Tuesday, July 27, 2010
PATENT SEARCHES. There are different types of patent searches depending on what is being searched for.
Novelty or Patentability Searches. These searches help to answer the question: Can I get a patent on my invention. These searches encompass all prior art, whether dead, invalid, US or foreign. These searches typically only answer the first of the two main patentability questions, that is, whether the invention is novel in light of the prior art. The second question, much more murky, is whether the invention is obvious in light of the prior art. These searches cannot definitively answer that second question, but can give guidance to a patent professional, and perhaps suggest design around tactics.
Infringement Searches. Infringement searches are also called Right-to-Use Searches, Clearance Searches, or Freedom of Operation Searches. Whether you wish to get a patent or not, you will wish to know if producing and marketing your invention may infringe the claims of someone else’s patent. These searches are more narrow, because you don’t care about dead or expired patents, the relevant date range is the last 20 years, and if you are only interested in the US market, you don’t care about foreign patents. These searches are also more narrow than novelty and invalidity searches in that you only care about patents, not other types of prior art. Like invalidity searches, these searches focus on individual claims of patents.
Invalidity Searches. Invalidity searches seek to answer the question: Was the patent issued erroneously such that it should be invalidated. These searches, which focus on individual claims in a patent, are typically more time consuming than a novelty search. The focus is on finding prior art that existed before the patent application was filed, and which was not cited to or considered by the Patent Office during the examination of the patent application. Just like novelty searches, invalidity searches are not limited to patents and patent applications, but anything which may be prior art, such as an industry report, or pre-existing apparatus, or trade journal article.
State-of-the-Art Searches. These are very different types of patent searches. The point of these searches is to allow researchers and developers to see what is the current state of development in a particular field of endeavor.
TRADEMARK SEARCHES. Also called Trademark Clearance Searches and Name Availability Searches, this type of search is performed to see if a name is appropriable for use as a trademark, both from the perspective of eligibility for registration and from the perspective of avoiding using someone else’s mark. These searches typically search not only State and Federal trademark and corporate name databases, but also yellow pages, phone books, and the Internet, among other sources.
COPYRIGHT SEARCHES. Copyright searches are often the hardest of all searches to be confident about. You can search titles and authors at the Copyright Office, and you can do Google, Google/Scholar, and Google/Book searches. There also exist specialty libraries for various types of artists that can and should be checked, such as for music and the visual arts. But any type of search will necessarily omit huge swaths of published material that simply (a) has not been registered for copyright (even though it is copyrighted) and/or (b) has never been put on the internet.
Wednesday, June 16, 2010
Many entrepreneurs, seeking knowledge and thrift in cost, research the patent process online. Invariably, they come away with spotty information and even that is usually wrong. One area of confusion is the type of patent applications that are available.
This entry provides a list of some of the types of patent applications that entrepreneurs can come across:
- Provisional: these applications do not yield “provisional patents”. Instead, they are temporary patent applications that give a priority date for only so much as is actually disclosed and enabled in the application, and it is only good for one year. If a nonprovisional is not filed within that year, the priority date is blown. Many entrepreneurs seeking self-help damage or destroy whatever intellectual property rights they may have through ill-considered use of the provisional patent application procedure.
- Nonprovisional: these are regular patent applications, whether utility, design, or plant, that are examined by the Patent Office.
- International: these are various species of patent applications that can be Patent Cooperation Treating (PCT) applications filed at the World Intellectual Property Office (WIPO), or foreign applications, or regional applications.
- PCT international: these are international patent applications filed under the PCT with a WIPO Receiving Office. They are useful for countries that are signatories to the PCT.
- Foreign: these are applications filed in foreign countries.
- Regional: these are applications filed in foreign regions that have set up regional reviewing authorities, such at the European Patent Organization (EPO).
- Non-PCT international: these are foreign applications filed with Countries that re not signatories to the PCT.
- Utility: these are what mot people think of when they think of inventions. These are regular patent applications that are not filed as design (ornamental) patent applications or plant patent applications.
- Design: these are patent applications filed under the design patent application procedure and are for ornamental features of functional articles.
- Plant: these are patent applications covering organic plants (as opposed to, for example, factories).
- Continuation: these are applications that are filed during, and claiming priority to, a pending patent application.
- Continuation-in-part: these are continuation applications that include additional new matter.
- Divisional: these are continuation applications that essentially divide the original application into two different applications two cover two different inventions.
- CPA: these are patent applications, no longer in use, which essentially continued examination of the original patent application.
- Substitute: these are a misnomer in the sense that it is not a substitute patent application, but rather a substitute specification replacing the specification in a patent application.
Important note: This list is not comprehensive.
Saturday, May 29, 2010
The short answer is: we don't know for certain. Patent application drafting and patent prosecution have so many variables, many of which are not under the control of the patent attorney, that any estimate is a guess at most. The most a patent attorney can ever do, if they are not negotiating a flat fee (or maximum/minimum), which has its own hazards, is provide an estimate of what the average in a particular area of technology has historically been.
