Patents

Patent Applications

If you have invented something novel and useful, prompt filing of a patent application, in advance of pursuing patent licensing or marketing, is critical to preventing your competitors from utilizing your ideas. In the United States, you have one year from the date of your first public disclosure (which can be as simple as a conversation under non-confidential circumstances) to file a patent application. In most foreign countries, you lose the right to file a patent application in that country if you do not have a patent application on file somewhere in the world by the date of your first public disclosure, or if you fail to meet certain international patent application filing deadlines after filing your initial patent application.

Protecting your intellectual property is critical to the success of your business. When your competitors utilize your inventions, they utilize the benefit of the time, energy, and resources that you spent in developing your innovations, without having to undertake these significant expenses themselves. Patent protection therefore becomes critical to maintaining your competitive advantage.

Patent Search

Typically, prior to preparing a patent application, a patentability search should be performed to identify prior art. The prior art can then be compared with your invention to determine which aspects of your invention are patentable. This analysis enables a determination of the scope of the claims (the portion of a patent application that determines the scope and limitation of your exclusive right) that are likely to be allowed by the US Patent and Trademark Office. If these claims are sufficiently broad to provide meaningful protection against attempts to design around them, then a patent application should be filed.

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Patent Application Preparation

Preparation of the patent application involves describing the invention in great detail, taking into account not only your preferred configuration, but also the changes that a competitor is likely to make when attempting to design around your claims. Identification of these possible changes to your invention is critical to maximizing the scope of protection provided by your patent. My extensive engineering education ensures that these changes will be properly identified and accounted for as your patent application is prepared.

Types of Patent Applications

Provisional Patent Applications

Provisional patent applications are not examined. They serve only to preserve your filing date for one year. In order to preserve this filing date, a utility patent application claiming the benefit of the provisional application must be filed within one year of the provisional application's filing date.

Provisional patent applications are particularly useful to provide patent pending status while continuing to develop an invention. If public disclosure of the invention is imminent, provisional applications provide a way to obtain a filing date in advance of the public disclosure.

Even though provisional applications are not examined, care must be exercised in their preparation. In order to provide genuine preservation of your filing date, the details disclosed in your provisional application must be sufficient to support the claims which are ultimately included within your utility patent application.

Utility Patent Applications

Utility patent applications are the most common type of patent application. Utility patent applications seek to protect the structural features, and resulting functionality, of your invention. A utility patent application consists of a very thorough description of your invention, including all possible variations. Professionally prepared drawings illustrate the details of your invention. Legal arguments explaining your entitlement to a patent are intermixed within the description. Claims, which carefully define the scope and limitations of the exclusive right you seek, are included within the application. These claims are carefully drafted to encompass any changes a potential infringer might make to your invention, without encompassing the prior art.

Design Patent Applications

Design patent applications seek to protect the ornamental appearance of your invention. They do not protect the functional aspects of your invention. Instead, they provide protection against customer confusion by devices having an appearance that is confusingly similar to that of your invention. The scope of protection is very similar to trade dress protection.

My Experience

I have extensive experience preparing and prosecuting patent applications for a broad range of technologies, including:

  • Computer data storage
  • Night vision devices
  • Nuclear reactor protection systems
  • Computer software
  • Electrical circuits
  • Optical discs
  • Circuit breakers
  • Combustion turbines
  • Nondestructive inspection equipment
  • Railroad maintenance equipment
  • Power wheelchairs
  • Medical devices
  • Pharmaceutical dispensers
  • Automotive engines
  • Fiber optics
  • Batteries
  • Manufacturing processes
  • Mining industry
  • Recreational equipment

Please do not hesitate to contact me with your patent prosecution questions and needs.

Frequently Asked Questions

When you develop a new innovation that you believe may be commercially valuable, you should consult with a patent attorney as soon as you have reduced the idea to an enabled, workable form. You should keep your idea confidential during its development and until a patent application is filed, both to protect your idea from theft, and to prevent your own disclosure of the idea from precluding you from obtaining a patent. In the United States, you have one year from the date of any public disclosure (your invention becoming known, used, sold, offered for sale, or imported) to file a patent application in at least one country. In most other countries, if you have not filed a patent application in at least one country by the date of your public disclosure, you lose the right to file an application in that country. By filing a patent application in advance of any disclosures of your invention, you protect your worldwide rights to that invention.

After determining that your idea includes subject matter that is appropriate for patent protection, a patentability search is recommended. The references found in the search can then be compared with your idea to determine the scope of patent protection that is likely to be available.

No. However, if you do have a model, it may be helpful.

The length of time varies considerably. Given the current backlog at the Patent Office, you can generally expect to wait 2-3 years from the time the application is filed.

