Picking someone to write your patent is like picking a mechanic to fix your car. Unless you know something about patents (or cars) – you don’t know what you’ve bought until a long time after you have paid.
I started writing patents over 12 years ago. This presentation includes tips derived from my experience, as well as a primer on patents and the process for getting patents.
Knobbe Martens' Partners Bil Bunker and Brenden Gingrich presented "Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents " at the IP Impact 2012 seminar in McLean, Virginia on Wednesday, May 30, 2012. The seminar was designed for corporate counsel, C-Level executives, venture capitalists, entrepreneurs, IP managers and licensing executives.
Patent Strategies for Startups by Lang McHardyPatexia Inc.
This document provides guidance on patent strategies for startups. It recommends that startups preserve patent value by filing early, assessing inventions continuously for value, and maintaining patent applications even as the business pivots. Patents can create value for startups by making technical developments tangible, increasing leverage with partners, and stimulating investment and acquisition. The guiding principle is that patents filed by startups belong to their future acquirer, not the startup itself, so the strategy should focus on maintaining patent value rather than enforcement.
The following presentation describes a recently passed, and soon to be signed, Indiana law regarding how to address the problem of bad-faith assertions of patent infringement by patent assertion entities, sometimes referred to as "patent trolls." The law provides a definition of what constitutes bad faith assertion of patent infringement as well as gives guidance on basic information that is required for patent cease and desist or demand letters. It also provides procedures for having the entity post a pre-trial bond and/or be subject to damages or other remedies for bad faith assertion of patent infringement.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. This presentation walks the viewer through how to file for a patent. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from this presentation.
This document provides an overview of patent systems in Europe and considerations for patent filing and litigation. It discusses the Patent Cooperation Treaty (PCT) system and European Patent Office (EPO) process. Key points include differences from the US system regarding publication grace periods, patentable subject matter, and claim drafting. The document cautions against simply filing foreign counterparts of US applications and recommends tailoring claims and disclosure to individual countries. It also notes risks around amendments and oppositions in the EPO system. Litigation processes in Germany and the UK are briefly outlined.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. This presentation is from the first class giving a basic overview of patents, copyrights and trademarks.
The document discusses several key points regarding intellectual property (IP):
1) IP is likely the most valuable asset of many businesses, as the value of intangible assets like trademarks, patents, and copyrights makes up the majority of market value for S&P 500 companies.
2) All businesses, not just technology companies, rely on some form of IP like trademarks, copyrights, and trade secrets.
3) Failing to properly protect and manage IP can kill business deals and leave companies vulnerable to lawsuits. Proper ownership and licensing of IP is important.
Knobbe Martens' Partners Bil Bunker and Brenden Gingrich presented "Procedures, Pitfalls and Costs: Best Practices for Securing Foreign Patents " at the IP Impact 2012 seminar in McLean, Virginia on Wednesday, May 30, 2012. The seminar was designed for corporate counsel, C-Level executives, venture capitalists, entrepreneurs, IP managers and licensing executives.
Patent Strategies for Startups by Lang McHardyPatexia Inc.
This document provides guidance on patent strategies for startups. It recommends that startups preserve patent value by filing early, assessing inventions continuously for value, and maintaining patent applications even as the business pivots. Patents can create value for startups by making technical developments tangible, increasing leverage with partners, and stimulating investment and acquisition. The guiding principle is that patents filed by startups belong to their future acquirer, not the startup itself, so the strategy should focus on maintaining patent value rather than enforcement.
The following presentation describes a recently passed, and soon to be signed, Indiana law regarding how to address the problem of bad-faith assertions of patent infringement by patent assertion entities, sometimes referred to as "patent trolls." The law provides a definition of what constitutes bad faith assertion of patent infringement as well as gives guidance on basic information that is required for patent cease and desist or demand letters. It also provides procedures for having the entity post a pre-trial bond and/or be subject to damages or other remedies for bad faith assertion of patent infringement.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. This presentation walks the viewer through how to file for a patent. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from this presentation.
This document provides an overview of patent systems in Europe and considerations for patent filing and litigation. It discusses the Patent Cooperation Treaty (PCT) system and European Patent Office (EPO) process. Key points include differences from the US system regarding publication grace periods, patentable subject matter, and claim drafting. The document cautions against simply filing foreign counterparts of US applications and recommends tailoring claims and disclosure to individual countries. It also notes risks around amendments and oppositions in the EPO system. Litigation processes in Germany and the UK are briefly outlined.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. This presentation is from the first class giving a basic overview of patents, copyrights and trademarks.
The document discusses several key points regarding intellectual property (IP):
1) IP is likely the most valuable asset of many businesses, as the value of intangible assets like trademarks, patents, and copyrights makes up the majority of market value for S&P 500 companies.
2) All businesses, not just technology companies, rely on some form of IP like trademarks, copyrights, and trade secrets.
3) Failing to properly protect and manage IP can kill business deals and leave companies vulnerable to lawsuits. Proper ownership and licensing of IP is important.
Intellectual Property Issues for Consideration When Having a New IdeaDemetris Hadjisofocli
The document discusses intellectual property issues and valuation methods to consider. It recommends performing a patent search before beginning research to avoid infringement. It also advises keeping careful lab notebooks to document inventions and determine priority dates and inventorship. The document outlines several basic valuation methods including cost, market, and income approaches. It then describes some specific IP valuation methods such as the 25% rule, industry standard royalty rates, real options method, and competitive advantage valuation.
Knobbe Martens co-hosted a 2-hour seminar in Silicon Valley on Protecting Your Intellectual Property with a distinguished panel of global practitioners.
Partner Agnes Juang, Ph.D. presented "Navigating the Patent Minefield" at SABPA's 9th Annual Biomedical Forum on Saturday, April 26, at the Crowne Plaza Hotel in Costa Mesa.
The event showcased a number of experts across the pharmaceutical, medical device, and diagnostics industries.
The document summarizes several topics related to patent prosecution ethics:
1) It discusses a recent Supreme Court ruling on claim construction appeals and the implications for patent prosecution. It also notes potential ethical issues around defining terms.
2) It overviews common ethical issues like subject matter conflicts, inventor conflicts and representation, failure to supervise staff, and signature requirements.
3) It provides details on recent ethics cases involving subject matter conflicts, inventor representation conflicts, failure to supervise staff who fabricated documents, and mistakenly changing a priority claim without client consent.
Knobbe Martens Partner Ron Schoenbaum hosted an hour-long seminar on September 29 at Plug & Play Tech Center in Sunnyvale, CA. He covered the following topics:
- How patent rights are commonly lost
- 10 strategies startup companies need to know to aggressively build a patent portfolio
Knobbe Martens co-hosted a 2-hour seminar in San Diego on Protecting Your Intellectual Property with a distinguished panel of global patent practitioners.
Stratus IP Law Group at District I/O on May 30stratuspresents
This document discusses considerations around intellectual property (IP) for startups. It notes that patents can provide the statutory right to exclude others from an invention for a limited time, in exchange for publicly disclosing the invention. While some view patents skeptically, the document explains that technology giants like Google and Facebook actively pursue patents to protect their innovations from lawsuits. It advises startups to consult a patent attorney and avoid common mistakes like publicly disclosing an idea before filing a patent or relying only on a provisional patent application.
