The Patent Guide: How You Can Protect and Profit from Patents (Second Edition)

Copyright © 2018 Carl W. Battle and Andrea D. Small

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Library of Congress Cataloging-in-Publication Data

Names: Battle, Carl W., author. | Small, Andrea D., author.

Title: The patent guide: a friendly guide to protecting and profiting from patents / Carl W. Battle, Esq., Registered US Patent Attorney; Andrea D. Small, Esq., Registered US Patent Attorney.

Description: Second edition. | New York, New York: Allworth Press, [2018] | Includes bibliographical references and index.

Identifiers: LCCN 2017052418 (print) | LCCN 2017056881 (ebook) | ISBN 9781621536277 (e-book) | ISBN 9781621536260 (pbk.: alk. paper)

Subjects: LCSH: Patent laws and legislation—United States—Popular works.

Classification: LCC KF3114.85 (ebook) | LCC KF3114.85 .B38 2018 (print) | DDC 346.7304/86—dc23

LC record available at https://lccn.loc.gov/2017052418

Hardcover ISBN: 978-1-62153-626-0

eBook ISBN: 978-1-62153-627-7

Printed in the United States of America

Contents

Preface

Acknowledgments

Introduction

Chapter 1: How to Profit from Your Ideas and Inventions

Chapter 2: How to Protect Your Ideas

Chapter 3: How to Maintain Confidentiality of Your Ideas

Chapter 4: How to Keep a Record of Your Invention

Chapter 5: Where to Find Help to Protect and Market Your Inventions

Chapter 6: How to Deal with Invention Brokers and Promotion Firms

Chapter 7: How to Use Patent Attorneys and Patent Agents

Chapter 8: Is Your Invention Patentable?

Chapter 9: How to Prepare and File a US Patent Application

Chapter 10: About Foreign Patent Rights

Chapter 11: How to Prepare and File an International Patent Application

Chapter 12: How to Prosecute a Patent Application at the US Patent and Trademark Office

Chapter 13: The Latest USPTO and Copyright Office Forms and Templates

Chapter 14: Infringement of Patents

Chapter 15: Licensing Your Patents and Inventions

Chapter 16: Starting a Business to Market Your Invention

Appendix

References

Resources for Inventors

Index

Preface

The world has seen a lot of creative people. From the late Apple cofounder Steve Jobs to the conventional garage or basement inventor, people like you are coming up with great ideas for products every day. These innovative ideas are essential to business and economic progress.

Have you had an idea for an invention or an innovative way of doing something that could improve productivity, create jobs, solve some longstanding problem, and make a lot of money for you and your supporters? Although coming up with a great idea or invention is often the biggest step, it is still only the first step. Several things remain to be done before you can expect to realize financial gain from your idea or invention. Many great ideas fail because the inventors do not take appropriate steps to protect, promote, and profit from their ideas.

First, you need to find out if your idea is original, or if someone has already produced it; there are many places you can check. Check stores and catalogs if your idea is for a consumer product. Check trade associations and trade publications in the field related to your idea or invention and visit relevant trade shows. Next, if your idea or invention can be patented, conduct a patent search and consider filing a patent application to protect the invention.

The chances that you are the first or only person to think of a particular idea or invention may be small. Even if you are the first to produce the better mouse trap, nobody is going to beat a path to your door for the product. You must devote the required time, effort, and money to make your idea or invention successful.

The Patent Guide, Second Edition, provides basic and comprehensive information on making your ideas and inventions a success. This book includes easy-to-follow instructions, and advice on how to obtain a US patent on your idea or invention, information and guidance on using patent attorneys and agents, and methods for commercializing your invention. Additional topics are also included, such as dealing with invention brokers and promotion firms, maintaining confidentiality of your ideas, obtaining foreign patent rights, enforcing your patent against infringement, licensing opportunities, and many others.

The easy-to-use forms and step-by-step instructions allow you to handle patenting and commercializing your invention without hiring a patent attorney or invention broker. Depending on the complexity of the invention and your own skills, you may need the advice of a patent attorney or agent or marketing specialists. The Patent Guide, Second Edition, provides information that can assist in the selection of an attorney or agent and can help you get involved and monitor the patent and marketing process. Many expense-saving techniques are provided to help you minimize costs and maximize profits from your ideas and inventions.

