Sunday, April 15, 2007

A Denver Colorado Patent Attorney Answers FAQs: Part 6

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We continue our popular Patent FAQ series below. Portions of this series can be found on our website. Also, check out our Trademark FAQ series, which, until our new and improved website is launched, can be found only in this BLOG. And if you have not already, click the link above or below and go to our website and add it to your favorites. The new and improved site with about 75% more useful content is nearing completion and should be available within the next month or two. It will be an indispensable resource for entrepreneurs, small companies and individual inventors alike.

6. What are Claims and why are they so important?

Simply, claims are one-sentence descriptions of what the inventor considers his invention. The claims legally define the scope of an invention and inventor’s right to exclude others from making, using or selling his invention. Without question, the claims are the most important part of the patent application and subsequent patent.

The claims are also the most misunderstood part of a patent application. They are often written in patent attorney legalese and are very difficult for someone not trained in patent law to read and properly interpret. The typical inventor is unable to judge the quality of the claims provided in a patent application and if the patent attorney has not done a good job, the scope of protection of any resulting patent may be severely limited to the point where the patent has little or no value in preventing other from copying your invention. It is an unfortunate reality that many patent agents and attorneys are also not very adept at writing good legally defensible claims, whether that is because writing good claims would take too long or because of simple ignorance concerning the rapidly changing state of patent law. On the other hand, a good patent claim may provide you with a scope of protection that is greater than you contemplated before you went to see your patent attorney. Accordingly, the choice of quality patent counsel is of the utmost importance.

To give you a better understanding of claims, there are basically two types: independent claims and dependent claims. An independent claim is a complete description of the invention in and of itself. It comprises a set of elements (or limitations) that when taken together in combination defines a novel and nonobvious invention. A dependent claim is a claim that includes additional limitations that further define and limit an independent claim. Consider the example of a pencil with an eraser as provided below:

1. A writing device comprising:
(i) an elongated core comprised of a first material, the first material having a property of exfoliating when frictionally engaged with and moved across a surface;
(ii) an elongated shell comprised of a second material substantially surrounding the elongated core, the elongated shell having a first end; and
(iii) an eraser, the eraser being attached to the first end.

2. The writing device of claim 1, wherein the first material comprises graphite.

3. The writing device of claim 2, wherein the second material comprises wood.

Claim 1 is an independent claim. Claim 2 is a dependent claim that includes all of the elements of claim 1 plus the additional requirement that the first material be graphite. Accordingly, if these claims issued in a patent and a person made a wood pencil with a lead core, he would be infringing claim 1 while not infringing claim 2, because claim 2 requires that in addition to all the elements of claim 1 that the core be made of graphite. Claim 3 is dependent on claim 2 and accordingly includes all the limitations of claim 2 and claim 1 from which claim 2 depends as well as the additional limitation that the second material comprises wood. Accordingly, if a person made a mechanical pencil with a graphite core material and a plastic shell he would still be infringing claim 1 and claim 2, but he would not be infringing claim 3.

How does an inventor know if the claims that a patent attorney wrote for his invention are any good? We do not have an answer for you. Our basic response would be to question your patent attorney before you hire him. Listen to his responses. Does the attorney seem like he takes the claims portion of a patent application seriously. Ask him/her how much time it takes to draft a set of claims. If he/she indicates it can be done in a couple of hours, you can rest assured that the claims will probably not be very good. If you prospective patent attorney says he can draft an entire application for $3000 and his hourly rate is $225 or more, you can be confident he is not going to spend more than a few hours on the claims. In our opinion to draft three really good sets of claims (you can have up to three independent claims in your application for the basic filing fee) takes around 5-8 hours. And incidentally, the shorter the length of the claims, the better they are likely to be. Long claims with a lot of additional language are almost always too narrow!

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Wednesday, April 04, 2007

A Denver Colorado Patent Attorney Answers FAQs: Part 5

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5. What is the Difference between a Design Patent and a Utility Patent?

A utility patent is typically what comes to the mind of most people when they think of a patent. Utility patents can be obtained for new and useful processes, machines, articles of manufacture or compositions of matter. Utility patents may not be obtained for: printed matter (usually protected with a copyright); naturally occurring articles; scientific principles, mathematical laws; and “inoperative” inventions, such as perpetual motion machines that are incapable of achieving a useful result.

Unless otherwise stated, throughout this web site when we use the term “patent” and “patent application”, we are referring to a utility patent and utility patent application respectively.

