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Frequently Asked Questions Regarding Patents

  1. What is a Patent?
  2. How is a Patent different from a Copyright or Trademark?
  3. Why is getting a Patent important?
  4. Are there different types of Patents?
  5. Why does the U.S. Government grant Patents?
  6. How long does a Patent monopoly last?
  7. Must money be paid to keep the Patent monopoly full term?
  8. Are there any deadlines for filing Patent applications?
  9. What if someone files a Patent application on my invention before me?
  10. Can a Patent granted in the U.S. be enforced in other countries?
  11. What if I want a Patent in a foreign country?
  12. What is a Patent search?
  13. How do I benefit from a Patent search?
  14. Can I do my own Patent search?
  15. Is there a Patent application form that I can fill-out and send to the Patent Office?
  16. Can my business or corporate attorney file a Patent application for me?
  17. Supposing I get a Patent, what can I do if someone is selling copies of my invention without my permission?
  1. What is a Patent?
    A patent is both a document and the grant of certain rights and powers associated with the document.  As a document, it is legal and precise, and describes in detail a novel and useful invention, and all its important features.  In the U.S., patents are officially called "Letters Patent" and they are granted only by the U.S. Patent and Trademark Office ("USPTO").  An inventor obtains a patent by filing a formal application with the USPTO and convincing them that the invention is new and useful.  Foreign countries have a similar system for issuing patents.

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  2. How is a Patent different from a Copyright or Trademark?
    Ideas come in many forms.  Patents protect ideas that become new and useful inventions.  Copyrights protect ideas that become original human expressions.  Trademarks protect ideas that become ways of uniquely marking one's goods or services to distinguish them from competitors' goods or services.  Copyrights can attach to many forms of human expression but inventions cannot be protected by Copyright Law.

    For example, suppose you invented a novel computer mouse and wrote a book about how to build it.  A copyright attached to the book would prohibit others from copying the book, but would not prohibit others from using the book to build and sell copies of your novel mouse.  Whereas a Patent on the design and function of the mouse would prohibit others from selling copies of the mouse, but would not stop others from copying the book.  As for Trademarks, in general they are marks placed upon goods and services to indicate the source of same to a purchaser; they distinguish the goods and services from those of others.  Trademarks do not protect human expression nor do they protect inventions.

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  3. Why is getting a Patent important?
    Patents are powerful.  In the U.S. a patent gives the inventor a legal monopoly for a fixed period of time.  The monopoly covers the invention described and claimed in the patent, and forbids anyone or any company from making, using, offering for sale, or selling the invention in the U.S. without the permission of the inventor.  The monopoly also prevents anyone or any company from making the invention in a foreign country and bringing it into the U.S.  It is a very powerful and comprehensive monopoly.  Foreign countries issue similar but in some cases more limited patent monopolies.

    The patent monopoly is why, for example, a drug company can charge hundreds of dollars for a single dose of a patented medication; the patent prevents other drug companies from making, selling and importing copies of the medication in the U.S.  Ever wonder why a less expensive generic version of a drug is not available?  Most likely it is because the patent on the drug has not yet expired.

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  4. Are there different types of Patents?
    In the U.S. there are three types of patents:

    Utility patents cover any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.  For example, if the invention is a new and useful process for repairing potholes in roads, a utility patent could cover the steps taken to perform the process.  If the invention is, for example, a new and useful machine, a utility patent could cover the parts of the machine and how they interact.  If the invention was, for example, a one-piece hand tool, a utility patent could cover the aspects of the tool that make it new and useful for its intended purpose.  If the invention is a new and useful drug, a utility patent could cover the composition of the drug.

    Design patents cover any new, original, and ornamental design for an article of manufacture. Basically they protect three-dimensional ornamental features of an object, but not its structural or functional features.  Design patents usually do not cover two-dimensional decorative aspects, such as how an object is colored, or any printing or artwork on a surface of an object.  They do not cover ornamental features that are also functional.  For example, Design Patent coverage may not be available to a shampoo bottle that only has a new, original and decoratively shaped pour handle if the handle shape also makes it easier to grip the bottle while pouring.

    An important note about Design Patents: As explain in SCAMS, the "Invention Promoters" that guarantee you a patent most often mean a Design Patent (although they do not explain that to you).  Unfortunately, Design Patents are the easiest to get but offer the weakest protection.  This is because any slight variation in ornamental appearance can often avoid the patent.

