Post
by MozyBonz » Mon Jul 02, 2007 10:30 am
Here is some more info:
UNDERSTANDING THE INVENTION PROCESS
So you have an idea and want to get a patent? There are a number of things that you need to know about the invention and patent process that can help you focus your efforts and know what obstacles lay in front of you.
The first thing to know is that a pure idea cannot be patented. Many people will have great ideas, but will not be able to put that idea into a package appropriate for a patent because there is no invention, only the beginnings of a concept. To be sure, the idea is the critical first step in the invention process. After an inventor comes up with the idea or concept it is necessary for the inventor to develop a game plan calculated to take the idea through to fruition. This idea and game plan together form what the law calls conception. Conception is important in patent law for two reasons: (1) conception marks the first step in the invention process; and (2) in the United States it is the first person to invent will ultimately receive the exclusive rights to a patented invention.
Once there is conception it is important for the inventor to be diligent in moving forward toward defining and experimenting with the invention. Generally speaking, conception without diligence can cause the first person who invents to lose the right to the invention, assuming someone else invents after you but files their patent application first. The law does realizes that so-called "garage inventors" cannot quit their day job, but the law will also require proof that you are consistently moving forward and not shelving the invention for periods of time in favor of other endeavors. The lesson here is once you have your idea and the game plan you must move swiftly.
This leads to another important consideration, which is documentation and proof. In some cases it is necessary to for an inventor to be able to prove they were working on their invention in a diligent fashion. In other cases it will be important to demonstrate what was known by the inventor at a particular point in time. It is critically important to understand that the law will not accept the word of the inventor alone. In every venue an inventor’s testimony alone is considered inherently unreliable, and is simply not trusted. If, however, there is corroborating evidence to support the inventor's testimony, the picture painted will be strong and courts will listen. As a result of the fact that case after case teaches that uncorroborated testimony of an inventor is not helpful, it is necessary for an inventor to document work and progress on the invention.
Documentation is necessary for many reasons, not only to demonstrate diligence. It is also important to realize, for example, that simply saying that you took days off from your job to work on the invention is not enough. You could have just as easily gone to the movies; and there are unfortunate cases where the courts have said this very thing. The type of documentation an inventor needs must be concrete. For example, if you purchase things from Radio Shack or Home Depot, keep your receipts, and write down exactly what was purchased. Also try and keep a regular schedule. If everyone you know can testify that you worked in your workshop for an hour or two every night after dinner, such evidence could be helpful. Perhaps most importantly, keep an invention notebook! The invention notebook should be like a diary of what you did and tried and when and how it went and what you are thinking about doing and trying and why. Be as complete and specific as you can be. One thing that is certain is that courts expect that inventors will document everything they do and try. This is true because there is no way to reliably remember everything you did, so most who are inventors will write things down so they can keep things straight in their own minds. The importance of a detailed invention notebook cannot be overstated. It is also a good idea to periodically have the invention notebook notarized so that it can be shown that some independent individual who is qualified under the law to administer an oath has seen that you have documented your progress as you go. It is not important that this independent party understand what is written in the notebook, although that would be ideal. All that is necessary is that someone who can legally administer an oath, such as a notary, a justice of the peace (in some states) or an attorney (in some states) can verify that as of a certain date and time an invention notebook was presented. It is best to have each page signed and/or stamped.
It is important to understand that notarizing, for example, does not create any property interests. The inventor who has had a notebook verified by an independent individual capable of administering an oath does not mean the invention has been protected. What notarizing does do, however, is make it difficult if not impossible for someone to claim that the inventor created the invention notebook after the fact. Remember that in some cases, particularly when invention is being made in cutting edge areas, there are many other individuals and teams working to solve the same problem. Because the United States is a first to invent system, the rights go to the inventor(s) who are the first to invent. In such a race it may be necessary to proof exactly what was known and accomplished and as of when. This is why the invention notebook together with independent verification is considered essential.
