II. Patent Basics
Table of Contents
- What is the legal authority behind patents?
- What government agency is in charge of administering patents?
- What are advantages to owning a patent?
- Will I need a patent attorney or agent for the application process?
- What’s the difference between a patent attorney and agent?
- How does the USPTO evaluate a patent attorney?
- Is there paperwork that an attorney may ask me to sign for his/her
- What should I contemplate before filing out a patent application?
- How should I determine whether I should get a patent?
- Is it commercializable?
- Did I invent it?
- Do I own it?
- Is it useful?
- Does it fit into a patent “class”?
- processes and methods
- articles of manufacturer
- compositions of matter
- Is it novel?
- Is it non-obvious?
A. What is the
legal authority behind patents?
The Constitutional basis for the federal patent and copyright systems is based on the Constitution of the United States Article 1, Section 8, clause 8 which states: “Congress shall have power . . . to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
A U.S. patent grants the inventor “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” it into the United States. It facilitates innovation by rewarding individuals for their creativity. As Abraham Lincoln once put it, “[t]he Patent System added the fuel of interest to the fire of genius.”
B. What government
agency is in charge of administering patents?
The U.S. Patent and Trademark Office (USPTO), a branch of the Department of Commerce, administers patent and trademark laws as they relate to the granting of patents for utility inventions, designs and plants, and the issuing of trademark registrations. In particular, the USPTO specifically examines applications for patents to determine if the applicants are entitled to patents and grants the patents if they are.
The USPTO also publishes issued patents; approves trademark registrations and various publications concerning patents and trademarks; records assignments of patents and trademarks; and maintains search rooms and a national network of Patent and Trademark Depository Libraries. These libraries are used by the public to study issued patents, registered trademarks, and pending applications and records that are related to both patents and trademarks. It also supplies copies of records and other papers.
C. What are
advantages to owning a patent?
Inventors are recognized annually by many organizations as being important to modern life. As previously stated a patent protects your invention and associated investment. Here are some examples of benefits:
- As the patent owner, you can preclude others from making, using or selling your invention throughout the United States.
- As an industry matures and gains more value, a key patent can also increase in value over time.
- A patent can add significant value to businesses, including start-ups, because it is considered a valuable asset by investors, venture capitalists, banks and potential purchasers of your business.
- There are many ways to monetize your patented invention. You may sell or license your patent to one or more parties for royalties, or you may choose to be the exclusive manufacturer of your invention.
D. Will I need a
patent attorney or agent for the application process?
Because the patent application process is complex, you should contact a registered patent attorney or agent for guidance. Only USPTO registered attorneys and agents may help others obtain patents. A roster of patent attorneys and agents registered to practice before the USPTO is on the USPTO web site.
1. What’s the difference
between a patent attorney and agent?
Both can prepare a patent application and conduct USPTO prosecution, but only an attorney can practice law. For example, an attorney can conduct patent litigation in the courts while an agent cannot.
2. How does the USPTO evaluate
a patent attorney?
Prior to admission to the USPTO registry, the applicant must show compliance with USPTO rules, which includes showing good moral character and possessing particular legal, scientific and technical qualifications such as a college education in engineering or the physical sciences. The applicant must also pass a rigorous exam to ensure that he/she is familiar with USPTO practices and procedures.
3. Is there paperwork that an
attorney may ask me to sign for his/her services?
When working with an attorney, he/she may ask you to sign over your power of attorney. By granting a power of attorney, the person with this power can represent or handle a patent application on your behalf. This means the person with the power of attorney has the authority to communicate with the USPTO. It does not give the person any ownership rights to your invention. This relationship can be terminated at any time when you grant the power of attorney to someone else.
Note that although the USPTO is allowed to answer questions regarding applications and can tell you whether it has rejected your application, allowed it, or it is still awaiting action, if you are represented by a patent attorney or agent of record and that is on-file with the USPTO, then the you should rely on your attorney or agent to communicate with the USPTO. The USPTO may not answer inquiries from both you and your attorney or agent.
E. What should I
contemplate before filing out a patent application?
