COMPETITIVE EDGE, Patents

Explains what a patent is, whether or not a product/idea is patentable and, if so, how to apply for a patent.

Having a patent gives your company a competitive edge

Tell What Your Invention Is

            Describe each physical part of your invention, focusing on how the elements interact to solve the problem.

            Describe the functional or structural differences between your solution to the problem your invention solves, and prior solutions. The more your invention differs from the prior solutions, the more likely it is that your invention is patentable.

            Why do you believe your invention would not have been obvious to another inventor working on the same problem at the same time?

            Testing results are important. They are “hard” results. Numerical values, graphs, curves, plots, charts, and soft results, such as “worked better” are needed.

            Simple testing with vibrating platforms, simple scales, and low-cost testing provide invaluable evidence, useful in getting your patent. Your invention weighs less, lasts longer, and is more accurate by some measured test result.

            Your invention must have some advantages over the prior solutions to the problem your invention addresses or you would not prefer your solution.

            Include each advantage you can think of.

            If you can support any advantage with analytical results, documentation, or other evidence, then include the evidence:

  1. Example 1: “reduces cost by 10 percent per unit.”
  2. Example 2: “reduces power by 10 percent per unit.”
  3. Example 3: “improves reliability by 10 percent per unit, thus decreasing annual maintenance cost by 10 percent per unit.”
  4. Example 4: “improves response time (or other measure of performance) by 10 percent.”
  5. Example 5: “reduces number of component parts required by 10 percent.”

Submit drawings and pictures of your invention.

When you have patents from a patent search, write on one side of a piece of paper the parts that you think are similar and on the other side of the paper what is different between your invention and the other invention.

It is most important that the structural and functional differences, that you think are the most

important, must be pointed out and discussed in detail.

Is My Invention Patentable?

(Four Steps to Find Out)

  1. Check catalogs and the Internet to see if your product is already being sold. Visit retail stores to see if your product is on the shelf.

Build a working model. If you need help, hire a prototype maker. Have the prototype maker sign a non-disclosure, swearing he will not disclose the idea to anyone. Make the prototype out of cardboard, plywood and/or plastic sheet.

  1. Do your own patent search on the Internet through the United States Patent & Trademark Office. The internet address is http://www.uspto.gov.
  1. Have a professional patent search done and obtain am attorney’s opinion of patentability.
  2. File a  provisional patent application, which gives you a year to market and develop the invention.

To obtain a patent, your device must be new, useful and not obvious.

The new requirement means the idea must not have been used in the past.

The obvious requirement means that your device must not be obvious to a workman skilled in the

art; the workman is presumed to know all the patents in the art and to know of competing products.

      Following the inventor’s own patent search, a professional patent search should be done by a searcher in Washington, D.C., who also talks with the Patent Office.

What is a Patent?

      Two types of patents are utility patents and design patents. A utility patent is a right granted by the United States to inventors of new and “non obvious” processes, machines, manufactured items, and composition of matter to prevent others from making, using or selling the patented invention in the U.S.A. for 17 years from date of issue or 20 years from date of filing.

      A design patent can be obtained for new and “non obvious” ornamental product designs. A design patent protects the ornamental (non functional) aspects of the design.

      A design patent is not available if a product’s appearance is dictated solely by its function. A design patent is effective for 14 years. Design patent protection is obtained for the design of furniture, consumer electronics equipment, appliances, automobiles, and other products which are expected to have relatively long lives.

Non Obvious Requirement

      The “non obvious” requirement: that the invention must not have been “obvious” to an imaginary person, skilled in the field of technology of the invention, who is familiar with the “prior art.” Prior art is all the available patents, literature and products in the field. What is or is not “obvious” is the most frequently disputed issue in patent law.

      To have a good chance of establishing non obviousness, there must be some new or unexpected properties or result associated with the invention, such as reduction in cost, reduction in power requirements, improved reliability, improved response time or reduction in component parts.

      Another approach to non obviousness is to determine what problem the invention solves, then determine the scope of the prior art.

      Then consider the chances that a person skilled in the art would come up with the same solution, if confronted with the problem and was aware of all of the prior art. If the chances are very high, the invention is probably “obvious” and not patentable.

Applying For A Patent

      The inventor must file an application with the Patent and Trademark Office, a detailed description of the invention and one or more “claims.” The claims define the patent protection.

      Thomas Edison could have claimed his light bulb as follows: “I claim a light-emitting device comprising of a tungsten metal filament mounted within a glass tube, under vacuum, with a means to pass an electrical current through the filament.”

Patent Pending

      Once a utility or a design patent application has been filed, the product may be marked “patent pending.”

      The marking gives notice to competitors that a patent on the product may be issued. The “patent pending” notice deters others from manufacturing and selling a similar product because, if a patent issues, they will become infringers and will be forced to shut down.

