Read these 40 Patent Law Tips tips to make your life smarter, better, faster and wiser. Each tip is approved by our Editors and created by expert writers so great we call them Gurus. LifeTips is the place to go when you need to know about Invention tips and hundreds of other topics.
Once you obtain a patent, you might discover--through market research--that licensing your patent may be a better business move than trying to sell and distribute your product alone. Some people cringe at the thought of allowing someone else to make as much as 95 percent of the profit on their hard earned invention.
But, licensing deals have proven to be wise in many cases. They allow you to avoid spending countless dollars on marketing research, obtaining selling agreements, distribution and many other administrative burdens. Depending on the business model you choose, licensing may allow you to move on to inventing still more new products utilizing the profits you earn from your first invention. If you decide to do business with a licensee, here are some important clauses that should be in your license agreement:
*A section of definitions that describe significant words used throughout the agreement.
*Royalty rates based on net sales; this is the invoice price of the product minus any discounts or rebates offered by the stellar.
*A specific royalty rate in terms of a percentage. This can range up to 10 percent but about half that is more likely. This is usually the toughest item to negotiate in a license agreement.
*Territory: This outlines the definition of the license in terms of geographic location. This is where the licensee can operate. Make sure you get details on potential world-wide sales clearly stated for the benefit of both parties.
*Sublicensing: If you give right for a licensee to sublicense make sure you must be notified of such a move. Also, make sure these sublicensors are bound by the same terms as the original licensee.
*Term of the license: This should be spelled out clearly. If, for some reason, your patent is no longer in force, the licensee will want to end the terms as the reason they obtain a license in the first place is to avoid any patent infringement.
This is not a complete list of licensing terms so you should contact your patent lawyer to make sure your license is airtight. You may be able to find sample license agreements in books at the library or online. But, make sure they are updated forms as patent laws may change from year to year. Most patent experts would not recommend renegotiating a patent license without professional help from those who know the field inside and out.
Patent law is complex and so are the circumstances in which patent infringement can be identified. If you obtain a patent, you should be aware of what constitutes patent infringement since you are the best person to watch out for such an offense. While the US Patent and Trademark Office handles the granting of patents, it does not get involved in patent infringement cases. Even though patent protection is relatively easy to understand, determining if a particular patent is being infringed upon requires due diligence.
Here are the basics: if someone is manufacturing or producing your product, it is direct patent infringement; if someone uses your patented invention, it is direct infringement such as using a battery you invented to power their own machine; if someone is selling or merely offering for sale your product, it is patent infringement. Keep in mind, it is never as easy as this sounds. If the patented invention is highly technical, the scope of meaning of the claims you patented could be interpreted differently by different people. You should first obtain all you can about the patent including the file wrapper, a folder that holds everything that has happened on a particular patent. Then, you have to search the language of each individual claim separately focusing on independent claims first.
By applying for a patent, you must disclose everything about your invention, something some companies find unacceptable. Take the Coca Cola company, for instance. The formula for Coca Cola is one of the world's best-kept trade secrets – unprotected by law. Only a handful of people in the world know the recipe.
Why would Coca Cola want to leave their most precious asset so unprotected? Patents are granted for only 20 years, but a trade secret can be kept for an eternity. And the patent process mandates that you disclose everything about your product, leaving the recipe in the public domain before too long.
Most products can be more easily imitated that Coca Cola, whose individual ingredients are not as easy to take apart and copy. For most others, obtaining a patent is the right choice to make.
When it comes time to patent new invention ideas, many inventors choose to apply for a patent and simultaneously present their invention to interested companies. The advantages of doing this is that an invention deal early on the process can shorten the product's time to market. Using the term "patent pending" when using this strategy is advisable.
Often, when an inventor develops a new product, he or she thinks in terms of obtaining a patent. A good patent law firm can point out when your new invention or product needs to employ several options to best defend your product.
Here's an example: Let's say you've developed a new kind of sneaker. It employs a radical new foot support structure, has a unique outer design and carries your logo on its side. Your patent attorney may decide you need to file for a utility patent to protect the foot support structure, a design patent to protect the unique outer design, and a trademark to protect your logo.
An experienced patent law firm will recognize these needs as they carefully examine and evaluate your new intellectual property. Using complementary protections are not too uncommon, and will present your invention in its strongest possible light.
Since a patent is personal property, it can be sold to others with a written agreement drafted by a patent attorney called a patent assignment. A patent assignment can transfer the entire interest or a partial interest in a patent. The person or company to whom a patent assignment is issued then has the same rights and protections as the original patent owner.
