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What’s in a name? Patent titles explained

Many clients disclose inventions with titles suitable for trademarking and brand naming. It is not uncommon for a patent practitioner to scrutinize the invention title and update it before filing. Many clients ask questions related to the name change and worry about the implications for their product name and their brand. However, the update in title is generally to the inventor’s benefit and has little to no impact on the inventor’s end product. Updating the title prior to submission of the patent application can avoid objections during examination and allow the patent office to more readily process and classify the invention after submission.

 

The following is a quick overview of patents title requirements and what (if any) weight is given to the title during prosecution and after patent issuance.

 

Patent titles are short and specific descriptions of the invention, where the patent office requires the description to be technically descriptive and accurate. As stipulated in 37 C.F.R § 1.72 and in MPEP § 606, “[t]he title should be brief but technically accurate and descriptive and should contain fewer than 500 characters.” The title provides the patent office with a brief understanding of the patent claims and the nature of the invention. The patent title also assists the patent office with classifying and indexing the patent, therefore creating an accurate and succinct title is an important step to proper classification. Proper classification and an accurate title also improve others’ ability to identify and search for your patent application after it has published.

 

Trademark names, by contrast, can be vague or unrelated to the technical and physical attributes of the invention. Therefore, trade names should generally be removed from the invention title when preparing the patent application in favor of a more technically descriptive title. While this descriptive title may be dry and more direct (boring even!), failure to properly title the patent can lead to objections during prosecution of the patent and added expense for the inventor(s).

 

Once the patent title is chosen, the inventor or owner of the patent can choose a suitable product name or trademark name without regard to the patent title. The title of the product and the title of the invention do not need to be the same to be protected by the patent. Therefore, it is best practice to allow your patent practitioner to suggest a new title if the invention title is a trade name or brand name, as opposed to one that is simply “technically descriptive”, while brand names and logos can be protected by registering a trademark.

 

Patentability: Does your invention meet the letter of the law?

In the United States Title 35 of the United States Code U.S.C. governs the intellectual property right to patent an invention.  The right to a patent is actually unique in law as it provides for one of the very limited occasions where the government will impose what is considered in the legal world as a negative right.  A patent actually does not afford an inventor a specific right as much as it operates to restrain the right of another.  In the case of a patent the right that is restrained is the right of all others to sell, manufacture or distribute the patented invention without the approval and often compensation of the holder of the patent.

The legal jurisprudence behind intellectual property, such as patents, as an area of law is to provide incentive for innovation.  The government acknowledges the burden and risk associated with the innovative process, therefore they want to reward and incentivize those individuals that provide such value to society.  The following is an outline of the legal requirements to be met by every application submitted to the United States Patent and Trademark office USPTO.

SPECIFICATION: What is YOUR invention?

Title 35 section 112 U.S.C.. A patent application shall include a specification section. In this section the application shall set out the manner and process of making and using the invention, in full, clear, concise, and exact terms.  This section shall precisely and distinctly point out the subject matter which the applicant intends to patent.  This section should include information regarding the limitations of the patent due to any prior inventions found during a patent search. Any combined claims to patent right shall be included as to how they are incorporated in the claim.  Information as to the structure or material need not be set out as separate information in a combined claim.

ENABLEMENT: What gives YOU the right to patent YOUR idea?

Title 35 section 101 U.S.C.. This section establishes the legal right to claim intellectual right as a patent.  The section covers anyone who invents or discovers any new and useful process, machine, manufacture, or composition of matter.  The section also includes a claim of right for anyone who invents or discovers any new and useful improvement of an existing process, machine, manufacture, or composition of matter.  This section also limits the right to patent by the conditions and requirements under Title 35 U.S.C.

NOVELTY: Is YOUR invention truly unique and first in right?

Title 35 section 102(a) U.S.C.. This section establishes a limitation to the intellectual property right of patent. Further, this subsection defines prior art as a useful process, machine, manufacture, composition of matter or useful improvement to any of the aforementioned that was previously claimed as an invention and was patented, or described in a printed publication as a patent application.  The section also limits the right to patent any invention that is subject to disclosure through public use, sale, or otherwise available to the public before the effective filing date of the claimed invention.

