Intellectual property strategy

Types of Intellectual property

Maximize protection of your intellectual property (IP) by strategically employing patents, trademarks, copyrights, and trade secrets.  

In theory, the different categories of IP (utility patents, provisional patents, design patents, copyrights, trademarks, and trade secrets) are distinct. However, in practice, these can somewhat overlap. Each is a type of IP protection tool. Sometimes one tool is clearly superior.  Sometimes more than one tool will work. But using the wrong tool can produce unsatisfactory results.

Patents (utility patents) cover useful, original, and not obvious ideas for gadgets, physical objects, compositions of matter (e.g. drugs), and the like. These must be filed, carefully reviewed, and ultimately disclosed to the public. They can last for up to 20 years if maintenance fees are paid.

Provisional patents are essentially a short-lived (1-year) first draft of a utility patent.

Patents (design patents) cover the ornamental appearance of a functional item. These also must be filed, reviewed, and ultimately disclosed to the public. These last for 15 years, maintenance fees not required.

Copyrights cover original written material, music, images, movies, and the like. These can last over a lifetime (e.g. lifetime of the author plus 70 years) after initial publication. Registration not initially required, but eventually needed to enforce rights.

Trademarks cover the words, symbols, or packaging associated with certain classes of products and services in commerce.  Registration, disclosure to the public, and review required. These have no lifetime limit, so long as the owner periodically sends in proof of continued use in commerce.

Trade Secrets cover undisclosed commercially useful information not generally known to the public or trade. These can include unpatentable items such as recipes, as well as un-copyrightable items such as lists. No lifetime limit, provided that the secret does not get exposed.

Sometimes it is possible to get better protection by handling the IP under multiple categories. Examples include:

  • Using a non-publication request to keep the IP secret while pursuing a US patent
  • Converting a utility patent drawing to a later design patent
  • Filing user interface IP as a utility patent, design patent, and copyright
  • Filing a distinctive design as both a design patent and a trademark
  • Filing a distinctive image (or fragment of literature) as both a copyright and a trademark

There are some tricky aspects to the multiple category approach as well, these include:

  • Cases where international IP rules are different from US rules
  • Trying to use a provisional patent for a later design patent
  • Shifting copyright (non-functional) vs patent (functional) and design patent (ornamental appearance of functional item) distinctions
  • Competitors using your assertions for one IP category against another IP category

So “mind the gap”, but it pays to think broadly and strategically here.

Utility patents

Caveman inventor
Wheel: both a machine and a method!

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.  In fact, the term “patent” almost always means “utility patent”.  Almost all of the famous patents in history – the telephone, light bulb, transistor, airplane, motion picture, are utility patents.

What is a utility patent?  Under US law, utility patents are the type of intellectual property (IP) that covers: “a new and useful process (e.g. a method of doing something), machine, manufacture, or composition of matter (e.g. a drug), or a new and useful improvement thereof.

Note the underlined new. To get a utility patent application allowed (granted), the applicant has to prove to skeptical USPTO examiners that the invention really is new, and not just a trivial (obvious) tweak to older prior art.

Here “useful” means that the invention must have some actual benefit (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. They expect applicants to rebut their rejections, often several times, before allowing the application.  This process is called patent prosecution. If the applicant does 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 and/or to attempt to block someone else from practicing the invention in the United States, but not internationally. The exact scope of legal protection is determined by the patent claims.

Types of utility patents:  US utility patents often start as US provisional patents.  If you want any international patents, you must file these within 12 months.

Patent valuation: Patent valuation is dictated in part by the desires of others to practice the invention, the effectiveness of the patent in thwarting these desires (what the claims cover), and the invention’s potential market size. If a particular patent covers an invention that no one else wants to practice, that patent isn’t going to be worth much!

Assuming maintenance fees are paid at 3-4, 7-8, and 11-12 years after issue, US utility patents typically last for 20 years from initial filing, sometimes more if the USPTO has taken too long to review the application. After that, they expire (go abandoned) and become public domain.

Provisional patent applications: thoughts and suggestions

Ducttape
Provisional patents are a bit like duct tape…

Provisional patent applications: US patent law allows inventors (applicants) to file informally written disclosures with the US patent office.  These informal disclosures, called “provisional patent applications” (often abbreviated as “provisional patents”, “provisional applications”, or even just “provisional”), represent an excellent opportunity to quickly and inexpensively start the process of obtaining a patent.

Provisional patents are not usually examined. Instead they are merely stored in the USPTO databases for a year.  They are then discarded, unless within that year, the inventor then files a regular utility patent application that references that provisional application.  If this is done, the USPTO keeps the provisional stored forever.