Many idea submission companies and idea promotion companies will tell inventors that they should mail a description of their invention to themselves or to family or friends. It is important to know that mailing things will provide absolutely no protection whatsoever. Assuming that you do not open the envelope, and the envelope is appropriately post marked, all that such a mailing will do is prove that as of the postmark date the inventor wrote what is represented on the pages included. While this is not necessarily a bad idea, such mailing creates no property rights and lacks the verification of an independent third party, as would be the case if the invention book were notarized.
The most important evidence an invention notebook must contain is a detailed explanation of when the inventor came up with the concept (idea + game plan) and whether the inventor was diligent. If an invention really exists it should be relatively easy to prove diligence, assuming careful entries have been preserved. Inventors should not skimp on the invention notebook, and should not skimp on the details written in the invention notebook. Composition books are only $1 each, so fill them up and keep good records. After contacting a patent attorney inventors who keep detailed records will discover that within those records there are multiple inventions, and at the very least a wealth of information that will be useful in the future.
One further comment regarding invention notebooks needs to be made. It was previously suggested that inventors use composition books. The reason for this suggestion is that removing pages from such books is difficult. Stay away from spiral bound books because with wear and tear pages have a way of falling out. Also stay away from loose leaf pages. It is easy to insert pages out of order, which means that if proof of a particular chronological order becomes important the invention notebook may have inherent credibility questions. Finally, if you are going to use a computer it is absolutely essential to print out the pages with frequency and have each page individually notarized. This is because it is very easy to manipulate date stamps on computers, and also because it is easy to save over previous work. If you are using a computer do not save over previous work. Each time a saved document is opened save it with a different name. The inclusion of dates into the file name is particularly helpful.
At this point in the process the inventor now has both the idea and game plan, and is moving forward trying to finalize the invention. This process is moving toward what the law calls a reduction to practice. An inventor does not need to have a prototype built in order to apply for and/or receive a patent, but it is necessary for the inventor to describe the invention with enough specificity so that someone who is technically skilled in the area of the invention can understand how to make and use the invention. Reduction to practice, therefore, can occur through the creation of a prototype or a specific and certain definition of the invention. One or the other is required.
Let’s return to the game plan. The game plan is what connects your idea with the reduction to practice. What is needed is the knowledge and understanding of how to take the idea and move forward toward a reduction to practice. The game plan does not need to be flawless. It can and frequently will be modified over time as the inventor begins conducting research or otherwise works on the invention. The game plan, however, is frequently where many inventors, particularly first time inventors, encounter significant problems. Remember, simply coming up with an idea is not enough. From time to time every patent attorney will hear from people say: "I have this great idea and I want to get a patent. I just need to find someone who can figure out how make the product, but if someone could figure out how to make it I know it could make money." This is an example of a pure idea, which is an idea without a game plan. While there is absolutely nothing wrong with more than one person working on an invention, in order to be co-inventors each inventor must contribute to the conception of at least one aspect of the invention. Because conception requires both the idea and the game plan, there is no getting around the fact that all inventors must be able to forward the invention.
To review, the law recognizes that with many, if not most, inventions there will be three steps to the invention process. The idea comes first, followed by the game plan, followed by the reduction to practice. When dealing with some inventions the idea, game plan and reduction happen rapidly. With other inventions there is some time between these steps.
After a reduction to practice is achieved the next step in the process is to determine whether obtaining a patent is the appropriate course of action. Obtaining a patent can be the best decision, and may even be the best business move an inventor could make. Nevertheless, what must be understood is that most patents do not make inventors money. Furthermore, based on what is coming out of the Patent Office these days, the question should not be whether you can get a patent, but rather whether any patent you are able to obtain is worth the investment. In other words, is the scope of protection meaningful? Are you going to actually be able to prevent competitors from making, using, selling and importing your invention? Is there a market for your invention? These and other questions should be considered.
