This is Part 2 of my 3 part guide on Patent Law. This portion of the guide is comprised of helpful information that you can refer to when filling out a patent application. It is the longest of the 3 as the patent application process can be quite extensive.
Again, please consult a professional patent attorney or patent agent. Legal advice from a professional patent attorney can never be substituted by an online patent guide.
- Components of a Patent Application
- Procedures and costs for foreign filing of patent applications
- How to Protect an Idea During the Early Stages – Nondisclosure Agreements or
Provisional Patent Applications
- Foreign Applicants for U.S. Patents
- Scope of Patent Protection: The Patent Claims
- Duty of Disclosure
- Right of Priority
- Patent Prosecution
- Patent Enforcement
- Notice Requirement
- Injunctive Relief
- Defenses to Infringement
- Foreign Patent Protection
- Confidentiality Agreements
- Potentially Patentable Inventions
- Patent Pending Status
- Marking and False Marking
- Patentability vs. Marketability
- Design Patents and Other Intellectual Property Protection
- Trade secret vs. patent costs
- Small Entity Status
- Patent Rights
- Patent Types
- Design Patents
- Patentable Subject Matter
- Conditions for Patentability
Something might be marketable (desired by consumers
when offered for sale) but not qualify for patent protection. Many companies
make fortunes on sales of unpatented items.
Something might be patentable (novel, useful and
non-obvious) but not marketable to a mass of consumers.
As attorneys, we can help you assess and advocate
before the United States Patent and Trademark
Office that your invention is patentable. However, we do not have a crystal
ball to determine if that patent will make a profit. Marketing involves many
factors and you should seek, when appropriate, the advice of professional or
expert consultants to assist you in this process.
Myth: a patent gives the patent owner the right to make a product.
Patenting an invention allows the inventor to prevent others from making, using or selling
his invention throughout the United States without the inventor’s consent. This
is distinguishable from the right of the inventor to make or use an invention.
Conceivably, an inventor may obtain a valid patent and still not be free to
manufacture and sell his invention without infringing on the rights of another
valid patent or violating a law/regulation (FDA approval for example) or court
A competitor may hold a
dominant claim and there may be no way to practice your invention without
infringing the claims of the competitor. Your competitor’s patent may preclude
you from practicing your invention (i.e., no "right to use"). At the same time,
your patent may be used to prevent your competitor from practicing your
improvement (i.e., "right to exclude"). All is not lost, there may be
cross-licensing opportunities for both parties.
Most commonly, inventors benefit from patent rights by selling the patent
rights, licensing the patent rights (exclusively or non-exclusively) or acting
as the exclusive manufacturer of the product.
Patents are valuable business assets that may be used as collateral for
financing or may be liened by a mortgagor securing a debt. In some cases,
patents act as a deterrent to potential competitors and as a marketing edge to
provide customers and investors with a sense of “cutting edge” technology or
limited monopoly on a market segment.
Patents are a form of property. Let’s compare them to something more familiar – real estate. A real estate deed might give claim to a few square
feet of space, or hundreds of acres. In the same manner, a patent might give claim to a narrowly defined invention or a broad–ranging invention.
Broader patents are desirable, but they are harder to defend and enforce. Narrow patents, on the other hand, may be easy to design around.
The goal is to find some point in the spectrum between both extremes.
Myth: the patent protects everything described in the text of the specification and depicted in the drawings.
As a deed defines the metes and bounds of real property, the claims define the
metes and bounds of this intangible property. Claims must be read in view of the
specification, and as such, the detailed description of the invention, in
combination with the drawings, acts as a dictionary of sorts in defining the
terms used in the claims. An objective test is applied of what one of ordinary
skill in the art would have understood the term to mean.
While a disclosure may be written broadly, the claims may be drawn
narrowly and thus will limit the scope of coverage to the claimed subject
matter. As such, an alternative embodiment disclosed in the specification but
not claimed cannot be the basis of an infringement claim.
The scope of the patent may also be limited by the enablement contained in the
Let’s look at an example:
Description of a Preferred Embodiment
Figure 1 depicts a widget with a
substantially triangular configuration comprising a first member 102, a second
member 104 and a third member 106. First member 102 and third member 106 comprise a length of
from about one inch to about 36 inches. Second member 104 comprises a length of from
about one inch to about 12 inches.
* * * * *
Widget is desirably formed a plastic material. As used in this specification, plastic
material shall mean a polyethylene composition.
* * * * *
1. A widget comprising a first member, a second member and a third member
wherein said first member comprises a length of about 8 inches, said second member
comprises a length of about 8 inches, and said third member comprises a length of
about 8 inches.
2. A widget as described in claim 1, wherein said widget comprises a plastic
Potentially infringing product #1 is a three-sided widget made of polyethylene, each side being 12
While the specification disclosed widgets with first and third sides ranging from about
one inch to about 36 inches, the claim was directed to first and third members
with lengths of “about 8 inches.” Similarly, while the specification disclosed
widgets with a second side ranging from about one inch to about 12 inches, the
claim was directed a second member with a length of “about 8 inches.” Thus,
there is no literal infringement of the first claim.
product #2 is a three-sided widget made of polypropylene, each side being 8
This time, we will
find literal and direct infringement of claim 1. However, while plastics are
commonly known in the art to include a wide range of compositions, and a
plethora of treatises may be provided to describe a wide rage of plastic
materials, the specification defined plastics very narrowly to include only
polyethylene compositions. As such, the claim will not be read to include
polypropylene compositions, and thus, there is no literal infringement of claim
There are two main types of patents issued by the United States Patent &
Trademark Office (USPTO) – utility and design. (There are also plant patents.)
