First Step Toward Patenting Your Invention: The Search

Perhaps you have an idea for a new product simmering in the back of your mind. You've done a few Google searches, but haven't found anything similar. This makes you confident that you have stumbled upon the NEXT BIG THING.

Every day inventors tell me they "haven't found anything like it." And while that's a good start, chances are that they haven't been looking in the right places.

Before investing additional money and resources, it's the right time to find out definitively if the invention is unique, determine if there is a market for it, and explore how to make it better.

Inventors should do a search online with a goal of finding two or three competitive products. If they're scared to do the search, that's a good thing, because in my experience, it usually means they're on the right track.

And yes, the goal should be to find other products in the market that are already attempting to solve the same problem as their invention. That demonstrates that a solution is actually needed. And if there is a need by a large enough group of people, then they stand a far better chance of turning the invention into a profitable venture.

So inventors should go to a patent agent or patent attorney with examples of two or three other similar products, and after signing a retainer agreement (which establishes the agent/client relationship) the discussion turns to the specifics of the product including drawings, mockups, and/or prototypes.

At this point, the agent or attorney will do a more thorough search of the U.S. Patent Office and other applicable databases in the United States and/or internationally. They are determining if this invention is indeed unique, or if there are even more, similar patented products.

Some inventors think about doing the search of the Patent Office on their own, but there are several downsides to this plan. Their emotional attachment to the invention will cloud their judgment, and they will steer away from finding other products that are similar. Although chances are they have already identified a few other competitors, searching the U.S. Patent Office is a more intense process. From my experience with clients who have done their own search, they have ignored similar products that have already been patented because they can't face the reality that their idea isn't as unique as they once thought it was.

However, finding additional similar products does not mean that all is lost. The strategy changes to comparing the proposed invention with the patented one, and discussing ways to improve it and make it patentable. A good patent agent or attorney will provide objective insight at this phase. The process is to take the invention, ignore the parts that have already been incorporated into another patent or patents, and the remainder is a patentable invention.

An Odd Antitrust Suit Over A Legal Monopoly

The idea behind a patent is to give the owner a legalized monopoly to encourage innovation.

Patents are limited to 20 years, after which the invention enters the public domain and can be freely copied. Inventors thus have incentive to create new and better stuff, since they will profit off the monopoly long enough to make the effort worthwhile, but not so long they can rely on one invention indefinitely.

No industry takes this model more seriously than pharmaceuticals, because drugs under patent in this country often command prices many times those that can be charged for drugs with generic competition.

Now a pharmaceutical company finds itself the latest target in New York Attorney General Eric Schneiderman's sights. Schneiderman has taken Actavis Plc to task over its decision to remove its immediate-release version of the drug Namenda from the market. The patent for immediate-release Namenda, which is used to treat Alzheimer's, will soon expire, and Actavis plans to discontinue the drug in favor of a new extended-release version.

Schneiderman's theory is that it is a violation of antitrust laws for the holder of a patent nearing the end of its life to stop selling the patented invention in favor of a new product with a patent life extending far into the future. Schneiderman finds it even more outrageous that a company would withdraw its old patented drug from the market before its generic competition can legally reach pharmacy shelves, because that effectively forces users of the old medication to switch to the new, arguably improved, product at a time when anticipated cheaper substitutes are not yet available. In a statement, Schneiderman described Actavis' actions as "gaming the system."

 (1)In other words, Schneiderman believes the holder of a patent has a moral and legal obligation to facilitate the very competition that the patent system is designed to allow inventors to avoid.

I understand from an ethical and financial standpoint why the attorney general feels as he does. Switching medications is often a complicated prospect, and one many doctors and patients might prefer to avoid. But legally, Schneiderman's argument doesn't seem to make much sense. Once generic alternatives reach the market, doctors and patients are free to go back to the old formulation if they wish. Further, private companies generally have no legal obligation to continue selling products they don't want to sell.

Actavis' strategy is not new, nor even uncommon. Claiming that it is illegal won't make it so. And while arguments as to whether the strategy is unethical will doubtless continue, even the attorney general cannot appropriately sue a company just because it does something he wishes it would not. For now, Actavis plans to continue the switch, according to a spokesman.

(2)Taken to its logical conclusion, Schneiderman's real objection is that state laws are designed to force generic substitutions unless prescribing physicians check a box under a brand name instructing the pharmacy to "dispense as written," often abbreviated DAW. By law, then, generics nearly always win when they are available. If a physician prescribes a brand for which no generic is available, however, DAW is irrelevant. The attorney general's real problem is with the laws that govern the substitution of generics and with doctors too uninformed or thoughtless to consider less expensive alternative treatments. This is exactly why pharmaceutical benefits in insurance programs have formularies, designed to create incentives to use more cost-effective drugs.

Apart from the publicity it generates for New York's ambitious attorney general, this action seems misdirected. If Schneiderman wants to stop drug companies from manipulating the patent system, it makes no sense to demand that they act against their own financial self-interest. Sharks do what they do because they are sharks. It's useless to demand that they act like goldfish.

Instead, the solution to the problem Schneiderman has identified is to change state regulations, if you can convince lawmakers, in order to encourage broader use of generics that are therapeutically comparable even when they are not clinically equivalent. Then let the marketplace, including insurers that create formularies, take care of the rest.

Patenting a Consumer Oriented Product - Emphasizing Function As Well As Form

Every year, entrepreneurs introduce into the market hundreds of new consumer-oriented products. These products cater to a variety of personal activities: cooking, personal care, sports, gardening, cleaning, etc. Usually, consumer goods are mass-produced and sold at a low cost, say less than fifty dollars. Therefore, out of necessity, they utilize designs that allow for low-cost manufacturing: i.e., they are composed of only a handful of easy to assembly parts. Unfortunately, a low-cost product design is vulnerable to being 'knocked off' by so-called copycat competitors.

To combat 'copycats,' makers of consumer products sometimes seek patent protection for their product designs. However, protecting a consumer product with a patent can be tricky.

For starters, to obtain patent protection, an innovative consumer product has to be different from all prior products and it also has to be different in a meaningful way. In "patentese," the difference has to be "non-obvious." A few consumer products are 'game changers.' These rare innovations tend to sail through the patent office with relative ease because they are the first of a kind or radically different from all past designs. However, the usual case is that an innovative consumer product is an incremental improvement over or a variation of previous product designs. Proving to the patent office that such a product design is inventive can be challenging.

One established method for making the case that an innovation deserves a patent involves highlighting the key technical differences between a new design and prior designs. This is where obstacles arise. There are only so many ways to build a mousetrap. So it is no surprise that the 'latest and greatest' mousetrap will use parts of an old mousetrap. Quite often, the features that are similar between a new design and an old design will outnumber the features that are different. In these instances, the true innovation in a design is invariably tucked within only a single part or a mere handful of parts. More precisely, the innovation lies in how those parts enable a product design to function better in some aspect.

It should be evident, therefore, that writing a patent application that only describes how a product looks can be inadequate. That is, simply creating a "parts list" and describing the materials, dimensions, shapes, etc. of each part may not fully express the meaningful design differences vis-à-vis prior designs. The patent application needs to go further and furnish the details as to how the critical parts act or interact to provide a benefit that did not previously exist. Failing to adequately describe such actions or interactions may make it all the more difficult to convince the patent office that an innovation merits patent protection.

At this point, it is worth noting that the vast majority of consumer products on the market are not patent protected. In many cases, branding and strategic pricing may be sufficient for a product to generate sales while discouraging copycat competitors. In other cases, a consumer product may have a market life of only three to five years. Since it may take three or more years for a patent to grant, patent protection for short market life products makes little sense. And as many inventors have learned, receiving a patent grant does not guarantee commercial success. Therefore, inventors should remain receptive to business models that do not rely on the existence of patent protection for commercial success.

Still, there are situations where patent protection can be a key asset that an entrepreneur wishes to possess to further a business venture. In those cases, care should be taken to ensure that a patent application fully describes the form and function of an innovative product design. 

