Inventor's Mentor

Saturday, October 1, 2011

First to File - Part One

Under the guise of harmonization with international law and modernization of the patent system, the American Invent Act signed into law by the President, creates a serious obstacle to successful innovation by small American entrepreneurs. This month and next I shall review some problems raised by this act.

Loss of Grace Period. Under the previous (first to invent) law, the inventor benefited from the “grace period” defined as the time interval starting on the day that the inventor shows, sells or offers to sell his invention to the public, and ending on the day he files it. During the grace period the inventor retained ownership of the invention as long as he could prove that he diligently worked at developing it and did not abandon it. The grace period provided free protection to the inventor, even before a patent application was filed, and was a deterrent to anyone else who might be tempted to copy the invention. It allowed the inventor to talk about his invention, solicit funding, discuss it with designers and manufacturers, approach distributors, run focus groups, perform small market runs etc.

Under the new first to file system this grace period is eliminated leaving the inventor no protection against theft of his intellectual property. For example, now, if another person, upon observing the invention fraudulently files first, he gets all rights to the invention. To reclaim his rights the inventor will then have to show that the filer has “derived” (stolen, in common language) his intellectual property from him, a very difficult if not impossible task.

Advice: do not make any public disclosure and file early.

Public Disclosure is Dubious Protection. Under the new law, any description of the invention available to the public can be counted as prior art and prevent the invention from being awarded, with one exception designed to protect the inventor. If he discloses his invention to the public, for example in a newspaper, scientific journal, or in a sale, his disclosure is not regarded as prior art against him, as long as he files within one year of the disclosure. If any one else discloses his invention and names him as the original inventor, the same rule applies. He has one year from the earliest disclosure to file.

Therefore, in theory, the new law offers an inexpensive protection to the inventor: his disclosure is regarded as prior art against other inventors: the first person who publically discloses his invention locks out everyone else. However, in practice, such a public disclosure is problematic.

The new law is vague regarding what constitutes a disclosure. Is it a full description of the invention or simply an offer for sale without any description? Does the disclosure include all variations and embodiments conceived by the inventor or is it a single example of an embodiment? Does the disclosure of a single example (a species) protect all possible variations (a genus)? Unfortunately, these questions have no answer at this time and will have to be decided in court.

Can an inventor protect his invention inexpensively by publicly disclosing it? Hardly. Unfortunately, a disclosure automatically eliminates all foreign patent rights. More ominously, early public disclosure carries considerable risk. A potential infringer – locked out of receiving a patent by the disclosure - may decide to publicize the invention himself after the first disclosure (by the inventor), without acknowledging the original inventor. This second disclosure – with or without improvements to the invention by the second discloser - then locks the original inventor out of getting a patent because it is now prior art against him. Everyone is locked out and the original inventor has an uphill battle proving derivation (theft). The potential infringer is then free to practice the invention without fear of an infringement lawsuit.

Advice: do not make any public disclosure and file early.

Intervening Rights is a Loophole. The new law protects trade secret holders from infringement. It grants “Intervening Rights” to those who, before the invention is filed by an inventor, own trade secrets and are secretly practicing the invention. It allows them to continue the practice without being liable for infringement by the inventor. The concept of intervening rights will encourage businesses to hide their inventions from the public. It goes against the spirit of the patenting system, which is to disclose information for the good of everyone. Even worse, this clause will encourage potential infringers, who, upon being informed of an invention by a disclosure from the inventor, begin to practice the invention thereby establishing their “intervening rights” and making it harder for the inventor to prove infringement.

Advice: do not make any public disclosure and file early.

For archived newsletter and a lot of information for the small inventor go to:
If you have any question you can contact me at (858)259-2226 or email me at This newsletter should not be construed as being legal advice. ©2011 by George Levy

Thursday, September 1, 2011

Seek and Ye shall Find - Or not

It would be unfortunate if after years of work and thousands of dollars in expenses in the development of a prototype, you find out that you cannot get a patent because the invention is already known or is in the public domain. Even worse, if you use, sell or manufacture your idea you may be sued by the original inventor for infringement. It is therefore an essential step to conduct a thorough search at the outset of the process to make sure that your invention has not been invented before.