Utility patents may be submitted as provisional or non-provisional
applications. Provisional patents may be followed by a non-provisional utility
patent within one year of the filing date.
Provisional patents are often recommended for independent inventors early in the
development process. There are several factors that make them a good option for
some independent inventors. Since provisional patents do not require
claims or formal drawings, they are less costly to prepare and file. However, as
long as they are followed with a utility application within one year, they
may claim priority to the earlier filing date of the provisional application.
This allows the independent inventor to spread the patent application costs over the
course of the year. Not surprisingly, this comes with a price. The
examination of patent claims, and therefore issuance of an enforceable patent,
is delayed by the same period.
During the year, inventors are encouraged to market or produce their invention
with their patent pending. Many inventors discover that the invention is not the
financial windfall they had envisioned and elect not to proceed with the utility
application, thus having risked only a portion of the full utility application
cost. Additionally, over the course of the year, 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.
A utility patent protects the function of an invention. 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.
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. 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. The term of a design patent is 14 years from the
date of issuance. A design patent should only be chosen if the appearance
of the invention is important, otherwise utility patent protection should be
Why patent a design?
“I have worked hard to develop a good reputation. Putting the products side by side,
consumers might be confused as to which is mine. They might buy my competitor’s
product thinking it is mine. I want to prevent copycat devices from usurping my
Patent law statutes broadly defines a patentable invention as “any new and
useful process, machine, manufacture, or composition of matter, or any new and
useful improvements” to any of these types of inventions.
Establishing patentability is a legal art. An invention must be described in
such a way that a meritorious argument can be maintained with the Examiner that
the invention is novel and non-obvious. The Patent Examiner’s job is to locate prior
art that can be used to establish that the invention is not novel, or is obvious
in light of prior art. The skilled patent professional must describe features of
the invention in ways that open the door to alternative basis for argument. For
example, ranges of measurements (e.g. “side A comprises a length of from about 1
inch to about 12 inches”) are commonly used as well as relative measurements
(e.g. “preferably, side A comprises a length of from about 50% to about 75% the
length of side B and 10%-20% the length of side C”). Differentiation from the
prior art is critical, requiring a combination of creativity and legal
maneuvering based upon the disclosure. As such, highly creative, skilled
practitioners have prosecuted patents to issuance (over frivolous application
rules) for a method of covering a
bald spot by combing hair over it and a method for swinging on a common swing
set. Frivolous patents are not endorsed by this office, but the creativity of
these practitioners is admired.
An inventor cannot receive a patent for perpetual motion devices, abstract
ideas, laws of nature, or unmodified naturally occurring substances or living
An inventor cannot receive a United States patent for an invention publicly
disclosed, used in commerce or offered for sale more than 12 months ago. Public disclosure
includes any sale, exhibit at trade show, or printed in a publication, with a
The term "process" is defined by law as a process, act or method, and primarily
includes industrial and technical processes. Process and Business Methods
will be discussed in greater detail later. The term "manufacture" refers to
articles which are made, and includes all manufactured articles. The term
"composition of matter" relates to chemical compositions and may include
mixtures of ingredients as well as new chemical compounds.
Genetically-engineered microorganisms and computer software-based inventions are
newly covered subject matter qualifying for patentability.
Myth: the inventor needs to make a prototype before he prepares a patent
Myth: the inventor needs to scientifically explain how or why his invention
The USPTO does not require the inventor to propose a theory, or even understand,
how or why their invention works. The inventor is required to reduce
his invention to practice. This may be accomplished by actual reduction to
practice, that is, to construct a working prototype, to receive a
patent. This may also be done by constructive reduction to practice. The inventor must only be able to describe the invention in sufficient
detail so it is enabled, that is, so that one skilled in the art may make and
practice the invention from the disclosure within the patent without undue
For example, an inventor might accidentally mix two liquids together and observe
that the combination has super properties. These super properties have a useful
application. In preparing a patent application, the inventor is not required to
explain the chemical basis for these super properties, nor even identify what
they are. The inventor is merely required to disclose how to make and use the
invention, that is, how much of each liquid to mix together and critical
conditions that may be pertinent (temperature, flow rates, pressure, agitation
methods, etc.) and how to apply it in its useful application. He can describe
the result he observed without having to propose a theory for its mechanisms.
Novelty (35 USC 102)
In order to be patentable, an invention must be novel. The USPTO will reject an
application under 35 USC 101 if the invention was:
- Already known or used by others in this country prior to the invention;
- Patented or described in a printed publication in another country prior to the
invention or invention by applicant;
- In public use or on sale in this country more than one year prior to the date of the United
States patent application;
- Abandoned by the inventor;
- Not invented by the applicant;
- Applicant (including legal representatives and assigns) applied for a patent or filed an
inventor’s certificate in another country more than 12 months prior to
application in the United States;
- Described in a United States published patent application by another prior to the
invention or invention by applicant (PCT applications in English and
designating the United States will be treated as United States national
- Described in a United States patent application of a granted patent by another prior
to the invention or invention by applicant (PCT applications, even when in
English and designating the United States, will NOT be treated as United
States national applications);
- Described in a United States patent filed by another prior to the invention;
- Described in another inventor’s United States patent application that was published prior
to the invention; or
- During the course of an interference action, another inventor establishes that he or another
inventor conceived of the invention in the United States prior to the applicant and did not abandon, suppress or conceal it and was
diligent in reducing the invention to practice.
Non-obvious Subject Matter (35 USC 103(a))
An invention is unpatentable, if taken as a whole, and in light of the prior
art, would have been obvious to a person having ordinary skill in the art to
which the subject matter of the invention pertains.
