This Frequently Asked Question (FAQ) article addresses typical questions from companies regarding patents and intellectual property (IP).  This document is authored by the Intellectual Property Group of Morris, Manning & Martin, LLP (www.mmmlaw.com).  The following questions are commonly asked by technology and business services companies.  We hope this information is helpful to you.  Please note that there are additional questions that will be relevant in this area and you should consult an IP attorney at MMM (contact information listed at the end of this memorandum) with any other questions.

1.         Why should I consider filing a patent application?

Answer: There are several reasons that filing one or more patent applications could be important.  A few of the common reasons are listed below:

a. Protection against competitors – Having an issued patent (or patents) grants the patent holder the right to stop others from making, using, or selling the patented invention.  Thus, if you believe you have a successful product, a patent may be the only way to prevent potential competitors from copying that technology and marketing it themselves.

b. Adding value to your company – For many early-stage companies, patents (and pending patent applications) are a way to boost valuations and make a company more attractive to a potential investor.  In fact, many investors and acquirers often comment that patent protection is a key component to a successful valuation.  Further, pending patent applications can be just as important (if not more so) than issued patents, as a pending application carries with it the possibility of obtaining broad patent coverage.

c. Discrete assets – Patents and patent applications are properties that can be bought, sold, and licensed like any other asset.  Accordingly, patents can be used to generate revenue through licensing, or put a “wrapper” around a technology in an agreement.

2.         When should I begin thinking about patent protection?

Answer: Generally, you should begin considering patent protection once product design or development begins in earnest.  There is no requirement that a technology actually be “built” before applying for patent protection (as long as the applicant can define with particularity how the technology will function), and thus you do not have to wait until after a technology is complete to begin preparing a patent application.  Further, as described below, waiting too long to apply for patent protection can bar you from obtaining a patent.  Additionally, there are ways to file a patent application relatively quickly and cheaply (see discussion of provisional patent applications below) to provide temporary protection while product development, marketing, and the like are finished.

3.         What is the difference between a “provisional” and a “non-provisional” (regular) patent application?

Answer: There are two primary types of U.S. patent applications—provisional applications and non-provisional (or regular) patent applications.  The critical distinctions between the two are described in detail below.

4.         What is a “provisional” patent application?

Answer: A provisional patent application is a temporary application that acts as a placeholder and grants its applicant(s) a priority filing date for one (1) year.  If a regular, non-provisional application is filed within one year of the provisional application, then the applicant(s) can claim priority back to the filing date of the provisional application.  If no non-provisional application is filed, then the provisional simply “expires” one year after its filing.

5.         What is required for a provisional patent application?

Answer: Provisional applications are advantageous in that they do not have to meet the strict formatting requirements of a non-provisional application, and thus can typically be prepared more quickly and inexpensively than non-provisional applications.  Also, because there are no formal formatting requirements for provisional applications, and because they are not required to recite specific “claims” (i.e., the legal language that defines the scope of an invention), provisional applications can consist entirely of inventor-supplied materials, such as technical specifications, white papers, internal diagrams and screen shots, and the like.

Importantly, however, provisional applications must include an “enabling disclosure” of the described technology, such that a person of ordinary skill in the art could make and use the described technology without undue experimentation simply by reading the patent application.  Thus, even though a provisional application does not have to satisfy all of the formal requirements of a non-provisional application, a detailed description of the underlying technology is still very important.

6.         What are the disadvantages of a provisional patent application?

Answer: The primary disadvantage of a provisional application is that it is only as good as the content contained therein.  Thus, a short “cover sheet” or “abstract” provisional with limited technical substance that only sets forth a high-level concept or idea will likely not be deemed sufficient to support a filing date for a later, non-provisional application.  In this way, provisional applications can often lead to a false sense of security that a patent applicant has taken necessary steps to protect his or her technology, when in fact there are fatal flaws in the provisional filing.

7.         What is the timetable for preparing a provisional patent application?

Answer: The time it takes to prepare a patent application depends on a variety of factors, including the complexity of the underlying technology, the scope of patent protection desired, whether any potential deadlines are on the horizon (e.g., timing with product release), etc.  Because provisional applications do not have to meet all of the formatting and claim requirements of non-provisional applications, provisional patent applications can be prepared in much shorter amounts of time, especially if they consist entirely or almost entirely of inventor-supplied materials.  Provisional applications consisting of majority inventor-supplied materials can often be filed within a few days.