Acknowledgments

To my wife, Charmaine, for all of your love and inspiration.

—Carl W. Battle

A special note of thanks to Lindette Hassan, friend and counsel at Fox Rothschild, LLP in Philadelphia for her support and contributions toward the completion of this project. Your support means a lot to me.

Finally, to my beloved husband, Shaun, I could not complete this or any other project without your unyielding support, encouragement, guidance, and good humor. Your partnership in managing our life and family has been tremendous. My achievements, both professionally and personally, could never have happened without you.

—Andrea D. Small

Introduction

New concepts and ideas come in many forms: a new book, product name, machine, chemical composition, manufacturing process, medical treatment, or ornamental design. All of these are considered intellectual property, or property of the mind, and you can buy, sell, license, and otherwise exploit intellectual property for value in the same way that you can other personal property and real estate. How you can protect and profit from your idea depends on the type of idea it is, the kind of legal protection that is available, how concrete and developed your idea is, and how effectively you promote and market your idea.

A bare idea is usually not protected by patents, copyrights, trademarks, or any other form of intellectual property. A concept is difficult to protect, license, or market, unless it is in a tangible form. An invention must be reduced to practice before it can be patented. An idea must be created via some medium, such as a book, a videotape, or a sound recording, before it can be protected by copyright. Trademark rights ultimately require use of the mark with some good or service. Thus, an idea merely carried in your head is useful to no one.

Some people occasionally confuse patents, copyrights, and trademarks. Although the rights of patents, copyrights, and trademarks resemble each other, they are different and serve different purposes. The differences between each of these rights are explained below.

A US patent for an invention is a grant of a property right by the government, acting through the US Patent and Trademark Office (USPTO), to the inventor, or to his or her heirs or assigns. The term of a patent is i) seventeen years from the date on which the patent was granted if the application was filed before June 8, 1995, or ii) twenty years from the date of first filing for an application filed on or after June 8, 1995. The term of the patent is subject to the payment of periodic maintenance fees. The right conferred by the patent grant extends throughout the United States and its territories and possessions, and is, in the language of the statute and of the grant itself, the right to exclude others from making, using, or selling the invention. A patent does not grant the owner the rights to make, use, or sell the invention; it only grants the right to exclude others from making, using, or selling the invention. Because the essence of the right granted by a US patent is the right to exclude others from commercial use of the invention, the patent owner is the only one who may make, use, or sell his or her invention. Others cannot do so without authorization from the patent owner. Thus, a patent owner can choose to manufacture and sell the invention or can license others to do so. Detailed information on patents is presented in chapters 8 through 12 of this book.

A copyright protects writings and other artistic creations of an author against copying. Literary, dramatic, musical, and artistic works are included within the protection of the copyright law, which in some instances also confers performing and recording rights. The copyright protects the form of expression rather than the subject matter of the writing. A description of a machine could be copyrighted as a written work, but this would only prevent others from copying the description. The copyright would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered in the US Copyright Office in the Library of Congress and additional information concerning copyrights can be obtained from the Register of Copyrights, Library of Congress, Washington, DC, 20559 (telephone 202-707-3000). Detailed information on copyrights can also be found in chapter 2 of this book.

A trademark relates to a use in trade of any word, name, symbol, or device that identifies the source of goods. The trademark indicates the source or origin of the goods and distinguishes the goods from the goods of others. Trademark rights can prevent others from using a confusingly similar mark but do not prevent others from making the same goods or from selling the goods under a nonconfusing mark. Similar rights can be acquired in service marks, which are used in the sale or advertising of services. Trademarks and service marks, which are used in interstate or foreign commerce, can be registered in the USPTO. Basic information on trademarks is provided in chapter 2. Before introducing the basics of patenting your invention, The Patent Guide, Second Edition, provides a requisite overview of how to make your ideas and inventions a success. The first thought of many inventors is to present their ideas to a big national company. If you do approach a company or anyone else about your idea, ask that party to sign a confidentiality agreement. The confidentiality agreement obligates the other party to maintain your idea in confidence and to not use or disclose it without your permission. If the other party refuses to sign a nondisclosure agreement, file a patent application for your invention before disclosing it. Present written terms to the other party, nevertheless, that any disclosures you make are in confidence and that you expect compensation if your invention is used. Important information on how to maintain the confidentiality of your idea or invention is provided in chapter 3.

