Patent Puzzle : New Jersey Intellectual Property Lawyer & Attorney : Richard Gearhart Law Firm : NJ Patent & Entrepreneurial Services : Patent Puzzle Law Blog

 So you’ve gotten your patent application on file, the rush and the fuss are over with for the time being, you’ve hit your deadline before the presentation or the trade show. Fortunately the patent decisions have been made now and you can forget about this part of your project at least for awhile. And maybe you take a deep breath, because the financial hemorrhage from the patent work is at least on hold.

But soon you get a letter from your patent attorney advising that the one year deadline is fast approaching and you need to decide whether you want international protection. What do you decide? How do you decide? What countries do you file in? Is worth the money it will cost?

Well the answer to the question “do we need international protection” is a qualified “maybe”.

Obviously, if you don’t plan to do business outside the US, then the answer is a clear “no”. If you get a US patent, you can always prevent people from importing into the US from another country. The US is all you need.

If you plan to sell outside the US, then you want to consider patents in the major markets where you plan to sell. If you plan to sell in Japan, for instance, consider a patent in Japan. That too is obvious.

But just because a patent is available doesn’t mean you want one. Here are some additional considerations.

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You may be surprised to realize your patent has many audiences. The list includes you (the inventor), your inventor peers, Patent Examiners, investors and business people, other lawyers, and in some cases, a judge and jury. A good patent application will effectively address the needs of each audience.

Obviously, the application reflects the inventor’s work and creativity. Often the application will include parts and descriptions written by the inventors, and so has the inventor’s own voice. The patent provider will incorporate as many of the inventor’s ideas and suggestions as possible with the goal of protecting as many variations of the invention as possible. In any case, you, the inventor, should be happy and satisfied with the application's content.

It may also be read by your peers. This happens frequently in highly technical fields, such as biotechnology and engineering. Here a premium is placed on scientific content and accuracy.  Most inventors enjoy the feeling of statisfaction that comes when their application publishes and their ideas have become a part of the technical literature. Published patents provide important teachings and are considered an important scientific resource. The publication part of the process helps fulfill the patent systems constitutional purpose of advancing the useful arts and sciences, by making technical knowledge publicly available that may otherwise remain secret.

Another important reviewer is the patent examiner at the US Patent and Trademark Office. The patent examiner has highly regulated criteria that the patent must be met before allowance.  The Manuel of Patent Examining Procedure (MPEP) is the reference source for the patent examiner and contains thousands of pages that direct the Examiner though the proper examination of the patent application. The patent must meet the criteria set forth in the MPEP and the patent laws in general including novelty and non-obviousness, as well as numerous other details of a highly complex nature.

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Richard Gearhart is the principal and founder of Gearhart Law, LLC a law firm specializing in patent services. The firm provides an array of services in the mechanical, software and chemical arts, and includes patent application drafting, domestic and international patent prosecution, opinion rendering, agreement and transactional work, and litigation support. Gearhart Law’s clients range in size from individual entrepreneurs to multi-million dollar businesses. For more information on patents and/or the firm’s services, call (973) 410-4005 or visit the website at www.GearhartLaw.com.

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Some criteria to look for when choosing a patent attorney include:

1. Experience writing and defending patents.

A patent attorney who has a lot of experience will know what the USPTO expects in terms of the patent content, and will tailor your patent to fit those expectations. In addition, an attorney who has experience working with the patent examiners at the USPTO will better know what arguments to present on your behalf during the prosecution phase.

2. Litigation background.

A patent attorney who has been involved in litigation of patents, either for infringement purposes or other aspects of patent law has an understanding of what will hold up in court and what is likely to be challenged, and how to meet those challenges with arguments of his or her own.

3. Responsiveness.

Any patent attorney you choose should return your phone calls! They should answer any questions you have to the best of your ability.

4. Search criteria.

A search is essential for identifying prior art. Prior art is the set of patents for inventions that are similar to your invention. An experienced searcher knows what terms to use and how to identify relevant prior art. If there is prior art that is very close to your idea, then you can’t get a patent on your invention. It will most likely get rejected by the patent examiner, and you need to know that before you invest any money. If there is prior art that is close but not too close, then you need a patent attorney to help determine if there is a possibility of obtaining a patent.

5. Length of time to complete the patent search.

It should take only 1-2 weeks to get your search results. It may take a little longer (1 week) if the field of prior art is crowded with many inventions that are similar to yours.

