Monday, July 26, 2010

What Are Patent Claims?

Don’t rely on the dictionary for the definition of “claim”. When applied to patent law, a claim is formally worded sentence fragment that recites and defines the structure, or acts, of an invention in precise, exact terms.

Claims are used to determine if an invention is patentable over the existing prior art, and recite the bounds or scope of an invention. The patent specification shows how to build or make and use the invention and the claims define its scope.

When filing a patent application you must have at least 1 claim to obtain a filing date.

The legal statue that deals with claims is part of Section 112 of the patent laws (35 USC 112), which states the following:

2. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the applicant’s invention.’


3. A claim may be written in independent or, if the nature of the case admits, dependent form.


4. Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers….


5. A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.


6. “An element in a claim for a combination may be expressed as a means or step for perform a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The patent laws and rules are available in PDF format on the USPTO website.

Claims reduce the invention down to its simplest form eliminating anything not essential. One of the most difficult aspects of writing a claim is to keep it short and concise.

Ideally you won’t need very many dependent claims. Dependent claims “narrow” the scope of the independent claim. Try to keep the number of dependent claims below 20 unless the invention is very complex and actually needs that many dependent claims.

Since an infringing invention needs to have all the elements of a claim to infringe it, the shorter the claim and the fewer features claimed in a claim the broader the coverage. So when writing claims make them as short and concise as possible and cite the fewest features you can while still being novel over prior art.

A claim hast to reveal something “novel”, i.e. new and different, either hardware or process, or that no other prior art shows. Usually to overcome prior art one has to narrow the scope not broaden it. To narrow the scope of a claim one sites more elements, or by specifying the existing elements more narrowly.

Claims must also show that the invention is unobvious to someone having ordinary skill in the art, or in other words, it must show one or more features that are new and important and that produce new unexpected results.

There are unique grammatical rules for writing claims and if you are going to write your own claims you should get a good book about writing your own patent and learn to do it correctly.
For instance, a patent claim can have only one capital letter, one period, and no dashes quotes, parentheses, trademarks or abbreviations.

Many of the words used in claims have highly specific meanings and are not always obvious to laypersons in their meaning. Words like “means”, “said”, “whereby”, and “thereof”.

Independent claims are claims that do not refer to a preceding claim and can stand alone. It should define the invention completely on its own.

Dependent claims incorporate all of the elements and restrictions of the independent or dependent claim they are dependent on. It cites a narrower version of the preceding claim by either adding elements or describing the claim more narrowly.

In short, your patent claims should be clear, unambiguous, and all of the elements have to be shown in the patent drawings. The claims should be made as broad as possible with as few elements as possible and still show “novelty” and “unambiguousnous” over all previous patents and prior art.

Patent Basics more about patents.   

What is prior Art? All about prior art.  

Types of Patents  There are three types of patents, Plant, Utility, and Design

Saturday, July 24, 2010

What Is a Patent, How Long It Last and How to Read a Patent

An overview of what a patent is, how long a patent lasts, briefly see how to read a patent.

What Is a Patent?

A patent is a grant issued to an inventor by the US government or the government of another country. Legally a patent is an offensive weapon. A patent gives you the right to stop others from using, making, or selling your invention in the country issuing the patent.

How Long Does A Patent Last?

Plant and Utility patents last 20 years from the date the patent was filed, and design patents last 14 years from the date it was issued. Utility and plant patents are guaranteed an in-force period of 17 years minimum. To compensate for delays resulting from a failure by the PTO (Patent and Trademark Office) to process the patent application in a timely fashion the patent can be extended if necessary.

If however, you fail to pay the maintenance fees when they are due, your patent will expire.

How to Read a Patent

The first element of a patent is the “specification” where the invention is described. Section 112 of the patent laws reads:

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms a to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the bet mode contemplated by the inventor of carrying out the invention.”

Reading the specification will give you a very good idea of what the invention is about, what it does, and how to build, make, or produce it.

The Claims

The claims define the structure or acts of the invention in a precise manner using exact terms in a logical manner. The claims tell the “scope” or “bounds” of the invention. In other words, the claims determine exactly what will infringe the patent. The claims must be specific enough to define the invention over any prior art.

There are independent claims which stand alone, and dependent claims which narrow the scope of the independent claim.

If you are tying to find out if your new invention idea infringes on the patent you are reading, then you would first read the specification to find out how your invention differs. Then you would read the claims, because the claims spell out exactly what will infringe the patent.

If a claim has three elements, x, y, and z, and your invention only has x, and y, but not z then you are not infringing. If your invention has x, y, z, and q, then you are still infringing. The PTO isn’t interested in whether your patent infringes another patent, so you could still be issued a patent, but it would infringe the first patent. The infringement issues would be between you and the other inventor.

Thursday, July 15, 2010

Patents – The Basics and Some Common Questions Answered

For those of you who are unfamiliar with patents here is a primer describing the basics of patents and answering some of the common questions that novice or newbie inventors have about patents.

Let’s begin with what exactly a patent is. Although most people believe a patent provides you with “protection” for your idea. Actually a patent provides you with “offensive” rights. It does not shield you from infringing other patents which would be a “defensive” right.

US Patents are grants from the US government that confer upon inventors the right to exclude others from making, using, selling, importing, or offering an invention for sale for approximately 17 years, 20 years from the date of filing of the patent.

Who is eligible to receive a patent?

Anyone can apply for a patent. There are even provisions for dead and insane persons to apply for a patent through a personal representative. You do not have to be a US citizen.

