Twelve Steps To Filing A U.S. Patent Application: [With Time And Cost Estimates]

Inventing is a challenging task. Before you bring the invention to market, it is wise to take the appropriate steps to insure that you protect your invention. The most important protection that you can get is a patent. Intellectual property law is complex. Obtaining a patent can be expensive and usually requires the services of a patent attorney, who can walk you through the steps of evaluating your product, and assist you in the patent acquisition process. This guide is intended to give you an overview of the steps needed to acquire a U.S. patent.

1. Preparation and submission of a disclosure in written form to designated company managers of the idea or innovation by its creator(s) for initial review and summary evaluation [Estimated Time: 1-2 hours; Cost: company time].

2. Review by designated company mangers of the disclosed idea or innovation for potential commercial worth and value [Estimated Time: 1-2 hours; Cost: company time].

3. Summary evaluation of the disclosed idea or innovation by patent counsel to identify its technical working essentials and to assess whether these essentials might meet the patent merit requirements of utility, novelty, and non ?obviousness in view of the relevant prior art [Estimated Time: 2- 4 hours; Cost: $195.00 per hour]

4. Review and decision by designated company managers whether and how to proceed with commercial development of the idea or innovation and also whether or not to seek patent protection for the innovation based on patent counsel?s summary evaluation [Estimated Time: 3- 6 hours; Cost: company time].

5. Holding an in-person (if possible) meeting of the creator/inventors, patent counsel, and company mangers in order to determine and decide what is or should be the broadest possible scope for the innovation in commercial and non-commercial terms; and to detail and characterize inventorship, the number and types of commercial formats, kinds of variations, preferred embodiments and minimum essential parts, operation limits and optimal use ranges, and the like which are or might come to be within the defined limits of the innovation [Estimated Time 2- 3 hours; Cost: patent counsel @ $195.00 per hour & company time].

6. Preparation and submission to patent counsel of a complete and full written description of the innovation/invention prepared by the creators/inventors (in one or more documents) which provides sufficient technical detail, relevant drawings, useful background information, a listing of unexpected benefits and desirable advantages, and the relevant prior art for patent text purposes [Estimated Time: 8-24 hours; Cost: company time].

7. Preparation and distribution of a first draft text of the patent application by patent counsel to the named inventors and designated company managers [Estimated Time: 30-35 hours; Cost: $195.00 per hour]

8. Review and substantive revision of the first draft patent application text by the named inventors and designated company managers and return of the revised first draft text to patent counsel [Estimated Time: 5-10 hours; Cost: company time].

9. Preparation and distribution of a second (and presumably last) draft text of the patent application by patent counsel to the named inventors and designated company managers for final comments and changes to the text [Estimated Time: 10-14 hours; Cost: $195.00 per hour].

10. Receipt by patent counsel of final desired or needed changes to the patent application text from the named inventors and designated company managers and preparation of a fully approved text ready to be submitted to the U. S. Patent Office [Estimated Time 2-4 hours; Cost: $195.00 per hour].

11. Preparation by patent counsel of required supporting formal documents and fee payments to accompany the fully approved patent application manuscript [Estimated Time: 2-3 hours; Cost: $195.00 per hour].

12. Submission, with or without prior signature by the named inventors, of the fully approved patent application manuscript, supporting formal documents and requisite fee payments to the U.S. Patent office and obtaining an official serial number and filing date sufficient for patent pending purposes.

David Prashker is a registered patent attorney north of Boston. He has been practicing patent law for 27 years, and specializes in obtaining intellectual property rights for innovations in life and chemical sciences. For more information about David, see his website, http://www.scicounsel.com

Publish Your Patent Application? ... or Not.

Infringement and Provisional Damages

There is no action for infringement of your patent until it actually issues. However, through publication of your application, it may be possible to obtain provisional damages for the time between publication of the application and the issuance of the patent. Once your patent issues, infringement can give rise to treble damages and an award of attorney fees. During the phase from publication to issuance, only reasonable royalty damages can be awarded. Furthermore, a claim must survive and be substantially identical from publication to the issued patent.

