Hot answers tagged

52

This is a great question. First off, patent rights are initially owned by the inventor and are normally only assignable by a written agreement. In tech companies, developers are normally required to sign such a written agreement when they start their jobs. If that didn't happen, then you still co-own the patent rights. If you are a co-owner, one thing ...


23

I don't think there is a direct answer available. Your circumstances actually pose a generic strategy question for someone with an idea for something new. As I have written in answer to other questions, the underlying issue is net present value of the idea/invention. How do you capture, and then accelerate, that value? You are confronted with compound ...


23

First off, just because you think something is "obviously" covered by Prior Art doesn't mean that it really is. It takes years of experience to understand how to read a list of claims and it is possible that the independent claim(s) is written in such a way that it is not covered by the existing art in the field. All that said, you do have a duty to ...


14

Yajoe, this is rich. You have all sorts of options and may already be well on the way, based on what you have provided here. To start, you and your co- inventors and their patent attorneys are all bound by a Duty of Disclosure - basically saying all of you must disclose any information that is "material to patentability." As an inventor you are supposed ...


9

I have a few suggestions: the USPTO is helping local non-profits set up pro bono patent help. (pro-se and pro bono at USPTO) The first one up and running is in Minneapolis but others are getting on line. Second there may be an inventors club in your area and there may be members who are patent agents or patent attorneys who can provide some advice on DIY ...


9

The law requires that the application provide a complete "written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains" to make and use the invention. If you want the provisional application to be valuable then it ...


7

I am not a patent agent or attorney, yet I believe patent agents and attorneys' help is extremely valuable for filing patent applications because of their experience. You can do large parts of the filing yourself, yet you should better seek help for writing the application and the arguments during prosecution. It is quite easy to obtain a patent entirely on ...


7

As far as I know, patent law does not have any concept of first or second inventors. All inventors/owners need to come to an agreement by themselves about handling the patent (application), revenues, costs and communication with the patent office, but that's their own problem so to speak. Basically, who's listed first doesn't matter. A patent doesn't have ...


6

Your attorney will have to be admitted to practice before the USPTO (pass the patent bar) before he will be able to submit the patent on your behalf. Otherwise the US patent laws do not discriminate against foreign nationals filing on their own behalf. See generally: http://www.uspto.gov/web/offices/pac/doc/general/foreign.htm You can always hire a US ...


5

I'll just say a little about searching that may help get you started. Your last two questions deserve separate answers, I might come back to that in a while if no-one else addresses them. Most patent databases - both the free ones like depatis, espacenet, google patents and the uspto one, and the subscription ones - allow word searches. But this has it's ...


5

To supplement the answer above: There is a book that is pretty good. "Patent Searching Made Easy: How to do Patent Searches on the Internet and in the Library" By David Hitchcock. Other places to search might be google scholar and for some things halfbakery. I also look up old versions of web sites in the wayback machine archive.org At one presentation on ...


5

You can disclose your ideas, designs and product plan details in various ways to try to make them readily findable by patent examiners doing searches. One defensive publication site is IP.com. It is fee based. But the best way to have a high probability of a patent examiner finding your defensive publications when examining someone else's application is to ...


4

Yajoe, there are a few possibilities here, but it isn't very likely that you can actually stop the patent application from being filed - as Dennis Crouch noted, in most cases, your employee agreement will require you to sign papers, etc. -- you can (and should) ask for copies of all the filings of course! Given your description, there are a couple of ...


4

The patent examiners are required to adhere to strict ethics codes (PDF warning) put forth by the Department of Commerce. As a part of this examiner's of a particular grade must supply the following (page 12 of the PDF): If you are designated as required to file such a report, please keep in mind that the information you disclose is used to provide ...


4

The short uncomfortable answer: He can't. See the patent of the Walkman as an example: There is a guy inventing the first mobile stereo player and Sony just refuses to acknowledge him and pay him royalties. He had the patents(in more than one country!) and still a United Kingdom court invalidates them. (How is it possible, you ask? I don't know.) Finally ...


4

To add to the previous answer of Dr. Falken with respect to the question whether others could file a patent application for the same invention in countries where you have not filed yourself the following should be noted. First of all your application will normally only publish 18 months after your filing (or, if applicable, your priority date). As Dr. Falken ...


4

You might consider writing a patent using this analogy: writing a critical app using a new coding language that is vaguely related to the language you presently prefer, but that has a few interesting type conventions which, if you don't know about them, will lead to significant bugs. You get one chance to compile and debug, after the code is written. The ...


4

There are inventors who do a reasonable job of drafting a provisional application that has some value. If they understand the limits of the value they are getting and do not get a false sense of security from it, they will probably be better off than if they had done nothing. Although I do not recommend writing your own patent application, I do highly ...


4

This answer assumes you are talking about a filing with the USPTO. Unlike authorship, inventorship is controlled by law. Writing it up and making drawing might make you an author but, alone, does not make one an inventor. Being the boss does not make one an inventor. Making a conceptual contribution to something in a claim is what makes one an inventor. All ...


4

It is likely you are seeing the effects of a continuation (or divisional, outside of the US). The continuation retains the priority date of its parent, but has a much later filing date. By way of example: A Canadian application (CA1) is filed on 1 Jun 2012. CA1 therefore has a filing date of 1 Jun 2012, but no priority date. A US application (US1) claiming ...


3

Obtaining a patent in any given jurisdiction (US / EU / Japan etc.) will only secure you rights within the geographical limits of that jurisdiction. It has no immediate effect whatsoever anywhere else. However, a patent application filed in one place can be claimed as priority for an application elsewhere. For instance, you could file in the US and then ...


3

Tarik - A few months ago I made the following histogram of patent application pendency for US patent applications. The chart is discussed on my blog. Pendency Discussion on Patently-O. The basic answer is that the average pendency for an application is just over five years from the earliest priority filing and about 3 1/2 years if ignoring priority ...


3

A good option for you is to file a provisional patent. It costs a few hundred bucks ($250, or $125 for a "small entity") and can be as informal as you like. It could even be the exact same description you put on your Kickstarter page. However, note that whatever is in the provisional application limits what you can "claim priority to" later, so you want it ...


3

An alternative not yet mentioned is to consult with your university's tech transfer office. You should do so under confidentiality agreement or otherwise ensure that they will keep any disclosure confidential so it does not count as prior art against you. Many professors are in the same situation as you-they have a potentially patentable invention but no ...


3

The earlier answer makes the important point that it's difficult to know if you have good support for claims yet to be conceived. You can never avoid the danger entirely, but the more preparation you put into you patent even at a provisional stage, the better. I'd say do as much searching as you can, so you know the closest prior art (though I'm not a US ...


3

Patent searching has become a specialty businesses with hundreds of individuals whose primary job is to perform patent searches. I think that there probably are best practices and minimum standards of care. One aspect is the databases searched. General subdivisions might include patents by place of origin, published patent documents by place of origin, and ...


3

Ultimately it is up to you, but consider the consequences of your decision: You write some additional language describing how to perform the method. All you've lost is the time spent writing that additional language, much of which can be adapted from your system language, not to mention the flowchart you already created. You submit the application as-is ...


3

As an alternative answer, courts generally presume that different words in a patent application have different meanings. CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000). This canon has been applied not only to the use of different words in claims, Id., but also to the use of different words in the written ...


Only top voted, non community-wiki answers of a minimum length are eligible