How Can I Determine If a Patent Is Expired?

A common question (or variation)I get asked is "I have an idea that is based on that is based on a product that was patented at one point, how can I tell if the product is still patented so I don't infringe?"Start-ups ask this question to 1) try to limit their liability even if they are modifying a product, 2) if the start-up is modifying a product they may have to get a license for the assignee of the patent to make their product, and it would be a much cheaper process without having to pay the license fees.

To answer this question, it is important to take a step back and understand the "life cycle" of a patent application. Upon filing an application, a patent is given an application number, these generally are in the form of XX/XXX,XXX. 18 months after the application is filed, the application will publish and be given a publication number in the form of XXXX/XXX,XXXX. Depending on what technology the invention is around 2-3 years after filing the application, the USPTO will look at the application and if the claimed invention is different than what is known a patent will be granted with a patent number in the form of USXXX,XXXX. If a patent has not granted for an invention, that start-up does not have any intellectual property which the can sue under.

Applications that are granted as patents may give the holder protection for 20 years from the date the application was filed. Accordingly, if a start-up filed an application on Jan 1, 2000 they can have intellectual property protection up until Jan 1, 2020, when the patent will expire. However, patents and applications themselves can expire or be abandoned before their full term expires.

Applications can become abandoned for various reasons. Typically, before an application becomes a granted patent, there will be several office actions (correspondences between the USPTO and an attorney). If the startup or attorney fails to respond to an office action, the application will become abandoned. Upon the patent office determining that a patent should be granted on a patent application, an "issue fee" must be paid. This issue fee is pretty steep $1,770 for large companies, $885 for small entities. Accordingly, after a 3-5 year period from initially filing the application, a startup may determine that the invention disclosed in the application is no longer profitable or may just not want to pay the fee. The application at this point will become abandoned without ever being granted.

If the start-up pays the issue fee the application is granted. However, a patent term MAY be 20 years. Maintenance fees must be paid for the patent at the 3.5 year mark after the patent is granted ($1,150), 7.5 year mark after the patent is granted ($2,900) and 11.5 year mark after the patent is granted ($4,810). As a note, these fees are reduced in half for small entities. Essentially, if a patent is not profitable at these marks, a start-up may decide not to pay the maintenance fee and let the patent go abandoned before the 20 year term expires.

So essentially the way to determine if a patent has expired is1) Determine if the patent was filed, or claims priority to a patent filed prior to 20 years before the date.2) Determine if the maintenance fees have been paid.

A good way to find out the filing date for a patent is to search Google.com/patents, find the patent, and look on the cover page of the patent.

To determine if the maintenance fees for a patent have been paid, inventors should go to the public pair portal at ( http://portal.uspto.gov/external/portal/pair/ ), type in the "captcha code." Then, select the "patent number" field and type in the patent number. This will bring you to the USPTO's transaction history of a patent (you can also look at this for other info about pending patent applications as well, and responses to the USPTO for the patents, so you can use this to look at Apple's newest patent applications). In response to selecting the "transaction history" tab, you will be brought up to the history of the patent within the USPTO. If the maintenance fees have been paid then this will show up on the report, if they havnt been paid there should be an entry stating 'Expire Patent" which indicates that the patent has expired.

Finding the Right Patent Lawyer for Your Needs

When you have an invention, idea, or product that needs to be reliably put under a patent, the process can be both long and complicated. The results of not doing the patent processes properly can be devastating. Your ideas, inventions, or products are likely the sum of years of your hard work, and to lose the patent to inexperience or failure to fill out the correct forms can be devastating. For this, you may want to hire a patent lawyer to ensure that you are doing things correctly to protect yourself and your investment in your ideas or product. It can save you a lot of money and heartbreak in the end.

Finding a good patent lawyer will take a little bit of effort and research on your part. It is important to do some looking around to find the right attorney that will be knowledgeable in this type of process. Researching the Internet for Lawyers in your area will lead you to some attorneys in general, but they may have no experience in handling patents. The important thing to remember is to specify that you are looking for a patent attorney, and ensure that they have the education and experience in working with your specific kind of patent query.

In order to do this, make sure you ask questions of the lawyers you have found in your area. Ask if they have ever dealt with patents and how much experience they have had in doing so. If the lawyer has had no experience, it may be wise to move on to another one that has. Ask how knowledgeable they are in your specific type of patent query, so that you are sure they can help you in the way that you need. If you are patenting a product, the process can be different than trying to patent intellectual property. The patent attorney will need to have knowledge in the specific type you are trying to achieve.

