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Time Keeps On Ticking: Review of Statutory Time Requirements for Patent Applications

March 11, 2010

By Stephen T. Scherrer, Registered U.S. Patent Attorney

“To achieve great things, two things are needed; a plan, and not quite enough time.” -Leonard Bernstein

You have the first part of the above quote: a “plan” – and by this I mean an invention – a product or process that you know will sell well. But, you are concerned that your invention will be so wildly successful that others will copy the product to line their own pockets. Therefore, you are rightly interested in patent protection. However, it is the second part of the above quote that trips up inventors: time. The U.S. Patent Office and international patenting bodies have very strict rules about time – such as time limits for filing U.S. provisional and non-provisional applications, international applications and the like. This article is meant to shed a little light on some of these time limits, and provide some tips on how to avoid getting caught in the trap of running out of time. It is my experience that these somewhat complex and confusing time rules are simply not known or understood well by inventors.

One Year Statutory Bar – Applications must be filed within 1 year of public disclosure or offer for sale

Recently, a local business owner spoke to me about the possibility of obtaining patent protection for a product. Upon further investigation, I learned that this company had been selling this product in the United States for about two years. Unfortunately, I could not help him prepare and file a U.S. patent application because patent protection is barred by the “one year statutory bar.” In essence, the one year statutory bar means that patent applications in the U.S. must be filed within 1 year of a public disclosure or an offer for sale of the invention or the invention is barred from obtaining patent protection.

Because he had been selling his invention for about two years, his product would operate as “prior art” against his patent application. Since the product he had sold for two years was identical to what he was attempting to patent , the Patent Office would not grant patent protection for his invention, and any application would be a waste of money and time for the inventor.

It is extremely important to understand that the clock starts to tick the day you publicly disclose your invention or offer your invention for sale. You can protect yourself against public disclosure by ensuring that anyone you speak to about your invention signs a non-disclosure agreement. However, even a non-disclosure agreement will not protect you from starting the time limit triggered by an offer for sale.

But the United States is unique in granting even the 1 year time limit for filing after a public disclosure. Most other countries no ability to file applications once publicly disclosed. For example, if you are interested in obtaining protection in Europe, you will be barred from obtaining a patent the moment you publicly disclose or start selling the invention publicly unless you file an application first. I typically recommend filing an application prior to any public disclosure to protect international filings.

But it is not necessary to file an international application immediately. You can claim priority to an earlier filed application in a first country and not be subject to the bar as long as you file the application in the first country before public disclosure of the invention, and then as long as you file your application in the second country within 1 year of the filing in the first country – the so-called “Paris Convention.”

“Paris Convention” – Applications in other countries must be filed within 1 year of priority

Most countries are subject to the “Paris Convention”, which specifies, as noted above, that a patent application filed in a second country may claim priority to an application in a first country if the application in the second country is filed within one year of the application in the first country. In essence, the application filed in the second country can “piggyback” on the filing in the first country.

For example, you first file an application in the United States. You may then file in most other countries and claim priority to the U.S. application if within one year. One way to save money, at least initially, is to file a PCT application , which allows a filer to file and pay the fees for only a single international application that designates most other countries around the world. The filer would be able to defer the fees for the countries of interest for 30 months after the priority date of the U.S. application.

Provisional Application Conversion – Non-provisional applications must be filed within 1 year

Another time limit that inventors should be aware of is the one-year time limit to convert a U.S. provisional patent application into a non-provisional application. For various reasons, an inventor may be interested in initially filing a provisional patent application (perhaps because it can be less expensive than a non-provisional application to file and provides some time to find out if there is a market for the product). However, a provisional application only provides a priority date but is not examined by the U.S. Patent Office. To get examined, one must convert the application to a non-provisional application within 1 year. In addition, foreign filings under the Paris Convention may claim priority to a U.S. provisional application.

EXAMPLES

So how do all of these time limits work in real-life scenarios? I have provided a couple of examples below that hopefully clarify how an inventor may be subject to the time requirements.