Patents are considered personal property and can thus be sold or licensed for royalties by the inventor.


Three Types of Patents

There are three basic types of patents, utility patents, design patents, and plant patents. Utility patents are what most people think of when patents are brought up.


Utility Patents

Utility patents cover inventions that operate in a unique fashion to cause a useful result. Like light bulbs, electronic circuits, padlocks, Velcro fasteners, manufacturing processes, new bacteria, plants, and animals, and even methods of doing business.


Design Patents

Design patents cover a unique ornamental feature. The feature cannot be functional; if functional it would have to be covered by a utility patent, and won’t be eligible for a design patent. As you would expect, a design patent is relatively easy to get around, simply change the design in some way.


Plant Patents

Plant patents cover asexually reproducible plants, i.e. by grafting and using cuttings. Plants can also be patented by utility patents and sexually reproducible plants that use pollination can be patented under the Plant Variety Protection Act.


How Long Do Patents Last?

Utility and plant patents expire 20 years after the filing date. Design patents last 14 years from the date they are issued.

Although the term of a patent may be 20 years, it isn’t enforceable until the patent actually issues. Patents are guaranteed an in-force period of at least 17 years. If the USPTO (United States Patent and Trademark Office) is the party responsible for a delay, then they can extend the period to compensate for a number of reasons.

Patents usually issue within a year or two of being filed.


Filing Deadlines

In the United States you have one year to file your patent application after the date you first publish, commercialize, or reveal the details of your invention. If you fail to apply within the one year period you will generally lose your patent rights.

For most foreign countries the act of commercializing or publicly revealing your invention terminates your patent rights if you haven’t filed your application. Even publishing it in the US will destroy your foreign patent rights.

Filing a provisional patent application can provide you with an extra year to file a real patent application as the provisional patent application will give you the earlier publishing date for the US patent office and the foreign patents allow you one year to file after filing a US patent application.


What Cannot Be Patented

There are a few legal restrictions on what can and can’t be patented. For example, anything you can do purely with your mind can’t be patented.

Abstract ideas can’t be patented; the invention must be reducible to practice in hardware form or produce some useful tangible result. You can’t patents things that obviously don’t work like perpetual motion machines.

You also can’t patent human beings or atomic energy inventions.


Protection from Infringement

A patent will not protect your invention against infringing on someone else’s patent. You can only use it to stop someone else from infringing your patent.


How much does a patent cost?

If you use a patent attorney to obtain your patent, a good patent attorney will run you between $3,000 and $7,000 for a straight forward utility patent. Should you decide to patent it yourself the fees are only a few hundred dollars.

You can patent your invention yourself if you really want to. There are some very good books out there that can give you directions on how to do it. I recommend a book titled “Patent ItrYourself” by David Pressman.

The book goes into great detail about all things patent related. It even explores trademarks, trade secrets, copyrights, and more. The book even includes patent application forms and plenty of links to online support as well

You can look up the most current patent fees at the USPTO website.

Wednesday, July 14, 2010

In Relation to Patents and Inventions, What Is Prior Art?

For the US patent office the word “art” is used to refer to technology and previous knowledge of technology is referred to as “ prior art”. Prior art is the knowledge that existed prior to the date that you invented something related to that invention.
According to the US patent laws, “prior art” means the state of knowledge existing or publicly available either before the date of your invention or more than one year prior to your earliest patent application date.

This prior art knowledge applies to any printed publication, written by anyone at all in any location on the planet in any language if it was published before you invented the item in question. This includes US patents, foreign patent applications, books, magazines, including trade journals, and any publicly available technical papers and abstracts. Even comic books count.


The One Year Rule

US patent law says that you must file a patent application within one year after you sell, offer for sale, or commercially or publicly use or describe you invention idea. Failing to do so will prevent you from getting a patent. You therefore need to be very careful about public disclosure of your idea. Public disclosure does not have to be a printed document; even just using your invention in public can be considered public disclosure. Demonstrating your great new idea at a private party would even be considered public disclosure, so watch out!

There are some exceptions. For instance, if you invented a new accessory for cars that mounts on the bumper, you could mount it on the bumper of your car for testing purposes and as long as you took good records and could prove in a court of law that it was just for testing you could probably get away with it.


The Novelty Test

One of the criteria that your invention must meet is the novelty test. Your invention must be physically different in some way that differentiates it from other related prior developments available to the public anywhere.

In patent law terms those prior developments and concepts are grouped together under the term “prior art”.


Establish a Date of Inception

Since the date of your invention is what determines in part what the prior art is, it is very important that you firmly establish the date of your invention. The public knowledge before that date is what will be prior art.

The US patent office considers who ever is first to invent something the valid inventor, not who files his application first like most of the rest of the world.

If you have no documentation the filing date will be used as your date of inception. If you have good documentation with proof of the date you conceived of your invention idea then that is the date that will be used as long as you followed the rules, like not publicly disclosing your idea more than one year before filing the application, or going for a year or more without working on it etc.

One method to establish the invention date is to describe your invention in detail with drawings and all pertinent information and have it signed and dated by two witnesses who state on the document that they understand your invention. The witnesses should of course be reputable.

If someone files a patent earlier than the date you have for conceiving your idea then the patent application by the other person is considered valid prior art.


The important things to remember are:

Establish a date of inception of your idea with evidence that will hold up in a court of law such as signed statements from witnesses who can be called to testify in a court of law.

