Law Office of Alicia Porter
P. O. Box 72425
Fairbanks, AK 99707
adporter@alaska.net
(907) 479-0787
PATENT PRESENTATION FOR INTELLECTUAL PROPERTY SECTION OF THE ALASKA BAR ASSOCIATION
What is a patent?
A patent is the right to protect an idea for an invention that you have by preventing other people from making your invention, selling your invention, offering your invention for sale, or importing your invention into the United States. You must be the inventor to apply for a patent. Generally, the term of a new patent is 20 years from the date on which the application for the patent was filed in the United States. Under certain circumstances, patent term extensions or adjustments may be available.
Do I need a patent?
Another option is to have a trade secret, and keep your product or process completely secret. If your idea is going to be used in the public, and people can see how it’s made or how it’s produced, then you may want to consider a patent.
If I think of an idea, can I get a patent?
Thinking of an idea, is the first phase of creating an invention, and is commonly referred to as conception. Conception is “the key to determining inventorship for the invention described and claimed in a patent application – only those individuals who participation in the conception of an invention may be named as true inventorsâ€.
Once you’ve thought of the idea, then there is the reduction to practice- how do you get the idea into a physical or tangible form. This is the research phase, where you put your idea into effect. It can be an actual reduction to practice, of a constructive reduction to practice (i.e. the inventor doesn’t have to reduce the idea to practice themselves). The issue of who is the inventor can become sticky, however, if other people have offered suggestions or ideas to improve the initial idea made by the inventor, as they contributed to the conception.
There are three types of patents:
1) Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;
2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture; and
3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.
What are some of the unique things about a design patent?
A design patent only has one claim in it – it is based upon the physical characteristics of the design.
Are all ideas that can get a patent going to make money?
No. Not all patentable ideas make money. Only about 5% of the ideas that get patented actually make money. 3 M, one of the largest manufacturers in the US only has about a 35% success rate for getting patents, so don’t feel discouraged.
Why are patents important?
Once your idea is patented, you have the right to sue those that are infringing on the claims of the patent. Lawsuits are expensive, but if the patented invention idea makes enough money, they can be worthwhile. For example, pharmaceutical drugs such as Lipitor can make up to $50,000 per minute during the length of the patent.
How long can you have a patent?
The maximum allowable time is 20 years from the date of filing the patent application. After that, your invention becomes dedicated to the public.
Let’s assume I have a fantastic idea, and there is nothing that comes up on the patent search (i.e. there is no prior art like my idea). Are there any reasons why I can’t get a patent?
The USPTO has certain requirements about when you can get a patent. In order to get a patent, a person must “invent or discover any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, for a patent,†subject to the conditions and requirements of the law. The word “process†is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine†used in the statute needs no explanation. The term “manufacture†refers to articles that are made, and includes all manufactured articles. The term “composition of matter†relates to chemical compositions and isolated proteins and genes that have been synthetically made or removed from their natural environments and purified, and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made under the sun that is by man and the processes for making the products.
Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention.
Are there types of things that I can’t get a patent for?
v You can’t get a patent for something that you have invented, and had for commercial sale for over a year, whether it has actually been sold, or only offered for sale.
v You can’t get a patent if there has been a printed publication about your invention that has been in existence for more than a year anywhere in the world.
v You can’t get a patent for an invention if : “(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,†or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . .â€
Are there time frames when I can’t get a patent?
Absolutely. There are statutory limitations on when you can get a patent. For example, you will not be allowed to get a patent if you have sold the item or offered the item for sale for more than one year. An invention cannot be patented if, “(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,†or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States . . .â€
So, for example, you come up with a great idea on March 1, 2007. You reduce the idea to practice by March 10, 2007. You tinker with the idea a bit once you’ve reduced it to practice, and you have a viable invention by April 1, 2007. You think that this idea is so fantastic, that you offer to sell it to people by May1, 2007. In order to receive patent protection, you MUST have a patent application in by April 30, 2008. No exceptions are allowed.
Similarly, you cannot get a patent for an idea that there are written publications for more than one year. As per the USPTO web page “If the invention has been described in a printed publication anywhere in the world, or if it was known or used by others in this country before the date that the applicant made his/her invention, a patent cannot be obtained. If the invention has been described in a printed publication anywhere, or has been in public use or on sale in this country more than one year before the date on which an application for patent is filed in this country, a patent cannot be obtained. In this connection it is immaterial when the invention was made, or whether the printed publication or public use was by the inventor himself/herself or by someone else. If the inventor describes the invention in a printed publication or uses the invention publicly, or places it on sale, he/she must apply for a patent before one year has gone by, otherwise any right to a patent will be lost. The inventor must file on the date of public use or disclosure, however, in order to preserve patent rights in many foreign countries.
Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable. “
Okay, I’ve decided to apply for a patent. What’s the difference between a provisional patent application and a non provisional patent application?
A provisional patent application is significantly cheaper way to seek a small amount of patent protection. The provisional application only has a few requirements, and a minimal amount of information is necessary to be provided to the USPTO in comparison to a non provisional application. A provisional patent application, for lack of a better analogy, is a reservation. The date that you file a provisional patent application can be later converted to a non provisional application that fully discloses your invention. Thus, you can file a provisional application, and, before one calendar year has expired, you can file a non provisional application that is linked to the provisional application and have the benefit of the earlier filing date (but only if the provisional application sufficiently and fully describes your invention and enables someone to make and use the full scope of your invention as it is later claimed in the non-provisional application. This is based on the Federal Circuit’s New Railhead decision that addressed the sufficiency of a provisional application to serve as an earlier effective filing date. It is a common misperception among inventors that they can file almost any bare-bones thing as a provisional, then “beef it up†later, and still have the provisional count as a valid priority document. It only works if the provisional application provides complete support under 35 USC 112, 1st paragraph, for the later-claimed invention. The only shortcuts a provisional permits are non-substantive ones.
I am interested in seeking international protection for my idea. Are there any patents that I can obtain internationally?
Yes. An international Patent Cooperation Treaty patent application, filed in accordance with the Patent Cooperation Treaty (which has been ratified by the US), is similar to a provisional application. The international PCT patent application functions as an international place-card holder, and can hold the date for up to 30 months for the application for the US residents. A PCT patent application will not mature into a patent without filing and prosecuting patent applications in each international region or country where you are seeking coverage (for example, through the European Patent Office, through the Japanese Patent Office, etc).
What does my patent application consist of?
A patent application should include the following
v Heading
v Title
v Abstract
v Specifications – As per the USPTO, “The specification must conclude with a claim or claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention. The portion of the application in which the applicant sets forth the claim or claims is an important part of the application, as it is the claims that define the scope of the protection afforded by the patent. The claims must commence on a separate physical sheet of paper.â€
v Claims (within the claims, multiple embodiments). The claims must show how the elements in your claim are inter-related. Claims may be presented in independent form (e.g. the claim stands by itself) or in dependent form, referring back to and further limiting another claim or claims in the same application. Any dependent claim which refers back to more than one other claim is considered a “multiple dependent claim.â€
v Fees
v Cover letter
v A preferred method for your invention (but not language to the effect that “option A is the BEST mode, as best mode language can haunt an invention later) Language within the application that says ‘If the claims are not found to be in condition for allowance, the examiner is requested to contact the attorney to schedule an interview before mailing an Office action. (A good strategy is a formal request for an interview with the examiner before any amendment to find out what the examiner is thinking) The “best mode†has to be disclosed in the application per 35 USC 112, 1st paragraph, but that it doesn’t have to be identified as such, i.e. “the best mode of practicing the invention is …†isn’t required.
v All possible variations on the claims to protect the maximum amount of your invention
v Cover letter
v Power of attorney for practitioner to advocate on your behalf
v Copies of all relevant prior art (this can be supplied after filing, but ideally you have everything ready to go when you file)
v Affidavit/Declaration of the inventor
v Proper recitation of the values and ranges (For example, “a detergent, with a pH between 5 and 10â€)
v Picture claims (not mandatory)
v Technical testing data (not mandatory)
v Any incorporation by reference (incorporating by reference prior patents, and attaching copies of the articles or information that is being incorporated). Incorporation of references can only be used for US patent applications, not patent applications in Europe or Japan.
v Also, for the “summary of the inventionâ€, it’s a good idea to “copy/paste†the claim language into the specification and only modify them to make them read a little more casual vernacular (e.g. change “said†to “theâ€, remove the word “claim†from the ones that originated as dependent claims, etc.) There are different schools of thought on this. For example, Kayton (PRG) teaches to just describe the invention in detail once and that’s it.
What should be excluded from my patent application?
v No BEST mode
v No sales pitch
v Material that you don’t accidentally want to dedicate to the public, unless you claim that it is dedicated to the public.
v No background or summary of invention (this is optional – some patent practitioners don’t put this in, others think that it’s very important for the examiner to know the history of the patent ) There should be at least enough background to put the invention in context, and sometimes to “build in†an argument that it isn’t obvious (esp. if there is some very close prior art that the inventor knows about).
