Patents may cover two different types of invention. A utility patent filing (either by first filing a provisional and then a utility application, or by skipping the provisional filing and initially filing the utility application) protects the useful functions of an invention. A design patent, on the other hand protects the ornamental features of a useful object.
In addition to US patent filings foreign patent filings are available too. Foreign patent rights may be protected, and the expense of filing in foreign countries delayed by filing a PCT patent application. Or, foreign countries may be filed in directly.
Trademarks protect the identity of the origin of goods or services, not the goods themselves. Essentially a trademark prevents another from palming off their goods or services as being yours, when they in fact are not.
The Patent Process
Can the invention be patented?
Not all inventions are patentable. There are a number of factors that you should discuss with your patent attorney before you proceed with a patent application. Having suitable subject matter is an initial inquiry. If you come up with a new mathematical formula, or discover a new element, US patent law considers those items to be ineligible subject matter for a patent. Once that hurdle is passed you next ask if the invention can be patented.
Also, some activities of an inventor may lead to an invention being un-patentable. In particular if your invention has been disclosed to the public for more than a year, you may be barred from obtaining a US a patent. If there has been any disclosure you are barred from foreign patent filings. In general if you have not kept your invention secret, it is best to discuss with your patent attorney the facts regarding the disclosure of the invention and when these occurred.
The invention must also be novel or new. That is, you must be the first person to have discovered this invention.
And finally, the invention must be non-obvious. This means that there must be more than an incremental improvement in an existing invention for it to be patentable. Novelty and non-obviousness are the main subjects that come up in examination of a patent application. Accordingly a patent search may help determine how you stand in regard to these two requirements.
A patentability search may be done. However, no search is perfect and the purpose of the search is to give the inventor some idea of whether or not it will be worthwhile to go to the expense of filing a patent application. An inventor can, and should, do their own preliminary search. We can also have a search done by one of our third party search providers. When the search phase is completed, we provide the inventor with copies of the closest patents that have been located and may give our evaluation of the applicability of the references found. A search may be done either before the provisional filing or may be done after a provisional filing (to establish a filing date ASAP). We would be happy to discuss the pros and cons of patent searching in an initial consultation.
Types of Patents and the Scope of Coverage
Patents may cover two different types of invention. A utility patent filing (which can be achieved either by first filing a provisional and then a utility application, or by skipping the provisional filing and just filing the utility application) protects the useful functions of an invention. A design patent, on the other hand, protects the ornamental features of a useful object.
Both provisionals and utilities must disclose structure-how an invention is built, or how a method is carried out. References to vague features, benefits, or “functionalities” are not patentable, and do not enable an invention. The structure or method that produces those benefits may be patentable.
Another thing to consider when deciding if you want to file a patent is what you want to protect. Would you be satisfied to protect your product from bare copying, or would you like to keep competitors out of the field? Also, how much you are willing to spend to get the desired level of protection, and is what you may get worth the cost? If there are a lot of other patents in the field of your invention you may encounter a difficult and expensive process to end up with a narrow patent that barely covers the invention that is easy for competitors to get around. On the other hand if there are few patents in your field, you may be able to get a patent that covers your invention and work arounds that a competitor might utilize in an attempt copy you with a few changes made in an attempt to avoid infringement.
Other ancillary considerations to discuss with your patent attorney include; your entity size (that determines the fees you will pay to the PTO); who are the potential inventors (do they meet the legal requirements to be listed as inventors); if there is more than one inventor, what legal arrangements have been made to share the invention; and if you have a day job, or just left one, do you have an obligation to assign this invention to your current or former employer?
Provisional and Utility Patent Applications-How are they related?
The patent law permits the filing of a provisional application which is a type of interim protection. The provisional application contains drawings and a description, but does not require patent claims to be filed, nor many of the other formalities of a utility application. Under the law, a complete regular, non- provisional application or utility patent application must be filed within one year of the filing of the provisional application, or the filing date of the provisional application becomes abandoned. Therefore, if there is uncertainty about the value of the invention or if economic considerations do not warrant the immediate filing of a complete application, a provisional application may be a viable option.