How To Protect Your Company's Intellectual PropertySecureDocs
This presentation covers cost-effective patent protection for inventions worldwide and protection tactics for unpatented trade secrets. It also gives a compelling argument for why companies should go against the status quo when filing for patents which can help save money and speed up the total patenting process.
Knobbe Martens attorneys Russell Jeide and Scott Cromar presented “Why is Intellectual Property Important?” at a Temecula Valley Entrepreneur’s Exchange (TVE2) event. The presentation was focused on the importance of IP to entrepreneurs and new businesses, and was part of an all-day event celebrating TVE2’s two year anniversary. The event was called “Innovate. Grow. Connect.”
The document summarizes various intellectual property news items, including a report finding waste and mismanagement at the Patent Trial and Appeal Board due to unused paralegals, a potential $6 million malpractice suit over an incorrectly claimed bra insert patent, the upcoming vote on Scottish independence and its potential intellectual property implications, the USPTO pulling patent allowances in view of the Alice decision, and upcoming intellectual property events.
It is focused to provide basic knowledge on prior art search for new intellectuals in the field of IPR. It includes Basic knowledge of Prior art, File wrapper analysis, not list preparation, and one of the important law of Prior Art.
San Diego Partner Boris Zelkind presented on the Defend Trade Secrets Act (DTSA) to the San Diego Intellectual Property Law Association.
These slides are intended to convey information and should not be regarded as legal advice. No attorney-client relationship is formed through the viewing of these slides. Should you have questions regarding the topics covered in these slides or require legal advice regarding a specific matter, please contact the presenter or another attorney.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar will host a free seminar series on intellectual property basics for Temecula’s business community. This interactive and practical series will provide a basic overview of patents, copyrights and trademarks, while also answering questions about preparing patent applications and how to file for a patent. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from these classes.
WHO: Knobbe Martens, one of the largest intellectual property firms in the United States, in conjunction with the Temecula Valley Entrepreneur’s Exchange will host this series.
SPEAKERS: Jeide specializes in several areas of intellectual property law, including patent prosecution, legal opinion work and licensing. Cromar focuses on IP counseling and patent preparation and prosecution.
COST: Classes are free and open to the public. However, seating is limited so please RSVP via the following link: http://tve2ipbasicsseries.eventbrite.com/.
This document discusses patents and intellectual property. It covers basic patent law, the patent system, types of patents including utility patents, design patents and plant patents. It discusses requirements for patents including that inventions must be novel, useful and non-obvious. It provides examples of patented inventions and discusses patent law in the United States. It also discusses patents for software and intellectual property rights as they relate to software.
The document summarizes the utilization of the patent system in Zimbabwe. It defines a patent and outlines the background and role of the patent system in Zimbabwe. Statistics show that most patents granted in Zimbabwe go to foreigners rather than locals. This is likely due to a lack of awareness, investment in R&D, and a national IP policy. The document recommends increasing funding for R&D, improving industry partnerships, promoting IP awareness, and establishing a patent licensing center to increase local patenting.
FUNAMENTALS OF INTELLECTUAL PROPERTY IN SPECIFIC TO PATENTS AND PROTECTION OF SOFTWARE BASED INVENTIONS AND THE LEGAL POSITION IN SOFTWARE PROTECTION AS AN EDUCATIVE APPROACH WERE DISCUSSED.
Intellectual Property Issues for Consideration When Having a New IdeaDemetris Hadjisofocli
The document discusses intellectual property issues and valuation methods to consider. It recommends performing a patent search before beginning research to avoid infringement. It also advises keeping careful lab notebooks to document inventions and determine priority dates and inventorship. The document outlines several basic valuation methods including cost, market, and income approaches. It then describes some specific IP valuation methods such as the 25% rule, industry standard royalty rates, real options method, and competitive advantage valuation.
Knobbe Martens co-hosted a 2-hour seminar in Silicon Valley on Protecting Your Intellectual Property with a distinguished panel of global practitioners.
Partner Agnes Juang, Ph.D. presented "Navigating the Patent Minefield" at SABPA's 9th Annual Biomedical Forum on Saturday, April 26, at the Crowne Plaza Hotel in Costa Mesa.
The event showcased a number of experts across the pharmaceutical, medical device, and diagnostics industries.
The document summarizes several topics related to patent prosecution ethics:
1) It discusses a recent Supreme Court ruling on claim construction appeals and the implications for patent prosecution. It also notes potential ethical issues around defining terms.
2) It overviews common ethical issues like subject matter conflicts, inventor conflicts and representation, failure to supervise staff, and signature requirements.
3) It provides details on recent ethics cases involving subject matter conflicts, inventor representation conflicts, failure to supervise staff who fabricated documents, and mistakenly changing a priority claim without client consent.
Knobbe Martens Partner Ron Schoenbaum hosted an hour-long seminar on September 29 at Plug & Play Tech Center in Sunnyvale, CA. He covered the following topics:
- How patent rights are commonly lost
- 10 strategies startup companies need to know to aggressively build a patent portfolio
Knobbe Martens co-hosted a 2-hour seminar in San Diego on Protecting Your Intellectual Property with a distinguished panel of global patent practitioners.
Stratus IP Law Group at District I/O on May 30stratuspresents
This document discusses considerations around intellectual property (IP) for startups. It notes that patents can provide the statutory right to exclude others from an invention for a limited time, in exchange for publicly disclosing the invention. While some view patents skeptically, the document explains that technology giants like Google and Facebook actively pursue patents to protect their innovations from lawsuits. It advises startups to consult a patent attorney and avoid common mistakes like publicly disclosing an idea before filing a patent or relying only on a provisional patent application.
How To Protect Your Company's Intellectual PropertySecureDocs
This presentation covers cost-effective patent protection for inventions worldwide and protection tactics for unpatented trade secrets. It also gives a compelling argument for why companies should go against the status quo when filing for patents which can help save money and speed up the total patenting process.
Knobbe Martens attorneys Russell Jeide and Scott Cromar presented “Why is Intellectual Property Important?” at a Temecula Valley Entrepreneur’s Exchange (TVE2) event. The presentation was focused on the importance of IP to entrepreneurs and new businesses, and was part of an all-day event celebrating TVE2’s two year anniversary. The event was called “Innovate. Grow. Connect.”
The document summarizes various intellectual property news items, including a report finding waste and mismanagement at the Patent Trial and Appeal Board due to unused paralegals, a potential $6 million malpractice suit over an incorrectly claimed bra insert patent, the upcoming vote on Scottish independence and its potential intellectual property implications, the USPTO pulling patent allowances in view of the Alice decision, and upcoming intellectual property events.
It is focused to provide basic knowledge on prior art search for new intellectuals in the field of IPR. It includes Basic knowledge of Prior art, File wrapper analysis, not list preparation, and one of the important law of Prior Art.
San Diego Partner Boris Zelkind presented on the Defend Trade Secrets Act (DTSA) to the San Diego Intellectual Property Law Association.
These slides are intended to convey information and should not be regarded as legal advice. No attorney-client relationship is formed through the viewing of these slides. Should you have questions regarding the topics covered in these slides or require legal advice regarding a specific matter, please contact the presenter or another attorney.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar will host a free seminar series on intellectual property basics for Temecula’s business community. This interactive and practical series will provide a basic overview of patents, copyrights and trademarks, while also answering questions about preparing patent applications and how to file for a patent. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from these classes.