I forgot to add one of the requirements into my patent application, and my idea is time sensitive. What would be the date that USPTO would give my application?
Your filing date is the date that all requirements in your application are received. The filing fee and oath are not considered to be parts of the patent application. It is, however, desirable that all parts of the complete application be deposited in the Office together; otherwise each part must be signed and a letter must accompany each part, accurately and clearly connecting it with the other parts of the application. If an application which has been accorded a filing date does not include the filing fee or the oath/declaration, applicant will be notified and given a time period to pay the filing fee, file an oath/declaration and pay a surcharge.
How long does it take to get a patent?
Going through the application process at the USPTO can take as long as 3 years. For some areas, such as pharmacology, it make take as long as three years for the first office action. Business methods also take a significant amount of time.
What’s the process for obtaining a patent?
First, you should do a patent search. If you find a patent or published patent application (or several patent applications that have parts of your idea), then it’s important to do an analysis on whether or not your idea would be rejected as obvious by the examiner. A patent attorney or agent that does this search, for liability purposes, typically provides a written letter to the client, and has a follow up meeting to go over results.
Second, once the analysis is done, and you have decided to proceed, then you need to prepare and file a patent application. In most cases, a patent application is published 18 months after its earliest effective filing date by the USPTO, so you need to be aware of how this may affect your marketing strategy.
Third, once your application is sent to the USPTO, you need to prosecute your patent when (i.e. respond to the patent examiner’s objections). Depending on the concerns raised by the examiner, you may elect to amend your application, to discard portions of your application, to withdraw your application, to push forward with a variation (otherwise known as a continuation in part of your application) or to appeal the examiner’s decisions. As a last resort, you may need to consider filing an appeal in court about your patent decisions. The prosecution phase can take up to three years after your application is submitted.
Fourth, once you have your patent, you are responsible for paying maintenance fees on your patent so that it does not expire prematurely.
What do I do if the patent search comes up with a patent or published patent application that’s almost identical to my idea?
Some of the things to think about if there is a patent already include the following:
v If there is an idea out there that’s exactly like yours, can you design around the current patent? Can you look at the existing patents, and make sufficient modifications to the point that what you do with the idea is something that hasn’t been patented yet, and would not be obvious to the examiner?
v Do you have a way that’s different to make the same product in a different, better, cheaper or more cost effective way? Can you for example, reverse engineer a patent that is already in existence, and produce something a different way?
v Do you have a new use for the item that already has a patent?
v Can you put the items into a kit for a new, useful, and different process then they are created? (For example, in a recent Food Channel contest about wedding cakes, Black and Decker flecking tools were used to frost the cake- this could go into a kit along with several other specialty tools that would otherwise not be considered for cake decorating)
v Has the patent expired?
v Do you need a patent (or to obtain a license from the patentee to do your job or run your business?)
Who can do the work for you?
If you want a patent, you need to go to the USPTO web site, and to select a patent attorney or a patent agent. Both patent attorneys and patent agents must take the USPTO examination in order to practice before the USPTO. This is a 3000 page open book exam that gives agents and attorneys the right to practice before the USPTO, and requires that the agent or attorney have a degree in a technical discipline, such as engineering or science.
I’ve heard of companies where if you give them the idea, they will do all of the work for you on getting your patent and getting it out onto the market. What should I know about them?
If you choose to go with an invention submission company, you need to
v Find out what you are going to get for the service.
v Is there a non disclosure agreement (i.e. do you have a binding contract by the invention submission company to agree not to sell or pinch your idea?)What are the terms of the agreement?
v Who is doing the work on your patent application? is there a patent attorney or agent reviewing the work to make sure that it complies with USPTO protocols and procedures? What kind of search are they doing about your idea? Did you get a letter in writing about your search results that is signed by a registered patent attorney or agent?
v Does the invention submission company promise to produce for you a virtual prototype? If so, what is that? Is that a sketch on a computer, or is that a prototype that is mailed to your house? What are your expectations for your return from your investment? How much do you expect to pay the invention submission company? Determine what all of the costs are for going with an invention submission company. Make sure that all the costs are in the contract.
v What mechanisms is the invention submission company using to market your product? Are they cold calling manufacturers? What types of inventions does the company take? Are they going to the trade shows? Who are their contacts in the manufacturing companies that you want to produce your goods?
v See what the costs are affiliated with their program.
v See what the success rate is for their program. If they are telling you that of their 2000 clients, only 19% have obtained patents, and only 3% of those that have obtained patents have made money off their patents, you need to evaluate your odds.