Provisional patents are often useful because later, during examination of the subsequent regular utility patent, the inventor can reference the provisional patent to overcome examiner rejections (e.g. overcome other patent’s priority dates, supply additional detail, and so on).

Regular patents have detailed requirements with respect to format, figures, and claims, and tend to be expensive to file.  By contrast provisional patents have almost no format requirements, and they are inexpensive to file.  Almost anything that can be put onto paper (e.g. a PDF format) can be filed as a provisional application.  As a result, provisional patent applications can be as simple as a single page photograph of a napkin sketch, or 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 very helpful.  Many a patent application has been saved by the fact that the inventor had earlier filed something, such as a research paper or user manual, essentially as-is, as a provisional.  Although such items would never be accepted as a regular utility patent application, informal provisional patent submissions can be a quick way to put important information on the record.

This is the good news.  The bad news is that many a patent application has been lost because the inventor first filed an inadequate provisional application, and then operated under a false sense of confidence that he or she was protected by that inadequate provisional application.

The dangers of an inadequate provisional application are both delayed and subtle.  At first everything is fine.  Then, typically about 1-3 years after the inadequate provisional has been filed, trouble can start.

For example, suppose that the USPTO examiner rejects on the basis that someone else has filed another non-provisional (regular utility) patent ahead of the applicant’s regular utility patent.  Under today’s rules, almost the only way to establish that the applicant invented first is to cite the earlier filed provisional patent, and state precisely which parts of the provisional application prove that the inventor was first.

If the examiner reviews the provisional and agrees, then the provisional has been successful and the inventor will hopefully go on to successfully get the patent.  But if the examiner reviews the provisional and says, “I don’t see the invention here”, then the provisional has likely failed, and the inventor may never be able to prove that he or she invented first.

Three different provisional strategies:

Personally, 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 regular utility patent.

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 may also be a quick way of filing a lot of supplemental information.  Worst case, an improperly thought out provisional can later be abandoned.  My personal views are that this approach is better than nothing, but it is not without pitfalls.

Category 2:  file a rough draft of a regular utility patent.  Many provisional applications are filed by inventors and small companies operating on a limited budget.  Here the goal is to try to quickly file something that is relatively decent, but also try to save money while a new idea is being evaluated.  Here, as a compromise between cost and quality, one way to go is to produce a rough draft of a utility patent, following the standard utility patent format, which provides some important structure.  This approach tries to capture a good chunk of the value of a full patent, while keeping costs at about 50% of a standard patent, by focusing time on a few key draft claims, informal but adequate figures, and at least the most important technical aspects of the disclosure.

Category 3:  file a complete utility patent, but as a provisional application.  In this third type of situation, funding may not be an issue, but the inventor thinks there is a possibility that they will make additional improvements to the invention over the next year.  Here a complete and detailed utility patent can be written, but is instead filed as a provisional patent rather than a regular utility patent.  This provisional application can then be “aged” for up to a year.  If there are no changes, the original provisional can then simply be refiled as a full utility patent.  Otherwise the changes can be dialed in, and an updated version filed as the 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.

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 foreign patent filing deadlines, all fall on the same day.

International patents

World map by Japinderum (CC BY-SA 3.0) license
PCT international patent treaty countries

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.

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.

Inventorship and co-inventors

Participants: RRZE (CC BY-SA 3.0) license

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 is to have 100% of the invention assigned to the same persons or organizations.

 

Writing patent claims

A patent claim is like a jigsaw puzzle piece
A patent claim is like a jigsaw puzzle piece

Writing patent claims is analogous to describing multidimensional jigsaw puzzle pieces using words.  Your claims have to fit in the spaces between prior art.

Patent claims are the most important part of a patent because the claims are legally enforceable.  Claims are also the trickiest part because they have to follow many rules.  Claims should describe your invention, not read on the prior art, and not be obvious variations on prior art. Claims should also be precise enough that others can clearly determine what it is that you are claiming.

Like a jigsaw puzzle:  As a useful analogy, consider each patent claim to be somewhat like a multidimensional jigsaw puzzle piece. Each claim should be written using words and clauses that, in addition to describing your invention, “bend in” to avoid prior art, and “bend out” when there is no prior art.

From the patent examiner’s standpoint, he or she is looking at your claims in the context of the other prior art (the other pieces). The examiner is determining if each of your particular claim “pieces” is fitting nicely into the holes between prior art, or if they are hitting the other prior art “pieces”.  If there is overlap, the examiner will, at a minimum, want you to make your claims “bend in more” to avoid that prior art.  Part of the process of writing patent applications is to try to anticipate where this might happen and to write the patent in a way that gives you more options to “bend in” and “bend out” during the patent examination process.

