About – Intellectual Property – Patent Protection

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Intellectual property is the intangible product of the mind’s work. Intellectual property has the attributes of personal property. It may be purchased, assigned, licensed, pledged or transferred in the same manner as personal property.

Patents, copyrights, trademarks and related interests are known as intellectual property. Of these, patents provide the strongest possible protection of the three. Patents can be used to prevent others from importing, making, using or selling covered technology—even if that technology was independently created. Among other things, patentable subject matter must usually be both objectively novel and unobvious to those familiar with subject technology.

Examples of property protected by a patent:
Inventions, discoveries and creations of any new useful process, machine, manufacture or composition of matter or any new and useful improvement thereof may be protected by a patent.

The federal statute, 35 U.S.C., section 101, sets forth four main categories of technical subject matter for which utility patents can be granted. These are: “process, machine, [article of] manufacture, or composition of matter. Example include machines, methods of manufacture, non-obvious design improvements, tools, toys, electronic devices, computers, computer programs, games, chemical formulas, articles of manufacture”, and an infinite variety of apparatus, devices, systems, etc.

Overview of Patent Protection

Patents provide a means for protecting the physical embodiments of certain classes of new and useful inventions. It is the broadest form of intellectual property protection, encompassing not only the precise machine or process invented, but also variant machines or processes that may employ the underlying concept of the invention. Like a deed to real property, a patent is required to specify the metes and bounds of the property claimed to constitute the invention. This legal description of the invention is the patent’s claims. Unlike real property whose borders can be measured with precision, the precise boundaries of an invention cannot be precisely determined. Thus, a patent often presents a set of claims of varied scope which proceed from a broad description of the invention to a narrow description of the patent’s core invention. A patent endows its owner with a 20 year right (after the Patent application filing date) to exclude others from making, selling or using the invention claimed in the patent. A patent, in general, is not renewable.

The extent and scope of the claims is determined (in the United States and many developed countries) through an examination process. Thus, like a contract, the terms of the patent are determined through a negotiation process. The negotiation is carried on by a series of patent examiner initiated Office Actions and required applicant responses, as well as examiner interviews (telephonic, video conference or in person). A patent is granted in reliance upon the representations by the applicant, and can be rendered unenforceable or invalid if those representations are later proven to have been false or fraudulent. (Duty of candor and disclosure, codified in federal statutes).

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Provisional Patent Application

A provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. §111(b). It allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. The filing can be informal, and can be as simple as a written description and sketches of the invention. It provides the means to establish an early effective filing date in a non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term “Patent Pending” to be applied. The formal patent application, when filed, can assume the filing date of the provisional application if as required in 35 U.S.C. 199(e) it contains a specific reference to the provisional application. The USPTO cost to file a provisional application is quite inexpensive. Provisional patent applications should always be written as a non-provisional, with at least broad claims and supporting drawings. This is particularly important if the US provisional will be used to set a priority date for a non-US patent filng.

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What about confidentiality?

Attorney-Client or Agent-Client Privilege – expectations of confidentiality-

Federal statues require the PTO registered attorney or PTO registered agent to conduct the client’s business in the best interests of the client and to maintain confidentiality of materials the client wishes to keep confidential.

The Code of Federal Regulations: 37 C.F.R. 10.57 lays out the following duties of confidentiality for those admitted to practice before the PTO: (37CFR quoted below)

