Getting The Patent

Editor's Notes

• #2: I’ve often thought that picking someone to write your patent is like picking a mechanic to fix your car. Unless you know something about patents (or cars) – you don’t know what you’ve bought until a long time after you have paid. Patents are expensive, very expensive. You may end up paying $20K in costs (to the prosecutor) and fees (to the government) after all is said and done. So, it literally PAYS to do your homework. My name is Alex Sousa, and I started writing patents over 12 years ago – first at a law firm, and then as an attorney for two startups in Silicon Valley. I’m admitted to practice in California & the USPTO. I have a B.S. in Mechanical Engineering, and MBA, and a JD. This presentation includes tips derived from my experience, as well as a primer on patents and the process for getting patents. Patents live at the intersection of science and law, which can be intimidating. So, I’ll try to minimize the jargon whenever I can. And so, let’s get started with Getting the Patent / Choosing the Talent.
• #3: No legal presentation would be complete without a disclaimer, and so here it… The information provided in this presentation should not be construed as legal advice or legal opinion regarding any specific facts or circumstances, but is intended for general informational purposes only.
• #4: While just about every industrialized nation in the world has a patent system, this presentation will only discuss getting a patent in the U.S. If you have any specific questions, go ahead and send an email and I’ll do my best to respond.
• #5: The Talent In the patent biz, the person who prepares your patent application is called a patent prosecutor. Prosecution just means moving the process forward. To become a patent prosecutor, you have to pass the patent bar exam. But the exam is not really about writing a patent (that is, patent preparation). Rather , it’s a multiple choice exam that tests the rules and procedures of practice at the patent office. The way you learn to be a patent prosecutor is the way you learn just about any other skilled trade – you basically apprentice with someone who knows what they’re doing - and it can take a while to become a good one. Patent prosecutors come in two flavors: patent agents and patent attorneys. A “Patent Agent” someone who has passed the Patent Bar Exam but isn’t a lawyer. In contrast, a “Patent Attorney” is an attorney who has passed the Patent Bar exam. As far a prosecuting a patent is concerned there is no difference. But if you want to license a patent or sue somebody, you need a lawyer for that.
• #6: Before I studied for the patent exam, I had heard about patents, be never really know what they were. So here it is, the text-book definition of a patent: a limited-duration intangible property right that allows one to prevent others from making, using, or selling the patented invention in the United States. In other words, a patent is a negative right, not a positive privilege.  It doesn’t allow you do anything. It allows you to stop someone else from making, using, or selling the thing you got a patent on. Here is a simple example illustrate the point. Let’s say you where lucky enough to be issued a patent that claims a chair with four or more legs. You could then prevent someone else from making a chair with five legs. However, if someone else, luckier than you, received a patent for a chair with 3 or more legs, they would be able to stop you.
• #7: Patents have been around for a long time. In fact, they’re mentioned the US Constitution. It can be found in Article I, Section 8, Clause 8. The whole reason for having patents is to benefit the public. And so, to encourage inventors to reveal their inventions, they are granted the right to prevent others from practicing the invention for a limited time, roughly 20 years from the filing date. Revealing the invention means that the inventor must disclose the WHAT and the HOW. By the way, sometimes I use the word inventor and sometime I use applicant. The applicant is the person “applying” for the patent. Sometimes they’re the same person, sometimes not. For example, an inventor may have assigned the invention to his or her employer. In that case, the employer is the applicant. The “WHAT” called the “Written Description”, requires that all claims must find adequate “support” in the originally filed patent application. I’ll discuss claims in the next slide. The “HOW” has two parts, the first is called “Enablement” and the second is called “Best Mode.” Enablement means that the applicant must describe how to make and use the invention as to permit any person skilled in the art of the invention to do so without undue experimentation. Best Mode means that the applicant must describe the best way known to the inventor on the application’s filing date of carrying out the invention. Patent folks refer to these requirements by their location in the United States Code: 35 USC. 112, 1st paragraph.
• #8: Under 35 U.S.C section 102, an invention has to be novel in order to be granted a patent. That is, it can’t have already been patented, or available to the public, prior to the effective filing date of the invention. This is called prior art. However, there is an exception, that only exists in the United States, regarding prior disclosures by the inventor. If a public disclosure was made less than one year before the effective filing date, that disclosure cannot be used as prior art against the invention. However, the same disclosure would terminate any foreign patent rights.
• #9: The most distinguishing characteristic of a patent is probably the claim. A claim is a sentence that defines the boundary of an invention and thus the scope of patent protection. Claims are often compared to property lines because both define an area from which others may be excluded. Claim scope lies on a spectrum from broad – excluding others from a relatively large intellectual property area to narrow – excluding others from a relatively small intellectual property area.
• #10: Here are two simple claims for a shovel The first one is an independent claim. That is, it does not depend on any other claim. The second one is a dependent claim since it depends, and further narrows, the first claim. Claim 1. A shovel comprising: an elongated handle having a first end and a second end; and a shovel head; wherein the shovel head is attached to the first end of the elongated handle. Claim 2. The shovel of claim 1, wherein the shovel head is comprised of a metal.
