Intelliware International – Information about Business Law, Biotechnology Law and Intellectual Property Law

A patent for an invention is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is 20 years from the date on which the application for the patent was filed in the United States or, in special cases, from the date an earlier related application was filed, subject to the payment of maintenance fees. US patent grants are effective only within the US, US territories, and US possessions.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or compositions of matters, or any new useful improvement thereof.

Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

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What is a Provisional Patent Application?

Effective June 8, 1995, it became possible to file a provisional patent application in the U.S. Patent Office. The Provisional Patent Application is intended to be a relatively low-cost way of postponing the cost and effort of drafting and filing a full patent application. The provisional application need not contain claims, and the filing fee is modest ($160 for large entities, $80 for small entities). The applicant may then wait almost a year before filing a patent application. The twenty-year patent term that runs from the first U.S. 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 patent application. The provisional application may serve as a priority document for non-US convention filings

Under U.S. patent law, the provisional application is subject to the same burdens under 35 U.S.C. § 112 as a patent application. This means that 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. These requirements are likely to lead to difficulties for those who file sketchy provisional applications.

A drawing must be provided if needed to explain the invention, see 37 CFR § 1.81-1.85. The Provisional Application must also identify the inventors who contributed to the subject matter disclosed in the application. The filing fee ($160 or $80) is required. A cover sheet is also required. The applicant is not required to use an official Patent Office cover sheet, but may employ any cover sheet containing the required information, namely the specific identification of the application as a Provisional Application; the name or names of the inventor or inventors, the residence of each inventor, the title of the invention, the name and registration number of the attorney or agent if any, the docket number (if any) used by the applicant, the correspondence address, and the name of the U.S. Government agency and government contract number (if the invention was made by an agency of the U.S. government or under a contract with an agency of the U.S. Government. Suitable Provisional Application cover sheets are available free of charge from the U.S. Patent Office, Washington, DC 20231.

U.S. patent law permits an applicant to file a Provisional Application pro se, that is, without representation by a patent attorney or agent. It is easy to identify some possible pitfalls of failing to consult a competent patent attorney or agent, however. For example, a review by counsel of the Provisional Application might show that it is defective or incomplete, and another application may be filed promptly, so that one has a filing date that is not too much worse (later) than the filing date of the defective or incomplete Provisional Application. In addition, a review by counsel at a later time in order to draft claims for filing in the patent application within the one year period might show that the claims are not supported by the specification of the Provisional Application. To avoid such an unhappy result one might choose to draft the patent claims at the time the Provisional Application is being written, so that one may be sure to include in it whatever is needed to support the claims.

One who files a provisional application (and who fails to satisfy the requirements of § 112) would be making a mistake to sit back and rely on that application as a justification for waiting eleven months before taking the time and trouble to prepare and file a full patent application.

Another potential drawback of the provisional filing is that it postpones, by a year, any hint or clue from a patent examiner as to whether or not the invention is likely to be patentable. No search report or office action will come during the pendency of the provisional application; they will only be received after the filing of the patent application. For the applicant who is considering whether or not to file patent applications in countries outside of the U.S., the use of a provisional application virtually guarantees that no clues to patentability will be received from the U.S. Patent Office that might assist in deciding whether or not to spend the money on foreign filing. The applicant who files a patent application (rather than a provisional application) may, in contrast, receive an Office Action before the year is up for making foreign-filing decisions, and the content of the Office Action may be helpful in deciding what to do about foreign filing.

If the applicant decides later that his/her business needs require title to a normal patent, he/she must then hire a patent attorney to search prior claims, draft the application, obtain drawings, and file the application. Fees paid to the U. S. Patent and Trademark Office for filing a normal patent application.are in addition to any fees paid for filing of the provisional patent.

In 2002, the patent office filing fee is $80.00 for small entities. Some firms are willing to assist inventors in filing provisional applications, in which case the total cost of the provisional filing includes the attorney's fees. The U. S. Patent and Trademark Office has a booklet available entitled The Provisional Application for Patent: What It Is and How To Use It..

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What Is a Business Method Patent?

