Have some basic level questions on patents and IP Law in general?
Paul Roberts of Protect it! IP Washington DC was recently on the Bold Radio station and gave a thirty presentation on Patent Law. This is a great opportunity to get some free information on patent law.
Go ahead and download the podcast now.
We’ve also linked a copy of our transcript to help you take notes during the call.[expand title=”View Transcript” tag=”h2″]
Questions by Michelle & Mindy from Effortless Extensions.
Answers by Paul Roberts of Protect it! IP Washington DC
And speaking on terms of patents. If I have an invention or idea, how can obtaining a patent can help me?
Well, a patent gives you the right to sue other companies or other individuals from selling, making, offering for sell, importing or using the claimed invention. So, if you have an idea and think it is an idea that you can use to make money, buying or selling a product or selling a service and you think you can add value to that idea by preventing others from copying that idea, a patent is one of the best tools in the legal arsenal to do that.
Yeah. We have been through this many many times over again. So, if you have an invention or an idea, how do you know if it is patentable and what should somebody do in their first step to protect it.
There are a lot of laws that governs whether or not an invention is patent eligible, meaning that fits within the type of subject matter that you can get a patent on. Such as, you cannot get a patent on art work, you can’t get patents on land, you can’t get patents on certain kinds of business methods.
So, Paul do you think I should do a patent search myself and if so, where do I begin?
You can always do a patent yourself. Anything that has been published counts as prior art prior relatively to your invention. For searching you can use library resources, internet resources — there are a number of patent databases.
Well you know Paul, I have heard of a lot of companies out there you see them on TV and you find them on the internet where they tell you file a patent for yourself, but why would you suggest that people need a patent attorney?
There are two good analogies for this idea trying to file a patent yourself. In analogy A, let’s assume you get arrested for a serious crime. Legally you are entitled to legally to defend yourself or you can hire an experience criminal attorney to defend you and your chances of winning that suit are much increased and the same applies for obtaining patent protection. Innocent people that don’t hire attorneys often to jail, and worthy inventions don’t get patented when inventors file pro se.
In looking at it in another direction, filing a patent application almost as difficult as building a house. If you aren’t experienced at building houses the house you might build probably will not be done correctly and will take you a lot of time and the time would have might been better built in spent managing your company or building up your product and trying to work in an area that normally you have experience.
People do file patents on their own and are legally entitled to, but the chances being rejected are physically higher and even if it is allowed, very few patents that are prosecuted or filed by an inventor, have claims that have much value. So if you really want to obtain a valuable patent, you will need a patent counselor for it to be done correctly.
So how would I go about finding a patent attorney or knowing that he or she is reputable?
It is the same way that you will find an attorney for any field. Most attorneys used referral network to find clients and put themselves in touch. Most attorneys keep a fairly wide network of other attorneys that are friends with. So if you know an attorney, just ask them and they will network somebody who does patent counseling. I actually have a blog article on that topic.
Also if they have gotten any patents issued?
Yes. I keep a whole library of patents that I have issued and since they are published, they are not providing them. You can see the work product. You can see the kind of drawings, you can see the detail and you see what kind of results that the attorney gets.
So do you have any sites that you can recommend we can search maybe a rating like they would do for doctors?
Avvo, lawyers.com, linkedin, martindale, and Yelp are probably the first places to look when trying to find an attorney’s online rating. There is no official attorney rating, but you can tell a lot by which law firms they worked for.
Now I actually know from experience kind of the answer for this next question, but for our listeners. How long once you a filed would you say it takes to be granted?
It really depends on how you filing. There are ways in the United States to get a patent within a year of the date of filing if you are using for an accelerated application or petition to make special, but you have to qualify for that or pay extra surcharge for filing and if the country you are filing would vary a lot, some countries are much faster than others. If you go through the international mechanism, such as a PCT, it can take even a little longer. But, if you are talking about normal U.S. Utility Application, they are supposed to issue it in about three years. That is what the current legislation required and in some technical fields that’s true. The technical field where they have kind of more development recently, they have to kind of staff them and keep up with the demands and might see later – over a longest period of time.
In my practice, I have seen patents in 2010 or 2011, some issued around now so that is looking in about three years, which is when the Patent Office supposed to be.
Well, you know – just to expand a little bite more when you were talking about the PCT – people who don’t understand what that is. It is part of your U.S. patents that you are filing in foreign countries.
Right. The PCT is a treaty that over 80 countries and a current international way of filing an application. If you want to start with filing a PCT, you do that with the International Bureau and Receiving Office, which might be U.S., Europe or Korea or whatever and you file the International Application. From the date that you filed that, you have another 30 months to enter what they call International Stage, which is filing a particular country for your patent rights. The advantage of filing a PCT, it allows you to coordinate from multiple countries each country has its own deadline for ordering the file. You also have the advantage of a full Search Report and Written Opinion. The country that does the search and you select the Search and Authority file would review your claims and technology and prior art and apply that. It would give you a good idea about how patentable it is if you want to file four countries or maybe you think it is not selectively may new one and you find out what exactly you have invented and decided it is not worth pursuing.