Staking your invention: A search will also provide you with a better insight of the prior art. Writing claims to your invention without having a good understanding of previous inventions is like planting stakes for a property without knowing where the neighbors are. Too wide an area being claimed, and your invention is rejected because it overlaps existing inventions. Too narrow an area, and you are depriving yourself of rightful coverage.

No search is perfect: A good search is important to avoid wasted investment in time and money later on; however, no search can be guaranteed to be perfect. Any publication, anywhere in the world since the invention of the alphabet, could invalidate a patent. In addition, patent databases are enormous and discovering all relevant prior inventions may not be possible within the time and monetary constraints of the search.

Challenges after patent award are possible: Examiners at the US Patent Office and patent searchers may overlook some relevant inventions: should you apply to patent an idea that is already in the public domain, your patent may erroneously be granted to you, giving you a false confidence to invest heavily in your invention. Later, you may have to sue an infringer. You can be assured that during litigation, your opponent will perform as thorough a search as he can, leaving no stone unturned. Your patent may then be found invalid by the court. How much time and money should you initially invest in a search? It should be in proportion to your anticipated overall investment and return from your invention..

Do not hide relevant prior art: If you know prior art that may limit the scope of the invention, do yourself a favor and tell your patent attorney or agent. Hiding this information could cost you dearly in future litigation.

Search Engines: Most industrialized countries provide powerful patent search engines on the Web. However, because the US is the largest market for intellectual property, most patents are first filed in the US. Consequently, the US patent database is the largest and any search should begin with the US databases.

The US search engine is significantly more powerful than those of other countries and it has access to two databases. The first includes issued US patents. The second covers published applications in the examination pipeline, on their way either to become patents or to be rejected. The following search engines can be found on the Web:

US Patent Office:

(Includes patent database and application database)

European Patent Office:

Japanese Patent Office:

World Intellectual Property Office (WIPO):

Canadian Patent Office:

International list of patent offices can be found at:

Commercial search engines can also be used to perform your search. Google offers a diversity of tools that can provide you with a point of view different from any government sponsored search engine. A general “Google” search will yield patent as well as non-patent information and may include marketing and manufacturing data. Google also provides a patent search engine at:

Do it yourself / Let a professional check it. Performing a good search will save you time and money in the long run. My recommendation: Perform your own search on Google and on the Web. If you determine that your invention already exists, you can stop further effort and expense developing it. If your search doesn’t yield anything, ask a professional to do the search again. If the professional does not find invalidating prior art, consider filing for a patent.

For archived newsletter and a lot of information for the small inventor go to:

If you have any question you can contact me at (858)259-2226 or email me at

This newsletter should not be construed as being legal advice. ©2011 by George Levy

Wednesday, July 27, 2011

A Low Risk Step by Step Approach for the Small Inventor

You have invented a wonderful new gadget that can advance human civilization and in the process make you rich. You want to go ahead with its development while at the same time minimize your financial risk. What do you do next? The best strategy involves following a series of steps, each step including a test: proceed if your invention passes the test, or stop and re-evaluate. These are the suggested steps:

Preliminary Commercial Evaluation: Before you spend any money you should conduct a preliminary analysis that includes the following:

  • A search on Google and on the US Patent Office database to make sure that your invention is new.
  • A manufacturing analysis to determine if it can be made cheaply and reliably enough to sell.
  • A market analysis to confirm or deny that your invention has the potential for making money.

If you find that your idea already exists or cannot be made or sold, stop right here. Otherwise go to the next step.

Professional Patent Search: the preliminary search has indicated that no one else thought of the invention before. However be careful: if you make, sell or use someone else’s invention, you could be sued for royalties. If you try to patent an already patented idea, your application will be rejected. As an insurance policy against future waste of time and money, a professional patent search should be conducted that may uncover prior art that you have missed. This search will help define how broadly your invention can be claimed. If the claims are too broad your application will be rejected. If they are too narrow you will be denied potential royalties. If the professional finds invalidating prior art, stop right here. Otherwise go to the next step.

Provisional Patent Application: The search by a professional has found no invalidating prior art. The next step is to protect your idea as quickly as possible by filing a provisional application. You should write a description in your own words without marketing data or legalese, with each individual part enumerated in an organized and sequential manner. Providing your patent practitioner with such a description will facilitate his task and possibly reduce his fee.

