A Case for Filing Patent Applications Sooner Rather than Later

The expense of developing a new product can tempt innovators to wait for market proof before filing for patent protection. Waiting beyond the statutory bars of 35 U.S.C. 102 can be devastating to a patent, even if already issued. Specifically, these statutory bars prohibit obtaining a patent if priority is not established before one year after public disclosure, publication, sale, or offer for sale.

Helsinn Healthcare S.A. designed a drug with 0.25mg of palonosetron to treat chemo-induced nausea. Helsinn immediately began developing the market for the new product. Helsinn entered into several sales agreements for the new drug, although the dosage information remained undisclosed. Helsinn waited for several years after the after the agreements before applying for a patent.

Upon patent issue, Helsinn sued Teva Pharmaceuticals USA, Inc. for infringement. Teva argued that Helsinn’s patent was invalid due to the statutory bar in that the drug was “on sale” under 35 U.S.C. 102 for more than one year before Helsinn filed the patent application. Helsinn argued that the “on sale” bar was not applicable because the sales agreements did not publicly disclose dosage information. The district court agreed that the America Invents Act (AIA) changed the “on sale” bar to require public disclosure to invalid the patent. However, the Federal Circuit and the Supreme Court of the United States held that there was no Congressional intent to change the history of the “on sale” bar, which did not previously require public disclosure of every aspect of the product sold. See Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 586 U.S. ___, 2019 WL 271945 (2019). Helsinn lost both the infringement claim and its patent.

Helsinn may have kept its patent and a monopoly on the market, if the patent application had been filed sooner. Generally, statutory bars to patentability under 35 U.S.C. 102 requires that a patent application be filed (or establishes priority through an earlier filing) before one year after the invention is publicly disclosed, sold, or offered for sale. However, filing the patent application as soon as possible can help reduce the validity of later challenges to the patent in court.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Obviousness: Responding to a Rejection to Your Patent Application under 35 U.S.C. 103

What is an obviousness rejection?

An obviousness rejection of your patent application is a substantive legal argument that your patent application is too similar to existing publications at the time of filing of your patent application. Unlike a procedural objection, you will have to overcome legal and factual arguments to distinguish your rejected claims from the cited prior art references.

What is the proper form of response?

Argument against an obviousness rejection can be filed as a response to a non-final office action in the case of the non-final rejection. If the rejection is final, argument can be presented with a Request for Continued Examination (RCE) or upon appeal to the Patent Trial and Appeal Board.

In the written response, remember to address every point made by the Examiner. At the most benign, the response may be deemed incomplete. An incomplete response can cause your application to become abandoned as the statutory deadline is not met without a complete response. At worst, your response may be deemed to concede unaddressed arguments in an appeal brief.

What is the standard for Obviousness?

35 U.S.C. 103: Conditions for patentability; non-obvious subject matter

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

How can you respond to an obviousness rejection?

These rejections are commonly addressed in a couple ways. The strongest argument is that the combination of prior art doesn’t teach every element of the claim rejected. A weaker, but sometimes worthwhile argument, is that there is no reason to combine the prior art references.

MPEP 2143.03 All Claim Limitations Must Be ConsidereD

“All words in a claim must be considered in judging the patentability of that claim against the prior art.” In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).

Many words in a claim, often including articles and prepositions, either define a new structure or modify a structure recited. For each of these words, the word itself defines a individual claim element. If an element or a word that shapes the scope of the claim can’t be found in the combination of cited prior art references, the rejection is not properly supported under MPEP 2143.03. A well-reasoned response using this argument shifts the burden to the Examiner to find different references to maintain the rejection or allow the patent to issue.

2143.01 Suggestion or Motivation To Modify the References

Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (discussing rationale underlying the motivation-suggestion-teaching test as a guard against using hindsight in an obviousness analysis).