WHO: Knobbe Martens, one of the largest intellectual property firms in the United States, in conjunction with the Temecula Valley Entrepreneur’s Exchange will host this series.
SPEAKERS: Jeide specializes in several areas of intellectual property law, including patent prosecution, legal opinion work and licensing. Cromar focuses on IP counseling and patent preparation and prosecution.
COST: Classes are free and open to the public. However, seating is limited so please RSVP via the following link: http://tve2ipbasicsseries.eventbrite.com/.
This document discusses patents and intellectual property. It covers basic patent law, the patent system, types of patents including utility patents, design patents and plant patents. It discusses requirements for patents including that inventions must be novel, useful and non-obvious. It provides examples of patented inventions and discusses patent law in the United States. It also discusses patents for software and intellectual property rights as they relate to software.
The document summarizes the utilization of the patent system in Zimbabwe. It defines a patent and outlines the background and role of the patent system in Zimbabwe. Statistics show that most patents granted in Zimbabwe go to foreigners rather than locals. This is likely due to a lack of awareness, investment in R&D, and a national IP policy. The document recommends increasing funding for R&D, improving industry partnerships, promoting IP awareness, and establishing a patent licensing center to increase local patenting.
FUNAMENTALS OF INTELLECTUAL PROPERTY IN SPECIFIC TO PATENTS AND PROTECTION OF SOFTWARE BASED INVENTIONS AND THE LEGAL POSITION IN SOFTWARE PROTECTION AS AN EDUCATIVE APPROACH WERE DISCUSSED.
Knobbe Martens’ patent attorneys Russell Jeide and Scott Cromar hosted a seminar series on intellectual property basics for Temecula’s business community. Entrepreneurs, investors, startups, inventors and anyone interested in learning how intellectual property and patents can help their business will benefit from this presentation.
The document provides information about the patenting system in India. It defines what a patent and invention are, explains the criteria for patenting including novelty, inventive step, and industrial application. It describes the patenting process in India, including who can apply, where to apply, fees, and the stages from filing to grant of a patent. It also discusses what is not patentable in India and provides examples of patent infringement cases like Apple vs Samsung and Novartis' patent plea.
This document discusses different types of intellectual property protection including copyrights, patents, and trademarks. Copyright protects original creative works and applies to artists, musicians, and authors automatically. Patents protect novel inventions for 20 years and must demonstrate they are unique, inventive, and can be applied industrially. Trademarks distinguish brands through logos, names, and sounds, protecting them for 10 years. Examples are provided of companies that benefit from each type, like brands benefiting from trademarks, and technologies from patents. The goal is for learners to understand these protections and why businesses use them.
Architectural styles and patterns provide abstract frameworks for structuring systems and solving common problems. [1] An architectural style defines rules for how components interact and is characterized by aspects like communication, deployment, structure, and domain. [2] Examples include service-oriented architecture, client/server, and layered architecture. [3] Similarly, architectural patterns are reusable solutions to recurring design problems documented with elements, relationships, constraints, and interaction mechanisms.
Tom Hutchinson "Practical Intellectual Property"Jane Lambert
This is the second presentation in IP North West's seminar on IP law on 12 Oct 2011. This talk was presented by patent agent, Tom Hutchinson, principal of Hutchinson IP. In his talk, Tom considers "What is IP", "Why it is important?", "Types of IP", "Patent Attorneys" and "Tom's Top Tips". Tom is particularly well qualified to talk to FabLab because he researched additive manufacturing technology before he became a patent agent.
Mr. Prem Patil prepared this document on patents under the guidance of Mrs. Swati Gupta at Apeejay Stya University in Sohna. The document discusses intellectual property rights including patents, designs, trademarks, and copyright. It defines what constitutes an invention and provides an overview of the history of patents. The stages to obtain a patent including filing, examination, grant or withdrawal are outlined. The document also discusses who benefits from patents, the rights they provide, and the importance and limitations of patent information.
The document discusses the Indian Patent Act of 1970, which governs the granting of patents in India and provides intellectual property protections for inventions. Key aspects covered include the requirements for an invention to be patentable, the types of patents granted, procedures for obtaining and renewing a patent, rights of a patentee, and exclusions from patentability. The patent system aims to reward inventors while ensuring availability of inventions for public use.
The document discusses various design patterns categorized as creational, structural, and behavioral patterns. It provides examples of each pattern in Java code including factories, builders, singletons, decorators, observers, strategies, and more. Each pattern is defined as focusing on object creation, composition, or interaction and collaboration between objects. Specific Java classes, methods, and APIs demonstrating different patterns are listed.
The document discusses qualitative coding and memo writing. It provides an overview of coding approaches like descriptive, in vivo, and pattern coding. Codes are short phrases that symbolically represent portions of data. Memos are written reflections on codes, their relationships, and emerging ideas. The document emphasizes that coding and memo writing are iterative, cyclical processes to develop categories and analyze their connections for qualitative research.
This memorandum from Morris, Manning & Martin addresses common questions about patents from technology and business clients. It discusses why companies should consider filing patent applications, including to protect against competitors and add value. It also covers when to begin the patent process, the differences between provisional and non-provisional applications, typical timelines and costs for patent applications, and other issues like international protection and determining patentability.
This document provides an overview of patents, intellectual property, and the patent application process. It defines a patent and explains that it gives the owner legal rights to exclude others from making, using, selling, or importing an invention for a limited time (usually 20 years). It outlines the conditions an invention must meet to be patentable, including novelty, non-obviousness, and usefulness. It also describes essential elements of a patent like claims, descriptions, drawings, and fees. Guidelines are provided for conducting patent searches and properly documenting research in a laboratory notebook to support patent applications.
The document discusses various intellectual property protections including patents, trademarks, designs, and copyright. It focuses on patents, explaining that patents provide exclusivity over an invention for a limited time. To be patentable, an invention must be novel, non-obvious, and sufficiently disclosed. The document provides tips for startups on developing a filing strategy, determining ownership of inventions, and managing costs associated with patent prosecution.
Traklight Webinar with Shane Olafson and Kyle Siegal on Patent Dos and Don'ts...Traklight.com
A discussion of patent tips for startups, including:
- Carefully allocating precious startup funding
- Properly limiting disclosure of new products and concepts
- Understanding patent application timelines
- Knowing when a provisional application may be appropriate
Finding Patent and Trademark Information for Chemistry (part 1)John Meier
This document provides information on finding and understanding intellectual property in chemistry. It defines the four main types of intellectual property - patents, copyrights, trademarks, and trade secrets. For patents, it describes the different types (utility, design, plant), application process, costs, and parts of a patent. It also discusses novelty, priority dates, and "prophetic" patents. The document recommends databases and search strategies for finding patents, and resources available through the Patent and Trademark Resource Center.
Intellectual Property Information for Postgraduate students by Philip Hoekstrapvhead123
The document discusses Research Contracts & Intellectual Property Services (RCIPS) at a university. It provides an overview of RCIPS, its organizational structure, and the various forms of intellectual property (IP) and methods of protecting IP. Key types of IP discussed include patents, trademarks, copyright, and designs. The document outlines the patenting process, costs involved, and how the university assists with patenting inventions by its researchers and post-graduates. Maintaining confidentiality during the patenting process is also addressed.
