Utility patents are the best way to protect most inventions. But to get one, you have to convince a USPTO examiner that your application is worthy.
Utility patents are by far the most common type of patent. Thus, the term “patent” almost always means “utility patent.” Nearly all of the famous patents in history – the telephone, light bulb, transistor, airplane, motion picture, were utility patents.
Note the underlined new. You have to prove that the invention is original, and not just a trivial (obvious) tweak to some older prior art.
Here “useful” means that the invention must have some actual benefit (i.e., it isn’t clearly impossible or too illegal) and does more than just being decorative.
Utility patents are often the hardest type of IP to get. USPTO examiners usually attempt to use prior art to reject new applications. These rejections are called “office communications.” You must send in a written response rebutting these rejections. The review process may require several cycles of denial and response. If you do not successfully rebut the various rejections, the application goes abandoned.
Legally, a US patent gives the owner the right to sue to collect royalties/damages or to attempt to block someone else from practicing the invention in the United States. The patent claims determine the exact scope of legal protection. In practice, patents are most useful for financing, acquisitions, licensing, and other business purposes.
Patent valuation: Patent valuation is dictated in large part by the desires of others to practice the invention. If a particular patent covers something that no one else wants to practice, it isn’t going to be worth much! The effectiveness of a patent in thwarting these desires (what the claims cover), and the invention’s potential market size, are also significant.
Your utility patent will typically have a 20 year lifetime. However, you will have to pay maintenance fees at 3-4, 7-8, and 11-12 years after issue. You may get some extra life if the USPTO delays for too long. At the end of this time, your utility patent will expire and become public domain. If you don’t respond to USPTO office actions, your patent application will also become public domain.
Provisional patent applications can be a quicker and cheaper way to start the patent process, but beware the pitfalls.
Provisional patent applications: US patent law allows inventors (applicants) to file informally written disclosures with the US patent office. These informal disclosures are called “provisional patent applications.” These are also called “provisional patents,” “provisional applications,” or even just “provisionals.” If used correctly, they can help you start the process of obtaining a patent.
The USPTO doesn’t examine provisional patents. Instead, the USPTO merely stores them in their databases for a year. After a year, they expire, unless before expiration, you file a regular (non-provisional) utility patent application that references that provisional application. If you do this, the USPTO links the provisional application to the full patent application and preserves it.
Later, during the examination of the subsequent regular utility patent, you can reference the provisional patent to try to overcome various rejections. Usually, you do this to prove you were the first inventor to file. You can also use the provisional application to try to satisfy examiner requests for additional detail.
Provisional patent applications have few requirements, but be careful!
Regular patents have detailed requirements for format, figures, and claims. They tend to be expensive to file. By contrast, provisional patents have almost no format requirements, and they are often less costly to file. With the correct USPTO forms and fees, you can submit almost anything. As a result, provisional patent applications can be as simple as a single page photograph of a napkin sketch. They also can be as complex a fully developed 100+ page formal patent application. The USPTO will cheerfully accept either one of these.
The lack of format requirements can be helpful. Provisional applications are an easy way to put a lot of supplemental information on the record. This information can include research papers and user manuals, for example. These can be very useful for addressing subsequent examiner rejections.
The bad news, however, is that many a patent application has failed because the inventor first filed a poor quality provisional application. The real problem is if you submit something unsatisfactory and then operate under a false sense of confidence that you are protected.
Dangers of low-quality submissions:
The dangers of a poor quality provisional application are both delayed and subtle. At first, everything is fine. Then, typically about 1-3 years after you file the inadequate provisional, trouble can start.
For example, suppose that the USPTO examiner rejects on the basis that someone else has filed another non-provisional (standard utility) patent ahead of your regular utility patent. Under today’s rules, almost the only way to establish that you invented first is to cite your earlier filed provisional. You also have to show precisely which parts of the provisional application prove that you invented first.
If the examiner reviews the cited portions of your provisional and agrees, then the provisional application has been successful. You have overcome this rejection. But if the examiner reviews it and says, “I don’t see the invention here,” then you are in trouble. Your provisional has likely failed, and you may never be able to prove that you invented first.
