Smith & Hopen provides the highest level of patent services including patentability searches, clearance searches, patent prosecution, administrative and court-litigation and patent appeals to the Federal Circuit.
Consider the statistics. Business leaders such as Motorola, IBM, Harris Corporation, and United Technologies Corporation are awarded hundreds of patents each year for innovations created by their Florida-based employees or inventors. Regardless of size, successful companies understand the value of United States patent protection. Developing a patent portfolio offers a number of strategic business advantages including a 20-year legal monopoly.
Companies with a strong patent portfolio establish effective, lawful barriers to competition. Many companies fail to realize the true value of their innovations until those same innovations are adopted by the competition. Securing a patent will provide you with legal recourse to enjoin and recover damages from competitors who manufacture, use, sell or import your company’s innovations.
Patent rights are a valuable business asset. Licensing agreements with third parties, or even competitors may result in significant royalties paid to your company for the use of its technology. Licenses may be granted specifically for certain periods of time or for only certain geographical locations. Patent rights may be sold outright or even donated to an educational institution, such as a local university, for tax purposes. A patent portfolio may increase the overall value of a company seeking to be sold or merged into another company.
The “patent pending” or granted patent designation is an effective marketing tool. How do customers choose your product or services over your competition? How do you communicate to your customers that your products or services are superior to your competitor’s? Your patent portfolio inspires confidence in your customer’s purchasing decision. Your company becomes a nationally recognized contributor to the advancement of your field. The grant of a patent is often newsworthy and may be utilized to bring positive public attention to your company.
The Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads “Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The law now in effect is a general revision which was enacted July 19, 1952, and which came into effect January 1, 1953. It is codified in Title 35, United States Code.
The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the Patent and Trademark Office to administer the law relating to the granting of patents, and contains various other provisions relating to patents.
A patent for an invention is a grant of a property right by the Government to the inventor (or his or her heirs or assigns), acting through the Patent and Trademark Office. The term of the patent shall be 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), from the date the earliest such application was filed, subject to the payment of maintenance fees. The right conferred by the patent grant extends only throughout the United States and its territories and possessions. However, during this term, a patent gives an exclusive monopoly to the patent owner to practice the claimed invention. A patent typically takes anywhere from 6 months (for accelerated applications) to 2-3 years from filling to allowance.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.
The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained. In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles which are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything which is made by man and the processes for making the products.
The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons.
The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.
Interpretations of the statute by the courts have defined the limits of the field of subject matter which can be patented, thus it has been held that the laws of nature, physical phenomena and abstract ideas are not patentable subject matter.
A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.
Recipes fall within patent-eligible statutory categories, since a final food product is “a composition of matter,” and the steps to create the food product represent a process. For patentability, the recipe passes the first hurdle. However, to be patentable, the recipe must also be new—as in, no one has ever performed the steps and/or formed the product before—as well a nonobvious. The nonobvious threshold is often the death of a recipe patent.
Patent cases on contingency introduce some complexities not found in other areas of the law. We are occasionally asked to write a letter, file a patent application, or handle a lawsuit on a contingent fee basis. Our policy is to decline such requests because contingency fee arrangements are usually unfair to the client.
Suppose a client asks us to write a demand letter for $100,000 on a contingency fee basis, telling us to keep a third of the proceeds if the letter results in payment. We could receive a legal fee of $33,333.33 for a letter that would normally cost about $600.00. It makes much more sense for the client to pay the small letter-drafting fee and keep the proceeds.
The same logic applies to the filing of a patent application. To avoid a $10,000.00 legal fee for preparation of a mechanical patent application, for example, a client may propose that we waive the fee and participate in the profits derived from the invention. If the invention meets with commercial success, the client could pay a fee far in excess of $10,000.00.
If the invention is not commercially successful, we have worked for two to three weeks with no revenue, even though our overhead bills never stop coming in. We have no control over whether or not an invention meets with commercial success, because that depends upon the marketing efforts made by the inventor, not upon the quality of the patent application. Consumers don’t purchase products because the patent application for the product is well-written. Being full-time patent attorneys, we can do no more than advise our clients to avoid marketing scams.
A different reasoning applies to lawsuits. Contingency fee arrangements are common in personal injury (PI) cases because the only issue in such cases is damages. The liability is usually clear and most PI law firms will not accept a case on a contingent fee basis if liability is not clear. Thus, the only issue in most PI cases is how large the payment will be, not whether or not there will be a payment. In intellectual property cases, liability is always disputed. An accused infringer will attack the validity of the patent by citing prior art that was not cited by the examiner, and will argue noninfringement as a backup defense. A typical patent infringement suit lasts two or three years and requires the full-time attention of at least one lawyer. No lawyer with an office can stay in business without revenue for such a long period of time. Personal injury cases, on the other hand, are over much quicker and, again, the only issue is the size of the recovery.