This document provides an overview of intellectual property rights (IPR) in India. It discusses the main types of IPR which include patents, designs, trademarks, and copyrights. Patents protect inventions and last for 20 years. Design protection lasts for 5 years and can be renewed twice. Trademarks protect brands indefinitely if renewed. Copyright protects artistic and literary works for the life of the creator plus 70 years. The document outlines the patent filing process in India and enforcement actions that can be taken against intellectual property infringement.
Patents and intellectual property patent disclosure.gidla vinay
This document provides an overview of the patent disclosure process. It discusses the different types of intellectual property including patents, trademarks, trade secrets, and copyrights. It then describes the steps to prepare a patent disclosure, including formulating a strategy, studying prior art, outlining claims, writing the specification, refining claims, and pursuing the application. Guidelines are provided for each step, with examples of patents and claims. The purpose is to educate about effectively obtaining patent protection for new inventions.
This document provides a brief overview of US utility patent law and the patenting process. It discusses the different types of patents including design, plant, and utility patents. It describes the basic patenting timeline including filing a provisional or non-provisional patent application and undergoing examination. Key concepts like patentability requirements of utility, novelty, and non-obviousness are introduced. Cost estimates and strategies for obtaining and enforcing a patent are also summarized.
The document discusses intellectual property rights, specifically patent searching processes and ownership rights. It provides an overview of the patent application process, including conducting a prior art search, preparing and filing an application, examination by the patent office, and office actions requiring amendments. It also outlines several methods and resources for conducting prior art patent searches, such as using USPTO databases and classifications, commercial search services, and the patent depository libraries.
Inventing 101- Protecting the rights to your inventionHovey Williams LLP
This document provides an overview and summary of an "Inventing 101" presentation about developing and protecting inventions. It discusses the different types of intellectual property including patents, copyrights, trademarks, and trade secrets. For patents, it covers the basic requirements, types of patentable subject matter, the examination process, and costs associated with obtaining a patent. It provides guidance on developing an invention through prototyping, testing, and market research. It also discusses the importance of properly disclosing an invention through an invention disclosure form.
The document provides an introduction to patent law, including:
1) A patent is a legal document issued by a government that grants the right to prohibit others from making, using, or selling a claimed invention for a limited time in exchange for publicly disclosing the invention details.
2) The purpose of patent law is to promote science and useful arts by securing exclusive rights to authors and inventors for limited times.
3) Inventors seek patent protection for both offensive and defensive strategies related to investment, revenue, market protection, and preventing competitor patents.
Patent prosecution, process and pitfalls by Benjamin Kuo (Wed, August 22, 2018)L15A
On Wed, August 22, 2018 Benjamin Kuo presented Intellectual Property "Patent Prosecution, Process and Pitfalls" CRASH Space.
https://blog.crashspace.org/events/intellectual-property-topics/
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Patent Prosecution, Process and Pitfalls
Eventually, every inventor is confronted with the decision to protect his technology by ways of a utility patent. Understanding the magnitude of the undertaking as well as the process and pitfalls involved can greatly reduce costs and (worse) avoid obtaining a useless patent.
In this talk, given by a patent attorney and former USPTO Examiner, the informed inventor will learn to distinguish patents from other forms of intellectual property, how to read a patent disclosure, the patent prosecution process and timeline, decide when and what to file, inner workings of the PTO black box, and how to find and work with a patent attorney.
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About the Presenter
Benjamin Kuo is a patent attorney and former computer engineer with a solo IP practice based in Los Angeles, specializing in helping smaller entities obtain IP protection. In addition to patent filings, he also supports litigation and consults with practitioners on Patent and Trademark Office issues. Before forming his own practice, he was a patent examiner for the USPTO, examining hundreds of computer networking applications and conducting numerous interviews with outside attorneys. Before working at the USPTO, he practiced at various law firms in the fields of patent prosecution, IP litigation, antitrust litigation, and federal corrupt practices act investigations. He is fluent in Mandarin Chinese and is licensed in California and before the USPTO. See more at benasaur.com/law.
This document provides an introduction to various forms of intellectual property protection including patents, trademarks, industrial designs, copyrights, and trade secrets. It discusses what constitutes a patent, including the requirements that an invention be new, useful, patentable subject matter, and unobvious. The document outlines the patent application process and components. It provides examples of published patent applications and discusses drafting patent claims. Additionally, it suggests useful resources for intellectual property information and stresses the importance of developing an intellectual property strategy.
This document summarizes the key differences between the three main post-grant review procedures available at the USPTO: Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method (CBM) review. It outlines who can file each type of petition, the applicable validity grounds and standards, estoppel effects, and timelines. The document also provides an overview of the IPR process, including strategies for petitioners and patent owners, and considerations regarding expert testimony, motions to stay litigation, and evaluating claims to challenge.
startup founders delimma to patent or not to patentRegal Beloit
Many startup founder face this question atleast once "Should they patent their products and technology or not? Is it that important? What if you don't patent? Are there other shortcuts? This article delve deeper in to this matter.
Want to Apply For a Patent in the USA? Patent Process OverviewPatent ServicesUSA
People who are trying to create something original and useful for the community always require a patent for their invention. It prevents others from copying or stealing the idea from an individual. Applying for a patent is often a long and complicated procedure, but Patent Services USA helps to break it into a five-step approach. In simpler terms, a patent is a type of monopoly grand given by the government to the inventor for a specific period.
It also provides exclusive rights to manufacture, sell, use, or benefit from the invention. A patent ensures that no one can steal a unique design or idea. The following section of this article illustrates the different steps involved in filing a patent. Most inventors hire patent attorneys, but it is always beneficial for inventors to have complete knowledge of protecting their unique ideas or designs.
The document discusses the foundation of patent law. It covers the different types of patents including utility patents, design patents, and plant patents. It explains that a patent is a legal right granted by the government that allows the owner to prevent others from making, using, or selling the invention. It also outlines the requirements for an invention to be patentable, including that it must be useful, novel, and non-obvious. Finally, it discusses factors considered in determining if an invention is non-obvious like analogous prior art, the level of ordinary skill in the art, and secondary considerations.
Sudheer Mechineni, Head of Application Frameworks, Standard Chartered Bank
Discover how Standard Chartered Bank harnessed the power of Neo4j to transform complex data access challenges into a dynamic, scalable graph database solution. This keynote will cover their journey from initial adoption to deploying a fully automated, enterprise-grade causal cluster, highlighting key strategies for modelling organisational changes and ensuring robust disaster recovery. Learn how these innovations have not only enhanced Standard Chartered Bank’s data infrastructure but also positioned them as pioneers in the banking sector’s adoption of graph technology.
Cosa hanno in comune un mattoncino Lego e la backdoor XZ?Speck&Tech
ABSTRACT: A prima vista, un mattoncino Lego e la backdoor XZ potrebbero avere in comune il fatto di essere entrambi blocchi di costruzione, o dipendenze di progetti creativi e software. La realtà è che un mattoncino Lego e il caso della backdoor XZ hanno molto di più di tutto ciò in comune.
Partecipate alla presentazione per immergervi in una storia di interoperabilità, standard e formati aperti, per poi discutere del ruolo importante che i contributori hanno in una comunità open source sostenibile.