8.         What is the typical cost for preparing a provisional patent application?

Answer: The cost for preparing a patent application can vary greatly depending on many factors, including the type of application (provisional versus non-provisional), the complexity of the underlying technology, the importance of the technology to the company, timing and budgetary constraints, and other factors.  Some provisional applications consisting entirely of inventor-supplied materials can be filed for as inexpensively as $500.  It is important to note that patent applications often require careful thought and preparation in order to adequately protect an underlying technology, and quickly-filed applications that have not been thoroughly vetted or planned can lead to insufficient protection.

9.         What is a “non-provisional” patent application?

Answer: A non-provisional application is a regular application that is examined by the U.S. Patent & Trademark Office (USPTO) and must meet all formal requirements of a patent application.  A non-provisional patent application includes drawings that show, in detail, a given invention, a detailed description of the invention, and claims that set forth the legal scope of the invention.  Non-provisional applications require careful planning, consideration, and drafting to be of sufficient scope, clarity, and content to adequately and accurately describe an underlying technology.

10.       What is required for a non-provisional patent application?

Answer: Non-provisional patent applications are required to have a specification (detailed description of the underlying technology), “claims” (legal language that defines the scope of the invention sought for patent), and drawings (that illustrate the underlying technology).  These three components—specification, claims, and drawings—must meet the “written description,” “enablement,” and “best mode” requirements of the patent laws.  Said another way, a patent application must include a sufficiently-detailed description of the underlying invention so as to enable a person of ordinary skill in the field of the invention to make and use the underlying technology without undue experimentation.  Additionally, the patent application must describe the believed “best mode” for carrying out the described invention.

11.       What is the timetable for preparing a non-provisional patent application?

Answer: The time it takes to prepare a patent application depends on a variety of factors, including the complexity of the underlying technology, the scope of patent protection desired, whether any potential deadlines are on the horizon (e.g., timing with product release), etc.  Generally, preparing a high-quality, non-provisional patent application requires about three (3) months, but this time can be (and often is) shortened due to timing and budgetary constraints.  Quality non-provisional patent applications can be prepared in less than a month in certain circumstances, but this approach is not recommended.

12.       What is the typical cost for preparing a non-provisional patent application?

Answer: The cost for preparing a patent application can vary greatly depending on many factors, including the type of application (provisional versus non-provisional), the complexity of the underlying technology, the importance of the technology to the company, timing and budgetary constraints, and other factors.  For non-provisional applications, the typical cost will vary and is assessed on a case by case basis.  A patent application can be crafted to fit a client’s situation and budget.  However, it is important to note that patent applications often require careful thought and preparation in order to adequately protect an underlying technology, and quickly-filed applications that have not been thoroughly vetted or planned can lead to insufficient protection.

13.       I am preparing to launch a new product very soon—do I need to file a patent application before I do so?

Answer: Not necessarily, but there are certain actions that can make it time-critical to file a patent application.  Specifically, a patent application must be filed within one (1) year of any public use, public disclosure, or offer for sale (even private) of a given technology, or else the right to obtain a U.S. patent for that technology is lost.  This is known as a “statutory bar” (see below).  Thus, any of these activities (including a new product launch) begins a one-year time period during which a patent application must be filed.  It is also important to note that many foreign countries do not afford patent applicants with this one-year grace period.  Thus, for example, a public disclosure of a given technology (e.g., a white paper or doctoral thesis) may bar patent protection in many countries if a patent application is not filed in those countries prior to that public disclosure.

14.       What is a “statutory bar”?

Answer: A statutory bar is a deadline by which time a patent application must be filed for a given technology, otherwise a patent for that technology cannot be obtained.  Specifically, any public use, public disclosure, or offer for sale (even private) of a technology begins a one-year time period by the end of which a patent application must be filed, or patent rights in that technology are lost.  Thus, if you have a product that was launched, offered for sale, or publicly disclosed within the last year, you need to consider filing for a patent application very soon.

15.       Will a U.S. patent provide protection in foreign countries?

Answer: Unfortunately, no.  Every country has its own patent system with specific laws and rules regarding examination and issuance of patents.  Thus, if you plan to conduct business in any foreign countries, you must file for patent protection in each individual country (with some limited exceptions, such as the EU).  However, there are actions you can take to defer the cost associated with filing patent applications in various countries (see question relating to “PCT applications below).

16.       What is a “PCT” patent application?

Answer: An international “PCT” (Patent Cooperation Treaty) patent application is an application that provides a temporary priority date to file later foreign patent applications if filed within one year of filing a first patent application (e.g., a U.S. provisional application).  Typically, a PCT application provides thirty (30) months for an applicant to decide whether he or she wishes to pursue patent protection in any foreign countries.  If so, the applicant can file in those countries and claim priority back to the filing date of the first filed patent application.  If no foreign patent applications are filed, the PCT application merely “expires.”

