Why should I seek a patent? The reasons given most for seeking a patent are: (1) potential investors say that patents are important to their investment decisions; (2) owners and investors want to maximize their avoidance of costly infringement lawsuits by others having the same invention;  (3) owners and investors want have a patent of their own to provide leverage in cross-licensing negotiations with others that may have similar patents; (4) owners and investors want to display “signals” of business competency in owning intellectual property that is the foundation of their business; and, (4) investors want to see a patent so there could be some marketable asset if the company fails in the market.

Do Trademarks, Service Marks, Copyrights and Patents protect the same things? No. Trademarks, copyrights and patents all differ.

• A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.
• A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.
• A copyright protects an original artistic or literary work.
• A patent protects an invention.

What Is a Patent? A patent for an invention is the grant of a property right to the inventor, issued by the United States Patent and Trademark 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 United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

What Is a Patentable? The controlling United States Statute is 35 USC 101 and it provides that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions and requirements of this title.”

Excluded from patent protection by judicial decision are laws of nature, physical phenomena and abstract ideas.  See the web pages on software and business methods for some discussion of what fits under these exclusions.

Do I Have to Commercialize My Invention? No. You must only disclose the invention in the manner prescribed.  The Patent Clause of the United States Constitution authorizes Congress “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their respective . . . Discoveries.”

The Patent laws enacted pursuant thereto require disclosure of the invention in return for a right to exclude for a limited time.  The disclosure must be complete and show how to make and use the invention. For example, a patent application must describe the invention in such a way that it is understandable to a person of ordinary skill in the art. A mere wish or plan for obtaining the claimed invention is not an adequate written description. Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997).

The Supreme Court explained, “The disclosure required by the Patent Act is ‘the quid pro quo of the right to exclude.'” J. E. M. AG Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001).  The Supreme Court later explained that it is a “given that immediate disclosure is not the objective of, but is exacted from, the patentee. It is the price paid for the exclusivity secured.” Eldred v. Ashcroft, 537 U.S. 186 (2003).

Commercialization may be the means to get a return on your invention, but it is not a part of the bargain for the exclusive rights granted.  The bargain involved in a patent is that society gains by the addition to the public domain of a new and innovative intellectual idea and in return grants a 20-year right of exclusivity.

Is a Novel Idea Enough to File for a Patent? You do not have to have an actual device or a prototype to obtain a patent. However, in order to obtain a patent you must describe the invention in such a way so that others can make and use the invention after the patent expires. In other words, you must describe how your invention is made and what it does. The invention may not be obvious over existing technology and must be useful.  The invention must accomplish a practical application. That is, it must produce a “useful, concrete and tangible result.”  You may be able to obtain a patent even if you are using components that can be obtained commercially and used in your invention, even though you don’t know how those components work. However, if those components are patented themselves, you will not be able to employ your patent unless you have a license to use those patented components.

What is Prior Art? It is a very broad category describing what is already known. For example, it includes any invention patented anywhere in the world or any published information anywhere in the world. The term, “prior art” is relevant because a patent application will be rejected, or a patent declared invalid if issued, if someone else had described the invention in open literature before the application was filed. In some cases, even unpublished prior art by another may affect patentability, for example if inventors are working on a research team and one inventor knows of another secret invention and makes an obvious improvement to it.  A patent application for the obvious improvement to it could be rejected by the patent office even though the other invention was secret and not published!

What Disqualifies My Invention for a Patent? For patent applications with claims having a priority date before 16-MAR-2013, the law (35 USC 102) can be divided into 7 broad activities or events that when present, prevent a patent from issuing, or if one issues, for invalidating the patent.

Essentially and paraphrasing:

• 1. The claimed invention was patented before the effective filing date of your application.
• 2. The claimed invention was described in a printed publication before the effective filing date of your application.
• 3. The claimed invention was in public use before the effective filing date of your application.
• 4. The claimed invention was on sale before the effective filing date of your application.
• 5. The claimed invention was otherwise available to the public before the effective filing date of your application.
• 6. The claimed invention was described in a patent issued to an assignee.
• 7. The claimed invention was described in a published patent or patent application and it names another inventor and it was effectively filed before the effective filing date of the claimed invention.

