Patents
Our experienced patent practitioners are available to our clients to explain intellectual property procedures and regulations and guide clients through the process. We provide our clients with solutions that protect their assets, keeping in mind their needs, goals and budget.
We can help you...
- Acquire patents around the world.
- Protect proprietary trade secrets and craft a customized protection strategy.
- Expand protection globally through foreign filing.
- Avoid potential infringement litigation through clearance searches, international property protection strategies and even “design around” strategies.
- Determine if a competitor is infringing on your intellectual property rights.
- Understand what potential intellectual property assets you may have and assist in identifying any patentable technology and what trade name assets can be protected.
- Develop and train R&D personnel on proper confidential record keeping, invention documentation, patent searching and identifying potential technology that might be protected.
- Develop a program and host seminars for key team members.
- Expand protection globally through foreign filing.
- Enter the U.S. market, for clients with a PCT or Madrid Protocol application that want to enter the national stage in the U.S.
Examples of Patents We've Worked On
- Control System Methods for Networked Water Heaters
- Operating Table Patient Positioner and Method
- Mobile Device Utilizing Time of Flight for Localization
Check out more examples of patents
Who Needs to Understand Patent, Trademark, and Copyright Laws?
Inventors
Anyone who invents a process, machine, manufacture, composition of matter, or a new and useful improvement thereof may be an inventor. An inventor who is also looking to profit commercially must understand patent, trademark, and copyright laws. Many devices created by inventors may be infringing on existing patents due to the complexity of some devices that may be using patented parts contained within them without the inventor realizing this.
Entrepreneurs
A person who starts and runs a new business or organization must be familiar with business law to the extent that may affect their product or service. This may include patent, trademark, and copyright law as well as state and federal liquor laws.
Content Producers (This Includes the Internet)
Those who publish digital content online are responsible for adhering to the same copyright and trademark laws as those who publish in print offline. Namely, understanding the DMCA (Digital Millennium Copyright Act) and making sure all content published online is done while following its guidelines.
Publishing Companies
The distribution of copies of content to the public under the Berne Convention requires that this can only be done with the consent of the copyright holder (initially the author). In the Universal Copyright Convention, "publication" is defined in article VI as "the reproduction in tangible form and the general distribution to the public of copies of a work from which it can be read or otherwise visually perceived." In providing a work to the general public, the publisher takes responsibility for the publication in a way that a mere printer or a shopkeeper does not. For example, publishers may face charges of defamation if they produce and distribute libelous material to the public, even if the libel was written by another person.
Technology Ventures
When a business entity is formed around a new product, patent, trademark, and copyright laws must be followed. For example, there may exist several details in the form of patented parts included in a product.
Start-ups
A start-up is typically a newly emerged, fast-growing business that aims to meet a marketplace need by developing or offering an innovative product, process, or service. This usually involves a rapidly developing and scalable business model. Many times the speed that start-ups are put together results in start-ups facing legal problems at the copyright, trademark, or patent level simply because business law can be easily overlooked during a fast growing start-up's early stages.
Small Businesses, Mid-sized Businesses, Large Businesses
Business of all sizes and types must be familiar with patent, trademark, and copyright laws for multiple reasons. Not just for the sake of protecting their product or service but making sure their marketing and advertising is compliant as well.
For example, A company logo can be infringing on another company's intellectual property causing legal problems for both parties.
The craft beverage industry particularly involves several business laws that must be adhered to at a state and federal level. When a business creates their own alcoholic beverage, both liquor law and trademark law must be understood and followed. The business owner (or owners) can face legal consequences for failing to do so.
New business laws and regulations come into effect regularly, so it is important for business owners to be up to date and have a firm understanding of any new changes.
The result of failing to follow proper business law can result in suspension, fines, and even jail time.
Patents
In its simplest form, a patent grants you the right to exclude others from practicing, making, using or importing your invention in exchange of disclosing your invention to the public. The public’s interest is represented by the patent office. In the US, the patent office is called the United States Patent and Trademark Office (USPTO). In Europe, the patent office is called European Patent Office (EPO) which is based in Germany. There are other major patent authorities in the world. The patent office is responsible for issuing patents. Once the patent is issued, the patent holder must enforce the patent.
