patents: 2010

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Tuesday, November 16, 2010

Patent Restoration Procedure in India

By Bhargavi Thakkilapati
Patent is a Techno-Legal document, exclusive rights granted by Government/Nation for a limited period of time to the patentee. The exclusive rights are right to prevent others from making, using, selling, or distributing the patented invention without patent holder permission during the term/active of Patent.

Generally most of the countries are giving right to patentee for making, using, selling, or distributing the patented invention for 20 years duration from the date of file. But, full rights acquire from the date of grant. Patent holder can enjoy his full rights from date of grant to till term completion (i.e 20 years from the date of first filing date.).

Patent holder has to pay renewal/maintenance fee till the date of possession given by the government, otherwise patent will be inactive. If renewal/maintenance fee not paid by the patent holder within prescribed time given by the PTO, patent will be lapsed.

Patents lapsed, due to non-payment of renewal/maintenance fee can be restored within eighteen months from the date of lapse, through following procedure.

The primary requirements to restore a patent:

1. Application for restoration of lapsed patent should be made by patentee or his legal representative according to sec 60 of Indian Patent Act 1970.

2. Form - 15 with prescribed fee
a. Six thousand as application fee (for legal entity; refer PTO site for updated fee structure)

3. Evidence to support the failure of renewal/maintenance fee was unintentional.

There is no additional fee to restore a patent of addition, but patent holder/patentee has to submit each individual form for each addition of patent along with parent patent restoration application.

After submitting all the documents controller will examine the information provided by the patent holder for the restoration of patent. If controller satisfies the failure to pay renewal fee was unintentional and there had been no undue delay in making the application, the application will be published in the official gazette, otherwise controller will be rejected the application.

Any person interested can give notice of opposition to the controller by submitting prescribed application, Form 14 within two months from the date of publication with prescribed fee Six thousand (for legal entity; refer PTO site for updated fee structure).

The grounds for opposition (under Section 61(1)) are:

I. That the failure to pay the renewal fee was not unintentional; or / and
II. That there has been undue delay in the making of the application.

If there is no notice of opposition filed, the controller restores the patent upon payment of unpaid renewal fee and additional fee as prescribed.

If notice of opposition filed by any person interested, the Controller sends a copy of the notice and statement of opponent to the applicant. The controller gives an opportunity to both the persons to be heard before he decides the case. Further they are not satisfied with the results, patentee or opponent can file appeal in Appellate Board for any decision of the Controller made (under Section 60) within three months from the date of the decision.

If the decision favors the applicant, he should pay unpaid renewal fee and additional fee as prescribed within one month from the date of order for restoration of patent. The Controller will advertise this information in the official journal.

A patentee cannot sue or prosecute the persons who have begun to use the applicant's invention between the date of patent lapsed and the date of publication of the application for restoration.

Once patent lapsed, due to non-payment of renewal/maintenance fee can be restored within eighteen months from the date of lapse, otherwise patent will be ceased. Once the patent is ceased by the PTO it can't be restored under any circumstances.

How to Save European Patent Costs

By Robert Games
When filing a European patent application typically either claiming priority from a domestic patent application, such as a UK or USA patent application, or when converting from an International PCT patent application, there are a number or ways which can be used to reduce costs.

The European Patent Office (EPO) charges significant extra fees for each claim of your application in excess of 15. Therefore, in effect, the first 15 claims in a European patent application are free of charge, but the following claims from 16 onwards do incur heavy fees. Therefore, it is in the applicant's interest to consider slimming their claims down when filing their European patent application.

In particular, the official fee at present for each claim from 16-50 is €210, and for each claim from 51 onwards incurs an official fee of €525. In coming years, these fees are unlikely to reduce and if anything will probably only get higher.

It should be remembered that, for an application, typically only one independent apparatus claim, one independent method claim, and one independent product claim will be allowable. Often, US applications in particular, will include multiple independent apparatus claims. Therefore, when filing or submitting an EU patent application, it is generally prudent to consider reducing the number of independent claims in the respective categories. Again, this should help to reduce the official filing fees.

The European Patent Office also charges for each page of the specification in excess of the first 35 pages. The specification in this case includes the description, claims, abstract and drawings. Although it is often difficult to reduce the number of pages, if the margins can be reduced, the line spacing between lines of written text reduced to 1.5, and typically the font size reduced to Times New Roman 11 point, this is generally acceptable and may result in the number of pages being reduced somewhat.

Although the saving is not a great as with the reduction in the number claims, each page in excess of the first 35 pages of the specification is charged at €13. Again, although this fee remains static for the time being, it is unlikely that it will ever reduce and it is more probable that it will only ever increase. Therefore, when drafting or preparing the original patent filing, this can be taken into account.

To somewhat reduce ongoing costs during prosecution of an application, some formalities can be taken care of when filing the patent application. In particular, the EPO will require that each feature or element mentioned in the claims and shown in the drawings includes its respective reference numeral enclosed by brackets. By taking account of this and modifying or submitting amended claims when filing, this particular formalities objection can be avoided.

Although of not particular benefit in terms of saving costs, it should also be noted that the abstract of a European patent application should include reference numbers identifying the features of the drawings. And these reference numbers should also be in brackets.

Furthermore, European patent practice provides for the use of multiple dependent claims, therefore if filing from an originating US patent application, for example, there is no reason not to modify the claims so that the dependent claims utilize multiple dependencies if appropriate.

Albright Patents is a full service European patent and trademark attorney company offering representation before the UK Patent Office (UKIPO), the European Patent Office (EPO) and internationally before WIPO (World Intellectual Property Organisation). We can also file patent applications in almost any country throughout the world.

Drive for a Common European Patent System Renewed

By Robert Games
As part of a drive to stimulate economic growth and employment, the Competitiveness Council of the European Union has recently been discussing translation arrangements for a future EU patent system.

On 2 July 2010, the European Commission submitted a draft Regulation to the Competitiveness Council for consideration. The draft Regulation aims at building upon the existing language regime of the European Patent Office. Currently at grant, the claims of a European patent must be translated into the two other official EPO languages (English, German or French). The patent must then be 'validated' individually in the European countries where patent protection is sought, which often requires additional translations.

The European Commission proposes a new EU patent system, in addition to the current European patent system which consists of a bundle of national patents.

Applications under both systems would be treated identically under the European Patent Convention until grant. At grant, applicants would have the option of nominating between an EU patent providing uniform protection throughout all 27 member states of the EU and a European patent covering a relatively limited number of member states, depending on where validation took place.

In the case of an EU patent, only translations of the patent claims into the other two EPO official languages would be required in order for the patent to have effect and be enforceable throughout the entire EU region. No further translations would be required and no validations in the member states would have to take place. The patent as granted in one of the official EPO languages would be the authentic text, providing legal certainty as to the scope of the claims.

To support the new EU patent system, high quality machine translation into all EU languages should ultimately be available to allow users of the patent system throughout Europe to enable users to have better and earlier access to technical information in their own native language. However, to start with, machine translations would be provided to translate the granted patent into the other two EPO official languages. A transitional regime may have to be implemented.

Furthermore, for applicants from member states whose language is not one of the EPO official languages, patent applications could still be filed in that language. Compensation would be available for costs incurred translating the application into one of the EPO official languages. This compensation would be available early on and not at the end of the patenting process.

The proposed Regulation was not met with unanimous support and has been debated within the Competitiveness Council at several meetings since July.

