Articles

Patent Filing

If you are ready to take your invention to the next level, here are some basic steps to keep in mind. These six steps will help you approach patent filing.

Step 1. Choose the Right Patent

There are three kinds of patent filing available through the U.S. Patent and Trademark Office (USPTO):

1. Utility patent: protects a new or useful invention

By law, inventors can only obtain utility patents on specific kinds of inventions. In general, inventors cannot patent unmodified natural products, abstract ideas or algorithms unconnected to real world applications.

2. Provisional patent application: secures a temporary, one-year patent-pending status

The inventor must file a utility patent application before the end of the year to maintain patent pending as of the provisional filing date.

3. Design patent: protects an ornamental design

Design patent applications are only for ornamental design. Design patents cannot protect any functional benefit that the design may confer.

Step 2. Document

Inventing happens in two steps: 1) conceiving the invention, and 2) reducing it to practice. Be sure to document both steps. For example, if your invention is a new machine made from combining two existing machines, then you must document when you had the idea to combine the machines to show conception.

Reduction to practice means taking that idea and making it work. For the combination of the two machines, you must document how to successfully combine them. Include proof the invention works and some alternative approaches. Include a schematic, drawing or photo of the combined machine and possible alternative ways of combination.

Step 3. Keep Your Idea Confidential

Patents require absolute novelty, meaning that any public disclosure will compromise any future patent filing. Your disclosure of the invention is just as problematic as another inventor or scientist publishing similar results.

In the United States, an inventor has one year to file a patent application after making a public disclosure. But no other country gives a similar grace period—the minute you breach secrecy most worldwide patent rights are gone. Once your provisional patent application is filed then the patent is pending and you are safe to discuss your invention publicly.

Step 4. Conduct a Patent Search

The breadth of a patent is limited by prior inventions and other publications. You are the expert on your invention. Scour your trade journals, conference presentations, catalogs and other publications.

If you search by yourself, online database searches are like wringing a sponge; the trick is knowing when to stop. Start with broad keywords that describe the field and then add specific keywords that describe the novel features of your invention. The most important thing in conducting a search is to know what makes your invention novel and to take the time to read each reference vigilantly to see if it has that novel thing.

Online patent search services conduct a search of the USPTO database of existing patents and published patent applications for you based on several different criteria and provide you with a report. The report can help you identify possible conflicts in advance and determine the patentability of your invention.

Step 5. File a Patent Application

You can file a patent application on behalf of yourself or your co-inventors. Alternatively, you can hire a registered patent agent or attorney to file your application for you. Patent applications require both legal and technical expertise and even small mistakes can dramatically compromise the value of the patent. That expertise comes at a cost and even a simple patent can cost several thousand dollars.

The advantage of doing work yourself is cost savings. The downside is that you lose the benefit of your lawyer’s experience, even in the small steps. For example, if you write a description of a machine that you invented, you may limit that machine to components that you actually used. A patent attorney with experience in the field may think to suggest or research different components that might work.

As a result, you may have a harder time enforcing your patent against competitors because your description did not take the time to expand on your invention. A competitor may find an easy work-around. Patents are filled with tiny details and getting any one of them wrong may compromise your patent.

Step 6. After Your Patent is Filed

Patents are expensive. Once your patent issues, you might wonder how you will get a return on the investment. Are you going to start a company? Talk with potential investors once you have a filing date. Do you want to sell or license the patent to a company? Find a useful contact at the company once your patent is pending. You do not have to wait until the patent is issued. Some investors invest in pending patents and some companies license pending patents.

 

Patent Licensing

A patent license is an agreement that allows someone else to commercially use or develop your invention for a specified period. The owner of the invention is the licensor, and the person who is receiving the license is the licensee. You will receive payment in return that may be structured as a single-time payment or as continuing payments called royalties.

Licensing the right to make, use, or sell your product is usually the most profitable route for inventors. As patent holder, you retain ownership of the invention and earn royalty payments on future sales of the product. You can grant an exclusive license to one company or several companies.

A patent owner can license or transfer interest in a patent. The licensor gives up the right to the intellectual property, usually for a certain period. During this time, the licensee can make or sell the invention or design. The licensee can also profit from the intellectual property during the license period.

There are two types of patent licenses:

  • Exclusive Patent Licenses: These transfer all ownership rights to a licensee. The licensor still owns the title. All patent owners must agree to an exclusive license.
  • Non-Exclusive Patent Licenses: These allow the licensee to produce the invention or design. The licensee doesn’t gain exclusive rights. The licensor and other parties can also produce the invention or design. Only one patent owner has to agree to a non-exclusive license.

Patent Licensing Process

You can start the process of licensing your patent by making a list of manufacturers with strong distribution channels. You can find manufacturers by attending trade shows, searching an online manufacturer database for companies making similar products to yours, and finding manufacturers in stores and magazines that cover similar products. For a fee, the United States Patent and Trademark Office (USPTO) can publish a notice regarding the availability of your patent for license in its official gazette.

In general, you should have your licensing agreement negotiated and drafted by a patent attorney. The agreement will spell out any upfront payments, amount of royalties, and potential infringement issues. You can exclusively license the patent to a particular entity or grant a non-exclusive license to more than one entity or individual.

Patent Litigation

Patent litigation is the legal process that unfolds when someone who owns the patent for a particular invention enforces their right by suing another for manufacturing or selling the invention without permission. More often than not, this claim is countered by the accused party who will argue that that particular patent should be deemed invalid.

Typically, a party (other than the patentee or licensee of the patentee) that manufactures, imports, uses, sells, or offers for sale patented technology without permission/license from the patentee, during the term of the patent and within the country that issued the patent, is considered to infringe the patent.

The test generally requires that the infringing party’s product (or method, service, and so on) falls within one or more of the claims of the patent. The process employed involves “reading” a claim onto the technology of interest. If all of the claim’s elements are found in the technology, the claim is said to “read on” the technology; if a single element from the claim is missing from the technology, the claim does not literally read on the technology and the technology generally does not infringe the patent with respect to that claim, except if the doctrine of equivalence is considered applicable.

In response to allegations of infringement, an accused infringing party typically asserts one or more of the following:

  • that it was not practicing the patented invention, i.e. the invention claimed in the patent (the claims define the extent of protection conferred by a patent);
  • that it was not performing any infringing act in the territory covered by the patent (patents are indeed territorial in nature);
  • that the patent has expired (since patents have a limited patent term, i.e. a limited lifetime);
  • that the patent (or the particular claim(s) alleged to be infringed) is invalid, because the invention in question does not meet the patentability requirements or includes a formal defect, this rendering the patent invalid or unenforceable;
  • that it has obtained a license under the patent.

It’s the aim of the court to get both sides to come to a written agreement. Quite often this will result in the losing party, if countering a claim of copyright infringement, paying royalties to the winning side in order to continue using a patented invention.

Publications

Chiacchio IP is an active contributor to industry literature. We also give frequent presentations on topics relating to business patents and other intellectual property.

More