New Patent Law Q & A – Part 2 of 4

Patent Attorney Mark Trenner answers questions about  “Where do I go with my bright idea.”

Interviewer: Why is that, don’t you have one year from any public disclosure to file a patent application?

Denver Patent Attorney
Denver Patent Attorney Mark Trenner

Patent Attorney: That’s a good point. The United States patent law used to afford inventors one year from any public disclosure or public use, sale or offer for sale, or publication of their invention, in which to file a patent application without any loss of right.

Interviewer: Right, so why the caution about discussing your invention now?

Patent Attorney: The patent law in the United States changed recently. The new patent law, known as the America Invents Act, took effect in stages, with many of the important provisions taking effect in March 2013. While the law will need to be clarified by the courts, it appears that at least some of these grace periods are no longer available.

Interviewer: What are you advising your clients under the new patent law – the America Invents Act?

Patent Attorney: Well I have always advised my clients not to publicly disclose or use, publish, or sell their invention prior to filing a patent application. While inventors may initially think only about US patents, there are times when filing outside of the US makes good business sense.

For Part 3, see New Patent Law Wisconsin Q & A – Part 3 of 4

 

New Patent Law Q & A – Part 1 of 4

Patent Lawyer Mark Trenner answers questions about  “Where do I go with my bright idea.”

Denver Patent Attorney
Denver Patent Attorney Mark Trenner

Introduction: We are here in Colorado to interview Denver-area patent attorney Mark Trenner. Mark has been practicing as a patent attorney for almost 14 years; the past 9 years at Trenner Law Firm. While his practice focuses primarily on helping small businesses protect their inventions with patents, Trenner Law Firm assists clients build out all aspects of their intellectual property portfolio, including copyrights, trademarks, and trade secrets.

Interviewer: The Kenosha News in Wisconsin recently published an article titled “Where do I go with my bright idea.” It looks like they are talking to a local inventors and entrepreneurs club. What’s your take?

Patent Attorney: Colorado has an inventor club too, as do many regions. These clubs can be a good place to meet other inventors, find out about local businesses that offer inventor services, such as prototyping, marketing, and funding. Just be careful not to talk about your invention at these or any other type of open meetings.

Interviewer: Why is that, don’t you have one year from any public disclosure to file a patent application?

For Part 2, see New Patent Law Wisconsin Q & A – Part 2 of 4

 

What is a Provisional Patent Application? Part 3 of 3

What is a Provisional Patent Application? Part 3 of 3

Brought to you by the Denver Patent Law Firm: Trenner Law Firm, LLC

Although the provisional patent application process sounds simple, there are several “cautions” you can find listed on the United States Patent and Trademark Office website that you would need to pay attention to before filing. Here are some of the issues listed as per the USPTO site:

  • Provisional applications for patent may not be filed for design inventions.
  • Provisional applications are not examined on their merits.
  • Provisional applications for patent cannot claim the benefit of a previously-filed application, either foreign or domestic.
  • It is recommended that the disclosure of the invention in the provisional application be as complete as possible.
  • In order to obtain the benefit of the filing date of a provisional application, the claimed subject matter in the later filed non-provisional application must have support in the provisional application.
  • If there are multiple inventors, each inventor must be named in the application.
  • All inventor(s) named in the provisional application must have made a contribution, either jointly or individually, to the invention disclosed in the application.
  • The non-provisional application must have at least one inventor in common with the inventor(s) named in the provisional application to claim benefit of the provisional application filing date.
  • A provisional application must be entitled to a filing date and include the basic filing fee in order for a non-provisional application to claim benefit of that provisional application.
  • There is a surcharge for filing the basic filing fee or the cover sheet on a date later than filing the provisional application.
  • Amendments are not permitted in provisional applications after filing, other than those to make the provisional application comply with applicable regulations.
  • No information disclosure statement may be filed in a provisional application.

 

What is a Provisional Patent Application? Part 2 of 3

What is a Provisional Patent Application? Part 2 of 3

From the Colorado Patent Attorney at the Trenner Law Firm

As previously mentioned, the provisional patent application is good for a period of 12 months from the date that it is filed, and cannot be extended under any circumstances.  Consequently, sometime during this 12 month period the applicant must file for a non-provisional patent application in relation to the provisional patent application, in order to benefit from the earlier file date.  This non-provisional patent application filing must contain or be amended with specific references to the previously filed provisional application.  In other words, have some similar qualities to your originally provisionally patented idea.

Provisional patent applications differ from the more common non-provisional patent applications in several ways: First and foremost a provisional patent application filing is a great deal less expensive than applying for a utility patent.  The filing fee for a provisional patent application is much less. Also compare the cost of a provisional application to the thousands of dollars you can spend with all that is involved to with a full patent application (research fees, issue fees, attorney fees, maintenance fees, etc…), the $125 seems like a drop in the bucket.  Provisional patent applications are also much easier than non-provisional application.  You can forgo many of the complicated processes involved with a non-traditional application.  For example; Patent Application Declaration (states you are the actual inventor and have disclosed all information you feel is relevant to the examination of the application), Amendments to the application if not initially approved by USPTO (which is very common), or Information Disclosure Statement (a discovery of all the relevant information known to you that is related to the originality of your invention).  Probably the most important difference is that a provisional patent application will not result in you having a patent at the end of the 12 month period, or any of the rights you would be granted with a full patent.  The provisional application provides you with some time to decide if you want to go through the process of obtaining a non-provisional patent application, and the privileges that come with that patent.  This decision must be made within a year from your provisional patent application date, and ultimately approved by the USPTO to receive the rights and privileges that come with a patent.