When an inventor is considering whether to get a patent it is absolutely essential to understand the rights a patent will give. A patent will give you the right to exclude others from making, using, selling and importing a product or process that is covered by your patent. Many will say that a patent is a monopoly, or a patent provides a monopoly. This is simply not true. The loose application of the pejorative term "monopoly" to the property right of exclusion represented by a patent is misleading, although given that the United States Supreme Court uses the term in connection with patents it is understandable why and how it has crept into our lexicon.
What a patent can do is allow the owner of the patent right to prevent others from entering a market. This requires a strong patent, not just any old patent that you can get through the Patent Office. Likewise, it is necessary to have a product or process that others want to pay for. It is a simple truth that a monopoly can only exist if there is or will be an existing market. To characterize a patent as a monopoly without first questioning whether there is a market for the patented product or process is to put the cart before the horse. Those patents that are litigated are litigated because there is money at stake and, therefore, a market does exist. Nevertheless, there are undoubtedly a large number of patents that could never possibly have any market and could never be considered to yield a monopoly. If you doubt this consider the fact that a method of painting using the posterior of an infant was patented on February 8, 2000. See US Patent No. 6,022,219. What a patent can do is provide the opportunity to obtain what economists would call monopoly profits.
Two things are required in order to turn a patent into a highly lucrative piece of property. First, it is necessary to have a patent that adequately covers the product or process that embodies the invention. Coverage in this sense not only requires solid, literal coverage of the invention but also protection broad enough to prevent similar and/or substitute products. Second, it is necessary to have an invention that others will pay for. If an inventor has these two things then there will be a customer base that must come to the inventor for the product. This is, of course, the holy grail of patent law. It can be exceedingly difficult to know if these two ingredients are present, and sometimes even experience patent attorneys and inventors will be wrong. This being true, risk taking is sometimes inevitable. Nevertheless, prior to rushing in head first and applying for a patent these two considerations must be given proper attention.
PATENTABILITY REQUIREMENTS
There are essentially five substantive requirements that must be satisfied before any invention can be patented. These requirements together are commonly referred to as the patentability requirements. Each of these patentability requirements are discussed briefly below.
1. Patentable Subject Matter - 35 U.S.C. 101
Perhaps the first and certainly the most basic question with respect to patentability is whether or not the claimed invention consists of patentable subject matter. In other words, is the claimed invention something that the patent laws are designed to protect?
The Legislative History of the 1952 Patent Act inform us that Congress intended the patentable subject matter referred to in §101 to "include anything under the sun that is made by man." Given that Congress intended everything made through human intervention to be patentable it is sometimes more helpful when discussing patentable subject matter to search for that which cannot be patented. In this regard the United States Supreme Court has repeatedly and consistently stated that there are only three categories of subject matter for which one may not obtain patent protection: (1) laws of nature; (2) natural phenomena; and (3) abstract ideas.
Today, at least in the United States, there are few questions with respect to patentable subject matter. From time to time the United States Patent Office does attempt to breathe new life into rejections for want of patentable subject matter, but ultimately the legislative history and the guidance of the Supreme Court is clear. With this in mind, for better or for worse, in the United States virtually everything is patentable, including computer software, living organisims and business methods.
On the horizon one patentable subject matter issue may become the scope of the protection afforded to business methods. With respect to business methods, in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 cert. denied, 119 S.Ct. 851 (1999), the United States Court of Appeals for the Federal Circuit first categorically and unceremoniously did away with what had previously been come to be known as the business method exception to patentability. In this and subsequent decisions the Federal Circuit has not limited business method patents to any particular embodiment. Nevertheless, the United States Patent Office has interpreted this and other decisions to require a business method be used in conjunction with a computer in order to be patentable. It is hardly arguable that this is not the correct interpretation of the Federal Circuit precedent, but the Patent Office has nonetheless taken this position, which will remain in effect until either the policy is chaged at the office or an appeal is taken to the Federal Circuit and the Federal Circuit orders the Patent Office to award patents on business methods that are disembodied from computer programs. To be sure, this may seem rather minor, but those who follow patent law live for such controversy.
