General Information About the Patent Process
Thank you for contacting my law firm to assist you in possible pursuit of obtaining patent protection on your idea. The following in a general overview of the patent process which you will encounter if you decide to pursue protection for your idea. Not all ideas are patentable, and many items are not even patentable subject matter. Consultation with a patent practitioner of your choosing, or contact with the Patent Office or regional Patent Library is encouraged if you have any questions.
PROFIT FROM PATENT PROTECTION
Patent protection is the first important step and often a pre-requisite to commercial success. It will not guarantee commercial success. Statistically, less than 2% of all ideas ever become commercially successful. However, taking no protective measure is almost a sure indication of commercial failure. If your invention is not patented or at least “patent pending”, manufactures and the general public are less likely to take your invention seriously, and others will be more prone to use your idea without paying you for such use or without obtaining your permission to use the invention. Additionally, disclosing your invention without patent protection can constitute “publication” which, after a passage of time, can result in your losing the rights to obtain patent protection.
The decision to pursue patent protection is solely up to you. I can only tell you that doing nothing in the way of seeking protection is an assured way of wasting the opportunity before you. If you seek patent protection, there is no guarantee that you will have success, but if you ever desire to have such success, it is the most important of the steps required to maximize this opportunity to succeed. You have already taken an important step forward in investing in this patent search and novelty opinion letter. To continue, you will need to consider the next step in seeking patent protection, in whatever form most suited for your invention.
OBTAINING PATENT PENDING STATUS
Patent rights are generally the only protection a manufacturer will agree to if you submit your idea to them for consideration. They are not in the business of reviewing ideas under any confidentiality or a promise of secrecy other than the proprietary rights afforded an inventor who has sought patent protection. It is vital that patent pending status at least be obtained before circulating your ideas to the outside world. Patent pending status occurs after the patent office receives your completed patent application and assigns a number to your application. “Patent Pending” is also a designation which apprizes manufactures or others that you put enough importance in your idea to invest your own time and money in protecting your idea before submission. Others generally will take your idea more serious once the invention can be designated as a pending patent.
The only two reliable means of obtaining this protection, varying in cost and means include:
1. Obtain guidance from the Patent & Trademark Office and make application for patent on your own; or
2. Engage a Registered Patent Attorney or Agent to assist you in preparing the patent application at a reasonable price.
Invention promotion or marketing companies are rarely reliable or useful and are almost always only interested in making money for their company – not you. If you choose to make inquiry to them, ask them how many of their clients made more money than it cost them to get a patent. If they do not have a legitimate answer, end your contact as they are required by law to disclose that information. Legitimate companies will not be afraid to be candid, if they have nothing to hide. Patent lawyers, answering to a State and federal bar, are required to perform their duties in a highly monitored ethical manner. Therefore, unless you are dealing with an attorney or the U.S. Patent Office, you have no guaranteed protection.
Several federal statutes also effect your invention. Public disclosure of your idea can result in a one year time limitation to file your application, after which your invention may become public domain. Advertisement, publication in a trade journal, or simply informing the public about your invention can trigger the start of this one year time bar. In several foreign countries, public disclosure of even a day can render patenting the invention possible. Therefore, time is important, because delaying the filing of a patent application may result in jeopardizing your rights to obtain patent protection. Consequently, anyone could be able to use of make your idea without any compensation to you.
RELEVANT STANDARDS OF PATENT LAW- NOVELTY AND OBVIOUSNESS
The issue addressed by a search is “novelty.” Novelty is a concept which basically amounts to asking whether or not the exact invention described is new or novel: for example was the invention previously described in a printed publication. At this stage, novelty is usually examined only in light of issued United States patents, though magazine articles, trade publications, advertisements and the like may all be relevant to the analysis. If the exact invention has been previously described in a printed publication or otherwise publicly disclosed, it is not “novel” and is not entitled to patent protection. 35 U.S.C. § 102. Another important limitation on novelty is the one year “on sale” bar and the one year publication bar.. If your invention has been on sale for more than one year, you may not obtain patent protection. Therefore, if you have begun to market your invention or exposed it to the relevant art community, it is important to seek patent protection as soon as possible, which is what you have instructed me to do. 35 U.S.C. § 102(b).
A related concept is “obviousness.” Even if an invention is “novel,” it will not be entitled to a patent “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. §103. Obviousness problems generally arise when an Examiner finds two or more patents that, although not directly on point, may combine to disclose the elements of your invention. For example, if your invention contains material elements A-B-C-D, and the Examiner finds prior patent #1 having A-B-D and prior patent #2 having B-C-D, he can combine prior patents 1 and 2 to lodge a preventative objection based upon obviousness by asserting that patent #1 and #2 have elements A-B-C-D, when combined, thus negating the issuance of your patent. If this is true, then a patent will not issue. Most recently, objections and rejections based upon this section have become increasingly more difficult to overcome under recent case holdings, making if more difficult to obtain a patent if this rejection is imposed.
This is why it is important to always do a search before filing for patent protection – to avoid a waste of your time and money. Reputable patent practitioners will not file an application without first having a quality search performed either by their office or by a professional search organization.
