Patenting Inventions

Pet Product Patents

Patenting Pet Products

Pet owners will spend an about $58.5 Billion on their pets in 2014. Here’s the estimated breakdown for pet products in 2014:

Food $22.62 billion 
Supplies/OTC Medicine $13.72 billion
Vet Care $15.25 billion
Live animal purchases $2.19 billion
Pet Services: grooming & boarding $4.73 billion

This is my dog Carl.  He is pictured here chewing a Kong toy.

This is my dog Carl. He is pictured here chewing a Kong toy.

New Pet Products are Patentable

New pet technologies are patentable.  From the standpoint of patent law, the patentability analysis is the same as for all other technologies.

New pet food or food products could potentially be patented as compositions of mater.  Other patentable pet products include devices and machines, such as toys, crates, cages, scratching posts, etc. These could be patented as machines.  Vet care would include drugs (compounds and compositions of matter), medical devices, methods of treatment, etc..  The regular rules of patentability apply.  The technology must be new when compared to all existing technology; and it must not be an obvious improvement over existing technology.

Owning a monopoly on a popular new pet product provides a significant market advantage–they ability to exclude all competition from making, using, and selling that invention.  This monopoly allows the owner of the patent to set the price.  Accordingly, innovators in the pet space should claim their new technology.

Below are a few interesting examples of patented pet products.

Interesting Pet Product Patents

IP watchdog wrote about United States Patent No. 6,360,693, which claims an animal toy.  This patent is the famous case of patenting a stick.  The Kong Company, LLC makes a variety of highly recommended dog toys.  They have a portfolio of patents and patent applications. Kong’s dental toys are built with patented Denta-Ridges, which are special grooves designed to clean teeth and sooth gums as dogs chew.

United States Patent No. 5,443,036 defines a method of exercising a cat.  This patent claims methods including a “beam of invisible light produced by a hand-held laser apparatus onto the floor or wall or other opaque surface in the vicinity of the cat, then moving the laser so as to cause the bright pattern of light to move in an irregular way fascinating to cats, and to any other animal with a chase instinct.”

Chadeayne LLC Price List

Chadeayne LLC offers two options for handling project costs: Flat Fee; and Hourly.

Flat Fee Drafting Services

  1. Search and Analysis $3,500
  2. Claim Drafting $3,500
  3. Application Drafting $3,500
  4. Full-service Application Preparation $9,000

Flat Fee Patent Prosecution Services

  1. Responding to Office Action $3,000
  2. Interviewing Patent Examiner $2,000

Hourly Services

  • $500 per hour
  • $2,000 per half day (4 hours)
  • $3,000 per full day (8 hours)

Beer Pong Patents by Jeremy Armstrong of Strong Arm Cups

Patent Pending Beer Pong Technology? Strong Arm Cups

Patents on beer pong?  Maybe soon.

According to PRWEB, Strong Arm Cups has introduced a better way to enjoy beer pong. Strong Arm Cups has invented a beer pong kit, which contains 20 playing cups, 20 damper inserts that go inside the playing cups, and four drinking cups. The combination of the items in the kit promises to “eliminate the dirty and wasteful use of traditional, disposable plastic cups.”

The Strong Arm beer pong patent kit includes several items that improve the beer pong experience

The Strong Arm beer pong patent kit includes several items that improve the beer pong experience

Strong Arm Cups is designed to maintain the core aspects of beer pong while addressing some of the more disgusting elements of the current game, such as having to drink dirty beer due to crud getting on ping pong balls, multiple people drinking from the same cups, and beer being spilled during game play. Strong Arm Cups presents a simple solution to these problems by introducing designated playing cups with dampers for consistent game play and individual drinking cups with clear demarcations to show players how much to drink for each sunk cup.

The Strong Arm Cups beer pong kit will retail for $26 however an early bird special of $20 will be offered through the Kickstarter campaign.

Jeremy Armstrong, Inventor of Patent Pending Strong Arm Cups

The Strong Arm Cups kit was invented by Jeremy Armstrong.  (The name makes more sense now, doesn’t it?)