So what would you say is a percentage of applications that are actually given to patent?
It really varies across the world. Every Patent Office has a very different statistic. The way the statistic is analyzed is very different. But to give you an example, in the United States where a Utility Application, this is not the same as for the Plant Patents or Design Patents. Utility deals with functional and mechanical time devices or electronic or medicals tools, things like that – over 40% of applications are allowed before some form of appeal or RCE, meaning that over 60% being rejected needs to either renew your Request for Continued Examination or you need to appeal the case to the Board in a different decision.
Is getting a patent an easy process for you?
It’s straight-forward because I have done it so many times. It never gets easy. I am always sharpening my methods to become more efficient and more persuasive. Patent prosecution involves a lot of steps, particularly when you are beginning with multiple inventions or multiple versions of a technology or your technology has multiple features that needs to be protected or start to expand on the International platforms so that you need to file in multiple countries, there lots of deadlines and lots of organizations and prioritization for which patents and which types of technology you need to focused on first, based upon the type of business and where you competitors are.
Do you need to wait until a patent is granted before they can sell or advertise whatever their product is?
So – a patent gives you the right to exclude other people from using your invention. They actually don’t confer any rights onto you. So, filing a patent doesn’t allow you to advertise or sell the products. You can obtain a patent on a technology and still infringe someone else’s patents if that person had a patent on some particular feature on your technology. Other examples of that, might be a company that has a patent on a special battery. One of those special batteries that goes in a cell phone, and you own the patent on the keypad of the cell phones. So if you go ahead and sell that phone with that battery, you will infringe the battery company’s battery patent, so you need a license, even though they may have 50 patents on that phone. So, you don’t have to really wait to file a patent issued in order to filing your invention. The big caveat to remember is the act of putting your products on-line, offering for sale, selling it, pursuing it, anything like that is considered a bar event, meaning that you may be prevented from obtaining patent protection at all. So, whenever a company and/or individual thinking they want to try selling their device or put it on kick starter or whatever, that is the time you really need to talk to an attorney, because there are a ton of laws and regulations that control whether your publication will hurt your ability to get a patent.
So, naturally what you are saying is if you have an idea and you pretty much haven’t done your research or contact a patent attorney and just say you want to go on one of this corresponding sites and say “Hey, I got this great idea and I want you to back me on this,” it could actually cost you more problems?
Well, it can cost you a couple of different problems. It potentially maybe patented technology and you are basically letting them know that you are going to be building this thing, or building or selling this and that the receiving end of an infringement letter. If you are planning on getting a patent on that technology, it can also cost you to lose your ability to obtain a patent. Every country has a different disclosure requirement for public disclosures and if you make a public disclosure before you file, your patent rights could be either damaged or extinguished all together.
So, if I were to get a rejection of my application does that mean that I can no longer sell the product?
Most people get rejections on patent applications and over 90% of applications are rejected at least once. So, rejections are kind of part of the process of obtaining a patent. If you have your patent application rejected and your attorney decides that he or she is not really able to overcome the objections because the prior art too strong are the application was written incorrectly or whatever, you can still sell your products, providing that you don’t infringe on other person patents. You don’t need a patent in order to sell anything, you need a patent to stop other people from the product or service.
So, it’s for your own protection.
It’s for protection from competition. Your right to make anything is independent of your right to stop a third party. If you want to learn whether anyone owns a patent on your technology, you’ll need a patent infringement search, freedom to operate search, or landscape search.
Switching gears… I have gotten a final rejection from the USPTO… does that mean I can’t sell my product?
Patents and the FDA are very different. The FDA approves products to go on the market. The USPTO approves inventors the right to exclude others. As far as the final rejection element, when you get a Final Rejection is on the second round of prosecution. This happens when the Examiner doesn’t find the attorney’s document persuasive or the amendment persuasive, so at Final, you have three or four options. One option is to file a Request for Continued Examination, which reopens the prosecution. That delays prosecution up until a year almost and it has a fixed fee associated with it. But usually that is a good way to open prosecution. You can also ask for a Request for Reconsideration, where you basically inform the Examiner that you think the grounds for invalidity is wrong or the arguments to be made isn’t right and ask to withdrawn it. You can also contact the Examiner and if it’s small amendments you can make, sometimes the Examiner will accept an After Final Amendments. If it’s going to be equip to allow it. You can also file a Continuation or Divisional Application to pursue the same patent rights in a follow-on application.
What are the grounds for rejections when it gets to that point?
