Few areas of law are as specialized as patent law. Most attorneys not specializing in patent law receive only a few hours of training on the subject. Understanding a few basic concepts can help attorneys give some basic advice when patent law issues arise. The ten principles below are meant to give non-patent attorneys ten major concepts that can assist them in advising their clients.
The United States has joined every other jurisdiction in the world and now has a First-to-File system. Until March 2013, the United States was the only country in the world to have a First-to-Invent system. What that meant was that even if two inventors invented and filed the same invention in the United States Patent and Trademark Office (USPTO), the patent would be awarded to the inventor who could prove he or she invented the idea first. Now, generally speaking, a patent will be awarded to the inventor who first files his or her patent application in the USPTO. Therefore, now more than ever, keeping an idea or invention confidential is extremely important.
A poor mans patent is when you describe an invention in a document, then mail that document to yourself and use the postmarked date to prove you invented the idea first. In the past, when clients asked me if a poor mans patent would protect them I would have to give a long drawn out explanation as to why it would not provide protection. Now, since the United States is a First-to-File system my answer is simple, if you lose the race to file a patent application for your invention first, then generally speaking you will not be granted a patent on your invention. In a nutshell, you should file some type of patent application to protect your rights.
United States law provides a one year grace period for an inventor to publish, make, use or sell his or her invention before filing a patent. See 35 U.S.C. 102. In other words, an inventor can publish, make, use or sell his invention for one year before filing a patent application. However, if the inventor does so for more than one year, then 35 U.S.C. 102 bars the inventor from obtaining any patent rights. While the statute does provide a grace period, I always advise my clients to file as early as possible and publicly disclose only when absolutely necessary.
A provisional application may be a useful tool to many businesses. Under United States patent law, a provisional application is a legal document filed in the USPTO that allows an inventor to establish an early filing date. The provisional application does not mature into an issued patent unless the applicant files a non-provisional patent application within one year. There is no such thing as a “provisional patent”. If you would like to learn more about provisional patent applications and the benefits of them read my article titled When and Why is a Provisional Patent Application Useful?
In most countries besides the United States, if a public disclosure occurs before a patent application is filed, then foreign patent rights are lost. That is one of the reasons it is very important to keep an invention confidential. Because of certain patent treaties between the United States and many other countries, if you file a U.S. patent application before disclosing an invention, then you can delay filing an international application for up to one year. However, businesses and inventors should not wait until the 364th day after filing their initial patent application to discuss filing for an international patent with their patent attorney. Preparing and filing a patent application takes time and businesses and inventors should give their patent attorneys as much time as possible to prepare their international applications. If you take the right steps, you can put off the decisions and big expense of foreign patenting for a couple of years. If you intend to pursue foreign patent rights, then do not publicly disclose your invention.
The USPTO maintains records of patent ownership, which may be viewable on the USPTO website. Similar to recording a mortgage or deed with a county?s clerk of the court, it is important to record any assignment with the USPTO.
In the patent world, the term prior art means disclosures or documents such as scientific publications, patents and patent applications that are known to the public before a patent application is filed. A prior art search is a search of several databases to find prior art. Under United States law, existing prior art can affect the patentability of an invention. While not legally necessary, many businesses and individuals find the cost of a prior search small relative to the cost and time needed for the patenting process. The patenting process is not an inexpensive process and in many cases can take years for a patent application to complete the examination process. Because of this, many individuals and businesses find it wise to determine the probability that an invention will be granted a patent before deciding to draft, prepare and file a patent application. Determining the probability of acquiring a patent before filing an application also assists an individual or business in deciding what type of patent application to file and is helpful in creating a strategy for protecting ideas and inventions.
A common patent law misconception is that having a patent protects the owner of such patent from infringing on anothers patent. This mistaken belief stems from a misunderstanding of the role of the USPTO and the legal principles of patentability and patent infringement. The USPTO examines a patent only to determine the patentability of an invention and never considers infringement. Even if the USPTO grants a patent on an invention, the patent owner must still be aware of the probability that offering to sell or selling that invention may constitute patent infringement. Before selling a product many businesses have a patent attorney draft a freedom to operate opinion to determine if their invention infringes on someone elses patent.
Neither a state bar admission nor a federal court admission entitles an attorney to represent clients seeking to acquire a patent. An attorney representing clients seeking to acquire a U.S. patent must be admitted to practice before the USPTO. For admission to the patent bar, the USPTO requires that an attorney take and pass the patent bar examination. An attorney must have the proper technical qualifications, which typically is an engineering or science degree, to be eligible for the patent bar examination. Furthermore, advising clients about patentability is more or less advising them about how the USPTO would likely act in a particular circumstance. As such, you must be registered to practice by the USPTO to ethically do so.
A patent application is a complex document that describes an invention in legal and technical terms. For instance, the words comprising and comprises of have drastically different effects when used in a claim of a patent. Believing that the act of filing an application alone will protect your rights is simply not true. Many inexpensive services offer to file patent applications for your client. However, the benefit received from filing a poorly written application is about the same as having no patent at all.
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