The Patenting Process

August 18th, 2011 by

I. Overview of types of protection of intellectual property; different strokes for different folks.

A. Patentable “invention”

1. Utility patent for an “invention” … that is novel, non-obvious and useful:

a. article of manufacture

b. machine or apparatus

c. composition of matter, including living organisms

d. process or method

e. improvement of any of the above.

2. Plant patent for distinct and new asexually reproduced plant variety.

3. Design patent for new, original and ornamental design for a manufactured article.

4. Right to prevent others from making, using or offering patented invention for sale in theUnited States.

5. Exclusionary right not an affirmative right to practice own patented invention unless unrestricted by rights (such as a patent) held by another.

B. Trade secret protection for information that derives independent economic value from not being generally known to other persons who can obtain economic value from its use.

1. An alternative to patenting, protecting information only until secrecy lost

2. Some inventions are patentable without disclosing trade secret information.

C. Copyright for an “original work of authorship”…

Fixed in any tangible medium of expression that can be perceived or reproduced.

1. Exclusive right to:

a. reproduce and distribute copies in public;

b. prepare derivative works based on the original copyrighted work; and

c. publicly perform and display the original copyrighted work.

D. Trademark/service mark protection for indicator of origin, such as one or more words, phrases, numbers, symbols, designs, colors, smells, sounds and combinations thereof.

 1. Right to prevent another from adopting or using a similar mark likely to cause consumer confusion.

II. Utility Patents.

Federal law only (U.S. Constitution (ArticleI., ? 8, clause 8) and 35 U.S.C. ?? 101 et seq.).

Possible avenues for patent protection:

1.United StatesPatent & Trademark Office, Department of Commerce.

2. Foreign: direct filing in the patent office of a foreign country.

3. International:

A. Patent Cooperation Treaty:

File a single international preliminary search report, then request the patent offices of designated PCT member countries to examine the application and grant a patent under the applicable foreign law.

B. European Patent Convention:

File a single international application, which is examined in accordance with common European standards en route to the granting of a separate patent in each European country that is a member of European Patent Convention.

C. Defining the invention; possible stages of “invention”:

1. Conception: formation of a definite idea.

2. Research and development: diligence may be important if first to conceive of an invention, but not first to reduce the idea of practice.

3. Reduction to practice: actual embodiment or practicing of the invention; the filing of a patent application is considered constructive reduction to practice since applications must describe an enabled, operative invention.

D. Inventorship, co-inventors, and ownership of patent rights:

1. An inventor includes any natural person who conceives an operative invention; not mere implementation of another’s ideas.

2. Co-inventor status achieved via communication (collaboration) leading to contribution ultimately embodied in the invention.

a. Patent applications must identify all inventors, and be supported by an oath signed by all inventors.

b. Each co-inventor generally has equal rights to practice the patented invention, absent agreement to the contrary.

3. Inventors are generally presumed to own the patent rights to an invention, unless:

a. Ownership transferred to another by:

(1) written or verbal contract assigning patent rights to the other; or

(2) inventor/employee hired by the other specifically to exercise his/her inventive faculties resulting in the invention.

b. “Shop rights” give employer a non-exclusive, royalty-free, non-transferable license to use the patented technology.

c. “March in” rights of the federal government, for inventions resulting from research sponsored by federal funds.

4. A patent essentially evidences the creation of “property” and the boundaries of the corresponding legal rights; like all other property owners, patent owners may use, sell, lease or encumber the subject property.

E. Patentability Requirements in theUnited States:

1. Novelty: the discovery is not anticipated by any Single prior art reference which discloses every element of the discovery.

2. Non-obviousness: comparing the prior art to the discovery as a whole, the discovery would not have been obvious to someone of ordinary skill in the field.

3. Enabled best mode: the patent application must specifically disclose how to make or use an operable version of the invention, including the best mode then known to the inventor.

4. Claims: statement of precisely what the inventor regards as the invention.

a. Independent claim expressly states all elements of the invention, and all limitations.

b. Dependent claim: incorporates all limitations of other claim(s), then includes further elements and limitations.

F. Bars preventingU.S.patenting of patentable inventions:

1. Critical dates:

a. date of invention;

b. filing date ofU.S.application; and

c. first public knowledge, use, offer for sale in theU.S., or publication or patenting anywhere.

2. Pre-invention conduct… before the applicant’s invention, another:

a. has public use or knowledge of the invention in theU.S.;

b. obtains a patent on, or publishes a paper disclosing, the invention anywhere in the world.

c. files aU.S.patent application disclosing the invention, which is later granted a patent; or

d. makes the invention in theU.S.

3. Pre-application conduct… more than 1 year before the filing date of theU.S.application, anyone (including the applicant):

a. publicly uses or offers the invention for sale in theU.S.;

b. obtains a patent on, or publishes a paper disclosing, the invention anywhere in the world; or

c. files a foreign patent application, which is granted before the filing of the application in theU.S.

