Intellectual Property

When To File For A Patent — PART 2

Posted by on Jul 19, 2013 in Intellectual Property

Other Important Events in the Patent Timeline Provisional Patent Applications So, as we discussed last week, ideas aren’t patentable.  But, can the USPTO offer any assistance to inventors that are perhaps a bit farther along, but aren’t quite ready for a patent?  Full-blown patent protection is not available until the patent issues; however, if an inventor files a provisional patent application, the USPTO will give the future actual patent the filing date of the provisional patent application. This earlier filing date may be extremely important; in the United States, patents are no longer granted to the ‘first to invent’. Since the America Invents Act took effect earlier this year, the USPTO now grants patents on a ‘first to file’ basis. When a contest to be the first heats up, an earlier filing date preserves your priority as the initial inventor who is entitled to patent protection. A provisional application has other benefits, including allowing inventors to mark their inventions with “Patent Pending.” Other benefits are discussed below. While a provisional application typically includes a description and/or drawing of the invention, it does not require any claims, oaths, or disclosures of the prior art like an actual patent application. Some warnings: a provisional patent application is not a patent; it actually is never examined by the USPTO. Therefore, to be granted a real, protection-providing patent, the inventor must file an actual patent application within one year of the provisional application or risk patent forfeiture. This shows how powerful provisional patent applications—which may be used to obtain earlier filing dates on patents that issue—can be. Once you file a provisional application, you have reserved your filing date. And as long as your actual patent application is filed within a year of your provisional patent application (and everything else goes smoothly), you will be entitled to keep that earlier filing date of the provisional application. For further discussion on when to file your patent, stay tuned for PART 3: “Is It Too Late To...

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So You Have An Idea, But Is It Patentable Yet? Part 1

Posted by on Jul 11, 2013 in Intellectual Property

First, a parable. Like so many others, you’ve been pondering for years how to build the better mousetrap. Finally, inspiration hits you. You don’t have any of the particulars, but you know that with more thought, time, and resources, the invention is bound to take shape. With so many other inventors hot on your heels, you’d like to exclude them from your idea. Is now too soon to file for a patent? When should you ask the U.S. government to step in and help you protect your work by filing for a patent?   The answer depends: Generally, a vague idea like this, by itself, is not patentable. Although patent professionals often discuss the patentability of ideas, usually these professionals aren’t using the term ‘idea’ to mean ‘a vague mental conception’. They’re usually using the term as shorthand for the actual invention itself. More than an ambiguous mental concept, the U.S. Patent and Trademark Office requires that an invention be reduced to practice before granting a patent.  Although reducing your invention to practice may sound daunting, it really isn’t: There are two ways in which inventions may be reduced to practice: (1) by actually practicing the invention—for example, building or creating the invention, and (constructively) (2) by filing a patent application While option (2) may sound circular, successfully filing for a patent requires the inventor to tell the USPTO, in terms that a person of ordinary skill in the appropriate technical field would understand, how to practice the invention. The inventor must have turned that vague idea into a definite, explicit, workable concept, by thinking through all of the particulars of the invention—for example, the mousetrap’s structure, how it will actually work, etc. If the inventor has both (1) failed to actually practice the invention and (2) can’t explain the invention to someone who should be able to understand, the time is not yet ripe to file for a patent. As inventors know, much of the inventive timeline is erratic and fluctuating. Because it’s important to understand when the timing is right to file for a patent, the idea phase may still be a great time to talk with an attorney, especially as the invention begins to show commercial promise. But, more important than knowing how early you should speak with a patent attorney is knowing when it’s too late. For more thoughts on this and on guarding your invention throughout the inventive process, stay tuned for Part...

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Trade Secrets vs. Patents Part 2

Posted by on Jun 18, 2013 in Intellectual Property

Now that you have a better understanding of the differences between a trade secret and a patent,*  which one is better for you? The decision whether to obtain a patent or maintain an invention as a trade secret must be considered in light of the circumstances and facts of each individual case. For example, obtaining a patent is generally the better option if the invention is likely to be invented independently by another or can be “reverse engineered.”  By patenting the invention first, you can enjoy a legally-recognized monopoly on the invention for  a substantial period of time. On the other hand, a trade secret may be the better option in other situations, such as where you have developed a formula or process for making a product that cannot be reverse engineered easily.  A classic example is the formula for Coca-Cola.  If the owners had patented the formula in 1886 when it was first used, competitors would have been free to copy the formula  after the patent had expired.  By maintaining the formula as a “trade secret,” Coca-Cola has continued to derive an economic benefit from the formula to this day. Furthermore, trade secrets are the only viable option where the secret concerns things that are not patentable, such as customer lists or business methods.  Making the best decision on how you protect your intellectual property requires careful consideration and weighing of all factors and circumstances relating to your invention and how to derive the most benefit from it.  Because of the complex issues involved and long-term consequences  at stake, it is recommended that you consult with an experienced intellectual property attorney to help you navigate through the decision-making process. *For a discussion on the differences between trade secrets and patents, please see the post from Friday, June...

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Trade Secrets vs. Patents Part 1

Posted by on Jun 14, 2013 in Intellectual Property

If you have invented a new product, technology, formula, method, or process, you generally have two options to protect your invention: (1) obtain a patent for the invention; or (2) maintain the invention as a “trade secret.” But, what’s the difference between a “patent” and a “trade secret”?  A “patent” is a legally-recognized limited monopoly on an invention which the government grants to an inventor in exchange for the inventor disclosing how to make and use the invention.  The monopoly granted to an owner under a patent lasts less than 20 years.  A “trade secret,” as implied by its name, is not generally known or disclosed to the public or readily ascertainable by others, and by virtue of its secrecy, confers an economic benefit to its owner.  No term could go on forever.  The owner must take reasonable efforts to maintain its secrecy in order for it to qualify as a “trade secret.” BUT BE WARE: One cannot both patent an invention and maintain it as a trade secret!  This is because the disclosure requirements for obtaining a patent nullify the secrecy of the invention. The decision whether to obtain a patent or maintain an invention as a trade secret must be considered in light of the circumstances and facts of each individual case…. TUNE IN to Trade Secrets vs. Patents Part 2 for a discussion on when a patent is a better option, or when you should maintain your invention as a trade secret. And, as always, please contact an attorney if you have any questions concerning what we’ve mentioned in this...

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