Your Obligations While Your Patent Application Is Pending

You've filed your patent application. Now, you have a patent pending. Do you just wait until you hear from the US Patent and Trademark Office (USPTO)? The answer is no. US Patent laws impose certain duties to you, the patent applicant, while your patent application is pending. Among your duties are:

Duty to Disclose Prior Art- Inventors and assignees have to disclose prior art that is known to them. Whether you are a solo inventor or you have assigned your patent rights to a company, you are bound with this duty. For companies that have been assigned the patent application, the duty extends to your lawyers and those who are closely involved in the patent application process. If they know of any prior art, they must be disclosed during the pendency of the application. The consequence of not fulfilling this obligation would be that the resulting patent can be invalidated.

Duty to Disclose Best Mode- When you obtain a patent, you are given exclusive rights to the invention for 20 years from the time you filed your first application. The term "exclusive rights" means you can exclude others from importing to the US or making, selling, or using in the US your patented invention. There is a reason why US laws provide you with exclusive rights. The reason is the government wants you to disclose your invention to the public so that the public can use your invention once your patent expires. Naturally, the government expects you to disclose at the time of your application the best way you think your invention should be practiced. This is referred to as the best mode. Before the America Invents Act (AIA) was signed into law in September 2011, failure to disclose the best mode used to be a basis for invalidating a patent. While it is no longer a basis for invalidating a patent, the requirement remains.

Keep Track of Deadlines- One of the deadlines is filing your foreign patent application. If you want to obtain foreign protection, you have to file your PCT application within one year from your first application filing to be able to preserve your priority date. Being able to preserve your priority date can help you avoid being barred from obtaining a patent for the invention due to certain activities, such as offers for sale, public use, or public disclosure. Another deadline to watch is the deadline to respond to office actions. An office action is a correspondence from the USPTO that includes the examiner's decisions about the patentability of your invention. In general, you only have 3 months from the time the office action is mailed to respond. You can extend this deadline up to 3 months by including a petition for extension of time and fees for the extension of time.

While not really an obligation, it is a good idea to make sure any improvements you have made to your patent pending product is included in the patent application. It is common for the product to be substantially improved after the patent application is filed either because inventors or companies have obtained more funding from investors, which have been used for research and development, or the patent pending product has been commercialized. Improvements to the patent pending product are often made after gathering consumers' feedback and experiences. The most valuable IP may very well be in the improvement, and it would be a shame if the patent does not protect the improvement. Improvements are typically protected by filing continuation applications. Continuation applications have to be filed before parent applications are either abandoned or issued into patents.

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Goals to Have When You Meet With a Patent Attorney

A patent attorney is responsible for helping individuals with the complicated legal patent process that is in place in the United States. There are many people who set up consultations with patent attorneys each and every day. When you meet with a patent attorney you are likely meeting to get an idea of how you can go through the legal patent process to get an idea or invention that you have legally protected. Meeting with a patent attorney is very important as finding and working with the right patent attorney can make a great deal of difference in the outcome of your patent. If you are planning on using the services of a patent attorney there are a few things that you will need to do in preparation. One of the first things is to write out all of the goals that you have for your meeting. Having your goals in mind will help make sure that you stay on track with your meeting and that you will get what you are looking for out of your encounter.

One of the first goals that you should have in place is to find out more about the attorney. You should be comfortable with the patent attorney that you choose. Make sure you ask questions about their experience. They should also be able to tell you how many patents they have written in the past. Feel free to ask more specific questions about how many patents they have had overturned as well. Ask questions about their background, it can be very helpful if they have a background in a similar field to your idea or invention but it is not necessary. One of the biggest goals for your meeting should be to get to know the attorney that you are considering to make sure that the two of you will get along and you know all of the important information about this person before you proceed.