• #11: There are basically 4 types of patents - 3 substantive and 1 procedural. The substantive types are Utility, Design, & Plant The procedural type is a Provisional I will briefly explain each.
• #12: By far, utility patents are the most typical – comprising about 90% of the patents issued by the USPTO in recent years A Utility patent is granted for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof And they have a period of exclusivity of up to twenty years from the filing date, subject to the payment of maintenance fees If you’ve never seen one, I encourage you to go to the USPTO website, or better yet to Google Patents, and search for patents in areas that you are interested in.
• #13: A plant patent is granted for a new and distinct, invented or discovered asexually reproduced plant including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state Like a utility patent, they have a period of exclusivity of up to twenty years from the filing date. However, plant patents are not subject to the payment of maintenance fees
• #14: A Design Patent is issued for a new, original, and ornamental design embodied in or applied to an article of manufacture. It can be very powerful, particular when combined with Copyright and Trademark rights on the same design. In fact, as of the date of this video, much of the ongoing lawsuits regarding the design of smartphones and tablet computers between Apple and Samsung center around Design Patents. A Design Patent permits its owner to exclude others from making, using, or selling the design for a period of fourteen years from the date of patent grant. And unlike utility and plant patents, a design patent is not subject to the payment of maintenance fees.
• #15: In order to be granted, a patent application requires the written disclosure that I just talked about, as well as a set of claims, an oath or declaration, and a statement of any prior art that the applicant is aware of. We call this a non-provisional patent application. However, the Patent Office has provided a way to file informally. An initial application can be filed with just the invention disclosure, in just about any format: PowerPoint, a research paper, reams of data, etc. This initial filing is called a Provisional Patent application. So long as within 12 months, the applicant files another application, referencing the first one, that also includes a set of claims, oath or declaration, and a prior art statement, the later non-provisional application gets the filing date of the provisional application. A Provisional application can be filed for any patent type (Utility, Plant, or Design), although I’ve only seen Provisional Utility applications filed. Once filed, the term "Patent Pending" can be applied in connection with the description of the invention. But here’s the problem - you may end up submitting too little or too much. If you missed something in the invention disclosure when you initially filed, you’re out of luck. You can’t add new material after you submit the provisional application and expect to get the same filing date. But the opposite problem is true too. The inventor cannot prevent the public from using any information disclosed by not claimed. It may have been better strategy to keep this information secret (think the Coca Cola recipe) which can then be protected indefinitely. My advice, if you can, is to take the time to properly prepare, or better yet, have a professional prepare, the patent application. If doing a proper patent application is not an option - say you’re presenting at a conference or meeting with a VC and there’s no time to properly file - try to be as reasonably complete as possible. If you know you want to keep something as a secret, like a specific recipe, consider not disclosing it. However, if you are not sure, my recommendation is to just include it to be on the safe side.
• #16: Here’s the general process for getting patent Initially, there’s the “Aha” moment, called “Conception of the invention”. This is when the proverbial “Apple hits you on the head” Next, you have to figure out how to do or make the invention. This is called the “Reduction to Practice.” Then you start preparing the patent application – normally with patent prosecutor who sits down with you and takes notes while you explain the invention. When the application is ready to go, it gets filed at the Patent Office with the appropriate fees. Next comes the dance where the patent office and the prosecutor negotiate with each other to try to get some of the claims allowed. The Patent Examiner sends office actions to the prosecutor, and the prosecutor responds with amendments. Eventually, hopefully, a notice of Allowance is received. After the payment of a fee (of course), the patent is granted. Every few years afterward, a maintenance fee has to be sent to the Patent to keep the patent alive.
• #17: An office action is a letter from a Patent Examiner setting forth the current status of a patent application. The first (non-final) office action usually contains reasons for any rejection or objection, or for additional requirements. For example, sometimes the claims actually describe more than one invention. Since the filing fee only covers the examination of a single invention, the applicant will be asked to chose which invention (that is which subset of claims) on which to move forward. After receiving a response (amendment) from the applicant, the examiner sends a second (final) office action, notifying the applicant of the status. If none of the claims are allowed, the process can be continued - with another fee of course. This is referred to as a RCE or “request for continued evaluation” Sometimes, we use the shorthand of just “continuation”.
• #18: Here is a sample patent application timeline. We’ll set the provisional application filing as month 0. Within 12 months, a non-provisional application must be file, or the application goes abandoned. In about 18 months, the 1st Office Action is received. Also at 18 months, the patent application is published (unless you tell the Patent Office otherwise). And then one day, hopefully, the patent issues. 36 months is a good rough estimate.
