Patent It Yourself

by Pressman, David; Elias, Stephen; Gima, Patricia; Allison, Linda; Elias, Stephen; Gima, Patricia

• ISBN13: 9780873373951
• ISBN10: 0873373952
• Format: Paperback
• Copyright: 1997-06-01
• Publisher: Nolo

Summary

Step by step, Patent It Yourself takes inventors through the entire process of obtaining a patent, explaining how to: - file a provisional patent application- understand international patent protection- document the invention process- assign and license your invention to others- learn about the European Patent Office- understand the Patent Cooperation Treaty- understand infringement- and much more

Author Biography

Attorney David Pressman has over 30 years' experience in the patent profession--as a patent attorney, a patent examiner for the U.S. Patent Office and a university instructor. He is the foremost expert on the patent filing process and has charted the path for over 200,000 inventors.

Table of Contents

Introduction
Introduction to Patents and Other Intellectual Property
What Is a Patent and Who Can Apply for It?	p. 2
The Three Types of Patents	p. 2
The Novelty and Unobviousness Requirement	p. 4
How Long Do Patent Rights Last?	p. 4
Patent Filing Deadlines	p. 5
Patent Fees	p. 5
The Scope of the Patent	p. 5
How Patent Rights Can Be Lost	p. 5
What Rights a Patent Grants and the Prior-Art Reference Value of a Patent	p. 6
What Can't Be Patented	p. 6
Some Common Patent Misconceptions	p. 8
How Intellectual Property Law Provides "Offensive Rights" (and Not Protection) to Inventors	p. 8
Alternative and Supplementary Offensive Rights	p. 8
Intellectual Property--The Big Picture	p. 8
Trademarks	p. 9
Copyright	p. 13
Trade Secrets	p. 17
Unfair Competition	p. 20
Acquisition of Offensive Rights in Intellectual Property--Summary Chart	p. 22
Selection Guide to Which Type of Intellectual Property Is Best for Your Creation	p. 24
Invention Exploition Flowchart	p. 24
The Science and Magic of Inventing
What I Mean by "Invention"	p. 2
Inventing by Problem Recognition and Solution	p. 2
Inventing by Magic (Accident and Flash of Genius)	p. 5
Making Ramifications of Your Invention	p. 6
Solving Creativity Problems	p. 6
Contact Other Inventors	p. 8
Beware of the Novice Inventor's "PGL Syndrome"	p. 9
Don't Bury Your Invention	p. 9
Documentation, the DDP, and the PPA
Introduction	p. 2
Documents Are Vital to the Invention Process	p. 2
Documentation Is Vital to Prove Invention	p. 3
Trade Secret Considerations	p. 4
Record the Building and Testing of Your Invention	p. 4
How to Record Your Invention	p. 6
Another Way to Record Conception or Building and Testing--The Invention Disclosure	p. 11
The Disclosure Document Program (DDP)--Or How to Make the PTO Your Witness to Conception	p. 12
The Provisional Patent Application--A Substitute for Building and Testing, With Some Disadvantages	p. 14
Don't Use the So-Called "Post Office Patent" to Document Your Invention	p. 18
Will Your Invention Sell?
Why Evaluate Your Invention for Salability?	p. 2
Start Small but Ultimately Do It Completely	p. 2
You Can't Be 100% Sure of Any Invention's Commercial Prospects	p. 3
Take Time to Do a Commercial Feasibility Evaluation	p. 3
Check Your Marketability Conclusions Using the Techniques of Consultation and Research	p. 8
Now's the Time to Build and Test It (If Possible)	p. 10
Summary	p. 11
What Is Patentable?
Patentability Compared to Commercial Viability	p. 2
Legal Requirements for a Utility Patent	p. 2
The Statutory Classes	p. 4
Utility	p. 7
Novelty	p. 8
Unobviousness	p. 13
The Patentability Flowchart	p. 20
Search and You May Find
Why Make a Patentability Search?	p. 2