Note:  GRACE PERIOD. The U.S. gives inventors a 1-year grace period in which to file an application after the inventor disclosing the invention to the public. However, it is very risky to rely on this grace period because if someone else publishes the invention with a small variation (even an obvious variation) after the inventor publishes and before the inventor files his application, then this could result in no grace period for the earlier inventor.

Some form of grace period to file a patent application after an inventor’s own publications concerning his invention is reportedly available in 38 nations. WIPO maintains a pdf list of grace periods.

Reportedly, 19 nations have a general grace period of twelve months preceding the Paris Convention priority date: Albania, Argentina, Armenia, Australia, Belarus, Brazil, Bulgaria, Ecuador, El Salvador, Estonia, Ghana, South Korea (12 months, Article 30, Paragraph 1, 15-MAR-2012 amendment), Mexico, Moldova, Panama, the Phiilippines (Section 25.1 of the IP Code), Peru, Romania, Slovenia, Turkey and Ukraine. Ghana has not been confirmed. Of these nations, 4 may require satisfaction of one or more formalities for invoking the grace period: Argentina, Brazil, Japan, and Mexico.

Reportedly, 12 countries have a grace period of 12 months preceding the national filing date in that country: Barbados, Canada, Kazakhstan, Malaysia, Saudi Arabia, Sri Lanka, Trinidad and Tobago, and the United States.

Reportedly, 2 countries have a grace period of 6 months prior to the Paris Convention priority date: North Korea and Lesotho.Reportedly, 4 countries have a grace period of 6 months prior to the national filing date in that country: Lithuania, Japan, Russia, and Eurasia (6 months). Of these countries, South Korea may require satisfaction of one or more formalities for invoking the grace period.

Countries that reportedly offer a grace period in certain specific circumstances are: Tanzania (1 year), Chile (6 months), China (6 months), Egypt (6 months); European Union (6 months); Indonesia (6 months), Israel (6 months); Kazakhstan (6 months), Portugal (1 year), Singapore (1 year), Spain (6 months), Taiwan (6 months) and Vietnam (6 months). For example, in the case of the European Union, if the applicant willingly discloses the invention before a patent application is filed in Europe, such disclosure will disqualify the invention for patent protection in Europe, with a limited exception of a 6-month window for displaying the invention at an official international exhibition falling within the terms of the Convention on international exhibitions.Almost all the other countries have no grace period for non-abusive disclosures prior to filing for a utility patent.For a Registered Community Design (a design patent) in the European Union, there is a 12 month grace period.

For patent applications with claims having a priority date after 16-MAR-2013, the law (35 USC 102) expands the scope of disqualifying prior art publications. The law for disqualifying inventions (35 U.S.C. 102) for patentability has been amended for claims in patent applications having an effective filing date on or after 16-MAR-2013. Any claim with an effective date of 16-MAR-2013 or later will be subject to challenge based on prior art evidence that the claimed invention was sold, offered for sale or used anywhere in the world. There is also the risk that patent protection will be denied based on U.S. patents and U.S. published patent applications that originated in foreign countries because the disqualifying date for such a patent or published application will be the respective filing date in the foreign country.