Once you have a few lawyers that have the experience, you can choose the one you wish to utilize based on their prices or even location relative to you. The fine details are up to you if they have the same background experience and can offer you the same services. Then it is simply a matter of finding the one that you wish to work with. If you simply get along with one better, that can also be a factor.

Your ideas or product mean a lot to you, and it is important to ensure you protect them from being stolen or taken from you. Patents can do a lot to make sure this doesn't happen, and doing the paperwork for a patent can be so much easier and likely more correct if you enlist the help of an experienced patent lawyer. You will be happier in the end by doing a little research into the lawyers available to you in your area, ensuring they have the experience and knowledge to safeguard your investment.

Prior Art Search: Its Significance in Protecting Intellectual Property

Prior art for a patent means same or similar invention (could be in many forms) published or exposed to the public in general before the filing date of the patent. A patent cannot claim something which already exists or is in use generically, for example, Indians' use of slaked lime paste with Paan,* cannot be patented in toto or in similar variants. The premise behind patent system is to reward inventors for unveiling its invention to public. It has to be novel and nonobvious, otherwise, rewarding an inventor with a patent for something that already exists defeats the purpose of patenting.

What is Prior Art and what it is not

Prior art has to be open and public. A trade secret and unpublished work are typically not considered as prior art. The search would include record of previous patents, content from trade journals, academic journals, research reports, catalogs, published creative work and discussions, trade shows, or public use or sales anywhere in the world.

In this big bad world of 7 billion, how does an individual or an organization, sitting in one corner of the world makes sure whether the research and development (R&D) that it is planning to carry out is already developed by someone else or not in another part of the world? What's worse, in many incidents, scientists at the end of their research realize their novel concept was never unique and someone else already has an exclusive right on something which they always thought their own.

History had its many interesting anecdotes on prior art search. Here's a famous one.

Donald Duck & ping pong balls

In December 1965, a freighter ship carrying 5000 sheep sunk in the fresh water harbor of Kuwait. The ship had to be raised quickly from the ocean floor not just for the cost of the vessel but also for the damage to the fresh water. Thousands of sheep getting decomposed posed risk of contaminating Kuwait's drinking water supply. A Danish engineer and inventor, Karl Kroyer was called upon. He and his teammates were able to raise the ship by pumping 27 million tiny inflatable polystyrene like buoyant balls through a tube into the hull of the ship. The plan worked and made headlines across world's media.

For the successful method of ship raising, Kroyer applied for patent in United Kingdom, Germany & Holland. While he received patents from first two countries, his application was rejected by Dutch Patent Office. The office refused the application citing a similar invention in a 1949 Donald Duck comic strip, where Donald and the nephews were shown raising a sunken yacht by filling it with ping pong balls shoved through a tube. The Dutch Patent Office did not find the invention new and denied patent on the evidence of prior art.

Excluded Subject Matter

Most people know that patents protect inventions. But what exactly is an invention? This question is not precisely answered by the law. Traditionally, inventions have been seen as technical contributions to the sum of human knowledge, but this leads to an equally difficult question: "what is technical?

"In practice, any product or process is usually considered to be suitable subject matter for a patent unless it is specifically excluded from protection. Although the Patents Act does leave open the possibility of further unmentioned exclusions, this has rarely been relevant in practice.

The various exclusions from patentability are set out below. Note that each exclusion only applies to the extent that an application relates to excluded subject matter "as such". That is to say, an invention is not excluded simply because it includes an element which is not patentable.

A discovery, scientific theory or mathematical method

Abstract and purely intellectual ideas are excluded from patentability. A discovery may be new and may be very significant scientifically and industrially, but you cannot prevent others from taking advantage of that discovery per se.

That said, discoveries, theories and methods often lead to practical inventions, and those inventions are patentable. Some examples are given below.   

The discovery that a particular known material is heat-resistant is not patentable, but a fireproof safe incorporating the material would potentially be an invention.   

A material which has always existed (undiscovered) in nature is not patentable, but a process to isolate or extract this material may be an invention. The isolated / purified material itself is also potentially patentable.   

A theory as to how and why a known process works in the way it does is not patentable. However, a better understanding of the mechanism behind the process may lead to improvements being made. Those improvements would be patentable subject-matter.   