Notes on Design Vs. Utility Patents

A new concept established or an invention made has, potentially, future economic and commercial value. However, the developer of the concept (i.e., the inventor) may not immediately be aware of the possible financial returns from the invention. Because conversion of an abstract invention into a commercialized product or service, it is therefore pertinent for an inventor to ensure that the ideas and rights related to the invention are protected for a definite period of time.

Article I, Section 8 of the U.S Constitution provides that, for promoting the progress of science, inventors are entitled to "exclusive" rights to their respective discoveries. The U.S. Patent and Trademark Office ("USPTO") is the government entity charged with issuing patents in the United States.

A design patent protects various visual characteristics of an article of manufacture' and covers the newly invented ornamental design. It protects the appearance of the invention and is comparatively cheaper and faster to get patented. A design patent does not directly protect the functional features of an invention. Thus, competitors can sometimes get by with changing the overall appearance of an otherwise patent-protected product. In contrast, a utility patent protects the functional aspects of an invention. A single utility patent can protect many different variations of products, thus becoming more economical in the long run.

A situation may however arise, where the invention has unique function or structure associated with a unique ornamental design. In such situation, adequate protection could be provided with a combination of both design and utility patents. After due consultation with a patent attorney, applications may be submitted both for patent and utility designs.

A design patent application mainly comprises a specification and drawings incorporating the figures. The specification comprises the preamble, descriptions of figures and single claim. The drawings contain the essence of what the design patent protects. Thus, drawings must be carefully drafted in accordance with the USPTO's Manual of Patent Examining Procedures ("MPEP"). Further, drawings must indicate those features which the patent is intended to protect, making drawings derived from 3D models - using software such as Pro-Engineer, Solid Works and CATIA - often useful.

LA utility patent application, in contrast, will include an abstract, background of the invention, summary of the invention, drawings, brief descriptions thereof, a detailed description of the invention's preferred embodiement(s), and multiple claims.

Although substantial differences conceptually lie between design patents and utility patents, prosecution of design and utility patent applications is similar, and both types of applications will face novelty and obviousness analysis at the USPTO. This makes obtaining patentability or infringement opinion before filing of application very prudent.

Infringement of either a design or utility patent occurs when one violates the exclusive rights afford to the patent's owner. Infringement of a design patent depends, generally, on whether the accused design and patented designs are substantially the same. Infringement of a utility patent depends, generally, on whether the patents claims literally "read on" the accused invention or whether the differences between the accused and patented products are insubstantial.

Whether an invention is patentable and whether it is infringing are separate but related questions. An invention which runs afoul of an enforceable patent will not itself be patentable, though an invention can be unpatentable and also not run the risk of infringing another patent (e.g., all of the patents which might cover have expired). In the event an inventor realizes his/her product is not likely patentable, it may be prudent to have an infringement opinion rendered to ensure no patent trolls are biding their time.

Any inventor or aspiring entrepreneur who is contemplating acquiring patent protection - or wondering if it is necessary - should speak with a patent attorney who can take the prophylactic steps necessary to ensure you are covered in either event.

"The To Do List" for Drafting IT Related Contracts

A well-drafted IT contract is an insurance policy for an IT project. Anyone involved in drafting and negotiating IT contracts should follow a certain methodology to achieve the optimum result. Of course, the methodology depends on the type of IT project and the services rendered. The drafting phase is the most appropriate time to tune the contract to the best advantage. This can save money and help to avoid further disputes when properly performed.

In order to tune the contract properly, it requires a good understanding of the technical and legal issues involved in the IT project and the type of problems that might arise during project implementation and afterwards. So the contract has to be specific, not general. Many managers overestimate their understanding of the technical side of IT projects and the legal risks associated, thus often excluding technicians and legal experts from drafting. But this limits the ability to assess possible risks and address them in the right way at the right time.

First of all, do not delay to start; contract negotiations in IT projects take longer than you may think at first. Do not leave contract drafting to the last minute. Contract problems multiply with rushing. So consider legal and technical risks at the contract design stage.

Secondly, set the objectives. Do not try to tune all contractual clauses to perfection at once. Use the return on investment method to identify the parts of the IT project which are most critical and profitable to you. Once these parts are identified, describe them in the contract. It is always useful to have several versions of the same contract clause during negotiations. Your objectives should be defined in a form accepted and agreed by all parties involved. For example, setting technical objectives and application of specifications are crucial for service level agreements.

In IT contracts it is vital to check the parts that foresee the scope of the license or transfer of copyright in the software created. Software developers are interested in maintaining the rights necessary for software distribution because individual software, once created for a particular company, may easily be applied elsewhere and later may be marketed as standard software. In contrast, the customer who financed software development very often does not want to leave any economic copyrights to the software developer. One of the most important parts of an IT contract is the detailed description of granted rights by using the software. In case of license grant you should check whether the license is exclusive or non-exclusive, for a definite or indefinite period; as well as which territory it covers; how many users will be able to use the software at the same time; on what conditions the customer will be able to transfer the software to third parties; whether the license gives a right to the customer to modify the software independently and so on. Here it is important to agree on the source code of the software, for example, to indicate whether the source code is part of the contract or not, because further development of the software depends on it.

Furthermore, it is also very important that the contract clearly provides quality requirements for software, warranties and liability, the duties of the parties in the process of software implementation, methods of project management, testing, dispute resolution, payment conditions, exit provisions, agreement on further maintenance of software, as well as the method of acceptance and transfer of interim and final work results. When accepting the final version of software the customer should confirm that the software corresponds to the technical specification provided in the contract and functions without substantial defects. Upon signature of the acceptance-transfer act the software cannot be refused because of the minor defects which normally always exist in software. Before accepting the final works of the IT software, it is advisable to agree on a certain period during which operation of the final version of the software will be tested.

For the software producer it is useful to narrow liability insofar as the law allows. Generally, liability is limited by a certain monetary amount and loss occurring only because of certain events. In the part which determines liability, laconic wording that damage is compensated in accordance with the law may appear to be more beneficial to the buyer.

All in all, the parties often underestimate the contract drafting process hoping that friendship may resolve all conflicts in IT projects. But life teaches us that when conflict arises parties tend more to rely on the contractual wording than on oral promises.

The Truth About Patent Trolls

A patent troll is in the field of intellectual property, and more specifically that of licensing. It is the name given to a company or an individual who uses the licensing and patent litigation as the main economic activity. The patent troll name was used in 1993 to describe companies who bring multiple patent infringement litigation cases. The term was popularized by Peter Detkin in 2001 when he worked for Intel.

This type of company is more commonly referred to as Non Practicing Entity (NPE) ("corporation without activity") since their main feature is not to produce any good or service. This model is akin to blackmail: the company acquires one or more patents in the technical field that it does not operate itself. It then seeks to contract operating licenses of its equity ownership from companies producing the goods or services by threatening a summons to court for infringement of said patents. This action is often based on disputed patents whose legal strength is weak. Thus, a major part of litigation involving patent trolls, are based on software patents or business method patents. Their targets can be large companies as well as small technology companies that cannot raise the necessary funds for a trial.

Companies often pay the troll because in the worst case scenario, the company is prohibited from using the technology claimed in the patent, and in the best case scenario, legal costs are well above what is asked by the troll, even if the case is won. The activity of trolls is limited to the acquisition, valuation and sale of patents.

A troll can also be paid to protect a company against another patent troll. If another patent troll sues the company, the Patent Troll protector will counter-attack this patent troll with the use of other patents. The patent trolls agree to settle amicably this kind of situation.

Note that more and more manufacturing companies use the services of NPEs to aggressively develop their patent portfolios, and at the same time obtain cross licensing of portfolios held by NPEs.

In 2006, RIM, maker of the BlackBerry mobile phones paid $ 612.5 million to NTP in order to stop litigation instigated in U.S. courts. Although this practice is yet mostly concentrated in the US, it is already happening in Europe, evidenced by the dispute of Nokia and HTC facing IPCom.

