Category: Invention Help

A trademark is a distinctive symbol, word or phrase used to identify a seller’s product or products.  The trademark helps distinguish the seller’s product from the products of another seller.  For example, the trademark for “Nike” is the Nike “swoosh”.  This symbol identifies this type of shoe.  Marks can also be used to identify a company’s services rather than products.  These are called service marks.  For example, the service mark for a housecleaning company might be “Merry Maids” with or without a company logo.

State and federal law govern trademarks.  State common law originally provided the main source of protection for trademarks. The U.S. Congress enacted the first federal trademark law in the late 1800s. But, since then federal trademark law has taken this over. Federal law provides the main and most extensive source of trademark protection today. State common law actions are still available.

A trademark can be registered at the United States Patent and Trademark Office’s website, www.uspto.gov.  The cost to register a trademark costs between $275 and $325 and requires other information, such as the date of first use in commerce and a category of goods and services for which the mark is used.  Registration with the PTO is not required for the trademark to be protected but there are many benefits to registering it.  These benefits include: (1) registration gives notice to other parties that the trademark is already owned by someone; (2) registration enables an infringement lawsuit, if necessary; and (3) a trademark can become “incontestable” after five years and, at this point, the party has the exclusive right to use the trademark.  Of course, registration could be denied or rejected.  The PTO may reject marks that have not attained a second meaning. A descriptive mark acquires a secondary meaning when the public primarily associates that mark with a particular producer, rather than the underlying product. For example, the term “Verizon” has acquired secondary meaning because the consumers associate that term with a particular provider of cell phone services, and not with cell phone services, in general.  The PTO may also reject a certain variety of marks, including certain geographic marks, “scandalous” marks, marks that are primarily surnames, and marks that can cause confusion with marks that are already existing.  If a mark is rejected, this only means that it is not entitled to the benefits that are listed above. 

You do not need to hire an attorney to register a trademark but it is recommended.  You could check the Trademark Electronic Search System  (“TESS”) database to make sure another company hasn’t already registered an identical or similar mark for the same categories of goods or services you offer and save money. But, if you do work with an attorney, there is a greater chance your trademark will be approved to be registered.  Also, trademark attorneys don’t simply file your application for you. Your attorney will also help you through the entire process, from choosing a name all the way through to final approval. All of this helps assure approval and registration of your trademark.

There are certain patent laws that establish if your patent will or will not be granted.  These laws are explained below and are in accordance with 35 U.S.C. Section 102.

Your patent will not be granted if an invention was used or written by other people/inventors in the US.  Your patent may be granted if the invention was practiced by other people/inventors in a foreign country but not if it was patented or described in a printed publication available to the public in the US or a foreign county before your invention.  Your “invention” is what you explicitly claim in your patent claims of the patent application.  And, “before your invention” is referring to the date at which you can prove it was invented, which may be earlier than your filing date, which you can prove with written records, if needed.

            There is also a one-year grace period in the US.  This means that if your invention was either patented or described in a printed publication anywhere in the world or if it was in public use or for sale in the US more than a year before you filed, then your patent will not be granted. 

            Your patent will not be granted if the invention has been abandoned.  Actual abandonment under this law requires that the inventor actually intended to abandon the invention.  You could probably assume that this would be hard to determine.

            Your patent will not be granted if your invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his/her legal representatives in a foreign country prior to the date of the patent application in the US filed more than twelve months before the filing of the application in the US.  This rule has four requirements in order for your patent to be barred. These include (1) if there has been a foreign application on your invention filed more than 12 months before the effective US filing date; (2) the same applicant must have filed the foreign application; (3) the foreign patent must be granted, but it does not need to be published, before the US filing date; and (4) this must involve the same invention.  You do not have to worry if you do not file a foreign application that your patent will not be granted.

Your patent will not be granted if the invention was described in a patent application, published under  — (1) an application for patent, published in accordance with 35 U.S.C. 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the Patent Cooperation Treaty shall have the effects of an application filed in the United States only if the international application designated the United States and was published by the International Bureau in accordance with Article 21(2) of the Patent Cooperation Treaty in the English language.  This refers to prior art in pending US patent applications that, when published or patented, suddenly becomes prior art as of their filing date.  This could be very difficult to understand but in other words, your patent will be barred if there is a similar unpublished patent out there that you could not possibly know about. Patent applications are maintained in secret by the patent office for 18 months after their priority date.  The priority date is the date of filing of the first application.

Your patent will not be granted if the invention derived from someone other than the inventor.  You will also lose your right to the patent if someone else other than you, as the applicant, establishes that, before you invented your invention, that this someone else invented it.

What happens when a patent application or patent goes abandoned? What can be done to revive the application or the patent?