Provisional patent applications are less expensive to file than non-provisional applications because they are not examined by the Patent Office. They are kept on the shelf during a period of one year at the end of which they are discarded unless a conventional non-provisional patent is filed within the year. Advantages of provisional patent include:

  • Less expensive upfront
  • Increase the patent’s life from 20 to up to 21 years
  • Modifications and improvements can be rolled into the non-provisional application when it is filed.
  • Allows the inventor to claim “patent pending” and to secure a priority filing date.

Disadvantages include:

  • Slightly more expensive to file a provisional followed by a non-provisional than to file a single non-provisional application.
  • Increases the prosecution time by up to a year
  • Not examined by the patent office and therefore offers no guarantee that a patent will be issued.

Your invention is protected as of the filing date of your provisional application. You can now manufacture it, and market it. Before a year elapses from the filing date of the provisional patent, you must decide if you want to continue.

Non-provisional Patent Application: Should you decide to file the non-provisional application, you can include in it new ideas and improvements to your invention. These additions, of course, will not benefit from the early priority date of the provisional application. A non-provisional patent provides a 20 year protection from its filing date during which you are entitled by law to exclude anyone from making, importing, selling or using your invention without your authorization.

For more information and a free consultation please contact George Levy
Patents and Ventures
3980 Del Mar Meadows San Diego, CA 92130
Telephone: 858-259-2226, FAX: 858-259-2233
his newsletter should not be construed as being legal advice. ©2011 by George Levy

Saturday, May 28, 2011

The Pros and Cons of Provisional Applications

A provisional application offers an inventor a simple, low cost option of securing a filing date for protecting his invention. It is cheaper than a regular patent application, the current USPTO filing being only $110. It does not need a signed declaration or oath and does not require an information disclosure statement (IDS) which is a list of the relevant prior art known to the inventor. And since the writing of a provisional is simpler, the fees to the patent practitioner are also lower. In addition as soon as the provisional is filed, the inventor can label his invention with “patent pending” as a warning to would-be infringers.

Provisional Applications are NOT Patents. They are NOT examined by the USPTO. They are simply put in storage for one year after which they are discarded. To be of real utility and provide the benefit of their early filing date, they must be followed within a year of filing by a non-provisional application that refers to the provisional.

Provisionals Provide Greater IP Flexibility. A benefit from filing a provisional is that any amendment to the invention can be rolled into the non-provisional when it is filed. More than one provisional can be rolled into a non-provisional provided that they are all filed within a year. These amendments are new matter, receive their own filing date, and therefore do not benefit from the protection of the first filing date.

Poorly Written Provisionals Give no Protection. A provisional application is only useful if or when someone else files the same invention after the provisional filing date. It becomes then a documented proof that the inventor was the first to file. In this event, a process called interference may be initiated at the patent office, in which both applications are evaluated. If there is overlap between the patent applications a well written provisional will prevail. A poorly written provisional by someone not familiar with patent law is an illusory shield that gives you no protection.

It is therefore critical to remember that a poorly written provisional is an absolute waste of time and money. On the other hand, a provisional written with care and attention to patent law can easily be refiled as a non-provisional. Expenses incurred for the provisional can be recouped when the non-provisional is filed.

Be careful of patent promotion companies who file your patent at a greatly reduced price. They will just take a copy of your submission to them and send it to the patent office without any change to it. You can do this yourself without their help.

The specification and drawings need to be complete, broad in terms of what is described and specific to make sure the application is meeting all patentability requirements. A well written provisional will include all the requirements of a non-provisional including a description and drawings detailed enough to enable someone versed in the art to build the invention, and at least one example of the best implementation mode. Filing at least one claim is recommended. Cutting corners on the provisional makes it useless.

Provisionals Extend Patent Life. An advantage of filing a provisional followed by a non-provisional is longer patent protection. The life of a provisional is one year. The life of a non-provisional patent extends 20 years from its own filing. When a non-provisional application is filed near the end of the provisional’s life the total protection extends to nearly 21 years.