Applying to register your trademark with the United States Patent and Trademark Office (USPTO) begins a legal process. Legal requirements and deadlines must be met and fees may be required throughout the process. Not all applied-for trademarks register. And if the requirements are not correctly satisfied, it may provide a basis for cancellation of a mark that was registered.
Types Of Patents
Utility Patent
A utility patent protects the function of an invention. The subject matter of a utility patent generally includes a useful process or method, a machine or device, a chemical compound or a manufactured item. Currently, the term of a utility patent is 20 years from the date of filing or priority. For patents issued prior to June 8, 1995, the patent term is 17 years from date of issuance. Utility patents are usually more desirable than design patents because of the broader protection generally available to them. (Design patents protect only the ornamental, non-functional elements of the item – the decorative configuration of the parts, surface contours, shapes, colors and textures, for example.)
Provisional Utility Patent Application
A provisional patent is a U.S. national patent application that lasts twelve months (which cannot be extended). Filing a provisional patent application does not give the invention a patent. Only a non-provisional application can receive a patent. Before the twelve months expire on a provisional application, it must be converted to a non-provisional application to continue seeking protection. If this is not done, the patent application is abandoned and does not mature to an issued patent. Provisional patents are often recommended for independent inventors early in the development process. There are several factors that make a provisional patent a good option for some independent inventors: (1) it provides an earlier priority date); (2) it provides an option for delaying some of the application costs; and (3) it allows the applicant to use “patent pending” status in its marketing strategy.
As long as a provisional patent is followed with a non-provisional application within one year, the non-provisional application may claim priority to the earlier filing date of the provisional application. When filing the non-provisional application, the applicant converts the provisional application into a non-provisional application by filing a corresponding non-provisional application that claims specific priority to the provisional application.
Since provisional patents do not require claims or formal drawings, they are less costly to prepare and file. Preparing a less costly provisional application before preparing and filing a non-provisional application allows the independent inventor to spread the patent application costs over the course of the year. Not surprisingly, this comes with a price: by filing the provisional application first, and then following with a non-provisional application, the examination of patent claims, and therefore issuance of an enforceable patent, is delayed by the same period. On the other hand, some inventors discover during the twelve-month provisional period that the invention is not the financial windfall they had envisioned and elect not to proceed with the non-provisional application, thus having risked only a portion of the full non-provisional application cost.
Additionally, over the course of the year that a provisional application is pending, many inventors continue to test and develop their invention. Modifications may be made after meetings with manufacturers or prototype developers. This additional data may be added to the utility application and be useful in preparing the claims, allowing the patent professional to focus claim coverage on the most likely commercial embodiments. It should be noted that any newly disclosed data may or may not be accorded the earlier filing date (depending on whether it was “enabled” in the original application), however, the originally disclosed material should be accorded the earlier filing date. In this case, there may be some claims in the applications with one priority date and other claims with a second priority date.
Once any patent application is filed, inventors are encouraged to market or produce their invention while their patent is pending USPTO approval.
Non-Provisional Utility Patent
Because only non-provisional applications can be granted a patent, the filing of a non-provisional application begins the examination process by the USPTO. The non-provisional application is a complex legal document with very specific requirements. A non-provisional utility application must contain a specification, including a claim or claims; drawings, when necessary; an oath or declaration; and the prescribed filing, search, and examination fees. Depending on the complexity of the application, a non-provisional application can be quite costly, but definitely worth the investment if obtaining exclusive rights to the idea would increase marketability of the product to investors and manufacturers and give the patent holder a competitive edge.
Design Patent
Under 35 USC 171, a design patent protects the overall appearance of an invention and is granted for any new, original and ornamental design for an article of manufacture. They may also be available to protect the configuration or shape of an article of manufacture. (Of course, a combination of the two may be protected by design patent as well.) The term of a design patent is 14 years from the date of issuance. A design patent application can only be non-provisional. A design patent may protect a product manufacturer from “copycat” products that may have an inferior quality and detract from its reputation in the marketplace. Therefore, a design patent should only be chosen if the appearance of the invention is important, otherwise utility patent protection should be sought.