To combat this abuse, a global reflection on the purpose and function of patent law as it is perceived today seems necessary. The activity of patent trolls can restore a balance of power between individual inventors and large groups against which they would otherwise have no defense against infringement. The average cost of a lawsuit for infringement has reached hundreds of thousands of dollars.

Strategies of trolls are legal. It is only the right available to any owner looking to enforce an operating monopoly that is conferred by obtaining a patent. The definition of NPE could apply to many groups including IBM. This company sells patent licenses in a technical field that it does not operate itself.

The current reform of patent law in the United States raises a debate on the role of these practices. The Obama administration has set up a first series of strong measures capable of limiting the power of patent trolls. Among the barriers, one in particular should make it mandatory to disclose to the court all of the persons or entities that may have a financial interest in the complaint. For the Obama administration, the measures have very clear objectives to increase the functional costs of patent trolls since the upstream work of the judicial process would be much more important.

Which Patent Application Form Is Best for You?

Provisional and non-provisional applications, administered by the United States Patent and Trademark Office (USPTO), are two options for people wishing to protect their inventions. The provisional application has a lower price point which makes it the more economically attractive option for a first patent filing in the U.S., while providing parity between U.S. and foreign applicants under the GATT Uruguay Round Agreements.

What Does a Provisional Application Do?

Filed with the USPTO under 35 U.S.C. §111(b), the provisional patent form is a U.S. national application that allows for applicants to file without "a formal patent claim, oath or declaration, or any information disclosure (prior art) statement". The expeditious nature of this type of patent form enables applicants to establish an earlier effective filing date, which can be highly useful should they wish to establish primacy later or file a non-provisional patent application under 35 U.S.C. §111(a) at a later date. It is the provisional patent form that enables applicants to use the phrase "patent pending" in conjunction with their invention (Source: "Provisional Application for Patent," The United States Patent and Trademark Office, http://www.uspto.gov/patents/resources/types/provapp.jsp).

The pendency of this application is effective for 12 months from the date in which the application was filed. This pendency cannot be extended, it is important to note. For this reason, an applicant who files this type of form must file a corresponding non-provisional application during the 12-month pendency period if they do not wish to forfeit the claim to the earlier filing date of their provisional form. This application must, understandably, specifically reference the provisional application.

An alternative to filing a corresponding non-provisional form is to convert the provisional application to a non-provisional one by filing a "grantable petition". This must be done within the same 12-month period from the date of the first filing. The downside of this method is that the term of the patent issuing from such a conversion will commence from the date of the original provisional form filing date.

What Does a Non-Provisional Application Do?

A patent is a sort of "fence" for an invention. It establishes the boundaries for ownership and profit derived from anything contained within the perimeters, just as property rights protect homeowners and businesses from trespass. For a limited time, a non-provisional patent holder is given rights that exclude others from using, making, selling, offering to sell, or importing in the U.S. the material defined within the patent.

There are three types of patents: utility, design, and plant (and two types of utility and plant patent applications - provisional and non-provisional). Of the over 500,000 patent applications received each year, most are for utility patents (Source: "Nonprovisional (Utility) Patent Application Filing Guide," The United States Patent and Trademark Office, http://www.uspto.gov/patents/resources/types/utility.jsp).

If you have questions about other types of patent forms, locating a patent attorney or agent, obtaining the most up-to-date Fee Schedule, or obtaining copies of other USPTO publications, contact the USPTO.

One important note to be made is that having a patent does not mean the USPTO will go after and enforce infringement of that patent. It is up to the patent holder to enforce their patent rights and pursue proper recourse should their patent be encroached upon. Given the complex nature of the non-provisional application, the USPTO recommends that applicants consult with a registered patent attorney or agent, after reviewing their guide.

Is a Patent Worthwhile?

Inventors are often too quick to want to apply for a patent. As a registered patent agent I can profit from their haste. But I feel inventors need to have some understanding of the real value of their potential patent claims as they are often not nearly as strong as people they are perceived. Inventors need to understand the strengths of claims to decide if a patent is even worth investing in. If inventors want to stop competition, but can't get a strong patent, then maybe they should concentrating on developing a market presence before completion can enter the market. My goal for this newsletter is to give you insight into the written word of the patent claim so you can better analyze the information you receive from your patent agent or attorney.

When Mr. Coffee came out, the first drip coffee maker, it had four or five patents. Yet despite those patents there were quickly four or five competitors on the market. How is this possible? Well for the most part it revolves around the concept of the doctrine of equivalents. This principle states that a patent is being infringed upon if a patentee can show that that there are no substantial differences between the potentially infringing device and the patented device. But there is a catch, the doctrine of equivalents through court rulings has been determined not to be for the invention itself, but for the elements of the invention. The elements are the various parts of the invention, for example for a knife, the elements might be the handle, the type of blade and the serrated edge. Now, understanding the application of doctrine of equivalents and its application to elements is difficult, and lawsuits involving them have an uncertain outcome and can be expensive to defend or prosecute. But to help you understand the wording of a patent claim I'll take a look at Patent number 4,969,580. I've listed the patent's major claim below with my comments in italics and what I feel are the major elements in bold type.

What is claimed is:

A hanger support apparatus for use in a shower with a bottle having a neck (neck is a vague element term which is good in a patent) at one end thereof, and one end having an end wall (end wall is also a vague element term) that that extends laterally at the side wide of such bottle (so far this is just a hanging device for a shampoo bottle), comprising a frame said hanger said frame being elongated on along a longitudinal axis and having a hook (hook is much more specific and specific terms are warning signs in a patent claim. Anything other than a hook would not infringe on the patent as a hook is an element in this patent) means for supporting the frame on end thereof and a support plate, (a support plate up to this point is a vague element term, so far so good) said support plate extending generally at right angles to the longitudinal axis of the frame (this language in the claim for the support plate element is very specific and it leaves plenty of opportunities for others to design around the patent by simply not having a horizontal support plate) the means for retaining the bottle on said frame comprising a strap (the term strap itself is not specific into the type of strap, it could be any type of strap, but calling out a strap rather than a more generic term like holding device is specific and limiting) that surrounds the frame with a method of adjustably securing said strap comprising a loop at one end (this now defines the strap very specifically and should be a warning flag for inventors as now competitors only need a strap that is not just like the one described) said strap having an aperture there through that is selected dimension measure in direction along the length of such strap and the opposite end portion if said strap having a plurality of individual raised ribs ... (this patent describes the strap in such detail that I believe designing around this patent will relatively easy.)

This is a patent for a product that holds a shampoo bottle. Now go into your closet and pull out a hanger. Push the sides together so you have a hanger hook on top and the rest of the hanger hanging straight down. Put your hand on the bottom of the hanger and bend it straight up. Now you have a shampoo bottle holder.

Some general guidelines for looking at a patent claim are:

1) long individual patent claims are generally not desirable as the patent claim tends to be more and more specific as they get longer;

2) vague terms such as holding device are much better than more specific terms such as strap; and

3) the more clearly you define each element the easier your patent will be to design around.

The question is then, why won't attorneys avoid limiting statements in a patent. Your attorney would be happy to do that. The problem is that the patent office tries to limit the scope of patents and forces you and your attorney to be more specific in your claims. This is especially true in product areas where there has been a long list of patents, the patent office will try to approve only patents that have a great deal of specificity in them. If you put in a patent claim that is too broad in the patent office's eyes, the patent office won't approve it and then you either have to drop it or have your attorney narrow the claims, all of which costs money.

As I said earlier in the article I am a patent agent and so obviously I believe strongly in patents and they are a valuable tool for inventors. But they are also expensive. And you don't need a patent to introduce your idea. So be cautious in what you spend on a patent. Make sure you are getting a patent that will give you a significant market advantage.