What is a Provisional Patent Application? Part 3 of 3

What is a Provisional Patent Application? Part 1 of 3

What is a Provisional Patent Application? Part 1 of 3

From the Denver patent attorney law firm: Trenner Law, LLC

Put simply, applying for a provisional patent application is a low cost method of filing for a patent which allows independent inventors the opportunity to protect their product ideas for 12 months with “patent pending” status.  This allows the individual time to help market their idea, generate capital, and keep others (sometime larger companies) from infringing upon their idea before applying for a traditional utility (non-provisional) patent.  One reason it is more simple and cost effective is because you can file without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement.  It can basically be written explanations and drawings that convey the purpose or use of your idea.

This can be a concise document consisting of several pages, using simple terms to explain your idea.  Another benefit of the provisional patent application process is that it helped level the playing field for American inventors.  US patent laws are now more in line with patent laws in other countries with the introduction of the Provisional Patent Application (PPA).

Just to give you a brief history on the creation of the Provisional Patent Application.  On June 8, 1995 the United States Patent and Trademark Office (USPTO) started offering this method of applying for a patent, which allowed US inventors a less expensive first patent filing. It was also designed to give US patent applicants equality with foreign applicants under the GATT Uruguay Round Agreements.  By doing so it provided a way to institute an early effective filing date, which you could then later file a non-provisional patent application. It also allows the term “Patent Pending” to be applied in connection with the description and marketing of the invention.

What is a Provisional Patent Application? Part 2 of 3

What type of patent application is best?

What type of patent application (design patent application, provisional patent application, or regular utility patent application) is the best?

A design and utility patent application each protect different aspects of an invention. A utility patent protects the function of an invention. A design patent protects the ornamental appearance of an invention. If an invention only has a unique function (no ornamental appearance), then the inventor can file a utility patent application (or provisional patent application). If an invention only has a unique ornamental appearance, then the inventor can file a design patent application.

But some inventions have both, and can be protected by a design patent and/or a utility patent. That is, there is a legal basis to file both types of patent applications. So which one should an inventor file? There are pros and cons to both. For example:

  • A design patent is fairly limited, in that it only protects the specific design shown in the drawings (and perhaps minor variations). A design patent often issues faster and costs less.
  • A utility patent is generally considered broader, because it protects various functions regardless of how it looks. But a utility patent application may take longer to issue as an enforceable patent, and costs more.

If budget is not a consideration, for maximum protection an inventor can file both a design patent application and a utility patent application. Often though, budget is a major consideration. With a limited budget, the inventor has to make the decision what is more important to protect (utility or design) and then pursue the appropriate route (provisional, utility, or design). This is called a “business decision.”

Whether to file a design patent application, a utility patent application, or both, is a business decision the inventor makes based on these and other factors. A patent attorney can answer questions about any of these options, and help the inventor make a decision that is appropriate on a case-by-case basis.

How many design patent applications is appropriate?

A design patent application is limited to a single design. An inventor can file separate design patent applications for each unique design. But it is easy to see how this can quickly get out of control. To reduce costs, one approach is to file design patent applications for the actual design being marketed.

While minor variations may be considered additional embodiments of the same design, the Patent Office Examiners are typically fairly strict and will make the applicant select a single design for examination. Thus, while a single design patent application may include more than one embodiment of the same design, the Examiner may require the applicant to re-file these as separate design patent applications (and pay the separate fees for each).

But filing multiple design patent applications for minor variations of the same invention can also get the applicant into trouble. For example, this may be used as an admission by the applicant that the inventor considers such a minor changes to be distinct. A potential infringer could use this against the applicant later, countering any claim for infringement that any minor differences in their design also are distinct (and thus they are not infringing the design patent).

These are just some of reasons why it may be a good approach (when possible) to file both a design patent application for a specific design being marketed (regardless of how it functions), and a utility patent application for the utility of the invention (regardless of how it looks). Of course, how many and what type of patent applications to file is a business decision that should be based on input from a patent attorney who understands your invention and your goals for taking the product to market.

Can I file a trademark or copyright for a product name?

Attorneys are often asked “can I file a trademark or copyright for a product name?”

Generally, an application for a federal trademark registration can be filed for a word-only, word-and-graphic, and/or graphic (e.g., logo) trademark that is used to identify the source of goods or services in interstate commerce.

There are some basic requirements, however. For example, the trademark sought to be registered can not be confusingly similar to a mark already being used by someone else. In addition, the mark cannot be generic (e.g., the terms “gas station” used to identify a “gas station”). Merely descriptive marks can be difficult to register, and the Trademark Office Examiner will often require that the mark be registered on what is called the supplemental register (as opposed to the principal register), until the owner of the trademark can be shown that the trademark has acquired secondary meaning.

Other types of trademarks are easier to register. For example, suggestive (e.g., “hot chocolate” to identify sun tan lotion), arbitrary (real-words used to describe something totally different, e.g., “Apple” to identify a computer), and fanciful (made up words, e.g., “Xerox”) trademarks can be registered on the principal register without any showing of secondary meaning.

Suggestive, arbitrary, and fanciful trademarks are also considered stronger marks. That is, these trademarks are typically afforded broader protection against infringers, with arbitrary and fanciful marks often being afforded the strongest protection.

Those seeking trademarks often initially propose descriptive and suggestive marks. While it is possible to file a registration application and argue that the trademark is suggestive (and not merely descriptive), the applicant may have to amend to the supplemental register if the Trademark Examiner disagrees and asserts that the trademark is merely descriptive.

Finally, it is a good idea to work with a trademark attorney, and conduct a professional trademark search before using a mark, to reduce the possibility of infringing on someone else’s trademark rights.