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What can be patented – utility patents are provided for a new, non-obvious and useful:

 

·         Process

·         Machine

·         Article of manufacture

·         Composition of matter

·         Improvement of any of the above

Note: In addition to utility patents, encompassing one of the categories above, patent protection is available for (1) ornamental design of an article of manufacture or (2) asexually reproduced plant varieties by design and plant patents.

A.  What cannot be patented:

 

·         Laws of nature

·         Physical phenomena

·         Abstract ideas

·         Literary, dramatic, musical, and artistic works (these can be Copyright protected).  Go to the Copyright Office.

·         Inventions which are:

·         Not useful (such as perpetual motion machines); or

·         Offensive to public morality

Invention must also be:

·         Novel

·         Nonobvious

·         Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)

·         Claimed by the inventor in clear and definite terms

 

B.  Who can apply for a patent?

     A patent may be applied for only in the name(s) of the actual inventor(s).

C.  What is a patent?

A patent is a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

D.  How do I know if my invention is patentable?

 

First, look to see whether your invention qualifies.

 

Second, learn the basics of the patenting process from the materials provided by the USPTO at 800-PTO-9199 or 703-308-HELP or under "General Information."

 

Next, a search of all previous public disclosures (prior art) including, but not limited to previously patented inventions in the U.S. (prior art) should be conducted to determine if your invention has been publicly disclosed and thus is not patentable.  A search of foreign patents and printed publications should also be conducted.  While a search of the prior art before the filing of an application is not required, it is advisable to do so.  A registered attorney or agent is often a useful resource for performance of a patentability search.  After an application is filed, the USPTO will conduct a search as part of the official examination process.  Conducting a thorough patent search is difficult, particularly for the novice.  Patent searching is a learned skill.  The best advice for the novice is to contact the nearest Patent and Trademark Depository Library (PTDL) and seek out search experts to help in setting up a search strategy.  If you are in the Washington, D.C. area, the USPTO provides public access to collections of patents, trademarks, and other documents at its Search Facilities located in Alexandria, Virginia.  These facilities are open weekdays (except holidays) from 8:00 a.m. to 8:00 p.m.  For further information on search services offered at the USPTO, please refer to Public Search Services offered by the USPTO.

 

Disclaimer

We have provided links to the site below because it has information that may be of interest to our users.  The USPTO does not necessarily endorse the views expressed or the facts presented on this site.  Further, the IDEAIP does not endorse any commercial products that may be advertised or available on this site.

 

It is possible, however difficult, for you to conduct your own search.  For an introduction to patent searching for the novice please refer to the Patent and Trademark Depository at the Richard W. McKinney Engineering Library, the University of Texas at Austin.  Although some of the instructions given here may be unique to the Austin library and the focus of this introduction is on the Cassis CD-ROM products, the fundamentals of patent searching remain the same for any location.

 

You should not assume that your invention has not been patented even if you find no evidence of it being publicly disclosed.  It's important to remember that a thorough examination at the USPTO may uncover U.S. and foreign patents as well as non-patent literature.

 

E.   How long does patent protection last?

For applications filed on or after June 8, 1995, utility and plant patents are granted for a term which begins with the date of the grant and usually ends 20 years from the date you first applied for the patent subject to the payment of appropriate maintenance fees. Design patents last 14 years from the date you are granted the patent.  No maintenance fees are required for design patents. 

 

Note:  Patents in force on June 8, 1995 and patents issued thereafter on applications filed prior to June 8, 1995 automatically have a term that is the greater of the twenty year term discussed above or seventeen years from the patent grant.


 

A patent is a patent …… FALSE ! If you want to patent an invention the right way, and avoid wasting thousands of dollars having to re-patent…and then redo it, it’s important you understand to understand the 3 main types of patents:

1. Utility Patents (cover new and useful inventions such as mechanical devices, electronics, medical devices, biotechnology, gadgets, and processes for making things).

2. Design Patents (cover new and ornamental designs of products (articles of manufacture) such as containers, furniture, toys, or house wares).

3. Plant Patents (cover new and distinct plant varieties such as flowering plants, vegetables and fruit trees).

 

In the United States, if the inventor makes an offer to sell, makes a sale, or publicly discloses the invention, the inventor has one year from the earliest of those events to file a US patent application. Otherwise, an inventor will lose their US patent rights. Thus, an invention that had a prosperous future quickly becomes a shattered dream.