For example, prior art widgets use a screw bolt assembly as a fastener. Inventor
proposes to eliminate the bolt in favor of a threaded screw hole, citing
advantages such as less parts, less manufacturing cost, a more functional “flush
surface” at the location of the fastener and a more secure attachment of the
respective parts. An Examiner might potentially raise an obviousness rejection,
claiming that one of ordinary skill in the art would be aware of a variety of
fastening mechanisms, particularly threaded screw holes, and it would have been
obvious to substitute one in favor of the other. The inventor could rebut the
Examiner’s position with a showing of “unexpected benefits” of the threaded
The Manual of Patent Examination Procedure (MPEP) require 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
- Abstract of the Disclosure
- Signed Oath or Declaration
Customarily, most patent applications also contain a “Background of Invention” section with
subdivisions for field of the invention and objects of the invention.
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
- Enablement (enough information for a skilled person in the art to make it/use it without undue
- Best Mode (also referred to as the preferred embodiment)
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 will be required for most inventions. 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
Patent drawings should illustrate the novel concepts and significant features of
Oath or Declaration
A utility or design patent application requires an oath or declaration from each inventor.
Fees depend, in part, upon the size of the entity with an ownership
interest in the application. The United Sates PTO recognizes two classes of
patent applicants: small entity and "other than small entity." In order to encourage
inventions and the progress of science, the United States PTO 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
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 $500. Additional fees will be incurred
for lengthy applications, additional claims and other conditions. The current
fee schedule is available on the USPTO official website. A basic provisional
patent will incur a filing fee of $100 and a design patent will incur a basic
filing fee of $205.
To protect corporate
assets, it is common practice for employees to sign an employment agreement at
the time of their employment stating that all inventions (both patentable
inventions and inventions that are not patentable but may qualify as trade
secrets) and proprietary information related to the business of corporation and
all inventions made with corporate time, materials or facilities, belong to the
corporation. Even with no obligation to assign, an employer may be entitled to
“shop rights” in inventions.
With limited exceptions, a patent application may
only be filed by the inventor. Thus, someone who sees the invention of another
would be precluded from filing a patent application based upon that invention.
However, modifying and improving upon the “borrowed” inventive concept may
establish inventorship and qualify for patent application filing.
Patent law requires that any person substantively involved in
the preparation or prosecution of a patent application and who is associated
with the inventor or the inventor’s assignee has a duty to provide all material
information that might be pertinent to a rejection of the application. This duty
extends to each named inventor, each attorney or agent preparing or prosecuting
the application, and those substantively involved in the preparation or
prosecution process. The duty applies to individuals, not to their organization
or company. The duty is owed to the United States PTO as long as
the application is unissued and the claims to which the material information
applies have not been cancelled or withdrawn. The duty requires
disclosure of all information material adverse to patentability such as prior
art, prior public sales and uses, offers to sell, prior invention by another and
inventorship conflicts. There is no duty to disclose information favorable to patentability.
Patent procedural rules impose an even broader duty of candor and good faith.
Material information is that which is not cumulative to information already in
the record. It is also information that is inconsistent with
applicant’s assertions. Individuals subject to the duty must disclose all
material prior art or other information they are aware of at the time the
application is filed or they become aware of during its prosecution. This
includes co-pending applications by the applicant.
Disclosure by a pro se inventor, agent or attorney is made in writing to
the United States PTO. Other individuals may satisfy their duty by disclosing
the required information to the inventor, agent or attorney who in turn will
disclose it to the United States PTO.
Manual of Patent Examining Procedure rule 2004 lists procedures to aid in compliance and disclosure. These are
suggestions, not requirements.
With all of that said, the United States PTO does NOT investigate, comment upon,
reissue or reject applications based on disclosure problems. A court is the best
forum to consider disclosure problems and fashion an equitable remedy to fit the
facts of the case. Error without deceptive intent, if averred in a reissue oath
or declaration, may be corrected by the United States PTO.
Patents are often
grouped into “patent families” wherein similar technology is disclosed. The
interrelationship between the members of this family may be described in terms
of parent-child relationships. For example, if – after the filing of an
application for letters patent – the inventor wishes to file a second set of
claims drawn to the same invention, then a child application may be filed which
“claims priority” from the original application. The priority claim is honored
with respect to the subject matter that was disclosed in the parent application,
provided the parent meets 35 USC 112 standards.
examination of the application, the Examiner will consider the “prior art” – the
art that is “prior” to the filing date of the application in question. If the
priority claim is proper, the Examiner will use the filing date of the parent
application to determine what is considered prior art. If the priority claim is
not proper, then the Examiner will use the filing date of the child
application. Should a critical reference appear between the filing of the
parent application and the filing of the child application, such a priority
claim may be the difference between receiving an allowed patent and receiving a
rejection. Generally, a priority claim must be perfected within four (4) months
of filing the child application or within sixteen (16) months of the filing of
the parent to which priority is being sought.
Generally, the term of a patent will run for twenty (20) years from the earliest
priority date. As such, child applications usually enjoy a progressively
shorter term. Certain types of priority claim do not diminish the patent term
(see, for example, provisional priority). In addition, certain types of patent
applications, such as design applications, are not eligible to make priority
Types of Priority Claims
Foreign 35 USC 119(a-d)
The applicant may claim priority from a patent filed in a foreign patent office
if that foreign office is a member of the Paris Convention Treaty and the child
U.S. application is filed within one (1) year of the foreign filing date. The
parent and child must effectively be the same invention and make the same claims
with the same inventors.