There is one big difference between jigsaw puzzles and patent claims, however.  In jigsaw puzzles, although the different pieces can’t overlap, the gap between the different pieces can be made very small.  Think of this gap as the area where, given that one piece is “bending in“, it is “obvious” that the other piece must “bend out“.

Unlike jigsaw puzzles, examiners often require that this “gap” be big enough so that the shape of your jigsaw puzzle piece (claim) is not immediately obvious in view of the shape of the neighboring pieces.  In fact, a big part of the patent examination process is negotiating the extent of this gap, and how best to amend the claims accordingly.

USPTO office actions

USPTO office actions
USPTO office actions

USPTO office actions are used to reject most patent applications by using “done before”, “obvious”, “vague”, or “not patent eligible” type arguments.

Although we all hope that a patent application will sail through the USPTO patent examination process and be allowed “as is”, this usually doesn’t occur.  As a practical matter, examiners work on a quota system. The net effect of this quota or “count” system is that the average successful patent is usually rejected several times before it is allowed.

Typically an examiner will first read the patent claims, and search for various citations (often earlier filed patent applications) that match certain claim key-words.  The examiner will then write a 20-40+ page “office action” document that rejects your various claims for various reasons, and send it to the correspondence contact of record.  The examiner expects you to respond within three months by submitting a written “office action response” that rebuts these various rejections.

The most “popular” USPTO rejections are:

Done before – 35 USC 102: The examiner thinks he has found another single citation that teaches everything in your particular claim. However absent actual copying, no two patents are usually totally alike. This type of rejection can often be rebutted by explaining where the citation is different, or amending the claims to add additional detail that differs from the citation.

Obvious – 35 USC 103:  The examiner (sometimes impermissibly guided by your disclosure) is attempting to reject your claim by combining features from multiple citations. The examiner may often create a Frankenstein concept that may or may not be plausible. Fortunately, there are examination rules here. Often this type of rejection can be rebutted by any of 1) showing that the examiner is misquoting the citations, 2) amending your claims, 3) showing which “103” examination rules were broken.

Vague – 35 USC 112:  This “vagueness” or “indefinite” type rejection is used for different things. Sometimes it is harmless and easily corrected, such as when the claim’s grammar is off. Sometimes it is deadly, such as when your underlying patent application doesn’t teach how your invention works in adequate detail.  This is more likely to happen if the original application lacks specific examples.  Although this can often be rebutted or fixed by changing the claims, sometimes the only way to attempt to fix this is to file a “continuation in part” application that adds the missing detail.

Not eligible – 35 USC 101:  In the old days (i.e. before 2015), this was a rarely used rejection because the 35 USC 101 law was written to be very expansive. However, recent court decisions have made this area quite a swamp, and this is still being sorted out. In the meantime, realize that business methods and financial methods have a higher than average rejection risk.

Patent & trademark annuity fees

hourglass
Time passes, set up reminders for your annuity (maintenance) fees

It is easy to lose patents and trademarks by forgetting to pay their annuity fees. Set up your automatic reminder systems today.

You have just received your US utility patent or trademark, congratulations!  But remember that unless you pay annuity fees (maintenance fees) during certain future time windows, your patent or trademark will expire early.  No, you can’t pay these fees early. You must wait until the time window opens to pay.

Why do we have this system?  IP (Intellectual Property) laws are intended to balance both public and private rights.  The underlying idea is that if the IP is really important to you, then you will keep track of the payment windows.  If it is not important to you (as evidenced by your forgetting to pay), then the public rights part of the policy kicks in. The IP rights get transferred back to the public.

Utility patents (the most common type of patent) will often have about a 17-20 year term (your mileage may vary), with maintenance fees due during specific time windows at 3-4, 7-8, and 11-12 years after issue. There is no requirement that patents actually have to be used to keep them in effect.  So during these time windows, the USPTO will just ask you to affirm that you are authorized to pay, and take your money.

Trademarks have to be renewed during specific time windows at 5-6 and then every 9-10 years (forever) after issue.  Unlike patents, trademarks are a “use it or lose it” type of IP.  The USPTO, in addition to charging fees, also requires proof of actual use in commerce. They will deny renewal if this proof is absent or unconvincing.

The responsibility for ensuring that these annuity fees are paid ultimately rests with the IP owner.  Although some law firms may occasionally send out courtesy reminder notices, such courtesy reminders should not be relied upon.

Instead, consider setting up your own reminder system.  At a minimum, enter the dates into at least one (preferably two) long-term electronic calendars or other automatic reminder (docketing) systems, and keep these systems going.

Additionally, consider engaging a professional annuity service. A number of such annuity services exist. Without making any particular recommendations, some of these annuity services include:  Computer Patent Annuities Global, Computer Packages Inc., Dennemeyer & Company, and Maxval.