Well, at a high level there only a few. Rejections are made based on lack of enablement, lack of clarity, lack of patent eligibility, lack of novelty or the invention is completely obvious?. So, the rejections are going to be one or more of those issues. For example, the patent examiner might specify that she doesn’t think the patent should be granted, because your description is not clear enough and she cannot understand what it is you said in these claims. At that point, you are would either argue yes it’s clear enough and here why and here is how it should be read or you change the claims so that it was clear enough.
And if it was double-patenting, then you run the risk of being prosecuted on infringement?
Double-patenting is a judicial doctrine that prevents a single individual from owing more than one patent on the same invention. So, if you filed for a patent on a given technology, and you filed another on basically the same thing, the Patent Office would tell you that is double-patenting and would deny your application. At that point, you would either argue that is not double-patenting for whatever reason, i.e. it’s not that close or the patent examiner applied the law incorrectly etc. You can always change the claims so that they no longer cover the same invention. Or you can file what is called a Terminal Disclaimer in which you disclaim the patent that you get with the second application and this also ties both applications together. Typically, if you are in that situation, you would want to consider why you needed to file the second application so similar to the first one. Sometimes the small changes is necessary because some company that making a similar product change just a little bite outside of the current claim scope, different claims to basically cover them and stop them from making the product.
So, you can continue to add to your claims when someone else is marketing something like you say have a small change to it. You can continue to add to your claims to cover those?
Well, it depends. So, you are allowed to file an additional application on your technology as long as the application is pending. Once it is issued, the claim of scope is fixed. So, what a lot of companies would do is file a second so they can keep on pending and to keep is pending so that they craft claims to cover the competitor and that will be the Examiner and they will get that issued and they will file another one. After a while, there are only so many ways that you can claim something and you have basically exhausted are the different options for patenting.
There is also a proceeding called Reissue, when you surrender your patent rights back to the Patent Office and you tell them “Really we want a different claim” and there is a certain time period for that based upon when your patent issued and things that you have to put in the request for reissue in order for the request to be approved.
Okay. Well, if I am still in the pending stages of the patent and I find that another product that is sold that is infringing on the one that I am patenting, can I stop them?
Well, if you find that they are making your product that you have disclosed in your invention, definitely turn to your attorney for that. Because more likely than not, he or she would want to make sure that your current pending claims cover your product. They will also compare the claims to the accused device or system–.
If your patent is still pending, can you stop another company and file for infringement?
You can get what is called a provisional patent protection right after you file your claims become public so that people can see it. But you can’t actually enforce those rights until your patent is issued and if your claims are substantially changed in the process, because of prior art, or clarity, obviousness or whatever, then it is only new claims that you are able to enforce. So, while your claims are essentially pending, you can alert the company that “Hey, I have file a patent on this and in the future you might need to be a license from me, so stop making this product.” But you can’t actually stop them, because you don’t have any enforceable rights until your patent is issued.
Well, what are patent claims exactly?
They are the numbered paragraphs that on the back of a patent or a patent application, and they set forth the set of features or steps or elements that you are claiming is both new and obviousness. A common metaphor that us patent use is the chair metaphor. Claim 1, A a wooden chair comprising four legs attached to a seat and a back attached to a seat and wherein the seat is covered with a pad. That claim essentially sets forth the metes and bounds which you regarding as your invention. The claim says all the things that your invention has to have. So, trying to build something without those things, would be infringing those claims.
So how long is a patent issued for?
When it expires depends on the country, but in the U.S. they expired 20 years from the day of issued. That is providing of course that you pay for all the maintenance fees that the Patent Office or the Foreign Patent Office requires. They can do it different times. Some countries would do it a year, some countries you have do it 3 ½ years.
So, from the date it is issued, it is good for 20 years.
Well it’s good for 20 years from the earliest priority date. So if you filed Application A in 2010 and file continuation Application B in 2012, both Application A and Application B will be expired 20 years from the 2010.
And what happens if you don’t respond to the maintenance upkeep of it for the three years or whatever – timeframe?
In most countries, there are only few exceptions, the patent will wind up we call “grace period,” which is basically a late payment fee window. You can still pay but the fees to keep your patent in force will be an extra 50%. Grace period in most countries is 6 months and a couple that are a year, but most of the ones like U.S. are 6 months. If you don’t pay after 6 months, then you patent rights are expired and if they expired, you can’t enforce the patents anymore. There are ways to revive an application for unintentionally not paying the Issue Fee, but those petitions are only granted if you can prove to the Office that you was unaware or it was unavoidable, things like that. It’s really should be avoided and will always be a weakness in the patent to exploit.
Right. Kind of going back a little bite, so when somebody first comes up with an idea, they have a tendency to want to share it with everybody family members, friends and don’t you think this is a great idea. But there is such a thing as a NDA or a Non-Disclosure Agreement and why is that necessary and is it necessary for family and friends?