A mathematical method involving particular operations on a set of numbers to reach another set of numbers is not patentable. However, an image enhancement system which operates on a digital image to produce an enhanced image is patentable subject-matter, even though a digital image is of course a set of numbers.

A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever

The wording of this section closely corresponds to the definition of works which are protected by copyright. Copyright affords a different type of protection, which is seen to be more suitable for works of this nature. Patents apply to technical inventions, rather than artistic works.

It should be noted that an invention is not excluded simply because its purpose is an aesthetic one. For example, a firework is not usually intended to serve a "useful" purpose, but the construction of a firework to give a particular visual effect is a technical matter, and may be an invention. Likewise, a musical instrument is generally used only to perform musical works, but technical improvements which make the instrument sound better may be protected by patents.

It is also worth noting that subject-matter is not excluded only because it is visual. For example, a squash ball characterised by its blue colour was granted a patent, because the blue colour allowed for enhanced visibility during a game of squash.Schemes, rules or methods for performing a mental act, playing a game or doing business, and programs for a computer

This exclusion, and in particular "programs for a computer", is probably the most controversial, most contested, and most confusingly unclear of all the categories of excluded subject matter.

Like the firework and the musical instrument examples, which are technical means to an aesthetic end, a technical invention which results in improved business efficiency will not be excluded as a business method. For example, an improved voice recognition system which speeds up transcription of dictated letters is not necessarily excluded. However, a business method characterised only by the use of a computer program in carrying out the method will not be allowed due to the combination of excluded categories.

A computer program may be patentable if the program provides a "further technical effect". For example, an invention involving computer software and enabling detection of the proper functioning of an anti-lock braking system was granted a patent. An application, however, for a computer program implementing a fixed-odds betting system, was refused.

The law on patentability of software is still developing, and it is difficult to give general advice. However, if you believe you have an inventive computer program, get in touch and speak to an attorney.

Presentation of information

Presentation of information is excluded from patentability, whether it is characterised by the content or the arrangement of the information.

Exclusion under this section is usually reasonably clear-cut. Examples include an "electronic program guide" on a television, which was found to be no more than a rearrangement of information and therefore excluded. A claim to a signal, encryption or compression scheme will usually be allowable, as long as it is defined in terms of technical features.

A method of treatment of the human or animal body by surgery or therapy, and a method of diagnosis practised on the human or animal body

The purpose of this exclusion is to ensure that patent law does not interfere with a doctor who treats his patient. Patents cannot be granted to methods of treatment and diagnosis. This does not however exclude drugs or medical implements, and pharmaceutical companies are indeed some of the most prolific users of the patent system.

A method of treatment is only excluded if it is by surgery or therapy. "Therapy" has been held to imply that there must be something wrong with the patient, that is, that the therapy must aim to cure or prevent some disease. A method of chemical contraception is not considered to be therapeutic, since pregnancy is not a disease. Likewise, treatments of animals which improve for example the quality of the wool, meat or other products are not excluded, because they are not treating diseases of the animal.

Methods of diagnosis are only excluded if they are performed on the body. An extra-corporeal method which involves, for example, taking a sample of blood and carrying out tests on the blood sample may therefore be patentable. In addition, to fall within the exclusion the diagnosis must be of an illness. A pregnancy test or fitness test may therefore be patentable.

A method of diagnosis must include the deductive step which leads to a diagnosis and a recommended treatment. A test which measures a particular characteristic of the body (for example, blood pressure) is not in itself a diagnostic method, even if the results are subsequently used by a doctor in reaching a diagnosis.

Inventions contrary to public policy or morality

Patents cannot be granted for inventions the commercial exploitation of which would be contrary to public policy or morality. This exclusion is in practice very rarely applied, and the bar for a "moral" invention is set very low indeed. The Patents Act goes on to say that inventions which are illegal in the United Kingdom are not necessarily excluded under this section, and it seems possible that there may be circumstances where the converse is true and an invention is immoral although its use would break no law.