BIO: Sostenitrice del software libero e dei formati standard e aperti. È stata un membro attivo dei progetti Fedora e openSUSE e ha co-fondato l'Associazione LibreItalia dove è stata coinvolta in diversi eventi, migrazioni e formazione relativi a LibreOffice. In precedenza ha lavorato a migrazioni e corsi di formazione su LibreOffice per diverse amministrazioni pubbliche e privati. Da gennaio 2020 lavora in SUSE come Software Release Engineer per Uyuni e SUSE Manager e quando non segue la sua passione per i computer e per Geeko coltiva la sua curiosità per l'astronomia (da cui deriva il suo nickname deneb_alpha).
How to Get CNIC Information System with Paksim Ga.pptxdanishmna97
Pakdata Cf is a groundbreaking system designed to streamline and facilitate access to CNIC information. This innovative platform leverages advanced technology to provide users with efficient and secure access to their CNIC details.
Removing Uninteresting Bytes in Software FuzzingAftab Hussain
Imagine a world where software fuzzing, the process of mutating bytes in test seeds to uncover hidden and erroneous program behaviors, becomes faster and more effective. A lot depends on the initial seeds, which can significantly dictate the trajectory of a fuzzing campaign, particularly in terms of how long it takes to uncover interesting behaviour in your code. We introduce DIAR, a technique designed to speedup fuzzing campaigns by pinpointing and eliminating those uninteresting bytes in the seeds. Picture this: instead of wasting valuable resources on meaningless mutations in large, bloated seeds, DIAR removes the unnecessary bytes, streamlining the entire process.
In this work, we equipped AFL, a popular fuzzer, with DIAR and examined two critical Linux libraries -- Libxml's xmllint, a tool for parsing xml documents, and Binutil's readelf, an essential debugging and security analysis command-line tool used to display detailed information about ELF (Executable and Linkable Format). Our preliminary results show that AFL+DIAR does not only discover new paths more quickly but also achieves higher coverage overall. This work thus showcases how starting with lean and optimized seeds can lead to faster, more comprehensive fuzzing campaigns -- and DIAR helps you find such seeds.
- These are slides of the talk given at IEEE International Conference on Software Testing Verification and Validation Workshop, ICSTW 2022.
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Enchancing adoption of Open Source Libraries. A case study on Albumentations.AIVladimir Iglovikov, Ph.D.
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- https://www.linkedin.com/in/iglovikov/
- https://x.com/viglovikov
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Created out of a necessity for superior performance in Kaggle competitions, Albumentations has grown to become a widely used tool among data scientists and machine learning practitioners.
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People: The contributors and community that have supported Albumentations.
Metrics: The success indicators such as downloads, daily active users, GitHub stars, and financial contributions.
Challenges: The hurdles in monetizing open-source projects and measuring user engagement.
Development Practices: Best practices for creating, maintaining, and scaling open-source libraries, including code hygiene, CI/CD, and fast iteration.
Community Building: Strategies for making adoption easy, iterating quickly, and fostering a vibrant, engaged community.
Marketing: Both online and offline marketing tactics, focusing on real, impactful interactions and collaborations.
Mental Health: Maintaining balance and not feeling pressured by user demands.
Key insights include the importance of automation, making the adoption process seamless, and leveraging offline interactions for marketing. The presentation also emphasizes the need for continuous small improvements and building a friendly, inclusive community that contributes to the project's growth.
Vladimir Iglovikov brings his extensive experience as a Kaggle Grandmaster, ex-Staff ML Engineer at Lyft, sharing valuable lessons and practical advice for anyone looking to enhance the adoption of their open-source projects.
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Website: https://albumentations.ai/
LinkedIn: https://www.linkedin.com/company/100504475
Twitter: https://x.com/albumentations
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2. Disclaimer
The information provided in this presentation should
not be construed as legal advice or legal opinion
regarding any specific facts or circumstances, but is
intended for general informational purposes only.
4/3/2015GettingthePatent
3. Scope
• While just about every industrialized nation in
the world has a patent system, this
presentation will only discuss getting a patent
in the U.S.
• If you have any specific questions, go ahead
and send an email and I’ll do my best to
respond.
4/3/2015GettingthePatent
4. The Talent:
Attorneys & Agents
• Both have passed the Patent Bar Exam and
have the necessary technical background.
• Patent attorneys have also passed a state
bar exam and can practice law in at least one
state.
4/3/2015GettingthePatent
5. Patent Definition
A patent is a limited-duration intangible
property right that allows one to prevent
others from making, using, or selling the
patented invention in the United States.
4/3/2015GettingthePatent
6. Patent Disclosure Requirements
• Written Description: all claims must find adequate
“support” in the originally filed patent application (including a
provisional patent application).
• Enablement: The applicant must describe how to make and
use the invention as to permit any person skilled in the art of
the invention to do so without undue experimentation.
• Best Mode: The best way known to the inventor on the
application’s filing date of carrying out the invention.
Source: http://www.uspto.gov/web/offices/pac/mpep/s2161.html
4/3/2015GettingthePatent
7. Prior Art: 35 U.S.C. §102
(a) Novelty; Prior Art.— A person shall be entitled to
a patent unless—
the claimed invention was patented, described in a printed publication,
or in public use, on sale, or otherwise available to the public before the
effective filing date of the claimed invention;
…
(b) Exceptions.—
Disclosures made 1 year or less before the effective filing date of the
claimed invention.
…
4/3/2015GettingthePatent
8. Claim Explained
• A Claim is a sentence that defines the boundary
of an invention and thus the scope of patent
protection.
• Claims are often compared to property lines
because both define an area from which others
may be excluded.
4/3/2015GettingthePatent
Source: http://www.tms.org/pubs/journals/jom/matters/matters-9511.html
9. Sample Claim: Shovel
1. A shovel comprising:
an elongated handle having a first end and a second
end; and
a shovel head;
wherein the shovel head is attached to the first end of
the elongated handle.
2. The shovel of claim 1, wherein the shovel head is
comprised of a metal.
4/3/2015GettingthePatent
Source: http://www.ipwatchdog.com/2013/05/25/patent-claim-drafting-101-the-basics/id=40886/
11. Utility Patent
• By far, the most typical – comprising about 90% of the
patents issued by the USPTO in recent years.
• Granted for the invention of a new and useful process,
machine, manufacture, or composition of matter, or a new
and useful improvement thereof.
• Generally permits its owner to exclude others from making,
using, or selling the invention for a period of up to twenty
years from the date of patent application filing, subject to
the payment of maintenance fees.
http://www.uspto.gov/web/offices/ac/ido/oeip/taf/patdesc.htm
4/3/2015GettingthePatent
12. Plant Patent
• Granted for a new and distinct, invented or discovered
asexually reproduced plant including cultivated sports,
mutants, hybrids, and newly found seedlings, other than a
tuber propagated plant or a plant found in an uncultivated
state.
• It permits its owner to exclude others from making, using, or
selling the plant for a period of up to twenty years from the
date of patent application filing.
• Plant patents are not subject to the payment of maintenance
fees.
4/3/2015GettingthePatent
Source: http://www.uspto.gov/web/offices/ac/ido/oeip/taf/patdesc.htm
13. Design Patent
• Issued for a new, original, and ornamental design embodied
in or applied to an article of manufacture.
• It permits its owner to exclude others from making, using, or
selling the design for a period of fourteen years from the
date of patent grant.
• Copyright and trademark rights may also be secured on the
same design.
• Design patents are not subject to the payment of
maintenance fees.