“I’ve always loved beer pong, but was disgusted by how gross the playing cups and balls became,” said Jeremy Armstrong, creator of Strong Arm Cups. “I wanted to maintain the essential integrity of the game, while making a few minor improvements to make the game better for everyone.”

Strong Arm Cups was created by Jeremy Armstrong, a family-man who has always had a passion for beer pong. After a year of design and engineering work this patent pending beer pong kit is ready to be brought to the party thirsty masses. Armstrong is looking forward to growing his business in the future and improve more drinking games.

Where’s the patentable subject matter?

What can be patented about this invention?  In the past we have discussed how new beers recipes, methods of making beer, and beer apparatus can be patented.  Why not beer games?
The same rules of patentability apply to beer games as any other type of invention.  The invention must be both new and not obvious.  Here, I suspect that this combination of elements is new.  That is, Mr. Armstrong is using these pre-existing pieces in a new way to achieve a new result.  Provided that the “kit” is found to be new, then the patentability of the Strong Arm technology would depend on whether or not it “would have been obvious” to a “person of ordinary skill in the art.”  That question will turn on the differences between the Strong Arm technology and the prior art in this field of endeavor.

Patenting Cannabis Technology

Patenting Cannabis Technology

The cannabis plant is not patentable because it has been in the public domain for centuries.

The cannabis plant is not patentable because it has been in the public domain for centuries.

Changes in cannabis culture are creating incredible opportunities for new cannabis technology.  Cannabis and cannabis derived products are overwhelmingly popular in the worldwide market.  This popularity is especially noteworthy because the plant and its derivatives are still illegal in the United States.  But the war on cannabis appears to be coming to a close.  (See video below).  And the popularity of the drug appears to be on the rise, for both medical and recreational uses.

The above changes suggest tremendous opportunities in the cannabis technology industry.  Events like the Cannabis Business Summit hope to capture some of these opportunities. As inventors rush into that space, they should remain cognizant of the opportunities for patenting their inventions.  For example, inventors could define their inventions as new compositions, devices, or methods.

Changing Cannabis Culture Creates Patent Opportunities

Setting aside the political issues associated with cannabis, the changing climate is creating incredible business opportunities.  According to CNBC, the legal cannabis business is already huge.  And the Huffington Post opines that those sales will quadruple by 2018.  Most of this business comes from growing and selling the plant itself.  But other industries are beginning to blossom.  For example, the cannabis food and beverage industry and cannabis device industry have experienced wild growth.

With these new industries come new products and new technology.  Inventing something new (i.e., different) gives rise to patentable subject matter.  In the case of cannabis, there are a variety of opportunities for inventing new technology.

New Chemical Compositions Derived from Cannabis.

Although the cannabis plant has been known for thousands of years, making new compositions from that plant would give rise to patentable inventions.

Although the cannabis plant has been known for thousands of years, making new compositions from that plant would give rise to patentable inventions.

Naturally occurring substances cannot be patented.  As compounds, they are not “new” because they occur in nature without human ingenuity.  However, new purified forms of the chemical components of cannabis are potentially patentable.  Similarly, new combinations of known molecules can be patented.  Regardless of political attention, the patent office will treat cannabis inventions as chemical inventions.

Given the variety of different molecules found in the cannabis plant, the potential for new combinations of those molecules is virtually infinite.  Finding new combinations of molecules having desirable properties would give rise to new compositions of matter.  These new cannabis compositions can be patented.

New Cannabis Edibles are Patentable.

According to CNBC, the legalization of medical cannabis in several states has paved the way for a budding edible medical cannabis industry. Small businesses in states such as Colorado and California are making cannabis derived treats such as candy, cookies or soda.

New Edibles Derived from Cannabis are Patentable

New Edibles Derived from Cannabis are Patentable

As we have discussed in some earlier articles, new foods (e.g., candy, cookies or soda) can be patented as compositions of matter.  New flavors of those foods could give rise to additional patents.  Given that this class of cannabis containing readymade foods is relatively young, the body of prior art is relatively small.  Less prior art makes it more likely that the foods could be defined as new compositions, increasing the likelihood that they could be patented.