Best Practices In Validity Or Invalidity Search

Patent invalidity search aims to uncover copyright that may turn a granted patent invalid. This type of search is conducted after the issue of a patent. Invalidity search is used to invalidate blocking copyrights. The scope of search generally include published copyright applications, appropriate non copyright literature etc. The final outcome of search is used for identifying prior art. This invalidity search results generally include

• Claims mapping charts

• Electronic copies of prior art cited

• A search report

Claims in validity search

An issued patent may have certain claims. Validity search is determined by selected claims of such issued copyright. In certain situation, a confusion regarding the validity of a patent may occur during litigation. This type of search is also requested even if no lawsuits are filed. The results of patent validity search will check whether a patent is enforceable or not. Such processes are generally conducted before licensing or selling a patent. Validity search is conducted and commissioned by large law firms. It is extensive and wide ranging. The laws and rules regarding validating or invaliding will be different for different countries. But most of the government grant laws recognize grounds like:

• Publication of the invention before the priority date of patent application

• Prior public use

• Prior sales of invention

One of the important factors needed to be considered while conducting validity search is claim interpretation. The future relevant of the art can be found by broad interpretation of allowed claims. The services of an experienced attorney are essential for the conduction of patent validity or invalidity search. Database search techniques are generally used in this process. Validity search help for many purposes like:

• Valuation of a patent

• Help in acquiring royalties or other licensing agreements

Patentability search for reducing risks in acquiring patent

Patentability search is generally conducted by the inventor for patenting his invention. There is no data constraints on prior art in patentability. Filing of patent application is a complicated process and it may take lot of time and money. It is better to undertake a patentability searching before filing an application. This will help you to reduce the risks of spending money and effort for your invention. When you file a government grant application, attorneys will check whether there is anything like your product in the market. This is also known as novelty search.

Importance of patent clearance search

Patent clearance search will analyze whether you can bring your invention to the market. It checks the legal aspects regarding introducing a product or service to the market. Clearance search is entirely different from Infringement type. Infringement is for pending applications in the country where you are going to market your product. On the other hand, clearance search seeks to market your product anywhere in the world. This can be considered as a combination of infringement and patentability search. This type of searching includes published patent applications, unexpired and expired granted copyrights, non patent literature etc.

Criteria for Patent Protection

If you have a great idea, you'll want to protect it. But what exactly are the criteria for patent protection?

Patents protect new inventions. They are intended to reward inventors by providing a monopoly over commercial exploitation of the invention for a limited period. In return, the inventor is expected to fully disclose the invention so that it is available for all to use after the patent expires.

Certain types of subject-matter are specifically excluded from the possibility of patent protection. Examples include computer programs, business methods, and methods of surgery. Excluded subject matter is more fully explained in a separate article.

Assuming your invention does not fall into one of the excluded categories, a patent can be granted for an invention which is novel, involves an inventive step, and is industrially applicable.

Novelty

This is the most basic criterion. No patent can be granted to an invention which is not new. In the UK, and in most other countries, a fairly strict line is taken in assessing novelty. Any disclosure, anywhere in the world, whether it is written down or not, is potentially prejudicial to a patent application if the disclosure is before the priority date of the application.

Because prior disclosure can destroy a patent application, it is crucial to keep your invention secret until an application has been filed. However, this is not quite the whole story. There are a few cases where it might seem that an invention has been disclosed, but in fact a patent can be granted.

Disclosure must be enabling

To prejudice a patent application, it is not enough that the invention has simply been shown. It must have been disclosed in a way which would enable a skilled person to put it into practice. For example, a motor company which develops a new engine and tests it on public roads would not necessarily destroy its chances of patent protection, since a person who observes the car drive past would not be able to discern the workings of the engine.

Disclosure must be to the public

An invention may still be new if it has been disclosed only to a particular group of people. However, if there was some expectation that those people would, or even could, further disseminate that information then the disclosure is considered to be to the public. Furthermore, any document is regarded as having been disclosed to the public if members of the public could have read the document (for example, because it is in a public library), even if, in reality, nobody did read it.

Disclosure must not be in breach of confidence

If information is disclosed to a person, or to a group of people, in conditions of confidentiality, and that information is subsequently disclosed to the public in breach of confidence, a patent may still be validly applied for, provided that the application is filed within six months of the disclosure.

Although conditions of confidence can arise without any written document, obtaining a signed confidentiality agreement before disclosing your invention to anybody is always wise.There is also an exception for disclosures made at officially recognised exhibitions, although in practice very few exhibitions are officially recognised.