Generally, a patent application should be filed as soon as possible, and a provisional may be a good way of doing that. Especially since the US is now a first to file country, delay can result in disclosure, and other inventors possibly filing before you do. To preserve your rights to the maximum extent possible, it is best to file before any disclosure; and not wait 12 months (statutory bar) from the time you first disclose the invention to file. While you may still be able to apply for a patent in the United States, disclosure is fatal to patent rights in most foreign countries. If you convert the provisional into a utility application the filing date of the utility application will be the filing date of the provisional application.
A provisional patent application is precisely that-provisional. It expires at the end of 12 months. It is kept in secret at the patent office, and is not examined and not published if not converted to a utility application. By the end of 12 months the provisional patent application must be followed up with a utility patent filing, or you lose your priority date-that is the filing date of the provisional.
Although many of the requirements for filing a provisional are relaxed in comparison to a utility application it still needs to be prepared being mindful of what is said (or not said) in it, and the effect that it might have on your rights in any later utility application that might issue. It is a foundational application. Ultimately, your claim to priority and the validity of your patent claims will depend upon the enabling disclosure in the provisional application and its scope. If the provisional is weak or poorly done, it may adversely affect later utility filings.
We can prepare a provisional the same as you would prepare a utility application, and simply file it as a provisional. From a legal perspective that is the best thing to do. However, such a practice may not be the best for our clients. We find a good rule of thumb is to spend about half of the effort on a provisional as we would spend if producing a first draft of a utility application. That level of effort typically allows us to get an enabled application on file expeditiously and gives the client somewhat of a reasonable cost initially.
Sometimes we file “emergency’ provisional. These are typically for clients who are facing an imminent patent defeating event. This is not a desirable position to be in, but sometimes it is unavoidable, and it may be better to file a weak provisional than none at all. Even such a quickly prepared provisional must still fully enable the invention and disclose all equivalent ways of doing things. Also, as a safeguard, if a provisional is prepared in an emergency situation it is wise to follow it up with a more complete supplemental provisional filing, or to quickly move to a utility rather than waiting until the end of 12 months.
Keep in mind for any provisional, that if you don’t mention various embodiments it in the application you don’t get credit for them. If you narrowly disclose the invention that is all you will get credit for. No one will fill in the blanks for you at the patent office, or in court, unless it is done in the provisional. In general it is better to say more about how an invention works, than less. For example if two pieces of metal are joined by welding, but other ways are acceptable you must say so in the provisional, otherwise in the future you could only claim welding since screws, rivets, or other fasteners were not disclosed as possible fastening methods.
A utility application is the real deal. Typically it has a life of 20 years from its filing date. Maintenance fees must be paid periodically. It is both a technical description of an invention and a legal document. In it a set of claims that define the invention are presented, that are examined by the patent examiner.
The examination process is a back and forth negotiation process in which the examiner compares what you are claiming to the prior art. If what you are claiming covers the prior art as well as your invention you may have to change the wording of the claims to get one or more of the claims allowed, resulting in an issued patent. If your claims can not be differentiated from the prior art, the patent application may be abandoned with no claims being issued. This negotiation process is called patent prosecution and can take several years. Accordingly, preparing a patent application during the patent drafting process that will aid in the prosecution of your patent claims is an important part of the process.
In terms of content, a utility patent application is a custom drafted legal document that ends with a set of claims that define the invention you are patenting. If you obtain an issued patent and ever have to enforce it, the part of that issued patent that is used to enforce it, is the claims.
The remainder of the application may include descriptions and drawings that disclose and explain the invention, and in general support the claims and their interpretation. The disclosure in the application must cover the claimed invention, and it can include description of the unclaimed aspects of the invention, other inventions, and the functionality of the invention. All of this is typically drafted to support the claims that are at the end of the application. During patent prosecution the claims may change during negotiation, so the description should be broad enough to support the changes that may be made to the claims in prosecution.