The Software Patents Have a Competitive Advantage for Startup Entrepreneurs

Today, our lives have been dominated by the presence of computers in our personal and professional lives. You can find computers being used for an amount of effects like managing voting booths and even running cars. Since the advent of this machine you can see a wide range of innovations are being added in both the software and hardware of computers. In fact, some of the incredible power found in today's general purpose computers is that you do not even have need of specialized kind of hardware to manage the specialized kind of tasks. In fact, it's the innovation following the show that runs following the show. The innovations, which are being seen in the form of an amount of software applications and resources, have loads of efforts and creativity, which has to be secure so that others cannot simply start using or abusing the same. This becomes probable only through the software patents.

Patents can be termed as the old plan wherein you can find the concerned agency in different countries with rewards for any favored that is unique, different and creative as compared the earlier ones. This plan was found in special domains unlike the business methods patents and other similar patents, and hence was lately introduced in software domain as well. As you see loads of improvement being carried out in this sector, hence patenting the same becomes vital. Despite the number of objections and counter arguments against the advent of software patents, these still remains in force in all the main developed nations like United States. In fact, you can find quite a few amounts of benefits of going with the software patents, which is or else not found with the other types of laws plus the copyrights. It simply helps the novices to get the competitive gain for their business.

The next important gain you enjoy with software patents is that it simply help the software licenses or get the proprietary supplement a wide range of open source programs. Earlier you could see two special strategies for going ahead in the software market that certainly included copyrights and trademarks. However, implementing the same even with the help of competent patent attorney simply failed to get the benefits, which the startup entrepreneurs are now able to achieve. As per the recent surveys and study studies, the patent in software industry is being considered as the topmost ways of attaining competitive advantage. So despite all the negative argument against the software patents a fine amount of businesses seems to wish the same and reap dissimilar benefits as well.

How to Apply for a Patent and Using Patent Licensing to Your Advantage

So, you have an idea that you think would make a fantastic invention, now what do you do? Before you take that idea to market and develop the invention further, it is always wise to apply for a patent. This gives you protection and allows you to continue to develop the idea without having to worry about others using it for their own purposes. How do you apply for a patent and how can you use patent licensing to your advantage?

It is possible for you to apply for a patent on your own but it can be complicated and if it is not done properly, it may be rejected. That is why it is often recommended that an attorney or other service is hired which can help to walk you through the process. That would include searching through existing patents on the US Patent and Trademark Office (USPTO) website to ensure that it does not already exist.

Identifying the Types of Patents

There are 3 different types of patents and you need to choose the one that is going to be right for your idea or new invention. A utility patent is the most common and it refers to an invention that is specific to a function. Design patents, on the other hand, are specific to parts of the overall design. A plant patent is the one that is used less frequently, as it is given for reproducible plants.

Once you have identified the type of patent and done your research on the USPTO website, you can file your patent in order to get the protection it offers. This can either be done on the website, as well as through the Postal Service or by faxing the application. No email option is currently available.

This may seem like a relatively easy process but the fact of the matter is, it may take years before your patent is granted. Get the help that is necessary to ensure that you fill out the application properly and make all of the right decisions. It will make a difference in how things go for you.

Using Patent Licensing

When you have a patent, it is possible for you to take advantage of patent licensing. The two different types of patent licensing are referred to as exclusive and nonexclusive. These can benefit you in multiple ways, including granting rights to others so that they can further develop the idea. You may also use licensing if somebody is already using your idea. This type of license is typically offered to force the individual to pay for the idea as an alternative to being sued over patent infringement.

Applying for a patent and taking advantage of any licensing that would benefit you will offer you protection and allow you to continue to develop your idea. The patent laws are in place to protect you in this way and to promote the development of new inventions. Make sure that you are taking advantage of what they have to offer.

All About Design Patents

Chances are, somewhere close to where youíre seated, youíve got a box full of CDs. Take a look through them. If youíre like the average computer user, youíve got CDs sitting in plastic cases that are square or round, made of hard plastic or soft plastic. Some are yellow, some are clear, and some cases they may even be made of paper. The utility of a CD case is the same: to cover the CD so outside sources do not scratch or ruin it. Nevertheless, all of these variations on the general CD case most likely have different patents for their design, based on a single, previously filed utility patent.

A design patent, in the most simple of terms, is assigned to a fundamental decorative change to an object that does not change its overall usage. To understand how a design patent differs from a utility patent, consider a simple pair of black sunglasses, which has been patented. An inventor that decides to change the sunglasses so that they are rounder with green rims would be granted a design patent. An inventor that adds nose clips to make the glasses more comfortable would be granted a utility patent.

Similar to any other patent, a design patent specifically protects the product from being sold or imported by any unauthorized individuals. The design patent is only held by the US Patent and Trademark Office for 17 years. This is less than the 20 years granted to a utility patent, but the design patent holder will not need to keep the patent alive by paying regular fees. Whatís more is the application itself is much simpler to fill out. Thereís no need to clarify what the usage of the patent is, or draw out the creationís functionality. The USPTO does require the patent applicant to describe how itís original and ornamental. The application must compare the invention to prior-art, or patented products that may look very similar to the creation.

What the USPTO is most concerned with is the quality of the pictures representing the aesthetic changes, and they expect the pictures to be thorough. They react favorably to applications containing photographs in this case.

Design patents can be difficult to differentiate from utility patents sometimes. An ornamental change may arguably also be a utility change. In addition, a first time designer may be confused about whether they need to apply for a patent, a trademark or a copyright. Itís likely theyíve seen all in use and associated to something decorative, so they may think initially that their invention may require one of the three, or maybe all three. What they will need to consider is that a decorative change to an existing item cannot fit the definition of a trademark because a trademark refers to the name associated to a product. It also cannot fit the definition of a copyright if it isnít related to a type of document.

Some of the lesser known things that could arguably earn a design patent are fonts and computer icons. In fact, the very first design patent to be granted was on a font. Both computer fonts and icons, in order to be patented, must be actively used. In any case, if youíre an artist and have a fantastic idea about how to make a product more marketable, you may find that applying for a patent will be one of the greatest things youíve ever done.

Dave Korpi holds over 13 patents and pending patents in widely varying fields from thermal mass flow meter technology, primary standards calibration systems, to novel methods of manufacture for resonant structures as well as the author of the Provisional Patent Video Course.

What Do Patent Attorneys Do and How Do I Find One?

The concept of "copyright" is not difficult for to understand, even for people without familiarity with the law, but many individuals are not clear on what exactly patent and copyright law entail. Qualified attorneys will be able to assist in protecting copyrighted material and carrying out the cases and paperwork.

Essentially, patent law is in place to ensure that the legal creators, or the people who the legal creator has passed along rights to, of an idea or item have full control over where and how it is distributed, and how money is made off of it. This is accomplished by employing legal professionals who receive specific training in this complex area of the law.

While seeking an attorney, it is best to find a qualified legal expert because there are many disciplines in the profession. For example, some concentrate specifically on copyrighted music, while others perform book and publication law. Individuals who own intellectual property are able to take advantage of these laws to protect the fruits of their labor. It is the smart choice to interview several lawyers before choosing one.

Often it is an excellent idea to protect yourself against intellectual property theft by establishing a formal patent. Due to the complicated paperwork this entails, it is hard to establish a patent on an idea itself, and it requires a thorough knowledge of the statutes. It is smart to seek out professional counsel in order to complete the paperwork accurately. Legal professionals can make an appeal to the United States Patent Office and file the appropriate papers to make things happen.

Issues relating to this area of the law can be of several different kinds: copyrights are just one small part. For instance, if your business creates shipping parts, patent attorneys with knowledge of maritime law will be able to help. It is crucial to find a lawyer who appreciates your specific business.

When it comes to this area of the law, experience is as important as formal education and job knowledge. Make sure to solicit advice from former clients who have used patent lawyers in the past. If you are connected with fellow entrepreneurs, now is the time to ask who they use for their ideas and inventions.

While the choice should be a careful one, attention should be given to the fees charged by attorneys. The prices that come with various patent services vary greatly from practice to practice. While it's important to retain qualified counsel, it is also foolish to spend a great deal of money on a patent that is not a crucial part of your business before it has even had a chance to make you money.

