Sunday, October 29, 2006

Who Protects Patents?

U.S. patents are granted (issued) by the U.S. Patent and Trademark Office (USPTO). The USPTO is located in Alexandria, Virginia, and conducts business regarding patent applications almost exclusively in writing.

The responsibility for enforcement of an issued patent is the patent owner's burden. If someone is infringing an issued patent, and refuses the owner's demand to cease (or take a license), the owner's recourse is to file a federal District Court action for patent infringement.

The USPTO's involvement with issued patents is primarily limited to (a) collecting periodic maintenance fees (required to keep a patent from premature expiration), (b) examine reissue applications and (c) conduct reexamination requests.

More information on patents at
www.uspto.gov and www.noreklaw.com (my website).

Patent Application Ready

What you need, and do not need, to be patent application ready.

Preliminaries:
Determine whether all co-inventors in agreement about filing a patent application (independent inventors) (or whether you have a written assignment from the individual inventor or inventors (business entities)).
Document any disclosure document filings.
Document any Provisional application filings.
Document any publications, public uses, sales or offers to sell subject.
Obtain a professional patent search and patentability opinion.

Fundamental items needed:
A description of subject - usually accompanied by sketches
An identification of new feature or featurs.
An enablement - operable example (can be hypothetical if operability is obvious, need not be commercially viable).
The best mode - best version known at the present time (again it need not be commercially viable).
List of the closest prior art - includes similar items known to inventor/applicant plus patent search results.

Items that are not required:
Prototypes (comments below)
Formal drawings (comments below)

More on prototypes:
Many wrongly presume a prototype is necessary, or preferred. The U.S. Patent Office (USPTO) does not accept prototypes, and hasn't since the 1800s. A rough prototype can be helpful to understanding and finding flaws in the subject. (Promoters of commercial prototypes are often scams.)

More on drawings:
The U.S. Patent Office (USPTO) requires drawings for most applications. The drawings must follow the content of the application, and therefore the attorney preparing the application determines the content of the drawings. The the drawings also must meet USPTO formalities. Therefore drawings made before the application preparation can be a hindrance or waste. (Promoters of formal drawings before you start the patent application preparation process are often scams.)

More information regarding patent applications is available at www.uspto.gov (website of the U.S. Patent and Trademark Office) and at my website at www.noreklaw.com from which this post was reprinted.

Sunday, October 08, 2006

Reading Patent Claims

A U.S. utility patent has two types of claims, namely independent claims and dependent claims.

Independent claims do not refer to any other claims. They provide the broader protection than dependent claims.

Dependent claims refer to, and incorporate, one or more preceding claims. If a dependent claim refers to an independent claim, it incorporates everything recited in that independent claim.

If a dependent claim refers to another dependent claim, it incorporates everything recited in that dependent claim and everything incorporated into that dependent claim.

More about patents, patent claims and patent protection at the U.S. Patent and Trademark Office website at
www.uspto.gov and my website at www.noreklaw.com

It's in the Patent Claims

Another call from a confused inventor, and another example of invention promo firm scam.

Caller was very upset. A large company (possibly more than one) was infringing his patent. Worse, he tried to contact them and they just "blew him off because he was a little guy" - or so he thought.

Unfortunately he was wrong. He was "blown off" because the company was not infringing, not even close.

What a patent protects is "in the claims" and nowhere else in that patent document. Read the claims. They are numbered and found at the end of the patent.

The caller had apparently not looked at his patent claims. He was looking at a part of the description section, and the even the description of his subject did not approach the supposedly infringing product.

Now patent claims can cover more than the examples described, but his claims did not. No infringement. No need for the time and effort he had spent.

The scam part comes in with the claims he did have. They would not protect a commercially viable verson of his idea, much less anything else.

More on patents at the U.S. Patent and Trademark Office website at
www.uspto.gov and my website at www.noreklaw.com