Patents 101 and Patent Prosecution Overview and Costs
Patents 101 and
Partner and Patent Attorney, Electrical Practice Group
Admitted in NC and GA, USPTO registered
1901 Roxborough Rd., Suite 250
Charlotte, NC 28211
About Clements Bernard PLLC
Charlotte, NC – based Intellectual Property Boutique
Specializing in Electrical, Networking, Software, Mechanical, Chemical, and Biotech
Patent and Trademark Prosecution and Licensing, Opinions, Transactional matters
Intellectual Property Litigation (Patents, Trademarks, Copyrights, and Trade Secrets)
Numerous venture funded start-ups
U.S. Government Agencies
Value to Clients
Reasonable, Fixed Fees offering clients deterministic, fixed-fee pricing
Individual focus from seasoned attorneys
Experience - Former Patent Office Examiners in-house & Attorneys with in-house
engineering industry experience
What is Intellectual Property (IP)
Intangible Property Rights including, for example, ideas, inventions and
other innovations, expression, indications of origin and confidential
Trade Secret (protected by State law)
Almost all aspects of technology, innovation, and/or works of authorship
(including software) or art are addressable as IP
IP rights arises from Operation of Law
In U.S., Constitutional Basis – Article I, Section 8, Clause 8:
“To promote the Progress of Science and useful Arts, by securing for
limited Times to Authors and Inventors the exclusive Right to their
respective Writings and Discoveries”
Patents, Copyrights and Trademarks
composition of matter,
Any name, symbol, device or
-distinguishes goods and
services from another
“Fixed in tangible medium”
Not novel, obvious, not useful
Does not exclusively identify
Ideas, Facts, Methods and
Idea – expression is
protected, not idea
When patent issues From use; Protection can last
forever and can also
disappear since protection is
tied to use
From time fixed in a tangible
Fall within scope of a patent
Likelihood of confusion Copying with Access and
Patents Trademarks Copyrights
What is a Patent?
In the U.S., Granted by the U.S. Patent & Trademark Office (USPTO)
Part of the Commerce Department
Protects: Manufactured items, Equipment, Processes, Compositions and Improvements to the
Rights: Right to exclude others from making, using, offering for sale, selling and/or importing
what is claimed
A negative right of exclusion only
Term: 20 Years From Filing or priority date – extensions available based on PTO delay
Territory: United States and its territories
Rights Arise: Upon issuance of a patent, arising from a patent application filed prior to public
use, disclosure or sale
U.S. Patent No. 6,469 to Abraham Lincoln, 1849
President is the only President to receive a
Section in the patent or application that defines the legal scope of protection
granted by the patent
Preamble – recites the class of the invention and optionally primary purpose; e.g. “A
system,” “A method,” “A network for providing…”
"comprising", "containing" and "including" are most often used to mean "having at least the
following elements..." and are therefore open (inclusive) and do not exclude additional
"consisting of" and "consisting essentially of" are more limiting, as they mean "having all and
only" or "virtually only" and are therefore closed (exclusive)
Elements and/or Steps
Defines the invention and includes interaction between the elements.
A system, comprising: X, Y, and Z – X, Y, and Z are elements
A method, comprising: A, B, and C – A, B, and C are steps
Clauses that define, i.e. limit, the elements and/or steps
wherein X is communicatively coupled to Y and Z for control thereof
Systems, Devices & Other Manufactured Items
Such as manufactured equipment, e.g., electronic devices or circuits,
semiconductors, systems configured to perform a function,
networks, components, etc.
Processes or Methods
Such as manufacturing processes or
methods of doing something—may be
implemented as software or as a
Materials/Composition of Matter
Chemical, Genetics, drugs, compounds, etc.
Does not exist in the prior art; Not previously disclosed
OK if Modification of an existing product/process, or use of something “old” in
Utility - Performs a useful function, does it work?
An easy requirement to meet in mechanical and electrical arts. Sometimes difficult in
chemical and life sciences – “I have a new compound, I just don’t know what it does yet” –
therefore, no utility
A knowledgeable but relatively unimaginative person working in your field would not have
been led directly to the invention in light of the available information at the time of
This is difficult to describe in general, as lawyers the focus on non-obviousness is generally
based on prior case law for guidance.
Is there a suggestion/motivation/teaching to combine existing knowledge (i.e., one
or more existing pieces of art) to solve the problem your invention solves?
This is the current legal test, and it allows the Patent Office to reject an invention as
obvious if the elements and limitations of the invention can be found in one or more
references, and if there is a reason, i.e. suggestion, to combine them.
A rejection under obviousness generally involves “combining” one or more references to
meet all of the limitations and elements of the claimed invention
Novelty (35 U.S.C. 102)
Generally applies to all technology areas
Utility (35 U.S.C. 101)
Typically an issue in chemical, biological, and pharmaceutical arts – “I have this new
compound, I just don’t know what it does yet” – i.e. must have a practical application
Non-Obviousness (35 U.S.C. 103)
This is a typical rejection in the Electrical/Software/Mechanical arts
Two or more separate references combined show all elements of the invention
Must show distinction over these references or why these references cannot be
combined in light of the claimed invention
Subject Matter (35 U.S.C. 101)
An issue in the Software arts
In light of court precedent, software-related inventions must be tied to a particular
machine or perform a physical transformation of a physical device
The person(s) who first conceived the invention
Joint inventors - Each inventor must have
contributed to the subject matter of at least one
Persons who implement the ideas of others
Persons who have obtained the entire idea of an invention from another are
Persons who suggest concepts without contributing to the means for carrying
out the suggestion (“Wouldn’t it be nice if….”)
