IPfever

Atlanta law firm for global business

Category: Intellectual Property

  • How to Write a Patent Application: Specification

    How to Write a Patent Application: Specification

    Patent Specification in your application is the body of your application.

    Your patent claims will be read in the context of the specification. Therefore, the specification should include all the information necessary to figure out what you claimed in your patent claim(s).  Roughly speaking, it should be an all-inclusive manual for your invention.

    It’s part of the deal you’re making with the public.

    You’re disclosing  your invention to the public, and in exchange you’ll be granted a monopoly for a limited time. To ensure fairness in this deal, you’re required to fully and comprehensibly disclose your invention without hiding anything.

    You should focus on making the invention available to the public. 

    If you want to hide something from the public, you’re free to do so by opting out from disclosing it, in which case you shouldn’t claim it either. However, you shouldn’t attempt to hide even a minute detail of your claimed invention because it can invalidate your patent retrospectively.

    For example, let’s say you know two ways to make your invention. You know one works better than the other, but you don’t want people know about the better one. If you disclose the other one only, the patent will be held invalid.

    If you don’t claim it now, you may lose it forever.

    You may be tempted to include everything you know in your patent application because it would make sure you disclose adequately. Be careful when you include something in your disclosure which are not claimed. Filing a patent application is considered a publication. If you publish something, you will have a year to file a patent application for it. After that, you can’t patent it.

    There’s much more.

    Although you can learn a lot from the patent applications you found during your clearance search, it’s still not a perfect guide for your specification. To understand your claim, one must read the specification. For this reason, asking an attorney who reviewed your claim(s) to review your specification could be a lot less time-consuming than you think. You don’t need to pay for the separate availability retainer in that case. Just talk to the lawyer who reviewed your claim(s).

  • How to Write a Patent Application: Claims

    How to Write a Patent Application: Claims

    Patent claim in your application defines your invention.

    And it will determine the scope of your legal rights. In other words, it will tell the others what can be done and cannot be done without infringing your patent right.

    Read the claims written by professionals.

    By the time you start drafting your application, you probably read at least a number of patent applications. And if you did with care, you would’ve noticed the peculiar but consistent writing style.  In fact, you must follow a specific set of rules created by the USPTO when writing claims.

    Pay attention to details including punctuation and spacing.

    You shouldn’t worry about plagiarism. Use the wordings and grammar (including all formalities) that you see in the patent applications that are granted. Don’t be creative and get rejected.

    What about the substance?

    Patent applications often have multiple claims, and a claim likely has a multiple components.

    The wordier the better?

    No. If you include a non-essential component in your patent claim, your competitor can avoid infringement by making a product without the component.

    Then, as little as possible?

    That’s another no. If there is an alternative material or device which you left out, it could lead to an easy design-around for your competitor.

    There’s much more.

    To be honest, it is not an easy task to write a good claim. For example, patent law distinguishes “comprising” and “consisting.” If you say your fuel additive consists of chemical A and chemical B, you are telling that there’s no other chemical than A and B. “Comprising” is, on the other hand, open-ended.

    Should you know all these technicalities? Well, if you want to become a patent practitioner. Otherwise, it’s more efficient to have a patent practitioner take a look at what you wrote. If your invention is not too complicated, the review shouldn’t take too long.

  • Why getting patent so expensive?

    Why getting patent so expensive?

    It doesn’t have to be so expensive.

    It’s just that the law firms, boutiques, or their likes practicing patent law are focused on serving bigger mostly corporate clients rather than individual inventors.

    When it comes to an invention which is more about an idea and less about technology, you don’t need PhDs spending hours reviewing the art let alone attorneys.

    In addition, firms charge more money per hour for small clients than those bigger corporate accounts that generate vast volumes. You can’t really blame them as that’s how business works, but it’s unfortunate that there are few options for individuals and small businesses.

    There are alternative, smarter ways to work with attorneys thanks to the internet.

    It won’t be easy to find them because the internet search usually shows heavily advertised service first, which can be cheap but not necessarily a better deal. At all times, make sure that you’re working with a patent attorney/agent who’s registered with the USPTO.

  • Utility vs. Design Patent

    Utility vs. Design Patent

    Actually there are more than one type of patent.

    There’s utility patent, which is basically what you think patent is. And there’s design patent, which is somewhat unpopular but got the attention when Apple sued Samsung for infringing its design patent.