Feeling Out Patent Attorneys Before Hiring Them

When individuals hold certain intellectual property, it is likely that they will take steps to make sure that it will be protected as well as possible. Many of these individuals retain insurance policies or strive to properly protect the important items that they own like their home, car, or other major valuables. Along this line, intellectual property must be protected as well. If you hold the original concept to something or have created it, it is vital that you make sure to protect it so that nobody else can profit off of your hard work. This is why invention patents are so important to protecting original ideas. To obtain a patent, you have to submit a federal request to the government. If the patent is granted, then these government officials will place a detailed description of the intellectual property in a document called a "patent disclosure." However, this is easier said than done. The process of obtaining a patent is extremely difficult to parse for the layperson, which is why most people should retain patent attorneys to help them with the process.

However when you are choosing between patent attorneys, you will want to ensure that you are asking a set of detailed questions to stay aware of what is going on during this complex process. There are a few simple questions that you should make it a point to ask during the first meeting with your prospective attorney. In order to get the best possible information from a consultation, make sure to come prepared with questions. Ask if there are any precise areas of law that they have a specialty in. Some legal professionals will have a specialization in certain industry areas, while others may be less focused in their discipline. Make sure that the attorney has at least a cursory degree of experience in ideas similar to the one you are trying to get patented. Ask many questions about previous cases they've worked on as well as the success ratio of their efforts, and if any of their previously filed patents had been overturned.

You will also want to find out about the attorney's level of education, and whether or not they have taken the patent bar exam. Additionally, it's smart to ask if they retain any certifications that have enhanced their professional profile. A good lawyer should be able to honestly tell you precisely how many patents are in their portfolio and what type of industries they covered. Finally, the question of money must be addressed. Ask the attorney not just about hourly rates for counsel, but any additional fees or retainers that a patent case may encompass. The more knowledge you gain, the more secure in your ultimate choice you will feel and the better protected your intellectual property will be.

UK Patents to Grant Faster Than Ever Before - And More Expensively Than Ever As Well

The UK Intellectual Property Office have announced a public consultation on a new 'superfast' patent service. Under the proposed system, a patent could be granted as quickly as 90 days from filing, as long as the applicant is prepared to stomach an additional fee of around £3500 - £4000.According to the IPO, the £3.5-4k fee "reflects the significant costs of conducting the patent application process in such a short timescale." But even the lower end of that price range represents over fifteen times the IPO's current fees for processing an application.

Treating patent applications more urgently for applicants who can afford to pay significant extra fees is unlikely to be a popular move with cash-strapped small businesses. One of the most important jobs of the patent system is to protect small inventors from larger competitors who would steal their ideas. Patents level the playing field by providing an inventor with a legal right to stop others from using an invention, regardless of how much more quickly and cheaply those others might be able to churn out copies. A system where the IPO treats rich applicants more favourably than poor ones is hardly in keeping with that aim.

The 'superfast' accelerated procedure would also reduce the period in which interested third parties may file observations on pending patent applications. At present, applications must be published and open for public comment for at least three months before grant. This gives the man in the street the chance to point out that a supposed 'invention' has actually been around for years, and to provide evidence of that. Although the system is little-known and therefore little-used, the IPO recently concluded a successful experiment, finding that with a decent online system and a bit of publicity, the public will in fact say something useful about pending patent applications. Reducing the opportunity for this to happen would again seem to be a backward step, allowing big businesses with deep pockets to speed patent applications past public scrutiny.

Getting a British patent granted typically takes three to four years, but various options are already available to accelerate the procedure. The current accelerated procedures are free-of-charge, and can bring the time between application and grant down to around nine months.

Though the UK IPO's press release refers to the "new" proposals, a paid-for accelerated service was proposed back in 2007. A public consultation at the time attracted all of seventeen responses, most of which were in favour of leaving the system exactly as it was. Even those who supported the idea in principle thought that an extra fee of £400 - £600 was too high in 2007, so it seems somewhat unlikely that five to ten times that fee will find much favour in 2013.

Amendment - Changing a Patent Application After Filing

Patent applications are generally amended to overcome an objection raised by the Patent Office Examiner. The objection may be that the claimed invention is not novel, perhaps due to some prior art which was not known about at the time of filing, but which surfaced during the official search. The Examiner may also argue that the claimed invention is not sufficiently inventive because prior art is found which, whilst not actually anticipating the invention, point the skilled person towards it.

Where a valid novelty or inventive step objection is raised, it can usually be overcome by amending the claim. The amendment will alter the claim to exclude those things which are not new, or not inventive, in the light of the newly-available prior art.

Combining claims

The most straightforward amendment is simply to combine one of the dependent claims in the application into the main claim. The Patent Office Examiner will usually already have indicated whether or not each individual claim is objected to so, in principle, it should be possible to say at a glance whether such an amendment will overcome the objection. That said, examiners are permitted to change their mind.

One of the advantages of including plenty of dependent claims at the time of application is that it can reduce the cost of prosecution, by providing the opportunity to make these very simple amendments to overcome any objections.

Other amendments

Whilst simply combining two claims is quick and cost-effective, sometimes it is not the best way to obtain the greatest possible level of protection. After all, the prior art which is causing a problem was probably not known to the attorney who drafted the application, and so none of the dependent claims may be suitable for overcoming the prior art whilst retaining a reasonably broad claim.

It is possible to lift description from other parts of the specification into the claim. This can be particularly useful when the prior art is really very different from the invention, but technically reads on to the wording of the claim. By clarifying what the claim actually means, which should be possible if plenty of supporting description has been provided, it should be possible to come up with something which is novel over the prior art, without significantly giving up ground.

It can be possible to add things to the claims which are not specifically described, but which are clearly shown in the drawings. However, it is far preferable to closely follow wording present in the application as filed, where possible.

No added subject matter

Adding technical subject matter to an application after filing is strictly prohibited. Any amendment which adds matter will lead to further objections from the Patent Office.

Matter is said to be added when the amended patent application teaches the skilled person something which he would not have learned by reading the specification as filed. The rule is strict, and even a minute detail cannot be introduced into the specification if there was no basis for it on filing.

Perhaps counter-intuitively, subject matter can sometimes be added to an application by deleting words, if the resulting disclosure covers a broader range of things than were originally described. For example, if the application as filed describes "a wheel with six spokes", then deleting the word "six" will add matter, because suddenly the description discloses a much wider range of wheels than it did before. This is not allowed.

There is no outright ban on broadening the scope of a claim before a patent is granted. However, broadening amendments can be difficult. Where a patent application as filed points to a particular feature as being essential to the invention and gives that feature a great deal of inventive significance, then a skilled person is arguably taught something new when he is told that the particular feature does not have to be included after all.

Amendment after grant

Amendment after grant is also possible, and can be used to preserve the validity of a patent where further prior art comes to light. Post-grant amendment is however subject to the additional restriction that the scope of protection cannot be extended. In other words, the claim cannot be broadened at all.

It is absolutely vital that narrowing amendments which add matter are not made during the application process. Even if the Examiner is prepared to allow such a claim, the resulting patent will be irretrievably invalid, because the added matter can only be removed by broadening the claim, which is impermissible.

Summary

Amendment is a normal part of the patent application procedure, and the vast majority of applications will be amended in some way before grant. Post-grant amendment is less common, but does provide the flexibility to retain a valid patent when relevant prior art comes to light later.

No amendment can add technical subject matter, and so it is vital that full disclosure, including of optional features and combinations of alternatives, is provided at the time of filing. This is one reason why patent applications should be drafted by a qualified patent attorney, who will need full details of the invention to do a thorough job.

Entitlement to a Patent

Only an entitled person may be granted a patent to an invention. In other words, the proprietor of a patent must either be the inventor, or must have somehow acquired the right to the patent from the inventor. Where a patent application is made in the name of someone who is not the inventor, it is important to identify precisely how the applicant has become entitled.