● What do people think the invention is? What problem is addressed, and what
problem should the invention solve?
● What major component parts make up the invention? Can you eliminate, rearrange or combine these components?
● What components are new in the invention and why are they needed? Are there equivalents for these components?
● How are components interconnected? Is the interconnection novel? Are there non-obvious advantages arising from your specific arrangement or interconnection?
● What part(s) of the invention took the longest to develop and why?
● Are there other ways to perform the same function provided by the invention?
● What problems does the invention solve, and what was the most difficult part of the problem that it solved?
● What alternative solutions can be used in lieu of the invention?
● What advantages does the invention have over alternative solutions and how are these advantages achieved?
● What features are desired by customers or end users, and how can the competition provide them?
● What features are desired by the competition, and how can the competition provide them?
● What features will be copied, and how can the competition copy them without violating your patent application?
● Does the invention improve on an existing product? In what way and how do you achieve the improvements?
● What other approaches might work in solving the problem?
● What components or elements can you add? What can you remove?
● How can you simplify or rearrange the major components or elements of the invention?
● What parts can you substitute or combine?
● For key elements or components, what’s the opposite of such elements? How can you use such opposite(s) in the invention?
● Is the invention as simple as it can be? What can you eliminate?
● Can you make it easily and inexpensively? How?
F. How should I
determine whether I should get a patent?
Before investing in a patent, analyze:
1. Is it commercializable?
Look at the cost of your invention, competitors’ products, the invention’s ease of use, and consumer demand.
2. Did I invent it?
You can only obtain a patent if you personally invented something. The inventor is the initial patent rights owner.
You may also be a co-inventor to file. A co-inventor is someone who contributed to at least one novel and non-obvious concept that makes the invention patentable. This will be further discussed later.
3. Do I own it?
You must own the invention to file a patent application. This may not be the case if your employer owns the rights to the invention, i.e. you’ve given up rights to the invention prior to its creation, you were hired specifically to invent it, or your employer has certain rights to use the invention.
4. Is it useful?
A patent is only granted for useful inventions. Though most inventions are useful, the USPTO has found the following to be ineligible for patents:
- ornamental, without utility. You may want to consider a design patent application if your invention has visual ornamental characteristics embodied in or applied to an article of manufacture that is not functionally useful;
- unsafe drugs;
- nuclear weapons;
- immoral inventions;
- non-operable inventions;
- inventions only with illegal uses; and
- theoretical phenomenon.
5. Does it fit into a patent
The U.S. Supreme Court said that anything man-made falls into these “classes,” but anything natural or abstract will not. The “classes” are broad, so an invention is likely to fit into one of these categories. In fact, it might fit into a couple. Ultimately, for a patent to issue, an invention must fall into at least one of them. The following are the five “classes.”
a. processes and methods
These are steps for doing or making something. They can be steps that change something physically or even manual steps, like how you type on a keyboard. They cannot, however, consists of only mental steps.
There are primarily three categories of processes:
This is what you would traditionally consider a process, like a chemical reaction or steps to physically construct an item.
To be classified as a process or method, a software program must produce a tangible, utilitarian result, or affect some piece of hardware or another software. The federal court in In re Bilski stated software processes must transform an article into a different thing or state, or it must be related to a specific machine or apparatus.
This includes methods of conducting business, such as software to calculate financial records. It is also circumscribed by the decision in In re Bilski.
Computer software is patentable. You should review the USPTO guidelines on patenting software at http://www.uspto.gov/patents/resources/tools/index.jsp. GUI elements or icons can be protected under design patents, as well. Trademarks are also available to prevent competitors from marketing confusingly similar products. And in many countries, computer programs, whether in source or object code, are protected under copyright.
Regarding copyright, in particular, the major advantage of this type of protection lies in its simplicity.
- Copyright protection does not depend on any formalities, such as registration or the deposit of copies in the 151 countries party to the Berne Convention for the Protection of Literary and Artistic Works. This means that international copyright protection is automatic—it begins as soon as a work is created.