Three different provisional strategies:
I think that it is useful to think about three different categories of provisional patents. These categories are: 1) quickly file your existing write-ups; 2) file a rough draft of a regular utility patent; and 3) file a complete utility patent, but do so as a provisional patent rather than as a proper utility patent.
Risky, fast, and cheap:
Category 1: quickly file your existing write-ups. These can be existing papers, PowerPoint presentations, handouts, whatever. The argument in favor of this approach is that this is the quickest way of getting something on the official patent record. This approach also lets you file a lot of supplemental information. Worst case, you can later abandon an improperly thought out provisional. My personal views are that this approach is better than nothing, but it is not without pitfalls.
An excellent way to go:
Category 2: file a rough draft of a regular utility patent. Inventors and small companies often operate on a limited budget and need to get something submitted on a short deadline. Here the goal is to try to file something relatively decent, but quickly and on a tight budget. Here, as a compromise between cost and quality, one way to go is to produce a rough draft of a utility patent. This rough draft follows the standard utility patent format, which provides some vital structure.
This approach tries to capture a good chunk of the value of a full patent application. It also seeks to keep costs at about 50% of a standard patent. Here, the trick is to focus on a few essential draft claims, informal but adequate figures, and at least the most critical technical aspects of the disclosure.
A tricky strategic option:
Category 3: file a complete utility patent, but as a provisional application. In this third type of situation, funding may not be an issue. You may want to do a quality job submitting what you have. However, you may also think that there is a possibility that you will make additional improvements to the invention over the next year. Here a complete and detailed utility patent is written. But instead of filing it as a regular utility patent, you submit it as a provisional patent.
This provisional application can then be “aged” for up to a year. If there are no changes, you can then refile it as a full utility patent. Otherwise, you can update your earlier provisional, and then file it as a full utility patent. An additional advantage of this Category 3 approach is that it can effectively increase the lifetime of the final patent by up to a year.
Remember the international filing deadlines:
A few other nuances – if you are interested in foreign patent filings, realize that the 12-month foreign filing deadline starts ticking from the time you file your provisional application. Thus the 12-month provisional expiration deadline, and the US and international patent filing deadlines, all fall on the same day.
Applying for international patents: Most countries maintain their own separate patent and trademark offices, and typically (Europe being a partial exception), patents operate within national borders. Thus a US patent, for example, covers just the US.
The Paris Convention: The process of extending a patent application to cover multiple countries was worked out by several international treaties. One important treaty, which is still in effect, was the 1880’s era Paris Convention. This established that, for example, a foreign patent office will recognize the priority of a US utility patent application (or provisional patent application) for up to 12 months after its initial filing date.
This was a good start, but it often takes more than 12 months to determine if a new invention is commercially important. It is very expensive to file patent applications in many different countries. So for many applicants, 12 months just wasn’t long enough.
The Patent Cooperation Treaty: To extend this time, in the 1970’s the Patent Cooperation Treaty (PCT) was enacted. This treaty is a bit complicated. Think of it as a temporary “holding tank” for patent applications. The key idea is that if you file a PCT application within 12 months of the filing date of the original patent application, you can extend your ability to then file international patents to 30 months from the filing date of the original patent application. Note that the PCT treats both utility patent applications and provisional patent applications in the same way.
After 30 months from the filing date of the original patent application, however, you then need to make some tough decisions. It typically costs thousands of dollars to file (i.e. enter the national phase) in each separate country. So unless the invention is really very promising, often applicants either continue on only in the US, or else only file nationally in a few select countries.
The Patent Prosecution Highway: Typically, each local (national) patent office will then want to examine the patent application itself. This is both expensive and duplicative of resources. To help streamline the process, in the late 2000’s, various Patent Prosecution Highway (PPH) agreements were initiated, typically on a bilateral (country-to country) basis. Here, if a patent application has claims allowed by one (PPH) country’s patent office, the applicant can petition to have these claims accepted by other participating PPH offices. The US participates in the PPH, as do a number of other countries. The PPH is great when it works, but it is presently a patchwork of agreements rather than a comprehensive international treaty. So view the PPH as being somewhat in the “pilot” or “beta” stage.