17.       What is “prior art”?

Answer: Prior art generally includes prior patents, published patent applications, white papers, academic articles, and other disclosures that describe aspects of a given technology, pre-date a patent application directed to that technology, and can be used by the USPTO to reject that patent application.  The rules pertaining to prior art and what makes a given reference prior art are often nuanced and complicated.  Please contact an IP attorney at MMM for further information.

18.       How do I know if my technology is patentable?

Answer: Whether a given technology is patentable or not depends on a variety of factors.  Primarily, the technology must (i) comprise patent-eligible subject matter, (ii) be “novel,” and (iii) be “non-obvious.”  Regarding the patent-eligible subject matter issue, most technologies are patent-eligible, but this question often arises in the software and business method contexts.  This question is still somewhat unanswered, but for now most experts are taking the position that software technologies will ultimately prove to be patentable, and most companies in the field cannot afford to gamble that all software patents will ultimately be held invalid.  To be considered “novel” and “non-obvious,” a technology essentially must be new and distinct from the “prior art” in the field.  An analysis of the patent-eligibility, novelty, and non-obviousness questions is beyond the scope of this memorandum, but please contact an IP attorney at MMM for further information.

19.       What types of patent searches are available?

Answer: A patent search is one way to begin to understand the relevant prior art that may exist in your field.  A search is never guaranteed to identify any and all relevant prior art, but it does help in identifying whether your technology area is a “crowded field,” and also provides a sampling of what patents in your space “look like.” There are several different types of patent searches that can be conducted, depending on a client’s concerns and goals for the search.

a.         Patentability – The primary goal for this type of search is to identify whether a given technology is “patentable” in view of the relevant prior art (e.g., prior patents, prior published patent applications, white papers, etc.).  This type of search looks for prior art that is identical or substantially similar to the invention/technology that a client has created.  This search includes prior patents, published patent applications, academic articles, etc. (i.e., any prior art that could bar a client from obtaining a patent).  This is probably the most commonly-used type of search.

b.         Non-Infringement – The goal of this search is to identify issued patents that may present an infringement risk to a given technology.  To formulate this type of search request, we need to hone in on very specific features of a subject technology that we believe may be worthy of patent protection, and essentially write a patent “claim” to those features, which may be difficult to do at an early stage in product development.

c.         State-of-the-Art – This type of search looks for not only identical and substantially similar art, but also any references that are in the general field of a given technology or have some common features or aspects to the technology. The state-of-the-art search usually returns a greater number of results as compared to the patentability or non-infringement searches, and provides a better overall view of art that may be used to reject an eventual patent application directed to a given technology.  However, this type of search is generally more expensive than a basic patentability search.

d.         Assignee – Through this search, we can identify any issued patents or published patent applications owned by a particular entity.  Thus, if a client is aware of specific competitors, we can search patents owned by them.  However, this search is fairly limited, as it does not identify recently-filed patent applications (or those for which non-publication has been elected).

20.       Whose name should appear on a patent application (i.e., who is an “inventor”)?

Answer: U.S. patent applications require that individual inventors be named on a patent application.  An “inventor” is one that contributed to “conception” and “reduction to practice” of the claimed subject matter in the application.  Of these two criteria, conception is generally considered to be the most significant.  For example, a pure “bench engineer” or programmer not involved in the design of a technology is likely not an inventor, whereas one who develops the architecture or design of a technology but does not necessarily contribute to actual construction or programming of the system might be an inventor.

It is important to note that, absent an agreement to the contrary, patent rights of an employee do not automatically assign to the employer.  Accordingly, it is very important to obtain patent assignments from all inventors named on a patent application.

21.       Can more than one person be named as an inventor on a patent?

Answer: Yes, this is known as “joint inventorship,” and is fairly common.  Any person that contributed to conception and reduction to practice of at least one claim recited in a patent application is a joint inventor.  Importantly, absent an agreement to the contrary, any and all joint inventors named on a patent application have equal ownership rights to the application, and thus it is very important to obtain patent assignments from all inventors named on a patent application.

22.       What is a “work for hire” agreement?

Answer: A “work for hire” agreement is typically used in the copyright context, and essentially states that any and all work product (e.g., computer source code) created by an employee or contractor is owned by an employer.  Typically, however, work for hire agreements do not extend to ownership of patent rights (which are separate from copyright rights), and thus it is very important to obtain patent assignments from all inventors named on a patent application.

23.       What are “shop rights?”

Answer: Even without a formal assignment of rights, employers of an inventor typically maintain some rights in a patentable technology.  Specifically, in certain circumstances, employers maintain “shop rights” related to a patented invention, which is an implied license for an employer to use a patented technology if it was created by an employee within the scope of his/her employment, using the employer’s equipment, or at the employer’s expense.  Please note that this shop right is generally non-transferable.

