In order to obtain exclusive rights on an invention the law requires that the patent applicant particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information. Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the Patent Office has granted protection.
35 USC 112 requires that the applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention. The portion of the application in which he or she does this forms the claim or claims. The claims are in many respects the most important part of the application because it is the claims that define the invention for which protection is granted.
Like most statutes, Title 35 is not very specific with respect to the details regarding implementation of its directives. Notice that 35 USC 112 only states that a claim is necessary, but does not provide any information on the structure or format of the claim or claims. It is, therefore, necessary to turn to Title 37 of the CFR to expand upon what is actually required. The basic section that deals with claim requirements is 37 CFR 1.75.
A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent Office. The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the U.S. or “importing” the invention into the U.S.
In order to obtain a patent in the United States it is necessary to file a US patent application. One can either file a design patent application (which covers the way something looks, but not the way it functions), a plant patent application (to cover asexually reproduced plants) or a utility patent application. The utility patent application covers what most people refer to as an invention; namely devices, methods, compounds and software, for example. From this point forward we will limit our discussion to utility patents and utility patent applications.
In order to obtain a utility patent one must file what is referred to as a non-provisional application or a non-provisional utility application. It is called “non-provisional” to distinguish it from a provisional patent applications. This distinction between a provisional patent application and a non-provisional patent application became necessary in 1995 when the Patent Office first allowed the filing of provisional applications. A provisional application is one that essentially allows you to file and hold your place in line for 12 months. You can file a provisional application without many of the formalities required for a non-provisional application because the Patent Office will not review provisional applications.
Whether you are an independent inventor, an fledgling entrepreneur or a seasoned inventor who is going out on your own for the first time, the best thing you can do for yourself is to become familiar with the concepts and procedure associated with protecting your inventions. Obtaining patents is not easy for the uninitiated, and without some familiarity you will be wandering aimlessly and wholly incapable of making sound business decisions. Simply stated: Inventors who are completely unfamiliar with the patent process also won’t be able to help in any meaningful way with the patent process, and they will make poor strategic decisions that can lead to the loss of all rights.
So let’s start with the basics. A patent is a proprietary right granted by the United States federal government to an inventor who files a patent application with the United States Patent Office. Therefore, unlike copyright and trademark protection, patent protection will only exist upon the issuance of a patent, which requires you to file a patent application. Simply stated, if you do not obtain a patent you have no exclusive rights. This is why inventors should never disclose their invention outside of a confidential relationship. Such a relationship is legally created immediately upon seeking professional advice from a patent attorney or patent agent, but in all other situations if you do not have a patent you should be extremely cautious about disclosing invention information without a confidentiality agreement. What others learn from you outside of a confidential relationship can be used with or without your permission, and without giving you any compensation.
Furthermore, despite what you may have been told or read, keeping a detailed invention notebook, even if you mail a description of the invention to yourself, provides no exclusive rights whatsoever. It is extremely important to keep detailed invention records in case you ever need to prove the particular date you invented, which even in some extremely limited ways may still be relevant even under a first to file regime ushered in by the America Invents Act (AIA), but keeping such records will never provide you any exclusive rights. You absolutely must file a patent application and have that application mature into an issued patent in order to obtain exclusive rights to your invention.
The patent process actually starts well before you file a patent application or seek assistance from a patent attorney. Every patent application starts with an invention, and every invention starts with an idea. While ideas are not patentable, there will be a point in time when the idea you are working on comes into vision with enough detail to cross what I call the idea / invention boundary. To have a protectable invention you have to be able to describe it with enough detail so that someone of skill in the relevant technical field can understand how to both make and use the invention. Once you can do that, or once the patent attorney or patent agent you hire can, you are ready to file a patent application. If you are struggling at the idea phase please see Turning Your Idea into an Invention and Moving from Idea to Patent.