The focus of design patents is on protecting the pleasing aesthetic appearance of the article where such design is not dictated by functional considerations. To qualify for design patent protection, the design must be definite and reproducible, novel/original and non-obvious. Design patents often are used to bolster trade dress (trademark) or copyright protection.
Unlike a utility patent, where the applicant has the option to first file a provisional application, a design patent application can only be filed as non-provisional. The same substantive and procedural rules apply to design patents. Full disclosure and definiteness is provided through the drawings. The drawings that accompany the specification typically include at least 7 drawings: each side of a cube and one of the article in use.
Design patent protection may be available for portions of an article of manufacture. For example, design patents have been granted for the shank portion of a drill. In this example, consumers may recognize and desire a unique design in an entire line of tool products. A confusingly similar design might detract from their identification of the desired product and cause them to select an inferior quality copycat design.
When we think of ornamental design, we generally think of things of beauty. However, design patents are available for mechanical devices that “eliminat[e] [the] unsightly repulsiveness that characterizes many machines and mechanical devices which have a tendency to depress rather than excite the esthetic sense.” For example, concrete mixers have received design protection on this basis.
In some circumstances, design protection might be a viable alternative in cases where utility protection is not available because of novelty or obviousness reasons.
Things not eligible for design patent protection include things not intended to be visible in actual use, offensive designs and functional designs. The first factor has been the subject of litigation and the test that evolved was whether in some point of commercial life, design is a matter of concern. (Take for example, lingerie, garment hangers, tent pegs, inner sole for shoes and prosthetic bone implants – all things that are hidden from view during use.) In assessing functionality, it is critical to understand that it is the functionality of the design, not the article of manufacture itself. A key inquiry is whether there are several ways to achieve the function of the article.
Infringement of a design patent occurs when another article of manufacture resembles the patented design so as “to deceive the ordinary observer who gives as much attention as a purchaser usually gives.”
Plant Patent
A plant patent provides exclusive rights for the invention or discovery of an asexually reproduced variety of plant. This does not include a tuber-propagated or an uncultivated plant. A plant patent lasts for 20 years from the filing date and excludes others from reproducing, selling or using the plant. As with utility patents, plant patent applications are either provisional or non-provisional.
International Patent Protection
Most countries have patent laws, and many of these laws differ between countries. If you would like to acquire patent protection in several countries, you have two routes to consider for starting the process:
(1) File a separate patent application in each desired country simultaneously (some regional patents are available). By filing a patent application in one of the Member States of the Paris Convention for the Protection of Industrial Property. This establishes the filing date to use for any other application filed in a Paris Convention country within the next 12 months.
(2) File a PCT application to use in PCT Member States. The Patent Cooperation Treaty (PCT) is an international treaty administered by the World Intellectual Property Organization (WIPO) and includes more than 125 Member States. The PCT application allows the applicant to file one “international” application filed simultaneously in the desired PCT countries. This method eliminates the need to file several separate national or regional applications. The PCT applications may then enter the “national stage” in each individual country where you seek patent protection.
When To Patent
The United States gives inventors
Most other countries are absolute novelty jurisdictions, meaning that no patent can be obtained if it is disclosed before patenting. In other words, there is no one year grace period. To preserve your rights, it is best to patent before any of these activities occur.
The law requires an inventor and attorney to disclose these things to the Examiner via an Information Disclosure Statement. Failure to do so is fraud on the patent office and the patent is void and unenforceable. On a practical note, when money is involved, an inspired competitor or alleged infringer will go to great lengths to uncover these things. Disgruntled employees, ex-spouses and business associates are happy to assist them with testimony.