The EU has been wrangling with an EU-wide patent system since August 2000. However, almost all delegations expressed the need to find a solution for the translation arrangements in the short term, preferably during the Belgian presidency. Agreeing on the translation requirements is the next step in creating an EU-wide patent, which is now being treated by the Council as a matter of urgency.

Albright Patents is a full service UK based patent and trademark attorney company offering representation before the UK Patent Office (UKIPO), the European Patent Office (EPO) and internationally before WIPO (World Intellectual Property Organisation). We can also file patent applications in almost any country throughout the world.

Narrower Patents for Biotech Inventions?

By Robert Games
The European Court of Justice (ECJ) has made a controversial decision to hand down judgement on a case which had requested a preliminary ruling on the biotechnology Directive's legal protection regarding genetic material.

The case, which has been of great political and commercial interest on an international scale, centres round the company Monsanto, holders of a patent which claims a DNA sequence coding for an enzyme that protects plants from glyphosate-containing herbicides (CP4-EPSPS).

With this enzyme, Monsanto have developed a soy plant, "Roundup Ready", which is resistant to Monsanto's own non-selective herbicide, Roundup, and is widely cultivated in Argentina.

A large cargo of the plant, which had been processed into soy meal, was seized on arrival at Amsterdam in 2005 and 2006 and on testing, revealed both the presence of the enzyme CP4-EPSPS, and the DNA sequence encoding it.

The issue at hand was that the patent protection only applied to the DNA sequence coding in a form in which it could be expressed into a plant, and not when it was present in harvested goods or as isolated DNA. On a general scale, Article 9 of the Directive 98/44 does not confer patent protection when the patented product no longer performs its function but has the potential to do so again if extracted and introduced into a living organism.

Despite the fact that Monsanto's patent was applied for and granted before the Directives adoption, absolute protection would only apply under the national legislation at the time of grant.

The ECJ concluded that patent protection only extends to a situation where DNA performs the function for which it is patented, within the product within which it is incorporated.

Despite the Directive's aim, which was to clarify existing patent laws and provide more protection, the Directive may have simply narrowed the protection afforded to biotechnological inventions.

Albright Patents is a full service UK based patent and trademark attorney company offering representation before the UK Patent Office (UKIPO), the European Patent Office (EPO) and internationally before WIPO (World Intellectual Property Organisation). We can also file patent applications in almost any country throughout the world.

Surrender of Patents

By Bhargavi Thakkilapati
Patent issued by PTO based on Invention must be Novel, Non-obviousness and Industrial applicability; most of the countries are giving right to patentee for making, using, selling, or distributing the patented invention for 20 years duration from the date of file. But, full rights acquire from the date of grant.

Patent holder can enjoy his full rights from date of grant to till term completion (i.e 20 years from the date of first filing date.). Patent holder have right to enjoy his rights, at the same time patentee can surrender his patent to PTO before term completion under certain conditions; this is called Surrender or Nullity of patent.

A patent may be surrendered by patentee at any time through an application in prescribed format, be a total surrender or limited to one or more claims of the patent. In that situation the Controller will publish the offer in the Official journal.

Few grounds to surrender of patents:

1. Surrender of an entire patent is made by a failure to pay the annuities prescribed by law which results in the laps of patent.

2. In connection with the business transactions:
• To avoid a declaratory judgment of nullity of the patent
• To eliminate a defense to an action for infringement, wishes to forfeit the patent or any claim there under, with immediate effect.

3. Reissue of defective patents

The patentee/patent holder can offer to surrender his patent at any time through an application in prescribed format under section 63 of Indian Patent Act 1970, along with fees (Four thousand for legal entity; Refer PTO site for updated fees).

Any interested person (including licensee) can give notice of opposition to the surrender of Patent within 3 months from the date of publication of the notice in the Official journal. The notice of opposition should be in form 14 with prescribed fee (Six thousand for legal entity; Refer PTO site for updated fees).

Surrender may be prejudicial to licensee who have made preparation for or engaged in, in such cases the licensee should have a chance to safeguard his interests by being notified of the intended surrender & given an opportunity to oppose the surrender.

An opponent can send written statement describing the opponent's interest and the facts upon which he is opposing. The opponent can also submit evidences within 3 months from the date of publication of the notice in the Official journal.

The Controller will inform the Patentee on receipt of opposition notice. If the patentee doesn't respond within two months after he receiving opposition notice, the patent will be deemed to revoke. If the patentee withdraws the patent after opposition filed, the controller can decide whether cost should be awarded to the opponent.

The patentee has to respond within two months from the date of opposition receipt received by him. The patentee has to submit a statement that explains the grounds upon which the opposition is contested. The opponent has to reply within one month after receiving the statement of patentee. The opponent can also submit further evidences to support his case.

After evidence presentation or recommendation of Opposition board, the controller will fix time and date for hearing the opposition. If neither patentee nor opponent desires to hear the opposition the controller will decide the opposition and will publish his decision. If Patentee or opponent desires to hear, they should give notice to the controller within ten days along with the fee.

Either Patentee or opponent intends to rely on any publication at the hearing, not already submitted, can give to the other party and to the controller not less than five days notice of his intention, along with the details of the publication.

If the Controller accepts the Patentee's offer to surrender the patent, he directs the patentee to surrender the patent and revoke the patent. The revocation will be published in the Official journal.

Why You Want To Get A Provisional Patent To Protect Your Idea

By Dave Korpi
If you have been reading the news about Google's Street View you have probably become aware of the power of the provisional patent.

In this instance we learn that two doctoral students at California Institute of Technology, Di Bernardo and Goncalves co-conceived the idea in 2000 to build a system to let Internet users look at street-level views of neighborhoods. It turns out that the model now used by Google Street View is strikingly similar to the provisional patent filed by Di Bernardo and Goncalves. What this teaches us is the extraordinary value of a provisional patent.

In this example we have two students ending up spending the $110 to file a provisional that could mean that they may never have to work attain, ever, when they settle with Google.

Some ideas to consider when you want to protect your new awesome idea. If you have lots of money then by all means spend a big fat wad and hire the very best patent attorney and get a non provisional patent filed, like right now.

If you do not have unlimited funds then file a provisional, like next week, and then find someone you want to work with to bring it to reality. If things look good, and before 1 year, file a non-provisional patent and have the long term protection and rights to sell.

When writing a provisional be sure to include everything you can ever imagine and then more, then sleep on it, then ask buddies for ideas, and THEN I add all that new supporting and enabling matter in the description and add as many drawings as necessary to support what you going after.

Using this method, in my view, puts your new invention in a proactive defensive mode when it comes to filing your non provisional. I say this because if you are trying to get a patent on an item and "forget" to mention something it is not too uncommon for the item you "forgot" to be "new matter" and this means you will NOT get what you want. If you have a provisional that mentioned what it is you "forgot" you will be able to include that item.

The reason the USPTO provides for the provisional option is to allow you to get an early filing date. They understand the patenting process is expensive so they give you 1 year to get your paperwork in order so that when you are ready you can get a non provisional.

In closing I strongly suggest you take a look at what a provisional patent can do for you!

Does My Invention Qualify For A Patent?

By Greg Pierce
If you have invented a certain thing that is distinct from the others and you firmly stand that it will create a huge impact in the industry, provisional patent should be a huge interest for you. Without having the stamp of patent on your particular invention, there will be a huge probability that your idea will be stolen from you. With provisional patent, you will solely reap the fruit of your labor.