If you're interested in trying out invention patenting for yourself, try to look at several previously successful patent applications. Find patent applications that are in the same general area as your invention. Pay attention to how the application is put together, how the invention is described and what any accompanying drawings look like. By studying other applications, you'll make your own invention patenting process go more smoothly.
Patent, trademark or copyright infringement is when a person or company uses a protected invention or creation without the permission of the rights holder.
If you follow patent law, you may have noticed a trend towards massive infringement settlements. Our economy, now heavily dependent on knowledge-based industries such as software, telecommunications, biotechnology, and pharmaceuticals, takes infringement very seriously. A single patent, infringed, can mean the difference of millions of dollars lost or won in litigation – and even more in terms of long-term revenue and profit.
The piracy of business software alone costs US companies more than $12 billion a year, according to estimates from the Software & Information Industry Association (SIIA) which is the principal trade association for the software and digital content industry. And most of this software piracy takes place most commonly in the office.
Now that you've made the wise decision not to file your own patent application, you're faced with who will file it for you.
Both patent lawyers and patent agents are equally qualified to research and write your patent application for you. Both have taken the same qualifying exam with the United States Patent and Trademark Office. Here are a few differences, though:
- A patent agent works only on patents. They cannot assist you with trademarks or copyrights.
- A patent agent cannot represent you in court.
- A patent agent will cost considerably less than a patent lawyer.
If you have a situation in which you expect not much controversy in the future and do not require trademark assistance, a patent agent could be your answer. You can always hire a patent lawyer further down the road.
Filing for a US patent is complicated business. Your invention will fall into one of three different types of patents
Design Patent - granted for a fourteen year term on any new, original, and ornamental design for an article of manufacture.
Utility Patent - granted for a twenty year term to the inventor or discoverer of any new and useful process, machine, manufacture, composition of matter, or any new and useful improvement thereof.
Plant Patent - granted for a twenty year term on any distinct and new variety of asexually reproduced plant
When you are looking around for a patent attorney for your new product idea, ask each one about their area of expertise. If they are used to doing searches and writing opinions on electronics, they won't be as much help with your board game invention. Keep looking until you find a patent attorney who is used to working with inventions in the same category as yours.
You'll also want to make sure that your patent attorney is registered with the PTO. It is generally recommended to go with a patent attorney who charges a flat fee. Don't go with a patent attorney who wants to charge you for your initial interview.
In this growing global economy, you will have to decide early if your invention will require international patent protection. A US patent will not protect you in markets outside of the United States. A patent application must be filed in each country where protection is desired, and within the deadline set by each particular country as well.
While this may sound daunting, there are two treaties that many countries abide by that help make this process a bit simpler.
- The Paris Convention is adhered to by most industrialized nations and offers a grace period for filing patent applications in member countries.
- The Patent Cooperation Treaty allows an inventor to file an international patent application that buys the applicant the time to develop a full patent program. Most of the major countries of the world are PCT members.
Unfortunately, there is no universal or worldwide patent in existence. What these treaties do accomplish is to simplify the process, spread out the cost associated with applying for patents in many countries and provide more time to seek protection.
Invention patenting doesn't guarantee that nobody will be able to steal your new product ideas. After obtaining an invention patent it's up to you to make sure that your invention patent is enforced. The government will not be looking out for products that copy yours. If you believe that another new product idea is based on your own, consult a lawyer for advice on how to proceed. You can also call the USPTO hotline at 1-866-999-HALT for information about protecting your patent rights.
When a company desires to patent inventions that are not wholly new, but enhancements to an original invention or product, it is not necessary to file for a new patent. A continuation, continuation-in-part or divisional applications are options your patent attorney may choose to pursue.
A continuation application is a patent application filed when there are additional claims to an invention whose patent has not yet been issued or abandoned. This type of application is most useful when a patent applicant hasn't exhausted all of the useful ways of claiming a product's uses.
A continuation-in-part is an application in which the applicant adds matter not disclosed in the original parent patent. It repeats much of the original patent's specifications and is a more convenient way to claim enhancements that were developed after the parent application was filed.
A divisional application claims a distinct invention based on important parts taken from the parent application's specifications. A divisional application is sometimes necessary when a patent's claims are too broad to defend it as a single invention.
The patent application has three parts:
1. Specifications: This is a complete written description of your invention. It must be written so that anyone skilled in the subject matter could recreate your idea and use it. Nothing must be left out. You must name all of the operative parts of your invention. You will also submit a signed declaration that you believe yourself to be the first inventor of the product or process.