Along with opportunities for patenting cannabis compositions per se comes the opportunity for patenting methods of making those new compositions.  A new food is probably made via a new method.  That new method could be claimed and patented.

New devices and methods for administering cannabis or cannabis compositions are patentable

The Pax by Ploom illustrates one example of technology growing up around cannabis development

The Pax by Ploom illustrates one example of technology growing up around cannabis development

New devices for using or administering cannabis are patentable.  Smoking cannabis has one indisputable downside—the user is smoking the plant.  Generally speaking, breathing in burning materials is bad for the user.  (Humans should not breath in things that are on fire).

Responding to this downside of smoking, the cannabis device market has grown significantly over the years.  Wikipedia describes several varieties of herbal vaporizer technologies.  And some websites, e.g., GotVape, specialize in selling commercial embodiments of the vaporizing technology.  Many devices, such as Pax by Ploom or the iolite product line have been patented.  But the space still remains wide open.  Inventors of new devices should follow iolite’s lead by claiming their inventions.

Patenting methods of administering cannabis

U.S. patent law recognizes “methods” as a separate category patentable subject matter.  In addition to patenting new “devices” for administering cannabis, the inventor could pursue patent claims directed to the methods of administering cannabis by using those devices.

Changing Culture Suggests Increasing Opportunities for Patenting Cannabis

In recent years, the public opinion surrounding cannabis has changed considerably.  And it appears that the nation (and the world) will probably continue to move toward decriminalization and legalization of this plant.  One good illustration of this shift can be seen through CNN medical correspondent, Dr. Sanjay Gupta.  This past August, he publicly changed his position on cannabis use — discussing some unparalleled medical benefits  of the drug along with an overwhelming lack of side-effects.  Here is the video:

Assuming that this trend continues, it will spawn new industries filling the void created by illegality.  Some examples are new foods, compositions, drug products, services, etc, discussed above.  The early stage of these industries makes them particularly exciting from a technology standpoint.  The technology is in its early developmental stages, so it is bound to encounter big leaps forward— pioneering inventions.  Accordingly, the cannabis technology field offers especially exciting opportunities for inventing and patenting new technology.

 

 

 

 

Sweat Equity in Exchange for Patent Services

Exchanging Equity for Patent Services

Some firms accept "sweat equity" in exchange for patent services

Some firms accept “sweat equity” in exchange for patent services

Should patent professionals accept equity (i.e., ownership, shares, or stock) in exchange for patent services?  Should startup companies offer patent professionals equity in lieu of cash payment for those services?  These sorts of “sweat equity” deals are somewhat common in many parts of the business world.  But, the legal community has been luke warm to the idea.

Sweat equity is a party’s contribution to a project in the form of effort — as opposed to financial equity, which is a contribution in the form of capital.  More recently sweat equity has been used to describe a party’s contribution to a project in the form of effort — as opposed to financial equity, which is a contribution in the form of capital.

In my opinion, patent professionals often walk into unique opportunities for getting in on the ground floor of newly developing technology companies.  However, investing in startup companies is often incredibly risky, so anyone entering such an agreement should be comfortable with the risk.

Patent professionals often find themselves in a unique situation when forming relationships with startup companies.  On the one hand, a startup company should file patent applications describing and claiming their technology before speaking to investors.  On the other hand, patent work is often very expensive, especially before the startup company gets funding.  It’s a catch 22: you need the money to do the patent work; but you can’t go chasing the money without first completing the patent work.

Waiting until after funding to file patent applications puts the entire enterprise at risk.  For a startup company, the patents are often the companies most valuable asset.  Speaking with investors before protecting that asset is very risky.  For example, the “investor” could steal or leak the technology to competitors with better resources.

One way to solve the above problem is to exchange owner’s equity for the needed patent services.  A few people have explored this area.  I’ve tried to summarize my findings below.