When Not to Search	p. 4
The Two Ways to Make a Patentability Search	p. 4
How to Make a Preliminary Search	p. 5
The Quality of a Patent Search Can Vary	p. 5
How to Hire a Patent Professional	p. 6
How to Prepare Your Searcher	p. 7
Analyzing the Search Report	p. 12
Do-It-Yourself Searching in the PTO	p. 19
The Scope of Patent Coverage	p. 29
Searching It Yourself in a Patent and Trademark Depository Library	p. 30
Computer Searching	p. 36
Searching Software Inventions in the Software Patent Institute's Database	p. 40
The IBM Patent Searching System on the Internet	p. 40
Consider Your Options
Drop It If You Don't See Commercial Potential	p. 2
Try to Sell Invention to Manufacturer Without "Regular" Patent Application	p. 2
File an Application and Sell It to or License a Manufacturer If You See Commercial Potential and Patentability	p. 4
If You Have Commercial Potential Without Patentability, License or Sell Your Invention to a Manufacturer Without Filing	p. 5
Make and Sell Your Invention Yourself Without a Utility Patent Application	p. 6
Manufacture and Distribute Your Invention Yourself, Keeping It As a Trade Secret	p. 7
File Patent Application and Manufacture and Distribute Your Invention Yourself (Trade-Secretable Invention)	p. 7
File Patent Application and Manufacture and Distribute Invention Yourself (Non-Trade-Secretable Invention)	p. 8
Test Market Before Filing	p. 8
How to Draft the Specification and Initial Drawings
Lay Inventors Can Do It!	p. 2
What's Contained in a Patent Application	p. 2
What Happens When Your Application Is Received by the PTO?	p. 4
Do Preliminary Work Before Preparing Your Patent Application	p. 4
Flowchart	p. 6
Writing Your Patent Specification to Comply With the Full Disclosure Rules	p. 6
Software and Other Computer-Related Inventions	p. 8
First Prepare Sketches	p. 9
Drafting the Specification	p. 14
Drafting the Abstract	p. 21
Review Your Specification and Abstract Carefully	p. 21
Checklist for Your Patent Application Draft	p. 21
Specification of Sample Patent Application	p. 21
Now for the Legalese--The Claims
What Are Claims?	p. 2
The Law Regarding Claims	p. 2
Some Sample Claims	p. 4
Common Misconceptions Regarding Claims	p. 7
One Claim Should Be As Broad As Possible	p. 8
The Effect of Prior Art on Your Claim	p. 9
Technical Requirements of Claims	p. 10
Drafting Your Main (Independent) Claim	p. 15
Other Techniques in Claim Writing	p. 18
Drafting Dependent Claims	p. 20
Drafting Additional Sets of Claims	p. 24
Checklist for Draft Claims	p. 24
Finaling and Mailing Your Application
The Drawing Choices	p. 2
PTO Rules for Drawings	p. 3
Doing Your Own Drawings	p. 8
Consider Using a Professional Patent Draftsperson	p. 14
Finaling Your Specification, Claims, and Abstract	p. 15
Name All True Inventors and Only True Inventors	p. 16
Completing the Patent Application Declaration	p. 16
Fill Out the Small Entity Declaration If Appropriate	p. 17
Complete the Transmittal Letter and Fee Transmittal, Check, and Postcard	p. 17
Maintain an Orderly File	p. 21
Assembly and Mailing of Your Application--Final Checklist	p. 21
Using Express Mail to Get an Instant Filing Date	p. 22
Receipt That Application Was Received in PTO	p. 23
File the Information Disclosure Statement Within Three Months	p. 23
Assignments	p. 26
Petitions to Make Special	p. 27
Filing a Design Patent Application	p. 30
How to Market Your Invention
Perseverance and Patience Are Essential	p. 3
Overview of Alternative Ways to Profit From Your Invention	p. 3
Be Ready to Demonstrate a Working Model of Your Invention to Potential Customers	p. 6
Finding Prospective Manufacturers/Distributors	p. 6