Do you think your invention qualify for a patent? To figure it out, you are opted to create a bunch of researches and paper works to prove the uniqueness and advantages of your own invention. Always make a reality check to make sure that it won't be disqualified for a particular line.

In America for instance, U.S. Patent and Trademark Office (USPTO) filter those with unique inventions to protect various inventors for possible counterfeit of ideas. They have the power to reject applications after further investigations and tests. When they are already fully convinced that your craft is distinct from the others, they will give credit on your invention by issuing a provisional patent for your own security.

There are also certain products that cannot be patented such as unsafe pharmaceutical products, dangerous nuclear weapons, those that are not operable and non-operable for aesthetic development, those creations that are deemed illegal in nature and "whimsical" as what the patent office labeled them which means "serving no serious purpose". More so, the legal office also dismantles ideas violating rights and principles of other people. Certainly, if USPTO discover these things, they won't think twice to disapprove your application.

The most important criteria that USPTO consider to approve applications for provisional patent are the uses and benefits that a particular invention can generate. Even though the invention is distinct and unique, but if a particular craft will have no benefits and advantages to various customers, application for patent will surely be rejected. It is the responsibility of the inventor to jot down all the uses and benefits of his invention signed by different professionals and experts that would attest to the usefulness of the creation.

At this point, inventors must be very careful not to disclose particular ideas. It would matter a lot if you publicly announce any information pertaining to your invention before the application of provisional patent. Aside from that, character and credibility of the people around whom you sought for assistance and opinions during the entire process must be given emphasis as they will be part of your secured assets to prevent unauthorized disclosure of your craft.

For the purpose of documentation, jot down anything you did. You should also know your associates or advisers well so you will not be abused in the long run. Focus well on your invention and consider the subject of applying for early rights over your unfinished products to avoid problems in the future.

Do Patents Or Trade Secrets Offer Better Protection? The Answer May Surprise You!

By Rick Michaud
Question: My company develops special formulations for customers that are typically using virgin plastic resins. We replace that material with ours which contains various biomass, i.e., corncobs, sunflower hulls.

My question is how do we protect our formulations from competitors in the industry? We do not want to use patents as they tell everyone what our work entails.

Our Answer:

There are essentially two ways by which you can protect your formulations.

1. Via patents

While I understand your reluctance to use patents as once they publish the information is available to the general public, please bear in mind that a patent has a 20 year lifespan.

There is also no such thing as innocent patent infringement. It does not matter whether or not the infringing party knew of your patent.

2. Through the use of trade secrets.

Independent invention is a complete defense to infringement accusation. In other words, if someone comes up with your product on their own, or through reverse engineering, they have not violated your trade secrets. However, if you have a patent, they would still be an infringer.

The two are also mutually exclusive: you either obtain a patent or keep a trade secret.

Assuming that you wish to maintain your formulations as trade secrets, then you must treat them as such. One of the leading reasons why they fail is that the entity did not protect it as such.

Several Factors Go Into Protecting Something as a Trade Secret.

In order to qualify, the information must be identified as such.

* The information should not be generally available within a company and known only to those who need to know.
* The information should be kept under lock and key or password protected on one's computer.
* Those that know of this information should be informed that the company considers it such.
* It is a good idea for a company to have a trade secret policy that all employees read and sign.

The Undistorted, Yet Evolving LPO Industry

By Sai Bpo
Document reviewing, legal research and writing, outsourcing patent services, drafting pleadings, etc. are some of the major legal projects outsourced to the LPO firms. The Legal outsourcing services provided by law firms and legal support service companies are in growing demand to cut the overhead expenses of the client law firm. These outsourcing companies keep themselves abreast of all the legal trends evolving in the industry. The legal services provided are generally known for their reliability, affordability, and competition, which is why outsourcing the legal issues or projects is an ideal choice made by the global companies.

The lawyers, paralegals, and engineers are hired based on their rich domain expertise and industry practices, as the efficiency in the solution is one area that cannot be afforded to be compromised by the major outsourcing companies. Latest and sophisticated digitized equipments, tools, high tech software packages, industry-best techniques, that are compatible to the clients' requirements are being employed by the LPO service providing companies to deliver optimized legal powered to deliver any amount of data in any required formats.

Confidentiality of all client records is one of the major setbacks faced by the LPO companies worldwide. Breaching into confidential documents or records, competition, piracy, heist, robbery, and hacking, have posed as threat to the growth of the LPO industry, with the lack of ethical standards being another speck in the industry.

The general legal projects or issues handled by the major LPO firms in India are:
Trials Transcription
Legal Letter Transcription
Legal coding
Court Reporting
Data Entry Work
Contract Management Services
Document Review Services
Document Management Services
Intellectual Property Services
Legal Research Services
Litigation and Administrative Support Services
Consulting Services
Immigration paperwork
Research & Publishing
Compliance & Regulatory
Real Estate
Legal Drafting
Answering Online Legal Questions
Legal Definitions
Information on State and Federal entities

With the growing number of laws, legal resources, regulations, constitutions, statutes, and ordinances, it has become imperative to formulate research reports or other legal solutions based on these criteria. Using various legal sources, upgraded research methodologies and enhanced research skills, the LPO research experts execute the analysis of the problem, and application and communication of investigative results.

Clear and enforceable regulatory legal documents and articles are drafted by the LPO firms for personal, professional and corporate use. Intellectual property services include user-friendly services for patents, copyrights, trademarks, design rights, database rights, chip protection rights, right to performance, etc.

Legal outsourcing companies in all major cities like Cochin, Bangalore, Mumbai, Delhi, Chennai, etc. are now capable of delivering comprehensive answers for all and any legal issues or queries like hiring lawyers, how to sue, going to court, issues based on family, criminal, divorce, and employment.

Value-added information on various laws of a particular state or federal entity like enforcing laws, establishing taxes or collecting taxes, marriage licenses/driver licenses and marriage/divorce laws, establishing courts, lending money, or providing for the general welfare, etc. are delivered with the greatest accuracy to ensure the client satisfaction.

Legal Support Tasks like Document Review, Document Abstraction, Legal Articles, Case Summaries, Deposition Summaries, Subpoena Processing, Document Indexing, Attorney Tasks Coding, Case Management, and Legal Bill Audits are also leveraged by the law firms and banks with a 24x7 legal backup.

Despite the setbacks and challenges, the LPO industry witnessed growth by 40% to 60% during the past one year. With this trend and the advancing technologies, the industry is expecting to widen its scope of services and application to a wide domain by producing accurate and all-pervasive legal solutions at a relatively fair price.

How to Get a Provisional Patent to Protect Your Invention Before Anyone Steals It From You

By Dave Korpi
What you should know about getting a patent or a provisional patent on your new idea or invention.

First, I presume you know about the students in Cal Tech who thought it would be cool to take photos of houses on every street in their town and then link those photos to GPS data to then be able to display those images by address.

Think Google Street View... Now think about how cool it was that those students were smart enough to spend $110 to get a Provisional Patent to protect the concept... It is not too hard to file a provisional patent that says not much more than a means to take photos of all of the houses on streets and link those with GPS data to enable a user to look at the street view of any particular address.

I am sure you have read the news that Google is in litigation with these students because the students say Google stole their idea...