Domestic – General
To claim priority to a second United States patent application, several
requirements must be met. Firstly, the parent application must be pending (i.e.
neither abandoned nor issued) before the United States patent office. Secondly,
the parent application and child application must have at least one inventor in
common. Thirdly, for the claim to be honored, the parent application must meet
35 USC 112 standards (i.e. provide an enabling description, etc.). Fourthly,
the filing of the parent application must be complete – all fees and required
signatures having been received by the patent office. Additionally, the child
application must explicitly request the priority claim, usually in the first
sentence of the specification.
Domestic – Provisional 35 USC 119(e)
Claims to provisional patent applications are unusual in that they do not count
against the patent term of the child application. However, care must be taken
to ensure the provisional meets 35 USC 112 standards, else the priority claim
will be fruitless.
Domestic – Continuation/Divisional 35 USC 120
When a claim for priority is being sought, the applicant should consider whether
or not to add “new matter” (i.e. improvements or expansions of the
specification) to the application. If the inventor has discovered a new and
improved method for practicing the claimed invention, then the inventor may be
required to include such improvements so as to comply with the “best mode”
requirements of 35 USC 112. However, if no new matter is added, then the child
application may be referred to as either a “continuation” or “divisional” of the
parent. If the priority claim is granted, then the child application will have
an effective filing date equal to the filing date of the parent application for
purposes of determining what is, and what is not, prior art. The term of any
patent that results from the child application will run from the filing date of
Domestic – Continuation-in-part 35 USC 120
When the child application contains “new matter” then the claims of the child
may be granted “split priority.” Since priority is only granted for subject
matter that is disclosed in the parent application, every claims must be
evaluated individually to determine what its effective prior art date may be.
If the invention being described by the claim is patentable using the disclosure
only of the parent application, then the filing date of the parent will be the
effective filing date for that claim. Conversely, if the child application is
necessary to render the claim patentable (for example, to provide an enabling
disclosure) then the effective filing date for that claim is that of the child
application. Although priority may be split on a per claim basis, the term of
the patent is not. The entire patent and all of its claims will have its patent
term calculated from the earliest effective priority date.
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 United States PTO.
After filing a patent application, an Office Action from the United States PTO
will usually be received within 18 to 36 months. (Some art units are so
overwhelmed with applications that it may even be 40-44 months.) Typically, the
first review of the application by the United States PTO Examiner is sent to the
applicant in the First Office Action. This may be final or nonfinal.
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.
It is then necessary for the patent professional to argue that your 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 typically
is 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 and another
opportunity to address the Examiner’s rejections. 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 United States PTO 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.
to Protect an Idea during the Early Stages – Nondisclosure Agreements or Provisional
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 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 only
limited 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. Conservative practice would
include the use of both provisional patents AND confidentiality agreements.
Infringement of a patent consists of the unauthorized making, using, offering for sale or
selling any patented invention within the United States. An individual may be an
infringer if he "actively induces infringement of a patent" or sells a product
knowing the same to be especially made or adapted for use in an infringement of
a patent. In the later case, he shall be liable as a "contributor infringer."
Enforcement of this right is essential to protecting the exclusive market
created by the patent issuance and protecting against encroachment upon those
exclusive rights by competitors. Under the doctrine of latches, knowledge of a competitor’s infringement, and
failure to timely act, may preclude a company from later enforcing the patent
against the competitor.
There were fewer than 800 patent infringement lawsuits in 1981, but that number ballooned
to nearly 3,000 in the year 2003. At the same time, the likelihood the courts
would rule for the patent-holder rose from 62% to 90%.
The claims of a patent define the scope of
coverage against infringers. The broadest valid claim is utilized to determine
infringement of the patent. The accused infringing product must literally "read"
on every element of the broadest valid claim in the patent. The patent
infringement will likely be on more than one claim in a patent. This is a
stronger litigation position for the patent holder. In defense of the
infringement allegations, the infringer may argue that the patent claims are
invalid because of prior art, lack of enablement and other challenges to
patentability. Should one or more claims be challenged (usually the broadest
claims) the existence of other infringed claims (narrower claims) is a fallback
Description of a Preferred Embodiment
Figure 1 depicts a widget with a substantially rectangular configuration comprising a
first member, a second member, a third member, and a fourth member. First member
and third member comprise a length of from about one inch to about 36 inches.
Second member and fourth member comprise a length of from about one inch to
about 12 inches.
* * * * *
Widget is desirably
formed a plastic material.
* * * * *
- A widget comprising a first member, a second member, a third member, and
a fourth member wherein said first member comprises a length of about 8 inches,
said second member comprises a length of about 8 inches, said third member
comprises a length of about 8 inches, and said fourth member comprises a length
of about 8 inches .
- A widget as described in claim 1, wherein said widget comprises a plastic
Potentially infringing product is an 8.1 inch square
composed of nylon 6-6.
The claim is drawn to a rectangular-shaped widget. One of ordinary skill in the
art would recognize a square as a particular type of rectangle. One of ordinary
skill in the art would recognize nylon 6-6 as a plastic composition. The “wiggle
room” of “about 8 inches” is a fact specific analysis, but would potentially
include a widget of 8.1 inches. The product is potentially infringing
independent claim one and dependent claim 2 and thus, an infringement action may be
viable. Consult your patent counsel!
When finding infringement on a utility patent, the meaning of the claims of the
patent is determined by the trial judge as a matter of law. When the meaning of
a claim is contested, many courts will hold a preliminary "Markman hearing"
(considering expert technical and patent testimony) to resolve the meaning of
the claim which defines the scope of the patent grant. Finding infringement on a
design patent requires determining if an ordinary observer would be deceived by
two substantially similar designs.
