility patents for any of the foregoing categories of inventions, patent protection is also available for the ornamental design of an article of manufacture and to asexually reproduced plant varieties.

Utility Patents cover:

Plant Patents cover certain plants.

For more on what Can Be Patented, see our recent Blog Post Here

5. What cannot be patented?

Laws of nature, physical phenomena, abstract ideas, literary works, and inventions that are either not new or useful are not patentable. Literary works such as dramatic, musical, and artistic works can be copyright protected. Inventions that are offensive to public morality are also not patentable. An invention is only patentable if it is none of the foregoing, new, nonobvious, adequately described or otherwise enabled in a patent application, and claimed by the inventor in a patent application in clear and definite terms.

Note: Since 1952, when the current Patent Act went into effect "everyone knew" that methods of doing business were not patentable. However, in late 1998, the State Street Bank case was decided, in which the Court stated that not only were methods of doing business patentable, but that they always had been. The effect of this decision was a flood of patent applications dealing with implementation of business methods, from methods of writing patents to methods of selling products and services. The 2005 case In Re Lundgren extended the limits even further, ruling on an application to patent a method of paying managers.

It seems safe to predict that in the future we will see lots of cases testing the limits of the "methods of doing business" patent. The Patent Office department in charge of these patents (Technology Center 3600 (formerly part of TC2100)) has its own website.

The rules aren't quite as liberal as they once appeared, however. On October 30, 2008, the Court of Appeals for the Federal Circuit (CAFC) issued a ruling in the In re Bilinski case. The claims in Bilinski covered a method of limiting risk in commodities transactions, and the Court said that those claims were not patentable. The Court overturned the test for patentable subject matter from State Street Bank, and instead held that "A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing."

For more on What Cannot be Patented, see our recent Blog Post Here

6. What is a patent search?

A patent search is a search of the prior art, namely, that which is known and already invented. The determination of whether to file a patent application often depends on the outcome of a patent search. A patent search is usually important because it can not only save an applicant the expense of filing a patent application on subject matter already patented or within the public domain, but also afford an applicant an opportunity to invent over the subject matter discovered from the search. A patent search can also make an applicant aware of potential infringement issues.

A patent search is a search of all previous public disclosures (prior art) including, but not limited to, previously published disclosures and patented inventions anywhere throughout the world. Although a patent search of the prior art before filing an application for patent is not required, it is advisable to do so. After an application is filed, the Patent Office will conduct a search as part of the official examination process. Conducting a thorough patent search is difficult, particularly for the novice.

Patent searching is a learned skill, and we use a professional patent searcher for all of our patent searches. He searches directly at the United States Patent Office as well as through various other professional tools available within the industry. After we receive the results of the patent search, we review it and prepare a written opinion of whether the invention is patentable in view of the prior art found from the search. If the invention is patentable, we indicate why and the scope of protection a patent may afford an inventor.

For a further description of the different types of Patent Searches available, go here.

A listing of some of the search tools that we find most useful can be found in our online Tool Box.

7. Do I need to do a patent search?

No. However, perhaps the most important issue for an inventor when deciding whether to invest in pursuing a patent is whether the invention is capable of being patented. A competent patent search can often answer this question by providing insight into whether the invention sought to be patented is an advancement over the prior art, namely, that which is already known or patented. There are no drawbacks with a patent search, and it is usually a prudent first step to take in the pursuit of a patent.

Visit our blog for more information Protecting Your Invention.

8. Can I protect myself by sealing a description of my invention in an envelope and mailing it to myself?

No. The mythical "postmark patent" offers no protection whatsoever. Having someone sign your written description as a witness would accomplish the same thing - documenting your date of conception of the idea.

It is important to keep an organized record of your invention process to back up your invention claim. We have found the "The Inventor’s Notebook
A “Patent It Yourself” Companion" to be a useful tool. It can be found at www.nolo.com.

9. What do the terms “patent pending” and “patent applied for” mean?

A. They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the United States Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.

10. Is there any danger that others can gain access to information contained in my application while it is pending?

A. Most patent applications filed on or after November 29, 2000, will be published 18 months after the filing date of the application, or any earlier filing date relied upon under Title 35, United States Code. Otherwise, all patent applications are maintained in the strictest confidence until the patent is issued or the application is published. After the application has been published, however, a member of the public may request a copy of the application file. After the patent is issued, the Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Unit for inspection by anyone, and copies of these files may be purchased from the Office.

11. What does it mean to Publish a Patent Application?

Since Thomas Jefferson examined the first US patent application in 1790, applications had always been kept secret - even the fact that they were filed was considered confidential. However, that is no longer true. The American Inventor's Protection Act of 1999 (AIPA) required publication of all non-provisional patent applications filed after November 29, 2000, and allowed publication of earlier-filed pending applications on request.

When is an application published? Eighteen months after the earliest filing date in the application's chain of parentage ("priority date"). That means that if you file a Provisional Application, and wait the full year before filing your utility application, the utility application will be published six months after filing.

How are applications published? Applications are published in electronic form, only. The first 47 applications were published on March 15, 2001, and applications have been published every Thursday since then. Published applications are available on the USPTO website, on the same search page (although not in the same database) as issued patents.