6. Length of time to complete the patent.

This partly depends on you, because you should be involved with every step. After either meeting with the attorney to describe your idea or sending him or her the invention disclosure, the attorney should work with you to draft the claims. This should happen within 3-4 weeks of your meeting (the attorney needs time to draft some rough claims to discuss with you). After the claims are drafted, they are sent to you for review and/or revisions. Once the claims are written to your satisfaction, the drawings are requested from the draftsman; after the drawings arrive, the specification is drafted. This takes another 3-4 weeks for a relatively simple patent. Depending on the complexity of the patent and your responsiveness, you should have a first draft to review within 2 months of hiring a patent attorney. Of course, a more complex patent will take more time, usually an additional month or two. The patent should be filed with the USPTO within a week of your approval of the final draft.

7. Experience with international patents.

A patent attorney should know what the requirements, including timelines, criteria, and rough costs are of filing internationally.

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Unfortunately, patenting and marketing inventions is an industry that attracts a lot of scam artists. While there are legitimate companies that can and do provide worthwhile help to inventors, many charge inventors thousands of dollars and do very little to actually help them. These unscrupulous firms may charge high fees just to provide information repackaged from the USPTO that anyone can obtain for free.

Some make claims about licensing and/or marketing inventions that exceed the firm’s ability to deliver. Others will deliberately understate costs and surprise you with additional fees that creep up later in the process once you are already committed. And still other firms have been known to take inventors’ money and literally disappear. Do your homework before signing anything or issuing payment!

Here is a partial list of things to watch for:

• Check with the (USPTO) or the Federal Trade Commission (FTC) to see if there are any complaints or lawsuits filed against the company.
• Find out if they have ever operated under a different name. Some of the less legitimate providers have changed names several times.
• Ask for a complete disclosure of all costs up front.
• Be particularly suspicious of claims that they will definitely license your product and/or market it successfully. Early in the patent process, it is difficult or impossible to know these outcomes in advance.

Resources you can use to help avoid fraud include the USPTO and the Federal Trade Commission (FTC). The USPTO does not investigate or participate in any legal proceedings against invention promoters/promotion firms. But, under the American Inventors Protection Act of 1999, the office does publish complaints about invention promoters. You can find dozens of these firms listed here.

The FTC, meanwhile, provides a consumer alert, "Spotting Sweet-Sounding Promises of Fraudulent Invention Promotion Firms" at this page.

Perhaps the best assurance that you will be well represented—at least during the patent phase—is to work with a properly licensed patent attorney. He or she has received considerable legal training and must answer to the state bar association in the event a client lodges a complaint. Other types of firms are not necessarily subject to this kind of oversight, meaning you lack this extra layer of protection.

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There are two stages to getting a patent, each with its own set of fees. The first stage is the filing stage. The second stage is the prosecution stage, which occurs 1-2 years after the filing stage.

There are filing fees and attorney’s fees associated with filing a patent. Filing fees are fees you pay to the USPTO (United States Patent and Trademark Office) for filing your patent in their databases. These fees may increase slightly year to year, but for 2009 the costs are:

• $110 to file a provisional patent
• ~$600 to file a utility patent

Attorney’s fees to file a patent vary from about $3,000 up to $20,000 or more, depending on the complexity of the patent. Most patents for individual inventors fall on the lower end of the cost scale. These fees cover the actual writing of the patent, which includes:

1. Drafting the claims – the claims capture the essence of your idea in broad terms. The claims are the most important part of the patent, and must be done correctly for maximum protection of your idea.
2. Obtaining the proper drawings - a patent attorney usually uses a draftsman, who takes your sketches or ideas and turns them into drawings that meet all of the patent office’s criteria.
3. Drafting the specification – this part of the patent uses the drawings and your ideas to describe your invention in detail, and is as comprehensive as possible to further protect your patent’s validity.
4. Filling out the proper forms and submitting them to the patent office, with the proper filing fees.

Twelve  to thirty six monthsafter the patent is filed, an examiner at the patent office reviews it, and typically rejects some of the claims. At this point, prosecution begins. Prosecution is the act of arguing the validity of the patent with the patent examiner, with the goal of convincing him or her to allow as many claims as possible. The fees for this phase are variable, and typically range from $1,000 to $4,000, depending on the amount of time involved.

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After the application is ultimately filed as a utility application, it will sit at the USPTO for about 12-18 months before it is reviewed by a Patent Examiner. The Examiner will do his or her own prior art search, and will typically issue several rejections based on form and/or on other patents.

This is referred to the “prosecution phase” of the patent process. It can be thought of as a negotiation with the Examiner over the allowability of the application and the scope of protection.