In determining the meaning of the claims, the judge will consider the claims,
the specification, the prosecution history, dictionaries, learned treatises, and
expert testimony. Inventor testimony may also be considered, but likely will
have little probative value since his subjective intent is not legally relevant.
Rather, an objective test is applied of what one of ordinary skill in the art
would have understood the term to mean. Claims must be read in view of the
specification, and as such, the detailed description of the invention acts as a
dictionary of sorts in defining the terms used in the claims. There is no parole
evidence corollary in patent law.
Where only insignificant differences exist between the elements of the claim and
the infringing product, the Doctrine of Equivalents may be utilized to find
infringement. The purpose of the doctrine is to catch unscrupulous copiers who
make unimportant and insubstantial changes and substitutions which, though
adding nothing,avoid the literal language of the claims.
For example,a patent recites “welding” to fuse two pieces together. A potential infringer
uses nails in his design. The issue becomes whether nails are equivalent to
welds. The analysis will turn upon whether welds were required to get the result
intended by the inventor. For example, was a watertight seal necessary? The
analysis may also turn upon whether the nails themselves were a significant
improvement in the art.
In the absence of an agreement to the contrary, the burden of enforcing the
patent right is on the patent owner. Once a patent has been assigned, the
assignor, no longer having any property interest in the patent, has no right to
enforce the patent against infringers. An assignee, as the party holding a
property interest in the patent, may bring an infringement action against an
infringer without the assignor joined as a party. An exclusive licensee
generally has standing to bring suit for infringement of the licensed patent
without joining the licensor as a plaintiff.
Exclusive licenses often contain a material provision that may place the burden
of legal costs on the licensor, licensee or jointly to both. In the absence of
an express covenant to the contrary, there is no obligation on the part of the
licensor to protect the licensee against competition from infringers. Often, the
duty is placed on the licensee to enforce his exclusive rights. The licensee
maintains control over the infringement litigation in these cases. In almost all
cases, even when the duty to litigate and the cost burdens are on the exclusive
licensee, there is a provision requiring the licensor to assist in prosecution
Nonexclusive licenses generally place more control in the licensor. The
licensee requires an explicit provision in the license allowing the licensee to
enforce a licensed patent, and the licensor must be joined as a plaintiff. The
costs of enforcement should be addressed in the license, as well as the control
each party has with respect to settlement, since the rights of both are likely
to be affected.
The sole remedy for patent infringement is civil action brought in federal
court. An action must be commenced by the patent owner. Co-ownership of patents
poses a potential problem for enforcing patent rights against infringers. Absent
an agreement to allow suit unilaterally, no single co-owner may sue a third
party for infringement without the other co-owners’ voluntarily joining the
suit. Appeals arising from an infringement action in federal district court,
are statutorily venued in the Court of Appeals for the Federal Circuit (CAFC).
For an owner of a patent to receive damages in any action for infringement,
there must be proof that the infringer had "notice" of the patent. Specific and
actual notice to the accused infringer charging infringement of the patent is
usually required and may be established by (i) marking the product, (ii) sending
a cease and desist letter to the infringer, or (iii) filing an action for
Marking the product in the form of “Patent No. 5,432,594” provides notice to the
public that the product is patented. By marking the product, the owner of the
patent is able to receive damages from an infringer back to the date the notice
was placed on the product, up to and including six years. Without the notice
placed on the product or packaging, the owner of the patent can only receive
damages if (i) he notifies the infringer of the infringement by sending a cease
and desist letter or by filing a civil lawsuit in Federal court for
infringement, and (ii) the infringer continues to infringe after the notice.
cease and desist letter to an infringer enables the accused infringer to bring a
declaratory judgment against the owner of the patent in an unfavorable or
inconvenient jurisdiction to the patent owner. Therefore, prior to sending a
cease and desist letter to an accused infringer, the patent owner should
consider filing an infringement action in a favorable jurisdiction to avoid
being unexpectedly brought into an unfavorable jurisdiction.
owner may seek injunctive relieve against the infringing party since the court
has the discretion to prevent violation of the rights secured by the patent "on
terms as the court deems reasonable." The court will consider (1) likelihood of
success on the merits (to be successful in a patent case, on the merits, the
patent must be valid and infringed), and (2) irreparable harm. The Court of
Appeals for the Federal Circuit has stated that irreparable injury must be
presumed where validity and continued infringement are clear.
The patent owner may also seek monetary damages. Damages that may be recovered in patent
infringement litigation include the patentee’s lost profits or royalty-based
damages. If the patent owner is able to prove with reasonable probability his
lost profits, then that amount is usually the measure of damages for the patent
owner. If lost profits cannot be ascertained, then a reasonable royalty is the
measure of the patent owner’s damages together with interest and costs as fixed
by the court. Punitive damages are also available. The court may make an award
of up to three times the amount of actual damages when the infringement is
determined to be willful.
An accused infringer may defend a charge of infringement by attacking the
validity of the patent or claiming that there is no infringement at all because
the accused product does not "read" on all of the elements of the broadest
claim. He may also defend by asserting the expiration of the patent for term
expiration or failure to timely pay maintenance fees.
In attacking the validity of the patent, an infringer may use prior art which
was not considered by the United States PTO examiner to prove that the patented
invention was obvious to one skilled in the art at the time of filing for patent
protection. Since every patent is presumed valid, the burden is on the party
seeking a declaration of invalidity. The accused infringer must prove by clear
and convincing evidence with respect to every claim that his product reads on
since the validity of a dependent claim is not determined by the validity of any
Most countries have patent laws, and a
person desiring a patent in a particular country must make an application for
patent in that country, in accordance with the requirements of that country.