Provisional damages require notice. Notice is achieved by both publication and provision of actual notice. Thus, you still have the burden of detecting infringement and of providing notice of your application to the alleged infringer.

Why You Should Consider Early Publication

An inventor can accelerate the publication process by filing a request for early publication. This can be done at any time and should result in publication within four months of the request. There are two logical times to file such a request: 1) when you first file your application--to gain the maximum published time available, and 2) when you believe an infringement may be taking place. In this latter case, where you have actual evidence of infringement, you can then file a petition to "make special" and hope that the Patent Office will accept the petition and begin examination of your patent application within six months. That way, you will possibly get the benefit of provisional damages, with the patent issuing shortly thereafter with higher damage awards available.

Benefits of Non-Publication

Non-publication keeps 'em guessing. When a patent is filed, the inventor-applicant is entitled, and should, claim "Patent Pending" status. "Patent Pending" means that an application is on file with the Patent Office and is in the patent process. The inventor should mark his product "Patent Pending" and claim such status in any written material related to the invention. So long as the patent application is secret, competitors do not know what the inventor has disclosed or the breadth of the invention being claimed. Once a patent application publishes, competitors can at least determine the maximum scope that is disclosed in the application. However, while they will see the claims presented in the application, competitors still do not know the breadth of the invention claims that might eventually issue in the patent.

The Hazards of Requesting Non-Publication

Until the American Inventors Protection Act of 1999 (effective November 29, 2000), United States patents were kept in secrecy until they issued. Subsequent to the AIPA, inventors can elect to keep their application secret, but only if they will not file in a foreign country or file an application under a multilateral international agreement, such as the Patent Cooperation Treaty. If an inventor later files such a foreign or international application, it can lead to abandonment of the U.S. application unless the non-publication request is rescinded before 45 days after filing the foreign or international application. Thus, extreme caution is recommended before considering non-publication.

C2006, Williamson Intellectual Property Law, LLC; all rights reserved, world-wide. This article, and/or the reading thereof, shall not be construed as offering, containing or receiving of legal advice, and shall not create any attorney-client relationship or privilege. If you are considering protecting your intellectual property, you should consult with an attorney of your choice.

For more information, please visit http://www.trwiplaw.com.

Thomas R. (Terry) Williamson III, Ph.D., Registered Patent Attorney Williamson Intellectual Property Law, LLC 1870 The Exchange, Suite 100 Atlanta, GA 30339 770-777-0977 http://www.trwiplaw.com

An intellectual property law firm providing a full range of services for patent searches, preparation and filing patent applications, trademark searches, preparation and filing trademark and service mark applications, preparation and filing

Patent - Some Famous Patents

In this article we're going to discuss some of the most famous patents in history. These are inventions that greatly changed the world we live in.

To go over all the patents that have changed the world would take a month of Sundays and then some. What follows is just a brief look at some of the greatest patents in our history.

What is considered the most valuable patent is the one issued to Alexander Graham Bell for his invention of the telephone. The patent was number 174,465 issued in 1876. Ironically, early attempts to make the telephone popular were unsuccessful. People looked at the idea as nothing more than a novelty and didn't take its communication possibilities seriously. Try telling that to all the people walking around with cell phones today.

This one may come as a bit of a surprise. Thomas Edison didn't actually invent the light bulb. What he did was improve on a fifty year old idea. In 1879, using lower current, a small carbonized filament, and an improved vacuum inside the globe, he was able to produce a reliable, long-lasting source of light. This invention led to the creation of jobs for millions of people. Quite literally, without this invention we would all still be in the dark. Thomas Edison actually received 1093 patents during his life.