The Examiner has much more discretion when reconsidering claims accompanied by this type of response. However, there are some limits to the Examiner’s discretion. For example, the Examiner must provide some supporting reason that one of ordinary skill in the art would combine the references. Therefore, a strengthening argument could point out that the prior art references combine into a result that is not the claimed invention (e.g. that the combined result is tangential to the invention, rather than the invention itself). In more extreme cases, it can be proper to argue that the references “teach away” from the claimed invention. Be careful not to overplay the differences, as this can lose credibility with the Examiner. It can be important to maintain credibility in a discretionary situation.

As an example of the Examiner’s leeway -when teachings in the prior art conflict, the Examiner can weigh the suggestive power of each reference. Therefore, consider whether the teaching to reach the claimed invention is totally absent in the combination formed by the references, or whether multiple conflicting teachings could form several alternatives, including the claimed invention. Just because one of the alternatives seems disfavored doesn’t prevent the Examiner from maintaining a properly supported argument by the cited combination of references.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Correcting Priority Claims in Patent Applications

Why claim priority to a previous application?

U.S. non-provisional patent applications can claim priority to a previously filed application in order to establish an earlier effective date. Claiming priority and the earlier effective date can preclude an examiner from using publications dated after the initial filing date against your later-filed application, if the material is not new matter in the child application. This can increase the likelihood of overcoming rejections and ultimately obtaining an issued patent.

When can a priority claim be made on initial filing of the child application?

Priority to a provisional application can be claimed for up to twelve months after the filing date of the provisional. Priority can be claimed to a non-provisional application any time during the pendency of the parent non-provisional. Thus, the parent application cannot be issued or abandoned before the child application is filed.

What are some requirements for claiming priority to a parent application?

As of September 16, 2012, a specific reference to the priority application must be included in an application data sheet (ADS) of the child application. Otherwise, the filing receipt will likely reflect the priority date as the filing date of the child rather than the parent. The Examiner can cite prior art having a publication date after the effective date of the parent application.

Prior to September 16, 2012, the specific reference to the priority application could be included either in the ADS or in the first sentences of the specification. However, MPEP 211.02 encourages applicants to provide in the specification an explicit incorporation by reference statement to the prior-filed application(s) for which benefit is claimed, if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material. Therefore, the specific reference to the priority claim should be included in both the ADS and the first sentences of the specification.

Furthermore, both the parent and child application must share at least one inventor in common to properly maintain a priority claim between the applications.

What is a proper specific reference to an parent application?

A proper specific reference must identify the application number and the relationship between the parent and child applications. For example, a common method is to state the the present application is a [identify relationship (e.g. continuation, continuation-in-part, divisional, etc.)] of [application number], which is a [identify relationship] of [application number]. This chain continues until the first application in the priority chain.

Can a priority claim be added or amended into a filed application after-the-fact?

When a benefit claim is submitted after the filing of an application, and the later-filed application as filed did not incorporate the prior-filed application by reference, applicant cannot add an incorporation by reference statement of the prior application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)). See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). See also 37 CFR 1.57(b).

MPEP 211.02

This means that the specific reference to the priority application cannot be added to the specification after the fact. However, a forgotten priority claim in the ADS can be amended. Typically, the USPTO will require a petition under 37 CFR 1.78 and the petition fee, often several thousand dollars, to correct the claim if the correction is sought after expiration of the time period set in 37 CFR 1.78. Under 37 CFR 1.78(a)(4), the specific reference in the ADS must be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. After that deadline, a petition may be filed to restore priority with statement that the entire delay was unintentional with the proper fee.

Conclusion

When filing a patent application claiming priority, include a specific reference to the priority claim in the first sentences of the specification and also in the ADS. The specification cannot be amended to add the reference without introducing new matter. The ADS can be amended to include the specific reference within four months from the child application or sixteen months from the provisional application. Thereafter, a petition for unintentional delay with a fee of several thousand dollars will be required to correct the claim.