What I want you to appreciate is how powerful, and what a great investment it was for those students to spend $110 to perhaps earn millions and millions in royalties from Google's Street View...

The point is if you have some idea that you THINK might be a good one then you should look into getting a provisional patent.

I urge you to learn more about how to get a provisional patent to protect your cool invention.

I also urge you to get a non-disclosure agreement and have ANYONE you share your concept with sign it. Click my link to get your free non-disclosure agreement if you do not have one. The best is a mutual non-disclosure agreement because it protects both parties equally and will be signed even by the most peasly manager or CEO.

Ending Lesson: Get your provisional patent and believe in your idea! Learn how a provisional patent serves some of the same elements as a Non Disclosure document!

What have YOU got to lose? Go for it and get it done now....Or someone else may do it before you and boy would that be a bummer!

That Is Mine!

By Greg Pierce
Provisional Patent Application is a temporary application file by an inventor or his assignee in the United States Patent Office (USPO) to acquire probationary rights for his own invention or ideas by blocking certain acts of counterfeit. To acquire provisional patent, there are a number of things to be considered to get a quick approval, one of which is to ensure that a blueprint should be made prior initiating the entire process.

On the other hand, provisional patent application provides a specific venue to thoroughly develop a distinct invention for a reasonable span time. Aside from that, it also serves as a backbone that drives inventors to package, examine and search for possible markets before being loaded with increasing expenses and headaches as one would aim to gain full rights to execute the entire application process.

Provisional patent is not enough to provide monopoly of rights for the inventors. It will only generate a priority date as well as temporary security within 12 months to prevent public disclosure. However, the advent of provisional patent paves the way for inventors to protect their invention while the application for regular patent is still on process. More so, application for claim of exclusive rights assures clients that the inventor is extracting the best possible ways to optimize a certain invention before it will be sold in the market.

There are many things to consider before filing a Provisional Patent to the USPO. One of which is the provision that all necessary information should be provided in details regarding the use and benefits of a particular invention and that the invention is distinct from other ideas, products or services which are previously patented by other inventors or their assignees.

Several countries around the globe already recognize the need for provisional applications such as Australia, Japan, UK, China, USA, Philippines, New Zealand and many more to prevent illegal claims in the future. However, it should be emphasized publicly that to gain full rights, a complete application must be filed on or before the 12-month probation period since its initial date of filing. When the blueprint for application is properly compiled and managed, the entire process will be smoothly ironed out.

With Provisional patent, an inventor is secured that his rights are still in his scope even before the completion of his invention. The actual process and information of a particular invention will remain confidential to the general public for some considerable reasons. With this, inventors will have the chance to develop and repackage his invention to generate much advantage against other competitors in the industry.

Where Is My Patent Attorney?

By Greg Pierce
It is highly vital for one to patent his own invention so nobody could steal the exclusive rights away from him. Hiring the best patent lawyers should be considered by an inventor because it will help him to file provisional patent and even assist him for regular patent application in the future.

Provisional patent is the exclusive rights reserved by The United States Patent and Trademark Office (USPTO) to a particular inventor over his innovative and unique creation. It paves the way to safe keep the rights bestowed to him against those who will steal his invention for possible counterfeit, abuse and third-party selling. The top of the line purpose why patent has been created over the years is to allow the inventor to recover from the underlying overhead expenses during the work flow processes. Aside from that, it will also give the inventor the chance to accumulate more revenues as he faces the ongoing competition in the global market.

Provisional patent helps strengthen the claim of the inventor for his exclusive rights even before applying for regular patent which all the time takes longer. Under the bulwark of provisional patent, it will protect the inventor for possible counterfeit before patentability regularization is fully realized.

Since Provisional patent is just temporary, submitting application for regular patent must be fully extended with the help of the tier1 patent lawyers. Regular Patent is one way to maximize the duration after several actions have been taken. However, the way to apply for regular patent takes a lot of time and effort and the need for a patent lawyer is highly needed. The entire steps to be considered to apply for regular patent are not easy. You have to crawl to prove to everybody the uniqueness of your invention and what makes it different from others. Usually, when one applies for regular patent, acceptance seldom happens. The responsibility of the patent attorney in this period is to repackage the whole application and raise new information so it will be realized the next time around.

The role of the patent attorney is very vital during the entire processes. It is the responsibility of the attorney to keep abreast of new information about a particular invention and conducts various chronological searches whether regularization or provisional patent has already been granted for products or services having the same characteristics. If in case the lawyer find out that somebody already has the same products or services with his client and such products are already protected by patency laws, the lawyer may not proceed to continue the application. But, if proven that the claim is valid, the process will continue until the application is fully granted.

Tell Me How To Patent My Own Invention

By Greg Pierce
It is not easy to indulge in several processes to create a unique invention and in a long run somebody will just pirate and steal your hard work. In the United States, if a particular creator can prove the distinct invention as his own, he will be granted with exclusive rights to patent a particular idea.

In today's modern world, there is already a particular scheme to protect your ideas and creations in a speedy and reasonable manner. Provisional patent works for all those with unique ideas and creations to gain sole ownership of their own craft. In this way, the creators' exclusive rights will be protected against those who will counterfeit their original composition. There are several ways which need to be considered to strengthen the claim of ownership. Following these ways will guarantee the inventor for possible success of his claim.

It is an excellent idea to label a distinct product with detailed information, properties and how it works. The person who invented a particular composition will gather at least two witnesses and allow them to sign some important documents with date of initiation in front of a legal officer and allow the notarized officer to stamp and sign the documents to make it legal.

When documents are already completed, it is the sole responsibility of the inventor to keep the documents and his own distinct craft in a safe area while expediting the process for provisional patent application. At this point, the United States Patent and Trademark Office will confirm the date of the first invention or when the time the craft is completed.

After filing a provisional patent, the creator makes sure that he has to file an application for regular patentability of his invention within a year in USPTO. After, when one has already decided to complete his application for exclusive rights over his own invention, he has to be opted to hire a patent lawyer to expedite the entire processes the best way possible. Then, the lawyer will do its power to check if the particular invention is completely original and no one has filed a provisional or regular patent on the invention. Once its genuine uniqueness will be legally proven, the creator or inventor will fill in different official documents and forms that will strengthen his claim. After the completion of official forms and documents, it will be sent to the Patent and Trademark office.

Upon receipt of application, an officer will continue to solidify the search to make sure that such invention has no records that it has been already patented by others. If the claim has proven to be valid and nobody has patented the invention, the inventor will be issued a notice stating that he will soon get an official number after fees will be settled. However, if certain problems arise, appeals can be raised to the Board of Patent Appeals.

Japanese Patent Documents Are a Prime Source for Prior Art Search

By Lin Wang
Prior art is the information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality. If an invention has been disclosed in public domains, a patent on that invention is not valid. Therefore, patent search and non-patent literature search are often performed before filling a patent or before / during a patent litigation.

Japanese patents are prime source of prior art search. Japan is ranked No.1 country in the number of patent applications filed annually. In 2009, there are about 400,00 patent applications filed in Japan (JPO), which is about 20% of the total patent applications filed worldwide, the highest number in all countries.

As a comparison, there are about 370,000 and 178,600 patent applications filed annually in the USPTO and EPO respectively.

Japanese patents are the richest sources of prior art in the world, with more than 50 millions searchable patent and trademark documents, over 200 millions pages, stored at the JPO database. As a comparison, USPTO has stored about 10 millions of searchable documents including patents and trademarks.