Entrepreneurs however have the ability to manage costs based on choices they make. To explain this, it is necessary to understand some of the factors that go into cost:
(1)Prior art search: whether a prior search is ordered, and how extensive; whether the client wants the patent attorney to evaluate the prior art search results; whether the prior art search results will require a design around; whether the client wishes the patent attorney to start drafting the patent application prior to the prior art search results being returned.
(2)Stage of invention and production: whether the client has built a prototype or is working off unproven sketches; whether the client has made a production model; how complete is development of the invention; whether the client has a business plan.
(3)Complexity of invention and technology: what art area is the invention in—mechanical, electrical, computer science, material science, chemical, etc.; does it have multiple embodiments; how key is the invention to the business plan.
(4)The attorney fees per hour or per embodiment.
(5)How many inventors are there and are their relative contributions known.
(6)Whether the client is defensively applying for a patent application or offensively.
(7)Whether the client wishes to pursue foreign patent rights.
(8)Whether the invention is on the market now or has it otherwise been publicly used or made known to others not under a duty of confidentiality.
(9)Whether the client wishes to file a provisional or nonprovisional patent application.
(10)Whether other government agencies need to be involved (such as the FDA or the Department of Agriculture).
(11)Whether the invention implicates national security.
(12)Whether the invention is partially funded with Federal money.
(13)Whether the client is a small entity or a large entity.
This is not a complete list, but it does provide the entrepreneur with factors which can be used to help manage costs. Looking at the list, it should be obvious that entrepreneurs have a significant ability to manage patent costs especially in categories 1, 2, 3, 7, and 9. In short, if there is a prior art search, it will cost more. If there are multiple embodiments, it will cost more. If the client keeps adding to the invention, improving, and making changes, after the patent drafting has started, it will cost more. If the client wishes to pursue foreign patent rights, it will cost more. If the invention is incipient instead of developed, it will cost more.
One scenario frustrating both for the client and the patent attorney, is the client who comes in, very enthusiastic, who wants an estimate, but has not thought through any of these factors, and then makes multiple changes and adds embodiments after patent application drafting has started. The estimates then bear no relation to the work being done and the client gets a significantly higher bill.
Wise entrepreneurs, as mentioned in previous blogs, will make a comprehensive business plan. That plan should certainly include consideration of the above factors, at a minimum.
Tuesday, January 12, 2010
Many beginning entrepreneurs find that having a checklist to work from helps organize the tasks that need to be accomplished. Basic checklists like the following are used to help get the ball rolling. Note this is not a comprehensive list and there is some item overlap. The inclusions in the list, and the substantive acts and contents of each document on the list, can change depending on the jurisdiction. Also, while this list is enumerated, the enumeration is for convenience only. Different individuals will reach different starting points depending on the moment of inspiration.
- Comprehensive Business Plan (how will you make money)
- IP Protection in place, including some or all of, trademark(s) registrations applied for, proper trademark marking of goods and services, name availability search(es), copyright registration(s) applied for, patent application(s) filed, work for hire and assignment agreements for employees and contractors executed, assignments on record at the appropriate recording agency, patentability search and freedom of operation opinion
- Nondisclosure agreements ready for investors, evaluators, consultants, and other third-parties to sign
- Business formation documents in place, usually including incorporation/certificate of formation, articles of incorporation/membership agreement, first organizational meeting and adoption of bylaws, issue certificates of ownership/share certificates and update register shareholders agreement/membership agreement(including clauses for assigning intellectual property, work for hire, nondisclosure, noncompetition, and, among others, buy sell), buy-sale and valuation agreement, technology transfer agreement
- Employment agreements in place (including clauses for assigning intellectual property, work for hire, nondisclosure, noncompetition)
- Asset listing (an IP audit)
Friday, January 1, 2010
What is the significance of this? That errors in dates and deadlines are extremely common and constant vigilance in drafting legal documents is required.
Law is beset by legal deadlines and drop dead dates. Intellectual property law is no exception, and in fact has more than the average number of kill dates, with very dire consequences. Just by way of a few examples, for patents there is the one year statutory bar deadline, the one year conversion from provisional to nonprovisional deadline, the one year foreign application filing deadline, the 20 and 30 month national stage filing deadlines, the six month response deadlines, etc. (By the way, the large number of myriad kill dates in patent law are a good reason why inventors should not go it alone). A particularly knotty deadline is appealing de novo a BPAI decision, which must be done within two months. Many practitioners assume that "two months" means 60 days, with 30 days a month. But in fact, the two months means two actual months. Thus, if the two months after the decision include a month that has 31 days, then the appeal can be, for example, in 61 or 62 days (if there are two months sequentially of 31 days each, like July and August).