If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Necessity is the Mother: How to Find Your Next Invention

In my earliest years of patent law practice, I filed for and obtained my own patent for an Internet of Things open sign. At the time, I was working closely with another very knowledgeable patent attorney that served as my mentor. He shared the excitement of the issued patent as a career landmark, rather than a training exercise, as he recounted a previous conversation with the head partner. The head partner had remarked that he would like to be an inventor after 20 years of securing protection for clients.

His remarks show that inventorship requires a slightly different thought process than the ordinary problem solving, even in the patent prosecution field. However, the inventive process can be replicated when you know how to identify opportunities.

Under U.S. patent law, the wording for inventorship is permissive unless certain conditions, omitted below, preclude grant of a patent. 35 U.S. Code § 101 states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor…

It’s amazing that highly educated patent attorneys with specialized knowledge of the patent system had never filed for a patent. However, invention takes a different thought process – one that’s more creative, rather than lock-step logical.

First, invention requires the recognition of a need.

In my case, I was visiting a mom-and-pop restaurant for lunch, during their typical operating hours. On arrival, the doors were locked with the lights out. Not a problem, I had no client with me, so it wasn’t a big let down. However, the next time I was at the restaurant, I revisited the issue.

I could have looked up the restaurant online, but typical search engines merely set out the normal business hours, and may regularly be wrong, even for holidays. Because the existing systems couldn’t have prevented the problem, there was a need for something better.

I scanned the restaurant for anything electronic that could represent when the store was open to the public. The alarm system could be modified to ping a server when down. The problem is that the alarm system will be down to allow employees in for prep and closing outside operating hours. A magnetic door lock sensor would suffer the same issue. I could have employees manually change a status online, but they might forget.

Then I spotted the open sign. When it’s lit, the expectation is that someone is physically in the building ready for a customer. Operating the open sign is already ingrained in the employees’ daily functions, reducing the risk of forgetting. Then, pinging a server when the sign is lit should extend the reach of the open sign from physical visibility to everyone with internet access.

Therefore, invention can arise from small inconveniences in your daily life. After recognizing an issue, consider possible solutions and how the solutions would work in practice. Using this framework, embrace inconveniences as opportunities.If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Startup Resources for Inventors

Finding Existing Patents

There are a few free resources for searching for existing patents and published applications that could be used against your patent application. These resources can be used to get a quick look at the landscape. Consulting a patent attorney is recommended to find the most relevant publications, as well as a professional analysis of the scope of the patent to pursue.

Searching for Available Business Names

  • Namrr – Text based trademark search engine

Prototyping

As we’ve previously discussed, prototyping is not a requirement for filing a patent application. However, prototyping can be helpful for problem solving and finalizing the structure of the invention before filing. Alternatively, the inventor may be looking for manufacturing help or suppliers. The following resources can be used to identify possible engineers, manufacturers, suppliers, and other prototyping resources.

As a word of caution, the inventor should be careful about the public disclosure and first sale doctrines. A request for manufacturing, engineering, or design help may be a public disclosure of an invention, if not under requirement of secrecy. Furthermore, buying a prototype may constitute a first sale (even to yourself) under the right circumstances.

Both of these doctrines stem from 35 U.S.C. 102 and cause a one-year clock to begin running against the inventor. After this date, the inventor cannot obtain a patent due to prior public knowledge imputed by these doctrines. Therefore, the inventor should use non-disclosure agreements, if the priority date is not already held by a filed patent application.

Search Engines

A well-tailored query can lead to highly specific results organized by locality, specialty, or other keywords. One benefit of search engines is that an inventor may find local businesses that are not paying to be in national trade databases. However, free form searching is difficult without knowledge of industry standard terminology. When prototyping, 3d printing companies, welders, or electrical engineers may be helpful, depending on the field of invention.

Manufacturer and Supplier Databases

Manufacturer and supplier databases often list paying companies. The national reach of these databases, along with the cost, may help narrow the list to established businesses. Furthermore, the inventor can browse industry-specific categories. This can help lead to new search terms for Google.