Business data processing has followed an unbroken evolutionary path from mechanical technology up to today's software controlled microprocessors. Automated business data processing itself dates back over a hundred years. The business method claim format has been used in various forms throughout that period. The increase in its use today is an inevitable end result of our progress over the last century

In 1998, the State Street decision triggered an awareness of the "business method claim" as a viable form of patent protection. We are at the beginning of a change in the approach to how inventors choose to describe their inventions. This change is in turn driving a shift in the required examiner knowledge base for the examination of Class 705 inventions. As it has for over a century, the USPTO is responding appropriately and is adapting its knowledge base as the needs of the business technologies evolve

The title of Class 705 is "Data processing: financial, business practice, management, or cost/price determinaton" The definition of Class 705 is "machines and methods for performing data processing or caluculation operations in the: 1) practice, administration, or management of an enterprise; 2) processing of financial data; or 3) determination of the charge for goods or services."

Thus, only computer-implemented processes related to e-commerce, the Internet and data processing involving finance, business practices, management or cost/price determinaton are classified in Class 705. All other applications that may be labeled a "business method-type application" will be classified, assigned and examined according to their technology.

The claimed invention as a whole must accomplish a practical application. It must produce a "useful, concrete and tangible result." See State Street Bank & Trust v. Signature Financial Group Inc., 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998). The purpose of this requirement is to limit patent protection to inventions that possess a certain level of "real world" value, as opposed to subject matter that represents nothing more than an idea or concept, or is simply a staring point for future investigation or research. See MPEP 2106. The mere presence of a mathematical algorithm in a claim is not grounds for a rejection under 35 U.S.C. 101. Instead, an examiner must review the claims to determine if the claimed invention produces a "useful, concrete and tangible result." If the answer is yes, then the claimed invention has a practical application and satisfies the utility requirement of 35 U.S.C. 101. Thus, it is vitally important that the specification is complete and clearly identifies any practical application for the claimed invention.

In the period prior to 1990, the Business Methods patents were heavily focused on computerized postage metering and cash register systems. By the end of 1994 heavier emphasis was placed on financial transaction systems which moved postage metering to the second place category. By the end of 1999, electronic shopping and financial transaction systems were the two dominant categories moving postage metering systems down to third. A review of the newly filed applications shows that postage metering will be moved to the fourth spot by the emerging technology of advertising management systems.

Class 705 has seen strong filing growth in FY 1998 and FY 1999. However, it represented only about 1% of the total patent applications filed at the USPTO in FY 1999. The 2658 applications filed in Class 705 did not even place it among the top five Communication and Information Processing technologies.

The digital and multiplex communication technologies of Classes 370 and 375 which form the backbone of all modern communication systems saw 7131 patent applications in FY 1999. Class 345 - Display data processing (e.g., graphical user interfaces, web browsers) saw 3898 applications; Class 455 - Telecommunications (e.g., radio, cellular telephones) saw 3480 applications; Class 709 – Networked computer data processing saw 3190 applications; Class 707 – Databases and Word Processors saw 3068 applications; and Classes 360 and 369 - Dynamic Information Storage (e.g., disk drives) saw 2905 applications. Collectively, the communications and information technologies saw 57,000 applications in FY 1999. Class 705 received less than 5% of that total.

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What do the terms "patent pending" and "patent applied for" mean?

They are used by a manufacturer or seller of an article to inform the public that an application for patent on that article is on file in the Patent and Trademark Office. The law imposes a fine on those who use these terms falsely to deceive the public.

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Is there any danger that the Patent and Trademark Office will give others information contained in my application while it is pending?

No. All patent applications are maintained in the strictest secrecy until the patent is issued. After the patent is issued, however, the Office file containing the application and all correspondence leading up to issuance of the patent is made available in the Files Information Room for inspection by anyone, and copies of these files may be purchased from the Office.

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May I write to the Patent and Trademark Office directly about my application after it is filed?

The Office will answer an applicant's inquiries as to the status of the application, and inform you whether your application has been rejected, allowed, or is awaiting action. However, if you have a patent attorney or agent the Office will not correspond with both you and the attorney concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent.

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Is it necessary to go to the Patent and Trademark Office to transact business concerning patent matters?

No; most business with the Office is conducted by correspondence. Interviews regarding pending applications can be arranged with examiners if necessary, however, and are often helpful.

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If two or more persons work together to make an invention, to whom will the patent be granted?

If each had a share in the ideas forming the invention, they are joint inventors and a patent will be issued to them jointly on the basis of a proper patent application. If on the other hand one of these persons has provided all of the ideas of the invention, and the other has only followed instructions in making it, the person who contributed the ideas is the sole inventor and the patent application and patent shall be in his name alone.

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No. The application must be signed by the true inventor, and filed in the Patent and Trademark Office, in the inventor's name. This is the person who furnishes the ideas, not the employer or the person who furnishes the money.

Does the Patent and Trademark Office control the fees charged by patent attorneys and agents for their services?