Getting The Best Out Of Your Compromise Calculation

You may see it happening to your colleagues and there is a chance it can happy to you. There are many reasons a company will offer you a compromise agreement. It could be to insulate themselves from future legal cases, it could be to let go of a redundant employee or it even could be to let go of an employee who is not performing well. It is often used to let go of senior employees without too much of a fuss. One of the key features of a compromise agreement is that you are provided with a settlement amount, in exchange you will have to agreement not to hold the company liable for any grievances in the future.

In most cases the settlement figure is what can be the most stressful. While the company may put forth their own figure, you will need to take the help of an attorney to get yourself what you deserve. Here are some tips that can help you with the calculation.

You will first need to get organized as far as documentation goes. Bring together all your financial statements, titles, insurance coverage, and your income related information. Calculate what your disposal income is. This is basically the amount of money you are left with once you are done paying all the bills that you are liable for. It is primarily your gross income taking away all your monthly living expenses. The best way to keep track of this is to do all your calculations on worksheets.

You then need to know your net worth, which is a calculation of all your assets and what they are valued at in the present market. You will need to take the fairmarket value which is taking away any of the applicable expenses as well. These expenses could be liquidation expenses. Again a worksheet would be really useful at this point.

Then you will need to put together your disposable income and your net worth. Calculate the figure that you would have arrived at for a period of 60 months and then you will have a figure that can be considered a reasonable one to make. When it comes to the method of payment, you will have to check with your tax lawyers on what would be the best way to receive the figure. There are different ways such as check, credit card or even money order. The taxation authorities will have to informed and your lawyers will have to help you this.

Securing a Patent Is the First Step in Realizing a Return for Your IP Invention

Obtaining a patent is the first step in monetizing or selling your intellectual property patent for a profit on the open market. IP brokers are experts in assessing the value of and selling patents to U.S. based or global investors. Patents sales take place in industries such as computer and other technology, medical devises, communications including mobile technology, and other intellectual property assets to a range of inventors and entrepreneurs who are always looking for new and improved IP products.

A patent for your invention ensures you have "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or importing the invention into the United States," according to the U.S. Patent and Trademark Office. Granted for new inventions, patents are also granted for improvements on existing patents, including the invention itself or the design of a new invention.

The U.S. Patent and Trade Office (USPTO) is the institution that awards patents. The process of obtaining a patent requires that you keep a detailed record of your invention including every step taken in creating the invention, including how you came up with the idea. Along with this description, diagrams of each step, including modifications and prototypes are most often required. Although USPTO mandate is to give assistance in helping you secure a patent, they strongly recommend you secure a patent attorney or other experienced professional to guide you through the patent process.

At the time of application, your invention cannot be for sale. You should also research the approximate value of your invention or have the professional you hired help you in this process. There are associated fees to get a patent so you will want to make sure that your invention is worth at least the cost of obtaining the patent. Small entity fees are much less than those that apply to those not meeting the definition. The official designation of "small entities" includes individuals, small businesses, and nonprofit organizations. Small businesses industry-specific, and based on the number of employees and annual receipts.

You will also need to complete a thorough patent search to make sure your invention is new. While this part of the process is time-consuming, it is a necessary step. You or your representative will need to search scientific and technical journals as well as a Patent and Trademark Depository Library. Not only should you search for U.S. patents, but depending on your invention and the degree of protection you are seeking, foreign patents may be applicable as well. You are likely to find similar patents and be able to prove how your patent is different or improves on earlier designs.

When it comes time to file an application, there are two primary options. You can file a provisional patent application or PPA that provides you with a patent pending status, essentially locking in the date of your application. This step involves a smaller upfront outlay of cash, however a regular patent application is required within one year.

An oath or declaration claiming that the inventor is the first to have invented the subject or product accompanies the application material. There are many other fees associated with the patent process, depending on whether you are seeking domestic and/or global protection, if you want to apply for an expedited process, and other options.

What follows your submission of application is an examination process that involves an USPTO examiner who will gather precise information about your invention to verify that it is indeed unique and to define the scope of the protection you are seeking. The entire patent issuance process generally takes 12 to 36 months, depending on the industry associated with your invention. Paying for a prioritized examination generally reduces that time to colder to the 12-month period. Once your invention is in the patent pending phase, you may begin the process of selling or monetizing your invention as it then that you have secured the rights to the invention.

Five Changes to Patent Law Every C-Level Decision Maker Should Consider

On September 16, 2012, the Leahy-Smith America Invents Act (AIA) was signed into law, ushering in a wave of reforms to the current U.S. patent system. It is important to understand how changes to both patent prosecution and litigation may affect business operations going forward.