Art is generally not within the purview of utility patents. Sculpture, paintings, and music are not considered to possess utility (or usefulness) and are, accordingly, not patentable. Creative works are typically protected through copyright. Patent law does overlap with copyright concerning design patents. To learn more about copyright law, click here.

Design patents protect the novel, nonobvious ornamental designs of articles of manufacture. In other words, the design patent protects the way an article looks. Unlike utility patents, there is no requirement that the ornamental design be useful. Rather, a design patent cannot protect the features of an article of manufacture that are dictated wholly by functionality. It is not uncommon to apply for and receive both a utility patent and a design patent for the same article provided the novelty and nonobviousness of the article resides in both its utility and its ornamental appearance.

As mentioned above, sculpture is protectable through copyright, but since it is an article of manufacture, it is also protectable through a design patent. Because registered copyrights are inexpensive to obtain when compared to design patents (typically about $300 versus about $1000-2000) and considering the much shorter term of a design patent (14 years), it is rarely prudent for a sculptor to apply for and obtain a design patent when a copyright will provide adequate protection. Furthermore, since copyright protection actually applies to a creative work immediately upon its creation, the sculptor need not even apply for a registered copyright, although by registering the copyright, the sculptor does gain certain additional avenues of legal recourse against those who copy his work.

Copyrights are not available, however, for articles of manufacture that are primarily functional unless the nonfunctional portion can be conceptually or actually separated from the functional elements of the article. For example, a 1.5-foot high sculpture of a person is protectable through copyright whether the sculpture stands alone or serves as the base of a table lamp. Interestingly, the lamp's design (i.e. the sculpture) would also be protectable for use in a lamp using a design patent. There is a degree of overlap between copyright and design patent protection but in general, design patents are most useful to protect the ornamental and non-functional features of an article of manufacture that possesses functionality.

Generally, a design patent by itself without an accompanying utility patent is of little use to the independent inventor. Some unscrupulous invention companies have in the past used the design patent as a way to inexpensively (for them) obtain a patent for their customers. They, however, often failed to inform the customer that the design patent only pertains to the look of the device and that a competitor could produce a similar device that has the same functionality without infringing the design patent. And if the competitor cannot produce a device having similar functionality as the design-patented device without copying the look of the device, than the design patent is probably invalid because the look of the product is not wholly ornamental but is at least partially dictated by function.

We do recommend that an inventor or company consider obtaining design protection when they intend to produce an article of manufacture themselves and the design is unique enough in their opinion that there is a concern about someone copying it. Often a design patent is a good companion to the utility patent as it further protects a particular product.

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Thursday, March 29, 2007

A Denver Colorado Patent Attorney Answers FAQs: Part 4

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Question: Can I get a patent on my idea or invention?

We have observed over the years that many people think that in order to receive a patent a person must invent something earthshaking or of great significance. The truth is that merit, potential and/or groundbreaking significance have nothing to do with obtaining a patent for an invention. The United States Patent Office makes no judgments as to the merit or potential value of your invention. Rather, they look to see that an invention satisfies three basic requirements: (1) utility; (2) novelty; and (3) nonobviousness.

Utility is by far the simplest requirement to satisfy requiring only that the invention serve a utilitarian purpose. In other words, the invention must be useful. Most inventions easily satisfy the utility requirement. Some types of creations excluded from patentability for lacking utility include: creative works, such as music, literature and sculpture; scientific or mathematical algorithms, which are considered to be discovered rather than invented; and purely mental processes, which can be performed solely in one’s mind.

Novelty merely requires that someone else did not invent your invention and disclose it to the public before you. In general, a patent search combined with a patentability opinion is very effective in determining whether an invention is novel. If your attorney believes that your invention isn’t novel, he/she will usually recommend that you do not file a patent application.