Applications filed in Japan are published (laid open) 18 months after the filling or priority date regardless of the examination. The invention described in the published application become a prior art as of this disclosure.

While they can be difficult to search, Japanese sources are extremely important considering they are the richest prior art sources in the world and Japan is one of the top 3 economies with the most advanced technologies in many fields.

Patent Search - Why Should You Do Prior Art Searches?

By Ramaswami Natarajan
Patent Search or Prior Art Search is the most important skill that beginning Patent Agents and Patent Analysts must learn.

These searches are conducted in two types of databases.

One is a list of Free Patent Databases and the other is more expensive Paid Databases. The principles of Patent Search remains the same though the methods of doing the patent search will vary from database to database.

Now we do a Prior Art Search to ascertain several things. But before going it to it you need to understand the definition of Invention and how an invention is determined to be patentable or otherwise.

What is an Invention?

An invention is a Product or Process that is New, have inventive step or in other words remain non-obvious to a skilled person and is capable of industrial application.

Is the invention patentable? To be Patentable an invention must meet the Test of Novelty, Inventive step over prior art and be capable of Industrial application.

Novelty Test

This determines if the invention is New. As simple as that.

Usually International Examination of Patents take that Novelty is present if all the claimed features of the invention are not disclosed in a single Prior art document. In other words an improvement over an existing invention will meet the Novelty test for no single document will show all the features of the improved invention including the original document or patent that taught the invention or inventive concept.

Inventive Step Test

Inventive step is usually involves that the proposed invention must have at least improvement over existing state of the art and that improvement must not be obvious to a person skilled in the art. Now these are two requirements. One is that there should be technical advance or significant improvement in the technology invented and secondly such an invention should not be obvious to a person skilled in that specific Art. The first of these two requirements is bit easy to understand but the second requirement is tough. The second requirement presupposes two things. That there is a person of ordinary skill in the Art and that such a person should not feel that the proposed invention is obvious to him in the light of the prior art.

Now the confusing thing is who is the Person of Ordinary skill in the Art?

There is no such real or ex person as Person of Ordinary Skill in the art. No one is designated as such by the patent office for the purposes of determination of patentability in a regular way.

A person of ordinary skill is a legalistic assumption. He is a person who reads all things that are published in the subject matter and knows everything relating to the subject matter. So he is considered a domain expert. But this domain expert has only the skill level at an ordinary level. So essentially a Person Of Ordinary skill is a person who knows all, reads all but has not invented anything or need not be a recognized scientist and need not have achieved anything in the subject matter. But he knows every thing in the subject and has full analytical skills. So effectively a Person of Ordinary Skill is nothing but the Examiner of Patents who handles your patent application. Now having realized this we need to understand how the test of non-obviousness is determined. This is the most difficult part to meet in patent-ability. If the examiner feels that the inventive step is established, you are likely to get a patent. It not your application is going to be refused. It is as simple as that.

Patent Examiners determine Non Obviousness or Inventive Step by listing out the key features of the claimed invention first with respect to the priority date of the patent application.

The priority date of the patent application is the date on which it is first filed for patent protection in any patent office anywhere in the world. To claim the benefit of priority date in other countries the patent application must be filed within 12 months of the priority date if it is filed as a convention application or within 30 (or in some cases 31) months from the Priority Date if it is filed as a Patent Co-operation Treaty National Phase Application in other countries.

Let us say that the Invention as claimed has five key features 1, 2, 3, 4 and 5.

Please note my words Invention as claimed and this means that only the claims made in the patent application will be examined for patent-ability by the Examiners and not the specification and other parts of the patent application. The other parts of the patent application must provide antecedent support to the claims. But the examination is done only for the claims.

Now the examiner will list out documents that teach or disclose the each one of the key features 1, 2, 3, 4 or 5.

A prior art document need not teach all the key features or even more than one key feature. It is enough if it teaches or discloses or technically speaking anticipates just one of the key features. If the examiner is able to find prior art documents either from patent applications published earlier than the priority date of your patent application or technical journal articles published prior to priority date, for all the key features of the invention as explained above, he will combine the prior Art document A that teaches key feature 1, Document B that teaches key feature 2, Document C that teaches key feature 3, Document D that teaches key feature 4 and Document E that disclosed key feature 5. Then by combining all these documents A+B+C+D+E the Patent Examiner will reject your application saying that the invention as claimed lacks inventive step, is obvious to a person of ordinary skill in the art when all the references are combined as stated above and therefore is not patentable.

Interesting! Ah..Irritating!! No Problem. This is the fact of life that must be realized and accepted as a fact.

Nothing can be done about it.

But this is how Patent Applications are examined and granted all over the world and this is the procedure of examination of patent applications..

Now there are two things here.

By amending your claims or by properly drafting your claims, you can ensure that the Patent Examiner will not say that it lacks inventive step and you can get a patent.

O.k

But how do you know that your invention is going to be granted a patent? How do you draft the claims so that the examiner cannot object as explained earlier?

This is where the skill sets in Patent Search or Prior Art Search comes in to Play.

If you learn how to do a Prior Art Search and what are the principles of doing that search and how a Patent Examiner will do that search to determine and grant or refuse a patent, you will be able to decide if the invention is patentable or not. You learn to think like a Patent Examiner and examine like a Patent Examiner.

And then you can avoid a lot of expenses in filing and obtaining patents or in making an investment call to make an investment to invest in a research and development process for inventing an invention.

You can also determine whether the invention if manufactured and marketed will result in the commission of the offense of Patent Infringement of any existing Patent and in what countries such infringement will occur and in what countries it will not occur and so you are free to market the invention there. It will also teach you as to what are the countries you can safely manufacture and market a product which is protected by an existing patent in one country but not in other countries..So if you want to copy and manufacture the latest invention you need to set up manufacturing units in one country where the patent owner has not obtained protection and can sell them only in those countries where the Patent owner has not cared to protect his invention.

So a lot of business possibilities are present here because every year about 500,000 patent applications are filed all over the world. About fifty per cent of them are not granted in the first place. And those patent applications that are granted are not protected in all the countries. So you are free to copy, manufacture and market them if you understand what can be done and where it can be done. Of course you need to have the capital and the know how for this.

This is the importance of doing or learning to do Patent Searches or Prior Art Searches. In my next article I will discuss the various Free Patent Databases available to do Patent Searches and I will proceed in future articles about the methodologies of doing Patent Search in a number of patent databases.

Ramaswami Natarajan a Patent Attorney in India co-founded TMPsearchers.com and designed the India Patent Agent Examination Course syllabus and search interface of India Patent Database and India Trademark Database both of which are provided by TMPsearchers as online searchable databases. He has trained more than 100 scientists and Attorneys in Patent Search and US Legal Research and lectures on Patents in many Engineering Colleges and in the Indian Institute of Technology, Chennai as a guest faculty on behalf of Vilgro.org. He also conducts an on-line Free Course attended by more than 20000 persons at the website of TMPsearchers. Living in Chennai, south of India, he had handled projects on US legal research, and offshore back office support for database preparation and maintenance.

Hopes of What's Considered To Be Patentable Subject Matter. USPTO Releases Interim Guidelines

By Rick Michaud
In June of this year, the Supreme Court of the United States handed down the ruling in the case of Bilski v. Kapos, which as we all hoped, would have provided a clear definition, or test, of what is considered to be patentable subject matter.