Example 1

An inventor invents a product and publicly discloses the product on January 1, 2009. The inventor will need to ensure that a U.S. patent application is filed on or before January 1, 2010 or the invention will be barred from patent protection in the United States. So on December 31, 2009, he or she files a U.S. provisional patent application for the invention. Again, a provisional application is not examined, but must be converted to a non-provisional application within 1 year. Therefore, the inventor has until December 31, 2010 to file a non-provisional application for examination by the U.S. Patent Office. Normally, he or she would also have until December 31, 2010 to file any applications in other countries and/or a single PCT application. However, because he or she publicly disclosed his invention prior to filing the provisional application, he or she may be barred from obtaining a patent in other countries.

Example 2

An inventor invents a product and before publicly disclosing the invention or offering the product for sale, he or she files a provisional patent application on January 1, 2009. The inventor would have until January 1, 2010 to file a non-provisional application and any international applications. So on December 31, 2009, the inventor files both a non-provisional U.S. patent application and a PCT patent application. His non-provisional U.S. application would be examined by the U.S. Patent Office. His PCT application would postpone entry of the application into other countries until 30 months from his priority date. Therefore, since his priority date is January 1, 2009, he would be able to postpone entry of the patent application in other countries until July 1, 2011 with the PCT application.

CONCLUSION

Many of the time requirements for U.S. patent applications and international patent applications are complex and confusing. Of course, I recommend speaking to a patent attorney regarding these issues. But I hope that this article helps you be aware of these requirements so that you do not run out of time for obtaining patent protection on your invention.

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Green Means Go! Accelerated Examination of “Green” Inventions at the U.S. Patent Office

January 27, 2010

In a pilot program recently announced by the U.S. Patent and Trademark Office (“USPTO”), many environmentally-friendly patent applications may obtain special status and be examined out-of-turn without the most burdensome aspects of previous programs.  Benefits for qualifying applications include reduced documentation and burdensome pre-examination analysis by the Applicant and quicker review by Examiners.  It is estimated that this program could shave as much as a year or more off the pendency of a so-called “green” patent application.

Anyone who has attempted to navigate the bureaucratic world of the U.S. Patent and Trademark Office knows that it is a world of wait, wait, and then wait some more.  A typical patent application filed at the U.S. Patent Office may pend for thirty months or more before obtaining a first examination.

There are ways to accelerate the examination of an application, but the requirements are unduly burdensome.  Before August 25, 2006, an Applicant could request acceleration of an application for a whole host of specially defined reasons, including infringement, Applicant’s health or age, for environmentally-friendly or energy conservation applications and for countering terrorism, to name a few.  Since August 25, 2006, the scope of applications allowed to obtain special status has expanded – any utility application may petition for special status.  While this may sound like a positive step, the catch is that the burden placed on Applicants is so large, Applicants rarely take advantage of accelerated examination.

Specifically, a petition to make special (except due to a person’s age or health) requires that the Applicant conduct an extensive search including foreign patents and non-patent literature (a search is not currently required by the U.S. Patent Office for “normal” applications) and submit an “examination support document” requiring an identification of ALL limitations in the claims of the application that are disclosed by the references deemed “most closely related.”  But this is not the end of it –  the Applicant must also submit a “detailed examination of how each of the claims are patentable over the references cited.”  In essence, Applicants are required to do the work of the Examiners.  It is easy to see why not many participate in this accelerated examination program.

However, on December 8, 2009, the U.S. Patent Office announced it would accelerate the examinations of applications pertaining to certain green technologies, such as applications pertaining to environmental quality, energy conservation, development of renewable resources or greenhouse gas emissions reduction.  This new program makes it much, much less burdensome for those wanting accelerated examination of their green inventions.

The good news with the “green pilot program” is that no search is required, nor is an examination support document necessary.  Therefore, the most burdensome requirements of the accelerated examination program have been removed for green inventions.  In addition, (as with previous acceleration programs) the petition fee of $130 for accelerated examination is waived for green inventions.

