Posts in Patent Basics

I continually preach to inventors the need to follow what I call a “business responsible” approach, which is really just my way of counseling inventors to remember that the goal is to not only invent but to hopefully make some money. Truthfully, the goal is to make more money than what has been invested, which is how the United States Congress defined “success” in the American Inventors Protection Act of 1999.

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…

The truth is you cannot patent or protect an idea or a concept. However, it is also an undeniable truth that all inventions start with an idea, but an idea is not something that can be protected by any form of intellectual property protection. Said another way, you simply cannot patent an idea or concept. Similarly, you cannot copyright or trademark an idea or concept. So what do you do when you have an idea? How much is required in order to have an invention?

It is absolutely essential to think outside the box when describing your invention in any patent application. Stop and think about different ways that your invention can be made or used, even if you deem them to be inferior. Failure to disclose alternatives will almost certainly foreclose your ability to argue that those alternatives are covered by your claims and disclosure, which will prevent any issued patent from covering that which has been left out.

Of course, whether you are going to pursue licensing or manufacturing, for the first lesson is to realize that there are no tricks to invention marketing. It just takes work. Of course, you need to first determine what it is that you want to accomplish with your invention, which should be covered in some form of patent pending prior to beginning commercialization efforts. But once you have determined which path to follow you just need to focus your efforts and attention to identifying opportunities, pursuing them and not taking no for an answer. Certainly, there may be a time that you will have to retreat and move on, but those who succeed by and large share the same quality of determination. Determination is critical.

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.

A non-provisional patent application is a domestic U.S. patent application that has the possibility to mature into an issued U.S. patent if after examination the patent examiner is satisfied that the patentability requirements have been met. So you can get a plant patent, a design patent or a utility patent. Obviously, plant patents come from plant patent applications and design patents come from either design patent applications or design patent continued prosecution applications. Utility patents, however, can come from a non-provisional utility patent application, a divisional application, continuation, continuation-in-part and/or a reissue application.

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 . . . When you file a non-provisional application your application will be preliminarily reviewed by a Patent Office employee to see if all of the parts of the application, including the filing fee, are present. In order to file a non-provisional application you must fill out a number of forms, such as a Utility Transmittal Form, which really acts as a checklist to make sure you are including everything you need to file. Of course, you also must create the patent document itself. There are no forms for the patent document, which makes it challenging . . .

In order to protect an idea it must mature into an invention first. This means that you need to be able to explain to others how to make and use the invention so that they could replicate the invention after simply reading your description of the invention in a patent application. A patent application does not need to provide blue-print level detail, but rather it must teach those who have skill in the area you are innovating what they need to know to be able to carry out the invention. You also do not need to have a prototype, but you will need to be able to describe the invention with detail, providing sketches showing your inventive contribution. In order to get this far it is common for inventors to seek assistance from a product development company…

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… 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… 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 first time you will substantively hear from the examiner is when the examiner issues what is referred to as a First Office Action on the Merits (FOAM). At this point you are now truly beginning what most would refer to as prosecution of the patent application. The examiner has told you what, if anything, he or she thinks is patentable, and explained (usually in abbreviated fashion) what claims are lacking and why. The applicant, or attorney, must respond to each and everything raised by the examiner in a response filed no later than 6 months after the date of the First Office Action. Notwithstanding the 6 month period to respond, the Patent Examiner will set what is called a “shortened statutory period” to respond, which for an Office Action is 3 months. The shortened statutory period is the time period within which you can respond without having to pay a fee to respond. After the shortened statutory period, which can be 1, 2 or 3 months depending on what the Examiner sends, you can respond up to 6 months but only if you request AND pay for an automatic extension. Automatic extensions can get expensive, the cost goes up depending on how many months of extension you have to purchase. They are called automatic extensions because the Patent Office must grant the extension if you ask and pay for the extension. You should, however, plan on doing things within the shorten statutory period in order to conserve funds and in order to get the maximum patent term.