Unfortunately, the Bilski decision provided little guidance.

The Supreme Court's ruling held that the previous test used by the United States Patent and Trademark Office (USPTO) (i.e., the Machine or Transformation Test) was not the sole test for patent eligibility under 35 U.S.C. 101, but that it was a useful and important clue or investigative tool.

Furthermore, the Bilski court stated that 35 USC 273(b)(1) acknowledges that there are business method patents and that section 273 clarifies the understanding that a business method is simply one kind of "method" that is, at least in some circumstances, eligible for patenting under 35 U.S.C. 101.

Since the Supreme Court's ruling provided no concrete test, the USPTO, on July 27th, released a set of interim guidelines for examination of the section 101 eligibility of method claims. The interim guidelines provide factors that an examiner should consider when determining whether a claim is directed to patent-eligible subject matter under 35 U.S.C. 101.

Specifically, the interim guidelines provide both a list of factors that weigh in favor of patent eligibility and a list of factors that weigh against patent eligibility.

Factors Weighing Toward Eligibility

* Recitation of a machine or transformation (either express or inherent).
o Machine or transformation is particular.
o Machine or transformation meaningfully limits the execution of the steps.
o Machine implements the claimed steps.
o The article being transformed is particular.
o The article undergoes a change in state or thing (e.g., objectively different function or use).
o The article being transformed is an object or substance.
* The claim is directed toward applying a law of nature.
o Law of nature is practically applied.
o The application of the law of nature meaningfully limits the execution of the steps.
* The claim is more than a mere statement of a concept.

The claim describes a particular solution to a problem to be solved.The claim implements a concept in some tangible way., The performance of the steps is observable and verifiable.,

The first factor that the USPTO lists, which would appear to be the most important factor, is the "Recitation of a machine or transformation". Clearly, the USPTO is still heavily relying on the Machine or Transformation test as an indicator to determine patent eligibility.

The other factors that weigh in favor of patent eligibility, besides satisfying the criteria of the Machine or Transformation Test, provide evidence that an abstract idea has been practically applied.

Furthermore, the factors provided by the USPTO are to be considered when analyzing a claim as a whole to evaluate whether a method claim is directed to an abstract idea.

So, let's look at two examples of claim language that are part of a method claim, the first one being a step of "providing a computer;" and the second being "determining, via a computer, an outcome;".

Both examples recite a machine (i.e., the computer) but only one passes the Machine or Transformation Test.

As listed above, one of the factors weighing toward eligibility is the concept that a "[m]achine implements the claimed steps". While, in my experience, this has always been assumed to be part of the test, the USPTO has clearly highlighted that the mere mention of a machine in claims may not cause the claims to pass the Machine or Transformation Test.

One of the factors weighing against eligibility is that the "[m]achine is merely an object on which the method operates." So, if the machine is merely mentioned and is not described in such a way that it implements the claimed steps, the claim would fail the Machine or Transformation Test and will not be considered patentable subject matter.

Referring back to the above examples, stating that "a computer is provided" does not disclose that the computer is actually doing the providing, as a human may have provided the computer. Therefore, this claim would not pass the Machine or Transformation Test.

In the example of "determining, via a computer, an outcome;", the computer is implementing the determining step. So, in this case the claim would pass the Machine or Transformation Test.

While I have not listed the factors that weigh against eligibility in this article, as there are many, there is one factor that is worth noting, and that is the very first factor that is listed (and the only factor bolded in the list).

The very first factor listed as weighing against eligibility is "No recitation of a machine or transformation (either express or inherent)". This further highlights the importance that the USPTO still places on the Machine or Transformation Test.

Clearly, while the machine and transformation is merely "a useful and important clue or investigative tool" it still appears to be the most important clue.

Richard Michaud is a founding member and managing partner of an international intellectual property law firm Michaud-Kinney Group in Connecticut. Michaud-Kinney specializes in all aspects of intellectual property law including foreign and domestic patent preparation, prosecution and litigation, trademark and copyright preparation, prosecution and litigation as well as in negotiating and drafting intellectual

Data Escrow Agreements

By Honylyn Bueno
What does Escrow mean?

'Escrow' is a legal term which means 'money, goods or a written document, held by a trusted third party, pending the fulfilment of some condition'.

Data insurance should be taken out for the data you use to provide for unplanned events.

The importance of Data Escrow Agreements

Normally in a Data Escrow Agreement a copy of the database content along with instructions, support manuals, computer source code (instructions for a computer in the form of a computer program), intellectual property etc is provided to the escrow agent (who is a trusted third party) by the owner.

The Escrow agreement sets outs certain events under which the above can be released to a licensed user of the data ('the Licensee'). This provides a safety net in case of events such as the Licensor going into bankruptcy or liquidation, a merger or acquisition takes place, or the Licencor fails to properly maintain the software or perform under the Licence Agreement.

With current advancements in the IT industry more and more businesses are dependent upon third parties for the supply of bespoke software which usually comes with a maintenance service contract. A Data Escrow Agreement is therefore essential in order to protect the Licensee from the above risks.

Why should a typical Licensor consider placing source code in Escrow?

Placing the source code in Escrow allows for better marketing of the software and the licensor's services and also provides peace of mind to licensees who know that they are safe in the knowledge that if there are bankruptcy proceedings or mergers or if any of the circumstances listed above occur, they will be safe.

The licensee can also have the source code amended and customised to their requirements very quickly which ensures continuity of business.

Computer software engineers take pride in their creations and therefore may often be unwilling to release the source code to a Licensee so a Data Escrow Agreement is a very good compromise.

The protection provided by a Data Escrow Agreement is essential for anyone involved in software development, software licensing or the use of another's bespoke software. An evaluation of the importance of software etc to a business should be carried out and put into context with the importance of a Data Escrow Agreement.

How Lawyers can help with Escrow

Clients who use this service are usually database administrators, software developers, web designers and creatives etc who are continually coming up with new ideas.

Data Escrow Agreements allow them to safely deposit and archive their work. Depositing their work with an escrow agent will assist in the event that there is some copyright or ownership dispute.

Many lawyers and solicitors offer data escrow services in relation to Software Escrow, Website Escrow, Database Escrow and Development Escrow. Choose a lawyer who has specialism in this industry and many have acted for leading software providers and many household brands.

Your lawyer should not only draft the escrow agreements but also act as an 'escrow agent'. The lawyer may also be able to store the data Escrow material in escrow and can advise on the terms of Data Escrow Agreements which are drafted by others and are specialists in negotiation.

Escrow fees range from £450 + VAT to £950 + VAT ($700 - $1500 US). Many lawyers will always provide a fixed fee before undertaking the work and can draft a bespoke data escrow agreement within a short timeframe.

How to Save Costs on Overseas Patenting

By Robert Games
Obtaining a patent in the UK is relatively inexpensive, compared with the cost of obtaining a patent overseas. In the UK, the official filing, search and examination fees required by the UK Intellectual Property Office (UKIPO) together amount to around a modest 200 GBP or so. However, in overseas jurisdictions, particularly in Europe, the fees alone can be thousands of pounds.

Therefore, it does not make commercial sense to file a foreign patent application unless you have done as much as possible to ensure that your patent is likely to be granted.

Before even filing a UK patent application, initial background research to try and ensure that any easily obtainable prior disclosure ('prior art') is taken into consideration should be undertaken. A freely available patents database, such as Espacenet, can be easily and safely keyword searched.