Once again, there is a catch (a few, to be precise), but the burden placed on Applicants is not nearly as heavy as before.  The catch is that the USPTO will accept “only the first 3,000 petitions” filed before December 8, 2010, unless the program is extended.  In addition, an Applicant must satisfy some other simple requirements, and the subject matter of the application must fall within one of the “green” classifications specified.  Moreover, the application must have been filed before December 8, 2009.

But this pilot program for the acceleration of green patent applications should prove to be very enticing to Applicants interested in obtaining quicker examination of green inventions at the USPTO.  And hopefully, the USPTO sees the value and extends it so that many more Applicants with green inventions may take advantage of this program.

Be Careful with Provisional Patent Applications

October 19, 2009

A provisional patent application may be a useful way for an individual or a company to begin the patent process, especially for those who are particularly sensitive about the bottom line (who isn’t?).  The reason being that a provisional patent application is typically less expensive, at least in the short term, than a regular non-provisional patent application.  However, one should approach provisional patent applications with a great deal of caution.

If you have an innovative product or process, you may be interested in obtaining patent protection from the U.S. Patent Office.  The general course is to file a regular, non-provisional patent application, have the application examined, and (hopefully) obtain a granted patent for the invention with a scope of claims that covers the product or process and adequately prevents others from making, using, selling and/or importing the invention in the United States.  But inventors are typically offered a choice at the beginning of the process – file the regular, non-provisional patent application, or file a provisional patent application.  So what is the difference between the two, and why would an inventor wish to pick one over the other?

A provisional patent application is a less expensive way to obtain “patent pending” status in the U.S. patent office and to obtain a filing date for the invention, compared to a non-provisional patent application.  A provisional application is filed with a lower filing fee ($110 for a provisional application as opposed to $545 for a non-provisional application).  Moreover, strict adherence to some of the non-provisional filing requirements is not necessary in a provisional application.  For example, there is no requirement for a set of claims in a provisional application (although some will argue that at least one claim is necessary).  Moreover, there are no drawing requirements.  Because of this, preparing and filing a provisional patent application can be less costly than filing a regular, non-provisional application.

However, one should be wary of certain drawbacks with provisional patent applications.  First, a provisional application is not examined by the U.S. Patent Office, and only provides a priority date for the invention at the U.S. Patent Office (allowing an inventor to claim the invention as “patent pending”).  The application only lasts for a year; therefore, if one wishes to have the invention examined and issued as a patent, one must still file a non-provisional patent application within the year (and pay the non-provisional filing fee of $545).  If a patent attorney is involved in preparing the non-provisional patent application (recommended), it will likely be necessary for him or her to review the provisional application for form and completeness and edit the same, prepare formal drawings, and draft or review a claim set.  This may end up costing an applicant more than merely filing a non-provisional application at the start.

Moreover, by starting with a provisional patent application and waiting up to a year to convert it to a regular, non-provisional patent application, the examination will also be postponed for up to a year.

The biggest danger is that a provisional application may not satisfy the written description requirements.  Because certain requirements are relaxed, some believe that a full disclosure of the invention is not required.  However, a provisional application still requires a complete disclosure that satisfies the so-called “112 written description requirements” (from 35 U.S.C.  112, first paragraph), which reads as follows:

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such fully clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

These description requirements are exactly the same for a provisional patent application as they are for a non-provisional patent application.

If the written description requirements are not met in the provisional application, a patent issuing from that provisional application may not be able to claim priority back to the provisional application.  This can have serious repercussions.  For instance, a patent that is unable to claim priority to a provisional application because of a lack of sufficient written description may be subject to prior art references to which it otherwise would not be subject.  These references may invalidate the patent.  Moreover, since one must file a patent application within one year of publicly disclosing the invention or offering the invention for sale, relying on a provisional application with insufficient disclosure may cause that disclosure to be outside the one year period for filing an application.  In either situation, the patent would be worthless.