If your filing date for your patent application is more than one year after your date of inception be able to prove that you did not “abandon” your invention for more than one year, i.e. be able to show that you have never let more than a year go by without actually doing some kind of work on it.

Do not publicly disclose your idea more than one year before your application filing date which would include any publication of documents, disclosure at public events, offer to sell, or public use of the invention etc.

Sunday, July 11, 2010

My Patent Application – Will It Pass the Novelty and Non-obviousness Tests?

The US patent office (USPTO) has four legal requirements that a new invention must meet in order to be patentable. It must fall into one of the USPTOs Statutory Classifications, it must be Novel, and it must be non-obvious to someone knowledgeable in the field of the invention, and it must be useful.

I’m currently getting ready to file a provisional patent application (PPA), and I’m in the process of writing the application. That will buy me some time as I will have one year from filing the PPA until I have to file a real patent application.

I’ve introduced my invention, a selective asparagus harvester, to the public by putting it up on a website, http://www.asparagusharvester.com/. Having disclosed the invention to the public starts a one year clock ticking upon which a patent, real or provisional, must be filed to retain the patent rights.

I’ve chosen to stall having to spend $5,000 to $10,000 on a patent attorney as long as possible while I try to market the invention online. By filing the PPA I delay the date I have to file the real application by a year.

The first test, does it fall within one of the statutory classes, process, machine, manufacture, composition, or new use is easy enough. It’s a machine.

The second test, is it novel is one that I have to make sure is included in the text of my PPA. The PPA does not require claims like a real application. What it requires is that you provide a detailed clear comprehensive description of your invention. If any aspects of your invention are not included in the PPA they will not be covered.

I happen to already have a patent on an asparagus harvester issued on April 23, 1985, patent number 4,512,145. That machine never made it to market, but I’ve now made improvements on it and the improvements are what I hope to obtain a patent or patents on.

There does not seem to be any new patents that show anything to hinder my obtaining new patents on my machine.

Novelty

Back to the novelty test… One of the changes I’ve made is in the cutters. Formerly the air cylinders required a second rod, a “guide rod” tied to and traveling with the piston rod to keep the piston rod from rotating. Rotating the piston rod will rotate the blade causing it to not be horizontal with the ground and possibly missing the spear you are trying to cut.

The problem was that the “guide rod” would not hold up for long before breaking. We tried all kinds of things, different sized rods, different methods of attaching the rod to the piston rod, welding, bolting, threaded connections, etc. They guide rods always broke and the nuts and bolts would always come lose… usually within minutes of beginning operation.

The novel method I discovered for keeping the blade in the proper horizontal plane is to use gravity. I dog-legged the blade mounts on the piston rod so that the blade and the heaviest part of the blade mount were off-set from the centerline of the piston rod. Thus gravity would pull the blade down to horizontal.

I consider this a novel new method and device for preventing blade rotation on an asparagus harvester. I can find no patents that teach anything about blade rotation and preventing it. I have found no patents that teaches off-setting the cutting blades. It looks promising to me.

Non-obviousness

The non-obviousness test would be my next challenge. According to my understanding the new invention must create some new an unexpected result. Let’s examine some background around the blade rotation issue.

If a guide rod or some other method of preventing piston rotation is not used with a standard pneumatic cylinder actuator they will rotate if an uneven force is placed on the blade that results in a torque (rotational force) on the piston rod. We ran into this problem on our earliest prototypes. Thereafter we used guide rods.

Persons familiar with pneumatic cylinder applications in industry are acquainted with guide rods as they are widespread in manufacturing operations throughout the world. Common alternatives include oval, square, and rectangular pistons and/or piston rods and piston rod bushings. Sometimes the guide rods are mounted internally to the cylinder and more often they are externally mounted.

Another method of preventing piston rod rotation is to use double side-by-side pistons and/or piston rod assemblies.

Another reason it isn’t obvious is that when the blades are in their retracted position the friction of the seals hold the blade in whatever position they were in when they reached the fully retracted position. You can fairly easily rotate the blades by pushing on them with your and or by using some other moderate force to apply torque to the piston rod.

When the piston rod assembly is in motion either extending or retracting the friction between the seals and the moving surfaces becomes near zero, allowing gravity to pull the dog-legged blades down into their lowest energy state, horizontal to the ground.

Thus, when the blade strikes the ground and the forces cause the piston rod to rotate, gravity will return the blade to horizontal as the blade retracts. If the blade does not make it back to horizontal by the time it is fully retracted then it will normally finish the job on the way back down, before it engages a spear.

There is one element of danger here. I haven’t done anything but an online computer search and thus might easily have missed an important piece of prior art that an actual professionally done search by a professional searcher at the patent office might uncover.

Hopefully that will be enough to show the patent examiner that my invention is indeed non-obvious.

Passing the final legal criteria, that the device be useful is obviously not a problem. It harvests asparagus much faster than a human can do it by hand.

Saturday, July 10, 2010

Doing an Online Patent Search for My New Invention

I’m offering my new invention for sale online as of a couple of weeks ago. I haven’t filed for any patent protection. I have less than a year to file for a patent or to give up my patent rights to the invention.


I don’t want to spend the money on a patent attorney at this time, but I also do not want to give up my patent rights. I’ve decided to file a Provisional Patent Application (PPA) instead. I have less than a year to file the PPA just like a Real Patent Application (RPA), but I can file the PPA myself, and then when the time comes to file the RPA I shall retain a patent attorney.


The PPA is really just a detailed description of your invention and doesn’t need “claims” and accurate drawings etc. It’s pretty easy to do. Once you file the PPA you have a year in which to file the RPA.