If you're into some really odd trivia you can tell people that Abe Lincoln was the only United States President to receive a patent. He did so for his manner of buoying vessels. He was issued this patent in 1849. It was patent number 6,469. When Lincoln was young he took a boatload of merchandise down the Mississippi River during a trip from New Salem to New Orleans. There was an accident when the boat slid into a dam. It took great effort to get the boat dislodged. Two years later Lincoln had a similar accident crossing the Great Lakes. These two incidents led Lincoln to come up with a solution to this problem. His invention consisted of a set of bellows attached to the hull of the ship just below the water line. When the vessel is in danger of an accident, the bellows are filled with air and act as a buoy to keep the ship afloat. Lincoln never profited from his invention but he was a very strong supporter of the patent system.

Probably the most famous patent was the one issued to Frederic Auguste Bartholdi for his design of the Statue Of Liberty. The Statue Of Liberty came to New York on June 19, 1885. It was a gift of friendship given to the United States from the people of France. It was intended to celebrate their 100 years of independence 10 years earlier.

The statue is constructed of copper sheets which are assembled on a framework of steel supports. In order to be transported to America the statue was disassembled into 350 pieces and was packed in 214 crates. It was then reassembled when it arrived. Nothing like this was ever done before and most likely will never be done again.

Your Independent guide to Patents

Patent - An Alternative To Getting One

In this article we're going to discuss an alternative to getting a patent for your product or method called the defensive publication.

The truth about getting patents is that it is a form of risk management for a company or individual. To give an example, a company that failed to get a patent may lose control of the main technology that the company uses to conduct business. It is also vulnerable to a lawsuit and strict licensing terms. Because patents are so important to a company and its operation, many companies form what is called a license review board to determine the cost involved with obtaining a patent for the product or technology. If the board finds enough evidence to warrant obtaining a patent it then discloses its findings to the CEO of the company.

However, there are going to be times where the cost and risk factor of trying to obtain a patent are too great to warrant going ahead with trying to get one. In this case an alternative form of risk management should be sought. One of these alternatives commonly used by companies in this situation is called the defensive publication. This is used especially when the alternatives are limited or the patent process would be too difficult to prove.

According to U.S. patent law, a printed publication with a publication date prior to what would have been the effective date of the patent could be used to invalidate that patent if claimed by another company. This publication can be used as a defensive measure to describe whatever technology it has created. Once this publication is released, the competing company would have to consider this publication as prior art. The company releasing this publication is given a certain degree of protection. The company can use this publication as a shield against another company suing them for using this technology. This will, in most cases, discourage the other company from going ahead with the lawsuit because of prior art laws.

To qualify as this type of publication there are a number of things that have to exist. For one thing, the publication must have been available to the public in general. It must describe the technology specifically and the date of the publication must be before the date of the patent that was issued to the competing company. This involves two criteria which are accessibility and dissemination.

Accessibility is the issue of whether relevant members of the public could obtain the publication if they wanted to. If this is proven that they could have had access to the publication then there is no need to actually show them the publication. Just the fact that it existed and was accessible is enough.

Michael Russell
Your Independent guide to Patents

Patent Primer

If you are in the business of thinking up new products or processes, or even if you are just a back-yard tinkerer, consider obtaining patent protection for your inventions.

What a Patent Is - And Is Not

Patents provide their owners with an exclusionary right. They grant the "?right 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, and, if the invention is a process, ? the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, ?." 35 USC 154(a)(1). A patent is not the exclusive right of the patent owner to make, use, offer for sale, sell, or import the invention or products made by using a patented process; rather it is the right to exclude others from doing so.

A patent is personal property. It can be bought, sold, given away, or licensed. It can be hoarded. The patent owner does not have to practice the invention to keep the protection afforded by the patent.

Types of Patents

Patents come in three basic varieties.

Utility patents are what we usually think of when we think of patents. The utility patent protects "?any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, ?." 35 USC 101. Utility patents protect most inventions. A utility patent usually expires 20 years from the date the patent application was filed, and it is not renewable.

