Patent Law
What is the best action to take if you find that someone has infringed upon your patent?
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Since
patent litigation is a very expensive option it is important to
make sure there is sufficient evidence to support the patent
infringement dispute in trial. Thus, the first step for the
plaintiff should be to acquire and evaluate the evidence of
infringement. This often involves purchasing the infringing
invention, documenting the dates of infringement, researching
whether the infringing party has been sued for patent infringement
in the past, and evaluating the legal claims.
The best action to take depends on many factors. These include the economic and legal resources of the plaintiff in comparison to those of the defendant, the significance of protecting the specific patent (i.e. the commercial value of the invention for the plaintiff and to the defendant), whether the infringement is literal or falls within the doctrine of equivalents, and other factors. For instance, if the plaintiff is an individual inventor with limited resources that has not been able to commercialize the invention, and she finds that a large corporation clearly infringes her patent property rights, she may want to consider negotiating a licensing or assignment agreement to obtain appropriate royalties. As a first step, the inventor can use a cease and desist letter informing the party the nature of the believed infringement and possible remedies.
The best action to take depends on many factors. These include the economic and legal resources of the plaintiff in comparison to those of the defendant, the significance of protecting the specific patent (i.e. the commercial value of the invention for the plaintiff and to the defendant), whether the infringement is literal or falls within the doctrine of equivalents, and other factors. For instance, if the plaintiff is an individual inventor with limited resources that has not been able to commercialize the invention, and she finds that a large corporation clearly infringes her patent property rights, she may want to consider negotiating a licensing or assignment agreement to obtain appropriate royalties. As a first step, the inventor can use a cease and desist letter informing the party the nature of the believed infringement and possible remedies.
Where can a listing of patent attorneys and patent agents be otained?
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The
Martindale-Hubbell (R) Law Directory has been used as an
authoritative resource for information on the worldwide legal
profession from more than 130 years. The listing includes a
database over one million law firms and lawyers in 160 countries.
The Martindale-Hubbell Law Directory is accessible on CD-ROM,
print-edition (26 volumes), and online at martindale.com, The
Martindale-Hubbell directory includes law firms by practice area
including Intellectual Property Law. Under the IP Law directory it
is possible to search by US-State, Canadian Province, US
Territories, and country.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Martindale-Hubbel Law Directory. www.martindale.com
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Martindale-Hubbel Law Directory. www.martindale.com
What three entries may qualify for small entity status?
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Qualifying small entities can pay a reduced rate
fee for their patent application if they file a small entity
declaration. For the purposes of determining the patent application
fees, small entity are defined by the USPTO as (1) independent
inventors, (2) small business concerns (i.e. a business with 500 or
less employees during a fiscal year), and (3) nonprofit
organizations. In order to qualify the the exception, independent
inventors must maintain the patent rights or transfer the rights to
a small business concern or nonprofit organization. The small
entity status does not apply in cases where the small entity
(independent inventor, small business concern, or nonprofit
organization) is transferring the rights to an entity that does not
qualify as an small entity. The reduced filing and maintenance fees
are intended to help promote innovation by small entities.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
Do patents do a good job of protecting the original owner's interest in the item?
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Patents
seem to do a good job in general when it comes to protecting the
original owner's interest in cases where the invention falls well
within the traditional matter of patents: utility patents, plant
patents, and design patents. Patent law generally provides good
protection for "classic" inventions such as machines, devices, etc
(i.e. tangible inventions). However, as we move from a
manufacture/engineering-based economy towards the digital economy
and the "service/experience" economy, traditional patent protection
has limitations. In the past 50 years US firms sought patent
protection for their inventions since manufacture and engineering
innovations gave them an important competitive advantage. As the
technology matures and global competitors can produce similar
quality products at lower cost, some of the competitive advantage
based exclusively on "tangible" inventions is more limited
(Porter). Additionally, given that nowadays the US economy is
primarily a "services economy" where even engineering companies
that have traditionally focused on device manufacture such as IBM
have shifted their orientation towards providing service solutions;
protection in the area of business processes, software, and other
more "abstract" and "intangible" inventions is becoming more
important. While the USPTO have been shown to be more capable of
adapting to accommodate this shift toward more intangible
inventions than the EPO (European Patent Office), protection is
still limited in many emerging areas.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
[4] The European Patent Convention
[5] Porter, ME. "Competitive Advantage".
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
[4] The European Patent Convention
[5] Porter, ME. "Competitive Advantage".
How does the US patent system differ from first-to-file systems?
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First-to-file patent systems such as the
requirements followed in the European Union place more importance
on the filing date than the actual date when the invention was
conceived. In the US, the PTO determines the priority between two
applications by considering the invention date as well as the
filing date. Thus, the USPTO can be considered to follow a
"first-to-invent" doctrine. An inventor can publicly disclosure the
invention (i.e. demonstrating that the invention has been fully
conceived) and wait to file a patent for up to a year in the US.