On filing your UK patent application, it is highly advisable to pay the application fee and the search fee. This puts in motion the first step of the patenting process at the UKIPO, and the Examiner will undertake his official worldwide patent search.

Although the application fee and the search fee do not have to be paid on filing, the search takes between 3 and 6 months to be returned. If you do not have the results when you are considering filing overseas patents at or near the first anniversary of your British patent application, you could be gambling far more than necessary that your invention is actually new. As such, it is recommended to pay the application fee and the search fee at the time of the filing the UK patent application.

With the search results to hand before the one year deadline for filing foreign patent applications, you will then have reasonable confidence as to whether overseas patent protection should be sought.

If the search report is negative, then you may decide not to pursue patent protection in foreign markets. However, your patent attorney can review the results of the search and advise on the likelihood of success.

Generally, it is only advisable to seek overseas patent protection if there is a reasonable chance of your patent being granted. In light of the search report from the UKIPO, which is a good quality worldwide patent search, this decision should become easier and thus allow you to make a better informed commercial and financial decision.

Of course, your decision to file an overseas patent application may very well be commercially based, and thus having as much information and advice as possible to make an informed decision can only make sense.

Albright Patents is a full service UK based patent and trademark attorney company offering representation before the UK Patent Office (UKIPO), the European Patent Office (EPO) and internationally before WIPO (World Intellectual Property Organisation). We can also file patent applications in almost any country throughout the world.

How to Reduce European Patenting Costs With The London Agreement

By Robert Games
This is an agreement aimed at reducing the cost of translation following the grant of a European patent. It is otherwise known as the "Agreement on the Application of Article 65 of the Convention on the Grant of European Patents".

Contracting States of the European Patent Convention (EPC), which is essentially the law governing the application, prosecution and grant of EU patents, that have ratified the London Agreement, undertake to waive, either partly or in full, translation of a granted European patent attorney. The level of waiver depends on the language of the patent and the official languages of the Contracting State.

For example, the UK is a Contracting State that has ratified the London Agreement. The de facto 'official' languages in the UK are English and Welsh. If a patent is prosecuted in French, then to complete the grant process before the EU Patent Office (EPO), the claims must be translated into English and German. In order then to 'validate' the EU Patent in the UK and/or Germany, no further translations are required under the London Agreement. However, a full translation into Italian would be required if it were to be validated in Italy. If protection in the Netherlands or Sweden were required, then as part of the validation procedure, a translation of only the patent claims into Dutch or Swedish respectively would be necessary.

The Agreement entered into force on 14 May 2008 and applies to all EU patents in respect of which the mention of grant was published in the European Patent Bulletin on or after 14 May 2008. There are currently fifteen countries that are party to the Agreement.

Albright Patents is a full service UK based patent and trademark attorney company offering representation before the UK Patent Office (UKIPO), the European Patent Office (EPO) and internationally before WIPO (World Intellectual Property Organisation). We can also file patent applications in almost any country throughout the world.

Using the Patent Application Backlog Reduction Stimulus Plan to Accelerate Your Patent Application

By Scott Thorpe
Entrepreneurs and inventors are often frustrated by the enormous backlog of patent applications at the United States Patent and Trademark Office (USPTO). Currently it is often 2-4 years after filing an application before examination on the application even starts, and then it can easily take a year or more for the application to be allowed.

As a result, cutting edge innovations are often unprotected for years while their patent applications idle at the USPTO. This makes it difficult for innovators to stop competitors from copying successful products during the critical market introduction and early sales phases.

To reduce this enormous application backlog, the USPTO has instituted a Patent Application Backlog Reduction Stimulus Plan. The plan allows an applicant to have special status accorded for an application if the applicant expressly abandons another unexamined application.

Special status is an enormous benefit. Patent applications are normally examined by USPTO art groups in roughly the order in which they are received. Special status allows a patent application to jump to the head of the line. An application accorded special status is often examined within a few weeks rather than years. As a result, the applicant can receive patent protection years earlier when that protection is most valuable.

Special status is also advantageous for appeals to the Board of Patent Appeals and Interferences (BPAI). It is not uncommon for an application to be held up in examination, particularly when one is seeking broad claims that provide effective protection. One of the best options for breaking such as impasse is to appeal to the BPAI. Unfortunately, the BPAI has its own very large backlog, so that appeals are largely ineffective in accelerating the issue of a patent. However, special status also applies to appeals, increasing the attractiveness of an appeal and giving applicants more options and leverage in moving an application forward.

When the plan was first announced, it applied only to small entities - organizations with less than 500 employees. However the plan was recently expanded to include applications from organizations without small entity status. But regardless of the size of your organization, the plan can be useful in accelerating the granting of patents by years and should be carefully considered by any organization looking to protect a vital innovation.

Procedure for Drafting and Filing a Patent Explained

By Robert Games
Once a patent attorney has all of the details of your invention, they will usually prepare a patent specification for you to review. This specification generally includes a written description of the invention including optional features and advantages.

The description usually refers to drawings with reference numbers which will clearly identify the features of your invention. The patent attorney should then also draft a set of Claims.

The claims are the legal definition of your invention. In other words, the claims define the monopoly that you are seeking. A patent attorney should be skilled in drafting claims for inventions in many technical subject areas. The patent attorney should prepare claims which will define your invention in a way to obtain the broadest protection possible for you. The patent attorney should also draft an abstract, which is a patent office requirement.

Once the specification has been prepared, your patent lawyer will usually email or post it to you for your approval. If you feel that any changes need to be made or further subject matter needs to be included, they should then do this before filing a patent application on your behalf.

Once prepared, the attorney in most cases will file your patent application with a search request and pay the official fees for you. This can sometimes be done online and the official fees are deducted from the attorney's deposit account held at the Intellectual Property Office. They will then receive a filing receipt by return and report this to you with a full copy of the patent application as filed. The application then sits in a queue at the Intellectual Property Office until it is searched by a Patent Examiner some 4 months later.

The search is a novelty search and a search report is often sent to the attorney, which they should briefly review and forward to you with an explanatory letter. On filing, they are likely to pay an extra fee to the Intellectual Property Office which means that they receive two copies of the search report and the documents accompanying the search report, one copy for you and one copy for their file.

Your patent attorney should always advise filing a search request on filing, unless there are special circumstances.

Albright Patents is a full service UK based patent and trademark attorney company offering representation before the UK Patent Office (UKIPO), the European Patent Office (EPO) and internationally before WIPO (World Intellectual Property Organisation). We can also file patent applications in almost any country throughout the world.

Saturday, August 28, 2010

A Beginner's Guide to Getting a Patent

By Greg Isaacs

If you've ever had an idea for an invention or new product you might have thought about ways to protects your idea from being stolen by somebody else. A patent is a document that provides you with protection for an idea or invention and gives you exclusive rights to exploit your idea. If your patent is granted then if anyone tries to copy or emulate your idea, you can use the full force of the law to uphold the patent and prove that yours was the original idea.

Patents are issues by governments and they are specific to that country. So if you want to do business abroad you must also apply for a patent in those countries too. Applying for a patent can be a long and drawn out process. In principle it is a simple procedure. You go down to your local patent office, pick up an application form, fill it in and wait for the approval. In practice however there are many things that can delay or even prevent you from taking out a patent on your invention.