The inventor

The right to a patent begins with the inventor, or (as is often the case) with the joint inventors. But who exactly is the inventor? The Patents Act, perhaps attempting to be helpful, states that the inventor means the "actual deviser" of the invention. The "invention" in this context is the inventive concept which was offered at the start of the application process. If, as sometimes happens, the eventually granted patent is somewhat narrower in its scope than the originally purported invention, this makes no difference. An assessment of the prior art is not relevant in determining questions of inventorship.

In order to properly determine the identity of the inventor or inventors, it is first necessary to identify the inventive concept in the patent application. Once that is done, it is the originator of that inventive concept who is the inventor. Furthermore, any person who provides essential enabling disclosure, in other words, information without which the skilled person would not be able to put the invention into effect, is a joint inventor. On the other hand, a person who provides only disclosure of details which the skilled person could readily have worked out himself is not necessarily an inventor.

Where there is any doubt as to whether a person is an inventor, it may be best to name them as an inventor on the patent application, and to concentrate on ensuring that the case for the applicant's acquisition of the rights is fully made out. Since lack of entitlement is a grounds for revocation of a granted patent, resolving any possible uncertainty at the start of the process is worthwhile.

How rights pass from the inventor

The most common scenario in which somebody other than the inventor is entitled to a patent for an invention is where the inventor makes the invention in the course of his employment. In this case, the right to the patent will normally belong to the employer, as long as two criteria are met:   

the invention was made in the course of the employee's duties; and   

either the duties were such that an invention might reasonably have been expected to result or the duties were such that the employee had a special obligation to further the interests of his employer.

In practice, therefore, employers will usually own inventions which were made by employees working in any kind of research role, because inventions might reasonably be expected to result from that role (i.e. the employee's job is to invent). Employers will also own inventions made by employees who have some kind of special obligation to their employer, for example, employees who are directors of their employing company.

Note that any term in a contract of employment which purports to make the situation any less favourable to an employee (for example, a clause giving the employer the right to inventions not made in the course of the employee's duties) is unenforceable.

The term "employee" can sometimes be a source of doubt. It does not necessarily mean that the person has to be an employee for the purposes of tax and national insurance, for example. The Court of Appeal has set out three conditions which have to be met to determine that a 'servant' was an employee:   

the servant agreed that, in consideration of some payment, he would provide his own work and skill in the performance of some service to his master;   

he agreed that he would subject himself to his master's control in the performance of that service; and   

the provisions of the contract were consistent with it being a contract of service.

The implication of this rule is that a self-employed contractor who is engaged to carry out research and development may be an employee for the purposes of The Patents Act if he must provide his own work (he cannot sub-contract to somebody else), and he must do the work in a way which is to some degree dictated by the employer.

Often, a director and 100% shareholder of a company may not technically be an employee. However, the argument may be an academic one, since such a person would likely hold rights on trust for the company.Rights may also pass from an inventor to an applicant by assignment, that is, by a contract which simply sells (or gives away) the right to a patent.

Putting entitlement at issueIf somebody else has applied for a patent to an invention which is rightly yours, the dispute may be referred to the Intellectual Property Office. If the IPO agree that you are entitled to the patent, then the application may be transferred into your name. Alternatively, you can ask for the original application to be refused, and file a new application in your name.

A similar procedure applies if a patent to your invention has already been granted to another person, and similar remedies are available. However, the rights must usually be disputed within two years following grant of the patent at issue.

It is best to resolve any doubt as to entitlement at the earliest possible opportunity, especially if an inexpensive and amicable resolution presents itself. Failing to do so may result in a far more costly dispute further down the line.

How a Patent Application Is Drafted

Introduction and background

A patent specification begins with a title. When drafted, the title should ideally be as broad and uninventive as possible - it should simply indicate the type of product or process to which the invention relates. For example, if the invention is a new type of engine which is powered by apple juice, then "Engine" would be a good title for the application. The title is the only part of the application which is published immediately, so the idea is to give nothing away, whilst accurately describing what the product is. "Apple juice powered engine" is a more detailed title, which risks giving away the invention earlier than necessary.

Immediately after the title, the technical field is defined. The purpose of this is to allow the Patent Office Examiner to understand what technical area the invention is in, and therefore where to focus the official search. The technical field should be something which existed prior to the invention being made - if no apple juice powered engines have been made before then there is no point in saying "This invention is in the field of apple juice powered engines". Instead, the general technical area in this case may be, for example "engines, and particularly but not exclusively engines for powering cars and other road vehicles".

The specification then goes on to describe the technical background to the invention. Again, this section should not give away the invention. The purpose is to describe problems with the prior art which the invention is aiming to solve. The idea is to put the invention in context, helping the reader to understand what has actually been contributed to the art, and why it is such a good idea. Sometimes, previous patent applications or other publications are referred to.Statements of invention

The specification goes on to state in clear terms what the invention is. These statements should correspond to the claims (see later). Sometimes, the statement of invention will simply be words to the effect that "The invention is an apple juice powered engine as claimed in claim 1". However, we usually prefer to restate the claim in full, because it makes the specification easier to read and understand without having to constantly refer to other pages.

Suppose we have discovered that lining the cylinders of our engines with a particular substance allows the engine to burn the sugars in the apple juice. Without the lining, the engine can't run on apple juice, so the lining is essential to our invention - it's what makes it work. We might say something like "According to the invention, there is provided an internal combustion engine for a road vehicle having a combustion chamber lined with frobyl tetraplasm".

The specification should then explain the advantages of the invention, relating it back to the problems with the prior art which were set out earlier. A good way to think about this part of the application is that it is a "sales pitch" for the invention - but it must be a sales pitch with a solid technical basis. Optional features are described, again explaining the advantages of each one.

Detailed description

This part of the specification should describe at least one working embodiment of the invention in detail. Usually, this is done with reference to drawings. The purpose of this section is to satisfy the legal requirement that "enabling disclosure" must be provided, to allow a skilled person to make the invention. For example, if frobyl tetraplasm is not a well-known substance, then we need to tell the skilled person how to make it or where to find it. We need to tell them how to coat the inside of the combustion chamber with the substance, giving enough detail that they can achieve the desired result without undue recourse to trial and error.

It is not necessary to detail every single possible way of putting the invention into effect - it is the job of the claims and statements to define the essential and optional features. However, the detailed description should provide support to the claims across their full breadth. Therefore, if we have claimed "an engine for a road vehicle... ", then we must ensure that enabling disclosure is provided for lorry engines as well as car engines. If the engine requires particular features when it is above a certain size, then we need to tell the skilled person about those features.

The addressee of a patent application is a person skilled in the art. The skilled person does not need to be told what is already what is already within his general knowledge, and what he can readily look up. However, a patent application is written for something which is believed to be new, and the skilled person cannot be expected to have to make the invention again for himself! Anything in the claim which would surprise the skilled person (for example, the fact that an engine can be made to run on apple juice) should be described in great detail, to allow him to get the thing to work. Less surprising features (for example, that an engine may have a combustion chamber in the form of a cylinder, and a piston which slides within the cylinder) may only need brief treatment, since we could reasonably expect the skilled person to know how to make an internal combustion engine, and that one design involves a cylinder and a piston.

Claims

The claims are the legal definitions of the protection which is sought. They are the most important part of the application document. Although they come at the end of the specification, most attorneys prefer to draft the claims first.

The statements of invention (see above) will mirror the claims, and expand on them, perhaps clarifying certain terms and putting them into context. The claims should ultimately be interpreted in the light of the whole description, but that does not provide a 'get-out' for careless drafting. The claims should be clear in their own right as far as is possible, and define something which is new, inventive, and fully supported by the disclosure. On the other hand, the claims must be broad enough to provide commercially useful protection - there is no point in having a patent which can be circumvented by changing an immaterial detail.