Statutory Bar

      A U.S. patent application must be filed within one year of the first public use, sale, or publication of the invention. This one year “grace period” enables an inventor to determine if the product is going to be a success before going to the expense of filing an application.

      Most foreign countries do not recognize this grace period. Foreign countries require a U.S. application to be filed before any public disclosure and further require that the foreign patent application be filed within one year of the U.S. patent application. Be careful with these patent-barring provisions. By the time many inventors contact an attorney, they may have already unknowingly forfeited their U.S. or foreign patent rights.

      File a provisional patent application before offering your patent for sale. Talk to a patent lawyer before disclosing the invention to anyone.

First to File Rule

      A feature of U.S. patent law is that we have a “first to invent” rule rather than a “first to file” rule for determining who obtains the patent, if two or more applications for the same invention are pending at the same time. This situation comes up quite frequently (Alexander Graham Bell’s application on the telephone was filed within days of two other inventors’ applications).

      There is a patent rule that the inventor’s testimony, by itself, is not sufficient to prove a date of invention. Therefore, it is important to document your date of invention in writing and to have signed witnesses or to make use of the Patent Office’s Disclosure Document program. Do not rely on mailing a registered letter to yourself.

Patent Search

      Because of the cost involved in filing a utility patent application (at least $7,500.00) it is recommended having a  patentability search performed by a professional searcher. This search helps to determine if the invention is patentable.

      The patentability search is useful in determining whether the sale of the item would infringe an unexpired patent.

Many searches reveal that something identical or nearly identical have already been patented. If you

like, you can perform your own preliminary search on the internet on the United States Patent & Trademark Office website. The internet address is http://www.uspto.gov.

In the alternative, you can do your own preliminary search at the Milwaukee Public Library. The

searching process there is free and very educational.

Invention Promoters

Some clients seek protection for their intellectual property because they are in business and want to

be able to exclude their competitors. Other clients have no desire to make the products themselves. Their goal is to license their invention to a large company and to receive royalties.

      There are many invention development companies that advertise their services. Complaints about these companies led many states to enact specific laws to regulate invention promoters. BE VERY CAUTIOUS WITH THEM. Do not send them money until you talk to a patent lawyer. Call the Federal Trade Commission and obtain the brochure “Facts for Consumers-Invention Promotion Firms.”

      The general rule of law is an unsolicited disclosure of any unprotected idea creates no obligation on the part of the receiver to keep ideas in confidence or to pay the disclosure if the idea is used.

      This type of obligation generally arises only if an agreement to pay for the idea is made before the idea is disclosed.

Non-Disclosure Agreement

      A written non-disclosure agreement (commonly known as a secrecy or confidentiality agreement) is fairly standard. The use of an agreement is important if the idea is not patentable or is not protectable. Many companies refuse to enter into non-disclosure agreements with outside inventors. Unless your idea is patentable or otherwise protectable, you will find it very difficult to obtain compensation for use of your idea.

Do you really need a patent?

      Some clients place an unrealistic value on obtaining intellectual property protection. There is no requirement that an item be protected before it can be sold. The majority of products on the market are not protected.

Consider manufacturing and selling

      An option which should be considered is manufacturing and selling an item without worrying about obtaining the right to exclude others. If the investment necessary to begin manufacturing and selling is modest, you may choose to not worry about infringing someone else’s rights-even though you can be held liable for infringement without any knowledge or intent. There is always some danger of infringement but most infringements are not a crime (you won’t go to jail) and in most cases your potential liability is dependent upon your success, so you do not run the risk of losing your home, automobile, and life savings.

Assess Commercial Potential

      You should assess the commercial potential of your creation. It makes no sense to go to the expense of protecting something which has a very limited market. You should have an evaluation made of your invention by the Wisconsin Innovation Service Center at the University of Wisconsin, Whitewater.

You Must Enforce Your Patent

      There is no intellectual property enforcement agency; it is up to the owner to enforce his or her patent, trademark and copyright rights in Court. Suing an infringer is expensive. Damages and attorney fees may be recovered from the infringer if you are successful.

About the Author

Joe Recka received his Doctor of Law degree in 1968 from the University of Illinois. Along with that he has obtained his Bachelors and Masters Degrees. He has been with Recka Associates law firm since 1973. Outside of practicing law Joe is a distinguished marksman. Joe was the 524th civilian to earn the Distinguished Rifleman Badge since it was originated in 1884. Joe practices in the areas of Personal Injury, Bankruptcy, Family and Divorce, Patents and Trademarks along with Wills and Business law. Email him at  Recka@reckaassociates.com This e-mail address is being protected from spambots. You need JavaScript enabled to view it .