2. The Utility Requirement - 35 U.S.C. 101
To satisfy the requirements of §101 it is not only necessary to demonstrate that the subject matter of the invention is patentable, but the patentee is also required to demonstrate that the claimed invention is "useful" for some purpose. This statement of utility, while necessary, can be made either explicitly or implicitly. The utility requirement finds its foundation in the belief that an invention that is inoperative is not a "useful" invention within the meaning of §101 and, therefore, does not deserve patent protection. For a claimed invention to violate the utility requirement it must be "totally incapable of achieving a useful result." Therefore, an invention that is at least partially useful will passes muster under §101 and the PTO will not issue a utility rejection.
Notwithstanding the extremely low utility hurdle, claimed inventions can and do fail the utility requirement. An invention that fails the utility requirement does so for one of two reasons. First, an applicant can fail to identify any specific utility for the invention or fail to disclose enough information about the invention to make its utility immediately apparent to those familiar with the technological field of the invention. Second, the applicant’s asserted utility for the invention is not credible. A good example of the later is an invention claiming a perpetual motion machine.
It is important to remember, however, that the PTO has the initial burden of challenging the applicants assertion of utility. This is true because the applicant’s assertion of utility in the disclosure will be initially presumed to be correct. Only if the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince the PTO of the invention’s asserted utility.
An assertion by the patentee regarding utility will be credible unless: (1) the logic underlying the assertion is seriously flawed; or (2) the facts upon which the assertion is based are inconsistent with the logic underlying the assertion. Credibility as used in this context refers to the reliability of the statement based on the logic and facts that are offered by the applicant to support the assertion of utility. One situation where an assertion of utility would not be considered credible is where a person of ordinary skill would consider the assertion to be incredible in view of contemporary knowledge and where the applicant has not provided any information to counter that which the contemporary knowledge suggests. Again, a perpetual motion machine is a good example.
3. The Novelty Requirement - 35 U.S.C. 102
Despite the impression given by the low hurdle presented by the first two patentability requirements, not every invention is patentable. One of the most common problems for applications is §102, which sets forth the doctrine of anticipation by requiring novelty of invention. Essentially, §102 requires the applicant for the patent to demonstrate that the invention is new. Absolute Anewness is not required, but those who are first to invent must soon thereafter file for a patent application or risk the loss of patent rights. In order to understand the requirements of §102 it will be helpful to explore the concept of anticipation in a little detail.
A claim is said to be "anticipated" if comparison of the claimed invention with a prior art reference reveals that each and every element in the claim under attack is shown or described, organized, and functioning in substantially the same manner as in the prior art reference. Anticipation is perhaps most easily understood as the converse of infringement: "That which will infringe, if later, will anticipate, if earlier."
The standard for anticipation is a rigorous one; requiring that every element of the claimed invention, as arranged in the claim, be disclosed either specifically or inherently by a single prior art reference. Every element of the challenged claim need not be expressly delineated in a single prior art reference, but may be inherently disclosed by prior art if "the prior art necessarily functions in accordance with the limitations" of the challenged claim. However, if the court must go beyond a single prior art reference, the proper challenge is under §103 for obviousness, not §102 for novelty. A reference will, however, anticipate a claim if it discloses the claimed invention such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.
4. The Nonobviousness Requirement - 35 U.S.C. 103
Obviousness is a critical element to patentability. In essence, even if the applicant can demonstrate patentable subject matter, utility and novelty, the patent will not issue if the invention is trivial. In order to determine if an invention is trivial it is necessary to see if there was motivation in the prior art to do what the inventor has done. If the prior art does not explicitly, and with identity of elements, teach the invention, the patent applicant may still be thwarted if there are a number of references that, when combined, would produce the claimed invention.