Usually, claim 1 will define the essential features of the invention. Subsequent claims will include all the features of claim 1 by reference, and each 'dependent' claim will then define one or more additional, optional features. Claim 1 is most important, but the subsequent claims should be carefully drafted as well, since they provide important back-up positions, as well as helping the Examiner to provide a useful search report. Each claimed feature, including the optional features, should have at least one arguable advantage, which should be explained in the body of the specification.

In the UK, and in many other countries, claims do not have to be provided on filing - they can be added up to twelve months later. However, we never recommend this strategy, since it involves filing an application without fully thinking out how the invention is defined. There is a serious risk in this case that insufficient basis will have been provided to support a good claim.

Abstract

A patent application ends with an abstract. This is really the least important part of the document for the applicant, since it has no impact on the legal scope of the eventual patent.

The purpose of the abstract is to provide technical information, and to ensure that the application, when published, can be found when relevant matter is being searched for.

The abstract begins with a title. This may be different from the title of the specification as a whole, and is often narrower. In our example, "Apple juice powered engine" was a poor title for the specification, but is actually a very good title for the abstract, since it succinctly describes the disclosed invention. The abstract then continues by describing the invention concisely, with reference to one selected drawing. It should include a description of how the invention is used.

The most important thing when it comes to the abstract is to check that nothing is disclosed in the abstract which is not found in the remainder of the application. The reason for this is that material from the abstract cannot be used as the basis for an amendment later in proceedings.

Summary

The text of a patent application has two legal roles:

· to define the protection which is sought; and· to provide enabling disclosure of the invention.

It is not strictly necessary to go further than that. However, a good specification should tell a story - by the time the Patent Office Examiner has finished reading, he or she should be in no doubt that what is being claimed is the most inventive thing this century! In addition, the specification as filed should provide enough flexibility to take account of prior art which may not be known at the time of drafting, but which is found during the official patent office search. Amendment of a patent application can never add technical subject matter, so what is present at the time of fling is absolutely critical to the success of the application.

UK Patent = 17% Tax Saving, But Any Other Benefits?

We are all now well aware of the company tax savings afforded to UK incorporated companies using the Patent Box scheme introduced early 2013 by the UK Government. This will provide up to a 17% company tax saving on income received on patented product. As a further benefit, the tax saving can be applied to income received from overseas sales on that UK patented product. And it gets better: any part of the product that is UK patented, or process used to produce it, can be used to apply for the very beneficial tax relief on the whole item.

So, all of this is very beneficial for UK registered companies, but are there any additional benefits? Well, an obvious benefit is potentially being able to accelerate a counterpart overseas patent application. Okay, so let me clarify this for you. In order to apply for the Patent Box tax relief scheme mentioned above, the British patent application must first be granted. Usually, in the UK, a patent application can take up to four and a half years to grant. Obviously, this is too long if you want to be claiming your tax relief annually. Therefore, when you file your British patent application, we should accelerate the prosecution by combining the search and examination steps along with accelerating publication. By doing this, grant can be achieved in the UK in around 8 months or less. Ideal for the tax relief Patent Box scheme.

Your overseas patent applications are typically filed around the first anniversary of your British patent application and back dated. It therefore now becomes convenient to utilise another process, implemented between patent offices in various territories on a reciprocal basis. This process is called the Patent Prosecution Highway, also known as PPH.

The USA is a huge market for most companies in the UK and Europe. However, there is no simple acceleration request for quickly and, importantly, more cost-effectively, obtaining grant of a US patent. However, if you have received a positive confirmation of patentability of your UK patent application, in other words a positive examination report or better still grant of your UK patent, then the Patent Prosecution Highway scheme can be used to fast track the examination of the counterpart US patent application.

As a further benefit, there is no official fee for the Patent Prosecution Highway. Although there is some preparatory work required in the request, the downstream cost savings, particularly in high cost territories, such as the USA, Japan and Korea, for the latter two being predominantly translation costs, could very well be significant.

In summary, if you are accelerating the examination procedure of your UK patent application in order to obtain grant quickly to thereby make use of the available UK company tax savings, then consider using the Patent Prosecution Highway if subsequently filing overseas, and particularly in the USA. This beneficial scheme could reduce these typically substantial overseas examination costs, but is only applicable if your UK patent is granted or has an acknowledged patentable aspect.

The Dangers of Cheap Patents

We are often asked by clients whether a 'quick' or rough patent application can be submitted in order to achieve a lower cost for patent pending status than undertaking a 'full' or complete patent.

Just to clarify, a quick or rough patent application is also sometimes called a Provisional patent application, and may be a brief summary of your invention. A full or Non-Provisional patent application usually comprises the following sections: description, claims, abstract and drawings. In the UK, the claims and abstract, and even the drawings can all be submitted within 12 months after the original description. Similar provisions apply in other territories also, such as the USA. As such, patent application pending status can be achieved with simply a rough description of your invention via this so-called 'provisional' application route.

One of the key dangers with using the provisional route is the possibility of adding new subject matter when the provisional application is turned into a full or complete patent application. If the process is to continue, this 'conversion' or completion stage must take place sometime within the first 12 months after the filing of your original provisional patent application. The completion stage involves adding the claims, abstract and, if necessary, drawings. It may also involve fleshing out the description with more detailed material, examples and options for your invention.

Users of this 'provisional' application method may save some initial upfront patenting costs, but are rarely aware of the potentially significant pitfalls and issues with using this route.

However, the addition of the claims, abstract, drawings and perhaps even modification of the description about your invention all provide the potential to include matter or material which was not explicitly disclosed in the originally filed provisional patent application.

And how does that affect me? Well, you can imagine the scenario: your provisional application is submitted, and you have patent pending status. You start talking about your idea to friends, colleagues, manufacturers and potential investors, safe in the knowledge that you have 'patent applied for' status. The response is good and the time comes to convert your provisional application and to turn it into a full or non-provisional patent application. The invention is fleshed out in the description, claims and abstract are added, and the figures are redrawn to show the latest incarnation of your invention. The full patent specification is submitted and during examination inventiveness issues are perhaps raised by the patent examiner. So what, you may ask? Well, a non-provisional or full patent application can only be back dated to the provisional application for the material that was originally in the provisional application. The earlier date of your provisional patent application cannot be claimed or linked to for any new material put into the non-provisional or full patent application.

The only way to overcome these issues may be to use the new material added in at the time of submitting the full application, because the provisional application was too brief and not fully thought through during preparation. However, you already disclosed the idea to those friends, colleagues, manufactures and potential investors. You are now in a Catch 22! If you use the new material included in your full patent application to overcome the patent examiner's objections, the patent will grant but will be invalid because of your prior disclosure and because you cannot back date that new material to the earlier filing date of your provisional application. If you do not use the new material in order to try and maintain the link back to your first filed provisional application, then the patent examiner's objections cannot be overcome and the patent application is refused.

The advice given to all our clients is therefore to have a complete or non-provisional patent specification prepared at the outset. Yes, it will be somewhat more expensive at the outset, but if you are serious about obtaining good quality and robust legal protection for your invention, then it is an initial investment that will not only save you money in the longer term, but also save you many, and potentially patent threatening, problems downstream.

This is the danger. It all comes down to the potential lack of information in your provisional application, the public disclosure of your invention following the filing of the provisional application, and then the possible inclusion of new matter or material when preparing the complete or full patent specification later on.

Hire a Patent Attorney to Secure Your Innovative Invention and Profit From It

When the US Constitution was being drafted by the leading lights of the day, many of whom were legal eagles, they realised early on the critical need of safeguarding the interests of the individuals who invented pioneering products. Consequently, they made provisions for ratifying patent legislations that would not only encourage inventors to conceive innovative products and come up with ground-breaking ideas but secure their right to capitalise from their inventions. So, if you have created a new product or hit upon a scintillating idea and are very confident about your invention's commercial viability, then you should apply for patenting the same. However, the entire process of applying for a patent is not only complex and circuitous but is expensive as well. Therefore, to be on the safe side, you should get in touch with a patent attorney who'll help you out with obtaining a patent by adopting the appropriate legal steps.