A utility patent can cover a single invention or it can be an omnibus application describing many inventions. According to patent office rules only one invention may be pursued in an application. So for an omnibus description, and in other situations there may be supplemental filings of related applications required by the patent office.
Utility patents can have family trees. The simplest family tree is a provisional application followed up by one or more utility applications. These continuing utility applications can in turn act as parent application for other applications that may be termed children and grandchildren of a utility application. The general rule for filing of a child or grandchild application is that it must be filed while the predecessor application is still alive (not issued or abandoned).
Why bother with maintaining this chain of continuity? The usual reason goes back to establishing the earliest filing date possible for a core invention. It is in general desirable to be able to claim the filing date for the core technology even in a later application that may only make modest improvements to that core technology. Another reason is that keeping an application pending prevents your own previously filed application from being cited against you as prior art during prosecution.
Typical types of continuing applications include: a divisional application (an application filed as the result of an examiner declaring more than one invention is present, and each invention must be presented in a separate application), a continuing application (containing the same description previously filed, but presenting new claims-perhaps trying to broaden previously obtained claims) and a continuation in part application (adding to the old description and presenting appropriate claims for the improvements). In addition there are other types of US application filings such as reissue applications, and there may also be foreign patent filings to protect an invention.
From your earliest filing date in the US (provisional or utility) you have 12 months to file foreign patents, either under the Patent Cooperation Treaty (PCT), or under the Paris Treaty. Alternatively you can do both. If you are considering foreign filing please give us a call to discuss your particular situation, and see if we can be of service to you.
Foreign Filing Through The Patent Cooperation Treaty (PCT)
A PCT filing is a place holder application somewhat like a US provisional application. Filing a PCT application delays the necessity of foreign filing until 30 months from your earliest filing date in a number of countries. Also, with a PCT there is a common examination that issues (instead of having to deal with each country’s patent office “doing their own thing”). Most countries are members of the PCT, but some are not.
If you are developing a business, a PCT application may be a good way to maximize your IP protection down the road. In particular if you encounter a potential partner at a later date they may consider the ability to file patent applications in a number of countries a valuable asset. Also, the delay built into a PCT allows you to spread out the cost of foreign filing to a later time-perhaps after revenue from sales has been sufficient to justify further patent expenditures.
Direct Foreign Filing
For countries that are not members of the PCT, a direct foreign filing in that country is the only choice. Or, if you are certain that you only want to file in one or two other countries, it may be more economical to skip the PCT, and file directly in those countries. This saves the cost of filing the PCT application, as the cost of filing in those one or two countries may be comparable of the cost of filing the PCT (depending on the countries/regions).
Complementary to the utility patent is the design patent. A design patent is narrow in coverage – it only protects the appearance of an object as shown in its drawings. A utility patent can be broader in protection as determined by the wording of the written claims. In general a design patent is easier to obtain and less expensive than a utility patent. The term of a design patent is 15 years verses 20 for a utility. Design patents are not subject to maintenance fees. The filing date of a design patent may not be based upon a provisional patent application. However, a design patent may be based on the filing date of a utility application-if the design is disclosed in that utility application.
Quality drawings in a design patent are very important as they define the invention. These drawings are a particular kind of pictorial representation of the object, and as such preparation by a professional draftsman experienced in these depictions is highly recommended. Each variation of the invention would typically require a separate design patent if each variation looks different.
If you believe that someone has copied the invention as “claimed” in your patent. You should consult your patent attorney as a first step. Your patent attorney may preliminarily look at your claims an compare them to the accused device to determine if it appears each and every element in the claim is present in the accused device. Some cases are more straight forward than others, often there is ambiguity regarding if something claimed is actually present in an invention, or not. After an initial analysis you may decide if you want to enforce your patent rights. This would also be a good time to consult a patent litigation attorney to formulate your next steps, and to decide what you want out of the process. Do you want damages? Do you want them to stop, or do you perhaps want to allow them to continue, but force them to take a license from you?
