Q & A

INTELLECTUAL PROPERTY

Questions and Answers

 

 

Hundreds of years ago, our governing forefathers, many of whom were inventors of one sort or another, decided that people who possess the aptitude to create and assemble thought into new invention, new method, new process, new design or new artistic work should have rights of exclusivity and ownership as reward for their endeavor. Laws were enacted and a federal governmental agency was created for the filing and registration of such ideas to review and compile this information, and organize it into a reference center for the public. Not very many people are acquainted with this branch of government, nor are they familiar with the concepts of intellectual property or the benefit of registry of their thoughts, concepts and creations.I would like to take a moment of your time to introduce you to intellectual property and answer some questions which we are most frequently asked and help you understand the benefits of ownership of your intellectual property.

 

What is intellectual property?

Intellectual property is personal property. It is not land or real estate, but it is personal property which can be owned, bought, sold, licensed and used for profit or for the benefit of general society. It is an idea which can be made into something existing. It can be a song, a book, a work of art. It can be a design, a machine or a process for accomplishing something. It can be a trademark, a logo or an insignia. Basically anything new, original and useful that a person can create or invent which falls into one of several categories of intellectual property.

 

What can I do with my intellectual property?

As indicated above, intellectual property can be owned, licensed, bought or sold. It can be given away for nothing, you can just own it, or it can be sold to someone for a price. You can share your intellectual property with those you chose, retain and secret your ideas, or you may register, file and protect your intellectual property with the United States Patent & Trademark Office (PTO) or other foreign Patent Office and be granted exclusive rights to your property for a period of time. This avenue can allow you to develop your ideas and creations into a business or business item for profit with protection afforded by the government to own your idea.You can make and sell your items yourself, or you can have someone else to make and sell your ideas for a share of the profit. Filing with a Patent office protects your exclusive rights to your exclusive creation or invention and allows you control over what happens to your creation or invention. You do not have to obtain a patent to make and sell your idea, but you must obtain a patent in order to ensure that you have protected exclusive rights to your idea.

 

How do I know if my idea or invention is new or is an idea someone else already created?

Many people believe that if they haven’t seen something they have created in the catalogue or on sale then their invention is probably unique. This is seldom the case. More often than not, someone else has come up with something quite similar, but for some reason, it just hasn’t hit the public marketplace. Most of what is for sale is not patented and much of what is patented is not for sale.

Uniqueness is a very significant qualification for your invention to be registered as your intellectual property. If someone else already came up with your idea or something very similar, it can prevent you from being able to obtain the exclusive rights to what your thought was your unique idea. You can’t own someone else’s intellectual property any more than you can own someone else’s car. Therefore, a massive source of information has been complied regarding those items of intellectual property already registered and owned. This extensive source may be explored by a search for a previous patent, trademark or copyright. A person may conduct their own search, travel to one of many repositories located across the United States or a limited search can be performed on the Internet. It may be done professionally by a Patent search service, a registered Patent attorney, Patent agent or other person who is known to provide Patent search services for a fee. It is strongly encouraged that a search be performed prior to seeking acquisition of ownership rights in you invention or creation.There are several different methods to conduct a search. One is to hire a professional patent search entity to conduct the search. This is generally reliable. Another method is to contact the patent attorney or agent to do the search in preparation for a possible patent application. This too is costly, but usually most reliable. A third method is the Internet search, which can be conducted for free by locating the PTO web page at www.uspto.gov and doing a search on the Internet. This is a very cheap way to conduct a search because it is absolutely free. It allows visual access to patents which have been issued since 1790. With proper software, these patent copies can be downloaded, sometimes for free. However, your local patent library will be able to furnish you copies of the patents at a rather nominal cost if you can’t obtain what you need on the Internet. Least reliable are services who advertise on television as invention marketing businesses. These type of businesses are most concerned with making money for their business and not so concerned about the inventor’s well being. You are advised to investigate these type entities thoroughly before hiring them for any purposes.

 

What sort of things can I patent?

Nearly everything that is new and useful may be considered appropriate for patent with certain exceptions. This can include a mechanical, electrical or chemical inventions, an improvement on an existing concept or invention, an agricultural hybrid or new plant, biological developments or even new uses for some things already in use and existence.

There are some items that while not suitable for patent, may be suitable for other intellectual property filings, such as a pretty picture, which while not meeting the “useful” definition for patent, may still be suited for copyright. Aggregate inventions, combining two unrelated items may not be suited for patent, such as a clothes washing machine with a telephone built into the machine. Accounting procedures or mathematical formulas are not patentable, but may be subject to copyright if contained within written works. Also some items that could be patentable are prohibited expressly under the patent rules, such as nuclear devices of mass destruction, bombs or chemical weaponry.

“Patentable subject matter” is defined in Federal Statutes which require the invention to be new, useful, and novel. Novelty means something that would not be anticipated by a person skilled in the field or profession associated with the invention, e.g. such as a building contractor in the building industry or an automobile mechanic in the automobile repair industry. An example of a non-novel “new use” would be a screwdriver used not only to apply to a screw, but also used as a tool to pry a lid off a paint can. While most items can be easily determined to be “useful”, a patent search is recommended for a determination of “new” of “novel”. Please refer to the previous question in this brochure.