Title 35 section 102(b) U.S.C.. This section provides for exceptions to the prior art limitation set out in Title 35 section 102(a) U.S.C..  Any disclosure made to within one year of the filing date of the second claim of right shall not operate as prior art to bar the right to patent if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.  It also applies in the same regard to disclosure that occurs through public use, sale, or other release to the public that occurs within one year of the effective filing date if the disclosure was made by the inventor or joint inventor, or a party that obtained the subject matter directly or indirectly from the inventor.

This exception covers disclosure made by a co-owner or assignee of the inventor.  The section defines co-ownership as subject matter that was developed and made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention.  Further, the section provides the exception to prior applies if the invention was the product of the joint research agreement and the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

NONOBVIOUS: Is YOUR invention really worthy of a patent?

Title 35 section 103 U.S.C.. This section establishes that a claim of right to a patent is not valid for an invention that fails for obviousness. Further, the title declares obviousness when the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.  An invention must be found to be nonobvious to be patentable.  However, the manner in which the invention was made shall not negate patentability.

For more information regarding the patentability of your invention, you can speak with a patent agent at our firm.  Additional resources can be found on the USPTO website.

Preparing To Patent Your Idea

It is probable that no one on earth knows your invention more intimately than you do. When innovation strikes, it can often become all consuming. Hundreds, possibly thousands of hours will be dedicated by an inventor taking an idea to production.  The task can be equally exciting and daunting.  The footpath on the road less traveled may be uncertain, feel unstable and quite possibly scare the once excited inventor running stark out of the mission early on.  Those of you who do not give up easily and enjoy the challenges in the process will surely find your way.  Your devotion to your innovation is commendable to say the least.

Regardless of the stage of development you are currently in, it is always of paramount importance to protect your invention.  Whether it exists as only a thought in your mind or you have a prototype on your desk, there is no time like the present to file a provisional patent application.  Even the most sophisticated inventors become overwhelmed when faced with the patenting process.  Often encountered are fears that the concept is not patentable, is already patented.  Whatever your fear may be, no outcome can be worse than potentially having your million dollar idea stolen.  Protecting your intellectual property with a provisional patent will give you the time you need to develop your product and protect it at the same time.

Getting a provisional patent application accepted by the United States Patent and Trademark Office (USPTO) is not as difficult as one might think.  There are specific measures you can take to assist your patent attorney in processing a successful provisional patent application in as little time as a week. Here is a list of surefire steps you can take to make sure your invention gets the protection it deserves:

1)      Do not share your idea with anyone other than your patent attorney prior to receiving acceptance of your provisional patent application, stamped with a filing date from the USPTO.

2)      Contact a patent attorney as early in the development process as possible.

3)      Write a list of essential information about your invention to assist your patent attorney with your application. Include in the description the background of your invention, a paragraph or two describing the problems that your invention will solve. Next, outline the solutions to the problems you identified. This is the assets that your invention is comprised of. Finally, you want to send photos, or illustrations of your invention with detailed descriptions.  Try to be as specific as possible with the composition of materials and any details of the design that are essential to the invention.  The more information you provide your attorney the better they will understand your invention.

4)      You will need a small amount of money to cover the filing fee.  The fee will be less than $100 for a provisional patent application filed in the US only.  Once filed in the US, you will be given a provisional patent application number that you can use when applying in other countries.

Remember not to over pay for this part of the process. The USPTO will not analyze your provisional patent application for patentability.  Therefore, there is no need to spend thousands of dollars on this phase in the developmental process. Find a reputable attorney or patent agency to draft a provisional application for you.  Do not let high price quotes deter you from securing protection for your invention.

Once you have a provisional patent application on file with the USPTO it is time to follow through with your dream.  You will have one year to file non-provisional patent application with the USPTO.  This time can be devoted to research and development of your invention, as well as preparing the non-provisional patent. You may even begin to generate revenue by selling your invention.  Whatever you do, don’t sell yourself short by forgoing the patent process.  It is well worth the investment of a skilled patent attorney to draft and submit a non-provisional patent application on your behalf, as this part of the process determines if you will be granted exclusive right to sell, manufacture and distribute your invention in the US for up to 20 years.  Whatever the future may hold I wish you the best of luck in your endeavor!

What is Intellectual Property?

I hear this phrase frequently as an intellectual property attorney. But it’s rare that the phrase is followed by an explanation as to why the person believes they need intellectual property protection. Intellectual property refers primarily to patents, trademarks, trade secrets, and copyrights. There are many “do it yourself patent application” tutorials and “inventor help” businesses, legitimate and otherwise that tell businesses and individuals that they need a patent in order to be successful. Apocalyptic visions are created, of competitors working through the night in secret workshops, just so they can rip-off your idea. People are then told that obtaining a patent, trademark, or copyright will protect the ideas from all nefarious competitors.