If a reply/response to an office action is not filed before the deadline or if an issue fee is not paid, your patent application could go abandoned, which means your patent application status is no longer pending. If the delay in reply by applicant or patent owner was unintentional, a petition may be filed to revive an abandoned application.  The Petition requires the following: (a) a reply to the outstanding office action; (b) the petition fee; (c) a terminal disclaimer; and (d) a statement that the delay in responding the office action was unintentional.

Your patent will also go abandoned if you do not pay your maintenance fees and your patent will expire. Payment of any maintenance fee due on a patent after expiration of the patent if, upon petition, the delay in payment of the maintenance fee is shown to have been unintentional may be accepted by the Director.  Any petition to accept an unintentionally delayed payment requires the following: (a) the required maintenance fee; (b) the petition fee; and (c) a statement that the delay in payment was unintentional.  Additional information with this statement may be required by the Director.  The patent shall be considered as not having expired if the Director accepts payment of the delayed maintenance fee, upon petition. Reconsideration of a decision refusing to accept a delayed maintenance fee may be obtained by filing a petition for reconsideration.  This petition must be filed within two months of the decision or such other time as set in the decision refusing to accept the delayed payment of the maintenance fee.  If delayed payment of the maintenance fee is not accepted, the maintenance fee will be refunded following the decision on the petition for reconsideration, or after the expiration of the time for filing such a petition for reconsideration, if a petition is not filed.  After a decision is made on the petition for reconsideration, no further reconsideration or review of the petition will be done by the Director of the Office.

A patent application may be expressly abandoned by filing a written statement of abandonment identifying the application in the United States Patent Office. Express abandonment of the application may not be recognized by the Office before the date of issue or publication unless it is actually received by appropriate officials in time to act.  The written statement must be signed by an authorized party.

Take careful consideration into whether you would like to hire an attorney to help you with your patent.  Not only will they be able to help you with preparing the patent application itself but they will also help you keep track of the important deadlines so that your patent does not go abandoned or expire.

You may wonder how to name your invention and what rules the US Patent Office requires for the title.

How to title your patent might seem simple at first, but it really can be difficult. Like a book, you probably have the main idea for your story. When it comes down to naming your invention, this can be very challenging. While your patent attorney can help you choose the best title for your patent application, here are some guidelines to help you understand the process better.

Guidelines for naming your invention – the patent application title.

You probably want your title to be somewhat unique. This can help to market your product and excite your consumers.

In addition, you want the Patent Office Examiner to approve the title for your patent application. You want to make a good first impression because this will be one of the first things that the Examiner sees when looking at your patent application.

If the applicant does not use a satisfactory title, at the time of allowance for the patent application, the examiner may change the title by an examiner’s amendment.

What are the Patent Office requirements for the title?

The title should be descriptive of the invention to which the claims are directed. If the title is not considered descriptive, the Patent Office Examiner may require a new title.

The title must not exceed 500 characters in length and must be as short and as specific and descriptive as possible. The title should be one that is easily searchable using a few key words during a patent search.

The Examiner may require a change to the patent title that results in slightly longer titles. Typically, any loss to a brief title will be more than offset by the gain in its descriptive value in indexing, classifying, and searching.

Certain words such as “new,” “improved,” “improvement of,” and “improvement in” are not considered to add any value or adequately describe an invention. Therefore, these types of words should not be included in the title of the invention, and often will be required to be removed from the title before the Examiner will allow a patent to issue. Likewise, articles such as “a,” “an,” and “the” should not be included as the first words of the title.

The Patent Office also has restrictions on the type of characters that can be used in the patent title. Any character that cannot be captured and recorded in the Patent Office’s automated information systems may not be reflected in the US Patent Office records. Use the US PTO character checker to automatically check whether the characters in your patent title are valid.

https://www.uspto.gov/ebc/portal/infotitle.htm.

Where should you include the title of your invention?

The patent title should be included on the Application Data Sheet (ADS), and should also appear as a heading on the first page of the specification of the patent application.

When applying for a patent, it is best to hire an attorney to guide you through the process, including helping you decide on a good and sufficient title to your patent. I hope this helped you understand the patent title.

Even though the patent attorney should be the individual to write a provisional patent application that should be patented, it still would be great if every inventor would try writing their own provisional patent application.  Why do I think this?  Because if the inventor commits his/her thoughts to paper, it will help clarify their thoughts about the invention.  Creating the drawings and protype yourself, as the inventor, will help you determine what is working well and what is not.  It will also help you, as the inventor, incorporate all of the discoveries into a final version.

           What are some of the steps to make your provisional patent application successful?

           First, study the market.  You could start doing this by using Google Images and Google Patents.