  • ThomasNet – ThomasNet is an online database that replaced the Thomas Register books listing business to business suppliers.

Online Suppliers

Many components are already commercially available. These components can be used to assemble the invention. For example, the Raspberry Pi can be useful for computing and hardware prototyping. Many manufactured parts can be found through online suppliers.

Foreign Suppliers

Foreign suppliers can be cheaper than U.S. suppliers. Furthermore, some suppliers will allow custom orders. Often, suppliers mark product pages when customization is an option. Alternatively, suppliers also list a contact line for questions.

When using a foreign supplier, make sure to order a proof. The proof may have a much high unit price than an bulk order. However, a quality inspection is important to avoid issues with bulk orders. The inventor may not want to disclose the invention without a foreign patent, because the manufacturer can continue to produce and sell the invention abroad. It is possible to order pre-existing parts and have the actual inventive aspects assembled in the U.S. by a contractor under a non-disclosure agreement to avoid public disclosure.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Calculating USPTO Patent Filing Fees

When calculating patent filing fees, it’s important to check the current table of USPTO patent fees. For this post, we’ll take a look at fees for filing a U.S. non-provisional utility application, because this is the typical type of filing.

However, the patent fees table can be difficult to work with. For example, missing one of the required fees at the time of filing can add another fee called “Surcharge – Late filing fee, search fee, examination fee, inventor’s oath or declaration, or application filed without at least one claim or by reference” for $180, $80, or $40 (at the time of this post) based on your entity size. Determining your entity size under U.S. patent law can be a good start to calculating the proper fees for filing.

Determining Entity Size Eligibility

There are three possible entity sizes: Regular Entity, Small Entity (37 CFR 1.27), and Micro Entity (37 CFR 1.29). Small Entity fees are roughly half of regular entity fees. Similarly, Micro Entity fees are roughly half of Small Entity fees. Note that these are basic guidelines – check with an attorney for certainty in your particular situation.

Micro Entity

Micro Entity status became available on March 19, 2013 and has the most difficult threshold for qualification. The requirements are that the applicant cannot:

  • Be named on more than four previously filed applications.*
  • Have a gross income more than three times the median household income in the previous year from when the fee(s) is paid. The USPTO keeps an updated page for the gross income limit.
  • Be under an obligation to assign, grant, or convey a license or other ownership to another entity that does not meet the same income requirements as the inventor.

*Previous provisional applications, applications that must be assigned to an employer or university, or foreign applications in which the national stage fees were not paid don’t count toward this total.

However, simply choosing to pay the Micro Entity status fees does not establish entitlement to Micro Entity status. The applicant must further file a Certification of Micro Entity Status. Otherwise, the USPTO may send a notification of a missing fee with the additional surcharge stated above.

As a further caveat, Micro Entity Status must be re-asserted every time a fee is paid to the patent office. The applicant must re-verify the entire checklist with each fee payment. When enforcing a patent, the opposing counsel will likely argue that the patent is unenforceable due to falsification of the Micro Entity Status. This can bring in the applicant’s employment history, tax and marital records, and outside patent portfolio into the court room for each period in which a fee was paid.

Small Entity

In order to qualify for Small Entity status, an applicant can be either:

  • an individual person;
  • a small business concern (an entity that employees less than 500 persons, including affiliates, under 13 CFR 121.802); or
  • a 501(c)(3) nonprofit organization or a university or other institution of higher education.

However, the entity cannot be obligated to assign the patent or application to another entity that does not qualify for Small Entity status.

Small Entity status is easier to claim because the USPTO provides a checkbox to claim Small Entity Status when filing. Even if this checkbox is missed, the USPTO will automatically grant Small Entity status upon exact payment of small entity fees.

Assertion of Small Entity status is also simpler; it occurs at filing and upon payment of the issue fee.