If an inventor makes an offer to sell, makes a sale, or publicly discloses the invention before filing a patent application he/she will likely lose their rights to file in foreign countries.

 

How to Patent an Invention

Follow these simple steps to patent an invention:

1. Complete a Recording of your Invention

2. Evaluate and document all possible alternate embodiments, useful materials, substitute components, and means of engineering around your invention

3. Perform a thorough Patent Search & Evaluation

4. Perform Market Research – Search the internet for your product terms. For example, type in “Yellow Bird Dog” if that is the name of your product. Then, type in “Yellow Bird Dog Patent” and/or “Is there a patent for Yellow Bird Dog”

5. Valuate your inventions Commercial Viability

6. Gather detailed contact information of all inventors, including citizenship

7. Find a patent attorney

8. Schedule a meeting with your patent attorney (or teleconference)

9. Make copies of all documents (ROI, PS, Mkt./RS, pictures, and prior art) and

 

Agenda for meeting with your patent attorney to patent an invention

1. Provide an overview of your invention and the known prior art

2. Provide details on the novelty and advantages of your invention

3. Review and number all documents presented to your attorney

4. Agree on an estimated figure count for your patent application

5. Discuss any alternate embodiment possibilities

6. Agree on the terminology to be used for each element set forth in your Record of Invention

7. Collectively draft the framework of a broad claim covering your invention

8. Assign tasks and dates of completion

 

Decide whether you are proceeding with an engagement agreement with your patent attorney.

 

How to Patent an Invention using a Provisional Patent

Your invention or ideas may be worth thousands or possibly even millions. Have you thought of ideas or inventions in the past and taken no action, only later to find the very product on a store shelf is making someone else money? Don’t dream up the next great idea and sleep on it! Let Inventor Start Kit ™ get you started.

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Inventor Start Kit is a digital download of easy to follow documents including information & instructions, actual samples, and your own ready to use forms for recording your invention for your own safe keeping, evaluating the protect ability and marketability of your invention or logo, performing patent & trademark searches, and market research relating to your new invention or idea. These are the must do first steps for any inventor or idea person!

Let Inventor Start Kit ™ show you a step-by-step, do it yourself, easy to follow format to:

Record your invention for your own safe keeping

Perform market research and determine commercial viability of your invention

Perform a patent search

Perform a trademark search

Find a qualified patent attorney to protect your invention, idea, logo, or original works of authorship

Find industry contacts, prepare marketing materials, market an invention, samples of marketing teasers, power point presentation, email blasts, mailers, fliers, and a spread sheet to calculate your estimated cost of goods sold (COGS).

 

What is an invention?

In patent jargon, an invention is generally defined as a new and inventive solution to a technical problem. It may relate to the creation of an entirely new device, product, method or process, or may simply be an incremental improvement to a known product or process. Merely finding something that already exists in nature generally does not qualify as an invention; an adequate amount of human ingenuity, creativity and inventiveness must be involved.

While most inventions nowadays are the result of considerable efforts and long-term investments in Research and Development (R&D), many simple and inexpensive technical improvements, of great market value, have yielded significant income and profits to their inventors or companies

The power of innovation

Appreciating the distinction between “invention” and “innovation” is important. Invention refers to a technical solution to a technical problem. It may be an innovative idea or may be in the form of a working model or prototype. Innovation refers to the translation of the invention into a marketable product or process. Some of the main reasons why companies innovate include:

To improve manufacturing processes in order to save costs and improve productivity;

To introduce new products that meet customer needs;

To remain ahead of the competition and/or expand market share;

To ensure that technology is developed to meet actual and emerging needs of the business and its clients;

To prevent technological dependence on other companies’ technology.

In today’s economy, managing innovation within a company requires a good knowledge of the patent system in order to ensure that the company draws maximum benefit from its own innovative and creative capacity, establishes profitable partnerships with other patent holders and avoids making unauthorized use of technology owned by others. Unlike the past, many innovations nowadays are complex and are based on a number of patented inventions, which may be owned by different patent owners

 

Why should you consider patenting your inventions?