The first step in the patent process should really be a patent search. Doing a patent search is the only way to get a realistic idea about whether the invention is likely able to be protected. There is nothing wrong with inventors doing their own preliminary search, and in fact that is very useful task. SeePatent Searching 101. At some point as your project proceeds you should have a professional patent search done. Only with a professional patent search will you really discover everything that can be found. Just like a novice in your field would make mistakes, as a novice patent searcher won’t find everything that can be found, including many things that really need to be considered during the drafting stage of a patent application. After all, the whole point of a patent application is to articulate how the invention is unique. How can you do that without a comprehensive knowledge of what exists in the prior art?
In many cases, if not most cases, a patent search will suggest that at patent could be obtained. The critical question, however, is not whether a patent can be obtained, but rather whether a useful patent can be obtained. If you layer on enough specifics to any invention you will cross the point where the patent examiner will say your invention is new and non-obvious. But a patent that has such narrow claims is hardly useful for anything other than framing and hanging on the wall.
Just when you thought that the United States Patent and Trademark Office might be done with rulemaking for at least a bit, taking a collective sigh of relief after the final implementation of first-to-file rules on March 16, 2013, and new fees on March 19, 2013, the USPTO is back at it again. This time the USPTO is proposing rules necessary to implement he Patent Law Treaties Implementation Act of 2012 (PLTIA). SeeChanges to Implement Patent Law Treaty – Proposed Rules.
First, what is the Patent Law Treaty? The official party line is that the PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications. Still, I am just worn out from all the changes!
Historically the PLT was concluded on June 1, 2000, and entered into force on April 28, 2005. The United States Senate ratified the PLT on December 7, 2007, but it did not become effective in the United States upon ratification in 2007 because it is not a self-executing treaty. Legislation (i.e., title II of the PLTIA) to amend the provisions of title 35 to become compliant with our new treaty obligations was enacted on December 18, 2012.
The PLTIA amended U.S. patent laws to implement the provisions of the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title II. However, we have to look forward to additional proposed rules because the USPTO is implementing the Hague Agreement and title I of the PLTIA in a separate rulemaking. This proposed rules package pertains only to the changes required to implement the PLT.
A patent is a proprietary right granted by the United States federal government to an inventor who files a patent application with the United States Patent Office. Therefore, unlike copyright and trademark protection, patent protection will only exist upon the issuance of a patent, which requires you to file a patent application. You absolutely must file a patent application and have that application mature into an issued patent in order to obtain exclusive rights to your invention.
Furthermore, despite what you may have been told or read, keeping a detailed invention notebook, even if you mail a description of the invention to yourself, provides no exclusive rights. It has always been extremely important to keep detailed invention records in case you ever need to prove the particular date you invented. Notice the use of past tense in the previous sentence. On March 16, 2013, the United States moves to a first inventor to file system, which significantly changes U.S. patent law. For all intents and purposes inventors would do themselves well to assume that first inventor to file meansfile first!
That being said, there is a very limited grace period that is far more narrow than anything the U.S. has previously had. Inventors should not, in my opinion, rely on the grace period whatsoever — it is extraordinarily narrow. Nevertheless, it is conceivable that in some very limited circumstances it will be necessary to demonstrate that someone else derived your invention from you after you disclosed your invention. The only way to be able to hope to prove that will be with detailed records. Thus, record keeping should become more robust moving forward. You will not only need records that relate to how and when you arrived at the invention, but you will need records about how and when you disclosed your invention. Still, filing some kind of patent application as soon as possible will be the best move.
When filing a patent application it is extremely important to make sure that the invention is as fully described as possible. Patent attorneys say this all the time, but what does it really mean? How do you “fully describe” an invention in a patent application?
The answer is that you always want to have as much information about the invention as possible. You want to very broadly and generally describe the invention, but you also need to have high specific discussion of the various nuances of each and every aspect of the invention. Frequently inventors will say to me, “but I don’t want to be highly specific because then it will be easy for someone to get around my invention.” This is typically following with a very confident: “Therefore, I will only generally describe my invention without mentioning to many specifics.” That is a tragic mistake.