The "NIH" Syndrome	p. 7
The Waiver and Precautions in Signing It	p. 8
The Best Way to Present Your Invention to a Manufacturer	p. 9
Presenting Your Invention by Correspondence	p. 10
Making an Agreement to Sell Your Invention	p. 11
Manufacturing and/or Distributing the Invention Yourself	p. 11
Going Abroad
Introduction	p. 2
The Paris Convention and the One-Year Foreign Filing Rule	p. 2
Other Priority Treaties Similar to the Paris Convention	p. 3
European Patent Office/Europaisches Patentamt/Office europeen des brevets (EPO)	p. 4
The Patent Cooperation Treaty (PCT)	p. 4
Non-Convention Countries	p. 4
Never Wait Until the End of Any Filing Period	p. 7
The Early Foreign Filing License or Mandatory Six-Month Delay	p. 7
Don't File Abroad Unless Your Invention Has Very Good Prospects in Another Country	p. 7
The Patent Laws of Other Countries Are Different	p. 8
The Ways to File Abroad	p. 9
Resources to Assist in Foreign Filing	p. 13
Getting the PTO to Deliver
What Happens After Your Patent Application Is Filed?	p. 2
General Considerations During Patent Prosecution	p. 5
A Sample Office Action	p. 10
What to Do When You Receive an Office Action	p. 16
Format for Amending the Specification and Claims	p. 33
Drafting the Remarks	p. 34
Drawing Amendments	p. 38
Typing and Mailing the Amendment	p. 39
If Your Application Is Allowable	p. 40
If Your First Amendment Doesn't Result in Allowance	p. 41
Interferences	p. 45
Statutory Invention Registration (SIR)	p. 46
If Your Application Claims More Than One Invention	p. 46
Protests Against Allowance of Your Patent Application	p. 46
NASA Declarations	p. 47
Design Patent Application Prosecution	p. 47
What to Do If You Miss or Want to Extend a PTO Deadline	p. 47
Your Application Can Have Children
Available Extension Cases	p. 2
Continuation Applications	p. 2
Divisional Applications	p. 6
Continuation-in-Part and Independent Applications	p. 7
Reissue Applications	p. 9
Statutory Invention Registration and Defensive Publications	p. 10
Substitute Applications	p. 10
Double Patenting and Terminal Disclaimers	p. 11
After Your Patent Issues: Use, Maintenance, and Infringement
Always on Tuesdays	p. 2
Press Release	p. 2
Check Your Patent for Errors	p. 2
Patent Number Marking	p. 3
Advertising Your Patent for Sale	p. 3
What Rights Does Your Patent Give You?	p. 4
Be Wary of Offers to Provide Information About Your Patent	p. 5
Maintenance Fees	p. 5
Legal Options If You Discover an Infringement of Your Patent	p. 8
What to Do About Patent Infringement	p. 8
Product Clearance (Can I Legally Copy or Make That?)	p. 12
The Court of Appeals for the Federal Circuit (CAFC)	p. 14
Using the Re-Examination Process to Reduce the Expense of Patent Infringement Suits	p. 15
Jury Trials	p. 15
Arbitration	p. 15
How Patent Rights Can Be Forfeited	p. 15
Your Patent Is Subject to Interference for One Year	p. 16
Taxes	p. 16
Patent Litigation Financing	p. 17
Ownership, Assignment, and Licensing of Inventions
The Property Nature of Patents	p. 2
Who Can Apply for a Patent?	p. 2
Joint Owners' Agreement	p. 3
Special Issues Faced by the Employed Inventor	p. 4
Assignment of Invention and Patent Rights	p. 6
Record Your Assignment With the PTO	p. 8
Licensing of Inventions--An Overview	p. 8
Universal License Agreement	p. 9
How Much Should You Get for Your Invention?	p. 13
Postscript	p. 15
Appendices
Abbreviations Used in Patent It Yourself
Books of Use and Interest
Glossary of Useful Technical Terms
Fee Schedule
Mail, Telephone, and Computer Communications With the PTO and Internet Sites
Quick-Reference Timing Chart
Tear-Out Forms
Index
Table of Contents provided by Syndetics. All Rights Reserved.