    Plant patents cover the invention or discovery and asexual reproduction of any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber-propagated plant or a plant found in an uncultivated state.  Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.  The term tuber is used in its narrow horticultural sense as meaning a short, thickened portion of an underground branch.  Examples of tuber-propagated plants are the Irish potato and the Jerusalem artichoke.  A plant patent is granted on the entire plant.

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  5. Why does the U.S. Government grant Patents?
    The U.S. Government does this to encourage inventors to reveal their inventions to the public so that after the patent monopoly expires, the public can freely make, sell, use, and import the inventions with or without permission of the inventors.  It is believed that the granting of patent monopolies for a limited time provides strong motivation for inventors to spend money and resources to create new, useful things that ultimately benefit the entire public.  Foreign countries grant patents for the same reason.

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  6. How long does a Patent monopoly last?
    In general, in the U.S. and in other countries, the patent monopoly begins on the date that the patent is granted and expires 20 years from the date that an application for the patent was first filed, or, in special cases, from the date an earlier related application was filed.  (In the U.S. there are certain provisions that add time to the 20 years to compensate for excessive Patent Office processing delays, and extensions related to drug approval processing.) U.S. Design Patents (which are explained in Answer #4 above) have a term of 14 years from grant.

    In foreign countries the patent monopoly has limitations.  Most foreign countries require that the patented invention be manufactured in that country after a certain period, usually three years.  If there is no manufacture within this period, the patent may be void in some countries.  Also, in most foreign countries the patent may be subject to the grant of compulsory licenses to any person who may apply for a license.

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  7. Must money be paid to keep the Patent monopoly full term?
    In most cases money must be paid periodically to keep a patent from expiring prior to the 20 years.  In the U.S., patent holders must pay "maintenance fees" on three occasions to keep their monopoly alive; 3 1/2 years, 7 1/2 years and 11 1/2 years from the date a patent is granted.  Most other countries require annual payments called "annuities" or "renewal" fees.  No fees are necessary to maintain a U.S. Design Patent in force.

    In reality the "maintenance fees'" and "annuities" are just taxes imposed on patent holders to keep their patents from prematurely expiring.  The imposition of "maintenance fees" in the U.S. was instituted during President Reagan's term.  Prior to his term the U.S. stood alone as the only major country not extorting money from patent holders simply to keep their patents alive.

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  8. Are there any deadlines for filing Patent applications?
    There are four situations an inventor should be concerned about.  The first situation is whether the inventor wants patent protection in any foreign countries because most foreign countries have an "absolute novelty" requirement as a condition for granting a patent.  This means that any publication of your invention before your foreign filing date will prevent you from getting a valid patent in that country.  For more on this please see the last two paragraphs of Answer #11 here.   So if you want to start advertising and selling your invention, or if you want to write about it in a publication, you should definitely file a patent application beforehand, preferably in the U.S.

    The second situation to be concerned about is whether there is another inventor somewhere working on the same invention.  Since there cannot be two Patents issued for the same invention, this situation could result in a contest as to who gets the Patent.  For more on this please see Answer #9.

    The third situation to be concerned about stems from the current version of Title 35 U.S.C. 102(b) but which will not be in effect after March 15, 2013.  102(b) basically says that a patent will not be granted on an invention if: "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States." In other words, 102(b) creates a one-year backward grace period ending on the date that you eventually file your Patent application.  If any of the events listed in 102(b) occurred before the grace period started, you will be denied a patent, but if all of the events occurred within the grace period, you have no problem.

    The fourth situation begins March 16, 2013, the date on which the U.S. becomes an "absolute novelty" country due to the America Invents Act (AIA) passed in September of 2011.  Basically this means that as of March 16, 2013, if your invention becomes "available to the public" anywhere in the world before you file a Patent application, you will be denied a Patent.  The statute gives some examples of "available to the public" - described in a printed publication, or in public use, on sale, or described in an issued patent or in a published patent application naming another inventor.  However all is not lost because there is an exception in the AIA by which an inventor might be able to avoid the "absolute novelty" axe - see the last two paragraphs of Answer #9 here for more on this.

    From all the above, the message should be clear - file your Patent application ASAP (as soon as possible).

