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Frequently
Asked Questions
What is a patent? A patent
is the right to exclude others from practicing an invention.
The patent owner has this right regardless of whether others
obtained the invention by independent development or by copying.
Contrary to most dictionary definitions, the patent owner does
not necessarily have the right to practice the invention. "The
existence of one's own patent does not constitute a defense to
infringement of someone else's patent. It is elementary that
a patent grants only the right to exclude others and confers
no right on its holder to make, use, or sell." Vaupel Textilmaschinen
KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 879 n.4 (Fed.
Cir. 1991).
What are some benefits of having
a patent? First, the patent owner might preempt a competitor
from selling competing products. Second, the patent owner might
grant permission (license) to practice the invention in exchange
for royalty payments, thereby generating income from the patent
itself. Third, the patent owner might cross-license, license
the invention in exchange for a license to someone else's invention.
If I have a patent, can someone
else still practice the invention if their implemetation of the
invention is different from mine? A carefully prepared
utility patent can give the inventor the right to exclude others
from practicing certain alternate implementations of the invention.
A utility patent includes precise sentences, called claims,
that define the invention. The inventor and patent attorney can
formulate a generic definition covering different implementations
of the invention, beyond the inventor's particular implementation.
How do I obtain a patent? One
obtains a patent by filing a patent application in the Patent
Office. A good patent application includes a carefully drafted
dissertation about the invention.
Must I make the invention before
filing a patent application? It is not necessary to make
the invention before filing a patent application. Instead, a
written description of how to make the invention must be included
in the patent application.
Can I obtain a patent even if my
invention is very simple? A simple invention may be patentable,
provided the invention is new and nonobvious. In fact, "the
very simplicity of a new idea is the truest and most reliable
indication of novelty and invention, when others have devoted
extensive effort and exhausted their resourcefulness in a futile
search for the solution of the same vexing problem." American
Safety Table Co. v. Schreiber, 269 F.2d 255, 263 (2nd Cir. 1959).
Can I obtain a patent even if my
invention is a combination of old technology? Yes, if
the combination is new and nonobvious. "Virtually all inventions
are combinations and virtually all are combinations of old elements."
Environmental Designs, Ltd. v. Union Oil Co. of Calif., 713 F.2d
693, 698 (Fed. Cir. 1983).
Can I obtain a patent even if my
invention is implemented with software? In the United
States, a software-implemented invention may be patentable, if
the patent application is properly written.
What is a patent claim? A
patent "claim" is a precise sentence that defines the
invention. While the written description in a patent describes
a specific example of the invention, the claims define the invention
generically. The claims may cover different implementations of
the invention, beyond the inventor's exemplary implementation.
The claims are the focus of any infringement analysis. Thus,
the broadest claim should have only those features necessary
to define the invention; unnecessary features in a claim may
allow a competitor to avoid infringement by building a device
that lacks the unnecessary features.
On the other hand, it is important to formulate claims having
a combination of features that is not in the prior art. Sufficiency
of features is important because, in order for a claim to be
valid, the claim must be different from the prior art.
The written description of the invention in a patent application
supports the claims in the application. An appropriately detailed
description allows the invention to be claimed in numerous ways,
thereby furthering a patent that is more likely to have a claim
that avoids the prior art, yet is likely to be infringed by competitors.
In other words, an appropriately detailed description furthers
a patent that is more likely to have a claim that is both valid,
and difficult to design around. Developing such a description
and claims, however, requires many hours of study by the patent
attorney and, therefore, substantial legal fees.
Why is the filing date of a patent
application important? The filing date of a patent application
is critical because many kinds of pre-filing events may preclude
obtaining a patent. Specifically, for example, an inventor may
wish both to obtain a patent for an invention, and to publicly
disclose the invention. Under the law of most countries, such
public disclosure before filing a patent application precludes
obtaining a patent in those countries. Under U.S. law, such disclosure
more than a year before filing an application precludes obtaining
a U.S. patent.