           Unlike non-provisional patent applications, there are no specific requirements or guidelines for what has to be included in a provisional patent application.  Think about that.  What is your invention?  Is it a simple consumer product or a game-changing innovation?  This has to be taken into account.  If it is the former, you could generate income without even having to file a non-provisional application but if it is the latter, you will need more patents to keep the one written before or maybe even before that going. 

           Second, include numerous professional drawings.  “The single most effective way to expand any disclosure is by including high-quality drawings,” says patent attorney and IPWatchdog.com founder Gene Quinn.  If you show something in the drawings that you forgot to describe in your provisional patent application, you can still include it in your non-provisional patent.  If you don’t include something in your provisional patent application, it can’t be added later but you could always file another provisional patent application, but that will change your priority date.

           Third, educate yourself.  You shouldn’t educate yourself only about patents and provisional patent applications but educate yourself about trademarks, copyrights and trade secrets. 

           You should take the following questions into account when drafting or writing or provisional patent application.  What are the parts of your invention and how do they connect?  How does the invention operate?  Is there another or better way to construct your invention?  Can your invention be used in more than one way?

           In summary, it is very important to know your invention inside and out.  At start, you can do a lot of the work yourself.  Always get an attorney to help you to make sure the steps are done correctly.

Imagine that you have developed an invention that could be marketable. What is the next step? You are usually faced with a dilemma. To make money from the invention, you must ordinarily license the invention to another business, often a manufacturer or distributor, who will invest in mass producing, advertising, and selling it. But in pitching the invention to potential licensees, you run the risk of disclosing so much information that the invention might be stolen.

To protect your invention, you should, consider two common strategies that are used by inventors.  First, you could file a provisional patent application, if your invention is patentable. Second, you could have a nondisclosure agreement signed, regardless of whether the invention is patentable or not.

If your invention might qualify for a patent, it may be worth your while to file a provisional patent application and obtain “patent pending” status. Most often, this will deter someone from taking it because it will become known that you are serious in protecting your legal rights. You should hire a patent attorney to help you with this process.

If you or an attorney determines that the invention is probably not patentable, the most effective way to protect yourself is to have prospective licensees sign a nondisclosure agreement before you disclose your invention.  The agreement must be signed before you meet with any potential buyers so that they cannot disclose any secrets.  If the potential buyer signs the agreement and later uses your secret without your authorization, you can sue for any damages.  

Nondisclosure agreements will vary in format but they contain these important elements: a definition of what is and what is not confidential information; obligations of the party receiving the confidential information; and applicable time periods.  The nondisclosure agreement must also provide for arbitration of any dispute.  

It is always best to get a prospective buyer to sign this agreement but you may not always be able to convince the buyer to do so.  This would leave you in a very vulnerable position.  If a prospective buyer refuses to sign a nondisclosure agreement, this should be a red flag to you.  It is very common for manufacturers and distributors to sign this type of an agreement. 

If you do decide to disclose your invention, you should proceed very cautiously. Consider hiring an attorney to help you determine what is best for your situation.  

Patent attorneys almost always recommend to their clients that they should first file their patent application. There is not a single right way to get from point A to point Step B in this process but there are definitely risks that inventors and entrepreneurs should consider.

It is not necessarily bad advice when people say that inventors should not start with a patent application and can wait to file, but there are definitely risks associated.  The U.S. first to file laws should be interpreted to mean file first before you disclose anything, demonstrate publicly or offer the patent for sale.  The risk of waiting to file the patent application is too great and my forever make it impossible to obtain a patent.

An invention can usually be patented if it is new and non-obvious.  The way to proceed is first to determine whether an invention is patentable or not.  If an invention is not new we really never have to ask whether it is obvious.

When the U.S. switched to the first to file system, it was done so in a way that makes the U.S. different from the rest of the world.  The U.S. System mandates the filing of the patent application first rather than risking reliance on a grace period.  In the U.S. first to file system, the inventor still has a personal grace period.  This is not available to inventors outside the U.S.   This grace period says that inventor’s own disclosures or the disclosures of others who have derived from the inventor, are not used as prior art as they occurred within 12 months of the filing date of the patent application.  Also, there is virtually no chance that a grace period will exist for a third party, independently created disclosures.

You should file as soon as you have an invention that is has an adequate description through words and drawings. File first and file often. Even if that means filing serial provisional patent applications prior to filing a non-provisional patent application that wraps everything together. You can always claim priority going back to more than one provisional patent application as long as they were filed within 12 months of the filing of the non-provisional patent application.

Hire an attorney so that you can be guided through all the necessary steps and procedures on filing your patent application. 

