BLOG

Enforcement of a Patent or Patent Application (posted 2/1/2015)

When can the owner of a patent or patent application enforce their patent rights?  Many new clients I consult with believe that the submission of a patent application or even a provisional patent application entitles them with the right to prevent others from selling or using their device. This just is not the case.

Legally, a patent is not enforceable until the patent is issued by the USPTO (see 35 CFR 135(a)(2)).  Unfortunately, the current timeframe to get a patent application final approval or rejection from the patent examiner is approximately 2-3 years. Once a patent has a final approval and the patent issues, the owner of the patent has the ability to prevent others from using his patented invention without his consent, or, sell or license the patent rights.

However, under 35 USC § 154(d) the owner of the patent application has Provisional Patent Rights.  Provisional patent rights become enforceable when the patent application is published by the USPTO, usually within 18 month of submitting the patent application.  Provisional patent rights do not give the patent application the ability to enforce a patent to prevent other from infringing upon the patent application, but it does allow the applicant to put the infringer on notice that they are in violation of a pending patent application.  If after that point the patent application is approved and issued by the USPTO, the applicant can then enforce their Provisional Patent rights as well as their Patent Rights.  In this event, the patent owner can then instruct the inventor to cease sales or use of the infringing product, and can collect a Reasonable Royalty for the use of the patent from the time that the applicant put them on notice, until such time that they ceased sales/use of the patented invention.

Three important notes about Provisional Patent Rights:

1. Provisional Patent rights can only be enforced if the patent applicant provides the infringer with Actual Notice of their infringing activities.  This would best be served by a cease and desist letter detailing the patent application information, as well as your intention to enforce your provisional patent rights if they do not discontinue the infringing activities.

2. Provisional Patent Applications are never published by the USPTO, therefore the owner of a provisional patent application will never gain Provisional Patent Rights.  Additionally, one needs to factor this into their business strategy for their product.  Many owners prefer to submit a provisional patent application to defer the full costs of the patent application.  However, in deferring the full costs of the application, they are also deferring the ability to maximize their profits from their invention.  An applicant submitting a full patent application immediately will have provisional patent rights likely within 18 months, whereas a patent applicant applying for a provisional patent and waiting 12 months to submit a utility patent application will not have Provisional Patent Rights until closer to 30 months.  The difference in the potential profits lost during that 12 month period may far exceed the savings from deferring the costs by getting a provisional patent application.

3. The USPTO offers an expedited application option for about $2,000.  The option will give your application a priority review and will get it either approved or disapproved within 12 months of getting the request for prioritization approved.  The costs of the accelerated option are high, but depending on the profitability of the invention, it may be a worthwhile investment.

When is an invention ready to Patent? (posted 12/31/14)

An invention is ready for patenting when the inventor is capable of satisfying the requirements of 35 USC 112(a), which state “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”

In clearer language, an invention is ready for patenting when the inventor is capable of describing in the patent application, using words and drawing images, how to make or perform the invention in enough detail that someone who works in that field would be able to recreate the invention.  Therefore, if I was patenting a medical procedure, I would need to be able to describe the procedure with enough detail that a fellow doctor would be able to perform the surgery.  It does not require the specification to be detailed enough that a layperson be able to perform the procedure.

Additionally, if your invention was a very expensive laser device, the statute does not require that you actually build and test the device before patenting it.  It only requires that you be able to provide enough detail that another person, who is skilled in the art of building laser devices, be able to create your invention from the drawings and details you submit to the PTO.

However, before you go applying for patents based upon a few sketches and a short non-descript detail; one should be certain that they have enough details available to actually support the patent.  This is not a process where you can submit a rough idea and then fill in the blanks later.  If the patent examiner finds that your original specification does not contain all of the details needed to comply with the requirements of 35 USC 112(a), you will need to revise you patent application, costing you money and losing your original filing date, which could cost you patent as well.

Patentable Subject Matter Update (posted 12/31/2014)

Since my last post on 12/1/2014 about patentable subject matter, the USPTO has released new guidelines on how patent examiners should patent eligibility under 35 U.S.C. § 101, which went into effect on 12/16/2014.  These changes were made based on the recent Supreme Court Decisions in:  Association for Molecular Pathology v. Myriad Genetics, Inc. (IP Update, Vol. 16, No. 6), Mayo Collaborative Services v. Prometheus Laboratories, Inc. (IP Update, Vol. 15, No. 3) and Alice Corp. Pty. v. CLS Bank International, et al. (IP Update, Vol. 17, No. 7).

The changes to the examination guidelines are directed towards new applications based on abstract ideas and law or nature or natural phenomenon.  The new guidelines are particularly relevant for patents directed to natural products, software, and business methods.  Essentially, the new guidelines require for patents directed towards inventions for abstract ideas, naturally occurring phenomenon, and laws of nature that the innovation must add significantly more to the law, phenomenon, or idea it is based upon for the invention to be patentable.  These changes will make it more difficult for inventions that are not Processes, Machines, Manufactures, or Compositions of Matter to be granted a patent.