1. The U.S. has changed from "First to Invent" to "First Inventor to File" patent system.

The U.S. currently follows a "First to Invent" system in which rights to an invention belong to the first person to conceive of the idea and diligently reduce it to practice. Even if somebody else subsequently came up with the same idea and filed a patent application prior to the first inventor, the first inventor still is still entitled to invention rights. However, the U.S. will apply a new "First Inventor to File" system to patent applications filed on or after March 16, 2013. Under the new system, rights belong to the first person not only to conceive of an invention and diligently reduce it to practice, but also to file a corresponding application with the Patent Office.

The new system encourages inventors to disclose their inventions to the public sooner, lest they lose out in a 'race to the patent office.' Companies may be wise to consider patenting earlier in the development phase rather than waiting for production when feasible.

2. The new patent statute redefined what is considered "prior" art, heightening the need to file patent applications quicker.

The AIA expands the definition of prior art to include public use, sales, publications, and other disclosures available to the public worldwide, not just in the U.S., as of the filing date. Further changes expand the prior art definition to include foreign offers for sale and public uses. Notably, publications by the inventor made within one year of filing are excluded as prior art.

The change to a 'First Inventor to File' system dramatically increases the urgency to get patent applications on file. The expanded definition of what is considered invalidating prior art puts an onus on patentees to file their applications as soon as possible. It also provides broader defenses to companies accused of infringement.

3. Companies are empowered to make third-party submissions to the Patent Office to fend off potentially meritless patent applications.

In the past, third parties were limited to sending a "have you seen" letter to a patent applicant, hoping to trigger the applicant's duty to disclose the enclosed materials to the Patent Office for consideration. Under the AIA, third parties are now permitted to submit materials and a concise explanation of how they affect the patent application directly to the Examiner. Submissions may address issues beyond novelty and obviousness including definiteness, enablement, and new matter. The mechanism is relatively inexpensive as well, as the first 3 references submitted are free, and submission of up to 10 references costs just $180.

The catch is third-party submissions must be made in a narrow window - before the first office action is mailed, or no later than 6 months after publication of the application.

Third-party submissions provide a potentially powerful yet inexpensive way to participate in the prosecution of a competitor's patent application, but to have maximum value, it is important to be vigilant in developing procedures to timely monitor to act within the limited window of opportunity to make submissions.

4. New procedures are provided to challenge business method patents.

The AIA provides a new type of review procedure called a "transitional proceeding" (phases out in 8 years unless reenacted or renewed) to review finance-related business method patents. The procedure is available only for patents that claim "a method or corresponding apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service, except that the term does not include patents for technological inventions." A review can be instituted at any time during the life of the patent, and is not limited to within 9 months of issuance like the Post-Grant Review procedure. The effect of this procedure likely turns on court interpretation of "financial product or service" and "technological inventions."Transitional proceedings make it easier for financial institutions to challenge the validity of method patents asserted against them in litigation by lowering the standard of review required to raise the issue. Further, petitioners may use non-published evidence, not just patents and printed publications, to support their positions.

5. The AIA places new limitations on multiple defendant lawsuits.

The AIA provides narrow rules intending to limit the number of defendants that can be joined in one lawsuit. While there is no per se numerical cap, defendants must be involved in some common infringing conduct to be joined together. This differs from the current practice of joining tens or hundreds of disjointed defendants in one suit on flimsy jurisdictional grounds.

The changes are intended to deter frivolous lawsuits filed against multiple defendants by plaintiffs seeking to extract cost-of-defense settlements by effectively raising the costs of litigation on patentees. After this provision went into effect, patentees began mass filing single-defendant lawsuits. Courts in the Eastern District of Texas began entering orders directing the parties to work together toward common Markman hearings despite different lawsuits with different defendants.

While Federal courts will enjoy exponential increases in filing fees, it is unclear whether these changes will reduce the burden on the court system. I expect to see a significant amount of limited joinder by the courts for claim construction and invalidity purposes.