Provisionals Delay Date of Award. The disadvantage is a delay of the patent award. Because provisionals are not examined, they postpone the examination of the invention by the USPTO, lengthening the prosecution and delaying up to a year, the date of the patent award. Given that the USPTO currently has a huge backlog (about 5 years for software inventions,) filing a provisional also postpones the time when royalties can be collected. In addition, a provisional may not be as convincing as non-provisionals to investors who may need to know for sure whether the patent will be awarded. Filing a provisional followed by a non-provisional reduces the upfront cost but is more expensive in the long run.

Provisional are great for small independent inventors with limited means and incompletely defined ideas, who need patent protection while they test the profitability of their invention during the initial manufacturing and marketing phase.

The best advice for the inventor is to file a provisional if the invention is not clearly defined and in a state of constant improvements and if the competition is intense.

On the other hand, when the invention is clearly defined and stable, when competitive activities are minimal and when the inventor is convinced of the profitability of his invention, he should apply directly for a non-provisional patent.

For archived newsletter and a lot of information for the small inventor go to:

If you have any question you can contact me at (858)259-2226 or email me at

This newsletter should not be construed as being legal advice. ©2008 by George Levy

Sunday, May 1, 2011

First to File - A Job Killing Bill

Congress, lobbied by large multinational corporations, is on the verge of passing bill HR1249, the “America Invent Act” a great threat to the ability of our country to innovate. Our patent system, a carefully balanced system that has made America the envy of the world is about to be dismantled.

This new bill replaces the first to conceive by a first to file system. It recognizes the first person who submits an invention to the patent office as the true inventor.

The bill also eliminates the one year grace period defined as the time interval starting on the day that the inventor shows, sells or offers to sell his invention to the public, and ending on the day he files it. During the grace period the inventor retains ownership of the invention as long as he can prove that he diligently worked at developing it and did not abandon it. The grace period provides free protection to the inventor, even before a patent application is filed, and is a deterrent to anyone else who may be tempted to copy the invention. It allows the inventor to talk about his invention, solicit funding, discuss it with designers and manufacturers, approach distributors, run focus groups, perform small market runs etc.

While the first to conceive part of the bill may be likened to the bathwater because the number of inventors who actually rely on the conception date vs. the filing date is extremely small (less than 100), the grace period is the baby about to be thrown out. Its elimination tilts the playing field in favor to multinationals and market incumbents and is detrimental to small inventors and innovators in the following ways:

1) Inventors will race to the patent office to file, often before their invention is fully developed, resulting in additional expenses.

2) Small inventors will be placed at a disadvantage with respect to large companies who have all the engineering, manufacturing, marketing and financial resources to bring an invention to market.

3) In case of IP theft, the bill allows an inventor to dispute the rights of the thief, but only if the thief patents the invention. Proving theft is extremely difficult and the inventor will be at a great disadvantage. Stopping theft will be impossible if the thief opts not to file for patent.

4) A single offer for sale or public demonstration one day before filing a patent application can irretrievably destroy the ability of an invention to be patented.

5) The bill is poorly written, favors large corporations, and will result in numerous lawsuits.

6) The real problem at the patent office is the lack of funding caused by the diversion of filing fees to other government activities. The bill does not stop this practice.

H.R. 1249 is a job killing bill opposed by a many small business and individual inventor that includes the National Small Business Association, the IEEE-USA (the country's largest society of engineers), the U.S. Business and Industry Council and others. These smaller American business advocates all say that Congress should drop H.R. 1249 and its provisions written by large multinationals and pursue instead a bill that benefits the entire country. This is especially important since smaller American businesses have to create new jobs to replace the jobs outsource by the multinationals.

Please tell your congressman or congresswoman how, you, the small inventors, businesses and startups need a strong patent system to create new products, jobs, and wealth. Please urge him or her to oppose this bill for the above stated reasons including its effect on the grace period and its deleterious effect on innovation in this country. Telephone calls are more effective than emails but I have included information for both. In the San Diego area the persons to call are:

Senator Barbara Boxer: (619) 239-3884

Senator Dianne Feinstein Phone: (619) 231-9712
Fax: (619) 231-1108

Representative Susan Davis: (619) 280-5353
Fax: (619) 280-5311

Representative Duncan Hunter: (619)448-5201Email:

Representative Brian Bilbray: (858)350-1150

Representative Darrel Issa: 760-599-5000

Bob Filner (619) 422-5963

For more information about this topic go to the excellent article by David Boundy at Patent Docs.