Regular Undiscounted Entity

The highest fees are for the Regular Entity. These undiscounted patent filing fees must be paid when an entity does not qualify for Micro Entity or Small Entity status.

Typical Patent Filing Fees

A typical U.S. non-provisional utility patent application is filed with less than 100 pages, 20 claims or less, 3 independent claims or less, and usually no multiple independent claims. We are also assuming that the application is complete with:

  • proper fees paid;
  • an inventor’s oath or declaration for each inventor;
  • the application is in English with no translation necessary;
  • a complete specification;
  • at least one claim; and
  • drawings, if necessary to explain the invention.

The normal filing fees include the basic utility application filing fee (which can differ for electronic or paper filing), the utility search fee, and the utility examination fee. Let’s assume a hypothetical small entity electronic filing. At the time of this post, the electronic basic application utility filing fee is $75; the utility search fee is $330; and the utility examination fee is $380. Therefore, the total for our hypothetical is $785 in government fees to file. Note that this does not include attorneys’ fees or draftsperson fees for official drawings that comply with USPTO rules. Government fees can be much higher as well, if the application does not comply with the myriad of cited regulations on the USPTO fees page. For example, non-electronic filing requires an additional $400 or $200 fee listed at the bottom of the first table, in addition to the basic filing fees.If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Intellectual Property Defined: Patents, Trademarks, Copyright, and Trade Secrets

Creating Intellectual Property
William Iven

Understanding Intellectual Property

Intellectual property is a broad term used to describe intangible property rights. The easiest visualization is to compare intellectual property with real property. Real property defines rights in something tangible and concrete, such as real estate. In contrast, intellectual property rights are less concrete and protect inventions, goodwill, creative expression, and business know-how. Under the umbrella of intellectual property, we have patents, trademarks, copyright, and trade secrets.

What are Patents, Trademarks, Copyrights, and Trade Secrets?

What is a Patent?

Patents protect inventions, new and useful structures or methods. When a patent is granted by the United States Patent and Trademark Office (USPTO), the inventor receives property rights in the invention. In most cases, the patent will remain in effect for 20 years from the filing date (or priority date, if applicable). Typically, maintenance fees are required at 3.5, 7.5, and 11.5 years to keep enforceability of the patent. U.S. patents are only in effect within the United States and its territory.

With patent rights, the patent holder can stop others from making, using, offering for sale, or selling the protected invention within the U.S. or importing the invention into the U.S. Therefore, a patent grants a negative right, the right to exclude others. No patent is required to simply make or use a product, so long as the product doesn’t infringe another patent.

Types of Patents

1) Utility patents protect any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. A utility patent application can either be provisional or non-provisional. A provisional application is a placeholder for a non-provisional for up to one year. The non-provisional application will actually be examined for patentability by the USPTO.

2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.

3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

What Is a Trademark?

A trademark can be a word, name, symbol, design, sound, or combination that is used in commerce to identify the source of the goods or affiliation. The identity of the source or affiliation of the goods is helpful to consumers to identify the quality of the product and any message behind the product. A service mark is similar to a trademark, but identifies the source of a service rather than a tangible product. “Trademark” and “mark” can be used to refer to trademarks and service marks.

Trademark rights  protect  the goodwill associated with the source of the goods – i.e. the quality of the goods and the company message. Therefore, trademark rights may prevent others from taking advantage of established goodwill through use of a confusingly similar mark. However, others can make or sell the same or similar goods or build a similar company message behind a different mark. This is because another’s goodwill is not being used and reputation of an established brand is not being tarnished.

Although trademarks exist upon use, the common law rights are very geographically limited. USPTO registration is available for trademarks used in interstate or foreign markets. U.S. registration helps secure nationwide rights in the trademark. The registration procedure for trademarks and general information concerning trademarks can be found in the separate book entitled “Basic Facts about Trademarks.” (http://www.uspto.gov/trademarks/basics/Basic_Facts_Trademarks.jsp).