- A copyright owner enjoys a relatively long period of protection, which generally lasts for the life of the author plus 50 years or, in certain countries, 70 years after the author’s death. Compared with copyright protection, patent life is much shorter; it may last up to 20 years from the filing date of the application.
However, copyright protection extends only to expressions, and not to ideas, procedures, methods of operation or mathematical concepts. Although copyright protects the literal “expression” of computer programs, it does not protect the “ideas” underlying the computer program, which often have considerable commercial value.
Machines are devices or things that interact and, as a result, accomplish something. It’s related to processes but the focus here is on the actual machine, not the methods that the machine employees. Machines can include traditional notions of what is a machine, such as a sewing machine. It also covers software depending on how you write the patent application.
c. articles of
This includes what results from manufacturing or what’s made by humans. It’s an invention that accomplishes something without the interaction of moveable parts or objects with incidental moveable parts. For example, knives, erasers or books are articles of manufacture. Usually, naturally occurring things do not fit into this category but there are some exceptions, e.g. a novel, non-obvious use of a natural thing. Also, there may be some overlap between articles of manufacture, and machines or compositions of matter.
d. compositions of
Chemicals or other material combinations that are produced as a result of chemicals are compositions of matter. This includes glues, plastics and gasoline. Natural items are not considered compositions of matter but, for example, their derivative chemicals or extracts in purified form are.
Compositions of matter often overlap with articles of manufacture. However, compositions are primarily concerned with the chemical building blocks rather than the shape of the article.
Improvements are novel uses for an existing invention. Under this category, you may need a license from the original patent owner if the underlying invention is still patent protected
6. Is it novel?
Patented inventions must be different from existing knowledge or previous inventions, otherwise known as prior art. That means the new invention should be physically or operationally unique in at least one way from the date it was conceived, otherwise known as the date of invention or the date you filed a patent application. Novelty includes the invention incorporating a new feature, using an old feature in a new way, or having a new combination of old features.
a. prior art
Prior art is:
- anything in public use or sold in the United States for more than a year prior to the patent application’s filing date;
- anything publicly known or used by others in this country before the invention date;
- anything made or built in this country by another before the invention date;
- prior patents issued more than a year before the patent’s filing date or any time before the date of invention;
- prior publications dated more than a year before the patent’s filing date or any time before the date of invention; or
- U.S. patents with a filing date prior to the invention date.
This can be the date on which the:
● patent application was filed;
● inventor can prove he/she thought of the invention and makes diligent efforts to file a patent application, build or test it; or
● invention was reduced to practice, meaning the inventor built a model and tested it in the United States, a North American Free Trade Agreement (NAFTA) or World Trade Organization (WTO) member country.
In the United States, a patent application must be filed within one year after an inventor sells his/her idea, offers it for sale, or publicly or commercially describes or uses it. If the USPTO issues a patent and some of this information comes to light afterward, then the USPTO can invalidate the patent.
b. three types of differences
i. physically different
The new invention must have at least one piece of hardware that is physically different from prior art. This can be an addition or a subtraction of hardware. It may also be something less obvious than that. For example, a physical difference may be that the invention works in a different temperature range or a different mode than what was indicated by prior art. These will all satisfy the novelty criteria for patenting a new invention.
ii. new combination
Novelty may include new combinations of prior art. In other words, two previously patented inventions are prior art. But if they are combined in such a way that is not already patented, then this new combination is considered novel.
iii. new use
A patented invention’s use is described in the claims section of its patent application. If you think of a new use that isn’t discussed in the patent application, then that new use satisfies the novelty component. This new use of an already patented invention may be patentable.
7. Is it non-obvious?
This is the highest bar to patent ownership. If something is obvious, then it isn’t patentable. If it is surprising and unexpected, then it usually is non-obvious and hence, may be patentable.
Factors in determining obviousness include:
- invention has commercial success;
- invention solves a non-obvious problem;
- invention subtracts a piece of hardware that was included in the prior art;
- invention modifies the prior art in a new way;
- industry needs the invention;
- others have tried to come up with this invention but failed;
- other inventors said this invention was impossible;
- others have copied this invention; or
- others in the field have praised the invention.
