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DisclaimerThe information provided in this presentation should not be construed as legal advice or legal opinion regarding any specific facts or circumstances, but is intended for general informational purposes only.
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Scope•While just about every industrialized nation in the world has a patent system, this presentation will only discuss getting a patent in the U.S. • If you have any specific questions, go ahead and send an email and I’ll do my best to respond.
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The Talent:Attorneys & Agents•Both have passed the Patent Bar Exam and have the necessary technical background.
•Patent attorneys have also passed a state bar exam and can practice law in at least one state.
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Patent DefinitionA patent is a limited-duration intangible property right that allows one to prevent others from making, using, or selling the patented invention in the United States.
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Patent Disclosure Requirements• Written Description: all claims must find adequate “support” in the originally filed patent application (including a provisional patent application).
• Enablement: The applicant must describe how to make and use the invention as to permit any person skilled in the art of the invention to do so without undue experimentation.
• Best Mode: The best way known to the inventor on the application’s filing date of carrying out the invention.
Source: http://www.uspto.gov/web/offices/pac/mpep/s2161.html
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Prior Art: 35 U.S.C. §102(a) Novelty; Prior Art.— A person shall be entitled to a patent unless—
the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; …
(b) Exceptions.—Disclosures made 1 year or less before the effective filing date of the claimed invention.…
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Claim Explained• A Claim is a sentence that defines the boundary of an invention and thus the scope of patent protection.
•Claims are often compared to property lines because both define an area from which others may be excluded.
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Source: http://www.tms.org/pubs/journals/jom/matters/matters-9511.html
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Sample Claim: Shovel1. A shovel comprising:
an elongated handle having a first end and a second end; and
a shovel head;wherein the shovel head is attached to the first
end of the elongated handle.2. The shovel of claim 1, wherein the shovel head is comprised of a metal.
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Source: http://www.ipwatchdog.com/2013/05/25/patent-claim-drafting-101-the-basics/id=40886/
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Types of Patents•Utility
•Design
•Plant
•Provisional
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Utility Patent• By far, the most typical – comprising about 90% of the patents issued by the USPTO in recent years.
• Granted for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof.
• Generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application filing, subject to the payment of maintenance fees.
http://www.uspto.gov/web/offices/ac/ido/oeip/taf/patdesc.htm
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Plant Patent• Granted for a new and distinct, invented or discovered asexually reproduced plant including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.
• It permits its owner to exclude others from making, using, or selling the plant for a period of up to twenty years from the date of patent application filing.
• Plant patents are not subject to the payment of maintenance fees.
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Source: http://www.uspto.gov/web/offices/ac/ido/oeip/taf/patdesc.htm
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Design Patent• Issued for a new, original, and ornamental design embodied in or applied to an article of manufacture.
• It permits its owner to exclude others from making, using, or selling the design for a period of fourteen years from the date of patent grant.
• Copyright and trademark rights may also be secured on the same design.
• Design patents are not subject to the payment of maintenance fees.
Source: http://www.uspto.gov/web/offices/ac/ido/oeip/taf/patdesc.htm http://www.uspto.gov/web/offices/pac/mpep/s1512.html
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Provisional Patent• Provides the means to establish an early effective filing date in a later
filed nonprovisional patent application. • Allows an inventor to file without a formal patent claim, oath or
declaration, or any information disclosure (prior art) statement.• Has a pendency lasting 12 months from the date the provisional
application is filed.• Allows the term "Patent Pending" to be applied in connection with the
description of the invention.• HOWEVER, PROVISIONAL PATENTS MUST STILL MEET ALL THE
DISCLOSURE REQUIREMENTS.
Source: http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent
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Getting The Patent1. Conception of the invention2. Reduction to practice3. Preparation of the patent application4. Filing the patent application with appropriate filing fees5. Responding to U.S. Patent Office6. Notice of allowance / grant7. Periodic payment of patent maintenance fees
Inventor(s)
Patent Prosecutor
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What is an Office Action?• An office action is a letter from a Patent Examiner setting forth the current status of a patent application.
• The first (non-final) office action usually contains reasons for any rejection/objection or additional requirements.
• After receiving a response (amendment) from the applicant, the examiner sends a second (final) office action, notifying the applicant of the status.
• If the none of the claims are allowed, the process can be continued with another fee.
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Source: http://www.bitlaw.com/patent/prosecution.html
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Sample Patent Application Timeline
Event Months from Filing Date
Provisional Application Filing 0
Non-Provisional Application Filing < 12
1st Office Action Received ~ 18
Publication of Application 18
Issue of Patent 36?