 The truth is that patents are not a one-size-fits-all solution to protecting any idea. There are several forms of intellectual property protection. The type of coverage you need depends on the nature of your idea and your business. It may take multiple forms of protection, obtained at strategic times and places, in order to properly protect you. Developing an intellectual property coverage plan for your product or business involves a great deal of legal strategy and it’s important to ask a licensed patent attorney about it to help you through the process. The best thing to ask your attorney is not “How do I get a patent?” but instead “What type of coverage do I need, and when do I need it?”

 Intellectual property is property you can’t touch or move. It is ideas, works of art, stories, recipes, and other creative endeavors. There are four types of intellectual property:

 1)      Patents – protect new products, processes, compositions of matter, and articles of manufacture. This generally means protection or physical products and methods of making or using the products. Patent rights prevent others from making or selling your invention.

2)      Trademarks – protect business and product names. This keeps competitors from making the same product and putting your name on it.

3)      Copyrights – protect artistic works such as music, paintings, poetry and even recipes. Copyrights prevent people from copying your artistic works and selling without your permission.

4)      Trade Secrets – Protect business secrets such as soda recipes, business strategies, and things that can’t be published.

 Do any of these sound like they pertain to you? I’m sure more than one of these categories applies your product or business. Depending on the nature of your product or business, you might need a patent and a trademark, you might need a trade secret, or you may need none of these. Just because a type of intellectual property can help you doesn’t mean that you need it to operate your business or sell your product.  Obtaining a trademark can take a year or more, a copyright can take several months to a year, and obtaining a patent can take several years. In some cases you can start the business before you obtain the right coverage, in other cases you really need to file for coverage before going public.

 How do you determine what to file ? How to file it and when to file it? The best way to ensure you’re properly protected is to consult an attorney. A simple introductory consultation should give the attorney a good idea about your needs and the appropriate time frame.

 If you decide to go it alone, purchase a few books on intellectual property filings. Don’t rely on websites and invention businesses alone. These are helpful resources, but could end up costing you significantly more than an attorney if you are taken advantage of by scam artists. Remember that intellectual property applications are legal proceedings! If you decide to represent yourself, you’ll need to do just as much work to prepare as you would to represent yourself in a court trial. Set goals for yourself and before you file determine the points at which you will be “in over your head” and seek professional assistance. Good Luck!

CHANGE TO FIRST TO FILE

New 35 USC § 102 – FIRST TO FILE:

Under the Leahy-Smith America Invents Act, the U.S. patent system will be changing to a “first to file” system. This change takes place on March 16th, 2013 and will impact you. In addition to being the first to invent, you must also be the first to file a patent application or you will not be able to obtain a patent. Both a provisional and nonprovisional patent are considered filings for purposes of securing rights to your invention. Timing is imperative as a result of these changes and you should attempt to have a patent filed as soon as possible. As a consequence of these changes, another person may file for a patent on your invention or an invention similar thereto and prevent you from ever obtaining a patent – this is true regardless of whether you were the first to invent. All patents filed on or after March 16th, 2013 are subject to these new laws

Micro-Entity Fee Changes

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New Micro Entity status will be available for applications filed on or after March 19th, 2013. Most individual inventors will qualify for micro-entity status and will receive a 75% fee reduction.

Section 10(g) of the America Invents Act introduces a new definition and segment of applicants – micro entities – that are distinct from the small entities provided for under 35 U.S. C. § 41(h)(1).   The micro entity definition is added to 35 U.S.C. by introducing a new Section 123 to Title 35.  The AIA defines a micro entity as an applicant who certifies that he/she:

1)      Qualifies as a small entity;

2)      Has not been named as an inventor on more than 4 previously filed patent applications;

3)      Did not, in the calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding 3 times the median household income; and

4)      Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income.

When applying the micro-entity definition, applicants are not considered to be named on a previously-filed application if he/she has assigned, or is obligated to assign, ownership rights as a result of previous employment.  The definition includes applicants who are employed by an institute of higher education (as defined in 20 U.S.C. 1001(a)) and have assigned, or are obligated to assign, ownership to that institute of higher education.


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