v See what guarantees they make about whether you will get the patent. What is the time table that the invention submission company is promising you?
v Does the invention submission company tell you that you must have a trademark before you can get a patent? Does the invention submission company take the time to explain the difference between a trademark, a patent, and copyright? Does the invention submission company explain the time line of how long it takes to get a patent, and what phases occur when getting a patent?
v Does the invention submission company ask you if you have a business plan? Does the invention submission company explain the difference between provisional application and non provisional application?
v Find out what their turnaround time is.
v Find out of if they are insisting that you provide a model of your idea, complete with packaging.
v Find out how they intend to contact manufacturers. Do they attend the trade shows? Do they just send letters to every manufacturer?
v What are the dates that they are promising you to have a patent completed by?
What kind of expenses am I looking at when I am applying for a patent?
Assuming that you are going to have a patent attorney or agent assist you in drafting your application, there are the fees associated with hiring a patent attorney or agent, a second patent search if you and the attorney feel that it is necessary (sometimes it’s a good idea to have more than one independent search for your patent idea, depending on the type of invention), costs for drawings, and the filing fees required by the USPTO.
Is there a different in geographic costs when hiring an attorney or agent to file a patent application?
First and foremost, my information is based on asking other attorneys what their going rates on. However, geography appears to play a large factor. For example, Alaska patent applications run roughly $2500-$3000, which includes the search and the application. A large part of the low cost is that most of the inventors in Alaska are of the individual inventor variety – they lack the resources that the larger corporations have access to. In Seattle, the going rate is $ 6,000-$12,000. In California, the rate is around $8,000-$14,000. In the Midwest, it is $4,000-$9,000. On the East Coast (particularly if someone is retaining a higher end boutique firm) it runs between $15,000-$22,000.
Do I need a specialist in a particular area to do my patent application?
It depends. If, for example, you have created a new heart stent, with different capabilities than other stents, it would be to your advantage to hire an attorney in the biotech area with a specialization on medical devices to work up your patent application. If, however, your idea is a bit less specialized, (for example, a new strainer on a teapot) then you can go to any patent attorney or agent to have them do the work for you.
What are ways to save money on some of the costs?
You can do your own patent search, and your own patent application. However, the USPTO patent search pages can be cumbersome to navigate through, as you need to go through each classification where you invention may be categorized. For example, if you had a paper hole punching device that you wanted to patent, you would have to go through every classification for the device, and every sub classification. Plus, there are the other search engines, such as EAST, Delphion, and other progrmas. This can take a significant amount of time to do this. This also assumes that the USPTO properly classifies things, which doesn’t always happen.
It is important that you read through each specification for each existing patent that may be relevant in the classifications that you are looking at, as the language in the application may give more than one configuration, even though the illustrations may show only one design.
Can I file my own patent application?
Yes, but it can be tricky. The USPTO will penalize an inventor for failing to claim too much in their application, and not tell you if you aren’t claiming enough in your application. Language in your application can be very important – the difference between the words and, consisting of, comprising of, consisting essentially of, et cetera can mean millions of dollars if there is an infringement lawsuit. Most of the trouble involves not claiming enough rather than too much. E.g. the PTO might allow a narrowly claimed invention to issue as a patent, but then the inventor may have given up potentially broader protection. There are also prosecution strategies that must be considered when the examiner is reviewing your patent.
Should I go to Washington DC to meet with the examiner myself?
If I want to sue someone for infringing on my patent, how much is it going to cost me?
You have to figure that the costs for a lawsuit start at about a million dollars, as there will be depositions, discovery, reviews of when notebooks were created documenting your ideas, when they were reduced to practice, the types of research that you put into perfecting your idea, the variations that you tried and discarded when creating your invention etc. If your idea is worth more than that, the costs go up in infringement lawsuits.
Can I get patent protection in other countries?
Yes. You can file for patent protection through the European Patent Office, the Japanese Patent Office, and other foreign countries. U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Each place that you apply for patent protection has different processes, so what’s disclosed in one patent application in one country may actually harm you in another country. Thus, if you want international patent protection, it is important to bring that up immediately with your patent attorney or agent. There are certain protections through the Patent Cooperation Treaty, but you need to assess where you are seeking patent protection as the strategy to get a patent through the European Patent Office is sometimes exactly opposite the strategy for getting a patent application through the USPTO.
Okay, I have an idea, and I want to hire a patent attorney or agent to help me. What are some of the things that I need to do to prepare for the meeting?