What is published? The initial publication is usually the application as filed. That means that amendments, even those filed with the application or very close to the filing date, are not be included in the published application. This is true even when the application is a continuation of a previous application - the publication will be the original application. It is possible to request additional publication of an application after amendments, upon payment of another publication fee (see below), and sometimes this may be of value. You should consult with a patent professional (preferably one at Brown & Michaels) if you have any questions about publication.

Can I stop the publication of my application? If the application has not been filed in any foreign country which publishes applications (most countries do), or through the PCT, and you have no intention of filing in any country which publishes applications (or PCT), at the time you file the application you may request that the application not be published. If the situation later changes, and you decide to file PCT or foreign, you must inform the PTO immediately - if you do not do so, the US application automatically becomes abandoned (and if the PTO does not notice and allows a patent to issue, the patent will be invalid).

Can I have my application published sooner than 18 months? Yes. You may request early publication. If you have a patent application pending which was filed before November 29, 2000, you can request that it be published, too.

Why would I want to have my application published? In the past, patents only had effect on infringement which occurred after the date the patent was issued. With the publication of applications, this, too has changed. A "reasonable royalty" may be obtained for infringing use between the publication and the issuance of the patent, if (a) the infringer had actual knowledge of the publication, and (b) the claims in the issued patent are "essentially identical" to the published claims. Note that you still have to wait until the patent issues before you sue for damages, but at least you can get some royalty for the intervening time between publication and issue. This means that it is now more important than ever to present a range of claims in your original application, so that some, at least, will remain from publication to form a basis of a claim for pre-issue royalty.

Does it cost anything to have my application published? Of course. The PTO does next to nothing for free. There is a $300 publication fee, which will need to be paid along with the issue fee. There is also a fee for requesting early publication. If you want to request publication of a pre-November 29, 2000, application, or want early publication, you'll have to pay both fees, plus legal fees to convert and prepare the application in Electronic Filing (EFS) form.

12. How long is a patent in effect?

Utility Patents and Plant Patents are valid for a period starting on the date the patent is issued by the Patent and Trademark Office, and ending, at the latest, 20 years after the US filing date of the earliest non-provisional application upon which the patent is based. There are maintenance fees to be paid during the life of a utility patent, and if they are not paid on time the patent will expire earlier than the maximum 20-year-from-filing term. After the patent expires, the invention is available to all.

Design Patents are valid for a period of 14 years from the date of issue. No maintenance fees are due on design patents.

This section sets forth the general rule, applicable to most patents issued in the last few years. Patents which were filed after May 29, 2000, may have their terms extended for USPTO delays. Patents issued before June, 1995, and still in existence at that time, or which were pending at that time, are subject to different rules, and there are other special rules and exceptions which may affect the term of a patent.

13. May I write to the Patent Office directly about my application after it is filed?

A. The Office will answer an applicant’s inquiries as to the status of the application, and inform you whether your application has been rejected, allowed, or is awaiting action. However, if you have a patent attorney or agent of record in the application file the Office will not correspond with both you and the attorney/agent concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.

14. If I get a patent, does this mean that I am free to build and sell my invention?

Not necessarily. A patent is the right to stop others from making, using or selling your invention. It does not necessarily mean you have the right to make, use or sell it yourself.

Someone else may have a patent which will stop you from making, using, or selling your invention (called a "dominating patent")

15. Does my U.S. patent cover foreign countries?

No, it does not. You may stop others from making something overseas and selling it in the Untied States, or making it here and selling it overseas, but you cannot stop them from making and selling it entirely in foreign countries. If you want patent coverage in other countries, you will have to file your US patent application each of the countries, and the application will be examined and issued as a patent separately in each country.

It is important to do such filing within a year of your US filing date if you are planning to do any foreign filing (six months, for design applications), so that you can claim the benefit of your US filing date in those countries. Note that most countries other than the US do not have any "grace period" for publication before filing the patent application, so if you had described your invention before you filed your US application you would not be able to get a patent in those countries.

There is no such thing as an "international patent" (although there are "regional patents" in Europe, the former Soviet Union, and certain African countries).

The Patent Cooperation Treaty or "PCT" allows you to file an "International Application" in the US Patent Office (if you are an American citizen or resident). This reserves your right to file in a number of foreign countries for up to 30 or 31 months from your first filing, but you must eventually file separately in each country in which you want protection.

Note that the rules on what is patentable and what actions will bar patenting vary from country to country. For example, "business methods" which are routinely patented in the US are not patentable in most countries in Europe or through the European Patent Office. Many countries have restrictions on patenting of medical procedures, as well.

16. Can a patent be renewed?

No, it cannot be renewed. Nor can one pick up the rights to an expired patent. Once a patent expires, the invention is in the public domain.

17. Can I have my patent's term extended?

Some US patents have had their terms extended, by private laws in Congress, or by a section of the Patent Law which provides for restoration of patent term lost due to government regulatory delays. In almost every case these were drug patents, where the testing and approvals required by the FDA ate up almost all of the patent term. For nearly all inventions, extension is not an option.