Rather than wait until near the end of the year’s time, and potentially missing the deadline, I think I’ll get started now. I’ll do the research and write it up now, and then when the deadline gets close I will file it. Who knows, maybe I’ll have some great new changes to make to the inventions between now and then. That way I can get them included in the protection when I file the PPA.


My invention is a selective asparagus harvester. I received a patent on the machine many years ago and the patents have long since expired. My new patent needs to get around my old patent. It might not be easy.


I think for my first step I should do an online patent search to see what I can claim in the way of novel improvements (something physically different from all other similar inventions), that are unobvious (something new and unexpected), and that I feel I can get some patent protection for.


In past searches (years ago) I remember getting the results of professional patent searchers that contained not only asparagus harvesters, but other types of machines like vegetable harvesters and sorting machines etc. So I am going to have to be careful in selecting the classes that I search to make sure I don’t miss anything relevant, but not referencing asparagus in particular.


I have even been considering not filing it as an asparagus harvester, but as a vegetable harvester to broaden the scope of my patent protection and offensive rights.


I’ll first go to the USPTO website and browse through classification index and take note of some classes that look promising. Under A I find Asparagus Harvester…. 56 / 327.2.


So I will want to check class 56 subclass 327.2. Class 56 is “Harvesters”. In the index you can click on the “56” and it takes you to the class definitions. There you can find more information. Under the subclass 327.2 it states that it is indented under the subclass 327.1 which means I should check that class as well. Fortunately there aren’t a lot of asparagus harvesting machines that have been patented which makes my search much easier. Unless I uncover a new patent issued after I received my patent, all I really need to do is make sure there are new features of my harvester that are “novel” and “unobvious” over my previous patent.


In Class 56/327.2 there are 57 patents listed as being asparagus harvesters. My next task will be to take a look at each of the patents and see which ones may have similar workings to mine. I’ll then examine those that do, and probably some of the patents that those patents reference as well.


Once I get the list down to just the patents that show similar methods or machinery I will go through them and see if my new harvester design is patentable over the prior art of all those existing patents. Shouldn’t take me more than a week or so…

Friday, July 9, 2010

The Three Types of Patents, Utility, Design, and Plant

There are actually three different kinds of patents according to the US patent and trademark office. The three types of patents are Utility patents, Design patents, and Plant patents.

Utility Patents

Utility patents are the patents most people think of when patents are brought up. Utility patents are an intellectual property right granted by the United States Government of the to inventors “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

This right was established over 200 years ago in Article 1, Section 8 of the United States Constitution: “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.”

Utility patents may be granted to any inventor who invents any new and useful process, article of manufacture, machine, or composition of matter, or any new and useful improvement. Examples of utility patents include electronic circuitry, automatic transmissions, methods of manufacturing things, chemical processes, vacuum cleaners, and darned near anything else that can be manufactured by a human being.

To obtain a utility patent there are four legal requirements; it must fit within one of the statutory classes, it must be useful, it must be novel, and it must be unobvious.

Design Patents

A design patent covers the unique specific look, shape, ornamental design, and that kind of thing. A design patent does not cover functional items. It must be purely aesthetic and if not must go in the direction of a utility patent.

Design patent applications consist mostly of drawings since there are no functional features to explain, just a design.

Design patents only have a single claim and are not difficult to get around by making simple changes. While a utility patent protects the way something works and is used, a design patent only protects the look of an article. An invention can have both functional and ornamental characteristics and thus get both a design and a utility patent in some cases.

The design must be original and not just duplicate of a well-known or naturally occurring person or thing. You will not be issued a design patent for subject matter that can be considered offensive to any ethnic group, nationality, religion, race or sex.

Plant patents

A plant patent is granted to an inventor who has invented or discovered an asexually (through the use of grafts and cuttings) reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. Algae and macro fungi are regarded as plants, but bacteria are not.

Both sexually reproducible plants and asexually reproducible plants can also receive utility patents.

Plant patents are subject to identical legal requirements that utility patents are subject to. Plant patents obviously fall within the plant statutory class, but other than that they must meet the same criteria as a utility patent.

Several of my inventions:

Selective Asparagus Harvester Story

Card Clips Story

The Hot Water Saver Story

Sealing Conduits Story

Invention I’m marketing online: Chilipepper Hot Water Demand System

Website for the asparagus harvester: http://www.asparagusharvester.com/

Thursday, July 8, 2010

Will My Invention Sell? Find Out If It Will Sell Before Spending Money On a Patent

Will my invention be successful in the market place? That is a question every inventor should ask and answer before expending time and money on that great new idea. Bringing a new product to market is an inherently risky venture. Over 90% of all patented new inventions never make it to the marketplace.



There are many factors to consider when determining the commercial marketability of the product including manufacturing costs, methods of distribution, consumer awareness, legal and safety questions, liability insurance, and more.


I once had an invention call the Trim Trak. It would easily strip off the perforated margins on tractor-feed printers in the early days of computer printers. It was a simple part and we felt offering a lifetime warranty was a great idea. It made our liability insurance soar since we might end up replacing vast numbers of them.


If you have a new toy, you will probably need to meet a number of government mandated rules for toy safety. If you have an electrical or plumbing product or one that involves drinking water you will need to have a listing from an approved lab such as UL, ETL, BOCA, NSF, IAPMO etc. Getting a code listing can cost thousands of dollars and will be an ongoing expense.