Another goal you will want to have for your meeting is to provide detailed descriptions of your invention. Just as you need to be sold on your attorney, your attorney will need to be sold on your idea before he represents you. When you present, never surround you idea with a great deal of fluff or hide certain aspects of your idea. You will want to be as open and honest as possible with your patent lawyer so they have a clear vision of what it is that you are looking to have patent. A goal should be to give a professional presentation of your idea so your attorney knows just what it is that you want to have patented. Having goals like this in place is one of the best ways to make sure that your meeting goes how you want it to.

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Understanding the "Without Prejudice" Marking

Correspondence between parties in dispute is often marked "without prejudice", but what does this actually mean?

A patent, registered or unregistered design, copyright, or trademark is a legal right which can be used in Court to prevent another person from taking advantage of your intellectual creation. From reading news reports of large companies engaging in high-profile and extremely expensive litigation, you might be forgiven for believing that this is the normal way in which intellectual property rights are enforced. In practice though, it is usually preferable to resolve a dispute quickly and cheaply, without involving the courts, so that normal business can resume. Very often the parties in dispute, having settled their differences, continue with a mutually beneficial trading relationship. Most allegations of infringement are therefore resolved by negotiation, and courts hear only a small fraction of disputes.

The possibility of court action, backed by strong legal rights, is however an important part of negotiations. As a rights holder, your main bargaining chip is the threat that, if the infringing party does not substantially cede to your demands, then a strong remedy is available to you in Court. It is therefore vital that, in making concessions in an attempt to bring the dispute to a swift and inexpensive conclusion, you do not harm your position should negotiations prove unsuccessful, necessitating court action. The "without prejudice" privilege allows for free negotiations by preventing concessions made during unsuccessful negotiations from being admitted as evidence in subsequent court proceedings.

The "without prejudice" rule is often misunderstood. Many people, perhaps having received a letter marked "without prejudice", believe that by similarly marking their reply the privilege will apply to their correspondence as well. However, simply stating that a communication is privileged does not make it so. The substance of the communication must be that of a genuine attempt to bring the dispute to a conclusion, by making a concession to your previous position. Likewise, omitting to include the "without prejudice" label does not automatically mean that the rule does not apply, although it is good practice to be clear when you intend communications to be privileged. There is a risk that an ambiguous communication might be seen as an admission which cannot subsequently be denied in Court, rather than a without prejudice offer of settlement.

It is entirely possible for some parts of a letter to be "without prejudice", and other parts of the same letter to be admissible in Court. However, in the interests of clarity, it is normally considered best practice to keep "open" correspondence separate from "without prejudice" offers.

If an infringer proves unwilling to compromise during negotiations, and you subsequently achieve a successful result in Court, you will want to recover your legal expenses from the infringer. A proportion of those expenses will have been incurred in attempting to settle, in other words, during without prejudice negotiations. A "without prejudice" marking is therefore often qualified as "without prejudice save as to costs". A communication to which this qualified privilege applies is unavailable as evidence until after the Court has made judgment, after which it can be used to determine the level of costs which can be recovered by the successful party. When it comes to costs, a court is likely to be particularly unsympathetic to the party who stubbornly refuses to negotiate.

The "without prejudice" rule is designed to help parties to reach agreement quickly and without incurring major costs. If your intellectual property is being infringed or you are accused by another of infringing, a patent attorney can advise you on your position and help you to bring the dispute to a swift, favourable, and cost-effective conclusion.

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Securing a Patent Is the First Step in Realizing a Return for Your IP Invention

Obtaining a patent is the first step in monetizing or selling your intellectual property patent for a profit on the open market. IP brokers are experts in assessing the value of and selling patents to U.S. based or global investors. Patents sales take place in industries such as computer and other technology, medical devises, communications including mobile technology, and other intellectual property assets to a range of inventors and entrepreneurs who are always looking for new and improved IP products.

A patent for your invention ensures you have "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or importing the invention into the United States," according to the U.S. Patent and Trademark Office. Granted for new inventions, patents are also granted for improvements on existing patents, including the invention itself or the design of a new invention.