Reviving abandoned patents

The reanimation of dead patents!
The reanimation of dead patents!

Have an accidentally abandoned US patent or patent application?  These can often be revived if you promptly file a USPTO petition for revival.

It just so happens that your friend here is only mostly dead. There’s a big difference between mostly dead and all dead.” Miracle Max, “The Princess Bride”.

The USPTO declares both patents and patent applications to be “abandoned” for various reasons. Patents are usually declared abandoned for failure to pay maintenance fees. Patent applications are usually declared abandoned for failure to respond to USPTO office communications (and pay any needed fees) within the time stated on the office action.

Don’t despair.  Many of these are initially only “mostly dead”, rather than “all dead”, and can be revived by promptly filing a petition to “revive”, paying the appropriate revival fee (and other fees due), and generally fixing whatever other problem caused the abandonment in the first place.

The key word here is “prompt”.  Here, the USPTO attempts to distinguish between “unintentional abandonment” and “intentional abandonment”.  As you might imagine, this can be a rather subjective determination that can often be decided by the length of the delay and explanations of the circumstances.

A determination of “intentional abandonment” means that the patent is legally now “all dead”, which is why it is important to act promptly.

The issue of what is “unintentionally abandoned” is a tricky gray area in patent law. Although often a form statement such as, “the entire delay was unintentional” will suffice, the longer the delay, the more that this strains credibility, and the greater the chance that additional explanation will be required/and or the petition to revive may be denied.

The general rule is thus that you should try to initiate the revival actions as quickly as possible.  Fortunately, this is “quick” by legal standards, rather than “quick” by video gamer standards.

As a very rough and informal rule of thumb, which you should not rely upon, petitions filed within about six months of abandonment often have a good chance of succeeding. Petitions filed up to two years after abandonment can often also work (although the risk of rejection may increase). Even after two years or more, a petition to revive may be accepted, but here the situation does become more problematic. The petitions office may require more of an explanation for the delay, and the chances that the petition will be denied can be substantially greater.

Note that “expired” patents – patents that have died because their full patent term (often 20 years from the filing date) is up, are “all dead”.  They cannot be revived.

Secondary considerations of nonobviousness

Reset button

Is your examiner repeatedly insisting that your patent application claims are obvious?  One option: “reboot” your examiner by submitting at least one Rule 132 declaration providing “secondary considerations of nonobviousness”.

 Obviousness rejections are needed to prevent trivial patents.  Obviousness is legally determined by considering if the invention would be obvious from the standpoint of an imaginary Person Having Ordinary Skill In The Art (PHOSITA). This is ultimately just legal guesswork, and as previously discussed, such determinations are often unduly influenced by hindsight bias.

There is an alternative mechanism. The patent legal system also allows applicants to rebut obviousness rejections by submitting “objective indicia of nonobviousness”, which we will call “outside evidence”. This outside evidence can include unexpected results, commercial success, long-unsolved needs, failure of others, professional approval, skepticism of experts, and the like.

Although allowed, such outside evidence has a rather second-class status.  You can even see this in the terminology: “secondary considerations of nonobviousness”.  The patent legal system actually prefers its imaginary PHOSITA reasoning over actual real-world evidence! Sounds silly, but remember that they are skeptical because applicants are constantly trying to game the system.

Submission of outside evidence is not done often.  You might think that with the 2007 KSR removal of anti-hindsight rules, it would be more frequently used, but it isn’t. However, in my opinion, it is a useful “in an emergency, break glass” kind of tool.  You use it when you want to try to break the examiner out of a mental “rut”, or even a mental “infinite loop” of obviousness rejections.

When to use it?  Obviousness rejections are routine.  It usually takes at least two office actions to see if the examiner is showing signs of having a non-negotiable “I still think it’s obvious” position.  If this seems to be the case, outside evidence can potentially be used to try to “reboot” the examiner and break out of the loop. This is because according to the USPTO examination rules MPEP 716.01(d)   Weighing Objective Evidence…“When an applicant timely submits [outside] evidence traversing a rejection, the examiner must reconsider the patentability of the claimed invention.”

Outside evidence is submitted as various “Rule 132 declarations”.  Here the identity and the credentials of an outside declarant (someone other than the attorney, and preferably other than the applicant) are presented, the relevant outside facts are given, and the declaration is signed by the declarant. It is important to try to find credible individuals for this and to submit the best evidence available.

Due to USPTO concerns that the outside evidence is unreliable, this is not a sure tactic.  The rules state that there must be a “clear nexus” between the outside evidence and the invention’s claims. The examiner may rebut by arguing that no such clear nexus exists, proposing alternative explanations, and/or looking for other ways to discount the declaration.  Still, if you do have good evidence, why not use it?