2. An illustration or drawing of the invention showing every feature described in the first part of the application.
3. Your filing fee. Fees are different for the differing types of patents and they also change periodically. You should check with the US Patent & Trade Office or with your patent attorney.
A trade secret is information that offers a commercial advantage, which is protected to keep such information from being revealed to potential competitors. For example, the recipe for Coke is a trade secret. You must prove you took precautions to keep a trade secret, or protection offered by law for a such a secret won't hold up in court. If you patent an idea, do you need trade secret protection as well? The answer is, it depends.
In some cases, a trade secret is best. In other situations, having both types of protection is best. Trade secrets have unlimited time frames as long as no one reveals them, including an unhappy employee. If someone else accidentally comes up with your secret recipe, the protection is no longer in force while patent protection would be in this case. While patent litigation is one of the most expensive types of litigation, enforcing a trade secret will cost less.
While keeping a secret is hard to do, patent protection has its drawbacks, too. People can improve upon your own patents before you do or find a way to go around the scope of your claims. All in all, both types of protection should be researched and considered, and you may want to get a patent attorney to help you decide if one, the other or both are best for your invention protection.
It's not hard to find an example of a long, drawn-out court case. The law files are filled with them because there are so many ways to delay court decisions through appeals and other legal maneuvers. If the court case in question is a patent infringement both parties can suffer greatly in terms of court costs, lost production time, lost profits and a stoppage of continued product development. Fortunately, there are a variety of strategies to consider that will keep the patent dispute out of court. Before you embark on any of these strategies, you should hire the services of a patent law firm. It's unlikely you can handle this type of dispute all your own, even if it's not your first invention patent.
One possibility for avoiding court is called a cross-license. In this case, both parties would be unable to proceed otherwise because marketing their respective patents would be impossible without such an arrangement. Because of the tremendous cost of patent litigation, some people are also choosing patent arbitration or mediation. Neither of these approaches utilizes a judge or jury. While arbitration decisions are made by a specially designation third party, in mediation both parties involved work together to resolve the dispute with the help of a mediator. Sometimes the court can order those inventors involved in a patent dispute to try mediation in an attempt to avoid a court battle. Once you pay a lot of money to take your patent dispute to court, you might be likely to hold even tighter to your opinion, but always keep in mind the total cost of such a decision in the long run.
Some patent attorneys might advise you to consider all these additional options once the discovery phase of the case is complete. During this phase, each party exchanges information with the other and you'll be able to get a good idea of how strong your case is and whether you should pursue it in court or keep it out of the traditional legal system.
Once you have received an invention patent you should consider it like any other valuable object you own. Many experts recommend that you consistently watch competitors in your field as they are some of the likely infringers of your patents. Even if it's an unintentional infringement, you will be the one who needs to remedy the situation. Sometimes the act of gaining knowledge about one's competitive landscape is called competitive intelligence.
Many professionals can help you in your gathering of competitive intelligence including a patent lawyer, sales professional, invention promoter--even a private investigator. You should consider spending some time considering the best strategy for you to conduct the analysis of your competitive landscape. It may even help you avoid accidental infringement of the patents of others, as well as guide your continued product development research. Without this specific knowledge, you might spend a fair amount of time and money inventing new ideas that are already patented.
Analyzing the competition is always a good business decision as it will likely lead to new customers. However, one of the best reasons to create a competitive intelligence program is because you might also discover a company who wants to license your invention. This arrangement allows another company to sell your product or use your invention in exchange for paying you ongoing royalties. In this type of arrangement, you won't have many of the start-up costs of taking a product to market so you can focus more attention on your next invention.
Let's say you discover that a competitor of yours is infringing on a patent that you have issued to you. At least that's what you initially think. Once you look at the situation--and your patent wording--more closely you realize the mistake may have been yours. Maybe the wording in your patent allowed some leeway for a competitor to sell a product with some of the features of your invention but not all of them. This could occur just because you described your product to have two features connected by the word and.' That way, your competitor may not be infringing after all.
What do you do? You could still file a patent infringement and take your chances. But a good patent invention attorney would also encourage you to have your patent reissued instead. There is a grace period after a patent is filed in which it can be reissued and you should check with the US Patent and Trademark Office for those current details. This grace period is determined by exactly what type of reissue you want to achieve. In any case, the changes you want to make must be supported by your originally filed patent claim.
Unless the change was discussed somewhere in your original claim, your case may be weak for a reissue. In the example above, the inventor may be able to use the word 'or' instead of 'and' so that the competitor's activities are now considered an infringement. Patent reissues are complication business and many other sophisticated technicalities may impact the decision. If you are new to invention patents you may want to seek one of the best types of help for inventors--a patent law firm.