 

Do I have to have a working prototype or a recording of my ideas before I can seek ownership of my intellectual property?

Absolutely not, although it may be helpful to the professional whom you may hire or retain to assist you in conducting a patent search or to draft your application for filing your invention or creation with the PTO. Many times a Patent search can result in changes or improvements of your idea after finding out what is already in existence. Eventually, you may need to send rough drawings of your creation to a professional for required draftsman quality artwork. For other intellectual property, you may need to hire someone to complete your musical score, edit your written copy or hire others to meet a statutorily required form prior to filing of the invention or creation. Preliminary work on development of your ideas or submission of your idea to a Patent professional for preparation of your application can be accomplished without a prototype or formal drawings.

The PTO does require that an invention submitted be disclosed to a point which “enable one skilled in the art” or knowledgeable about the area of your invention to take your disclosure and be able to construct your invention with little experimentation or without having to add or invent something essential to making your invention work. Therefore, inventions which are in the concept stage may not be sufficient to apply for patent. It is highly suggested that when seeking patent protection, the inventor keeps in mind that a patent application is not a sales pitch. A patent application or disclosure is a conveyance of information which informs the patent attorney or patent examiner of the workings, components, methods, systemic relationship and suggested means of the preferred embodiment of the invention.

 

Do I need to hire someone to draft and file the application?

No. However, drafting a Patent application, a Trademark application, conducting the search, and other aspects of dealings with the PTO can be quite difficult, requiring knowledge and skill which untrained and inexperienced applicants may find overly challenging. Drawings submitted with Patent applications require technical precision of draftsman quality. There is a definite art to drafting the documents in proper form for filing the successful application with adequate protection and inclusion.

The local Patent Repository or Patent Library can provide assistance to the individual applying for his own patent,trademarkorcopyright.See,www.library.okstate.edu/dept/patents/ThePTOmayalsobehelpfulinsupplying the individual forms on Adobe Acrobat and explanatory information published by the Federal Government. See, www.uspto.gov .

The general practice attorney does not possess the proper license or credentials to represent an inventor before the PTO. Only licensed and registered Patent attorneys or Patent agents may be acceptable representatives of an inventor before this agency for purpose of filing and prosecution of the application. A non-licensed individual cannot hold himself out to be qualified to practice before the PTO until such individual has passed the required examination and licensing requirements set by the PTO.

 

Do I have to have a patent to sell my invention?

Not at all. You can make, sell, use and advertise for use any product or patentable idea without a patent. The only problem with this is that without a patent, anyone can make, sell, use or advertise for use your idea. The purpose of patent protection is to attempt to secure the exclusive rights to successfully commercialize your invention to the exclusion of others for a period of time. Whether you obtain a patent, fail to obtain a patent or never seek to obtain a patent, you can sell your invention as you wish, as long as it is not something which already has been granted patent protection to someone else.

 

Will obtaining a patent assist me in commercial pursuit?

Not necessarily. Patentablility and marketability are two completely different areas. Something that is patentable may not be marketable. One may be granted a patent on something that nobody wants to buy. Likewise, someone might be able to sell something that an examiner will not grant a patent upon. There is not a true correlation between a patented invention and a sellable invention. However, commercial success without patent protection is quite risky. If you do stumble upon some thing that turns out to be incredibly profitable, and you market the idea without patent protection, you have nothing to prevent others from also profiting from the sale of duplicated or pirated reproductions of your invention. Obtaining patent protection will help you be the only one legally entitled to the profit and control of your intellectual property.

 

If I file a patent, is there a guarantee I will get one?

Absolutely not. There are numerous standards of review that the patent office uses to determine whether an application will be granted, including several Federal Rules and review standards.Patent attorneys and agents are charged with knowledge of these review standards and are charged with the knowledge and skills by examination and admission to the patent bar, incorporating this knowledge and experience in drafting patent applications. Still, not every filed application becomes an issued patent. However, hiring a patent professional to prepare y9our application gives you a much higher proven statistical opportunity that those filed without a licensed attorney or agent.

 

Is there someone I can contact for more answers to specific questions I have concerning intellectual property?

Yes. Any questions you have concerning intellectual property, licensing, application or development of your thoughts and ideas may be answered by contacting any licensed patent attorney or patent agent with any such questions. There should be no charge for contacting these professionals about your ideas or for answering other questions, and several of them may offer a free patentability review with you. Like most instances, you are encouraged to shop around for the representative you like and can afford. Your discussions with a licensed professional are in the most strict

confidence, as they are agents and attorneys licensed to practice before the Patent & Trademark office. They should be able to handle nearly all of your intellectual property needs no matter where you reside. If they cannot, they will locate someone who can. You are cautioned that speaking with any person other than a licensed patent attorney or agent will not afford you this statutory confidentiality and more often than not, any other entity or agency other than a licensed patent attorney or agent will be a waste of your time and money. Beware of invention promotion entities, especially those who advertise on television and radio, as none of them ever seem to make more money for their clients than the client spends in hiring them.

 

Mr. Homburg’s Intellectual Property Practice is nationwide, and the license to practice Patent law is valid in every state in the United States. His general practice is limited to the State of Oklahoma, where he is currently licensed to practice general law in that State.