In most cases, we are able to quote a flat fee for our services. This removes the uncertainty caused by hourly rates. When a lawyer quotes a fee of $300 to $500 per hour to write a letter or to prepare a patent application, the inventor’s reply is always “Write fast.” Well, that leads to a letter or patent application prepared in a bum’s rush. A well-crafted letter, patent application, or an amendment to a patent application, is best prepared in a relaxed, well thought out manner. A flat fee protects the client from surprises, ensures a thorough preparation of the application, and is, we believe, the only fair alternative to hourly rates and contingency fees.
The United States Patent and Trademark Office (USPTO) has allowed your patent application and it is about to become an issued United States patent. Congratulations on your accomplishment! You are about to become a United States patent holder–a distinction reserved only for true visionaries and innovators. Prior to the issuance of your patent, you have an opportunity to continue building your patent portfolio and expanding your patent rights by filing a continuation patent application. Interested in finding out more about the advantages of filing a continuation patent application? Read on.
A patent is a barrier to competition. Well-informed patent attorneys seek to anticipate how competitors will attempt to design around the patent claims. While broad claims are sought, they must also be drawn with precision to avoid invalidity in view of prior art. Sometimes, neither inventor nor patent attorney can anticipate how a technology may evolve. After a patent is granted, a patent holder has very limited avenues for changing the scope of patent coverage. The two most commonly-used methods for accomplishing this objective are as follows:
- Reexamination: Either the patent owner or a third party challenger may cite new (or unapplied) prior art arguments against an issued patent. This procedure is frequently initiated in response to litigation seeking to cancel patent claims.
- Reissue: A patent reissue is often filed when prior art was inadvertently withheld during patent prosecution or the patent claimed too much (or too little). A patent’s scope can only be broadened within 24 months after it issues. After that, reissue amendments can only maintain or narrow the scope of coverage.
Both reexamination and reissue proceedings can be expensive and create new liabilities in the protection of an invention. However, there is another cost-effective method: filing a continuation application prior to the issuance of the “parent” application.
A continuation patent application must have the same specification and drawings as the parent application, but the continuation application can have a different claim scope. Therefore, a continuation application provides an opportunity to broaden or modify patent coverage for your invention. Because the continuation (the “child” application”) claims priority to a co-pending “parent” application, their patent terms are “coterminous.” Accordingly, continuation applications do not “extend” the patent term. However, by keeping at least one “child” application alive, the patent holder may update, modify, and even include additional subject matter in a later filed “continuation in part” (CIP) application.
In some cases, your patent attorney may recommend filing your continuation application with a request for deferred examination. You can find more details about deferred examination here.
Generally speaking, a utility patent will last 20 years from its filing date. In contrast, a design patent lasts 15 years from the day it is granted. There are also several factors that can affect the term of a patent, i.e., when a patent will expire. These factors include, but are not limited to, whether the patent is a continuation application, whether a terminal disclaimer was filed, whether any patent term extension was granted by the U.S. Patent and Trademark Office, and whether the patent owner has paid the necessary maintenance or annuity fees.
Booking a consultation does not automatically create an attorney-client relationship. However, no successful patent attorney will “steal” your invention. In fact, the reality is that inventing is hard work. It takes not just the spark of imagination, but project planning, marketing, capital investment and competition with the status quo. The attorney-client privilege in our profession is exceptionally strong: we are bound by confidentiality by both the state bar and the U.S. Patent & Trademark Office Rules of Professional Conduct. The attorney-client privilege is the client’s right and is fiercely protected by ethical attorneys.
A non-provisional patent application is a legal document filed with the U.S. Patent and Trademark Office. It contains all of the formal requirements to be examined. If properly prosecuted and assuming your invention is novel and not obvious, your non-provisional patent application will issue into a patent.
The content and formal requirements of a non-provisional patent application are extensive and complex. You should consult an experienced patent attorney to ensure that your non-provisional patent application is properly prepared and prosecuted.
A provisional patent application is legal document filed with the U.S. Patent and Trademark Office that identifies your invention and establishes your priority date as the inventor. A provisional application will not be examined or published, and will not mature into an issued patent. Rather, it provides a 1-year window during which a non-provisional application should be filed to maintain your priority date. If you fail to file a non-provisional application within the 1-year window, you will lose your original priority date.
Establishing your earliest possible priority date can be critical. You should consult with an experienced patent attorney to ensure that your provisional patent application contains all of the necessary information to establish that you invented your invention as of the provisional filing date. Information not disclosed in the provisional patent application will not receive the same priority date as the information disclosed in the provisional application.
Upon filing the provisional patent application, you will be patent pending. However, you will not receive any patent rights while you are patent pending. In order to receive patent rights, you will need to file a non-provisional application and said application must issue into a patent.
No, you cannot renew a patent for an additional 20-year term. Utility patents have a 20-year term and design patents have a 15-year term. Patents rights are discharged discharged into the public domain when they expire.
Under some circumstances, the patent term may be extended. Our experienced patent attorneys can advise you on whether you have received or are entitled to an extension of your patent term.
A patent will also expire if the patent owner fails to pay the scheduled maintenance fees. Smith & Hopen employs a state of the art docket management system designed and built in-house to ensure that our clients never miss a maintenance fee.