I’m just beginning to market an invention I’ve been working on for some time, a selective asparagus harvester. The machine uses lasers to detect the spears of asparagus. The lasers are less than 5 milliwatts which is totally safe. In theory you could stare directly into the beam for over an hour without any harm, but I guarantee you wouldn’t look into the beam for long enough to blink…it’s much brighter than the sun.


If I sell the machines I will have to provide the federal government with the customers names that I sell them too because the machine has Class III lasers and requires government notification.


I helped a friend of mine invent an electronic handle for the valves on oxygen, acetylene, propane and other gas cylinders. When you turned on the gas valve the handle would beep once a minute. It reminded you to turn off the valve before you go home at night. I t would save customers a lot of money since the tanks are often empty by morning. The gas supply companies that sell that kind of refused to handle it because they would lose all those gas sales.


Does your invention have a unique selling proposition? In other words does it have something special that makes it stand out over the crowd? Is it less expensive than the existing products? Does it do its job faster? Perhaps it lasts longer, weighs less, is more accurate or makes less noise than its competitors. A unique selling proposition can make it much easier to successfully market your product.


Can it be manufactured economically enough to make it marketable? What quantities will you need to make at one time to take advantage of economies of scale? Will the product need expensive tooling? Will it require a skilled labor force to manufacture it? Can all or part of it be out sourced? Would it be a candidate for overseas manufacturing? Does the manufacturing result in hazardous waste products?


If the product or device is of a technical nature will it need a repair service and warranty replacement program? How will you handle returns? What about product liability insurance?


Does your invention provide a convenience for the customers? Human beings love convenience. Look how quickly society latched onto microwave ovens, cell phones, and GPS devices.


I was involved with manufacturing and marketing an energy saving device that could cut your energy usage for heating water by as much as 40% called a "hot water saver". We worked trade shows with the device and got a lot of feedback from the attendees. They didn’t care if they saved energy. What they nearly always expressed a desire for was a way to get their hot water faster. They did not like waiting for it. As a result we invented the Metlund Hot Water Demand system and the Chilipepper hot water demand systems. It pays to listen to your customers.


Packaging is yet another important consideration. Packaging can make or break a new product. If the new product is in a brown box on the back of a shelf no one will notice it. You want packaging that sells as well as protects the product.


For many types of new inventions you will need a prototype for several reasons. With a prototype you can use focus groups and do much better marketing research. People generally don’t have a good imagination… they usually need the real thing do give you a realistic evaluation.


A prototype may also alert you to potential manufacturing problems and give you a better feel for putting together pricing. Building a prototype often results in further refinements and can thus affect your patent application.


In a number of instances I used prototype inventions for test marketing. I would make up a few dozen of something and find a local retailer who would be willing to share some shelf space temporarily for test marketing.


Don’t forget about the one year rule. If in your market research you disclose to the public the details of your invention you must file for your patent within one year and will most likely lose all or most of your foreign patent rights. Use non-disclosure forms whenever possible.


In summary, figure out all of the advantages and disadvantages of your invention idea and try to find a unique selling proposition if you can. Make sure that can be manufactured and at a reasonable cost. Build a prototype if applicable and do your marketing research utilizing focus groups, test marketing, compare it with other products it will compete with.


Obtain some books on the subjects of patents, new products, marketing and the like. I highly recommend a book titled: “Patent It Yourself” by David Pressman. It goes into quite a bit of detail about everything from trademarks to writing patent claims. It’s a must read for any aspiring inventor.


Happy inventing and patenting!

Tuesday, July 6, 2010

Is My New Invention Idea Patentable? How to Find Out!

Is my invention idea patentable? That’s a question I am sure a lot of people ask themselves, but how the heck can you know for sure?

The good news is that the patent office follows specific criteria which you too can utilize to determine the patentability of your new idea. The bad news is that the patent examiners are humans and it is often difficult to determine ahead of time what any particular human is going to do.

There isn’t anything we can do about the patent examiner until you have applied for a patent and begin interacting with the examiner. For now let’s trace the steps and requirements for obtaining a patent. I’m going to restrict my article to utility patents and not get into plant patents or design patents at this time.

As an inventor you should be aware of the one year rule. Once you go public with your invention you must file for a patent within one year. Failure to do so will lose you your patent rights. Going public would be things like publishing it in a magazine, or offering it for sale, or even putting it up on a website.

So to begin with, to be patentable your idea must not have been made public more than one year before the patent application filing date.

The PTO is required to examine all utility patents to be sure they pass the following four tests:

Statutory Class: Is the invention in one of the five statutory classes established by Congress; Process (method), Machine, Article of Manufacture, composition, or new use of any of the preceding? An invention must fall under one of the categories to be considered for a utility patent.

This requirement is usually not a problem.

Utility: Does the invention perform some useful function?

The invention must perform some useful function or serve some specific purpose to be considered for a utility patent. If your invention does not serve any useful function or purpose then why are you trying to patent it? Any usefulness will do.

Novelty: Will the patent examiner consider the invention to be novel, in other words, is there anything about it that is different from all the previous related inventions?

This means any invention or device etc. anywhere in world at any time prior to you conceiving the idea. This is another easy test to pass. Your invention just has to have some physical feature that no other inventions anywhere in the world have. Something new and different than the prior art discloses.


Unobviousness: Will the examiner think the invention is unobvious for someone who has ordinary skill in the field of the invention? In other words, will it produce new and unexpected results?