Clearances and Opinions
You may find yourself on the other side of a patent held by a competitor and want to find out if you are in trouble, or will be in trouble from an infringement perspective. Your patent attorney can help you with this by comparing the claims of the other party’s patent to your product, or intended product.
Selection of a Trademark
Trademarks (for goods) or Servicemarks (for services) protect the identification of the source of goods or services. The process of obtaining a trademark or service mark is the same, so from now on we will treat trademark as being synonymous with servicemark. Two general types of trademarks may be obtained; a word mark, or a design mark. In a word mark if the words registered appear in any form or typeface you may enforce a word mark. A design mark is narrower (and therefore easier to obtain) and treats a graphical design, or symbol as your trademark. So, in order to infringe a design mark your symbol must be copied. Many clients who are just starting a business may register a design mark first and possibly later pursue a word mark registration in one or more classes of goods and services.
Registering a trademark does not protect its use on any product. When you register you must select one or more categories of goods and services that you will use the trademark with. It is important to note that if you register a trademark to only protect your brand of windows, and did not include doors in your registration, then you likely will not be able to enforce your trademark rights against someone selling doors under the same name.
In general there are two criteria for registering a trademark in a given class of goods and services. First the trademark must not already be taken, and second the proposed trademark must be capable of functioning as a trademark.
Your proposed trademark may function as a trademark if it is classified by the examiner as either “suggestive” or “abstract”. If it is classified as “generic” it cannot be registered. If it is classified as “merely descriptive” you may be able to register it but it will be difficult and expensive. It is better to initially pick a trademark that may be registered easily, rather than one that can not be registered, or will lead to great difficulty and expense to register.
A trademark application pronounced generic is one that is incapable of identifying goods and services. A good example is “bread”. You certainly could not register “bread” as a trademark for baked goods, as doing so would take the word out of circulation. However you might be able to register “bread” as a trademark for another class of goods like computer hard drives arranged in a case like slices of bread in a loaf of bread.
A trademark application pronounced merely descriptive is one that merely describes the goods sold. An example would be “Tom’s appliance store” since this proposed mark describes what Tom sells. Now if Tom has been in business a number of years and it is widely known then he may have built up secondary meaning such that “Tom’s appliance store” is associated in people’s minds with this particular store, then registration might be obtained, but it is not easy and it is expensive.
A trademark application pronounced suggestive is one that suggests the goods and services, but does not explicitly name them. In general this is the better choice of marks to select. It is typically easy to register, and since the trademark suggests the goods or services, a lot of marketing effort is not needed to associate this mark with the goods and services.
A trademark application pronounced abstract is one that is a word that bears no relation to the goods or services that are sold under it. It is easy to register, but considerable marketing effort must be expended to associate this king of mark with the goods sold.
Once a mark that looks capable of registration has been chosen, it is advisable to check to see is someone else has not taken it.
To find out if a trademark is most likely available for use we recommend that a preliminary trademark search be conducted before any mark is used. A preliminary trademark search at least checks existing trademark registrations, pending trademark applications and abandoned applications found in the US trademark office data base. An optional full search may be performed next, if desired that checks more data bases. The full search is much more costly to perform, and to review.
Trademark Application Filing
If the mark appears available an application for registration may be filed with the U.S. Patent and Trademark Office. The procedure for filing a mark is in general the same for a trademark that has been in use and a trademark for which there is an intention to use (“ITU”). The application includes a drawing of the proposed mark, and the goods and services for which registration is sought. Government fees typically depend upon the number of classes registration is sought in, whether the mark is a design mark or a word mark.
Prosecution of trademark applications after filing is billed by the hour if a rejection letter is received, or in responding to oppositions that might be filed by third parties against the application. Finally applications that are based on an intent to use the mark vary from those of use based marks.
Once an application for trademark registration has been approved by the Patent & Trademark Office, it is published in the Official Gazette of the United States for purposes of opposition by anyone who believes they will be damaged by issuance of the registration. If no opposition is filed, then the registration will issue in due course. An affidavit of continuous use is due five (5) years from the date of issuance and a registration must be renewed every ten (10) years for the mark to remain in force.