The laws of many countries differ in
various respects from the patent law of the United States. In most foreign
countries, publication of the invention before the date of the application will
bar the right to a patent (In the United States, a patent may be obtained if
applied for within one year of publication). Most foreign countries require that
the patented invention must be manufactured in that country after a certain
period, usually three years. If there is no manufacture within this period, the
patent may be void or subject to grant of compulsory licenses.
The Patent Cooperation Treaty (PCT)
provides centralized filing procedures and a standardized application format for
patents in its 124 member countries. Timely PCT application provides an
international filing date in each country which is designated in the
international application and provides a report of search of the invention. It
also delays the time period for filing the national applications providing up to
30 months from the original U.S. filing date to file in any of the 124 member countries.
U.S. law requires that inventors with
inventions made in the United States obtain a license from the USPTO before
applying for a patent in a foreign country. Such a license is required if the
foreign application is to be filed before an application is filed in the United
States or before the expiration of six months from the filing of an application
in the United States unless a filing receipt with a license grant issued
earlier. Any denial of a foreign filing license is indicated in the filing
receipt mailed to each applicant. This may be the case for example in
circumstances where the inventor involved technology necessary for national
defense purposes. The USPTO may order that an invention be kept secret. If the
invention has been ordered to be kept secret, the consent to the filing abroad
must be obtained from the Director of the USPTO during the period the order of
secrecy is in effect.
The patent laws of the United States make
no discrimination with respect to the citizenship of the inventor. Any inventor,
regardless of his/her citizenship, may apply for a patent on the same basis as a
U.S. citizen. There are, however, a number of particular points of special
interest to applicants located in foreign countries.
The application for patent in the United
States must be made by the inventor and the inventor must sign the oath or
declaration (with certain exceptions), differing from the law in many countries
where the signature of the inventor and an oath of inventorship are not
necessary. If the inventor is dead, the application may be made by his/her
executor or administrator, or equivalent, and in the case of mental disability
it may be made by his/her legal representative (guardian).
No U.S. patent can be obtained if the
invention was patented abroad before applying in the United States by the
inventor or his/her legal representatives if the foreign application was filed
more than 12 months before filing in the United States. Six months are allowed
in the case of designs patents.
An application for a patent filed in the
United States by any person who has previously regularly filed an application
for a patent for the same invention in a foreign country which affords similar
privileges to citizens of the United States shall have the same force and effect
for the purpose of overcoming intervening acts of others as if filed in the
United States on the date on which the application for a patent for the same
invention was first filed in such foreign country. This is the case, provided
the application in the United States is filed within 12 months (six months in
the case of a design patent) from the earliest date on which any such foreign
application was filed and claims priority under 35 U.S.C. 119(b) to the foreign
application. A copy of the foreign application certified by the patent office of
the country in which it was filed is required to secure this right of priority.
If any application for patent has been
filed in any foreign country by the applicant or by his/her legal
representatives or assigns prior to his/her application in the United States, in
order to claim priority under 35 U.S.C. 119(b) to the foreign application, the
applicant must, in the oath or declaration accompanying the application, state
the country in which the earliest such application has been filed, giving the
date of filing the application. If foreign priority is claimed, any foreign
application having a filing date before that of the application on which
priority is claimed must also be identified in the oath or declaration. Where no
claim for foreign priority under 35 U.S.C. 119(b) is made in the U.S.
application, the applicant should identify in the oath or declaration those
foreign applications disclosing similar inventions filed more than a year before
the filing in the United States.
An oath or alternatively a declaration
must be made with respect to every application. When the applicant is in a
foreign country the oath or affirmation may be before any diplomatic or consular
officer of the United States, or before any officer having an official seal and
authorized to administer oaths in the foreign country, whose authority shall be
proved by a certificate of a diplomatic or consular officer of the United
States. The oath is attested in all cases by the proper official seal of the
officer before whom the oath is made.
When the oath is taken before an officer
in the country foreign to the United States, all the application papers (except
the drawing) must be attached together and a ribbon passed one or more times
through all the sheets of the application, and the ends of the ribbons brought
together under the seal before the latter is affixed and impressed, or each
sheet must be impressed with the official seal of the officer before whom the
oath was taken. A declaration merely requires the use of a specific averment
found in 37 CFR 1.68.
If the application is filed by the legal
representative (executor, administrator, etc.) of a deceased inventor, the legal
representative must make the oath or declaration.
When a declaration is used, the ribboning
procedure is not necessary, nor is it necessary to appear before an official in
connection with the making of a declaration.
A foreign applicant may be represented by
any patent attorney or agent who is registered to practice before the United
States Patent and Trademark Office.
There are many “standard form” confidentiality agreements available. In general,
these forms may “do the trick,” however, be sure that the recitals set forth the
circumstances surrounding the disclosure and consideration is expressly set
forth. Broad, inclusive definitions of confidential information are desirable,
however, always be specific where possible, especially by referencing trade
names, trade marks, service marks and patents. Consider including a provision
that no license or joint venture is implied. Consider a provision discussing
which employees have access and how employees of a business will be required to
maintain confidentiality in handling confidential information.
