• Joseph DiDonato

Patent Primer - Key insights

Intellectual property (IP) is recognized as a priority for most business start-ups. However, attention is diverted most commonly to setting up an organization, funding, and providing services and materials to customers and clients. This means that companies fail to protect their IP and risk the loss of valuable technology. Further, companies risk violating the IP rights of others.

IP law considerations for nonprofits and for-profit start-ups should be an important issue, which is not “overlooked” or “put aside”, based on ignorance or intimidation. Those that endeavor into the business world should be aware of the basic risks and remedies.

What is a patent Patents provide inventors with the right to exclude others from using the technologies covered by the patent claims for a limited time. In exchange for exclusivity, inventors must disclose how to make and use the invention.

How do you get a patent An inventor can apply for a patent with the United States Patent and Trademark Office (PTO), as well as other intellectual property offices around the world. After a patent application is filed, the PTO and applicant (or the legal representative of the application) negotiate to determine the scope of protection that the invention will receive in a patent. This process is called “prosecuting” the patent application. An Examiner will review the application, and in many cases the Examiner will issue a rejection (via an Office Action) indicating that the application is not allowable. At this point, the applicant can respond (via a Response) with arguments or amendments to the application. In some cases, this process may repeat several times before the Examiner indicates allowable subject matter and agrees to issue a patent. The prosecution process can take several years and the PTO or other “patent issuing” entity from another country, may refuse to issue a patent.

Are there different types of patents Patents can be obtained in the United States for multiple types of inventions. Many countries have similar patent designations, but they vary by jurisdiction and each should be considered separately. In the United States, patents are granted in three areas: (a) utility, (b) design, and (c) plant. Utility applications are those directed toward new apparatuses or processes and those that improve on previous technologies. Design applications protect new ornamental (not functional) designs. Design applications can overlap with trademarks and copyrights, but also provide additional protections for a limited time frame. Plant patents are directed to new varieties of plants.

Be the first to file The United States, similar to many countries in the world, has a “first to file” patent system. In a first to file system, the first applicant to file a patent application is given priority over other later filed applications that cover the same subject matter.

However, it is important to document conception and ongoing efforts to implement inventions. Such records can be used to prove the source of inventions, during proceedings at the PTO or a trade secret dispute. As such, in addition to preserving inventor notebooks and other evidence of invention conception, the use of a formal invention disclosure procedure is beneficial for organizational issues.

What is patentable In general, an idea is patentable in the U.S. if it is new and not obvious in view of the technology that predates it (referred to as the “prior art”). Most other countries have similar requirements. There is no requirement to perform a search of the prior art (referred to as a patentability search) to evaluate if an idea is patentable; the decision whether to perform such a search is commonly based on a cost/benefit analysis.

It is important to note, however, that while there is no duty to perform a patentability search, there is a duty to disclose to the United States Patent and Trademark Office (PTO) all information known (by anyone involved with preparation of the patent application) that is material to the patentability of any invention claimed in the patent application. Such information may include, for example, prior patents, published patent applications, published articles, web sites, products (including a company’s own products), etc. The requirement to disclose “prior art” continues until the patent application either issues into a patent or is abandoned.

Patents are country specific Patent applications can be filed in most countries in the world but are enforceable only in the country in which it was filed.

When to file a patent application A complex set of laws and treaties, most notably, the Patent Cooperation Treaty (PCT) govern the ability to file a patent application in the U.S. and in other countries. Regardless of the country in which patent protection is desired, timing is critical when it comes to the filing of patent applications. While this area of the law is complex and each invention must be addressed individually with respect to the law of each relevant country, a U.S. company should file a U.S. patent application prior to any of the following: 1) commercial exploitation of the invention (e.g., actual sale of a product or service containing the invention); 2) public use (e.g., display at a conference of a product or service that contains the invention); or 3) public disclosure (e.g., disclosure of an invention at a conference and/or publication of a paper describing the invention). In contrast to the most other countries, a U.S. company can file a U.S. patent application on an invention within “one year” of the earliest of these events. In most countries this “one year” period does not exist (referred to as the “absolute bar” rule) and the right to seek protection in most foreign countries is typically lost, but the right to file in the U.S. remains.

Provisional patent applications can be important In some circumstances, it may be beneficial to file a provisional patent application instead of a non-provisional patent application. For example, if you are short of money, still perfecting the invention, or determining if there is a market.

A provisional application does not require all of the formalities of a non-provisional application. However, the invention must be described in a manner that enables a person of ordinary skill in the art to practice the invention. Accordingly, the provisional application should include a complete description of the invention.

A provisional application will not be examined by the PTO, but does allow an applicant to add “patent pending” to covered products. The provisional application also allows the later filing of a non-provisional application claiming priority to the provisional application. Specifically, within one year of filing the provisional application, a non-provisional application can be filed claiming “priority” to the provisional application. This means that the non-provisional application will have the priority date or filing date of the provisional application. If a non-provisional application is not filed within one year, the provisional application expires and no applications can then claim priority to it.

Filing a provisional application costs less in governmental fees than a non-provisional application.

Patent prosecution is open to the public

U.S. patent applications will be published 18 months after the earliest priority date relied upon (e.g., the filing date of the application or its parent application).

In addition to the patent application being published, the prosecution history (“file wrapper”) of the patent application becomes open to the public while the application is still pending. As a result, a competitor may monitor correspondence with the PTO relating to a published patent application.

Publishing your patent application has value By allowing a patent application to publish, one can potentially obtain provisional rights from the time the patent application is published. Under the patent statute, if a claim of an issued patent is infringed and is substantially identical to the published claim, then the patent owner is entitled to a reasonable royalty from the infringer relating back to the date on which the patent application was published (but no earlier than the date the infringer had actual notice of the published patent application). Since it may take as long as three years or more for a patent to issue, publication of the patent application may provide an extra two years of “back damages.” Another potential advantage of publication is that it makes the patent application available as prior art (e.g., against competitors) earlier.

Another potential advantage of publication is that it makes the patent application available as prior art (e.g., against competitors) earlier.

PTO fees are less for startup businesses When filing and prosecuting application at the PTO, there are various fees associated with different activities. For example, filing fees, examination fees, appeal fees, extension fees, issues fees and many others may occur during different stages. It’s important to recognize these fees to have a complete understanding of the total costs for acquiring and maintaining a patent. One advantage of being a start-up company is that you may qualify for reduced fees at the PTO. Most fees have a default large entity cost. However, these can be reduced if you qualify as a small entity or micro entity. Fees are generally reduced by half for small entities and three quarters by micro entities. To qualify as a small entity, a business concern must be one whose number of employees, including affiliates, does not exceed 500 persons. Ownership, management, previous relationships, and contractual relationships can all play factors into determining whether an affiliation exists. Thus, if your company received funding or investment from a company that may be considered an affiliate, care must be taken to ensure that the 500 employee limit is not surpassed when claiming small entity status. Furthermore, assigning, licensing, or otherwise granting rights in an invention to a concern that would not qualify as a non-profit organization or small business concern may change the appropriate status.

Enforce your patent Patents enable a patent owner to prevent others from making, using, offering to sell, selling, importing or otherwise using methods or products that infringe on the claims of the patent. To enforce a patent, the patent owner brings a claim against another individual or entity for infringing the patent in a federal court. If the Court finds in favor of the patent owner, it can award the patent owner with monetary damages as well as potentially an order preventing the infringer from continuing to make or sell infringing products. Image from Pixabay.


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