The type of technologies and products that receive patents are often quite complicated. That's why inventors file for an invention patent for each of their separate discoveries. Even in the best of circumstances, even when you hire a patent attorney to help you file a patent, a mistake can get made. The US Patent and Trademark Office can accidentally issue a patent with a miscalculation or misinterpretation in it, or you can decide--once you review your issued patent--that the wording needs to be more clear or different to offer you adequate coverage.
Remember, your competitors can and will try to take advantage of any holes in your patent application. You should discuss these possibilities with your patent lawyer so you can brainstorm on the best wording possible to protect your invention patent. When you discover a mistake in your patent, you can obtain a change so long as the error was not made deceptively. If possible, always use a Certificate of Correction form to have such a change made. You may be able to find this form at uspto.gov, and you can use this certificate whether the mistake was committed by you or the US Patent and Trademark Office. There will likely be a fee that needs to be submitted with this form if the mistake was yours, and you should include a cover letter as well describing what is being submitted.
Mistakes you have corrected on your patent cannot be material changes that would materially affect the scope and meaning of your patent. Corrections to issued patents may take as long as three or four months to receive. Your Certificate of Correction can be sent via first class mail but keep records of everything you sent and the date you sent it.
Don't skimp on patent services. A patent attorney registered with the USPTO not only has the necessary legal degrees to practice law, but also has a scientific or engineering background and has passed a difficult test in which the passing rate is around only 40 percent. Using an attorney registered with the USPTO gives you extra assurance that your attorney is of the highest quality.
InventHelp Tip : Applying for a provisional patent is a form of public disclosure. That means if your licensing deal is not successful, and if you let the one year elapse without converting it to a regular utility patent application, then you would forfeit your right to ever file for an invention patent application on that invention.
Days upon days of research have concluded and you've found absolutely nothing even close to the invention you've created. Should you feel like celebrating? Not if you've conducted the search yourself instead of hiring a patent invention attorney and want success.
Most patent searches at the very least turn up inventions with similarities to the researched one. So, if you've found nothing at all, chances are you haven't conducted a good enough search.
There is an old adage, “Absence of evidence is no evidence of absence'. What this means is that just because you haven't found any evidence doesn't mean there is no evidence.
If your invention work is within the science or technology field, an interesting development contributing to the speed of technological advancements is the patent pool. A patent pool is an agreement between two or more patent owners to license one or more of their patents to one another or third parties. A patent pool allows interested parties working on science inventions to gather all the necessary tools to practice a certain technology in one place.
The idea behind this is that by allowing access to patented technologies, it will remove impediments to the development of other vital products and processes using those patented ones. For biotechnology and pharmaceuticals, patent pools aid in the quick development of new drugs, tests and therapies that improve people's lives.
Many inventors believe that simply receiving their patent is enough. They breathe a sigh of relief and move on to their next task.
If you have a product on the market, make sure you place your patent mark on it. First of all, your patent number is an automatic warning to anyone who might infringe it. In patent law, this is called constructive notice.
If you have a product on the market with no marking, you have to send an actual notice via a letter to your infringer. Damages then only go back as far as your actual notice, regardless of how long your patent has been infringed.
When you obtain patent protection, one thing to remember is that your patent's protection is only limited to the extent that you are willing or can afford to enforce it.
And it's not very difficult for companies to design around a claim, develop what's called a knock-off, and put it on the market. Often the best protection from this is to develop a branding and marketing strategy that sets you apart from the rest and establishes your presence in the mind of consumers. As the saying goes, sometimes the best defense is offense. Take a look at brand leaders like Ben & Jerry to learn how they keep ahead of the pack. They're a great example because they were underdogs. Other brands to study are Virgin Airways, New Balance, and Harley Davidson.
Most people would think that obtaining a patent would be insurance enough. After all, isn't a patent insurance against someone using your invention?
It's common knowledge that the cost of enforcing a patent is often too costly for an inventor to bear. Patent insurance acts as help for inventors whose patents have been infringed upon. Called Patent Enforcement Litigation Insurance, it can cover the cost of a legal defense to enforce your patent. And, it often has a copayment similar to health insurance.
If you invented your new product idea with a partner or group, you can get a joint patent. The joint patent will list each inventor as the owner of the patent. If, on the other hand, one person in the group came up with the ideas for the invention and the others followed instructions, the person with the ideas should be listed as the sole inventor on the patent application. This person will own the patent individually.