You may be able to produce your idea or invention yourself. Working from your home and selling items on the internet or via mail order is a good way to get started. If you can start (or already have started) your own company, you will usually be better off, because selling your company may be easier than promoting an idea or patent to a larger company, even if your company is losing money. Starting a business to market your invention is discussed in chapter 16. Between the extremes of starting your own company and selling your company to a big business is taking your idea to small- and medium-sized businesses. Such firms may be happy to produce an item that sells in amounts too small to interest large companies. Thus, a small firm may be a better choice and more interested in trying to make your idea a reality.

Once you have looked at issues such as originality, production, distribution, and marketability, it’s time to consider protecting your idea. If you do have a patentable idea, look into protecting it under the patent laws. To document your invention, ask a close friend (under a confidentiality agreement) who understands your invention to sign his or her name on a dated diagram or written description of it, or file a disclosure document or a provisional patent application with the USPTO. Taking one of these measures will provide evidence of the time you came up with your invention in case of a dispute with other inventors over who conceived the idea first. Filing a disclosure document with the USPTO does not give you patent protection, but it does provide evidence of your invention. Sending a registered letter to yourself describing the invention is useless as evidence.

Make a patent search to find out if the invention has already been patented. Chapter 8 provides information on determining the patentability of your invention. Search on a computerized database of patents, such as LEXIS, or at the USPTO in Alexandria, Virginia. The staff at the USPTO will assist in conducting patent searches and in using the facilities of the office. If your invention is complex or involves complicated issues, you may need the help of a patent agent or patent attorney to review the search results to determine whether your invention is patentable. Chapter 8 explains the details of using patent agents and attorneys.

If the invention has not already been patented or publicly known, you can prepare a patent application and file it with the USPTO. Specific information on preparing and filing a simple US patent application is presented in chapter 9. A US utility patent can be obtained on a new, useful, and unobvious process; machine; article of manufacture; or composition of matter; or a new and useful improvement of any of these.

The basic rule is that an invention is not new if the invention was patented or described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the patent application. There is an exception for public disclosures made by the inventor or his assignor (or by someone who obtained the information from the inventor or his assignor), where a one-year grace period is provided.

If you can show that your invention performs a function, it will easily meet the usefulness test. An invention can be useful even if it is destructive. For example, a gun or explosive is patentable even though its primary purpose is to kill or destroy. Typically, the most difficult requirement in establishing patentability is whether the invention is obvious. You cannot obtain a patent on your invention if it is obvious in view of earlier patents, publications or products (referred to as prior art). So, even if the invention is not identically disclosed or described in the prior art, it will be considered obvious if the differences between the invention and the prior art are such that the subject matter as a whole would have been apparent and perceivable, at the time the invention was made, to a person having ordinary skill in the art to which the subject matter pertains. Even if the subject matter sought to be patented is not exactly shown by the prior art and involves one or more differences over the most similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before so that it may be said to amount to invention over the prior art. Small advances that would be obvious to a person having ordinary skill in the art are not considered inventions capable of being patented. For example, the substitution of one material for another, or changes in size, are ordinarily not patentable.

If an inventor is merely utilizing the teachings or suggestions of the published literature or prior art to solve a problem and no unexpected results are obtained, it is doubtful that the invention will overcome the obviousness test. The invention must be evaluated on the basis of how it relates to a problem, how it creates a solution, how it differs from prior art, and how commercially successful it might be.

Policy can prevent certain inventions from being patentable. Inventions suitable solely for the use of special nuclear material or atomic energy for atomic weapons are excluded from patent protection by the Atomic Energy Act. Remember that a patent cannot be obtained on a mere idea or suggestion; rather, a complete description and reduction to practice of the invention is required.

In addition to the utility patent discussed above, a design or plant patent can be obtained. A design patent can be granted to a person who has invented any new, original, and ornamental design for an article of manufacture. The design patent is effective for fourteen years and protects the appearance of an article but not features of structure or utility. A plant patent can be granted to anyone who has invented or discovered and asexually reproduced any distinct and new variety of plant. This includes cultivated sports, mutants, hybrids, and newly found seedlings, other than a plant found in an uncultivated state or a tuber-propagated plant such as the Irish potato.