What is a Copyright?

Copyright establishes rights for authors in the creative expression of an idea. This provides rights in “original works of authorship.” Such works include literary, dramatic, musical, artistic, and other creative works. Copyright exists upon fixation of the work in a tangible medium that is human or machine readable. For example, recording a theatrical performance or writing out a script. Copyright grants the owner exclusive rights to reproduce, distribute, publicly perform, publicly display, or to create derivative works.

Importantly, the “creative expression” that is protected does not protect the underlying idea. Therefore, describing an invention could provide copyright in the creativity of the description, but would not prevent others from making and using the invention. Additionally, copyright in a theatrical work may not necessarily prevent others from using a similar story arc. Copyright can be registered with the Copyright Office of the Library of Congress.

What is a Trade Secret?

A trade secret comprises business know-how, such as efficient manufacture of a product, distribution, market integration, etc. Other examples can be formulas, recipes, patterns, compilations, programs, devices, methods, techniques, or processes. Trade secret protection can be used to prevent others, such as employees, former employees, or other companies, from obtaining and using the trade secrets to compete. Although trade secrets are not formally registered, the U.S. provides for actions in federal court under the Defense of Trade Secrets Act of 2016.

Proving a trade secret includes proving that the information is secret, that the information is commercially valuable because it is secret, and that the information is subject to reasonable steps to keep it secret. For example, non-disclosure and non-compete contracts, separation of knowledge within the company, and internal controls to prevent dissemination can help. Unlike patents, trade secrets do not expire as long as secrecy is maintained. However, trade secrets do not prevent others from using the information in the event of independent discovery. More info on trade secrets can be found here: https://www.uspto.gov/patents-getting-started/international-protection/trade-secret-policy.

 If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Do I need to Prototype My Invention Before I Apply for a Patent?

Breadboard Circuit Prototyping
Nicolas Thomas

Prototyping your invention is not necessarily required to file for or receive an issued non-provisional utility patent. However, the process of making a working prototype can tease out complete development of the structures of your invention. Increased development can then aid in accuracy of the scope of patent protection.

Legal Standard for Describing an Invention in a Patent Application

In order to receive a granted patent, the application must describe the invention with sufficient detail. More specifically, the description must enable one of ordinary skill in the art to make and use the invention without undue experimentation. The underlying public policy is that the inventor will receive a short term monopoly in exchange for teaching the invention to the public. However, application of this rule is up for interpretation, especially the phrases “one of ordinary skill in the art” and “undue experimentation.”

One of Ordinary Skill in the Art

This hypothetical person is assumed to have the skill and education of a typical person in a given field. For example, an invention related to mechanical engineering would have to be described such that mechanical engineers could understand the disclosure.

Undue Experimentation

The mechanical and software fields may be considered “predictable” fields. In these fields, one of ordinary skill can imagine and reason through many variables with expected results. This helps reduce the required experimentation to recreate the invention. Therefore, the inferences of the person of ordinary skill in these areas may allow a description without including underlying undergraduate-level problem solving patterns.

In “unpredictable” fields, such as pharmaceuticals, additional explanation of drug synthesis, clinical trials, dosages, and experimental procedures and results may be required. This is due to the empirical nature of chemistry. For example, sodium and chlorine are both toxic to the human body. However, sodium chloride (table salt) is a necessary dietary staple. Therefore, the description may need to explicitly point out typical patterns and how the invention does not fit the pattern.

Practicalities

If the invention can be sufficiently described, then the application is technically complete regarding the described subject matter. However, pictures or drawings can show mechanisms that words alone cannot. Furthermore, creation of the drawings can force critical thinking through unanticipated problems.

Similarly, developing a prototype can help reveal problems in reducing the invention to actual practice, even beyond the drawings.