Short product cycles and increasing competition put enormous pressure on enterprises to become innovative and/or obtain access to other companies’ innovations, so as to become and remain competitive in domestic and export markets. The exclusive rights provided by a patent may be crucial for innovative companies to prosper in a challenging, risky and dynamic business climate. Key reasons for patenting inventions include:

Strong market position and competitive advantage.

A patent gives its owner the exclusive right to prevent or stop others from commercially using the patented invention, thereby reducing uncertainty, risk and competition from free riders and imitators. If your company owns or obtains the permission to exploit a valuable patented invention it may be able to create a market entry barrier for competitors in respect of the same inventions. This will help it to become a pre-eminent player in the relevant market(s).

Higher profit or returns on investment.

If your company has invested a significant amount of time and money in R&D, patent protection of the resulting inventions would help in recovering costs and obtaining higher returns on investments.

Additional income from licensing or assigning the patent.

As a patent owner you may license your rights over the invention to others in exchange for lump-sum payments and/or royalties, in order to generate additional income for the company. Selling (or assigning) a patent implies transfer of ownership whereas licensing implies only permission to use the licensed invention under specified conditions.

Access to technology through cross-licensing.

If your company is interested in technology owned by others you may use your company’s own patents to negotiate cross-licensing agreements, by which your company and the other party agree to authorize each other to use one or more of your respective patents under conditions specified in the agreement.

Access to new markets.

Licensing of patents (or even pending patent applications) to others may provide access to new markets, which are otherwise inaccessible. In order to do so, the invention must also be protected in the relevant foreign market(s).

Diminished risks of infringement.

By obtaining patent protection you will be able to prevent others from patenting the same invention and also reduce the chances of infringing the rights of others when commercializing your products. While a patent by itself does not provide the “freedom to use”, it does prevent others from patenting the same or similar inventions and provides a reasonable indication that the invention that you have patented is new and significantly different from the “priorart.” (More on “prior art” on page 12).

Enhanced ability to obtain grants and/or raise funds at a reasonable rate of interest.

Ownership of patents (or license to use patents owned by others) may enhance your ability to raise capital to take a product to market. In some sectors (e.g., biotechnology), it is often necessary to have a strong patent portfolio to attract venture capitalists.

A powerful tool to take action against imitators and free riders.

In order to effectively enforce the exclusivity provided by a patent, it may occasionally be necessary to litigate, or bring your patents to the attention of those ho are violating your patent rights. Owning a patent considerably improves your ability to take successful legal action against copiers and imitators of the protected invention.

Positive image for your enterprise.

Business partners, investors, shareholders and customers may perceive patent portfolios as a demonstration of the high level of expertise, specialization and technological capacity of your company. This may prove useful for raising funds, finding business partners and raising your company’s profile and market value. Some companies mention or list their patents in advertisements to project an innovative image to the public.

What other legal instruments are available for protecting your products?

This guide focuses on patents. However, depending on the product in question, there may be other intellectual property rights that are suitable for protecting various features of an innovative product; these include:

Utility models (also known as short-term patents, petty patents or innovation patents). In many countries, some types of incremental inventions or small adaptations to existing products are protectable as utility models (see box on page 10).

Trade secrets. Confidential business information may benefit from trade secret protection as long as:

-       it is not generally known to others dealing with that type of information;

-       it has commercial value because it is secret; and

-       reasonable steps have been taken by its owner to keep it secret (for example, restricting access to such information on a “need to know” basis, and entering into confidentiality or non-disclosure agreements) (see box on page 9).

 

 

1.   If an invention is patentable, is it always wise to apply for patent protection?

 

Not always. If an invention is patentable, it does not necessarily follow that it will result in a commercially viable technology or product. Therefore, a careful weighing of pros and cons and an analysis of possible alternatives is essential before filing a patent application. A patent may be expensive and difficult to obtain, maintain and enforce. To file or not to file a patent application is strictly a business decision. It should be based primarily on the probability of obtaining commercially useful protection for the invention that is likely to provide significant benefits from its eventual business use.

Factors to be taken into account in deciding whether or not to file a patent application include:

·         Is there a market for the invention?

·         What are the alternatives to your invention, and how do they compare with your invention?

·         Is the invention useful for improving an existing product or developing a new product? If so, does it fit in with your company’s business strategy?