10.57 Preservation of confidences and secrets of a client.

  1. “Confidence” refers to information protected by the attorney-client or agent-client privilege under applicable law. “Secret” refers to other information gained in the professional relationship that the client has requested be held inviolate or the disclosure of which would be embarrassing or would be likely to be detrimental to the client.
  2. Except when permitted under paragraph (c) of this section, a practitioner shall not knowingly:
    1. Reveal a confidence or secret of a client.
    2. Use a confidence or secret of a client to the disadvantage of the client.
    3. Use a confidence or secret of a client for the advantage of the practitioner or of a third person, unless the client consents after full disclosure.
  3. A practitioner may reveal:
    1. Confidences or secrets with the consent of the client affected but only after a full disclosure to the client.
    2. Confidences or secrets when permitted under Disciplinary Rules or required by law or court order.
    3. The intention of a client to commit a crime and the information necessary to prevent the crime.
    4. Confidences or secrets necessary to establish or collect the practitioner’s fee or to defend the practitioner or the practitioner’s employees or associates against an accusation of wrongful conduct.
  4. A practitioner shall exercise reasonable care to prevent the practitioner’s employees, associates, and others whose services are utilized by the practitioner from disclosing or using confidences or secrets of a client, except that a practitioner may reveal the information allowed by paragraph (c) of this section through an employee

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Development of the formal patent application

One productive method of drafting a patent application is to follow the following steps:

  1. Review and seek to fully understand the inventor’s disclosure.
  2. Seach the prior patent and non patent prior art to get to further understand the technology and to get a view of the current state of the art.
  3. Identify how the disclousure differs from the state of the art. These differences, ifm they are novel and non-obvious, constitute the “invention”.
  4. Discuss the prior art with the inventor(s) and look for alternate ways (or embodiments) that may be disclosed and claimed to accomplish the invention.
  5. Draft claims of varying scope, with the first independent claim as broad as possible but including at least one novel feature that is seen as patentable over the prior art. Draft independent claims such that each independent claim relies on a different novel feature patentable over the prior art.
  6. Draft dependent claims to further define/ narrow the invention scope, culminating in a “picture” claim that is narrow and define the inventor’s preferred embodiment. The “picture” claims is drafted to obtain at least one allowable claim on the first Office Action.
  7. Prepare patent drawings to support the elements and relationships claimed in the claims.
  8. Prepare a fully enabling specification to support the claims and the drawings.

Essentially that is it!

The claims are interpreted in view of the drawings and the specification to determine what is claimed by the inventor, hence the claims, drawing and specification must use similar words to describe elements and features. The claims define the invention, and the examiner examines the claims in view of the specification and drawings, not the other way around. Features which are laid out in the specification or drawings, but not claimed in the claims are not protected by the patent. (i.e.: they are donated to the public).

The claims “must particularly point out and distinctly claim the subject matter which you regard as the invention.”

The specifiation also includes some additional discussion of the advantages of the invention, improvements over and limitations of the prior art. The specification is a written description of the invention and the manner and process of making and using the same. The patent law is based on the concept that inventors can be enticed to disclose novel and useful inventions to the public, if inventors are given the exclusive right to prevent other from practicing their invention for period of 20 years after filing. It is a win/ win tradeoff for the public good, with the public receiving enabling disclosure of novel and useful inventions adding to the public knowledge and progress of society, and the inventor in turn receiving exclusive rights to his invention.

The ‘Abstract of Disclosure’ can often be formed from a restatement of the preamble to the broadest claim.

The patent application, along with fee transmittal form, drawings (rough drawings are acceptable with initial application), inventor’s oath or declaration, an information disclosure statement (IDS) and an assignment (if necessary) are then filed with the Patent Office. Filing is typically performed electronically through the USPTO e-business portal. The filing confirmation and patent application serial number are received immediately.