24.       What happens after I file a patent application?

Answer: After a patent application is filed, it is initially examined by the USPTO to ensure that all formatting and technical requirements have been met, and if so, it is passed along for examination by a patent examiner.  Unfortunately, due to USPTO backlog, it can often be more than a year (or two) before a patent application is examined.  Once examination begins, an applicant is often required to narrow the scope of his or her patent “claims” and negotiate with the USPTO regarding why a patent is deserved.  After this negotiation process is complete, if the examiner deems the subject matter is worthy of patent protection, then a patent is issued.  If the examiner believes the subject matter is not worthy of patent protection, then it is ultimately rejected.  If this happens, and a patent applicant still wishes to pursue patent protection, then he or she can appeal to the Board of Patent Appeals and Interferences.  Please contact an MMM IP attorney for more information.

25.       Is there a quick and easy way to apply for patent protection?

Answer: Yes, as described above, provisional patent applications can be prepared and filed relatively easily, quickly, and inexpensively in certain circumstances.  However, it is important to note that these provisional applications only provide temporary protection, and they must include sufficient content to support a later-filed non-provisional application to have any significant value.

26.       Why is a patent application’s “filing date” important?

Answer: The filing date of a patent application can be very important.  The filing date establishes when information is “prior art” or not.  Any information with a date after your patent application’s filing date is not “prior art” and thus cannot be used in rejecting your application.  The filing date also determines a number of key dates for other parts of the patent process, such as deadlines for international patent filing.  Under current U.S. patent law, it is important to obtain a filing date as early as possible.

27.       What is a “continuation” patent application?

Answer: A continuation patent application is a discrete, separate patent application that is based upon an existing, pending patent application.  That existing patent application is typically called the “parent” application.  A continuation application is often filed to pursue a patent on an invention that is sufficiently disclosed in the parent application, but for some reason has not yet been claimed.  Or, a continuation application can be filed to pursue claims having a different scope from claims being sought in the parent application.

28.       What is a “divisional” patent application?

Answer: A divisional patent application is also a discrete, separate patent application that is based upon an existing, pending patent application.  That existing patent application is typically called the “parent” application.  A divisional application may be filed to pursue a patent on an invention that the USPTO Examiner has deemed independent and distinct, or to be a different species, from a primary invention in the parent application.  Because the USPTO has the right to force a patent applicant to elect a single “invention” in a patent application, and because some patent applications disclose multiple inventions, divisional patent applications are often filed to expand a parent application into multiple separate patents from the parent application.

29.       What is a “continuation-in-part” patent application?

Answer: A continuation-in-part (“CIP”) patent application is a discrete, separate patent application that is based upon an existing, pending patent application, but adds new matter so as to pursue a patent on some different aspect of an invention that was not disclosed in the original patent application.  That existing patent application is also called the “parent” application.  A CIP application is often filed to pursue a patent on an improvement or enhancement to an invention that was initially disclosed in the parent application.  A CIP can have different effective filing dates for subject matter in the parent application and for subject matter added to create the CIP, which can make prior art analysis complicated.

 

30.       What alternatives do I have to obtaining a patent to protect my technology?

Answer: In some cases, patent protection may not be possible (e.g., it has been more than a year since an offer for sale of a technology), and thus you may want to consider alternate forms of protection.  The type(s) of alternate protection best suited for you may depend on the subject matter of the technology, but for software and other computer-implemented technologies, the following forms are most typical:

a.         Copyright – Protects “original works of authorship.”  In the software context, source code is protectable via copyright.  Registering copyrights is not required to obtain protection, but is necessary to file a lawsuit.

b.         Trade Secret – A trade secret is a process, technology, formula, etc. that is not generally known or readily ascertainable.  Trade secrets are advantageous in situations in which you are relatively confident that your technology cannot be easily “reverse engineered.”  To maintain a trade secret, certain procedures and protocols must be implemented to show efforts keep the technology or subject matter a secret.

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For more information regarding any of the above-listed questions, or any others relating to patents or intellectual property, please contact one of the following attorneys in the MMM IP Group:

John R. Harris – 404-504-7720 – jharris@mmmlaw.com

Daniel E. Sineway – 404-364-7421 – dsineway@mmmlaw.com

This information is presented for educational purposes and is not intended to constitute legal advice. Opinions expressed are those of the author and not of Morris, Manning & Martin, LLP; see disclaimer at http://www.www.mmmtechlaw.com/privacy-policy-and-disclaimer/. Contact Daniel Sineway for more information at dsineway@mmmlaw.com