    These two types likely cover all your needs. If you want to protect the cosmetic features of your product, consider design patent. For all other cases, you’ll be thinking a utility patent.

    To add, if your design feature has a utility in it (i.e. when your new design serves a function), then you will probably have to go with a utility patent.

  • What can be patented?

    What can be patented?

    You found nothing like yours in your Google Patents search, and you might feel ready to patent your new idea. It’s not that simple.

    First, your invention should be new in a sense that people don’t know it yet.

    Even if nobody really patented an idea, the idea might be known to many as a common sense or to a small number of people known as experts or scholars. It doesn’t matter how many people know it.

    When you go into detailed analysis, it gets more complicated. Let’s say your company is the first to sell a mouse pad made of bamboo and you want to patent it.

    1. The bamboo is obviously not a new material; it’s not even a man-made material. Clearly, it’s not something you can consider an invention.
    2. Similarly, a mouse pad is not a new thing. It’s been made of many different materials and widely used in personal computing.
    3. Now, a mouse pad made of bamboo? Let’s further assume nobody on the planet Earth ever made or used a mouse pad made of bamboo. Is it new then?

    Unfortunately, it’s not. The law will not only look at the things that already exist but also guess what can be done with existing technology and skills. I mean bamboo is a sturdy and hard material that can be easily shaped into a small plate. The law will likely say that your new idea of making a mouse pad with a bamboo was obvious. Basically it’s saying that “we don’t need an inventor to do that.”

    Second, you have to fit your idea into certain categories that can be patented.

    The law provides a short list: process, machine, manufacture, or composition of matter. If you think about it, it’s pretty broad. In the above example, we discussed a bamboo mouse pad as a manufacture, which we concluded not patentable.

    However, you may have a ground-breaking manufacturing method to process a raw bamboo tree into a large plate that can be easily cut into any shape of mouse pads. Well, that might be a patentable “process”.

    We can go further. If you designed and made a machine for the processing of raw bamboo trees, you may patent the machine as long as it satisfies other requirements. As you can guess, inventors often patent a manufacture, the process of making it, and the machine that performs the process at the same time.

    Lastly, your idea has to have a purpose.

    This is usually not a concern because the law doesn’t ask for a good one. If you can find a single use for your invention, that’ll be fine. The use doesn’t have to be new or better than others. In fact, even if your method of processing bamboo turned out to be too expensive to make economic sense, it still has a utility in the eye of the law.

  • Trademark Maintenance: does trademark registration expire?

    Trademark Maintenance: does trademark registration expire?

    Maintaining registration calls for both administrative and executive action.

    Administratively, you need to file with the USPTO a showing that you’re still using the mark after 5 years of the registration, and every 10 years, you need to file a request for renewal.

    On the business side, you must continue using your mark at all times, even after the registration. This requirement is often overlooked because your staff who handles trademark typically has no saying in continuing/discontinuing a product line.

    You need to monitor your registration status and enforce your trademark rights yourself.

    Trademark Status and Document Retrieval (TSDR) service offered by the USPTO is a good place to start. The USPTO recommends every trademark applicant to check TSDR regularly.

    The USPTO does not enforce registered trademarks for the owners. It’s your obligation to monitor infringing activities in the market and take actions to stop them. Often it involves writing a letter to notify the wrongdoer and ask for compliance/compensation, but you may need to bring a lawsuit if there’s a dispute.

  • Patent Infringement: Clearance Search Explained

    Patent Infringement: Clearance Search Explained

    Patent clearance search is called a Freedom-To-Operate opinion because it reveals others’ patents that are blocking your way. It requires searching and analyzing patent documents in the country where you do business.

    Even if you invent something new, it is often based on other’s previous works.

    For example, you get a patent on a new cap design for plastic bottles, which reduces the cost of production. Even though you have rights to the new cap design, someone else might have patent rights to the bottle’s body design. Without the body, you won’t be making  a good use of the cap. Furthermore, even if you design an entirely new bottle (both the cap and the body), the method of making bottles out of plastic might have been patented. These are blocking patents because without infringing them you can’t practice your right.

    You can search through patent documents via Google Patents (a free service by Google at https://patents.google.com).

    Once you identify a potentially blocking patent, the scope of the patent needs to be analyzed.

    1. Claims determine the scope.

    Patent applicants are required to stipulate in the Claims what exactly their invention is about. All other parts of patent application help you understand the claim.