The Patent Examiner corps is a valiant group but is understaffed compared to the application backlog. Usually is takes 12 to 24 months from filing for the applicant to receive the first Office Action on his application. If the application is incomplete or flawed, notice to file missing parts will be received much earlier. The Office Actions and the responses of the inventor and his agent begin the negotiation process discussed earlier. During this time the examiner will reject certain or all claims of the invention, based upon prior art searches, other patent applications, and in view of obvious combinations of prior art. The patent agent or attorney will prepare persuasive arguments particularly pointing out how the claimed invention is patentable over the prior art, in view of current patent statutes. Claims may be adjusted by the agent of attorney to overcome defects wherein the applicants claims my ‘read on’ another’s disclosure. The Office Action/ examination phase marks a pick up the in the interaction and negotiation pace, with the assignment to the examiner’s docket. With the claims properly written, with the broadest claims the invention and prior art will support, it is typical for many of the broadest claims to be rejected on the first Office Action. The agent or attorney then, working with the examiner in office actions and responses, works to then amend claims and amend the specification and drawings to overcome examiner’s rejections and yield a patent application which will be allowed and issue as a Patent. The full process (filing to patent issue) may take around 2 to 3 years. During this time public notice of pending patent protection is provided by the “Patent Pending” notice on the product. The patent application usually publishes to the public 18 months after filing.

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Who can prepare a patent application?

The U.S. Patent and Trademark Office requires that the representative of the inventor before the Office be admitted to practice before the Patent and Trademark Office. Persons who seek to become admitted are required to have a 4 year college engineering degree and a technical background. Degreed engineers can study patent law and become admitted to practice before the Patent Office by preparing for (studying patent law statues and patent practice), then sitting for and passing the ‘Patent Bar’ exam.

While a degreed engineer need not have a law school degree to be admitted to practice before the PTO, the PTO requires that an attorney have an engineering degree and technical background to be admitted to patent practice before the U.S. Patent and Trademark Office. An attorney without a technical degree can not be admitted to patent practice before the USPTO. This, of course, limits the pool rather substantially, and makes patent attorneys one of the highest compensated class of attorneys. Likewise, 37 CFR 10.31 does not allow patent agents to practice in trademark law before the USPTO, this being open only to attorneys. Patent Agents are limited to patent case preparation, filing of patent applications, oaths, declarations asignments and prosecution of the patent application before the Patent Office.

The pass rate for the bar exam is rather low, usually around 30% (60 to 70% of all aspiring patent attorneys and patent agents fail the exam and are not admitted to practice). As more attorneys take the bar exam than agents, numerically more attorneys fail than agents. If one fails the patent bar, one can return to concentrated study of patent law statutes and procedure in preparation for the exam and retake the exam.

There are many patent practitioners to choose from, so you are advised to shop around. The Patent Office maintains a public list of all practitioners who are admitted to practice before the patent office. The list is easily available from the Patent Office website ‘www.uspto.gov’. The list contains names, addresses and phone numbers. Some of the listed patent attorneys and agents work solely inside corporations and may not be available for private outside work, while others are available independently.

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What parts comprise a Patent Application?

The Code of Federal Regulations 37 CFR 1.77- Arrangement of application elements.

  1. The elements of the application, if applicable, should appear in the following order:
    1. Utility application transmittal form
    2. Fee transmittal form
    3. Application data sheet
    4. Specification
    5. Drawings
    6. Executed oath or declaration

  2. The specification should include the following sections in order:
    1. Title of the invention, which may be accompanied by an introductory portion stating the name, citizenship, and residence of the applicant (unless included in the application data sheet)
    2. Cross-reference to related applications (unless included in the application data sheet)
    3. Statement regarding federally sponsored research or development
    4. Reference to a “Sequence Listing,” a table, or a computer program listing appendix submitted on a compact disc and an incorporation-by-reference of the material on the compact disc
    5. Background of the invention
    6. Brief summary of the invention
    7. Brief description of the several views of the drawing
    8. Detailed description of the invention
    9. A claim or claims
    10. Abstract of the disclosure
    11. “Sequence Listing,” if on paper

Additionally the applicant is required to disclose to the examiner any relevant prior art of which he is already aware. The applicant is not required to seek out additional prior art, this search is the examiner’s duty. There is a duty of candor and disclosure of relevant, known prior art. By relevant prior art, I mean prior art which may affect the patentability of the applicant’s invention.

