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Practical Guide to Filing for a Patent
If you’re an inventor, you shouldn’t publicly disclose, publish, market, sell, advertise, or even discuss your invention with anyone for more than a year without filing a patent application. The USPTO offers a one-year grace period in which to file, after which, you will forever lose your intellectual property rights.
Your utility patent application will either be a provisional application, which sets your priority date and gives you “patent pending” status, or a nonprovisional application, which will be published and will comprise the basis of your issued patent. Read on to learn more about the process involved in filing both types of patent applications.
Provisional Patent Applications
While filing for a provisional patent is not a necessary step to getting a patent, it’s a good start for all inventors. For openers, the USPTO filing fees for a provisional application are about 10% of what a nonprovisional application costs. More importantly, the provisional gives you one year to market and tailor your invention while you prepare to file your nonprovisional application. Just remember that only nonprovisional patent applications actually receive patents.
The Nuts and Bolts of a Provisional Application
A provisional application includes:
- A cover sheet
- A written specification,
- Drawings, and
- The filing fee.
The fee is further reduced if you are a small or micro entity. Claims and oaths are not necessary in the provisional.
Your provisional drawings need not be formal patent drawings with reference numbers, lead lines, and the other technical requirements of nonprovisional patent drawings. At this stage, you can use almost anything you like: screenshots of your website, CAD renderings, your flowcharts, photos, pencil drawings from your lab book, blueprints, or even napkin drawings if they are in PDF format. The only caveat is the drawings must be in black and white.
Your provisional specification will describe how to make and use the invention. It must contain as much detail as necessary to show someone of ordinary skill in the art how to make and use the invention without undue experimentation.
Write out all the alternative embodiments (variations) and applications (uses) you can think of. The prize feature of your innovation may turn out to be something you hadn’t initially considered. After all, Play-Doh was supposed to be wallpaper cleaner, the Slinky was supposed to stabilize naval instruments, and Viagra was developed for heart disease.
There’s no downside to wild creativity here; your provisional application will not be published or assigned a USPTO Examining Unit the way your nonprovisional application will.
Nonprovisional Patent Application
For the nonprovisional application, you will surely want to hire a registered patent attorney. Some registered patent attorneys initially charge for generating a Prior Art Search and Patentability Report. Others will simply include this work in their fee for preparing the application.
Your patent attorney will work with you to draft and file a formal apecification, including background and a summary of the invention, formal drawings, and usually 20 claims, which ultimately form the boundaries of your intellectual property. When you are finally satisfied with the application, your patent attorney will file it via the USPTO’s EFS-Web system. The USPTO application fee will usually be paid through your attorney’s USPTO deposit account, which he or she will then pass onto you.
After filing, your patent attorney will then track the progress of your application on the USPTO’s Private Pair system. The USPTO will give various rejections, usually due to obviousness. Your attorney will then charge you to prepare Office Action Responses, usually with claim amendments designed to put your application in a condition for allowance (for issuance and publication in the USPTO Gazette).
Getting Legal Help
If you’ve poured years of development into your invention and it’s starting to sell, then failure to see a registered patent attorney within the year could be fatal. It’s in your best interests to gather your blueprints and your BOMs and go see your local patent attorney.
The Trademark Application Process
Applying for a trademark is straightforward, but not without pitfalls. Almost 75% of all Trademark Applications are refused at least once by the USPTO before they are ultimately abandoned or allowed and entered in the USPTO General Registry of Trademarks.
The USPTO Trademark Electronic Application System, “TEAS,” is easy to access, but difficult to navigate. Unfortunately, TEAS will let you submit an insufficient application, and it does not typically issue refunds. This article will give you an overview of the trademark application process and help you avoid common mistakes, but it’s also important to enlist the help of a skilled trademark attorney..
Items You Will Need to Apply
Before you meet with a trademark attorney, you should have the following materials handy:
- Your business name, and whether you want your company to be the owner of the mark
- The date you began using your mark in interstate commerce
- The date you began using your mark anywhere (for example, with your friends or your with your graphic artist)
- A list of all the goods or services you sell with the mark
- A drawing of the mark, transmittable in electronic form
- At least one “sample in commerce”
Trademark Search and Opinion
Your trademark attorney will begin with a trademark search on the USPTO Trademark Electronic Search System (“TESS”). Your attorney will then write a trademark search opinion, indicating whether any similar registered “live” marks might present consumers with a “likelihood of confusion.” If the likelihood of confusion is low, either because your mark is unique or because similar living marks are in unmistakably different industries, then you should move forward.
Intent to Use Applications
The application “basis” simply means whether you are currently using the mark, or whether you intend to use the mark in commerce. “Intent to Use” applications are for companies that want to hold their place for the word or logo while they prepare to sell the associated product. “Intent to Use” applications must be followed by a “statement of use” within six months of the USPTO’s notice of allowance or the application will go abandoned.
The International Classification
The TEAS system will then ask you to identify your mark’s international class from a list of about 50 different types of goods and services accepted by the World Intellectual Property Organization. You should be able to find your product or service listed in the USPTO’s Acceptable Identification of Goods and Services Manual.
Your Specimen in Interstate Commerce
You must submit at least one specimen of your mark as it is used in the commercial marketplace (e.g., on your product packaging or website). A specimen is generally what consumers actually see when they are trying to purchase your goods or services.
Advertising materials are not acceptable as a specimen, nor are materials used to carry out your daily business, such as invoices or packing slips. The USPTO typically accepts the following specimens:
- A time-stamped, contextual photograph of the product showing the mark directly on the product (e.g., the bottom of a coffee mug)
- Product packaging showing the mark as sold in commerce (e.g., detergent soap packaging)
- Signage used in a product display at a store (e.g., a time-stamped photograph of a window display)
- A webpage showing the mark affixed to a product , and also showing purchasing information (e.g. a shopping cart “click to purchase” page).