You are asking great questions. Okay, a Non-Disclosure Agreement is just like a Confidentiality Agreement. It says where the parties need to talk about and how the party has been handled – confidentiality of any information, communication, or picture or whatever and after a certain period of time, confidentiality usually lead to damages for disclosing it. Because patent rights have to be filed before they are disclosed, Non-Disclosure Agreement and patents kind of goes hand in hand. So, if you talking to a company about potentially licensing or selling the technology that you have not filed on a patent yet — talking to that company about it would create a disclosure that can bar you from obtaining a patent. Leveraging an NDA, will allow you make that disclosure without the disclosure counting as prior art.
So, what about telling your family members about it and you are having your family signing an NDA?
So, there is no statutory requirement that I know of about (e.g. consult with an attorney on this issue) that says the NDA have to be in writing (although it should be). So, to take an example if you told your brother about this invention, there will be an issue as to whether that disclosure counts as disclosure against your patent. There probably would be an argument that the disclosure was implicitly confidential. Plus the scope of the disclosure is relevant. If you don’t go into the novel parts of the invention, then the disclosure won’t be material anyway. There is also varying caselaw on how “public” the disclosure needs to be to count as a public disclosure. One person is probably too small, but 15 people would probably be enough. Of course, if the person you speak with puts it on Youtube or puts it on Facebook, that disclosure can destroy your patent rights. You’d be stuck with a contact claim based on the breach of the NDA you may or may not have gotten signed.
So I am curious. I do business consulting for new and establishing businesses and coming up with unique business methods, is that something that is patentable?
Business matters are patentable, but they are difficult to get patented and in Europe as well – right now the law is kind of in flux and shift for what type of patents are patentable and which ones are not. Typically right now, your methods have to be very detailed and very integrated with a specialized computer. High level business models that are divorced from any type of special machine or computer, are unlikely to survive challenges under 35 USC 101. For more information on that, download my patent eligibility slide deck or purchase our patent eligibility analysis.
So, for instance software or maybe iPhone application?
Sure. There is some iPhone application or technology is patentable and some is not. Also, novelty and obviousness are going to be an issue. So, depending upon how much details are in algorithm and what’s going on in terms of the processing that A5/A7 processor of the iPhone is performing, that is what will ultimately control whether the patent can be granted. Certainly if you are thinking about filing an application in the software technology, working with a firm experienced in that area like Protect it! IP is a wise idea.
Well, is there a difference from something that is not a tangible product like say it’s not even technology sort of speaking but an idea that is copyrightable instead of patentable?
Yes, there are several forms of intellectual property right, patents is one of them, design patents, you have trademark rights, you have copyrights, you have trade secrets, you have publicity rights, you have privacy rights, there is a number of them. Copyright protects the expression of an idea. So it’s the way you write something, it’s the way you sculpt something, or organize something, or how it looks. Lot of products can have both copyright and patent rights on them. A utility patent can protect the functionality and how the device works – copyright or trademark dress rights protect the look. The Design patents also protect how it looks, but in a different way and you can actually use both Design patent and Trademark rights to protect the way your product is packaged or the way that it is designed from an ornamental point of view.
So actually a patent attorney is somebody who can help you decide what is the best course whatever you’re doing. For someone just coming up with an idea, let’s say that don’t even have a prototype or something, this is where the expertise comes in and say “Listen, you really should copyright this or you should trademark this or patented or the type of patents?
Sometimes you can use multiple form of protection for lots of products that sense file Utility or Design patents.
When something that is in written words or music – and that type of situation, you can write something down and have it on a piece of paper and somebody reads it over your shoulders and the next thing you know – how do you prove that you were the first person to write that?
Well the most direct way of doing that is to file for a patent copyright before you publish something if you feel you are going to have trouble proving original publication. The filing fee for a copyright is very minor compared to preparing trademark and patent rights. It’s also a registration process and you have a registration date when you file for copyright that would prove the date you came with this – graphics or song or whatever. Enforcing copyright is a different matter, and that certainly requires an attorney. If you make your material easier transferrable without restrictions, then you will see more copies of it. Copyright also covers duplication of software which I usually get involved and there is lots of ways you can restrict software. One is duplicating, authentication, registration server technology, and watermarking to help reduce how many people can make copies the effective way. Certainly, there is just as many people working on circumvention technology but that is a crime by itself. Sometimes companies have to enforce the right for people who are copying their software or their song.
So if we go through the process of copyrighting or patenting, how do we put value on that – I went through process and now I’m done and I want to sell it. Is that something that I can do?
Yes, you could create a painting and apply for a copyright on it and get a registration and you can sell it. So how does it really work? Well what artist do is they usually sell prints, photographs, or hire people to paint copies that looks like the original. If you sell your original one basically your rights will go with the original one and you usually sell the right one to recopy or distributed or whatever. That’s often how the artist license their rights.[/expand]