Many standard agreements require oral conversations to be summarized in writing
and notice of confidentiality to be sent to the receiving party. This creates a
presumption that anything not put in the writing is not confidential. In working
with independent inventors, my experience has been that this can be burdensome,
is usually not done (or done adequately) and causes unintended waivers of
confidentiality. Independent inventors believe that the signing of the
confidentiality agreement is enough to protect them, despite all of the warnings
and instructions you may offer during counseling. Even when an attempt is made
to comply with the writing requirement for oral conversations, the writing may
create litigation issues as to whether the written summary accurately reflects
the conversation content. Consider a Presumption of Confidentiality provision:
The parties further
acknowledge and agree that all information disclosed …shall be presumed by the
parties to be the Disclosing Party’s Confidential Information …
Another issue I encounter is that survivability clauses in most standard
agreements are ambiguous. It may be difficult to determine how long the parties
are obligated to keep things confidential. Consider expressly defining the
period, for example, with language requiring continued obligations:
- during the period of the business relationship
- two years after the termination of all business relationships
- until the Confidential Information no longer qualifies as a trade secret
- written notice that no longer must be kept confidential
Lastly, many standard forms to not contain language about equitable remedies for
breach. This may make it more difficult to obtain a restraining order to prevent
the other party from improperly using confidential information. Consider
including provisions acknowledging the injunctive remedy and provisions to
recover attorneys fees if you have to enforce the confidentiality agreement.
There are some general exceptions to what is deemed confidential information:
It is also important to note that these assets are also subject to other statutory
- Corporate dissolution (to shareholders)
- Bankruptcy (to trustee)
- Perfected security interest (to secured creditor)
- Credit judgments (to judgment creditor)
- Mechanical parts and devices
- Chemical compositions
- Processes for making these mechanical parts and devices (or chemicals)
- Methods of using these mechanical parts and devices (or chemicals)
- Intermediate products
- Component parts
- Manufacturing processes
- Equipment/apparatus to make products, intermediates and components
- Equipment/apparatus to perform processes
- Methods of using products, intermediates and components
- Improvements to processes
- Improvements to apparatus or components
- Software algorithms
- Business methods
- Ornamental, non-functional designs
- Novel and useful applications of existing things
- Novel and useful methods of doing business
Often, a patent is on a small part of a device,
not on the whole machine. For example, a patent on a unique valve assembly or
paper feed mechanism rather than an entire printer.
Improvements on small parts or processes are potentially patentable subject matter, as well
as new configurations of existing parts. The key is “novel and nonobvious.” It
is useful to counsel your client to make the following inquiries:
- What are the problems associated with the existing devices or processes?
- Have previous attempts to resolve these problems been made in the art, and if so, how have they been inadequate?
- How specifically does my improvement address the problem?
- Why was it not an obvious solution?
- Does my idea result in significant cost savings in manufacturing the product?
- Does my idea make the product more mechanically reliable?
- Does my idea add or enhance a key feature or function (speed, size, etc.)?
- In utilizing my idea, will my product be distinguishable over my competitor’s product in way that is attractive to consumers?
Cost-efficiency in manufacturing is a competitive advantage. Ways of producing a component may be patentable subject matter, including:
- Use of different materials
- Different process for producing (injection molding vs. cut-stamp-bend plastic parts)
- Environmentally minded improvements in existing processes (less energy consumption, less waste, less toxic raw materials,etc.)
Start thinking about patents when your client mentions in conversation things such as:
- “My widget simplifies the drudgery of this repetitive task”
- “My widget allows me to do this task three times faster”
- “My widget makes the task safer or more ergonomic for the worker”
- “This widget has been around for 25 years and used by auto mechanics….it is not obvious and no one has ever tried to use it
on printers/copiers, but it actually works great in this particular application”
- “I have always seen widget A, but it does not
have this great feature of widget B. If only someone combined the features of
both into one superwidget…….”
Myth: You can not obtain a patent on something that incorporates someone else’s widget
Truth: patented widget A combined with my nonobvious and useful improvement is potentially patentable
Algorithm = patent
Same process could be carried out in C or C++, so
you want to patent the algorithm and protect the architecture or strategy of
Code expression = copyright
Code writing is an art – many people can write
code for the same function, but some are more efficient than others, or more
suited to particular applications
While an application is
pending at the United States Patent and Trademark Office, it is considered
“patent pending.” It will be pending until it is abandoned by the applicant,
receives a final rejection that is not responded to within the 3 or 6 month time
period permitted, or is issued as a patent. It is important to note that the
right to exclude does not attach until a patent is issued. However, a product
may be marked “patent pending” to deter other competitors from investing in
competing devices. In some cases, provisional rights may be granted before
issuance of the patent.
Once an application for
Letters Patent is filed, the applicant is entitled and encouraged to mark the
patented item as “patent pending.” Once the patent application is issued as a
United States patent, the Patent Act raises this to a duty to mark for issued patents. See
Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1443, 46 USPQ2d 1001, 1006
(Fed. Cir. 1998), “The marking statute serves three related purposes: 1) helping
to avoid innocent infringement…2) encouraging patentees to give notice to the
public that the article is patented, and 3) aiding the public to identify
whether an article is patented.” Failure to mark a product or otherwise place
an infringer on notice may limit the damages to the date of first notice. See
35 U.S.C. 287. This same section places a burden upon the patentee to ensure
the patent holder’s licensees comply with the marking statutes. The fact that
the final product may be non-visible in its final state does not obviate the
duty to mark such product. To properly claim the “patent pending” status, the
claims should describe the article so marked. When the claims of the patent
describe a process, there is no duty to mark. However, damages may nevertheless
be limited to the date of first notice.
Penalties can be
incurred for the false marking of products as patented or patent pending under
35 USC 292. The statute authorized a fine of “not more than $500 for every such
offense.” False marking includes counterfeit markings, false “patented”
marking, and false “patent pending” marking. The statute further authorizes
“any person” to file suit – the person need not show injury. A claim of false
marking must be supported by evidence of actual intent to deceive.
