To Patent or not to Patent? – That is the Question

You came up with a million dollar idea. Should you bother patenting it? Why? Why not?

A simple reason for patenting is that if you intend to get development funds or to license your invention, you need proof that the invention actually belongs to you and is not already known and in the public domain. Selling your idea to potential investors or licensees without having a patent is like trying to sell the Brooklyn Bridge. No savvy investor or buyer will take you seriously. Worse, the unscrupulous ones will take your idea and commercialize it themselves, leaving you out in the cold with no recourse.

A filed patent, provisional or not, gives you protection by providing you with a priority filing date – but a filed patent is neither a proof of innovation nor a proof of ownership: it is only a document stating that your invention has been filed with the US Patent Office. Nothing more.

An awarded patent is the proof of ownership. It signifies that your invention has been

· examined by the US Patent Office;

· compared with prior art;

· has been found to be original enough to be granted a patent; and

· actually belongs to you.

To be taken seriously you need an awarded patent. Not a search. Not a filed provisional application. Not even a filed non-provisional application. To be taken seriously in any licensing negotiation, you need an awarded patent.

In addition, if you intend to manufacture and sell the invention yourself, having a patent is also a good business move: the federal government has enacted patent law to reward inventors by giving them the right to exclude others from making, using, selling, offering to sell, and importing the invention in the US. A patent lasts 20 years from the date of filing, after which it falls into the public domain.

Patenting your invention is a good idea. But is your invention patentable? To be eligible for patent an idea needs to be useful; it can be a process, a machine, a manufacturing method, a composition of matter, or an improvement on an already existing patent (35USC 101).

Ideas which are not patentable include:

1) Printed matter or music - these are eligible for copyright;

2) Naturally occurring substances except for those which are purified, modified, or genetically selected or engineered.

3) Scientific principles such as E=mc².

4) Aggregate with no functional interconnection or no utility per se, such as a dishwasher with a telephone.

5) Illegal devices or methods.

6) Devices which do not work, for example, perpetual motion machines or time travel machines.

7) Atomic bombs. (Nuclear technology not associated with bombs is patentable and weapons are patentable).

8) Pure algorithms or mental processes. To be patentable ideas must be tied to a material transformation or to a particular machine.

Works of art and architectural designs are eligible for design patents. They may also be eligible for copyright.

Furthermore, to be patentable, your idea needs to be original. An idea used or published by others anywhere in the world is not patentable. Making such determination is difficult since any publication in any language since the invention of writing can be material in patentability. Do not skimp on the patent search. Do the search yourself, for example, using Google Search; then ask a professional to do it again before proceeding further.

Having determined that your invention is patentable, the next step is to draft a business plan to find out if it has any money making potential. This will be the topic of a future newsletter.

For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as legal advice. ©2010 by George Levy

Patent Reform – Presentation by Director of USPTO

Director David Kappos of the US Patent Office made two consecutive presentations on Thursday April 29, the first at the San Diego Inventors Forum and the second for the San Diego Intellectual Property Law Association. His mission: to improve the US Patent Office. The following are some of the proposed changes to patent law that he discussed:

Emphasis on Innovation
Director Kappos remarked that “innovation is the only sustainable source of advantage for world economies” and noted that IP is becoming the “world’s currency of innovation.” The proposed reform at the USPTO is based on this assumption.

Extension of provisional patents to 24 months

After filing a provisional application, applicants will be allowed to file a non-provisional applications and postpone paying the search and publication fees ($270 +$110 respectively for a small entity) by one year. Applicants would still be required to pay the non-provisional filing fee of $165 immediately and sign an oath or declaration. In addition the non-provisional would be published after 18 months from the filing of the provisional. This measure effectively provides an extension of the provisional patent process by allowing inventor to postpone paying for a full non-provisional application. More information can be found at:

http://www.uspto.gov/patents/law/notices/75fr16750.pdfhttp://www.uspto.gov/patents/law/notices/75fr16750.pdf

Ombudsman Pilot Program

This program is designed to enhance the USPTO's ability to assist applicants and or their representatives with issues that arise during patent application prosecution. More specifically, when there is a breakdown in the normal prosecution process, the Ombudsman Pilot Program can assist in getting the process back on track. The Ombudsman Pilot Program is not intended to circumvent normal communication between applicants and or their representatives and examiners or Supervisory Patent Examiners (SPEs). More information on this program can be found at http://www.uspto.gov/patents/ombudsman.jsp.

Micro Entities

Currently the fees are structured for two business classes: small entities (for example organizations with 500 or less employees) and large entities. Filing fees for small entities are half of that for large entities. The new bill creates a third class: micro-entities which should benefit from a 75% fee discount. A micro-entity is defined in the bill rather narrowly. The inventor must have filed fewer than 5 prior patent applications, the application must be unassigned or assigned to an entity with 5 or fewer employees, and the inventor (if unassigned) or the assignee must have a gross income less than 2.5 times the average gross income from the prior year as reported by the Department of Labor.

First to Invent vs. First to File

According to Director Kappos, “first to file” vs. “first to invent” is a non-issue and for all practical purposes, the US is already operating as a first to file patent system. According to him the likelihood is 0.01% that two inventors files their invention nearly simultaneously and rely on the first to invent criteria during interference proceedings. In those situations, the first to file usually wins. In 2007 the total number of interference cases for all applicants, of all sizes that were decided based on a priority claim was 7! Moreover, of those 7 cases, only one case involved a small or medium sized entity. Therefore “first to invent” is a complication not worth perpetuating. Director Kappos makes simplifying but invalid assumptions. For a good rebuttal go to patentlyo.

Interviews with Examiners

Mr. Kappos is encouraging early interviews with examiners and has set forth provisions that encourage examiner-initiated interviews. Also, the USPTO has been holding additional interview practice training for examiners.

Green Tech

A new program “Green Tech” has been unveiled at the USPTO, with the mission to drive innovation in the green technology sector, increase U.S. competitiveness in green technology, and create green jobs. It is a pilot program designed to reduce the average processing time of green technology patent applications. Through this program, applications already on file in certain green technology areas will be eligible to be accorded special status and examined on an accelerated basis. To be eligible, applicants must file a no-cost petition for special status and indicate how the invention materially contributes to environmental quality, the discovery or development of renewable energy resources, more efficient utilization and conservation of energy resources, or greenhouse gas emission reduction. You can get more information at http://www.uspto.gov/patents/init_events/green_tech.jsp ,

For archived newsletters and a lot of information for the small inventor go to: www.patentsandventures.com.

If you have any question you can contact me at (858)259-2226 or email me at glevy@patentsandventures.com.

This newsletter should not be construed as legal advice. ©2010 by George Levy