Equity for Legal Services

This idea of paying for legal services with equity is not new.  In particular, Christina Farr wrote about startups exchanging equity for legal services.  In her article, she points to Equity LLP, which exchanges legal services for equity.  In their words, “Cost. It’s free. All the legal work to launch your company in 3 months, plus a year of maintenance and advice. We are even working on securing a modest investment for every participant. We ask for a modest equity stake, typically 2% of founder equity.”

Gil Silberman, Founding Partner of Equity LLP commented that exchanging equity for patent services happens “[n]ot too often in my observation of Silicon Valley work, but it’s not unheard of either.  It might make some sense for a blue chip seed funded startup where there is a real possibility of the equity being worth something in a few years whether or not the patent itself ever issues or is strong.  It’s much less frequent with independent solo inventors, where the majority of inventions have no commercial value, the majority of patents are not economically viable, and there are several more steps to take before their idea could be commercialized.”

Patent Services on a Contingency Basis

Here is another discussion about why attorneys should think twice before agreeing to accept a share in the project in lieu of traditional cash fees.  This article takes the perspective of the patent professional and outlines many of the risks involved.  In short, taking equity in a startup company is a high-risk venture.  The patent professional should consider it akin to spending cash to acquire shares of a high-risk company.

Exchanging Equity for Services is Common in the Tech Accelerator Space.

Recently there have been an increasing number of technology accelerators.  For example,  Y Combinator and TechStars are considered to be among the best accelerators.  Most accelerators provide a stipend or small seed investment, mentoring, and workspace and professional services in exchange for an equity stake in the company. Typically the equity investment is around $25,000 and the equity stake is roughly 6 percent, according to Hochberg’s research.

Quirky offers a similar deal–exchanging a wide array of acceleration services for all of the patent rights.  If things work out, the inventor can hope to receive some royalties in return.

American Chemical Society – Feedback from Dallas

Patents at the American Chemical Society Meeting

I had the pleasure of attending last week’s American Chemical Society Meeting in Dallas Texas.  At the meeting, I had an expo booth, where people could visit with me and ask anything they wanted about patents.  First off, I was impressed with how patent savvy the community has become over the past decade.  When I was a PhD student from 2001-06, very few of us thought about patents.  Now, it seems like patents are becoming integrated into all levels of chemical research.

Below, I’ve summarized some of the most popular topics that I discussed during my time at the meeting.  For several of these questions, I have provided links to places with relevant information.  In some cases, I have already posted about these topics.  In two cases, I will need to prepare answers (“coming soon”).

This was Chadeayne LLC's expo booth at the American Chemical Society Meeting in Dallas

This was Chadeayne LLC’s expo booth at the American Chemical Society Meeting in Dallas. We had about 850 visitors.

American Chemical Society’s Patent Questions for Chadeayne LLC

These were the most popular patent topics discussed at Chadeayne LLC’s booth at the American Chemical Society meeting in Dallas:

These later two topics have a few especially interesting sub-topics, which I will follow up on soon.

For University Tech Transfer, I think the following topic is especially interesting: Ownership of the invention reverting back to the inventor after the University passes on the opportunity for patenting it.  In one sense, this give the inventor an opportunity to invest in 100% of the idea.  On the other hand, it seems to create an incentive to downplay the importance of the invention when disclosing it to the University.

For Idea Theft, I am intrigued by what would happen when someone steals an idea protected by a provisional patent application.  In theory, that thief would be developing the true inventor’s technology for free.  (After the true inventor asserts their patent rights, the thief would be left in a situation where any work performed on the invention benefits the true owner).  That would be poetic justice!

I will look forward to seeing everyone at the upcoming American Chemical Society Meeting in San Francisco.  In the meantime, please don’t hesitate to contact me if you have questions about patenting your chemical inventions.

Cost of Patent Application Preparation

Cost of Preparing a Patent Application

Costs for preparing a patent application vary depending on the complexity of the invention.  Here is one source of cost data: patent cost statistics.  Below, I discuss some highlights from the patent cost statistics and also add some other available figures.