Patent information is the technical information found in patent applications and granted patents.  This information may include not only the content of published patents, but the inventor’s, patent applicant’s or patent holder’s bibliographic data, inventors’ certificates, utility certificates and model and a description of the claimed invention and related developments in the same field, and a list of claims. It is also the largest, well-classified and most up-to-date collection of technical documents on innovative technologies.

You are probably wondering why would the patent applicant disclose such extensive information about their invention(s). The patent system balances the exclusive right that is granted to the patent holder over an invention.  The inventor or patent holder is obligated to publicly disclose information about newly developed technology.  This obligation is important for the continuous development of the technology behind the invention.  Patent information provides a basis for new inventions to be developed. Patent information also provides a path to others to develop something much better out of it. Without publication, it would not be possible for the public to get information about new developments in technology and this is important for technology to keep growing and developing.

Patent information has the following pros and advantages: it helps check the patentability of the inventions domestically or abroad; it is a way of recognizing the inventor and appreciating the great work of the inventor; it helps to improve or avoid niches in existing products or processes; it makes it easier to search and learn about patented inventions in a certain technological field; and it recognizes patented inventions to make sure that infringement is not occuring.

You are also probably wondering where you can find patent information on your own. Patent information can be found at WIPO’s PATENTSCOPE database and provides free-of-charge online access to millions of international patent applications filed under the Patent Cooperation Treaty (PCT) System.  Patent information can also be found at national and regional patent offices such as the European Patent Office and the United States Patent and Trademark Office. Access to patent information has grown as more and more patent offices make their patent documents available through online databases but certain skills are still required in order to make effective use of patent information.  One skill that is very important includes carrying out patent searches and providing meaningful analysis of these patent search results.

Contact a patent attorney for help when critical business decisions are at stake in regards to a patent. 

You might wonder if it is ok to discuss the details of your invention with a potential investor and/or business partner before you file your patent application.  Here is the short answer.  You should not do this.  

So how can you start marketing your invention without jeopardizing your rights? To protect your invention, consider two common strategies used by inventors, amateur and professional alike. First, you can file a provisional patent application and second, you can have a nondisclosure agreement signed.

You can disclose this information but at least file a provisional patent before you disclose your invention to anyone. “Prior art” is considered to be any invention which is made public before an application is filed.  The definition of the term “prior art” is not uniform at the international level. In many countries, “Prior art” refers to any information which has been made available to the public anywhere in the world by written or oral disclosure before the filing date.

In countries where the above definition of the term “prior art” is used, an applicant’s public disclosure of an invention prior to filing a patent application would prevent him/her from obtaining a valid patent.  Some countries do allow for a grace period, usually between 6 and 12 months.  This grace period provides a safeguard for applicants who disclosed their inventions before filing a patent application. 

If disclosing your invention before filing a patent application cannot be avoided – for example, to a potential investor or a business partner, then any disclosure should be accompanied by a confidentiality or non-disclosure agreement (NDA).  NDAs and similar confidentiality agreements make clear, in writing, that your invention is confidential and the parties that are receiving the privilege to know about it must not release any information to others without your permission. It is important to keep in mind that not everyone will be willing to enter into such an agreement. Be careful because you could even find yourself signing an agreement stating that your idea is not a secret, thereby insulating them from potential liability. Also keep in mind that applying early for patent protection might be helpful if you need to seek financial support to commercialize your invention.

Hire an attorney to help you decide what is best in your situation. 

As you may have already learned, obtaining a patent can be very difficult and can take up to a couple of years.  You probably wonder once you finally receive your patent, how long do you have the patent for? How long a patent lasts depends on the type of issued patent and the country issuing the patent.

In the United States, a utility patent expires in twenty years after the date the application is filed and you will have to pay maintenance fees each year.  Inventors should know that after the patent expires in 20 years, anyone can copy your idea and market it. To fully renew a patent, it takes an actual act of Congress. You can apply for an extension in some situations but it is rare that one will be granted.

In the United States, a design patent expires in 14 years from the date the design patent is granted with no maintenances fees that need to be paid.  Once you have these patents, the rewards can be vast.  A patent invention that is well-researched and useful could continue to make money for many years.

International patents can last anywhere from 6 to 20 years but on average, countries that are part of the World Trade Organization will grant patents that last 20 years.

It is also possible you can take steps to maximize the term of a granted patent. These steps may include: (1)making sure that the patent application is complete upon the original filing, (2) filing complete and timely responses to Office actions and communications from the United States Patent Office without extensions, (3) coming to an understanding with the examiner soon—usually by an examiner interview—to avoid a Request for Continued Examination (RCE), (4) maximizing the chances of success on an appeal of an examiner’s rejection, and (5) avoiding new filings after receiving a notice of allowance.

In order to maximize the term of the granted patent, you should hire an attorney to make sure the process is going smooth.