Note: U.S. GRACE PERIOD SIGNIFICANTLY DIMINISHED IN PROTECTING AN INVENTOR. Effective 16-MAR-2013, the U.S. 1-year grace period (35 U.S.C. 102(b)(1)) has substantial risk to it that another inventor’s publication after the public disclosure of your invention but before you file your application, could be disqualifying prior art, even though you filed within a year of your first public discolsure. Essentially, if a subsequent discloser publishes something that is not “identical” to your earlier invention disclosure, then it is prior art to your invention even though you filed within a year of your disclosure. The USPTO has said that the subject matter of the other inventor’s disclosure must be the same as your previously public disclosure and that the grace period will not be accorded any weight even if the only differences between the subject matter are “mere insubstantial changes, or only trivial or obvious variations.” The USPTO clarified the “insubstantial” comment by explaining that the other inventor’s publication does not have to be “verbtim” of your earlier publication. It also said that the grace period applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor. For example, the inventor or a joint inventor had publicly disclosed elements A, B, and C, and a subsequent intervening grace period disclosure discloses elements A, B, C, and D, then only element D of the intervening grace period disclosure is available as prior art. The USPTO position holds substantial risk that the grace period is no longer something that can be relied upon by inventors.

If the other inventor publishes before you file and before you publish, then the other inventor’s publication is disqualifying prior art for your invention.

Further, the U.S. Patent and Trademark Office, notwithstanding the one-year grace period, could apply an inventor’s prior art against any of his or her claims that seek protection beyond specific embodiments that the inventor publicly disclosed.

A prior public disclosure by a co-worker or collaborator is prior art unless it was obtained from the inventor or been previously disclosed from the work of the inventor, regardless of whether the subject matter of the prior disclosure and the claimed invention was commonly owned not later than the effective filing date of the claimed invention.

The new law seems to literally grant a grace period for public disclosures, but not for public uses or sales. The pre 16-MAR-2013 law (section 102(b)) explicitly covers a sale or public use and this was deleted in the re-write made by the new law. This may be an oversight, but as the law now stands, it could be interpreted to prevent issuance of a patent if the inventor makes a public use or public sale prior to filing an application. So, to be safe, an inventor should file first before offering the invention for sale or making a public use of the invention.

The term “priority date” for a patent application means the filing date of the earliest application for which the patent application is entitled. Under the law, one can claim priority to an earlier application when filing a subsequent related application. For example, if an inventor files a provisional application on 01-APR-2013 and files a non-provisional application on 01-APR-2014 and claims priority to the priovisional application, then the priority date for the non-provisional application is the filing date of the provisional or 01-APR-2013.

What is Patentable? Any new and useful process, machine, article of manufacture, or composition of matter, or any new useful improvement thereof, is patentable. The Patent Office classifies this type of patent as a “Utility Patent.”  Software inventions are filed as utility patent applications.

Also, one can patent a new, original, and ornamental design for an article of manufacture. The Patent Office classifies this type of patent as a Design Patent. A design patent protects only the appearance of the article and not its structural or utilitarian features. Also, see this Law Firm’s page on design patents.

A design patent is a relatively inexpensive and effective method to protect against knock-offs that use non-infringing technology, but nevertheless attempt to outwardly look like a patented product. The subject of a design patent application must be distinctive and must not be dictated solely by function.

Finally, one can patent any distinct and new variety of plants that can be asexually reproduced. The Patent Office classifies this type of patent as a Plant Patent.  Other types of intellectual property protection for plants are also available.

A provisional patent application may provide added benefits, if filed prior to a non-provisional utility patent application.

How Do I Know Whether I Need a Design or Utility Patent? In general terms, a “utility patent” protects the way an article is used and works, while a “design patent” protects the way an article looks, that is, the novel, ornamental features. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics. However, a design for an article of manufacture that is dictated primarily by the function of the article lacks ornamentality and is not proper statutory subject matter for a design patent.

What is a Disclosure Document Filing? This filing is no longer available. The U.S. Patent and Trademark Office announced that its Disclosure Document Program was discontinued as of February 1, 2007.

When it was in effect, a Disclosure Document filing was an inventor-signed paper disclosing an invention. The date of the Disclosure Document’s receipt in the United States Patent and Trademark Office was  evidence of a date of conception if it is referenced in a related patent application.

A Disclosure Document was not a patent application, and the date of its receipt in the Patent Office did not become the effective filing date of any patent application subsequently filed.