Cost of Patent Applications – Recent Numbers

A Seattle company that I work with made of point of asking the cost question of every inventor and every patent attorney willing to comment.  The 2013-2014 numbers fall within the range of $5,000 – $6,000 for a provisional and $12,000 – $15,000 for a non-provisional.  Since the United States moved over to the First Inventor to File system, most attorneys agree that the quality (and cost) of a provisional applications is approaching that for a non-provisional application.

Personally, I encourage my clients to invest in a good provisional patent application at the onset.  That provides the strongest priority claim and also cuts down on the fees for filing a non-provisional application.  (If the provisional application is of non-provisional quality, then it takes little work to use it as a non-provisional one year later).

One major Seattle technology firm reported paying a flat per-application fee based on 3 levels of patent complexity: A = $7500, B = $10,000, C = $12,500.  Nearly all sophisticated software patents are of  B or C complexity.  Chemical inventions are mostly C complexity.

Some Ballpark Cost Figures for Filing a Patent

$10,000, on the low end, to file a patent.  “But [Ronald J. Riley, president of the Professional Inventors Alliance USA] and other small inventors also knock the present system:  High legal bills — inventors can expect to spend $10,000, on the low end, to file a patent; most of that is attorney’s fees.” How much does it cost to file a patent?  What is the cost of a patent?  (Akweli Parker, “Inventor’s reality,” Philadelphia Inquirer, Philadelphia, Pennsylvania, March 23, 2006)

$10,000 – $15,000 as a range.  Attorney fees charged for preparing a patent application. “[M]ost companies spend between $10,000 and $15,000 in attorney fees to prepare the application.” Patent attorney fees. (Dean Turman, patent attorney at MacCord Mason, Greensboro, North Carolina quoted in Michelle Cater Rash, “Restructuring raises patent fees, could hinder startups,”Business Journal Serving the GreaterTriad Area, April 11, 2005)

Complex Inventions Cost More

Complex inventions cost more to prepare than simple applications.  More work and more expertise are required to file patent applications on complication technology.  For example, one should expect patents covering chemical compounds or processes to involve more work and expertise than inventions to simple machines.

Many large firms break inventions down into tiers of complexity.  Extremely simple inventions would fall into the least costly tier, hovering around $6,000.  (Extremely simple inventions could include coat hangers, paper clips, earmuffs, etc).  Highly complex inventions would fall into the most costly tier, ranging from $15,000 and upwards.  Highly complex inventions would include pharmaceutical, medical imagine devices, complicated software, and the like.

One back-of-the-envelope way to determine the cost is to ask the level of education required to work with the technology.  Would a machinist or technician understand the invention?  Or would understanding the invention require a PhD?

According to Julia Feldmeier of the Washington Post, filing a patent application “can easily run more than $20,000, depending on the complexity of the patent…” See “Any Bright Ideas?; How Local Inventors Try to Capitalize on That ‘Aha!’ Moment,” The Washington Post, March 4, 2007).

 

Best Law Schools for Learning Patent Law

Best IP Law Schools

US News and World Report just published their list of the “Best Intellectual Property Law” Schools.

Best IP Law Schools with Evening Programs

Harold Wegner circulated a list of these schools, broken down to the Top Ten within that List that have an evening program.  Mr. Wegner’s motivation for the selection was that “more and more successful patent students are welcoming the chance to attend 1L classes “full time”, but then get a full time patent job in their 2L and 3L years while taking law school classes at night.”

These are the best IP Law School that offer an evening program.

These are the best IP Law School that offer an evening program.

 

My Experience Learning Patent Law at GW’s Evening Program While Working for Finnegan During the Daytime

I attended the George Washington University Law School while working for Finnegan.  I think that this was the best way to learn patent law.  Working through law school gave me practical experience from 9-5 each day and then academic context from 6-8pm each night.  In my opinion, either of these taken alone does not provide the synergy of having them together.  By learning this way, I often tried to apply what I was learning in law school to the work that I was doing for clients during the day.  I also approached my lecture sessions from the standpoint of trying to extract useful bits that I could apply to my work at the firm.