Briefly, the focus for the USPTO when making a determination of obviousness is—what a person of ordinary skill in the pertinent art would have known at the time of the invention, and on what such a person would have reasonably expected to have been able to do in light of that knowledge. This is the standard regardless of whether the source of that knowledge and ability was documented prior art, general knowledge in the art or common sense.
Requirements for design patents
Design patents, as earlier noted, are different from utility patents. Design patents protect how something looks, while utility patents protect how something operates and the way it is constructed. Consequently, to obtain a design patent, the applicant must meet different requirements; the invention must still be novel and non-obvious, but it must also be original and an ornamental design of a useful item.
Here’s some information to guide your design patent application:
- Originality is not merely imitating something already constructed or naturally occurring. However, courts have defined “original” loosely.
- Design cannot be dictated by the item’s function.
- The design must be visible during intended and usual use of the item, or at important commercial times, such as when you offer to sell the item.
- The item must be man-made.
- You cannot design patent paintings, photographs, decals or silk-screened items.
- Factors in determining obvious are, for the most part, similar to those under a utility patent. Examples of non-obvious may include:
- using an unexpected medium;
- omitting a particular design element thought to be crucial; or
- creating a new juxtaposition of design elements.
Requirements for utility patents issued for plants
Sometimes plants qualify for a utility patent, which offers more protection than a plant patent but is more onerous to obtain. The plant must be novel, non-obvious and useful. Additionally, parts of the plant or the entire plant may be patented. Furthermore, Eligible man-made plants may be produced asexually or via sexually (note that plant patents can only be granted for plants produced asexually) [k: I don’t understand this previous sentence…].
III. American Invents Act (AIA)
The American Invents Act has dramatically changed how the patent system operates. Here’s a brief overview of some of the changes it entails and what it means for you.
Table of Contents
A. What does it
§ 102. Conditions for patentability; novelty
(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.— A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—
(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.
B. How will AIA change the patent application process?
AIA favors an inventor who is first to disclose versus an inventor who is first to file. Under the first-to-file system, the first applicant to file is entitled to a patent for the invention unless the invention was derived from other people. Rights to a patent are determined by inventors who filed first, not who first conceived of the invention. To preserve and safeguard your patent rights, you should, thus, consider filing a high quality provisional patent application as soon as you can.
2. best mode
Under AIA, failure to disclose the best mode of practicing the invention will not invalidate a patent. If you are only interested in U.S. patent rights, then you should disclose the invention as soon as possible to make the disclosure prior art to all potential filers. Remember with this, you still have the option of filing patent applications within the one-year grace period.
However, in certain international countries, such disclosure can act as prior art. This may bar your subsequent patent application and destroys your patent rights. Thus, if you want international protection, the best way to gain that is to file the disclosure as a provisional application or a non-provisional application if you’ve already completed your claims. After filing that, then you can make the disclosure. Next, within one year, you can file your international applications.
If you’re thinking about using non-disclosure and confidentiality agreements to show derivation by the recipient of the information, note that it is useless against third parties. Another downside is that the derivation process can be expensive. Hence, the cheapest alternative is to file provisional or utility patent applications prior to discussing the invention with anyone.
Some people assume that with an early disclosure approach, it takes significant time to prepare a patent application. However, with ProvisionalBuilder™, you can prepare high quality applications quickly and easily. And that allows a third approach—file a provisional patent application and, at the same time or slightly thereafter, publicly disclose the invention. With this approach, you get the best of both worlds; you can prepare a high-quality, provisional patent application inexpensively that’s ready for conversion into a utility patent, and you can bar others from patenting the same invention.
C. How does AIA
change when I apply for a
Under prior law, use or sale outside of the United States did not necessarily invalidate a patent. However, under AIA, if the invention is otherwise made available to the public or on sale before the effective filing date of a patent application anywhere in the world that can be used by the USPTO to reject an application. However, such disclosure isn’t applicable if it was made less than one year before filing the patent application, and the disclosure was made by the inventor or someone who derived the inventive subject matter from the inventor.