    Having prepared and filed numerous Patent applications, we are fully aware of the complexities and requirements of Patent applications; we use our technical expertise and experience to prepare all applications to give our clients the broadest protections.

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  9. What if someone files a Patent application on my invention before me?
    The U.S. currently uses a "first-to-conceive" system for deciding who gets the Patent if two or more applications claim substantially the same invention.  This system is based on the theory that the act of invention involves two distinct events: "conception" and "reduction to practice".  Conception is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention.  Reduction to practice can be accomplished two ways: (1) creating some testable, tangible form of the concept, and sufficiently testing it to demonstrate that it will work for its intended purpose, or (2) filing a U.S. patent application.  When there is a contest between two or more patent applicants for substantially the same invention, the issue of "diligence" is critical.  The applicant who first conceived the invention prevails over those who later conceived the invention, even if the first-to-conceive applicant is not the first to file a patent application, as long as the first-to-conceive applicant exercised reasonable diligence in reducing the invention to practice.

    The complicated "first-to-conceive" system simply means that if an inventor exercises reasonable diligence in going from conception to reduction in practice, and keeps good records and witness statements as proof of the due diligence, then the inventor has done everything needed if there is a priority contest.  Since "reduction to practice" can be done by simply filing a Patent application it is a good general rule to file a patent application as early as possible.  If there is no good reason to delay, then do not delay.

    But ... on March 16, 2013 "conception" and "reduction to practice" no longer matter.

    On that date the America Invents Act makes major, but not necessarily good, changes to U.S. Patent Law as to how the winner is determined in a priority contest.  On March 16, 2013 the U.S. stops using the "first-to-conceive" system and begins using a "first-to-file" system.  Primarily this means that on and after March 16, 2013, every inventor intending to file a U.S. patent application should do so as fast as possible because under the AIA the race to a patent is won by the first to file a Patent application.  In other words, if someone files a Patent application for your invention before you do, the someone gets the Patent (if the Patent Office decides to issue a Patent) and you don't.

    But don't despair yet!  If an invention is still in the conceptual stage or not yet proven, or for whatever reason is not yet ready to be patented, an inventor does nevertheless have a possible way under the AIA to win the race over an earlier filed application.  An exception ((35 U.S.C. 102(b)(1)(B)) to the first-to-file rule comes into play whenever an inventor publically discloses an invention and then files a patent application based on the disclosed invention within one year of the disclosure.  This has the effect of giving the inventor's application priority over an earlier filed application based on the same information previously disclosed by the inventor.   For example, inventor X is working on a new potato peeler and publically discloses the new peeler on February 1, 2014, meanwhile inventor Z files a U.S. application on February 2, 2014 claiming substantially the same potato peeler that X publically disclosed the day before.  If X files a patent application for the new peeler on or before February 1, 2015, who wins the race to a Patent (if the USPTO grants one)?   X does, because X's public disclosure preceded Z's filing, even though by only one day, and X filed an application within the one year time limit of the exception.

    While the above paragraph explains an exception to the first-to-file rule, the exception has not been tested in court, and probably will not be tested for many months after the AIA takes effect, so it would be prudent not to rely on the exception unless there is no other choice.  If there is a choice, the inventor should file an application ASAP!

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  10. Can a Patent granted in the U.S. be enforced in other countries?
    No.  The rights and powers granted by a U.S. patent extend only throughout the territory of the United States but have no effect in a foreign country.

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  11. What if I want a Patent in a foreign country?
    An inventor who wishes patent protection in other countries must apply for a patent in each of the other countries, or through an international treaty allowing multi-country patent filing.  One such treaty is known as the Patent Cooperation Treaty ("PCT") which the U.S. joined in 1978, and currently includes over 180 member countries.  The treaty allows an inventor to file an official patent application in all the 180 countries, including the U.S., simultaneously by simply filing one PCT application in the U.S. The PCT also establishes the official filing date (which is very important) for all the 180 countries as the date the inventor filed in the U.S.

    Unfortunately the PCT does not get you patents in the 180 countries.  It gets you applications filed and filing dates but not patents.  In order to get patents in one or more of the 180 countries, an applicant must select the countries in which he or she really wants a patent.  Some of the countries belong to "regions."  For example most European countries belong to a region called "European Patent Organization," So an applicant can select individual countries or multiple countries by selecting a region.  The applicant must then "enter" the selected countries or regions by filing entry papers and paying fees in each of them.  Often translations of the PCT application must also be filed.