Each time the USPTO issues a rejection, your patent attorney must prepare a response. Patent cases usually involve at least one response and frequently two. Your attorney should provide you with a copy of all correspondence to and from the USPTO.

There are other possibilities that may arise during the prosecution phase of the application which cannot be predicted with certainty in advance. These include restriction requirements, the filing of continuations, appeals, etc., though all can occur during a typical process. If the Examiner eventually allows the patent, then you will be responsible for paying an issue fee to the USPTO. Afterwards, your patent will likely have a term of at least 20 years from the date it is filed.

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If the results of your patent search are favorable, then you will need to draft the claims and, if necessary, have drawings prepared that accurately describe your invention. Legally you have the right to prepare your own application documents. However, to ensure that your idea has maximum protection under the law, it is particularly important that an experienced professional, such as a patent attorney, handle this step for you.

You can file the patent application as either a “provisional” or a “utility” application. If the application is filed as a provisional, then you will have one year to make modifications to the application. After you file a provisional application, it must be converted to a utility application within a year.

A provisional is best if you are still experimenting or think you would like to make changes. It may also “add” an additional year of patent term, i.e., 21 years instead of 20 years. The disadvantages are that it takes about three years for a patent to issue from the USPTO, and filing the provisional delays its examination for a year.
 

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You must conduct a search to see if there is an existing patent or applications that constitute “prior art” to your idea. Searching patents is a complex and detailed process. Many patent writers only conduct a US patent search on Google or USPTO databases because it is easier and less time consuming.

However, there are additional search parameters that can be used. These include U.S. and international classification systems that search specialized proprietary databases, including World Intellectual Property, Japanese Patent Abstracts, European Patent Office and specialized scientific journals and papers when technology warrants.

Your objective is to establish that your idea is novel and not obvious. It may be difficult or impossible to patent your invention if prior to your application:

• It was known or used by others in the U.S.
• It was previously patented in the U.S. or elsewhere.
• It was described in an article printed anywhere in the world.
• The idea was obvious based on publications, patents or uses.

It is possible to conduct your own search, although most novices aren’t aware of the nuances of thorough search practices and patent laws. If you’re going to select a patent lawyer to assist you, look for one whose search methodology is comprehensive. Not all searches are the same!

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Be sure you don’t disclose information about your work except to your patent attorney or, in other cases, with a solid non-disclosure agreement (NDA). You run the risk that someone may beat you to the patent process. If they have a good patent attorney on their side, it could jeopardize your ability to receive a patent even if you do possess some prior work.

What to do if you’ve already told people about your idea without a confidentiality or non-disclosure agreement? Get an agreement as soon as possible. You may need help with this from an attorney, who can word the agreement so that your idea is as well protected as possible.

If you publish your idea publicly, such as in a printed publication or on a web site, you must apply for a patent within a year, or you will forfeit your right to patent that invention.

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As soon as possible, create a “Record of Invention.” This is simply a collection of information that describes and documents your invention(s) and the process in as much detail as possible. Be sure to include:

• A written statement of your idea and how it works, including a description of any experimentation that led to design improvements.
• Drawings, sketches or pictures you have, even if they are only in rough form.
• Any correspondence about your work, sales receipts from materials, and any other records that might help you prove the facts and dates of your accomplishments.

You should sign and date this record, and have a witness sign and date it as well. If you recall the date when you first thought of your invention, include that in the statement. This record could be important if you need to prove the date of your invention.

You can provide this record to your patent attorney as a way to improve his/her understanding of your invention. You can also submit it to the U.S. Patent and Trademark Office (USPTO) under its Disclosure Document Program, where it will be kept for two years pending filing for a patent. Doing so does not protect your idea. It merely establishes a record of your submission.

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A quick overview of the patent process:
Key steps you need to know about protecting your idea and tips on how to avoid the scams.

Inventing a new product or process can be a rewarding and highly profitable venture. Indeed, many successful inventors have gotten rich by patenting an idea that turns out to be both viable and marketable. Because of their potential value, good ideas must be protected so they are not stolen and used to enrich someone other than the inventor.

Obtaining a patent is the formal, legal process for securing this protection, and it’s important to know the steps involved. Getting a patent is a complex and detailed process. Because many inventors are not familiar with it, they can be easy prey for unscrupulous firms that charge a lot of money in the guise of helping them patent and market their idea. Unfortunately these firms often deliver little or no real value in return for taking many thousands of dollars from the unsuspecting inventor.

This guide provides a brief overview of the patent process as well as some of the things to look for as you shop for a good patent provider.
 

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