This is not the case in Europe since any public disclosure is
considered to be prior art. Consequently, only the filing date
matters. Article 60(2) of the European Patent convention
(EPC) awards priority to
the applicant that first files the invention. Under first-to-file
patent systems inventors are more pressured to prepare and file the
application as soon as possible in order to gain the IP protection
for their invention.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
[4] The European Patent Convention
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
[4] The European Patent Convention
What is the one-year rule?
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The
one-year rule, also known as the one-year grace period or on-sale
bar, is a doctrine that prevents an inventor for acquiring patent
protection if the application is filed more than one year of the
following: 1) any public use of the invention by the inventor, a
sale of the invention, an offer of sale, or public use of the
invention in the United States, OR 2) any description of the
invention by the inventor in a published document (i.e. a printed
publication) in any country. This enables inventors to market or
commercialize their inventions for up to a year and decide whether
or not they want to seek patent protection. After the one-year
period, the invention becomes public domain and is not eligible for
patent protection since it is considered to be prior art. In
general, disclosure under a signed confidentiality agreement is not
considered to be public disclosure.
In 1998 the Supreme Court established a two-part test (Plaff vs Wells) to determine the commencement of the on-sale bar. According to this test 1) there must be an offer for commercial sale -not experimentation-, and 2) the invention must be ready for patenting (i.e. it must be reduced to practice or fully documented so that a person skilled in the art could create a working version of the invention).
For the purposes of patent law, a printed publication is considered to be any method of recording information such as paper, hard-drive, CD/DVD, microfilm, etc. If the printed publication contains a full disclosure of the invention (i.e. a description with enough detail that would enable a person skilled in the art to create a working version of the invention), the inventor will be barred from patent protection if the application is filed after a year of the date of publication. For the purposes of patent law, public disclosure is considered to take place once there is public accessibility to the printed publication. For instance, in the case of a doctoral dissertation public disclosure is considered to be the date when the university catalogs the dissertation and makes it available to the public. In the case of peer-reviewed journals, the date of publication is typically considered to be the date when the paper get published (i.e. available to the public) but depends on the specific editorial policies of the specific journal. In any case, it is a good idea to file for a provisional patent before any public disclosure.
Compared with other countries, the grace period by the USPTO is very generous. For instance, the European Patent Office requires "absolute novelty" (i.e. any public disclosure would prevent the inventor for acquiring patent rights). Article 54(2) of the European Patent Convention (EPC) defines prior art to include "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application."
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
In 1998 the Supreme Court established a two-part test (Plaff vs Wells) to determine the commencement of the on-sale bar. According to this test 1) there must be an offer for commercial sale -not experimentation-, and 2) the invention must be ready for patenting (i.e. it must be reduced to practice or fully documented so that a person skilled in the art could create a working version of the invention).
For the purposes of patent law, a printed publication is considered to be any method of recording information such as paper, hard-drive, CD/DVD, microfilm, etc. If the printed publication contains a full disclosure of the invention (i.e. a description with enough detail that would enable a person skilled in the art to create a working version of the invention), the inventor will be barred from patent protection if the application is filed after a year of the date of publication. For the purposes of patent law, public disclosure is considered to take place once there is public accessibility to the printed publication. For instance, in the case of a doctoral dissertation public disclosure is considered to be the date when the university catalogs the dissertation and makes it available to the public. In the case of peer-reviewed journals, the date of publication is typically considered to be the date when the paper get published (i.e. available to the public) but depends on the specific editorial policies of the specific journal. In any case, it is a good idea to file for a provisional patent before any public disclosure.
Compared with other countries, the grace period by the USPTO is very generous. For instance, the European Patent Office requires "absolute novelty" (i.e. any public disclosure would prevent the inventor for acquiring patent rights). Article 54(2) of the European Patent Convention (EPC) defines prior art to include "everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application."
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
What are the four requirements for a utility patent?
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Utility
patents are granted for inventions that can be described or
categorized as:
-Machines (i.e. a device that accomplished a specific task -e.g. an engine)
-Articles of Manufacture (i.e. a single object without movable parts or equivalent -e.g. chair, pencil)
-Processes (i.e. a method of accomplishing a result through a series of steps involving physical or chemical interactions).
-Compositions (i.e. a combination of chemical or other materials).
-New Uses of machines, articles of manufacture, processes, or compositions.
The four requirements for a utility patent are:
1. The invention must fall within one of the statutory classes
2. The invention must be useful.
3. The invention must be novel.
4. The invention must be nonobvious.
By statutory classes it is meant that the patent is a machine, process, manufacture, composition, or any new or useful improvement of these. The USPTO regards an invention as useful when it is capable of accomplishing the task it was designed for (i.e. the invention must work). Thus, when filing a patent application it is important to demonstrate that the invention works as intended and therefore has utility. Novelty is a statutory requirement of the US Patent law. By novel it is meant that it differs in some specific way form prior art (i.e. existing knowledge in the public domain or previous patents). Finally, the invention must not be considered to be obvious by people trained in the art.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
-Machines (i.e. a device that accomplished a specific task -e.g. an engine)
-Articles of Manufacture (i.e. a single object without movable parts or equivalent -e.g. chair, pencil)
-Processes (i.e. a method of accomplishing a result through a series of steps involving physical or chemical interactions).