One final caution: mailing yourself a sealed letter with invention documents enclosed is not an accepted method of proving your invention’s conception date to the United States Patent and Trademark Office.

Are patent applications published by the Patent Office? Utility patent applications filed on or after November 29, 2000 are published after 18 months. Design patent applications are not published. Publication provides “provisional rights” under 35 U.S.C. §154(d) to obtain a reasonable royalty during the period beginning on the date of publication of the application by the United States Patent and Trademark Office and ending on the date the patent is issued.

The right to collect damages from publication to issuance are termed “provisional rights” because they are dependent upon conditions being met. An important condition is that but liability depends on actual knowledge of the infringer of the published application.

Also, such provisional rights may not be available if a substantive change has been made to a claim during patent prosecution after publication. “Although not a per se rule, “it is difficult to conceive of many situations in which the scope of a rejected claim that became allowable when amended is not substantively changed by the amendment.” Id. at 1348. Where a substantive change has been made to a claim, the allegedly harmed party has no provisional rights to assert.” Pandora Jewelry, LLC v. Chamilia, LLC (D. Md., August 8, 2008)

An application may be published earlier than the end of such eighteen-month period at the request of the applicant. The applicant can prevent publication if an applicant makes a request upon filing the application certifying that the invention has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires eighteen-month publication.

Can a Citizen of a Country Other than the United States Apply for a Patent or a Trademark in the United States? Yes. Anyone in the world may apply for a United States patent or trademark. A patent application must name the inventor. Where there is more than one inventor, all must be named. Each inventor must state his or her address.  A word of caution is advised:  Many countries make it a criminal offense to file for a patent in another country without obtaining a license from the country of residence patent office.  See https://www.lventre.com/foreign for more information.

Some trademark service providers state that they may consult with the United States Patent and Trademark Office before they submit an application: Is that true? Be very wary of claims such as this. The United States Patent and Trademark Office will answer process questions, but under no circumstances will any employee comment about whether a mark is eligible for registration.

Trademarks in Other Countries? Trademark offices in many countries register marks without comparing them with existing trademark registrations and applications received earlier. They leave it to competitors to give notice of opposition once the mark or the application has been published/registered. Therefore, obtaining trademark registration in such countries is no guarantee that the trademark will not be infringing on the rights of others.

What is “Fair Use” in terms of using copyrighted material? Fair use is a defense to copyright infringement. One might think that such a defense would be clearly defined. While it is a part of U.S. Code, fair use is highly specific to the facts of a use. For example, a backup copy of a CD for one’s personal use clearly fits into this definition.  Other situations are not so clear and often involve the evaluation of eight factors.  Pierre N. Leval, now a Judge on the Second Circuit Court of Appeals, explained in his article “Commentary: Toward a Fair Use Standard” in the Harvard Law Review. 103 Harv. L. Rev. 1105 (1990) that fair use “must be of a character that serves the copyright objective of stimulating productive thought and public instruction without excessively diminishing the incentives for creativity.”  The notes accompanying U.S. Code include some of the Report from the House of Representatives, which is a good part of the background on the fair use defense.  Judicial decisions add considerably to the U.S. Code.  One of the better on-line analyses of fair use is at a University of Texas site. While this site discusses it in terms of course materials, it is useful to understand the factors involved. The U.S. Copyright Office publishes a phamphlet providing fair use examples. If you would like an opinion for a definitive situation, please contact The Law Firm of Louis Ventre, Jr. for a free initial consultation.

What is a “compulsory license” in terms of using copyrighted material? Compulsory licensing applies to the making and distribution of phonorecords of nondramatic musical works. The law provides that, once phonorecords of a musical work have been publicly distributed in the United States with the copyright owner’s consent, anyone else may, under certain circumstances and subject to limited conditions, obtain a “compulsory license” to make and distribute phonorecords of the work without express permission from the copyright owner.