What happens if the patent examiner finds the broad, general description of your invention to be in the prior art? If you don’t have nuances described in your specification what will happen is you will get a rejection that is impossible to overcome. Those nuances are going to be how you distinguish your invention over the prior art, both the prior art you know about when you file but more importantly the prior art that you didn’t know about and couldn’t have known about because it hadn’t yet been published prior to your filing.
Senator Leahy (L) and Congressman Smith (R), shown at the signing of the AIA, sponsored this Patent Treaty implementation legislation.
On Wednesday, December 5, 2012, the House of Representatives passed two bills that are now await President Obama’s signature. The bill — S. 3486— implements both the Patent Law Treaty (PLT) and the Hague Agreement Concerning the International Registration of Industrial Designs. The U.S. Senate previously passed the same bill in the same form on September 22, 2012. Thus, the remaking of U.S. patent law and patent practice continues, and we will see more rulemaking coming from the United States Patent and Trademark Office.
S.3486 is the implementing legislation that modifies U.S. consistent with treaty obligations. The Senate ratified both the PLT and Hague Agreement in 2007.
With respect to the Hague Agreement, it will now be possible to file a single application in English at the USPTO and have that application be the basis for design protection in each country that has similarly adopted the treaty.
Whether you are an independent inventor, an fledgling entrepreneur or a seasoned inventor who is going out on your own for the first time, the best thing you can do for yourself is to become familiar with the concepts and procedure associated with protecting your inventions. Obtaining patents is not easy for the uninitiated, and without some familiarity you will be wandering aimlessly and wholly incapable of making sound business decisions. Simply stated: Inventors who are completely unfamiliar with the patent process also won’t be able to help in any meaningful way with the patent process. This is far more tragic than you might suspect.
Sure, if you can afford to you should hire a patent attorney to assist you. The patent attorney is there to, among other things, drag information about your invention out of you and translate it into the archaic legalese used in patent applications. The job of the patent attorney is to present your invention in a way that is most likely to accentuate the positive — namely the core uniqueness of your invention that will most probably lend itself to being determined to be patentably distinct compared with other inventions.
Even when hiring a patent attorney inventors still need to be engaged in order to give the patent attorney the best information available about the invention. This seems simple enough, but so many inventors fail to understand what information is important and why it is necessary. If you don’t understand the “why” you will you will almost never be able to provide all the information necessary.
While I don’t mean to imply that inventors are children, a perfect example of what I’m talking about comes from when parents attempt to teach their children not to touch the stove. Why? Because it is hot, of course. But does the child really understand that? No, not until they touch it anyway and connect “hot” with the pain they experienced. Experiential learning is formative for children, and in my experience the most powerful, formative type of learning — even for adults!
Inventors and entrepreneurs who shop around find that if they take their invention to a number of different patent attorneys they are likely to get a number of different quotes for services ranging from patent searches to patent applications. In fact, you have probably seen the ads on the Internet where a patent attorney or patent agent proclaim that they can prepare and file a U.S. nonprovisional patent application for some ridiculously low price, perhaps as low as $1,400. It is my opinion that there is no legitimate way to adequately prepare and file a nonprovisional patent application for $1,400. In fact, the lowest quotes we typically provide are for between $6,000 to $8,000 plus the filing fees and costs of drawings. See Cost of Obtaining a Patent. So why the great disparity? The first thing to understand is that like everything else in life, you get what you pay for. There is just no way to escape that economic reality.
Often times a patent attorney or patent agent will start with drafting a set of claims. In fact, it is probably accurate to say that about 70% of patent attorneys start with the claims. There is nothing wrong with starting with the claims, and there is nothing wrong with starting with the written description, it is a matter of preference really. The claims will be what defines the exclusive rights that are ultimately granted, and many patent attorneys and agents think in terms of claims. The difficulty comes, however, when a set of claims are drafted and then the written description is drafted to match the set of claims crafted. When this occurs the written description is no broader than the claims, which means that there is no support in the written description for anything other than the claims originally filed. This is one way that some bargain basement providers operate, and it can be catastrophic for the unknowledgeable inventor.