Patent applications
If you are going in the direction of patent protection, it is advisable to file a patent application soon, rather than to postpone it. It can take a long time to prepare and file a patent application. The sooner you file the application, the less prior art is available to the Patent Office to be used to oppose it.
Any introduction of a new product into the marketplace probably requires the filing of patent applications. If filing is put off until after a product has been shipped, this may leave the US as the only place in which patent protection may be obtained. Many other countries deny patent protection to someone who reveals the invention to the public prior to filing a patent application.
All patent applications received at the Patent Office are kept secret. The most common exception to this rule is that when a patent issues, the application file becomes public. Another exception is that if a patent application is referred to by number in an issued patent, the application file becomes public.
There are various types of patent applications and filings depending on the facts of the case. A “divisional patent application” is an application claiming priority from some previously filed patent application called a "parent application" in which more than one invention was disclosed. The divisional application has claims directed to a different invention from the one claimed in the parent application. A “continuation patent application” is an application that claims priority from a previously filed application. A continuation application is usually filed when the Patent Office has responded to the parent application with a "final" office action, rejecting the claims in the application, but the applicant wishes to revise the claims. A continuation application receives the priority date of its parent application.
As a consequence of the adherence of the US to GATT it is possible to file a provisional patent application (“provisional application”) with the Patent Office. The provisional application is intended to be a way of postponing the cost and effort of drafting and filing a full patent application. The applicant may then wait almost a year before filing a patent application. The twenty-year patent term that runs from the first US filing date does not start with the provisional application, but instead begins only with the date of the subsequent patent application. As a result, one may postpone the start of the 20-year patent term by up to one year by the use of a provisional application. The provisional application may serve as a priority document for non-US convention filings. The provisional application must be complete enough to enable one skilled in the art to practice the invention, and means that the application must disclose the best mode known to the applicant for practicing the invention. Most importantly, a provisional application establishes a filing date that serves as the priority date for a patent application filed within one year.
The Patent Office accepts and preserves, for a limited time, "disclosure documents" as evidence of the dates of conception of inventions. This document is not like a patent application that leads to an issued patent. It is a paper disclosing an invention which the inventor signs and forwards to the Patent Office. It will be retained for two years and then be destroyed unless it is referred to in a separate letter in a related patent application. Although there are no restrictions as to content and claims are not necessary, the benefits afforded by the Disclosure Document will depend directly upon the adequacy of the disclosure. Therefore, it is strongly urged that the document contain a clear and complete explanation of the manner and process of making and using the invention in sufficient detail to enable a person having ordinary knowledge in the field of the invention to make and use the invention. When the nature of the invention permits, a drawing or sketch should be included. The use or utility of the invention should be described.
Marking; laboratory notebooks; publishing an article
A patent owner is required to mark goods embodying the invention with the patent number to allow for the collection of damages from infringers. This obligation to mark does not apply to a patent that has only method claims. A proper patent marking would the words "US Patent" followed by the patent number or "May be covered under one or more of the following US patents..."
Establishing priority of invention often depends on such documentation as laboratory notebooks. An inventor who fails to keep a laboratory notebook runs the risk of having difficulty establishing the date on which the invention was made, and thus may lose out in a priority contest with another inventor. Laboratory notebooks also show that one was in possession of the contested information before any access to the adversary's information. This helps to negate a claim that a trade secret was stolen from the adversary.
Publication of an article in a scholarly journal, the trade presses, or elsewhere, could be a bar to patent protection. In countries other than the US, it would be wise to consider filing a patent application prior to the publication. In the US you will have a one-year grace period offered by U.S. patent law. In such a case you would mark the one-year anniversary of the publication on a calendar and be sure to file the patent application before the year was up.
Product infringement; opinion letter; patent searches
How do you find out if your product infringes another? If a product has been on the market for a very long time, one can have some confidence level that any patent that might have covered it would have long since expired. But the mere passage of time is not, by itself, a complete assurance that no patent is infringed, because a patent could issue from a patent application that had been pending before the US Patent Office for a very long time. Depending on the particular business circumstances, it may be advisable to conduct a patent search for patents that might be infringed, perhaps by searching patents in certain subject areas.
If one has the misfortune to be the losing party in a patent infringement case, the finding that one is the infringer of a valid patent may leave one liable for damages. In addition, if the court decides that the infringement was willful, the it may impose "trebling" of damages. Good-faith belief that the conduct was noninfringing or that the patent was invalid, based on a well-founded and well-reasoned counsel’s opinion addressed to you regarding your adversary, may negate a finding of willfulness, in which case the damages will not be trebled.
Several kinds of searches are possible in various combinations and with varying costs, e.g. in-person, novelty, infringement, assignee, and online. In the case of an in-person search, the attorney knows exactly what the client needs and can be quite sure of knowing the quality of the work that is being done. These searches are very expensive and are done only when the client's needs are very great. Sometimes it does not matter how old the patent is since the issue is novelty. Sometimes the search results need to be studied and an opinion given as in a traditional search. Sometimes one is only interested in whether the product will infringe patents owned by some particular company. Finally, you have the complete online search. It is a process that is intended to lead to some level of confidence that the search has found nearly all of the references of interest in the databases used.
Copyright 2001 by Yitzhak Rosenbaum
Published by Israel's Business Arena on 8 February, 2001