    In order to allow time for an applicant to find out whether his or her invention is a money-maker before the applicant must spend more money entering countries or regions, the PCT gives an applicant at least 30 months from the application's priority date (the filing date of the PCT application or earlier in some situations) to make the selection.  Once an applicant's PCT application enters a country or region, all matters concerning the entered application must be handled by attorneys local to the country or region.  We can file PCT applications in all member countries and regions, and we have relationships with law firms throughout the world to assist with entered PCT applications as necessary.

    It is also important to realize that most foreign countries have an "absolute novelty" requirement as a condition for granting a patent.  In other words, if you file a patent application in a foreign country having an "absolute novelty" requirement, any publication of your invention before your foreign filing date will prevent you from getting a valid patent in that country.  Fortunately there is a way to tell the world about your invention before you need to foreign file, it's an international treaty known as the Paris Convention for the Protection of Industrial Property.

    The Paris Convention treaty is followed by about 170 countries, including the United States.  It says that each country guarantees to the citizens of the other countries the same rights in patent and trademark matters that it gives to its own citizens.  The treaty also establishes a grace period of 12 months for patent applications.  Under the treaty, if an inventor files a patent application in the U.S. (or any other treaty country) before any public disclosure of the invention, the inventor then has the twelve-month grace period in which to tell the world about his or her invention, and avoid the foreign "absolute novelty" problem, as long as the inventor does all foreign filings before the grace period expires.  This is because under the treaty all patent application filings after the first filing have the same effective filing date as the first filing, as long as all the later filings are done in treaty countries within 12 months of the first filing.  The grace period for design patents is six months.

    We have extensive experience in the preparation and filing of foreign and international applications.  We will be happy to assist you with any foreign filing you may wish to do.

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  12. What is a Patent search?
    One kind of search is commonly called a "prior art" or patentability search.  "Prior art" typically means granted Patents, published Patent applications, and can include other publications, which fall within the same, or closely related, classifications as your invention, and which may cause problems in getting a Patent on your invention.  We do a comprehensive search and review of prior art that a patent examiner could possibly use for rejecting the claims of your future application, especially on the grounds of "anticipation" and/or "obviousness." "Anticipation" means that a single prior art document substantially describes all the elements of your invention.  "Obviousness" means that the differences between your invention and one or more prior art documents are such that the subject matter as a whole would have been obvious at the time you made the invention to a person having ordinary skill in the art to which the subject matter pertains.  Normally a prior art search encompasses all the searchable files of the USPTO, but they can be expanded to include searchable records of the World Intellectual Property Organization ("WIPO") and those of foreign patent offices.  We can search as broadly as the case may require.

    We also do comprehensive infringement searches to determine whether a proposed product or invention infringes any un-expired patent claims.  Because this type of search concerns only possible infringement, only the claims of un-expired patents are relevant and searching for expired patents or non-patent literature is unnecessary.  An infringement search is generally much more complex than prior art searches because the scope of the claims of every relevant patent must be determined.

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  13. How do I benefit from a Patent search?
    One benefit of a prior art search is that by finding problematic patents and published applications beforehand, we can write a better Patent application for you; we can write claims that avoid prior art problems.  This most often saves time and money during prosecution of your Patent application.  Another benefit is that the inventor can often use things learned from the search results to improve his or her invention.  Furthermore, once you apply for your patent, the first thing the Patent Office examiner does is perform a search of prior art.  So another benefit is that if there exists some patent-stopping prior art, it is much better to learn the bad news and not file a Patent application, than to learn the bad news from the examiner after spending considerable money on the application.  For these reasons it is usually prudent to have a prior art search conducted beforehand.  Once you receive the results of a search and discuss them with our office, you can then make up your mind whether to proceed with a formal patent application.

    The primary benefit of an infringement search is avoiding a costly patent infringement lawsuit if the search finds likely infringement.  If infringement is not likely then the benefit is some measure of peace of mind.  Another benefit is that you can often use things learned from the search results to improve your products.

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  14. Can I do my own Patent search?
    Yes.  You can do your own search.  You can search patents on Google.com here and at the U.S. Patent and Trademark Office's website here.  You can also search in general for documents and products which could potentially be considered prior art by an examiner.  We find that client searches are very helpful and can be a very positive learning experience for the client, but you should not rely solely on your search results.  This is because patents are very complex legal documents (legal scholars say they are the most complex), and misinterpreting the scope of any patents you find or overlooking relevant patents can lead to disasterous results. 