• #19: Here are some typical costs from a 2013 survey by American Intellectual Property Law Association. Again Application cost refers to the cost of preparing the patent application + Amendment cost refer to the cost to responding to office actions Typical costs are about 3.5K for preparing a provisional application, 6.5 – 10K for preparing a utility patent, and about $3K for preparing an amendment. When you get a estimate (or the final bill) it maybe lower or higher, and that’s OK. Your invention may be relatively simple, or horrendously complex. However, if the cost is too much lower or too much higher though, be suspicious, as questions.
• #20: The USPTO is an entirely fee-funded agency.  Filing fee: the cost to have your invention "examined“ one time. Request for continued examination (RCE) Fee: the cost to have your invention "examined“ an additional time. Issue Fee: the cost to paid after an application is allowed, to issue the patent. Maintenance fees (are paid at 3 1/2, 7 1/2, and 11 1/2 years after the patent is granted) to "maintain" the patent’s legal protection.
• #21: At the USPTO, the amount you pay is generally based on who you are. You can file as a regular entity – that is , you pay “full freight” or a small entity, approximately half the costs of a regular entity, or a micro entity, approximately half the costs of a small entity To qualify as a small entity, an applicant must: - Be a (i) Person, (ii) Small business concern; or (iii) Nonprofit Organization; and, - Not have assigned, granted, conveyed, or licensed … any rights in the invention. To qualify as a micro entity, an applicant must - Qualify as a small entity. - Not be named on more than four previously filed applications. - Not have a gross income more than three times the median household income in the previous year (roughly $50,054).
• #22: Here are my 8 Tips Be Suspicious Interview the Actual Person Doing The Work Get An Estimate Avoid Being “Nickeled and Dimed” See The Real Track Record Watch the Up Sell Ask for a Very Narrow Claim Consider Getting An In House Patent Resource
• #23: Tip #1: Be Suspicious It’s a bit like dating – what looks great at first may end up being…well, not so great. When speaking to a potential prosecutor, act dumb regarding patents. Have them explain the process and the costs. Now that you know a little bit about patents and the patenting process, listen for inconsistencies.
• #24: Tip #2: Interview the Actual Person Doing The Work The person managing the client (i.e., you) may not be the person doing the actual work – or at least most of the work. Let’s call that person the “Worker Bee.” Ask the Worker Bee about his or her: Education Patent Experience Familiarity With Your Technology Current Workload
• #25: Tip #3: Get An Estimate Whenever you ask for an estimate – you may get a lot of “hemming and hawing”. While it is true that its hard to give a fixed number – getting a reasonable range should not be that hard. Mention the typical fees in the survey by the American Intellectual Property Law Association. This will anchor the discussion around a published range – forcing the justification of different numbers.
• #26: Tip #4: Avoid Being “Nickeled and Dimed” Unless you’re lucky enough to negotiate a fixed fee arrangement, you’re being charged by the hour (or rather by the minute). Don’t be afraid of asking if you are on the clock. If unsure, assume you are. Keep phone calls and emails to a minimum. Request to not to be sent formal cover letters that summarize (or restate) official USPTO correspondence.
• #27: Tip #5: See The Real Track Record Information regarding patent application status is available on the USPTO website in the Patent Application Information Retrieval system, or PAIR. Public PAIR has all the correspondence to and from the Patent Office for issued patents and published applications. Ask for list of issued patents that were prosecuted by the firm, and then look up the transaction history of each in Public Pair. See how many continuations were filed per patent. Remember, a client gets charged for every correspondence with the patent office. It’s true, in some areas, it takes several tries to get something allowed. That requires multiple continuations – multiple amendments – and of course multiple costs and fees. But I’d be a little suspicious if every patent application needed multiple continuations – and nothing, however narrow, got allowed on the first try.
• #28: Tip #6: Watch the Up Sell If you ask some who gets paid to write patents, whether you should get a patent, the answer will almost always be yes - or at least not no. It’s like asking an alcoholic if he or she wants a drink. That is, there is a vested interest in a positive response.
• #29: Tip #7: Ask for a Very Narrow Claim Good patent prosecutors will draft both broad and narrow claims, since you’re never sure what will be granted. However, it’s also a good idea to draft a very narrow, virtually non-infringeable claim. Why: management (and maybe the VCs) will be pleased to get something allowed relatively quickly; and in litigation, so long as at least one claim survives, the patent survives. If the patent had been licensed, since there is still a claim (albeit a very narrow one), the licensing revenue stream would be maintained.
• #30: Tip #8 Consider Getting An In House Patent Resource If patents are a core part of your business strategy, consider hiring a patent agent or attorney. It can be cost-effective in the long run. You switch from a “pay as you go” model to more of a “all you can eat” one. Agents tend to be less expensive, but they only can do patent preparation and prosecution. Attorneys tend to be relatively more expensive, but if you hire carefully, you also get legal capabilities, such as drafting & negotiating agreements, managing NDAs, venture fund-raising, etc.
• #31: I hope you got something out of this presentation. I’d love to hear from you. Send comments, suggestions, or questions to patent@pobox.com