·         Are there potential licensees or investors who will be willing to help to take the invention to market?

·         How valuable will the invention be to your business and to competitors?

·         Is it easy to “reverse engineer” your invention from your product or “design around” it?

·         How likely are others, especially competitors, to invent and patent what you have invented?

·         Do the expected profits from an exclusive position in the market justify the costs of patenting?

·         What aspects of the invention can be protected by one or more patents, how broad can this coverage be and will this provide commercially useful protection?

·         Will it be easy to identify violation of the patent rights and are you ready to invest time and financial resources for enforcing your patent(s)?

 

2.   Patents versus secrecy

If your invention is likely to fulfill the patentability requirements (see page 10), your company will face a choice: to keep the invention as a trade secret, to patent it or to ensure that no one else is able to patent it by disclosing it (commonly known as defensive publication) thereby assuring its place in the "public domain".

Depending on the legal system of your country, the protection of trade secrets may
be available under legislation against unfair competition, by specific provisions of one or more laws, by case law on the protection of confidential information, by contractual provisions in agreements with employees, consultants, customers, and business partners, or a combination of the above.

Some advantages of trade secret protection include:

·         Trade secrets involve no registration costs;

·         Trade secret protection does not require disclosure or registration with a government office and the invention is not published;

·         Trade secret protection is not limited in time;

·         Trade secrets have immediate effect.

Disadvantages of protecting inventions as trade secrets:

If the secret is embodied in an innovative product, others may be able to “reverse engineer” it, discover the secret and, thereafter, be entitled to use it;

Trade secret protection is effective only against improper acquisition, use or disclosure of the confidential information;

If a secret is publicly disclosed, then anyone who obtains access will be free to use it;

A trade secret is difficult to enforce, as the level of protection is considerably weaker than for patents; and

A trade secret may be patented by others who may independently develop the same invention by legitimate means.

While patents and trade secrets may be perceived as alternative means of protecting inventions, they are often complementary to each other. This is because patent applicants generally keep inventions secret until the patent application is published by the patent office. Moreover, a lot of valuable know-how on how to exploit a patented invention successfully is often kept as a trade secret.

3.   What can be patented?

An invention must meet several requirements to be eligible for patent protection. These include, in particular, that the claimed invention:

·         Consists of patentable subject matter

·         Is new (novelty requirement);

·         Involves an inventive step (nonobviousness requirement)

·         Is capable of industrial application (utility requirement); and

·         Is disclosed in a clear and complete manner in the patent application (disclosure requirement).

 

The best way of understanding these requirements is to study what has been patented by others in the technical field of your interest. For this, you may consult patent databases.

 

Utility models

 

Some of the characteristics of utility models are:

 

·         The conditions for granting utility models are less stringent, as the “inventive step” requirement may be lower or absent altogether;

·         Procedures for granting utility models are generally faster and simpler than for patents;

·         Acquisition and maintenance fees are generally lower than those applicable to patents;

·         The maximum possible duration of utility models is usually shorter than it is for patents;

·         Utility models may, in some countries, be limited to certain fields of technology and may only be available for products (not for processes); and

·         Usually, a utility model application or a granted utility model may be converted into a regular patent application

 

 

 

 

 

 

 

4.   What is patentable subject matter?

 

In most national or regional patent laws, patentable subject matter is defined negatively, i.e., by providing a list of what cannot be patented. While there are considerable differences between countries, the following are examples of some of the areas that may be excluded from patentability:

 

·         Discoveries and scientific theories;

·         Aesthetic creations;

·         Schemes, rules and methods for performing mental acts;

·         Mere discoveries of substances as they naturally occur in the world;

·         Inventions that may affect public order, good morals or public health;

·         Diagnostic, therapeutic and surgical methods of treatment for humans or animals;

·         Plants and animals other than microorganisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes; and

·         Computer programs.

 

 

5.   How is an invention judged to be new or novel?

An invention is new or novel if it does not form part of the prior art. In general, prior art refers to all the relevant technical knowledge available to the public anywhere in the world prior to the first filing date of the relevant patent application. It includes, inter alia, patents, patent applications and non-patent literature of all kinds.