The ‘claims’ define the invention, and are of primary importance in the application. Claim structure and choice of wording is highly codified. Choices of wording and structure are set by case law (litigated court rulings) and patent practice. The Patent Office maintains a document titled “Manual of Patent Examination Procedure”, or MPEP, which identifies the required details of patent claims drafting, patent specifications, examination procedures. This publication is available of the Patent Office website: ‘www’uspto’gov’. The first claim is normally the broadest independent claim. Subsequent claims are in order of narrowing scope and frequently depend from earlier claims. The invention is defined by the claims, and the patent (when issued) may be anywhere from ‘valuable’ to ‘worthless’ depending of the soundness of the claims construction. The claims are read in view of the specification and drawings. The patent office is not permitted to read the specification into the claims. Novel elements which the careless inventor discloses in the drawings or specification which are not recited and properly connected in the claims are not protected by the patent (i.e. they are released into the public domain and can serve as prior art against later patents). You can not be too careful in claims construction, it is the major task as it defines the patentable novelty of your invention and the scope of your patent protection. Inexperienced people, in major companies and corporate offices, very often practicing engineers who are knowledgeable of their field, will incorrectly assess a patent scope by the disclosure in the specification and drawings without first outlining the claims. They may assume they are reasonably intelligent and know what they are doing, that the covered invention is disclosed in the patent specification text, but their assumptions are wrong and won’t hold up on a formal patent interference proceeding. Their flaw is that they do not know the rules of the field that they assume they know. What they believe to be protected in the patent disclosure may be ‘taught’ but not protected, and can serve as prior art against later patent filings. Elements of the invention which are not properly claimed can not be enforced, at least by the subject patent.

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Can you prepare and file the application yourself?

Yes, if you are the inventor, then you can prepare the claims and application yourself. You can not, however, represent others before the Patent Office. If you proceed this way, your challenge is to educate yourself as much as you can on Patent Office requirements, statutes, claims drafting techniques and patent examination procedures. The Patent Office web site (www.uspto.gov) offers much material to assist you. You may want to purchase a well known reference book “Patent it Yourself”, which can be found on the internet through book stores (such as Barnes and Noble). Your main risk, which you must prepare and study to overcome, is that you don’t know what you don’t know… and you will be learning in the real world, before an experienced patent examiner, not in a classroom. The examiner will help you, but he can’t protect you from yourself. ... And the relationship is, necessarily, an adversarial one. The trend in recent years (after KSR) is for the Patent Office to reject most all claims as “obvious”. If you elect to file and prosecute the patent application yourself, you should at least seek advice and review from an experienced patent professional.

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Selected Patent Laws and Matters Relevant to Acquiring Patent Protection

35 U.S.C. 100 Definitions.

When used in this title unless the context otherwise indicates:

  1. The term “invention” means invention or discovery.
  2. The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
  3. The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.

35 U.S.C. 101 Inventions patentable.

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless—

  1. the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
  2. the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
  3. he has abandoned the invention, or
  4. the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months (six months in the case of designs) before the filing of the application in the United States, or
  5. the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by applicant for patent, or
  6. he did not himself invent the subject matter sought to be patented, or
  7. before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective date of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

Patentability shall not be negated by the manner in which the invention was made.

Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.

35 USC 112

Specification shall be an ENABLING DISCLOSURE, anyone skilled in the art must be able to carry out the invention. Specification shall set forth the BEST MODE contemplated by inventor at the time of his invention.

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If you are seeking guidance/information on patent related questions or assistance with patent preparation and prosecution, I may be contacted at the E-mail address provided below.

Strategic Patent Services – JH&A LLC

Email: info@hasselbeckandassociates.com

James R. Hasselbeck, P.E.
Registered Patent Agent
Licensed/ Registered Professional Engineer
Member: National Association of Patent Practitioners
Member: Michigan Intellectual Property Law Association (MIPLA)
Admitted to practice before the U.S. Patent and Trademark Office