Thus, if a second patent application filer publicly disclosed the subject matter before the first inventor filed a patent application, then the second filer can use the earlier public disclosure to overcome a USPTO rejection. He/she can use his/her public disclosure as prior art against the first inventor’s patent application.
AIA promotes pre-filing disclosure because the grace period is only available for those who publicly disclose the invention before filing. When an inventor makes the first public disclosure of an invention, public disclosures and patent applications filed by others for the same invention are not considered prior art for one year after that public disclosure. Therefore, by making the first public disclosure of the invention, the first-to-disclose inventor gets:
- a one year grace period in which you can file your application without the USPTO using your own public disclosure against you, and
- the ability to block the benefits of others who are the first-to-file because your earlier public disclosure bars later application even if others were the first-to-file.
D. Is AIA good or
bad for me?
Initial findings about AIA’s effect on individual inventors aren’t so great. David Abrams and Polk Wagner, both law professors at the University of Pennsylvania, researched whether the change from a first-to-invent to a first-to-file regime is likely to disadvantage individual inventors in their paper “Priority Rules: An Empirical Exploration of First- to-Invent Versus First-to-File.” They found a significant drop in the number of patents granted to small inventors in Canada coincided with the implementation of first-to-file. The concern is that well financed and IP savvy corporations will have an easier time than an individual when quickly drafting and filing a patent application.
IV. How to Start the Utility Patent Application Process
The process for applying for a patent is known as patent prosecution. Here are some things you should do before starting the application process.
Table of Contents
- Document the invention process.
- Search for prior art.
- Professional patent researcher
- DIY patent research
- Research holes
- How to deal with multiple inventors.
- how to prove joint inventors
- legal issues
- how to protect inventors
- How to deal with employers.
A. Document the invention process.
While you can use electronic records as inventor’s notebooks, the golden standard is still a bound notebook with consecutively numbered pages. You use this inventor’s notebook to detail when you envisioned your invention and when you started constructing it.
This is important because inventor’s notebooks, along with corroborating evidence, have been central in proving who was first to invent. Even with the first-to-file system, inventor notebooks are still important to show derivation.
A typical lab notebook will include such items as:
- a description of the invention;
- testing and results;
- prior art research; and
- drawings of the invention.
- you won’t find pending applications that aren’t published,
- there’s erroneous patent classification in the databases that can’t be discovered via keyword searches,
- recently issued patents won’t be in the system immediately, or
- U.S. patent searches won’t bring up foreign patents.
- If trying to assign all patent rights somewhere, all joint owners must agree on the assignment. Hence, one inventor can’t assign all patent rights by him/herself.
- Any one inventor can use, make or sell the invention without permission from the others or paying them.
- Prevents one inventor from exploiting the patent without the others’ consent. Though a majority of the inventors can act if all of them cannot reach a unanimous agreement;
- Includes a method for resolving disputes;
- Includes details about how to divide any revenue, which is usually proportional to expenses incurred by each inventor; and
- Guides the course of action when one inventor wants to manufacture and sell the invention, including how to divide royalties.
- assignment to an investor who has helped with the invention process,
- assignment to a partnership, or
- through the patent owner’s will.
- You signed an employment agreement prior to the invention. Sometimes this is known as a preinvention agreement. The agreement usually contains a provision in which you surrendered your invention rights. This can include inventions you create in your spare time or at home so read this carefully;
- You were hired or employed specifically to invent. Under U.S. Supreme Court precedent, your employer doesn’t even need to have you sign a separate agreement for this;
- Your employer acquired shop right, which is a nontransferable, limited patent right to use the invention for his/her own use and for business purposes only. To claim this, you must’ve used your employer’s resources, such as time or supplies, to create the invention; or
- You work for a college or university, and you’ve granted the school rights to all inventions you make when you use its resources.
After each entry you make in the notebook, be sure to insert the date you made the entry and sign it. Entries should be chronological, and made as soon as you complete each step of the invention process.