Source: http://www.uspto.gov/web/offices/ac/ido/oeip/taf/patdesc.htm
http://www.uspto.gov/web/offices/pac/mpep/s1512.html
4/3/2015GettingthePatent
14. Provisional Patent
• Provides the means to establish an early effective filing date in a later filed
nonprovisional patent application.
• Allows an inventor to file without a formal patent claim, oath or declaration, or
any information disclosure (prior art) statement.
• Has a pendency lasting 12 months from the date the provisional application is
filed.
• Allows the term "Patent Pending" to be applied in connection with the
description of the invention.
• HOWEVER, PROVISIONAL PATENTS MUST STILL MEET ALL THE
DISCLOSURE REQUIREMENTS.
Source: http://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-
patent
4/3/2015GettingthePatent
15. Getting The Patent
1. Conception of the invention
2. Reduction to practice
3. Preparation of the patent application
4. Filing the patent application with appropriate filing fees
5. Responding to U.S. Patent Office
6. Notice of allowance / grant
7. Periodic payment of patent maintenance fees
Inventor(s)
Patent
Prosecutor
4/3/2015GettingthePatent
16. What is an Office Action?
• An office action is a letter from a Patent Examiner setting
forth the current status of a patent application.
• The first (non-final) office action usually contains reasons for
any rejection/objection or additional requirements.
• After receiving a response (amendment) from the applicant,
the examiner sends a second (final) office action, notifying
the applicant of the status.
• If the none of the claims are allowed, the process can be
continued with another fee.
4/3/2015GettingthePatent
Source: http://www.bitlaw.com/patent/prosecution.html
17. Sample Patent Application Timeline
Event Months from Filing
Date
Provisional Application Filing 0
Non-Provisional Application Filing < 12
1st Office Action Received ~ 18
Publication of Application 18
Issue of Patent 36?
4/3/2015GettingthePatent
18. Preparation & Prosecution
Cost of a Utility Patent
Original Application: Minimal Complexity $6,500
Provisional Application 3,500
Original Application: Relatively Complex - Biotech/Chemical 10,000
Original Application: Relatively Complex - Electrical/Computer 10,000
Original Application: Relatively Complex – Mechanical 8,500
Amendment: Minimal Complexity 1,800
Amendment: Relatively Complex - Biotech/Chemical 3,000
Amendment: Relatively Complex - Electrical/Computer 3,000
Amendment: Relatively Complex – Mechanical 2,500
Source: American Intellectual Property Law Association. REPORT OF THE ECONOMIC SURVEY 2013
4/3/2015GettingthePatent
19. Typical USPTO Patent Fees
• Filing Fee: the cost to have your invention "examined“ by
the USPTO one time.
• Request for Continued Examination (RCE) Fee: the cost
to have your invention "examined“ by the USPTO an
additional time.
• Issue Fee: the cost to paid to the USPTO, after an
application is allowed.
• Maintenance Fees (paid at 3 1/2, 7 1/2, and 11 1/2 years
after the patent is granted) to "maintain" the patent’s legal
protection.
Source: http://www.uspto.gov/learning-and-resources/fees-and-payment/fees-payments-faqs
4/3/2015GettingthePatent
20. USPTO Fees
(Provisional & Utility)
Fee Small Entity Fee Micro Entity
Fee
Basic Filing Fee $280 $140 / $70* $70
Provisional Filing Fee 260 130 65
Utility issue fee 960 480 240
Request for Continued Application (1
st
) 1200 600 300
Request for Continued Application
(subsequent)
1700 850 425
Maintenance Fee:
Due at 3.5 years 1,600 800 400
Due at 7.5 years 3,600 1,800 900
Due at 11.5 years 7,400 3,700 1,850
Last Revised on March 1, 2015
Source: http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule
* Non-electronic Filing
4/3/2015GettingthePatent
21. Tips
1. Be Suspicious
2. Interview the Actual Person Doing The Work
3. Get An Estimate
4. Avoid Being “Nickeled and Dimed”
5. See The Real Track Record
6. Watch the Up Sell
7. Ask for a Very Narrow Claim
8. Consider Getting An In House Patent Resource
4/3/2015GettingthePatent
22. Tip #1: Be Suspicious
• It’s a bit like dating – what looks great at first
may end up being…well, not so great.
• Act dumb regarding patents. Listen for
inconsistencies.
• Does the office look too nice – someone has
to pay for it.
4/3/2015GettingthePatent
23. Tip #2: Interview the Actual Person
Doing The Work
• The person managing the client (i.e., you) may not
be the person doing the actual work – or at least
most of the work. Let’s call that person the “Worker
Bee.”
• Ask the Worker Bee about his or her:
Education
Patent Experience
Familiarity With Your Technology
Current Workload
4/3/2015GettingthePatent
24. Tip #3: Get An Estimate
• When you ask for an estimate – you may get a lot of
“hemming and hawing”. While it is true that its hard to
give a fixed number – getting a reasonable range
should not be that hard.
• Mention the typical fees in the survey by the American
Intellectual Property Law Association. This will anchor
the discussion around a published range – forcing the
firm to justify different numbers.
4/3/2015GettingthePatent
25. Tip #4: Avoid Being “Nickeled and
Dimed”
• Unless you’re lucky enough to negotiate a fixed fee
arrangement, you’re being charged by the hour (or
rather by the minute).
• Don’t be afraid of asking if you are on the clock. If
unsure, assume you are.
• Keep phone calls and emails to a minimum.
• Request to not to be sent formal cover letters that
summarize (or restate) official USPTO
correspondence.
4/3/2015GettingthePatent
26. Tip #5: See The Real Track Record
• Information regarding patent application status is available on the
USPTO website in the Patent Application Information Retrieval
system, or PAIR.
• Public PAIR has all the correspondence to and from the Patent
Office for issued patents and published applications.
• Ask for list of issued patents prosecuted by the firm, and then
look up the transaction history of each in Public Pair.
• See how many continuations were filed per patent. This will give
you a rough sense of real productivity and your final cost to get
the patent issued.
4/3/2015GettingthePatent
27. Tip #6: Watch the Up Sell
If you ask some who gets paid to write patents,
whether you should get a patent, the answer will
almost always be yes.
It’s like asking an alcoholic if he or she wants a
drink. That is, there is a vested interest in a positive
response.
4/3/2015GettingthePatent
28. Tip #7: Ask for a Very Narrow Claim
• Good patent prosecutors will draft both broad and
narrow claims, since you’re never sure what will be
granted.
• However, it’s also a good idea to draft a very
narrow, virtually non-infringeable claim. Why:
management (and the VCs) will be pleased to get
something allowed relatively quickly; and
in litigation, so long as at least one claim survives, the
patent survives, and so does any associated licensing
revenue.
4/3/2015GettingthePatent
29. Tip #8 Consider Getting An
In House Patent Resource
• If patents are a core part of your business strategy, consider
hiring a patent agent or attorney. It can be cost-effective in
the long run.
• Agents tend to be less expensive, but they only can do
patent prosecution.
• Attorneys tend to be relatively more expensive, but if you
hire carefully, you also get legal capabilities, such as
drafting & negotiating agreements, managing NDAs, venture
fund-raising, etc.
4/3/2015GettingthePatent
30. THANK YOU
I’d love to hear from you.
Send comments, suggestions, or
questions to patent@pobox.com.