Section 292 is only invoked if, in fact, the underlying article is truly
unpatented. Thus, if multiple patents are listed, only one of which pertains to
the marked article, the item is considered patented, and section 292 is not
Design patents may be available to protect
surface ornamentation of 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 focus
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
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.
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.”
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.
For 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 thing 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.
Design patent protection may complement and bolster trademark protection, unfair
competition and trade dress protection. They involve similar concepts in the
tests for infringement, but provide very different protection and enforcement
means for the inventor. An inventor should seek the counsel of his attorney to
evaluate the several options available and determine a strategy for protecting
these property assets.
An inventor must elect between copyright and design patent protection because of the
different terms of protection, different penalties for infringement, and
different procedures for procuring protection.
While trade secrets are relatively inexpensive to protect at the outset, their long-term maintenance costs may be relatively high in
comparison with the expense of a patent.
The U.S. Patent and Trademark Office (USPTO) has a dual fee structure, one for Small Entities (defined below), and another for “other
than a Small Entity.” If an entity that is other than a Small Entity pays its fees as if it was a Small Entity, then any patent that results
or is maintained in that manner is deemed to be unenforceable for fraud on the USPTO.
37 CFR1.27 provides in pertinent part: (a) (2) A small business concern, as used in paragraph (c) of this section, means any business concern that:
(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights
in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit
(ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. (Generally, less than 500 employees in
the entity and all affiliated companies, combined.)
(b) Establishment of small entity status permits payment of reduced fees.
(1) A small entity, as defined in paragraph (a) of this section, who has properly asserted entitlement to small entity status pursuant to paragraph (c)
of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was
asserted. Establishment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h) (1).
(1) New determination of entitlement to small status is needed when issue and maintenance fees are due. Once status as a small entity has been established
in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue
fee is due or any maintenance fee is due.
(2)Notification of loss of entitlement to small entity status is required when issue and maintenance fees are due. Notification of a loss of entitlement to
small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance
fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small
entity status is no longer appropriate must be signed by a party identified in §1.33(b). Payment of a fee in other than the small entity amount is no
sufficient notification that small entity status is no longer appropriate.
(h) Fraud attempted or practiced on the Office.
(1) Any attempt to fraudulently establish status as a small entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted
on the Office.
(2) Improperly, and with intent to deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced
or attempted on the Office.
Small Entity fees are generally one half of those of the regular USPTO fees. Patent applicants should strive to pay the lower fees where it is entitled
to do so, but to pay the higher fees when failure to do so would prejudice the enforceability of the patents.
Since each country has jurisdiction within its own borders, an inventor must file a patent application in each country
where he wants to enforce his rights. Since the costs are high, an inventor may elect to strategically file for patent protection
in only major markets, countries of major competitors, or major ports where international trade is transported.
Foreign patent filing may be done by direct “national filing” in each country where patent rights are desired. The European
Patent Office can accept a single application for one or more European countries. A single “PCT” application can be filed to
preserve rights in all countries who are party to the Patent Cooperation Treaty. In most cases, you must file these applications
within one year of your first US application on the invention.
It is important to know that there are important differences between the U.S. patent system and the patent systems in foreign countries.
In the U.S., we enjoy a one-year grace period for filing a U.S. patent application after public use, public disclosure, or offer for sale.
In most foreign countries, you must have filed your U.S. patent application disclosing your invention on a non-confidential basis in order
to avoid losing your foreign rights before you file a U.S. patent application. Foreign patent rights can be lost if you take your new product
to a trade show, put it on a website, start using it in its intended use/manner or send it to manufacturers or promotion companies before
you file a U.S. patent application. Then, for those countries which have signed the Paris Convention (notably not India and Taiwan), you
have one year from your original filing date within which to foreign file your application (six months in the case of design patents).
You have several options. If you are only going to file in a couple of countries, you will probably want to file directly in
those countries. In Europe, filing in the European Patent Office is often the most efficient route. If you want to file in many
countries around the world, or don’t know which countries to file, then the Patent Cooperation Treaty (PCT) is preferable. You can
preserve your foreign rights while you wait to see how the invention does in the market before you make a final decision and large
investment. One advantage of a PCT application is that you are able to wait until search results are received from the international
searching authority before having to spend large sums of money filing in many individual countries.
Filing a Patent Cooperation Treaty application listing most countries of the world costs about $3,000 – $4,000. (Application
filing fees are $2,000 – $3,000 and included in this estimate.) No translations are required at this stage. Filing the PCT
application buys up to 30 months time (24 months in some countries) and a search from the European, Japanese, U.S., or Korean
Patent Office. After you have seen how your invention sells, and you have seen what prior art the U.S. Patent Office and the
foreign search authority have found, you should be in a much better position to decide whether it is worth spending around $10,000 to
file a European Patent Application or to file in other countries.
As a rule of thumb, you can expect that it will cost about $5,000 – $6,000 per country (plus translation costs) to obtain a
foreign patent in addition to the cost of filing the PCT application.
Our office assists clients with foreign filing around the world. Our clients only need to interface with one firm who is
familiar with their case and needs to meet all of their filing needs.
This concludes part 2 of my 3 part patent guide. The third and final part will be live next week so please follow my blog so you will know as soon as it does.
Are you a first time inventor and really want the white glove treatment when it comes to professional legal council for patent services? I am Tracy Jong and I am a patent attorney located in Rochester, New York. Let my staff and I help you through the patent filing process and give yo peace of mind that the application will be done right the FIRST time.