The first three tests are pretty easy, but the “unobvious” step is where half of all patents get rejected. The five statutory classes are very broad and they overlap a bit. If you can’t get your idea to fit into one of the categories you are out of luck for a utility patent.

Examples of some things that do not fall into any of the classes are: things that you do with your only your mind like speed reading and meditating, things that occur in nature like a crab or a tree, some computer programs if they do not produce a useful result, and thoughts alone that don’t produce a tangible result or a concrete useful product.

The fifth category, “New Uses”, is a new and unobvious way of using an existing invention. Like if you discovered your can opener was great at removing weld splatter.

The patent office will not issue patents for things considered useful only for illegal purposes such as methods of counterfeiting, safecracking, and defrauding the public in any way. Also no nuclear weapons are patentable because of a special statute.

Your invention must also work. The invention must be operable. If the patent examiner feels that it isn’t operable, the burden of proof will be on you. That is where a prototype can come in handy. Realistically this is rarely a problem as most inventions rely on known principles and would work as described in the application. No perpetual motion machines please.

If your new invention idea meets all of the above criteria then there is a good possibility of you being successful at obtaining a utility patent. Naturally I have only skimmed over the surface and if you are serious about your invention I would suggest you purchase a book or two about patenting you own invention.

Even if you use a patent attorney to prosecute your patent application you will be much more effective in communication with your attorney and thus you will be able to provide the necessary assistance that he may need to convince the patent examiner to grant that patent.

Monday, July 5, 2010

Patents Copyrights Trade Secrets and Trade Marks – Protecting Your Invention

Patents aren’t the only form of both defensive (protection) and offensive (the right to exclude others from making, using, and selling, the claimed invention) intellectual property rights that inventors have at their disposal for his or her new invention.


There are also copyrights, trademarks, and trade secrets which an inventor can use with or without obtaining a patent for the new product he or she has created. Each of these tools provides the owner the right to exclude others from using some form of intellectual property, whether it's a patented invention, copyrighted creative work, registered trademark or trade secret

Owning intellectual property lets you trade and negotiate your right-to-exclude for something else of value—including royalties or anything else you can negotiate.

Patent rights

The US government grants a patent owner the right to exclude others from making, using, and selling, the claimed invention in the U.S. without a license. Patents expire after 20 years from the date the application is filed. Protection begins only once the patent has issued.

Patents are generally considered the strongest form of intellectual property because independent creation is not a defense to an infringement claim. Patents are time-consuming and expensive to obtain, discouraging many inventors from pursing their invention.

Trade Secrets

A trade secret is any information, design, device, process composition, technique, or formula that is knot known generally and that affords its owner a competitive business advantage. Trade secret protection requires that reasonable steps must be taken to protect the secret, such as limiting access to the secret information, and using nondisclosure agreements etc.

A big advantage that trade secrets have is the possibility of perpetual protection. While a patent expires after 20 years from the filing and can not be renewed, a trade secret can last forever as long as it isn’t discovered.


Federal law protects trade secrets by authorizing criminal prosecution of those involved in the theft of trade secrets.

The big disadvantage of a trade secret is that it won’t be a secret anymore if the public is able to figure it out by inspecting, dissecting, or analyzing the product.

Trademarks

A trademark is any word, name or symbol that is adopted and used by a company to identify its goods in commerce and distinguish them from the goods of another company, like brand names. Companies producing services rather than products use “service marks” in the same way.

Trademarks can be protected under both state and federal law. As with copyrights, some trademark protection is established as soon as a mark is used and those rights will last as long as the mark remains distinctive and is not abandoned.

Trademarks should be registered in the U.S. Patent and Trademark Office. As with patents, trademarks must be registered in each country where protection is desired. Trademark registrations are more expensive and time consuming than copyright registrations, but much less expensive and time-consuming than a patent.

Copyrights

Copyrights are offensive rights granted by law to an author, artist, composer, or programmer, to stop others from copying their work. A copyright only covers the arrangement of words that make up a book, it will not cover the book’s subject matter as would a patent.

Federal copyright law protects software and other forms of, expression from unauthorized copying, modification and distribution. For works created by individuals, protection lasts for the life of the author, plus 50 years. For works created by corporations, protection lasts for 75 years from first publication.

Copyright protection is automatic when a work is created, but for the best protection, the copyright should be registered with the U.S. Copyright Office. Copyright protection is easier and cheaper to obtain and lasts longer than patent protection. However, unlike patent protection, copyright provides no defense if a competitor creates a similar work independently, but without copying yours.

Offensive, and defensive intellectual property rights require considerable knowledge and experience to effectively enforce. There are a number of good books available to learn more about these other forms of invention and new product protection.

The Copyright Handbook: What Every Writer Needs to Know, by Stephen Fishman
Trademark: Legal Care for Your Business & Product Name, by Stephen Elias

Nondisclosure Agreements: Protecting Your Trade Secrets & More, by Richard Stim and Stephen Fishman.

Sunday, July 4, 2010

Using the PTO’s Patent Classification System – Online Patent Searching Made Easy

If you are planning on performing online patent searches to see if your new product idea has already been patented, or for a variety of other possible reasons, then you should familiarize yourself with the USPTO’s (United States Patent and Trademark Office) patent classification system.


Statutory Classes

Congress established five classes for patents
• process or method
• machine
• article of manufacture
• Composition
• “New use” of one of the four previous classes.

In order for your invention to be patentable it must fall into one of the statutory classes. It may fall into more than one class since there is some overlap in the classes.