When to file a Patent Application
You Develop, Improve, or Do,
Something New or Different!!
• You solved a problem or
developed something new and
• Your solution for the problem
is not the same as another’s
solution for the same problem
**Note that use of something known in a new, non-obvious, and
different way or to solve another problem can be patentable!!!**
What to Disclose
Has this invention been discussed with others:
Inside or outside of your company? With Whom? When?
Was there a Non-Disclosure Agreement in place?
Have you done a search? Key Words for Database Searching
Is this Invention relevant to a Standards activity?
Describe the Invention
“Tell a Story” - start at high level, then work down into details,
What is the Invention about?
What Problem does it solve?
What other Solutions have been tried or exist, and what were their shortcomings?
What are the Specific Elements or Steps that solved the problem?
What are the values of the Invention
Disclosure Submission Form
Search of U.S. and Foreign patent applications and issued
patents and non-patent literature (journals, white papers,
To ascertain whether the invention has been patented or disclosed
previously and, thus, would be unpatentable;
To avoid filing a patent application and having it summarily rejected
by the Patent Office because of an identical or substantially similar
invention which would render your invention not new or not non-
To draft a better patent application by emphasizing those features of
the invention not turned up in the search.
Duty to Disclose known references which predate your
application to the Patent Office
However, no affirmative duty to perform a search
Provide known closely related references with invention disclosure
Attorney prepares a draft Application
Inventor Reviews & Comments
Application is Finalized
Inventor Reviews & Signs (declaration/POA
and maybe an Assignment)
Application is Filed
Inventor’s Help Sought
In Responding to Office Actions
During Prosecution To Issuance
Invention Disclosure to Attorney
Disclosure Conference with Inventors and Attorney
Application Process at the Patent Office
Rejection of one or more claimsAllowance of all claims
Amendment of Claims to overcome rejections
Arguments to counter rejections
RCE if the Office Action was “Final” to continue examination
Potential Appeal to the BPAI after a “Final” Office Action if desired
Office Action time can
significantly vary on the
order of 1-5 years
Pay Issue Fees
Provisional Patent Application
A provisional application is a simplified filing whose purpose is to preserve one’s
right to file a utility patent within one year of the filing of the provisional
A provisional application requires the filing only of a specification adequately describing the
invention, and drawings where necessary for the understanding of the invention.
It is important that a provisional application describe the invention fully, as the provisional filing date
is only effective for subject matter disclosed in the provisional application.
A provisional application cannot mature into a patent, it is not examined and it cannot claim priority
in an earlier application.
A provisional application is kept in confidence by the Patent Office. A provisional application is,
however, a regular national filing that starts the Paris Convention priority year (discussed below).
A provisional application will automatically go abandoned by law one year after filing.
The provisional application has several important benefits.
It places domestic applicants on an even footing with foreign applicants because the filing of a
provisional application does not trigger the start of the 20-year patent term.
It has minimal legal and formal requirements.
The provisional application provides a mechanism whereby applicants can quickly and relatively
inexpensively establish an early effective filing date in a patent application which establishes a
constructive reduction to practice for any invention described in the provisional application.
The filing of a provisional application also provides up to twelve months to further develop the
invention, determine marketability, acquire funding or capital, seek licensing or seek manufacturing.
Patent Lifecycle and Costs
* Small Entity Fees (<500 employees)
~3 yrs. 3½ yrs. 4 yrs. 4 yrs.
Products in New &
Different Ways for
Adoption Of & Value
From Standards Based
Help Drive &
To ObtainTo Obtain
Business ValueBusiness Value
Against 3rd Party
Defense &Defense &
(via Strategic Licensing)
* Pure Income
* Product Pull-Through
* Business Needs
(Licensing Plays The Key Role)(Licensing Plays The Key Role)
Patent Value for Small/Mid-size
Staking claim to key technologies
and product differentiation –
Deterrence against litigation –
Mutually Assured Destruction
Deterrence against one-sided
licensing requirements from
larger companies (e.g., IBM)
R&D Investment Insurance
Preventing competitors from
Defensive Aspects of Patents
Mutual assured destruction (MAD) is a doctrine of military strategy and national
security policy in which a full-scale use of nuclear weapons by two opposing sides
would effectively result in the destruction of both the attacker and the defender.
Patents are like a nuclear weapon – it only takes infringement of one claim of one
patent to potentially shut down a product
Using Cold War strategy, the best way to avoid a fight is to have as many weapons in
your arsenal as possible
Larger patent portfolio avoids licensing requirements from larger companies
For both existing markets and newly emerging technologies, patents provide coverage
over the technology landscape akin to landmines on the battlefield, the more on the
field, the less likely your opponent will cross the field
Use Patent prosecution/portfolio in a two prong manner
Protection against larger competitors
Staking claim to new technologies, markets, etc.