Racing the Clock to File a Patent Application

If an inventor is running out of time, such as when racing a competitor or running up against a statutory bar, the inventor could file a provisional or utility application with the current level of description. After the provisional, the inventor can file a non-provisional utility with the improvements. The old material has the first filing date and the new material has the second filing date. After the non-provisional, U.S. patent law allows for a continuation-in-part, wherein additional matter (improvements) are disclosed. However, the base invention has the first filing date and the newly disclosed improvements have the second filing date.If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Can an Inventor Sell or Publicly Use an Invention Before Filing a Patent Application?

Short Answer

Possibly for up to one year, but it’s not a great idea.

Fact Pattern

Our inventor has a great new device. The inventor is thinking about patent protection, but it’s expensive to apply. In addition, the inventor isn’t totally sure what others will think of the idea. Bursting with curiosity, the inventor will be tempted to give a few devices away. If market interest is there, the inventor may then want to sell a few devices to help pay for the cost of the patent application.

Statutory Rule

Under U.S. statutory law (35 U.S.C. 102), sale of the invention or public use of the invention more than one year before filing the patent application is an absolute bar to patentability. The United States Patent and Trademark Office will not allow a patent application to issue if the invention was sold or used publicly before the one-year date. There may be an argument for experimental use, but this route is highly risky and beyond the scope of this blog post.

Case Law

Consider Lough v. Brunswick decided by the Federal Circuit in 1996. Lough was a repairman for a boat dealership in Florida. He noticed that an upper seal assembly of a Stern drive for inboard/outboard motors failed often due to corrosion. On his own time, he used his metal lathe to create a new upper seal assembly that was corrosion resistant. Corrosion resistance takes a long time to observe. Therefore, he gave several prototypes away to friends.

The court reasoned that public use includes any use of the claimed invention by a person other than the inventor who is under no limitation, restriction, or obligation of secrecy to the inventor. The court held that Lough publicly used the seal assemblies by providing them to friends, because the friends were not under a limitation, restriction, or obligation of secrecy. Furthermore, the Court held Lough’s patent invalid, because his public use was more than one year before filing. Lough missed out on $1.5 million.

Analysis

Based on Lough’s example, our hypothetical inventor does not want to lose his patent rights. Therefore, he should make sure to file the patent application before one year passes after sale or public use of the invention. However, the inventor should ideally file before public use or sale itself. This helps eliminate ambiguity and can remove an issue before the court. Furthermore, some foreign countries have “absolute novelty” requirements that completely bar a patent for any public use or prior sales. Therefore, if the inventor may want foreign protection in an absolute novelty country later, best practice is to file the patent application before public use or sale.If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Can an Inventor Apply for Foreign Patent Protection after Filing a U.S. Patent Application?

The background situation is this: your company has a U.S. patent application on file and development in the U.S. market is going great. Based on your domestic market success, you want to expand the territorial reach of your patent portfolio to foreign countries as well.

Many foreign countries, such as China, have an absolute novelty requirement for filing a patent application in that country. This can give rise to issues when the U.S. application has already been filed. In addition, many companies begin advertising the new invention as soon as patent pending status is reached upon filing. Rightfully so, because “patent pending” can be a great marketing tool. However, foreign filings can be prevented from issuing due to both the prior U.S. filing and the public disclosures in the advertisements occurring before the foreign filing.

How can the company try for patent protection into these foreign countries?

Thankfully, several countries allow a time period for claiming priority back to a U.S. patent application. For example, China specifically allows a claim of priority back to a U.S. utility application for up to 12 months after filing the application. Note that this time period is only six months for a design patent application.

Alternatively, the company can submit a Patent Cooperation Treaty (PCT) application within 12 months of filing the U.S. utility application. Although this creates an additional filing with associated costs, the PCT allows for 30 months from the filing date of the first application in the chain (i.e. the priority date) to enter the national stage for most countries. The additional time generated is often about 18 months from filing the PCT. During this time, the company can evaluate foreign markets for viability or begin market testing of the new product.If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law