Specific review and helpful advice on all issues regarding the patenting process are presented in Chapters 8 through 12. This includes information such as how to obtain foreign patent rights, how to enforce your patent against infringers, and what the licensing opportunities are for your patents and inventions.

While you probably still have to invest considerable time, money, and effort in your invention, you can get help from a number of sources. Patent attorneys and agents can help you make a patent search and file and prosecute a patent application, if you cannot do this yourself. Invention promoters are firms that offer—for a fee—to take on the whole job of protecting and promoting your idea. Invention brokers work for a portion of the profits from an invention. Invention brokers may help inventors raise capital and form companies to produce and market their inventions, and they often provide sophisticated management advice.

Other sources of help include invention and entrepreneurial centers located at university campuses. The National Science Foundation funds some centers and provides assistance for inventors and innovators. The Small Business Administration’s (SBA) Small Business Institutes (SBI) are located at several hundred colleges and universities around the country, and they may provide the market research, feasibility analysis, and business planning necessary to make an invention successful. The Office of Energy-Related Inventions in the US Department of Commerce’s National Bureau of Standards sometimes evaluates, free of charge, nonnuclear energy–related inventions and ideas for devices, materials, and procedures.

Inventor’s clubs, associations, and societies are useful sources for networking, gathering information about patenting, and promoting your ideas and inventions. Such organizations might be located in your area. Talking with other inventors is probably the most helpful thing you can do. Don’t forget that a big part of being successful with your ideas and inventions will involve being informed, learning from experience, and networking with others for advice and assistance.

The Appendix of this book provides helpful information on various sources of information, including publications, addresses, telephone numbers, internet sites, and other contacts that are useful to you in protecting and profiting from your ideas and inventions, as well as important patent laws and regulations.

CHAPTER 1

How to Profit from Your Ideas and Inventions

Do you have an idea to improve something that you know could be made better? Do you want to champion it, but don’t know how? Keep reading. . . . There are several ways in which you can profit from your idea or invention. Realize that there is no magic formula for success with any idea and no certainty that any approach will guarantee your expectations of success. What’s important is that you review and analyze all available options and take steps toward your goal. Your main objective is to realize a financial gain from your idea or invention, not to merely patent, copyright, or trademark it. Keep in mind, however, that protecting your idea or invention can be extremely important to your ability to profit from it.

Don’t fall into the trap of thinking that because you are the first to think of an idea or the first to patent it, you will be guaranteed fame and fortune. Nothing could be further from the truth. Less than 5 percent of all patented inventions make money, and the percentage is even lower for small, independent inventors. Big corporations can spend millions of dollars on research and development before finding a commercial success, whereas the small inventor typically cannot afford to do so.

In order to profit from your invention, you need to develop a plan, be open to changing circumstances, and execute. This is no time for linear thinking, because there is no guaranteed route to success. Therefore, you need to be aware of available avenues to profit from an invention or idea. Look at the merits of manufacturing and marketing the invention yourself, selling or licensing the invention to a large company, or working with a small- or medium-sized company to produce your product, or a combination of all of them.

Once you have decided on which of the options you want to primarily focus on, you will need to consider the following:

•Have you documented your idea?

•Will your invention be profitable?

•What steps should you take to secure legal rights to your idea or invention?

•What are the ways to market and monetize your idea or invention?

Remember to be open to change, because you will encounter unexpected issues that will require you to change your plans. Some of these changes may include people who make other suggestions and/or offers to monetize your invention, changes in the technical field of your invention, changes in the law may either increase or decrease the value of your invention, changes in the market, such as an introduction of new disruptive technology that renders your idea or invention defunct, etc. You need to be nimble enough to change your plan or broaden it to accommodate a changing landscape.

DOCUMENTING YOUR IDEA OR INVENTION

Documentation of your idea or invention is important in protecting your rights. For example, thorough documentation of your invention can be helpful in proving theft of your invention and in avoiding disputes over ownership of the invention. If someone steals your invention, convincing documentary evidence will be the key in showing that you made the invention first and that the other party stole or derived it from you. An inventor often makes an invention while working for a company or is employed by a company after making an invention. In