Plant patents protect new plant varieties (except tubers) that can be reliably reproduced asexually and that do not occur in nature. A plant patent expires 20 years from the date the patent application was filed, and it is not renewable.

Design patents protect ornamental designs that serve no useful function on otherwise useful devices. A design patent expires 14 years from the date the patent issues, and it is not renewable.

Why Your Business Needs to Hold At Least One Patent

Patents are valuable commodities. A small company with at least one patent (and preferably a patent portfolio) is almost automatically a more attractive investment for venture capitalists and market investors than is a company that holds no patents. Even banks have been known to take an interest in a patent or a patent portfolio as collateral on a loan. Thus, patent protection can make marketing or research and development significantly easier because funding becomes easier to access.

Patents can become a source of significant income to their owners. Licensing fees paid to patent holders for the right to use the patented technology have turned small companies, or even individuals, into major players within their industries.

Obtaining A Patent

Although the US Patent and Trademark Office (USPTO) accepts patent applications from unrepresented inventors, writing a worthwhile patent application is a skill that is honed with practice. It therefore behooves the inventor or company to hire a registered patent practitioner to develop the patent application in cooperation with the inventor. Patent prosecution (the process of developing the patent application and shepherding it through to issuance as a patent) is a specialty within the legal and scientific/engineering professions.

To obtain a patent, the inventor applies to the USPTO and pays the requisite fees to have the application examined. If the examiner agrees that the invention is novel, useful and non-obvious, and meets the standards for patentability set out in the statutes and regulations that govern patents, then a patent will issue on the invention.

The Patenting Process

When an inventor develops a novel, useful and non-obvious invention, she must reduce that invention to practice before a patent application can be submitted to the patent office. Years ago, "reduction to practice" meant building a model of the invention. Today, the patent application itself can serve as a constructive reduction to practice of the invention, so long as the application tells the reader how to make and use the invention.

Once the invention has been reduced to practice, an application is sent into the USPTO. If desired, this application can have the effect of filing a patent application in approximately 90 countries. This does not actually file the patent application for examination in all of these countries; you must eventually select the countries where you wish to have the application examined and have a patent issued. You may select to have only one country examine the application (if you file in the US, you should select the US), or any combination of all of the countries. You must pay examination fees in each country you select.

The USPTO initially examines the patent application for defects. If a part required by statute or regulation is missing, the USPTO rejects the application entirely. If a part that is needed but not required is missing, then the USPTO grants a filing date but sends the applicant a notice requiring that the defect be cured before the patent issues.

The application is then assigned to a patent examiner, who works with the applicant's representative to determine the exact metes and bounds of the invention. This process is time-consuming, often taking several years to complete. When the examiner is satisfied that the patent application claims the invention properly and the invention is patentable, a patent will issue upon payment of issue fees and correction of any outstanding defects.

Patent Considerations

The following is a list of some of the more common problems with obtaining a patent on an otherwise patentable invention. This list is not all-inclusive.

A patent cannot issue in the US if the invention was patented or published in any country, or in public use or on sale in the US, more than one year before the filing date in the US. Ideally, you should therefore submit a patent application to the USPTO before publishing the invention in any country (including on the internet) or putting the invention on public use or sale in the US.

A patent cannot issue in the US if you file for a foreign patent or inventor's certificate more than 12 months before you file your US patent application. If you file a patent application in a foreign country and wish protection in the US, you must file the US application within 12 months of the foreign application.

You cannot file for a patent on an invention that you did not make yourself. That invention may be patentable, but it is patentable to the inventor or inventors only.

You cannot file for a patent once you have publicly abandoned the invention. If you publish that you dedicate your invention to the public, it is no longer patentable.

Most inventions dealing with atomic or nuclear reactions are not patentable.

You should consult a registered patent practitioner with any questions about the patentability of your invention and to see the invention through the patenting process.

You can find more information about patents at www.USPTO.gov.