 

The definition of prior art differs considerably from country to country. In many countries, any information disclosed to the public anywhere in the world in written form, by oral communication, by display or through public use constitutes prior art. Thus, in principle, the publication of the invention in a scientific journal, its resentation in a conference, its use in commerce or its display in a company’s catalogue would all constitute acts that could destroy the novelty of the invention and render it unpatentable. It is important to prevent accidental disclosure of inventions prior to filing the patent application. Assistance of a competent patent agent is often crucial for a clear determination of what is included in the prior art. Prior art often includes “secret prior art” such as pending unpublished patent applications, provided they are published at a later stage.

 

6.   When is an invention considered to “involve an inventive step”?

An invention is considered to involve an inventive step (or to be non-obvious) when, taking into account the prior art, the invention would not have been obvious to a person skilled in the particular field of technology. The nonobviousness requirement is meant to ensure that patents are only granted in respect of truly creative and inventive achievements, and not to developments that a person with ordinary skill in the field could easily deduce from what already exists.

 

Some examples of what may not qualify as inventive, as established by past court decisions in some countries, are: mere change of size; making a product portable; the reversal of parts; the change of materials; or the mere substitution by an equivalent part or function.

 

7.   What is meant by “capable of industrial application”?

To be patentable, an invention must be capable of being used for an industrial or business purpose. An invention cannot be a mere theoretical phenomenon; it must be useful and provide some practical benefit. The term “industrial” is meant here in the broadest sense as anything distinct from purely intellectual or aesthetic activity, and includes, for example, agriculture. In some countries, instead of industrial applicability, the criterion is utility. The utility requirement has become particularly important for patents on genetic sequences for which a utility may not yet be known at the time of filing the application.       

 

8.   What is the disclosure requirement?

According to the national legislation of most countries, a patent application must disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the specific technical field. In some countries, patent law requires that the inventor discloses the “best mode” for practicing the invention. For patents involving microorganisms, many countries require the microorganism to be deposited at a recognized depositary institution.

 

9.   What rights are granted by patents?

A patent grants its owner the right to exclude others from commercially using the invention. This includes the right to prevent or stop others from making, using, offering for sale, selling or importing a product or process, based on the patented invention, without the owner’s permission.

 

It is important to note that a patent does not grant the owner the “freedom to use” or the right to exploit the technology covered by the patent but only the right to exclude others. While this may seem a subtle distinction, it is essential in understanding the patent system and how multiple patents interact. In fact, patents owned by others may overlap, encompass or complement your own patent. You may, therefore, need to obtain a license to use other people’s inventions in order to commercialize your own patented invention and vice versa.

 

Also, before certain inventions (such as pharmacetucial drugs) can be commercialized other clearances may be required (e.g., marketing approval from the relevant regulatory body).   

 

10.       Who is an inventor and who owns the rights over a patent?

The person who conceived the invention is the inventor, whereas the person (or company) that files the patent application is the applicant, holder or owner of the patent. While in some cases the inventor may also be the applicant, the two are often different entities; the applicant is often the company or research institution that employs the inventor. The following specific circumstances merit further analysis:

 

·         Employee inventions. In many countries, inventions developed in the course of

employment are automatically assigned to the employer. In some countries, this is only so if it is so stated in the employment contract. In some cases (e.g., if there is no employment agreement) the inventor may retain the right to exploit the invention, but the employer is given a non-exclusive right to use the invention for its internal purposes (called “shop rights”). It is important to find out about the specific legislation in your own country and to ensure that employment contracts deal with issues of ownership over employee inventions to avoid future disputes.

 

·         Independent contractors. In most countries, an independent contractor hired by a company to develop a new product or process owns all rights to the invention, unless specifically stated otherwise. This means that, unless the contractor has a written agreement with the company assigning the invention to that company, in general, the company will have no ownership rights in what is developed, even if it paid for the development.

 

·         Joint inventors. When more than one person contributes in significant ways to  the conception and realization of an invention, they must be treated as joint inventors and mentioned as such in the patent application. If the joint inventors are also the applicants, the patent will be granted to them jointly.

 

·         Joint owners. Different countries and institutions have different rules concerning the exploitation or enforcement of patents that are owned by more than one entity or person. In some cases, no single co-owner may license a patent or sue third parties for infringement without the consent of all other co-owners.

 




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