No. This is a matter between you and your patent attorney or agent in which the Office takes no part. To avoid misunderstanding you may wish to ask for estimate charges for: (a) the search (b) preparation of the patent application, (c) Patent and Trademark prosecution.

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Will the Patent and Trademark Office help me to select a patent attorney or agent to make my patent search or to prepare and prosecute my patent application?

No. The Office cannot make this choice for you. However, your own friends or general attorney may help you in making a selection from among those listed as registered practitioners on the Office roster. Also, some bar associations operate lawyer referral services that maintain lists of patent lawyers available to accept new clients.

Will the Patent and Trademark Office advise me as to whether a certain patent promotion organization is reliable and trustworthy?

No. The Office has no control over such organizations and does not supply information about them. It is advisable, however, to check on the reputation of invention promotion firms before making any commitments. It is suggested that you obtain this information by inquiring of the Better Business Bureau of the city in which the organization is located, or of the bureau of commerce and industry or bureau of consumer affairs of the state in which the organization has its place of business. You may also undertake to make sure that you are dealing with reliable people by asking your own patent attorney or agent or by inquiry of others who may know them.

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Are there any organizations in my area which can tell me how and where I may be able to obtain assistance in developing and marketing my invention?

Yes. In your own or neighboring communities you may inquire of such organizations as chambers of commerce, and banks. Many communities have locally financed industrial development organizations which can help you locate manufacturers and individuals who might be interested in promoting your idea.

Are there any state government agencies that can help me in developing marketing of my invention?

Yes. In nearly all states there are state planning and development agencies or departments of commerce and industry which seek new product and new process ideas to assist manufacturers and communities in the state. If you do not know the names or addresses of you state organizations you can obtain this information by writing to the governor of your state.

Can the Patent and Trademark Office assist me in the developing and marketing of my patent?

The Office cannot act or advise concerning the business transactions or arrangements that are involved in the development and marketing of an invention. However, the Office will publish, at the request of a patent owner, a notice in the Official Gazette that the patent is available for licensing or sale. The fee for this is $20.

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What Is a Trademark or Servicemark?

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office. The registration procedure for trademarks and general information concerning trademarks is described in a separate pamphlet entitled "Basic Facts about Trademarks".

The Trademark Application Process Filing Date - Filing Receipt

The PTO (Patent and Trademark Office) is responsible for the federal registration of trademarks. When an application is received, the PTO reviews it to determine if it meets the minimum requirements for receiving a filing date. If the application meets the filing requirements, the PTO assigns it a serial number and sends the applicant a receipt about two months after filing. If the minimum requirements are not met, the entire mailing, including the filing fee, is returned to the applicant.

Examination

About six months after filing, an examining attorney at the PTO reviews the application and determines whether the mark may be registered. If the examining attorney determines that the mark cannot be registered, the examining attorney will issue a letter listing any grounds for refusal and any corrections required in the application. The examining attorney may also contact the applicant by telephone if only minor corrections are required. The applicant must respond to any objections within six months of the mailing date of the letter, or the application will be abandoned. If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. The applicant may then appeal to the Trademark Trial and Appeal Board, an administrative tribunal within the PTO.

A common ground for refusal is likelihood of confusion between the applicant's mark and a registered mark. Marks which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.

Publication for Opposition

If there are no objections, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the PTO. The PTO will send a NOTICE OF PUBLICATION to the applicant indicating the date of publication. In the case of two or more applications for similar marks, the PTO will publish the application with the earliest effective filing date first. Any party who believes it may be damaged by the registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed, the application enters the next stage of the registration process.

Issuance of Certificate of Registration or Notice of Allowance

If the application was based upon the actual use of the mark in commerce prior to approval for publication, the PTO will register the mark and issue a registration certificate about 12 weeks after the date the mark was published, if no opposition was filed.

If, instead, the mark was published based upon the applicant's statement of having a bona fide intention to use the mark in commerce, the PTO will issue a NOTICE OF ALLOWANCE about 12 weeks after the date the mark was published, again provided no opposition was filed. The applicant then has six months from the date of the NOTICE OF ALLOWANCE to either (1) use the mark in commerce and submit a STATEMENT OF USE, or (2) request a six-month EXTENSION OF TIME TO FILE A STATEMENT OF USE. The applicant may request additional extensions of time only as noted in the instructions on the back of the extension form. If the STATEMENT OF USE is filed and approved, the PTO will then issue the registration certificate.

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What Is a Copyright?

Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.

The copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Copyrights are registered by the Copyright Office of the Library of Congress.

Mail Delivery Disruption at the U.S. Copyright Office-

U.S. Postal Service (USPS) mail delivery to the Copyright Office was halted October 17, 2001, due to concerns about anthrax. The first USPS mail since then was delivered on March 4. This was only a small amount. Private carrier express shipments generally are arriving without delay. Below are questions and answers related to the mail stoppage

Why is the mail being delayed?

Concerns about anthrax in U.S. Postal Service facilities in the District of Columbia have caused severe disruptions of postal service to the Copyright Office, and safety measures are being implemented including the possibility of irradiating incoming letters and packages.

When did disruption to mail delivery begin?

The disruption began October 17, 2001.

When will mail delivery resume?

On March 4 the Copyright Office received its first delivery of U.S. Postal Service mail since October 17. This mail, which was irradiated prior to its delivery to the Office, has a mixture of postmarks dated October through December 2001. The Office will be receiving more mail daily, although the amount coming in is only a small percentage of what has been held. The Office has been told to expect mail to arrive in no particular order. Please check back on this website for any changes in the status of the mail delivery.

What effect has the irradiation had on the mail?

Among this small amount of mail received so far, some pieces are in good shape, and some have problems. The latter includes brittle, discolored applications, damaged deposits, and materials fused together.

Will the Office contact me if my mail has some of these problem?

Yes, but it may be several months before you hear from the Office. It may be many months before the Office actually receives all the mail that has been posted since mid-October. The Office normally receives over 600,000 pieces of mail a year. Yet for 4-1/2 months the Office received no U.S. Postal Service mail at all. It will take a lot of time to process the mail once it is received because of the problems noted above.

What will happen to my effective date of registration?

Normally, the effective date of registration is the day the Copyright Office actually receives all three elements:

• a properly completed application form,
• the appropriate filing fee, and
• a deposit of the work being registered.

However, due to the lengthy delays in mail delivery, special measures are being taken for this delayed mail only. The Copyright Office will determine the receipt date based on the postmark date of the envelope or packaging, as follows:

• Condition of postmark Receipt Date
• First-class mail, discernable postmark seven days after the postmark
• Priority mail, discernable postmark three days after the postmark
• Express mail, discernable postmark one day after the postmark
• All classes, exact date unreadable, but month discernable last date of that month, for example, October 31 for October

All classes, postmark date not discernable or not present actual date of receipt in the Copyright Office

On December 4, the Register of Copyrights issued interim regulations dealing with the impact of the disruption in the mail delivery. Please read more about the interim regulations if you have concerns regarding the impact on the effective date of registration that resulted from the disruption to mail delivery.

Currently, if you use a commercial carrier (such as Federal Express, Airborne Express, DHL Worldwide Express, or United Parcel Service) the items will be delivered to the Copyright Office in the normal time frame. Due to the delay in the delivery of the mail, use of the U.S. Postal Service is not advisable if you have an urgent need to deliver something to the Copyright Office. We will post updates here when there are changes in the delivery of the U.S. Postal Service mail. Please check back periodically.

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What is a Trade Secret?

A trade secret is information of any sort that is valuable to its owner, not generally known, and that has been kept secret by the owner. trade secret owner has the right to keep others from misappropriating and using the trade secret. Sometimes the misappropriation is a result of industrial espionage. Many trade secret cases involve people who have taken their former employers' trade secrets for use in new businesses or for new employers. Trade secret owners have recourse only against misappropriation. Discovery of protected information through independent research or reverse engineering (taking a product apart to see how it works) is not misappropriation.

Trade secrets are protected only under state law. The Uniform Trade Secrets Act, in effect in a number of states, defines trade secrets as "information, including a formula, pattern, compilation, program, device, method, technique, or process that derives independent economic value from not being generally known and not being readily ascertainable and is subject to reasonable efforts to maintain secrecy."

The following items are things that generally can be kept protected by the trade secret process: customer lists; instructional methods; manufacturing processes; and methods of developing software. Inventions and processes that are not patentable can be protected under trade secret law. Patent applicants generally rely on trade secret law to protect their inventions while the patent applications are pending. Although a trade secret need not be unique in the patent law sense, information that is generally known is not protected under trade secrets law.

Trade secret protection attaches automatically when information of value to the owner is kept secret by the owner. Trade secret protection endures so long as the requirements for protection - generally, value to the owner and secrecy - continue to be met. The protection is lost if the owner fails to take reasonable steps to keep the information secret.

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