A patent may not be obtained if it contains only obvious differences from prior art. An invention is obvious if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. The obviousness inquiry is highly fact specific and not susceptible to per se rules. Defendant cannot simply present evidence of anticipation and then say "ditto" to establish obviousness. Nevertheless, for a patent to be nonobvious it must display "ingenuity beyond the compass" of a person of ordinary skill in the art.
The obviousness determination is based on four factual inquiries: (1) the differences between the prior art and challenged claims; (2) the level of ordinary skill in the field of the pertinent art at the time of plaintiff’s invention; (3) what one possessing that level of skill would have deemed to be obvious from the prior art reference; and (4) objective evidence of obviousness or nonobviousness. Notwithstanding these factual inquiries, objective evidence of obviousness or nonobviousness MUST also be considered before reaching a conclusion on obviousness. Objective evidence includes: (1) the commercial success of the invention; (2) whether the invention satisfied a long felt need in the industry; (3) failure of others to find a solution to the problem at hand; and (4) unexpected results.
In determining what would have been obvious to a person of ordinary skill in the art, the decision maker may examine the following factors: (1) type of problems encountered in the art; (2) prior art solutions to those problems; (3) rapidity with which innovations are made; (4) sophistication of the technology; (5) educational level of the inventor; and (6) educational level of active workers in the field.
5. Adequate Description Requirement - 35 U.S.C. 112
The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough particularity such that those skilled in the art will be able to make, use and understand the invention that was made by the inventor. For the most part this requirement can be explained as consisting of three major parts. First is the enablement requirement, next is the best mode requirement and finally is the written description requirement.
The enablement requirement requires the inventor to describe his or her invention in a manner that would allow others in the industry to make and use the invention. Enablement looks to placing the subject matter of the claims generally in the possession of the public.
The best mode requirement requires the inventor to disclose his or her preferred way of carrying out the invention at the time the patent application is filed. There is no requirement that the inventors preferred embodiment be updated as the patent application works its way through the PTO. Best mode looks to whether specific instrumentalities and techniques have been developed by the inventor and known to him at the time of filing as the best way of carrying out the invention.
The enablement requirement, thus, looks to the objective knowledge of one of ordinary skill in the art, while the best mode inquiry is a subjective, factual one, looking to the state of the mind of the inventor.
The written description requirement is found in the first paragraph of 35 U.S.C. §112. The written description requirement is separate and distinct from the enablement requirement, although related in important ways. The written description requirement serves a teaching function, as a "quid pro quo" in which the public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.
Still confused as to what this means? If you are confused you are understanding well. To be sure, the definition of the written description requirement is quite elusive. For generations the written description requirement had been confined to making sure that what was originally filed in the patent application adequately defined the full parameters of the invention being claimed. Today, the written description requirement means much more, but the Federal Circuit has yet to be able to articulate the requirements in a coherent way. Commentators have called the new written description requirement a super-enablement requirement. The Federal Circuit has dismissed this, but cannot offer a test. Having said this, this new super-enablement requirement aspect of the written description requirement has so far been limited to biotech, genetics and pharma patents. Given this uncertainty and lack of judicial clarity the best thing to do to meet this requirement is to define your invention with as much specificity as possible.
The remaining elements of the adequate description requirement relate to claims. It is the claims that define the invention, so particular attention must be given to writing good, broad claims. Discussion of claims, however, goes well beyond this primer.
PROVISIONAL PATENT APPLICATIONS
Since June 8, 1995, the United States Patent and Trademark Office has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.
A provisional application allows for filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. The beauty of the provisional is that it locks in your priority date. In other words, your filing date for any later filed non-provisional ("regular") application will be that of the provisional. Additionally, filing a provisional patent allows the term "Patent Pending" to be applied, which can have significant marketing advantages. Finally, one of the biggest benefits of a provisional application is that there is no required format to follow. Just take whatever disclosure you have and file it with the appropriate cover sheet and you have a provisional application. This is particularly helpful when you are up against the clock and something needs to be filed immediately in order to establish a priority date.