4/3/2015GettingthePatent
Editor's Notes
I’ve often thought that picking someone to write your patent is like picking a mechanic to fix your car. Unless you know something about patents (or cars) – you don’t know what you’ve bought until a long time after you have paid.
Patents are expensive, very expensive. You may end up paying $20K in costs (to the prosecutor) and fees (to the government) after all is said and done.
So, it literally PAYS to do your homework.
My name is Alex Sousa, and I started writing patents over 12 years ago – first at a law firm, and then as an attorney for two startups in Silicon Valley.
I’m admitted to practice in California & the USPTO.
I have a B.S. in Mechanical Engineering, and MBA, and a JD.
This presentation includes tips derived from my experience, as well as a primer on patents and the process for getting patents.
Patents live at the intersection of science and law, which can be intimidating.
So, I’ll try to minimize the jargon whenever I can.
And so, let’s get started with Getting the Patent / Choosing the Talent.
No legal presentation would be complete without a disclaimer, and so here it…
The information provided in this presentation should not be construed as legal advice or legal opinion regarding any specific facts or circumstances, but is intended for general informational purposes only.
While just about every industrialized nation in the world has a patent system, this presentation will only discuss getting a patent in the U.S.
If you have any specific questions, go ahead and send an email and I’ll do my best to respond.
The Talent
In the patent biz, the person who prepares your patent application is called a patent prosecutor.
Prosecution just means moving the process forward.
To become a patent prosecutor, you have to pass the patent bar exam. But the exam is not really about writing a patent (that is, patent preparation).
Rather , it’s a multiple choice exam that tests the rules and procedures of practice at the patent office.
The way you learn to be a patent prosecutor is the way you learn just about any other skilled trade – you basically apprentice with someone who knows what they’re doing - and it can take a while to become a good one.
Patent prosecutors come in two flavors: patent agents and patent attorneys.
A “Patent Agent” someone who has passed the Patent Bar Exam but isn’t a lawyer.
In contrast, a “Patent Attorney” is an attorney who has passed the Patent Bar exam.
As far a prosecuting a patent is concerned there is no difference. But if you want to license a patent or sue somebody, you need a lawyer for that.
Before I studied for the patent exam, I had heard about patents, be never really know what they were.
So here it is, the text-book definition of a patent:
a limited-duration intangible property right that allows one to prevent others from making, using, or selling the patented invention in the United States.
In other words, a patent is a negative right, not a positive privilege. It doesn’t allow you do anything. It allows you to stop someone else from making, using, or selling the thing you got a patent on.
Here is a simple example illustrate the point.
Let’s say you where lucky enough to be issued a patent that claims a chair with four or more legs. You could then prevent someone else from making a chair with five legs.
However, if someone else, luckier than you, received a patent for a chair with 3 or more legs, they would be able to stop you.
Patents have been around for a long time. In fact, they’re mentioned the US Constitution. It can be found in Article I, Section 8, Clause 8.
The whole reason for having patents is to benefit the public. And so, to encourage inventors to reveal their inventions, they are granted the right to prevent others from practicing the invention for a limited time, roughly 20 years from the filing date.
Revealing the invention means that the inventor must disclose the WHAT and the HOW.
By the way, sometimes I use the word inventor and sometime I use applicant. The applicant is the person “applying” for the patent. Sometimes they’re the same person, sometimes not. For example, an inventor may have assigned the invention to his or her employer. In that case, the employer is the applicant.
The “WHAT” called the “Written Description”, requires that all claims must find adequate “support” in the originally filed patent application. I’ll discuss claims in the next slide.
The “HOW” has two parts, the first is called “Enablement” and the second is called “Best Mode.”
Enablement means that the applicant must describe how to make and use the invention as to permit any person skilled in the art of the invention to do so without undue experimentation.
Best Mode means that the applicant must describe the best way known to the inventor on the application’s filing date of carrying out the invention.
Patent folks refer to these requirements by their location in the United States Code: 35 USC. 112, 1st paragraph.
Under 35 U.S.C section 102, an invention has to be novel in order to be granted a patent. That is, it can’t have already been patented, or available to the public, prior to the effective filing date of the invention. This is called prior art.
However, there is an exception, that only exists in the United States, regarding prior disclosures by the inventor.
If a public disclosure was made less than one year before the effective filing date, that disclosure cannot be used as prior art against the invention.
However, the same disclosure would terminate any foreign patent rights.
The most distinguishing characteristic of a patent is probably the claim.
A claim is a sentence that defines the boundary of an invention and thus the scope of patent protection.
Claims are often compared to property lines because both define an area from which others may be excluded.
Claim scope lies on a spectrum
from broad – excluding others from a relatively large intellectual property area
to narrow – excluding others from a relatively small intellectual property area.
Here are two simple claims for a shovel
The first one is an independent claim. That is, it does not depend on any other claim.
The second one is a dependent claim since it depends, and further narrows, the first claim.
Claim 1. A shovel comprising:
an elongated handle having a first end and a second end; and
a shovel head;
wherein the shovel head is attached to the first end of the elongated handle.
Claim 2. The shovel of claim 1, wherein the shovel head is comprised of a metal.
There are basically 4 types of patents - 3 substantive and 1 procedural.
The substantive types are Utility, Design, & Plant
The procedural type is a Provisional
I will briefly explain each.
By far, utility patents are the most typical – comprising about 90% of the patents issued by the USPTO in recent years
A Utility patent is granted for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof
And they have a period of exclusivity of up to twenty years from the filing date, subject to the payment of maintenance fees
If you’ve never seen one, I encourage you to go to the USPTO website, or better yet to Google Patents, and search for patents in areas that you are interested in.
A plant patent is granted for a new and distinct, invented or discovered asexually reproduced plant including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state
Like a utility patent, they have a period of exclusivity of up to twenty years from the filing date.
However, plant patents are not subject to the payment of maintenance fees
A Design Patent is issued for a new, original, and ornamental design embodied in or applied to an article of manufacture.
It can be very powerful, particular when combined with Copyright and Trademark rights on the same design.
In fact, as of the date of this video, much of the ongoing lawsuits regarding the design of smartphones and tablet computers between Apple and Samsung center around Design Patents.
A Design Patent permits its owner to exclude others from making, using, or selling the design for a period of fourteen years from the date of patent grant.
And unlike utility and plant patents, a design patent is not subject to the payment of maintenance fees.
In order to be granted, a patent application requires the written disclosure that I just talked about, as well as a set of claims, an oath or declaration, and a statement of any prior art that the applicant is aware of. We call this a non-provisional patent application.
However, the Patent Office has provided a way to file informally. An initial application can be filed with just the invention disclosure, in just about any format: PowerPoint, a research paper, reams of data, etc. This initial filing is called a Provisional Patent application.
So long as within 12 months, the applicant files another application, referencing the first one, that also includes a set of claims, oath or declaration, and a prior art statement, the later non-provisional application gets the filing date of the provisional application.
A Provisional application can be filed for any patent type (Utility, Plant, or Design), although I’ve only seen Provisional Utility applications filed.
Once filed, the term "Patent Pending" can be applied in connection with the description of the invention.
But here’s the problem - you may end up submitting too little or too much.
If you missed something in the invention disclosure when you initially filed, you’re out of luck.
You can’t add new material after you submit the provisional application and expect to get the same filing date.