The U.S. Patent and Trade Office (USPTO) is the institution that awards patents. The process of obtaining a patent requires that you keep a detailed record of your invention including every step taken in creating the invention, including how you came up with the idea. Along with this description, diagrams of each step, including modifications and prototypes are most often required. Although USPTO mandate is to give assistance in helping you secure a patent, they strongly recommend you secure a patent attorney or other experienced professional to guide you through the patent process.

At the time of application, your invention cannot be for sale. You should also research the approximate value of your invention or have the professional you hired help you in this process. There are associated fees to get a patent so you will want to make sure that your invention is worth at least the cost of obtaining the patent. Small entity fees are much less than those that apply to those not meeting the definition. The official designation of "small entities" includes individuals, small businesses, and nonprofit organizations. Small businesses industry-specific, and based on the number of employees and annual receipts.

You will also need to complete a thorough patent search to make sure your invention is new. While this part of the process is time-consuming, it is a necessary step. You or your representative will need to search scientific and technical journals as well as a Patent and Trademark Depository Library. Not only should you search for U.S. patents, but depending on your invention and the degree of protection you are seeking, foreign patents may be applicable as well. You are likely to find similar patents and be able to prove how your patent is different or improves on earlier designs.

When it comes time to file an application, there are two primary options. You can file a provisional patent application or PPA that provides you with a patent pending status, essentially locking in the date of your application. This step involves a smaller upfront outlay of cash, however a regular patent application is required within one year.

An oath or declaration claiming that the inventor is the first to have invented the subject or product accompanies the application material. There are many other fees associated with the patent process, depending on whether you are seeking domestic and/or global protection, if you want to apply for an expedited process, and other options.

What follows your submission of application is an examination process that involves an USPTO examiner who will gather precise information about your invention to verify that it is indeed unique and to define the scope of the protection you are seeking. The entire patent issuance process generally takes 12 to 36 months, depending on the industry associated with your invention. Paying for a prioritized examination generally reduces that time to colder to the 12-month period. Once your invention is in the patent pending phase, you may begin the process of selling or monetizing your invention as it then that you have secured the rights to the invention.

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What If Patent Law Didn't Exist in the Present Period?

Many people complain about patent law, but have you ever asked yourself what would happen if patent laws did exist in our country? Do we still need patent laws considering the fast pace of technology? By the time someone gets a patent, they are probably well into production, and they are modifying their products and services as they learn new things in the marketplace, and at that point the patent has to continually be upgraded. The original patent filing becomes nothing more than a concept of what might be done. Almost like the original outline for business plan, when it is nothing more than a gleam in an entrepreneur's eye.

Further, it's hard to say if patents even matter anymore, due to international corporate espionage, and the fact that some of our latest trading partners are constantly stealing our intellectual property, copying our personal tech devices, hijacking our brand names, and then selling these products all over the world. Large companies especially in the technology field have to move so fast, or they will get passed by the competition thus patents often are not worth the paper they were written on, nor will the patent help the company protect itself from their competitors. (read: Bloomberg Business Week issue March 16, 2012, cover story; "Hey, China! Stop Stealing Our Stuff," for more insight).

Sure, the company can sue if someone steals their idea, but by the time the lawsuit is over, that technology has been leapfrogged three or four times, so it's not even relevant at that point. Patent law is interesting because it grants a temporary monopoly on that technology, and this was done to make it worth the risk to invest in new inventions. But now it seems it doesn't really matter, and these corporations who are bringing forth technologies must bring them forth so fast that the entire patent process is becoming burdensome, slow, and actually getting in the way.

The companies don't need a patent, what they need is running speed in the marketplace, and that would provide more competition, and lower prices for consumers and buyers of these technologies. That could increase the productivity of our economy and be akin to an adrenaline shot. It seems unfortunate that on one hand our government tries to prevent monopolies, however with patent law it grants monopolies from the onset. It's almost as if we have a schizophrenic set of rules and regulations, and it is impeding business.