18. Can I still get a patent even if my invention has been published in a magazine and/or I've been selling it for some time?

Maybe. You must apply for a patent within one year of the first publication, public use or sale. If "some time" is longer than a year, you cannot get a patent anywhere. If it is less than a year, you can get a patent here in the United States (assuming the invention is otherwise patentable, of course), and in a very few other countries. It is a better idea to apply before the first application or sale, as most countries do not allow this one year grace period.

19. Is it necessary to go to the Patent Office to transact business concerning patent matters?

A. No. Most business with the Office is conducted by written correspondence. Interviews regarding pending applications can be arranged with examiners if necessary and are often helpful.

20. If two or more persons work together to make an invention, to whom will the patent be granted?

A. If each had a share in the ideas forming the invention as defined in the claims – even if only as to one claim, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If, on the other hand, one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his/her name alone.

21. If a first person furnishes all of the ideas to make an invention and a second person employs the first person or furnishes the money for building and testing the invention, should the patent application be filed by the first and second persons jointly?

A. No. The application must be signed by the true inventor, and filed in the USPTO, in the inventor’s name. This is the person who furnishes the ideas (e.g. the first person in the above fact pattern), not the employer or the person who furnishes the money.

22. Can a competitor make small changes to my invention and avoid my patent?

It depends. The value of a patent depends on how "broad" the coverage is, as defined by the patent's claims. If the invention claimed in a patent represents only a small advance over what went before it, the range of products the patent may cover is also small. On the other hand, if your invention is wholly new, then the range of equivalents is equally large. Most inventions fall somewhere between these extremes. The determination of the breadth of a potential patent is a matter of analyzing the extent of the "prior art" and the range of things which might be covered under the patent.

23. Does the Patent Office control the fees charged by patent attorneys and agents for their services?

A. No. This is a matter between you and your patent attorney or agent in which the Office takes no part. To avoid misunderstanding you may wish to ask for estimate charges for: (a) the search (b) preparation of the patent application, and (c) patent prosecution.

24. Will the Patent Office help me to select a patent attorney or agent to make my patent search or to prepare and prosecute my patent application?

A. No. The Office cannot make this choice for you. However, your own friends or general attorney may help you in making a selection from among those listed as registered practitioners on the Office roster. Also, some bar associations operate lawyer referral services that maintain lists of patent lawyers available to accept new clients.

25. Will the Patent Office advise me as to whether a certain patent promotion organization is reliable and trustworthy?

A. No. The Office has no control over such organizations. The Office will publish complaints regarding invention promoters and replies from the invention promoters. The Office will not undertake any investigation of the invention promoters. Questions or complaints should be directed to the Mail Stop 24; Director of the U.S. Patent and Trademark Office; P.O. Box 1450; Alexandria, VA 22313-1450 or call at 866-767-3848.

It is advisable, however, to check on the reputation of invention promotion firms before making any commitments. It is suggested that you obtain this information from the Better Business Bureau of the city in which the organization is located, or from the bureau of commerce and industry or bureau of consumer affairs of the state in which the organization has its place of business. You may also undertake to make sure that you are dealing with reliable people by asking your own patent attorney or agent or by asking others who may know them.

26. Are there any organizations in my area which can tell me how and where I may be able to obtain assistance in developing and marketing my invention?

A. Yes. In your own or neighboring communities you may inquire of such organizations as chambers of commerce and banks. Many communities have locally financed industrial development organizations, that can help you locate manufacturers and individuals who might be interested in promoting your idea.

27. Are there any state government agencies that can help me in developing and marketing of my invention?

A. Yes. In nearly all states there are state planning and development agencies or departments of commerce and industry which seek new product and new process ideas to assist manufacturers and communities in the state. If you do not know the names or addresses of your state organizations you can obtain this information by writing to the governor of your state.

28. Can the Patent Office assist me in the developing and marketing of my patent?

A. No. The Office cannot act or advise concerning the business transactions or arrangements that are involved in the development and marketing of an invention. The Office, however, will publish for a fee, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. In addition, the Office of Independent Inventor Programs (OIIP) was established in March 1999 in order to meet the special needs of independent inventors. The OIIP establishes new mechanisms to better disseminate information about the patent and trademark processes and to foster regular communication between the USPTO and independent inventors.

29. What else should I think about before I decide to get a patent?

Prof. Tom Field at the Franklin Pierce Law Center has two excellent papers on his web site which might help:

"So You Have an Idea," a guide to help independent inventors make an assessment of their situation. This paper discusses the process of evaluating an invention, avoiding pitfalls, and why people did not beat a path do the door of the inventor of a better mousetrap.

"Seeking Cost-Effective Patents" - "Some inventors misconstrue Emerson's dictum and believe that patenting an invention will cause the world to beat a path to their door. Others, who appreciate that it is often easier to patent than to sell an invention, believe patents increasingly cost more than they are worth. This booklet will show how both views are wrong. Patents do not guarantee market success, and they and other forms of intellectual property can easily be worth more than they cost."

1. What is a patent?