The Patent Attorney Is a Specialist in Patenting Laws

The patent attorney always recommends that you must acquire a patent for your creation or invention. Though you can always file a patent application on your own, you'd be better off seeking legal counsel for the same from a patent lawyer or attorney who well versed on patenting laws. The patent attorney is the opposite legal professional who will not only offer you valuable legal advice but also help you fulfil all the legal formalities for obtaining the patent.

The patent prosecution procedure entails filling up an application form where you give an exhaustive description of your invention and then submitting the same at designated patent bureaus. You might also be called upon by the Patent Inspector or Examiner to furnish any extra information that he may deem fit in order to process your application. The procedure will also review whether anybody else in the past had applied for a patent for an invention analogous or comparable to yours and will scrutinise all publications and reports for the same purpose. The patent attorney as your legal representative, will effectively argue on your behalf if the Patent Office turns down your application.

The Patent Application Procedure

The patent attorney is a consummate and seasoned legal practitioner who'll provide able representation in all matters connected to your patent application starting from scrupulously reviewing your draft to submitting the same at the Patent Office. He'll also help you out when it comes to making the ultimate appeal. The patent lawyer will invariably recommend you to be absolutely in the clear about three aspects which are:-   

Your invention is innovative and unique and nobody else has created anything similar in the past   

Your invention will ultimately benefit all and sundry and is commercially feasibleThe patent laws in US clearly stipulate that you should submit an application (in the patent office) within the same year you invented the product. The patent attorney is quite helpful to answer any worries you have.

Introduction to Patents

What is a Patent?

A patent refers to a bundle of legal rights that allows a patent owner to exclude others from practicing an invention. Those rights include the right to exclude others from making, selling, offering to sell, and importing an invention.

In a looser sense, a patent also refers to the paper document that represents the bundle of legal rights owned by the patentee over an invention. This document is broadly divided into two sections-1) the specification and 2) the claims. The specification provides a technical description of the invention and is divided into sections, the most important of which is the detailed description. The claims, on the other hand, are the paragraphs found at the end of the patent document that encapsulate the patent owner's intellectual property rights over the invention.

Once you understand how your invention works and can describe it in writing, you should file for a patent as soon as possible. This is so because the person who is the first to file a patent application has priority over anyone else. The Patent Office, however, will not accept your application if it merely describes an idea for an invention. Instead, you must make sure that your application describes your invention in sufficient detail. Otherwise, the Patent Office will reject your application and you will not be eligible for a patent.

How Long Does It Take to Get a Patent?

The average amount of time it takes for a patent application to be reviewed by the Patent is a little less than three years. There is, however, a wide disparity in this amount of time depending on the area of technology to which your application belongs. For example, applications covering inventions related to semiconductors will take on average 29.3 months whereas inventions related to networking and telecommunications will take on average 40 months.

How Does the Patent Office Determine Whether a Patent Should Be Granted?

In order for the Patent Office to grant a patent, the patent applicant must meet several legal issues - 1) that the invention is novel; 2) that the invention is nonobvious; 3) that the invention meets the minimum requirements for patent eligible subject matter; 4) that the patent application describes the invention in sufficient detail.

What Is Patent Infringement?

In order to determine whether a patent is infringed, courts follow a two-step process. First, the claims found at the end of the patent must be interpreted in order to determine what the invention covers. Courts then compare the claims, as construed, to the invention in order to determine if there is a sufficient difference. If there is no such difference, then the accused defendant infringes.

Protect Your Inventions With A Patent

More and more, our modern world is becoming affected by creators, innovators, and game changers who are looking at the universe around us through a unique lens and creating some of the most interesting and exciting products and services humanity has ever seen.

However, at the exact same time, fewer and fewer people are taking advantage of the full weight of the US government when it comes to protecting patent applications and patents that have been applied to intellectual properties - simply because they don't understand all of the nuances of the rules and regulations the way that a qualified patent attorney does.

This has led to a number of serious knock down and drag out litigations going on all over the US - and the world really (anyone remember the Samsung and Apple battle just a few months ago?). The last thing that you're going to want to do is create something that has the potential to change the world as we know it, only to find that some other company - armed with a fleet of lawyers and not being burdened by affects - steal your creation for one reason or another.

No, you're going to want to investigate the different patent application rules and regulations alongside of the very best intellectual property law firm you can afford - working with a high-level patent attorney to get the kinds of results and protection you deserve.

The best patent attorney you can find will help you to secure your rights (in the present and the future) that you are entitled by law

Understanding the US legal code almost requires one to be a little bit crazy (as well as dedicating their time fully to this endeavor). One of the most complex and convoluted systems found anywhere in the world, the truth of the matter is that you'll be glad you've hired the right patent attorney to help you navigate this often rocky road.

More than equipped to assist you in getting the exact protection you're looking for, the right to intellectual property law firm will assist every single step of the way to make sure that you are set up and secure in your rights right now, as well as for years and years in the future.

The best intellectual property law firm will not only assist you in securing your rights and protect you from attacks or theft, but they'll also have the insider connections you need to make your dream - and creation - the kind of game changer that you've been hoping forWhile most people think of a patent attorney as no more than the person who helps you file all the necessary paperwork and covers your legal backend, the truth of the matter is that these professional experts have established relationships with influential and connected people all over the world, the kinds of people that can assist you in your journey of bringing your dreams to fruition.

Work closely with your patent attorney for all of the necessary steps to file and confirm your patent application, but lean on the resources that your intellectual property law firm has to make sure that you are poised to take the next ones.

Sample of How to Respond to a 35 USC 112, Second Paragraph Rejection

Below are two samples of how I typically respond to 112, second paragraph rejections.

1) On page 2 of the Office Action dated April 19, 2013, claims 1 and 2 are rejected under 35 U.S.C § 112, second paragraph. To expedite prosecution and without conceding to the Examiner's rejections, Applicant has amended claims 1 and 2 to recite proper antecedent basis. Accordingly, the claims distinctly claim the subject matter which the applicant regards as the invention, and withdrawal of this rejection is respectfully requested.

2) On page 2 of the Office Action dated April 19, 2013, claims 1 and 2 are rejected under 35 U.S.C § 112, second paragraph. Applicant has amended claims 1 and 2 in accordance with the Examiner's comments. Accordingly, the claims distinctly claim the subject matter which the applicant regards as the invention, and withdrawal of this rejection is respectfully requested.

In patent claims there are two separate requirements for claims under 35 U.S.C 112. The second requirement being that claims must particularly point out and distinctly define the metes and bounds of the subject matter that will be protected against the patent. Essentially, this means that claims must clearly define the subject matter of the claims.35 U.S.C. 112, second paragraph rejections may be issued for various reasons such as the claims are not precise, clear, correct, ambiguous, have grammatical errors, the claims contradict themselves and/or the specification, antecedent basis, etc.

A typical 35 USC, 112, second paragraph rejection will be on the first or second page of the "DETAILED ACTION" portion of an office action, and will state something along the lines of "Claims 1, 2,... are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention."In the office action, the examiner may further clarify what is wrong with the claims, such as "Claim 1 recites the limitation 'THE CAR' in line 1. There is insufficient antecedent basis for this limitation in the claim. What is meant by antecedent basis is that the first time you introduce an element in a claim, the element should be "A CAR" and then when subsequently referring to this element in the claim it should be "THE CAR." Antecedent basis is a good way for examiners and applicants to keep track of when elements are first brought up in the claims, and what limitations are attached to what elements.

Another common 112, second paragraph error is when a claim includes two of the same elements that have the same name. For example, if your claims have two widgets doing certain actions, you have to specifically label each of the widgets. A simple way to do this is to claim "a first widget configured to... " and "a second widget configured to... " Then, in subsequent limitations include the identifier of, "wherein THE FIRST WIDGET is further configured too... " Thus, by labeling each element with a different number, applicants can easily refer back to specific elements of the claims.