Your initial foreign filing must be accomplished within 12 months of any prior US patent application for which you would like to claim the benefit of the filing date. If you have publicly disclosed your invention, you must be able to claim the benefit of an application having a filing date prior to your date of disclosure. In most countries, the initial filing is accomplished with a single international application filed under the Patent Cooperation Treaty. This application serves primarily to preserve your filing rights in countries that have signed this treaty, but also provides a preliminary examination that can be used to address any issues related to patentability prior to filing in individual countries. If you wish to obtain protection in countries that have not signed the Patent Cooperation Treaty, such as Taiwan, you must file applications directly with the patent offices of these countries, usually 12 months from your US filing date. After filing a Patent Cooperation Treaty application, national applications in individual countries where you would like to seek protection must generally be filed 30 months after your original US filing date in order to get the benefit of this date. Applications in the European Patent Office can be filed up to 31 months after your original US filing date. Foreign patent protection is very expensive. For most individuals, small businesses, and medium size businesses, Limited resources are better spent commercializing the invention unless specific reasons exist to obtain protection in a specific country.

Before disclosing your idea to others, you should have either a provisional patent application filed, or a confidentiality agreement in place. Having both is better. A provisional application is not examined, but preserves your filing date for one year, providing time to further develop the invention, obtain funding, etc. I can evaluate your specific situation to determine your best course of action.

The scope of patent eligibility for software has been the subject of numerous court decisions. In general, algorithms are not protectable. However, inventions which are directed towards improving the functioning of a computer, or to an improvement to any other technology or technical field are patentable. Additionally, inventions which add significantly more than an algorithm are patentable. Inventions which include elements which are not well understood, not routine, and not conventional can be found to be significantly more than an algorithm, and therefore patentable. Your software should be evaluated for patent eligibility, and if appropriate, a patent search should be performed and a patent application filed as soon as your software is developed to the point that one skilled in the art can be taught to make and use the software. Regardless of whether patent protection is appropriate, copyright registration should be sought after completion and before sale or distribution of the software.

Initially, I will need to compare your claims to the allegedly infringing device to determine whether your patent is being infringed. I can begin by sending a cease and desist letter, explaining and demonstrating your patent rights, and demanding that they stop infringing the patent. Often, this is enough to persuade the other party to stop and/or to enter a license agreement. If not, then we can file suit against the infringing party, seeking monetary damages and an injunction. Once they have been notified of the existence of the patent and a claim of infringement, they must take reasonable steps to determine whether or not they are actually infringing, or they risk a finding of willful infringement. This can result in enhanced damages as well as attorney fees.

You should promptly take action. The merits of the claim of infringement must be promptly investigated. The patent itself as well as its prosecution history at the US Patent and Trademark Office must be reviewed and considered. The claims must be compared with the accused product or process. If the claim is meritless, which they often are, then we can so inform the accuser, and you can continue your activities in relative safety (although that is no guarantee that you will not be sued). If the claim has merit, then steps can be taken to mitigate or avoid liability by stopping infringement, or negotiating a license agreement.

A patent is not a grant of a right to practice an invention. Rather, it conveys the right to exclude others from practicing the invention. It is quite possible to receive a patent for an invention that, if practiced, would infringe another patent. For example, if inventor A holds a patent claiming a black and white television, and inventor B holds a patent claiming a color television, inventor B may not be able to make his invention without infringing the patent of inventor A. It may be possible to resolve the issue through licensing arrangements.

A patent provides protection against any use of the claimed subject matter, regardless of how the subject matter is obtained, for a limited period of time. A trade secret provides protection against the use of wrongfully obtained secrets for as long as the trade secret remains a trade secret. A trade secret only protects against wrongful taking of the secret, and does not protect against independent discovery of the secret.

You should consider trade secret protection if:

  • You are willing to accept the risk that your competitors may independently discover your innovations
  • Your innovations are not easily subject to reverse engineering
  • You wish to keep your innovations secret for a time period longer than the period of enforceability of a patent
  • Your innovations have independent value derived from the fact that they are secret
  • You are willing to take steps to identify trade secrets and to protect the secrecy of these secrets
  • The best form of protection for each innovation should be determined on a case-by-case basis. Please call me to discuss your specific situation.

You should consider patent protection if:

  • You need the strongest possible protection for your innovations, including protection from the possibility of independent discovery of your innovations by your competitors
  • Your innovations are potentially subject to reverse engineering
  • The limited duration of a patent (20 years from the filing date, subject to certain extensions of patent term) is acceptable.