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Preparation & Prosecution Cost of a Utility PatentOriginal Application: Minimal Complexity $6,500
Provisional Application 3,500
Original Application: Relatively Complex - Biotech/Chemical 10,000
Original Application: Relatively Complex - Electrical/Computer
10,000
Original Application: Relatively Complex – Mechanical 8,500
Amendment: Minimal Complexity 1,800
Amendment: Relatively Complex - Biotech/Chemical 3,000
Amendment: Relatively Complex - Electrical/Computer 3,000
Amendment: Relatively Complex – Mechanical 2,500
Source: American Intellectual Property Law Association. REPORT OF THE ECONOMIC SURVEY 2013
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Typical USPTO Patent Fees• Filing Fee: the cost to have your invention "examined“ by the USPTO one time.
• Request for Continued Examination (RCE) Fee: the cost to have your invention "examined“ by the USPTO an additional time.
• Issue Fee: the cost to paid to the USPTO, after an application is allowed.
• Maintenance Fees (paid at 3 1/2, 7 1/2, and 11 1/2 years after the patent is granted) to "maintain" the patent’s legal protection.
Source: http://www.uspto.gov/learning-and-resources/fees-and-payment/fees-payments-faqs
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USPTO Fees (Provisional & Utility)
Fee Small Entity Fee Micro Entity Fee
Basic Filing Fee $280 $140 / $70* $70Provisional Filing Fee 260 130 65Utility issue fee 960 480 240Request for Continued Application (1st)
1200 600 300
Request for Continued Application (subsequent)
1700 850 425
Maintenance Fee:Due at 3.5 years 1,600 800 400Due at 7.5 years 3,600 1,800 900Due at 11.5 years 7,400 3,700 1,850
Last Revised on March 1, 2015
Source: http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule
* Non-electronic Filing
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Tips1. Be Suspicious2. Interview the Actual Person Doing The Work3. Get An Estimate4. Avoid Being “Nickeled and Dimed”5. See The Real Track Record6. Watch the Up Sell7. Ask for a Very Narrow Claim8. Consider Getting An In House Patent Resource
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Tip #1: Be Suspicious• It’s a bit like dating – what looks great at first may end up being…well, not so great.•Act dumb regarding patents. Listen for inconsistencies.•Does the office look too nice – someone has to pay for it.
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Tip #2: Interview the Actual Person Doing The Work• The person managing the client (i.e., you) may not be the person doing the actual work – or at least most of the work. Let’s call that person the “Worker Bee.”• Ask the Worker Bee about his or her:
Education Patent Experience Familiarity With Your Technology Current Workload
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Tip #3: Get An Estimate• When you ask for an estimate – you may get a lot of “hemming and hawing”. While it is true that its hard to give a fixed number – getting a reasonable range should not be that hard.• Mention the typical fees in the survey by the American Intellectual Property Law Association. This will anchor the discussion around a published range – forcing the firm to justify different numbers.
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Tip #4: Avoid Being “Nickeled and Dimed”• Unless you’re lucky enough to negotiate a fixed fee arrangement, you’re being charged by the hour (or rather by the minute). • Don’t be afraid of asking if you are on the clock. If unsure, assume you are.• Keep phone calls and emails to a minimum.• Request to not to be sent formal cover letters that summarize (or restate) official USPTO correspondence.
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Tip #5: See The Real Track Record• Information regarding patent application status is
available on the USPTO website in the Patent Application Information Retrieval system, or PAIR.
• Public PAIR has all the correspondence to and from the Patent Office for issued patents and published applications.
• Ask for list of issued patents prosecuted by the firm, and then look up the transaction history of each in Public Pair.
• See how many continuations were filed per patent. This will give you a rough sense of real productivity and your final cost to get the patent issued.
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Tip #6: Watch the Up SellIf you ask some who gets paid to write patents, whether you should get a patent, the answer will almost always be yes. It’s like asking an alcoholic if he or she wants a drink. That is, there is a vested interest in a positive response.
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Tip #7: Ask for a Very Narrow Claim• Good patent prosecutors will draft both broad and narrow claims, since you’re never sure what will be granted. • However, it’s also a good idea to draft a very narrow, virtually non-infringeable claim. Why: management (and the VCs) will be pleased to get something allowed relatively quickly; and
in litigation, so long as at least one claim survives, the patent survives, and so does any associated licensing revenue.
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Tip #8 Consider Getting An In House Patent Resource• If patents are a core part of your business strategy, consider hiring a patent agent or attorney. It can be cost-effective in the long run.
• Agents tend to be less expensive, but they only can do patent prosecution.
• Attorneys tend to be relatively more expensive, but if you hire carefully, you also get legal capabilities, such as drafting & negotiating agreements, managing NDAs, venture fund-raising, etc.
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THANK YOU
I’d love to hear from you. Send comments, suggestions, or
questions to [email protected].
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