Processes

A process is a way of doing something or making something. A process has one or more steps that describe an activity or the manipulation of a real physical object. Some examples of patentable processes or methods are specific chemical reactions that create a real physical change in something, heat treating, some type of software as long as produces a useful tangible result, and even methods of doing business.


Machines

A machine is an object or device that is used for accomplishing a task. Often software is considered a machine and a process. It isn’t too important which statutory class is used, as long as your invention fits under at least one statutory class.

Articles of Manufacture

Articles of manufacture, more often referred to as “manufactures”, are as one would expect, things made by human hands or by a machine. You can’t patent things like rocks, mice, or wood. Manufactures are simple objects that don’t usually have moving parts as an important feature.

Examples of manufactures would include such things as picture frames, cigarette lighters, chairs, tools, wigs, etc.

Compositions
Compositions are typically homogeneous chemical compositions whose chemical nature is of primary importance and whose shape is of secondary importance. Examples of compositions are asphalt, gasoline, paper, soap, plastics, and the like.

Some naturally occurring things do get patents such as medicine extracted from herbs, and chicken eggs with high levels of vitamin E (U.S. Pat. No. 5,246,717).


New Uses of the Previous Four

New-use inventions are fairly rare. You need to discover a new use for something old. It must be a non-related function. For example, if you discover that your can opener can be used to remove weld spatter from a work piece then you can patent that.


Arranged by subject matter

The USPTO arranges patents by grouping them together by subject matter. Examples of some classification titles included with their class numbers include: amusement devices (472), bearings (384), buckles, buttons, clasps, etc (24), earth working (172), pumps (417), all the way to x-ray or gamma ray systems or devices (378). Each class has sub-classes.

Search the USPTO database using the classifications

The USPTO website has listings of the classifications by class numbers & titles and by numbers only. You can browse through the titles and find the class you are looking for and then go directly to the list of inventions within that class. It’s all pretty easy.

As an example, since I am currently developing a selective asparagus harvester lets suppose I wanted to see what other asparagus harvester patents I will have to deal with when I write up my patent application.

Using the USPTO patent classification system

First I go to the USPTO website home page and at the top of the page I click on “Patents”, which takes me to a page with a box of links on the left side. I click on “Resources and Guidance” which opens a submenu. Next I click on “Patent Classification in the submenu and on the right there is a long list of links.

You should probably browse around and check out some of the information available on the site including the “Handbook of Classification, “Classification Definitions, Patent” , and “Classification Index, Patents”. There is a lot of good information and everything you need to know about patent classifications.


Doing the search

I will now click on the link “Classification Index, Patents” to go checkout asparagus harvester patents. I am presented with the alphabet and I click on “A” for asparagus. This presents me with a list of the classes with the corresponding number on the right. The class numbers on the right are links.

I scroll down and low and behold, nestled between “Ash” and “Asphalt” is “Asparagus Harvester” Class 56 / 327.2. I click on the “56”and another giant list appears. Here are the titles of all of the patents under Class 56 which is actually “Harvesters”.

At this point you I scan down the list looking for anything that looks like it may be similar to my invention. When I find something interesting I can click on a link at the left which instantly brings up a list of the actual patents. Then I can click on any interesting looking patents and see the actual patent, and of course study it in detail.

After an hour or so of practice you will be able to do an effective online patent search. There are some limitations to the online patent searching. The full text patents only go back as far as 1976 and you won’t find foreign patents.

If you are really serious about patenting your new invention idea and binging a new product to market I highly recommend you get a good book about patents and related topics.

One of my favorite books on the subject is “ Patent It Yourself” by David Pressman. It provides you with a clear understanding of not only how patents work, but also covers other intellectual property rights such as trade marks, trade secrets, copyrights, licensing, etc. and how they apply to your invention. It’s quite comprehensive and well worth the price if you want to be a serious inventor. If you are planning on performing online patent searches to see if your new product idea has already been patented, or for a variety of other possible reasons, then you should familiarize yourself with the USPTO’s (United States Patent and Trademark Office) patent classification system.


Statutory Classes

Congress established five classes for patents
• process or method
• machine
• article of manufacture
• Composition
• “New use” of one of the four previous classes.

In order for your invention to be patentable it must fall into one of the statutory classes. It may fall into more than one class since there is some overlap in the classes.

Processes

A process is a way of doing something or making something. A process has one or more steps that describe an activity or the manipulation of a real physical object. Some examples of patentable processes or methods are specific chemical reactions that create a real physical change in something, heat treating, some type of software as long as produces a useful tangible result, and even methods of doing business.


Machines

A machine is an object or device that is used for accomplishing a task. Often software is considered a machine and a process. It isn’t too important which statutory class is used, as long as your invention fits under at least one statutory class.

Articles of Manufacture

Articles of manufacture, more often referred to as “manufactures”, are as one would expect, things made by human hands or by a machine. You can’t patent things like rocks, mice, or wood. Manufactures are simple objects that don’t usually have moving parts as an important feature.

Examples of manufactures would include such things as picture frames, cigarette lighters, chairs, tools, wigs, etc.

Compositions
Compositions are typically homogeneous chemical compositions whose chemical nature is of primary importance and whose shape is of secondary importance. Examples of compositions are asphalt, gasoline, paper, soap, plastics, and the like.

Some naturally occurring things do get patents such as medicine extracted from herbs, and chicken eggs with high levels of vitamin E (U.S. Pat. No. 5,246,717).