I do not recommend doing so. Your intellectual property is a critical asset that needs the best possible protection. Protecting your intellectual property is not only necessary to prevent theft by competitors, but also to attract the investors that may be necessary for commercialization of your invention. This protection can best be achieved by an experienced intellectual property lawyer. A patent application not only includes a highly detailed description of your invention, but must also be drafted to take into account changes that a competitor may make to your invention. The claims of the application - which define the scope and limitation of the exclusive right that you seek - must be carefully drafted, a task which requires years of experience to ensure that it is done well. The rules for issuing and overcoming obviousness rejections are complex and changing. The proper foundation for responding to such rejections must be laid during initial drafting of the application by a patent attorney who is familiar with the process. Once a patent application is filed, no new matter can be added to the application. If mistakes are made, they can be very difficult to correct. Many inventors file self-prepared provisional patent applications. Provisional patent applications are not examined, but preserve their filing date for one year. A utility patent application claiming the benefit of the provisional patent application must be filed within that year in order to preserve the filing date. However, actual entitlement to the filing date will depend on the extent to which the claims in the utility patent application are supported by the provisional patent application. Any claim containing even a single detail that is not supported by the provisional patent application will not be entitled to the provisional patent application’s filing date. In such a case, any public disclosure of the invention more than one year from the utility patent application’s filing date will result in invalid claims and potentially an invalid patent. Doing a job properly the first time is always easier and less costly than trying to repair mistakes later, and also ensures that rights will not be lost as a result of mistakes or omissions. Please contact me to discuss your needs before taking action yourself.

These document preparation services claim to provide services at lower cost than a typical law firm. However, read the description of what you actually get carefully – the total cost estimate may be lower, but you might not get much for the amount you spend. A patent application is a lengthy, complex document that must be carefully drafted in order to ensure the broadest possible protection for your invention. For more information, read the opinion of the Pennsylvania Bar Association’s Unauthorized Practice of Law Committee here. Consider the value of the intellectual property you wish to protect before deciding who to retain to protect these valuable assets.

There is no shortage of unscrupulous companies looking to take advantage of the enthusiasm of new inventors. Based on the experiences of clients who approached or used such companies before retaining me, proceed with caution and investigate any such company thoroughly before retaining them. For more information, see the Federal Trade Commission’s web page on invention promotion firms, as well as the related page on the US Patent and Trademark Office website. Search both sites for complaints about any specific companies you may wish to consider. Before doing your search, check with the Department of State in the state where the company is located to determine whether the name is a fictitious name for another company, and perform your search using both names. Additional information can often be found simply by performing an Internet search for the name of the company you are considering.

The answer is "it depends." Taking on an investor is often a necessary and helpful step in the growth of a business. It is also a risky step, and taking on the wrong investor and/or taking on an investor the wrong way can be disastrous. Taking on an investor is essentially taking on a partner. You should only take on partners who share your goals, values, and ethics, and who are actually as capable, dependable, and trustworthy as they represent themselves to be. On the one hand, the investor is going to want something of value in return for his investment. It is also possible that the investor brings business savvy which, combined with your technical knowledge of the invention, can help both of you succeed. If you are willing to respect each other's knowledge and work together accordingly, this can be very beneficial. On the other hand, it is possible that the investor has different goals and/or ethics than you, and you want to make sure that, if whatever deal you make falls apart, you leave with your intellectual property intact and in your possession. If the investor is willing to agree to it, I encourage maintaining ownership of the intellectual property yourself or in another company that you own entirely, and giving the business entity that is taking on an investor an exclusive license to use the intellectual property, with the license terminating upon the failure to meet significant obligations to you (for example, your being pushed out of the company by your investors). You also need to be careful about how, and how much, equity in the company you give up. Depending on the specific business form you use, it may be possible to separate ownership equity from decision making authority in a mutually agreeable way. The value of your business will start out low. As you progress towards bringing the invention to market, your business will hit certain milestones that will increase your value. If you try to get all the funds you need at once, you will need to give up too much equity in the business. Instead, try to get enough funds to hit the next milestone, and then seek additional funds based on a now increased company value. This will permit you to give up less equity to ultimately gain the same amount of investor funds. You will need to be very careful with your disclosures to your investors, so that you are not open to being sued for misrepresentation if things do not go as planned. As with any business agreement, your agreement with any partners should specify everyone’s responsibilities as well as what happens if those responsibilities are not met. The agreement should also provide a fair way out in case exiting the partnership becomes necessary.

I encourage my clients to use “crowdfunding” websites to commercialize appropriate inventions. Please understand that crowdfunding has a broad, commonly understood definition, as well as a narrower definition. The broad definition includes websites where product pre-orders and other “rewards” are provided in exchange for funds, while the narrow definition refers to the exchange of equity for funds, and is regulated by the Securities and Exchange Commission. I refer here to the broad definition, not the narrow definition. Crowdfunding provides the advantage of simultaneously test-marketing while raising funds, while retaining 100% equity in your business. This avoids the many complications that can arise when equity in your business is surrendered. A good crowdfunding campaign will require a good working prototype of your invention, a good video showing how the invention works and its advantages, and a good explanation of why people should want the invention. Traffic should be driven to the campaign through social media and other advertising. Crowdfunding is an important aspect of commercializing your invention, but it is not the only aspect. You should begin any commercialization effort by preparing a business plan specifying the necessary steps and how each will be accomplished.