Excerpts

Introduction to Patents and Other
Intellectual Property

A. What Is a Patent and Who Can Apply for It? 1/3

B. The Three Types of Patents 1/3

C. The Novelty and Unobviousness Requirement 1/5

D. How Long Do Patent Rights Last? 1/7

E. Patent Filing Deadlines 1/7

F. Patent Fees 1/7

G. The Scope of the Patent 1/8

H. How Patent Rights Can Be Lost 1/8

I. What Rights a Patent Grants and the Prior-Art Reference Value of a Patent 1/8

J. What Can't Be Patented 1/9

K. Some Common Patent Misconceptions 1/9

L. How Intellectual Property Law Provides "Offensive Rights" (and Not Protection) to Inventors 1/10

M. Alternative and Supplementary Offensive Rights 1/10

N. Intellectual Property-The Big Picture 1/10

O. Trademarks 1/12 1. Trademarks Defined 1/12 2. Monopoly Rights of a Trademark Owner 1/12 3. Relationship of Trademark Law to Patent Law 1/13 4. Overview of How Offensive Rights to Trademarks Are Acquired 1/13 5. What Doesn't Qualify As a Trademark (for the Purpose of Developing Offensive Rights) 1/15

P. Copyright 1/15 1. What Is Copyright? 1/15 2. Copyright Compared With Utility Patent 1/15 3. Areas Where Patent and Copyright Law Overlap 1/16 4. When and How to Obtain Copyright Coverage 1/19

Q. Trade Secrets 1/19 1. Definition 1/19 2. Relationship of Patents to Trade Secrets 1/20 3. Advantages of Trade Secret Protection 1/20 4. Disadvantages of Trade Secret Versus Patenting 1/21 5. Acquiring and Maintaining Trade Secret Rights 1/21

R. Unfair Competition 1/22 1. When Unfair Competition Principles Create Offensive Rights 1/22 2. How Does the Law of Unfair Competition Affect You? 1/22 3. Comparison of Unfair Competition With Design Patents 1/23

S. Acquisition of Offensive Rights in Intellectual Property-Summary Chart 1/24

T. Selection Guide to Which Type of Intellectual Property Is Best for Your Creation 1/26

U. Invention Exploitation Flowchart 1/26

In this chapter I'll first introduce you to the world of patent law. Each of the patent-related items discussed here I'll amplify in subsequent chapters, as they relate to the actual process of obtaining and profiting from a patent. I also present an overview of the other forms of "intellectual property" (including trademarks, copyright, and trade secrets), which are potentially available to you. Although you may think that a patent is the only form of protection for your creation, you should be familiar with and consider the alternatives, some of which you can use in addition to or in lieu of a patent.

A. What Is a Patent and Who Can Apply for It?

Before we start, to show the importance of patents to a society, consider the following:

"That reminds me to remark, in passing, that the very first official thing I did, in my administration-and it was on the very first day of it, too-was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab, and couldn't travel any way but sideways or backways."

Mark Twain, A Connecticut Yankee in
King Arthur's Court, Chapter IX,
"The Tournament."

What is a patent? It's a right granted by the government to an inventor.

What is the nature of the patent right? A patent gives its Owner-the inventor or the person or business to whom the inventor legally transfers the patent-the right to exclude others from making, using, or selling the invention "claimed" in the patent deed for approximately 17 to 18 years, provided three maintenance fees are paid. (See Chapter 9 for more on patent claims, and Chapter 15 for more on maintenance fees.) You can use this right to exclude others by filing a patent infringement lawsuit in federal court.

Who can apply for a patent? Anyone, regardless of age, nationality, mental competency, incarceration, or any other characteristic, so long as he or she is a true inventor of the invention. Even dead or insane persons may apply through their personal representative. (See Chapter 16 for more on patent ownership.)

A patent is a form of personal property and can be sold outright for a lump sum, or its owner can give anyone permission to use the invention covered ("license it") in return for royalty payments. More on this in Chapter 16.

B. The Three Types of Patents

There are three types of patents-utility patents, design patents, and plant patents. Let's briefly look at each.

• Utility Patents: As we'll see in Chapters 8 to 10, a utility
patent, the main type of patent, covers inventions that
function in a unique manner to produce a utilitarian
result. Examples of utility inventions are Velcro hook-and-loop
fasteners, new drugs, electronic circuits,
software, semiconductor manufacturing processes,
new bacteria, newly discovered genes, new animals,
plants, automatic transmissions, and virtually anything
else under the sun that can be made by humans. To get
a utility patent, one must file a patent application that
consists of a detailed description telling how to make
and use the invention, together with claims (formally
written sentence fragments) that define the invention,
drawings of the invention, formal paperwork, and a
filing fee. Again, only the actual inventor can apply for
a utility (or any other) patent. The front or abstract
page of a typical utility patent is illustrated in Fig. 1A.