Essential Elements of Patentability

Usually whenever an inventor discusses his invention with patent attorney, the most important elements looked up or analyzed by attorney for determining patentability involves

1. Novelty

2. Inventive step or non-obviousness

3. Capable of industrial application or utility

Along with the above parameters the invention should also be falling under the patentable subject matter and should not form a part of "Invention which are not patentable"

1. NoveltyNovelty (etymologically means either novice/new) is the quality of being new and hence it should not form part of state of art or prior art. It means that the invention should not be anticipated/disclosed in any publication, prior claimed in any invention, used anywhere in the world before the date of filling or the date of priority.

The state of art comprises all matter (published document, prior claims, and use of invention in certain part of world) available to the public before the date of priority. And during evaluation of anticipation by publication, the degree of dissemination is not taken into concern so a single published document or its distribution to a single personnel constitute part of state of art/ prior art.

The test for anticipation from prior art documents is a litmus test for determination of novelty and is also a rigorous one, which involve that prior art document must be entirely contained in a single document & hence cumulative effect of all prior art references available at the date of priority is not allowed.

2. Inventive step or non- obviousness

Once novelty is confirmed, an invention is evaluated for non-obviousness, which involves that the inventive step of an invention should not be obvious to a person skilled in the art, wherein skilled person is an ordinary practitioner aware of common general knowledge in art and has access to everything in state of art.

Inventive step have been dealt in detail in section 2 (1)(ja) of Indian patent act, which set forth that in order to prove inventive step either the invention should be having technical advancement as compared to the existing knowledge available or it should have economic significance as compared to the prior art available.

So an invention is said to be obvious if the prior art provides motivation for invention and by combining the teachings of different prior art available on the date of priority it would lead to the formation of inventive step in claimed invention which is obvious to the person skilled in the art.

Obviousness is a significant hurdle and is highly fact based and the patent office employs numerous indicators in order to access inventive step which comprises of:

1. Complexity of work normally not carried out by research personnel.

2. Invention claim to satisfy a long felt need in the industry.

3. Failure of others to find a solution to the problem in hand.

4. Cheaper & more economical product.

3. Capable of Industrial application or utility

Capable of Industrial application is a common notation for European & Indian patent law, whereas utility is normally considered by patent examiner of USA. Industrial applicability means that the invention is capable of being made or used in an industry, where industry is something which involves any useful or practical activity as distinct from intellectual or aesthetic activity.

On the other hand for determining credibility of a utility patent, application must express a specific, credible and substantial utility.


And in considering the requirement of utility for patents, there are three main factors to review:

1. Operability of the invention;

2. Beneficial use of the invention;

3. Practical use of the invention;

These elements for patentability are essentially the same across all major patent law unions, convention countries and form an important component in determining the fate of an invention during prosecution.

Confidentiality Agreement: Can I Protect My Idea With an Agreement?

There are a number of common scenarios where a person will want to protect an idea or other confidential information that they share with another person. This can be done relatively easily by using a confidentiality agreement. By using this type of agreement, the person who has information disclosed to them can be legally prevented from sharing that information in most circumstances and you may be able to seek compensation for any loss as a result of their breach.

When you come up with an idea for a new product, you want to protect that idea so no one else can profit from it, copy it or even accidentally or carelessly disclose it without consequences. Also, in many cases if you invent or come up with a unique idea, you may want to be able to discuss it to seek some form of assistance in getting your new product off the ground, whether it be funds, development assistance, marketing or other specialized skills. If you want to seek investors to invest in your new product, service or idea, you may find that the investor needs to disclose information about your idea or concept to colleagues, the board or other financiers. The best way to protect this is by having them agree to your confidentiality requirements. In this situation, a confidentiality agreement can be used so any potential investor is under a duty to keep your concept, idea, service or product confidential regardless of the circumstances or you may have to option to bind their colleagues at the same time.

Another instance where you may require confidentiality to be maintained is where your company has a secret, new product or process that it does not want the general public or competition to know until it is developed further. However, in order to develop this concept, your company may need to share this information with certain entities such as internal employees, contractors or other businesses that they are working with to have various aspects of the product or process developed. To ensure your employees, contractors and other people who may be involved in the development or design of your company product or process, you can ensure you have a right to recourse if any information is leaked if you require them to sign a confidentiality agreement.

A confidentiality agreement can be an easy and effective way to protect your discussions, ideas and your inventions. Even if you are unsure if you will go ahead with your idea or concept, you still have the right to claim confidentiality on it if you have the proper processes and agreements in place to protect it. This is a simple agreement that essentially will outline that any information that comes out of a meeting or other specified relationship is to be kept secret and if it is disclosed to any unintended person, then you can seek either an injunction to stop them from leaking the information and/or a right to compensation for any loss as a result. In most cases, the person breaching the confidentiality agreement will have to pay damages for the breach of confidentiality.