Disclaimer 1: This article is based on United States law. It makes no pretense to be accurate for any other country.

Disclaimer 2: Nothing in this article creates or is intended to create an attorney-client relationship between any reader and the author http://www.ipattorneyfirm.com.

Intellectual Property - Trade Mark Infringement - Figurative Community Trademark

In the case of Sportwetten GmbH Gera v the Office for Harmonisation in the Internal Market (?OHIM?) (2005), it was held that the registration of a Community trade mark was not contrary to public policy or public morality.

On 11 January 1999, OHIM published a figurative mark incorporating the word INTERTOPS in respect of Class 42: bookmakers and betting services of all kinds.

Sportwetten GmbH was the proprietor of the trade mark INTERTOPS SPORTWETTEN, registered in Germany in respect of the same types of services.

On 17 May 1999, Sportwetten lodged an application for a declaration of invalidity concerning the INTERTOPS registration. The application was rejected by OHIM and Sportwetten appealed to the Court of First Instance.

Sportwetten contended that:

▪ registration infringed Article 51 of Regulation No 40/94 read together with Article 7 (1) (f) and (2) because the proprietor was not licensed to offer or advertise in Germany the services in respect of which the mark had been registered; and ▪ the INTERTOPS trade mark was contrary to public policy or to accepted principles in Germany and other Member States.

The Court of First Instance dismissed the appeal and confirmed that:

▪ it is the trade mark itself, not the circumstances relating to the conduct of the person applying for registration, that is to be assessed in order to determine whether the mark is contrary to public policy or accepted standards of morality for the purpose of Article 7; ▪ consequently the fact that the INTERTOPS proprietor was prohibited from offering betting services in Germany did not have the effect of rendering the trade mark itself contrary to public policy or principles of morality; and ▪ therefore there was no grounds for which the decision should be annulled and therefore the application for a declaration of invalidity was denied.

If you require further information contact us at enquiries@rtcoopers.com or Visit http://www.rtcoopersiplaw.com or http://www.rtcoopers.com/practice_intellectualproperty.php

? RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

Full service commercial law firm based in the City of London intangible property, intellectual properties, intellectual property, intellectual property law, intellectual property escrow, intellectual property laws, intellectual property attorney, intellectual property definition, intellectual property issues. intellectual property agreement, managing intellectual property, intellectual property attorneys, world intellectual property, intellectual property litigation, intellectual property contract, trademark, copyrights, infringement, copyright, copyright law, copyright protection, copyright laws, trademark search, copyright notice, copyright infringement, trademark symbol, trademark law, trademark attorneys, trademark lawyers, legal patent, patents law, patent laws, patent lawyers, trademark laws, legal trademark, patent law, european patent law, patent infringement law, biotechnology patent law, uk patent law, trademark infringement law

Visit our websites at http://www.rtcoopersiplaw.com or visit http://www.rtcoopers.com/practice_intellectualproperty.php

Your Personal Trademark

 

For novelist Tom Wolfe, it's a dazzling white suit, regardless of the weather or season.

For comedian George Burns, it was a cigar.

For basketball bad-boy Dennis Rodman, it's crazy hair.

For software developer Jackie Grubb, it's the color purple.

"It": a personal trademark that anchors your identity in the minds of your market.

"One day after I started my business a client introduced me by name and 'She is our computer consultant and her color is purple,'" says Grubb. "Soon afterwards, at business meetings, people began to chide me if I wasn't wearing purple.

"Since people were already associating me with the color, I renamed my business Plum Suite Solutions and commissioned a logo with a plum shape and color. Items in my wardrobe that were other colors had a session with purple dye so that my personal appearance and all my paper materials tie together."

Becoming memorable cuts the number of times people need to meet you before you become ensconced in their mental filing cabinet, and it increases the vividness of their recall.

