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

The Trademark Dilution Revision Act of 2006 and Your Online Business

Creating the right trademark that distinguishes your product or service from others is the key to a successful business both online and off. However, one recent legislative enactment is worthy of note, as it might influence your decision in choosing the next name or graphic for your online business. ?

Like its predecessor, the Federal Trademark Dilution Revision Act of 2006 ("Act"), signed into law in mid-October by President Bush, provides remedies for owners of "famous" trademarks (e.g. trademarks that are widely recognized by the general consuming public in the U.S. as a designation of source of goods or services of the trademark owner). Plaintiffs can file an action for dilution and obtain injunctive relief by showing their trademark has been "diluted" by the unauthorized use of another.

The Act provides for the cause of action known as "dilution." Dilution is a relatively new addition to trademark law that allows a plaintiff to recover from another's unauthorized use of his trademark where such use degraded or diminished the uniqueness and/or distinctiveness of his famous trademark.

Usually dilution is referenced together with the concepts of blurring and tarnishment. The revised Act specifically cites "dilution by blurring" and "dilution by tarnishment" as new causes of action in themselves. In all its forms lies the dangerous misperception that dilution claims require a showing of consumer confusion. Dilution claims, including blurring and tarnishment, require no showing or likelihood of confusion. ?

The revised Act is especially relevant to the online business owner in the initial stages of choosing a trademark name or graphic. Under the new cause of action for "dilution by blurring" you may run into problems simply by choosing a trademark that is similar to a famous trademark that causes the famous mark to lose its distinctiveness. Regardless if you adopted your trademark in good faith with no intention of piggy-backing off of the goodwill of a famous name brand, you may be sued for dilution by blurring. Similarly, under the new cause of action for "dilution by tarnishment" you may encounter problems by choosing a name similar to a famous brand if your use causes the famous trademark to suffer loss to its reputation.

It is particularly important to note that the new causes of action for dilution, dilution by blurring and dilution by tarnishment apply a "likelihood" of dilution rather than an actual dilution standard. This means that a plaintiff need only allege that your use is likely to cause or may potentially cause damage to their reputation or to the distinctiveness of their trademark. This new standard wields great power to owners of famous trademarks and could prove potentially lethal to the unsavvy online business owner or entrepreneur.

However, this new power is not absolute and will likely have little effect on comparative marketing and advertising both online and off. Under the revised Act, it is not actionable to compare your goods with that of a famous brand. It is also not actionable to parody a famous brand or trademarked product. For online marketers, this is important, as the Act preserved the traditional free-market idea of comparative advertising. Thankfully Congress recognized and appreciated the benefits of comparative advertising, maintaining its integrity in the revised Act.

From the recent Google decision and this revised Act by Congress, one can glean that although the strings are drawing tighter around the ever-expanding World Wide Web, it remains open to free-market competition and entrepeneurism. However, as trademark law evolves through judicial opinions and legislative enactments, it is always the best advice to consult an experienced intellectual property attorney before setting your branded product or service out into the world through the ether or otherwise.?

This article was written by Gemma E. Hoffman, a graduate of the Franklin Pierce Law School, specializing in intellectual property law.? Gemma writes select pieces regarding intellectual property for the law firm of Goldstein and Clegg, LLC, a Massachusetts Trademark and copyright law firm. ?

Creating the right trademark that distinguishes your product or service from others is the key to a successful business both online and off. However, one recent legislative enactment is worthy of note, as it might influence your decision in choosing the next name or graphic for your online business.