Overall, confidentiality agreements can an easy way to be able to discuss your idea, information or any sensitive information you wish to keep private and not have discussed without your consent. It can give you confidence that, if there is a breach of confidentiality, you have recourse. The alternative is that you may lose your idea, your concept and your right to claim it as your own.

Tips for Patentability Searching

Persons new to filing patent applications often have basic questions regarding patent searches. Should an inventor do a patent search? Is a patent search required? Does it matter when a patent search is done? What happens when nothing is found? What should be done when the inventor finds out that the invention is not patentable?

Patent searches are optional. There is no requirement in the U.S. that an inventor perform a patentability search before filing a patent application. Some rookie inventors are confused by the requirement that IF a search is done and relevant prior art is discovered, that relevant prior art should usually be disclosed to the patent examiner or the inventor may be accused of fraud. Note that still, a prior art search is not required, just passing on known relevant prior art, from an optional search is required.

Some inventors take the position that they do not want a search so they find out any bad news. If they find out no bad news, there is nothing withheld from the patent office, as the inventor never had the bad news to reveal. Also, waiting for patent search results and later making needed invention changes has can delay a race to the patent office. Certainly, when the U.S. Patent Office switches to a first-to-file system in March 2013, promptly filing patent applications will become more important.

However, the patent office does do its own patentability searches. So at some point the inventor may find out the bad news that prior art bars getting a patent issued. By the time that the patent examiner conveys the bad news, the inventor has spent a considerable amount to prepare and file the patent application, waited several years for the first notice from the examiner, and invested funds on manufacturing and marketing the invention with an expectation of exclusivity. By the time that the inventor finds out that no patent will issue, the original patent application issues, telling the inventor's competitors how to make and use the invention. Once the competitor finds out that no patent will issues, then they can exploit the technology with impunity without paying one dime.

Certainly, an inventor should consider the patentability search as similar to having a mechanic review a used car before purchase. While the mechanic will not guarantee that the car will not break down, you will surely find out if there are any clear mechanical problems before you commit to buying the car, registering it, and maintaining it throughout its lifetime. In the same way, an inventor should want to know if there are any clear defects in the idea of patenting an invention before committing to filing a patent application (registering) and paying thousands of dollars in maintenance fees to maintain the life of the issued patent.

Just like the reviewing mechanic cannot guarantee that the car will last forever, a patent searcher cannot guarantee that no prior art exists that could block getting a patent. The mechanic looks for bad news that can be discovered without taking every bolt and washer apart on the car. The patent searcher can look for prior art, in the searcher's native language, on computer databases throughout the world. However, the patent searcher is not likely to be aware of a single copy of a Swahili-language doctoral thesis sitting on a library shelf in Tajikistan. Thus, care should be taken to have a very good searcher involved with an understanding that searching must reach as far as feasible but at some point must reach a limit.

Rookie inventors sometimes do their own patent search and claim that they found "nothing like it" regarding their invention. The reality that they are missing is that their search was not competent. While there is no way to find every single piece of prior art throughout the universe, there also is no way to search adequately and not find at least some things that are related to the invention.

Another issue for novice inventors is finding barring prior art after performing an adequate search before filing a patent application. The fact is that a patent searcher can only find what is publicly available. If a search is performed on February 1st and the patent application is filed on April 30th, the patent office examiner may come up with prior art that only published on February 2nd.

Unfortunately, it is rather common that a patentability search comes up with a ton of prior art such that there is now way to get a patent for the invention. The good news is that the bad news is discovered before spending time and money on preparing and filing the patent invention that would have been rejected promptly. The take home for the inventor losing out on a patent search is that the inventor now has a thorough review of the prior art, which should be helpful to learn further aspects that can be incorporated into improving the invention. The inventor can now brainstorm with a focus on significant novel aspects of the invention above the prior art.

After further consideration of the unforeseen aspects of the prior art, the inventor should focus on noting what aspects are missing from the prior art so that the invention can contain several inventive steps above the general state of the prior art. To put it more bluntly, the inventor needs to get back to the drawing board and put more meat onto the present skeleton. The discovered pieces of prior art will help the inventor make progress.