First and foremost, keep your idea secret. Share it only with one or two people that you trust implicitly, and have them help you document when you came up with the idea, and when you reduced it to practice. Have a confidential disclosure agreement in place. If you have documented your invention, such as in a laboratory notebook, sign and date the description and have someone who is under a confidential disclosure agreement “witness†(also sign and date) your description of your invention.
Please, do NOT start a blog about your idea, as that will likely constitute a written publication that will hurt you later. Start a notebook on the day you create your idea, and date and document every time you think of a variation or improvement.
Second, if you haven’t done so, get to work on a business plan immediately. You, as the inventor, are going to be responsible for determining how much time, effort, love, and sweat go into getting a patent application filed, and how hard you want to push to get a patent allowance. As the inventor, you will have significant amounts of business decisions to make about the strategies you wish to employ when seeking your patent.
A business plan helps you focus on what resources you have to dedicate to the idea, how much you invention costs to make, how much it would be worth to sell it on the open market, how much you wish to advertise, what is the likelihood of market success, what types of designs currently exist, which trade shows you are going to attend with your idea, and how you intend to sell your product. Do you actually need a patent? What is your likelihood of being sued for infringement by someone else?
I have my patent now, and someone else is infringing on my patent. Can the USPTO help me?
No, you, as the patent owner are responsible for bringing having your attorney send a cease and desist letter or to take legal action against the person who is infringing on your patent.
What is a company’s duty to avoid infringing on someone else’s patent?
Companies bear an underlying duty to avoid violating known patent rights. The courts have also held that if a manufacturer withholds information regarding the patent they are seeking not to infringe upon and the product they intend to produce, this can be viewed as a willful infringement, and the penalties can be staggering.
What are some of the factors that the court looks at to determine whether there is willful infringement of your patent?
1) whether there was deliberate copying of the infringer versus a bona fide attempt to design around the existing patent
2) the formation of a good faith belief after knowledge of the patent that the patent was not in fringed or invalid or unenforceable
3) the exercise of due care after knowledge of patent rights
4) competent opinion of counsel and
5) behavior during litigation. (Willful Infringement, Allegations, Implications, and Practical Considerations by Kenneth Barrow, Sharon Israel, and Gregory Porter)
Proof of inducement to patent infringement requires evidence not only that the defendant engaged in acts that contributed to a direct infringement, but also that it knew of and intended the direct infringement of the patent in suit, according to the en banc Federal Circuit.
Who does the analysis to determine whether or not the claims in your patent have infringed on someone else’s patent?
The courts have the right to look at claim construction, as it is a question exclusively of law.
What are the penalties if you are found to have infringed on someone else’s patent?
If the court makes that determination that someone has infringed on the existing patent, the court would award damages, based on price erosion (i.e. the court would make a determination that but/for the infringement, the patentee would have been able to receive a higher price for their goods). Triple damages may be awarded under 35 U.S.C. 284. The company that is infringed upon can also receive attorney’s fees as well. Enhanced damages, once infringement is found by a jury, is pretty much standard practice.
Are there any tests that are different for design patents?
Design patents protect the first ornamental impression. The test for determining whether a design patent is infringed requires construction of the patent claim and comparison of the construed claim to the accused product The comparison must include it’s visual appearance as a whole, and the visual impression it creates. The patented design and the accused design do not have to be identical for design patent infringement to exist. (Id).
As stated in PHG Technologies LLC v. St. John Companies Inc., One of the considerations in deciding whether a design is dictated by function is “whether alternative designs would adversely affect the utility of the specified article, the Federal Circuit noted, citing Berry Sterling Corp. v. Pescor Plastics, Inc.
If I wanted information regarding the USPTO, what’s a good starting point on the internet?
The home page is www.USPTO.gov – it is important to make this your new best friend.
Another good one is Google. Google now has a beta testing patent search engine that is less cumbersome than the USPTO site, but is not yet foolproof.
For those that like other web sites that are not as bulky, I would recommend the following:
http://www.patentfetcher.com/
http://nip.blogs.com/patent/2004/09/guide_to_downlo.html
What’s a good link for tutorials on how to search the USPTO web site?
http://www.lib.utexas.edu/engin/patent/uspat.html
Are there other good resources out there?
American Intellectual Property Law Association is quite helpful for the practical, day to day stuff, as well as the regular classes
http://www.aipla.org/
Special thanks to Timothy Meig, my mentor through the American Intellectual Property Law Association for guidance and suggestions, and to Andrew Lahser for permission to use his diagrams
122 F.3d 1452 (Fed. Cir. 1997)