For the presentation that I gave at the San Diego Inventor’s Forum on 04/14/2011 go to

For archived newsletters and a lot of information for the small inventor go to:

If you have any question you can contact me at (858)259-2226 or email me at

This newsletter should not be construed as being legal advice. ©2011 by George Levy

Thursday, March 31, 2011

New Patent Law – First to File

The Senate on March 8, 2011 voted 95-5 to pass the historic patent reform bill (S23) changing the US patent system from first to conceive to first to file. The House will soon issue its own reform bill. To take effect, the two versions will need to be reconciled by committee and approved by the president.

The final version is not yet available. Therefore this newsletter discusses the Senate bill and what it means for the little inventor. Its many provisions include the following:

· Change from first to conceive to first to file

· Change in the grace period

· Micro-entity status for reduced fees

First to Conceive vs. First to File

Until the change in the law takes effect, the US remains the only country in the world where the person who first conceives of an invention is the legally recognized inventor. If an inventor files after someone else, the current law provides for a mechanism called interference that allows the inventor to prove by means of documentation, such as log books, receipts, and affidavits, that he was the first to conceive. Interference can be complicated, expensive and uncertain. According to U.S. Patent Office director David Kappos, the probability of interference, especially for small inventors, is exceedingly small - not worth the complications of the first to conceive law.

The new law will recognize the first person who files as the legal inventor. Many analysts disagree with director Kappos and believe that it will encourage a rush to the patent office with half-baked inventions and poorly drafted applications and that it will hurt small inventors not supported by the legal and technical resources of large corporations.

Grace Period

Currently an invention cannot be patented if the inventor has publicly disclosed it more than 1 year earlier. Public disclosure can occur by a public use, public sale, a publication, or a patent (MPEP2133). If the disclosure is within the year, the inventor can still patent it in the U.S. In contrast, most countries disqualify inventions immediately after publication. This time interval called the “grace period” is of great benefit to small inventors who often need to refine their prototypes and test the market before they file.

The new law provides a much weaker grace period protection than the current law. While it recognizes the first to file, it also states that a public disclosure within one year of the filing date does not count as prior art to the invention.

This provision allows the inventor to lock in his rights to the invention by issuing a defensive publication. In doing so, he bars anyone else from patenting his invention – except himself.

Unfortunately, such a publication will prevent him from obtaining a patent in most other countries. In the US, it will start the clock ticking and commit him to file within one year or lose all his rights.

In summary the inventor will have to make a choice:

  • Either to publish early and thereby commit himself to file within a year, losing his international rights and possibly tipping his competitors at a crucial time,
  • Or not to publish and risk being preceded by someone else at the patent office.

It will still be possible for him however, to divulge his invention to others without starting the one year clock, if he does it on a confidential basis. To protect himself, he should have a non-disclosure agreement and record his invention with a time stamp service such as

The loss of the grace period will significantly impact the small inventor. It is extremely important for inventor associations to lobby their congressional representatives to maintain a strong grace period.

Micro Entities

As per the current law, the patent office charges regular fees to large entities, that is, organizations with more than 500 employees, and up to 50% reduced fees to small entities, with 500 or less employees.

The new law defines micro entities for the purpose of further fee reduction. To qualify as a micro entity and inventor cannot have any of the following:

  • 5 or more patent applications,
  • a gross income exceeding 3 times the most recently reported median household income; and
  • his invention assigned or conveyed to a larger entity.

Other Changes in the Law

The new law provides for other changes such as:

  • An ombudsman for resolving conflicts between inventors and the Patent Office.
  • Greater control by the Patent Office of its finances.
  • Satellite offices outside Washington DC.
  • USPTO authority to prioritize the examination of inventions of national importance (such as invention related to energy, water, etc).
  • Post grant review for business method patents – a mechanism for infringers to petition for a review of patent claim validity.
  • Elimination of the lack of the best mode disclosure as grounds to invalidate a patent.