New Uses of the Previous Four

New-use inventions are fairly rare. You need to discover a new use for something old. It must be a non-related function. For example, if you discover that your can opener can be used to remove weld spatter from a work piece then you can patent that.


Arranged by subject matter

The USPTO arranges patents by grouping them together by subject matter. Examples of some classification titles included with their class numbers include: amusement devices (472), bearings (384), buckles, buttons, clasps, etc (24), earth working (172), pumps (417), all the way to x-ray or gamma ray systems or devices (378). Each class has sub-classes.

Search the USPTO database using the classifications

The USPTO website has listings of the classifications by class numbers & titles and by numbers only. You can browse through the titles and find the class you are looking for and then go directly to the list of inventions within that class. It’s all pretty easy.

As an example, since I am currently developing a selective asparagus harvester lets suppose I wanted to see what other asparagus harvester patents I will have to deal with when I write up my patent application.

Using the USPTO patent classification system

First I go to the USPTO website home page and at the top of the page I click on “Patents”, which takes me to a page with a box of links on the left side. I click on “Resources and Guidance” which opens a submenu. Next I click on “Patent Classification in the submenu and on the right there is a long list of links.

You should probably browse around and check out some of the information available on the site including the “Handbook of Classification, “Classification Definitions, Patent” , and “Classification Index, Patents”. There is a lot of good information and everything you need to know about patent classifications.


Doing the search

I will now click on the link “Classification Index, Patents” to go checkout asparagus harvester patents. I am presented with the alphabet and I click on “A” for asparagus. This presents me with a list of the classes with the corresponding number on the right. The class numbers on the right are links.

I scroll down and low and behold, nestled between “Ash” and “Asphalt” is “Asparagus Harvester” Class 56 / 327.2. I click on the “56”and another giant list appears. Here are the titles of all of the patents under Class 56 which is actually “Harvesters”.

At this point you I scan down the list looking for anything that looks like it may be similar to my invention. When I find something interesting I can click on a link at the left which instantly brings up a list of the actual patents. Then I can click on any interesting looking patents and see the actual patent, and of course study it in detail.

After an hour or so of practice you will be able to do an effective online patent search. There are some limitations to the online patent searching. The full text patents only go back as far as 1976 and you won’t find foreign patents.

If you are really serious about patenting your new invention idea and bringing a new product to market I highly recommend you get a good book about patents and related topics.

One of my favorite books on the subject is “ Patent It Yourself” by David Pressman. It provides you with a clear understanding of not only how patents work, but also covers other intellectual property rights such as trade marks, trade secrets, copyrights, licensing, etc. and how they apply to your invention. It’s quite comprehensive and well worth the price if you want to be a serious inventor.
Patent It Yourself: Your Step-by-Step Guide to Filing at the U.S. Patent Office
Happy hunting!

Saturday, July 3, 2010

Is My Invention Patentable? How Do I Find Out!

If you have a great idea for a new invention but don’t know exactly what to do next, you might want to consider doing a patentability search. There are a number of good reasons to do a patent search right away.

Obviously the primary reason to do a patent search is to find out if someone else has already conceived of your idea. You can save yourself a lot of grief by finding out your invention idea has already been patented by someone else. You may also be able to modify your idea so that it doesn’t infringe on someone else’s patent and still gets you some protection.

I remember back years ago I had what I thought would be a great invention, a new kind of diaper for babies. My reasoning was that you could put something like litmus paper or some type of dye in the absorbent material, or between the absorbent material and the think plastic covering that would change color when it got wet.

You wouldn’t have to stick your fingers down in the diaper to see if it was wet. You could tell at a glance. I did a patent search and discovered that some large company had patented that very idea years prior. I think it was Proctor & Gamble but I don’t remember for sure. If Proctor and Gamble isn’t marketing it after getting a patent there must be some sort of significant problem with the idea. I just moved on.

Another reason for doing a patent search is that you will probably uncover patents of similar inventions and this can give you insight into how to further improve your invention or potentially find new uses for it and that kind of thing.

After studying the results of your patent search you will have a much better idea about how to write you patent. You can see from the other patents what kinds of drawings and descriptions you will need. If you uncover prior art relating to your invention you will be better prepared to write your patent in a way to circumvent problems created by existing prior art.

Before you invest the $500 or so for a professional patent search you should do a preliminary online patent search yourself. There are substantial limitations to an online patent search. You can do your search for free at the Patent and Trademark Office (PTO) website, and Google has a patent search feature, but the patents only go back as far as 1976. For most situations this doesn’t go back far enough to be considered a good search. Another problem is the search won’t include foreign patents, and the PTO does look at the foreign patents.

The USPTO (United States Patent and Trademark Office) uses a classification system whereby it groups patents together in various ways. It would be helpful for you if you go to the USPTO website and check out the “Handbook of Classifications”.

Go to the USPTO home page and on the top toolbar click on “patents”. On the patents page there will be a blue box on the left with navigation links. Click on “Resources and Guidance link”. Then click on “Patent Classification”. This takes you to a page full of classification information including the aforementioned “Handbook of Classifications”. Study up on the classifications and get a good feel for how the system works, it will help a lot when you do your search.

Once you understand the classifications you can then do your preliminary online patent search and start to make some tangible progress in your quest for that next big idea.



If you want to become a near expert on doing patent searches and protecting your invention with patents, trademarks, trade secrets and other intellectual property rights I would suggest you purchase a book called “Patent It Yourself” from Nolo press by David Pressman. It’s an excellent resource for learning all about protecting, patenting, and even marketing your new invention or idea.