G. Duration:

The term of a patent expires 20 years after the filing date of the application; possible extension of patent term for regulatory delay.

H. Fees for filing an application, obtaining a patent and maintaining your patent rights:

1. $790 basic filing fee required by the Patent Office; for an application having a maximum of 20 claims, no more than 3 of which may be independent claims; additional claims acceptable upon the payment of an additional fee.

2. $1,320 issuance fee for utility patent, due at the Patent Office within 3 months from the date of the Notice of Allowance; this deadline is non-extendible.

3. Maintenance fees due for utility patents:

a. $1,050 due 3 years and 6 months after the original grant date.

b. $2,100 due 7 years and 6 months after the original grant date; and

c. $3,160 due 11 years and 6 months after the original grant.

d. Each of these 3 deadlines may be extended by 6 months, but only with the payment of a surcharge.

4. $150 provisional application filing fee.

a. Provisional application must contain only the name of each inventor and a detailed description of the invention (including any drawing necessary to an understanding of the invention), not any claim(s).

b. To avoid abandonment, a regular patent application must be filed before the first anniversary of the provisional application filing date, and that regular application must be based upon the same detailed description of the invention provided in the provisional application.

5. The above fees are essentially halved for applicants qualifying for small entity status (essentially an independent inventor or a business employing less than 500 persons, without any obligation to transfer the invention to anyone disqualified from claiming small entity status).

I. Optional notices:

1. “Patenting pending” is appropriate after a provisional or regular patent application has received a serial number and a filing date from the Patent Office; although such marking is intended to notify third parties of imminent patent rights, such third parties may still engage in business with the patent-pending product or technology until a patent is actually issued.

2. Mark the product with the patent number once obtained; failure to mark does not invalidate the patent, but no damages recoverable from infringer until after infringement with notice of registration.

J. Selling patents or leasing out patent rights:

1.Saleby assignment; transfer of legal title, with all corresponding rights such as power to re-assign, license, encumber or sure for infringement.

2. Lease-out by licensing, either exclusively or non-exclusively; mere transfer of specified rights and duties, usually only to make or sell, without transferring legal ownership.

3. Recordation at USPTO: any conveyance of an interest in a patent or application is void as against any subsequent purchaser or mortgagee without notice of such prior conveyance, unless the conveyance document is recorded in the Patent Office within 3 months from its date or prior to the date of the subsequent purchase or mortgage.

K. Infringement:

1. Unauthorized person makes (or imports), uses, offers for sale or sells the patented product or technology.

2. Lawsuit in federal court for infringement, and seeking remedies such as:

a. Injunction against further infringement

b. Damages for continued misconduct after notice of atenting and claimed and infringement, measured by:

(i)the amount of an established royalty for a license of the patent rights;

(ii)the amount of a reasonable royalty, if no actual license has taken place;

(iii)the patent owner’s lost profits caused by the infringer’s misconduct;

(iv)treble damages if infringement is willful or in bad faith and


c. Attorneys fees in exceptional cases such as willful infringement.

III. Trade Secret Protection.

A. Sources of protection:

1.Local and State Laws

2. Federal law:

a. Economic Espionage Act of 1996 provides both civil and criminal remedies for intentional misappropriation of trade secrets.

b. The Federal Rules of Civil Procedure also provide for protective orders prohibiting the disclosure of trade secrets or other confidential commercial information during litigation. Fed. R. Civ.P. 26(c)(7).

c. The Court of International Trade has similar powers. 28 U.S.C. 2641 (b).

3. Common law

B. Reasonable efforts to maintain secrecy, include: 

1. Confidentiality agreements with employees.

2. Confidential disclosure agreements with outsiders.

3. Restricted access to information, documentation, facilities, products or prototypes appropriate policies and implementation.

4. Filing suit; claim it or lose it.

C. Potentially infinite duration of protection, so long as secrecy is maintained. 

D. Law violated by acquisition of trade secret by improper means, or by unauthorized disclosure or use of such information by someone having reason to know of improper acquisition. 

F. Statutory authority for injunction preventing disclosure of secret information. 

About the Author:

Calhoun, Joe D., Registered Patent Attorney

After earning a B.S. in both Biology and Psychology fromTulaneUniversity, Mr. Calhoun cobtained his J.D. degree from the University of San Francisco School of Law in 1983. Primarily engaged in business law and litigation, Mr. Calhoun has developed an emphasis on intellectual property matters by advising clients concerning patent, trade secret, copyright and trademark law. As a registered patent attorney, Mr. Calhoun assists clients in obtaining patent protection for technology; he also has a wide array of experience in the licensing and enforcement of patent rights, as well as the procurement and protection of marketing rights and other aspects of intellectual property law.

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