    2. The scope will be construed by the courts.

    What the patent owner believes does not matter. Nor does what you or your attorney think matter. When there’s a patent lawsuit, the court may side with either your attorney or your opponent’s attorney.

    However, a legal opinion formed by a qualified attorney in your favor is helpful. For example, let’s say someone sued you for patent infringement and is being awarded for damages. If you can prove that you relied on your attorney’s advice that there’s no infringement, you may shield yourself from the penalties for willful infringement (i.e. knowingly violating someone else’s right). The penalties can increase the damages up to three times.

    3. Patents do expire, so you should check the dates.

    Most patents expire after 20 years from the filing date. So, if you find an old blocking patent, that might be actually a good news. Once the patent expires, you know for sure that’s in the public domain.

    Blocking patents bar you from not only selling but also importing.

    Often you rely on production facilities overseas and feel that blocking patents are not your problem. But if foreign products infringe U.S. patents, they can’t be imported into the U.S.  Of course, the other way around is true.

    You can design around, get license, or challenge the patent’s validity.

    When there’s a blocking patent, there are still things you can do. You can design around, meaning you find other ways to achieve the same outcome; you can get a license if the patent owner is willing to let you use the invention for a reasonable loyalty; or you can argue before the court that the patent is not valid.

  • Patent: what is it?

    Patent: what is it?

    Patent is an expensive but smart way to protect your business.

    Getting a patent is not a quick and easy process. It usually takes years of prosecution (though you can claim “patent pending” from the moment you file the application) and thousands of dollars. However, the reward is a government sanctioned monopoly. Yes, MONOPOLY.

    Patent is a deal you make with the public.

    You discloses something other people don’t know, and in exchange other people can’t use it for a limited time period (about twenty years) unless you allow them. It’s a win-win. You don’t have to worry about someone else stealing your idea, and the others can learn and improve your invention.

    It’s not a contract.

    Although the exchange of knowledge and a monopoly right is between you and the rest of the society, there’s no contractual relationship between you and the society. Instead, the United States Patent and Trademark Office (“USPTO”) issues a patent to applicants who discloses their knowledge in patent applications which meet certain requirements. Moreover, if someone infringes your patent rights, you don’t go to the USPTO (nor to a law enforcement agency) but to courts.

  • Trademark Clearance Search

    Trademark Clearance Search

    It is absolutely necessary to find out if there is anyone using your mark prior to your use. A clearance search is often performed through proprietary services, which often search not only state and federal registrations but also common law trademarks. Typically, a better service costs more; but depending on your situation a simple Google search may suffice.

    Typically, a clearance search provides lists of all current state, federal, common law trademarks that are identical or similar to your mark. Unless your mark is very unusual, you will face a number of identical and similar trademarks in use. Even if there is an identical trademark registered and used, it does not necessarily mean that you can’t use the mark; however, it is also true that even if there is no identical trademark, you might not be able to use the mark. At the end it all comes down to whether your use of the mark would infringe other trademark owner’s rights.

  • Trademark Registration: do I need to hire an attorney?

    Trademark Registration: do I need to hire an attorney?

    Getting a trademark, you can either “do it yourself” or hire a professionals. DIY option describes not only filing directly via TEAS at USPTO.gov but also using commercial services under $100.

    Let’s compare these two options.

    Do it yourself Professional Help
    Mark Your choice of wording and design Likely a better wording and design
    Registration online trademark search/registration via your representative
    Cost USPTO fees + $100 commercial service fees USPTO fees + up to $2,000 attorney fees + design cost

    Trademark registration is not too complicated.

    Nonetheless, mistakes can cost your time and money. If you are not going to hire an attorney, you should read and watch everything on USPTO’s Trademark Basics before you proceed. On a side note, even if things go smoothly while registering trademark, lawyers can improve the strength of the registered trademark significantly and designers will give your logo/design a professional look.

    USPTO offers an online application form through TEAS (Trademark Electronic Application System).

    There are various forms including TEAS plus, TEAS RF (Reduced Fee), and TEAS regular application types. Latter forms are subject to higher fees but offers some flexibility to applicants. Assuming you don’t make any mistake in filling out the form, you can save up to $100 by choosing TEAS plus. TEAS forms are web-based, guided, multi-page forms that anyone can learn the process as-you-go.