Intellectual Property 11

Does a patent give me the right to sell my invention anywhere in the United States?

No. That's a common misconception. A patent does not give you any rights to sell your invention. It only gives you the right to stop others from selling it. The right to actually sell your product may be controlled by the FDA or some other regulatory agency or could be limited by existing patents. Suppose, for instance, you fiddle around with one of the pocket electronic organizers and devise a way to make a new plug-in card that will let the pocket organizer double as a remote control for the TV and a garage door opener. You might have a patentable invention but might not be able to sell the invention because of prior patents on the machine and/or its plug-in cards.

How do I find out for sure that no one else has already made the same invention?

You should search industry publications and catalogs and have a search of Patent Office records done to determine what patents or published patent applications might exist for inventions similar to yours.

Where can I do such a search?

You can search the patent records at the Patent and Trademark Office in Arlington, VA. Or, you can search records in the PTO depository libraries located throughout the United States. U.S. patents issued since 1974 and published patent applicatons are word-searchable online at http://www.uspto.gov, and if you know the patent number or patent class, you can also view there any issued patent since the first one in 1790. Commercial services are available for searching this information as well as various international and foreign patent applications and patents.

How long does a patent last?

Patents on inventions typically last 20 years from the date the patent application is filed, provided periodic maintenance fees are paid to the government. However, if the patent office delayed the issuance of the patent according to a formula built into the patent law, the term will be extended a corresponding number of days. Patents for drugs may also be entitled to extension due to delay in getting regulatory approval. Design patents are granted for 14 years.

Can a patent be renewed?

No. When the patent expires, you can't use the patent to prevent anyone from using the invention.

When do I file a patent?

If you plan to patent an invention, do so as soon as possible. A good time is as soon as you can describe the invention in enough detail to enable someone else to make and use it. In the United States you have to apply for a patent within one year of the time you first disclose the device or offer it for sale. In other countries, you have to apply for the patent before it is publicly disclosed. Since disclosure includes showing your plans to others without first making them sign a confidentiality (nondisclosure) agreement, it is a good idea to get nondisclosure agreements signed by anyone you show the device to before it is patented and make marketing decisions early on.

What does the Patent Office charge to file a patent application?

The Patent and Trademark Office fee depends on the number of claims in the patent application and the size of the company filing for the patent. The minimum fee is currently $395 for small businesses and $790 for big businesses and covers applications with no more than three independent claims and no more than twenty total claims. The fee is adjusted annually, so be sure to check the current amount before sending in an application. Sometimes there are additional fees to be paid while the patent application is being prosecuted, and when the application is allowed, there will be an Issue Fee and maybe a publication fee as well.

Do I need an attorney to file for a patent?

You will very likely need the services of a patent attorney or a patent agent, (Patent agents don't have to be attorneys to practice before the U.S. Patent Office, but they do have to pass a difficult exam,) While you are technically not prohibited from submitting an application yourself, it is usually foolish to try to do so unless you are very well versed in patent law. In fact, a form letter the Patent Office sends out to inventors whose applications are rejected reads in part:

An examination of this application reveals that applicant is unfamiliar with patent prosecuting procedure. While an inventor may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution.

Furthermore, an attorney can help you plan the right strategy for your purposes. Explains attorney Gerry Elman. "The first thing to think about is—why do you want a patent? Is it because you are about to sell a product and want to make sure nobody else can ride your coattails into the marketplace? Or is it because you have an idea for a product and want to sell this idea to some company that would make and sell the product, paying you a fee for each one sold? Or do you want to be able to say you have a patent pending so that investors will fund your business? Or do you just want to put it on your resume and your Who's Who listing? These different motivations would give rise to differing strategies in the expenditure of time and money."

How much will it cost me to have a patent attorney file the application?

If you do retain a patent attorney, expect to pay $2,000 to $6,000 or more. If your invention has potential for significant profit this would be money well spent, since the value of your patent could hinge on the way the patent disclosure and claims are written.

Where do I find a patent attorney or agent?

Search the web or look in the Yellow Pages of your phone book under "Patent" and/or under the lawyer listings. You can also get a list of attorneys and agents registered to practice before the Patent Office from the Superintendent of Documents, Government Printing Office. The list is also available online at http://www.uspto.gov. While you may file for a patent without using an agent or attorney, if you pay anyone else to prepare your application, they must have passed the Patent Office examination and must be registered to practice before the Patent Office.

What about companies that say they will patent and market your products? Are they any good?

Some are better at marketing their services than marketing other people's products. Check around carefully before using one of these groups. Try to find other inventors and ask what their experiences have been and who they know to be truly helpful If you can't find any inventors organizations, try calling local SCORE, SBDC, SBA or university or college business school offices, and ask for references. Magazines such as Inventors' Digest( http://www.inventorsdigest.com) often list resources, too.

When I file a patent can I leave out information that is a trade secret?

No. You must disclose your invention in full so that anyone of ordinary skill in the relevant technology would be able to make and use the invention.

How can I see if there is interest in my idea and protect it from being stolen by a manufacturer?

The best way is to file for a patent on your invention before showing it to manufacturers.

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