Separate print-outs, photos and other documents should be permanently pasted into the notebook. You should also write a caption describing what the document is, along with dating and signing it.
Additionally, be sure to have a trusted witness sign each entry you make in the notebook. Again, this is helpful if someone brings suit. Though you only need one witness, it’s preferable to have at least two just in case one is unavailable to testify later at trial if that’s necessary. The witness should be knowledgeable about the invention’s field because he/she must testify that he/she understands what’s written in the notebook.
It is recommended that witnesses also sign a confidentiality agreement prior to reading your notebook. This may help protect the trade secrets in your notebook as long as you meet the statutory requirements, which were discussed previously, to prove the notebook contains trade secrets.
In the Congressional Record dated March 3, 2011, Congress said inventors can file a provisional patent application to bypass some of the issues associated with the inventor’s notebook. This application has the same function as the inventor’s notebook because it requires an invention’s description, including what the invention is and how it works. It is also a dated government document so one cannot easily tamper with it. Furthermore, this does away with expensive discovery if a claim is later challenged.
B. Search for prior art.
A patent search can be beneficial at various stages of the inventing process. An initial patent search at the time of conception and formulation of an idea helps you assess the depth and extent others took in solving similar problems. Moreover, for brainstorming, the patent search can help refine your idea and stimulate further inventive thinking. Furthermore, a comprehensive awareness of the prior art can aid you when you draft claims. You’ll learn how to write claims with the appropriate scope so you can obtain patents that are as broad as possible, yet defensible.
To search for prior art, sometimes known as a patentability search, you can go directly to the USPTO office in Alexandria, the USPTO’s patent and trademark depository libraries nationwide, or visit online databases.
1. Professional patent researcher
If you don’t want to research yourself, you can hire professional patent researchers, such as a patent attorney or agent. One advantage of hiring a professional is that he/she understands the concept of novelty and obvious so he/she may do more thorough research than a non-professional.
a. what to give the researcher
Before preforming a patentability search, a researcher needs to know about your invention so if he/she is not a patent attorney or agent, have him/her sign a confidentiality agreement. If you’re working with a patent attorney or agent, this is not necessary because your conversations with him/her are already considered confidential under the law.
Next, provide your researcher a description of the invention, including what makes it novel, drawings, an idea of what classes to search, and applicable deadlines. If you provide your researcher with your inventor’s notebook, be sure to protect yourself by only providing a copy and redacting any dates in this copy of the notebook.
b. what to expect from the researcher
After the researcher is finished, he/she will usually tell you what they found, including what classes and subclasses he/she searched, and patents and references he/she discovered. If you are working with a patent attorney or agent, he/she will also provide his/her opinion about the patentability of your invention.
2. DIY patent research
a. start with the USPTO’s research system
It’s best to visit a USPTO research facility. The one in Alexandria, Virginia is preferred because its computers have the Exam Assisted Searching Tool (EAST) and you can talk directly with examiners and other staffers, who are there to assist researchers. EAST is a free tool, though you have to pay for printing. With EAST, you can search via class or subclass, Boolean or keyword terms, or a combination of both.
You can visit a Patent and Trademark Depository Library as well. These are located in major cities. The USPTO’s website lists where they are and their hours of operation. These do not have EAST but have the Web-based Examiner Search Tool (WEST). The libraries also do not have information related to foreign patents or non-patent materials, such as journals.
If those aren’t options, you can also start with an online or patent database search. The USPTO, European Patent Office and Google, for example, offer this service for free and there are other fee-based search tools. Though the records here may not go as far back as EAST, the databases are oftentimes easier to navigate
b. narrow down your search terms
Become familiar enough with your patent application, including the abstract, specification and claims, so you can come up with Boolean search terms and the classification that best describes the nature of your invention. These search terms need to be thorough and exact in order for you to find patents already in the USPTO’s system, so coming up with synonyms may be helpful. The USPTO website can also help you navigate the myriad of classifications. It can take some trial and error to figure out exactly what you’re searching for and how to find it.