A provisional application for patent lasts only 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent (i.e., "regular patent application") during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application.
By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months. This is because the patent term will expire 20 years from the filing date of the non-provisional (i.e., "regular") application. The importance of this is that you can lock in your priority date with the provisional, apply "Patent Pending", and wait 12 months before you file the non-provisional application. The effect is that you have locked in your priority date for 12 months without the patent exclusivity term beginning to run.
Although a claim is not required in a provisional application, the written description and any patent drawings of the provisional application must adequately support the subject matter claimed in the later filed nonprovisional application in order to benefit from the provisional application filing date. Therefore, care should be taken to ensure that the disclosure filed as the provisional application adequately provides a written description of the full scope of the subject matter regarded as the invention and desired to be claimed in the later filed nonprovisional application. Additionally the specification shall disclose the manner and process of making and using the invention, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains to make and use the invention and set forth the best mode contemplated for carrying out the invention.
There is a lot to like about provisional patent applications, particularly for individuals, small businesses and universities. Provisionals tend to be cheaper to prepare (because no claims are required) and the filing fee is only $100, which saves you a little money on the filing fee, but also ensures you will not start to rack up examination related fees.
While the benefits of a provisional application are enormous, it is critical to remember that a carelessly prepared provisional is a waste of time and money. Anyone who has seen what commonly passes in the industry for provisional applications knows many, if not most, are not worth the paper they are written on. The moral of the story is run, don’t walk, away from any attorney or agent who claims they can get you a provisional for $299. Yes, the provisional is cheaper, but only because the attorney does not need to spend as much time. This, however, does not mean that not much time is required. There is a big difference. The specification and drawings need to be complete, broad in terms of what is described and specific to make sure you are meeting all patentability requirements. Cutting corners on the provisional makes an application useless.
TRADE SECRET LAW
A trade secret is defined as any valuable business information that is not generally known and is subject to reasonable efforts to preserve confidentiality. Generally speaking, a trade secret will be protected from exploitation by those who either obtain access through improper means, those who obtain the information from one who they know or should have known gained access through improper means, or those who breach a promise to keep the information confidential.
Virtually all states have adopted a portion of or modified version of the Uniform Trade Secrets Act (UTSA), which was drafted by the National Conference of Commissioners on Uniform State Laws in 1970 and amended in 1985. While trade secret laws do vary somewhat from state to state, state laws are remarkably similar. Nevertheless, before making any decisions that may implicate trade secrets it is always necessary to consult with an attorney familiar with the trade secret laws within the state where you or your business is located.
PATENT INFRINGEMENT
Patent infringement is defined in 35 U.S.C. 271. A person or entity infringes a US patent when, without authority, such person or entity "makes, uses, offers to sell, or sells any patented invention, within the United States" during the term of the patent. Similarly, the importation of products or components that are patented is also an act of infringement.
In order to determine if patent infringement has occurred it is necessary to interpret the patent claims in order to determine their proper scope and meaning. The United States Supreme Court has held that such construction must be performed exclusively by the court, not the jury. See Markman v. Westview Instruments, Inc., 116 S.Ct. 1384, 1395-96, 134 L.Ed.2d 577 (1996). Next, the factfinder must compare the properly construed claim to the accused device.
It is critically important to remember that it is not appropriate to compare the patentees product with the accused infringing device. This is because it is the claims contained within the patent the define the limit of the exclusive right granted. In many cases the patent claims will be (and should be) broader than that which is actually being produced and sold by the patentee. Nevertheless, when acquiring a patent particular attention must be given to claim drafting to make sure that the patent claims at least cover that which is being sold.
my post has nothing to to with glow fur.
I just think It's great info. Knowledge is power...
I see something cool and want to find out how it works. That's what humans do. 
So I'll keep pushing buttons.