Nonobviousness simply requires that the invention not be obvious in light of prior art to someone of ordinary skill in the art in which the invention is to be practiced. Obviousness or the lack thereof is very difficult to objectively judge. Not surprisingly, nonobviousness is the most common hindrance to having the claims in a patent application allowed. Further, it represents the greatest source of disagreement between patent attorneys and the patent examiners in the patent office. An examiner will contend that a claim is obvious, the attorney will respond with a legal argument why it is not, and this may go on and on until one side gives up. Mind you, arguing with the examiner costs money in terms of (i) having your attorney draft office action responses and (ii) continuing the prosecution of the invention. Many attorneys will try to reach an accord with an examiner in a telephone interview after the second and typically final office action has been presented. We will, however, almost always recommend a telephone interview being conducted after the first office action

An obviousness rejection by a patent examiner usually takes the form of two or more prior art references (typically issued patents) that when combined teach all of the elements in one or more of the patent application's claims. Often, however, the attorney can successfully argue that the combination of the references is not proper even if the two references contain all the elements of the claim. In order to combine references, the examiner must demonstrate that the two references pertain to the same field of art as the subject invention and that there is a motivation to combine the references. Interpreting these legal standards and applying them to the facts of a particular patent application and rejection are not easy and are best left up to a qualified patent attorney. Suffice it to say, just because you think an invention may be obvious does not mean that the invention is obvious in terms of the requirements for patentability. Obviousness as viewed by you is probably based on your common sense and life experiences while obviousness relating to patentability is based on statute and case law. In our experience, the legal standard of obviousness is much narrower than one would imagine and accordingly, can often be argued around to obtain a patent.

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Wednesday, March 21, 2007

Denver Colorado Patent Attorney Answers FAQs: Part 3

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Question: What is a Patent?

Simply, a patent is a personal property right granted by a government that gives the owner an exclusive right to prevent others from making, using or selling a claimed invention for a certain period of time. In the United States, the term of a utility patent grant is 20 years from the date of filing a patent application and the term of a design patent is 14 years from the date of the design patent grant.

Of particular note, a patent does not convey to the holder the right to make, use or sell their invention. Rather it only prevents others from making, using or selling the invention. In certain circumstances a patent owner may be prevented from making, using or selling his/her invention because the invention is also covered by another patent owned by someone else.

For example, let’s assume you invented a pencil with an eraser on it, and no one else had ever put an eraser on top of a pencil. You apply for and receive a patent. Now, nobody can make your pencil with an eraser without your OK. But let’s also assume the pencil was invented a few years before and another inventor owns the patent on the pencil. Your pencil has all the features of the other inventor’s pencil except you have added the eraser. Unfortunately, your pencil reads on his patent and you must get permission from him before you can make your pencil. In the real world of business, you would probably approach the other inventor and reach some sort of agreement so that you can have your pencil produced and sold. Perhaps, you would have to license his pencil patent and give him a percentage of the revenues generated from the sale of your pencil with an eraser.

In reality, more often than not, no one else will hold a patent that prevents you from producing your invention, but the prudent inventor is wise to have his/her patent attorney review the patent references identified in a patent search to not only determine whether your invention is patentable, but also whether your invention will likely infringe another’s patent if it is made, used or sold. While both patent attorneys and patent agents can legally provide advice on whether a particular patent is patentable, only attorneys, preferably patent attorneys, can provide advice about whether your invention might infringe another patent. Stay tuned to this series for more about the distinctions between patent agents and patent attorneys.

Till next time.....

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Monday, March 19, 2007

Denver Colorado Patent Attorney Answers FAQs: Part 2

FOR ANSWERS TO MORE QUESTIONS CLICK TO VISIT: OUR WEB SITE

Question: What are the chances that I will make money from my invention?

We have absolutely no idea! Your invention could be incredibly valuable to the particular market segment to which it pertains or it could be a dud. You are in a better position to evaluate that than us. Sometimes timing and luck play a significant role in bringing an invention to market. And then of course there is your commitment to the invention. Are you willing to spend the time required to promote your invention? Are you willing to spend the money necessary to pursue your invention to its logical conclusion?

One thing is very certain; your chances of success are lowest if you do not protect your invention with a well-drafted patent. In fact, your chances at licensing your invention without a patent are essentially zero (of course, there are always rare exceptions). The decision to patent your invention should not be entered into lightly, but if you are willing to devote the time, the money, the energy and the perseverance necessary to pursue your invention, the rewards can be huge, and not just in terms of money but in terms of accomplishment.

One of our attorneys (Kurt Leyendecker) invented a product, formed a company to produce and market that product, and lived through the failure of the company. However, he does not regret having taken the chance. In fact despite the outcome, he claims to learned so much from the experience that it has made him a better businessperson and lawyer today. He feels his entrepreneurial experiences allows him to better assist the Firm’s clients in their ventures.