Another plus to working through law school is that many firms will help pay for school.  When I was at Finnegan, my “Student Associate” position came with tuition reimbursement.  That’s a big win.  However, it becomes taxable income, so law school still is not free once you take that into consideration.

There were a few notable downsides to working while going to law school.  First, it was time consuming.  Everyone complains about how hard it is to balance law school with work.  In my experience, it wasn’t a big deal.  I listened to lectures each night instead of watching TV.  And, having a “real job” during the day helped keep the law school experience in perspective.

Second, going to evening classes takes four years to get a JD.  That’s an extra year of law school. This can be condensed to 3.5 years by attending summer classes.  But, either way, you drag out the process.  For this reason alone, I knew many students who transferred over to full time.  If I could have had it my way, I would have done the full time (3 year) route but also worked full time.

 

 

Patenting Clean Energy Technology

Big Opportunities for Patenting Clean Energy Technology

Thanks to Houston Brown for this great guest post on clean energy innovation.  The post is particularly timely in view of the American Chemical Society’s upcoming conference on Chemistry & Materials for Energy.  The conference will be held from March 16-20, 2014 in Dallas, Texas.

IP professionals often analyze patent-related activities in aggregate by defining the ‘patent landscape’ for a technology or field of study. The landscape analogy provokes images ranging from barren deserts to dense forests, and variances in patenting activity can be just as wide. The current landscape for clean-energy technology is best related to a freshly ploughed farmer’s field – much care has been taken to ensure the conditions for growth are ideal, and the time to plant is now.

The U.S. Department of Energy Recognizes the Importance of Clean Energy Technology

There is no mistaking how important clean energy technologies are to the US Department of Energy. The primary goal of their latest strategic plan is to “Catalyze the timely, material, and efficient transformation of the nation’s energy system and secure U.S. leadership in clean energy technologies”.1 To this end the DOE has contributed more than $6.8 billion towards renewable energy development between 2003 and 2012,2 of which about $950 million has been directed towards university-based R&D. While academic scientists across all six renewable energy platforms (solar, wind, tidal, geothermal, hydro, biomass) have benefited from the funding, the budget allocations have been far from equal. In 2004 more than 75% of clean energy R&D dollars were directed towards projects related to solar, bio energy, and hydrogen/fuel cells.3

So, what do cadmium telluride photovoltaics, nano-structured biomass pyrolysis catalysts, and solid oxide fuel cells, have in common? They are all the result of innovations at the interface between chemistry and materials science. Chemistry and materials science are driving the transformation of the nation’s energy system.  The DOE appears to appreciate this contribution.

Opportunities for Chemical Contributions to Clean Energy Technology

While substantial funding has been in place for decades, the development of clean energy technologies from chemistry and materials has been slow. Major advances towards understanding fundamental processes have been prerequisites for the development of commercializable technologies. Fortunately, the state-of-the-art for many applications has advanced to the point that ideas that once seemed impossibilities are being reduced to practice.  The inventive steps that underlie the progress in these areas are not only highly desirable; they are often patentable.

Clean Energy Startups Recognize the Importance of Patenting Clean Energy Technology

Clean energy startups around the country have begun leveraging strong chemistry-based patent portfolios to gain access to an abundance of government-incentivized financial support. The trend is reflected in patent activity at the USPTO, where applications for solar, bioenergy, and hydrogen fuel cell technologies have grown steadily since the early 2000’s.4 While the increase in activity is significant the landscapes remain largely under developed.4 This finding manifests frequently in prior art citation patterns from the USPTO database, where patent applications in these fields consistently turn to peer-reviewed journal articles to describe the prior art, presumably due to a dearth of related patents.

Academic scientists that are inventing in these key areas should not delay in capitalizing on this opportunity. Working with an expert IP professional during the process of reducing an invention to practice enables scientists to draft patent claims covering the most desirable parts of the patent landscape. The clean energy patent landscape is primed for growth, now is the time for chemists and materials scientists to stake their claim.