Your trademark needn't be visual. It can be a particular combination of words that functions as a slogan. Reporter Tim Russert has trained his NBC compatriots -- and undoubtedly his TV audience -- to complete the trademark sentence for his show, "Remember, if it's Sunday... it's 'Meet the Press.'"

Other auditory trademarks might involve a particular kind of word, a tone of voice or a manner of speaking. During the last World Cup soccer championship, I loved hearing the way the Spanish sportscasters announced a goal, even though my Spanish comprehension is pretty terrible.

A motivational speaker I once ran across called himself "Tom Terrific" and told audiences that if anyone asked how he was and he didn't say, "Terrific!" he'd hand over $100. For someone who spoke on having a positive attitude, this verbal trademark made perfect sense. (He claimed that he'd had to pay up only a few times in many years.)

A kinesthetic personal trademark would stamp your identity in memory through a behavior or a gesture. I'm told that business guru Tom Peters is known for never standing still while on a speaking platform. Conductor Leonard Bernstein worked his way into the American consciousness through the vigor of his conducting and having to keep tossing his mane of hair out of his eyes. I understand he also carried a sharpened baton with him that he used to spear food instead of using a fork when eating in restaurants.

Don't take this identity-building tool to such an extreme that it undermines your credibility or sets you off as bizarre. For instance, in the business world and in politics, people take handshaking seriously. Developing an idiosyncratic physical greeting or abstaining from handshakes, as real estate mogul turned Presidential candidate Donald Trump did for supposed hygienic reasons, can mark you as eccentric in a bad sense. Otherwise, creating a personal trademark is smart, cost-effective marketing!

Marcia Yudkin is the author of the classic guide to comprehensive PR, "6 Steps to Free Publicity," now for sale in an updated edition at Amazon.com and in bookstores everywhere. She also spills the secrets on advanced tactics for today's publicity seekers in "Powerful, Painless Online Publicity," available from www.yudkin.com/powerpr.htm .

It Involves The In-ter-net...Dan Reinhold

This article may only be reproduced in its entirety, including the resource box and subscription information electronically or in print. A courtesy copy of yopur publication would be nice, too!

It Involves The In-ter-net...
By Dan Reinhold

There's a song by a group called the Bare Naked Ladies ( yes, I'm serious!) entitled “Never Do Anything". One line states, “I could make a mint, fill my pockets with more than lint, I'll give you a hint - it involves the Internet".

Never do anything. Involves the Internet.

Sound familiar?

When you're first exposed to the Internet, it's mindblowing and full of promises. Heck - if you're not “making money online" within five minutes of signing on, you must be some kind of vegetable. It's a big candy store, and everything looks sooooo good. If one program sounds really great, then a few dozen will make it happen even faster...right??

You're gonna do great big things, until...you don't. And you quit, with all those “Told ya sos" ringing in your ears.

What you don't know about the Internet when you first see it is that the things of real value have nothing to do with the endless stream of dazzling get-rich schemes and scams and financially fruitful flims and flams.

It's relationships.

That mouse at your fingertips can't help you succeed, friend. Wrong animal, although at least it's a mammal, too.

It can take a while and it can take some work. Finding good, real people online IS possible. That's the reason why WAHumor.com exists.

Did you really think a raving Inter-idiot like me could pull this off...alone???

Yeah, probably.

After lots of time, sweat ,tears, frustration, rage, doubt...and I do mean LOTS.

What else can you do?

Find a good place or two to talk to some good people.

We're making one right here at WAHumor.com...in our very own forum.

Now and in the future, you'll meet some amazing people at the WAHumor forum, many of whom helped me get here.

And you'll meet people like you with questions and concerns like yours - getting answers.

Ain't got no gurus here - it's just folks like me and you-hoo.

C'mon, let's go meet everybody...starting July 19.

WAHumor.com, the premier work at home humor website, officially launches on Saturday, August 2, 2003. The site pre-launches on July 19 when the forum goes live - be there for a special announcement you don't want to miss!
Subscribe today at www.WAHumor.com