In our opinion, the two most important factors to the success of an invention are (1) a novel and good idea for an innovative product or process, and (2) a high degree of commitment by the inventor. Everything else pales in comparison. And we would even be so bold as to say a very high level of commitment can even turn an idea that perhaps isn’t so great into a successful product or process. So if you have the will, the desire and the fortitude to see the process of bringing a new product to market through, than your ultimate chances of success increase significantly. The actual invention of a new or improved product or process plays a very small part in a product’s ultimate success.

Obtaining a patent for your invention also plays a crucial part in the process of bringing your invention to market, especially if your goal is to license it to others. Most large corporations will not even look at your invention unless you have at least applied for a patent.

If you are going to produce and market your invention, a patent is not an absolute necessity. However, if your product is successful, watch out because a well-heeled competitor may copy your product and cannibalize your market share, and there will be nothing you can do about it.

To summarize, you are the key to the success of your invention. If you have a good idea along with the will and the persistence to pursue your invention, your chances of success, although not guaranteed are much improved over the typical independent inventor. Obtaining a patent for your invention is your price of admission and the first step on the road to success.

See my previous post for the answer to the first question: Who can I tell about my idea/invention, and what precautions should I take?

Bookmark this Blog or better yet sign up for either an RSS or email feed (both at the right) to receive all the posts in this series. Next up: What is a Patent? Also, we have another set of FAQ posts running concerning Trademarks. You may want to check those out as well.

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Thursday, March 15, 2007

Denver, Colorado Patent Attorney Answers FAQs: Part 1 in a series

FOR ANSWERS TO MORE QUESTIONS CLICK TO VISIT: OUR WEB SITE


We are in the process of redesigning our web site to add more content and make it more useful to potential clients. We have beefed up the patent section and added a substantial amount of new content to the business, trademark, copyright and other sections. The new site will truly be one of the most comprehensive law firm sites on the web. We are very excited about its launch in the next month or so.

Anyhow, we thought we would make some of the FAQs that will appear on the website available now on the Blog in several new blog series. This is the first installment in the Patent series. Enjoy, and please leave comments or follow up questions,

1. Who can I tell about my idea/invention, and what precautions should I take?

Loose lips sink ships. Or applied to inventions, disclose and lose your patent rights! OK, not immediately, BUT if you do not get a patent application on file within one year of a public disclosure or offer for sale, you have just dedicated your invention to the public meaning anyone can make it, anyone can sell it and anyone can use it and you cant stop them. This one year grace period applies only to the United States and select few other countries. In most other countries, you lose the right to patent the invention the minute you make a public disclosure. Luckily, the filing of a U.S. application will preserve your right to foreign file for one year provided the filing is made before a public disclosure or offer for sale.

Accordingly, it behooves an inventor to avoid making a public disclosure for as long as possible. Luckily, this isn’t very difficult: have anyone you disclose the invention to sign a Non-Disclosure Agreement (or NDA). We even have one that you can use right HERE. Simply, an NDA prevents a disclosure to a third party from being a public disclosure meaning the one year clock DOES NOT start ticking and your rights to file for foreign patent protection are preserved. So if you want to talk with a machinist about making a prototype, have him sign an NDA. If you want to talk to an injection molder about the cost of producing your invention, have him sign an NDA. If you want to talk with marketing specialists about whether you invention is marketable, have them sign an NDA. If you want an engineer to help you design your invention, have him/her sign an NDA. If you want to tell your friends or co-workers about your invention to get their opinion, have them sign an NDA. Although a disclosure to close friends may not be a public disclosure, it is wise to play it safe. About the only people you do not need signed NDAs from are your family and your attorney.

Yes, you read that correctly, you can tell us about your invention and not jeopardize your patent rights. Attorneys have a legal duty to keep communications from clients and prospective clients confidential. IF we were to break such a confidence, we could lose our licenses and find ourselves on the wrong side of a legal malpractice lawsuit.

You must be careful, however even with a singed NDA, not to offer your invention or a product or service embodying your invention for sale because just like disclosing your invention to the public an offer for sale will start the one year clock ticking. In the case of an offer for sale, unlike a mere disclosure of your invention, an NDA WILL NOT prevent the one year clock from beginning to run.

In the end, you are always advised to seek legal consul before making any disclosure. The answer provided herein is simplified and cannot take into account the various particulars of your situation. Accordingly, extreme caution should be exercised before making any disclosure whether under an NDA or not. Remember to play it safe you may want to get a patent application on file prior to any public disclosure or offer for sale. We do realize, however, that this may not be practical for all inventors in all situations, SO it bears repeating, get advice from a qualified patent attorney as soon as is reasonably possible.
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