You should not selectively enforce you trademark rights. If you are haphazard in enforcing them you are at risk of loosing your trademark. Accordingly, if you believe someone is improperly using your trademark, you should promptly send a cease and desist letter to stop the improper usage, or to arrange for a license to let the other party use your trademark. Even if you intend to allow the use of the trademark gratis, you should only allow such use under a royalty free license-don’t just ignore the use.
It may make sense for you to utilize a watch service to look for offending uses of your trademark, and trademark applications for marks that you would rather not see issued to a competitor. In particular if you see a trademark application that has been filed-typically in a related category of goods or services– it is much easier to block the issuance of such a trademark through an opposition than to try and assert your mark against the competitor, after they are issued a trademark.
Trade dress is the overall commercial image (look and feel) of a product or service that indicates or identifies the source of the product or service and distinguishes it from those of others. It may include the design or configuration of a product; labeling and packaging of goods; or the décor or environment in which services are provided. For services trade dress protection applies to the “total visual image” . For example in a restaurant menu layout, and interior design may be protected. Trade dress may be protected through common law rights, or registration. In the US filing a registration is similar to filing a trademark application. However one unique point is that the trade dress must not be functional. So in examination even if the trade dress is found to be distinctive, if it is also found to be functional registration can be denied.
Working With Us As Your Attorney
The materials on this website have been provided for general information only and not as legal advice that the reader should rely on. An attorney client relationship does not exist until a signed engagement letter is in place with our firm. Law is a complicated area, and the answer to almost any legal question may often start with “it depends on …”. Until we know the specific facts of your situation we cannot provide you with legal advice. This brings us to our next topic, which is working with us as your lawyer.
Typically a prospective client will call or e-mail to make initial contact with us regarding a patent or trademark matter. It typically takes a half hour or so of discussing the matter with the prospective client to see if they want to hire us, and for us to determine if we will accept their representation. For patents some inventors are very cautious about disclosing their invention, others tell us all the details right up front. We are fine with either approach. We will probably need at least some rough information on the invention, but a very general description if often good enough to get things going. That is because at this stage other than deciding if we can do business together, there are many other important topics to cover such as what kind of protection is need as well as explaining potential costs, and areas of law that the inventor may not be aware of.
Regarding fees, we charge by the hour. We try and estimate costs for clients to a reasonable degree to give them a reasonable and fair expectation of our charges prior to doing the work. Our estimates reflect the time that it takes to do a reasonably competent job for the task at hand. We do not estimate based on inferior work, nor work that is a gold plated brick. Some prospective clients may ask us to “bid” for work, or to compete with some extremely low quotation. The only way to compete with such low quotes is to do less work which guarantees an inferior work product. In patent and trademark law you truly get what you pay for.
If you decide to hire us we typically require a signed engagement letter, and a fee advance to proceed. The engagement letter sets out the terms of the representation, and the work to be done. The fee advance covers at least a portion of the work to be done. And regarding advances as in a saying often attributed to Abe Lincoln in his days as a lawyer “when a client has paid cash up front, the client knows he has a lawyer and the lawyer knows he has a client”. Experience has found this to still be very true today.
Once you hire us please keep in mind that we make our living by charging for the time it takes to provide services for our clients. In line with that it is appreciated if clients respond to our communications. The same applies to telephone and e-mail communications. We typically do not charge for quick responses to telephone calls and e-mails, but if a lengthy, or multiple, responses are required, please do not be surprised if you are billed for those. In particular if there is a due date coming up we have a duty to advise you, and seek your instructions, and we must diligently pursue the matter until we hear from you. In general it is not acceptable to not respond to us and simply assume that your silence means to do nothing-please talk to us. We love to hear from our clients even if it’s a simple thanks, but no thanks response. Simply stated if you hire us we will try our best to provide quality services in the most cost effective manner for you, and we in turn simply ask that our clients do what they can to assist us in doing their work.