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  15. Is there a Patent application form that I can fill-out and send to the Patent Office?
    No.  Patent applications are not fill-in forms.  Each patent application is a newly created document because they each describe a purportedly new invention.  Preparation of a patent application is a complicated matter; and every application must conform to the standards of the U.S. Patent & Trademark Office.  Generally a Patent application consists of a detailed written description of an invention, an abstract, most often formal drawings illustrating all the important details of preferred embodiments of the invention, and a set of claims.  Each claim is basically a listing of elements essential to an invention.  The claims of a Patent define the scope of protection afforded by the Patent.

    If you look at a Patent, you will see the application from which it was granted.  This is because the Title, Abstract and drawing on the first page of a Patent, and all the text and drawings on all the following pages were copied exactly from the corresponding Patent application.  We invite you to visit some of the Examples of Our Patent Work via the links on this page.  The examples are all issued Patents and published Patent applications, and they all illustrate the complexity of Patent applications.

    Having prepared and filed numerous Patent applications, we are fully aware of the complexities and requirements of Patent applications.  We use our technical expertise and experience to prepare all applications to give our clients the broadest protections.

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  16. Can my business or corporate attorney file a Patent application for me?
    Not unless he or she is also a registered Patent Attorney.  An attorney who not is fully registered or in good standing with the U.S. Patent and Trademark Office (USPTO) cannot file Patent applications in the U.S. In order to become a registered "Patent Attorney" one must: (1) be an attorney at law licensed to practice law in at least one state; (2) have a scientific or engineering degree or practical engineering or scientific experience; and (3) pass a licensing exam (commonly called the Patent Bar exam) administered by the USPTO that tests the attorney's knowledge of U.S. Patent Law and Patent Rules and procedure, and the attorney's skill in drafting Patent applications and responding to USPTO Office Actions.  Mr. Tighe, the lead attorney at PPLC, has been a registered Patent Attorney in good standing for over 32 years.

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  17. Supposing I get a Patent, what can I do if someone is selling copies of my invention without my permission?
    There are no patent enforcement police (although maybe there should be) so the burden falls solely on the Patent holder to enforce it against infringers.  Any person or company that makes, uses, offers for sale, sells or imports into the U.S. a patented invention during the term of the patent without permission of the patent holder is an infringer.  Generally, to be an infringement, one or more of the claims of your Patent must "read on" the offender's product, service or business method.  "Read on" means that every element or substantially every element listed in one or more of your claims can be found in the offending item.

    Where only insignificant differences exist between the elements of a claim and the offending item, a legality called the "Doctrine of Equivalents" may be used to find that an infringement does exist.  The purpose of the doctrine is to deter infringers who may attempt to make insubstantial changes to avoid the literal language of the claims.  An infringement may also occur while the invention is in the patent pending stage.

    If you find or suspect infringement of your Patent, a typical first step is to send the infringer a cease and desist letter, although at times it is best to go ahead and to file a lawsuit as a first step.  If you are not satisfied by the response to your letter, the typical next step is to file a formal complaint against the infringer in federal court - it cannot be filed in state court.

    Filing the complaint and serving (e.g., delivering) a copy on the infringer starts a lengthy lawsuit that could span several years.  You should also be aware that Patent infringement lawsuits are very expensive for all parties involved.  Most often the purpose of such a lawsuit is to recover money from the infringer and get an injunction.  An injunction is usually desirable because then the infringer will be in contempt of court for infringements that occur after the injunction is issued - federal judges have an enormous range of powers, so it is not wise to be in contempt of court.

    As for money, if you are successful you will be awarded trial costs.  You might also be awarded a reasonable royalty for the entire time period of infringement and/or all the infringer's profits derived from the infringement.  If the court finds that the infringement was willful and the case exceptional, your money award might be trebled and you might be awarded money to cover your attorneys' fees.

    If you are involved in any patent litigation, we encourage you to seek the advice of a Patent Attorney immediately because important deadlines exist.  Know that we are experienced, aggressive litigators.  We will be happy to represent you anywhere in the U.S., and we can assist you in getting appropriate counsel elsewhere.

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