Process Patents (posted 12/1/14)

Per 35 USC § 101 a patent will only be granted to “Whoever invents or discovers any new and useful: 1) process, 2) machine, 3)  manufacture, or 4)  composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Patents for items 2, 3, & 4 are very easy to understand.  Machines are devices with interacting parts,  articles of manufacture are typically going to be inanimate items made by a machine (e.g. hammer or shovel), and a chemical composition is manmade chemical entity (e.g. polymers).  However, Process Patents can be a bit more involved and a bit more difficult to grasp.

Processes are defined by law as a process, act, or method, and primarily includes industrial or technical processes.  Oftentimes process patents will be for manufacturing processes that create a final product  that would otherwise be considered un-patentable. 

Common Examples of Process Patents would include:

1. A method of making an existing item with a new manufacturing process that would reduce the costs of the final product (e.g. a widget).  The widget itself is not patentable because the inventor did not invent the widget.   However, the inventor of  the new manufacturing process to make it cheaper can receive a Process Patent for his innovative work in creating the new process.

2. A new medical procedure to treat cancer (using existing equipment). The final product is a healthy human body, which the process inventor did not invent, therefor, the inventor would instead get a process patent for the medical treatment .   

Patentable Subject Matter (posted 12/1/2014)

Some people may wonder “What can I patent?”  The good news that most everything one would consider an invention is patentable.  The list of things that are not patentable is a much easier list to detail than the list of items that is patentable.  The USPTO has created a detailed training presentation on the Non-Eligible Patent Subject Matter; however, that list can be broken down very simply.

Common inventions that cannot be patented (not comprehensive):

1. Human Organisms, whether or not manmade.  Note: man-made organisms that are not considered human (e.g. plant or animal) are patentable.

2. Non-Useful items.  This would typically be items that are actual inventions, however, serve a purpose contrary to the public good, such as a machine that allowed intoxicate people to pass a DUI test.

3. Naturally Occurring Organisms. Just because you stumbled upon a new plant in the wild that cures cancer, you cannot patent that plant because you did not invent it. You may still however, be able to patent the process of using the plant to treat cancer.

4. Arrangements of Printed Materials and Literary Works (however these can be Copyrighted)

5.  Abstract Ideas.  These include mathematical formulas, teaching concepts (memorization), economic practices (hedging), mental activities (judgment forming), legal theories, et al.  Abstract ideas can be made into patentable inventions when coupled with a machine or transformative step.

6. Physical Phenomena.  This includes methods of diagnosing illnesses based on indicators in the body (e.g. using glucose levels to detect diabetes).  However, manmade pharmaceuticals and medical procedures do not fall under the Physical Phenomena category.

7. Laws of Nature.  Sunlight, wind, et al.

What is the Legal Effect of a Patent Application?  (posted 11/5/2015)

Once you have submitted your patent application, it will take approximately 3 years before your patent application is approved.  What happens during this time? Can you prevent others from exploiting your invention?

The answer is No, you cannot prevent other from exploiting your invention.  You do however have Provisional Rights to your patent.  Provisional Rights allow you to collect a reasonable royalty from anyone who exploits your invention from the date that your application is published (not the date that you applied for your patent).  Once your patent application has been approved, and your patent issues, you can then move to enforce your provisional rights.

In order to collect royalties for your Provisional Rights, the exploiter has to have actual  notice of your patent. 

How do ensure that potential exploiters have actual notice of your patent?  Once you have applied for your patent, add “patent pending” to all of your marketing literature.  Additionally, upon learning of a person exploiting your patent, draft or have an attorney draft for you, a notice letter to the exploiter informing them of your pending patent and your intention to exercise your provisional rights.

Read the full statute HERE

Joint Patent Ownership (posted 11/5/2015)

When two or more individuals conspire to create a patented invention, each of the inventors own an equal share of the issued patent (absent an agreement providing otherwise).  Each of the co-owners of the patent have the full right to utilize the patent rights as they wish.  This can create two difficulties:

1. When one (or more) co-owner(s) wants to sell (or license) the rights to the patent and one does not, the other owner(s)cannot force the remaining owner to sell or license their share of the patent.  If there are owners who cannot agree on whether or not to sell or license patent it can significantly reduce the market value of the patent because the co-owner cannot offer the exclusive rights to any potential buyers of licensee.
 

2. In order to effectively bring suit against a infringer, all of the patent owners need to join in the infringement action infringer.  The failure of only one of the multiple co-owners of a patent to join and infringement suit will negate the ability of the remaining patent owners to effectively take action against an infringer.

These type of difficulties can arise. Therefore, if you are considering applying for a patent that you have co-invented, you should have a discussion with the co-inventor to make sure that your goals for the patent are aligned, because if they are not, you could spend a significant amount of money on a patent that is virtually worthless.

Effect of the Mid-Term Elections (posted 11/6/2015)

As a result of this week’s mid-term elections the Republican party has taken control of the Senate in addition to the House.  Previously, the Republican lead House had passed the Goodlatte Innovation Act in (H.R.3309), however the bill had died in the Democrat lead Senate.  With the change in the control of the Senate, it is likely that this bill will now be able to pass through the Senate and be signed into law in 2015.

For the more details on the bill and its effects click HERE.