But the opposite problem is true too. The inventor cannot prevent the public from using any information disclosed by not claimed. It may have been better strategy to keep this information secret (think the Coca Cola recipe) which can then be protected indefinitely.
My advice, if you can, is to take the time to properly prepare, or better yet, have a professional prepare, the patent application.
If doing a proper patent application is not an option - say you’re presenting at a conference or meeting with a VC and there’s no time to properly file - try to be as reasonably complete as possible. If you know you want to keep something as a secret, like a specific recipe, consider not disclosing it. However, if you are not sure, my recommendation is to just include it to be on the safe side.
Here’s the general process for getting patent
Initially, there’s the “Aha” moment, called “Conception of the invention”. This is when the proverbial “Apple hits you on the head”
Next, you have to figure out how to do or make the invention. This is called the “Reduction to Practice.”
Then you start preparing the patent application – normally with patent prosecutor who sits down with you and takes notes while you explain the invention.
When the application is ready to go, it gets filed at the Patent Office with the appropriate fees.
Next comes the dance where the patent office and the prosecutor negotiate with each other to try to get some of the claims allowed. The Patent Examiner sends office actions to the prosecutor, and the prosecutor responds with amendments.
Eventually, hopefully, a notice of Allowance is received. After the payment of a fee (of course), the patent is granted.
Every few years afterward, a maintenance fee has to be sent to the Patent to keep the patent alive.
An office action is a letter from a Patent Examiner setting forth the current status of a patent application.
The first (non-final) office action usually contains reasons for any rejection or objection, or for additional requirements. For example, sometimes the claims actually describe more than one invention. Since the filing fee only covers the examination of a single invention, the applicant will be asked to chose which invention (that is which subset of claims) on which to move forward.
After receiving a response (amendment) from the applicant, the examiner sends a second (final) office action, notifying the applicant of the status.
If none of the claims are allowed, the process can be continued - with another fee of course. This is referred to as a RCE or “request for continued evaluation” Sometimes, we use the shorthand of just “continuation”.
Here is a sample patent application timeline.
We’ll set the provisional application filing as month 0.
Within 12 months, a non-provisional application must be file, or the application goes abandoned.
In about 18 months, the 1st Office Action is received.
Also at 18 months, the patent application is published (unless you tell the Patent Office otherwise).
And then one day, hopefully, the patent issues. 36 months is a good rough estimate.
Here are some typical costs from a 2013 survey by American Intellectual Property Law Association.
Again
Application cost refers to the cost of preparing the patent application
+
Amendment cost refer to the cost to responding to office actions
Typical costs are about 3.5K for preparing a provisional application, 6.5 – 10K for preparing a utility patent, and about $3K for preparing an amendment.
When you get a estimate (or the final bill) it maybe lower or higher, and that’s OK. Your invention may be relatively simple, or horrendously complex.
However, if the cost is too much lower or too much higher though, be suspicious, as questions.
The USPTO is an entirely fee-funded agency.
Filing fee: the cost to have your invention "examined“ one time.
Request for continued examination (RCE) Fee: the cost to have your invention "examined“ an additional time.
Issue Fee: the cost to paid after an application is allowed, to issue the patent.
Maintenance fees (are paid at 3 1/2, 7 1/2, and 11 1/2 years after the patent is granted) to "maintain" the patent’s legal protection.
At the USPTO, the amount you pay is generally based on who you are.
You can file as a regular entity – that is , you pay “full freight” or
a small entity, approximately half the costs of a regular entity, or
a micro entity, approximately half the costs of a small entity
To qualify as a small entity, an applicant must:
- Be a (i) Person, (ii) Small business concern; or (iii) Nonprofit Organization; and,
- Not have assigned, granted, conveyed, or licensed … any rights in the invention.
To qualify as a micro entity, an applicant must
- Qualify as a small entity.
- Not be named on more than four previously filed applications.
- Not have a gross income more than three times the median household income in the previous year (roughly $50,054).
Here are my 8 Tips
Be Suspicious
Interview the Actual Person Doing The Work
Get An Estimate
Avoid Being “Nickeled and Dimed”
See The Real Track Record
Watch the Up Sell
Ask for a Very Narrow Claim
Consider Getting An In House Patent Resource
Tip #1: Be Suspicious
It’s a bit like dating – what looks great at first may end up being…well, not so great.
When speaking to a potential prosecutor, act dumb regarding patents. Have them explain the process and the costs. Now that you know a little bit about patents and the patenting process, listen for inconsistencies.
Tip #2: Interview the Actual Person Doing The Work
The person managing the client (i.e., you) may not be the person doing the actual work – or at least most of the work. Let’s call that person the “Worker Bee.”
Ask the Worker Bee about his or her:
Education
Patent Experience
Familiarity With Your Technology
Current Workload
Tip #3: Get An Estimate
Whenever you ask for an estimate – you may get a lot of “hemming and hawing”. While it is true that its hard to give a fixed number – getting a reasonable range should not be that hard.
Mention the typical fees in the survey by the American Intellectual Property Law Association. This will anchor the discussion around a published range – forcing the justification of different numbers.
Tip #4: Avoid Being “Nickeled and Dimed”
Unless you’re lucky enough to negotiate a fixed fee arrangement, you’re being charged by the hour (or rather by the minute).
Don’t be afraid of asking if you are on the clock. If unsure, assume you are.
Keep phone calls and emails to a minimum.
Request to not to be sent formal cover letters that summarize (or restate) official USPTO correspondence.
Tip #5: See The Real Track Record
Information regarding patent application status is available on the USPTO website in the Patent Application Information Retrieval system, or PAIR.
Public PAIR has all the correspondence to and from the Patent Office for issued patents and published applications.
Ask for list of issued patents that were prosecuted by the firm, and then look up the transaction history of each in Public Pair.
See how many continuations were filed per patent.
Remember, a client gets charged for every correspondence with the patent office.
It’s true, in some areas, it takes several tries to get something allowed. That requires multiple continuations – multiple amendments – and of course multiple costs and fees.
But I’d be a little suspicious if every patent application needed multiple continuations – and nothing, however narrow, got allowed on the first try.
Tip #6: Watch the Up Sell
If you ask some who gets paid to write patents, whether you should get a patent, the answer will almost always be yes - or at least not no.
It’s like asking an alcoholic if he or she wants a drink. That is, there is a vested interest in a positive response.
Tip #7: Ask for a Very Narrow Claim
Good patent prosecutors will draft both broad and narrow claims, since you’re never sure what will be granted.
However, it’s also a good idea to draft a very narrow, virtually non-infringeable claim. Why:
management (and maybe the VCs) will be pleased to get something allowed relatively quickly; and
in litigation, so long as at least one claim survives, the patent survives. If the patent had been licensed, since there is still a claim (albeit a very narrow one), the licensing revenue stream would be maintained.
Tip #8 Consider Getting An In House Patent Resource
If patents are a core part of your business strategy, consider hiring a patent agent or attorney. It can be cost-effective in the long run. You switch from a “pay as you go” model to more of a “all you can eat” one.
Agents tend to be less expensive, but they only can do patent preparation and prosecution.
Attorneys tend to be relatively more expensive, but if you hire carefully, you also get legal capabilities, such as drafting & negotiating agreements, managing NDAs, venture fund-raising, etc.
I hope you got something out of this presentation.
I’d love to hear from you.
Send comments, suggestions, or questions to patent@pobox.com