If your idea is relatively straightforward and easy to explain you may be able to fill in the application by yourself. It does take some research and you have to do your homework but in theory it's achievable. However if your patent application involve complicated theories and cannot be easily explained to a layman, then you may have to hire a patent lawyer with specialist knowledge.

This is often the case with advanced software patents which often use a mixture of open source and custom written code. Proving the originality of such a piece of work requires incredibly detailed research and it not for the inexperienced. To give yourself the best chance of your patent application being accepted, you need to document everything. All aspects of the invention process should be written down so that the patent office can see that you've had the initial idea, and followed it through to realization.

You should have diagrams and schematics of all your designs and detailed written descriptions of the purpose of your invention and exactly how it works in step by step detail. If you have the means, you should build a prototype. This is to demonstrate that the product is much more than a concept and has a good chance of being commercially successful. Patents are a necessary evil in today's cut throat world of business. By learning more about the process you will give yourself a better chance of succeeding commercially with your invention.

Full Text - The Key to Future Patent Searches

By Subramanian Manikandan

Shall we say the era of complete information disclosure has just begun and hence the importance of full text patent searching?
Under section US112, the test of enablement requires the claims to be backed by full disclosure of the preferred embodiment in the specification. This tactic has been used by lawyers extensively to invalidate patents in the courts of law.

Hence, as a commercial information service provider the provision of the full text data becomes extremely important to search and analyze since the import of the inventive step may not be fully available from the claims.

In other words, there is potent challenge to perform a thorough patent search given the commercial patent database providers providing just the thumb nail view of the first page. My random informal meetings with a few patent research analysts go on to concur on one simple fact that in order to understand the utility of an invention, it is highly advised that a patent search is done on the full specifications of the patent. They believe that the title, abstract and claims typically make one to understand the novelty and non obviousness while most patents have their utility residing in the full specification.

Further, it is only prudent to have a thorough patent search involving full specifications of the patents where the purpose of patent search is for litigation involving invalidation / infringement and also while searching the prior art. Time and again, it has become a thumb rule for a patent searcher to understand that the patents are often written with a purpose to obscure the patented invention. We believe that the above reiterates the need to search on the full text and hence the key for future patent searches.

Should I Speak With a Lawyer to Help Receive a Patent?

By Alan Flemming

Getting started on a patent application isn't just a matter of filling out numerous piles of paperwork, submitting diagrams, and forking over payments. It necessitates expertise of guidelines, patent office procedure, along with knowledge of the scientific or specialized components of the concept, procedure, or merchandise you intend to patent.

Is it possible to File a Patent Without A Lawyer?
Certainly. All of the necessary forms, fee schedules, and process recommendations are defined on the U.S. Patent and Trademark Office's web site. Then again, you really should only try to file a patent request on your own if you are sure that you have the know-how, means, and time to effectively collect and submit the forms required to achieve a successful result.

Going about the application steps by yourself is usually a time-intensive and cumbersome endeavor, in particular if you need to master all of the nuances of patent law and process as you go along.

The submission procedure is made substantially simpler with the guidance of a skilled Los Angeles patent lawyer who will be able to complete a patent query and explain to you - dependent on the outcome of the search - whether or not it would be worth the cost for you to file a patent. This information by itself can help save you a great deal of time and cash.

It is always much easier to finish an activity when you have the assistance of someone who is seasoned and effective at finishing the task on your side. A dependable Los Angeles patent lawyer will not only have already been through the patent application process numerous times, but they will likewise have training in your field of invention.

How Does A Los Angeles Patent Law Firm Help My Patent Request?

Your Los Angeles patent attorney will know the patent law for the field you are writing your patent request for - whether within the U.S. or internationally. The U.S. Patent and Trademark Office (USPTO) acknowledges only specified individuals as being permitted to work for inventors in their patent application process - this includes an assessment and approval that your Los Angeles patent attorney should have passed and received.

Facts of IP Patents

By Amit Bhanot
IP Patent

Intellectual Property (IP) refers to the creation of mind: inventions, images, symbols, names and artistic and literary works, and designs used in business.
IP is majorly divided into two main categories:
(a) Patent, Trademark, Geographical Indications, industrial designs
(b) Copyrights

Patent - is an exclusive right on your IP, that prevents the use of invention commercially i.e. selling, distribute or making. IP patent is granted for an invention, which can be a product or a process or a business method, which in general provides 'novelty, inventive step, industrial use' are capable of being granted as Patent for a period of 20yrs.

Patent is granted by the national IP office or by a regional office for your invention, such as the European Patent Office (EPO), United States Patent and Trademark Office (USPTO), Japan Patent Office (JPO). In national systems, an applicant files for protection of the invention in one or more countries, and then each country grants or reject the application of the inventor for patent protection within its territory.

Also, the inventor has the choice to go through Patent Cooperation Treaty (PCT) application, PCT application provides a platform to cover all the countries bound by PCT. Any applicant in search of protection for the invention may file single application and request protection in as many signatory or designated states as needed for the maximum of 31 months from the priority date.

Patents provide encouragement to individuals by offering them acknowledgment for their inventiveness and monetary reward for their marketable inventions and thus innovation increases and the quality of the standard of life increases, as ultimately the human life is benefited with such recognition.

Steps to Obtain Patent for the Invention

1. To know whether the invention is patentable or not? - Patent filing is a time consuming and costly affair. The govt. fee is still low in comparison to the charges procured by the advocates and patent agents. Hence, one should be very specific and clear about the invention is whether patentable or not. Thus Patent Research such as Patentability search, Freedom - to- Operate, State-of-Art Search is highly required.

2. To file the Patent application - The (IP) Patent application is again a complex process and it requires the assistance of technical experts with the advocates or patent agents who can draft the patent application in the technical way, which can be readily accepted by the various Patent and Trademark Offices. The preparation of the draft is known as Patent Drafting. The Patent Application includes Title, Field & Background, Summary, Brief and detailed Description of Drawings, Claims of the Invention, Abstract and Patent Illustrations.

Other formalities (Designation of Inventor, Assignee, Designated Countries, Patent Citations, etc). Claims determine the scope of invention.

3. To prepare for office actions - There is a possibility of the invention not being passed as such by the regional IP (Patent) offices. Hence, for any clarification or changes made by the IP (Patent) offices are known as office actions. Thus a highly technical team is required to draft response for the office actions, as longer the session of office actions longer the duration required for the grant of patent for the invention.

This is a continuous process till the patent is granted by the IP patent office of respective states. The services such as Patent Drafting, Patent Filing in India, Patent Research etc 'Expected Solutions' are well versed to provide support for obtaining the patent for your ideas.

Saturday, June 19, 2010

Smart Ways to Address the Patent Analysis Needs of the Medical Devices Industry

By Subramanian Manikandan
(Legal/Patents)

The medical devices patent wars are raging and competing against those of the pharmaceutical industry. The situation for the medical devices patenting fraternity gets worse with the distinguished importance gathering towards the design patents. The recent decision by the U.S. Court of Appeals for the Federal Circuit makes the design patents even more valuable than the process patents.

That is to say, the complexity associated with the medical devices patent community in order to maintain the competitive edge for their respective companies is manifold. However, it is certainly a no brainer to visualize this scenario if perceived from the barriers to competition (regulatory approval, reimbursement - Govt or Insurance; large R&D expense) and the patent heavy nature (maintenance of monopoly; lifecycle management; litigation requirement) of the industry per se.

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