-Compositions (i.e. a combination of chemical or other materials).
-New Uses of machines, articles of manufacture, processes, or compositions.
The four requirements for a utility patent are:
1. The invention must fall within one of the statutory classes
2. The invention must be useful.
3. The invention must be novel.
4. The invention must be nonobvious.
By statutory classes it is meant that the patent is a machine, process, manufacture, composition, or any new or useful improvement of these. The USPTO regards an invention as useful when it is capable of accomplishing the task it was designed for (i.e. the invention must work). Thus, when filing a patent application it is important to demonstrate that the invention works as intended and therefore has utility. Novelty is a statutory requirement of the US Patent law. By novel it is meant that it differs in some specific way form prior art (i.e. existing knowledge in the public domain or previous patents). Finally, the invention must not be considered to be obvious by people trained in the art.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
Who is permitted to prepare a patent application, besides the inventor?
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The US
Patent and Trademark Office (PTO) has established a certification
process that involves taking an examination (the Patent Agent's
Exam) after having obtained an approved college degree in
engineering or science. Both attorneys (i.e. people that have
completed a law degree and have passed the bar examination in a
state) and nonattorneys may take the exam as long as they have a
college degree in engineering or science that meets the PTO
requirements. A Patent Attorney is a lawyer with adequate technical
background (i.e. in possession of a college degree in engineering
or physical sciences) that has passed the USPTO Patent Exam in
addition to the bar examination in a given state. On the other
hand, a Patent Agent is a nonattorney with adequate
engineering/scientific preparation that has passed the USPTO Exam.
Patent Agents can prepare patent applications on behalf of
inventors, file patent applications, respond to USPTO office
actions (i.e. letters), and participate in the amendment of the
applications. In summary, a Patent Agent is a licensed professional
certified by the USPTO to prepare and prosecute patent
applications. The difference between a Patent Agent and a Patent
Attorney is that a Patent Agent cannot advise the inventors
regarding the legal consequences that may arise from ownership of
the IP. For instance, it cannot provide legal advise regarding how
the ownership rights may be affected in the case of a divorce, for
the purposes of making a will, or regarding the terms of a
licensing contract. These legal issues outside the scope of patent
law require the professional counsel of an attorney.
Information regarding the USPTO Patent Exam can be found at http://www.uspto.gov/go/dcom/gcounsel/oed.htm. Briefly, this site includes information regarding the requirements for registration, examples of past exams, and result statistics. Current examinations are based on the 8th Edition (Rev. 2) of the Manual of Patent Examining Procedure (MPEP). The passing rate in the last exam was 58.2%. There are many firms that offer training services, educational programs, and self-study materials for the Patent Bar Exam.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
Information regarding the USPTO Patent Exam can be found at http://www.uspto.gov/go/dcom/gcounsel/oed.htm. Briefly, this site includes information regarding the requirements for registration, examples of past exams, and result statistics. Current examinations are based on the 8th Edition (Rev. 2) of the Manual of Patent Examining Procedure (MPEP). The passing rate in the last exam was 58.2%. There are many firms that offer training services, educational programs, and self-study materials for the Patent Bar Exam.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
How are patent rights acquired?
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Patent rights in the US are acquired
only after the patent is issued by the United States Patent and
Trademark Office (PTO). Contrary to other forms of intellectual
property, protection does not exist for patentable inventions until
the patent is formally issued (Letters Patent). The PTO is
responsible for determining the patentability and issuing patents.
Even though inventors can prepare their own patent applications,
these application are normally prepared by a certified patent
specialist with engineering or scientific background.
In the US both attorneys and nonattorneys that meet the educational requirements may take the examination to become certified patent specialist. A nonattorney licensed by the PTO to prepare and prosecute patent applications is a Patent Agent. While patent agents can prepare, file, respond to office actions from the PTO, and participate in the amendment of the application, only Patent Attorneys can provide legal advise.
After the patent is issued, the inventor acquires exclusionary patent rights for a period. Currently, utility patents filed after June 7, 1995 will expire 20 years for the date of filing.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
In the US both attorneys and nonattorneys that meet the educational requirements may take the examination to become certified patent specialist. A nonattorney licensed by the PTO to prepare and prosecute patent applications is a Patent Agent. While patent agents can prepare, file, respond to office actions from the PTO, and participate in the amendment of the application, only Patent Attorneys can provide legal advise.
After the patent is issued, the inventor acquires exclusionary patent rights for a period. Currently, utility patents filed after June 7, 1995 will expire 20 years for the date of filing.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).