Components Of A Patent Application
The Manual of Patent Examination Procedure (MPEP) requires an application for Letters Patent to contain:
- Title of the Invention
- Cross-reference to Related Applications, if any
- Reference to Microfiche Appendix, if any
- Brief Summary of the Invention
- Brief Description of the Drawings
- Detailed Description of Preferred Embodiment
- Claims
- Abstract of the Disclosure
- Signed Oath or Declaration
- Drawings
Customarily, most patent applications also contain a “Background of Invention” section with subdivisions for field of the invention and objects of the invention.
Specification
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. (35 USC Section 112.)
Thus, the statutory requirements of the specification are:
- An adequate description (level of description varies by technology and desired breadth of claim scope)
- Enablement (enough information for a skilled person in the art to make it/use it without undue experimentation)
- Best Mode (also referred to as the preferred embodiment): The best known way for the inventor to practice the invention must be disclosed within the specification, but the inventor need not point out which embodiment (version) is the best mode.
- Claims
The patent professional will work with the inventor to develop the specification and drawings, determine the most critical features to describe and depict, broaden the scope of the invention where possible to enhance the strength of the patent, and develop aggressive claims that are not likely to be rejected but will provide the maximum patent protection possible.
Drawings
Drawings will be required for most inventions. Patent drawings should illustrate the novel concepts and significant features of the invention. In process claims or software patents, these drawings may consist of standard industry flowcharts describing the steps. Formal drawings meeting patent guidelines will be required for utility and design patent applications to issue. Informal drawings may be used for provisional applications and in some cases, in the early stages of utility applications. Notably, with new patent procedures, it is increasingly our experience that informal drawings will not be accepted even for provisional patent applications.
Oath or Declaration
A utility or design patent application requires an oath or declaration from each inventor.
Fee
Fees depend, in part, upon the size of the entity with an ownership interest in the application. The USPTO recognizes two classes of patent applicants: small entity and "other than small entity." In order to encourage inventions and the progress of science, the USPTO generally charges only one-half of its fee to small entities. While this is an overstated generalization of the fee structure, it is a good rule of thumb for most filings.
Small entities include individual inventors, not-for-profit organizations and companies with less than 500 employees. (There are other restrictions, but these are the most defining elements.) Currently, a basic utility patent containing less than a total of 100 pages, 20 claims, 3 independent claims and no multiple dependent claims for a small entity pays a basic filing fee of $730. Additional fees will be incurred for lengthy applications, additional claims and other conditions. The current fee schedule is available on the USPTO official website (www.USPTO.gov). A basic provisional patent will incur a filing fee of $130 and a design patent will incur a basic filing fee of $380.
Patent Prosecution
The process of “arguing” the merits of your application is referred to as “prosecuting” the patent application. This process typically takes from one to three years and is often similar to a negotiation with the patent office. A balance is reached between the limited scope of patent protection offered by the Examiner and the broader scope of patent protection sought by the inventor. This discussion is not intended to cover the full scope of patent prosecution practice, but to familiarize a non-patent professional with a typical prosecution scenario. It should be understood that additional and other actions may be taken by the USPTO.
After filing a patent application, an Office Action from the USPTO will usually be received within 18 to 36 months. (Some art units are so overwhelmed with applications that it may even take 40-44 months or even longer in the electrical and business method arts.) Typically, the first review of the application by the USPTO Examiner is sent to the applicant in the First Office Action. This may be final or non-final, but it is usually non-final.
In some cases, the First Office Action on the merits is preceded by a Restriction Requirement from the Examiner. The Examiner may break the claims into distinct inventions and ask the inventor to elect one such invention for prosecution. The remaining claims may be immediately prosecuted by the inventor via a continuation application, or held in abeyance until the first application is allowed and prosecuted via a divisional application. Of course, the inventor may elect not to prosecute on the non-elected claims.
Typically, in the First Office Action, the Examiner will reject some or all of the claims of the patent under 35 USC 103 when the Examiner believes it would have been obvious to create your invention in view of the prior art located by the Examiner or disclosed by the applicant. Other typical grounds for rejecting an application include 35 USC 102 rejections for lack of novelty. Yet other grounds for rejection may include 35 USC 112 indefiniteness, 35 USC 101 subject matter or double-patenting.