So one should be wary of starting the patent process with a provisional patent application, especially if the goal of filing a provisional application is to save a great deal of money.  It is my experience that some money can be saved initially by filing a provisional application instead of a non-provisional application.  But the drawbacks may outweigh the advantages, and inventors should carefully consider the ramifications and the risks involved.

Why patent?

September 21, 2009

If you own a business, or simply tinker in your basement, you may have an idea that is potentially worth a lot of money.  But once you tell others about your idea, or even try to capitalize on your idea, how do you stop someone else from simply swooping in and profiting  from the fruits of your own labor?   The only way to truly stop someone else from copying your idea is to obtain exclusive rights on your idea through filing for patent protection, if possible.  A  patent is of utmost importance to claiming ownership of the idea.

Most people are familiar with the concept of a patent, but if you are like most people, you  may not understand what a patent gives to you and what it does not.  A United States patent grants the inventor (or owner, if assigned to another person or entity) the exclusive right to make, use, sell, have made, or import into the United States the product or process that is described and claimed in the patent.

What this means is that, if you own a patent on your invention, you generally have the right to stop others from making, using, selling or importing your invention in the United States.  The patent gives you a monopoly on your idea for a certain period of time.  The government, in exchange for that monopoly power, simply requires that the patent describe how to make and/or use your claimed invention.  This quid pro quo allows ideas to be published in the marketplace, and in exchange the government gives you a limited period of exclusive use.

What a patent does not provide is the right to make, use, sell, or import your own invention.  This is a common misconception of what a patent owner actually can do with a patent.  In other words, an inventor does not need to have a patent to make, use, sell, or import a product or process in the United States.  But without a patent, an inventor cannot stop others from copying it.

Many times, clients inform me that they are less inclined to file a patent application for their idea because they have no intention of actually going out and pursuing an infringer.  After all, patent infringement lawsuits cost a LOT of money, and individual inventors or small businesses may not have the resources to fund an infringement suit.

But there are many reasons why it is important to obtain patent protection for your idea.  First, for a small business owner or an inventor, the patent is an asset – a piece of property that can be sold or licensed.  You may not have the ability to pursue an infringer, but the patent may be worth a lot of money to a larger entity that may just have the ability to enforce it.  Without a patent, you may not be able to sell or license your invention.

Second, believe it or not, there are individuals and companies out there that do not desire to infringe someone’s patent rights – either because of the risks involved in a potential lawsuit, the notoriety of being labeled “an infringer,” or simply for altruistic reasons. Many times, clients will approach me with their idea and we will spend time determining whether they can make, use, sell or import it – so we conduct a search and provide them with a review of the relevant patents – a so-called “clearance search” that can lead to a “freedom to operate opinion.  In many cases, clients will change their product or scrap their plans altogether if one or more patents exist that would cover what they planned to do.  In this regard, the patent has done its job without the patent owner even knowing!  Of course, it is very difficult, if not impossible, to quantify how much this may benefit a patent owner.  But it happens – I have seen it.

Finally, since a patent grants the owner exclusivity to practice their invention and is not a right to practice their invention, there may be competing interests in an idea, and a patent may help leverage against an infringement lawsuit by the owner of a broader patent.  For example, if you, as an inventor, develop an improvement by adding a novel feature to an existing product, there may be a broad patent to that existing product owned by another party.  Therefore, the other party may be able to enforce its patent rights against you preventing you from making, using, selling or importing that existing product.  However, your own narrower patent may be enforceable against the other party if they try to practice the improvement.  Many times, cross-license agreements may be arranged allowing both parties to practice the inventions – you can make, use, sell or import the broad product and the other party can make, use, sell or import the improvement.  And thus, an inventor would have avoided an infringement lawsuit because of his or her patent.

So, besides simply providing a concrete embodiment of your idea that allows you to restrict others from making, using, selling or importing your invention, a patent provides a host of other benefits, some of which are described above.  Simply put, it is important to protect your intellectual property for the long term benefit of yourself or your company.  Do not sell the long-term value of your invention short by saving a little bit of money up front by foregoing getting patent rights on your invention.  You may not realize it now, but you may end up regretting it in the future.