Amazon.com is enough of an 800-pound-gorilla that its IP policies can impact trademark, copyright, and patent strategy. Amazon is not kind to descriptive (supplemental register) trademarks.
Amazon.com markets products from millions of manufacturers and vendors, resulting in a large number of IP (trademark, copyright, and patent) disputes.
Unfortunately, the US court system is designed to administer slow, careful (and thus expensive) justice to a small number of IP litigants. It can’t scale to Amazon volumes. So Amazon decided to make its own IP dispute process.
The Amazon Band Registry offers a number of methods to help trademark owners protect their rights and promote their products. However, at least for the US, just any trademark won’t work. The Amazon Brand Registry is presently only available for USPTO trademarks on the principal register. USPTO supplemental registry trademarks are out of luck.
The USPTO supplemental register is where otherwise OK, but “descriptive” trademarks are put to “age” for 5 years until the mark is considered to have “acquired distinctiveness”. So, the moral is that if you are planning to sell on Amazon, it is good to avoid the supplemental register. This can be done by registering a less descriptive product name. There are trade-offs here, however, since descriptive names help customers understand the purpose of new products.
Be careful about the text and images that you upload. It should either be your own material, or material that you have clear rights to (e.g. license, resale of previously purchased physical items). Amazon operates a Digital Millennium Copyright (DMCA) infringement reporting system that you (and others) can use to report issues. If you hold copyrights that you feel are important, consider registering them with the US copyright office, as this can make enforcement easier. Note, however, that under their terms of service, Amazon acquires a license to use your uploaded material.
Amazon has recently announced a pilot patent dispute program. The process is fast and (for patent law) inexpensive. The plaintiff provides the US patent number and the Amazon listing of the allegedly infringing product. Both parties can argue this (e.g. one submits written arguments for infringement, and the other submits written arguments in defense). Both can pay $4,000 to submit their arguments to an Amazon selected neutral patent evaluator. The neutral evaluator evaluates the patent and product in question.
The winner gets their $4,000 fee back. The loser loses its fee. If the allegedly infringing product loses, Amazon will take down the listing. The neutral evaluator’s decisions are apparently final, but you can still go to the court system if you want.
Disclaimer: I have no affiliation with Amazon. Amazon IP policy can change at any time. However, Amazon is enough of an 800-pound-gorilla that their IP policies are having an impact on the IP ecosystem.
Are you having problems with a patent that you believe is invalid? Know about uncited prior art? Consider filing a Patent Ex Parte Reexamination request.
In the US, there are various legal methods to challenge the validity of issued patents. These legal methods vary significantly in expense and relative risk.
Ways to challenge a patent:
You can try to challenge a patent by a full Federal Court trial. Such trials are costly. Indeed, patent litigation is called the “sport of kings.” Another problem is that you (the challenger) can’t be anonymous. So the possibility of “return fire” is high.
Alternatively, you can try to challenge a patent by an inter partes review (IPR) at the USPTO Patent Trial and Appeal Board (PTAB). The IPR process is essentially a streamlined mini-trial. IPR are relatively new (since 2013). Congress established them in an attempt to reduce the high costs of litigation. Indeed, IPR are about an order of magnitude cheaper than Federal Court litigation. But this is still quite pricy for small firms. Also, again, the challenger can not be anonymous.
You can also challenge a patent by filing a USPTO Ex Parte Reexamination request. Reexamination is the real low-budget approach. Reexaminations can cost an order of magnitude less than an IPR (and two orders of magnitude less than Federal Court litigation!) Ex Parte Reexaminations are thus in the price range for individual inventors and small startup companies. An additional advantage of this method is that you (the challenger) can be anonymous. That is, if you file through an attorney, you need not give your identity, thus avoiding return fire.
Ex Parte Reexamination trades off cost for control:
At present, patent challengers only file about 200 Ex Parte Reexamination requests each year. Given the low costs and minimal risks, why isn’t this method used more often? Probably because fewer arguments are allowed, and the challenger has less control over the process.