There are those who may state that an objection based upon obviousness is guaranteed not to occur in their search. However, we are not so bold or confident enough to make this statement, as we cannot guarantee the subjective interpretation of another not of his choosing. Be suspect of any attorney or business who claims to guarantee no objection based upon obviousness. Ask them to show you their crystal ball, and ask them how many patents they have drafted that issued without rejection or objection based upon their searches.
Any information which you have which you believe may be relevant to either “novelty” or “obviousness” should be provided to your patent practitioner to assist in the preparation of a patent application. Failure to provide relevant documents and other information during prosecution of a patent can cause problems when it comes times to market your invention or to protect it in litigation.
Another concept which is important to understand is the different types of patents available. These will be discussed later in this information, but there are basically two types of patents: design and utility. Provisional patent applications could be considered a temporary utility patent, since they are really only a means to the end of obtaining a utility patent. After filing a provisional application, the inventor has one year to either file a utility patent application or lose rights to his invention.
SELECTION THE PATENT PROTECTION SUITED FOR YOU
As previously mentioned, two major types of patents are generally available, depending on the particular invention. A third type exists, known as a plant patent, but they are rarely applied for in my practice. They are highlighted as follows:
Utility Patent Patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matter, or any new and useful improvement thereof. For example, f you have a decorative lamp, design patent protection might be advisable. However, if your invention is a new switch mechanism for a lamp, which is superior because of ease of operation, you want a utility patent, not a design patent. A utility patent protects the new and useful functional characteristics of your invention. Most inventors should seek utility, not design patents. If a provisional patent application is prepared, you should assume that you will eventually convert to a utility patent. These patents endure for twenty years from the date of the filing of the application if granted.
Design Patent Design patents are less expensive to obtain than utility patents, but they offer much less protection than utility patents. They protect only the aesthetic or appearance values of your invention. Generally they are very short to prepare and rely solely on the artistic representation of the aesthetics of the invention, exclusive of function or internal composition. These patents are granted for a term of fourteen years from the date of the grant. While these are not generally recommended by reputable patent attorneys or firms, in some instances, they are the only form of long-term patent protection available, usually because of the risk associated with rejections of the common elements encountered in utility patent application and reviews.
Provisional Patent Application This is an alternative, less expensive avenue for inventions that would qualify as utility patents only. Provisional applications are not permitted for plant or design patents. These applications have the same informal requirements as the utility patent, but claims are not required, nor are formal drawings a requirement. The filing fee is lowered from that of the utility patent. These patent applications are not reviewed by the examiner and they cannot themselves be considered for the grant of a patent.
After filing the provisional application, the invention is considered “Patent Pending”. This status is granted only during the one year duration of the provisional patent, the one year commencing from the formal filing date indicated on the filing receipt from the Patent and Trademark Office. Prior to the expiration of that year, the provisional patent application will need to be converted to a utility patent application and filed prior to the one year anniversary of the filing date or the provisional patent will expire and the inventor will forever lose their rights to the invention. Any person filing the provisional patent application should fully expect to convert such application to a utility patent. The utility application cannot exceed the scope of the provisional patent application and cannot contain any new matter.
REVIEW OF THE PATENT APPLICATION
Very few well drafted utility patent application will be granted by the Patent & Trademark Office on the first examination. The filing of the application does not guarantee the grant of a patent, for reasons previously stated. If the patent does issue, you will be notified by the PTO, and an issue fee will be assessed in the notification. The issue fee is due within 90 days of the notification of allowance If the issue fee is not paid, the patent will be considered abandoned and lost forever, except under exceptional circumstances. Also, subsequent periodic maintenance fees will also be charged in the future, and will be due within 90 days of the billing. These fees are in addition to the fees paid for the patent application.
The review process is not usually very fast. On the average, a patent takes up to two years from application to issue – some taking longer and some taking a shorter period. For this reason, most marketing attempts are made while the patent is pending review or issue, thus creating the common phrase “Patent Pending”. In the event the review results in an Office Action, or a rejection or objection made by the examiner to the application, a common and anticipated occurrence, you or your attorney will be required to respond to the Office Action in writing and in a timely sense. Sometimes a second Office Action will occur requiring an additional response. These steps all occur during the “Patent Pending” phase, so the inventor should usually anticipate this period to be the two years, at least, previously stated.
Patent protection is often a pre-requisite to commercial success. It does not guarantee success, but the lack of patent protection practically guarantees failure. If your invention is not patented, or at least “patent pending,” manufacturers, distributors and financial people are less likely to take your invention seriously. If they do take an interest in your invention, it is much easier for your invention to be stolen, and you will have fewer, if any, remedies for this theft if your invention is not patented or at least patent pending.
A patent does not have to issue to enter the commercial sale arena. Most products for sale are not necessarily patented. Most will display a “patent pending”, because if you wait to obtain a patent, you may wait for up to four years to get your product on the market. This is ill advised. It is highly recommended that you attempt to gain your market and production as soon after filing for a patent as possible. You do not need a patent to sell the idea, to make the idea or to use the idea. You do need a patent to issue if you want your product to be your exclusive possession and exclude competition as much as possible. It is very thwarting against competition to display patent pending status on your product as a warning not to steal your product without consequence.
If you decide to hire my law firm, I look forward to working with you in the patent process for your invention. Please call me if you have any questions.
Randal D. Homburg