Besides publishing before filing an application, there are
other acts by the inventor, or others, that may preclude the
inventor from obtaining a patent. For example, under some circumstances
marketing of a product containing the invention may preclude
the inventor from obtaining a patent, even if the invention itself
is not disclosed.
What is a provisional patent application?
A provisional application allows the applicant to both establish
a filing date and defer filing of a regular application; a regular
application filed within 12 months of a provisional application
may be entitled to the filing date of the provisional application,
provided certain conditions are met. An advantage of a provisional
application is that the government filing fee is only US$150,
thereby allowing the applicant to defer payment of the regular
filing fee.
A provisional application does not allow the applicant to
both establish a filing date and defer substantive development
of the written description of the invention. This is true because,
in order for the regular application to be entitled to the provisional
filing date, the invention defined in the regular application
must be adequately described in the provisional application.
Because the written description typically represents most of
the application preparation cost, a provisional application typically
allows the applicant to defer only a fraction of the total preparation
cost.
Filing a marginal provisional application, without first investing
in a appropriately detailed written description, may result in
two alternate scenarios. First, if the applicant subsequently
decides he is not interested in a patent, the applicant has saved
a substantial amount of money.
Second, however, if the applicant subsequently decides that
he is interested in a patent, he may then file a regular application
that is also marginal. Alternatively, if he then prepares a regular
application to define the invention thoroughly, his regular application
might not be entitled to the earlier filing date of the provisional
application. Under this second scenario, because the regular
application's content and filing date are both critical, the
regular application might not issue with broad and valid claims.
If I file a patent application
in the United States, should I also file in other countries?
A U.S. patent issuing from a U.S. application gives the patent
owner a Cause of Action against any unlicenced entity that makes,
uses, or sells the invention in the U.S. The U.S. Patent would
also give the owner a Cause against any unlicenced entity that
imports the invention into the U.S. Thus, for example, a competitor
would be unable to circumvent the U.S. Patent by manufacturing
abroad and then importing into the U.S.
A U.S. Patent, however, does not give the patent owner a Cause
of Action against an entity whose conduct has no nexus with the
U.S. A foreign patent would be required to support such a Cause.
How much does it cost to file a
patent application? The cost for preparing and filing
a U.S. patent application is the U.S. government filing fee,
plus the attorney's fees. The basic U.S. government filing fee
is either US$1000 or US$500, depending on the business classification
of the owner of the patent application.
The attorney's fees for writing a good patent application
will typically be at least several thousand U.S. dollars, depending
on many factors. One factor is whether the inventor can supply
a good written description with drawings, in which case the attorney's
fees will be reduced.
Another factor is the complexity of the invention. If the
invention is very complex, the attorney's fees will be increased.
To write an application for a complex software-implemented invention,
for example, attorney's fees may exceed US$10,000.
The average cost per application may be reduced if there are
to be multiple filings in a closely related area of technology.
For example, the average cost per application may be reduced
when a single system, or product line, contains multiple inventions
to be patented. In this multiple-application scenario, the cost
of preparing the first application may be relatively high but
the cost of subsequent applications, directed to a related area
of technology, may be substantially less. Thus, the average cost
per application may be reduced.
In any event, it may be possible to limit the attorney's fees
to comply with a certain budget. If the budget is too low, however,
the quality of the patent application may be affected.
Are there deadlines for filing a
patent application? There are strict deadlines. A patent
attorney can help you detect whether a deadline is imminent.
Thus, it is important to seek legal counsel early. The U.S. Patent
and Trademark Office maintains an on-line
roster of registered attorneys.
Jackson Patent Law Office, 211 North
Union Street, Suite 100, Alexandria, Virginia 22314, United States
Telephone +1 703-684-4840, Facsimile +1 703-995-0318, E-mail
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Jackson Patent Law Office
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