To file an Ex Parte Reexamination request, you (the challenger) need to identify some new and convincing printed prior art. Usually, this is one or more patents or other publications that the original patent examiner didn’t consider. These additional citations should be convincing enough to raise a Substantial New Question of Patentability (SNQ). Here, the USPTO only allows you to bring up two issues. These are anticipation (35 USC 102 – one new reference is enough); or obviousness (35 USC 103 – usually based on two or more new citations).
Initiating an Ex Parte Reexamination:
To initiate the challenge, you need to fill out a USPTO form (PTO/SB/57) with the relevant information, and further include a detailed request providing further explanation. The explanation shows how the various limitations in the challenged claims correspond to the new prior art references. Claim charts can be used, but are not required. This explanation is a bit like a USPTO office action.
You (as challenger) submit the form and detailed request to the USPTO along with other required papers. The USPTO will also require a reexamination fee (presently $3,000 for a small entity). You must also serve a copy of this request to the owner of the challenged patent. The USPTO requires you to provide proof of service as well (you can have a third party do this). This lets the USPTO verify that you have notified the patent owner.
After you file the Ex Parte Reexamination request:
The USPTO will review the request. If your request complies with the USPTO standards, they will inform the patent owner that the USPTO is reexamining their patent. You (as challenger) will then have no further input.
Once reexamination starts, the USPTO patent examiner reopens examination by issuing new rejections, which the patent owner must rebut.
The results depend on how well the patent owner rebuts the new rejections. Sometimes, such as when the patent owner knows that the patent is weak, they may “forfeit.” But if your new citations are not good enough, they may come back with an adequate response. In this case, the reexamined patent will issue again. It can reissue with either with the same claims or more limited claims. Now, what is left will be a bit stronger because of the added review.
Still, if you want to try to knock out a troublesome issued patent, know about some juicy but uncited prior art, and are on a budget, consider the Ex Parte Reexamination option.
US patent inventorship criteria are tricky, but “conception” of the invention and “intellectual domination” are more important than reduction to practice.
If multiple people are involved with your invention, one issue that commonly arises is: “who gets listed as inventor or co-inventor, and in what order?”
For academic and scientific papers, there is a common order – the junior person who did most of the work often goes in front, the senior professor or principal investigator who may or may not have done much work goes at the end, and other persons go in the middle as co-authors according to usually unwritten criteria. So long as no one is seriously offended, the co-author list otherwise doesn’t matter too much.
Many inventors begin their careers by writing academic papers, and often make the mistake of thinking that the same rules apply to patents.
However, patents are different. You probably wouldn’t let a friend put his name on the deed to your house unless you want to give him co-ownership. Patents are more like property deeds. In the US, just who is and who isn’t a patent inventor can make a big difference in terms of who ultimately owns the patent. As a result, patents have their own set of rules as to who is and who isn’t considered an inventor.
So what are the rules for inventorship? The USPTO rules are covered by MPEP 2137.01 INVENTORSHIP. These rules were worked out through a number of court cases, and are occasionally a bit fuzzy and open to interpretation. At the risk of oversimplification, the main idea is that the inventor is the person who conceived of the invention, and not necessarily the person (such as a supervisor) who suggested working on the problem, or the person (such as a technician or programmer) who did the hands-on work to reduce the invention to practice (e.g. make a working prototype). In fact, reduction to practice is usually not necessary.
Other considerations, such as the issue of “intellectual domination”, are also important. An inventor who is “intellectually dominating” an invention may still be able to use suggestions from others without making them co-inventors.
Things can get tricky. Sometimes the supervisor’s suggestion is really the key insight behind an invention, making the supervisor an inventor. Similarly, sometimes the person reducing the invention to practice ends up solving unexpected problems, and these solutions form a key part of the invention, making the “technician” an inventor. Here looking at the invention’s claims can help sort things out. Who was responsible for what? Note, however, that claims can change during the examination, and sometimes an inventor can end up being added to an invention, or left on the “cutting room floor” as a result.
In any event, the best time to consider these issues is in advance of filing. It is also important to discuss assignment in advance of filing as well since the usual goal (to satisfy due diligence) is to have 100% of the invention assigned to the same persons or organizations.