Worse, for the smalltime inventor, they don't have the wherewithal or the money to defend their patents anyway. They might spend all their money getting a patent in the first place, but then another company steals it, or someone from China just takes it, starts making these things, and all that money they spent on getting a patent, they may as well have spent getting their product ready for market. The smalltime inventor with the proper backers might be able to take it to market, but that doesn't negate the international competition, and it only means the smalltime inventor has no chance. Thus they must sell it, give it away, or have it stolen.

In that case, we aren't protecting the smalltime inventor, and the corporations don't need our protection, nor do we need them busy fighting in court, they should spend those resources moving ahead to the next generation of technologies. If we got rid of the patent laws altogether, what would change? Well, one could say that everything would change, but that would not prevent corporations and businesses, or entrepreneurs from taking risks in the marketplace as long as there are buyers and sellers willing to partake in trade of their hard-earned dollars those technologies.

Because this issue is so complicated, and clouded with lawyers, laws, politics, corporate interests, international challenges, and regulations it's just turned into a giant fiasco of biblical proportions, and I would submit to you that we are not helping ourselves by continuing to legitimize this monster we've created. Either we need a complete overhaul of patent law, or we need to ditch the whole thing, because it's not stopping China from taking what they want anyway. May as well have Americans copy Americans in that case. Indeed I hope you will please consider all this and think on.

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How to Acquire a Patent - A Step Wise Guide

The whole process of acquiring a patent from the United States Patent and Trademark Office (USPTO) can be divided into three major steps. It is very important that the proper procedure as mentioned below is followed in order to maximize the chances of obtaining the patent. Further, you can also take free legal advice from lawyers who are associated with various websites where you can ask legal questions and get proper answers. It has been observed that 40%-70% patents are usually allowed and a lot depends on how you approach the process. Thus, there is plenty of room for mistakes that can be easily avoided by taking legal help and being careful with the planning.

Evaluation: Before filling the application for patent you should conduct the preliminary investigation that would help you in determining whether your patent is eligible or not. There are four main requirements that must be fulfilled by your invention in order to get a patent for it. You should be prepared to answer the following four questions during your due diligence about the invention.

Is the invention useful? Actually, you don't have to worry much about this question as your invention has to be just barely useful to somebody to qualify. Is your invention the kind of thing they give patents on? If your invention is a gadget, electronic item, some physical device or chemical composition or anything similar then you can easily check off this question. Is it a new invention? One of the most important conditions for a patent is that the invention should be completely new and no one should have created or done the similar thing in the past. You can always search the internet to make sure whether it is new or not. Is it an obvious invention? You would probably feel that the invention is obvious as you have created it but obviousness is a very complicated term and you should not be very worried about it. It would probably be right to find a lawyer at this step and seek legal help.

File non-provisional patent application: Once you are satisfied with your preliminary investigation, you should file a non-provisional patent application with the USPTO. Your petition needs to contain following points:

A written description of the invention that should describe it well enough to make reader believe that you actually did the invention. The description should be thorough enough to enable others to go out and build it. It is always better to share what you might feel to be the best way to carry out the invention. A claim section to describe exactly what you would like to own in the invention. Legal help should be taken at this step and you should find a lawyer who has proper experience in patents as writing the claims require proper expertise.

Negotiations with the US Patent Office: The USPTO usually takes around 1-3 years to respond to a patent petition and you should be ready to wait for it. Their usual response is a long letter explaining why you should not get the petition. Now you have to negotiate with USPTO in order to get the petition.

Legal help is most important in negotiation process as you have to convince the examiner assigned to your application that your invention deserves and an experienced lawyer can do this easily. Once you successfully pass through the negotiation process you would have the patent for your invention.

What to Do With Your Great Idea - Should You Trademark, Copyright or Patent?