For archived newsletters and a lot of information for the small inventor go to:

If you have any question you can contact me at (858)259-2226 or email me at

This newsletter should not be construed as being legal advice. ©2011 by George Levy

Monday, March 7, 2011

Defensive Publications, Trade Secrets, NDA’s and Time Stamping

Patents are not the only method of protecting intellectual property. Other methods include Defensive Publications, Trade Secrets, and Non-Disclosure Agreements.

Defensive Publications

The inventor can preempt anyone else from patenting his invention by publishing a detailed description of it. In doing so he loses all exclusive rights to it, and so does everyone else. The invention enters the public domain and can be used freely by anyone. There are many reasons why someone may use this approach. For example the owner of an idea may have no business incentive to market a cure for disease afflicting an underdeveloped country because the profits would be too small. Instead, he may decide to make the cure public for the purpose of generating goodwill for the company.

Yet another reason for publishing an idea without a patent is if the marketing time window is very small. For example, the idea may involve a fad, such as a line of fashion with an estimated lifetime of a few months. This is too short for a patent to be awarded and generate revenues.

A more sinister reason for making an idea public is to impair a competing company suspected of employing the idea as a trade secret in the manufacturing of a product in which the inventor has no interest. Making the idea public can open the floodgate of competition against the competitor and reduce its resources and ability to compete against the inventor.

Trade Secrets

Alternatively, an inventor can protect an invention as a trade secret. To qualify as a trade secret the invention must not be generally known to the public, must provide an economic advantage to the owner over competitors or customers, and must be subject to reasonable efforts to maintain its secrecy. He can protect its confidential information through non-compete and non-disclosure contracts with its employees or consultants. In addition, the owner must be actively using it, otherwise the invention is considered to be abandoned and the inventor automatically loses all rights to it. An example of a trade secret is the Coca Cola formulation.

Trade secrets arise out of state laws and not out of federal laws. Most states have adopted the Uniform Trade Secrets Act (UTSA). Only Massachusetts, New York, New Jersey, North Carolina, and Texas have not adopted the UTSA. So, the law may vary slightly from jurisdiction to jurisdiction.

The law of protection of confidential information effectively allows a perpetual monopoly in secret information. Therefore trade secrets do not expire as do patents. However, the lack of formal protection also means that a third party may independently duplicate, use and patent this information.

What if this third party now sues the original holder of the trade secret for infringement? The original holder can defeat the lawsuit by showing that he knew of, and was using the invention all along, before the patent was filed, and therefore that the patent owner is not the first inventor of the invention. The patent would then be declared invalid and enter the public domain for everyone to use freely. The Coca Cola Company may be facing this situation if the recipe in inventor John Pemberton's papers is found to be authentic.

Non-Disclosure Agreements

Another method of protecting intellectual properties includes Non-Disclosure-Agreements. An NDA is a legal contract between at least two parties that specifies confidential information that the parties wish to exchange, usually for the purpose of entering a business relationship. In an NDA the parties agree not to disclose this information to any third party.

NDA’s can be unilateral, meaning that information is transferred in only one direction, or mutual, when information is transferred both ways. Often, companies require employees to sign NDA’s as a condition of their employment.

Companies deeply knowledgeable in the technology of an invention may not be willing to sign an NDA with an inventor because the NDA may represent an obstacle to their own research. In this eventuality, the best approach for the inventor is to file a provisional patent application and then transmit information to the company. This application is proof that the inventor is the first one to have conceived of the invention.

An example of NDA can be found at Patents and Ventures.

Time-Stamping and Document Registration

Other methods of proving inventorship include document registration and time stamping. In document registration as offered by Creative Registry, the document is uploaded to a web site and kept there until the need arises to prove inventorship. In time stamping, a software application appends a non-modifiable time stamp to a document to certify that this document was generated at a particular date. Companies offering this service include Read Notify and Secustamp.

Such protected documents do not constitute patent applications and may be voided if the inventor cannot show due diligence in pursuing the invention.

For archived newsletters and a lot of information for the small inventor go to:

If you have any question you can contact me at (858)259-2226 or email me at

This newsletter should not be construed as being legal advice. ©2009 by George Levy