• Design Patents: As discussed in more detail in Chapter
10, a design patent (as opposed to a utility patent)
covers the unique, ornamental, or visible shape or
design of a non-natural object, even if only on a computer
screen. Thus if a lamp, a building, a computer
case, or a desk has a truly unique shape, its design can
be design patented. Even computer screen icons can be
patented. However, the uniqueness of the shape must
be purely ornamental or aesthetic; if it is functional,
then only a utility patent is proper, even if it is also
aesthetic. A good example is a jet plane with a constricted
waist for reducing turbulence at supersonic speeds:
although the shape is attractive, its functionality makes
it suitable only for a utility patent.

A useful way to distinguish between a design and a
utility invention is to ask, "Will removing or smoothing
out the novel features substantially impair the function
of the device?" If so-as in the jet plane with the
narrowed waist-this proves that the novel features
have a significant functional purpose, so a utility patent
is indicated. If not-as in a woodshop wall clock that
is shaped like a circular saw blade, or a phone that is
shaped like a shoe-a design patent is indicated. Another
useful question to ask is, "Is the novel feature(s)
there for structural or functional reasons, or only for
the purpose of ornamentation?"

Sometimes the state of the art, rather than the nature
of the novelty, will determine whether a design or
utility patent is proper for an invention. If a new
feature of a device performs a novel function, then a
utility patent is proper. However, if the state of the art
is such that the general nature of the feature and its
function is old, but the feature has a novel shape which
is an aesthetic improvement, then only a design patent
will be proper.

The design patent application must consist primarily
of drawings, along with formal paperwork and a filing
fee.

• Plant Patents: A plant patent covers asexually reproducible
plants (that is, through the use of grafts and
cuttings), such as flowers (35 USC 161). Sexually
reproducible plants (that is, those that use pollination),
can be monopolized under the Plant Variety Protection
Act (7 USC 2321). Both sexually and asexually
reproducible plants can now also be monopolized by
utility patent (35 USC 101).

C. The Novelty and Unobviousness Requirement

With all three types of patents, a patent examiner in the Patent and Trademark Office (PTO) must be convinced that your invention satisfies the "novelty" and "unobviousness" requirements of the patent laws.

The novelty requirement is easy to satisfy: your invention must be different from what is already known to the public. Any difference, however slight, will suffice.

Novelty, however, is only one small hurdle to overcome. In addition to being novel, the examiner must also be convinced that your invention is "unobvious." This means that at the time you came up with your invention, it would have been considered unobvious to a person skilled in the technology (called "art") involved in your creation. As we'll see in Chapter 5, unobviousness is best shown by new and unexpected, surprising, or far superior results, when compared to previous inventions and knowledge ("prior art") in the particular area you're concerned with. (In addition to being novel and unobvious, utility inventions must also be "in a statutory class" and useful. More on this later.)

Continue...

Excerpted from Patent It Yourself by David Pressman Copyright © 2002 by David Pressman
Excerpted by permission. All rights reserved. No part of this excerpt may be reproduced or reprinted without permission in writing from the publisher.

Inventor's Commandment #1

Prior to deciding how to proceed with any creation, you should learn and be familiar with the various forms of intellectual property, including utility patents, design patents, trademarks, copyright, trade secrets, and unfair competition, so that you will be able to select and employ the proper form(s) of coverage for your creation.

Important Definitions

While these definitions may seem elementary, I provide them here so that you will know exactly what I mean when I use these terms later.

An invention is any new article, machine, composition, or process or new use developed by a human.

A patent application is a set of papers that describe an invention and that are suitable for filing in a patent office in order to apply for a patent on the invention.

A patent is a grant from a government that confers upon an inventor the right to exclude others from making, using, selling, importing, or offering an invention for sale for a fixed period of time.

The Life of an Invention

Although most inventors will be concerned with the rights a patent grants during its monopoly or in-force period (from the date the patent issues until it expires (20 years after the filing date)), the law actually recognizes five "rights" periods in the life of an invention. These five periods are as follows:

1. Invention Conceived but Not Yet Documented: When an inventor conceives of an invention, but hasn't yet made any written, signed, dated, and witnessed record of it, the inventor has no rights whatsoever.