Tip Regarding Word vs. Design Marks
When applying for a trademark, you must decide if you want to register a simple “word mark” or if you want to register your design, or logo. Since the application fee is the same for a single mark regardless of whether you pick a logo, a simple word phrase, or a combination thereof, you get the most value by registering a “composite” mark, encompassing your words and your logo.
See Your Local Trademark Attorney
Your business name and logo will forever be associated with your product and the goodwill of your company. Searching for similar marks, weighing your options, and preparing and filing a proper trademark application should be handled by a professional trademark attorney.
Enforcing Your Patent
Once you obtain a patent, you have the right to exclude others from making, using, selling or distributing your invention for 20 years from your initial filing date. Enforcement is a tricky enterprise, however. There’s no “U.S. Patent Police.” If you think your patent rights are being infringed by a product in commerce, you should know the steps you can take to enforce your patent.
First, you’ll need to find a patent attorney. Expect to forward an initial retainer, since patent law firms generally do not represent inventor-clients on contingency.
If you are a patentee-inventor and you are looking for infringers, there’s no magic trick. Other than scanning the market, the internet, trade shows, and industry periodicals, you might try attending conventions and conferences in your field. You might also consider selling your patent to a “patent troll” whose sole business is finding and forcing settlements with alleged infringers.
What Your Patent Attorney Will Do
Your patent attorney will first offer you an opinion letter comparing the potentially infringing conduct against your patent claims. If your patent attorney thinks you have a “slam dunk” case for infringement, and also believes that your patent will not be invalidated en route to victory, then you should proceed.
Cease and Desist Letters
If you decide to move forward, your patent attorney will start by sending the infringer a cease and desist letter. The letter will notify the infringer about your patent and then suggest they license the technology for a suggested royalty. The letter will conclude with a “final date for response,” after which you promise to sue.
Beware of Patent Misuse
It’s important to know you may not collect royalties before your patent issues. You also cannot collect royalties if your patented technology is not actually used in your competitor’s product.
A significant number of states have already passed laws preventing “bad faith” settlement attempts, condemning them as unfair and deceptive business practices. These laws are designed to stop non practicing entities (NPEs), or trolls, from collecting settlements from companies within the state. Lastly, in your settlement agreement, you may not prohibit your competitor from selling products not covered by your patent, as such clauses hurt competition.
Damages for Infringement
Upon a finding of patent infringement, the court can award you money damages for:
- Lost Profits: This includes damages for collateral sales, price erosion, and accelerated market entry (i.e. what the infringer gained by cheating their way into the market).
- Reasonable Royalty: The typical royalty is the price the infringing party would have been willing to pay to be able to make and sell the patented article in the market.
Other Settlement Factors – Tricks of the Trade
Your infringers have defenses that lessen their desire to sign a licensing agreement. They may be able to change their infringing process or product, and so “design around” your patent. Likewise, your defendant may know of prior art that could invalidate your patent at the Patent Trial and Appeal Board (PATB).
Choose a Registered Patent Attorney
As you can see, patent litigation is a delicate minefield. So if you are an inventor, a patentee or an accused-infringer, it’s in your best interests to find a licensed patent attorney for guidance.
The Copyright Registration Procedure
If you’ve authored a literary or visual work, a sound recording, a motion picture or a screenplay, you most likely want to Register your work with the United States Copyright Office.
Copyright Registration protects, for your lifetime plus 70 years,
- Fixed works in a tangible medium of expression (i.e. in physical form),
- Original works (not raw copies of another author’s work),
- Works created, at least in part, by the author (i.e. pages ripped from your local phone book don’t count),
- Derivative works and compilations, although these works present special challenges, and so should be Registered with the help of an intellectual property attorney.
Copyright does not protect ideas, but rather the expression of ideas. For example, you can’t copyright the idea of a man who time-travels into the past to save humanity in the future. You can, however, copyright the dialogue in your script entitled “The Terminator.”
Benefits of Registration
A work or art or literature is technically “copyrighted” by an author the moment they paint, write, sing, compose, play, or program it. However, only Registration with the U.S. Copyright Office gives certain legal rights and privileges that can be exercised in federal court:
- The right to bring a copyright infringement suit in federal court,
- The right to notify S. Customs for protection against illegal importation of unlicensed copies, and
- Statutory damages and attorneys fees upon finding of infringement.
The only caveat to federal protection is that you must Register within 3 months of publishing your work.
In contrast, mere “registration” with various guilds, or sending your work to yourself through the mail, still forces the writer to prove damages to a jury and to prove the authenticity of their work.
If you want to protect and sell your intellectual property, you are best off Registering your work through an Entertainment Attorney, who can also negotiate licensing agreements for royalties.
- An unpublished work,
- A work published only electronically.
The eCO system will prompt you to:
- Complete an application to Register a new Claim,
- Pay the necessary fee,
- Submit, or upload, your “deposit,” or artistic work.
If your work was published, for example on the internet, and you need to memorialize its original publication form, then you can still use the www.copyright.gov site to do the Application. You will then send your work to the Copyright Office by mail.
The process is almost the same as electronically filing an uploaded work. The difference is, at the end of the eCO process, the eCO system will send you a Shipping Slip link. Print and use one shipping slip per work to submit your deposit to the Copyright Office.
For additional questions, you may contact the U.S. Copyright Office at the Library of Congress in Washington D.C.
Whether you’ve built the better mouse trap or you’re convinced your idea for an app would make millions, you may be asking “should I get a patent?” Like lawyers always say, “it depends.”
There are a number of factors to consider when you’re deciding whether or not to patent your innovation. Read on to learn more about each.