3. Research holes
Though you may believe your search to be good, whether you do it yourself or hire a professional, it is probably not as in depth as what a patent examiner will do. For example, that’s because:
C. How to deal with multiple inventors.
When you have co-inventors or joint inventors, all of you share patent ownership. To qualify as such, each inventor must’ve contributed to an idea that became a part of at least one of the invention’s claims. You must have a concept of the invention as a complete and definite whole, as well.
You are not a co-inventor if you come late to the project and the others have already formed a complete, though scientifically uncertain, concept of the invention. If that’s the case, you only help clear up the scientific uncertainty.
1. how to prove joint inventors
Each inventor should have his/her own inventor’s notebook. You don’t need to all work together, at the same time or at the same place, however.
2. legal issues
a. patent application fails to list an inventor
If the patent applicant does not list an inventor intentionally, the USPTO may strike down any resulting patent rights or limit what rights the applicant can enforce.
b. dividing revenue
It is up to the inventors to decide how to split any joint revenue. There are some basic rules, however.
3. how to protect inventors
a. Consultant’s Agreement
If someone is just assisting the inventor, he/she should sign a Consultant’s Agreement. This agreement means the person assigns all of his/her rights to the invention to the inventor.
b. Joint Ownership Agreement (JOA)
A JOA can prevent problems resulting from shared finances, such as who owns which financial shares to the invention. A JOA typically:
As earlier noted, joint inventors can claim joint ownership because each inventor owns an equal share to the invention and its patents. You can also achieve joint ownership via:
D. How to deal with employers.
If inventing is part of your job, then you may be obligated to transfer your invention rights to your employer. To determine if this is your situation, look at whether:
1. what your employer may require
If you are associated with an employer, he/she may require you to divulge all of your inventions so he/she will know what’s worth patenting or assigning. Your employer may also have you sign a power of attorney so he/she can file a patent without your help or if you leave the company. Furthermore, your employer may request that you testify or keep good records of your invention process even after you leave.
2. what you may get in return
In return for your invention, an employer may reward you via a salary bonus, he/she may set up a subsidiary entity that is partially owned by you so you can also gain from your invention, or your employer might give you a certain percentage of your invention’s royalties.
3. if your employer isn’t interested
If you’ve told your employer about your invention and he/she isn’t interested in it, you can apply for a release. A release is a document that has the employer return the invention back to you.
Statutory protections for employees
Preinvention agreements are sometimes regulated by state governments so they aren’t grossly unfair to you. In particular, California, Delaware, Illinois, Kansas, Minnesota, North Carolina, Utah and Washington have specific statutes dealing with these agreements.
V. File a provisional patent application (PPA).
- What are the benefits of a provisional patent?
- What are the drawbacks of a provisional patent?
- What does a provisional patent application (PPA) ask for?
- What is optional (may not be required now but may be later)?
- How can ProvisionalBuilder™ help with this process?
- What are the benefits to using ProvisionalBuilder™?
- How does ProvisionalBuilder™ work?
- How do I install ProvisionalBuilder™?
- What do I do after ProvisionalBuilder™ is installed?
- How do I start an application on ProvisionalBuilder™? [k: the outlining numbering gets weird in this section
VII. File a Utility Patent Application
- How long does a utility patent last?
- Can I reuse information from my PPA or other applications?
- What to now include
- Information Disclosure Statement (IDS)
- Patent Application Declaration (PAD)
- transmittal letter
- professional drawing
IIX. After you submit a utility patent application
- first Office Action (OA) or Official Letter
- amendment in response to Office Action (OA)
- second or final Office Action (OA)
- amendment in response to second of final Office Action (OA), if applicable
- request to continue the examination
- other courses of action
IIX. After you submit a utility patent application
- What you can do now
- direct and indirect infringement
- infringing claims
- doctrine of equivalents
- intent and knowledge
- targets of a suit
- non-U.S. infringement
- cease and desist letter
- answer and counterclaims
- trial and appeal
- remedies and damages
- alternatives to litigation
- license or sell the patent
- save for future maintenance fees
- Reissue application
- what others may do