It is then necessary for the patent professional to argue that the invention is patentable based upon specified differences between the invention and the prior art cited by the Examiner. Prior art may generally include other domestic and foreign patents (both published and unpublished), articles, thesis, conference papers, and other literature. Legal arguments and case law may be used to refute the Examiner's position. A telephone or in-person interview with the Examiner may also be arranged to find agreement on any issues of dispute.
Typically, the Examiner responds to the inventor’s Reply to First Office Action with a Second Office Action. While this may be final or non-final, it is usually final. The Examiner may reject all of claims a second time, indicating that the inventor’s arguments were not persuasive. The Examiner may set forth conditions (in the nature of required changes) upon which a patent would be allowed for some of the claimed subject matter. The inventor may make the “suggested” changes and request the patent to be issued in accordance with the Second Office Action. Alternatively, the inventor may request continued examination (“RCE”) and another opportunity to address the Examiner’s rejections. This additional chance to argue for patentability requires a fee (typically $430 for small entities). The inventor may also make improvements or revisions in his invention, addressing the issues raised by the Examiner, and file a continuation-in-part application requesting priority to the parent application. The new subject matter will not be granted priority if not enabled in the parent case and the application may have some claims with one prior art date and other claims with a second prior art date.
Once put in condition for allowance, the USPTO will issue a Notice of Allowance. Upon payment of an issue fee (you have 3 months to pay) and attention to any formalities raised by the patent office, a patent will normally be published and issued within 3 months. These formalities typically include replacement of pending patent application or published patent application references with the issued patent numbers for any such patents that issued during the pendency of prosecution. They may also include minor drawing revisions such as renumbering or changes to the title of the invention.
How To Protect An Idea
Nondisclosure agreements create a state law contractual obligation, and thus, contractual damages for breach. These fact-specific enforcement actions are often expensive and lengthy endeavors. The strength of a nondisclosure agreement is proportional to the specificity of the confidential information covered by the agreement. Whereas nondisclosure agreements are written fairly broadly, used alone, they may not offer the best protection to an inventor’s proprietary technology. In many cases, it is preferable to base a nondisclosure agreement on a filed patent application, including a provisional application. This creates a firm scope of the technology being disclosed, as well as potential federal causes of action for infringement on a patent that issues from such patent application or the utility application claiming priority to a provisional application.
Nondisclosure agreements are often used when a new concept is brought to a third party for manufacturability/marketability analysis or assistance in reducing it to practice. These meetings often become collaborative “think tank” sessions and it may become difficult to sort out which technology was brought in and which technology evolved as a consequence of the collaboration. Inventorship issues arise as well as disputes over ownership of the technology. A simple nondisclosure with broadly listed subject matter may not effectively assist in resolving these fact-specific conflicts. On the other hand, a filed provisional patent application would be extremely helpful in establishing the bounds of the concept or invention prior to any collaboration or improvement.
It is important to remember that even “patent pending” indicates that an application has been made seeking a patent; it is not a guaranty of a patent being issued by the Patent Office. Additionally, provisional patent applications have no enforceable claims and may provide virtually no real protection if they are not converted to utility applications within one year. Thus, if a patent never issues as a result of an unpublished application (provisional applications, design applications, and utility applications with nonpublication requests and applications abandoned prior to publication), it may still be a trade secret.
Once the “cat is out of the bag” without an NDA, it may be difficult to maintain it was a trade secret. We generally recommend a conservative practice that includes the use of both provisional patents AND confidentiality agreements.
The difference between “fair use” and infringement is unclear and not easily defined. US copyright law does not specify the number of words, lines, or notes that may be taken without permission and not considered infringement. Also, acknowledging the source of the copyrighted material is not a sufficient substitute for obtaining permission. It is always recommended to get permission from the copyright owner before using copyrighted material. If obtaining permission is not possible, the copyrighted material should not be used, unless the material qualifies under the “fair use” doctrine. It is best to consult an attorney to determine if the material would be considered “fair use”.