Expect to pay a lot of fees during the patent process. Fees are due when you apply for your new invention idea patent, when your patent is accepted, and to maintain your patent later on. Depending on the specifics of your new product ideas, you may have to pay additional fees as well.
The most common reason why a patent is denied or invalidated is because it is not found to be novel due to prior art.
Any document from any source can be used as prior art regardless of how widely published it was or in what language. The only thing that matters in patent law is that the document was available to the public before your patent filing date.
More likely than finding prior art that exactly discloses the same invention is the likelihood that something similar will be found. If the differences between the prior art and the invention seeking patenting are negligible enough as to render the newer invention obvious, a patent will be denied.
This underscores the importance of conducting a thorough and skilled patent search that includes prior art prior to any application.
When you patent new invention ideas, but want to begin marketing prior to receiving formal notice on your patent application, it is a smart idea to mark your product and marketing materials with the term "patent pending."
Often, companies are looking for a rapid time to market for their new products because of the competitive advantage it brings them. They cannot wait for the time it takes for the US Patent and Trademark Office to deliberate on their patent. By adding the term ‘patent pending' they are warning potential competitors that a patent is in progress. If a patent is granted for the new product and a competitor's product infringes the granted patent, the inventor will have the right to stop the competitor from making, using or selling the product.
A provisional patent is a type of invention patent application. It will not result in an actual patent unless you convert the provisional patent application to a regular utility patent application. So why bother with a provisional patent application?
Your attorney may think a provisional patent application might be right for you if you have an invention that is ready for licensing or if you have licensing interest but have not yet filed for a patent. That's because it costs only $100 and it allows you to state that your product is ‘patent pending', giving you a fair amount of protection when negotiating your license. And perhaps best of all, if your licensing deal is successful, you would still be listed on the actual patent as the inventor and you can negotiate for the licensee to pick up the actual utility patent fees and costs.
There's a saying that goes, “Attorneys that represent themselves have a fool for a client.” Well, the same may be true for inventors.
A skilled patent attorney or patent agent has honed his or her skills through years of education and experience. A good patent attorney will be able to translate the nuances of your new product into a much stronger application – giving you a broader claim with greater protections.
You will wind up with a more valuable intellectual property asset.
When you are trying to patent an idea, it is not out of the ordinary for your application to be met with your first office action, stating objections or rejecting some of your patent claims.
This is no time for despair. A good patent attorney or submission company will revise and rewrite your claims to both try to satisfy the USPTO and obtain the broadest protections for you.
Product enhancements can be considered for patent inventions. A product enhancement can be defined as a new feature, style, or shape that is not available on existing products. The improvement may help people when using the product or may allow the product to be used for additional purposes. It may also help the manufacturer make the product at less cost or with less time.
Once you file your patent, including all required fees for doing so, you should still budget more money for the maintenance of your patent. If you have received a patent by now, you probably realize that it is not an inexpensive venture. After all, the government has allowed you to carve out a technology you developed or a unique product invention for exclusive use and sale. Hopefully, as your invention becomes more successful, you'll be able to budget enough money for a patent maintenance fee. You simply must submit these fees or your patent can expire.
If you forget to make a car payment, the bank may forgive you but the US Patent and Trademark Office likely will not--even if you can prove your delay was unavoidable or unintentional. Some types of patents do not require fees while others do. So, always know ahead of time what your obligations will be and check with a few sources to make sure you have the right information. A grace period may exist in which you can pay a fee late but a surcharge will be attached. Be assured, you have plenty of warning to pay a maintenance fee so--if your budget is tight--you'll have time to get the money together. Maintenance fees are due in intervals, usually at three, seven and 11 years. You are responsible for knowing these facts. You may be able to pay your maintenance fee electronically.
Although there is a petition you can file if the patent office declares your patent expired due to lack of fee payment, any good patent invention attorney will tell you to never get yourself in this situation as it is quite a gamble with your hard-earned invention.
While Coca Cola is an interesting example of intellectual property management, obtaining a patent is a wise solution for most inventions. In today's competitive climate, any new product without protection would be left vulnerable to being stolen or knocked off by another company.
If a patent search that you've conducted yourself turns up nothing, you may not have exhausted all possible combinations of keywords and classifications. But if at all possible, this is the time to consult with a patent invention attorney.
Responding to an office action or even making amendments after a final rejection requires the specials skills and experience of a patent attorney. The patent process is complicated and filled with nuances. The dance of trying to patent an idea is best left to your patent attorney and USPTO examiner.