References:

US Department of Energy Strategic Plan, May 2011, DOE/CF-0067. Available at: http://energy.gov/downloads/2011-strategic-plan

Renewable Energy R&D Funding History: A Comparison with Funding for Nuclear Energy, Fossil Energy, and Energy Efficiency R&D, CRS Report for Congress, March 7-5700, RS22858. Available at: www.crs.gov

Patents and Clean Energy: Bridging the Gap Between Evidence and Policy – Final Report, United Nations Environment Programme. Available at: http://www.unep.ch/etb/events

Patent-based Technology Analysis Report: Alternative Energy Technology, World Intellectual Property Organization. Available at: http://www.wipo.int/reference/en/

Overview of Patent Process for Inventors

Overview of the Patenting Process

The overview of the patent process will likely depend on who you ask.

The overview of the patent process will likely depend on who you ask.

Can you give me an overview of the patent process?  Inventors and founders often ask me for an overview of what to expect when getting a patent.  That’s a fair question.  And there are a variety of approaches to answering it.  The answer really depends on the person’s perspective. A patent secretary will view the process differently from a patent agent, who will view it differently from a government official, etc..

For example, the United States Patent and Trademark Office (“USPTO”) provides an overview of the “Process for Obtaining a Utility Patent.”  Understandably, the USPTO focusses largely on the procedural aspects of getting a patent.  After all, the USPTO is concerned with how each applicant navigates their system.

I come at the patent process from the inventor’s perspective.  I am most concerned with maximizing value from the patent process.  So my “overview” is a little bit different.  I focus on comparing the invention to the state of the art and using that comparison to draft the most valuable patent claims possible. Below, I have outlined this process.  Notably, it looks quite different from other “overviews” of the patent system.

Inventor Focussed Overview of Getting a Patent

My overview of getting a patent can be distilled into 9 steps, which I’ve outlined below.  Notably, a patent professional would add “client development” and “engagement” before step #1.  (For many patent professionals, getting the client consumes about 30% of all time).  Likewise, a patent litigator or transactional attorney would care only about step #9.  A patent secretary would focus primarily on the paperwork involved in steps 6-8.

  1. Extracting the Invention – Organizing all available information about the invention by interviewing the inventors, usually multiple times.
  2. Studying the Invention – Studying all available information provided by interviewing the inventors and reviewing documents provided by the inventor.
  3. Comparing the Invention to the Prior Art – Independently evaluating the invention from the standpoint of someone skilled in the relevant art; Determining similarities and differences.
  4. Drafting Patent Claims – Defining the invention in a manner that emphasizes its patentable aspects.  This involves applying the analysis in step #3 to synthesize definitions with the greatest likelihood for covering valuable property within the following twenty years.
  5. Drafting Patent Application(s) – Drafting supporting descriptive material.  This material often provides definitions for key terms in the application, along with examples, and background information.
  6. Filing Patent Application(s) – Formatting the application from step #5 to conform with the USPTO’s standards for patent applications.  Then, filing the patent application with the USPTO and paying the required fees.
  7. Arguing for Patentability – After filing a patent application, the application sits “pending” at the patent office for years.  See Stats.  After waiting, a patent examiner examines the claims and (almost always) rejects them as a “first action.”  At that point, the applicant must address the examiner’s reasons for rejecting the claims–usually through some combination of arguing or amending the claims.
  8. Grant of Patent – After agreeing on a set of patentable claims, the Applicant pays the issue fee and the USPTO grants a patent.  The Applicant is then responsible for paying maintenance fees 3.5, 7.5, and 11.5 years following the grant.
  9. Enforce or License Patent – A patent provides the right to exclude others from making, using, or selling the invention that is defined in the claims.  This right to exclude is the source of all value – a monopoly – the ability to prevent competitors from entering the market.  That right may be sold (licensing the patent) or enforced against competitors via a patent infringement lawsuit.  This later route is also called patent litigation.